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IP: 3 simple steps to avoiding sanctions under 35 U.S.C. § 285.

Think a pre-suit investigation is costly? Try paying your opponent’s attorneys’ fees

“Close only counts in horseshoes and hand grenades,” the saying goes. The point is that there are few endeavors where “close enough is good enough.” Suing someone for patent infringement is not one of them. Indeed, the consequences can be more along the lines of throwing the pin at the defendant instead of the grenade: you might just hand the defendant a victory on a motion for attorneys’ fees under 35 U.S.C. § 285, as a recent decision from the Southern District of Ohio shows.

The decision, R&L Carriers, Inc. v. Pitt Ohio Express, Inc., is part of a multidistrict litigation as reported in In re Bill of Lading Transmission & Processing Sys. Patent Litig. These cases involve U.S. Pat. No. 6,401,078, which claims a method for improving operational efficiency for less-than-a-load freight carriers.

Do not maintain a lawsuit without a reasonable basis It’s better to drop the suit if discovery reveals an insurmountable flaw in the facts developed during your pre-suit investigation than risk facing the court’s wrath and paying your opponent’s attorneys’ fees.

Yet R&L, even when it should have known its proof of Pitt Ohio’s infringement of the six-step method ran out at step five, doggedly refused to accept reasonable assurances (in the form of affidavits and other evidence) that Pitt Ohio had never practiced the sixth step of the asserted method. Instead, the court held, it “unreasonably and vexatiously … persisted in prosecuting a claim that lacked a realistic chance of success,” concluding that doing so “was unreasonable and tantamount to litigating in bad faith.”


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Cullen Pendleton

Cullen Pendleton, Ph.D., is a litigation partner at Marshall, Gerstein & Borun LLP. He is an alumnus of the University of Houston, the University...

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