       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

                  JOHN EASTCOTT,
                   Plaintiff-Appellant,

                           v.

   HASSELBLAD USA, INC., HASSELBLAD A/S,
   AND B&H PHOTO & ELECTRONICS CORP.,
             Defendants-Appellees.
            ______________________

                   2013-1050, -1051
                ______________________

    Appeals from the United States District Court for the
Southern District of New York in No. 11-CV-5383, Judge
Jed S. Rakoff.
                ______________________

                 Decided: June 4, 2014
                ______________________

    DOUGLAS W. WYATT, Wyatt, Gerber & O’Rourke LLP,
of New York, New York, argued for plaintiff-appellant.

   MARK C. JOHNSON, Renner, Otto, Boisselle & Sklar,
LLP, of Cleveland, Ohio, argued for defendants-appellees.
With him on the brief were KYLE B. FLEMING and
NICHOLAS J. GINGO.
                ______________________
2                          EASTCOTT   v. HASSELBLAD USA, INC.



    Before O’MALLEY, WALLACH, and TARANTO, Circuit
                       Judges.
O’MALLEY, Circuit Judge.
    This patent appeal involves camera lens technology
and the district court’s imposition of sanctions for a
“sham” invoice requesting expert fees. In 2011, Appellant
John Eastcott filed a complaint in the United States
District Court for the Southern District of New York
against Appellees Hasselblad A/S, Hasselblad USA Inc.,
and B&H Photo & Electronics Corp. alleging infringement
of U.S. Patent No. 5,592,331 (“the ’331 patent”). Specifi-
cally, Eastcott asserted that the Hasselblad HTS 1.5
adapter infringed claims 1, 6, and 26 of the ’331 patent.
Appellees counterclaimed for declaratory judgment of
non-infringement and invalidity.
     During discovery, Appellees moved for sanctions, al-
leging that Eastcott and his counsel fabricated an invoice
for expert witness fees. After a hearing, the district court
imposed sanctions against Eastcott and his counsel under
its inherent power in the amount of double the attorneys’
fees and costs for bringing the motion, with half payable
to Appellees and the other half payable to the district
court. In a subsequent decision, the district court granted
summary judgment of non-infringement of claim 26 and
invalidity of claims 1 and 6.
    Eastcott appeals only the district court’s grant of
summary judgment finding that claim 26 is not infringed
under the doctrine of equivalents, and the order imposing
sanctions. See Appellant Br. 34. For the reasons ex-
plained below, we affirm the district court’s grant of
summary judgment of non-infringement of claim 26 of the
’331 patent, vacate the district court’s imposition of sanc-
tions, and remand for further proceedings.
EASTCOTT   v. HASSELBLAD USA, INC.                          3



                        BACKGROUND
                   A. The Asserted Patent
     Eastcott is a professional photographer and the
named inventor of the ’331 patent, which issued on Janu-
ary 7, 1997. ’331 Patent, at [45], [76] (filed Jan. 18, 1995).
The patent is titled “Optical Adapter for Controlling the
Angle of the Plane of Focus.” Id. at [54]. The ’331 patent
describes a camera adapter that “permits the user to
control the angle of the plane of focus relative to the
image plane.” Id. col. 4 ll. 26–28. This control allows
tilting a lens to bring into focus simultaneously objects
positioned at different distances. Id. col. 3 ll. 51–58. It
also allows a user to render objects positioned at the same
distance from the lens plane with differing degrees of
sharpness. Id. For example, “a portrait of a person facing
the camera may be recorded with one side of the face
sharp and the other mysteriously soft and out of focus.”
Id. Only dependent claim 26 is relevant to this appeal,
which incorporates independent claim 1. These claims
cover a camera adapter that allows the lens to tilt in the
manner noted above.
    Claim 1 recites:
    An adapter for altering the angle of the plane of
    focus of an optical system, the optical system in-
    cluding (a) an optical instrument having an open-
    ing through which an image forming beam can
    pass, an image plane adapted to receive an image
    thereon and an optical axis, and (b) an inter-
    changeable lens having an optical axis;
    the adapter being sandwiched between, and re-
    movably connected to, the optical instrument and
    the interchangeable lens;
    the adapter having
        (i) an adapter body;
4                                EASTCOTT   v. HASSELBLAD USA, INC.



         (ii) a secondary lens mounted within the
         adapter body,
         (iii) a front face coupling means on the
         adapter body to removably mount the in-
         terchangeable lens thereto,
         (iv) a back face coupling means on the
         adapter body to removably mount the
         adapter to the optical instrument, and
         (v) tilt means to tilt the optical axis of the
         interchangeable lens at a variable, includ-
         ing non-perpendicular, angle to the image
         plane of the optical instrument.
Id. col. 8 l. 66–col. 9 l. 18.
    Claim 26 recites:
    An adapter as in claim 1 wherein the tilt means
    includes a mounting ring holding the secondary
    lens two pins protruding outwardly from the
    mounting ring and a casing member having two
    slots therein at acute angles to the optical axis of
    the optical instrument and wherein each pin
    slides within one of the slots.
Id. col. 10 ll. 54–59.
                     B. Procedural History
    Eastcott filed suit against the Appellees on August 2,
2011, alleging that the Hasselblad 1.5 adapter infringed
claims 1, 6, and 26 of the ’331 patent. See Complaint,
Eastcott v. Hasselblad USA Inc., No. 1:11-cv-05383-JSR
(S.D.N.Y. Aug. 2, 2011), ECF No. 1. Appellees counter-
claimed for declaratory judgment of non-infringement and
invalidity. See Answer, Eastcott v. Hasselblad USA Inc.,
No. 1:11-cv-05383-JSR (S.D.N.Y. Oct. 11, 2011), ECF No.
12.
EASTCOTT   v. HASSELBLAD USA, INC.                      5



    During discovery, Eastcott identified both himself and
his wife, Yva Momatiuk, as persons with knowledge of the
infringement.     Appellees deposed both Eastcott and
Momatiuk. In January 2012, Eastcott deposed the Appel-
lees’ two identified expert witnesses: Andrew Finger and
Anders Poulsen. After their depositions, Appellees re-
quested that Eastcott reimburse them under Federal Rule
of Civil Procedure 26(b)(4)(E) in the amount of $13,552.50
for the time their expert witnesses spent preparing and
attending those depositions. When threatened with a
motion seeking payment of the invoice, Eastcott sent
Appellees an invoice for $17,000.00 for expert fees relat-
ing to his and Momatiuk’s depositions. During a May 15,
2012 telephone conference with the court, Eastcott’s
counsel stated that he had “provided an invoice that
would address [Appellees’] invoices,” because his invoice
was “commensurate” with the Appellees’ invoices. Joint
Appendix (“J.A.”) 39.
     On May 11, 2012, Appellees filed a motion seeking an
order that Eastcott must pay (1) $18,770.53 for Appellees’
expert fees from the two depositions, now including travel
time; (2) attorneys’ fees and costs for filing the motion,
and (3) sanctions for “fabricating the charges on the
[Eastcott/Momatiuk] invoice.” See Memorandum and
Order at 2, Eastcott v. Hasselblad USA Inc., No. 1:11-cv-
05383-JSR (S.D.N.Y. Sept. 26, 2012), ECF No. 36 (inter-
nal quotation marks omitted). On September 25, 2012,
the district court granted Appellees’ motion, and imposed
sanctions upon Eastcott and his counsel, jointly and
severally, in the amount of $12,815.70, for creating,
submitting, and continuing to rely on the “sham invoice.”
Id. The district court reached this number by doubling
the attorneys’ fees and costs of $6,407.85 the Appellees
incurred in bringing the motion. The court ordered half of
the sanction payable to Appellees and half payable to the
court. The court expressly grounded the sanctions upon
its inherent authority.
6                         EASTCOTT   v. HASSELBLAD USA, INC.



    On January 17, 2012, Appellees moved for summary
judgment, arguing that claims 1, 6, and 26 of the ’331
patent were invalid and that claim 26 was not infringed.
Eastcott submitted two separate affidavits, both self-
authored, in support of his opposition to the motion for
summary judgment. On September 24, 2012, the district
court granted the Appellees’ motion for summary judg-
ment, finding claims 1 and 6 invalid and claim 26 not
infringed, but not invalid. See Memorandum Order,
Eastcott v. Hasselblad A/S, No. 1:11-cv-05383-JSR
(S.D.N.Y Sept. 25, 2012), ECF No. 34. Because Eastcott
conceded that the HTS 1.5 adapter did not literally in-
fringe claim 26, the district court only addressed in-
fringement under the doctrine of equivalents. See id. at
21. The district court found that Eastcott failed to pro-
vide the required particularized testimony—either in his
affidavits or through his deposition testimony—to estab-
lish infringement on a limitation-by-limitation basis
under the doctrine of equivalents, making judgment as a
matter of law on that issue appropriate. See id. On
September 26, 2012, the district court entered judgment
granting the Appellees’ motion for summary judgment
and dismissing the complaint with prejudice. Clerk’s
Judgment, Eastcott v. Hasselblad A/S, No. 1:11-cv-05383-
JSR (S.D.N.Y Sept. 26, 2012), ECF No. 35.
    Eastcott appeals from: (1) the final judgment of the
district court granting summary judgment of non-
infringement of claim 26 of the ’331 patent, and (2) the
September 25, 2012 order imposing sanctions on Eastcott
and his counsel. This court has jurisdiction under 28
U.S.C. § 1295(a)(1).
                       DISCUSSION
   This court reviews the grant of summary judgment of
non-infringement de novo. Chimie v. PPG Indus., Inc.,
402 F.3d 1371, 1376 (Fed. Cir. 2005). For issues not
unique to patent law, this court generally applies the law
EASTCOTT   v. HASSELBLAD USA, INC.                        7



of the applicable regional circuit. i4i Ltd. P’ship v. Mi-
crosoft Corp., 598 F.3d 831, 841 (Fed. Cir. 2010). Here,
the applicable regional circuit is the Second Circuit, which
reviews a district court’s exercise of its inherent power to
sanction for an abuse of discretion. See Reilly v. Natwest
Markets Grp. Inc., 181 F3d 253, 270 (2d Cir. 1999); Miltex
Indus. Corp. v. Jacquard Lace Co., 55 F.2d 34, 37 (2d Cir.
1995).
                   A. Summary Judgment
     According to the Federal Rules of Civil Procedure,
“[t]he court shall grant summary judgment if the movant
shows that there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(a); see also Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). In considering sum-
mary judgment, we view the evidence in the light most
favorable to the non-moving party. See Poller v. Columbia
Broad. Sys., Inc., 368 U.S. 464, 473 (1962). Accordingly, if
the “evidence favoring the nonmoving party . . . is merely
colorable, or is not significantly probative, summary
judgment may be granted.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 249–50 (1986) (citations omitted).
    Under the doctrine of equivalents, “a product or pro-
cess that does not literally infringe upon the express
terms of a patent claim may nonetheless be found to
infringe if there is ‘equivalence’ between the elements of
the accused product or process and the claimed elements
of the patented invention.” Warner-Jenkinson Co. v.
Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997).
   [A] patentee must . . . provide particularized tes-
   timony and linking argument as to the “insub-
   stantiality of the differences” between the claimed
   invention and the accused device or process, or
   with respect to the function, way, result test when
   such evidence is presented to support a finding of
   infringement under the doctrine of equivalents.
8                          EASTCOTT   v. HASSELBLAD USA, INC.



    Such evidence must be presented on a limitation-
    by-limitation basis. Generalized testimony as to
    the overall similarity between the claims and the
    accused infringer’s product or process will not suf-
    fice.
AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d
1320, 1328 (Fed. Cir. 2007) (emphasis omitted) (quoting
Texas Instruments, Inc. v. Cypress Semiconductor Corp.,
90 F.3d 1558, 1567 (Fed. Cir. 1996)); see also Ethicon
Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309,
1315 (Fed. Cir. 1998) (“Whether a component in the
accused subject matter performs substantially the same
function as the claimed limitation in substantially the
same way to achieve substantially the same result may be
relevant to this determination.” (citations omitted)). “‘The
same rule applies in the summary judgment context.’”
AquaTex Indus., 479 F.3d at 1328 (quoting Network
Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1363
(Fed. Cir. 2005)). “[W]hile many different forms of evi-
dence may be pertinent, when the patent holder relies on
the doctrine of equivalents, as opposed to literal infringe-
ment, the difficulties and complexities of the doctrine
require that evidence be presented to the jury or other
fact-finder through the particularized testimony of a
person of ordinary skill in the art, typically a qualified
expert, who (on a limitation-by-limitation basis) describes
the claim limitations and establishes that those skilled in
the art would recognize the equivalents.” Id. at 1329.
    The district court found that Eastcott did not provide
the required particularized testimony on a limitation-by-
limitation basis to establish the existence of a genuine
issue of fact regarding infringement under the doctrine of
equivalents. Eastcott presented evidence through his own
deposition testimony and his two affidavits in opposition
to the Appellees’ motion for summary judgment of non-
infringement. Based on our review of the record, we agree
EASTCOTT   v. HASSELBLAD USA, INC.                        9



with the district court that Eastcott’s evidence is insuffi-
cient to defeat summary judgment. 1
    First, turning to Eastcott’s deposition testimony, we
find that it fails to address any limitations in claim 26.
Eastcott testified that he was not in the position to apply
the legal claims to the HTS 1.5 adapter, stating that he
“hired legal expertise specifically because that is not my
area of expertise.” Johnson Decl. Ex. 11 at 18–19,
Eastcott v. Hasselblad A/S, No. 1:11-cv-05383-JSR
(S.D.N.Y Jan. 19, 2012), ECF No. 24-11 (Eastcott Dec. 20,
2011 Deposition). He did not identify, moreover, what
features of the adapter corresponded to each limitation of
the claims. See id. at 20–23. Indeed, he had no opinion
about where the mounting ring was located in the HTS
1.5 adapter. See id. at 22–23. When Appellees’ counsel
asked Eastcott whether he had “ever formed any opinions
with regard to what element on a Hasselblad HTS device
corresponds to a mounting ring?”; Eastcott responded that
he had not. See id. Without an opinion on which element
of the accused HTS 1.5 adapter meets the mounting ring
limitation, Eastcott’s deposition testimony fails to provide
the requisite particularized testimony.
    We also find Eastcott’s affidavits insufficient.
Eastcott argues that paragraphs 69 to 75 of his first
affidavit and 36 to 44 of his second affidavit provide
“particularized testimony that the [Hasselblad] adapter
structure performs substantially the same way and gives
the same results as the adapter of the ’331 patent-in-suit.”
Appellant Br. 35, 50–53. This is not the standard, howev-



   1    Because we find that, taken in its entirety,
Eastcott’s testimony lacks the required particularized
testimony on a limitation-by-limitation basis, we decline
to address the admissibility of Eastcott’s affidavits.
10                        EASTCOTT   v. HASSELBLAD USA, INC.



er. Equivalence must be established on a limitation-by-
limitation basis, not based on an assessment of the ac-
cused product as a whole. See Aquatex, 479 F.3d at 1328.
     Having carefully examined the paragraphs to which
Eastcott points, we find Eastcott’s affidavit testimony
conclusory; it simply does not provide a sufficient expla-
nation of which specific structures of the HTS 1.5 adapter
are equivalent to the limitations in claim 26. Eastcott
lists paragraphs that primarily recite the limitations in
claim 26 and then broadly state that the HTS 1.5 adapter
contains these limitations. For example, paragraphs 69 to
75 of the first affidavit allege that the HTS 1.5 adapter
contains a mounting ring, casing member, pins, and slots.
Similarly, paragraphs 36 to 43 of Eastcott’s second affida-
vit state that the HTS 1.5 adapter includes a mounting
ring, casing member, pins, and slots. These paragraphs
do not point to any specific portions of the HTS 1.5 adapt-
er that satisfy these limitations in the specific manner
described in the claim, however. Paragraph 44 of the
second affidavit, moreover, is no more than a legal conclu-
sion that “[t]he HTS 1.5 adapter provides slots and pins
that perform in the substantially the same way, using
substantially the same means with substantially the
same result as the slots and pins described in the ’331
patent.” See Wyatt Decl. Ex. 23 at 14, Eastcott v. Has-
selblad USA Inc., No. 1:11-cv-05383-JSR (S.D.N.Y. Jan.
28, 2012), ECF No. 27-23. This conclusory statement is
simply not enough to create a factual question regarding
infringement under the doctrine of equivalents.
    Eastcott’s affidavits are not only conclusory; they are
inconsistent.    For example, while paragraph 69 of
Eastcott’s first affidavit and paragraph 36 of Eastcott’s
second affidavit state that the HTS 1.5 adapter includes
pins in the casing member and slots on the mounting
ring, paragraph 40 of his second affidavit states that the
HTS 1.5 adapter includes a casing member with two slots,
not pins.
EASTCOTT   v. HASSELBLAD USA, INC.                      11



    Ultimately, we agree with the district court’s finding
that Eastcott’s submissions failed to contain sufficient
particularized testimony and linking argument on a
limitation-by-limitation basis to support a finding of
infringement of claim 26 under the doctrine of equiva-
lents. Accordingly, Eastcott’s proffered evidence fails to
demonstrate a genuine dispute as to any material fact
that would prevent the grant of summary judgment.
                        B. Sanctions
    Turning to the district court’s sanctions, Eastcott and
his counsel assert that they did not receive notice of the
authority underlying the contemplated sanctions or the
applicable standard according to which they might be
imposed. We agree. Under Second Circuit law, “‘due
process requires that courts provide notice and opportuni-
ty to be heard before imposing any kind of sanctions.’”
Ted Lapidus, S.A. v. Vann, 112 F.3d 91 (2d Cir. 1997)
(quoting In re Ames Dept. Stores, Inc., 76 F.3d 66, 70 (2d
Cir. 1996) (emphasis in original)). “An attorney whom the
court proposes to sanction must receive specific notice of
the conduct alleged to be sanctionable and the standard
by which that conduct will be assessed, and an opportuni-
ty to be heard on that matter, and must be forewarned of
the authority under which sanctions are being considered,
and given a chance to defend himself against specific
charges.” 2 Sakon v. Andreo, 119 F.3d 109, 114 (2d Cir.


   2    While Appellees assert that a district court can
properly impose sanctions under its inherent power
without specific notice of the grounds for sanctions, they
cite no Second Circuit authority to support this position,
relying instead on non-binding Third Circuit precedent.
Although the Third Circuit’s approach has much to com-
mend it, we see no case law in the Second Circuit to date
to indicate that the Second Circuit would adopt a similar
exception to its otherwise strict notice requirements.
12                        EASTCOTT   v. HASSELBLAD USA, INC.



1997) (internal quotation marks and citations omitted);
see Schlaifer Nance & Co. v. Estate of Warhol, 194 F.3d
323, 334 (2d Cir. 1999) (“At a minimum, the notice re-
quirement mandates that the subject of a sanctions
motion be informed of: (1) the source of authority for the
sanctions being considered; and (2) the specific conduct or
omission for which the sanctions are being considered so
that the subject of the sanctions motion can prepare a
defense.”); Lapidus, 112 F.3d at 97 (“We believe that a
sanctioned attorney must receive specific notice of the
conduct alleged to be sanctionable and the standard by
which that conduct will be assessed, and an opportunity
to be heard on that matter.”).
    Before the district court imposed sanctions, Eastcott
and his counsel were unaware that the court might sanc-
tion them under its inherent powers. Appellees’ initial
letter-motion requested simply that the district court
“sanction [Eastcott] and its counsel for fabricating the
charges on the ‘invoice.’” J.A. 1190. This letter-motion
did not cite any specific authority. Eastcott and his
counsel responded by arguing that the letter-motion seeks
“unspecified sanctions” and that “Rule 11 does not provide
for sanctions for discovery disputes such as this and in no
way has [Eastcott] abused discovery or made unreasona-
ble demands on [Appellees’] experts.” J.A. 1205–07. In
their reply, Appellees explicitly stated that they believed
that “[s]anctions are awardable under Rule 37.” J.A.
1268. This mention of Rule 37 was the only specific
authority cited by the Appellees.
    Nor did the district court warn Eastcott and his coun-
sel of potential sanctions under the court’s inherent
powers at the motions hearing. After listening to argu-
ments from both parties, the district court stated that it
would “take this matter under advisement.” J.A. 1330.
The district court then turned its attention on Eastcott’s
counsel to consider “whether the conduct of counsel in
what the Court may determine is a patently fraudulent
EASTCOTT   v. HASSELBLAD USA, INC.                     13



invoice prepared with fraudulent intent warrants referral
to the grievance committee of the Southern District of
New York of counsel for their facilitation and participa-
tion in what may or may not be . . . a gross fraud.” J.A.
1330–31. The district court then provided each party
ample opportunity to raise any additional support for
their positions. Throughout the entire hearing, the dis-
trict court did not mention the possibility of sanctions
under its inherent powers. See J.A. 1325–38. Nor did
Appellees request sanctions under the district court’s
inherent powers at the hearing. Not until the district
court imposed the sanctions in its Memorandum Order
was there any indication of the court’s inherent powers as
a basis for sanctions.
     Under Second Circuit standards, the notice the dis-
trict court and Appellees’ counsel provided Eastcott and
his counsel was insufficient to satisfy due process. As
noted above, “[a]t a minimum, the notice requirement
mandates that the subject of a sanctions motion be in-
formed of: (1) the source of authority for the sanctions
being considered; and (2) the specific conduct or omission
for which the sanctions are being considered so that the
subject of the sanctions motion can prepare a defense.”
Schlaifer, 194 F.3d at 334. Consistent with these re-
quirements, in L.B. Foster Co. v. America Piles, Inc., the
Second Circuit found that the district court failed to
provide procedural safeguards to a sanctioned party when
it imposed sanctions under 28 U.S.C. § 1927, though the
party only received notice that sanctions were sought
under Rule 11. 138 F.3d 81, 89 (2d Cir. 1998); cf. Schlai-
fer, 194 F.3d at 334 (finding sufficient notice when the
sanctions motion invoked and set forth the standards for
sanctions under the court’s inherent power and § 1927,
even though the motion focused on Rule 11). Although
Eastcott surely had an opportunity to be heard and argue
that sanctions were not warranted, we find that Eastcott
and his counsel did not receive notice of the standard and
14                        EASTCOTT   v. HASSELBLAD USA, INC.



authority under which sanctions were being considered
before the district court imposed sanctions. Because the
Second Circuit requires greater notice before it will find
that a sanctioned party received all process due to him or
her prior to the imposition of sanctions, we vacate the
district court’s order imposing sanctions and remand for
further proceedings.
    On remand, the district court must also reconsider
any sanctions which are punitive rather than merely
compensatory in nature. When imposing punitive sanc-
tions, such as the portion of the sanction here made
payable to the court, additional procedures are required.
“A troublesome aspect of a trial court’s power to impose
sanctions . . . is that the trial court may act as accuser,
fact finder and sentencing judge, not subject to re-
strictions of any procedural code and at times not limited
by any rule of law governing the severity of sanctions that
may be imposed.” Mackler Prods., Inc. v. Cohen, 146 F.3d
126, 128–29 (2d Cir. 1998) (Mackler I) (citation omitted)
(finding that a $10,000.00 sanction, payable to the court,
imposed under its inherent authority was a punitive
sanction, and consequently, required the protections of
criminal procedure). Given this concern, “in certain
sanctions proceedings, the person facing imposition of
sanctions should have the benefit of the procedural pro-
tections available to a person charged with a crime.” Id.
at 128. “Criminal protections are generally thought to
include, in addition to notice and the opportunity to be
heard, the right to a public trial, assistance of counsel,
presumption of innocence, the privilege against self-
incrimination, and the requirement of proof beyond a
reasonable doubt.” Id. (citations omitted).
    In Mackler I, the Second Circuit found that a
$10,000.00 sanction payable to the district court imposed
under its inherent authority was a punitive sanction, and
consequently, required the protections available to crimi-
nal defendants. Id. at 129. In reaching this conclusion,
EASTCOTT   v. HASSELBLAD USA, INC.                       15



the court considered the following factors: (1) whether the
sanction was intended to be compensatory or punitive; (2)
whether the imposition was retrospective, rather than to
coerce future compliance; (3) whether the sanction was
payable to the court, rather than the injured party; and
(4) whether the size of the sanction was substantial. Id.
In finding that the sanction imposed there required
greater procedural protections, the court explained that it
had all of the features of a criminal sanction outlined
above. Id. Similarly, here, we conclude that at least a
portion of the sanction imposed was punitive, retrospec-
tive with no opportunity to purge, payable to the court,
and substantial. 3 It is undisputed that Eastcott and his
counsel did not receive the benefit of all of the procedural
safeguards which are prerequisites to imposition of a
criminal penalty. Because we find that the imposition of
the sanction payable to the court in the amount of
$6,407.85 on Eastcott and his counsel, jointly and several-


   3     In a subsequent appeal, the Second Circuit held
that the district court’s reduction of its sanction from
$10,000.00 to $2,000.00 did not alter the criminal charac-
ter of the sanction where all of the factors indicative of a
criminal sanction remained. Mackler Productions, Inc. v.
Cohen, 225 F.3d 136, 142–43 (2d Cir. 2000) (Mackler II).
In Mackler II, the court emphasized that the gravamen of
its analysis focused on “whether or not the sanction at
issue was criminal or civil in character.” Mackler II, 225
F.3d at 142 (emphasis in original); see also Buffington v.
Baltimore Cnty., Md., 913 F.2d 113, 132–35 (4th Cir.
1990) (finding $6,785.37 punitive sanction to require
criminal procedural protections). Noting that only the
amount of the sanction had changed, the court found that
all of the other factors still supported the conclusion that
the sanction at issue was criminal in nature, despite the
reduction in the size of the sanction. Mackler II, 225 F.3d
at 142.
16                         EASTCOTT   v. HASSELBLAD USA, INC.



ly, required that the district court afford them criminal
procedural protections, we also vacate and remand the
district court’s order imposing the portion of the “puni-
tive” sanction payable to the court on this basis.
                       CONCLUSION
    For the reasons above, and because we find that
Eastcott’s other arguments have no merit, we affirm the
grant of summary judgment of non-infringement of claim
26, vacate the district court’s imposition of sanctions, and
remand so that the district court may consider reimposing
sanctions after providing Eastcott and his counsel the
proper notice required for due process, and the benefit of
criminal processes for any punitive sanctions.
  AFFIRMED-IN-PART, VACATED-IN-PART, AND
                REMANDED
