Vehicle Operation Technologies LLC v. American Honda Motor Co. Inc.

Filing 61

MEMORANDUM OPINION. Signed by Judge Richard G. Andrews on 9/12/2014. Associated Cases: 1:13-cv-00537-RGA et al.(ksr, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

Vehicle Operation Technologies LLC,
Plaintiff,

v.

Civil Action No. 13-537-RGA

American Honda Motor Co. Inc.,
Defendant.

Vehicle Operation Technologies LLC,
Plaintiff,
Civil Action No. 13-538-RGA

V.

BMW of North America LLC,
Defendant.

Vehicle Operation Technologies LLC,
Plaintiff,
Civil Action No. 13-539-RGA

V.

Ford Motor Company,
Defendant.

Vehicle Operation Technologies LLC,
Plaintiff,

v.

Civil Action No. 13-540-RGA

General Motors LLC,
Defendant.

Vehicle Operation Technologies LLC,
Plaintiff,

v.

Civil Action No. 13-541-RGA

Nissan North America Inc.,
Defendant.

Vehicle Operation Technologies LLC,
Plaintiff,

v.

Civil Action No. 13-542-RGA

Porsche Cars North America Inc.,
Defendant.

Vehicle Operation Technologies LLC,
Plaintiff,

v.

Civil Action No. 13-712-RGA

Mitsubishi Motors North America Inc.,
Defendant.

MEMORANDUM OPINION

Richard D. Kirk, Esq., and Stephen B. Brauerman, Esq., Bayard, P.A., Wilmington, DE; Eric M.
Buether, Esq. (argued), Buether Joe & Carpenter, LLC, Dallas TX, counsel for Plaintiff Vehicle
Operation Technologies LLC.
Stephanie Roberts, Esq., Steptoe & Johnson LLP, Washington DC, counsel for Defendant
American Honda Motor Co. Inc.
Frederick L. Cottrell, III, Esq., Richards, Layton & Finger, Wilmington, DE; Kristina N.
Hendricks, Esq., Kirkland & Ellis LLP, Chicago, IL, counsel for Defendant Porsche Cars North
America.
Benjamin J. Schladweiler, Esq., Seitz, Ross, Aronstam & Moritz LLP, Wilmington, DE, counsel
for Defendants Nissan North America and Ford Motor Company.
Reginald J. Hill, Esq., Jenner & Block, Washington DC, counsel for Defendant Nissan North
America.
Jason R. Mudd, Esq., Erise IP, P.A., Kansas City, KS, counsel for Defendant Ford Motor
Company.
Sean T. O'Kelly, Esq., O'Kelly Ernst & Bielli, Wilmington, DE; Charles Gorenstein, Esq., Birch
Stewart Kolasch & Birch LLP, Falls Church, VA, counsel for Defendant Mitsubishi North
America.
Richard L. Horwitz, Esq., Potter, Anderson & Carroon LLP, Wilmington, DE; Marc A. Cantor,
Esq., and Matthew M. Jakubowski, Esq., Brooks Kushman LLP, Detroit, MI, counsel for
Defendant General Motors LLC.
Jeffrey T. Castellano, Esq., Shaw Keller LLP, Wilmington, DE; Lionel M. Lavenue, Esq.
(argued), Finnegan, Henderson, Farabow, Garrett & Dunner, Reston, VA; R. Benjamin Cassady,
Esq., Finnegan, Henderson, Farabow, Garrett & Dunner, Washington DC, counsel for Defendant
BMW.

September

.ll,_, 2014

if..,A..../J(}, ,~
ANDREWS, UNITEd

~lf~~~TRICT JUDGE:

Presently before the Court for disposition are Defendants BMW of North America LLC,
Ford Motor Company, General Motors LLC, Nissan North America Inc., Porsche Cars North
America Inc., and Mitsubishi Motors North America Inc.'s Motions for Rule 11 Sanctions.
(1:13-cv-00538-RGA D.I. 21; 1:13-cv-00539-RGA D.I. 21; 1:13-cv-00540-RGA D.I. 25; 1:13cv-00541-RGA D.I. 22; 1:13-cv-00542-RGA D.I. 22; 1:13-cv-00712-RGA D.I. 24). These
matters have been fully briefed. (1:13-cv-00538-RGA D.I. 22, 26, 28, 31, 56; 1:13-cv-00539
D.I. 23, 27, 29, 56; 1:13-cv-00540 D.I. 27, 31, 33, 57; 1:13-cv-00541 D.I. 53; 1:13-cv-00542 D.I.
23, 24, 27, 29, 56; 1: 13-cv-00712 D.I. 25, 29, 31, 35, 58). The Court heard oral argument on
June 27,2014. (1:13-cv-00538-RGA D.I. 52). For the reasons set forth herein, the Defendants'
Motions for Rule 11 Sanctions are GRANTED IN PART AND DENIED IN PART.

PROCEDURAL BACKGROUND
On April 5, 2013, Vehicle Operation Technologies ("VOT") brought six separate actions
against Honda, BMW, Ford, General Motors, Nissan, and Porsche alleging infringement of U.S.
Patent No. 7,145,442. VOT filed an additional suit against Mitsubishi on April23, 2013.
An initial scheduling conference was held on August 6, 2013. During the conference, counsel
for BMW informed VOT that due to claim scope disavowal the case was ripe for immediate
dismissal. BMW also requested leave from the Court to file a Rule 11 motion, which the Court
granted.
On September 30, 2013, Mitsubishi, Porsche, BMW, Ford, Nissan, and General Motors
filed motions for violation of Rule 11 by the Plaintiff and Plaintiffs attorneys. (1: 13-cv-00712RGA D.I. 24; 1: 13-cv-00539-RGA D.I. 21; 1: 13-cv-00541 D.I. 22). Honda did not join in the
motions for violation ofRule 11. (1:13-cv-00538-RGA D.I. 52 at 20). On September 25,2013,

2

five days prior to the Defendants bringing their Rule 11 motions, Plaintiff's pro hac vice
attorneys, Marc A. Fenster, Esq., Alexander C. D. Giza, Esq., and John P. Hely, Esq., of Russ
August & Kabat, withdrew from the case. (1 :13-cv-00538-RGA D.l. 20). 1 On October 2, 2013,
two days after the Defendants filed their Rule 11 motions, Eric W. Buether, Esq., Christopher M.
Joe, Esq., Brian A. Carpenter, Esq., and Monica Tavakoli, Esq., ofBuether Joe & Carpenter LLC
filed for pro hac vice admission to represent the Plaintiff. (1: 13-cv-00538-RGA D.l. 23). The
Court granted this motion on October 10, 2013. Throughout this litigation, lawyers from Bayard,
P.A. have served as local counsel for the Plaintiff. (1:13-cv-00538 D.l. 1 at 5).
ANALYSIS
BMW and Mitsubishi move the Court to dismiss the case and to award attorney's fees
and costs pursuant to Rule 11 for filing the present suit without the proper pre-suit investigation.
(1: 13-cv-00538-RGA D.l. 22). Ford, General Motors, and Porsche move the Court to dismiss
for the same Rule 11 violation. (1: 13-cv-00540-RGA D.l. 27). Nissan2 joined BMW and
Mitsubishi' s motion for both dismissal and an award of attorney's fees and costs. ( 1: 13-cv00541, D.l. 22).
Plaintiff and Plaintiff's Attorneys Violated Rule 11
The determination of whether the Plaintiff and the Plaintiff's attorneys violated Rule 11
requires the determination of whether an objective pre-suit investigation would have disclosed
that the accused products did not infringe the patent's claims. The Court will address this in two
parts: First, the Court will determine whether there exists a prosecution disclaimer that would

1

The Defendants waived their Rule 11 motion against the attorneys associated with Russ August & Kabat during
oral argument. (1:13-cv-00538-RGA D.I. 52 at 21).
2
VOT argued that Nissan had failed to provide it with notice of the proposed Rule 11 motion. (D.I. 53 at 2). Nissan
provided evidence that it notified VOT on September 6, 2013 that it would join the Rule 11 motions. (D.I. 59-1 at
2). This is sufficient under Rule 11 's safe harbor provision. See In re Mondelli, 508 F. App'x 131, 135 (3d Cir.
2012), cert. denied, 133 S. Ct. 2864 (2013).

3

read out the accused vehicles' displays and thus prevent any infringement claim under the '442
patent. Second, the Court will determine whether an objective pre-suit investigation would have
disclosed the prosecution disclaimer and that the accused products did not use dedicated
displays.

1) Was there a prosecution disclaimer that would read out the accused vehicles'
displays?
a. Prosecution Disclaimer
I have already ruled on the issue of prosecution disclaimer and adopt those findings here.
(1:13-cv-00538 D.I. 52 at 5-12). In sum, "The doctrine ofprosecution disclaimer is well
established in Supreme Court precedent, precluding patentees from recapturing through claim
interpretation specific meanings disclaimed during prosecution." Omega Eng'g, Inc, v. Raytek

Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (internal citations omitted). With this in mind, I
found that here the prosecution history is clear. "The inventor repeatedly and unambiguously
disclaimed the plain reading of the term 'display"' and specifically disclaimed any type of
display other than a "dedicated display." (D.I. 52 at 8, 9). Furthermore, in an attempt to
overcome a prior art reference, the inventor unmistakably indicated that the "dedicated display"
had to present the relevant information "at all times."

b. Literal Infringement
"To show infringement of a patent, a patentee must supply sufficient evidence to prove
that the accused product or process contains, either literally or under the doctrine of equivalents,
every limitation of the properly construed claim." Seal-Flex, Inc. v. Athletic Track & Court

Canst., 172 F.3d 836, 842 (Fed. Cir. 1999). A patent claim is literally infringed when "every
limitation recited in the claim is found in the accused device, i.e., when the properly construed
claim reads on the accused device exactly." Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398,

4

1405 (Fed. Cir. 1996). "The absence of even a single limitation of [a claim] from the accused
device precludes a finding of literal infringement." Kahn v. Gen. Motors Corp., 135 F.3d 1472,
1477 (Fed. Cir. 1998).
The Plaintiffs complaints accuse Defendants' products of infringing the '442 patent.
Specifically, the Plaintiff, by example, accuses the following cars and technologies:
•

BMW: X5 M and X6 vehicles when equipped with the "Super Handling-All Wheel
Drive System." (1:13-cv-00537-RGA D.I. 1)

•

Nissan: Nissan Juke and all of Nissan's other vehicles that are equipped with
Nissan's "Torque Vectoring" system. (1 :13-cv-00541-RGA).

•

Ford: Ford Focus Electric, Ford C-Max hybrid, Ford Fusion Hybrid, Ford MKZ
Hybrid, Ford Escape hybrid, and all of Ford's vehicles equipped with Ford's all
wheel drive. (1: 13-cv-00539-RGA).

•

General Motors: Chevy Volt. (1: 13-cv-00540-RGA).

•

Porsche:

911 Carrera 4/4s all-wheel-drive models and other Porsche vehicles

equipped with the Porsche Traction Management System. (1: 13-cv-00542-RGA).
•

Mitsubishi: Vehicles equipped with "Super All Wheel Control Systems. (1: 13-cv00712-RGA).

The Defendants argue that for each example vehicle there is no dedicated display, and as a
dedicated display is required by each patent claim, there can be no literal infringement. The
Court agrees. 3

3

The Court notes that on July 24, 2014, the Plaintiff filed a letter with the Court indicating that unless "at all times"
was construed to mean when "the claimed system is activated," VOT would stipulate that none of the Defendants
infringe the '442 patent. (1: 13-cv-00538-RGA D.l. 55 at 4-5). If"at all times" means when "the claimed system is
activated," VOT stated it could not say whether any of the Defendants' accused products infringe. If, however, "at
all times" means when the display is on, VOT conceded that there could be no infringement under that construction.
ld. at 3-4. The fine distinction that VOT raises about the meaning of"at all times," which was part of Defendants'

5

Porsche
The Plaintiff argues that the Porsche vehicles named in the complaint "include an
apparatus that produces and monitors sensory data regarding drive torque of a Porsche vehicle
and displays such information to a driver via a display .... " (D.I. 1: 13-cv-00539-RGA D.I. 27 at
17, 18). The Plaintiff further maintains that the display is a "dedicated display." !d. The display
referenced by the Plaintiff is depicted below.

(1: 13-cv-00539-RGA D.I. 27 at 17).
The Defendants, however, point out that the publicly available manual for the display,
identified by the Plaintiff, indicates that it is not a dedicated display, but is instead a display

proposed construction in the claim construction briefing (1: 13-cv-00712-RGA D.I. 47 at 12-16), was not raised by
VOT in response to Defendants' proposed construction. (See generally 1:13-cv-00712 D.I. 48).

6

capable of providing a multitude of information as configured by the driver. (1: 13-cv-00542RGA D.I. 23 at 13). This is illustrated by the below picture from the Porsche Manual.

(1:13-cv-00542-RGA D.I. 23 at 13). Thus, as literal infringement requires that all claim terms
are present within the infringing device, and here each and every claim of the '442 patent
requires a dedicated display that presents the claimed information at all times, and there is
unmistakably no such display, the '442 patent cannot be literally infringed. 4
General Motors
The Plaintiff argues that General Motors' exemplar vehicle, the Chevy Volt, infringes the
'442 patent as it "monitors and displays the power consumption" via a dedicated display (shown
below) "at any time." (1: 13-cv-00539-RGA D.I. 27 at 18, 19).

4

The Court will take up the issue of DOE regarding all of the accused manufacturers' vehicles after addressing
literal infringement for each manufacturer.

7

SETIINCiS, SIGHTS AND SOUNDS

--·-"·--·-----·----·--.,.. Press the CLIMATE button on the
center stack to view the Climate Control
touch screen.
.,.. Press the AUTO button on the center
stack to have the system operate
automatically.
The Climate Power gauge on the screen
displays the Impact of the climate settings
on energy consumption. Alower percentage indicates less energy is being used.
See Climate Settings
on page 9.
l!J~ij[!

Note: UOO.r certain conditions. the engine will
start to ensure futl heat and defrost capability.

!d. General Motors points out that that the display identified by the plaintiff is a "multifunction" display capable of presenting information as configured by the user. (1: 13-cv-00542RGA D.l. 23 at 14). It is evident from the Plaintiffs own description that the display is not a
dedicated display, but is instead a display capable of presenting a multitude of information as
selected by the user. Therefore, there can be no literal infringement of any claim of the '442
patent.

The Plaintiff alleges that Ford's vehicles that are equipped with Ford's All Wheel Drive
infringe the '442 patent. (1 :13-cv-00539-RGA D.l. 27 at 18). In support of this argument, the
Plaintiff argues that "Ford's all wheel drive vehicles include a display device that receives and
displays the torque forces delivered at the wheels of a motor vehicle .... " !d. The Plaintiff
points to the following image in support.

8

!d. In response Ford argues that the displays present in the relevant vehicles are not dedicated
displays that present the claimed information at all times. (1: 13-cv-00542-RGA D.I. 23 at 17).
It is clear that the displays present "a variety of mode and view options." For example, the
owner's manual for the 2013 Ford Focus Electric, one of the accused vehicles, clearly indicates
in its publicly available owner's manual that its displays are capable of presenting the following

_

information:

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9

(1:13-cv-00542-RGA D.I. 23 at 17, 18). It is clear that the displays in the accused vehicles are
not "dedicated displays" for the presentation of the claimed information at all times. Therefore,
there can be no literal infringement.
BMW
The Plaintiff accuses BMW's vehicles that are equipped with BMW's Dynamic
Performance Control System, which "include[s] an apparatus that produces and monitors sensory
data regarding drive torque of a BMW vehicle and displays such information to a driver via a
display .... " (1 :13-cv-00538-RGA D.l. 26 at 16). The Plaintiff points to the center console
display in the vehicle, shown below, that is capable of showing torque distribution. !d.

(1: 13-cv-00538-RGA D.l. 26 at 17). However, as Plaintiffs own brief explains, the display is

user configurable, i.e., a user must select certain options to display the torque information, and
thus is not a "dedicated display" as it is capable of displaying other information. !d. VOT's own
brief presents the following image as representative of BMW's accused system.

10

The Control Displdy shows how xDrive and
Dynamic Perfo1 mane~;; Control are distributing
the drive forces.

1. "Vehicle Info"
2. ''Torque distribution''

ld. As the above image shows, to display the "torque distribution," the user must make various

selections to view the "torque distribution" data, and thus is not a dedicated display. Therefore,
as BMW's display is not dedicated, there can be no literal infringement of the '442 patent.
Mitsubishi
The Plaintiff accuses Mitsubishi's vehicles equipped with the "Super All Wheel Control"
system of infringing the '442 patent. (1:13-cv-00538-RGA D.I. 26 at 18). The Plaintiff
contends that the center console display meets the limitations of the '442 patent as the alleged
infringing system "include[s] an apparatus that produces and monitors sensory data regarding
drive torque of a Mitsubishi vehicle and displays such information to a driver via a display .... "
ld. In support of this argument, the Plaintiff cites the following image:

11

o.t•r.,.......

,.,rialor

..tutrib.......

!d. As Mitsubishi points out, however, the publicly available owner's manual makes clear that

the display identified by the Plaintiff is not a dedicated display that presents the claimed
information at all times. (1: 13-cv-00538-RGA D.I. 22 at 17). Instead, the user is able to cycle
through various information, using a switch.
<Vohlolee for USA>

Multi info1ma1fon dillplay

AC70896SAB

!d. Therefore, as the display is plainly not a dedicated display that presents the claimed

information at all times, there can be no literal infringement of the '442 patent.
Nissan
The Plaintiff accuses Nissan of infringing the '442 patent and cites as an exemplar
product the Nissan Juke. (1:13-cv-00541-RGA D.I. 1). However, the Nissan Juke's Vehicle
Information Display can selectively show an odometer, twin trip odometer/trip computer, or

12

torque vectoring A WD display. (1: 13-cv-00541-RGA D.I. 22 at 2). Furthermore, as the publicly
available Nissan Juke Owner's Manual makes clear, this information can be cycled through by
the user depressing the mode switch. Id. This is exhibited in the below images.

1

ebide
Information
Dls:pluy
\

Vehicle Information Display Screens
T.,•• ,

\."'tOll''"*

A\\b

Id. As is clear from the above images, the display does not constantly display the relevant

information, and thus is not a "dedicated display," let alone a dedicated display that presents the
claimed information "at all times."
In summary, it is indisputable that the vehicle models and technology identified as
exemplars by the Plaintiff, for each of the car manufacturers that filed Rule 11 motions, do not
literally infringe the '442 patent as they do not have a "dedicated display" that shows the claimed
information at all times.

13

c. Doctrine of Equivalents
For each of the Defendants, the Plaintiff additionally maintains that the Defendants
infringe based upon the doctrine of equivalents. (1:13-cv-00537-RGA D.l. 1; 1:13-cv-00541RGA D.l. 1; 1:13-cv-00539-RGA D.l. 1; 1:13-cv-00540-RGA D.l. 1; 1:13-cv-00542-RGA D.l.
1; 1:13-cv-00712-RGA D.l. 1).
A patent claim may be infringed under the doctrine of equivalents "ifthere is
'equivalence' between the elements of the accused product or process and the claimed elements
ofthe patented invention." Warner-Jenkinson Co., Inc. v. Hilton Davis Chern. Co., 520 U.S. 17,
21 (1997). To apply this doctrine, the fact finder must ask, "Does the accused product or process
contain elements identical or equivalent to each claimed element of the patented invention?" !d.
at 40. Further, "[t]he determination of equivalence should be applied as an objective inquiry on
an element-by-element basis." !d. However, if during the prosecution of the patent the inventor
surrenders subject matter originally covered by the claim in order to overcome a rejection from
the patent office, the inventor cannot latter reclaim that scope through the doctrine of
equivalents. See Festa Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 733
(2002).
As discussed above, it is clear that in order to overcome the PTO's rejection due to prior
art, the inventor surrendered much of the scope of a display. Specifically, the inventor limited
the scope of the term display, by indicated that it was a "dedicated display" that presented the
claimed information "at all times." Therefore, as none of the aforementioned accused products
has a dedicated display that presents the claimed information at all times, the products cannot
infringe under the doctrine of equivalents, as all other forms of a display, other than a dedicated
display showing the claimed information at all times, were surrendered by the inventor.

14

2) Was there a Rule 11 violation?
Rule 11 "provides that an attorney who fails to either 1) read the pleading; 2) make a
reasonable inquiry into the factual and legal legitimacy of the pleading; or 3) file the pleading
only for a proper purpose, shall be sanctioned." Simmerman v. Carino, 27 F.3d 58, 62 (3d Cir.
1994). The purpose behind the rule is "to curb abusive litigation tactics and misuse of the court's
process but ... not ... to hinder zealous advocacy .... " Gaiardo v. Ethyl Corp., 835 F.2d 479,
482 (3d Cir. 1987). The Third Circuit has found that the relevant standard for compliance with
this rule is that an attorney's conduct must be objectively reasonable under the circumstances.

Simmerman, 27 F.3d at 62. In other words, the Third Circuit has explained that the goal of Rule
11 is to "impose[] on counsel a duty to look before leaping and may be seen as a litigation
version of the familiar railroad crossing admonition to 'stop, look, and listen. "' 5 Mary Ann

Pensiero, Inc. v. Lingle, 84 7 F .2d 90, 94 (3d Cir. 1988).
To comply with the standards of Rule 11, an attorney must "conduct a reasonable
investigation of the facts and a normally competent level of legal research to support the
presentation." !d. (internal quotation marks omitted). It is paramount that the Court refrain from
hindsight bias, as the attorney's conduct must be judged based upon what was reasonable at the
time of the pleading, motion, or other paper. !d. Furthermore, the Court must be cautious when
applying Rule 11, as it is not meant to act as an automatic penalty against an attorney for losing
an argument or even to inhibit "imaginative legal or factual approaches .... " !d. Instead, the
rule is meant to be applied sparingly to deter parties from filing baseless actions or frivolous
motions. See Doeringv. Union Cnty. Bd. ofChosen Freeholders, 857 F.2d 191, 194 (3d Cir.
1988).

5
To the same effect, see Stephen Stills, For What It's Worth ("Stop, hey, what's that sound? Everybody look what's
going down!").

15

The Defendants argue that the Plaintiffs counsel violated Rule 11 by bringing the present
lawsuits. Specifically, the Defendants maintain that the Plaintiff did not conduct an adequate
pre-suit investigation, as any reasonable pre-suit investigation would have "revealed that the
asserted claims require[ d) 'dedicated displays,"' whereas the Defendants' products use multifunction displays. (1: 13-cv-00538 D.I. 22 at 15). Furthermore, the Defendants maintain that
"even a cursory comparison of the prosecution history of the '442 patent to the publicly available
information about the accused products clearly reveals (without expert analysis) the frivolity of
VOT's infringement allegations .... " !d. at 15-16. The Defendants maintain that the inventor
disclaimed any patent scope that could have covered the Defendants' multi-function displays and
thus there is no basis in law or fact for VOT to assert an infringement claim against any of the
defendants. !d. Conversely, the Plaintiff maintains that the Defendants' argument is based upon
an inaccurate belief that the inventor disclaimed multi-function displays. (D.I. 27 at 16).
The Court will address whether the Plaintiff and the Plaintiffs attorneys complied with
Rule 11 in two parts. First, the Court will look to whether the attorneys acted in an objectively
reasonable manner under the circumstances when they interpreted the term "display." Second,
the Court will look to whether the attorneys acted in an objectively reasonable manner under the
circumstances when they determined that the Defendants' vehicles infringed the patent.

a. Objectively reasonable construction of the term display
The Plaintiffs attorneys have maintained that there was no prosecution disclaimer. Here,
any reasonable pre-suit investigation should have included a review of the prosecution history of
the '442 Patent, which would have included the USPTO's Notice ofNon-Compliant Amendment
of October 20,2005 along with the inventor's November 9, 2005 amendment. As discussed in
the Court's Markman Opinion, the inventor drew clear distinctions between his invention and

16

various other U.S. Patents. (D.I. 52 at 5-12). In each discussion, the inventor specifically
disavowed claim scope to overcome a prior art reference.
The inventor's October 20, 2005 amendment unambiguously overcomes three prior art
references, U.S. Patent No. 6,721,634, U.S. Patent No. 5,880,710, and U.S. Patent No.
4,594,572, by limiting the scope of his patent claim. For instance the inventor states, in regards
to the '634 patent, that the '634 patent utilized a "freely programmable instrument cluster within
a vehicle whose various types of displays are selectable by the driver. These displays are not
dedicated displays as with the present invention." As I stated in my Markman Opinion, this
statement alone is sufficient to disclaim part of the scope of the disputed terms and thereby
require the term display to mean a "dedicated display." The inventor made the same basic
statements to the PTO concerning both the '710 and the '572 Patents. The inventor also clearly
indicated that the display is to be dedicated "at all times" by stating, that the '345 Patent "is not a
dedicated system which always presents specific types of information at all times as is done with
the present invention .... "

(1: 13-cv-00538-RGA D.I. 22-9 at 45).

While the Federal Circuit has "declined to apply the doctrine of prosecution disclaimer
where the alleged disavowal of claim scope is ambiguous," the doctrine of prosecution
disclaimer "is well established in Supreme Court precedent" and the Federal Circuit "ha[s]
adopted that doctrine as a fundamental precept in [its] claim construction jurisprudence." Omega
Eng'g, Inc, v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). Here, an objectively
reasonable pre-suit investigation would have led an attorney to the conclusion that the only
plausible reading of the aforementioned disclaimers was to limit the scope of the term "display." 6

6

I do not lightly use the word "frivolous." In my opinion, however, no reasonable attorney or judge could conclude
that the argument that there was no disclaimer of claim scope was anything but frivolous.

17

In further support of the argument that Plaintiffs claim construction is reasonable, the
Plaintiff argues that while the inventor may have discussed a "dedicated display," there was no
discussion of a "multi-function display." (1: 13-cv-539-RGA D.l. 27 at 12). While this is true, I
think it is simply a matter of semantics. The inventor clearly limited his claim to "dedicated
displays" that present the claimed information "at all times." By limiting the claim to "dedicated
displays" the inventor was excluding all other forms of a display, including what the parties have
termed a "multi-function display." The Court has not construed the term "multi-function
display," but it is evident the term, as used by the parties, simply connotes a display that is
capable of displaying a multitude of information as selected by some mechanism, such as user
selection. It is not a dedicated display. The Plaintiffs argument that the inventor did not
specifically disavow a "multi-function" display is literally true, but, at the same time, of no
consequence. It would be the equivalent of the Plaintiff, choosing any other synonym for a nondedicated display, pointing to that synonym, and stating that the inventor also did not specifically
disavow that display either. Here, we have a clear, unambiguous disavowal of claim scope for
non-dedicated displays, which would have been apparent in any pre-suit investigation. At any
later time, with the issue having been disclosed in the Rule 11 motion, any reasonable counsel
must have recognized the equivalent of a railroad crossing with the loud sound of a nearby train
whistle.
In arguing that the Plaintiffs attorney's claims are objectively reasonable, the Plaintiff
additionally maintains that the dependent claims of the '442 patent indicate that the term
"display" must "clearly cover[] devices with multi-function displays." (1: 13-cv-00539-RGA
D.I. 27 at 10). This is not an accurate conclusion. It is well settled law that, independent of what
is written in the claims, when an inventor disavows claim scope in the prosecution history, the

18

disavowal narrows the claim "congruent with the scope of the surrender." Omega Eng'g, 334
F.3d at 1324. Thus, independent of whether the dependent claim does in fact cover a "multifunction" display, this scope has been disavowed. Any reasonable pre-suit investigation would
have come to this same conclusion.

b. Objectively reasonable investigation ofallegedly infringing vehicles
The Court now turns its attention to whether an objectively reasonable pre-suit
investigation would have uncovered that each and every claim limitation did not read on the
accused devices, either literally or under the doctrine of equivalents. According to the
Defendants, and undisputed by the Plaintiff, the relevant displays' abilities were easily accessible
in publicly available owner's manuals. (1:13-cv-00538-RGA D.I. 22 at 17; 1:13-cv-00541-RGA
D.I. 22 at 2; 1:13-cv-00542-RGA D.I. 23 at 12-20). There is no doubt in the Court's mind that if
the Plaintiffs attorneys had performed the requisite pre-suit investigation, as, for example by
looking at the relevant pages of the owner's manual, it would have been evident that the accused
vehicles did not meet the display limitation of the '442 patent.
The Plaintiffs attorneys' continued insistence to litigate this matter, even after being
apprised by the Defendants that the accused products could not possibly infringe, further
highlights that the Plaintiff's attorneys simply turned a blind eye to the actual vehicles that they
were accusing of infringement. For example, regarding BMW's accused products, BMW's
counsel sent letters on at least five separate occasions to Plaintiffs counsel. (1: 13-cv-0053 8RGA D.I. 22 at 24). BMW's counsel sent a letter on July 17, 2013 explaining how the inventor's
disclaimer excluded BMW's products. (1:13-cv-00538-RGA D.I. 22-1 at 20-23). Then on
August 5, 2013, after BMW had not received a response from Plaintiffs counsel concerning the
July 17, 2013 letter, BMW reiterated its arguments and warned the Plaintiffthat it intended to

19

file a Rule 11 motion. ld. at 25-26. Similar letters were sent by the other defendants. BMW
additionally apprised the Plaintiff of the disclaimer issue at both the case scheduling conference
on August 6, 2013 and when BMW served the Plaintiff with a copy of the present Rule 11
motion on September 4, 2013. Furthermore, despite Plaintiffs current pro hac vice attorneys
arguing that they should have had a clean slate from the time that they noticed the Court of their
appearance, before they ever took the case, Eric W. Buether, Esq., Christopher M. Joe, Esq.,
Brian A. Carpenter, Esq., and Monica Tavakoli, Esq., ofBuether Joe & Carpenter, LLC, had an
obligation to review their client's file. Here, this would include the letters sent by the
Defendants and the owner's manuals.
For the reasons stated above the Court finds that a reasonable objective pre-suit
investigation would have indicated that the present action is without any merit and violates Rule
11(b)(2).
Sanctions
BMW, Mitsubishi, Ford, General Motors, Porsche, and Nissan move the Court to dismiss
their cases for violations of Rule 11. BMW and Mitsubishi additionally move the Court to award
attorney's fees and costs.
Rule 11 states:
(1) In General, If, after notice and a reasonable opportunity to respond, the court
determines that Rule 11 (b) has been violated, the court may impose an
appropriate sanction on any attorney, law firm, or party that violated the rule or
is responsible for the violation. Absent exceptional circumstances, a law firm
must be held jointly responsible for a violation committed by its partner,
associate, or employee.

(4) Nature of a Sanction. A sanction imposed under this rule must be limited to
what suffices to deter repetition of the conduct or comparable conduct by others
similarly situated. The sanction may include nonmonetary directives; an order

20

to pay a penalty into court; or, if imposed on motion and warranted for effective
deterrence, an order directing payment to the movant of part or all of the
reasonable attorney's fees and other expenses directly resulting from the
violation.
FED.

R. CIV. P. 11.

I. Dismissal
The Third Circuit has made clear that the goal of Rule 11 is "to impose[] on counsel a
duty to look before leaping." Here, there is no evidence that the Plaintiff or Plaintiffs counsel,
whether local, previous pro hac vice or present pro hac vice, made any such attempt. Instead,
the Plaintiff and Plaintiffs counsel simply continued to litigate legally baseless arguments, such
as the lack of a prosecution disclaimer. They failed to take the Third Circuit's advice to "stop,
look, and listen" once a Rule 11 motion was filed. Mary Ann Pensiero, Inc., 847 F.2d at 94.
They made the very same baseless arguments after the Rule 11 motion was filed, at the Markman
hearing and at oral argument on this motion. See id. It is evident that despite the warnings by
the Defendants that there was prosecution disclaimer, and the filing of a Rule 11 motion, the
Plaintiff and Plaintiffs attorneys continued to press their baseless arguments.
While the Court is aware that it must be cautious in applying Rule 11 sanctions, it is
evident to the Court that Plaintiffs attorneys failed at conducting an adequate pre-suit
investigation. While patent law is certainly complicated, prosecution history disclaimer is a
bedrock of the patent world. Here there was a single document, which was identified by the
Defendants, which clearly showed, in combination with the publicly available vehicle owner's
manuals, that the Defendants' products did not infringe.

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Therefore, while dismissal of a lawsuit with prejudice is the harshest sanction available to
the Court, it is warranted here. 7 Plaintiffs attorneys litigated this suit for over a year, without
regard to the prosecution disclaimer that made this suit objectively baseless, or for that matter
Rule 11 's basic requirement for an adequate pre-suit investigation. Furthermore, as here the
entire suit is objectively baseless, any lesser sanction would be ineffective. The Court grants
BMW, Mitsubishi, Ford, General Motors, Porsche, and Nissan's Motion For Rule 11 Sanctions
as it pertains to their request for dismissal.

2. Monetary Sanctions
The Plaintiffs attorneys maintain that Rule 11 sanctions are not appropriate against the

pro hac vice attorneys from Buether Joe & Carpenter, LLC, as they did not sign the original
pleading and "we weren't given notice and an opportunity to take some action to cure [the]
allege[d] Rule 11 motion." (1 :13-cv-00538-RGA D.I. 52 at 61). Instead, the Plaintiffs
attorneys maintain that the appropriate firm (if any) to be sanctioned is Russ August & Kabat.

!d. at 61. 8
The fact that the Plaintiffs current pro hac vice attorneys did not sign the original
complaint does not prevent the Court from granting Rule 11 sanctions against them. Rule 11
reads, "By presenting to the court a pleading, written motion, or other paper--whether by signing,
filing, submitting, or later advocating it--an attorney or unrepresented party certifies that to the
best of the person's knowledge, information, and belief, formed after an inquiry reasonable under
the circumstances .... " FED. R. CIV. P. 11(b) (emphasis added). Here, while Eric W. Buether,
Esq., Christopher M. Joe, Esq., Brian A. Carpenter, Esq., and Monica Tavakoli, Esq., did not

7

This is not much of a sanction under the present circumstance, where it seems to the Court that a motion for
summary judgment of non-infringement would be granted were one pending.
8
The Court notes that as the Court found that Rule ll(b)(2) was violated, Rule 11 prevents the Court from awarding
monetary damages against the represented party. (See FED. R. CIV. P. RULE ll(c)(5)(A)).

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sign the original complaint, by continuing the suit, they unquestionably "later advocated it."
Furthermore, the advisory committee note for Rule 11 (b) reads in part:
However, a litigant's obligations with respect to the contents of these papers are
not 'measured solely as of the time they are filed with or submitted to the court, but
include reaffirming to the court and advocating positions contained in those
pleadings and motions after learning that they cease to have any merit. For example,
an attorney who during a pretrial conference insists on a claim or defense should
be viewed as "presenting to the court" that contention and would be subject to the
obligations of subdivision (b) measured as of that time.
FED. R. CIV. P. 11, Advisory Committee Notes to the 1993 Amendment. Here, not only did the
pro hac vice attorneys from Buether Joe & Carpenter, LLC accept the case, despite there being a

Rule 11 motion filed on the docket, but the attorneys argued at the Markman Hearing and Rule
11 hearing, and filed numerous briefs. Thus, the attorneys affirmed to the Court that they were
adopting the initial complaint as their own, and that they then believed that the complaint had
merit and did not violate Rule 11.
The Court notes that the Plaintiff's pro hac vice attorneys filed a letter with the Court
dated July 25, 2014 arguing that they could not be subject to Rule 11 sanctions. (1: 13-cv-00538
D.l. 56). The attorneys make two main arguments. First, "The filing of [their] notice of
appearance does not even implicitly advocate anything in a previous pleading or other paper filed
with a court by former counsel" as they may have been trying to narrow or modify a previously
held position. !d. at 2. Second, their briefing of the Rule 11 motion did not serve to advocate
any previously held position. The Court finds these arguments to be meritless. First, at no point
have the pro hac vice attorneys from Buether Joe & Carpenter, LLC limited the suits in any
meaningful way. Thus, the attorneys' first argument seems to be a red herring. Second, while it
is certainly true that attorneys, or a client, can retain different counsel to defend against a Rule 11
motion without opening up the different counsel to possible liability for everything that has gone

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on before that, this is not what occurred in this case. Here, the pro hac vice attorneys from
Buether Joe & Carpenter, LLC were, and are, providing general representation to VOT regarding
this case. Their actions in front of this Court have at no time been limited to the context of
defending the Plaintiff against the Rule 11 motion. This is evidenced by the simple fact that the
pro hac vice attorneys from Buether Joe & Carpenter, LLC, and specifically Eric W. Buether,

Esq., who argued before the Court, represented their client in a Markman hearing just hours
before the Rule 11 motion.
It would be strange if the Court were to find that substituting counsel could not be held
responsible for prior pleadings that they later advocate. This would allow for one set of
attorneys to file a lawsuit that violated Rule 11, for those attorneys to withdraw their appearance,
and then for the incoming attorneys to continue the lawsuit without sharing any of the
responsibility for its lack of merit.
Finally, the Court reluctantly finds that the Plaintiffs substitute counsels' argument that
the Defendants had to refile their Rule 11 motion has merit. The Plaintiffs substitute counsel
noticed their appearance two days following the filing of the Rule 11 motion. Substitute counsel
then defended the Rule 11 motion, filed all the relevant briefs, and argued for claim construction
positions consistent with the original complaint. Counsel is expected to conduct a pre-suit
investigation before noticing their appearance. A pending Rule 11 motion should have certainly
set off red flags in the minds of the attorneys and served to put the Plaintiffs attorneys on notice.
The Plaintiffs attorneys could not have missed the red flag, and should have spent additional
time reviewing the case file. To now claim that they should not be subject to the Rule 11 motion
is contrary to reason. However, until oral argument, BMW and Mitsubishi failed to put the
Plaintiffs new pro hac vice attorneys on notice that BMW and Mitsubishi would be seeking

24

monetary sanctions from them. Therefore, the Court finds that Plaintiffs attorneys were not
provided proper notice, and therefore may not be sanctioned under Rule 11.
However, if Counsel had been properly noticed that BMW and Mitsubishi were seeking
sanctions against the Plaintiffs new counsel, the Court would certainly have found monetary
sanctions appropriate against all of the Plaintiffs attorneys in this case. 9 BMW and Mitsubishi
argue that dismissal of the case alone is not adequate to deter Plaintiffs counsel from further
violations of Rule 11. The Court agrees. The Plaintiffs attorneys here did more than simply
continue to litigate a baseless lawsuit, but maintained these lawsuits despite being provided clear
and undeniable evidence throughout the litigation that the Defendants could not infringe the '442
patent as a matter of law. The attorneys acted in a willfully blind manner to the basics of patent
law and the evidence they had in front of them. They made legally baseless arguments not only
to the opposing side, but to the Court. Additionally, Plaintiffs current pro hac vice attorneys
apparently failed to take heed of the pending Rule 11 motion when they took on the Plaintiffs
case. While a law firm may certainly take a lawsuit despite a pending Rule 11 motion, the
pendency of the motion puts that law firm on notice that a diligent investigation is warranted
before taking on the client. Buether Joe & Carpenter, LLC failed to complete even the most
basic of pre-engagement investigations, as that is surely all that would have been necessary to
uncover the legal pitfalls of this case.
Turning to local counsel, their job is not complete when they attest to out of town
counsels' competency under Local Rule 83.5. It is local counsel's signature that is appended to
the vast majority of documents here, and thus their culpability is on par with that of out of town
counsel. Local counsel should not only be reading documents that they sign as per Rule 11, but

9

Of course, had the Defendants properly noticed new counsel, new counsel might have taken a different course of
action.

25

be familiar enough with the relevant law to satisfy the requirements of Rule 11. This was not
done here. However, just as pro hac vice attorneys were not noticed, BMW and Mitsubishi
failed to notify local counsel that they would be seeking damages against them. Specifically,
BMW's opening brief for sanctions concludes by requesting damages against VOT, not VOT's
counsel. (See 1:13-cv-538 D.I. 22 at 26). Similarly, Mitsubishi's brief also does not request
damages directly against VOT's counsel, but only against VOT as a party. (See 1: 13-cv-00712
D.l. 25 at 26).
Furthermore, Rule 11 is clear, absent exceptional circumstances, that a law firm must be
held jointly responsible for a violation committed by its partner, associate, or employee. The
Court has been presented no evidence as to why this should not be the case here. Therefore, the
Court additionally finds that monetary sanctions would have been appropriate against Buether
Joe & Carpenter, LLC and Bayard, P.A. if proper notice had been provided.
However, as notice was not provided, the Court denies BMW and Mitsubishi's request
for monetary sanctions.
Conclusion

For the reasons stated above, the Court will GRANT the Defendants' Motions for Rule
11 sanctions. (13-cv-00538-RGA D.I. 21; 13-cv-00539-RGA D.I. 21; 13-cv-00540-RGA D.I.
25; 13-cv-00541-RGA D.I. 22; 13-cv-00542-RGA D.I. 22; 13-cv-00712-RGA D.I. 24). The
Court will further order that cases 13-cv-00538-RGA, 13-cv-00539-RGA, 13-cv-00540-RGA,
13-cv-00541-RGA, 13-cv-00542-RGA, and 13-cv-00712-RGA be DISMISSED WITH
PREJUDICE. The Court DENIES the motions as they relate to seeking sanctions against

Plaintiffs attorneys.

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