United States: Sometimes It Pays Less When You Argue More

Perfect Surgical Techniques, Inc. v. Olympus America, Inc. et al., Case No. 12-5967 (Judge Hamilton)

Not every hour spent on successful motion practice is treated equally (or at all) in determining appropriate Rule 37 sanctions, according to Judge Hamilton's March 14, 2014 Order awarding partial attorney fees. Even though Judge Hamilton seems to agree that patent litigation is a specialized practice that may justify higher rates, she nevertheless awarded Defendants in this case 25% of their claimed fees after successful efforts to strike infringement contentions.

Defendants moved to strike as insufficient Perfect Surgical's first amended Patent Local Rule 3-1 infringement contentions, which were based largely on user manuals. The Court ordered Plaintiff to supplement its contentions after "evaluat[ing] up close each of the accused devices." But Perfect Surgical purchased only one of four accused products, and Defendants again moved to strike the supplemented contentions.

The Court granted Defendants' second motion to strike on all three untested products, without further leave to amend. Judge Hamilton also granted on "narrow grounds" the motion to strike as to contentions regarding the accused product Perfect Surgical had actually purchased and inspected. However, Judge Hamilton permitted Perfect Surgical leave to further supplement in order to specify the accused structure allegedly covered by the asserted means plus function claims. The Court therefore refused to entirely dismiss the infringement claim as to the patent-at-issue.

Defendants moved for sanctions under both Rule 37(a) and (b), asking the Court for $133,390.40 in fees and costs associated with bringing the two motions to strike and the instant motion.

Rule 37(a) – First and Second Motions to Strike

Judge Hamilton rejected the application of Rule 37(a) as to both motions to strike, finding that they were not among the enumerated list of "Specific Motions" to which the rule applies.

Rule 37(b) – First Motion to Strike

Judge Hamilton similarly refused to grant any sanctions under Rule 37(b) on the first motion to strike. She reasoned that, while the scheduling order required Perfect Surgical to serve sufficient infringement contentions, Perfect Surgical did not fail to serve any contentions at all. She further noted that "reasonable people could differ" as to the sufficiency of what Perfect Surgical served.

Rule 37(b) – Second Motion to Strike

Using the same rationale, the Court rejected the "sufficiency" grounds for sanctions as applied to Defendants' second motion to strike. But the Court found that Perfect Surgical violated the Court's Order to inspect all products before serving supplemental contentions, thus implicating Rule 37(b).

Notwithstanding the violation, Judge Hamilton found 169.8 hours spent and the requested $73,314.40 in fees for the second motion to be unreasonable, noting that Defendants attempted to "fast-track a merits consideration of plaintiff's infringement allegations" when they should instead have just filed a "straightforward motion to strike, simply explaining the court's instructions ... pointing out plaintiff's failure to comply ... and requesting that the infringement contentions be stricken as a result."

Without any evidence of record to establish the particular allocation of time Defendants spent on the "improper merits-based arguments," the Court summarily concluded that "any expenditure of time above 30 hours could not be attributable to work needed to advance the narrow round upon which the court has granted relief." The Court then multiplied 30 hours by the "$460 average hourly rate applicable to associates in the San Francisco metropolitan area" to arrive at a fees award of $13,800. The Court also awarded about two thousand dollars in requested expenses associated with the second motion to strike.

Notably, while Defendants' motion for fees established billing rates as high as $548, the Court found that "specialized [intellectual property] experience" was not needed for the second motion to strike, and therefore refused to give weight to the fact that "intellectual property attorneys are frequently awarded fees based on higher billing rates."

As for Defendants' fees and expenses for filing their motion for sanctions, the Court used the evidence of record to estimate that Defendants would incur a total of $10,000 when all is said and done. However, Judge Hamilton awarded only 25% of this amount, noting that Defendants were successful on only one of two motions to strike, and with respect to the second motion to strike, only on one of two grounds for relief, i.e., Rule 37(b).

Some things to consider when bringing or facing a motion for attorney fees: (1) providing the Court with sufficient detail to enable apportionment of time (and corresponding fees) to different litigation activities; (2) leaving out weaker arguments to avoid reduction in the fees award if they are unsuccessful; and (3) arguing for the application of lower (or higher) billing rates depending on the "specialized" nature of the arguments at issue.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
23 Jan 2019, Speaking Engagement, New York, United States

New York partner Rich Martinelli will be a featured panelist during the Society of Physician Engineers' event, "Intellectual Property Law & Tax Credits for Life Science Companies."

29 Jan 2019, Speaking Engagement, New York, United States

Please join Orrick partner Jay Jurata at this year's Joint NGMN and ITU Conference on January 29-30 in Geneva, Switzerland.

27 Feb 2019, Conference, Las Vegas, United States

Partner John Narducci will be discussing The Impact of the Tax Reform Act on Valuations at ABI’s Valcon 2019 Conference.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions