NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

NAZIR KHAN, IFTIKHAR KHAN,

Plaintiffs-Appellants

v.

HEMOSPHERE INC., ET AL.,

Defendants-Appellees

MERIT MEDICAL SYSTEMS INC.,

Defendant-Cross-Appellant

HOSPITALS AND DOCTORS IMPLANTING 

UNPATENTED HERO GRAFT TO DOCTORS, ET 

AL.,

Defendants

______________________

2019-1952, 2019-2394

______________________

Appeals from the United States District Court for the 

Northern District of Illinois in No. 1:18-cv-05368, Judge 

Virginia M. Kendall.

______________________

Decided: August 13, 2020

______________________

NAZIR KHAN, IFTIKHAR KHAN, Burr Ridge, IL, pro se. 

Case: 19-1952 Document: 137 Page: 1 Filed: 08/13/2020
2 KHAN v. HEMOSPHERE INC.

 BRENT P. LORIMER, Workman Nydegger, Salt Lake 

City, UT, for defendant-cross-appellant and defendants-appellees Willaim J. Tapscott, James W. Campbell, Heather 

LeBlanc, Lee Forestiere, Edward Kim, Joy Garg Kaiser 

Permanente, Marius Saines, Gustavo Torres, Charles M. 

Eichler, Eric Ladenheim, Robert S. Brooks, Anne Lally, 

Matthew G. Brown, Abilio Coello, Howard E. Katzman, 

Stephen Wise Unger, Fernando Kafie, Robert Hoyne, Robert Brumberg, Murray L. Shames, Victor Bowers, Heidi A. 

Pearson, Jeffrey Pearce, Michael Klychakin, William 

Schroder, Jonathan R. Molnar, Christopher Wixon, Julio 

Vasquez, William Soper, Jeffrey Silver, Stephen Jensik, 

Gary Lemmon, Raghu L. Motagnahalli, Ruban Nirmalan, 

Chase Tattersall, William Ducey, Michael Willerth, Dennis 

Fry, Jeffrey Cameron, David Smith, Amit Dwivedi, Joseph 

Griffin, Albert Sam, Andrew Sherwood, Larry D. Flanagan, 

Thomas Reifsnyder, David B. Leeser, Andres Schanzer, 

Robert Molnar, Peter Wong, Kourosh Baghelai, Howard L. 

Saylor, Ty Dunn, William Omlie, James R. Rooks, Timothy 

C. Hodges, Eddy Luh, Pankaj Bhatnagar, Benjamin Westbrook, Yvon R. Baribeau, George Blessios, Gary Tannenbaum, Jason Dew, Jason Burgess, Paul Orland, James D. 

Lawson, Todd Early, Randal Bast, Clinton Atkinson, Jeff 

Stanley, Virginia Wong, Damian Lebamoff, Jonathan Velasco, Boris Paul, Walter Rizzoni, Jon R. Henwood, Carlos 

Rosales, Ellen Dillavou, Eugene Simoni, Alexander Uribe, 

Edward Beverly Morrison, Michael Gallichio, Angelo Santos, Chad Laurich, Eric Gardner, Stephen Settle, Blair Jordan, Tuan-Hung Chu, Stephen Hohmann, John C. Kedora, 

Hector Diaz-Luna, Luis G. Echeverri, Allen Hartsell, Jeffrey Martinez, Gerardo Ortega, Boulos Toursarkissian, 

Todd Smith, Mountain Medial Physician Specialists, 

Thomas Ross, Matthew J. Borkon, W. Andrew Tierney, 

Thomas Hatsukami, Herbert Oye, Thomas Winek, Allan 

Roza, Ignacio Rua, Sheppard Mondy, Alok K. Gupta, Brad 

Grimsley. Also represented by DAVID R. TODD, THOMAS R.

VUKSINICK. 

Case: 19-1952 Document: 137 Page: 2 Filed: 08/13/2020
KHAN v. HEMOSPHERE INC. 3

 STEVEN MCMAHON ZELLER, Dykema Gossett PLLC, 

Chicago, IL, for defendants-appellees Hemosphere Inc., 

CryoLife Inc.

 PATRICK R. JAMES, James, House, Downing & Lueken, 

PA, Little Rock, AR, for defendant-appellee Louis Elkins. 

 BRIAN DAVID SCHMALZBACH, McGuireWoods LLP, 

Richmond, VA, for defendants-appellees Mark Grove, 

Javier Alvarez-Tostado. Also represented by KATHRYN 

ANN CAMPBELL, EDWIN E. BROOKS, SARAH RASHID, Chicago, 

IL. 

 JENNIFER KURCZ, Baker & Hostetler LLP, Chicago, IL, 

for defendant-appellee Siddarth Patel. Also represented by 

ALAINA J. LAKAWICZ, Philadelphia, PA. 

 DAVID ALAN ROODMAN, Bryan Cave Leighton Paisner 

LLP, St. Louis, MO, for defendants-appellees Luis 

Sanchez, Patrick Geraghty. Also represented by BARBARA 

SMITH, JASON MEYER. 

 ______________________

Before PROST, Chief Judge, MOORE and STOLL, Circuit 

Judges.

STOLL, Circuit Judge.

These appeals arise from an action for patent infringement. Drs. Nazir Khan and Iftikhar Khan accused Hemosphere Inc., CryoLife Inc., and Merit Medical Systems, Inc., 

along with over 300 hospitals and individual physicians, of 

infringing a claim of U.S. Patent No. 8,747,344, directed to 

an arteriovenous shunt. The Khans challenge the district 

court’s decision dismissing the action with prejudice for 

want of prosecution due to the Khans’ insufficient and untimely service of their complaint and, alternatively, for improper venue and misjoinder. The Khans also challenge 

the district court’s decisions granting the defendants’ 

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4 KHAN v. HEMOSPHERE INC.

motion for sanctions and denying the Khans’ cross-motion 

for sanctions. Merit Medical cross-appeals the district 

court’s decision denying its motion to declare the case exceptional and to award attorney fees under 35 U.S.C. § 285. 

Because the district court did not abuse its discretion in 

dismissing the action, granting the defendants’ sanctions 

motion, denying the Khans’ sanctions motion, or denying 

Merit Medical’s motion for attorney fees under § 285, we 

affirm.

BACKGROUND

The Khans are Illinois physicians and have exclusive 

rights to the ’344 patent. In their complaint filed on August 7, 2018, the Khans alleged that the defendant corporations, hospitals, and physicians directly and indirectly 

infringed claim 13 of the ’344 patent by manufacturing or 

implanting into patients the accused HeRO® Graft shunt. 

The Khans sent a waiver of service of summons form and 

their complaint by mail to the over 300 defendants, the 

vast majority of whom resided and practiced outside of Illinois. With the exception of three physicians, none of the 

defendants returned a completed waiver form. 

Following an initial status conference in November 2018, the district court dismissed without prejudice the 

Khans’ claims against Merit Medical, CryoLife, and three 

physicians for improper venue. Order at 2–3, Khan 

v. Hemosphere Inc., No. 18-cv-05368 (N.D. Ill. Jan. 23, 

2019), ECF No. 76. According to the district court, the 

Khans had not contended that any of these defendants resided in the Northern District of Illinois, and the Khans 

had failed to plausibly allege that any of them infringed the 

asserted claim in the district and had a “regular and established place of business” in the district, as required under 

28 U.S.C. § 1400(b). Id. at 2. The district court “caution[ed] plaintiffs to take heed of the potentially meritorious arguments raised by defendants thus far in considering

the proper and most effective way to prosecute their case 

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KHAN v. HEMOSPHERE INC. 5

going forward.” Id. at 3. The district court also held its 

second status conference that same day. While the Khans 

insisted at the conference that they had completed proper 

service for all defendants, by that date—more than 

150 days after the filing of the complaint—they had filed 

proof of waiver for only one defendant. In response to the 

Khans’ argument that placing the waiver request in the 

mail is equivalent to service, the district court informed the 

Khans that a request to waive service is merely a request 

and that waiver by the defendants is not mandatory.

The district court subsequently denied the Khans’ motion to reconsider the dismissal order because the motion 

“impermissibly rehash[ed] previously unsuccessful arguments.” Order at 2, Khan v. Hemosphere Inc., No. 18-cv05368 (N.D. Ill. Feb. 13, 2019), ECF No. 84. The district 

court “again caution[ed] Plaintiffs that prosecuting a patent case of any size, much less one against three hundred

defendants, is a complex endeavor,” and that they “should 

carefully evaluate clearly established requirements set 

forth in governing statutes and other applicable authority 

so as not to unnecessarily occupy the time and resources of 

the Court and other involved parties.” Id.

Thereafter, more than 100 of the remaining defendants 

filed 11 separate motions to dismiss on various grounds, including insufficient service, untimely service, improper 

venue, misjoinder, and lack of personal jurisdiction. A subset of the non-Illinois-resident defendants also moved for

sanctions against the Khans pursuant to Rule 11 of the

Federal Rules of Civil Procedure for the Khans’ repeated 

assertions that venue was proper and that service was 

properly completed. The district court granted the motions

and dismissed the claims against the defendants for want 

of prosecution. Khan v. Hemosphere Inc., No. 18-cv-05368, 

2019 WL 2137378, at *1 (N.D. Ill. May 16, 2019). 

The district court held that dismissal of all remaining 

defendants was warranted due to the Khans’ “insufficient 

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6 KHAN v. HEMOSPHERE INC.

and untimely attempts at service.” Id. at *2. The district 

court rejected the Khans’ argument that they had complied 

with the requirements of Rule 4 of the Federal Rules of 

Civil Procedure by simply requesting waivers from the defendants. Id. The district court also found that the Khans 

had not attempted to personally serve any defendant. Id. 

Instead, the Khans asserted that they completed service by 

mailing the summons and complaint to the defendants, despite contrary instruction from the district court. The district court explained that Rule 4(e) does not permit 

personal service via mail and the Khans had not identified 

any state laws that would otherwise allow service by mail. 

Id. The district court further found that the Khans had

failed to comply with the timeliness requirement of 

Rule 4(m). Id. at *3. In addition, the district court held 

that dismissal was warranted on the alternative grounds

of improper venue under § 1400(b) and improper joinder 

under 35 U.S.C. § 299. Id. 

Next, the district court granted the non-Illinois-resident defendants’ motion for sanctions based on the Khans’ 

assertions regarding venue and service, which they had 

maintained despite repeated warnings and guidance from 

the court. Id. at *4–5. The district court recognized that

the Khans were proceeding pro se and thus were “entitled 

to some leniency before being assessed sanctions for frivolous litigation.” Id. at *5 (quoting Thomas v. Foster, 

138 F. App’x 822, 823 (7th Cir. 2005)). But the district 

court explained that the Khans “not only acted in direct 

contravention to clear procedural rules, statutes, and governing law, but continued to do so after being repeatedly 

warned at hearings by the Court, in written orders, and in 

correspondence with defense counsel.” Id. The district 

court thus found that it was “more than objectively reasonable to believe that the [Khans] should have known their 

positions on venue and service were groundless.” Id. Accordingly, the district court ordered the Khans to pay attorney fees associated with the defendants’ filing fees, 

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KHAN v. HEMOSPHERE INC. 7

motions to dismiss, and motion for sanctions in the amount 

of $95,966.90. Order at 1, Khan v. Hemosphere Inc., 

No. 18-cv-05368 (N.D. Ill. July 15, 2019), ECF No. 175.

For their part, the Khans moved for sanctions against 

the physician defendants and their attorneys for alleged violations of Rule 11(b). The district court denied the motion 

on the ground that the Khans failed to provide proper notice to the defendants of their motion under Rule 11(c) or

properly present their motion to the court as required by 

the court’s local rules. Id. at 3. The district court later 

denied the Khans’ motion for reconsideration of the court’s 

dismissal and sanctions orders.

Merit Medical thereafter moved the district court to declare the case exceptional and to award attorney fees under 

§ 285 in the amount of $292,693. The district court denied 

the motion. Minute Entry, Khan v. Hemosphere Inc., 

No. 18-cv-05368 (N.D. Ill. Sept. 4, 2019), ECF No. 213. The 

district court found that the motion “cite[d] largely identical conduct that was previously before the Court on the initial motion for sanctions,” and that “[t]he Court ha[d]

already extensively considered this conduct in determining 

whether sanctions were appropriate and indeed ruled in 

Defendants[’] favor on this matter.” Id. The district court 

also found that, although the Khans had “litigated this case 

in an unorthodox manner,” none of their conduct following 

the court’s grant of sanctions could be considered “exceptional.” Id.

The Khans and Merit Medical appeal. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

The Khans request that this court reverse the decisions 

of the district court dismissing their complaint, granting 

sanctions against the Khans, and denying the Khans’ motion for sanctions. Merit Medical cross-appeals, seeking a 

reversal of the district court’s order denying its motion for 

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8 KHAN v. HEMOSPHERE INC.

attorney fees under § 285. For the reasons discussed below, we discern no abuse of discretion in the district court’s 

rulings and, accordingly, we affirm.

I

We first consider the Khans’ challenge to the district 

court’s dismissal of their complaint for failure to effectuate 

proper and timely service on the defendants as required 

under Rule 4 and, alternatively, for improper venue. 

A

We apply the law of the regional circuit, here the Seventh Circuit, in resolving whether a district court properly 

dismissed a case for want of prosecution. See Bowling 

v. Hasbro, Inc., 403 F.3d 1373, 1375 (Fed. Cir. 2005). The 

Seventh Circuit reviews a district court’s dismissal for 

want of prosecution for an abuse of discretion. Williams 

v. Illinois, 737 F.3d 473, 476 (7th Cir. 2013); see also Cardenas v. City of Chicago, 646 F.3d 1001, 1005 (7th Cir. 

2011) (a district court’s dismissal based on untimely service

of process is reviewed for an abuse of discretion).

“A district court may not exercise personal jurisdiction 

over a defendant unless the defendant has been properly 

served with process, and the service requirement is not satisfied merely because the defendant is aware that he has 

been named in a lawsuit or has received a copy of the summons and the complaint.” United States v. Ligas, 549 F.3d 

497, 500 (7th Cir. 2008) (citations omitted). Rule 4 specifies acceptable methods for service. For instance, a plaintiff may request a waiver of service from a defendant by 

mailing a copy of the complaint, two copies of the waiver 

form, and a prepaid means for returning the form. Fed. R. 

Civ. P. 4(d). “But if the defendant does not waive service 

and if no federal statute otherwise supplies a method for 

serving process, then Rule 4(e)’s list of methods is exclusive.” Ligas, 549 F.3d at 501. Those methods consist of 

“following state law for serving a summons in an action 

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KHAN v. HEMOSPHERE INC. 9

brought in courts of general jurisdiction in the state where 

the district court is located or where service is made”; “delivering a copy of the summons and of the complaint to the 

individual personally”; “leaving a copy of each at the individual’s dwelling or usual place of abode with someone of 

suitable age and discretion who resides there”; and “delivering a copy of each to an agent authorized by appointment 

or by law to receive service of process.” Fed. R. Civ. P. 4(e). 

“Unless service is waived, proof of service must be made to 

the court.” Fed. R. Civ. P. 4(l)(1).

Rule 4 also provides that “[i]f a defendant is not served 

within 90 days after the complaint is filed, the court—on 

motion or on its own after notice to the plaintiff—must dismiss the action without prejudice against that defendant 

or order that service be made within a specified time.” 

Fed. R. Civ. P. 4(m). “[I]f the plaintiff shows good cause for 

the failure,” however, “the court must extend the time for 

service for an appropriate period.” Id. A district court has 

the discretion to dismiss a complaint with prejudice “for 

want of prosecution if the plaintiff’s delay in obtaining service is so long that it signifies failure to prosecute.” Williams, 737 F.3d at 476 (citations omitted). A defendant 

may move to dismiss based on the court’s lack of personal 

jurisdiction, the insufficiency of process, or the insufficiency of service of process. Fed. R. Civ. P. 12(b)(2), (4), (5).

Here, the district court properly exercised its discretion 

in dismissing the Khans’ complaint due to their insufficient 

and untimely attempts at service. Although the Khans endeavored to obtain waivers from all of the defendants, with 

very few exceptions, the defendants did not return signed 

waiver forms. Thus, the Khans were required to serve the 

non-waiving defendants by the other methods set forth under Rule 4(e). See Ligas, 549 F.3d at 501. As the district 

court correctly observed, the Khans’ mailing of the complaint and the summons does not constitute service under 

Rule 4(e). 

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10 KHAN v. HEMOSPHERE INC.

The Khans argue that each defendant had a duty under 

Rule 4 to sign the waiver form and return it within 30 days 

or otherwise show good cause for not doing so. Appellants’ 

Br. 13, 15. They contend that “service is complete when 

the signed waiver form is returned by the defendant and 

filed by the plaintiff for entry into the District Court.” Id. 

at 13. In their view, the district court lacked jurisdiction 

to decide the motions to dismiss because the defendants did 

not return the waiver forms back to the Khans. Id. at 15–

16. 

The Khans misinterpret the provisions of Rule 4. 

While Rule 4(d) obligates defendants “to avoid unnecessary 

expenses of serving the summons,” it does not require defendants to waive formal service. Fed. R. Civ. P. 4(d)(1). 

Nor did the defendants’ decisions to forgo waiving service 

in this case strip the district court of its authority to decide 

the motions to dismiss on the basis of insufficient service.

The Khans cite subsection (e) of Illinois statute 735 ILCS 

5/2-201, in conjunction with Rule 4(e)(1), as permitting service by mail, but subsection (e) of Illinois statute 735 ILCS 

5/2-201 does not appear to exist. The Khans also cite subsection (e) of Illinois statute 735 ILCS 5/2-202, but this subsection concerns the housing authority police force’s service 

of process for eviction actions and is thus inapplicable to 

this civil action. The Illinois statute that governs service 

of individuals in civil actions is 735 ILCS 5/2-203, which 

does not allow service by mail. Absent proof under 

Rule 4(l) that proper service was made on any of the nonwaiving defendants, the district court properly held that 

the Khans had failed to provide proper service.

The district court also correctly concluded that the 

Khans failed to comply with Rule 4(m)’s timeliness requirement. In the more than 250 days between the filing of the 

complaint and the district court’s dismissal decision, nearly 

all of the over 300 defendants had not been properly served. 

The district court did not abuse its discretion in determining that the Khans did not show good cause to justify such 

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KHAN v. HEMOSPHERE INC. 11

“extreme delay”—nearly three-fold the amount of time allotted to complete service. Khan, 2019 WL 2137378, at *3.

Accordingly, we conclude that the district court was 

well within its discretion to dismiss the complaint with 

prejudice for want of prosecution due to the Khans’ insufficient and untimely service.

B

Turning to the issue of venue, the governing statute 

provides that “[a]ny civil action for patent infringement 

may be brought in the judicial district where the defendant 

resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b). A “regular and established 

place of business” requires a “place of business” in the district, i.e., “a physical, geographical location in the district 

from which the business of the defendant is carried out.” 

In re Cray Inc., 871 F.3d 1355, 1362 (Fed. Cir. 2017). The 

place of business must be the defendant’s, “not solely a 

place of the defendant’s employee.” Id. at 1363. We review 

de novo the question of proper venue under § 1400(b). 

Westech Aerosol Corp. v. 3M Co., 927 F.3d 1378, 1381 

(Fed. Cir. 2019).

The district court correctly concluded that venue was 

improper under § 1400(b). As to Merit Medical, CryoLife, 

and the three physicians dismissed earlier in the action, 

the district court found that the Khans had not contended 

that any of these defendants resided in the district. The 

district court also found that the Khans had failed to plausibly allege that any of them infringed the asserted claim 

in the district or had a “regular and established place of 

business” in the district. As to the remaining defendants, 

the district court found that the complaint and related filings were “devoid of any facts establishing that the infringing acts occurred in” the district or that the defendants 

“reside in the district.” Khan, 2019 WL 2137378, at *3. 

The district court also found that the Khans instead 

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12 KHAN v. HEMOSPHERE INC.

“allege[d] that the acts of infringement took place in the

states in which the Defendants reside,” and that “nearly all 

of the Defendants are not residents of Illinois and are instead scattered throughout the country in dozens of different states.” Id. 

These findings remain largely unchallenged on appeal. 

Indeed, the Khans concede that their complaint names 

“more than 300 defendants residing in 43 states and two 

manufacturers who are on opposite sides of the country.” 

Appellants’ Br. 17. The Khans also admit that “the venue 

for non-Illinois defendant physicians is improper here.” 

Id.; see also id. at 22 (“[T]he plaintiffs made it clear in our 

pleadings that the venue is improper for non-Illinois defendant physicians.”); id. at 11 (“The totality of the record 

shows that the plaintiffs have never said that the venue is 

proper for the 106 non-Illinois defendant physicians.”). 

The Khans instead focus their challenge on the district 

court’s findings that Merit Medical and CryoLife each lack

a “regular and established place of business” in the district. 

For instance, they contend that these corporations have 

sales representatives in the district that promote the accused HeRO® Graft shunt. Id. at 18. But the fact that certain employees live or conduct business in the district does 

not establish proper venue over defendants in the district. 

See Cray, 871 F.3d at 1363.

We are also unpersuaded by the Khans’ contention that 

venue in the district is proper because it is the most convenient forum to all parties under 28 U.S.C. § 1404(a). Appellants’ Br. 17. Section 1404(a) governs transfers of 

actions to other judicial districts for convenience; it does 

not set the standard for whether venue is proper. Section 1400(b) governs that issue, and the Khans have failed 

to convince us that the district court erred in determining 

that venue under that statute was improper. 

We have considered the Khans’ other arguments regarding service and venue, but do not find them 

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KHAN v. HEMOSPHERE INC. 13

persuasive. Accordingly, we conclude that the district 

court did not abuse its discretion in dismissing the action

with prejudice.

II

We next consider the Khans’ challenge to the district 

court’s decision granting the non-Illinois-resident defendants’ motion for Rule 11 sanctions. We apply the law of the 

regional circuit, here the Seventh Circuit, to review an 

award of Rule 11 sanctions. See Eon-Net LP v. Flagstar 

Bancorp, 653 F.3d 1314, 1328 (Fed. Cir. 2011) (citing 

Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396, 

1406–07 (Fed. Cir. 2004)). The Seventh Circuit reviews decisions regarding Rule 11 sanctions for an abuse of discretion. Bell v. Vacuforce, LLC, 908 F.3d 1075, 1079 (7th Cir. 

2018) (citing Cooter & Gell v. Hartmarx Corp., 496 U.S. 

384, 405 (1990)).

The district court properly exercised its discretion in 

sanctioning the Khans under Rule 11(b) for their frivolous 

arguments regarding venue and service of process. The 

district court found that the Khans had repeatedly asserted throughout the litigation that venue was proper in 

the Northern District of Illinois. In support of this argument, the Khans relied on this court’s decision in In re TC 

Heartland LLC, 821 F.3d 1338 (Fed. Cir. 2016), despite the 

fact that the Supreme Court had reversed that decision 

prior to the Khans’ lawsuit, see TC Heartland LLC v. Kraft 

Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017). The district court also noted that it had cited the Supreme Court’s 

TC Heartland decision both in its order granting Merit 

Medical’s and CryoLife’s motions to dismiss based on improper venue and in status hearings. Despite this guidance 

from the court, the Khans “again raised their baseless argument in their Motion to Reconsider.” Khan, 2019 WL 

2137378, at *4. The district court further found that the 

Khans’ complaint “undercut[] any good faith basis for asserting venue is proper in th[e] district,” since it alleged 

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14 KHAN v. HEMOSPHERE INC.

that the non-Illinois-resident defendants’ infringing acts 

occurred “at their addresses in their respective states.” Id. 

(quoting Complaint at 41, Khan v. Hemosphere Inc., 

No. 18-cv-05368 (N.D. Ill. Aug. 7, 2018), ECF No. 1). Finally, the district court found that the Khans had maintained their baseless assertion that service by mail was 

sufficient under Rule 4, again despite contrary guidance 

from the court. Id. at *5. 

The Khans do not challenge any of these factual findings on appeal. Instead, they contend that sanctions are 

inappropriate because the defendants violated

Rule 11(c)(2), which prohibits the filing of a sanctions motion “if the challenged paper, claim, defense, contention, or 

denial is withdrawn or appropriately corrected within 

21 days after service or within another time the court sets.” 

Fed. R. Civ. P. 11(c)(2). Specifically, they argue that the 

defendants did not serve them with the sanctions motion 

more than 21 days prior to filing it with the district court. 

But the district court found the opposite—namely, that the 

defendants put the Khans “on notice of their intent to seek 

sanctions as early as September 24, 2018”—more than 

five months before they filed their sanctions motion in 

March 2019. See Khan, 2019 WL 2137378, at *5. The district court also found that the Khans were notified on several more occasions before the defendants moved for 

sanctions. Id. The Khans offer no response to the district 

court’s finding that the defendants’ “‘early and often’ approach in corresponding with [the Khans] regarding their 

desire to pursue sanctions no doubt satisfies the 21-day requirement of Rule 11(c).” Id.; see also Matrix IV, Inc. v. Am. 

Nat’l Bank & Tr. Co., 649 F.3d 539, 552–53 (7th Cir. 2011)

(concluding that “a letter informing the opposing party of 

the intent to seek sanctions and the basis for the imposition 

of sanctions” sent more than two years before the motion 

was filed was “sufficient for Rule 11 purposes” (citations 

omitted)).

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KHAN v. HEMOSPHERE INC. 15

The Khans also argue that a sanctions award cannot 

be based on their assertions regarding service and venue 

because such assertions are “ancillary issues” that are “unrelated to the merits of the claim.” Appellants’ Br. 24. The 

Khans cite Rule 41(b) of the Federal Rules of Civil Procedure and Moeck v. Pleasant Valley School District, 844 F.3d 

387 (3d Cir. 2016), to support their argument. Id. at 24–

25. Rule 41(b) provides that an involuntary dismissal or 

other dismissal except “for lack of jurisdiction, improper 

venue, or failure to join a party under Rule 19 . . . operates 

as an adjudication on the merits,” Fed. R. Civ. P. 41(b), but

this rule does not preclude sanctions for frivolous venue 

and service assertions. The Khans’ reliance on Moeck is 

similarly misplaced. In Moeck, the Third Circuit discerned 

no error in the district court’s observations that the defendants’ numerous sanctions motions were a “waste of judicial 

resources” and that discovery, motion practice, and trial 

were better vehicles than sanctions motions to determine 

the truth of a plaintiff’s allegations. 844 F.3d at 389–92 

& n.9. Nothing in Moeck suggests, however, that sanctions 

are precluded for frivolous venue and service assertions, 

even if those assertions are considered “ancillary” to the 

merits of a plaintiff’s infringement claims. 

We have considered the Khans’ other arguments, but 

do not find them persuasive. Accordingly, we conclude that 

the district court did not abuse its discretion in granting 

the defendants’ motion for sanctions.

III

We next consider the Khans’ challenge to the district 

court’s denial of their cross-motion for Rule 11 sanctions 

against the physician defendants and their attorneys. In 

their motion, the Khans sought $250,000 in damages based 

on the defendants’ and their attorneys’ alleged violations of 

Rule 11(b), including their “inadequate pre-filing investigation” preceding their sanctions motion and “prosecuti[on] [of] the case for [the] improper purpose of 

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16 KHAN v. HEMOSPHERE INC.

harass[ing]” the Khans and “for causing mental anguish.” 

Request for Sanctions, Khan v. Hemosphere Inc., No. 18-cv05368 (N.D. Ill. June 13, 2019), ECF No. 155. 

We conclude that the district court did not abuse its 

discretion in denying the Khans’ cross-motion for sanctions. The district court denied the motion for failure to 

comply with the safe harbor provisions of Rule 11(c) and

the requirement of the district court’s Local Rule 5.3(b) to 

accompany a motion with “a notice of presentment specifying the date and time on which, and judge before whom, 

the motion or objection is to be presented.” The Khans do 

not address either of these defects on appeal. Instead, they 

merely reiterate that the defendant physicians and their 

attorneys should be sanctioned for their assertions that the 

HeRO® Graft shunt does not infringe the asserted claim of 

the ’344 patent and for filing a motion for sanctions against 

the Khans. Under these circumstances, we conclude that 

the district court was well within its discretion to deny the 

Khans’ cross-motion for Rule 11 sanctions.

IV

Lastly, we turn to Merit Medical’s cross-appeal from

the district court’s decision denying its motion to declare 

the case exceptional and to award attorney fees in the 

amount of $292,693. “The court in exceptional cases may 

award reasonable attorney fees to the prevailing party.” 

35 U.S.C. § 285. “[A]n ‘exceptional case’ is simply one that 

stands out from others with respect to the substantive 

strength of a party’s litigating position (considering both 

the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” Octane 

Fitness, LLC v. Icon Health & Fitness, Inc., 572 U.S. 545, 

554 (2014). “District courts may determine whether a case 

is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances.” Id. We 

review a district court’s denial of a motion for attorney fees 

under § 285 for an abuse of discretion. Highmark Inc. 

Case: 19-1952 Document: 137 Page: 16 Filed: 08/13/2020
KHAN v. HEMOSPHERE INC. 17

v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 561, 564 

(2014).

We conclude that the district court did not abuse its 

discretion in denying Merit Medical’s motion for attorney 

fees under § 285. The district court found that the conduct 

described in the motion was largely identical to the conduct 

already presented in the defendants’ earlier sanctions motion and was already considered by the court in granting 

sanctions against the Khans. The district court also determined that, although the Khans’ litigation strategy was 

“unorthodox,” their conduct following the district court’s 

grant of sanctions did not rise to the level of “exceptional.” 

The district court further found that the previous sanctions 

amount of $95,966.90 was appropriate and reasonable 

given the Khans’ conduct in the case, but that imposing a 

three-fold increase in those fees was not warranted. We

are unpersuaded that the district court “based its ruling on 

an erroneous view of the law or on a clearly erroneous assessment of the evidence.” Highmark, 572 U.S. at 563 n.2

(quoting Cooter & Gell, 496 U.S. at 405).

Merit Medical cites Rothschild Connected Devices Innovations LLC v. Guardian Protection Services, Inc., 

858 F.3d 1383 (Fed. Cir. 2017), to support its argument 

that the district court “improperly conflated” Rule 11 with 

§ 285 rather than accounting for the totality of the circumstances. Cross-Appellant’s Br. 80. In Rothschild, the district court denied a motion for fees under § 285 based on its 

finding that the patent owner’s “decision to voluntarily 

withdraw its complaint within [Rule 11’s] safe harbor period [wa]s the type of reasonable conduct [that] Rule 11 is 

designed to encourage” and, thus, awarding fees under 

§ 285 would “‘contravene[] the aims of Rule 11[’s]’ safe-harbor provision.” 858 F.3d at 1390 (latter three alterations 

in original) (quoting Rothschild Connected Devices Innovations, LLC v. Guardian Prot. Servs., Inc., No. 15-cv-1431, 

2016 WL 3883549, at *2 (E.D. Tex. July 18, 2016)). We 

held that the district court’s decision was contrary to the 

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18 KHAN v. HEMOSPHERE INC.

Supreme Court’s admonition that “[w]hether a party 

avoids or engages in sanctionable conduct under Rule 11(b)

‘is not the appropriate benchmark’” for an award of fees under § 285. Id. (quoting Octane Fitness, 572 U.S. at 555). 

By contrast, here, the district court considered the totality of the circumstances, including the Khans’ litigation 

approach and the substantial overlap between the complained-of conduct in Merit Medical’s motion and the earlier sanctions motion. Based on its assessment of the 

procedural history and parties’ briefing, the district court 

determined that the Khans’ conduct in this case—while 

sanctionable—was not so unreasonable so as to make this 

case one of the rare cases worthy of a three-fold increase in 

fees imposed against them. Octane Fitness gives district 

courts broad discretion in such exceptional-case determinations. We are not persuaded that the district court 

abused its discretion in determining that this case is not 

exceptional.

CONCLUSION

For the foregoing reasons, we affirm the district court’s 

decisions dismissing the action with prejudice, granting 

the defendants’ motion for sanctions, denying the Khans’ 

cross-motion for sanctions, and denying Merit Medical’s 

motion for attorney fees under § 285. Because we have affirmed the district court’s dismissal and award of sanctions 

based on the issues of insufficient service of the complaint 

under Rule 4 and improper venue, we need not reach the 

district court’s determination of misjoinder.

AFFIRMED

COSTS

No costs. 

Case: 19-1952 Document: 137 Page: 18 Filed: 08/13/2020