Loops, LLC v. Phoenix Trading, Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

LOOPS, LLC AND LOOPS FLEXBRUSH LLC,
Plaintiffs-Appellees,

v.

PHOENIX TRADING, INC.
(doing business as Amercare Products, Inc.)
AND WENDY HEMMING,
Defendants-Appellants,

AND

H&L INDUSTRIAL AND DOES 1-50, INCLUSIVE,
Defendants,

v.

RICK KLINGBEIL AND RICK KLINGBEIL, PC,
Movants-Appellants.
______________________

2013-1332, -1333
______________________

Appeals from the United States District Court for the
Western District of Washington in No. 08-CV-1064, Judge
Ricardo S. Martinez.
______________________
2 LOOPS, LLC v. PHOENIX TRADING, INC.

Decided: November 13, 2014
______________________

STEPHEN M. HOGAN, of San Diego, California, argued
for plaintiffs-appellees Loops LLC, et al.

BROOKS F. COOPER, of Portland, Oregon, argued for
defendants-appellants Phoenix Trading, Inc., et al.

RICK KLINGBEIL, of Portland, Oregon, for movants-
appellants Rick Klingbeil, et al.
______________________

Before DYK, TARANTO, and CHEN, Circuit Judges.
DYK, Circuit Judge.
The issue before us on appeal is whether the district
court abused its discretion in granting sanctions of default
judgment, attorney’s fees, and costs to plaintiffs. The
attorney’s fees and costs were imposed jointly on defend-
ants Phoenix Trading, Inc., dba Amercare (“Amercare”),
Wendy Hemming, and their counsel. We find that while
some of the conduct relied upon by the court was subject
to sanction, other conduct was not. Because the district
court relied on conduct that was not properly subject to
sanction, we affirm-in-part, vacate-in-part, and remand
for further consideration.
BACKGROUND
Loops, LLC and Loops Flexbrush, LLC (collectively
“Loops”) brought suit against, inter alia, Amercare,
Hemming (Amercare’s majority shareholder and presi-
dent), and H&L Industrial, alleging patent infringement,
Lanham Act (including 15 U.S.C. § 1125(a)) violations,
unfair competition under Washington common law,
violations of the Washington Consumer Protection Act
LOOPS, LLC v. PHOENIX TRADING, INC. 3

(Wash. Rev. Code §§ 19.86.020, 19.86.090), and fraud.
The defendants were represented by Rick Klingbeil. The
suit was based primarily on Loops’s claim that Amercare
infringed claims 1–32 of U.S. Patent No. 7,334,286
(“the ’286 patent”), by selling copies of the Loops
Flexbrush, a small, flexible-handled toothbrush designed
for safe use in prisons. On March 3, 2010, the district
court sanctioned Amercare with an adverse inference
instruction because “relevant requested documents either
exist and are being withheld or existed during the pen-
dency of this litigation and were lost or destroyed by
Defendants.” J.A. 280. That sanction is not at issue in
this appeal.
After the March 3, 2010, order, Loops conducted fur-
ther discovery in an attempt to determine the extent to
which Amercare had sold infringing products. Amercare
admitted that the “TB-38-425-SH-BLUE” (“TB-38”) flexi-
ble-handled toothbrush came within the claims of the ’286
patent but denied selling other products that came within
the claims. Upon the completion of discovery, Amercare
moved for partial summary judgment on the ground that
all of Amercare’s importation of the infringing TB-38
toothbrushes occurred on or prior to May 22, 2008, which
was before the Loops Flexbrush was properly marked
with the patent number and actual notice of alleged
infringement was provided to defendants. The statute
allows for the recovery of damages only for the period
after proper marking or notice. See 35 U.S.C. § 287(a).
The district court granted partial summary judgment
to Amercare on July 30, 2010, determining that the
defendants should prevail on all claims other than patent
infringement (a ruling not contested on appeal). The
district court also found that defendants did not import
for sale any infringing toothbrushes after May 22, 2008.
4 LOOPS, LLC v. PHOENIX TRADING, INC.

Thereafter, in August 2010, subsequent to the court’s
summary judgment order, Loops sent state Freedom of
Information Act requests to various correctional institu-
tions, seeking evidence that Amercare sold infringing
toothbrushes, including toothbrushes other than the TB-
38, after the date upon which it became aware that a
patent had issued to Loops. In response, the State of
West Virginia sent Loops a price list 1 that Amercare had
previously provided to West Virginia in a response to the
state’s request for quotation. The response to the request
for quotation was signed by Hemming. The price list
contained information about a toothbrush designated
“TB-FLX,” called the “Better Than No-Shank Flexible
Toothbrush.” The price list had not been produced in
discovery, and it was marked “EFFECTIVE DATE
07/07/07.” J.A. 162.
Based on these newly discovered documents, Loops
filed a motion for sanctions pursuant to Rule 37 of the
Federal Rules of Civil Procedure. On March 15, 2011, the
district court granted the sanctions motion, striking
Amercare’s answer, entering default judgment, and
imposing monetary sanctions on the defendants, including
Amercare, Hemming, and defendants’ attorney Rick
Klingbeil and Rick Klingbeil, PC (collectively “Klingbeil”).
The district court’s order relied on several bases for
imposing sanctions. First, the court concluded that
Hemming testified falsely at her deposition that a price
sheet, which omitted the TB-FLX, was her current price

1 Amercare and Hemming argue that the docu-
ments provided were a single price sheet in two parts.
Although the district court was inconsistent on this issue,
it appears to have accepted this contention. Thus, we will
address them together as “the price list” or “the price
sheet.”
LOOPS, LLC v. PHOENIX TRADING, INC. 5

sheet and that she had not changed her price sheet “for
years,” whereas in fact multiple versions of the price sheet
had always existed. J.A. 13.
Second, the court found that Amercare violated a 2009
discovery order by failing to produce the price list.
Third, the court found “that Defendants may have
submitted numerous false declarations in this lawsuit.”
J.A. 15.
Fourth, the court found that Klingbeil suggested that
deponent Yun-Lin Lai did not have a visa enabling him to
travel to the United States for his deposition, when in fact
he did have a visa. Lai was an employee of co-defendant
H&L Industrial, a Chinese company which acted as a
broker between Amercare and its Chinese manufacturers.
Turning to the question of the appropriate sanctions,
the court noted that an adverse instruction was not the
appropriate sanction here, because the court had already
imposed one for the prior discovery misconduct, and
because it was unclear how an adverse instruction would
alleviate the damage caused. Therefore, “the Court
exercise[d] its discretion pursuant to Rule 37,” struck
Amercare’s pleadings, including its answer and affirma-
tive defenses, and entered judgment in favor of Loops on
liability. J.A. 17. The court further sanctioned Amercare,
Hemming, and Klingbeil, through an award of attorney’s
fees and costs.
In the court’s March 19, 2013, order on Loops’s motion
for default damages, the court awarded $54,718.85 in
patent infringement damages 2 against the defendants

2 The damage award is not at issue in this appeal.
Although the district court in its July 30, 2010, summary
judgment order held that Loops had not established any
6 LOOPS, LLC v. PHOENIX TRADING, INC.

and $200,926.00 in attorney’s fees and costs against the
defendants and Klingbeil. Amercare and Hemming
appeal both the default judgment and the award of attor-
ney’s fees and costs. Klingbeil separately appeals the fee-
shifting sanction. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1).
DISCUSSION
I
The issues raised in this appeal are not unique to pa-
tent law, so we apply the law of the regional circuit, in
this case the Ninth Circuit. See Bowling v. Hasbro, Inc.,
403 F.3d 1373, 1375 (Fed. Cir. 2005) (citing Biodex Corp.
v. Loredan Biomedical, Inc., 946 F.2d 850, 857–58 (Fed.
Cir. 1991)). The imposition of sanctions pursuant to
Federal Rule of Civil Procedure 37 is reviewed for abuse
of discretion. See R & R Sails, Inc. v. Ins. Co. of Pa., 673
F.3d 1240, 1245 (9th Cir. 2012). “In cases where the
drastic sanctions of dismissal or default are ordered, the
range of discretion for a district court is narrowed and the
losing party’s non-compliance must be due to willfulness,
fault, or bad faith.” Halaco Eng’g Co. v. Costle, 843 F.2d
376, 380 (9th Cir. 1988) (citations omitted); see also Refac
Int’l, Ltd. v. Hitachi, Ltd., 921 F.2d 1247, 1254 (Fed. Cir.
1990) (“Severe sanctions such as taking allegations as
established and awarding judgment on that basis, dismis-
sal and default judgment are authorized only in extreme
circumstances.”) (citing United States for the Use & Bene-

damages, it revisited that determination in the March 19,
2013, order. The patent infringement damages were
based on the court’s finding (and the defendants’ conces-
sion) that Amercare imported “192,672 of the accused
product in July 2008, after receiving actual notice of the
patent.” J.A. 24.
LOOPS, LLC v. PHOENIX TRADING, INC. 7

fit of Wiltec Guam, Inc. v. Kahaluu Constr. Co., 857 F.2d
600, 603 (9th Cir. 1988)).
Rule 37 allows a court to “issue further just orders”
when a party “fails to obey an order to provide or permit
discovery.” Fed. R. Civ. P. 37(b)(2)(A). The sanctions
contemplated by the rule include adverse inferences,
striking of pleadings, and default judgment. Id. Rule 37
also directs as follows:
Instead of or in addition to the orders [listed in
Rule 37(b)(2)(A)], the court must order the disobe-
dient party, the attorney advising that party, or
both to pay the reasonable expenses, including at-
torney’s fees, caused by the failure, unless the
failure was substantially justified or other cir-
cumstances make an award of expenses unjust.
Fed. R. Civ. P. 37(b)(2)(C).
II
As noted earlier, the district court appeared to rely on
four grounds for imposing sanctions against Amercare
and Hemming. The first is that Hemming lied while
under oath at her deposition.
We conclude that the district court did not abuse its
discretion in finding that Hemming testified falsely at her
deposition as to the price list. As the district court
properly found, Hemming testified in November 2009 that
a price list, which did not include the TB-FLX toothbrush
(the “Better Than No-Shank Flexible Toothbrush”), was
her current price list, and that she had not changed it “for
years,” despite the fact that she sent a different price
sheet marked “effective date 07/07/07” to West Virginia
one month later, in December 2009, which included the
TB-FLX toothbrush. J.A. 13. Moreover, the court cited
the fact that Hemming and Julie Siegel (Hemming’s
assistant) later provided declarations that conceded the
8 LOOPS, LLC v. PHOENIX TRADING, INC.

fact that multiple versions of the price sheet have always
existed. Amercare and Hemming argue that Hemming
did not testify falsely at her deposition because she was
referring to the prices, which have not changed, rather
than the price list, which has. The district court could
reasonably find that explanation unpersuasive, however,
because the transcript clearly shows that the questions
related to the “pricing list” rather than the price:
Q. And Exhibit Number 1 is your current pricing
list?
A. Yes.
Q. Do you change this from time to time?
A. No. Our price stay the same. No. I don’t
change for years, no.
J.A. 243.
As to the second ground, the district court found that
Amercare and Hemming were subject to sanctions for
“violat[ing] the Court’s November 3 2009 discovery order.”
J.A. 15. Loops served document requests on defendants,
seeking, inter alia, “[a]ll documents evidencing communi-
cations” relating to “toothbrushes” and “soft or flexible
handle toothbrushes.” J.A. 316. On September 10, 2009,
the district court granted-in-part Loops’s motion to com-
pel. The court ordered the defendants “to comply with
Requests for Production pertaining to documents related
to flexible handle toothbrushes, no matter what product
number, since the Court deems these documents to be
relevant.” J.A. 42. In the same order, the court clarified
as follows: “Because only flexible handled toothbrushes

3 The district court erroneously refers to this dis-
covery order several times as the “Court’s November 2009
order,” J.A. 13–15, but it is clear from the docket and the
order itself that the order was dated September 10, 2009,
J.A. 42.
LOOPS, LLC v. PHOENIX TRADING, INC. 9

are at issue in this case, Defendants are not compelled to
turn over documents that do not relate to soft-handled
toothbrushes. Documents relating solely to ‘normal’
toothbrushes, those with hard handles, are simply not
relevant.” J.A. 37. In the sanctions order, the district
court found that Amercare and Hemming violated the
discovery order solely because they did not produce the
price list, and it listed the TB-FLX toothbrush (though the
price list did not list the TB-38 toothbrush).
The order, by its terms, unambiguously applies to “on-
ly flexible handled toothbrushes.” J.A. 37 (emphasis
added). The TB-FLX toothbrush does not have a “han-
dle,” and it is therefore outside the scope of the discovery
order because, even if it is flexible, it is not a “handled
toothbrush.” Significantly, the court later found in its
default damages order that the TB-FLX toothbrushes
were not the same as the accused product: “Plaintiffs have
not demonstrated that these [TB-FLX] toothbrushes are
the same as the accused product.” J.A. 27–28.
While the court’s articulated ground for the sanctions
is erroneous, it appears that the price list should have
been produced pursuant to the court’s discovery order.
The heading on the price list reads “AMERFRESH
TOOTHBRUSHES – FLEXIBLE HANDLE.” J.A. 163.
Thus, regardless of whether the TB-FLX toothbrush itself
fell within the scope of the court’s discovery order, this
document should have been produced because it relates to
“flexible handled toothbrushes.” Under these circum-
stances, the district court did not abuse its discretion
insofar as it based its sanctions against Amercare and
Hemming for violation of the discovery order based on a
failure to produce the price list.
The third ground cited by the district court, however,
was not a proper ground for imposing sanctions. The
district court based its sanctions on a finding that “De-
10 LOOPS, LLC v. PHOENIX TRADING, INC.

fendants may have submitted numerous false declarations
in this lawsuit.” J.A. 15 (emphasis added). But a party
cannot be sanctioned on the basis of mere speculation.
See Soules v. Kauaians for Nukolii Campaign Comm., 849
F.2d 1176, 1185 (9th Cir. 1988) (“A district court cannot
award Rule 11 sanctions on the basis of its speculation
that a party would have filed certain papers had that
party been given the opportunity.”).
The fourth and final ground relates to the Lai deposi-
tion. The district court found that based on the circum-
stances of the Lai deposition there “appears to be a
prolonged pattern of misrepresentation and deceit before
this Court.” J.A. 15. Lai was an employee of co-defendant
H&L Industries, and he resided in China. His deposition
was noticed by Loops, and the defendants moved to
quash. Klingbeil, counsel for the defendants, represented
to the district court that “it appears to be impossible to
obtain the necessary paperwork to bring [Lai] to Seattle
in time,” and sought to have Lai deposed by videoconfer-
ence. J.A. 654. Based on this representation, the district
court granted Amercare leave to have Lai appear at his
deposition via videoconference. At his deposition, howev-
er, Lai indicated that he did in fact possess a current visa,
and that there was nothing holding him back from travel-
ling to the United States other than his unwillingness to
travel there. According to a subsequent declaration filed
by Klingbeil, he made “several diligent inquiries to Mr.
Lai regarding his availability [and] visa status,” but
Klingbeil “did not know [Lai] had a current visa.” J.A.
367. Lai also filed his own declaration, in which he ad-
mitted that he had lied to Klingbeil about his visa status.
Amercare and H&L Industries, Lai’s employer, are
separate entities, and neither defendant Amercare nor
defendant Hemming has any ownership interest in H&L
Industries. There is no indication, and the district court
did not find, that Amercare, Hemming, or Klingbeil had
LOOPS, LLC v. PHOENIX TRADING, INC. 11

any knowledge of Lai’s deception. Although Klingbeil
represented all of the defendants, including H&L Indus-
tries, the district court did not find that Klingbeil knew or
should have known that Lai was lying, or that he failed to
reasonably investigate the matter. Under these circum-
stances, it was an abuse of discretion for the district court
to sanction Amercare, Hemming, or Klingbeil for the
misconduct of a co-defendant. See Bonilla v. Volvo Car
Corp., 150 F.3d 88, 93–94 (1st Cir. 1998) (“Codefendants
cooperate all the time, but that does not mean that one
defendant is automatically responsible for misconduct of
another—of which it may have no knowledge or as to
which it may have played no role, active or passive.”).
Indeed, at oral argument before our court, counsel for
Loops appeared to agree that this was not a proper basis
for sanctions.
In summary, although Hemming’s false deposition
testimony and the violation of the court’s discovery order
were proper bases for sanctioning Amercare and Hem-
ming, the other grounds were not. A remand is therefore
necessary. On remand, the district court should consider
the appropriate sanction for the false deposition testimo-
ny and violation of the discovery order. The district court
should also consider the factors articulated by the Ninth
Circuit with respect to default judgment sanctions pursu-
ant to Rule 37: “(1) the public's interest in expeditious
resolution of litigation; (2) the court's need to manage its
docket; (3) the risk of prejudice to the other party; (4) the
public policy favoring the disposition of cases on their
merits; and (5) the availability of less drastic sanctions.”
Hester v. Vision Airlines, 687 F.3d 1162, 1169 (9th Cir.
2012) (quoting Malone v. U.S. Postal Serv., 833 F.2d 128,
130 (9th Cir. 1987)). The risk of prejudice is a “decisive”
12 LOOPS, LLC v. PHOENIX TRADING, INC.

factor where a default sanction is imposed. 4 Adriana Int’l
Corp. v. Thoeren, 913 F.2d 1406, 1412 (9th Cir. 1990); see
also Wanderer v. Johnston, 910 F.2d 652, 656 (9th Cir.
1990) (“[T]he key factors [in assessing a Rule 37 default or
dismissal sanction] are prejudice and availability of lesser
sanctions.”).
III
Turning to the attorney’s fees and cost sanctions
against Klingbeil, the district court appeared to rely on
the same grounds for sanctioning Klingbeil as it did for
sanctioning Amercare and Hemming. The two remaining
grounds for possibly sanctioning Klingbeil are thus the
false deposition testimony and the violation of the discov-
ery order. The false deposition testimony is not a proper
ground because the district court did not make any find-
ings of Klingbeil’s culpability on this issue, and appeared
to rely on Federal Rule of Civil Procedure 37(b)(2)(C),
which only provides for sanctions based on the violation of
a court order, not false deposition testimony. See Toth v.
Trans World Airlines, 862 F.2d 1381, 1385–86 (9th Cir.
1988) (Rule 37(b)(2) only “provides for the award of rea-
sonable expenses and attorney’s fees ‘caused by the fail-
ure’ to obey a court order to provide or permit discovery.
Expenses incurred outside of this particular context are
not provided for in Rule 37(b)(2).”).
The question, therefore, is whether the failure to
comply with the court’s discovery order was sufficient for
the district court to award sanctions against Klingbeil.

4 It is difficult to see what the prejudicial effect
was, if any, of the failure to produce the price list. The
July 2008 import, which was the basis for the damages
award, does not seem to bear a relation to the unproduced
price list or the TB-FLX toothbrush.
LOOPS, LLC v. PHOENIX TRADING, INC. 13

The district court did not find that Klingbeil was culpable
for this violation, and there is record evidence to support
counsel’s assertion that he instructed his clients to locate
and produce relevant documents throughout the course of
the case. On remand, the district court should first de-
termine whether Klingbeil’s failure to comply with the
discovery order was “substantially justified” or the result
of “other circumstances [that] make an award of expenses
unjust.” Fed. R. Civ. P. 37(b)(2)(C); see also Hyde & Drath
v. Baker, 24 F.3d 1162, 1172 (9th Cir. 1994) (“unjust” in
Rule 37 “requires us to consider the attorney’s behavior,
rather than the client’s actions”); Liew v. Breen, 640 F.2d
1046, 1050 (9th Cir. 1981) (“Although ‘wilfullness’ need
not be present in order to impose sanctions under Rule
37(b), a good faith dispute concerning a discovery question
might, in the proper case, constitute ‘substantial justifica-
tion.’” (citation omitted)). If Klingbeil is sanctioned for
the discovery order, then the district court should deter-
mine what portion of the $200,926.00 in attorney’s fees
and costs were “caused by the failure” to comply with the
discovery order. Fed. R. Civ. P. 37(b)(2)(C).
AFFIRMED-IN-PART, VACATED-IN-PART AND
REMANDED
COSTS
Costs to neither party.