A Method to Prevent the Abusive Use of Patent Infringement Actions: Rule 11(b) of FRCP

It is true that proper exercise of a patent right should be protected. However, filing a frivolous patent infringement lawsuit should be prohibited because patent infringement lawsuits requires a lot of time, money, and legal resource. However, the news about abuse of patent infringement actions continue throughout the world. A method that may be used to prevent the abuse of patent infringement actions in U.S. is the Rule 11 of FRCP. The Rule 11 of FRCP allows a party to file a motion which requires courts to impose a sanction upon the other party and its attorneys when the other party filed a paper presented to the court, without making reasonable inquiry under the circumstances on whether (i) it is not being presented for any improper purpose; (ii) the legal contentions therein are warranted by existing law or by a non-frivolous argument; or (iii) the factual contentions therein have or likely to have proper evidentiary support. Based on the Federal Circuit’s decisions it seems that the Rule 11 of FRCP requires more duty when the rule applies to the patent infringement cases. The Federal Circuit, which has exclusive jurisdiction on patent cases, seems to impose greater duty to perform reasonable inquiry or investigation before filing a lawsuit on patent cases compared to what the court generally has required in other traditional cases. The Federal Circuit seems to apply the Rule 11 of FRCP stringently. The Federal Circuit does not allow to take cost-benefit analysis into consideration, but requires a lawyer to reverse-engineer the accused article, and does not allow a lawyer to solely rely on the inquiry or investigation performed by the client. However, the Federal Circuit’s rejection of the cost-benefit analysis seems to be too harsh for a lawyer. Moreover, expanding the Federal Circuit’s exception for a chemical process from a duty to perform a reverse-engineering of the goods which allegedly includes patent infringement to all patent cases where the reverse-engineering of the accused good is generally not available to the industry because performing reverse-engineering would generally not be expected seems more reasonable. For the requirement which always requires the lawyer to conduct a separate investigation rather than allows the lawyer to rely on the knowledge of the client or the investigation performed by the client, I agree that in some extent the lawyer in the patent infringement action should perform a separate investigation. However, if the client is a reliable expert in that field or had provided reasonably reliable evidence, I think the lawyer should be allowed to rely on the evidence provided by the client. So the proper requirement for pre-filing investigation for patent infringement actions should be modified. When we see the Korean legal system, there is no direct rule which will deter a wrongful accuser or its attorneys in a patent infringement action from filing a frivolous patent infringement lawsuit without performing adequate inquiry or investigation. Although there is some criticism on Rule 11 motion in the patent infringement actions some sort of pre-filing investigation requirement can be an option that Korea may consider to reduce frivolous patent infringement actions.