Use it or Lose It: Judge Cote Denies Motion for Sanctions as Untimely
On April 1, 2019, United States District Judge Denise Cote (S.D.N.Y.) denied Plaintiff Wine Enthusiast, Inc.'s motion for sanctions against Defendant Vinotemp for filing an allegedly frivolous counterclaim of design patent infringement.
Wine Enthusiast's motion under Fed. R. Civ. P. 11(b) asserts that “recently uncovered evidence” shows that Vinotemp’s claimed invention was publicly disclosed more than a year prior to the date Vinotemp’s patent application was filed, and that Vinotemp knew or should have known its patent was invalid prior to filing its counterclaim.
Judge Cote dismissed the motion as inappropriate given the late stage of the litigation. Vinotemp filed its counterclaim for design patent infringement on September 6, 2017. Wine Enthusiast's invalidity contentions were scheduled for May 11, 2018; and on July 19, 2018, the court dismissed Vinotemp's counterclaim for failure to state a claim for infringement. Wine Enthusiast first raised the prior public disclosure issue with Vinotemp three months later, in a letter dated October 31, 2018, and filed its sanctions motion December 14, 2018.
While acknowledging that Rule 11 contains no explicit time limit on moving for sanctions, Judge Cote noted that such motions have been disallowed as untimely when filed so late that the lawyer sought to be sanctioned lacked an opportunity to correct or withdraw the challenged pleading pursuant to Rule 11's "safe harbor" provision.
Consistent with such decisions, Judge Cote denied Wine Enthusiasts motion as untimely. In support, J. Cote observed that Wine Enthusiast did not adequately explain why its "recently uncovered evidence," which it admits was publically available, was not identified earlier. Judge Cote also concluded that deciding Wine Enthusiast's sanctions motion would require litigating the issue of invalidity, and that "Rule 11 is not the appropriate vehicle for doing so."
Case: Wine Enthusiast, Inc. v. Vinotemp Int'l. Corp., 17-CV-6782 (DLC), Dkt. No. 84 (S.D.N.Y. April 1, 2019).