United States Court of Appeals for the Federal Circuit * Revision: March 24, 2009
2008-1144, -1145, -1146, -1470, -1471, -1472
E-PASS TECHNOLOGIES, INC.,
Plaintiff-Appellant,
v.
3COM CORPORATION (also known as 3COM, Inc.), PALM, INC., PALMONE, INC. and HANDSPRING, INC.,
Defendants-Appellees,
and
VISA INTERNATIONAL SERVICE ASSOCIATION and VISA U.S.A., INC.,
ACCESS SYSTEMS AMERICAS, INC. (formerly Palmsource, Inc.),
Defendant-Appellee.
Daniel M. Cislo, Cislo & Thomas, LLP, of Santa Monica, California, argued for plaintiff-appellant. With him on the brief were Kelly W. Cunningham and Mark D. Nielsen.
Edward H. Sikorski, DLA Piper US LLP, of San Diego, California, argued for defendants-appellees 3Com Corporation, et al. With him on the brief were Vincent S. Lam; and M. Elizabeth Day, of East Palo Alto, California.
Madison C. Jellins, Alston and Bird LLP, of Palo Alto, California, argued for defendants-appellees Visa International Service Association, et al. With her on the brief was Julie J. Han, Townsend and Townsend and Crew LLP, of Palo Alto, California.
Andrew T. Oliver, Townsend and Townsend and Crew LLP, of Palo Alto, California, argued for defendant-appellee Access Systems Americas, Inc. With him on the brief was Mark D. Rowland, Ropes & Gray LLP, of Palo Alto, California.
Appealed from: United States District Court for the Northern District of California
Senior Judge D. Lowell Jensen
* Attorney law firm affiliation. United States Court of Appeals for the Federal Circuit 2008-1144, -1145, -1146, -1470, -1471, -1472
3COM CORPORATION (also known as 3COM, Inc.), PALM, INC., PALMONE, INC. and HANDSPRING, INC.,
VISA INTERNATIONAL SERVICE ASSOCIATION and VISA U.S.A., INC.,
Appeals from the United States District Court for the Northern District of California in case nos. 00-CV-2255, 03-CV-4747 and 04-CV-0528, Senior Judge D. Lowell Jensen. __________________________
DECIDED: March 20, 2009 __________________________
Before BRYSON, LINN, and PROST, Circuit Judges.
Opinion for the court filed by Circuit Judge LINN. Dissenting opinion filed by Circuit Judge BRYSON.
LINN, Circuit Judge.
On the merits in this appeal, E-Pass Technologies, Inc. (“E-Pass”) challenges
two final determinations of the U.S. District Court for the Northern District of California
(i) concluding that three related cases filed by E-Pass were exceptional under 35 U.S.C. § 285 and (ii) awarding attorneys’ fees. E-Pass Techs., Inc. v. 3Com Corp.,
Nos. 00-CV-2255, 03-CV-4747, 04-CV-0528 (N.D. Cal. Nov. 21, 2006) (“Decision”);
E-Pass Techs., Inc. v. 3Com Corp., Nos. 00-CV-2255, 03-CV-4747, 04-CV-0528, 2007
WL 4170514 (N.D. Cal. Nov. 14, 2007). We affirm those rulings today in a separate
Judgment under Federal Circuit Rule 36. This opinion addresses Access Systems
Americas, Inc.’s (formerly known as PalmSource, Inc.) (“PalmSource”) motion for
sanctions, in which it argues that E-Pass’s appeal is frivolous as it pertains to
PalmSource. We agree. Consequently, we grant the motion, but award a different
sanction than the one requested.
I. BACKGROUND
E-Pass is the assignee of U.S. Patent No. 5,276,311 (“the ’311 patent”), which is
directed to a “method and device for simplifying the use of a plurality of credit cards, or
the like.” This litigation commenced in February 2000, when E-Pass filed suit against
3Com Corporation and Palm, Inc. (collectively, “the Palm Defendants”), 1 alleging
infringement of the ’311 patent. During the course of the litigation, the district court
construed the term “electronic multi-function card” and granted summary judgment of
non-infringement based on that construction. E-Pass appealed. We reversed the
district court’s grant of summary judgment, substituted a construction for the “electronic
multi-function card” limitation, and remanded for further proceedings in light of the new
construction. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1365 (Fed. Cir. 2003)
(“E-Pass I”).
1 The Palm Defendants also include palmOne, Inc. and HandSpring, Inc., which were later sued in the action involving PalmSource. 2008-1144,-1145,-1146,-1470, 1471,-1472 2 E-Pass filed two new related suits in the same court following E-Pass I. In
October 2003, it filed suit against Visa International and Visa U.S.A. for infringement of
the ’311 patent. In February 2004, it also filed suit against PalmSource for infringement
of the ’311 patent. The district court grouped these cases together as related, and
subsequently granted summary judgment of non-infringement for all defendants.
E-Pass again appealed the district court’s grant of summary judgment. This time we
affirmed, agreeing with the district court that E-Pass failed to provide evidence showing
that any defendant practiced all the steps of the claimed method. See E-Pass Techs.,
Inc. v. 3Com Corp., 473 F.3d 1213, 1221 (Fed. Cir. 2007) (“E-Pass II”).
Following entry of judgment but prior to E-Pass II, the district court, on the
defendants-appellees’ motions, deemed each of the three actions exceptional under
35 U.S.C. § 285 and awarded attorneys’ fees. Although the district court analyzed
separately why each of the three actions filed and maintained by E-Pass was
exceptional, its ultimate rationale centered on the adequacy of E-Pass’s pre-filing
investigations and its repeated misconduct throughout the litigation. E-Pass’s appeal on
the merits challenged the district court’s exceptionality findings and awards of attorneys’
fees. PalmSource argues that E-Pass’s appeal is frivolous as it relates to PalmSource
based on E-Pass’s failure to identify a reversible error of the district court and its
repeated misrepresentations to this court.
II. DISCUSSION
“If a court of appeals determines that an appeal is frivolous, it may, after a
separately filed motion or notice from the court and reasonable opportunity to respond,
award just damages and single or double costs to the appellee.” Fed. R. App. P. 38.
2008-1144,-1145,-1146,-1470, 1471,-1472 3 An appeal can be “frivolous as filed” and/or “frivolous as argued.” An appeal is frivolous
as filed “when an appellant grounds his appeal on arguments or issues that are beyond
the reasonable contemplation of fair-minded people, and no basis for reversal in law or
fact can be or is even arguably shown.” Abbs v. Principi, 237 F.3d 1342, 1345
(Fed. Cir. 2001) (internal quotations omitted). An appeal is frivolous as argued “when
an appellant has not dealt fairly with the court, [or] has significantly misrepresented the
law or facts.” Id.
We consider this appeal, as it relates to PalmSource, frivolous. Although there is
a host of reasons that collectively support our reaching this conclusion, we focus our
discussion on two. First, E-Pass “fail[s] to explain how the trial court erred or to present
cogent or clear arguments for reversal.” See id. at 1345; see also Refac Int’l, Ltd. v.
Hitachi, Ltd., 921 F.2d 1247, 1256 (Fed. Cir. 1990) (sanctioning party that failed to point
to any basis for reversal in the lower court’s decision). Second, E-Pass has made
significant misrepresentations of the record and the law to the court. See Abbs, 237
F.3d at 1345; see also Romala Corp. v. United States, 927 F.2d 1219, 1224 (Fed. Cir.
1991) (sanctioning party for, among other things, distorting the lower court’s decision).
We address each in turn.
We begin by noting E-Pass’s failure to clearly or cogently identify a ground for
reversal of the district court’s decision as to PalmSource. The district court found, after
concluding that there was no evidence to support E-Pass’s case against the Palm
Defendants, see Decision at 40-41, that E-Pass’s case against PalmSource was even
weaker:
2008-1144,-1145,-1146,-1470, 1471,-1472 4 The direct case against the Palm OS software[ 2 ] has the same failures [as the case against Palm Defendants]. Any notion that Palm OS’[s] role as an enabler provides indirect evidence as to its indirect infringement is an even greater failure as it has never been suggested that Palm OS software somehow enables the instruction materials for the PalmOne devices.
Id. at 41. After summarizing the litigation record, the district court found that “[t]he non-
existence of any direct infringement evidence to be presented at the time of summary
judgment leads inexorably to the conclusion that there was no such evidence known to
[E-Pass] at the time these cases were filed.” Id. at 44. The district court also found, as
it did with respect to each of the cases on appeal, that E-Pass engaged in litigation
misconduct. Among other things, the district court found E-Pass guilty of misconduct in
the case against PalmSource based on its ever-changing allegations of infringement, id.
at 29, its refusal to supplement infringement contentions, id. at 30-31, and its opposition
to summary judgment on the basis of lack of discovery and its subsequent failure to
take the discovery it had requested and received, id. at 32; see also id. at 40
(“Reviewing the entire history of the litigation, it is clear to this Court that E-Pass’s
strategy was to delay and obfuscate in an attempt to keep the case alive as long as
possible and to stave off summary judgment.”). The totality of these circumstances—
i.e., the inadequacy of E-Pass’s pre-filing investigation and misconduct during the
ensuing litigation—led the district court to find the action against PalmSource
exceptional and award attorneys’ fees.
Despite appealing the district court’s exceptionality determination as to
PalmSource, E-Pass virtually ignores PalmSource on appeal. Its brief focuses almost
2 Palm OS is software owned by PalmSource and licensed for use in the Palm handheld devices alleged to infringe the ’311 patent. 2008-1144,-1145,-1146,-1470, 1471,-1472 5 entirely on the other defendants-appellees, and in particular, whether the district court
erred in finding that infringement did not occur by virtue of two events—i.e., the January
2001 CES demonstration and the March 2001 Visa in-house demonstration—both of
which occurred before PalmSource existed, and neither of which were asserted in
E-Pass’s brief to apply to PalmSource. 3 Indeed, E-Pass’s brief leaves the inescapable
conclusion that its strategy is to impugn PalmSource by association. It repeatedly
makes generalized accusations against the “Defendants” or “Appellees” without
acknowledging, as the district court correctly did, that the infringement allegations
against these parties were different. Moreover, nowhere does E-Pass specifically
challenge any finding of the district court relating to litigation misconduct in the case
against PalmSource. Notably, even after PalmSource put E-Pass on notice of the
alleged frivolousness of E-Pass’s appeal by requesting sanctions in its brief, E-Pass still
failed to clearly or cogently explain in its reply brief why the district court’s findings in the
PalmSource litigation were clearly erroneous or an abuse of discretion. The dissent
finds that E-Pass raised at least one reasonable ground for appeal against
PalmSource—the award of fees for periods prior to litigation misconduct. With all due
respect to our colleague in dissent, we view the record differently. E-Pass failed to
challenge any of the district court’s factual findings, and identified no other basis for
3 In response to PalmSource’s motion for sanctions, E-Pass argued, for the first time, that “the 2001 CES demonstration relates to PalmSource since PalmSource admits that, upon its formation in 2001, it obtained from Palm ‘substantially all’ of the liabilities related to Palm’s then-existing operating system and software business.” E-Pass’s Resp. to PalmSource’s Mot. for Sanctions at 5. It is not entirely clear how this helps E-Pass, nor why if it was so important, E-Pass failed to raise it in its briefs. Because E-Pass failed to raise it in its opening brief, we deem the issue waived. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006) (“[A]rguments not raised in the opening brief are waived.”). 2008-1144,-1145,-1146,-1470, 1471,-1472 6 finding an abuse of discretion in calculating fees. Those findings included the
conclusion that E-Pass’s case against PalmSource had “a litigation history of
questionable pre-filing investigation,” Decision at 45, which supports an award of fees
from the beginning of the case.
We next note E-Pass’s multiple misrepresentations to the court. The first
significant misrepresentation relates to the record. As we discussed above, the district
court’s determination that the case against PalmSource was exceptional was based in
part upon its finding that there was at least “a serious question” as to E-Pass’s pre-filing
investigation. See Decision at 40-41; see also id. at 44 (“The non-existence of any
direct infringement evidence to be presented at the time of summary judgment leads
inexorably to the conclusion that there was no such evidence known to [E-Pass] at the
time these cases were filed.”). Nevertheless, in its opening brief E-Pass boldly
contended that “[t]he District Court specifically found that E-Pass’s pre-filing
investigation was sufficient to avoid making the case exceptional.” E-Pass’s Opening
Br. at 19; see also id. at 25, 29 (repeating this assertion). This particular statement
appears in the “Statement of Facts” section in a discussion that does not distinguish
between any of the defendants-appellees, but collectively refers to them all as the
“Defendants.” Notwithstanding E-Pass’s representations to the contrary, the district
court did not, in fact, find that E-Pass’s pre-filing investigation was sufficient as to
PalmSource—or for that matter, the Palm Defendants, or even Visa U.S.A. Rather, the
district court found, solely with respect to Visa International (one of seven defendants-
appellees), in a section of the decision entitled “Visa International,” that “[w]hile E-
Pass’[s] minimalist pre-filing investigation in and of itself, may not make the case
2008-1144,-1145,-1146,-1470, 1471,-1472 7 exceptional, when combined with its litigation misconduct, this case becomes one which
is meritorious of an award of attorney fees.” Decision at 26.
This misrepresentation of the district court’s decision—exacerbated by
repetition—speaks for itself. It is worth observing, however, that not only does E-Pass
attempt to paint the district court’s finding as applying to all defendants-appellees when
it clearly does not, it also mischaracterizes the finding itself. The district court did not,
as E-Pass argues, “specifically f[i]nd” that E-Pass’s pre-filing investigation was sufficient
as to any defendant-appellee, including Visa International. Rather, the district court
merely found that whether or not the “minimalist pre-filing investigation” conducted was
sufficient, any question as to its sufficiency was overcome by E-Pass’s numerous acts
of litigation misconduct.
Another misrepresentation relates to the legal standard for exceptionality
identified by E-Pass. In its opening brief, E-Pass argued that the cases it filed against
the defendants-appellees were not exceptional because its claims of infringement were
“at least reasonably disputable.” E.g., E-Pass’s Opening Br. at 29. In its reply brief,
however, E-Pass went further, arguing that the cases were not exceptional because it
did not bring the litigation in bad faith and the litigation was not objectively baseless. In
support of its argument, E-Pass stated unequivocally that “[t]he standard for an
exceptional case finding is whether the case was brought in subjective bad faith and the
litigation was objectively baseless.” E-Pass’s Reply Br. at 29 (citing Serio-US Indus.,
Inc. v. Plastic Recovery Techs. Corp., 459 F.3d 1311, 1322 (Fed. Cir. 2006)); see also
id. at 30 (“Therefore, any shift in legal theory itself does not make this case exceptional
since it was not done in subjective bad faith nor was it objectively baseless.”). This is
2008-1144,-1145,-1146,-1470, 1471,-1472 8 not the law. Serio-US Industries, cited by E-Pass for this erroneous proposition,
actually begins with an important condition: “Absent misconduct in the litigation or in
securing the patent, a trial court may only sanction the patentee if both the litigation is
brought in subjective bad faith and the litigation is objectively baseless.” 459 F.3d at
1322 (emphasis added). E-Pass made this same misrepresentation earlier, in its
opening brief, by citing Brooks Furniture Manufacturing, Inc. v. Dutailier International,
Inc., 393 F.3d 1378, 1384 (Fed. Cir. 2005), for the proposition that an infringement
action is not exceptional so long as the infringement “can reasonably be disputed.” E-
Pass’s Opening Br. at 28. However, E-Pass omits Brooks’ recitation of the same
condition stated in Serio-US Industries, of “[a]bsent misconduct in conduct of the
litigation.” Brooks, 393 F.3d at 1381.
E-Pass’s omission of this condition might be of lesser consequence if litigation
misconduct were not at issue in this case. But litigation misconduct is a central issue—
the district court specifically concluded that E-Pass had engaged in repeated litigation
misconduct, including, in particular, its shifting legal theories. See, e.g., Decision at 29
(“E-Pass’s allegations of inducing infringement against PalmSource have also changed
over time.”); id. at 33 (“Throughout the litigation, defendants were forced to expend
resources merely to attempt to have E-Pass clearly define its claims.”). It is difficult to
view E-Pass’s omission of the critical portion of the legal standard applicable to it as
anything other than an attempt to mislead the court. Like E-Pass’s misrepresentation of
the district court’s findings, this selective citation of the law is exacerbated by repetition.
For all of the reasons set forth above, taken collectively, we conclude that E-
Pass’s appeal as to PalmSource is frivolous. Assuming for the sake of argument that E-
2008-1144,-1145,-1146,-1470, 1471,-1472 9 Pass did make a non-frivolous (yet ultimately unmeritorious) argument, it would not
change our determination that the appeal as a whole is frivolous. “We have held that
even the presence of a few non-frivolous arguments does not prevent an appeal as a
whole from being deemed frivolous.” Romala, 927 F.2d at 1224 (citing In re Perry, 918
F.2d 931, 934-35 (Fed. Cir. 1990) (“When an appeal is a ‘complete loser,’ most of which
is ‘patently groundless,’ sanctions should be imposed under Rule 38.”)). The tactics
employed by E-Pass in this appeal, including both the misrepresentations made and the
failure to cogently identify any reversible error of the district court, far outweigh any non-
frivolous argument that may be lurking in its briefs.
Consequently, we grant PalmSource’s motion for sanctions, although not the
amount requested by PalmSource. 4 Rather, we impose a sanction equal to the amount
of fees PalmSource incurred in defending this appeal, including the filing of the motion
for sanctions. Accordingly, PalmSource is directed to file with this court a claim for
reasonable attorneys’ fees incurred in the defense of this appeal, including the motion
for sanctions, together with supporting documentation, within fifteen (15) days of the
date of this opinion. E-Pass shall have five (5) days from the date PalmSource files its
submission with the court to file any objection thereto. “[S]ince our conclusion of frivolity
rests not only on the filing of the appeal but also on the frivolous nature of the advocacy
4 PalmSource requests “an amount equal to the amount that E-Pass has paid its attorneys since the date upon which PalmSource’s judgment would have become final and unappealable absent this appeal.” PalmSource’s Motion for Sanctions at 3-4. Whatever the motivation might have been for PalmSource to make such an unusual request, we see no valid reason here to award a sanction based on fees paid to opposing counsel. See State Indus., Inc. v. Mor-Flo Indus., Inc., 948 F.2d 1573, 1581 (Fed. Cir. 1991) (noting amount of sanction under Rule 38 is within our discretion). 2008-1144,-1145,-1146,-1470, 1471,-1472 10 in support of it, we consider the attorney who wrote and signed the briefs to be equally
responsible.” State Indus., Inc. v. Mor-Flo Indus., Inc., 948 F.2d 1573, 1582 (Fed. Cir.
1991). As a result, we hold E-Pass’s counsel jointly and severally liable for the
sanctions.
III. CONCLUSION
PalmSource’s motion for sanctions is GRANTED, and a sanction of
PalmSource’s reasonable attorneys’ fees is awarded against E-Pass and its counsel,
jointly and severally.
2008-1144,-1145,-1146,-1470, 1471,-1472 11 United States Court of Appeals for the Federal Circuit
Plaintiff-Appellant, v. 3COM CORPORATION (also known as 3COM, Inc.), PALM, INC., PALMONE, INC. and HANDSPRING, INC.,
VISA INTERNATIONAL SERVICE ASSOCIATION and VISA U.S.A., INC.,
Defendants-Appellees, and
Appeals from the United States District Court for the Northern District of California in case nos. 00-CV-2255, 03-CV-4747 and 04-CV-0528, Senior Judge D. Lowell Jensen
BRYSON, Circuit Judge, dissenting.
While I do not take issue with most of the majority’s criticisms of the appellant’s
presentation in this court, I would not impose sanctions. It is true that E-Pass did not do
a good job of identifying those issues on appeal that apply to Palmsource or explaining
why particular issues apply to Palmsource despite its seeming lack of involvement in the
underlying transactions. However, there is at least one issue as to which E-Pass
specifically named Palmsource and as to which it is reasonable for E-Pass to pursue an appeal against Palmsource. That is the issue of whether the district court abused its
discretion in awarding fees for periods prior to the alleged misconduct by E-Pass on
which the fee award was based. On page 37 of its opening brief, E-Pass asserted that
“[t]he District Court’s award of PalmSource’s and the Visa Defendants’ attorneys’ fees
starting from the inception of their respective cases was unreasonable and an abuse of
discretion.” Instead of that fee award, E-Pass argued (page 38), “[t]he District Court
should have apportioned the fees and awarded only those fees incurred after E-Pass
should have dropped the suit, presumably once E-Pass failed to uncover instances of
direct infringement.” I disagree with the majority to the extent that it charges that E-
Pass failed to identify any reasonable ground for appeal as to Palmsource. As the
above-quoted passage indicates, E-Pass identified one such ground. Although we
ultimately rejected that argument on the merits, I do not regard it as so frivolous that it
warrants the imposition of sanctions.
As to the misrepresentations in E-Pass’s brief, I agree that certain statements in
the brief strayed beyond the limits of fair advocacy and into the realm of falsehood. In
particular, the district court’s comment, with respect to Visa International, that “E-Pass’
minimalist pre-filing investigation in and of itself, may not make this case exceptional”
cannot fairly be characterized as a finding by the court that, as E-Pass puts it, “E-Pass’s
pre-filing investigation was sufficient to avoid making the case exceptional.” The
mischaracterization is particularly problematic because, even though the district court’s
statement applied only to Visa International, E-Pass at one point included its
characterization of the district court’s statement in a passage that references both
Palmsource and the Visa defendants.
2008-1144,-1145,-1146,-1470 1471,-1472 2 The other instances of misleading conduct pointed out by the majority are not as
serious. The majority faults E-Pass for providing the court with a truncated version of
the standard to be used in determining whether a district court may sanction a party by
imposing attorney fees. It is true that at page 29 of its reply brief E-Pass used a
shorthand version of the standard that omitted an important condition. But earlier in the
same reply brief (page 15) E-Pass cited the same authority, and in that reference it set
forth the standard with the condition expressly included. It plainly would have been
preferable to include the condition in both places, but the inclusion of the condition in
connection with the first reference to the cited authority mitigates the effect of omitting it
in the later reference.
The majority asserts that E-Pass made the same mistake on page 28 of its
opening brief when it argued that “[s]o long as the infringement ‘can reasonably be
disputed,’ the infringement action is not exceptional in terms of section 285.” That
proposition was included in a portion of E-Pass’s opening brief that was directed to the
question whether litigation was brought in bad faith, and E-Pass cited a case that
addressed that issue. See Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F.3d
1378, 1381 (Fed. Cir. 2005). In the portion of that case cited by E-Pass, we stated:
“Bringing an infringement action does not become unreasonable in terms of [section]
285 if the infringement can reasonably be disputed.” Id. at 1384. Although it is true that
the Brooks Furniture case articulated the complete exceptional case standard—
including the “[a]bsent misconduct in the litigation” condition—a few pages before the
passage quoted by E-Pass, I do not consider E-Pass’s citation to Brooks Furniture in
the context of the issue being discussed at that point in the brief to be misleading. That
2008-1144,-1145,-1146,-1470 1471,-1472 3 is particularly so inasmuch as E-Pass’s opening brief elsewhere (pages 24 and 37)
acknowledged that litigation misconduct is a proper basis for an exceptional case
determination and cited another one of our cases, Beckman Instruments, Inc. v. LKB
Produktor AB, 892 F.2d 1547 (Fed. Cir. 1989), for that proposition.
As I see it, then, the question for us is whether sanctions should be imposed
because of an unduly aggressive characterization of a comment by the district court, a
failure to provide the full text of an applicable legal test on the second occasion that the
test was set forth, and a failure to explain whether only one issue on appeal was
applicable to Palmsource, or if more than one issue was applicable to Palmsource, what
the legal basis for Palmsource’s liability would be. Accepting that in those regards E-
Pass’s briefs on appeal fell short of the standards we expect of counsel in this court, I
nonetheless conclude that the shortfall is not so egregious as to call for the imposition of
2008-1144,-1145,-1146,-1470 1471,-1472 4