Koji IP, LLC v. Renesas Electronics America, Inc.

Background

Koji IP, LLC filed a patent-infringement action against Renesas Electronics America, Inc., asserting infringement of U.S. Patent No. 10,790,703. The action was the third lawsuit filed by one or more attorneys from Ramey LLP for Koji against Renesas concerning the same patent. The first two actions were voluntarily dismissed, and Koji voluntarily dismissed this action on June 12, 2024. Renesas later moved for attorney fees.

At an August 22, 2024 hearing on the fee motion, Renesas raised concerns about possible unauthorized practice of law by Koji’s attorneys. Susan S.Q. Kalra was admitted to the Northern District of California bar and appeared as counsel of record. William P. Ramey, III, and Jeffrey E. Kubiak were not members of that court’s bar, were not members of the State Bar of California, and had not filed applications for permission to appear in this case on a case-by-case basis. Their pleadings listed them as attorneys for Koji and used the phrase “pro hac vice anticipated.”

Unauthorized Practice Concerns

The court’s local rules require attorneys practicing in the district either to be members of the court’s bar or to receive case-specific permission to appear. The court stated that Ramey and Kubiak had not obtained that permission. It also described other federal cases in which the attorneys appeared to have acted as counsel without seeking the required permission.

The court ordered the three attorneys to show cause—meaning to provide reasons why the court should not take action—concerning possible unauthorized practice by Ramey or Kubiak, and possible assistance by Kalra or either of the other attorneys in that conduct. The court said potential actions could include referrals to professional licensing authorities and discipline.

Rule 11 Concerns

Federal Rule of Civil Procedure 11 requires an attorney who presents a court filing to certify that it is not frivolous and that a reasonable inquiry was made before filing. The court was concerned that the attorneys had not adequately investigated whether the earlier dismissals affected their ability to file the third complaint. The court noted that the second dismissal could operate as a decision on the merits under Rule 41 and that, at the hearing, counsel could not identify legal support that reasonably justified filing the third action.

The court was also concerned that the attorneys had not performed the analysis required before filing a patent-infringement complaint. That analysis includes interpreting the patent claims and comparing the accused devices with those claims. Based on the information then before it, the court stated that Kalra and Kubiak appeared not to have performed their own infringement analysis, and that Ramey and Kalra appeared to have relied entirely on a non-attorney consultant’s opinion rather than conducting the required analysis themselves.

The court did not make a final finding that Rule 11 had been violated. Instead, it ordered the attorneys to explain what pre-filing investigation and infringement analysis they performed.

Inherent Authority

The court also invoked its inherent authority, which is a court’s power to address bad-faith litigation conduct when ordinary rules or statutes may not be sufficient. It ordered all three attorneys to show cause why they should not be sanctioned under that authority for the conduct discussed in the order, including possible unauthorized practice and inadequate pre-filing investigation.

Order and Current Disposition

The court ordered Ramey, Kubiak, and Kalra to submit declarations under penalty of perjury addressing the issues identified in the order. The responses were due by September 12, 2024. The court set an in-person show-cause hearing for September 19, 2024, and required all three attorneys to attend in person.

The order did not impose sanctions, refer the attorneys to a bar or other authority, or decide the patent-infringement claims. It stated that the court would consider monetary sanctions, nonmonetary directives, discipline, and referrals if the responses did not show sufficient cause.