Nobody enjoys playing defense — it always seems more entertaining to score. For those on the receiving end of patent litigation, offensive options are generally limited. Even by name, you are the defendant. The old adage is oft repeated: the best defense is a good offense, but what does that look like for a patent infringement defendant? Attacking infringement theories, claim construction, even validity challenges are all defensive in nature, and until recently the idea of obtaining sanctions against a plaintiff was largely unrealistic except in the most exceptional of cases. But 2012 might have improved the arsenal for patent litigation defendants. In a string of cases, the Federal Circuit gave new teeth to both Rule 11 and § 285 as means for securing sanction awards against patent holders who assert unreasonable or unfounded claims of infringement. The string culminated in the widely reported Raylon case where the Federal Circuit actually reversed the district court’s refusal to award sanctions based on the unreasonableness of the plaintiff’s claim construction positions. Before Raylon and less reported came a series of similar cases, almost enough to suggest a trend. In Highmark Inc. v. Allcare Health Management Sys. Inc., 687 F.3d 1300 (2012), the Federal Circuit affirmed an award of § 285 sanctions based on the patentee’s proffered claim construction positions. InMarcTec LLC v. Johnson & Johnson, 664 F.3d 907 (Fed. Cir. 2012), the Federal Circuit affirmed an award of § 285 sanctions where the patentee’s proposed claim construction ignored the specification and prosecution history. Similarly, in Eon-Net LP et al. v. Flagstar Bancorp, 653 F.3d 1314 (Fed. Cir. 2011), the Federal Circuit held that Eon-Net’s unreasonable claim construction positions supported the conclusion that Eon-Net pursued objectively baseless infringement claims, and affirmed sanctions under both § 285 and Rule 11.

Beyond a patentee taking bad claim construction positions, one of the overriding themes of these cases is that the defendant needs to recognize the dispositive issues as quickly as possible and consistently put the plaintiff on notice of the deficiencies in their claim. Put another way, if you want to deploy § 285 and Rule 11 with the greatest probability of success, begin laying the groundwork early. A recent Rule 11 case out of the N.D. Illinois gives a solid example of this groundwork (see Smart Options, LLC v. Jump Rope, Inc.). In that case, the defendant sent the plaintiff a draft Rule 11 motion very early in the case and requested dismissal based on very specific non-infringement positions. After the plaintiff refused dismissal, defendant pursued and obtained summary judgment on the precise issue set forth in the draft Rule 11 motion. Then, the defendant filed the real thing, and the motion was granted. This is a great example of an early set up and execution on an offensive-minded defense strategy.