Intellect Wireless, Inc. v. Sharp Corp. (87 F. Supp. 3d 817, 2015)

United States District Court for the Northern District of Illinois 2015-04-03

Citations

Full opinion text

MEMORANDUM OPINION AND ORDER

REBECCA R. PALLMEYER, United States District Judge

On October 20, 2010, Plaintiff Intellect Wireless (“IW”), represented by attorneys at the law firm Niro, Haller & Niro (“Niro”), filed a complaint in this court against Defendants Sharp Corporation, Sharp Electronics Corporation (together “Sharp”), Hewlett Packard Company (“HP”), Palm, Inc., Dell, Inc., and Garmin International, Inc., alleging infringement of two of IW’s patents. The court granted partial summary judgment of non-infringement to Defendants in March 2012, and then stayed the case pending Judge William Hart’s ruling on an inequitable conduct defense asserted against IW in a related case brought to enforce the same patents, see Intellect Wireless, Inc. v. HTC Corp., No. 09-cv-2945. Following a bench trial, Judge Hart concluded that IW’s founder, Daniel Henderson, among other things, filed affirmatively false declarations with the United States Patent and Trademark Office. As a result, Judge Hart held the patents unenforceable due to inequitable conduct. See Intellect Wireless, Inc. v. HTC Corp., 910 F.Supp.2d 1056 (N.D.Ill.2012). The Federal Circuit affirmed Judge Hart’s ruling. Intellect Wireless, Inc. v. HTC Corp., 732 F.3d 1339 (Fed.Cir.2013).

After the Federal Circuit’s affirmance, Defendants in this case moved for an award of fees against IW, see 35 U.S.C. § 285, and on May 30, 2014, the court granted that request, finding that a pattern of deceit rendered this case “exceptional” within the meaning of the statute’s language. In its opinion, the court noted that “[i]f trial counsel was indeed made aware of the false declarations, Rule 11 sanctions may also be a possibility.” (Op. & Order [168], hereinafter “Op.,” 13 n.ll.) After conducting additional discovery, Defendants now assert that Niro’s attorneys were aware of the false declarations, and therefore knew, or reasonably should have known, that the patents were invalid, but nevertheless forged ahead with this litigation. Defendants ask the court to award attorneys’ fees [227] [233] against five attorneys at Niro — Joseph Culig, Paul Gibbons, David Mahalek, Raymond Niro, Sr., and Paul Vickrey — and the firm itself, under Rule 11, 28 U.S.C. § 1927, and the court’s inherent authority. Niro’s attorneys maintain that the motion for sanctions is untimely and that none of their conduct in this case is sanctionable. For the reasons explained below, the court concludes that sanctions under Rule 11 are procedurally barred, but counsels’ conduct merits an award of sanctions against Paul Gibbons, David Mahalek, Raymond Niro, Sr., and Paul Vickrey under § 1927 and the court’s inherent authority.

BACKGROUND

In 2007, Daniel Henderson obtained the two patents at issue in this case — U.S. Patent Numbers 7,266,186 (“ '186 Patent”) and 7,310,416 (“ '416 Patent”) — and assigned those patents to his company, Intellect Wireless (“IW”). (Op. at 2.) IW, represented by attorneys from the Niro firm, thereafter proceeded to enforce those patents aggressively, filing six federal law suits claiming infringement against a total of twenty-four defendants. (Id. at 2.) IW initiated this action against Defendants Sharp, HP, Palm, Dell, and Garmin in October 2010. Though the majority of the twenty-four defendants settled, including Garmin, the remaining Defendants here sought summary judgment, which this court granted in part and denied in part in March 2012. The court granted summary judgment on the direct infringement claims, but denied it with respect to induced infringement. (Mem. Op. & Order [132], 20.) Meanwhile, in a related case before Judge William Hart, Intellect Wireless v. HTC Corp., No. 09-ev-2945, IW and another telecommunications company, HTC, proceeded to a bench trial. Just twelve days after this court’s summary judgment ruling, Defendants filed a motion to stay the case pending Judge Hart’s ruling on HTC’s inequitable conduct allegations. The court granted the motion. 0See Mar. 23, 2012 Minute Entry [136].)

After hearing evidence at the bench trial, Judge Hart held both the '186 and '416 patents unenforceable due to IW’s inequitable conduct. Intellect Wireless, Inc. v. HTC Corp., 910 F.Supp.2d 1056 (N.D.Ill.2012). That ruling was affirmed on appeal. Intellect Wireless, Inc. v. HTC Corp., 732 F.3d 1339 (Fed.Cir.2013). Specifically, Judge Hart found that Henderson filed a false Rule 131 Declaration with the Patent and Trademark Office (“PTO”) on February 9, 2007 in order to “swear behind” the priority date of another patent application, the “Albert patent,” which had a priority date of February 10, 1993. HTC Corp., 910 F.Supp.2d at 1073-74; (Op. at 5). The Declaration was submitted in the prosecution of a different patent — United States Patent number 7,257,210 (“ '210 patent”) —which is part of Henderson’s larger patent family, and upon which the “picture claims” in the '186 and '416 patents directly depend. HTC Corp., 910 F.Supp.2d at 1065. In the Rule 131 Declaration, Henderson averred that his patent had priority because he had “conceived of the claimed invention prior to February 10, 1993 and did not abandon, suppress or conceal the invention from at least before February 10, 1993 to either an actual reduction to practice in July 1993 or to January 5, 1994, the filing date of this application” (Feb. 9, 2007 Rule 131 Deck, Ex. 1 to Dell’s Mot. for Sanctions [228-1], hereinafter “Rule 131 Decl.,” ¶ 4), and that his invention “was actually reduced to practice and was demonstrated at a meeting with Kazuo Hashimoto of Hashimoto Corporation in July of 1993” through a “working prototype,” which transmitted a picture through a wireless network. (Rule 131 Deck ¶ 9.)

The day after submitting the Rule 131 Declaration, Henderson e-mailed his patent prosecution attorney, Robert Tendler (who is not associated with the Niro firm), admitting that the affidavit was false: “I want to address what I perceive is a potentially lethal blow to the integrity and validity of my patent portfolio from the incorrect declaration faxed to the PTO on Friday.” (Henderson E-mail to Tendler, Feb. 10, 2007, Ex. 1 to Defs.’ HP and Palm’s Supplemental Auth. in Supp. of an Award of Fees against Atty’s for IW [232— 2], hereinafter “Henderson Feb. 10, 2007 E-mail.”) No evidence in the record explains what prompted Henderson’s about-face, but he went on, stating that “the intellect device shown to Hashimoto in July 1993 HAD NO WAY of displaying a picture on a two line alphanumeric display, contrary to my recent inaccurate declaration.” (Henderson Feb. 10, 2007 E-mail.) (emphasis in original). Henderson expressed particular concern about the effect this false statement could have on subsequent enforcement litigation. He explicitly observed that “allegations of fraud on the patent office will now be the easiest way to invalidate the entire patent portfolio ... I fully expect that it will also introduce serious concerns for my litigation counsel.” {Id.) Henderson directed Ten-dler to “contact Cliff Kraft at Niro’s office to see what their take is on this development. As you suggested, it makes sense to discuss with them what they may recommend.” (Id.) Tendler replied, counseling that the situation “is fixable with complete candor with the USPTO,” and suggesting that he and Henderson “address this on the phone” because “[t]here is no guarantee that this will not be discoverable.” (Tendler E-mail to Henderson, Feb. 10, 2007, Ex. 1 to Defs.’ HP and Palm’s Supplemental Auth. in Supp. of an Award of Fees against Atty’s for IW [232-2].) As Judge Hart recounted, Henderson and Tendler neither withdrew the affidavit nor corrected the false representations. Instead, they made a “series” of false and obfuscating statements and repeated the inaccuracies in subsequent declarations. HTC Corp., 910 F.Supp.2d at 1073. The initial false Rule 131 Declaration was never withdrawn and remains part of the patent prosecution history. (See generally Excerpts from File History of U.S. Patent No. 7,257,210 [232-10], hereinafter “File History of '210 Patent.”)

On receiving Judge Hart’s ruling, the court initially dismissed this case without prejudice on September 12, 2012, pending the Federal Circuit’s resolution of the appeal. (See Sept. 12, 2012 Minute Entry [145].) That order was amended, in part, on October 10, 2012, with the following language: “Case will be dismissed with prejudice 30 days after a Federal Circuit decision affirming Judge Hart’s ruling. In addition, Defendant will have leave to file a motion for an award of fees, if appropriate, 30 days after a ruling affirming Judge Hart’s opinion.” (See Oct. 10, 2012 Minute Entry [150]; Oct. 11, 2012 Minute Entry [151].) The Federal Circuit issued its opinion on October 9, 2013, see Intellect Wireless, Inc. v. HTC Corp., 732 F.3d 1339 (Fed.Cir.2013), and on November 8, 2013 Defendants filed their motions for fees against IW pursuant to 35 U.S.C. § 285. (Defs.’ Mot. to Declare Case Exceptional and Award Fees and Costs [154], hereinafter “Defs.’ Mot. for Fees against IW.”) Defendants argued that the case was “exceptional” within the meaning of § 285 based on IW’s inequitable conduct in the patent prosecution, its filing of a frivolous suit, and its improper settlement tactics. (Op. at 9, 18.) This court granted Defendants’ motion on May 30, 2014. (Id. at 18, 20.) In its ruling, the court did “not resolve the question whether Plaintiff engaged in litigation misconduct but note[d] that Defendants’ concerns appear to be valid,” (id. at 18), and flagged the possibility of sanctions against counsel if the Niro firm had been “made aware of the false declarations” and still brought the infringement claims in this case. (Id. at 13 n.ll.) The court allowed additional discovery, and on the strength of the additional information, Defendants now contend that Niro’s attorneys did know, or reasonably should have known, about the false Rule 131 Declaration before filing the complaint on October 20, 2010. As such, Defendants urge, sanctions should be levied against David Mahalek, Paul Vickrey, Ray Niro, Sr., Joseph Culig, and Paul Gibbons.

I. Niro’s knowledge of the false Rule 131 Declaration

A. Information available in 2007

Defendants HP and Palm maintain that someone at the Niro firm must have known about the February 10, 2007 e-mail from Henderson to Tendler around the time Henderson sent it. (HP and Palm’s Supplemental Auth. in Supp. of an Award of Fees against Atty’s for IW [232], hereinafter “HP and Palm Sanctions Mot.,” 2.) These Defendants note Henderson’s instruction that Tendler contact Cliff Kraft at the Niro firm to discuss the false declaration. (Henderson Feb. 10, 2007 E-mail.) Defendants note, farther, that Henderson had frequent communication with the Niro attorneys throughout the patent prosecution process. (HP and Palm Sanctions Mot. at 2-3.) Pointing to correspondence, phone records, and billing records as evidence of extensive communication immediately before and after the false affidavit was submitted, HP and Palm contend that it is “inconceivable that Henderson and Niro never discussed the false declarations ...” (HP and Palm Sanctions Mot. at 5.)

In particular, HP and Palm highlight three January 2007 memos that Henderson faxed to Ray Niro and Paul Vickrey, updating them on the patent prosecution. (See Jan. 24, 2007 Mem. from Henderson to Niro and Vickrey, Ex. 3 to HP and Palm’s Sanctions Mot [232-4], hereinafter “Jan. 24, 2007 Mem.”; Jan. 25, 2007 Mem. from Henderson to Niro and Vickrey, Ex. 4 to HP and Palm’s Sanctions Mot [232-5], hereinafter “Jan. 25, 2007 Mem.”; Jan. 29, 2007 Mem. from Henderson to Vickrey, Ex. 5 to HP and Palm’s Sanctions Mot. [232-6], hereinafter “Jan. 29, 2007 Mem.”) The first memo reports that Henderson “had a blockbuster interview with the Patent examiner;” the examiner suggested certain additional claims would be allowed for patent application 11/050,370, another patent in the larger family of patents, but not one at issue in this case. (Jan. 24, 2007 Mem. at 1.) Henderson attached the list of the additional allowed claims and asked Vickrey and Niro to “review the scope and the quality of the additional claims” to help prepare for future infringement suits. (Id. at 1.) The second memo included a list of “the prior art which has been cited and considered by the patent office in all of the to be allowed/issued cases.” (Jan. 25, 2007 Mem. at 1.) Third, Henderson asked Vick-rey for advice on incorporating Intellect Wireless in order to assign his pending patents to the company. (Jan. 29, 2007 Mem. at 1.) All three memos pre-date the February 10, 2007 e-mail correspondence ■between Henderson and Tendler about the false declaration.

HP and Palm also identify several pre-February 10 billing entries as evidence that Niro attorneys were “reviewing claims” of the new patents and conferring about enforcement strategies throughout January 2007. (Niro Billing Records, Ex. 6 to HP and Palm’s Sanctions Mot. [232— 7], hereinafter “Niro Billing Records,” 4-5.) HP and Palm make much of the fact that on February 9, 2007, shortly after the false declaration was filed, Niro made three calls within one hour to Henderson. (HP and Palm Sanctions Mot. at 2-3) (citing Niro Phone Records, Ex. 8 to HP and Palm Mot. [232-9], hereinafter “Niro Phone Records,” N1047-49.) HP and Palm speculate that during these calls, Niro must have prompted Henderson to send the February 10, 2007 e-mail to Ten-dler admitting the mistake and requesting that he correct it. (HP and Palm Sanctions Mot. at 4.) Moreover, Defendants note, Niro made several additional calls to Henderson throughout the remainder of February. (Niro Phone Records at N1088, N1095, N1137-38.)

Niro counters with several declarations. Dr. Clifford H. Kraft, an electrical engineer who provides technical consultations for Niro and who was mentioned by name in Henderson’s February 10, 2007 e-mail, avers that he “had no contact with, never met and never talked to Robert Tendler” from 2007 through 2012, nor did he have “knowledge of or ever [see] or receive[ ] a copy of the February 10, 2007 email from Henderson to Tendler,” before January 2014. (Deck of Clifford H. Kraft, Ex. E to Niro Resp. to Mot. for Adverse Inference [184-5], hereinafter “Kraft Deck” ¶¶ 1, 4, 9-10.) Ray Niro similarly asserts “[a]t no time during any meetings or telephone discussions that I had with Dan Henderson (or Robert Tendler) was I ever told about any February 2007 email exchange between Tendler and Henderson or of the February 10, 2007 Henderson email.” (Decl. of Raymond P. Niro, Ex. D to Niro Resp. to Mot. for Adverse Inference [184-4], hereinafter “Ray Niro Decl.” ¶ 9.) Paul Vickrey attests that in March 2009, he asked Tendler to send all of his documents related to the patent prosecution, but the documents Tendler actually sent did not include the e-mail, and neither Tendler nor Henderson ever disclosed the false declarations to Vickrey. (Decl. of Paul K. Vick-rey, Ex. F to Niro Adv. Infer. Resp. [184— 6], hereinafter “Vickrey Decl.,” ¶¶ 2-3, 7; Decl. of Paul K. Vickrey, Ex. H to Niro Resp. to Dell’s Mot. for Sanctions [234-8], hereinafter “Second Vickrey Decl.,” ¶ 7; Niro Resp. to Mot. for Adverse Inference [184], hereinafter “Niro Adv. Infer. Resp.,” 9; Vickrey Email to Tendler, Mar. 30, 2009, 10:45 AM, Ex. H to Niro Adv. Infer. Resp. [184-8], hereinafter “First Vickrey E-mail to Tendler”; Vickrey Email to Tendler, Mar. 30, 2009, 5:08 PM, Ex. G to Niro Adv. Infer. Resp. [184-7], hereinafter “Second Vickrey E-mail to Tendler.”) David Mahalek similarly swears that he “was never made aware of any February 10, 2007 email exchange between Mr. Henderson and Mr. Tendler (or the substance of that email exchange) before it was produced to us by Mr. Tender’s attorney in January 2014.” (Decl. of David J. Mahalek, Ex. F to Niro Resp. to Dell’s Mot. for Sanctions [234-6], hereinafter “Mahalek Deck,” ¶ 9.) The Niro firm also asserts in its brief that “Tendler has admitted he did not follow Henderson’s instruction and did not contact either Dr. Kraft or any lawyer at the Niro firm,” but provides no citation to the record in this case to support this assertion. (Niro Adv. Infer. Resp. at 8.) Finally, Niro contends that Defendants have no evidence that anyone at the Niro firm was aware of the false declaration or the February 10, 2007 e-mail. (Niro Adv. Infer. Resp. at 7-9.)

Defendants respond that their lack of direct evidence is a result of Niro’s failure to comply with court-ordered discovery, and urge the court to impose an adverse inference that Niro did in fact know about the false declaration in 2007 at the time it was made. {See Defs.’ Mot. for Adverse Inference or in the Alt. to Enforce Compliance with the Ct.’s June 2, 2014 Order [181], hereinafter “Defs.’ Adv. Infer. Mot.”) The court fully addresses the adverse inference motion below (see infra Section III), but notes here that it is entirely plausible, given Henderson’s pattern of deceit and Tendler’s professional failings, that Henderson and Tendler withheld or obscured the false declaration from the Niro attorneys in 2007 in order to pursue enforcement litigation. In short, the court declines to make a finding that Niro’s attorneys knew about the false declarations when they were submitted.

B. Information Niro obtained from Henderson

Whatever happened or did not happen in 2007, Defendants urge that by 2009, Niro attorneys were on notice that the patents were fraudulently procured. On November 6, 2009, nearly a year before IW filed its complaint in this case, Henderson sent a lengthy e-mail to Mahalek, Vickrey, and Gibbons, providing “Interrogatory Information” for one of the related cases. (Henderson E-mail to Gibbons, Vickrey, and Mahalek, Nov. 6, 2009, Ex. 2 to Dell’s Mot. for Sanctions [227-2], hereinafter “Nov. 6, 2009 E-mail.”) In that e-mail, Henderson disclosed that his 1993 prototypes were not operational:

After researching the costs to build products, and due to limited finances, I decided to construct a prototype myself using a numeric pager manufactured by NEC and enclosing it in a prototype case along with a Sharp pocket autodialer. This device did not actually receive caller id automatically from the telephone network as there was no provision for it by the pager company I used at the time, but the basic idea for caller id with a name to a wireless device was demonstrable where upon receipt of a page within the device, a screen pop would show both the telephone number and the name of the person calling that was associated with the number that had called. During the demonstration I also showed them a mock-up of the intellect device that included a picture of someone sending a message which was a picture of myself. It did not operate but was used in conjunction to demonstrate what the invention could include.

(Id.) (emphases added.) Henderson also made explicit reference to his Rule 131 Declarations, stating “I had my wife at that time ... witness and sign some conception drawings in January and February of 1993 that were referenced in my Rule 131 Declaration submitted to the patent office, which established my date of conception,” and “[t]here was ... one Company in Canada I recall that was impressed enough to ask for pricing and delivery information, which should be referenced in my 131 declaration.” (Id.)

Additional e-mails from the HTC case are also relevant to the current dispute. On February 10, 2010, Mahalek e-mailed Henderson to discuss supplemental interrogatory responses to be submitted in that case, sending copies to Vickrey, Gibbons, and Ray Niro. (Mahalek E-mail to Henderson, Feb. 10, 2010, 5:27 PM, Ex. 8 to Dell’s Mot. for Sanctions [2275], hereinafter “Mahalek Feb. 10, 2010 E-mail.”) Mahalek asked “was there ever an actual reduction to practice of any of the inventions?” (Id.) He explained that “[w]e’ve taken the position that there was a constructive reduction to practice with the filing of the first application and that your conception date is at least February 10, 1993 based on the Rule 131 Declaration, but I wanted to double check on actual reduction to practice.” (Id.) In response to this inquiry, Gibbons forwarded to Ma-halek, Vickrey, and Ray Niro, a copy of the November 6, 2009 e-mail, containing the information that Henderson’s prototypes “did not operate.” (Gibbons E-mail to Mahalek, Feb. 10, 2010, 5:32 PM, Ex. 8 to Dell’s Mot. for Sanctions [227-5], hereinafter “Gibbons Feb. 10, 2010 E-mail.”) There is no evidence of any response from Henderson himself to Mahalek’s February 2010 e-mail.

Also included in Mr. Mahalek’s February 2010 e-mail to Henderson were draft interrogatory responses, which included the following statements: “There was not an actual reduction to practice of the inventions of the '186 patent or the '416 patent either before or after the constructive reduction to practice” and “neither Daniel Henderson nor Intellect Wireless actually reduced to practice the inventions of the '186 patent or the '416 patent, accordingly Intellect Wireless does not have any products that are an actual reduction to practice of the '186 patent or the '416 patent.” (Mahalek Feb. 10, 2010 E-mail.) These responses were ultimately included in IW’s first set of supplemental responses to HTC’s interrogatories in the HTC case, made on February 19, 2010. (IW First Supplemental Resp. to HTC’s First Set of Interrogatories, Ex. 33 to HP and Palm’s Sanctions Mot. [232-34], 13, ¶ 1(b), 14, ¶ Kf).)

It is plain from these e-mails, and now undisputed by the parties, that Niro’s attorneys knew at least by February 2010, if not before, that there was no actual reduction to practice of Henderson’s inventions. (See Niro Adv. Infer. Resp. at 10) (“When they learned that Henderson’s prototypes were not sufficiently operable to prove workability of his invention, the Niro lawyers prepared interrogatory answers in the HTC case [in February 2010] that unequivocally stated that Henderson did not have an actual reduction to practice ... The interrogatory responses were clear and unambiguous — there was no actual reduction to practice.”) Moreover, as noted, Henderson had specifically referenced the Rule 131 Declarations in his November 2009 e-mail; and by February 2010, Mahalek stated that he identified the conception date “based on the Rule 131 Declaration.” (Mahalek Feb. 10, 2010 Email.) Niro’s attorneys therefore knew by February 2010 that the prototype did not operate and by that time had reviewed the Rule 131 Declarations submitted in the patent prosecution.

C. HTC inequitable conduct allegations

On September 23, 2010, nearly one month before the complaint was filed in this case, HTC alerted attorneys Ray Niro, Mahalek, Gibbons, and Vickrey, that HTC planned to amend its answer in the case before Judge Hart to include an inequitable conduct defense. (Sept. 23, 2010 Letter from Martin Bader to Mahalek, Ex. 34 to HP and Palm Sanctions Mot. [232-35], hereinafter “Sept. 23, 2010 Letter,” 1.) The letter from HTC’s attorneys, Martin Bader and Stephen Korniczky of Sheppard Mullen Richter & Hampton — who also represent Defendants HP and Palm in this case — provided details in support of that defense: the letter asserted that “Mr. Henderson and the prosecuting attorney, Mr. Tendler, knowingly submitted] false 131 declarations to the patent office in order to obtain an allowance of the patents-in-suit.” (Sept. 23, 2010 Letter at 1; see also id. at 2 (“Mr. Henderson submitted numerous false and misleading 131 declarations to the USPTO in order to obtain allowance of the patents.”).) The letter points out the contradiction between Henderson’s Rule 131 Declaration and IW’s First Supplemental Response to HTC’s first set of Interrogatories, noting that in the declaration, “Mr. Henderson falsely represented that he actually reduced the invention to practice.... However, when Mr. Henderson recently verified Intellect’s interrogatory responses, he unequivocally confirmed that the claimed invention was never actually reduced to practice.” (Id. at 2-3.) HTC concluded that “the patents-in-suit are invalid and unenforceable, at a minimum, based on the false and misleading 131 declarations that Mr. Henderson and Mr. Tendler submitted in order to obtain allowance of the patents in suit.” (Id. at 3.)

By November 5, 2010, HTC had filed its proposed amended answer including allegations of inequitable conduct. David Ma-halek e-mailed Henderson the same day, notifying him that HTC

added an inequitable conduct counterclaim. Their allegation is that the patent office was mislead [sic] by the Rule 131 declarations which state, in one paragraph, that there was an actual reduction to practice. We’ll counter with the argument that the majority of the declaration refers to a constructive reduction to practice, so the examiner could not have been misled. Their allegations are pretty detailed, so read through them. We’ll need to answer once it’s filed.

(Mahalek E-mail to Henderson, Nov. 5, 2010, Ex. 3 to Dell Sanctions Mot. [227-3], hereinafter “Nov. 5, 2010 E-mail.”) Again, there is no evidence in the record of any response to this e-mail from Henderson.

D. Other pre-trial investigations

According to Ray Niro, Niro’s attorneys conducted extensive investigations, including repeated interviews of Mr. Henderson and Tendler, before filing the complaint in this case. (Decl. of Raymond P. Niro, Ex. I to Niro Resp. to Dell Sanctions Mot. [234-9], hereinafter “Second Ray Niro Decl.,” ¶2.). The only evidence of this activity appears in the declarations of Niro’s attorneys: Niro has not produced any notes or-other work-product to corroborate its account of these meetings, despite discovery requests from Defendants, which the .court discusses below. {See infra Section III.)

Niro attorneys first met to discuss Henderson’s patents at a five-hour session on November 15, 2007. (Ray Niro Deck ¶ 3.) In attendance were Henderson, Professor Jay Kasen from the University of Illinois, Ray Niro, Vickrey, Brady J. Fulton, and Gibbons. {Id.) During the meeting, the Niro attorneys “review[ed] Mr. Henderson’s patents in the presence of skilled engineers and experienced lawyers ... studped] the procurement of the patents from the Patent Office ... and ... determined] whether there was a good-faith 'basis to assert claims for patent infringement.” {Id. ¶ 4.) The attorneys concluded there was a good-faith basis to pursue licensing opportunities, but Ray Niro ordered further investigation before filing any infringement claims. {Id. ¶¶ 4-5.) Gibbons, Mahalek, and Fulton spearheaded the investigation, producing claim charts, conducting interviews of technical experts, repeatedly interviewing Henderson and Tendler, and reviewing documents from the patent prosecution. {Id. ¶¶ 5-6.) Niro also sought independent advice from law school professors. {Id. at ¶ 5; Second Ray Niro Deck ¶ 2.) Altogether, the Niro attorneys allegedly spent “hundreds of hours” ensuring there was a good faith basis to bring patent infringement claims. (Ray Niro Deck ¶ 6.)

Based on the patent prosecution history, Niro’s attorneys determined that Henderson had two independent grounds to claim priority of Henderson’s invention: constructive reduction to practice based on the date the patent application was filed, and actual reduction to practice. (Second Ray Niro Deck ¶¶ 2-3.) Notably, Ray Niro does not explain what led the Niro attorneys to conclude there was an actual reduction to practice. But as Ray Niro explains, he and his colleagues were not overly concerned about actual reduction to practice because they understood that

as a matter of patent law, that if there was a constructive reduction to practice that predated the Albert prior art patent, the question whether or not there was also an actual reduction to practice became irrelevant. In other words, it did ■ not matter whether or not Mr. Henderson had a fully operable prototype or an actual reduction to practice, so long as the filing of his patent application predated the Albert prior art.

(Second Ray Niro Decl. ¶ 3; see also Ma-halek Decl. ¶ 5 (“Because Mr. Henderson had a constructive reduction to practice, I believed that fact made questions of an actual reduction to practice moot.”); Niro Resp. to Dell’s Mot. for Sanctions [234], hereinafter “Niro Resp. to Dell Sanctions Mot.,” 8 (even if there was no actual reduction to practice “as a matter of law, if Mr. Henderson had a constructive reduction to practice, that alone provided a good-faith basis for” the litigation.).)

Once HTC raised its allegations of inequitable conduct, however, Vickrey avers that “additional extensive investigation was made into the file histories of the patents as well as discussions with both Henderson and Tendler regarding HTC’s affirmative defense and counterclaim of inequitable conduct.” (Vickrey Decl. ¶ 10.) Niro also retained an expert, John Love, to review the file histories and the Rule 131 Declarations, and to opine about the inequitable conduct defense; Vickrey asserts that in Love’s opinion, inequitable conduct had not occurred. (Id.) According to Vick-rey, while Vickrey was preparing Tendler for his April 15, 2011 deposition, Tendler explained that he had “revised the 131 Declaration after receiving a telephone call from Mr. Henderson in which Mr. Henderson stated that he was uncomfortable about stating that his device could display a picture.” (Id. ¶ 4.) In his discussions with Henderson, Vickrey reports, Henderson disclosed that though he believed the Rule 131 Declaration was true when he signed it, upon further reflection he was unsure whether he had an actual reduction to practice and asked Tendler to correct the Declaration. (Id. ¶ 11.) .

II. Alleged Misconduct

A. False statements in the HTC case

Defendants contend that Niro’s attorneys made several false statements on behalf of IW in the HTC case. For example, in February 2011, the Niro firm filed a second supplemental response to HTC’s interrogatories, stating that

there may also be an actual reduction to practice earlier than the date of constructive reduction to practice as Mr. Henderson created a working prototype with functional electronics which he showed at the Winter Consumer Electronics Show in January 1994. This prototype presently resides in the collection of the Smithsonian Institution. Other non-functioning mock-ups of Mr. Henderson’s invention were also created. These, too, are part of the Smithsonian collection.

(IW Second Supplemental Resp. to HTC’s Interrogatories, Ex. 7 to Dell Sacntions Mot [228-4], hereinafter “IW Second Supp. Resp. to HTC Interrogatories,” 16.) As Judge Hart concluded, none of the items in the Smithsonian collection actually operated and IW’s references to the Smithsonian acquisitions were, “misleading and false,” as two of the three prototypes in the Smithsonian collection are mere imitations of a picturephone, one made of wood, the other of plastic. HTC Corp., 910 F.Supp.2d at 1068, 1073. Moreover, during the June 2012 trial before Judge Hart, Henderson testified, in response to a question, that it was “true” that he has “never built any device in the history of [his] work that can transmit a picture.” Id. at 1068.

Defendants contend that the approach taken by IW’s attorneys in the HTC case was a calculated effort to obfuscate the fact that Mr. Henderson never actually-reduced his -invention to practice. They point to a February 25, 2011 e-mail conversation between Henderson and Mahalek in which Henderson, after reviewing -the second supplemental interrogatory responses, asked, “I guess we are then taking the position that there was no actual reduction to practice?” (Henderson E-mail to Maha-lek, Feb. 24, 2011, 11:12 PM Ex. 6 to Dell Sanctions Mot. [227-4], hereinafter “Henderson Feb. 24, 2011 E-mail.”) Ma-halek responded, “We’re not taking the position that it wasn’t an actual reduction to practice. We’re trying to be more pir-cumspect than that and convey an impression that we’re unsure. If you think that doesn’t come across in the answers let me know.” (Mahalek E-mail to Henderson, Feb. 25, 2011, 7:10 AM, Ex. 6 to Dell’s Mot. for Sanctions [227-4], hereinafter “Mahalek Feb. 25, 2011 E-mail.”) That is, while Niro has admitted that its attorneys knew as early as February 2010 that there was never an actual reduction to practice, they obscured that fact in the HTC case, suggesting instead that they were “unsure.”

B. Alleged false statements made to this court

Defendants maintain that Niro attorneys made similar false and misleading statements to this court regarding actual reduction to practice and the functionality of the prototypes. They assert that the complaint and amended complaint contain a “false narrative about Mr. Henderson’s supposedly working prototypes.” (Dell Mot. for Sanctions [227], hereinafter “Dell Sanctions Mot.,” 6.) They highlight paragraph 3 of the complaint, which states:

Mr. Henderson’s prototype for a wireless picturephone device was received as part of the permanent collection of the Smithsonian Institution in the National Museum of American History. In 2009, the magazine PC Today described Mr. Henderson’s role in the history of the camera phone:

The idea of camera phones is as old as cameras and phones, but it wasn’t until 1993, when Daniel A. Henderson put together a couple of prototypes, that the two started to converge in a meaningful way. Dubbed the “Intellect,” Henderson’s design was for a phone that could display pictures received wirelessly instead of taking pictures and sending them wirelessly.

(Compl. [1] ¶ 3; First Am. Compl. [57] ¶ 3.) The quote from PC Today is an accurate one, which Defendants acknowledge, but it falsely suggests that Henderson had a working prototype in 1993. As the court noted in its May 30, 2014 opinion: “Such statements are at a minimum misleading, and can fairly be read to imply that Henderson had created a working prototype of the patented inventions as early as 1993.” (Op. at 18.)

More significantly, Defendants maintain that each allegation of patent infringement in the complaint and amended complaint is a knowing false statement. By the time the complaint was filed on October 20, 2010, Defendants argue, the Niro firm was on notice that the allegations in the complaint were baseless: Henderson had informed the Niro attorneys that his prototypes did not actually work; Niro attorneys have admitted knowing that there was no actual reduction to practice; they had been alerted to the possibility of inequitable conduct by HTC’s September 23, 2010 letter; and, according to Mr. Henderson’s November 2009 e-mail, the Niro attorneys had reviewed the Rule 131 Declarations submitted in the patent prosecution. Niro attorneys therefore knew or reasonably should have known that Henderson intentionally submitted a declaration that contained a materially false statement, constituting inequitable conduct that invalidated the patent. Because an invalid patent cannot be infringed, Defendants maintain that each allegation of infringement in the complaint and amended complaint constitutes a false statement. (Dell Sanctions Mot. at 9.) At a minimum, Defendants argue, Niro attorneys were on notice of the inequitable conduct allegations before they filed the amended complaint on January 7, 2011, and failed to investigate those allegations before proceeding in this lawsuit. The amended complaint contained the same PC Today quote, again creating the impression that Henderson had produced working prototypes of his device when in fact he had not.

Further, Defendants assert, Niro attorneys continue to make false and contradictory statements to this court. Specifically, HP and Palm point out, in a motion for a protective order signed by Vickrey on June 20, 2014, Niro asserts that it “had no discussions about the Rule 131 Declaration with Messrs. Henderson and Tendler before filing suit.” (PL’s Objection to Subpoenas to Kraft, Harris and Wiggins and Mot. for Protective Order and to Quash [171], 1-2.) Niro has repeated this assertion in its response to these motions for sanctions: “The statement that the Niro firm had no discussions with Messers. Henderson or Tendler about that Declaration [the February 9, 2007 Rule 131 Declaration] before filing suit is true.” (Niro Resp. to HP and Palm’s Supplemental Auth. in Supp. of an Award of Fees against Atty’s for IW [235], hereinafter “Niro Resp. to HP and Palm Sanctions Mot.,” 9-10.) As the court understands that statement, Niro asserts that, while its attorneys reviewed other Rule 131 Declarations that Henderson submitted during the patent prosecution, no one reviewed the particular February 9, 2007 declaration. (See id.) However plausible that statement might be in the abstract, it is difficult to reconcile with Ray Niro’s insistence that Niro’s attorneys “studied] the procurement of the patents from the Patent Office” (Ray Niro Decl. ¶ 4), or with Vickrey’s assertion that, after learning of the inequitable conduct allegations from HTC, “additional extensive investigation was made into the file histories of the patents as well as discussions with both Henderson and Tendler regarding HTC’s affirmative defense and counterclaim of inequitable conduct.” (Vickrey Decl. ¶ 10.) As Defendants point out, the February 9, 2007 Declaration is itself part of the prosecution history of the '210 patent. (See File History of '210 Patent.) Though that '210 patent is not at issue in this case, the picture claims in the '186 and '416 depend on the allowability of the '210 patent application. HTC Corp., 910 F.Supp.2d at 1061. It is, therefore, implausible that Niro diligently studied the prosecution histories of the patents-in-suit but somehow missed the February 9, 2007 Declaration, which is contained within the relevant file history submitted to the PTO.

Finally, Defendants emphasize Niro’s statement in response to the adverse inference motion that “the very first time the Niro firm saw HTC’s inequitable conduct claim” was in November 2010, after the complaint in this case was filed. (Niro Adv. Infer. Resp. at 6.) This statement is unconvincing: the actual counterclaims were not filed until November, but Niro was on notice of the company’s allegations six weeks earlier. The letter to Niro from HTC’s counsel, sent on September 23, 2010, prior to filing the complaint in this case, presented detailed descriptions of the inequitable conduct allegations. Niro’s persistence in making inconsistent statements in this most recent round of briefing confirms the propriety of a sanction, in Defendants’ view.

III. Adverse inference

If the court does not conclude that Niro lawyers knew about the false declaration, Defendants urge, the court should nevertheless grant their motion for an adverse inference that “attorneys Raymond P. Niro, Paul K. Vickrey, Paul C. Gibbons, David J. Mahalek, and Niro [ ] knew about the falsity of Daniel Henderson’s Rule 131 Declarations prior to filing suit against Defendants and/or that Niro failed to conduct adequate pre- and post-filing Rule 11 investigations.” (Defs.’ Adv. Infer. Mot. at 1.) The basis for this adverse inference, they contend, is the failure on the part of Niro and IW to comply with court-ordered discovery. See Fed. R. Crv. P. 37(b)(2)(A) (“If a party ... fails to obey an order to provide discovery ... the court where the action is pending may ... direct[ ] that ... designated facts be taken as established ... [or] prohibit[ ] the disobedient party from supporting or opposing designated claims or defenses, or from introducing designated matters in evidence.”).

The discovery dispute in this case is intertwined with a discovery dispute in the HTC case. On June 2, 2014, this court granted Defendants’ motion to compel production of:

any and all documents responsive to and/or ordered produced pursuant to Judge William Hart’s January 30, 2014 Order granting HTC’s Motion for Expedited Discovery in Intellect Wireless Inc. v. HTC Corp., et al., No. 09-C-2945, Dkt. No. 258 (N.D. Ill.) (Hart, J.). ... [and] any documents responsive to and/or ordered produced pursuant to Judge Hart’s May” 6, 2014 Opinion and Order. Id., Dkt. No. 291.

(Defs. Mot. to Compel Discovery [164], 1; June 2, 2014 Order [169] (granting Defs.’ Mot. to Compel by agreement).) Judge Hart’s January 30, 2014 order granted HTC’s motion for expedited discovery. Jan. 30, 2014 Minute Entry, HTC v. Intellect Wireless, No. 09-cv-2945 [258]. After entry of that order, Niro’s attorneys refused to produce certain documents, claiming they were protected by attorney-client privilege. (See Niro’s Supplemental Privilege Log, Ex H. to Defs.’ Mot for Adverse Inference [181-9], hereinafter “Niro Supp. Privilege Log.”) Judge Hart overruled that objection. He concluded that IW forfeited the attorney-client privilege by its fraudulent conduct, and ordered Niro and IW to produce the documents. Op. & Order, HTC v. Intellect Wireless, No. 09-cv-2945 [291], 4-5. Defendants contend that, despite these court orders, IW and Niro still have not complied with the required discovery. Defendants, therefore, ask this court to either enforce its June 2, 2014 order or impose an adverse inference that Niro’s attorneys knew about the false declarations prior to filing suit. (Defs.’ Adv. Infer. Mot. at 6.)

A. Scope of the Discovery Request

This court’s June 2, 2014 order required Niro and IW to produce every document that addressed by Judge Hart’s January 30, 2014 and May 6, 2014 orders. Judge Hart’s January 30, 2014 order does not list the requested categories of documents; it simply grants HTC’s motion for expedited discovery. Jan. 30, 2014 Minute Entry, HTC v. Intellect Wireless, No. 09-cv-2945 [258] (“Defendant’s motion for expedited discovery [254] is granted.”). Niro argues that the documents Defendants now seek are not covered by Judge Hart’s orders and that the text of HTC’s motion is therefore central to determining the scope of the discovery request. (Niro Adv. Infer. Resp. at 2.) The court will independently review the text of HTC’s discovery requests, but notes at the outset that Judge Hart himself concluded that Niro’s disclosures were incomplete. HTC raised the same arguments that Defendants do here, and Judge Hart agreed with HTC, concluding in his January 8, 2015 order that “Niro has not produced all of the documents sought, claiming relevancy as to some and that some documents are in the possession of IW,” and determining further that an adverse inference was appropriate in these circumstances. Op. & Order, HTC v. Intellect Wireless, No. 09-cv-2945 [343], 10.

HTC’s motion requested ten categories of documents. The introduction to that motion states:

HTC respectfully seeks expedited discovery relating to Niro’s knowledge of the,declaration’s falsity, misrepresentations to this Court, and bad faith prosecution of this baseless lawsuit. In particular, HTC seeks:

1. All documents relating to Niro’s knowledge of the veracity of the Rule 131 declarations during the prosecution of the patents-in-suit.

2. All communications between Niro and Henderson and/or Tendler regarding the Rule 131 declarations prior to filing this lawsuit against HTC.

3. All documents relating to when Niro first became aware of the Rule 131 declarations.

4. All documents relating to when Niro first became aware that the February 9th Rule 131 declaration was false or inaccurate.

5. All documents relating to any advice and/or consultation that Niro provided to Henderson or IW regarding the Rule 131 declarations during the prosecution of any of Henderson’s or IW’s patent applications.

6. All communications between Niro and Cliff Kraft regarding the Rule 131 declarations prior to filing this' lawsuit against HTC.

7. Phone records from February 2007 for any calls between the Niro firm and IW, Henderson, and/or Tendler.

8. All communications between the Niro firm and IW, Henderson, and/or Tendler during January through May 2007.

9. Invoices and/or any records of time spent by the Niro firm relating to work for Henderson and/or IW from January through May 2007.

10. Copies of any calendar appointments relating to Henderson, IW, and/or Tendler from January through May 2007.

HTC Mot. for Expedited Discovery, Intellect Wireless v. HTC, No. 09-cv-2945 [254], hereinafter “HTC Discovery Mot.,” 5-6. Defendants’ primary complaint in this case is that Niro and IW have failed to comply with requests 1 and 5. (Defs.’ Adv. Infer. Mot. at 7.) Defendants identify several categories of documents that they maintain are responsive to these requests but have not been produced: (a) work product concerning HTC’s inequitable conduct allegations, such as witness outlines; (b) work product relating to Niro’s Rule 11 analysis; (c) communications between Niro, IW, and IW’s appellate counsel in the HTC case relating to the inequitable conduct allegations; and (d) communications with the law professors hired to study the prosecution histories of the Henderson patents and HTC’s claims of inequitable conduct. (Id. at 7-8.)

Niro responds that it was only obligated to comply with the requests numbered 7-10 and, further, that the documents Defendants now seek — “communications with experts, with law professors, [and] with Intellect Wireless’s appellate counsel”' — -are not covered by any of the ten categories. (Niro Adv. Infer. Resp. at 2, 4.) To support its first claim — that Niro was required to respond only to requests numbers 7-10 — Niro notes that before HTC filed its motion to re-open discovery in Judge Hart’s case, Gray Buccigross, HTC’s attorney, made a request via e-mail only for the first six categories of documents and suggested that HTC intended to seek to reopen and expedite discovery. (See Buccigross E-mail to Mahalek, Jan. 14, 2014, 12:22 PM Ex. A to Niro Adv. Infer. Resp. [184-1].) In response to Buccigross’s e-mail, Vickrey, Mahalek, and Ray Niro held a telephone conference with HTC counsel on January 14, 2014 and explained:

(1) that the Niro firm lawyers first saw the February [10], 2007 email on January 9, 2014, nearly seven years after it was written, and (2) that they had no discussions about the Rule 131 declarations with Henderson or Tendler before Intellect Wireless filed suit against HTC in May 2009.

(Niro Adv. Infer. Resp. at 4; Mahalek Email to Buccigross, Jan. 14, 2014, 3:13 PM, Ex. A to Niro Adv. Infer. Resp. [184-1].) That is, Niro’s attorneys asserted that no documents exist related to the first six requests. This prompted Buccigross to email Mahalek, Ray Niro, and Paul Vickrey later the same night, now “additionally seeking” four new categories of documents (which would become requests 7-10) and warning again that if Niro and IW failed to comply, HTC would formally move to reopen discovery. (Buccigross E-mail to Mahalek, Jan. 14, 2014,10:53 PM, Ex. A to Niro Adv. Infer. Resp. [184-1].) When Niro did not produce any documents within a week, HTC proceeded to move Judge Hart to re-open discovery. HTC Discovery Mot. Judge Hart granted HTC’s motion on January 30, 2014. Jan. 30. 2014 Minute Entry, HTC v. Intellect Wireless, No. 09-cv-2945 [258],

Niro justifies its refusal to produce documents by noting that in “the argument section of the motion where [HTC] actually requested documents to be produced, HTC only mentioned four categories of documents.” (Niro Adv. Infer. Resp. at 5.) The section of the motion that Niro relies on states:

[T]o the extent that the Court feels additional discovery would aid in its decision to award fees, then HTC requests the following expedited discovery:

1. Phone records from February 2007 for any calls between the Niro firm and IW, Henderson, and/or Tendler.

2. All communications between the Niro firm and IW, Henderson, and/or Tendler during January through May 2007.

3. Invoices and/or any records of time spent by the Niro firm relating to work for Henderson and/or IW from January through May 2007.

4. Copies of any calendar appointments relating to Henderson, IW, and/or Tendler from January through May 2007.

HTC Discovery Mot. at 12-13. Niro’s quotation is accurate, but its argument that HTC’s request was limited to these four categories is weak. First, as described above, the introduction to the motion specifically requests all ten categories of documents. Second, the section of the motion Niro relies on is presented only after HTC’s attorneys describe how Niro attorneys claimed they “do not have, and never have had, documents responsive to HTC’s requests [1-6].” HTC Discovery Mot. at 10. Third, the Niro attorneys’ contemporaneous conduct shows that they understood that the January 30, 2014 order covered all ten requests: On March 3, 2014, Niro filed a “Supplemental Privilege Log” in response to request number five, an action inconsistent with the position that they were required only to respond to requests 7-10. (Niro Supp. Privilege Log; First Supplemental Compliance with Jan. 30, 2014 order, Ex. J to Buceigross Decl. [18111].) In any event, HTC’s subsequent motion to compel production of allegedly privileged documents — which Judge Hart granted on May 6, 2014, see Opinion and Order, Intellect Wireless v. HTC, No. 09-cv-2945 [291] — lists all ten categories of documents. HTC Mot. to Compel Production of Allegedly Privileged Docs. Intellect Wireless v. HTC, No. 09-cv-2945 [276], hereinafter “HTC Mot. to Compel,” 2-3. Any ambiguity regarding the scope of the January 30, 2014 discovery order was eliminated by Judge Hart’s May 6, 2014 opinion stripping IW of its attorney-client privilege and ordering production of the documents: By the time this court ordered discovery on June 2, 2014, Niro was obligated to comply with all ten requests.

Niro next argues that the requests for “communications with experts, with law professors, [and] with Intellect Wireless’s appellate counsel” are not covered by any of the ten categories because the requests are time-limited. (Niro Adv. Infer. Resp. at 2, 4.) Defendants respond that request 5 covers documents generated while any of Mr. Henderson’s patents were being prosecuted, which extends through June 25, 2013, when Mr. Henderson’s most recent patent was granted. (U.S. Patent No. 8,472,595, Ex. I to Defs.’ Adv. Infer. Mot. [181-10].) The court agrees with Defendants: when Niro retained John Love to review the file histories and the Rule 131 Declarations, and opine about the inequitable conduct defense, Niro’s communications with Love and his final opinion constitute “documents relating to ... advice and/or consultation that Niro provided to Henderson or IW regarding the Rule 131 declarations.” Likewise, communication with Henderson and IW’s appellate counsel regarding the appeal to the Federal Circuit — which revolved around the inequitable conduct allegations and the veracity of the Rule 131 Declarations — are likewise documents “relating to advice” regarding the Rule 131 Declarations. Niro’s claim that the documents are not covered by these requests is unsupported.

B. Niro’s disclosures

In response to Judge Hart’s May 6, 2014 ruling, Niro produced a set of documents on June 5, 2014. (June 5, 2014 Niro Production Cover Letter, Ex. A to Supp. Mem. in Opp. to Defs.’ Adv. Infer. Mot. [270-1].) This early June production contained the November 2009 email from Henderson stating that the prototype “did not operate,” the February and the November 2010 e-mails regarding interrogatory responses for the HTC case, and the February 2011 e-mails explaining Niro’s strategy of “circumspect[ion]” concerning actual reduction to practice. On June 11, 2014 Defendants sent Niro and IW — by this time also represented by Kulwin, Mas-ciopinto & Kulwin, LLP (“KMK”) — a letter identifying the deficiencies in Niro and IW’s production. (Letter from Martin Bader to Robert Cummins and Shelly Kul-win, June 11, 2014, Ex. A to Buecigross Decl. [181-2].) That letter requested, in connection to requests 1 and 5: “any work product relating to the declarations, HTC’s inequitable conduct allegations, Henderson’s intent and/or the materiality of the declarations,” produced in opposition to summary judgment or in preparation for trial; the Rule 11 analysis Niro conducted; communications between Niro and IW’s appellate counsel, any communication with the professors Niro hired; and invoices relating to the Rule 131 Declarations. (Id. at 1-2.) On June 16, 2014, Vickrey responded with a letter repeating Niro’s position that it was required only to respond to requests number 7-10. (Letter from Paul Vickrey to Graham Buecigross, June 16, 2014, Ex. C to Buecigross Decl. [181-4], 2.) IW’s counsel, KMK, responded to the discovery requests on June 17, 2014, producing a single, seven-page document— an invoice from Niro to IW in a related case — and further asserting that “IW has no additional documents within their possession that it has not already produced except those within the possession of the Niro Firm with respect to all matters at issue.” (June 17, 2014 Letter from Kulwin to Paul Korniczky, Ex. E to Adv. Inf. Mot [181-6].)

Despite Vickrey’s assertion that its obligation to respond was limited to four requests, Niro now maintains that it has complied with the complete list of discovery requests. (See Niro Adv. Infer. Resp. at 2, 6; Niro Supp. Mem. in Opp. to Mot. for Adverse Inference [270-1], 1-2.) Niro points out that in response to request number 5, the firm “produced 2010 emails which confirm that it had no knowledge of any false declaration.” (Niro Adv. Infer. Resp. at 6.) Specifically, the firm notes (1) the February 10, 2010 e-mail in which Mahalek asks Henderson “was there ever an actual reduction to practice of any of the inventions?” and (2) the November 5, 2010 e-mail from Mahalek informing Henderson of HTC’s inequitable conduct counterclaim. According to Niro, that November 5, 2010 e-mail is “the very first time the Niro firm saw HTC’s inequitable conduct claim” and thus confirms that Niro had no knowledge of the Henderson-Ten-dler e-mail or the false declaration prior to that date. (Id. at 6-7.)

As explained earlier, however, HTC sent a letter to the Niro attorneys on September 23, 2010 — roughly six weeks before the November 5 e-mail and prior to filing the complaint in this case — warning counsel about the inequitable conduct allegations and bringing the false declaration to Niro’s attention. And, of course, the fact that Mahalek notified Henderson of the counterclaim on November 5 sheds no light on when Mahalek himself first learned of it. In any event, these two 2010 e-mails, which show Mahalek equivocating on Niro’s position regarding actual reduction to practice, do not satisfy the court that Niro learned about the false declarations only after filing the complaint in this case.

On this record, the court is uncertain that Niro has in fact turned over all of the requested documents, but ultimately declines to adopt the requested adverse inference. Such an adverse inference is unnecessary because the evidence that has been presented — even if it is an incomplete record — sufficiently establishes that Niro’s attorneys either knew, or reasonably should have known, about the false declaration prior to filing the complaint in this case and have continued to make misleading representations about the extent of their knowledge. Notably, Niro represented as recently as February 13, 2015 that “[n]obody at the Niro firm knew about the February 9, 2007 declaration and/or its inaccuracies prior to filing suit” on October 20, 2010. (Niro Supplemental Mem. in Opp. to Mot. for Adv. Inf. at 3.) Yet HTC’s attorneys alerted Niro to the false declaration on September 23, 2010. Even if no one at Niro had knowledge of the false declaration prior to September 23, 2010, Niro’s failure to investigate those allegations before filing yet another enforcement action was, at best, careless. Niro’s own representations that it lacked knowledge of the false declaration, combined with HTC’s September 23, 2010 letter notifying Niro of the inequitable conduct allegations are sufficient for the court to rule on the issues before it without resorting to an adverse inference.

After the parties completed briefing on the adverse inference motion, Dell filed its current motions for sanctions against Niro on October 20, 2014. (Dell Sanctions Mot.) HP and Palm joined Dell’s motion and submitted separate briefing on November 6, 2014. (Defs. HP and Palm’s Notice of Joinder and Joinder in Dell’s Mot. for Sanctions [231]; HP and Palm Sanctions Mot.) Sharp joined Dell and HP’s motions on November 6, 2014. (Sharp Corp.’s and Sharp. Electronics Corp.’s Notice of Join-der in Mots, for Sanctions [233].) The court turns to those motions now.

DISCUSSION

I. Timeliness

Niro argues that Defendants’ sanctions motion is untimely and procedurally barred. As explained below, the court agrees with Niro that the Rule 11 motion is procedurally barred because Defendants did not comply with the safe harbor requirements of that rule. Failure to comply with the safe harbor provision, does not, however, bar a sanctions motion under § 1927 or the court’s inherent authority, and the court concludes that the request for fees under § 1927 is timely because Defendants filed their motions as soon as practicable after discovering the misconduct.

A. Defendants did not comply with Rule ll’s safe-harbor requirement

Niro asserts that Defendants are barred from proceeding with Rule 11 arguments because the motion was filed two years after final judgment and did not comply with Rule ll’s safe-harbor provision, which requires the moving party to give the non-moving party a 21-day window in which to withdraw the allegedly offensive pleading. (Niro Resp. to Dell Sanctions Mot. at 1-2; Niro Resp. to HP and Palm Sanctions Mot. at 1-3); Fed. R. Civ. Pro. 11(c)(2). Niro’s argument conflates the safe-harbor provision — a procedural requirement — with the rules governing timeliness. With respect to timeliness, Rule 11 does not establish a deadline for sanctions motions, but the Seventh Circuit has noted that 90 days after final judgment represents “the outer parameters” for filing such motions. Sullivan v. Hunt, 350 F.3d 664, 666 (7th Cir.2003). A motion filed within 90 days of final judgment, however, is not automatically timely: the 90-day “limit will not necessarily protect a sanctions claim if the party bringing it has failed to do so within a reasonable amount of time.” Id. at 666 (quoting Kaplan v. Zenner, 956 F.2d 149, 152 (7th Cir.1992)).

Distinct from this court-established timeliness requirement, Rule 11 also imposes certain procedural hurdles that a moving party must clear before a court may consider a Rule 11 motion. Fed. R. Civ. Pro. 11(c); see Divane v. Krull Elec. Co., 200 F.3d 1020, 1025 (7th Cir.1999) (“When sanctions are requested by a party’s motion, Rule 11(c) ... requires that two procedures be followed.”) Relevant to this case, a party must “substantially compl[y] with Rule ll’s safe-harbor requirement” by providing the non-moving party with notice of the misconduct and an opportunity to withdraw the offending pleading. Matrix IV, Inc. v. Am. Nat. Bank & Trust Co. of Chicago, 649 F.3d 539, 553 (7th Cir.2011). Though Niro couches its argument in the language of timeliness, Niro has actually asserted two defenses to the Rule 11 motion: (1) that the motion is untimely because it was brought more than 90 days after final judgment, and (2) that the motion is procedurally barred because Defendants did not comply with the safe-harbor provision.

The court concludes that Defendants’ Rule 11 motion is procedurally barred. The safe-harbor provision is set forth in Rule 11(c)(2) and requires that a movant either send a warning letter or serve a copy of the Rule 11 motion 21 days before actually filing the motion. See Olson v. Reynolds, 484 Fed.Appx. 61, 64 (7th Cir.2012); Matrix IV, Inc., 649 F.3d at 552. The safe harbor gives the offe