Lisa DolakFollow

Document Type

Working Paper




intellectual property, patent, litigation, attorney misconduct, sanctions


Intellectual Property Law | Law | Litigation


Misconduct in civil litigation is not a new phenomenon. Nor is it confined to particular types of cases. Because of their characteristic intensity. however, intellectual property cases may be more likely to inspire bad behavior than other types of cases. The associated pressures seem, on occasion, to lead litigants and trial lawyers to succumb to the temptation to step outside the bounds of vigorous advocacy.

Trial and appellate judges in a number of recent IP cases have wrestled with the issue of whether certain litigation tactics crossed the line between advocacy and abuse. For example, trial judges have recently rebuked counsel for:

• trying to prejudice jurors against the plaintiff patentee by asking them if they had “a problem with a company that puts its headquarters offshore on a Caribbean island in order to avoid paying U.S. taxes”, in violation of an order in limine;

• “prolong[ing] the proceedings unnecessarily (thus unduly imposing upon the jury’s time), [seeking] to mislead both the jury and the Court, and [flouting] the governing claim construction as set forth by the Federal Circuit”;

• “persist[ing] in improperly trying to equate [the patentee’s] infringement case with the current national banking crisis implying that [the patentee] was a banker seeking a ‘bailout’”

• knowingly pursuing a meritless lawsuit; and

• contributing to a “massive discovery failure”.

In several of these and other cases, however, sanctions awards have been subsequently reversed or modified, including because the conduct at issue was viewed as insufficiently egregious, as not unreasonable, or even as entirely within the rights of the sanctioned firm or attorney. These reversals raise a number of issues, including whether reviewing courts are too tolerant, how trial judges are affected by litigation misconduct, sanctions proceedings, and reversals, what motivates aggressive litigation behavior, and the collateral consequences of litigation misconduct. Whatever the outcome, these decisions serve as sobering examples of how even intelligent, experienced counsel can get caught up in the heat of the battle that is modern intellectual property litigation, and the potentially devastating consequences of that conduct.