When your law firm is met with a new client who asks you to file a patent infringement lawsuit, think carefully about how to proceed. First on your list should be hiring a private investigator to conduct a pre-filing investigation. This will assist you in meeting your obligations under Federal Rules of Civil Procedure (FRCP), Rule 11 which requires you to have a good faith basis for filing the lawsuit. It also gives you a road map for the litigation by having your investigator identify the strengths and weaknesses of your client’s case.
Courts overseeing patent litigation have established criteria that need to be part of the pre-litigation patent infringement investigation. You must show that you have investigated as many issues as possible. This investigation will not only advance your case and keep it from being dismissed, but prevent possible sanctions later should you lose your case.
How Our Infringement Investigators Can Help
The Grafton Group pre-litigation investigators will identify, accumulate, and examine evidence and provide you a detailed report prior to filing a lawsuit. For example:
- It needs to be confirmed that the client actually owns the patent and the rights to it that he or she asserts.
- A sample of the infringing product must be obtained. Courts have dismissed patent infringement cases holding that “Identification of the accused device is a necessary prerequisite to determining infringement.”
- If the product in question is one that can be tested in some way, it should be tested.
- The investigation must compare each patent claim to the alleged infringing product. This standard may be met by analyzing available documents, visually inspecting the product, and obtaining the opinion of experts. It is not enough to rely on public advertisements of the product or information included on its label.
For complex investigations, courts have looked at what is reasonable under the circumstances. They have found that a pre-litigation investigation may come to an incorrect conclusion, but if it is “reasonable, comprehensive, and competent,” courts will likely determine the litigation was instituted in good faith in compliance with Rule 11 and no sanctions will be imposed.
If the investigation is difficult, and it is almost impossible to determine if the accused's product really infringed without more information, an affidavit confirming that an investigation was attempted can be attached to the complaint. The affidavit can explain the need for discovery.
The America Bar Association suggests you may also want to conduct an investigation into whether there are other parties that should be added to the lawsuit. This may include suppliers or distributors.
Consequences of Inadequate Pre-filing Investigation
If your pre-filing investigation is inadequate, courts may dismiss the infringement case. If your case is not dismissed, but you ultimately lose, the court may analyze your pre-filing investigation and, if it finds it inadequate, it may find that you brought the case in bad faith. That opens the door for the court to pour salt into the wound of losing by awarding the defendant attorneys' fees and costs.
Sanctions have been imposed when an attorney relies only on the reporting and knowledge of the client and makes no investigation of his own. In fact, relying only on the client’s reports has been found to be not just negligent, but reckless and in bad faith.
Our Grafton Group in Tampa, Florida, is a private investigation and litigation support firm. We have nationally recognized investigators who know what is needed for effective pre-litigation patent investigation for attorneys. This helps avoid allegations that a patent infringement lawsuit was brought in bad faith and avoids costly sanctions.