IPDEV Co. v. Ameranth, Inc.

Filing 57

ORDER Denying Ameranth's Motion for Summary Adjudication of Unenforceability of '449 Patent Based of Inequitable Conduct in Prosecution of '739 Patent and '645 Continuation Application. Signed by Judge Dana M. Sabraw on 10/5/2017.(aef)

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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 IPDEV CO., Case No.: 14cv1303 DMS (WVG) Plaintiff, 12 13 v. 14 ORDER DENYING AMERANTH'S MOTION FOR SUMMARY ADJUDICATION OF UNENFORCEABILITY OF '449 PATENT BASED ON INEQUITABLE CONDUCT IN PROSECUTION OF '739 PATENT AND '645 CONTINUATION APPLICATION AMERANTH, INC., Defendant. 15 16 17 AMERANTH, INC., 18 Counter Claimant, 19 v. 20 IPDEV CO., 21 Counter Defendant. 22 23 This interference action is part of the consolidated proceedings between Ameranth 24 and a number of different businesses regarding Ameranth’s United States Patent Number 25 8,146,077 (“the ‘077 Patent”). With the exception of this case, all of the cases in this 26 consolidated proceeding were filed by Ameranth and allege infringement of the ‘077 27 Patent. The present case was filed by IPDEV Co., and alleges a claim for interference 28 between the ‘077 Patent and IPDEV’s United States Patent Number 8,738,449 (“the ‘449 1 14cv1303 DMS (WVG) 1 Patent”). IPDEV seeks a declaration that the ‘449 Patent has priority of invention over the 2 ‘077 Patent, and that the interfering claims of the ‘077 Patent are invalid. 3 In the present motion, Ameranth asserts IPDEV committed inequitable conduct in 4 the prosecution of another of its patents, United States Patent Number 5,991,739 (“the ‘739 5 Patent”), and an application for another patent, the ‘645 Application, therefore the ‘449 6 Patent is unenforceable. IPDEV filed an opposition to the motion, and Ameranth filed a 7 reply. For the following reasons, the Court denies the motion. 8 I. 9 BACKGROUND 10 In 1996, Bryan Cupps and Tim Glass formed a company called CyberSlice, Inc. 11 (Notice of Lodgment in Supp. of Mot., Ex. 19 at 754.1) According to Mr. Cupps, 12 “CyberSlice was formed to develop and operate a new online ordering system that would 13 allow customers using any type of computing device to order pizza, and eventually other 14 types of food, via the internet.” (Id.) 15 In or around September 1996, Mr. Glass contacted various pizza restaurants in the 16 Boston, New York, San Francisco and Seattle areas about participating in the CyberSlice 17 system. (Id.) Interested restaurants “were provided with a ‘CyberSlice Registration 18 Packet.’” (Notice of Lodgment in Supp. of Mot., Ex. 14 at 432.) The packet contained: 19 A cover letter to the restaurant, asking the restaurant to pre-register for CyberSlice, to shade in its delivery area on the enclosed map, fill out an enclosed merchant form, sign an enclosed merchant agreement, enclose a restaurant menu, provide a restaurant logo, fill out an internet special form, and return the completed documents to CyberSlice. 20 21 22 23 (Id.) By December 1, 1996, CyberSlice had enrolled nearly 1,000 pizza restaurants in its 24 online ordering system. (Notice of Lodgment in Supp. of Mot., Ex. 5 at 71.) 25 /// 26 27 28 1 The page number cited refers to the bates number on the lower right corner of the exhibit. 2 14cv1303 DMS (WVG) 1 Although CyberSlice launched its online ordering website on December 1, 1996, 2 Mr. Cupps, who was “principally responsible for designing and implementing the technical 3 aspects of the CyberSlice system[,]” states “the system was not fully functional and did not 4 work properly at that time.” (Notice of Lodgment in Supp. of Mot., Ex. 19 at 754.) In fact, 5 Mr. Cupps states “the system could not process any orders until early 1997.” (Id.) 6 On November 24, 1997, Messrs. Cupps and Glass filed an application for a United 7 States Patent, Application Number 08/976,793 (“the ‘793 Application”), which application 8 issued on November 23, 1999, as the ‘739 Patent. The ‘739 Patent is titled, “Internet Online 9 Order Method and Apparatus.” (Notice of Lodgment in Supp. of Mot., Ex. 3 at 38.) The 10 Abstract describes: 11 A system and method for providing an online ordering machine that manages the distribution of home delivered products over a distributed computer system …. The distributed computer system includes a group of customers connected to client computers and at least one server computer system that executes the online ordering machine. The online ordering machine provides the customers with product information from various vendors whose delivery range is within the customer’s location or with product information from vendors having take out service within a specified range from the customer’s location. The vendor’s and customer’s location is associated with a geocode representing the latitude and longitude coordinates of the location. The search for the vendors servicing the customer’s location is done using the geocodes. The online ordering machine accepts orders from the customer for a particular product from a selected vendor. The order is converted into voice instructions which are transmitted to the vendor through a telephone call. The vendor receives the telephonic order and responds to voice-prompted instructions used to confirm the order. 12 13 14 15 16 17 18 19 20 21 22 (Id.) 23 While the ‘793 Application was pending, Messrs. Cupps and Glass filed the ‘645 24 Application, which was filed as a continuation of the ‘793 Application. During the 25 prosecution of the ‘645 Application, Messrs. Cupps and Glass disclosed to the PTO that in 26 September 1996 they began contacting pizza restaurants about participating in the 27 CyberSlice system. (Notice of Lodgment in Supp. of Mot., Ex. 14.) They also provided 28 the PTO with a copy of the CyberSlice Registration Packet. (Notice of Lodgment in Supp. 3 14cv1303 DMS (WVG) 1 of Mot., Ex. 14, Ex. 15 at 480-82.) It appears the ‘645 Application is still pending before 2 the PTO. 3 While the ‘645 Application was pending, Messrs. Cupps and Glass filed another 4 patent application as a continuation of the ‘793 Application. That Application issued on 5 May 27, 2014, as the ‘449 Patent. 6 II. 7 DISCUSSION 8 Ameranth moves for summary adjudication that the ‘449 Patent is unenforceable due 9 to inequitable conduct during the prosecution of the ‘739 Patent and the ‘645 Application. 10 IPDEV argues Ameranth has failed to meet its burden to show inequitable conduct, and its 11 request for summary adjudication should be denied.2 12 A. Summary Judgment 13 “Summary judgment is appropriate when no genuine issue of material fact exists and 14 the moving party is entitled to judgment as a matter of law.” IPXL Holdings, L.L.C. v. 15 Amazon.com, Inc., 430 F.3d 1377, 1380 (Fed. Cir. 2005) (citing Fed. R. Civ. P. 56(c)). “A 16 material issue of fact is one that affects the outcome of the litigation and requires a trial to 17 resolve the parties’ differing versions of the truth.” S.E.C. v. Seaboard Corp., 677 F.2d 18 1301, 1306 (9th Cir. 1982). 19 The moving party has the initial burden of demonstrating that summary judgment is 20 proper. Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970). To meet this burden, the 21 22 23 24 25 26 27 28 2 IPDEV also raises two additional arguments, namely, that the Court should not consider this motion because it raises inequitable conduct theories not disclosed in Ameranth’s Counterclaim, and that any inequitable conduct that occurred during prosecution of the ‘739 Patent and the ‘645 Application is insufficient to find the ‘449 Patent unenforceable. Although the Court agrees with IPDEV that the facts underlying this motion were not set out in Ameranth’s Counterclaim, IPDEV has not shown it suffered any undue prejudice in responding to this motion. Therefore, the Court will consider the present motion. As to IPDEV’s second argument, the Court declines to address it here in light of the discussion below. 4 14cv1303 DMS (WVG) 1 moving party must identify the pleadings, depositions, affidavits, or other evidence that it 2 “believes demonstrates the absence of a genuine issue of material fact.” Celotex Corp. v. 3 Catrett, 477 U.S. 317, 323 (1986). If the moving party satisfies this initial burden, then the 4 burden shifts to the opposing party to show that summary judgment is not appropriate. Id. 5 at 324. The opposing party’s evidence is to be believed, and all justifiable inferences are 6 to be drawn in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). See 7 also IPXL, 430 F.3d at 1380 (quoting Chiuminatta Concrete Concepts, Inc. v. Cardinal 8 Indus., 145 F.3d 1303, 1307 (Fed. Cir. 1998)) (stating “‘evidence must be viewed in the 9 light most favorable to the party opposing the motion, with doubts resolved in favor of the 10 opponent.’”) However, to avoid summary judgment, the opposing party cannot rest solely 11 on conclusory allegations. Berg v. Kincheloe, 794 F.2d 457, 459 (9th Cir. 1986). Instead, 12 it must designate specific facts showing there is a genuine issue for trial. Id. More than a 13 “metaphysical doubt” is required to establish a genuine issue of material fact.” Matsushita 14 Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). 15 B. Inequitable Conduct 16 In Therasense, Inc. v. Becton Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011) (en 17 banc), the Federal Circuit reassessed the doctrine of inequitable conduct. In that case, the 18 court laid out the origins of the doctrine, which involved cases that “dealt with particularly 19 egregious misconduct, including perjury, the manufacture of false evidence, and the 20 suppression of evidence.” Id. at 1287. The court followed the evolution of the doctrine 21 away from that narrow class of cases to cases involving “a broader scope of misconduct, 22 including not only egregious affirmative acts of misconduct intended to deceive both the 23 PTO and the courts, but also the mere nondisclosure of information to the PTO.” Id. The 24 court also noted the expansion of the remedy to “unenforceability of the entire patent rather 25 than mere dismissal of the instant suit.” Id. 26 With this evolution of the doctrine, “inequitable conduct came to require a finding 27 of both intent to deceive and materiality[,]” the standards for which “have fluctuated over 28 time.” Id. At one point, the court “espoused low standards for meeting the intent 5 14cv1303 DMS (WVG) 1 requirement, finding it satisfied based on gross negligence, or even negligence.” Id. at 2 1287-88. 3 ‘reasonable examiner’ standard based on the PTO’s 1977 amendment to Rule 56.” Id. at 4 1288. The court explained it “embraced these reduced standards for intent and materiality 5 to foster full disclosure to the PTO.” Id. The court noted, however, that the focus on full 6 disclosure “had numerous unforeseen and unintended consequences. Most prominently, 7 inequitable conduct has become a significant litigation strategy[,]” which “expands 8 discovery into corporate practices before patent filing and disqualifies the prosecuting 9 attorney from the patentee’s litigation team.” Id. It also “discourages settlement and 10 deflects attention from the merits of validity and infringement issues[,]” and “‘increas[e][s] 11 the complexity, duration and cost of patent infringement litigation that is already notorious 12 for its complexity and high cost.’” Id. (quoting Br. and Appendix of Am. Bar Ass’n as 13 Amicus Curiae at 9). In essence, the court described inequitable conduct as “the ‘atomic 14 bomb’ of patent law[,]” not only for its effects on litigation, but also because a finding of 15 inequitable conduct “regarding any single claim renders the entire patent unenforceable[,]” 16 id. (citing Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 877 (Fed. Cir. 17 1988)), and “can spread from a single patent to render unenforceable other related patents 18 and applications in the same technology family.” Id. The court “also previously adopted a broad view of materiality, using a 19 In light of these “far-reaching consequences,” the Therasense court “tighten[ed] the 20 standards for finding both intent and materiality in order to redirect a doctrine that has been 21 overused to the detriment of the public.” Id. at 1290. Under these new standards, “the 22 accused infringer must prove that the patentee acted with the specific intent to deceive the 23 PTO.” Id. (citing Star Scientific Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 24 (Fed. Cir. 2008)). Gross negligence and negligence no longer suffice. Id. Furthermore, 25 26 27 to meet the clear and convincing evidence standard, the specific intent to deceive must be “the single most reasonable inference able to be drawn from the evidence.” Indeed, the evidence “must be sufficient to require a finding of deceitful intent in the light of all the circumstances.” Hence, when there 28 6 14cv1303 DMS (WVG) 1 2 are multiple reasonable inferences that may be drawn, intent to deceive cannot be found. 3 Id. at 1290-91 (citations omitted). With respect to materiality, the court adjusted that 4 standard to one of: 5 6 7 8 9 10 but-for materiality. 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 art. Hence, in assessing the materiality of a withheld reference, the court must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference. In making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction. 11 Id. at 1291-92. In addition, the court made it clear that “[i]ntent and materiality are separate 12 requirements.” Id. at 1290 (citing Hoffman-La Roche, Inc. v. Promega Corp., 323 F.3d 13 1354, 1359 (Fed. Cir. 2003)). Thus, district courts should no longer “use a ‘sliding scale 14 where a weak showing of intent may be found sufficient based on a strong showing of 15 materiality, and vice versa.” Id. 16 Here, Ameranth offers two primary arguments as to why the ‘449 Patent should be 17 found to be unenforceable based on inequitable conduct. First, it argues information 18 evidencing an on-sale bar was withheld from the PTO during the prosecution of the ‘739 19 Patent and the ‘645 Application. Second, Ameranth asserts other material information was 20 withheld from the PTO during the prosecution of the ‘739 Patent and the ‘645 Application. 21 1. 22 “‘Our patent laws deny a patent to an inventor who applies for a patent more than 23 one year after making an attempt to profit from his invention by putting it on sale.’” Merck 24 & Cie v. Watson Labs., Inc., 822 F.3d 1347, 1350 (Fed. Cir. 2016) (quoting Atlanta 25 Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361, 1365 (Fed. Cir. 2008)). “Section 26 102(b)’s onsale bar is triggered when a claimed invention is: (1) ready for patenting; and 27 (2) the subject of a commercial offer for sale prior to the critical date.” Id. at 1351 (citations 28 omitted). “An invention is ‘ready for patenting’ when prior to the critical date: (1) the Evidence of an On-Sale Bar 7 14cv1303 DMS (WVG) 1 invention is reduced to practice; or (2) the invention is depicted in drawings or described 2 in writings of sufficient nature to enable a person of ordinary skill in the art to practice the 3 invention.” Hamilton Beach Brands, Inc. v. Sunbeam Prods., 726 F.3d 1370, 1375 (Fed. 4 Cir. 2013) (quoting Atlanta Attachment, 516 F.3d at 1365). In determining “whether there 5 was an invalidating commercial offer to sell the product prior to the critical date, courts 6 “‘apply[ ] traditional contract law principles.’” Merck & Cie, 822 F.3d at 1351 (quoting 7 Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352 (Fed. Cir. 2002)). “‘Only 8 an offer which rises to the level of a commercial offer for sale, one which the other party 9 could make into a binding contract by simple acceptance (assuming consideration), 10 constitutes an offer for sale under § 102(b).’” Id. (quoting Grp. One, Ltd. v. Hallmark 11 Cards, Inc., 254 F.3d 1041, 1047 (Fed. Cir. 2001)). 12 In this case, the application for the ‘739 Patent was filed on November 24, 1997. 13 Therefore, the critical date for determining whether there was an on sale bar is November 14 24, 1996. Ameranth asserts there is evidence the invention described in the ‘739 Patent 15 was ready for patenting and on sale prior to that date, and that evidence was not disclosed 16 to the PTO. IPDEV does not dispute the evidence was not disclosed, but argues it was not 17 material. IPDEV also asserts Ameranth has failed to come forward with clear and 18 convincing evidence of specific intent to deceive the PTO. 19 The first piece of evidence Ameranth relies on is the service mark registration for 20 CyberSlice. (See Mem. of P. & A. in Supp. of Mot. at 6.) The registration states the 21 CyberSlice mark was first used in August 1995, and first used in commerce in October 22 1996. (Notice of Lodgment in Supp. of Mot., Ex. 4.) As IPDEV points out, however, the 23 service mark registration and the dates contained therein do not prove the invention 24 described in the ‘739 Patent was either ready for patenting or on sale prior to November 25 24, 1996. 26 The second piece of evidence Ameranth relies on is a December 1, 1996 article from 27 bizjournals.com concerning CyberSlice. (See Mem. of P. & A. in Supp. of Mot. at 6.) In 28 that article, Mr. Glass stated he had “enrolled nearly 1,000 pizza outlets” in the CyberSlice 8 14cv1303 DMS (WVG) 1 program. (Notice of Lodgment in Supp. of Mot., Ex. 5 at 71.) IPDEV does not dispute 2 that CyberSlice had enrolled pizza vendors in its program prior to December 1, 1996. 3 Instead, it argues those enrollments do not show the invention was on sale or the subject of 4 an offer to sell prior to November 24, 1996. 5 The Examiner of the ‘645 Application, however, disagreed with IPDEV. (See 6 Notice of Lodgment in Supp. of Mot., Ex. 16 at 499.) During the prosecution of that 7 Application, Mr. Glass submitted a declaration in which he confirmed the information in 8 the bizjournal article, stating “that CyberSlice began to contact pizza restaurants during 9 September 1996 in the Boston, New York, San Francisco, and Seattle metropolitan areas 10 about participating in the CyberSlice offering.” (Id.) The Examiner found “[t]hese 11 statements indicate an offer for sale more than one year prior to the filing date.” (Id.) 12 Furthermore, case law refutes IPDEV’s suggestion that there was no sale or offer for 13 sale because the enrollees did not make any payments to CyberSlice before December 1, 14 1996. See Weatherchem Corp. v. J.L. Clark, Inc., 163 F.3d 1326, 1333 (Fed. Cir. 1998) 15 (“It is immaterial that the record shows . . . no exchange of money until after the critical 16 date.”); Netscape Communications Corp. v. Valueclick, Inc., 684 F.Supp.2d 699, 706 n.8 17 (E.D. Va. 2010) (noting “that even if no payment was received, the on-sale bar would still 18 apply because a mere commercial offer is sufficient to invoke § 102(b).”) Thus, it appears 19 the enrollment of “nearly 1,000 pizza outlets” was evidence of an offer to sell under § 20 102(b). 21 Whether that evidence was material to patentability, however, depends on whether 22 the invention described in the ‘739 Patent was also ready for patenting. Ameranth argues 23 the evidence of offers to sell is also evidence the invention was ready for patenting. (Mem. 24 of P. & A. in Supp. of Mot. at 7.) However, Ameranth fails to cite any authority to support 25 that position, and it is contrary to the test for on sale bars, which sets out two distinct 26 requirements. 27 Ameranth relies on other evidence to support its position the invention was ready for 28 patenting prior to November 24, 1996, but that evidence does not satisfy the “clear and 9 14cv1303 DMS (WVG) 1 convincing” standard. First, Ameranth cites Mr. Glass’s deposition testimony, (see id. at 2 7), but that testimony does not show the invention was ready for patenting prior to 3 November 24, 1996. 4 CyberSlice system. (Id. at 7-8.) As IPDEV points out, however, the timeline itself does 5 not prove the invention was ready for patenting prior to November 24, 1996. Arguably, it 6 is a forward looking, aspirational document, not evidence that the events listed therein 7 actually occurred according to that timetable. The same may be said for the To Do List 8 and the Business Plan. (Id. at 8.) Ameranth’s other evidence, which includes legal 9 correspondence and pleadings,3 a LinkedIn Profile of Steve Green, and a December 2, 1996 10 article about CyberSlice published by PR Newswire, also fails to show the invention was 11 ready for patenting prior to November 24, 1996. (Id. at 9-10.) Second, Ameranth relies on a development timeline for the 12 Ameranth argues this evidence was not disclosed during the prosecution of the ‘739 13 Patent, and also argues it was not disclosed during the prosecution of the ‘645 Application. 14 With respect to the prosecution of the ‘645 Application, Ameranth asserts the failure to 15 disclose this information evidences an intent to deceive in light of evidence that was 16 submitted to the PTO, particularly a July 26, 2002 Declaration from Mr. Glass, an April 17 30, 2003 response to an office action prepared by patent counsel, and an August 1, 2002 18 Information Disclosure Statement submitted by patent counsel. (Id. at 10-13.) However, 19 this evidence, taken alone or together, does not require a finding of intent to deceive. This 20 21 22 23 24 25 26 27 28 After the ‘793 Application was filed, but before the ‘739 Patent issued, CyberSlice, Inc. became Food.com. Food.com was the assignee of the ‘739 Patent when it issued. In 2001, Food.com filed a suit for infringement of the ‘739 Patent against QuikOrder in the United States District Court for the Northern District of California. (QuikOrder is a Defendant in these consolidated proceedings and an affiliate of IPDEV.) Food.com and QuikOrder settled their dispute in 2002, and Food.com subsequently filed for bankruptcy protection in the United States Bankruptcy Court for the Northern District of California. In the bankruptcy proceedings, IPDEV purchased the ‘739 Patent and the ‘645 Application from Food.com. The legal correspondence and pleadings Ameranth relies on relate to these two Northern District of California cases. 3 10 14cv1303 DMS (WVG) 1 is especially so on the present motion for summary adjudication, where the Court must 2 construe the evidence in the light most favorable to IPDEV and draw all reasonable 3 inferences in its favor. When the evidence is construed in this light, Ameranth is not 4 entitled to a finding of inequitable conduct for any failure to disclose evidence of an on 5 sale bar during prosecution of the ‘739 Patent or the ‘645 Application. 6 2. 7 In addition to the evidence of a purported on sale bar, Ameranth asserts IPDEV failed 8 to disclose other information to the PTO during the prosecution of the ‘739 Patent and the 9 ‘645 Application. This information includes a QuikOrder on-line ordering system, the 10 movie “The Net,” the geocoding technology of Mapquest and the voice conversion 11 technology of Wygant Scientific, and alleged copying of information from United States 12 Patent Number 5,778,231 (“the ‘231 Patent”) into the ‘739 Patent. 13 Other Evidence a. The QuikOrder System 14 Ameranth alleges QuikOrder developed an on-line food ordering system that was 15 material prior art to the ‘739 Patent, that IPDEV was aware of that prior art, and that it 16 failed to disclose that prior art to the PTO with the specific intent to deceive. IPDEV does 17 not dispute the QuikOrder system constitutes prior art or that IPDEV was aware of that 18 prior art, but it does dispute whether that prior art was material to patentability and whether 19 IPDEV acted with intent to deceive in failing to disclose that prior art to the PTO. 20 As with the evidence of an on sale bar, Ameranth has failed to show there is an 21 absence of a genuine issue of material fact on the issues of materiality and intent with 22 respect to the QuikOrder system. Ameranth’s arguments on materiality are conclusory, 23 and fail to show the PTO would not have allowed the claims of the ‘739 Patent if it had 24 been aware of the QuikOrder system. Furthermore, Ameranth fails to show that specific 25 intent to deceive is the only reasonable inference to be drawn from the evidence presented. 26 For these reasons, the QuikOrder argument does not warrant summary adjudication in 27 Ameranth’s favor. 28 /// 11 14cv1303 DMS (WVG) 1 b. “The Net” 2 Ameranth’s next argument is IPDEV failed to disclose its invention was inspired by 3 the movie “The Net.” IPDEV does not dispute that the invention was inspired by “The 4 Net,” or that it did not disclose that fact to the PTO. However, it argues there is no 5 requirement that an inventor disclose the inspiration for his invention as part of his 6 application for a patent. The Federal Circuit appears to agree with IPDEV, see TALtech 7 Ltd. v. Esquel Apparel, Inc., 279 Fed. Appx. 974, 977 (Fed. Cir. 2008) (“an inventor is not 8 required to disclose the object or article that inspired his invention”), and Ameranth fails 9 to cite any authority to the contrary. In the absence of such a requirement, this argument 10 11 does not warrant summary adjudication in Ameranth’s favor. c. MapQuest/Wygant 12 Next, Ameranth argues IPDEV committed inequitable conduct by failing to disclose 13 MapQuest’s geocoding technology and Wygant’s voice conversion technology to the PTO. 14 Here, again, IPDEV does not dispute that it did not disclose these specific technologies to 15 the PTO. However, it argues the technologies were not material, and further, that there 16 was no intent to deceive the PTO. 17 As with the arguments discussed above, the Court finds this argument does not 18 warrant summary adjudication in Ameranth’s favor. Ameranth has failed to show there 19 are no genuine issues of material fact on the elements of materiality and intent to deceive, 20 and, indeed, the evidence reflects there are such issues. (See, e.g., Notice of Lodgment in 21 Supp. of Opp’n to Mot., Ex. 4 at 163-65.) Absent the requisite showing, Ameranth is not 22 entitled to summary adjudication based on the failure to disclose MapQuest’s geocoding 23 technology or Wygant’s voice conversion technology. 24 d. The ‘231 Patent 25 Ameranth’s final argument in support of its request for summary adjudication is that 26 IPDEV failed to disclose to the PTO that it copied certain information in the application 27 for the ‘739 Patent from the ‘231 Patent. IPDEV disputes that there was any copying, and 28 further argues the ‘231 Patent was not material and there is no evidence of intent to deceive. 12 14cv1303 DMS (WVG) 1 Although there are some similarities in the drawings of the two Patents, and the same 2 law firm prosecuted the two Patents, Ameranth has failed to show the PTO would not have 3 allowed any of the claims of the ‘739 Patent had it been aware of the ‘231 Patent. Unlike 4 in American Calcar, Inc. v. Am. Honda Motor Co., No. 06cv2433 DMS (KSC), 2012 U.S. 5 Dist. LEXIS 54059 (S.D. Cal. Apr. 17, 2012), the ‘231 Patent does not disclose an 6 invention similar to that described in the ‘739 Patent. Also unlike in American Calcar, the 7 evidence does not require a finding of deceitful intent in light of all the circumstances. 8 Accordingly, this argument does not warrant summary adjudication in Ameranth’s favor. 9 III. 10 CONCLUSION AND ORDER 11 For these reasons, the Court denies Ameranth’s motion for summary adjudication of 12 unenforceability of the ‘449 Patent based on inequitable conduct in the prosecution of the 13 ‘739 Patent and the ‘645 Application. 14 IT IS SO ORDERED. 15 Dated: October 5, 2017 16 17 18 19 20 21 22 23 24 25 26 27 28 13 14cv1303 DMS (WVG)

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