The Federal Circuit’s “Sharp Tongue” When it Comes to Bad Attorney Behavior

“Sticks and stones may break my bones … but [sharp] words [from the Federal Circuit] will make me wish I never went to law school.” The judges of the Federal Circuit understandably become frustrated when attorneys misrepresent facts, make frivolous arguments, and, of course, when they engage in fraudulent conduct. While the Federal Rules of Civil Procedure provide various ways for a Court to sanction attorneys for improper conduct, sometimes the Court prefers to just include a good, harsh scolding in its opinions. The effect is surely no different, as legal journals and blogs re-circulate and quote the Court’s language for everyone in the profession to read. And, if the sharp-tongued rhetoric of the Court wasn’t enough, sometimes it will award sanctions for good measure, on top of a scathing opinion.

Under Fed. R. Civ. P. 11(c), the Court “may impose an appropriate sanction” for a violation under 11(b), which provides that in presenting any paper to the Court, the attorney certifies that it is not brought for an improper purpose and is not frivolous. Fed. R. App. P. 46(c) further allows a court of appeals to discipline an attorney for “conduct unbecoming a member of the bar or for failure to comply with any court rule.” The Patent and Trademark Office (“PTO”) separately has its own Code of Professional Responsibility.1

The courts therefore have available “a variety of possible sanctions to impose for violations, such as striking the offending paper; issuing an admonition, reprimand, or censure; requiring participation in seminars or other educational programs; ordering a fine payable to the court; referring the matter to disciplinary authorities.”2 Rule 10 of the Model Rules for Lawyer Disciplinary Enforcement also lists the possible sanctions, including a “reprimand” published in the official reports for the guidance of other lawyers or an admonition served upon the attorney in question, but which need not be published or even identify the attorney.

Admonitions are considered the most lenient sanction that a court can give. However, some courts will issue a more informal admonition, by reprimanding the attorneys and/or parties in their opinions. The Federal Circuit judges are known for their concise and eloquent use of language, so it is no surprise that they are just as good with words when it comes to admonishing the attorneys who darken their door. Included here are some of the Federal Circuit’s best zingers (some which were accompanied by sanctions, but many of which were not) in response to overzealous-to-the-point-of-unethical attorney conduct. Beware the wrath of an exasperated yet articulate judge.

Frivolous Claims and Proposed Claim Constructions

In Pac-Tec, Inc. v. Amerace Corp., the Federal Circuit considered—and was appalled by—the frivolity of claims made by plaintiff in seeking a declaration of noninfringement of defendant’s patents covering snow-plowable pavement markers.3 In its opinion sanctioning declaratory judgment plaintiff under Fed. R. App. P. 38 and awarding patent-holder its fees and double costs, it seethed:

This signifies the end, we trust, of Pac-Tec’s and its counsel’s singularly sanctionable sojourn among the hallowed halls of justice. Throughout this litigation, the conduct of Pac-Tec and its counsel have fouled the judicial nest. Continued on this appeal is the pestiferous pestilence that led to a Rule 11 sanction, striking portions of Pac-Tec’s post-trial pleading, imposition of attorney fees for willful infringement and dilatory litigation at the trial level, and imposition of sanctions by two appellate courts.

The appeal itself is frivolous, and its frivolity is unrelieved by even one of counsel’s many arguments. Beyond frivolity, however, the conduct of counsel in this litigation infects the judicial process with a disabling disease of deceit that the courts must act to expunge, for if courts remain passive, that disease will spread until it destroys a judicial process and a legal profession no longer worth preserving.

Forgetting entirely the responsibility imposed on him as an officer of the court, Pac-Tec’s counsel displays a deplorable depth of disrespect for the judicial process and a lamentable lack of candor in misstating the record and in disregarding the rules of procedure and the decided cases. His approach on this appeal is to fire a shotgun loaded with nothing but spurious arguments on infringement, invalidity, evidence exclusion, injunction scope, and judicial bias, none of which rises to the level of an argument even remotely based in fact or law. Eschewing the discomfort generated by extended discussion of counsel’s baseless arguments and attempts to retry his case on appeal, we describe them only so far as necessary to explicate the bases for the foregoing characterization.4

With respect to infringement, the Federal Circuit noted that the declaratory judgment plaintiff had never actually denied infringement, presented no evidence in conflict with patent holder’s evidence, and raised no genuine issue of material fact with respect to infringement, but nonetheless “brazenly burdens [patent holder] and this court with four pages of meritless argument in which it points to no claim language that does not read on its accused markers.”5 The Court also made clear that plaintiff’s counsel was liable jointly and severally with plaintiff for the fees and costs, and both the attorney and plaintiff were sanctioned.

In ICU Med., Inc. v. Alaris Med. Sys., the Federal Circuit considered the district court’s determination that patent holder’s “frivolous construction and assertion of the ‘spike’ claims in the amended complaint” justified sanctions under Rule 11.”6 The term “spike” was at issue, and was contained in the following independent claim (the “spike claim”):

A valve, comprising:

a body having a cavity therein;

a spike located within said cavity in said body; and

a seal located on said spike, said seal comprising a series of O-ring elements.7

The patent specification consistently described the spike as pointed for the purpose of piercing a seal inside the valve.8 Nonetheless, patent holder tried to argue that a “spike” could include “a non-pointed structure such as a tube or a straw.”9 The lower court rejected this construction, instead construing “spike” as “an elongated structure having a pointed tip for piercing the seal, which tip may be sharp or slightly rounded” and granted summary judgment of noninfringement with respect to the “spike claims.”10

The lower court also awarded sanctions and attorneys’ fees, but “acknowledged that the amount of its award of Rule 11 sanctions was ‘subsumed’ by the amount of attorney fees awarded under § 285” but that because it “had sufficiently admonished [patent holder] and its counsel for any improper conduct under Rule 11,”11 it “awarded no monetary sanctions for the violations of Rule 11.” The Federal Circuit affirmed.12

Angry, Verbal Attacks

In Nordberg, Inc. v. Telsmith, Inc., the Federal Circuit scolded an attorney whose temper got the best of him during oral arguments, both from the bench and again in the written opinion.13 During rebuttal arguments, the angry attorney pointed at opposing counsel and yelled “[t]hese two lawyers are bad lawyers. They deceived the examiners, they deceived the trial judge, and then they pull this here.”14 The Federal Circuit was not impressed, stating that:

This Court is accustomed to hearing forceful argument. However, counsel’s outburst was unacceptable. Strong conviction concerning the merits of one’s case is not justification for losing one’s composure at oral argument and making pointed accusations at opposing counsel. Opposing attorneys are expected to disagree concerning the merits of their cases. However, the essence of legal process is rational and civil advocacy of one’s position. Angry, intemperate verbal attacks have no place in this court.15

While the Court did not sanction the behavior, it made clear it could have qualified as sanctionable behavior under Fed. R. App. P. 46(c) as “conduct unbecoming a member of the bar.”16 The attorney escaped such sanctions because he “promptly apologized for his remarks when he was admonished from the bench during argument.”17

Inaccurate and Misleading Statements

It’s not just angry outbursts that aggravate the Federal Circuit. More frequently, it’s inaccurate or misleading statements about the applicable facts or the law that agitate the bench. In Dunhall Pharms., Inc. v. Discus Dental, Inc. the Court noted that a statement made by counsel was “simply untrue,” as demonstrated by a legal opinion evidencing that the attorney had a different understanding of the meaning of a claim term than the meaning that he represented to the Court.18 The Federal Circuit then dropped a footnote stating that:

The court notes its strong disapproval of counsel’s careless, and in this case inaccurate, representations of the facts surrounding this issue to the court. Counsel does not serve the best interests of his client in presenting to this court arguments that reflect less than rigorous respect for the truth and accuracy of the record before us.19

In Gaymar Indus. v. Cincinnati Sub-Zero Prods., the Court addressed the difference between “overstatements” or “bad lawyering,” which are not sanctionable, and “misrepresentation or litigation misconduct,” which are.20 It considered several different statements that the lower court had found to be misrepresentations, but which the Federal Circuit determined amounted to “sloppy argument, at worst.”21 It noted that:

While such sloppiness on the part of litigants is unfortunately all too common, it does not amount to misrepresentation or misconduct. In view of the serious consequences of a finding of misconduct, it is important that the district court be particularly careful not to characterize bad lawyering as misconduct.22

The statements in question included Defendant-Appellant’s representation that it needed a technical expert, but then months later asserted that it had maintained “from the outset” it did not need an expert.23 The Federal Circuit said this was merely an overstatement.24 The Court then considered Defendant-Appellant’s initial statement, in which it claimed that Plaintiff-Appellee and Patent Holder had denied that it had any obligations regarding validity, despite Plaintiff-Appellee having correctly told the judge that its “obligation to address validity would not arise until [defendant] had alleged and introduced evidence of invalidity.”25 The Federal Circuit disagreed with the lower court and held that “[t]here is no inconsistency. [Defendant-Appellant’s] consistent position was that [Plaintiff-Appellee] was taking the position that it did not have any initial burden with respect to validity—an accurate statement of [Plaintiff-Appellee’s] position.”26

Unfounded Allegations of Improper Conduct

While improper conduct is clearly unacceptable, so are unfounded allegations of improper conduct—a reminder to avoid pointing fingers when not justified. In Hoover Group, Inc. v. Custom Metalcraft, Inc. the Court warned that “[i]t surely is apparent to counsel for both sides that these allegations of frivolous or improper behavior are unwarranted. Such charges are as unprofessional as the conduct they purport to criticize; they waste the court’s time and squander the client’s money. They are not viewed with favor.”27

Incessant, Unnecessary Litigation

The Court was feeling particularly poetic (and exasperated) in Consol. World Housewares v. Finkle when it quoted Hamlet to describe a bizarre inventorship and contract dispute that was essentially created by Plaintiff-Appellant as “‘sicklied o’er with the pale cast of thought’ with which [Plaintiff-Appellant] has replaced its ‘native hue of resolution.’”28

The underlying facts involved the Plaintiff-Appellant entering entered into two different agreements, each with parties claiming to be the inventor of the same invention, prompting Plaintiff-Appellant to subsequently file an interference in Federal Court.29 The Federal Circuit affirmed that the federal courts had no jurisdiction because the PTO alone had authority to conduct interferences, and any remaining controversies were contractual in nature—and all due to Plaintiff-Appellant’s own poor decisions.30 The opinion, continuing to reference Hamlet, noted that Plaintiff-Appellant’s attempts to pursue:

What it calls a ‘patent case’ to extricate itself from that self-created circumstance, paints a picture appalling. With lawyers at its beck and call, and the PTO-gathered evidence available, [Plaintiff-Appellant] continues in this court its effort to avoid the consequences attendant on making its own decision, an effort that began with a blind rush to file a ‘patent case’ in the nearest courthouse. The crossclaim by [three of the defendants], none of whom has any interest in the invention, reflects a similarly pale cast of thought.31

Unethical Conduct at the PTO

In Bender v. Dudas, the Federal Circuit considered a case that “reads like a novel but represents the true story of hopes dashed, fees wasted, and dreams lost by hundreds of individual inventors caught up in the world of self-interested promoters who promise the world and deliver very little.”32 The case involved unethical conduct by an “invention promoter” who would exploit unsophisticated inventors by enticing them to pursue patent protection on even the most meritless inventions in exchange for a fee or percentage of future royalties.33 The invention promotor then hired a first patent attorney to file applications on all of the inventions, with a money back guarantee if a patent did not issue. In every case, however, this patent attorney did not speak with the inventor about their inventions or about the difference between design and utility applications, and proceeded to file only design applications with “embellished drawings” to avoid the promoter’s money-back guarantee.34 Then, the outstanding applications were passed to a second attorney, who continued to prosecute them, despite also failing to instruct the inventors about the difference between design and utility applications and failing to notify the inventors of final rejections until after the three-month period for responding to those rejections had expired.35

The PTO filed an administrative complaint against this second attorney, alleging numerous violations of PTO rules governing attorney conduct.36 The attorney appealed, arguing that substantial evidence did not support the PTO’s findings and that the PTO exceeded its authority and violated his constitutional rights.37

The Federal Circuit affirmed the lower court and admonished the attorney’s actions, stating that “the best of intentions cannot absolve [the attorney’s] complicity with [the promoter] in a scheme fraught with deception and adversely affecting a large number of unsuspecting inventors,” and that the attorney had “perpetuated the harm done to [the] applicants by treating what had previously transpired as nothing out of the ordinary when the circumstances of this entire matter—and [the attorney’s] conflicting interests in particular—were quite extraordinary” such that “any sanction less than exclusion would not provide the necessary deterrent effect.”38

Over-designating Under a Protective Order

The over-use of confidentiality designations may not be what comes to mind when we think of attorney misconduct, but in In re Violation of Rule 28 (d), the Federal Circuit exercised its authority to impose sanctions for violations of the Federal Rules of Appellate Procedure and the Federal Circuit Rules concerning confidentiality.39 The Court considered whether counsel for Defendants-Appellants should receive sanctions for impermissibly over-designating large sections of its appeals brief, including sections of its legal arguments. The Federal Circuit noted that “[o]ne of the most blatant examples of improper confidentiality markings involves case citations and parentheticals describing the cited cases which are used to support the proposition that ‘parol evidence should have been examined to resolve the ambiguity and determine the intent of the parties.’”40 The Court found that the “confidentiality markings in this case were so extensive that the non-confidential version of the brief is virtually incomprehensible” and that:

No good faith reading of our rule could support Sun’s marking of its legal arguments as confidential. The action of [Defendants-Appellants’] counsel bespeaks an improper casual approach to confidentiality markings that ignores the requirements of public access, deprives the public of necessary information, and hampers this court’s consideration and opinion writing.41

Apart from blasting the behavior in its opinion, the Court imposed a $1,000 sanction.42

1 37 CFR Part 10
2 Notes of Advisory Committee on Rules—1993 Amendment.
3 903 F.2d 796 (Fed. Cir. 1990).
4 Id. at 800-801.
5 Id. at 801.
6 558 F.3d 1368, 1381 (Fed. Cir. 2009).
7 Id. at 1374.
8 Id. at 1374-1375.
9 Id. at 1375.
10 Id. at 1376.
11 Id. at 1381.
12 Id.
13 82 F.3d 394, 398-399 (Fed. Cir. 1996).
14 Id. at 398
15 Id.
16 Id.
17 Id.
18 2000 U.S. App. LEXIS 26924 at *14 (Fed. Cir. 2000).
19 Id. at FN 3.
20 790 F.3d 1369, 1376-1377 (Fed. Cir. 2015).
21 Id. at 1373-1377.
22 Id. at 1377.
23 Id. at 1374.
24 Id.
25 Id. at 1375.
26 Id. at 1375.
27 66 F.3d 299, 305 (Fed. Cir. 1995)
28 831 F.2d 261, 264 (Fed. Cir. 1987).
29 Id. at 262-263.
30 Id. at 263-264.
31 Id. at 264.
32 490 F.3d 1361, 1362 (Fed. Cir. 2007).
33 Id. at 1363.
34 Id. at 1363-64.
35 Id. at 1364-65.
36 Id. at 1365.
37 Id. at 1366.
38 Id. at 1370.
39 635 F.3d 1352, 1360 (Fed. Cir. 2011).
40 Id.
41 Id.
42 Id. at 1361.