Certusview Technologies, LLC v. S & N Locating Services, LLC et al, No. 2:2013cv00346 - Document 542 (E.D. Va. 2016)

Court Description: OPINION AND ORDER Denying 436 Motion in Limine; Granting 494 MOTION to Enforce the Court's Order dated March 7, 2016; Overruling 529 Objection; Denying 336 Second Amended ANSWER to Complaint, COUNTERCLAIM. Plaintiff/Counter- Defendan t's Rule 52(c) Motion is DENIED, and Plaintiff/Counter- Defendant's remaining Motion in Limine, ECF No. 436, is DENIED. Further, Plaintiff/Counter-Defendant's Motion to Enforce the Court's Memorandum Order, ECF No. 4 94, is GRANT ED and Plaintiff/Counter-Defendant's Objections to Defendants/Counter- Plaintiffs' Post-Trial Brief, ECF No. 529, are OVERRULED. With respect to Defendants/Counter-Plaintiffs' declaratory judgment counterclaim for inequitable conduct, asserted in its Second Amended Answer and Counterclaim, ECF No. 336, for the reasons discussed above, such counterclaim is DENIED on each of the five grounds alleged. It is therefore ORDERED that judgment be entered in favor of Plaintiff/Counter-Def endant as to Defendants/Counter-Plaintiffs' declaratory judgment counterclaim for inequitable conduct. IT IS SO ORDERED. Signed by District Judge Mark S. Davis and filed on 8/2/16. Copies distributed to all parties 8/2/16. (Attachments: # 1 Part 2) (ldab, )

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Certusview Technologies, LLC v. S & N Locating Services, LLC et al Doc. 542 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF VIRGINIA Norfolk Division CERTUSVIEW TECHNOLOGIES, LLC, Plaintiff/Counter-Defendant, Case No.: S&N LOCATING SERVICES, S&N COMMUNICATIONS, 2:13cv346 LLC and INC., Defendants/Counter-Plaintiffs. OPINION AND CertusView Technologies, "Plaintiff/Counter-Defendant") action alleging Communications, ORDER that S&N Inc.'s LLC filed this Locating ("S&N" ("CertusView" patent Services, or and S&N "Defendants/Counter- an amended answer asserting an declaratory judgment counterclaim. infringement LLC Plaintiffs") infringed the five Patents-in-Suit. by filing or S&N responded inequitable conduct Although the Court granted S&N's Motion for Judgment on the Pleadings and found that each of the asserted claims of the Patents-in-Suit were invalid because they did not claim patent-eligible subject matter, S&N's inequitable conduct declaratory for trial.1 judgment counterclaim remained After a five-day bench trial, and with the benefit For a more detailed factual and procedural history, see May 22, 2015 Opinion and Order, Order, ECF No. ECF No. 325, and January 21, 2015 Opinion and 250. Dockets.Justia.com of post-trial conclusions briefs and law, S&N's of proposed findings inequitable of fact and conduct declaratory conduct declaratory judgment counterclaim is ripe for decision. Before ruling on the inequitable judgment counterclaim, the Court must address the following four motions CertusView filed counterclaim: by (1) CertusView's CertusView's remaining CertusView's Motion Memorandum Order, to Materials After findings of on in 494; S&N's these fact in Enforce ECF No. 52(c) and the No. March of 7, ECF will law (2) 4 36; Brief, Court the motion; CertusView's Post-Trial conclusions ECF Court's (4) with trial Limine, the motions, and association Rule Motion to Cited ruling in (3) 2016 Objections No. 529.2 present regarding its S&N's inequitable conduct declaratory judgment counterclaim. I. Before and CERTUSVIEWS RULE 52(c) during trial, partial judgment, pursuant 52(c), asserting, among to CertusView Federal other 2016. ECF No. 533. As moved Rule such Motion has for of Civil that things,3 2 CertusView also filed a Motion for Partial 15, MOTION the entry of Procedure Court is Reconsideration on June limited relevance to the subjects of the instant Opinion and Order and has just recently become ripe, the Court will address such Motion separately. 3 During trial, demonstrate the five conduct. the grounds S&N had Trial Tr. Vol. Court's matters CertusView is also argued that CertusView engaged in determination coterminous 5A, of asserted that for a 994:24-999:20, CertusView's with the S&N had failed to inequitable conduct on any of finding ECF No. Rule Court's 52(c) of 502. inequitable However, motion determination on as these regarding precluded from inequitable ruling, entering conduct that judgment counterclaim certain claims of in S&N's because the the favor on Court's Patents-in-Suit its previous are patent ineligible pursuant to 35 U.S.C. § 101, finding of inequitable conduct. See Final Pretrial Order, ECF No. Trial 472; Tr. argues CertusView's Vol. that "threshold proceed to 5B, a that consider Ultramercial, Inc. 2014) J., U.S. 593, 602 "must Hulu, concurring), (2010) and asserts asserted claims the eligible subject matter, matter, additional and claims No. patent ECF 511. eligibility before a 772 709, that, Flook, 718 because 437 the did (Fed. Kappos, U.S. Court not is a can relying which cites Bilski v. v. 516; court issues," F.3d No. 41, CertusView validity Patents-in-Suit on Cir. 561 584, 593 found the claim patent- such "threshold test" was not satisfied therefore of the Court invalidity CertusView's Post-Trial Br. the ECF 20-21, satisfied Parker CertusView this be LLC, (197 8). in of subordinate v. of Br., 1113:15-1119:6, determination test" (Mayer, Post-Trial is inconsistent with a at 20-21. should or not consider unenforceability. While acknowledging that patent eligibility requirements of § 101 should ideally be addressed early in a case before moving on to other requirements for patentability, S&N responds by arguing that CertusView's inequitable conduct, the Court consolidates its ruling on the remaining grounds of CertusView's Rule 52(c) motion with its findings regarding inequitable conduct below. inequitable Trademark conduct Office its patents were argues that actionable finding of conduct 28-30, a not be conduct finding States excused of before patent ineligibility and inconsistent Patent legal a S&N further the PTO finding such issues. of remains because a inequitable findings Defs.' and simply because ineligibility as different address Post-Trial Br., 517. CertusView Rule United later invalidated by this Court. patent ECF NO. the should not inequitable are Federal ("PTO") after substantively before of is seeking Civil a partial Procedure judgment 52(c). Federal pursuant Rule of to Civil Procedure 52(c) allows the Court to "enter judgment against [a] party on a claim or defense that, under the controlling law, can be maintained or defeated only with a favorable finding on that issue," once that Fed. Civ. P. R. party has For 52(c). been the fully heard on such following reasons, issue. the Court finds that CertusView has not demonstrated that controlling law precludes the Court from entering judgment in S&N's favor on its inequitable conduct counterclaim. While directly the parties addressing ineligibility finding 4 There the not effect on is one district finding of § 101 patent have an court of cited a 35 inequitable case any controlling U.S.C. conduct § 101 law patent counterclaim,4 implicitly recognizing that a ineligibility does not preclude consideration of an inequitable conduct counterclaim. In Exergen Corp. v. Kaz USA, there are many decisions from the United States Court of Appeals for the § 102 Federal or Circuit § 103 addressing invalidity the finding on effect an of a 35 U.S.C. inequitable conduct counterclaim and concluding that a finding of patent invalidity does not Calcar, preclude Inc. Cir. 2014) v. Am. to finding Honda of Motor inequitable on the conduct"); F.2d conduct, and 1182, determination 1188 (Fed. under inequitable Cir. No. 1988) F.3d 1185, See 1189 Am. (Fed. materiality Inc. 1993) v. finding that regards that a as "conduct 13-cv-10628, the under 2015 court § 101, in the WL found but jury's to the then patent was of 984 patent engaged in invalidated invalid 1466 under inequitable conduct (D. of Mass. certain noted Inc., 849 F.2d 1461, procurement that inequitable finding defendant Inc., 8082402 for KLM Labs., (affirming v. Kason Indus., (finding "[t]he issue non-obvious . . . does not of with and unenforceable that but remanding for determination of (unpublished), ineligible and conduct counterclaim Inc., Cir. § 102 patent); Buildex Inc. § 102(b) 768 stating Paragon Podiatry Lab., invalidity (Fed. Co., conduct. pursuant to § 102 and § 103, verdict finding the patents at weigh inequitable (affirming the district court's finding that a patent was both invalid, due a in the Dec. claims a patent 7, were footnote is 2015) patent that counterclaims for inequitable conduct and for an exceptional case finding remained pending. See also Exergen Corp v. Brooklands, Inc., No. I:12cvl2243, ECF Doc. No. 152 (D. Mass. Feb. 4, 2016) (allowing discovery to proceed on inequitable conduct counterclaim after finding of § 101 patent ineligibility). still cf. relevant to Apotex Inc. 2014) Kason's v. UCB, request Inc., for attorney 763 F.3d 1354, fees . . . "); 1361-63 (Fed. Cir. (affirming district court's finding that patent applicant committed inequitable conduct, and affirming, without considering, district court's determination that certain patent claims were invalid, will look to pursuant such cases to 35 because, U.S.C. as S&N § 112). argues, The a Court finding of patent invalidity, pursuant to § 102 or § 103, is analogous to a finding of patent ineligibility, pursuant determination under each statute results entire patent should not have issued. to in a Defs.' § 101, in that a finding that the Post-Trial Br. at 29. As this Court previously to noted strike in its S&N's decision denying CertusView's motion inequitable conduct counterclaim, a finding of patent ineligibility under § 101 and a finding of inequitable conduct are not inherently inconsistent as they address substantively different 2015 Op. & Order, 15-16 differences between finding inequitable of a n.3, finding conduct (quoting Therasense, Inc. v. 1276, Cir. 2011) 1288-89 (Fed. ECF of legal No. patent with Becton, its 325 issues. May 22, (discussing ineligibility "atomic bomb" Dickinson & Co., (en banc))).5 the and a remedy 649 F.3d For example, a 5 While a finding of patent ineligibility and a finding of inequitable conduct are not inherently inconsistent, there may conceivably be cases where a finding of patent ineligibility precludes consideration determination of patent ineligibility under § 101 addresses the question of whether the subject matter at issue in a patent is of "the kind protection. of discover[y]" Parker, Alternatively, 437 eligible for at see U.S. inequitable 594; conduct is a statutory 35 patent U.S.C. judicial § 101. doctrine concerned with a patent applicant's deceptive conduct before the PTO. Therasense, 649 F.3d at 1285-86. Moreover, a finding of patent ineligibility is a claim-by-claim determination, and the Court's determination of ineligibility as to the asserted claims of the Patents-in-Suit in-Suit patent ECF No. 250. did not ineligible. By See contract, renders an entire patent, render all January 21, a finding of of 2015 the unenforceable. 1288-89. "[a] Op. of inequitable attorneys' conduct & Order, inequitable Therasense, conduct 64 9 F.3d at finding of inequitable conduct may also spawn antitrust and unfair competition claims," award Patents- and potentially other patents in the same technology family, Additionally, claims fees often under makes 35 a case U.S.C. lead to an § 285 because "exceptional," or a of an inequitable conduct counterclaim because the patent ineligibility finding extends to the entire patent, see Zenith Elecs. Corp. v. PDI Commc'n Sys., Inc., 522 F.3d 1348, 1367 n.ll (Fed. Cir. 2008), there are no related patents at issue, there are no antitrust or unfair competition issues, there are no issues involving attorneys' fees, and there are no issues involving the crime or fraud exception to the attorney-client privilege. See Therasense, 649 F.3d at 1288-89 (discussing potential remedies upon finding of inequitable conduct and how such remedies can exceed requested relief of patent invalidity). Such a scenario is not present here. finding of inequitable conduct "may also prove the fraud exception to the attorney-client privilege." (citations omitted). Finally, crime or Id. at 1289 a finding of inequitable conduct, "[u]nlike other deficiencies . . . cannot be cured by reissue or reexamination." The Id. also Court at 1288 notes that, Motion relies on Bilski v. v. Flook, 437 U.S. Ultramercial, such cases patent 584 Inc. do v. not (citations omitted). Kappos, (1978), Hulu, LLC, support counterclaim. inequitable conduct at that "must be Ultramercial, 772 addressed F.3d Rule (2010), F.3d 709 (Fed. that consideration of those they cases simply patent at at 593 proposition Indeed, unremarkable proposition that 561 U.S. 772 the all; Plaintiff's 52(c) Parker and Judge Mayer's concurrence in ineligibility precludes conduct while finding of an inequitable do stand 2014), not for address the rather eligibility is a question the 717 a Cir. outset (Mayer, of litigation." J., concurring). Stretching that common sense proposition to mean that absence of patent eligibility precludes is a bridge too far. sparse, to While inequitable conduct legal precedent on this topic is because a determination of patent § 101 is typically actionability resolved before eligibility pursuant a opportunity to file an answer and raise an defendant has the inequitable conduct counterclaim, or learn of inequitable conduct during discovery, the Court finds itself in the 8 rare circumstance where both issues have been raised, are not inconsistent, and should be that, in addressed. For this the case, foregoing reasons, the a finding of patent inequitable conduct are Court ineligibility and a finding of not inconsistent, therefore DENIES CertusView's Rule 52(c) II. Prior to CERTUSVIEW'S trial, ECF No. to 52(c) CertusView's remaining Motion Rule filed one motion, remains.6 introducing evidence of materiality, the for document determining Court containing 43 6, only one of which, that test Limine the Motion on such basis. asserts part in and MOTION IN LIMINE CertusView six Motions in Limine, concludes S&N related CertusView's is estopped from first prong of a two- inequitable conduct, regarding CertusView's alleged misrepresentations or omissions to the PTO. CertusView Mots, that asserts in Limine, the Court's two 23-27, § 101 arguments in ECF No. 437. patent support First, ineligibility of its motion. CertusView argues ruling determined the issue of materiality in S&N's inequitable conduct claim and, thus, S&N is collaterally estopped from presenting evidence of 6 The Court addressed CertusView's first, third, fourth, and fifth Motions in Limine in its March 7, 2016 Memorandum Order. ECF No. 493. Further, the Court addressed CertusView's second Motion in Limine, regarding S&N's expert Ivan Zatkovich during Zatkovich's testimony at trial. To the extent that any issue regarding Zatkovich's expert testimony remains, the Court addresses Zatkovich's testimony on issues of all materiality below. that remains. Thus, CertusView's sixth Motion in Limine is materiality. Second, CertusView asserts that S&N is precluded from introducing evidence of materiality because it waived such argument when S&N argued in favor of a finding ineligibility under § 101. For the following reasons, finds failed of that estopped CertusView from has introducing to evidence demonstrate of the Court that materiality patent S&N on is either ground. Collateral estoppel "forecloses of fact or law that are identical 'the relitigation of to issues which issues have been actually determined and necessarily decided in prior litigation in which the party against whom [collateral estoppel] asserted had a full and fair opportunity to litigate.'" v. Braswell Servs. (quoting Ramsay v. Grp., U.S. Inc., 134 F.3d 219, 224 Sedlack (4th Cir. 1998) Immigration and Naturalization Serv., F.3d 206, 210 (4th Cir. 1994)).7 is 14 Specifically, To apply collateral estoppel or issue preclusion to an issue or fact, the proponent must demonstrate that (1) the issue or fact is identical to the one previously litigated; (2) the issue or fact was actually resolved in the prior proceeding; (3) the issue or fact was critical and necessary to the judgment in the prior proceeding; (4) the judgment in the prior proceeding is final and valid; and (5) the party to be foreclosed 7 On procedural issues not unique to the Federal Circuit's exclusive jurisdiction, the Federal Circuit will apply the precedent of the regional circuit, Eyewear, Inc. v. which in this case is the Fourth Circuit. Zenni Optical Inc., 713 F.3d 1377, 1380 See Aspex (Fed. Cir. 2013) (citing Dana v. E.S. Originals, Inc., 342 F.3d 1320, 1323 (Fed. Cir. 2003)). Thus, the Court relies on a statement of the law, regarding collateral estoppel, from the United States Court of Appeals for the Fourth Circuit. 10 by the prior resolution of the issue or fact had a full and fair opportunity to litigate the issue or fact in the prior proceeding. In re Microsoft Corp. Cir. 2004) 355 on an issue, waived due may to litigation, also a be or foreclosed when judicial admission. Fargo Bank, see Martinez has issue judicial has been admission the v. 141 N.A. , 762 Bally's La., Everett v. (4th Cir. F.3d 339, Inc., 244 facts necessary to 2015) 347 Pitt Cty. (quoting Minter (4th Cir. F.3d 474, 477 2014)); (5th Cir. ("Although a judicial admission is not itself evidence, the effect statement made of by withdrawing counsel during a fact the a waiver, omitted)). from course considered a judicial admission if it was the (4th "'intentional and unambiguous waivers that release the Bd. of Educ. , 788 F.3d 132, 2 001) that A establish the waived conclusion of law.'" Wells 326 the presentation of evidence opposing party from its burden to prove v. F.3d 322, (citations omitted). Alternatively, includes Antitrust Litig., contention. of made trial statement is 'deliberate, Everett, 788 F.3d at 141 (quoting Minter, and be (citation admission is binding only clear, A intentionally as releasing the opponent from proof of fact." "A purported judicial may it if unambiguous.'" 762 F.3d at 324). Addressing first CertusView's collateral estoppel argument, the Court finds that, because S&N's counterclaim is substantively different 11 inequitable conduct from the issues decided in the Court's demonstrate that § 101 S&N ruling, is CertusView has collaterally estopped failed to from introducing evidence of materiality as to inequitable conduct. As discussed more fully in Section I of this Opinion and Order, a finding of patent ineligibility address substantively different § 101 ruling addressed materiality is not and the and issue of a a finding of legal separate inequitable issues. legal As issue, conduct the the Court's issue of "identical to the one previously litigated," materiality was not prior proceeding." In re Microsoft, "actually resolved in 355 F.3d at 326. the Further, as S&N's inequitable conduct counterclaim was not at issue when the Court considered S&N's Motion for Judgment on the Pleadings based and on ineligibility, S&N opportunity to litigate the proceeding." presenting Id. evidence did not issue "a full [of materiality] Therefore, of have S&N materiality on is not the basis fair in the prior precluded of from collateral estoppel. As to CertusView's CertusView has not second argument, demonstrated and unambiguous[ly]" clear[ly], materiality earlier in this that waived the S&N its litigation. Court finds that "deliberate[ly], arguments CertusView regarding has not presented the Court with any particular statement from S&N that waives, evidence or of acknowledges materiality waiver on its 12 of, its ability inequitable to present conduct claims. Further, and a as discussed above, finding inconsistent, of or a finding of inequitable actually patent conduct inconsistent are in ineligibility not this inherently case. Thus, S&N's general arguments in favor of patent ineligibility do not evidence ability an to "intentional present and evidence unambiguous that waiver[]" CertusView provided of its material misrepresentations or omissions to the PTO during prosecution of the Patents-in-Suit. Everett, 788 F.3d at 141. Therefore, S&N is not precluded from presenting evidence of materiality on the basis of judicial estoppel. For these reasons, the Court DENIES CertusView's sixth and final Motion in Limine. III. On March 8, CERTUSVIEW'S MOTION TO ENFORCE 2016, CertusView filed a Motion to Enforce Court's Memorandum Order precluding the author of U.S. Pub. offering No. expert 2006/0077095 testimony. (discussed ECF No. based on the Court's March 7, in 494. the the reference detail below) from CertusView asserts, 2016 Memorandum Order precluding Page Tucker ("Mr. Tucker") from offering expert testimony, that the Court should not consider certain portions of Mr. Tucker's deposition testimony that were designated by S&N because they constitute improper CertusView argues portions of Mr. statements lay that witness the Court testimony. should Specifically, not consider Tucker's deposition testimony that comment written in an Amendment 13 and Reply to the PTO the on by CertusView's patent counsel, 2016, S&N filed its Motion to Enforce. this Joseph Teja ("Teja"). Response ECF No. Opposition 496. to CertusView's No reply brief was filed on issue. The portions of Mr. identified by CertusView, witness testimony. deposition because, Order, as the Tucker's be found may not admitted in its offer expert or lay as March expert 7, 2016 testimony Memorandum testimony. lay witness Mr. Second, the are on subjects that do not disputed portions not proper lay of portions of 4, "scientific, Fed. R. Evid. Mr. witness require Tucker's testimony Mr. Tucker's Teja's commenting on the testimony statements in the because consists Amendment truth or accuracy of 701. deposition the line from lay witness into expert witness Specifically, Order, Tucker was permitted to testify technical, or other specialized knowledge." testimony Mem. However, while the Court found that Mr. Tucker may not offer expert testimony, cross as Mr. Tucker has not been designated as an expert in this ECF No. 493. a testimony, the disputed portions of Mr. Tucker's cannot Court deposition are not proper expert witness First, testimony matter and he as in On March 8, testimony. of and they reading Reply and such statements. Such testimony constitutes improper lay testimony because Mr. Tucker is interpreting advocating and construing the patentability of 14 patent a counsel's specific patent statements in a patent prosecution submission to the PTO, and comparing such statements against Mr. his own patent. Tucker through the comparing lens Essentially, an of invention a patent the testimony evidences seeking attorney's Tucker's own patented invention. to be patented, arguments, to Mr. A lay witness may not normally construe and interpret patent claim limitations and compare such limitations requires Care, 24, v. No. prior 2:13cv07228, 2015) Inc. , 254 F. LLC the (citing Supp. 2d 1119, CureMD.com, 48 F. testimony certain is appropriate portions of identified by CertusView, witness testimony deposition testimony. such Munchkin, Inc. WL in 774046, support); 1123 (CD. Supp. some for Mr. because See 2015 cases (recognizing there may be lay art specialized knowledge. Ltd., Feb. against 3d and *3 Gart 600, 635 circumstances Tucker's v. Luv N' (CD. v. Cal. Logitech, Cal. 2003); cf^ 523 IP comparison are at testimony (S.D.N.Y. where lay witness purposes). deposition 2014) As such, testimony, as both improper expert witness and the Therefore, Court will disregard the Court GRANTS such CertusView's Motion to Enforce the Court's Memorandum Order. IV. On CERTUSVIEW'S May 5, 2016, Cited in Defendants' OBJECTIONS TO CertusView Post-Trial S&N'S filed Brief. POST-TRIAL Objections ECF No. 529. BRIEF to Material CertusView broadly objects to S&N's citation to the following in its Trial Brief: (l) CertusView's First 15 Interrogatory Post- Responses, filed under seal at ECF Nos. 344-5 and 407; (2) CertusView's Opposition to S&N's Motion to Compel and Exhibit A, ECF No. 152; (3) a portion of Curtis Chambers' under seal Support at of ECF its CertusView's No. Emergency attached Motion Proposed Findings of ECF No. 485; and (5) ("Block") 203-3, Deposition Transcript, to to Compel, Fact testimony. filed on this with respect to 201, judicial parties' "can be admissions, accurately accuracy cannot S&N documents notice because and 802 2011) Penn (4th Cir. Supp. 2d 741, take judicial parties' the reasonably be (citing Colonial of readily see O'Neal v. Donahoe, 1239 filed a (4) Law, 747 n.8 previously public facts to No reply F. Supp. Ins. 2d 709, Co. v. the such documents from sources R. 715 Coil, As such, in 887 whose Evid. 201; (E.D. Va. F.2d 1236, Corp., 598 F. the Court will the The Court may take such notice "at Fed. R. Evid. the n.7 and record and any stage of the proceeding." documents records Fed. questioned." court prior admissions. filed on court within determined (E.D. Va. 2009)). of response ECF No. 531. 1989) ; Roach v. Option One Mortg. notice 200; pursuant to Federal Rule of Evidence the Court, take No. issue. Court's docket, may ECF in an undesignated portion of Gregory Block's deposition First, Memorandum and Conclusions of CertusView's objections on May 12, 2016. brief was S&N's filed 201(d). Further, the Court notes that the previously filed court documents were 16 discussed such during trial, and testimony documents is recorded in generally Trial Tr. Vol. argument 692:11-701:14, Tr. Vol. 5B, consider 4A, 1078:22-1081:16, documents the and trial ECF No. 511. previously filed on regarding transcript. ECF No. Thus, the See 510; Trial the Court may Court's docket in support of S&N's arguments regarding such documents. Second, deposition with respect to the undesignated portion of Block's testimony, S&N explains that its citation to such testimony was inadvertent and is unnecessary to its argument. Thus, based upon S&N's consider such deposition and citation transcript, need not Therefore, address the representation to the Court the undesignated portion of the Court will CertusView's Court that OVERRULES Material Cited in Defendants' disregard objection such need not Block's citation to such citation. CertusView's Objections to Post-Trial Brief. V. FINDINGS OF FACT8 A. Factual and Procedural Background 1. LLC, State Plaintiff/Counter-Defendant, CertusView Technologies, is a Florida corporation organized under the laws of the of Florida. technology for infrastructure. CertusView, prevention First Am. among of Compl. other things, damage to develops underground for Patent Infringement ^ 8, To the extent that the following facts are not stipulated to or agreed upon by the parties, the Court finds each fact by a preponderance of the evidence. 17 ECF No. 55. CertusView is a wholly owned subsidiary of Dycom Industries, 2. LLC and Inc. Defendants/Counter-Plaintiffs, S&N corporations, Carolina. Communications, No. Inc., Locating Services, North Carolina are organized under the laws of the State of North S&N Communications, Locating Services, Defenses, S&N LLC Inc. is the parent company of S&N Defs.' and Countercls. Second Am. Answer, to Pl.'s First Am. Affirmative Compl. 1 1.2, ECF 336. 3. The subject of the counterclaim to CertusView's instant dispute arises as a First Amended Complaint for Patent Infringement of five United States Patents: No. 8,340,359 ("'359 Patent"), No. Patent"), 8,265,344 No. ("'344 8,532,341 ("'001 Patent") Patent"), ("'341 (collectively, the No. Patent"), 8,290,204 and No. ('"204 8,407,001 "Patents-in-Suit"). ECF No. 55. 4. Steven ("Chambers") are Nielsen named Jeffrey Farr ("Farr") '341 ("Nielsen") inventors on and the five Curtis Chambers Patents-in-Suit. is a named inventor on the '001, '204, and Patents. 5. Nielsen is the Chairman, President, and Chief Executive Officer of Dycom and the President of CertusView. 6. Chambers is the Vice President Officer of Dycom. 18 and Chief Information 7. Farr is the Director of Engineering at Dycom. 8. Joseph Teja before the United ("Teja") States represented Dycom and CertusView Patent and Trademark Office ("PTO") during the prosecution of the Patents-in-Suit. 9. CertusView filed the action against S&N on May 29, on the Patents-in Suit. 10. The Court underlying patent infringement 2013, alleging that S&N infringed Compl., ECF No. 1. issued an Opinion and Order on January 21, 2015 regarding S&N's Motion for Judgment on the Pleadings, ECF No. 197, claims in which the Court determined that all of the asserted of the Patents-in-Suit were invalid for failure patentable subject matter under 35 U.S.C. § 101. is a list of such invalidated asserted claims: and 21 of Patent; the '204 claim 1 of Patent; the claims 1, '35 9 Patent; 4, 13, The following claims 7, 16, of the '341 Patent; and claim 1 of the '001 Patent. 2015 Op. 11. against & Order, S&N's Second CertusView, unenforceable Farr, ECF No. and prosecution 2, the 17, 19, '344 and 28 January 21, 250. Amended asserting because 1, and 17 of claims 1, to claim the Answer that alleges the inventors, counsel, Teja, 19 counterclaim Patents-in-Suit Nielsen, Chambers, committed conduct during prosecution of the Patents-in-Suit. In particular, S&N alleges that: a are and inequitable ECF No. 336. A. Nielsen, Chambers, and Teja each committed inequitable conduct by failing to disclose as prior art the ESRI ArcPad software during prosecution of the S&N also alleges that Farr committed '344 and '204 Patents. inequitable conduct by failing to disclose the ESRI ArcPad software during prosecution of the '204 Patent. B. inequitable TelDig Nielsen, conduct Utility Chambers, failing by Suite and disclose and to TelDig prosecution of the Patents-in-Suit. committed inequitable conduct by Teja Mobile each as committed prior art systems9 the during S&N also alleges that Farr failing to disclose as prior 9 CertusView asserts that the TelDig Utility Suite is the only TelDig prior art that S&N's Second Amended Answer and Counterclaim sufficiently alleged to have not been disclosed by CertusView during prosecution of the Patents-in-Suit. Thus, CertusView argues, S&N cannot claim that CertusView committed inequitable conduct by failing to disclose the TelDig Mobile system. However, the Second Amended Answer specifically discusses TelDig Mobile, U 79, and lists specific claims to which "the TelDig products disclosed in the MIR[] relevant," system in than H 90. Thus, are thus while S&N's discussion of the TelDig Mobile its Second Amended Answer and Counterclaim is more limited S&N's discussion of the TelDig identified "the specific who, material misrepresentation or Exergen Corp v. Utility Suite, S&N adequately what, when, where, and how of the omission committed before the PTO." Wal-Mart Stores, Inc., 575 F.3d 1312, 1328 (Fed. Cir. 2009); see also May 22, 2015 Op. & Order at 34-36. Further, the pre trial filings in this matter provide CertusView with sufficient notice regarding S&N's assertion that CertusView failed to disclose the TelDig Mobile system as material prior art during the prosecution of the Patents-in-Suit. of the TelDig As such, Mobile system even if S&N had not included discussion in its Second Amended Answer and Counterclaim, the Court would permit amendment of S&N's pleadings regarding TelDig Mobile as doing so would aid presentation of the merits of the case Civ. P. and CertusView would not be prejudiced. 15(b)(1). 20 Fed. R. art the TelDig Utility Suite and TelDig Mobile systems during prosecution of the '204, '341, and '001 Patents. C Nielsen, Chambers, Farr, and Teja each committed inequitable conduct by naming Jeffrey Farr as an inventor on the '204 and '341 Patents.10 D. Nielsen, Chambers, and Teja each inequitable conduct by failing to name Gregory Block as an inventor of the '359, '344, '204, and '341 committed ("Block") Patents. S&N also alleges that Farr committed inequitable conduct by failing to name Block as an inventor of E. Nielsen, the '204 and Chambers, and '341 Patents. Teja each committed inequitable conduct by making material misrepresentations to the PTO concerning 2007/0219722 the prior to Sawyer Jr. art references et al. U.S. ("Sawyer") Pub. No. in view of U.S. Pub. No. 2006/0077095 to Tucker ("Tucker") during prosecution of the '344 Patent. 12. S&N's inequitable conduct counterclaim proceeded to trial on March 8, 2016. B. 13. 2008, 10 The '359 Patents-in-Suit Patent, which was filed and ultimately issued on December 25, S&N also alleged that Nielsen, Chambers, on 2012, Farr, September 11, is entitled, and Teja each committed inequitable conduct by naming Jeffrey Farr as an inventor on the "001 Patent. However, this claim was dismissed with prejudice on March 3, 2016. Order, ECF No. 489. 21 "Electronic Manifest '359 Patent, PX-003. 14. and The of Underground '344 Patent, ultimately issued Facility Locate Marks." which was filed on February 5, on September 11, 2012, is 2009, entitled, "Electronic Manifest of Underground Facility Locate Operation." '344 Patent, 15. and PX-001. The '204 Patent, ultimately "Searchable issued Electronic Marking Operations." 16. The which was filed on February 11, 2009, on October Records of '204 Patent, '001 Patent, Dispensing for of '001 Patent, 17. and The Markers '341 "Electronically 18. The issued Patent"), entitled, Facility 2013, is Location Data to by System a Locate PX-002. which was filed on December 16, Patent, issued Marking '341 Patent, '359 as which on and United was September Documenting application 12/029,732, and is entitled, 2009, "Systems Electronically Display or Marking Tool." PX-004. ultimately Utilities." Using 2012, Underground and ultimately issued on March 26, and Methods 16, Locate filed 10, on March 2013, Operations is for 12, 2013, entitled, Underground PX-005. '344 Patents claim priority to which was filed on February 12, States on September 10, 2013. 22 Patent The No. 8,532,342 patent 2008, ("'342 '342 Patent is entitled, "Electronic Manifest '342 Patent, DX-341. 19. The Patent. of Underground Facility Locate '341 Patent is a continuation-in-part of Both the '204 the and Patents Patent, '342 '341 and following: (1) 12/366,853, filed on February 6, Patent No. 8,280,117 White Lines for ("'117 Electronic Images," patent and Planned '117 Patent, 18, 2008, Patent"), and now United entitled Excavation PX-022. entitled, "Virtual Planned Excavation Sites." 20. The 11/685,602, United The 29, 2009. See Patent White '306 Patent, No. "Virtual Sites '117 Patent for is a filed on 8,24 9,3 06 Lines on ("'306 Delimiting DX-354. '001 Patent claims priority to patent application which States States the application continuation-in-part of patent application 12/050,555, March '204 issued as United States Patent"), Indicating the claim priority to (2) 2009, Marks." was Patent filed No. on March 7,64 0,105 '001 Patent, PX-004. 13, ("'105 The 2007 and Patent") issued as on December '105 Patent is entitled "Marking System and Method with Location and/or Time Tracking." C. 21. means In general, to improve Patents-in-Suit Products CertusView's products were developed as a record-keeping operations. 23 and documentation of locate 22. The '359 and '344 Patents claim CertusView's e-Sketch technologies. 22, ECF No. 23. inventions Trial Tr. related Vol. IB, 24. The 4A, '204 and '341 25. 759:22-761:14, The CertusView's Trial Tr. 99:16- 507. Patents claim inventions related CertusView's Virtual WhiteLine and e-Sketch technologies. Tr. Vol. to '001 766:5-13, Patent ECF No. claims to Trial 510. inventions related to e-Sketch and electronic marking wand technologies. Vol. 2A, 241:4-7, CertusView's ECF No. e-Sketch 505. technology allows locators to document a locate operation by sketching on top of an image with a sketch utility toolbar, lines, drawing and property tie-downs to lines, the adding image, and landmarks, creating a searchable electronic record that includes geographic data tied to such markings. 759:13; E-Sketch Trial Tr. Vol. Demonstrative 4A at 740:12-742:1, Video, PX-041; 754:7- PowerPoint Presentation "Using Innovation to Prevent Damages," PX-059. 26. CertusView's Virtual WhiteLine product allows excavators to show on an image, with a high level of precision, where they intend to dig. 27. Trial Tr. Vol. 4A at 739:21-740:3. CertusView's electronic marking wand product uses GPS and other technology to capture and display, in real time, the precise location where paint is applied to the ground during a locate operation. Data from the marking wand, generated during 24 a locate operation, program. is automatically imported into the e-Sketch Trial Tr. Vol. 4A at 729:20-736:15. D. Inventorship of the Patents-in-Suit 1. 28. result Nielsen and Chambers Conception of CertusView's e-Sketch product began as a of the "Virtual Locator 2007" project, development initiative undertaken in fall 2006. IB at a research Trial Tr. The first meeting regarding the Virtual Locator 2007 project took place in Atlanta, Georgia in October 2006. that meeting, UtiliQuest, findings. 30. During Nielsen and Chambers met with the management team a facility locating, 2007 Vol. 101:12-102:13. 29. of and Dycom performs underground to present their research and development Trial Tr. Vol. Nielsen and subsidiary that IB at 101:19-102:2, 185:7-187:19. Chambers discussed the Virtual Locator initiative and aspects of the inventions described in the Patents-in-Suit in a white-board session. Trial Tr. Vol. IB at 185:7-187:19. 31. Notes taken during that white-board session parallel certain claims of the Patents-in-Suit and demonstrate conception of certain inventions claimed particularly claim 1 of the Patent. Trial Tr. Vol. in the Patents-in-Suit, '359 Patent and claim 1 of the 2A at 254:20-262:9; PX-113. 25 '344 White Board Notes, 32. Conception of the inventions claimed in the Patents- in-Suit continued after October 2006 through additional meetings regarding the Virtual Locator 2007 project and other activities, including: A. In December 2006, and development in Washington, marking wand team, D.C, and the Virtual Locator 2007 research including Chambers, discussing e-Sketch how to met with an attorney patent inventions. Trial the Tr. electronic Vol. IB at 101:19-102:13. B. of the In December Virtual Locator 2006, 2007 Chambers created a projects. video Such video of one detailed a prototype of the electronic marking wand and e-Sketch concepts. Trial Tr. Vol. IB at 193:8-195:2; Video, C. In April 2007, experiments Chambers PX-042. Nielsen and Chambers ran a series of with a Garmin running watch. and Nielsen were able to Using Google display GPS Earth, coordinates, generated by the Garmin running watch and stored in a KML file, on a Google Earth map image. Trial Tr. Vol IB at 195:20-197:5; Trial Tr. Vol. 2A at 202:14-205:9; Google Earth File 1, PX-034; Google Earth File 2, PX-035; Google Earth File 3, PX-036. 33. Nielsen inventions April 2007. 4B, and claimed in Trial Tr. 818:15-819:5, Chambers the '359 Vol. ECF No. completed and 2A at 503. 26 '344 conception Patents 206:4-207:14; no of the later than Trial Tr. Vol. 34. and After conception of the inventions claimed in the '359 '344 Patents was complete, CertusView and Dycom conducted prototype and pilot programs of the electronic marking wand and e-Sketch products Orlando, during the summer and early fall of Florida and Beltsville, Maryland. 2007 Trial Tr. Vol. in IB at 100:10-102:24. 2. 35. Farr became Farr involved in CertusView's invention at the beginning of the project. 729:6-10. Farr conceptualize prototypes. worked the marking with wand Trial Tr. Vol. 3A, Wand Physical Ex. 1, PX-037; Trial Tr. Vol. Nielsen and invention 472:13-23, electronic and wand 4A at Chambers build to working ECF No. 504; Marking Marking Wand Physical Ex. 2, PX- 03 8; Marking Wand Physical Ex. 3, PX-03 9. 36. '001 Patent, which relates to the electronic marking wand invention, as well as an Farr inventor is an on marking wand patent Patent, 37. the '105 inventor Patent, and parent of the the on the original '001 GPS-enabled Patent. See '001 PX-004. Farr also WhiteLine product. Vol. undisputed led development Trial Tr. Vol. 4A at 742:16-743:12. 27 of 2A at CertusView's 242:10-20; Virtual Trial Tr. 38. Aspects of the Virtual WhiteLine technology have been patented, including inventor on the 39. in the '117 '117 Patent. Patent. '117 Patent, Farr is a named PX-022. Eventually, Farr became involved with combining the e- Sketch and Virtual WhiteLine 241:8-242:24; Trial Tr. Vol. 40. products. Trial 4A at 743:13-25, Tr. Vol. 2A at 760:10-18. Beginning in fall 2008, Farr oversaw a team working on "Project Trinity," an effort which, among other things, included integrating CertusView's Virtual Sketch invention. Trial WhiteLine product with the Tr. Vol. 4A at 748:4-19. eIn particular, A. In October 2008, the Project Trinity team completed the of Project Trinity rollout plan which the Vol. Virtual 4A at WhiteLine and 749:4-750:10; e-Sketch Monthly included the "marriage" inventions. Trial Departmental Tr. Report Information Technology October 2008, PX-102. B. In November implemented e-Sketch approval Dallas, in Georgia. Trial in 2008, Project Lawrenceville, Texas, Tr. the Austin, Vol. 4A Georgia Texas, at Trinity and and team ticket Lawrenceville, 750:11-751:12; Monthly Departmental Report - Information Technology November 2008, PX- 103. C In December implemented e-Sketch and 2008, ticket 28 the approval Project Trinity in Marietta, team Georgia. Trial Tr. Vol. 4A at 751:13-752:9; Monthly Departmental Report - Information Technology December 2008, D. In February PX-104. 2009, the Project Trinity team implemented e-Sketch in Forest Park, Georgia and ticket approval in Forest Vol. Park, 4A at Georgia and Commerce, California. Monthly Departmental 752:11-753:5; Information Technology February 2009, 41. As noted above, the '204 42. "at Farr's least one independent every '204 43. the in to image" of the the Vol. Trial '204 the '204 and Patent—and Vol. 6, 7, 3B, 8, 44. Patent Vol. continuation-in- PX-002. Patent dealt appears is a 10, in the each 12, and 14 675:10-677:23, on specific ECF of No. involved process of in a the "collaborative '204 Patent, 3B at 677:12-19; Trial Tr. effort" and the 509; of the Vol. on Farr's work on 29 the '117 during "may have '204 Patent. 4A at 701:2-14. Teja determined that Farr was an inventor of based with limitation additional involvement collaboratively in every claim" Trial Tr. a '204 Patent, Patent '204 Report 4A at 762:8-764:25. Farr was inventive Tr. is limitation—which contained in claims Patent. Trial Tr. input claim claim limitations contribution Tr. PX-105. Patent part of the '342 and '117 Patents. Trial Patent the '204 and his contributions to the 471:16. '204 Patent.11 Trial Tr. Vol. 3A at 470:18- CertusView relied on Teja's recommendations inventorship. Trial Tr. 265:16; Trial Tr. Vol. 45. Farr's Vol. at 242:10-243:25, 264:12- 3B at 627:11-628:5. contribution to "at least one digital image" claim of the '341 Patent, claims 8, and 21. 13, 2A regarding the '341 limitation, as well as Trial Tr. Vol. Patent dealt with the which appears in every specific contributions to 4A at 692:11-20, 698:9-23, 766:19-768:13. 46. Teja determined that Farr was an inventor of Patent based on Farr's contributions Trial Tr. Vol. recommendations 242:10-243:25, 47. Farr's work to the regarding 2A at '204 Block employee, Vol 11 IB at receive and the as well '341 as Patent. CertusView relied on Teja's any '204, Patent, '341 Trial or Vol. 2A at 3B at 627:11-628:5. financial '341, Tr. reward for being '001 Patents. Trial 265:17-19. joined working as 103:9-17. CertusView's below. Patent inventorship. 3. 48. '117 264:12-265:16; Trial Tr. Vol. Farr did not Vol. the 3A at 471:17-473:16. named as an inventor on the Tr. on the process Dycom a Block in September "developer" or "As an for determining 30 as a "architect." application See infra UK 60-62. 2007 Trial architect, inventorship contract is Tr. [Block's] discussed duties included accepting software specifications and developing technical specifications assessing feasible technology those requirements." 49. on Block Depo. Tr. conceived by prototypes, Sketch product by prototypes. and requirements, that would implement at 23:2-14. Block implemented some of the Chambers product the solutions While working for Dycom, inventions Sketch based and Nielsen, writing Trial source Tr. Vol. related code IB at for to e- the e- 104:5-105:4; Trial Tr. Vol. 2A at 250:5-16; Block Depo. Tr. at 49:17-50:3. 50. Block specifications implemented that he features received from of e-Sketch Chambers and drawings Block received from Nielsen. 250:10-253:12; Industries, eSketch, May 5, 2008, at Trial Tr. Vol. 107:21-109:19; and confirming Block signed a with Dycom, Agreement with Dycom, rights. Dycom. Tr. instructions 2A at Dycom Inc., System Requirements Specification for Locating On Assignment Dycom Depo. on DX-041. 51. employee Block and based Confidentiality before he became assigning ownership of any that he did not reserve a full-time inventions any and to invention Such Agreement covered Block's entire engagement with Trial Tr. Vol 2A at 245:1-246:24; 96:8-97:1; Dycom Assignment Agreement, Technology, LLC PX-044. 31 - Block Depo. Tr. at Confidentiality and 52. On February 26, 2009, Confidentiality and Assignment Block signed Employee with Dycom, Agreement an assigning ownership of any work product created during his employment to Dycom and confirming that he did not reserve any prior invention rights. Such Agreement Dycom. Trial 97:6-15; Tr. Vol. covered Block's 2A at entire 247:20-249:9; engagement with Block Depo. Tr. Employee Confidentiality and Assignment Agreement, at PX- 045. 53. Block contribution to Suit. Trial does not claim to have made the e-Sketch product or any of Tr. Vol. 2A at 24 9:12-22; Trial any inventive the Patents-inTr. Vol. 3B at 628:17-19; Block Depo. Tr. at 101:22-106:15. 54. claim of No witness testified that Block was an inventor of any the Patents-in-Suit or that he should have been listed as an inventor to any of the Patents-in-Suit. 55. Block, however, was named as CertusView patents related to e-Sketch, Patent No. 8,907,980 ("'980 relating to revision layers. Patent"), inventor on other including United States which Trial Tr. Vol. Block Depo. Tr. at 42:20-44:1; 56. an '980 Patent, claims inventions 2A at 253:13-254:6; PX-025. Block was not deprived of any financial reward for not being named as an inventor on the Patents-in-Suit, nor did he receive any financial reward for being a named inventor on other CertusView patents, including later patents 32 related to the e- Sketch products. Vol. 4B at Trial Tr. Vol. 2A at 265:20-266:1; Trial Tr. 828:17-22. E. Commercial Strategy 57. In April 2008, Dycom hired consulting firm Commercial Strategy, LLC to assist it with the development of and patent portfolio. ("Crawford") were Don Davis the Commercial Strategy. Tr. Vol. 3A at its intellectual property and David directors Trial Tr. Vol. IB at Master property ("Commercial Strategy") ("Davis") managing 534:15-535:3; intellectual and Crawford founders 125:13-126:25; Services of Trial Agreement for Consulting Services, April 22, 2008, DX-074.12 58. for On April 22, Commercial 2008, Strategy Dycom completed a Statement of Work which directed Commercial Strategy to begin immediately implementing a work plan, including searching for prior art, conducting invention disclosures, inventor interviews, supporting patent counsel, drafting and auditing 12 The Court has entered numerous Orders in this matter, ordering certain documents to be sealed. See ECF Nos. 105, 106, 126, 192, 295, 357, 359, 402, 422, 471, 477, 487, 488, 528. The parties, however, have referred to the contents of a number of these sealed documents throughout their unredacted filings, post-trial briefing, and in open court during the bench trial of this matter. Further, several such sealed documents were entered into evidence and the public record during the bench trial. Therefore, to the extent that the parties have discussed filings, into evidence, the contents of these and in open court, sealed documents the Court considers the parties' 3 Commc'ns, 589 (E.D. Va. LLC v. Limelight Networks, 2009). 33 in their or have entered such documents arguments regarding need for such information to be sealed to have Level 572, the briefings, Inc., been waived. 611 F. Supp. See 2d Dycom's existing intellectual property rights. Master Services Agreement for Consulting Services, April 22, 2008, DX-074. 59. with Commercial CertusView Strategy, and patent particularly counsel intellectual property development, patent counsel, hosting researching invention interviews. Trial Tr. 551:11-553:23; Trial Tr. 60. When 3A at Vol. identifying and sessions, Vol. support technical Strategy description and 541:10-542:6, potential employee Tom invention interviews. 61. would prepare an counsel for review. 62. interviews, the Trial Tr. Trial Tr. Teja Vol. with inventors, who would help convey and ("Batchelder"), Commercial who led the 3B at 610:11-611:6. disclosure Trial Tr. might and invention interviews, invention inventor 610:1-611:6. invention, Vol. art, 547:16-548:11, inventions primarily Batchelder, Particularly applications, in Batchelder After completing Commercial Strategy, the prior conducting 3B at 558:8-14, of CertusView's non-patent Crawford would work with a technologist, the worked including communicating with patent capture to Crawford, CertusView and Davis, to and Crawford, submit to patent 3B at 625:15-626:11. continuation-in-part participate in the patent invention and Crawford and Teja would review the final claims patent Vol. application to determine 3B at 627:1-628:5. 34 proper inventorship. 63. results When researching prior art, of the patent prior art searches, prior art that he found or received, prior art 624:9, references to Teja. Crawford would review the or the non-patent and would provide pertinent Trial Tr. Vol. 3B at 618:12- 652:6-657:12. F. Prior Art Disclosure 1. Market Intelligence Report ("MIR") 64. Within the first three months of Commercial Strategy's engagement with Dycom, document entitled ("MIR"), dated "confidential," and Commercial Strategy prepared for Dycom a "Market July which 22, 2008 surveyed included competitive and business strategy of 558:15-559:4, Intelligence 633:7-22; 6.0" "draft" and in locate industry intellectual the such companies. Market Version marked and players research on Report the property Trial Tr. Vol. 3B at Intelligence Report Version 6.0, July 22, 2008, DX-091 [hereinafter "MIR"]. 65. The MIR Trail Tr. Vol. 66. June was never or otherwise 2A at 273:8-16; Trial Tr. Vol. finalized. 4B at 828:2-11. The information in the MIR was sourced between May and 2008, MIR at (industry players) 6, of and on a subset was interest identified approximately profiles published of fifty designed to to Dycom," "target" companies 35 on "analyze MIR at companies the target companies 3. The MIR and provided list "that [were] found of interest and therefore found to be highly relevant to Dycom objectives," MIR at 9, including: A. ("ESRI"), Environmental a developer. geographic Systems Research information Institute, systems ("GIS") Inc. software ESRI offered a variety of GIS software products and services, including the ESRI ArcPad software product. MIR at 47-55. B. TelDig Systems, that sells Inc. ("TelDig"), software products related to the a Canadian company location industry. TelDig products include the TelDig Utility Suite, TelDig Mobile, and TelDig One Call. 67. MIR at 75-79. With respect to ESRI, the MIR noted that "many [ESRI] applications including the ArcPad software read very closely to the eSketch concept," problems Dycom particular, is and "ESRI does appear to be interest[ed] the MIR in noted that solving." the ESRI improvement to using " [p]aper map books" field because to capture, at ArcPad product MIR wireless storage. is an and display geographic information in near further states data sharing, utilization In "field-based personnel real time" with "great[er] accuracy while on-site." The 47. to locate assets in the the ArcPad product allows analyze, MIR investing in management, that ESRI's data technology analysis, mapping MIR at 55. 36 and GIS, includes: ticket and MIR at 49. image GPS, management, and audio 68. With respect particular interest to TelDig, the is the TelDig MIR noted that "[o] f Utility Suite product which appears similar to the eSketch concept," and also noted that "it does appear Dycom is noted that that interested products the the with locator download[] the and tickets, dig Utility site, in 75. Suite ticket MIR at 76. connection investing MIR at locate solving problems In particular, "is a the system of dispatching and MIR software workforce TelDig Utility Suite, "enabl[es] locate requests from the one call back," allowing edit[] locator that The MIR also noted that TelDig Mobile, the paperless handling of to is in." TelDig for management." in TelDig "the and process [] and damage remote them" report center locator and the [to] "fill [] modules to in upload completed tickets at the end of the day," using a "unique dragand-drop drawing tool with pre-formatted icons." MIR at 77. The MIR further states that TelDig technology includes: wireless data sharing, ticket management, mapping and GIS, and image and audio storage. 69. July 2008 Crawford provided Chambers with a copy of the MIR in and Trial Tr. Vol. 70. technical MIR at 79. the two discussed 3B at 634:8-18, Chambers point did of not view." the MIR shortly thereafter. 636:24-638:3. find the MIR Trial Tr. to be Vol. "valuable 3B at from a 634:8-18. Specifically, regarding ESRI and TelDig, Chambers disagreed with 37 the conclusions to be in incorrect the based upon his TelDig technology. 237:6; Trial Tr. 71. MIR because he such understanding of Trial Tr. Vol. Vol. believed 2A at conclusions the ESRI 212:18-218:7, and 235:15- 3B at 634:19-635:3 With respect to ESRI, Chambers relied on his personal research and experience with ESRI products to conclude that the MIR's statements Specifically, in 2007, regarding ESRI technology were inaccurate. Chambers was aware of the ESRI products because, CertusView had assessed ESRI as a possible "off-the- shelf" solution to implement the e-Sketch application. However, CertusView concluded that the ESRI product did not offer base functionality needed for the e-Sketch prototype, the requiring expensive custom development to use the ESRI product for the eSketch application. 72. Further, Trial Tr. Vol. 2A at 231:9-237:6. Crawford conducted regarding ESRI and concluded that, information in the MIR, additional research based on his research and the ESRI was not material to patentability. Trial Tr. Vol. 3B at 641:20-642:21; Dycom Competitive Technology Research ESRI, 73. With May 29, 2008, DX-083. respect previous experience TelDig's products with to regarding TelDig were 13. to TelDig, TelDig conclude inaccurate. Specifically, 38 Chambers and that his the Trial Tr. relied on understanding MIR's Vol. his of conclusions 2A at 213:3- A. Chambers had been aware of TelDig CertusView entered into a Non-Disclosure Agreement TelDig, in April 2008, regarding Trial Tr. Vol. 2A at 213:14-214:6. was ("NDA") parser with technology. Such NDA provided that Dycom "willing to provide" TelDig with information concerning its "business of was TelDig's because locating underground facilities" and that TelDig "willing to provide" Dycom with "more detailed information" concerning TelDig One Call, TelDig Nexus products. TelDig Utility, TelDig Mobile, and Non-Disclosure Agreement between Dycom and TelDig, April 10, 2008, DX-071. B. software Chambers had seen a full demonstration of TelDig's in 2007, prior CertusView and TelDig. C. Chambers to execution of the NDA between Trial Tr. Vol. 2A at 214:7-216:10. also had conversations with individuals from TelDig, after execution of the NDA, regarding e-Sketch and Chambers product did not that receive functioned any like indication e-Sketch. that Trial TelDig Tr. Vol. had 2A a at 216:14-218:7. 74. TelDig Crawford and concluded information patentability. TelDig conducted in the that, MIR, Particularly, included participating additional based TelDig on his was research regarding research not and the material to Crawford's additional research on in a WebEx demonstration of 39 the TelDig One Call software through a Canadian Dycom subsidiary. Trial Tr. 75. Vol. 3B at Neither regarding ESRI previous 638:21-641:1. the MIR, or TelDig, patent nor counsel. included information provided to Teja or was CertusView's Trial the Tr. Vol. 2A at 271:9-273:7, 280:18-281:3; Trial Tr. Vol 2B, 370:23-371:4, ECF No. 508.13 76. other However, companies relevant certain and information products, and material that in the MIR, CertusView regarding concluded was to patentability was provided to patent counsel and cited during prosecution of a number of CertusView's patent applications. Dynatel, Trimble, For Metrotech, which Vol. were discussed in related Subsite, Celeritas, the MIR, CertusView patent 3A at 481:5-483:17, were 78. designed When to it was allow and Trial ESRI and the ESRI ArcPad software was first released in 2000 or 2001. ECF No. 3M during applications. ESRI is a GIS software developer, 1005:12-1006:6, cited to 517:20-518:17. 2. 77. products RadioDetection, prosecution of various Tr. example, Trial Tr. Vol. 5A, 502. developed, users to the employ ESRI the ArcPad ESRI software software, a was GIS 13 The MIR itself has never been provided to the PTO, and the MIR is not listed as Patent, PX-004; "prior art" for any of the Patents-in-Suit. See '344 PX-001; '204 Patent, PX-002; '359 Patent, PX-003; '001 Patent, '341 Patent, PX-005. Further, no evidence was presented at trial that Farr knew of or reviewed the MIR. 40 database package, on a mobile device to "join maps and databases together." Trial Tr. Vol. Vol. 235:20-236:4; 2A at ESRI, May 29, 79. 5A at 1006:16-1007:9; see Trial Tr. Dycom Competitive 2008, DX-083. ESRI No products Technology Research introduced in evidence, or specific ESRI references were nor did S&N identify a particular ESRI ArcPad product version or reference that it alleges should have been disclosed to the PTO. 80. CertusView considered partnering with ESRI in 2007 and integrating However, ESRI as partnership require noted was In functionality, ESRI as above, not extensive product. the software part its CertusView feasible because customization particular, of the to ESRI e-Sketch determined the with software did that such software ESRI work product. would the e-Sketch not have the "out of the box," necessary for e-Sketch because software did not document paint or markers on the ground while a locate operation was taking place, nor did ESRI software geo-code or timestamp when such marks were made in the ESRI database. 81. with Trial Tr. Vol. 2A at 235:20-237:6. Teja had general knowledge of ESRI through his work CertusView, but he became aware of specific prior references regarding the ESRI software products Office Action during patent application. prosecution Trial Tr. Vol. 41 of an art through a PTO unrelated CertusView 2B at 324:24-326:17. 82. There is no evidence that Teja, Nielsen, Chambers, or Farr knew of these specific ESRI prior art references before the PTO's citation of such references during prosecution of the unrelated patent application. 83. Upon reviewing the specific ESRI prior art references, Teja determined that such references were not material to any of the Patents-in-Suit because in many duplicative" respects submitted to Trial Tr. 84. during Vol. the out specific of Teja learned of the ESRI Four "cumulative references he or had the Patents-in-Suit. ArcFM, White ArcGIS, Manual, of 2004, '359, caution," references '341, regarding the '001, 2006, 1-28; 1-192; Mobile GIS, ESRI White Paper, cited ArcFM UT, art of and to Teja PTO Patents, '001 the the Trial 514:6-516:18. Applications, PX-003; abundance specific ESRI prior art references. Paper, Mapping "an in the early stages of prosecution when references prosecution '359 Patent, other prior 3A at 476:15-477:16, during Field of the three Patents that were 85. of were 3A at 477:25-478:23. prosecution Tr. Vol. references the PTO during prosecution of Nonetheless, submitted such ESRI '359, (2) and 9, were cited Patents: Geocoding (1) in Mobile GIS Software for 2006; Sept. 2004. '341 Patent, '341 ArcGIS (3) ArcPad, brochure, products PX-005. and (4) '001 Patent, The ArcPad: PX-004; '341 Patent also "A GIS for Utilities Based on Standards," White 42 Paper, AED SICAD, Sept. 2008, 1-28. '001 Patent also cited ESRI Dec. 9, '341 Patent, PX-005. Corporate Introduction, 2009 (original publication date unknown). The printed on '001 Patent, PX-004. 86. Teja references Patents to did the because not submit the specific PTO during prosecution of the '344 Patent had ESRI the issued before prior '344 he and art '204 learned of the specific ESRI prior art references and Teja had already paid the issuance fee for the '204 Patent. Trial Tr. Vol. 3A at 476:15-477:16. 87. The specific ESRI references submitted by Teja to the PTO were never used as a basis for rejection of the and '001 Patents Trial Tr. Vol. or 3A at any other patent in the '359, '341, e-Sketch family. related to 4 77:17-24. 3. TelDig 88. aspects TelDig of develops infrastructure software products interventions. Among other all things, TelDig developed ticket management systems for One Call centers and dealt polygons." 2A at with Trial Tr. creation Vol. and IB at editing of 152:20-159:19; "notification Trial Tr. Vol. 276:4-277:3. 89. did the No TelDig S&N identify products a were particular introduced TelDig in Utility evidence, Suite nor product version or reference that it alleges should have been disclosed 43 to the PTO. Mobile Further, product S&N did not identify a particular TelDig version that it alleges should have been disclosed to the PTO. 90. CertusView interviewed TelDig in 2007 as a potential vendor and participated in TelDig sales demonstrations. Tr. Vol 2A at 91. of 214:7-216:10. Dycom and TelDig entered into an NDA for the exchange information in April 2008, about TelDig One Call, Nexus Trial products. including exchange of TelDig Utility, Trial Tr. Vol. information TelDig Mobile, 2A at and TelDig 213:14-214:6; Disclosure Agreement between Dycom and TelDig, April 10, Non- 2008, DX-071. 92. In 2009, trade show, which CertusView partnership Sketch at Davis which to he might the identified be integrate interested other product. Trial Tr. Summary Notes, in Ground as a forming Virtual Alliance company a technology WhiteLine Davis' Vol. work, 2A particularly with and e- PX-043. 93. systems, Common TelDig CertusView's with Call software attended at TelDig's 219:1-220:9; integrating CertusView's Trade One Show Virtual WhiteLine and e-Sketch concepts with TelDig's One Call software, continued throughout 2009, culminating in a "Services and Integration Agreement" between TelDig and CertusView on November 5, 2009. Services and Integration Agreement between CertusView 44 and TelDig, November 5, 2009, DX-134. Such integration allowed TelDig One Call users to launch CertusView's Virtual WhiteLine software from the One Call program. allowed Call system for the One Further, and the such integration Virtual WhiteLine software to work together and share information for the benefit of both entities' 94. During integrate the software, Farr users. the time Virtual and that Vol. 2A at 301:1-309:6. CertusView and TelDig sought WhiteLine others TelDig's drawing tool, saw product a live and web the One to Call demonstration of which Farr believed to be associated with TelDig One Call software. 95. Trial Tr. Trial Tr. Vol. 4B at 799:7-23. Based on CertusView's interactions with TelDig between 2007 and 2010, demonstrated, CertusView understood, and the evidence at trial that: A. TelDig's notification system included a high-level, large-area drawing tool used by excavators to mark an image and denote the area of excavation. Such drawing tool, not have the ability to input specific utilities, however, did tie-downs, or landmarks on an image of a narrow and highly specific geographic area, or timestamp such additions to an image. 2A at 221:12-227:13; Trial Tr. Vol. Trial Tr. Vol. 4A at 774:1-777:4; Email Re: TelDig Systems - TelDig Web Drawing Tool Integration-vl 10.doc, PX-057. Integration of the TelDig One Virtual WhiteLine product allowed One 45 Call Call software users and the to mark up a very specific geographic area on a high-resolution aerial image for an excavator. B. drawing tool, Trial Tr. Once a the Vol. drawing 2A at 306:22-308:8. was drawing was completed saved to format, an image or graphics format. does not (image, same allow a mark-ups, file or locator geo-code to search single PNG file. coordinates 222:10; Trial through TelDig web server in PNG A file saved in PNG format include data, the and layers of timestamps, layers of data information etc.) in the saved within a Further, a PNG file is not able to record geo- coded locate marks, GPS to the using i.e. paint on the ground matched to specific for Tr. each Vol. mark. 4A Trial at Tr. 776:7-25; Vol. Trial 2A Tr. at Vol 221:12- 4B at 802:13-804:2. C. The TelDig drawing tool, while not used in such a fashion, might be used to mark a digital image and to show the results of a locate operation. However, the TelDig drawing tool was used for a different purpose, and its use for the purpose of documenting a locate operation was like nail in a screw." 96. Trial Tr. On August 2, TelDig Mobile brochure, Vol. 2012, news Vol. alert. Trial 2A at 298:7-301:4. via Crawford's Tr. 3B at 580:1-582:12; a hammer to Chambers and Crawford learned of a Gail Sternstein ("Sternstein"), a "us[ing] Vol. administrative assistant who had received the brochure as IB at 162:24-168:22; Sternstein Depo. 46 Trial Tr. Tr. at 49:15-51:15; Email 2, from Sternstein to August 2, 2012, Chambers, re: Fwd: Mobile TelDig-page DX-203; TelDig Mobile Product Brochure, DX- 294. 97. The language that included in TelDig was the Mobile brochure identical MIR, to included bullet the Further, the TelDig Mobile brochure point the describing bullet TelDig Mobile language system. included a partial picture of a drawing tool and its use on a large scale map image. Tr. Vol. point Trial IB at 168:24-170:5; TelDig Mobile Product Brochure, DX- 294. 98. from Upon receiving a copy Sternstein, with Nielsen. at did 581:7-16. not Chambers Trial Tr. Chambers contain any and Vol. and new of the TelDig Mobile Crawford discussed IB at 168:15-22; Crawford or the brochure Trial Tr. concluded different brochure that the information Vol. 3B brochure regarding TelDig's software from what they already knew or had previously learned from their interactions with TelDig. at 641:10-19. Thus, Nielsen, Chambers, Trial Tr. and Crawford Vol. did 3B not send the TelDig Mobile brochure to Teja and the brochure was not submitted to the PTO in relation to any of Trial Tr. Vol. 99. On supporting screen 2B at 362:1-12; Trial Tr. Vol. October documents, shots the Patents-in-Suit. of the 17, 2012, Teja and three images TelDig sketch 47 3A at 479:3-16. received tool, which from an were Louis affidavit, labeled A. as Simone ("Simone Affidavit"). The three TelDig screen shots were created by Premier Utility Services, who used a "personal highly customized version of Tel[D]ig Vol. 2B at offer[ed them] special contract requirements . . . ." features to exceed [their] Tr. that 365:7-366:18; Affidavit of Louis A. Trial Simone, DX- 286. 100. October 17, employee, was Teja forwarded the Simone Affidavit and documents, 2012, asking material Disclosure for to Crawford input Trial to October 17, Tr. Vol. Halky, because, if to with the at FWD: CertusView information an Information PTO forwarded a the file 2B re: Travis needed then Chambers, 2012, he ("IDS") Crawford Chambers. and "ASAP" e-Sketch, Statement information. Crawford to on the to the information 361:13-365:10; URGENT-Please cite Email review to from ASAP, DX-221. 101. The three TelDig screen shots included with the Simone Affidavit bore a at "striking" CertusView had ilk," before. particular, measurements, seen this Trial the resemblance to e-Sketch, three similar Tr. TelDig to information, Vol. 2B or at screen shots certain markings but no one drawings of "this 366:5-369:21. In showed markings or tie-downs and that might be made during a locate operation, on a Google Earth photo image. Affidavit of Louis A. Simone, DX-286. 48 102. Based on "TelDig had 2012." Trial Tr. such a the Simone graphing information tool Vol. as on 2B at an Affidavit, aerial Teja images 371:16-26. "admission of anything that resembled prior art," concluded that sometime However, after Teja viewed infringement rather than because the e-Sketch patent applications had been filed several years prior and the diagrams "looked claims like of they the plausibly [e-Sketch] could patent" priority dates of the applications. have been several covered Trial Tr. Vol. the after years by the 3A at 486:4- 488:19. 103. Teja first received materials relevant to TelDig, that he believed might need to be included in a patent prosecution, in connection materials After with from Ivan receiving materials, and applications other the present Zatkovich's such CertusView the expert e-Sketch technology as ("Zatkovich") materials, Zatkovich's in litigation, Teja cited report technology families. in exhibits expert such Trial report. exhibits, pending family and Tr. and patent possibly Vol 3A at 479:3-23. 104. Even report, were though TelDig materials, cited in pending Sketch technology family, rejection based on TelDig. patent and Zatkovich's applications in expert the e- Teja has not received an Office Action Trial Tr. Vol. 3A at 484:3-18. 49 G. Misrepresentation to the PTO 105. During prosecution of United States Patent Application No. 12/366,050, which ultimately issued as the '344 Patent, Examiner Nancy Bitar issued a non-final Office Action on October 6, 2011, obvious, rejecting 1-26 pursuant to 35 U.S.C. 2007/0219722 Pub. claims No. to Sawyer Jr. 2006/0077095 History U.S. 44, DX-234 to of such patent § 103(a), et. al. Tucker application based on U.S. in view of U.S. ("Tucker"). Complete File ('344 Patent), inventions address the discussed problem in of the Tucker underground and that cannot be trusted. Vol. In at his marking 382:10-383:22. a named inventor on system was facilities particular, the on the ground "permanently capture and store" digital reference, which would Page because the be Trial Tr. ("Mr. explained the "problems" the invention location of later maps, Tucker Tucker reference, designed to eliminate Sawyer facility maintained by utility owners, that 1133- (hereinafter "'344 Patent File History, DX-234"). references Tucker"), No. ("Sawyer") Patent Application 12/366,050 106. The 2B Pub. as used with would utilities to excavator-during excavation—that the excavator was notify in a the "encroaching on a utility line and what type of line it is and how close they are." Tucker aware of paint or Depo. Tr. anyone using his flags," and the at 113:19-115:2. invention to only 50 time Mr. Tucker is not "record the location of that he is aware of his invention being used in conjunction with paint or flags on the ground was to "test[] the system." Tucker Depo. Tr. at 117:9- 23. 107. number Examiner of familiar Bitar CertusView's with reviewed Virtual Examiner the '344 WhiteLine Bitar, and had Email re: The remake), November 16, 108. Teja occasions, "Six Families" 2011, and others, (sounds Examiner December Trial Tr. Vol. et al., re: for good as Teja a was professional Trial Tr. 6, Bitar 2 011 Vol. like a the pending 2B at 401:14-402:1; Meeting with Examiners on when attended an examiner interview in Washington, Bitar, well 2B at Godfather PX-072. interviewed including as patents. a working relationship with Examiner Bitar. 399:9-21; Patent a Teja number and of Nielsen with Examiner Patent '344 D.C. application. Email from Teja to Nielsen, in D.C, November 28, 2011, DX-177. 109. During that examiner interview, Nielsen and Teja used a PowerPoint presentation to highlight Examiner Bitar. In part, certain information for the presentation discussed the Sawyer and Tucker references and sought to distinguish such references from the claimed U.S. Patent inventions Application December 6, 2011, of the 12/366,853 PX-131. 51 '344 for Patent. Examiner Overview Nancy of Bitar, 110. During the examiner interview, Examiner Bitar what locate operation. takes place Nielsen explained to in a conventional, prior art Trial Tr. Vol. 2b at 414:14-815:14; Overview of U.S. Patent Application 12/366,853 for Examiner Nancy Bitar, December 6, 2011, 2-25, PX-131. 111. During the examiner interview, and following Nielsen's presentation, Teja directed Examiner Bitar's attention several portions of the Tucker and Sawyer references, paragraph 005 of the Tucker reference, conventional locate operation, which to including described and paragraph 0014 of a the Tucker reference, which Teja used to explain that the objective of both Tucker and Sawyer is to operations. Trial Tr. Vol. U.S. Patent December 6, Application 2011, 112. On February interview, Teja, and in Reply 26-48, pursuant to 37 2B at with conventional 419:14-423:13; for Examiner locate Overview Nancy of Bitar, PX-131. Nielsen, C.F.R. away 12/366,853 13, response do to 2012, after attending the and Chambers submitted an the October § 1.111. 6, Trial Tr. 2011 Vol. examiner Amendment Office Action, 3A at 431:14-24; '344 Patent File History, 688-711, DX-234. 113. In gave a Office the summary of Action. explained that February the With "Tucker 13, 2012 references respect is to Amendment Reply, cited in the October the Tucker reference, concerned primarily 52 and with 6, Teja 2011 Teja assembling and providing lines," and an locations penetrating with or locations activities—rather, precision documentation database utility or sites location of support of Tucker's PI Grid is in no manner concerned with, the line of in on, utility database created dependent "the accurate this of of database actual same reference, Teja explained system and methods teachings of that disclosed Tucker, Sawyer only concerned utility line location, With respect to the "Sawyer in Tucker," is ground- is wherever the utility lines may be located." Sawyer future relates and primarily to the "beyond the concerned with maintaining a record of the activity of a field operator as the operator collects, edits, and/or location of utility lines." updates data '344 Patent File regarding History, the 700-06, DX-234. 114. Teja explained in the February 13, Reply, that "the amendments to the independent claims are based at least in part on moving preamble to recitation of the a body of language previously recited the claims 'locate operation,' so as to in the clarify the which is completely absent from the cited prior art references." 695, 2012 Amendment and '344 Patent File History, DX-234. 115. Teja continued, stating that "[f]urther the claim amendments relating to a locate 'ticket' support can be found throughout Applicant's specification as originally filed 53 for (e.g., see paragraphs 'locate [0002] , [0003] , [0023] , and operation,' the concept of a [0046] ). locate As with a ticket including information identifying a dig area to be excavated or disturbed during planned Applicant's excavation independent activities, claims, cited prior art references." is as now completely recited absent from '344 Patent File History, in the 695, DX- 234. 116. Teja made to the examiner" a locate "with such statements because he was "advocating that Tucker and Sawyer " [esch]ewed the idea of operation," presumably intending something to replace better." locate Trial Tr. operations Vol. 2B at 399:25-340:22 117. Further, Teja stated location of in the February 13, that " [s] ince planned Tucker excavation 2012 Amendment and Reply, is not concerned activities per with se, the Tucker similarly is not concerned with locate operations to identify a presence or absence of underground facilities within a specified dig area in advance of planned excavation activities in the dig area." '344 Patent File History, 703, DX-234. 118. Later in the Teja stated that February 13, 2012 "[a]lso like Tucker, Amendment Sawyer is not and Reply, concerned with the location of planned excavation activities per se, thus similarly is not concerned with locate operations and to identify a presence or absence of underground facilities within 54 a specified dig area in advance of planned excavation activities at the dig suggest area. any operation As such, concepts (e.g., a Sawyer also related timestamp operation occurred)." to does not documentation indicative of disclose of that need Bitar Tucker for in and distinguishable operation, Sawyer Vol. 2B at the the digitally records of patentability, disclosed marks from where locate locate '344 Patent File History, 706, DX-234. favor physical a the when 119. Teja made such statements as part of his Examiner or on the attempting system ground that applies location of paint the to and claiming a on show "obviates entirely" e-Sketch inventions locator the a argument to the were locate the ground and locate mark. Trial Tr. 358:12-360:14. 120. On April Office Action, 23, 2012, Examiner Bitar rejecting the amended claims of on new grounds. issued the another '344 Patent The Examiner found that "Applicant's arguments, in the amendment filed 2/13/2012 with respect to the rejections of claims 1-26 under 35 U.S.C. 103(a) have been fully considered but are moot necessitated been by withdrawn. ground (s) of view in the of the amendments. However, rejection 2008/021863)[("Evans")]." is new ground(s) Therefore upon further made in view '344 Patent 234. 55 the of rejection rejection consideration, of File Evans History, et has a new al (US 652, DX- 121. In response to the April 23, 2012 Office Action, submitted an Amendment and Reply on June 12, File History, 81-94, 122. In '344 Patent DX-234. June the 2012. Teja 12, 2012 Amendment and Reply, Teja explained that "Sawyer and Evans fail to disclose or suggest all of the limitations of claim 1. at least of the fail at pavement to disclose least or one other locate operation.'" and method does not for 123. the locate physical a GIS locate data applied to ground, technician during 89, DX-234. transaction' marks the Teja at all." (Abstract) '344 Patent 90, DX-234. Examiner Bitar had and considered Sawyer references during prosecution of Tr. Vol. mark representation "Sawyer, which is directed to a 'system generating discuss File History, by locate '344 Patent File History, further reiterated that Sawyer and Evans 'at least one digital physical surface In particular, 2B at 397:6-398:2; the '344 Patent, both the Tucker '344 Patent. PX-001 and Trial (listing prior art submitted to the PTO). 124. Examiner Bitar Allowability as to the ultimately '344 Patent, a Notice '344 Patent File History, DX-234. 125. In the July 11, 2012 Notice of Allowability, Bitar of on July 11, 2012, over the Tucker, Sawyer, and Evans references. 25-30, issued stated that "[a]fter reviewing 56 the remarks made Examiner by the Applicant action on the 6/13/2012 Examiner in response finds the to remarks the to non-final be persuasive. combination of cited references Tucker et al Sawyer et al 2008/0021863) (US 2007/0219722) , [d] o not teach or suggest or the newly added features. '344 Patent File History, stated that operation July none comprising excavation Notice prior at least identified and using al (US claims claims elements." in at Allowability "[1] advance least of one further the the locate planned physical locate pavement or other surface by the locate one underground the by et features of teaches: technician during the locate operation, the the of art identifying, mark applied to ground, Evans combination of 2012 the activities 2006/0077095), 28, DX-234. 27, of (US The No other found prior art of record teaches or fairly suggests the 126. The and office ticket a presence or absence of facility information; within and [2] the dig at least area one digital representation of the at least one physical locate mark applied to technician the during communication transmit record ground, the locate operation; and/or the the locate that is operation verifiable." PX-234. 57 so and memory electronically store location operation 29, the interface and/or of pavement or other surface by the locate '344 to controls electronically searchable electronic performance Patent the File of the History, VI. LEGAL STANDARD AND PRELIMINARY FINDINGS A. Duty of a Patent Applicant "Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the [Patent and Trademark] Office, which includes a duty to disclose individual to be section." 37 Universal 2007); Cir. Mach. to the Office material C.F.R. Avionics Molins 1995) PLC § information known to patentability as 1.56(a); Sys. v. all Corp., see 488 Textron, Inc., 48 982, U.S. 806, 818 (1945)). Int'l 999 F.3d (citing Precision Instrument Mfg. Co., • 324 defined Honeywell F.3d to that in this Inc. v. (Fed. 1178 1172, Cir. (Fed. Co. v. Auto. Individuals Maint. associated with the filing and prosecution of a patent application include: "(1) or Each inventor named in the application; agent Every who prepares other preparation person or associated with 37 C.F.R. pending or who is prosecution the of a The cancelled or withdrawn becomes abandoned." of the involved application to disclose application and or Conversely, and (3) in the who is individuals.14 exists until from consideration, Id. § 1.56(a). Each attorney application; or other relevant duty patent the substantively inventor," § 1.56(c). claim prosecutes (2) the as to each "claim is the application "[t]here is no 14 "Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor." 37 C.F.R. § 1.56(d). 58 duty to submit patentability information of any which existing is not claim." material Id. to the Additionally, information that is material to patentability does not include information that is "cumulative to information already of record or being made of record in the application." Id. § 1.56(b). A breach of such duty of candor and good faith constitutes inequitable conduct. Molins, Innovations, LLC v. Holtzbrinck Publishers, 526, 543 (N.D. Ohio 2012) patent applications in honesty] constitutes F.3d 1178)). at 48 F.3d at LLC, Responsive 911 F. Supp. 2d ("A breach of this duty [to prosecute the PTO with candor, inequitable conduct." The 1178; parties do not good faith, and (citing Molins, dispute that each 48 named inventor to the Patents-in-Suit and the attorney who prosecuted the Patents-in-Suit—that is, Nielsen, Chambers, Farr, and Teja— have a duty of candor and good faith to the PTO. B. Inequitable Conduct "Inequitable conduct infringement that, Therasense, (Fed. Cir. is if proven, an equitable bars defense enforcement to patent of a patent." Inc. v. Beeton, Dickinson & Co., 649 F.3d 1276, 1285 2011) (en banc). To prevail on a defense or counterclaim of inequitable conduct, "the accused infringer must prove that the applicant misrepresented or omitted material information with the specific intent to deceive the PTO" and, at trial, must prove both materiality and specific intent "by clear 59 and convincing evidence." Star Sci., 1365 Inc. v. (Fed. Cir. that the LLC v. (Fed. Reynolds Tobacco Co., 2008)). applicant TransWeb, 1303-04 R.J. Id^ at 1287 (emphasis added) (citing The Therasense standard also requires have knowledge of such 3M Innovative Properties Co., Cir. 537 F.3d 1357, 2016) ("A judgment of materiality. 812 F.3d 1295, inequitable conduct requires clear and convincing evidence of materiality, knowledge of materiality, Therasense, meets its and a deliberate decision to deceive." 649 F.3d burden, at then 1290)). the "If the district accused court must (citing infringer weigh the equities to determine whether the applicant's conduct before the PTO warrants Therasense, 1365). rendering 649 "[A]s F.3d a at general the entire 1287 (citing rule, this patent Star unenforceable." Sci., doctrine 537 F.3d at should only be applied in instances where the patentee's misconduct resulted in the unfair benefit of receiving an unwarranted claim." Id. at 1292 (citing Star Sci., 537 F.3d at 1366). As explained in Therasense, inequitable conduct is at 1288 525 cannot issue. other be 1349 (Fed. Cir. patentability cured by Instead, reissue above-stated 'atomic bomb' (quoting Aventis Pharma S.A. F.3d 1334, Unlike "the the 2008) patent law." v. Amphastar Pharm., (Rader, deficiencies, or of remedy J., Id. Inc., dissenting)). inequitable reexamination of for conduct the patents at "inequitable conduct regarding any single claim 60

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