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 Att. 1 renders the entire patent unenforceable." Med. Consultants, (Fed. Cir. Ltd. 1988) (en v. Hollister banc)). Id. Inc., " [T] he (citing Kingsdown 863 taint F.2d of a 867, 877 finding of inequitable conduct can spread from a single patent to render unenforceable other related patents and applications in the same technology family, . . . endanger[ing] a company's citations patent portfolio." omitted). Further, a substantial portion of Id. a at finding of 1288-89 (internal inequitable conduct may prompt antitrust and unfair competition claims, "prove the crime or fraud exception to the attorney-client privilege," support a finding that a case potential award of attorneys' is "exceptional," or leading fees under 35 U.S.C. to a § 285. Id. at 1289 (internal citations omitted). "[T]he materiality required conduct is but-for materiality." to establish Id. at 1291. inequitable Regarding the withholding of prior art: When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior materiality of a art. withheld Hence, in assessing reference, the court the must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference. In making should this patentability determination, the court apply the preponderance of the evidence standard and give claims their broadest reasonable construction. Id. at 1291-92 alleges that (citations omitted). a patentee committed Similarly, where a party inequitable conduct by 61 Dockets.Justia.com misrepresenting information to the PTO, such party must demonstrate that the specific alleged misrepresentation was butfor material. allowed Id. the 1354, 1361 have misconduct"); 1333, 1345 (Fed. e.g., be "but-for the the patentee's PTO '556 of The material" patent but would the evidence Circuit v. Alps allowed a Inc., a PTO 735 F.3d Willow Wood In determining claim but should and "the Sherman's LLC, "Ohio court standard Dr. S., 763 patentee's because 649 F.3d at 1291). have UCB, for have patentee's (finding [hereinafter Therasense, Federal v. Cir. 2013) would not the Inc. Co. broadest reasonable construction. F.3d at 1345; PTO for 2014) misrepresentation, preponderance the Willow Wood (2013)"](citing Therasense, whether Apotex Cir. allowed is, but (Fed. to Ohio That claim See, misrepresentations would not 1291. patent misrepresentation. F.3d at give for the apply claims Ohio Willow Wood the their (2013), 735 649 F.3d at 1291. has recognized a narrow exception to the requirement to prove but-for materiality in instances where a patent applicant engages in particularly egregious misconduct arising from scheme[s]' F.3d at "'deliberately planned and carefully to defraud the PTO and the courts." 1292 (quoting Hazel-Atlas Glass Co., 322 U.S. 238, 245 (1944)). Co. Therasense, 649 Hartford-Empire "When the patentee has engaged in affirmative acts of egregious misconduct, 62 v. executed such as the filing of an unmistakably false affidavit, Id. (citations omitted). the misconduct is material." However, "neither mere nondisclosure of prior art references to the PTO nor failure to mention prior art references in an affidavit constitutes affirmative egregious misconduct, claims of inequitable conduct that are based on such omissions require proof of but-for materiality." 93. Further, Id. at 1292- "[t]here is nothing wrong with advocating, in good faith, a reasonable interpretation of the teachings of the prior art." Apotex Target Corp., Inc., 763 F.3d at 1361-62 (citing Rothman 556 F.3d 1310, 1328-29 (Fed. Cir. 2009)). v. "While the law prohibits genuine misrepresentations of material fact, a prosecuting attorney is free to present argument in favor of patentability without fear of committing inequitable conduct." Rothman, 556 F.3d at 1328-29 (citing Young v. Lumenis, F.3d 1336, 1348 Abbott Labs., counsel's and (Fed. Cir. 512 that interpretation of (citing 1320, Life 1326 F.3d 1363, representation explaining its Techs., (Fed. 2007)); Cir. 1379 accord Innogenetics, (Fed. "amounted "an Inc. v. and Cir. to applicant claims mere is the 2008) attorney free to v. argument" advocate of Labs., Inc., Instead, N.V. (noting that teachings Clontech 2000))). Inc., 492 its prior art" 224 F.3d such limited exception to but-for materiality applies only when a patentee's omission or misrepresentation is knowing and deliberate. 649 F.3d at 1292 (citing Hazel-Atlas Glass, 63 See Therasense, 322 U.S. at 245). The Federal Circuit has emphasized distinction between the materiality and inequitable conduct counterclaim. separate requirements." Inc. v. Id. Promega Corp., 323 in its intent opinions elements the of an "Intent and materiality are at 1290 (citing Hoffman-La Roche, F.3d 1354, 1359 (Fed. Cir. 2003)). "A district court should not use a 'sliding scale,' where a weak showing of intent may be showing of materiality, district Id. court Instead, sufficient and vice versa." may not "a found infer intent court must weigh based Id. solely the on a strong Importantly, "a from materiality." evidence of intent to deceive independent of its analysis of materiality. Proving that the applicant knew materiality, of a reference, and decided not should have known of its to submit it to the PTO does not prove specific intent to deceive." Id. (citing Star Sci., 537 F.3d at 1366). Under the intent element of inequitable conduct, alleging inequitable conduct must demonstrate acted with "the specific intent to deceive 1290 (citing Star Sci. , 537 F.3d at 1366). misrepresentation or omission amounts to the party that the patentee the PTO." Id. at "A finding that the gross negligence or negligence under a 'should have known' standard does not satisfy this intent requirement." 876). the "[T]o meet specific Id. (quoting Kingsdown, 863 F.2d at the clear and convincing evidence intent to deceive 64 must be 'the standard, single most reasonable (quoting inference Star Sci., able 537 to be F.3d drawn at from 1366). the evidence.'" Indeed, the Id, evidence "'must be sufficient to require a finding of deceitful intent in the light of all 863 F.2d at inferences found." 873). that Id. Vision reference, "the that withhold it inequitable need not infringer first deceive by at and 1290. the good faith . . . prove[s] clear and Cir. ICOS 2008)). a prior art clear and the reference, deliberate decision alleging proof, of party the 'patentee the accused a threshold level of intent F.3d at evidence.'" 1368). to the explanation unless convincing (quoting Star Sci. , 537 v. be by knew of a burden of prove "Because bears any made cannot Corp. (Fed. nondisclosure must reasonable deceive Techs. 1376 the applicant material, Id. a to Scanner 1365, (quoting Kingsdown, are multiple intent infringer that conduct offer of accused was it." F.3d Id. there (citing case the when drawn, 528 convincing evidence knew be 1290-91 Corp., in circumstances.'" "Hence, may at Sys. Further, the Id. at "The absence of to 1291 a good faith explanation for withholding a material reference does not, by itself, prove intent to deceive." Id. C. Inventorship "Conception is the touchstone of completion of the mental part of invention." Co. v. Barr Labs. , Inc. , 40 F.3d 1223, 65 inventorship, the Burroughs Wellcome 1227-28 (Fed. Cir. 1994) (citing Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994)). "'Conception is the formation in the mind of the inventor, definite and invention, Ethicon, Cir. as Inc. 1998) Inc., permanent it v. is U.S. idea of hereafter to F.2d 1367, 1376 Inc. (Fed. complete be Surgical Corp., (quoting Hybritech, 802 the applied and in operative practice.'" 135 F.3d 1456, v. of a 1460 (Fed. Monoclonal 1986))). Cir. Antibodies, An idea is sufficiently "definite and permanent" when "'only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.'" Wellcome, Id. (quoting Burroughs 40 F.3d at 1228). "A joint invention is the product of collaboration between two or more addressed." Educ. v. 35 U.S.C. persons Univ. Hedrick, § 116). working together to solve the of Pittsburgh of Commonwealth Sys. 573 F.3d 1290, "In a 1297 (Fed. joint invention, Cir. problem of Higher 2009) (citing each inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice." (citing Price v. Symsek, Joint inventors 988 F.2d 1187, "need contemporaneously . . . nor not work must 66 (Fed. physically each equally or to each claim of the patent." § 116). 1229 inventor Id. Id. at 1298 Cir. 1993)). together or contribute (citing 35 U.S.C. "All that is required of a joint inventor is that he or she (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full explain invention, to the and real (3) do inventors more than well-known merely concepts and/or the current state of the art." Israel Bio-Eng'g Project v. Amgen, (Fed. Cir. 2007) 1351 (Fed. Cir. Inc., (quoting Pannu v. 1998)). However, 475 F.3d 1256, 1263-64 Iolab Corp., 155 F.3d 1344, "one does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention." at 1460 Corp. (citing Sewall, v. Moreover, at issue, the 21 F.3d at 416-17; Libbey-Owens Ford Co., 1985)). Ethicon, Inc., 13 5 F.3d Shatterproof Glass 758 F.2d 613, 624 (Fed. Cir. depending on the scope of the patent claims "one of ordinary skill in the art who simply reduced inventor's idea to practice is not necessarily a joint inventor, even if the specification discloses that embodiment to satisfy the best mode requirement." Id. (citing Sewall, 21 F.3d at 416). VII. As of FACTUAL AND noted above, inequitable Chambers, inventor) software Teja, and Farr to OF S&N'S CLAIMS S&N has asserted five grounds conduct failed during LEGAL ANALYSIS against CertusView: for a claim (1) Nielson, (to the extent that he is named as disclose prosecution of as the 67 prior '344 art and the '204 ESRI an ArcPad Patents; (2) Nielson, Chambers, Teja, named as an inventor) and Farr (to the extent that he is failed to disclose as prior art the TelDig Utility Suite and TelDig Mobile software during prosecution of the Patents-in-Suit; wrongfully (4) Patents; that he named is Farr Nielsen, as the Nielsen, Chambers, PTO as '359, of an an Chambers, inventor Teja, inventor) '344, on the and Farr failed '204, Teja, and to Farr and '341 '204 (to the name '341 and extent Block Patents; as an and (5) and Teja made material misrepresentations to concerning prosecution of Nielsen, Chambers, named inventor the (3) the the '344 Sawyer/Tucker Patent. The references Court will during address each argument in turn. A. Failure to Disclose Prior Art 1. S&N committed asserts that inequitable ESRI ArcPad Nielsen, conduct by Chambers, failing Farr, to disclose art the ESRI ArcPad software during prosecution of '204 Patents.15 material S&N asserts prior art and that Nielsen, the ESRI and the ArcPad Chambers, Teja as prior '344 and software Farr, and is Teja 15 As noted above, S&N did not identify any specific ESRI prior art reference as material, nor evidence in this matter. did it enter any ESRI prior art into However, as significant testimony regarding the ESRI ArcPad software product, as well as the specific ESRI prior art references CertusView cited during the prosecution of the '001, '341, and '359 Patents, was elicited at trial, the Court will consider S&N's arguments regarding both the ESRI ArcPad software and the specific ESRI prior art references software. 68 discussing the ESRI ArcPad withheld ESRI ArcPad prior art during prosecution of the '344 and '204 Patents with the specific intent to deceive the PTO.16 In response, specific CertusView ESRI ArcPad prior withheld from the PTO, the prior ESRI ArcPad material. Instead, argues that art S&N that failed to CertusView identify allegedly and that S&N failed to demonstrate art discussed at CertusView argues, the trial is specific that but-for ESRI prior art references that CertusView learned of during prosecution of an unrelated prosecution material patent, of the because and '341, they which '359, were CertusView and '001 cumulative of cited Patents, other during were not prior art CertusView had already submitted to the PTO during prosecution of the CertusView argues, '344 and '204 Patents. Finally, S&N has not demonstrated that CertusView withheld ESRI ArcPad prior art with the specific intent of deceiving the PTO regarding ESRI. The Court finds that S&N has not demonstrated, by clear and convincing evidence, that CertusView withheld material ESRI ArcPad prior art with the specific intent of deceiving the PTO 16 The Court notes that S&N appears to have abandoned its argument that CertusView intentionally withheld ESRI ArcPad prior art references during prosecution of the '344 Patent, discussing only the '204 Patent in its Post-Trial Brief. 69 during prosecution of the '204 and '344 Patents.17 First, has is not demonstrated material.18 that Further, CertusView was prosecution of that the ArcPad software but-for other specific ESRI prior art references aware the ESRI S&N of, '341, and provided '359, and to '001 the PTO Patents, during are not material, but are cumulative of other references that CertusView provided to Patents. the PTO Second, withheld the ESRI art references, during S&N prosecution has ArcPad not of the demonstrated software, or any during prosecution of the '204 and that '344 CertusView specific ESRI prior '204 and '344 Patents with the specific intent to deceive the PTO. First, with respect prior art, "[b]ecause the requirement appl [ies] assessing to is the from the the analysis of perspective preponderance whether the materiality of of withheld would have blocked patentability." F.3d at 1345 (citing this but-for materiality of the or the ESRI ArcPad the PTO, [the evidence Court] standard misrepresented in information Ohio Willow Wood (2013), 735 Therasense, 649 F.3d at 1291-92). Specifically, S&N asserts that, had CertusView provided the ESRI ArcPad software to the PTO, the '204 Patent would have been 17 It is undisputed that CertusView cited at least four specific ESRI prior art references during prosecution of Patents. See supra H 85. the '001, '341, and '359 18 The parties do not appear to dispute that some version of the ESRI ArcPad software is prior art to the Patents-in-Suit. 70 "blocked" patents because as image—the ESRI ArcPad anticipated or made it had the matter at capability of issue in marking up dependent claim obvious such a photographic 17 of the '204 Patent ("[t]he method of claim 1, wherein the at least one input image comprises at least one photographic image.").19 Post-Trial Br., S&N has that ESRI 17, ArcPad ECF No. 517. possessed However, such not proven functionality. S&N introduced no evidence that a version of ESRI ArcPad, marking up a photographic image, '344 Patents. software Instead, "out of programming Dr. the box," and Dymond that is, customization, representation of was prior art was testified absent unable a physical locate mark, has capable of to the that Defs.' '204 and ESRI ArcPad additional personal to store or do a digital "ticketing" "digital representation" of physical locate marks.20 or Trial Tr. Vol. 5A at 1010:14-1011:2, 1011:15-1012:18.21 19 The Court notes that, while S&N does not address in its Post-Trial Brief whether the ESRI ArcPad software would have blocked issuance of the '344 Patent, claim 1 of the '344 Patent describes an apparatus which can process a searchable electronic record that contains a similarly marked-up digital image. '344 Patent, Col. 17:40-18:14, PX001. 20 At trial, S&N cross-examined Dr. Dymond on an image created by ESRI ArcMap software, a desktop application that might be used to mark up an image. Trial Tr. Vol. 5B at 1069:13-1070:13. However, as Dr. Dymond explained, such image was created by a separate ESRI product, and ESRI ArcPad does not possess such functionality absent additional programming and customization. 21 At trial, S&N's own expert, Ivan Zatkovich, did not provide an opinion regarding the materiality of any specific ESRI reference or publication, determining in his expert report only that TelDig was material in view of the ESRI software products. 71 Trial Tr. Vol. 4B at Further, references with that respect to the specific CertusView learned of unrelated patent application, ESRI prior art during prosecution of an CertusView did not have a duty to submit such specific prior art references during prosecution of the '204 and '344 Patents. issued when Teja, of the specific First, the '344 Patent had already and other CertusView employees, ESRI prior art references became aware discussed at S&N has not demonstrated that any CertusView employee, knew of Thus, such references until after the '344 CertusView did not have a duty to prior art C.F.R. references § 1.56(a). with respect Second, to Patent trial. or Teja, had issued. disclose such specific the '344 CertusView did not Patent. have See 37 a duty to submit the specific ESRI prior art references during prosecution of the '204 906:13-15. Patent because However, the unpersuasive as S&N has software, or the TelDig such Court references finds such are cumulative combination not demonstrated that products (as discussed to of be the ESRI ArcPad below), had the necessary functionality to record and store a digital representation of a physical locate mark. See Dome Patent L.P. v. Lee, 799 F.3d 1372, 1379 (Fed. Cir. 2015) (explaining that the prior art and the inventions claimed must be, in part, similar enough such that "'the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art'" (quoting 35 U.S.C. § 103 (2006))). Further, even if such functionality existed in the prior art, S&N has not demonstrated that there existed the appropriate motivation to combine the teachings in such prior art references and a reasonable expectation of success in making such combination. See Id. at 1380 are found in the prior art, ("If all elements of a claim . . . the factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success." (citing Medichem, S.A. v. S.L., 437 F.3d 1157, 2006))). 1164 (Fed. Cir. 72 Rolabo, other references that CertusView provided to the PTO and are not material. when it See 37 C.F.R. 'teaches no § 1.56(b). more than what "A reference is a reasonable cumulative examiner would consider to be taught by the prior art already before the PTO.'" Regeneron Pharm. , Inc. 61 (S.D.N.Y. 2015) Lilly & Co., v. 144 F. Supp. 3d 530, 560- (quoting Regents of the Univ. of Cal. v. Eli 119 Alternatively, Merus B.V., F.3d "[w]hen 1575 Cir. reference 1997)). a limitation of particular importance not elsewhere disclosed, it is not v. Id. particular (Fed. discloses cumulative." a 1559, (citing McKesson Info. Sols, Bridge Med., Inc., 487 F.3d 897, 914 (Fed. Cir. 2007)). testified at trial, the specific ESRI prior art Inc. As Teja references provide information, regarding the use of GIS software to record data regarding utilities, similar to the information that forms the basis of the Tucker, Sawyer, and Evans references CertusView provided to the PTO during prosecution of the Patent. Thus, the specific ESRI prior cumulative and not material as they "teach[] art that '204 references are no more than what a reasonable examiner would consider to be taught by the prior art already before the PTO." Additionally, the Id. fact that the '359, '341, and '001 Patents issued over specific ESRI prior art references indicates that the such '204 references Patent. are Having not but-for reviewed 73 the material specific with ESRI respect prior to art references, which S&N argues should have been submitted during prosecution of the '204 Patent, such references did not '001 Patents. "block" Therefore, the ESRI ArcPad product, MIR and its ESRI prior the examiner issuance of S&N has not the '359, that '341, demonstrated that and either of which CertusView was aware from the own interactions with ESRI, art determined references, that or the CertusView specific learned of cited during prosecution of an unrelated patent, are but-for material to the issuance of the Second, has not '204 and even if ESRI prior art demonstrated software, or prosecution '344 Patents. any of that '204 intent to deceive the PTO. must be CertusView specific the were but-for material, ESRI and withheld prior '344 art Patents As noted above, the ESRI references, with the S&N ArcPad during specific a finding of intent "'the single most reasonable inference able to be drawn from the evidence.'" Therasense, Sci., 537 F.3d at to be drawn from 1366). the 64 9 F.3d at 12 90 (quoting Star The single most reasonable inference evidence in this matter is that the reason CertusView did not submit ESRI ArcPad prior art to the PTO, or to Teja, during prosecution of the '204 and '344 Patents was because it believed the ESRI ArcPad software to be incompatible with its e-Sketch inventions. CertusView reviewed the ESRI software and determined that it was "too big and too expensive" to use with e-Sketch, which led it to conclude that ESRI was not 74 material or relevant to its e-Sketch inventions. learning of specific ESRI prior art references, Teja submitted those references to the during caution," Patents, to prosecution PTO, the upon CertusView and "in an abundance of '359, '341, and '001 further belying any suggestion that CertusView intended deceive the PTO. references, lending references, and Thus, of However, Each credence the ESRI Patent to issued CertusView's ArcPad software, over belief were not the ESRI that such material. S&N has not demonstrated that CertusView withheld material ESRI prior art during prosecution of the '204 and '344 Patents with the specific intent to deceive the PTO. S&N has attempted to prove CertusView's intent to deceive the PTO by arguing that CertusView's misconduct during discovery regarding the MIR (which includes descriptions of both ESRI and TelDig products) intent, because supports there is a an the litigation misconduct "strong "unmistakable" regarding withholding of material prior art, the PTO. argument, Defs.' S&N Post-Trial relies on a Br. [hereinafter district court's inequitable conduct. that a connection 14. between In support of decision "Ohio Willow Wood finding deceptive described in the MIR, at recent of the MIR and the alleged Circuit in the Ohio Willow Wood case, 2016) inference" from the patent affirming applicant its Federal 813 F.3d 1350 (Fed. (2016)"], from Cir. the committed However, the Ohio Willow Wood applicant's 75 conduct differs such applicant from the conduct at issue had a duty in this case, because to submit specific documents, which discussed prior art, to the PTO during patent reexamination as such documents could correct his counsel's misrepresentation on a key point of contention during such reexamination, because the applicant withheld such documents, and because "had no explanation for his failure to present to the PTO. Id. at 135 9-60. CertusView, the applicant [such documents]" however, did not have a duty to submit the MIR to the PTO22 and did not withhold the information contained in the MIR from the PTO with knowledge of its materiality. culled through products, counsel Instead, the approximately identified and the the evidence reflects that CertusView in PTO the MIR information fifty and companies, provided regarding to such and its their patent companies and products that it believed to be relevant and material to the e- Sketch inventions. information interactions incorrect. in CertusView disregarded the ESRI and TelDig the with MIR ESRI because and TelDig, it believed, that such based on its information was Thus, while CertusView's misconduct during discovery 22 CertusView did not have a duty to submit the MIR to the PTO because it is not material prior art. Instead, the MIR was a confidential "draft" document, created after the priority dates of the Patents-inSuit, including market their products, both inventions. See infra the MIR was not prior research on approximately fifty companies and material and non-material to the e-Sketch Sect. VII.A.2.a. Further, S&N concedes that art, Trial Tr. Vol. 5B at 1158:9-11, instead referring to such document as a Post-Trial Rebuttal Br. at "compendium of prior 11. 76 art," Defs.' is worthy of condemnation and sanction,23 such misconduct does not evidence the specific intent to deceive the PTO. For ArcPad these reasons, software Patents, or that is S&N has but-for not demonstrated material such software was to the that the '204 ESRI and '344 withheld during prosecution of the '204 and '344 Patents with the specific intent to deceive the PTO. Therefore, demonstrated that the Court CertusView concludes committed that S&N has inequitable not conduct related to the ESRI ArcPad software. 2. TelDig Utility Suite and TelDig Mobile S&N asserts that committed inequitable art TelDig the Nielson, conduct Mobile Patents-in-Suit.24 by Chambers, failing software Teja, to during and Farr as prior disclose prosecution of the S&N asserts that the TelDig Mobile software is material prior art because such product predated the priority dates of "essential" 23 Indeed, the Patents-in-Suit and "salient" sanctions were and claim already is capable limitations imposed litigation misconduct on September 1, 2015. on of of meeting the CertusView an e-Sketch for its ECF No. 364. 24 The Court notes that S&N appears to have abandoned its argument that CertusView intentionally during prosecution of the withheld the TelDig Patents-in-Suit. At Utility trial, Suite product S&N failed to introduce evidence of the TelDig Utility Suite product's capabilities or use, much less any documentary evidence regarding such product. Further, S&N's Post-Trial brief does not address the TelDig Utility Suite product, discussing only the TelDig Mobile product. Therefore, as it has no evidence regarding the TelDig Utility Suite product to consider, the Court cannot find that CertusView committed inequitable conduct by intentionally withholding the TelDig Utility Suite product from the PTO during prosecution of the Patents-in-Suit. 77 patents, namely, the ability to electronically record physical locate marks on a digital image.25 Further, S&N asserts that Defs.' Post-Trial Br. at 6-9. Nielsen, Chambers, Farr, and Teja withheld such product during prosecution of the Patents-in-Suit with the specific intent to deceive the PTO. In response, CertusView argues that S&N failed to demonstrate that the TelDig Mobile product material. that is prior Finally, CertusView art or that such CertusView argues, withheld TelDig product was but-for S&N has not demonstrated Mobile prior art with the specific intent of deceiving the PTO regarding TelDig. The Court finds that S&N has not demonstrated, convincing evidence, that CertusView withheld by clear and material TelDig Mobile prior art with the specific intent of deceiving the PTO during prosecution of the Patents-in-Suit. First, version of the TelDig Mobile product appears and within CertusView's knowledge, such product demonstrated product, was but-for that or any to be prior art, And, withheld specific TelDig prior second, such art S&N has not TelDig Mobile reference, during prosecution of the Patents-in-Suit with the specific deceive some S&N has not demonstrated that material. CertusView while intent to the PTO. 2S At trial, the element of "marking up a digital image" was described as "essential," by Chambers, Trial Tr. Vol. 2A at 291:3-11, and Teja described the element of making a "digital representation of at least one physical locate mark" the claims," Trial Tr. Vol. as "one of the salient 2B at 379:21-380:3. 78 considerations of a. Materiality At least some version of the TelDig Mobile product is prior art to the Patents-in-Suit used by others in this country" Patents-in-Suit, 35 U.S.C. because 35 U.S.C. § 102(a) such product 16, "known or before the filing dates of the § 102(a) (Mar. was (2006) 2013)), or (current version such product was at "in public use or on sale in this country" more than one year before the Patents-in-Suit were TelDig Mobile because it is with which the A.B. Chance product Stratoflex, Cir. filed, falls id. § 102(b).26 within the "'reasonably pertinent [e-Sketch] Co., Inc. 1983)). 234 v. The F.3d was 654, (Fed. 664 Corp., '344, 713 '341, of the prior art the particular problem invention Aeroquip '359, to scope Further, involved.'" Cir. F.2d and 2000) 1530, '204 Ruiz (quoting 1535 (Fed. Patents claim priority to a parent application filed on February 12, 2008, the and '001 Patent claims priority to a parent application filed on March 13, 2007. Prior to developing products prevention, the v. locate those dates, for infrastructure TelDig was involved in intervention and damage including products that aided in and contributed to operation field. Chambers participated in a demonstration of TelDig products, including TelDig Utility Suite 26 The Court cites to a version of 35 U.S.C. § 102 that predates the America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2013), because each of the Patents-in-Suit claim priority to applications filed before the effective date of the America Invents Act, March 16, 2013, making the prior version of § 102 applicable to the Patents-in-Suit. 79 and TelDig Mobile, in 2007. Additionally, information on relevant market players TelDig Utility Suite 2008, indicating and TelDig that and products, Mobile, information the MIR sourced its including between May and June regarding the products discussed in the MIR was publicly available prior to May 2008. Further, Mobile the TelDig Mobile product, priority dates TelDig among of Mobile on 849:12; the others, was indicates being Patents-in-Suit. brochure's testified that he 2006, the brochure creation Archive. marketed While is observed such document Internet Trial that the date recorded, Vol Dymond's agreement that the of the the Zatkovich on March 12, 4B see also Trial Tr. Vol 5A at 1054:13-23 TelDig before unknown, Tr. the at 848:11- (explaining Dr. TelDig Mobile brochure was created in the 2004 timeframe) .27 While a description of the full capabilities of the TelDig Mobile prior art product was not introduced at trial, the evidence at trial indicates that such product includes some type of "drawing editor" or drawing tool. The MIR stated that TelDig Mobile had a "[u]nique, easy-to-use drag-and-drop drawing module 27 While the TelDig Mobile brochure demonstrates that some version of the TelDig Utility Suite and TelDig Mobile products, of TelDig Mobile's drawing module, are prior art and some version to the Patents-in- Suit, S&N has not demonstrated that either CertusView or its patent counsel received or reviewed such document prior to August 2, 2012. Further, the Court need not address whether the TelDig Mobile brochure is prior art because, as discussed below, prior art, it is not material. 80 even if such document is with pre-formatted icons to send a layout of the dig and locate site." MIR at 77. Additionally, by spring 2008, Chambers knew that TelDig had a drawing tool that would allow a product user to mark up a digital image to show a notification perimeter or shape.28 TelDig Trial Tr. Vol 2A at 283:19-24, 287:7-12. Mobile product brochure included a demonstrates "drawing that editor," as the Further, the TelDig evidenced by Mobile a small partial picture of such tool in the lower right-hand corner of the document. S&N, TelDig Mobile Product Brochure, DX-294. however, TelDig Mobile demonstrated product that been "blocked" See Ohio Therasense, has not demonstrated that any version of if Willow 649 Patents-in-Suit is but-for material issuance of the such product Wood F.3d at were reduced to been provided 735 1291-92) . F.3d Even the if The record information. is The unclear Court regarding notes that how to the 1345 the claims or not have PTO. (citing of the "salient" locate marks on a Chambers Chambers would at "essential" feature of electronically recording physical 28 S&N has Patents-in-Suit had (2013), because the did learned not this observe a demonstration of TelDig's drawing tool during the presentation he participated in with TelDig in 2007. Trial Tr. Vol. IB at 215:1216:10. However, Chambers received additional information regarding TelDig through CertusView's 2008 NDA and 2009 integration agreement with TelDig. 81 digital image,29 S&N has not demonstrated that the TelDig Mobile product was capable of making such electronic record. Looking specifically to S&N's anticipation evidence, S&N has not proven that the TelDig Mobile product anticipated every element and limitation of any claim in the Patents-in-Suit.30 "Invalidation on [grounds of anticipation] requires that every element and limitation of the claim was previously described in 29 The Court notes that a prior art reference disclosing an essential limitation of an invention may be material, even if a patent is not found to be invalid based on such reference or no element-by-element invalidity analysis is performed with respect to other limitations of the asserted claims. See Am. Calcar, Inc. v. Am. Honda Motor Co., 768 F.3d 1185, 1189 (Fed. Cir. 2014) (explaining that the PTO and courts employ different evidentiary standards for claim construction, thus "'even if a district court does not invalidate a claim based on a deliberately withheld reference, the reference may be material if it would have blocked patent issuance under the PTO's different evidentiary standards.'" (quoting Therasense, 649 F.3d at 1291-92)); cf. Ohio Willow Wood (2016), 813 F.3d at 1359 (affirming district court's finding that non-disclosure of letters discussing prior art because they spoke to "the dispositive issue," were material corroboration). 30 At trial, S&N appeared to be prepared to present evidence, via Zatkovich's expert testimony, that certain TelDig products were material because, if such products had been provided to the PTO during prosecution of the Patents-in-Suit, the Patents-in-Suit would not have issued on grounds of both anticipation and obviousness. Trial Tr. Vol. 4B at 846:20-847:4, 887:9-14 (discussing Zatkovich's obviousness conclusion in his expert report). However, Zatkovich only briefly discussed obviousness, testifying almost entirely regarding the TelDig Mobile product's anticipation of the e-Sketch product, or the TelDig Mobile product's ability to perform the "essential" features of the eSketch invention, and did not introduce any additional evidence regarding the obviousness conclusion that he disclosed in his expert report. Further, S&N's Post-Trial Brief does not argue that TelDig rendered e-Sketch obvious. Thus, S&N has not demonstrated that the TelDig products would have blocked issuance of the Patents-in-Suit on the basis of obviousness. See Dome Patent L. P. , 799 F.3d at 1379-80 (Fed. Cir. 2015) (discussing the legal standard for demonstrating the obviousness of a claim for the purpose of invalidating such claim); supra n.21. As such, the Court cannot find that the TelDig products are material on such a basis. 82 a single prior art reference, either expressly or inherently, so as to place a person of invention." 1082 ordinary skill Sanofi-Synthelabo v. (Fed. Cir. 2008) Apotex, (citations evidence via Zatkovich, in possession of Inc., 550 omitted). F.3d S&N its expert witness,31 Vol. 4B at insufficient 850:16-851:25. to demonstrate anticipated claim 1 of the Patents-in-Suit, version or model of TelDig could reference, meet that the TelDig TelDig Mobile the TelDig Patent, Zatkovich evidencing every receive '204 because element and that or Instead, opinion upon multiple not the that Mobile brochure, not which press could not TelDig of into CertusView Mobile claim his releases, identify product in the anticipation which CertusView evidence, did a or a singular a based entered product much less any claim of limitation Zatkovich TelDig were the Trial Zatkovich's opinion is the TelDig Mobile prior art, Patents-in-Suit. did However, 1075, presented Mobile product anticipated claim 1 of the '204 Patent.32 Tr. the not and receive the or 31 The Court notes that it has only considered Zatkovich's testimony for the purpose of determining whether the TelDig Mobile product anticipates the Patents-in-Suit, as Zatkovich did not apply the proper test for determining but-for materiality and is not qualified to determine whether issuance of the the TelDig Mobile product was Patents-in-Suit. Trial Tr. Vol. but-for material 4B at to 880:14-883:18 (discussing Zatkovich's application of the "reasonable examiner" test for materiality-a standard that predates the Therasense decision). 32 Zatkovich did not discuss at trial any specific claims within the '359, '341, '344, or '001 Patents which he argues are anticipated by the TelDig Mobile product, although certain portions of Zatkovich's expert report regarding these patents was discussed during crossexamination. 83 review until 877:4. 2012. Trial For example, Tr. Vol. 4B at 853:13-855:18, 875:11- Zatkovich relied on a TelDig press release that stated "TelDig Mobile has the unique feature of being able to and create information ticket, handle back coming useful TelDig Mobile dig when site from damages brochure, sketches to the field occurs," opine which precious the completed with in that become combination TelDig Mobile's editor was able to record locate marks on the ground. Vol. with the drawing Trial Tr. 4B at 895:12-23. [W]e know that TelDig Mobile has the ability to complete locator reports which include marked up sketches. We know that. It says that specifically in the brochure. We know that—and from that, I used this information to say it necessarily has locate marks, otherwise the[re] will not information when damages occur. to contain be precious Trial Tr. point to singular Vol a 4B specific TelDig elements and at prior 896:2-8.33 However, version TelDig art limitations of described and compare of reference, Zatkovich could not Mobile in which prior each a single e-Sketch patent such reference against art, of or the claim is any claim in the 33 The Court notes that it is skeptical of Zatkovich's interpretation of the prior art references he relied on for his anticipation opinion, particularly in light of Zatkovich's testimony that he did not possess personal knowledge of how the TelDig products operate. Trial Tr. Vol. 4B at 876:24-877:16, 879:8-880:6. However, as Zatkovich was not able to compare all elements and limitations of a single claim of the Patents-in-Suit against a singular TelDig prior art reference, the Court need not consider the efficacy of Zatkovich's partial comparison at trial. 84 Patents-in-Suit.34 Trial Tr. Vol. 4B at 897:4-901:24. did not demonstrate that Thus, S&N the TelDig Mobile product anticipated any of the claims of the Patents-in-Suit. Further, even if the Court limited its consideration of anticipation to the "essential" and "salient" claim limitations included in claim 1 of the Patents-in-Suit, that is, the ability to marks electronically image, record S&N has not possessed such demonstrate physical demonstrated that functionality. that: locate (1) the a digital the TelDig Mobile product At TelDig on trial, Mobile S&N drawing failed tool had resolution necessary to record locate marks on an image; TelDig Mobile specific product geographical mark; and (3) had the ability location data to track associated the (2) the and with to record a locate the TelDig Mobile product was capable of producing the necessary locate data in a searchable electronic record. First, S&N has not demonstrated that the TelDig Mobile drawing tool had the resolution capabilities necessary to allow a locate physical technician locate to make mark. a The digital goal of representation e-Sketch of was a to 3i Zatkovich testified that, while he could not point to a singular TelDig reference that discussed all the elements and limitations of a claim, he mapped at least one documentary reference, that he believed described some aspect of TelDig Mobile, against each limitation of a claim. Trial Tr. Vol. 4B at 888:4-22. However, as noted above, the only TelDig document in evidence, or that CertusView was aware of and reviewed, and that Zatkovich TelDig Mobile brochure. relied 85 upon for his opinions, is the electronically document locate operations of specificity," Trial Tr. Vol. "[w] ith a high 2A at 289:25-290:4, can display an image "at six inches per pixel," 4B at 783:11-18. detailed in level and e-Sketch Trial Tr. Vol. While e-Sketch's resolution capability is not the Patents-in-Suit claims of inherently the Patents-in-Suit, require a each digital image of to the be displayed with "sufficient resolution" such that a locate mark, that can be is, a small paint mark or flag, image. See [input images] '204 Patent, may be of Col. 19:48-50, sufficient recorded on PX-002 resolution such ("Generally, at an optimal elevation to be useful as a record of the locate operation."); '344 Patent, 19:58-61, '001 Col. PX-005 Patent, 7:55-58, (same); PX-004 PX-001 (same); '359 Patent, (describing inventions ground and record such locate marks device). specific Patent, Col. 7:54-56 (same); cf^ to both mark the for display on a separate Additionally, S&N's expert agreed, Court's question, provide Col. '341 in response to the that a record of a locate mark must be able to information, and a locate mark cannot be recorded on a "one mile by one mile square" basis or on a "one block by one block square" basis. Trial Tr. Vol. 4B at 856:24- 857:18; see Trial Tr. Vol. 5A at 926:14-927:11 (explaining that "in order to be reasonably useful," the accuracy of a sketch tool would need to be within "two to four feet"). 86 Evidence Mobile's large at trial, however, indicates that TelDig drawing tool has resolution sufficient to display a geographic area, several blocks or TelDig Mobile Product Brochure, DX-2 94 the TelDig Mobile "drawing editor"). testified representative products, that the of did not TelDig's sketching have the more in size. See (displaying what appears to be several square miles at "IX Zoom" Farr only in a partial photo of Further, One both Chambers and Call capabilities capability drawing across for a user tool, TelDig's to input specific utilities, tie-downs, or landmarks on a highly specific geographic area, because the drawing tool was used perimeter or shape on a large geographic area. to show a Trial Tr. Vol. 2A at 221:12-227:13; Trial Tr. Vol. 4A at 774:1-777:4; Email Re: TelDig Systems - TelDig Web Drawing Tool Integration-vl 10.doc, PX-057 (displaying an image of a three-block area in a drawing tool used for TelDig's One Call product).35 In determining whether the TelDig drawing tool possessed sufficient resolution capabilities, the Court does not consider the TelDig sketch tool screen shots provided to CertusView with the Simone Affidavit in October 2012, DX-286. First, the screen shots are undated and the tool is part of a "highly customized version of Tel[D]ig that offer[ed] special features to exceed [] contract requirements . . . ." Trial Tr. Vol. 2B at 365:7-366:18; Affidavit of Louis A. Simone, DX286. Further, upon viewing such screen shots, CertusView determined that it had never seen such information, or drawings of "this ilk," before. Trial Tr. Vol. 2B at 366:5-369:21. Thus, based on the evidence at trial, it appears that such screen shots do not accurately represent the capabilities of the TelDig drawing tool prior art, much less that CertusView was aware of such capabilities and withheld such information from the PTO. 87 At trial, TelDig Mobile resolution the Court to Zatkovich provided product allow a could user the display to only an record image with a locate that mark. is unpersuaded by Zatkovich's conclusion is uncorroborated, testimony the sufficient However, testimony because such and Zatkovich came to such opinion by inference based on a combination of multiple non-technical press releases and the TelDig Mobile brochure. 4B at 853:13-855:18, 875:11-877:4. Further, Trial Tr. Vol. Zatkovich did not participate in any demonstration of TelDig Mobile product, Trial Tr. Vol. 4B at 876:24-877:8, did not speak to or contact anyone at TelDig for information, purchase 889:2-17. or use Trial Tr. Vol. TelDig Mobile software, 4B at 879:8-880:6, or Trial at Tr. Vol. 4B Thus, S&N has not demonstrated that the TelDig Mobile drawing tool could display an image with sufficient resolution to allow for a digital representation of a physical locate mark. Second, product had geographical S&N the that not demonstrated ability location Patents-in-Suit. requires has to 1 "geographic of track as data, Claim that required both the coordinates" and or PX-003 (requiring that the "data TelDig record by '359 associated with the individual locate marks. 18:4-12, the specific certain and of '001 "location Mobile Patents data" '3 59 Patent, set the comprise[, be Col. in part,] a set of geographic points along a marking path of the at least one underground facility, 88 the set of geographic points including geographical coordinates corresponding to the at least one physical locate mark . . ."); 004 (requiring information relating the system for electronically displaying to to comprise the tool . . ."). requirements, with the ticket, by use the Mobile the locate added Chambers the testified is individual Trial Tr. geographic coordinates system that, in locate notes Vol. information the or the marking contrast marks with made to available the One Call data to the Further, drawing (latitude and longitude) locate technician 4B at 854:9-855:17. TelDig such and recorded locate location locate location data or associated unless additional the receive geographical product explained, to marking technician, electronic record. as of processor specific not with personally "a Zatkovich TelDig the '001 Patent, Col. 8:19-28, PX- tool uses provided on the locate ticket to pull up a map—not to record locate marks, less to record locate mark. the geographic Trial Tr. coordinates associated Vol. 2A at 221:5-20; Finally, both Chambers location data to track a TelDig PX-057. and Farr testified that the TelDig Call drawing tool was not able geographic with Email Re: Systems - TelDig Web Drawing Tool Integration-vl 10.doc, much One and record specific for each locate mark because sketches completed with such drawing tool were saved in PNG format, which has "no way represented." to store Trial GPS Tr. coordinates Vol. 2A 89 at for each of 221:21-222:10; the lines Trial Tr. Vol. 4A at 776:7-777:4. TelDig Mobile Thus, product had S&N has not demonstrated that the the ability to track and record specific geographical location data, as required in the '359 and '001 Patents. Third, S&N has not demonstrated that the TelDig Mobile product had the ability to create a searchable electronic record capable of recording the necessary locate operation data. inventions detailed in claim 1 of the '359, '344, The and '204 Patents each require that certain locate data be recorded in a searchable record of PX-002 a electronic a locate Patent, a '204 "searchable Patent, Col. "searchable electronic record" representation of Col. or operation." (requiring the "digital manifest 17:53-18:21, at least PX-003 one electronic 34:52-35:9, to include locate mark"); (requiring the '359 "searchable electronic record" to include a set of geographic points along a marking path, technician, property name of address, company responsible operation, and ticket (requiring the "searchable image, digital Evidence geographic timestamp, number); location representation of at '344 the least one of locate for performing locate Col. record" dig at trial demonstrated that the Patent, electronic of name to area, 17:40-18:19 include timestamp, physical locate the TelDig Mobile an and mark). product does not possess the capability to store such locate data in a single "searchable electronic record." 90 Instead, the evidence at trial indicates that the TelDig Mobile product, like the TelDig One in Call product, saved any marked up images PNG format, which is an image or graphics file format.36 As Farr testified, PNG store format is an image elements within it, [or] then data retrieve 776:7-25. such Instead, images like a PNG high level such, GPS Chambers things, to recorded." file, unable to "individual layer artifacts within [the] in a search. Trial Tr. image" and Vol. 4A at "the only underlying data you can include in [is] information called EXIF data, location for testified, "store GPS Trial Tr. the PNG picture format coordinates Vol. 2A at is for 222:2-7. which is a itself . . . ." unable, each As among of Further, other the lines PNG format is unable to "measure in pixel," making it impractical to verify the geographic locate marks or locational included in a accuracy PNG of file. digitally Thus, S&N recorded has not demonstrated that the TelDig Mobile product had the ability to create a searchable electronic record meeting the limitations of claim 1 of the '359, '344, and '204 Patents. 36 Zatkovich presented the only evidence at trial disputing the TelDig Mobile product's use of PNG format. One Call used PNG format, 4B at 872:20-873:9. Zatkovich testified that TelDig but TelDig Mobile did not. Zatkovich, however, did not Trial Tr. Vol. discuss the file mechanism by which TelDig Mobile saves marked up images, and he provided no documentary support for his assertion. Additionally, Zatkovich's reliability on this point is further undercut by his failure to use, test, or investigate the TelDig Mobile product. 91 Additionally, documents, and prosecution the Zatkovich's of other issued patents fact over that expert e-Sketch the Teja submitted report, patent TelDig to the PTO applications, references and TelDig during and such Zatkovich's report, suggests that TelDig's products are not but-for material with respect to the TelDig information, Patents-in-Suit. Having reviewed the examiner determined that such references did not prevent issuance of other e-Sketch Patents. S&N has not demonstrated which CertusView was with TelDig, that TelDig Mobile product, of is but-for material to the Patents-in-Suit. Finally, to the Therefore, aware from the MIR and its own interactions b. material such even the if the Intent TelDig Patents-in-Suit, Mobile S&N has product not was but-for demonstrated that the "'single most reasonable inference able to be drawn from the evidence,'" see Therasense, 537 F.3d at 1366), during prosecution intent to is deceive 649 F.3d at 1290 that of the the CertusView PTO. is record that CertusView knew that the material and information that from the withheld Patents-in-Suit There CertusView PTO. (quoting Star Sci., with scant the product specific evidence in the TelDig Mobile product was deliberately Rather, such the withheld evidence at such trial demonstrates that CertusView did not submit TelDig prior art to the it PTO, or pass on TelDig information 92 to Teja, because believed TelDig to be inventing products in, and concerned with, a completely different portion of the locate operation field: ticket management and One Call center software. In particular, as when Chambers was questioned by the Court, to why he did not believe that the use of TelDig's products transferred to CertusView's e-Sketch invention, he explained that he, and others at CertusView, thought TelDig products and e-Sketch were "totally different." Trial Tr. Vol. 2A at 288:2- 8. THE COURT: And so what was the distinction, the difference or the lack of transferability that caused you to believe [TelDig] was not something about which the Patent Office should be made known? THE WITNESS [Chambers] : The use case is totally different. From our perspective you've got a locator in the field who is marking not only the facility marks, they're documenting all the facility marks, but they're also documenting the type of facility. Is it an electric line? Is it a gas line? So generating the APWA color codes are the standard across the country for that. None of these tools, TelDig in particular, had any way to convey color or utility type about the facilities. And that's a major part, because there's a lot of times where, if you're digging and there's a water line or a sewer line, you can probably, if you're not doing a deep hole, you can probably work on top of that. So not having the ability to capture that information, because it was for a totally different use case, we thought made it irrelevant. THE COURT: So what was being done with the TelDig Utility Suite in its most generic and basic form was allowing somebody to indicate on a diagram or map of some sort where the dig was going to take place? THE WITNESS [Chambers]: 93 That's correct. THE COURT: And what you hoped to do with e-Sketch to place marks showing what was going on at the was site with associated information? THE WITNESS [Chambers]: That's correct. With a high level of specificity. THE COURT: And so you felt it was different because you didn' t feel that what was in the TelDig Utility Suite was a subset of what you planned to do with e-Sketch? THE WITNESS Trial Tr. Vol. suggestion deceive Court, that the Dr. 2A [Chambers]: Correct. at 289:2-290:8. CertusView PTO, upon Dymond "redlining process" possessed being also asked explained Further the which differentiated its had product by COURT: When you say that these that editing the sketches refers to a redlining process whereby the locator may use the proposed software to edit the utility maps so that the maps more accurately reflect the actual location of the underground utilities, and here now you're suggesting that you can't -- if I understand correctly, you can't use that, or it's not intended to be used for placing locate marks, the next question that comes to mind is, well, why not? Why isn't [th] is analogous? If you can't [sic] use it for redlining for utilities, why can't you use it for -- why shouldn't somebody have known that you could also use it for placing locate marks? Are you saying that the specificity is different with respect to the placing of locate marks 94 the a from what Trial Tr. Vol. sketches, to created 1058:2-1059:15. THE any intent questions TelDig the e-Sketch inventions were designed to do. at specific similar that belying 5A than with respect to correcting location of utilities on the map?1371 THE WITNESS [Dr. Dymond]: I think there's two issues, if I can answer you. I think one is, yes, I don't think that the accuracy of the data and the software are sufficient for doing two-inch paint marks. . . . I think two, what the testimony is that we heard before in that it was a .PNG file format, meaning it's a picture format, is that we can't do lines with coordinates. I think that's No. 2. So what we can do, though, is we can redline. We can put a circle around this area on the map, we can put an approximation of the line which is basically Windows Paint, if you will. It's pixelated. We can put a little line with an arrow to it and say you've got a line here we didn't know about. So it's a redline, and it says we've got a problem here and we send it back to the City of Norfolk that says there is now a sewer line here that we didn't know about, update your maps to make them more Trial Tr. accurate. Vol. 5A at 1060:12-1061:20. CertusView TelDig software employees and received confidential separate agreements with TelDig, multiple information, evidence at trial pursuant to of two which led them to conclude that TelDig was not relevant or material to The demonstrations indicates a its e-Sketch inventions. similar conclusion: that TelDig's products are concerned with a different portion of the locate operation field. It is on this basis that CertusView withheld the MIR, the discussion of TelDig within the MIR, and the product TelDig Mobile from Teja and the PTO. Thus, based 37 The Court notes that the quoted portion of the trial transcript accurately reproduces the Court's exchange with Dr. Dymond. the Court misspoke on the record. Therefore, the Court However, has here placed a sic after "can't" because the Court should have said "can." 95 upon the evidence presented at trial, and discussed above, S&N has not demonstrated that CertusView withheld TelDig information from the PTO with the specific intent to deceive the PTO. For the reasons stated while some version of Patents-in-Suit, the above, the Court concludes that, the TelDig Mobile product is prior art to S&N has not demonstrated that such product is but-for material to the Patents-in-Suit or that such product was withheld during prosecution of the Patents-in-Suit with the specific intent demonstrated to deceive that the CertusView PTO. As committed such, S&N has inequitable not conduct related to the TelDig Mobile product. B. Misrepresentation of Inventorship 1. S&N asserts committed that inequitable Farr Nielsen, conduct by Chambers, submitting Teja, to and PTO the Farr false Inventor Declarations for the '204 and '341 Patents naming Farr as an inventor on the such '204 and Inventor Declarations are '341 Patents. false because S&N asserts no witness that "could point with conviction to any contributions that would justify naming [Farr] as Defs.' Post-Trial an inventor" Brief at on 25. the S&N '204 and '341 further Patents. asserts that submitting such false Inventor Declarations was necessarily butfor material and such submission was done with intent to deceive the PTO. In response, CertusView 96 argues, first, Farr is an inventor of to prove the that '204 and the CertusView argues, S&N with has not the Inventor inventorship.38 Declarations that intent are false. such Declarations to deceive failed Second, the PTO were submitted regarding Farr's The Court will address each argument in turn. For the following reasons, demonstrated and that S&N has even if the Inventor Declarations were false, demonstrated specific '341 Patents, that Nielsen, the Court finds that S&N has not Chambers, false Inventor Declarations for the is a joint inventor, Teja, or '204 and Farr submitted '341 Patents. with Nielsen and Chambers, of the Farr '204 and '341 Patents because he helped conceptualize and invent two of e-Sketch's marking predecessor components, wand and Virtual conceptualize and execute WhiteLine the CertusView's products, "marriage" WhiteLine and e-Sketch products. electronic and he helped between the Virtual The electronic marking wand product is used by locate operators to capture the color of the paint sprayed on the ground during a locate operation and the precise location of such paint on the ground. As noted above, Farr is an undisputed inventor of the '001 Patent, which relates to the electronic marking wand, marking wand patent, the and the original GPS enabled '105 Patent. The Virtual WhiteLine CertusView does not appear to dispute that submission of a false Inventor Declaration satisfies the but-for materiality standard necessary for proof of an inequitable conduct claim. As such, the Court does not address the materiality of the Inventor Declarations for the '204 and '341 Patents. 97 product is used precision, high the by excavators area where resolution aerial above, Farr is the to show, with they intend to image of a undisputed ticket inventor a high dig by level of marking up location. of the As '117 related to CertusView's Virtual WhiteLine technology, a noted Patent, a priority patent claimed by both the '204 and '341 Patents. The '204 and Patent, Patent the '204 Patent. those which '341 The figures, Farr is a Patent and relationship between the '117 the Patent, claims from '117 and drawn the the '204 Patent, 18-34 columns base Similarly, '117 '117 18-34 from the the Patent the '117 '204 a '204 '204 Patent, and '204 and the from (3) In the certain options '204 '117 Patent, claims of describing from of Patent. continuation-in-part certain the conceptual came different in of Patent. Patent, Patent, '117 Patent—all the '204 included figures 9-16 from the the '117 the reused as the descriptions of and regarding were Patent, the of Patent, images, '341 from Patent of of continuation-in-part create—demonstrating 9-16 were from possible figures (2) figures, a certain claims to (1) is '204 Patent borrowed figures, helped particular, continuation-in-part of the columns both the Patents. Farr also helped conceptualize and implement the "marriage" of the Virtual WhiteLine others recognized the and e-Sketch inventions. Farr and direct relationship between documentation 98 created by an excavator in the Virtual WhiteLine product and its communication to a locator similarities between the via the integration of e-Sketch product and two products and their "use[] Trial Tr. Vol. 4A at 760:10-18. to the the In particular, Virtual saw cases." Farr contributed WhiteLine invention and e- Sketch by recognizing that the ability to vary the base image, on which product, an excavator draw using the could be transferred to e-Sketch, draw on a series searchable electronic 473:10 might of (explaining images and save record. Teja's '204 and '341 Patents). See view of Virtual allowing a locator to such altered Trial Tr. Farr's Additionally, WhiteLine Vol. images 3A at as a 470:18- contributions to the Farr contributed to both Virtual WhiteLine and e-Sketch inventions regarding the ability to import data from the electronic marking wand. integration of the Virtual WhiteLine product Further, the and e-Sketch was largely coordinated by "Project Trinity," of which Farr was the "team lead." In November 2008, the implemented e-Sketch in Lawrenceville, e-Sketch product for use. the Project Georgia, In December 2008, team implemented e-Sketch in Marietta, 2009, Project Trinity team team rolling out the the Project Trinity Georgia, implemented Trinity and, in February e-Sketch in Forest Park, Georgia. Finally, contributed to the the evidence specific at trial limitations 99 demonstrated and claims of that the Farr '204 and '341 inventive Patents. process With was respect a to the "collaborative the '204 every claim in the made input specific images, Patent the '204 Patent. which appears in each independent and is, '204 Patent. therefore, Farr inventive contributions, to 6, claims of Farr's Farr explained that he contributed the "at least of claim and Specifically, limitation, every effort," the may claim in Patent, contributions one input image" appear '204 7, 8, 10, a limitation on also explained that he regarding 12, the and 14 of specific the Patent: In claim 8, my contribution is to the different types of maps generally, but a topographical map in specific, which stemmed from our work that we had done with Virtual WhiteLine and with another product of mine called the OmniLoom which dealt with facility records. We saw a need to have different types of maps, and so I individually contributed the topographical map to claim 8. In claim 10, the facility map came directly from that work with a product called OmniLoom which dealt with facility records where we saw a benefit in adding sketching on top of the facility records themselves as a point of reference. So I contributed to claim 10. In claim 12, where you see the at least one input image that I mentioned earlier, I contributed to the architectural construction and engineering drawings that stemmed from work with Virtual WhiteLine where we worked with excavators who worked off of those types of maps, and so I have individual contribution there. And in claim 14, I have individual contribution in creating a grid system where you don't have a base map yet the grid system can have a foundation to the world, to the real world location by having a geographic representation of that grid. . . . 100 '204 [I]n claim 6 it says, "The method of claim 1 wherein the at least one input image comprised of a scan or converted manual freehand sketch of the geographic area." I contributed to the at least one input as I had mentioned across collaborative other claims, contribution to as the well as converted I had manual freehand sketch. And in claim 7 it's carrying from claim 1, says, "One map of the geographic area, which is generally the map of the that, area." Trial Tr. Vol. in-part of the collaborative included therefore, in a to the '341 Patent, '204 Patent, contributed the Farr had contribution "at all contributions Farr explained that he specifically image" of the the that to which is a continuation- least one digital contribution explained claims claims to he 8, of each also 13, '341 claim of made and 21 limitation, Patent the specific of the is, Patent. inventive '341 Patent, Regarding Farr contributed to "using the location identification unit which includes that alternative triangulation ... to select at display." Farr which and '341 related to his work with the electronic marking wand. claim 8, to 3B at 675:14-677:11. With respect is I as well. location capability, least one Trial Tr. Vol 4A at 767:16-21. explained that his contribution was digital the image for Regarding claim 13, based on his work developing the electronic marking wand, the "GPS-enabled marking device" mentioned 768:6. Finally, in claim 13. Trial Tr. Vol. 4A at 767:22- claim 21 is the apparatus designed to perform 101 the inventive method discussed in claim 8. Farr contributed to using discussed in claim 8, the Regarding claim 21, "location identification unit," and to the apparatus used to select the one digital image specifically discussed in claim 21. Vol Trial Tr. 4A at 768:7-13. Thus, considering Farr's wand and '117 Patent, Virtual Virtual WhiteLine Farr's WhiteLine contributions and to as an to contributions dimensions state of and Farr '204 '341 made and full a '341 significant integrating the and Farr's Patents, specific the sufficiently Patents. when invention, to well-known that regarding because the his Farr's incomplete. appeared and the and products, of Inventor '204 and '341 Patents did not falsely name added argues testimony times, the inventorship Further, measured and significant against such concepts Farr's the contributions and the current not credit Farr's the '204 the art. S&N Patents were of improved on the his conceptualizing '204 inventor. contribution with the electronic marking products, e-Sketch the Declarations for the Farr work work confused Defs.' and Court should contributions testimony to was at ultimately the Court found his testimony, other witness, contradictory Post-Trial Br. at 25-26. uncertain times and, '341 at While Farr during trial, uncontradicted by any regarding his contributions to the 102 and '204 and '341 Patents to be Additionally, the consistent Court and notes, sufficiently the apparent credible. miscommunication between CertusView's counsel and Farr regarding Farr's inventive contributions to the '204 and '341 Patents, rather than intent to mislead the Court, appears to be the cause of initial regarding specific confusing testimony the an Farr's claims to which he contributed. Second, '204 and even if Farr '341 Patents, was misnamed as an inventor on the S&N has not demonstrated that misnaming Farr as an inventor was done with the specific intent to deceive the PTO. The evidence through Nielsen, determining at Chambers, inventorship trial demonstrated that CertusView, Crawford, and Teja, had a process for for Patents-in-Suit, the including tracking idea submissions and software development and a claimby- claim determination of who should be named as an inventor on a patent. Trial 610:17-611:6. regarding Tr. Vol. CertusView inventorship, 3A at was and reflect the advice of counsel. Farr, or CertusView, 459:16-460:22; also advised the Inventorship Further, by Trial patent Tr. Vol. counsel Declarations it does not appear that had a motive for deceiving the PTO because Farr did not financially benefit from being named as an inventor of the '204 and S&N argues and '341 Patents. that misnaming Farr as an inventor of the '204 '341 Patents is analogous to the case of Advanced Magnetic 103 Closures, Inc. v. Rome Fastener Corp., 607 F.3d 817 (Fed. Cir. 2010), in which the Federal Circuit held that a patent applicant committed inequitable conduct when he invented As Advanced a device. the predates the Therasense decision, and, falsely claimed that he Magnetic thus, limited applicability in the Court to disagree with (describing the standards). S&N's Following whether the instant pre-Therasense the applicant's See at and decision, in Advanced leads id. materiality Therasense conduct the opinion is which case, assessment. case relies on a lower standard for evaluating materiality and intent, of Closures it 829-30 intent is Magnetic the unclear Closures would satisfy the heightened standard for materiality and intent necessary to prove a claim of inequitable conduct. Further, were even applicable, distinguishable Federal the the from Circuit the applicant, if Advanced applicant's the present Magnetic actions in facts. affirmed the district Closures that case are example, For court's decision the determination that the only inventor named in the patent, evidenced deceptive intent because (1) Mr. Bauer was either 'unable or articulate [his] claimed invention' deposition, directing opposing counsel patent; (2) [] Mr. Bauer offered unwilling to during his to read the difficult-to-follow explanations of the magnetic strength experiments he performed when he claimed to have conceived of the invention; (3) [] Mr. Bauer submitted multiple sketches admit of were his invention that 'reconstructed' 104 he was after forced [the to later defendant] challenged their authenticity; (4) [] Mr. Bauer could not offer any 'scientific or technical explanation' of his own patent, even though the 'only allegedly patentable' claim is based on scientific principles of magnetism; and (5) [] Mr. Bauer offered an evasive, argumentative, and at times contradictory testimony on his status as Id. at 830 inventor. (quoting Advanced Magnetic Fastener Corp., No. July 17, (unpublished)). 2008) explained, 98cv7766, and demonstrated, electronic marking 2008 WL Closures, 2787981, By contrast, Inc. *7-9 v. Rome (S.D.N.Y. Farr ultimately his contributions to CertusView's wand, Virtual WhiteLine, and e-Sketch technologies and the relationship between such technologies and the patents claiming such inventions, including the Patents-inSuit. at had Further, the Court notes that Farr's inventorship was not issue at the not yet alleged inventor of the credit during "to Trial Tr. 3B to the Vol deposition in August 2014, Farr to his list Thus, specific [his] 667:17-668:8 difference improperly deposition articulate at was '341 Patents. inability unwillingness as that '204 and Farr's contributed time of his between his named claimed an to an which inability invention." (detailing Farr's deposition as the Court does not claims as as S&N he or See explanation testimony and his trial testimony). The CertusView and Court finds submitted '341 Patents. that false Further, S&N has Inventor not demonstrated the '204 S&N has not demonstrated that, even 105 Declarations for that if CertusView had submitted false Inventor Declarations, such Declarations were submitted with the specific intent to deceive the PTO. Therefore, S&N has conduct committed inequitable not demonstrated regarding that Farr's CertusView inventorship of the '204 and '341 Patents.39 2. S&N asserts committed inequitable Inventor omitting Patents for the of S&N the submission response, he as by the an '359, was was CertusView Block was and an that known that with argues, of the as first, Inventor the '359, false and '341 patents. S&N the '204, source such false material S&N '344, Declarations and code including Post-Trial deceive that PTO '344, e-Sketch, to Farr '204, '359, but-for and the such Defs.' intent inventor of the '344, submitting necessarily done to the majority of invention. asserts Teja, submitting inventor wrote product e-Sketch further Declarations Patents Block because software features that for Chambers, that Block was an inventor of '341 24. Nielsen, conduct Declarations Patents, asserts that Block Brief PTO. failed '204, submitted at Inventor and the key such In to prove and with '341 the 39 CertusView further asserts that, even if inventorship was incorrect, the proper remedy is correction of such error pursuant to 35 U.S.C. § 256—not a finding of inequitable conduct. However, as the Court has determined that Farr was not incorrectly named as an inventor of the '204 and '341 Patents, the Court argument on this point. 106 need not address CertusView's '359, '344, '204, CertusView argues, S&N has with not the and '341 Patents were false. Second, even if the Inventor Declarations were false, demonstrated specific that intent such Declarations to deceive were submitted the PTO regarding Block's has not demonstrated inventorship.40 First, Nielsen, the Court Chambers, Declarations for finds Teja, the omitting Block as Block development invention. conception not, the Farr the the submitted '344, '204, S&N has '359, '344, portions in Instead, of S&N an inventor. developed does or '359, Block is an inventor of While that of evidence e-Sketch and not '204, '341 and trial invention took Patents, that '341 Patents. software, constitute at Inventor demonstrated e-Sketch this matter, false that such conception or demonstrates place before that Block began work at Dycom and CertusView. As noted above, 2006, during Locator the 2007 participants conception of the e-Sketch product began in work of Nielsen program. met for The the and Chambers Virtual first time, on Locator Virtual 2007 project and Chambers and Nielsen presented their research to the group, the in October 2006. During that meeting, Chambers recorded ideas related to the original e- 40 As discussed above, submission of a false materiality standard, of the Inventor CertusView does not appear to dispute Inventor Declaration satisfies the that but-for and the Court does not address the materiality Declarations for Patents. 107 the '359, '344, '204, and '341 Sketch inventions by taking notes of photographing a white-board session. trial, the notes correspond Patents to and and the elements describe manifest." records the Conception of of of the proceedings and As Chambers described at that claim concept the October 1 of a of "searchable e-Sketch the 2006 meeting '359 and '344 electronic invention continued through a series of meetings regarding the Virtual Locator 2007 project, discussions with an attorney regarding electronic marking wand and e-Sketch inventions, the e-Sketch concept through pilot Maryland. Nielsen and Chambers conception of discovered a ground with the e-Sketch means by explained product in they could which specificity programs and accuracy in April Florida and they completed 2007, display a the and testing of that using patenting when paint Garmin on they the running watch and Google Earth map. Block began work as a contract employee with Dycom and CertusView in September 2007, almost a year after conception of the e-Sketch invention began. Block added to, and Chambers or modified, between Block was asked, Sketch product prepared a October the concepts 2006 and of employment. requirements In and implementation of the e-Sketch invention, 108 that detailed by Nielsen April by Chambers and Nielsen, during his set S&N presented no evidence 2007. Instead, to implement the eparticular, Chambers specifications for see Dycom Industries, Inc. System Requirements Specification for Locating eSketch, DX- 041, the and Block followed those requirements. During beginning of his work with Dycom, Block explained that he had to overcome his lack of familiarity with the locate order to perform the tasks assigned to him. 48:25-49:16. electronic Block further explained that manifest, manifest, and presented to drawing him by 107:17-109:19. on any incorporating of on Nielsen. Finally, the such a an Block Depo. the in Block Depo. image the Tr. at of an into field, at in Tr. concepts satellite image industry the were 46:12-48:2, Block does not claim to be an inventor Patents-in-Suit, and no witness presented testimony that Block was an inventor on any claim of the '359, '344, '204, or '341 Patents. Block, however, did provide inventive contributions on other CertusView e-Sketch patents and he is named as an inventor on such patents, namely the '980 Patent which claims inventions related to revision layers. Second, the Court finds named as an inventor of the S&N has not demonstrated that even if Block should have been '359, that '344, '204, or '341 Patents, Block was omitted as with the specific intent of deceiving the PTO. no evidence inventor. an inventor S&N has provided that CertusView intentionally omitted Block To the contrary, as explained above, as an CertusView and Teja had a well-established process for accurately determining and representing patent inventorship. 109 Additionally, CertusView did not this have a motive matter. omitting named Neither Block as an to misrepresent as an inventor Block nor Block's CertusView inventor, and in patents, other inventorship in Block, benefitted when did he not was from later receive any financial benefit from his status as an inventor. Therefore, S&N submitted false or '341 if CertusView has not demonstrated Inventor Declarations Patents. Further, had S&N has submitted false for not the that '359, demonstrated CertusView '344, '204, even Declarations, Inventor that, such Declarations were submitted with the specific intent to deceive the PTO. As such, S&N has not demonstrated that committed inequitable conduct regarding Block's CertusView inventorship of the '359, '344, '204, or '341 Patents.41 C. Material Misrepresentation of Prior Art Finally, S&N asserts that Nielsen, Chambers, and Teja made material misrepresentations to the PTO concerning the Sawyer and Tucker references Specifically, S&N during argues prosecution that Teja of made the a '344 Patent. material factual misrepresentation to the PTO in the February 13, 2012 Amendment and Reply by stating that the concepts of a "locate operation" 41 CertusView also asserts that, even if inventorship was incorrect, the proper remedy is correction of such error pursuant to 35 U.S.C. § 256—not a finding of inequitable conduct. However, as the Court has determined that Block was not incorrectly omitted as an inventor of the '359, '344, '204, or '341 Patents, CertusView's argument on this point. 110 the Court need not address and "locate ticket" were "completely absent from the cited prior art references." First, In response, CertusView inequitable conduct argument[s] that argues teachings fact, of that allegations the Tucker but CertusView raises three defenses. amended and rather S&N on this claims Sawyer not to issue were were good-faith failed prove because patentable its "Teja's over the misrepresentations arguments for of patentability distinguishing the amended claims over the teaching of the prior art." CertusView's Post-Trial Br., 107, ECF No. 516. Second, CertusView argues that S&N has not demonstrated that the alleged misstatements regarding Tucker and Sawyer were but-for material. Finally, such the CertusView statements PTO. The argues were made Court that S&N with will has the address not demonstrated specific each intent of to that deceive CertusView's three defenses in turn. First, the Court finds that S&N has not Teja's statements in the February 13, 2012 are that factual the misrepresentations. concepts of a "locate Instead, operation" demonstrated that Amendment and Reply Teja's and statements, "locate ticket" are "completely absent from the cited prior art references," are a reasonable, albeit somewhat inartful, attempt to distinguish the teachings of Tucker and Sawyer from the claims of the '344 Patent. with As advocating, explained in good above, faith, a "[t]here reasonable 111 is nothing wrong interpretation of the teachings of the prior art." (citing Rothman, 556 Apotex Inc., F.3d at particularly in light of the Nielsen and Teja on 763 F.3d at 1361-62 1328-29). Teja's statements, examiner interview conducted by December 6, 2011, discussing information presented in the February 13, Reply, [such] argument[s] in favor Teja is "free to of patentability fear of committing inequitable conduct." same 2012 Amendment and are examples of "attorney argument." present the Rothman, without 556 F.3d at 1329 (citing Young, 492 F.3d at 1348). Second, the Court finds that even if Teja's statements were misrepresentations, statements Patent. '344 were Instead, Patent S&N but-for has not material demonstrated to the issuance that of the such '344 the Examiner's Notice of Allowability for the indicates that the '344 Patent issued distinct from the alleged misrepresentations. for reasons Specifically, the Notice of Allowability stated that none of the prior art taught (1) the conventional locate digital representation applied to locate operation, the "electronically searchable of ground" and transmit electronic operation; at by least the (2) "at physical technician locate History, 29, PX-234. The 112 Notice mark the to store operation performance of the locate operation is verifiable." File locate one during electronically the least interface communication and/or of one locate the record and of so the that '344 Patent Allowability demonstrates that it is the '344 Patent's additions to the prior art locate operation that caused the '344 Patent to be allowed. Further, the record of Examiner prior references, art, which Bitar access including repeatedly locate operations. Examiner had to, the and Tucker, discussed issue two Patent. The patent prosecution file thoroughly whether were reviewed rejections such, the concepts the Examiner of "locate "completely absent" alleged L.L.C at separate As *20 misstatements v. the Examiner's Tex. of their Feb. capable 21, No. or Evans prior and in of art Sawyer the '344 determining "locate See 4:09cvl827, 2012) and ticket" and according weight. the WesternGeco 2012 WL 567430, (explaining reliance on the independent claims operation" proper full in addition to others, the was a indicates that Tucker from the prior art ION Geophysical Corp., (S.D. Sawyer, conventional references and relied on such references, to considered, prior art that in "[t]he this case makes clear that any alleged misrepresentation by Roebuck cannot have been the but-for cause of the patent's issuance"). Third, the Court finds that even if Teja's statements were material misrepresentations, statements were PTO. noted As made evidence standard, single most with above, the reasonable S&N has not demonstrated that such the "[t]o specific meet the intent clear to deceive and convincing specific intent to deceive must be inference 113 able to be drawn the from 'the the evidence.'" 537 most F.3d at 1366). reasonable Teja made PTO. made Therasense, the S&N has inference not to be the Court finds alleged reasonable F.3d at drawn argument, (quoting Star Sci. , in this that the matter single is that to mislead and deceive it to be more misstatements attorney 1290 demonstrated alleged misstatements Instead, the 649 for the the likely that Teja purpose distinguishing of the making Tucker a and Sawyer references from the claims of the '344 Patent. Therefore, the Tucker the Court finds that Teja's statements regarding and Sawyer references in the Amendment and Reply during prosecution of not misrepresentations, "reasonable Apotex 1328-29). 763 F.3d at Further, the '344 but are attorney argument, interpretation of Inc., February the teachings 1361-62 of 2012 Patent, are advocating a the prior art." (citing Rothman, such statements are 13, 556 F.3d at not but-for material to the issuance of the '344 Patent and they were not made with the specific intent demonstrated to that deceive the CertusView PTO. As committed such, S&N inequitable has not conduct related to Teja's statements regarding Tucker and Sawyer. VIII. For the Defendant's Rule reasons 52(c) CONCLUSION discussed above, Motion is DENIED, Plaintiff/Counter- and Plaintiff/Counter- Defendant's remaining Motion in Limine, ECF No. Further, Motion Plaintiff/Counter-Defendant's 114 436, to is DENIED. Enforce the Court's Memorandum Order, ECF Plaintiff/Counter-Defendant's Plaintiffs' With judgment Second for Answer discussed above, entered in 529, favor inequitable and GRANTED Defendants/Counter- conduct, Counterclaim, and are OVERRULED. ECF such counterclaim the five grounds alleged. be ECF No. to is Defendants/Counter-Plaintiffs' counterclaim Amended reasons to 4 94, Objections Post-Trial Brief, respect No. is declaratory asserted No. 336, DENIED on in its for the each of It is therefore ORDERED that judgment of Plaintiff/Counter-Defendant Defendants/Counter-Plaintiffs' as to declaratory judgment counterclaim for inequitable conduct. The Order to IT Clerk is REQUESTED all IS SO counsel of to send a copy of this Opinion and record. ORDERED. 'imi&y /S/ Mark UNITED Norfolk, Virginia August <^w , 2016 115 STATES S. Davis DISTRICT JUDGE

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