527.02    Motion for Fed. R. Civ. P. 11 Sanctions

Fed. R. Civ. P. 11…

  • (b) Representations to Court. 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:
    • (1) it is not being presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation;
    • (2) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law;
    • (3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery; and
    • (4) the denials of factual contentions are warranted on the evidence or, if specifically so identified, are reasonably based on belief or a lack of information.
  • (c) Sanctions.
    • (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.
    • (2) Motion for Sanctions. A motion for sanctions must be made separately from any other motion and must describe the specific conduct that allegedly violates Rule 11(b). The motion must be served..., but it must not be filed or be presented to the court if the challenged paper, claim, defense, contention, or denial is withdrawn or appropriately corrected within 21 days after service or within another time as the court sets. ...
    • (3) On the Court’s Initiative. On its own, the court may order an attorney, law firm, or party to show cause why conduct specifically described in the order has not violated Rule 11(b).
    • (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...
    • …
    • (6) Requirements for an Order. An order imposing a sanction must describe the sanctioned conduct and explain the basis for the sanction.
  • (d) Inapplicability to Discovery. This rule does not apply to disclosures and discovery requests, responses, objections, and motions under Rules 26 through 37.

37 C.F.R. § 11.18  Signature and certificate for correspondence filed in the Patent and Trademark Office.

  • (a) For all documents filed in the Office in patent, trademark, and other non-patent matters, ... except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed or inserted by such practitioner, in compliance with § 1.4(d) or § 2.193(a) of this chapter.
  • (b) By presenting to the Office … (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that-
    • (1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001, and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
    • (2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
      • (i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
      • (ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
      • (iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
      • (iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
  • (c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of-
    • (1) Striking the offending paper;
    • (2) Referring a practitioner’s conduct to the Director of the Office of Enrollment and Discipline for appropriate action;
    • (3) Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
    • (4) Affecting the weight given to the offending paper, or
    • (5) Terminating the proceedings in the Office.
  • (d) Any practitioner violating the provisions of this section may also be subject to disciplinary action.

The quoted provisions of Fed. R. Civ. P. 11 are applicable to pleadings, motions, and other papers filed in inter partes proceedings before the Board. [ Note 1.] Thus, if a paper filed in an inter partes proceeding before the Board violates the provisions of Fed. R. Civ. P. 11, any party to the proceeding may file a motion for the imposition of an appropriate sanction. The Board may find a Fed. R. Civ. P. 11 violation, and impose an appropriate sanction, not only upon motion, but also upon its own initiative, following issuance of an order to show cause and an opportunity for the party to be heard. [ Note 2.]

Moreover, Fed. R. Civ. P. 11 certification standards apply to parties as well as attorneys. [ Note 3.]

While Fed. R. Civ. P. 11 provides, inter alia, for the imposition of monetary sanctions, the Board will not impose monetary sanctions, or award attorneys’ fees or other expenses to any party. [ Note 4.] See TBMP § 502.05. However, the Board may enter other appropriate sanctions, up to and including the entry of judgment, against a party that violates Fed. R. Civ. P. 11. [ Note 5.]

Fed. R. Civ. P. 11(c)(2) provides a "safe harbor" provision allowing the party or attorney an opportunity to withdraw or correct a challenged submission. This provision delays filing of a motion for sanctions before the Board for twenty-one days after service of the motion and allows the motion to be filed only if the challenged submission is not withdrawn or appropriately corrected within those twenty-one days or within another time that the Board may set. The Board will deny motions for Fed. R. Civ. P. 11 sanctions that fail to comply with this requirement.

A motion for sanctions under Fed. R. Civ. P. 11(c) is governed by, and should not be filed in violation of, Fed. R. Civ. P. 11(b). If the Board finds that a motion for Fed. R. Civ. P. 11(c) sanctions itself violates the provisions of Fed. R. Civ. P. 11(b), an appropriate Fed. R. Civ. P. 11(c) sanction may be entered against the party that filed the motion.

The provisions of 37 C.F.R. § 11.18  largely pattern Fed. R. Civ. P. 11 and are also applicable to pleadings, motions, and other papers filed in inter partes proceedings before the Board. [ Note 6.] Any practitioner who knowingly violates the provisions of that rule is subject to disciplinary action and any appropriate complaint should be brought to the attention of the Office of Enrollment and Discipline. [ Note 7.] See TBMP § 115.02.

NOTES:

 1.   See 37 C.F.R. § 2.116(a); NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1038 (TTAB 2014) (in applying Rule 11 sanctions, considering not just the pleading in the form of a petition to cancel but party’s conduct in other Board proceedings); Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 1213 (TTAB 2001) (considering not only the pleading in the form of a notice of opposition but extensions of time to oppose as potential basis for applying Rule 11 sanctions); The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098, 1100 n.9 (TTAB 1996) (accuracy in factual representations is expected); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1426 (TTAB 1993) (filing of notice of reliance on third-party discovery deposition constitutes certificate that circumstances exist which justify acceptance of the evidence).

 2.   See Fed. R. Civ. P. 11(c)(2) and (3); ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021, 2023 (TTAB 1998) (order to show cause issued where, although Fed. R. Civ. P. 56(f) (restyled by amendment as Fed. R. Civ. P. 56(d)) motion was granted, party responded to summary judgment without taking the requested discovery); Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 633 n.19 (TTAB 1986) (Rule 11 permits court to enter sanctions sua sponte).

 3.   See Business Guides, Inc. v. Chromatic Communications Enterprises, Inc., 498 U.S. 533, 547 (1991); Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 1213 (TTAB 2001) (authority to sanction pro se party "is manifestly clear."). See also 37 C.F.R. § 11.18(c).

 4.   See 37 C.F.R. § 2.127(f). Compare 37 C.F.R. § 2.120(g)  and 37 C.F.R. § 2.120(h)(1); Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 1213 (TTAB 2001).

 5.   See 37 C.F.R. § 2.116(a); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1596 n.19 (TTAB 2011) (in earlier order, Board imposed sanction prohibiting applicant from objecting to opposer’s evidence), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021, 2023 (TTAB 1998) (sanctions included requirement that law firm include express provision in all subsequent filings acknowledging Rule 11(b) and 37 C.F.R. § 11.18(a) and stating that motion was read, has a sound legal basis and is not interposed for delay, harassment or other improper purpose); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1221 (TTAB 1990) (Rule 11 not designed to punish semantic errors; applicant had reasonable basis for allegations in its pleading); Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987) (filing of discovery motions without reasonable basis in law or in fact resulted in Rule 11 sanctions precluding applicant from filing further discovery motions and from filing any motion without prior leave of Board); Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 633 n.19 (TTAB 1986) (applicant’s frivolous request for reconsideration of order imposing Rule 11 sanctions resulted in entry of judgment); Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 967-68 (TTAB 1986) (applicant warned that any other filing deemed frivolous would result in judgment).

 6.   See Carrini Inc. v. Carla Carini, Srl, 57 USPQ2d 1067, 1071 (TTAB 2000) (Board has discretion under Rule 11 to impose sanctions for filings that are presented to the Board for any improper purpose).

 7.   See 37 C.F.R. § 11.18. See, e.g., ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021, 2023 (TTAB 1998). For information concerning disciplinary proceedings, see 37 C.F.R. § 11.19, et seq. In addition, conduct in violation of the Disciplinary Rules set forth in 37 C.F.R. part 11 may be referred to the Office of Enrollment and Discipline for appropriate action. See 37 C.F.R. § 11.18(d)  and 37 C.F.R. § 11.20, et seq.