United States Court of Appeals
for the Federal Circuit
__________________________
RATES TECHNOLOGY, INC.,
Plaintiff,
AND
JAMES B. HICKS,
Plaintiff-Appellant,
v.
MEDIATRIX TELECOM, INC., AND
MEDIA5 CORPORATION,
Defendants-Appellees,
AND
BURKE, WILLIAMS & SORENSEN, LLP,
Defendant.
__________________________
2011-1384
__________________________
Appeal from the United States District Court for the
Eastern District of New York in Case No. 05-CV-2755,
Judge Joanna Seybert.
___________________________
Decided: July 26, 2012
___________________________
RATES TECH v. MEDIATRIX TELECOM 2
JAMES B. HICKS, Hicks Parks, LLP, of Los Angeles,
California, argued for plaintiff-appellant.
ADAM M. CONRAD, King & Spalding LLP, of Charlotte,
North Carolina, argued for defendants-appellees. With
him on the brief were ETHAN HORWITZ, of New York, New
York; and DARYL L. JOSEFFER, of Washington, DC.
__________________________
Before BRYSON, DYK, and MOORE, Circuit Judges.
BRYSON, Circuit Judge.
This appeal arises from the imposition of discovery
sanctions against James B. Hicks. Mr. Hicks was the
lead attorney for Rates Technology, Inc. (“RTI”), the
plaintiff in a patent infringement action. The two patents
in suit relate to systems for minimizing the cost of placing
long-distance telephone calls. The defendants, Mediatrix
Telecom, Inc., and Media5 Corporation (collectively,
“Mediatrix”), manufacture and sell equipment that modi-
fies existing telephone systems to convert them to voice-
over-Internet-protocol (“VoIP”) systems. Over the course
of the litigation, RTI was ordered on four separate occa-
sions to respond to a specific contention interrogatory
propounded by Mediatrix. A magistrate judge determined
that RTI never adequately responded to the interrogatory,
despite the court’s repeated orders to do so, and that the
failure to comply with the court’s orders was willful.
Accordingly, the magistrate judge recommended dismiss-
ing the case and imposing monetary sanctions against Mr.
Hicks and RTI in the amount of $86,965.81, to be split
evenly between them. The district court adopted the
recommendation. Mr. Hicks now appeals the monetary
sanctions imposed against him. RTI did not appeal the
order dismissing the action or the award of monetary
sanctions against it. We affirm.
3 RATES TECH v. MEDIATRIX TELECOM
I
RTI sued Mediatrix on June 8, 2005, alleging in-
fringement of U.S. Patents No. 5,425,085 and No.
5,519,769. Because the basis for RTI’s allegations of
patent infringement was unclear to Mediatrix, Mediatrix
requested and obtained permission for early, limited
discovery. Specifically, it obtained permission to pro-
pound three interrogatories seeking RTI’s theory of in-
fringement. Interrogatory no. 3 requested the following:
Separately for each claim of the Patents-in-suit
that [RTI] contends is infringed, state the basis
for that contention, including without limitation,
identification on an element-by-element basis of
the component, structure, feature, functionality,
method or process of each accused Mediatrix
product that allegedly satisfies each element.
On November 4, 2005, a magistrate judge ordered RTI
to respond to that interrogatory by December 19, 2005.
RTI failed to provide a meaningful response. On January
10, 2006, the magistrate judge again ordered RTI to
respond to the interrogatory. On March 16, 2006, Media-
trix was ordered to provide discovery to RTI to assist RTI
in responding to the interrogatory. RTI’s discovery re-
quests included requests for production of all “technical
documents” and documents describing the capability of
“rout[ing] telephone calls using VoIP or non-VoIP,” as
well as requests relating to other technical aspects of the
accused products. A Minute Entry and Order entered on
March 17, 2006, noted that RTI would have ten days from
the service of Mediatrix’s discovery responses “to make
any objections in writing to [Mediatrix].”
RATES TECH v. MEDIATRIX TELECOM 4
On April 17, 2006, Mediatrix produced documents to
RTI. The magistrate judge described the production as
“extensive” and noted that it included “thousands of pages
of technical drawings and other documents.” RTI did not
object to the production within the ten days allowed by
the magistrate judge for objections. Nonetheless, RTI
failed to produce a meaningful response to Mediatrix’s
contention interrogatories. Consequently, on July 24,
2006, the magistrate judge for a third time ordered RTI to
respond to Mediatrix’s interrogatory no. 3.
Almost five months after Mediatrix’s April 17, 2006,
production, RTI for the first time objected to Mediatrix’s
production. In a letter to the court, RTI complained that
Mediatrix had produced primarily product manuals
rather than schematics. RTI also sought leave to serve
additional interrogatories on Mediatrix. Specifically, it
sought leave to file interrogatory nos. 26-30, which is
more than the 25 allowed by Fed. R. Civ. P. 33(a)(1).
Interrogatory nos. 26-30 sought specific information about
the functioning of Mediatrix’s products, such as whether
“a call-routing selection decision is made after the tele-
phone call is dialed, and if so, . . . how the call is routed
and how the call-routing selection decision is made.” RTI
later claimed that responses to the requested interrogato-
ries were necessary for RTI to respond to Mediatrix’s
contention interrogatories.
Mediatrix opposed RTI’s attempt to propound inter-
rogatory nos. 26-30, arguing that RTI had failed to meet
and confer, that RTI had made misrepresentations to the
court about the meet-and-confer process, that RTI had
provided no reasonable justification for the court to allow
additional interrogatories beyond the 25 allowed by the
Federal Rules of Civil Procedure, and that RTI should
have been able to provide adequate responses to Media-
5 RATES TECH v. MEDIATRIX TELECOM
trix’s contention interrogatories based on Mediatrix’s
April 17, 2006, production.
On September 5, 2007, the magistrate judge for a
fourth time ordered RTI to respond to Mediatrix’s conten-
tion interrogatories. The magistrate judge stated that
based on the information in RTI’s possession, including
the discovery previously produced by the defendants, RTI
“should be able to make an element-by-element claim
construction analysis at this point.” The court warned
Mr. Hicks and RTI “that this is indeed the last opportu-
nity to comply with the directives of this Court and Plain-
tiff proceeds at its own peril. If a full and complete
response is not provided to [Mediatrix] with respect to
Interrogatory No. 3, I shall recommend . . . that this
matter be dismissed . . . .”
On September 27, 2007, RTI served a supplemental
discovery response on Mediatrix. Once again, however,
the magistrate judge found the response to be inadequate.
As an illustration of the inadequacy of the response, the
magistrate judge characterized an email sent on Septem-
ber 27, 2007, by RTI’s counsel to Mediatrix’s counsel as
follows: “Plaintiff’s position as reflected in the email
regarding the ’769 patent was that it did not currently
contend that Defendants infringed any particular claim of
that patent, but nonetheless infringed the patent as a
whole.” Mediatrix subsequently moved for sanctions,
seeking dismissal of the suit and attorney’s fees.
On March 31, 2008, the magistrate judge filed a re-
port and recommendation agreeing with Mediatrix that
the case should be dismissed. Based on the “pattern of
dilatory behavior,” she concluded that RTI’s failure to
comply with its discovery obligations and the orders of the
court was willful. She further concluded that RTI’s
RATES TECH v. MEDIATRIX TELECOM 6
“continued non-compliance” and its “inability to spell out
an appropriate basis for charging Defendants with in-
fringement nearly three years into this litigation indeed
highlights [RTI’s] willfulness.” In addition, the magis-
trate judge found that the prefiling inquiry conducted by
RTI and Mr. Hicks “was not reasonable nor was it made
in good faith.” On the same day, the magistrate judge
denied RTI’s motion for leave to serve interrogatory nos.
26-30, explaining that she was denying the motion in
light of her recommendation that the case be dismissed.
In a supplemental report and recommendation, the
magistrate judge assessed attorney’s fees equally against
RTI and Mr. Hicks. The magistrate judge applied Rule
37(b)(2)(C) of the Federal Rules of Civil Procedure, which
provides that in addition to litigation sanctions for dis-
obeying a discovery order, the court “must order the
disobedient party, the attorney advising that party, or
both to pay the reasonable expenses, including attorney’s
fees, caused by the failure unless the failure was substan-
tially justified or other circumstances make an award of
expenses unjust.” In light of the language of the rule, the
magistrate judge stated that the sanctions motion that
was brought under Rule 37(b) put counsel on notice that
he was subject to monetary sanctions if the court should
find a violation.
On January 5, 2010, the district court entered an or-
der adopting the magistrate judge’s recommendation in
its entirety. In response to Mr. Hicks’s objections to the
sanctions award, the court explained that imposing a
monetary sanction on an attorney is justified when the
court determines that a party and its counsel are equally
responsible for the failure to obey court orders. In this
case, the court ruled, “the conduct of [RTI] and its counsel
in failing to comply with Orders and provide an adequate
7 RATES TECH v. MEDIATRIX TELECOM
basis for infringement was egregious enough to warrant
an equal split in costs” between RTI and Mr. Hicks. In
response to Mr. Hicks’s request for reconsideration, the
district court reiterated that “Plaintiff and Hicks were
both responsible for the sanctionable conduct.”
On appeal, Mr. Hicks argues that he should not be
sanctioned for failing to provide information not within
his possession, that he should not be sanctioned because
he did not personally violate any discovery orders, that
the sanctions award violates due process, and that the
district court improperly refused to hear oral argument on
the motion for sanctions. Because we are not persuaded
by any of Mr. Hicks’s arguments, we affirm the sanctions
imposed by the district court against him.
II
“The discovery provisions of the Federal Rules of Civil
Procedure are designed to achieve disclosure of all the
evidence relevant to the merits of a controversy.” Daval
Steel Prods. v. M/V Fakredine, 951 F.2d 1357, 1365 (2d
Cir. 1991) (internal quotation marks omitted). “When a
party seeks to frustrate this design by disobeying discov-
ery orders, thereby preventing disclosure of facts essential
to an adjudication on the merits, severe sanctions are
appropriate.” Id.
Mr. Hicks cites various authorities for the legal
proposition that he cannot be sanctioned for failing to
produce information not within his possession and that to
do so would violate his due process rights. See, e.g.,
Cornell Research Found., Inc. v. Hewlett-Packard Co., No.
5:01-cv-1974, 2006 WL 5097357, at *23 (N.D.N.Y. Nov.
13, 2006); see also Satcorp Int’l Grp. v. China Nat’l Silk
Imp. & Exp. Corp., 101 F.3d 3, 6 (2d Cir. 1996). As an
RATES TECH v. MEDIATRIX TELECOM 8
initial matter, all of the cases cited by Mr. Hicks involved
fact interrogatories, whereas the interrogatories at issue
in this case were contention interrogatories that simply
asked Mr. Hicks for RTI’s theory of infringement. But
even accepting Mr. Hicks’s assertion that the category of
“information not within his possession” can reasonably be
said to include responses to contention interrogatories,
Mr. Hicks has failed to show any error in the court’s
sanctions order, because the magistrate judge found that
RTI and Mr. Hicks did have the information necessary to
respond to Mediatrix’s interrogatories yet repeatedly and
willfully failed to provide adequate responses. As noted
above, on April 17, 2006, Mediatrix produced thousands of
pages of technical drawings and other documents to RTI.
RTI did not file any objections to that production during
the 10 days the court allowed for it to do so. By the time
RTI did complain about Mediatrix’s production, nearly
five months later, the time to object had long since
passed. In any event, the magistrate judge found that the
discovery produced by Mediatrix was “substantial” and
that it enabled RTI “to make an element-by-element claim
construction analysis” with respect to interrogatory no. 3.
Mr. Hicks has not even attempted to show that the mag-
istrate judge’s finding on that point was erroneous.
Accordingly, we reject Mr. Hicks’s assertion that he
was improperly sanctioned for failing to produce informa-
tion that he did not have. The district court sanctioned
Mr. Hicks for willfully failing to respond to Mediatrix’s
contention interrogatories despite possessing sufficient
information to do so. Because the court found that he had
sufficient information to respond to interrogatory no. 3,
we reject Mr. Hicks’s argument that sanctioning him for
failing to produce information not within his possession
violated his due process rights.
9 RATES TECH v. MEDIATRIX TELECOM
We likewise reject Mr. Hicks’s argument that he was
denied adequate notice of the possibility that sanctions
would be imposed. The record shows that Mr. Hicks was
put on clear notice of the possibility that the court would
impose sanctions if he did not comply with the court’s
directives. On July 24, 2006, the magistrate judge stated,
“It should be noted that this is Plaintiff’s final opportu-
nity to comply with this Court’s orders and the rules of
discovery. Should Plaintiff fail to do so, the Court will
fashion an appropriate remedy” (emphasis in original).
And on September 5, 2007, after ordering Mr. Hicks for a
fourth time to provide an adequate response to Media-
trix’s contention interrogatory, the magistrate judge
warned Mr. Hicks “that this is indeed the last opportunity
to comply with the directives of this Court and Plaintiff
proceeds at its own peril. If a full and complete response
is not provided to [Mediatrix] with respect to Interroga-
tory No. 3, I shall recommend . . . that this matter be
dismissed . . . .”
The magistrate judge noted that the motion for sanc-
tions under Rule 37(b) necessarily placed Mr. Hicks on
notice of the possibility that, as counsel for the sanctioned
party, he would be subject to a personal monetary sanc-
tion. We agree. Because Rule 37(b)(2)(C) provides that
absent a valid excuse a monetary sanction will be imposed
for discovery violations on “the disobedient party, the
attorney advising the party, or both,” Mr. Hicks had clear
notice that any monetary sanction issued by the court
could extend to him. 1
1 Mr. Hicks argues in passing that the sanctions
order violated due process because Mediatrix violated its
obligations to meet and confer about the motion for sanc-
tions. The district court addressed that issue, specifically
finding that the parties did meet and confer, and that Mr.
RATES TECH v. MEDIATRIX TELECOM 10
To the extent Mr. Hicks argues that the magistrate
judge abused her discretion in denying his motion for
leave to serve interrogatory nos. 26-30, we disagree.
Although the magistrate judge denied the motion on the
ground that she was simultaneously recommending that
the case be dismissed, the record reveals several other
sound reasons justifying the magistrate judge’s ruling.
The Federal Rules of Civil Procedure allow each party to
serve 25 interrogatories. Fed. R. Civ. P. 33(a)(1). RTI
provided no persuasive explanation as to why it needed to
serve more than 25 interrogatories, and the record shows
that RTI should have been able to answer Mediatrix’s
pending contention interrogatories without serving addi-
tional discovery requests. For that reason alone, the
magistrate judge’s denial of RTI’s motion was justified.
Mr. Hicks also argues that he cannot be sanctioned
because he did not personally violate a discovery order or
advise his client to do so. His position on this point seems
to have two elements. First, he argues that he could not
personally be responsible for any discovery violation
because he could not produce information that he did not
have. We have already considered and rejected that
argument. Second, Mr. Hicks tries to shift the blame for
the production failures to Robert Epstein, whom Mr.
Hicks describes as “RTI’s patent counsel.” Mr. Hicks
argues that, “[a]s a business litigator, Hicks was entitled
to rely on the plaintiff’s patent counsel’s analysis.” It is
unclear exactly what role Mr. Epstein played in this case,
but he is not listed as counsel for RTI on the district
Hicks acknowledged as much in the October 24, 2007,
hearing before the magistrate judge. To the extent that
Mr. Hicks’s argument is that the parties did not discuss
the possibility of monetary sanctions against him person-
ally, that argument fails for the same reason as his claim
of lack of notice of personal sanctions against him.
11 RATES TECH v. MEDIATRIX TELECOM
court’s docket sheet. Rather, Mr. Hicks is listed as “lead
attorney.” As lead counsel for RTI, Mr. Hicks had a duty
to comply with the district court’s orders, which he failed
to do—a failure that the magistrate judge characterized
as willful. Therefore, we reject Mr. Hicks’s attempt to
shift the blame for the discovery abuses to Mr. Epstein.
As for his claimed lack of culpability, the district court
flatly rejected that argument, ruling that his conduct as
counsel for RTI in the discovery process was “egregious,”
and that RTI and Mr. Hicks “were both responsible for
the sanctionable conduct.”
Finally, Mr. Hicks argues that the magistrate judge
and the district court abused their discretion in failing to
grant him the opportunity for oral argument on the
motion for sanctions. We disagree. Aside from his oppor-
tunity to address the sanctions issue in written submis-
sions, Mr. Hicks had an opportunity to discuss the
sanctions motion at a hearing on October 24, 2007.
Although the hearing dealt with several matters, both
parties were able to, and did, address the sanctions
motion at that time. Under Second Circuit law, which
applies to this non-patent issue arising from a district
court in that circuit, there is no general right to make an
oral presentation in civil matters, even on dispositive
motions. See Dotson v. Griesa, 398 F.3d 156, 159 (2d Cir.
2005); AD/SAT v. Associated Press, 181 F.3d 216, 226 (2d
Cir. 1999); Greene v. WCI Holdings Corp., 136 F.3d 313,
315 (2d Cir. 1998) (citing numerous cases). With respect
to sanctions, “due process requires that courts provide
notice and opportunity to be heard.” In re 60 East 80th
Street Equities, Inc., 218 F.3d 109, 117 (2d Cir. 2000).
However, “a full evidentiary hearing is not required; the
opportunity to respond by brief or oral argument may
suffice.” Id.; see also Schlaifer Nance & Co. v. Estate of
Warhol, 194 F.3d 323, 335 (2d Cir. 1999) (“We have
RATES TECH v. MEDIATRIX TELECOM 12
acknowledged that the opportunity to submit written
briefs may be sufficient to provide an opportunity to be
heard.”). In this case, Mr. Hicks had the opportunity to
respond both orally and with written briefs.
Moreover, the issues on which Mr. Hicks claims he
needed to make an oral presentation had already been
addressed in previous proceedings before the court. There
were several status conferences and hearings on motions
to compel during which RTI’s responses to Mediatrix’s
contention interrogatories were discussed. And Mr. Hicks
had repeatedly been warned by the magistrate judge that
sanctions would be imposed if he did not adequately
respond to interrogatory no. 3. Under these circum-
stances, there was no need for another hearing on the
issue of Mr. Hicks’s claim that he was justified in failing
to submit an adequate response to Mediatrix’s contention
interrogatories. Accordingly, Mr. Hicks is not entitled to
relief on that basis.
As set forth above, Mr. Hicks has not provided any
plausible basis for reversing the district court’s sanctions
order. The heart of his argument is that he should not be
sanctioned for failing to provide information that he did
not have. But he ignores the magistrate judge’s express
finding that he had sufficient information to comply with
her orders, and that to the extent he lacked information it
was because he “failed to take the most basic steps needed
to fulfill [RTI’s] discovery obligations.” Accordingly, the
imposition of sanctions was not an abuse of discretion or
otherwise erroneous.
* * * * *
On a separate matter, we note that Mr. Hicks’s brief
on appeal to this court contained several statements that
13 RATES TECH v. MEDIATRIX TELECOM
were misleading or improper. One of the headings in Mr.
Hicks’s brief reads, “Both the Magistrate and the District
Court Found that RTI’s and its Litigation Counsel Hicks’
Pre-Filing Investigation Was Sufficient.” It is true that
the magistrate judge recommended denying Rule 11
sanctions and instead recommended imposing sanctions
under Rule 37. In her final report and recommendation,
however, she concluded that the prefiling inquiry con-
ducted by RTI and Mr. Hicks “was not reasonable nor was
it made in good faith.” The district court adopted the
magistrate judge’s report and recommendation in its
entirety. It is thus clear that, contrary to Mr. Hicks’s
representation in his brief, neither the magistrate judge
nor the district court ultimately found that RTI’s or Mr.
Hicks’s prefiling investigation was “sufficient.”
Mr. Hicks also stated in his brief that this court had
previously held RTI’s prefiling investigation process to be
adequate. In discussing RTI’s prefiling investigation, Mr.
Hicks cited Rates Technology Inc. v. Tele-Flex Systems,
Inc., No. 00-1184, 2000 WL 1807411 (Fed. Cir. Dec. 8,
2000), a case involving different defendants and different
patents in which RTI’s and Mr. Hicks’s prefiling investi-
gation was questioned. In referring to this court’s deci-
sion in that case, Mr. Hicks cited the case as follows: “See
Rates Technology Inc. v. Tele-Flex Systems, 251 F.3d 170
(Fed. Cir. 2000).” He failed to note, however, that the
disposition was a summary nonprecedential order issued
under Rule 36 of the rules of this court. Citing that case
and comparing the prefiling investigation done there to
what was done here, Mr. Hicks stated, “[t]his Circuit held
that was a fully adequate pre-litigation investigation,”
and added that “RTI’s pre-filing investigation process
[was] approved in the RTI v. Tele-Flex case.” After de-
scribing RTI’s prefiling investigation in this case, he
concluded, in boldfaced and underlined font, referring to
RATES TECH v. MEDIATRIX TELECOM 14
the pre-filing investigation in the present case, “[t]his is a
fully adequate pre-litigation examination, under applica-
ble Federal Circuit law.” Immediately following that
statement, he cited the 2000 RTI v. Tele-Flex case again,
but again without noting that it was a nonprecedential
order issued under Rule 36.
Rule 36 allows us to “enter a judgment of affirmance
without opinion” under certain circumstances. Since
there is no opinion, a Rule 36 judgment simply confirms
that the trial court entered the correct judgment. It does
not endorse or reject any specific part of the trial court’s
reasoning. In addition, a judgment entered under Rule 36
has no precedential value and cannot establish “applica-
ble Federal Circuit law.” See, e.g., U.S. Surgical Corp. v.
Ethicon, Inc., 103 F.3d 1554, 1556 (Fed. Cir. 1997). It is
therefore not correct to say, as Mr. Hicks did here, that
our previous Rule 36 judgment held that his actions in the
RTI v. Tele-Flex case constituted “a fully adequate pre-
litigation examination.” Moreover, while nonprecedential
decisions of this court issued after January 1, 2007, may
be cited in briefs to this court, see Fed. Cir. R. 32.1, the
Rule 36 disposition in this case was from 2000. It is
inappropriate to cite Rule 36 dispositions of this court as
establishing circuit precedent except to the extent that
the citation is in support of a claim of “claim preclusion,
issue preclusion, judicial estoppel, law of the case, and the
like,” Fed. Cir. R. 32.1(c), which was not the case here.
While we disapprove of those aspects of Mr. Hicks’s brief,
we have not taken those matters into account in deciding
the merits of this case.
AFFIRMED