Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., LTD. et al

Filing 492

ORDER re: 141 Motion to Strike 141 MOTION to Strike 131 Answer to Complaint, Counterclaim,, or, in the Alternative, Motion for Summary Judgment on Defendants' Thirteenth Counterclaim Related to Inequitable Conduct, 266 MOTION to Bifurcate , 154 MOTION and Memorandum in Support of Request for Judicial Notice re 152 Response in Opposition to Motion, ; 154 Motion ; 266 Motion to Bifurcate. For the reasons stat ed above, Plaintiff's motion to strike, or, in the alternative, for summary judgment with regard to Defendants' Thirteenth Counterclaim is hereby GRANTED, in part, and DENIED, in part. ECF No. 141. Defendants were permitted to add the inequitable conduct counterclaim and affirmative defense without leave of court under either the permissive or moderate interpretations of Federal Rule of Civil Procedure 15. Accordingly, Plaintiff's Motion to Strike is DENIED. ECF No. 141. Plaintiff's Motion for Summary Judgment is GRANTED. ECF No. 141. Defendants' Request for Judicial Notice is GRANTED. ECF No. 154. Plaintiff's Motion to Bifurcate is DENIED as moot. ECF No. 266. IT IS SO ORDERED. Signed by District Judge Mark S. Davis on 3/28/14 and filed 3/31/14. Copies distributed to all parties 3/31/14. (ldab, )

UNITED STATES

DISTRICT COURT

EASTERN DISTRICT OF VIRGINIA

Norfolk Division
VIRGINIA INNOVATION

SCIENCES,

INC.,

Plaintiff,
v.

Case No.:

2:12cv548

SAMSUNG ELECTRONICS CO.,
LTD., ET AL.,
Defendants.

OPINION AND ORDER

This

filed

matter is currently before the Court on

by

plaintiff

(hereinafter

Virginia

"Plaintiff"

Innovation

"VIS")

or

advanced by Samsung Electronics Co.,
America,

Inc.,

(collectively

and

Samsung

"Samsung"

Plaintiff's

first

Defendants'

or

thirteenth

conduct,
of

VIS

second motion

denies

the

first

Inc.

counterclaim

Samsung Electronics
America,

ECF Nos.

that

counterclaim,

or, in the alternative,

Plaintiff's
Court

requests

on such counterclaim.

a

Telecommunications

"Defendants").

motion

Sciences,

regarding
Ltd.,

two motions

the

141,

Court

relating

to

LLC
266.

strike

inequitable

grant summary judgment in favor
Mot.

to

alternatively
motion,

the

Strike

1,

requests
Court

ECF No.

that,

enter

141.

if

an

order

"bifurcating this case into a jury trial and a bench trial,

in

the

jury

inequitable

trial,

conduct

excluding
and

evidence

Defendants'

35

relating

U.S.C.

§

111

the

solely

and,

to

defense."

ECF No.

266.

Also before the Court is Defendants'

judicial notice filed in response

No.

154.

All

three motions

to VIS's

have

been

first

fully

request for

motion.

ECF

briefed and are

therefore ripe for decision.

After examination of

the briefs and the record,

the Court

determines that a hearing is unnecessary, as the facts and legal
arguments

are adequately presented,

and

the decisional process

would not be aided significantly by oral argument.
Civ. P. 78(b); E.D. Va. Loc. Civ. R. 7(J).

follow,

the

notice.

ECF No. 154.

the

Court

Court

DENIES

GRANTS

Defendants'

See Fed. R.

For the reasons that

request

for

judicial

With regard to Plaintiff's first motion,

Plaintiff's

request

to

strike

Defendants'

counterclaim and affirmative defense of inequitable conduct, but
GRANTS

summary

judgment

in

thirteenth counterclaim.

favor

of

ECF No. 141.

Plaintiff

on

Defendants'

Having granted summary

judgment in favor of Plaintiff on Defendants'

counterclaim of

inequitable conduct, the Court DENIES as moot Plaintiff's motion
to bifurcate.

ECF No.

266.
I.

FACTUAL BACKGROUND

At issue in this case are five1 patents:
7,899,492 ("the

'711 patent"),

'492 patent"),

U.S.

Patent No.

U.S.

U.S. Patent No.

Patent No. 8,050,711 ("the

8,145,268 ("the

'268 patent"),

1 Previously, there were six patents at issue in this case.
U.S.

Patent Nos.

as infringed.

However,

7,957,733 ("the '733 patent") is no longer asserted

Agreed Dismissal Order,

ECF. No. 408.

U.S.

No.

Patent

No.

8,135,398

8,224,381

("the

are continuations

("the

'398 patent").

or

and

thus,

'341 application"),

'381

patents

claim

ultimately

are

All

of

filed June 24,

directly

priority

and U.S.

of

the

to

2005.

from

to

the

the

'492 patent,

'492

'268,

patent

which

application

number

filed on July 16, 2004.

patents all

share a substantively identical specification

specification").

U.S.

Patent

No.

'711,

'268, and

7,957,733

patent"), which is no longer at issue in this case,

("the

'398 patent is a continuation from the '733 patent.
of

specification")

the

'733

includes

all

with additional material.
inventions

intended

impracticability

of

and

'398

patents

of the '492

'381
("the

'733

was filed on

May 22, 2007 as a continuation-in-part of the '492 patent.

specification

and,

patent,

60/588,359,

'492

The

11/165,341

The '711,

'492

provisional

Patent

the patents-in-suit

Patent Application No.

continuations

priority

claims

patent"),

continuations-in-part

which in turn issued from U.S.

("the

'381

The

The shared
("the

'398

specification along

Each of the patents-in-suit describes

to

resolve

viewing

the

multimedia

inconvenience

content

on

the

and

small

screens of mobile terminals.
II.

PROCEDURAL HISTORY

In the instant patent infringement action, VIS alleges that
Defendants
the

have

directly,

patents-in-suit

by

indirectly,
making,

and

using,

willfully
offering

infringed
for

sale,

selling,

and/or

including
PL's

importing

smartphones,

First

Am.

a

wide

tablets,

Compl. ,

ECF

range

of

Blue-ray

No.

accused

products,

players,

121.

Samsung

and

hubs.

denies

VIS'S

claims of infringement and asserts several affirmative defenses,

including invalidity of all patents-in-suit, prosecution history
estoppel and other equitable doctrines.
asserts

and

counterclaims

invalidity

thirteenth

motions,

'268, '381,

part,

seeking declarations

for each of

counterclaim,

alleges

Additionally,

that

of

non-infringement

the patents-in-suit.

which

"VIS's

is

at

Samsung

issue

in

enforcement of

the

'733, and/or '398 Patents is barred,

Samsung's
the

instant

'492,

'711,

in whole or in

as a result of VIS's inequitable conduct committed during

prosecution of
Patent

First

and

Am.

one or

Trademark

Compl.

more of
Office

33,

the

Patents-in-Suit

(USPTO)."

ECF No.

132.

Defs.'

at

the

Answer

U.S.

to

the

The alleged inequitable

conduct includes submission of the '341 Application Declaration

with a forgery of one of the inventor's signature, Prof. Halal's

signature,

and

the

withholding

of

"materially

relevant

information from the USPTO with the intent to deceive" during
prosecution

of

the

'733

and

"Rakib" prior art reference.

'398

patents,

particularly

the

Id. at 34-40.

The Court held its Markman hearing in this matter on June

11,
ECF

2013 and issued its Markman opinion on September 25,
No.

198.

Since

the

Markman

hearing,

there

have

2013.
been

numerous
pending
Court

filings
before

joined

Sciences,

the

No.

now

set

ruled

trial

v.

2:13cv322.

this

ECF

21,

Motion

granting,

motion.

No.

relief
and

395.

infringement

The

in

On
to

The

failed

to

patents.

On

found

state

8,

in part,

such motion.

for Willful

in

part

such

claim

for

claim

for

the

the

413.

'711,

Court

granting,

'268 patent and claims 15, 60,

Court

the

'268,

ruled

in part,

on

and

The Court found no

willful infringement, and also found claims 21,
29 of the

the

is

plausible

a

2014,

ECF No.

Case

matters

Claim

infringement of

January

al.,

2013

that

the

Innovation

two

15,

remain

2013,

et

denying,

Defendants' Motion for Summary Judgment;
denying,

the

VIS's

and

Court

Ltd.,

of

November

part,

with regard to willful

'381

trial

25,

Virginia

Co.,

Dismiss

motions

October

and

Electronics

353.

several

of

matter

2014.

Infringement;

and

Order

this

No.

on Defendants'

willful

By

Samsung

April

ECF

matter

Court.

for

Inc.

for

in

22,

25,

28,

61 and 62 of the

and
'398

patent invalid as anticipated.
Turning to

Defendants'

the

instant motions,

unopposed request

for

the Court

judicial notice because

request impacts the remaining motions.

then

addresses

alternative,
briefs,
174,

Plaintiff's

motion

ECF No.

to

154.

strike,

that

The Court

or,

in

the

for summary judgment and the associated responses,

and declarations.

and

first addresses

189.

Finally,

ECF
the

Nos.
Court

141,
will

142,

152,

address

153,

173,

Plaintiff's

motion
ECF Nos.

to

bifurcate

266,

267,

and

318,

the

Federal

responses

and briefs.

and 346.
III.

A.

associated

DISCUSSION

Defendants' Request for Judicial Notice

Rule

of

Evidence 201

. . . adjudicative fact[s]."

Fed.

"governs

judicial

notice

R.

201(a).

The Court

Evid.

of

is permitted to take judicial notice "on its own," Fed. R. Evid.

201(c)(1), however,

the Court

"must take

judicial notice

if a

party requests it and the court is supplied with the necessary
information," Fed. R. Evid. 201(c)(2).

Defendants request

the

that

travel

to

distances

the Court

a

take judicial notice of

specific

address

in

Arlington,

Virginia from various starting locations.

Request for Judicial

Notice

on

1-2,

ECF

No.

154.

Information

these

distances,

sourced from online resources,2 was supplied to the Court in an
Appendix of Exhibits.

App'x of Exs., Exs. K-N, ECF Nos. 155-7,

155-8, 155-9, & 155-10.

Plaintiff takes no position with regard

to this request.

Federal

Rule

of

"judicially notice a
dispute

because

it:

Evidence

201

permits

fact that is not
(1)

is

generally

district

subject

known

court's territorial jurisdiction; or (2)

courts

to

to reasonable

within

the

trial

can be accurately and

2 The online resources include maps.google.com, www.distancefromto.net,
and www.worldatlas.com.

readily

determined

reasonably
States

from

sources

questioned."

Court

of

Fed.

Appeals

for

whose

R.

the

accuracy

Evid.

Fourth

cannot

201(b).
Circuit

The

has

be

United

ruled

that

"geographical information is especially appropriate for judicial
notice."

United States

v.

Johnson,

726

F.2d 1018,

Cir. 1984); see also United States v. Lavender,
641

(4th Cir.

1979).

Accordingly,

district

Fourth Circuit have on several occasions

1021

(4th

602 F.2d 639,

courts

within

the

taken notice of travel

distances, including in cases where the information was supplied
from online sources.

See,

Ltd., 958 F.

Supp. 2d 616,

denied (Dec.

19,

2013)

Elcomsoft,

Ltd. v.

Passcovery Co.,

622 (E.D. Va. 2013), reconsideration

(taking "judicial notice that Russia is

far from this District, and that any willing witnesses will face

significant travel costs"); Rogers v. Metro. Life Ins. Co., No.

CIV.

JKB-12-1012,

2013)
in

2013 WL 2151675,

(D.

Md.

May 15,

(referring to driving distances obtained from Mapquest.com

taking

"judicial

notice

approximately eighteen miles
seven

at *8 n.5

miles

Annapolis");

from

downtown

that

Odenton,

from downtown

Washington,

United States v.

Franklin,

and

Maryland

...

Baltimore,
fifteen

No.

2012 WL 71018, at *1 n.3 (D. Md. Jan. 9, 2012)

CRIM.

is

twenty-

miles

from

MJG-11-0095,

(taking "judicial

notice of the Yahoo Internet directions to provide distance and
driving time estimates").

As

the

Court

information,"

takes

has

pursuant

judicial

number withheld]

been

to

notice

of

"supplied

Fed.

the

R.

Evid.

following

Maud Street NW,

with

the

201(c)(2),

facts:

1)

in Washington,

necessary
the

that

Court

[street

DC is less than

eight miles driving distance from [street number withheld] Joyce
Street,

6,900

in Arlington,

miles

flight

that La Jolla,

Virginia;

distance

2)

from

that

Beijing,

Arlington,

China is

Virginia;

California is over 2,600 miles

over

and

3)

driving distance

from Arlington, Virginia.
B. VIS's Notion to Strike

i. VIS's Arguments in Support of the Motion
VIS asserts that Defendants'
alleges

inequitable

Defendants'

Amended

comply with Federal

in Supp. of Mot.
Supp.").
227

conduct
Answer,

thirteenth counterclaim,
and

should

Rule of Civil

444,

be

to Strike 12, ECF No.

446

(E.D.

Va.

2005),

the case,

asserted
for

in

failure

Pl.'s

for

to

Mem.

(hereinafter "Mem.

Inc. v. Khela Bros.

be filed without leave only when the
theory or scope of

struck

142

"[i]n response to an amended complaint,

the

first

Procedure 15(a).

VIS cites to Elite Entm't,

F.R.D.

was

which

in

Entm't,

the proposition

that

an amended response may

amended complaint changes

and

then,

the breadth of

the

changes in the amended response must reflect the breadth of the

changes

in the amended complaint."

142 (emphasis in original).
8

Mem.

in Supp.

12,

ECF No.

Relying on such authority, VIS argues
add

the new counterclaim asserting

that Samsung cannot

inequitable conduct without

leave of court because the counterclaim "is not tied to [VIS]'s
allegation of willful
Amended

Complaint

the changes

strike,
from

and,

in the

Anticipating a

infringement"
thus,

Court

not

reflect

favorable ruling by the Court

to

that,

amend

should be denied due to

[VIS]."

"does

the

[First Amended Complaint]."

VIS also asserts

the

that was added in the First

Id.

on its

should Defendants

their

breadth

counterclaims,

at

of

12-13.

motion

to

request leave
"their

request

their undue delay and the prejudice to

Id^ at 13 (citing Elite Entm't, 227 F.R.D. at 447).
ii. Samsung's Arguments in Opposition

Samsung
"reflect[]

asserts

that

ECF

No.

Samsung

requirement

152

argues

proportional"

(citing

that

Elite

"the

because

not of relation."
Entm't,

changes

"both

[in

[the

Samsung

a

expand the scope of
further

argues

that

227

is

F.R.D.

its

response
is

"a

in Response
at

446-47).

counterclaim]
of

are

willful

inequitable conduct by

the lawsuit"
VIS

Mem.

addition

infringement by VIS and the addition of
Samsung]

that

the breadth of the amendments to the complaint"

measure of proportionality,
2,

the

and add a new claim.

applying

the

standard

in

Elite Entm't "in a way squarely rejected by that court."

Id.

2-3.

[First

Samsung

also

Amended Complaint]

contends

change[]

that

the

not

scope

only

of

did

this

"[t]he

case

by

at

adding

willful

infringement,"

but

that

"[a]s

a

result,

allowed to answer the amended complaint anew as

the

original

Inc.

v.

complaint.'"

RSA Security,

2002)).

199

Additionally,

failure

to

inequitable

Id.

1

Supp.

Samsung

challenge
conduct

F.

at

2d 457,

posits

its

Id.

n.2

to

Privacy,
(E.D.

based

affirmative

motion

defense is not at issue here.

459

that,

strike,

'is

though it were

(citing Digital

Samsung's

in

Samsung

on

Va.

VIS's

defense

the

of

affirmative

at 2.

iii. VIS's Rebuttal Arguments
VIS

Privacy,

asserts

that

"that

defendant

a

Samsung's

may

position,

amend

plaintiff files an amended complaint

Digital
Elite

Privacy
opinion;

opinion
thus,

was
to

inconsistent,

Elite

ECF No.

VIS argues

173.

"the changes

in

issued

the

should

its

of

response

earlier

extent

the

in

the

willful

additional

but

the case

does

infringement

case

Alternatively,

VIS argues

to

do not

that

[VIS]'s

against

amendment

the

opinions
Br.

are
6-7,

change

"even if

10

the

as

the

to

to

assert

the addition

"merely

allows

nature

Defendants."

'changed

come close

allow Defendants

allegation

not

that

"the

under the Elite Entm't standard,

infringement

damages

the

than

Rebuttal

an entirely new counterclaim in their response"

of

Digital

after

time

two

PL's

[VIS]'s amended complaint

'changing the scope'

on

. . . goes too far" as

control."

that,

based

of

[VIS]'s
at

8.

the Court were to

find

scope'

Id.

for

of

the

case

within

the

meaning

'breadth'

of

Elite,

Defendants'

new

counterclaim

fails

test" because it "interjects allegations of fraud and

significantly alters the scope of the litigation." Id.
VIS

the

further argues

that it

"clearly intended for its

at 8-9.

motion to

cover the affirmative defense of inequitable conduct." id. at 5.
VIS requests
function,"

that,

VIS

should the Court choose

be

given

"leave

to

file

a

"to place form over
motion

to

dismiss

or

strike the affirmative defense on the ground that it is not pled
with the required particularity."

Id.

iv. Applicable Standard
There

are

three

by

the

implicated
motions

to

pleadings,

strike,

Federal

instant
Rule

Rules

motion;
15(a),

and former Rule 13(f),

omitted counterclaims.

of

Civil

Rule

which

12(f),
governs

that

which

are

governs

amendments

to

which governed the addition of

The 2009 Amendments

to

of Civil Procedure made changes to Rule 15(a)

13(f).

Procedure

the Federal

Rules

and abrogated Rule

As "[n]o appellate court has squarely addressed3 whether

counterclaims filed in response to an amended complaint pursuant

to Rule 15,

Fed.

R.

Civ.

P.,

must be permitted as

only with leave of

court, " the Court will

of

on

district

3 The

courts

Eighth Circuit

the

has

issue.

affirmed

look to

of right or
the opinions

Elite

a

Entm't,

227

F.R.D.

at

case

adopting

the permissive

approach, however,
they did so in an unpublished table decision.
Tralon Corp. v. Cedarapids, Inc., 966 F. Supp. 812, 832 (N.D. Iowa
1997), aff'd 2000 WL 84400 (8th Cir. Jan. 21, 2000) (unpublished table
decision).
11

446;

see

059RSL,

Childress

v.

Liberty

2071200,

at

*1

2011 WL

review

have

also

of

district

taken

variant

lines

of

cases

Rules

of

Civil

(citing

court

arose

Chem

(AHN) ,

Co.

2005

reveals

on

the

Procedure.

Uniroyal

3:02CV02253

under

the

WL

that

Syngenta

such

of

227

*1

C10-

2011).

courts

that

the

A

three

Federal
at

446

Inc.,

No.

March

23,

characterized

Corp

at

Co.,

"district

versions

Entm't,

677806,

Ins.

May 25,

issue,"

prior

Elite

v.

Fire

(W.D. Wash.

cases

positions

Mut.

F.R.D.

as

Prot.,

(D.

Conn.

2005)) .

These

three

permissive,
approach

approaches

and narrow.

moderate,

hold

"that

an

opposite end of the spectrum,
hold that the defendant is

as

though

these

two

approach hold

that

between

it

to

answer

As

must

the

be

narrow

confined

Id.

At

the

those applying the permissive view

allowed to plead anew to the amended

were

views,

the

those

original
courts

"the breadth of

complaint.

applying

the changes

Id.

the

In

moderate

in the amended

the changes in the amended

Id.

described below,

abrogation of

Rule

narrow approach.
remaining

applying

the complaint."

response must reflect the breadth of
complaint."

been
Courts

amended

specifically to the amendments

complaint

have

the

13(f),

2009

Amendments,

superseded those cases

After considering the cases

approaches,

the

specifically

Court
12

finds

that

following

the
the

applying the two
the

permissive

approach deprives the Court of the ability to effectively manage
litigation.

Accordingly,

the

Court

recognizes

the

moderate

approach as the most appropriate.
Federal Rule of Civil Procedure 12(f)

provides

that

"[t]he

court may strike from a pleading an insufficient defense or any
redundant,
applying

immaterial,

such

rule,

impertinent,

"a

district

or

court

scandalous
has

matter."

broad

discretion

in

F.D.I.C.

v.

deciding whether to strike matters from pleadings."
Willetts,

882

F.

reconsideration

denied

Greeting Cards,

239,

246

(4th

Supp.

Inc.

Cir.

2d

(Oct.

v.

859,

2,

870

2012)

2007)).

However,

(E.D.N.C.

(citing

Dollar Tree Stores,

Inc.,

"Rule

In

2012),

Renaissance

227 F. App'x.

12(f)

motions

are

generally viewed with disfavor 'because striking a portion of a
pleading is a drastic remedy and because it is often sought by
the movant simply as a dilatory tactic.'"
Inc.

v.

Charles

Gilmore,

Alan

252

Wright

Procedure § 1380,

647

Although Rule

of

pleadings.

Civil

347

&

R.

Arthur

(2d ed.

12(f)

striking a pleading,
Rule

F.3d 316,

Current

(4th Cir.

Miller,

provides

15(a),

Rules

2001)

Holdings,

(quoting 5A

Federal

Practice

&

1990)).

the procedural mechanism for

a central issue in

Procedure

Waste Mgmt.

which

15(a)(1)

this motion is Federal
governs

and

(3),

amendments

to

respectively,

provide that " [a] party may amend its pleading once as a matter
of course within:

(A)

21 days after serving it,
13

or

(B)

if

the

pleading is one to which a responsive pleading is required,
days after service of

a responsive pleading.

the court orders otherwise,

21

. ." and "[u]nless

any required response to an amended

pleading must be made within the time remaining to respond to
the

original

pleading

amended pleading."
Rules

of

"'[a]

Civil

or

within

Prior to

Procedure,

14

days

of

service

of

the

the 2009 Amendments to the Federal

Rule

15

provided,

in

relevant

part,

party shall plead in response to an amended pleading . . .

within 10 days after service of the amended pleading.'"
Wild Wings,
JRT/SER,

Inc.

2011

v.

WL

Buffalo Wings

2261298,

at

*3

& Rings,
n.5

(D.

Minn.

report and recommendation adopted sub nom.
Inc.

v.

Buffalo Wings & Rings,

2261284

(D. Minn.

June

8,

No.

2011)

CIV.

LLC,

No.

Buffalo

09-CV-1426

Mar.

21,

2011)

Buffalo Wild Wings,

09-1426 JRT/SER,

(citing Fed.

R.

Civ.

2011 WL

P.

15(a)

(2007)).

While

the

responsive

majority

pleadings

of

to

district

an

court

amended

cases

which

complaint

address

"base

their

analysis in some part on the provisions of the prior version of
[Rule]

15(a),"

Amendments,
issue."
the

2009

Id.

despite

these

the

prior

"change in language"

cases

remain

Amendments

Notes

the 2009

"instructive

on

this

It appears from the commentary that the purpose of
to Rule

15 was

"to make

time allowed to make one amendment as a

Comm.

under

to

2009

Amendments

to

14

Fed.

[]

changes

matter of course."

R.

Civ.

P.

15.

in

the
Adv.

While

"the 'plead in response to an amended pleading' language is no

longer in the current version of
committee notes make clear

meant

to

establish

new

"[t]he advisory

that the changes

[]

the rule,"

to the rule are

time

limits

for

filing

responsive

pleadings and there is nothing in the notes to suggest the rule
was meant to change the scope of a party's substantive response
to

an

amended

2261298,

at

pleading."

*3

n.5.

Buffalo

Therefore,

Wild
2009

the

Wings,

Inc.,

Amendments

2011

WL

to Rule

15

do not render the prior cases on this issue any less instructive
as

the

still

"plead in response

pertinent

to

the

to

an

amended pleading"

allowable

scope

of

a

language

response

is

to

an

amended pleading.

Prior
party

to

to

amend

counterclaim

or

the

Conn.

Feb.

14,

responsive

there

the

is

Rule

pleading

to

S.

acceptable

of

ends

justice

New

(citing Fed.

allowed
an

reason

a

omitted

for

the

would

be

served

Tel.

Co.

v.

Global

at

*3

(D.

(2007)).

In

England

R.

only

assert

an

CIVA 3:04-CV-2075 JC,
2007)

13(f)

2007 WL 521162,
Civ.

P.

13(f)

by

the minor effect of the 2009 Amendments on Rule 15,

abrogation

significantly
The

Amendments,

amendment."

Inc. , No.

the

a

if

NAPS,

contrast to

2009

"if

[omission] ,
allowing

the

of

affects

elimination

of

Rule

13(f)

continuing

Rule

13(f)

rule governing amendment of

by

the

viability

"establishes

2009
of

Rule

Amendments

prior

caselaw.

15

the

as

sole

a pleading to add a counterclaim,"
15

where before 2009,

the addition of

a

counterclaim in an amended

pleading was governed by Rule 13(f) in conjunction with Rule 15.
Adv.

Comm.

Notes to 2009 Amendments to Fed.

Under

pre-2009

Procedure,

those

versions

courts

of

which

the

gave

interplay of Rules 15(a) and 13(f)

R.

Civ.

Federal

P.

15.

Rules

particular

of

Civil

weight

to

the

followed the narrow approach.

Those courts following the narrow approach "held that an amended
answer

must

be

confined

specifically

to

the

amendments

complaint," based on the interplay of Rules 13(f)
Entm' t,

Co.,

Inc.,

2007

based on

WL

F.

Rules

521162,

"its view of

of Rule 13

186

227 F.R.D.

at 446;

at

*2-3

13(f)

2d

and

402,
15(a),

e.g.,

(following

S.

and 15.

Elite

New England Tel.

the

narrow

approach

415

Wechsler v.

(S.D.N.Y.

that

Hunt Health Sys.,

2002)

defendants

(holding,

could not

add

Ltd.,

based

Complaint,

However,

the

2009

without

first

Amendments

Procedure abrogated Rule 13(f)

sole

rule

governing

counterclaim, "

Civ.
13(f)

P.

15,

and

approach.

Adv.

and,
Rule

amendment

Comm.

Notes

which

the

leave

Federal

and "establishetd]

in so doing,
15,

to

obtaining

of
to

a

2009

of

Rules

on

"defenses

and allegations," which "go above and beyond responding to"

Amended

the

the interplay between certain provisions

and Rule 15(a)");

Supp.

see,

to

the

court).
of

Civil

Rule 15 as

the

pleading

to

add

a

Amendments

to

Fed.

R.

eliminated the interplay of Rule

formed

the

basis

of

the

narrow

Those prior cases following the narrow approach "thus
16

appear to be superseded to the extent that they are inconsistent
with the current version of Rule 15" and its effect as the sole

rule controlling the amendment of counterclaims.
Authentec,

July

6,

Inc.,

No.

2010).

10-424-JF PVT,

This

moderate approach as

leaves

the

Upek, Inc. v.

2010 WL 2681734

permissive

(N.D.

approach

the remaining valid lines

Cal.

and

the

of case law on

this issue.

Courts

applying

the

permissive

plaintiff amends a complaint,

view

hold

"that

once

a

the defendant always has a right

to amend to bring new counterclaims, without regard to the scope
of the amendments."
e.g.,

Digital

Elite Entm't, Inc., 227 F.R.D. at 446; see,

Privacy,

Inc.,

199

F.

Supp.

2d

at

459

n.2

(stating that "when a plaintiff files an amended complaint which
changes

the

theory

or

scope

of

the

case,

the

defendant

is

allowed to plead anew as though it were the original complaint"
and that plaintiff

at

its

own peril"); American Home Prod. Corp. v. Johnson & Johnson,

111

F.R.D.

448,

453

"chose

(S.D.N.Y.

to

amend its

1986)

complaint

(holding

that

a

...

defendant

is

entitled to respond to an amended complaint even with "eleventhhour additions").

While

the permissive

approach does

with the current language of Rule 15(a),
be

the

most

amendment,

no

appropriate
matter

how

approach.
minor
17

not

directly conflict

it does not appear to
Notably,

or

"[i]f

substantive,

every
allowed

defendants
claims

to

that

assert

would

counterclaims

otherwise

revived without cause."

211

F.R.D.

225,

227

be

barred

E.E.O.C.

(S.D.N.Y.

or

v.

defenses
or

as

of

precluded

right,

could

Morgan Stanley & Co.,

2002).

"This

Inc.,

would deprive

the

Court of its ability to effectively manage the litigation."
Furthermore,
the

above

Rule

15,

the

permissive

described

which

Courts

response

be

the

appears

of

"plead

the

in

to

conflict

2009

Id.
with

Amendments

response"

to

language.

Inc., 2011 WL 2261298, at *3 n.5.

applying

may

interpretation

removed

Buffalo Wild Wings,

approach

be

the

filed

moderate

without

view

leave

hold

"that

only

when

an

amended

the

amended

complaint changes the theory or scope of the case, and then, the
breadth of the changes in the amended response must reflect the

breadth of the changes in the amended complaint."

Elite Entm't,

Inc., 227 F.R.D. at 446; see Uniroyal Chem. Co., 1996 WL 120685,

at *4; Pereira v. Cogan, No. 00 Civ. 619 (RWS), 2002 WL 1822928,
at *4 (S.D.N.Y. Aug.

Supp.

at

832

(holding

because plaintiff's
both

the

claims).

7,

factual

2002);

see also,

that defendant

Tralon Corp.,

could

second amended complaint
allegations

as

well

as

anew

only

greatly expanded

the

scope

of

the

"The underlying premise to this approach is 'what is

good for the goose is good for the gander.'"
Co.,

plead

966 F.

1996 WL 120685,

at *4.

18

Uniroyal Chem.

"Not

only

caselaw,

the

is

this

moderate

requirement

that

approach

an

amended

predominant

the

reflect

response

in

the

change in theory or scope of the amended complaint is consistent

with Rule 15's [pre-2009 Amendments]

requirement that an amended

pleading

to

must

Elite Entm't,
Co.,

'plead
Inc.,

in

227

1996 WL 120685,

response'

F.R.D.

at

at 446-47

*4-5) .

As

the

amended

pleading."

(citing Uniroyal Chem.

the purpose behind the 2009

Amendments to Rule 15 appears to have been only to make "changes
in

the

time

course,"
pertinent
pleading.

the

allowed

"plead

to

in

make

one

response"

amendment

language

to the allowable scope of
Adv.

is

response

a

matter

arguably

of

still

to an

amended

Comm. Notes to 2009 Amendments to Fed.

R. Civ.

P. 15; see Buffalo Wild Wings,

a

as

Inc., 2011 WL 2261298, at *3 n.5.

As recognized in Elite Entertainment:
Commentators also agree that the moderate view is

the appropriate view.
In the view of one prominent
commentator,
Professor James Moore,
"[n]ormally,
a
party responding to an amended pleading must 'plead in
response' to the amended pleading, and must request
leave
of
court
if
it wishes
to
add any
new
counterclaims
in
its
response
to
the
amended
pleading."
See 3 James W. Moore, et al. , Moore's
Federal Practice § 15.17[6] (3d ed. 1997).
Yet, "when
a plaintiff's amended complaint changes the theory of
the case, it would be inequitable to require leave of
the court before the defendant could respond with
appropriate counterclaims."

Elite

Entm't,

Inc.,

227

F.R.D.

Id.

at

446-47.

Accordingly,

the

better interpretation of Rule 15(a) appears to this Court to be
"the moderate approach that permits a defendant to respond to an
19

amended complaint

by

adding

that changes

counterclaims

scope of the case."
Furthermore,

discretion

the

in

pleadings."

that

the

similarly

Uniroyal Chem.

Court

notes

deciding

theory or scope of

that

Co.,
"a

whether

F.D.I.C.,

882

F.

change

the

the case

theory

2005 WL 677806,

district

to

court

2d

*2.

has

broad

matters

strike

Supp.

at

or

from

at

870

(citing

Renaissance Greeting Cards, Inc., 227 F. App'x. at 246).
v. Analysis

First,
the

while this Court finds the moderate approach to be

better

formally

interpretation

adopt

such

of

approach

Rule

as

15,

VIS's

the

motion

Court

to

need

strike

not

fails

under either the permissive approach or the moderate approach.
Applying

the

permissive

complaint

"changes

defendant

is

approach,

the

allowed

original complaint."

theory

to

plead

or

when

scope

anew

as

of

the

though

it

amended

case,

were

the

the

Digital Privacy, Inc., 199 F. Supp. 2d at

459 n.2 (emphasis added).

Accordingly, as it is undisputed that

Plaintiff changed at least the damages
adding a claim for willful infringement,

strike Defendants'

plaintiff's

theory of the case by
Plaintiff's motion

to

thirteenth counterclaim cannot prevail under

the permissive approach.

Under the moderate approach, "the breadth of the changes in
the amended response must reflect the breadth of the changes in
the amended complaint."

Elite Entm't,
20

Inc.,

227 F.R.D.

at 446.

However,

this breadth requirement is one of

it does not require the changes

tied

to

the

Uniroyal

changes

Chem.

Co.,

made

in

the

2005

changes

are

to

made to

the response."

WL

the

to the response to be directly

amended
677806,

complaint,
Id.;

proportionality and

complaint.
at

*4) .

then

Id.

"Thus,

major

see also Pereira,

(citing
if major

changes

may

be

2002 WL 1822928,

at *4 ("If the plaintiff expands its case by adding new theories
or claims,

same

by

it

averring

requirement

the

cannot complain if

that

amended

new

the defendant seeks

counterclaims.").

a defendant

complaint;

to

do

is

"[T]here

the

no

specifically tailor its answer

rather,

moderate

courts

attempt

to

to

discern whether the defendant's answer affects the scope of the

litigation in a manner commensurate with the amended complaint."
S. New England Tel.
Chem.,

2007 WL 521162,

2005 WL 677806, at *2)

Here,

it

infringement

is

F.3d

1360,

infringement

is

infringement than

requires,

clear

claim

enhanced damages,
497

Co.,

to

VIS's

(citing Uniroyal

addition

amended complaint,

of

1371

(Fed.

premised

Cir.

on

a

2007).

A

separate

the

willful

which allows

changed the scope of the case.

for

In re Seagate,

claim

theory

of

willful

of

patent

that of direct or induced infringement as it

at least, the "reckless disregard" of the possibility

of infringing another's known patent.
v.

*2

(emphasis added).

that

the

at

Microsoft

Corp.,

640

F.

Supp.
21

Id.;

2d 150,

see Uniloc USA,
176-77

(D.R.I.

Inc.
2009)

aff'd

in part,

rev'd

(characterizing

in part,

willful

unreasonable conduct");
598

F.3d

when

831,

the

defendant's

Cir.

was

Seagate,

damages

and

as

(Fed.

is

2010)

aware

"objectively

("Infringement

of

the

infringement
497

applies

based

Read Corp. v. Portec,

F.3d at

when

determined

conduct

Cir.

2011)

reckless

i4i Ltd. Partnership v. Microsoft Corp.,

constituted

(quoting In re

found

1292

asserted

'acted despite an objectively high

actions

enhanced

F.3d

infringement

(Fed.

infringer

nonetheless

its

860

632

of

[the]

on all

the

willful

patent,

patent.'"

The deterrent

infringement

has

egregiousness

facts

but

likelihood that

valid

1371)).

willful

"by

a

is

of

been

of

the

and circumstances."

Inc., 970 F.2d 816, 826

(Fed. Cir. 1992).

Thus, a willful infringement allegation does not "merely allow[]
for additional damages,"

as VIS

asserts,

PL's Rebuttal Br. at

8, ECF No. 173, but provides for the possibility of enhanced and

punitive

damages

culpability,

"as

a

penalty

for

an

infringer's

namely willful infringement or bad faith."

Bremse Systeme Fuer Nutzfahrzeuge GmbH v.
1337,

Eng.

1348

(Fed.

Printing &

Cir. 1991)).
not

increased

mandatory

Cir.

2004)

(citing Beatrice

Lithographing

Furthermore,
when

Dana Corp.,

Co.,

923

Knorr383

Foods

1576,

F.2d

Co.

1579

F.3d

v.

New

(Fed.

"[a]lthough an attorney fee award is

willful

infringement

has

been

found,

precedent establishes that the court should explain its decision
not

to

award

attorney

fees."

Spectralytics,
22

Inc.

v.

Cordis

Corp.,

649

F.3d 1336,

1349

(Fed.

Cir.

Transclean Corp. v.

Bridgewood Servs.,

(Fed.

Thus,

is

Cir.

based

2002)).

on a

infringement

theory

willful

of

(citing inter alia

Inc.,

290 F.3d 1364,

infringement is

objectively

and can result

2011)

in an

reckless

award of

1379

a claim which

and unreasonable

attorney's

fees

as

well as enhanced and punitive damages.
Samsung's addition of

its

inequitable conduct counterclaim

and affirmative defense introduced a theory of patent invalidity
based on its assertion that VIS specifically intended to deceive
the

United

"USPTO"),

States

and that

patent issuance.
649

F.3d

Patent

1276,

and

Trademark

Office

such deception had "but-for"
Therasense,

1290-91

(Fed.

Inc.
Cir.

v.

Becton,

2011)

(hereinafter

materiality to

Dickinson & Co.,

(defining

the

strict

"but-for" materiality test and including an equitable exception
for

"cases

added)).
renders

of

affirmative

"[Unequitable

egregious

conduct

misconduct"

regarding

any

(emphasis

single

claim

the entire patent unenforceable

. . ., cannot be cured

by reissue ... or reexamination . . .,

[and] can spread from a

single patent to render unenforceable other related patents and
applications

in

the

(internal citations

same

technology

omitted).

family."

"Further,

Id.

at

1288

prevailing on a claim

of inequitable conduct often makes a case 'exceptional, ' leading
potentially
§ 285."

to

Id.

an
at

award
1289

of

attorneys'

(citing
23

fees

Brasseler,

under

U.S.A.

35
I,

U.S.C.
L.P.

v.

Stryker

Thus,

Sales

Corp.,

inequitable

267

F.3d

conduct

is

1370,

a

1380

claim

(Fed.

based

Cir.

on

2001)).

material

and

intentional deception and can result in an award of attorney's
fees,

as well as unenforceability of the patent(s)

Both

claims

inequitable
behavior

issue

conduct,

and,

effects.

at

if

are

here,

based

proven,

can

In other words,

willful

on

infringement

allegations

result

there is

at issue.

in

a

of

enhanced

bad

and
faith

detrimental

rough equivalence between

the reckless disregard required for willful infringement and the

material

deception

conduct.

Thus,

whether

to

App'x.

at

the

exercising

strike

Supp. 2d at 870

of

matters

USPTO
its

required

"broad

from

for

discretion

pleadings,"

the

Court

determines

that

in

deciding

F.D.I.C.,

(citing Renaissance Greeting Cards,

246),

inequitable

882

F.

Inc., 227 F.

Defendants'

addition

of the allegations of inequitable conduct affected "the scope of
the

case

in

a

manner

commensurate

willful

infringement claim.

521162,

at

Therefore,

*2

with"

VIS's

addition

S. New England Tel.

(citing Uniroyal

Chem.,

under these circumstances,

2005 WL

Co.,

677806,

of

the

2007

WL

at

Samsung's addition of

*2) .
the

inequitable conduct allegations4 in its amended response to VIS's

4 As

Defendants'

inequitable

conduct

counterclaim

defense are premised upon the same facts and law,

and

affirmative

the addition of the

inequitable conduct affirmative defense did not add any new matter to
the

case

not

counterclaim.

already
Thus,

the

present

through

affirmative

the

defense

inequitable
did

not

conduct

increase

the

scope of the case beyond the increase to scope from the addition of
the inequitable conduct counterclaim.
As such, the above analysis and
24

amended complaint is permissible as a matter of right under the
moderate approach to Rule 15.
For

the

inequitable

their

reasons

conduct

amended

above,

Defendants'

counterclaim

response

is

and

addition

affirmative

permissible

without

of

the

defense

leave

of

in

court

pursuant to Rule 15 under either the permissive approach or the
moderate
DENIED.

approach.
ECF No.

Accordingly,

VIS's

Motion

to

Strike

is

141.

C. VIS's Motion for Summary Judgment

In the event this Court denied VIS's motion to strike,

VIS

alternatively moved for summary judgment with regard to the two

allegations
thirteenth

of

inequitable

counterclaim.

inequitable conduct.
Wang,

a

true

conduct
Samsung

set
makes

forth
two

in

Samsung's

allegations

of

The first allegation asserts that Dr. Ann

inventor,

signed

Prof.

Halal's

name

where

Prof.

Halal's original signature as another true inventor was required
on the '341 Application Declaration.

Am.

Compl.

34-36,

ECF No.

132.

Defs.'

Answer to the First

The second allegation asserts

the withholding of "materially relevant information," including
the "Rakib" prior art reference,

"from the USPTO with the intent

to deceive" during the prosecution of the '733 and '398 patents.
Id.

at

36-40.

conclusion

are

For

Samsung

equally

to

applicable

defense.
25

prevail

to

the

on

its

newly

allegations

added

of

affirmative

inequitable

conduct,

it

"must

prove

that

the

applicant

misrepresented or omitted material information with the specific
intent to deceive the PTO" and,

for" materiality and specific
evidence."

Therasense,

Scientific

Inc.

v.

R.J.

1365 (Fed. Cir. 2008))

at trial,

intent

Inc.,

649

Reynolds

must prove both "but-

"by

clear and convincing

F.3d

at

Tobacco

1287

Co.,

(citing

537

F.3d

Star
1357,

(emphasis added).

i. VIS's Arguments in Support of their Motion

VIS argues that there is no genuine issue of material
as

to

whether

actions
such,

meet

it

the

sought

to

required

deceive

the

"but-for"

USPTO

or

materiality

whether

test,

the Court should grant summary judgment in VIS's

fact
such

and,

as

favor as

to Samsung's counterclaim of inequitable conduct.
With regard to the allegation of

on

Dr.

Wang

application,
Prof.

having

signed

Prof.

inequitable conduct based

Halal's

Halal's name and that her act of

intentional deception,

(citing Seiko Epson corp.
1367

the

patent

(Fed.

Cir.

signing was
which,

thus a mere

"absent fraud or

[is] not inequitable conduct as would [be

required to] invalidate a patent."

1360,

on

VIS argues that Dr. Wang had authorization to sign

technical violation of USPTO procedure,

142

name

v.

1999)).

Mem. in Supp. at 19, ECF No.
Nu-Kote Int'l,

Inc.,

190 F.3d

VIS cites to Ajinomoto Co. , Inc.

v. Archer-Daniels-Midland Co. in support of the proposition that

"a declaration for inventorship
26

[]

not personally signed by at

least one of the named inventors,

but

[]

signed on his behalf

with his authorization" does not constitute inequitable conduct
and argues that, as in Ajinomoto, Dr. Wang's signature on behalf

of

Prof.

Halal

arose

USPTO procedures.
(Fed.

Cir.

Id.

application pro se,

of

1 9,
on

aware of

inventorship

inventors."

at

issue

the

that

is

228

Dr.

original

F.3d 1338,

Wang

formal

the PTO requirement

that

filed

legal

1343
'341

training,

the declaration

signatures

ECF No.

the

the

of

142

all

co-

(citing Ex. 1

VIS further asserts that "summary judgment

warranted"

specific

because,

must prove

that

reasonable

inference"

and when,

reasonable

inferences

that

cannot be found."

misunderstanding of

time had no

in Supp. at 20-21,

ECF No. 142-1).
this

asserts

contain

Mem.

technical

(citing Ajinomoto,

VIS

2000)).

and "was not

from a

Id.

intent

may

at 22

to

to

prevail,

deceive

as
[be]

is

here,

the single most

"there

drawn,

"Defendants

are

intent

(citing Therasense,

to

Inc.,

multiple
deceive
649 F.3d

at 1290).

With regard to

on

the allegation of

patent

applicant

VIS's

references,

including

"Rakib,"

M.P.E.P.

§ 609.02,

failure

VIS

inequitable conduct based

to

disclose

prior

argues

that,

pursuant

patentees have no duty to

disclose art

is already cited by the USPTO in a parent application.
22-23.

VIS asserts that,

consistent with M.P.E.P.

was Dr.

Ann Wang's understanding [at the time]
27

art

to
that

Id. at

§ 609.02,

"it

that there was no

duty

to disclose

references

in a continuation-in-part

were previously disclosed in a parent application."

(citing Ex.

1 i 17,

ECF No.

142-1).

[]

that

id. at 24

VIS further asserts that,

notwithstanding the fact that Dr. Wang wrote the words "caution,
important art" on the "Rakib"
past,

reference at some point in the

Dr. Wang's deposition testimony indicating that she does

not remember when, or in connection to which project or activity
with

VIS,

she

wrote

intent to deceive.

those

words

Id. at 24-25

supports

an

inference

the

'733

and

'398

no

(citing Ex. 8 at 283:15-285:6,

ECF No. 142-8; Ex. 1 if 19-20, ECF No. 142-1).
that

of

patents

did

VIS also argues

not

issue

"but-for"

patentee's failure to cite "Rakib" to the USPTO because patentee
had already overcome

parent

application,

five

based

rejections

on

that

of

same

without having had to amend the claims,
that

prior

"conversion"

art

reference

element

of

"Rakib"

VIS's

the

piece

of

prior

the

art,

but purely by arguing

failed

invention.

'492 patent,

Id.

to

disclose
at

the

25-26.

VIS

asserts that the "conversion" at issue in the parent application

is similarly present in all claims of the '733 and '398 patents
and,

as

such,

any

rejections

under

have

been

overcome by the same arguments previously advanced by VIS.

Id.

at 26.

28

"Rakib"

would

ii. Samsung's Arguments in Opposition
Samsung

argues

that

"Dr.

Wang's

declaration

that

she

believed personal signatures were not required is belied by both
her contemporaneous actions," including her "failure to indicate
she was signing per Dr.

Halal's alleged authorization," "and her

deposition testimony in this case."
ECF No. 152.

Mem. in Response at 17-18,

Samsung specifically questions "why she would sign

by direction for the inventor eight miles away [Prof. Halal] but
not

for the

[other] inventors over 6,900 and 2,600 miles away"

as well as "submit original signatures in other instances."

at 18.

Samsung asserts that "the circumstantial evidence,

interpreted in Samsung's favor

and Dr.

Wang's

strongly

subsequent

supports

the

Id. at 17.

when

(as it must be on this motion),

inconsistent

conclusion

[deposition]

that

knowledge that the absence of Dr. Halal's
material."

Id.

Dr.

Wang

testimony,
had

actual

actual signature was

Samsung also asserts that courts must be

cautious about granting summary judgment where the outcome turns
on a determination of intent,

undisputed,

601

even where the facts are

if the factual inferences are disputed there can be

no summary judgment.
Ltd.,

and that,

F.2d

Samsung argues

139,

that,

Id. at 4-5 (citing Morrison v. Nissan Co.,
141
under

(4th
this

Cir.

1979)

standard,

Dr.

(emphasis
Wang's

added).

intent in

signing Prof. Halal's name presents a genuine issue of material

29

fact and that VIS cannot prove otherwise by simply introducing
contradictory testimonial evidence.

Id. at 17.

Samsung also asserts that, at a minimum,

"genuine issues of

fact exist as to whether the writing falsely represented as Dr.
Halal's signature constitutes an unmistakably false affidavit."
Id. at 13.

for"

Samsung argues that it is unnecessary to prove "but-

materiality where

an

unmistakably

false

affidavit

exists

and that such doctrine has been recognized in other cases.

(citing Therasense,

649 F.3d at 1285;

Ex Parte Hipkins,

Id.

Sr. and

Frank M. Locotos, No. 90-2250, 20 U.S.P.Q.2d 1694 (B.P.A.I. Aug.
7,

1991)).

Samsung further argues

submission

an

of

the

unmistakably

Declaration

false

of

that

"[e]ven if Dr.

Invention

affidavit,"

"a

does

personal

not

constitute

signature

required on a Declaration of Invention" under 37 C.F.R.

Id.

at

15.

Samsung

therefore asserts

that

Wang's

"simple

is

§ 1.64.

statutory

interpretation shows that a patent is per se invalid if it does
not strictly comply with the requirements of 35 U.S.C.

37 C.F.R.
1694

§ 1.64."

Id.

(citing Ex Parte Hipkins,

§ 115 and

20 U.S.P.Q.2d

(seeking to correct by reissue the false signature on the

original

declaration

where

signature

was

not

made

by

the

co-

inventor but instead was made by someone else on his behalf)).
Samsung

obtained

further

or

argues

can

procedures now is

that

correct
not a

"the

the

fact

patent

that

by

remedy that affects
30

[VIS]

could

following
this

have

proper

lawsuit"

and,

furthermore,
Id.

such

actions

"are

speculative

until

completed."

at 16.

As to the second allegation of inequitable conduct,
argues that if "Rakib"

invalidated

VIS's

had been disclosed by VIS

patents,

materiality requirement.

thus

Id.

satisfying

at 19.

Samsung

it would have

the

"but-for"

Moreover, Samsung argues

that patentee VIS did have a duty to disclose "Rakib" as it was

not

cited

parent

which

by

examiner

application

until

later issued as

been filed.
Inc.

the

v.

Id.

at

BridgeMed.,

Samsung

also

"merely offers
inability

19-20
Inc.,

argues

dispute that Dr.

to

the

that

after

consideration

the

'733 and

of

continuing

'398 patents,

F.3d 897,

"VIS

does

925

not

(Fed.

offer

'341

applications,

had already

(citing to McKesson Info.
487

the

Solutions,

Cir.

any

2007)).

facts

Wang knew of Rakib and its materiality,"

new declaration

recollect

annotated the

during

"Rakib"

to

but

testimony regarding her general

anything

about

reference.

Id.

when

at

she

24.

discovered"

or

Samsung further

asserts that, with respect to the "Rakib" reference she produced
in discovery,

"Dr. Wang's notation 'Caution,

Important Art' next

to Rakib claim 1 and her testimony that she disclosed it to her
prosecution
material"

counsel

and

that

[Mr.

Tobin]

"Mr.

Tobin's

show

that

inability

she
to

knew

it

remember

was
such

disclosure can give rise to an inference of knowing omission by

31

Dr.

Wang,"

depending on the credibility accorded Mr.

Dr. Wang.

Tobin and

IdL_ at 25-26.
iii. VIS's Rebuttal Arguments

As

to

the

first

allegation

of

inequitable

conduct,

VIS

asserts that Samsung has failed to set forth specific facts that
are in dispute regarding Dr.

and is relying on
made

in

173.

its

VIS

testimony
posits,

argues

that

not

signature for Prof.

"mere allegations

counterclaim.

is

PL's

the

facts

contradictory.

Id.

reasonable

inference

Dr.

authorization

for

Wang

reasons

signed
of

at

for

Br.

at

10,

15-16.
from
Prof.

convenience

Halal,

the pleadings,"
ECF

are undisputed and Dr.

that

is

of

Rebuttal

most

the

testimony

the

Wang's

No.

Wang's

Rather,

VIS

facts

and

the
Halal

and

as

with

answered

his
the

questions at her deposition eight years later to the best of her
knowledge.

Id.

show intent and

VIS

thus concludes

"but-for"

materiality by

evidence" as required by Therasense.5
asserts
claim

that

that

"Defendants'
led

the

that Samsung has

failed to

"clear and convincing

Id. at 16-17.

VIS further

counterclaim is precisely the type of

Federal

Circuit

to

liken

the

inequitable conduct to both a plague and a cancer."

defense

of

Id. at 11.

5 The Court notes that Therasense sets forth the standard for proving
inequitable conduct at trial and that this is a motion for summary
judgment.
However, the trial standard is relevant because, at summary
judgment, "the judge must view the evidence presented through the
prism of the substantive evidentiary burden." Anderson v. Liberty
Lobby Inc.,

477 U.S.

242,

254

(1986).
32

As

to

the

second

allegation

of

inequitable

conduct,

VIS

argues in its reply brief that not only was there "no duty to
disclose the Rakib reference," Id. at 18, but that,

"the record

is entirely devoid of any evidence of intent to deceive," Id. at
19.

In support of

this

contention,

no support in any of Defendants'

Wang did not give
counsel,"

Mr.

that Mr.

Tobin handles

prosecutor,
single

and

it

is

reference

deposed.

Id.

at

issue

"[g]iven the

that

"there is

to her prosecution

large number of matters

in his full-time practice as a patent

unsurprising
from

asserts

citations for the idea that Dr.

the reference

Tobin,

VIS

nearly

that
a

he

decade

would

not

earlier"

remember

when

he

a

was

at 20-21.

iv. Applicable Standard

The

Federal

Rules

of

Civil

Procedure

provide

that

a

district court shall grant summary judgment in favor of a movant

if such party "shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter
of

law."

Fed.

R.

Civ.

P.

56(a).

The mere

alleged factual dispute between the parties

otherwise properly supported motion

existence

of

some

"will not defeat an

for summary judgment;

the

requirement is that there be no genuine issue of material fact."
Anderson

v.

(defining

reasonable

Liberty

"genuine"

jury

Lobby

Inc.,

dispute as

could

477

"if

return

a
33

the

U.S.

242,

evidence

verdict

for

247-48
is

(1986)

such that a

the

nonmoving

party").
that

Furthermore,

the

evidence

the standard at summary judgment requires

be viewed

in

favor

of

the

nonmovant

all "justifiable inferences" be drawn in his favor.

and

that

Id. at 255.

If a movant has properly advanced evidence supporting entry

of summary judgment, the non-moving party may not rest upon the
mere allegations
specific

facts

of
in

the
the

pleadings,
form

of

illustrating a genuine

issue

Catrett,

judge's

U.S.

function

317,

is

not

instead must

exhibits

322-24

477

but

for

and

trial.6

(1986).

himself

to

sworn

set

forth

statements

Celotex Corp.
At

weigh

that

the

v.

point,

"the

evidence

and

determine the truth of the matter but to determine whether there

is a genuine issue for trial."

Anderson,

477 U.S. at 249.

In

doing so, the judge must construe the facts and all "justifiable

inferences" in the light most favorable to the non-moving party,
and, further, the judge may not make credibility determinations.
Id.

at 255; T-Mobile Northeast LLC v.

Newport News,

Va.,

City Council of City of

674 F.3d 380, 385 (4th Cir.

"Credibility determinations,

2012).

the weighing of the evidence,

and the drawing of legitimate inferences from the facts are jury
functions,
motion

for

not those of a judge,
summary

judgment

or

whether he is ruling on a
for

a

directed

verdict."

"When a motion for summary judgment is properly made and supported,
an opposing party may not rely merely on allegations or denials in its
own pleading; rather, its response must-by affidavits or as otherwise
provided in this rule—set out specific facts showing a genuine issue
for trial." Fed. R. Civ.

P. 56(e)(2).
34

Anderson,

477 U.S.

at

255.

Therefore,

"[a]

court must exercise

great care in granting summary judgment when a party's motives
or

intentions

are

at

issue,"

because

someone's state of mind usually entails
inferences

as

traditionally

to

which

left

to

jury.'"

the

drawing of

factual

differ-a

function

Hall

v.

Williams,

6007, 1992 WL 71566 at *3 (4th Cir. April 13, 1992)

table decision at 960 F.2d 146)
et

al.,

1983)).

Federal

Practice

However,

of

might

reasonable men
the

"'determination

No.

91-

(unpublished

(quoting 10A Charles A. Wright,

and Procedure

§ 2730,

to prevent summary judgment,

at

238

(2d ed.

"there still must

be some fact from which the trier of fact reasonably could infer

some other state of mind."
559,
570

572

(W.D. Va.

F.3d 546

2008)

(4th Cir.

Hunsberger v. Wood,

564 F.

Supp. 2d

rev'd and remanded on other grounds,

2009);

see e.g.,

Anderson,

477

U.S.

at

255-56 ("Thus, where the factual dispute concerns actual malice,
. . . the appropriate summary judgment question will be whether

the

evidence

in

the

record

could

support

a

reasonable

jury

finding either that the plaintiff has shown actual malice by
clear and convincing evidence or that the plaintiff has not.").
"Summary
material

fact

judgment
is

will

'genuine, '

not

lie

if

the

dispute

that

is,

if

the

evidence

about
is

a

such

that a reasonable jury could return a verdict for the nonmoving
party."
on

Anderson,

summary

477 U.S. at 248.

judgment

"necessarily
35

Moreover,
implicates

because a ruling
the

substantive

evidentiary standard of proof

that would apply at

the

trial on

the merits," to defeat a motion for summary judgment "there must

be

evidence

on

which

the

jury

could

reasonably

[non-movant]" under the standard of proof at
477 U.S.

at 252.

Thus,

find

trial.

for

the

Anderson,

"[i]n rendering a decision on a motion

for summary judgment, a court must 'view the evidence presented
through

the prism of

the

substantive

evidentiary burden'

that

would inhere at trial." Apple Computer, Inc. v. Articulate Sys.,
Inc., 234 F.3d 14, 20 (Fed. Cir. 2000) (quoting Monarch Knitting
Mach. Corp. v. Sulzer Morat Gmbh,
1998)

139 F.3d 877, 880,

(Fed. Cir.

(quoting Anderson, 477 U.S. at 254)).
v. Analysis

The

parties

agree

testimony are undisputed.
Prof.
Halal

Halal's
is

signature

correctly

Application;

2)

Dr.

that

the

basic

facts

and

deposition

The undisputed facts with respect to
are

named

summarized
as

a

as

follows:

co-inventor

Wang signed Prof.

on

1)
the

Halal's name to the

Prof.
'341

'341

Application without indicating it was not personally signed by
Prof.

Halal;

3)

Dr.

Wang testified during her first deposition

that, to the best of her knowledge at that time, Prof. Halal had

personally signed the '341 Application; 4) after reviewing Prof.
Halal's deposition of July 24, 2013,

Dr. Wang testified in her

second deposition that she had signed Prof.

Halal's name to the

'341 Application pursuant to his authorization.
36

The

undisputed

facts

reference

allegation

are

reference

"Rakib"

of

the

'341

was

with

respect

summarized

as

to

the

follows:

prior

1)

art

prior

art

cited by the examiner during prosecution

Application

on

February

21,

2008

in

a

Notice

of

References Cited; 2) the '733 patent was filed May 22, 2007,

and

the

the

'398

patent,

'733 patent;

filed May

3)

on a copy of

important art" and,
wrote those words;

genuinely

2011,

is

"Rakib,"

at deposition,

a

Dr.

continuation of
Wang wrote

"caution

she did not remember when she

4) "Rakib" was not considered by the examiner

during prosecution of the
only

6,

disputed

'733 or
issues

'398 patents.
with

respect

Therefore,
to

each

the

alleged

instance of inequitable conduct are the inferences of intent and

materiality to be drawn from the undisputed facts.

"To

prevail

on

the

defense

of

inequitable

conduct,

the

accused infringer must prove that the applicant misrepresented
or

omitted

material

information

with

the

specific

intent

to

deceive the PTO" and, at trial, must prove both materiality and
specific intent "by clear and convincing evidence."

Therasense,

Inc.,

649 F.3d at 1287

(citing Star Scientific Inc.,

537 F.3d at

1365)

(emphasis added).

Thus, at summary judgment,

the question

before the Court is whether there is a genuine issue of material
fact

as

material

to

whether

"the

applicant

information

with

the

intent

misrepresented
to

deceive

the

or

omitted

PTO"

such

that a reasonable fact finder could find by clear and convincing
37

evidence

that

inquiry

inequitable

performed

is

conduct

the

has

occurred.

threshold

inquiry

of

whether there is the need for a trial - whether,

there

are

any

genuine

factual

issues

that

Id.

"The

determining

in other words,

properly

can

be

resolved only by a finder of fact because they may reasonably be
resolved in favor of either party."
When

the

materiality

necessary

Federal

Circuit

specific

and

Anderson,

intent

to prove

inequitable

in

to

477 U.S. at 250.

Therasense

deceive

conduct,

as

it

identified

the

further

elements

specified
and,

that "[i]ntent and materiality are separate requirements"
as

such,

"a

court must weigh the evidence of

intent

independent of its analysis of materiality."

649 F.3d at 1290.

Consequently,

knew

art]

of

a

[prior

materiality,
suffice

to

prove

Furthermore,
of

specific

should

to submit it
intent

deceive

Therasense,

Inc.,

"[p]roving that the applicant

reference,

and decided not

to

to

have
to

known

the PTO"

deceive.

Id.

of

its

will not
at

1290.

even if an accused infringer satisfies both prongs

the inequitable conduct

test,

the district

court must still

"weigh the equities to determine whether the applicant's conduct

before

the

PTO

unenforceable."

warrants

rendering

icL at 1287

the

entire

patent

(citing Star Scientific Inc.,

537

F.3d at 1365).

With
conduct,

regard
"as

a

to

the

general

materiality

matter,
38

the

prong

of

materiality

inequitable
required

to

establish inequitable conduct is but-for materiality."
1291.

"But-for"

have

allowed

misconduct.
a

materiality

Id.

that

claim

a

requires

it

aware

For example,

withheld reference,

would

have

had

allowed

the
the

undisclosed

set

"includes

an

misconduct,"

forth

claim

if

Id.
by

exception

PTO would not

of"

the

alleged

determine whether

it

had

been

Furthermore,

the

for

at

"in assessing the materiality of

court must

reference."

requirement

been

"the

Id.

Federal

the

Circuit

affirmative

aware

in

acts

the

PTO

of

the

materiality
Therasense

of

egregious

such as perjury and suppression of evidence.

id.

at 1293.

With regard to the specific intent prong

of inequitable

conduct, first "it bears noting that the intent in question is

an intent to deceive the patent office into issuing the patent,
not

merely

the

intent

to

do

what

was

done

in

prosecution."

3M Innovative Properties Co. v. Dupont Dow Elastomers LLC,
F. Supp. 2d 958, 977 (D. Minn. 2005)
Peachtree Doors,

Inc.,

361

(citing Therma-Tru Corp. v.

44 F.3d 988, 995

(Fed. Cir. 1995)).

When

making the determination as to whether the applicant acted with
the "intent to deceive the PTO,"
that a finding
to

gross

the Court

must

"that the misrepresentation or

negligence

or

negligence

under

a

649 F.3d at

1290.

Moreover,
39

in mind

omission amounts

'should have

standard does not satisfy this intent requirement."

Inc.,

keep

known'

Therasense,

when determining deceptive

intent from "indirect and circumstantial evidence,"

clear and convincing evidence standard,

the

"to meet the

specific

intent

to

deceive must be 'the single most reasonable inference able to be
drawn from the evidence.'"
537

F.3d at

Aluminart

Indeed,

1366

Id.

(quoting Star Scientific Inc.,

and citing Larson Mfg.

Prods.

Ltd.,

because,

559

under

F.3d 1317,

the

clear

Co.

of

1340

and

S.D.,

(Fed. Cir.

convincing

Inc.

v.

2009)).

evidentiary

standard, "the evidence 'must be sufficient to require a finding
of

deceitful

intent

in

the

light of

all

the

circumstances[,]'

. . . when there are multiple reasonable inferences that may be
drawn,

intent

to

deceive

cannot

be

found."

Id.

at

1290-91

(quoting Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863
F.2d 867, 873

(Fed. Cir.

1988))

(emphasis added in Therasense,

Inc.).

Here,

it has been argued persistently by Samsung that the

determination of whether there

fact

regarding

credibility

Wang's

intent

with

regard

to

noted,

previously

the

Court

credibility
Anderson,

Dr.

is a genuine

477

determinations
U.S.

at

255.

her

Of

arguably

deposition

is

at

issue of material

the

barred

credibility issue in the first place,

for

testimony.

from

summary

course,

implicates

there

As

making

judgment

her

such
stage.

to be a

true

"there still must be some

fact from which" the trier of fact could reasonably find either
that Samsung has or has not shown specific intent to deceive by
40

clear and convincing evidence,

as to intent.7
477

U.S.

actual

at

creating a genuine dispute

Hunsberger, 564 F. Supp. 2d at 572; see Anderson,

255-56

malice,"

summary

thus

("Thus,

a

judgment

state

where

of

the

mind

question will

factual

dispute

inquiry,

be whether

"the

the

concerns

appropriate

evidence

in

the

record could support a reasonable jury finding either that the

plaintiff

has

shown actual

evidence

or

that

[Federal

Circuit]

summary judgment

the

malice

plaintiff

precedent

by

has

urges

not.").

caution

respecting a defense

summary judgment is not

clear

foreclosed."

of

and

convincing

Thus,

in

"[w]hile

the

grant

inequitable

of

conduct,

Paragon Podiatry Lab.,

Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1190 (Fed. Cir. 1993).

1. Inequitable Conduct Based on Prof. Halal's Signature

First considering the specific intent prong of inequitable
conduct,

drawing

the appropriate summary judgment question is whether,

all

reasonable

inferences

in

Samsung's

favor,

"the

evidence in the record could support a reasonable [fact finder]
finding either

that

deceive the USPTO]

[Samsung]
by

has

shown

[specific

clear and convincing

intent to

evidence or that

7 Moreover, "[o]nly disputes over facts that might affect the outcome
of the suit
Anderson, 477
Dr. Wang had

under the governing law" are considered "material."
U.S. at 248.
The question before the Court is whether
the specific intent to deceive the USPTO at the time

these actions took place.

In determining specific intent, a potential

lie

from

years

in

the

future

the

conduct

at

issue

is

immaterial.

Whether or not Dr. Wang made false statements during her depositions
has no effect on the Court's following analysis or conclusion.
Hunsberger, 564 F. Supp. 2d at 572; Anderson, 477 U.S. at 255-56.
41

See

[Samsung] has not."
of

the

above

Anderson,

in mind and drawing all

non-movant Samsung's
that

a reasonable

convincing

477 U.S. at 255-56.

favor,

fact

evidence

reasonable

the Court

finder

cannot

could find,

standard,

that

Keeping all
inferences

justifiably infer

under

specific

the clear and

intent

the USPTO is the "'single most reasonable inference'

from the evidence" before the Court,
Samsung

to

prevail

against

Therasense,

Inc.,

reasonable

inferences

VIS's

in

to

deceive

to be drawn

as would be required for
summary

judgment

motion.

649 F.3d at 1290 ("[W]hen there are multiple

cannot be found.").

that

may

be

Specifically,

drawn,

intent

the Court

to

deceive

finds that,

even

drawing all reasonable inferences in Samsung's favor, because no
reasonable

fact

finder

could

conclude

as

the

most

reasonable

inference that Dr. Wang had the specific intent to deceive the

USPTO into issuing the claims,

there is no genuine issue of

material fact as to Dr. Wang's intent.

The expected motivation for submitting the false signature

of a true inventor would be the threat of losing the priority
date from a provisional patent application.
provisional patent

application allows

The filing of a

the patentee to obtain a

filing date and accords them one year in which to submit a nonprovisional

deadline

patent

for

application

filing a

on

the

nonprovisional

same

patent

matter.

If

the

application

was

imminent and one of the inventors had failed to sign an oath or
42

declaration,

the

the patentee would have three options:

inventor

is

unavailable

or

valid signature in place of
U.S.C.

and

§§ 116,

117,

409.01-03;

application

118;

2)

that

refuses

to

sign

inventor's

patent

and

acquire

a

the inventor in accordance with 35

37

C.F.R.

remove

from

§ 1.64;

the

M.P.E.P.

§§ 605.04

nonprovisional

patent

subject matter contributed by the non-signing

inventor and proceed without that inventor;

the

1) show that

signature

application

and

after

risk

the

or 3) work to obtain

filing

deadline,

the

nonprovisional

thus

forfeiting

the

benefit of the provisional application's priority date.

However,

in

this

case,

the

nonprovisional

patent

application was filed nearly a month before the deadline.8
Dr.

Wang known,

as

Samsung

contends,

that

original

Had

signatures

were required and that the lack of an oath or declaration would

be a material defect in the patent application,
have

had

over

three

weeks

to

obtain

Prof.

Dr. Wang would

Halal's

original

signature before the priority date of the application would have
been

at

risk.

Furthermore,

obtaining

Prof.

Halal's

would likely not have been a great hardship because,
out

by

Samsung itself,

Dr.

Wang and Prof.

Halal

signature

as pointed

resided only

eight miles apart and no facts indicate that he was unavailable

during

that

time period.

8 The provisional

Even assuming

application

was

filed

that

July

Prof.

16,

Halal

2004

and

had

the

nonprovisional application was filed June 24, 2005, over three weeks
before the July 18, 2005 deadline (the deadline being July 18, 2005 as
July 16,

2005 was a Saturday).
43

been unavailable due to being in another area during that time

period, Dr. Wang's successful procurement of original signatures

from the

inventors

indicates

that

obtaining

Prof.

Furthermore,

located over

she

would

Halal's

there

are

6,900

have

likely

signature
no

facts

and

in

to

2,600 miles

been

that

successful

instance

indicate

away

that

in

as

well.

Prof.

Halal

would have been unwilling to sign the declaration or that he had

not granted authorization for Dr. Wang to sign the declaration

on his behalf.

In fact,

the deposition

Halal indicates that Dr.

Wang

executing

testimony from Prof.
a signature

on Prof.

Halal's behalf was an established practice between them.

Mem.

in Supp.,

Ex.

9 at 92:12-23,

ECF No.

See,

142-9 ("Q: Did you

authorize Ann Wang to sign your name on that document? A: Yes.
We

did that

often,

just

for

convenience.

trip to her home in Virginia,
me.");

see also id.

Therefore,

Rather

than make a

I asked if she could sign for

at 102:19-103:8.

even

drawing

all

reasonable

inferences

in

Samsung's favor, no reasonable fact finder could find, under the
clear and convincing evidence standard,

that the most reasonable

inference is that Dr. Wang had the specific intent

the USPTO into issuing the claims.

Thus,

to deceive

there is no genuine

issue of material fact with regard to the required specific
intent prong of inequitable conduct and summary judgment for VIS
is

merited.

Accordingly,

the

Court
44

GRANTS

VIS's

motion

for

summary judgment in favor of Plaintiff with regard to Samsung's
allegation of inequitable conduct based on Dr. Wang's signing of
Prof.

Halal's name to the declaration.

Alternatively,
appropriate
Samsung

the

because

cannot

the

having

Prof.

that

"but-for"

Notably,

signed

finds

undisputed

demonstrate

convincing evidence.
Wang

Court

ECF No.

141.

summary

facts

judgment

demonstrate

materiality

by

is

that

clear

and

had the USPTO been aware of Dr.

Halal's

name

with

his

authorization,

patentee VIS would have been given the opportunity to remedy the
error

through

the

submission

pursuant to M.P.E.P.
August

2012)

("In

of

§ 602.03.
the

first

a

supplemental

M.P.E.P.
Office

§ 602.03

action

declaration

(8th ed.

the

rev.9

examiner

must

point out every deficiency in a declaration or oath and require
that the same be remedied.");
to

be

filed

in

the

Patent

see 35 U.S.C.

and

Trademark

§ 26

("Any document

Office

and

which

is

required by any law, rule, or other regulation to be executed in

a specified manner may be provisionally accepted by the Director
despite

a

defective

execution,

provided

a

properly

executed

document is submitted within such time as may be prescribed.");
37

C.F.R.

§ 1.67(a)

applicants

meeting

may

("The Office may require,

submit,

the requirements

deficiencies

or

a

of

supplemental

§1.63

inaccuracies present

45

or
in

or

inventors

oath

or

§ 1.162

to

the

earlier

and

declaration

correct

any

filed oath

or declaration.").

Thus,

"but-for" materiality would not

have

been met, even drawing all inferences in Samsung's favor.
Moreover,

Federal

Circuit

materiality
acts

of

1293,

has

egregious

in

an

misconduct,"

that

the

always rises

correctly

rare

mischaracterizes

argues

affidavit"

Samsung

recognized

requirement

Samsung

Samsung

although

152.

However,

exception

cases

and

to

Inc.,

misapplies

submission

of

an

that

the

involving

Therasense,

the

"but-for"

"affirmative
649

such

F.3d

at

exception.

"unmistakably

false

to the level of egregious misconduct

such that this exception applies.
No.

asserts

Mem. in Response at 13,

ECF

as the Federal Circuit noted in Therasense:

In actuality, [] the materiality standard set forth in
this opinion includes an exception for affirmative
acts of egregious misconduct, not just the filing of
false
affidavits.
Accordingly,
the
general
rule

requiring but-for materiality provides
to

patent

practitioners

egregious

misconduct

sufficient

flexibility

circumstances.
Thus,
approach sensitive to

considerations,

and

exception

to

clear guidance

courts,

while

gives

capture

the

the

test

extraordinary

not only is
this court's
varied facts and equitable

it is also consistent with the early

unclean hands cases-all of which dealt with egregious
misconduct. See Precision Instrument Manufacturing Co.
v. Automotive Maintenance Machinery Co., 324 U.S.
and
suppression
at
816-20
(1945)
(perjury

evidence);

Hazel-Atlas

Glass

Co.

v.

806
of

Hartford-Empire

Co.,
322 U.S.
238,
240
(1944)
overruled on other
grounds by Standard Oil Co. v. United States, 429 U.S.

17

(1976)

(manufacture and suppression of

evidence);

Keystone Driller Co. v. General Excavator Co., 290
U.S. 240, 243
(1933)
(bribery and suppression of
evidence).

Therasense,

Inc.,

649 F.3d at 1293 (emphasis added).

46

Applying

this standard,
of

another

qualifies

perjury

the Court cannot find that this signing on behalf

true

as

inventor

with

affirmative

and

egregious

suppression

Accordingly,

on

these

failure

to

supplies

alternate

of

satisfy

the

does not
the

misconduct

for

as

authorization

equivalent

Samsung

exception

to

to

contends.

the

"but-for"

Therefore,

apply.

"but-for"

grounds

person's

evidence,

facts,

materiality requirement

such

Samsung's

materiality

granting

summary

requirement
judgment

in

favor of VIS with regard to this allegation.
2.

Inequitable Conduct Based on Failure to Disclose "Rakib"
During Prosecution of the *733 and x398 Patents

With regard to the allegation of inequitable conduct based
on

VIS's

M.P.E.P.

failure

to

§ 609.02

disclose

states

material

prior

"[t]he

examiner

that

art

references,

will

consider

information which has been considered by the Office in a parent
application

when

examining"

a

continuation,

divisional,

continuation-in-part application filed under 37 C.F.R.
and

" [a]

listing of

conduct

2012).
for

application,

an

"In

547

(Fed.

view

applicant

M.P.E.P.

of

§ 609

not

to

Cir.

ATP Corp.

1998)

(citing

47

it

§ 609.02

cannot

resubmit,

the information that was

parent application."

§ 1.53(b)

the information need not be resubmitted in

the continuing application."

August

or

(8th ed.

be

in

the

rev.9

inequitable
divisional

cited or submitted in the

v. Lydall,

Inc.,

Transmatic,

159 F.3d 534,

Inc.

v.

Gulton

Industries,

Inc.,

pertinent part,

849 F. Supp.

526

rev'd in part,

(E.D. Mich.

53 F.3d 1270

1994),

(Fed. Cir.

aff'd in
1995)

for

the same proposition with regard to a continuing application).
"Indeed,

the applicable

information

that

resubmitted
C.F.R.

previously

because

presume

was

that

disclosed

that

information

and

§ 1.56(b))

examiner."

regulations

thus

remains

presumably

some material

need
"of

not

be

record"

(37

available

to

the

Bone Care Int'1, LLC v. Pentech Pharm., Inc., 741 F.

Supp. 2d 854,

862

(N.D. 111.

Despite M.P.E.P.

disclose prior

art

2010).

§ 609.02 completely removing

references

previously

cited

the duty to

in

a

parent

application, where the parent-child applications are co-pending,
it cannot be expected that a USPTO examiner continually monitors
all parent applications for new references as prosecution of the

continuing applications progresses.

See M.P.E.P.

§ 2001.06 (8th

ed. rev.9 August 2012); see also McKesson Info. Solutions, Inc.,
487

F.3d

at

925

(determining

patentee

"was

not

entitled

to

assume that Examiner Trafton would recall his decision to grant

the claims of the '372 patent when he was examining the [co
pending] application," which covered related subject matter).

A

reading of M.P.E.P. §§ 609.02 and 2001.06 together supports this
conclusion.
disclosures

Specifically,
between

M.P.E.P.

co-pending

parent-child, provides that:
48

§ 2001.06,

applications

which
which

governs
are

not

The individuals covered by 37 C.F.R. §1.56 have a
duty to bring to the attention of the examiner, or
other Office official involved with the examination of
a particular application,
information within their

knowledge

as

to

other

copending

United

States

applications which are "material to patentability" of
the application in question. As set forth by the court
in Armour & Co. v. Swift & Co., 466 F.2d 767, 779 (7th
Cir. 1972): "[W]e think that it is unfair to the busy
examiner, no matter how diligent and well informed he
may be, to assume that he retains details of every
pending file in his mind when he is reviewing a
particular application . . . [T]he applicant has the
burden of presenting the examiner with a complete and
accurate

record

to

support

the

allowance

of

letters

patent."

M.P.E.P.

while

§ 2001.06

McKesson

(8th

and

ed.

rev.9

M.P.E.P.

§ 2001.06

rather than continuing applications,

proposition

that

continually

check

pending,
Thus,

August

an

examiner

for

updates

deal

Accordingly,

with

co-pending

such analysis supports the

should
in

2012).

not

be

applications

required
that

are

to
co

even where they are parent and continuing applications.

M.P.E.P.

§ 609.02's removal of the duty to disclose prior

art references previously cited in a parent
logically

act

as

a

remedy

for

failing

to

application cannot
disclose

references

which are not considered by the USPTO in the parent application
until

after the

examiner has

begun his

substantive examination

of the continuing application.
These principles find application in the parties'

regarding the
parent

'733 patent because the

application

were

co-pending.

49

arguments

'733 patent and the
Relying

on

'341

M.P.E.P.

§ 2001.06 and McKesson, Samsung argues that Dr. Wang did have a

duty to disclose "Rakib" in the prosecution of the '733 patent
due to the co-pending status of the '733 patent and the '341
parent

application.

disagrees.

For

the

following

reasons,

the

Court

The '733 patent was filed on May 22, 2007, prior to

the February 21, 2008 citation of "Rakib" by the examiner in the
'341

parent

application.

However,

substantive

examination

of

the '733 patent's application did not begin until 2010, when the

examiner conducted an inventor search on August 6,

in Supp.,

Ex.

substantive

38,

ECF No. 142-38.

examination

of

the

2010.

Mem.

It is undisputed that when
'733

patent

began

2010,

in

"Rakib" had already been cited and considered in 2008 by the
Office in the prosecution of the '341 parent application.
even under this

Court's strict reading of M.P.E.P.

conjunction with M.P.E.P.

§ 2001.06,

Dr.

Wang

Thus,

§ 609.02

in

had no duty to

disclose "Rakib" in conjunction with the prosecution of the '733
patent.

Moreover,

§ 609.02

Dr.

even were

did not

Wang withheld

the USPTO,

claim

of

remove

the

Court

the

duty to

"Rakib"

35

the

assume both

disclose

specific

Samsung would still not be able

inequitable

conduct

materiality is not present.
[under

with

to

U.S.C.

§282]

because

the

that M.P.E.P.

"Rakib"

intent

and

to

to prevail

required

that

deceive

on

its

"but-for"

A patent's "presumption of validity
is

based
50

on

the

presumption

of

administrative correctness

agency

charged

Materials,
98

F.3d

with

Inc.

v.

1563,

Planning Corp.

examination

of

the]

actions of

patentability."

(Fed.

Feil,

Cir.

774

1996)

F.2d 1132,

(citing

1139

the

Applied

Advanced Semiconductor Materials Am.,

1569
v.

[with regard to

Inc.,

Interconnect

(Fed. Cir.

1985)).

Thus, the examiner is presumed to have "fulfilled his duty as an
examiner

[under

applications

Int' 1, LLC,

M.P.E.P.

and

the

741 F.

examiner

was

"Rakib,"

along

references

Supp.

2d at

obligated

with

§ 609.02]

under

all

to

review

contained

862.

therein."

§ 609.02

references

Office in the parent applications.

ancestor

Bone Care

In the instant case,

M.P.E.P.

other

the

to

the

consider

considered

by

the

Because the examiner did not

begin his substantive examination of the '733 patent until 2010,
when

he

reference

"fulfilled

cited

in

his

the

duty

parent

as

an

examiner,"

application

in

the

2008

would

come under his consideration during his examination of
patent.

Id.

Therefore,

would not have

Samsung

cannot

"allowed the claim if

show

"Rakib"

that

have

the
the

it had been aware

'733
USPTO

of

the

undisclosed reference," because the examiner is presumed to have
been aware of

the reference through his

review of

the ancestor

applications and to have chosen not to reject a claim in light
of this reference.

Furthermore,

for

ensuring

that

the Court cannot

examiners

abide
51

"hold applicants

by

their

responsible

responsibilities"

because

"'[a]

examiner's

patentee

dereliction

cannot

of

be

penalized

duty.'"

Chamberlain

Lear Corp., 756 F. Supp. 2d 938, 971
TM Patents,
372

the

L.P.

(S.D.N.Y.

Int'l Bus.

2000)).

ancestor

Plaintiffs'

v.

applications,

Therefore,
as

to

disclose "Rakib"

Grp.,

patent
Inc.

v.

111. 2010)

(quoting

121 F. Supp.

Corp.,

such

of

disclose the references."

judgment

Mach.

(N.D.

a

2d 349,

"[E]ven if the Examiner failed to review

performance

2d at 862.

for

its

failure

duty,

would

as

an

Bone Care Int'l,

not

taint

applicant,

LLC, 741 F.

to

Supp.

the Court grants VIS's motion for summary

Samsung's

allegation

that

during prosecution of the

VIS's

failure

to

'733 patent amounted

to inequitable conduct.

Because
from VIS's
the

'733

Samsung's

need

Samsung

failure

patent

has

to

and

alleged

cite
the

allegations

analyzing

Samsung's

"Rakib"

'398

patent

necessary to look to M.P.E.P.

'398 patent allegations.

the

§§ 609.02

'733

in

patent,

regarding

to consider M.P.E.P.

inequitable

conduct

arising

its

prosecution of both

the

Court

'398

now

patent.

and 2001.06

allegations,

turns

Unlike

to

the

together when

it

is

only

§ 609.02 when analyzing Samsung's

The "Rakib" reference was cited by the

examiner in connection with the prosecution of the '341 parent
application,
March 1,

which

2011.

The

ultimately

issued

'733 patent was

as

the

'492

patent

on

filed as a continuation-in-

part of the '341 application and the '398 patent was filed as a
52

continuation

of

issuance of

the

definition of

the

'733 patent

'492

on

May

"grand-parent"

"parent"

6,

2011,

patent.

The

application in M.P.E.P.

term

to

all

earlier

filed,

related,

the

M.P.E.P.'s

§ 201.04

confined to the immediately preceding application,
the

after

is not

but applies

nonprovisional

applications to which the benefit of a priority date might be
claimed under 35 U.S.C.
August 2012).
§ 609.02

§ 120.

clearly removes

the

considered

by

application.

the duty to disclose,

prosecution
the

§ 201.04 (8th ed. rev.9

on the evidence before the Court,

Thus,

overseeing

M.P.E.P.

Office

Therefore,

of

the

in

the

because

'398

to the

patent,

prosecution

Dr.

Wang

examiner

prior

art

the

'341

of

had

M.P.E.P.

no

duty

to

disclose "Rakib" to the examiner of the '398 patent, her failure
to

so

disclose

Accordingly,
as

to

"Rakib"

cannot

constitute

inequitable

conduct.

the Court grants VIS's motion for summary judgment

Samsung's

during

allegation

prosecution

that

of

VIS's

the

'398

failure

patent

to

disclose

amounted

to

inequitable conduct.

Having now addressed Samsung's
the

'733

and

'398

patents,

and

appropriate with respect to both,
for

summary

failure

to

judgment
disclose

as

to

amounted

allegations
finding

141.

53

summary

judgment

the Court GRANTS VIS's motion

Samsung's
to

involving both

allegations

inequitable

conduct.

that

VIS's

ECF

No.

3. Conclusion as to the Motion for Summary Judgment

For the reasons stated above,

of

material

reasonable

fact

and

inferences

finder could find by
applicant

the

there are no genuine issues

finds

Samsung's

in

Court

favor,

or

omitted

material

the specific intent to deceive the PTO."
Accordingly,

all

reasonable

fact

that "the

information

Therasense,

with

Inc., 649

the Court GRANTS summary judgment in

favor of Plaintiff on Defendants'
No.

no

drawing

clear and convincing evidence

misrepresented

F.3d at 1287.

that,

thirteenth counterclaim.

ECF

141.

D. VIS's Motion to Bifurcate

VIS alternatively moves for bifurcation of

this case into a

jury trial and a bench trial, with "evidence relating solely to
inequitable

conduct

excluded from
Bifurcate 1,

for

Accordingly,
Bifurcate.

Defendants'

the jury trial.
ECF No. 267.

summary

inequitable

and

judgment
conduct,

the

VIS's

Court

ECF No.

to

as

the

of Mot.

to

to

counterclaim

bifurcate

moot

is

Plaintiff's

alleging
now

moot.

Motion

to

CONCLUSION

For the reasons stated above,

in

defense"

266.
IV.

or,

§ 111

having granted VIS's motion

Samsung's

motion

DENIES

U.S.C.

PL's Mem in Supp.

However,

as

35

alternative,

for

Plaintiff's motion to strike,

summary

54

judgment

with

regard

to

Defendants'

Thirteenth Counterclaim is hereby GRANTED,

and DENIED,

in part.

Defendants
counterclaim

under
Federal

were

and

either
Rule

ECF No.

permitted

of Civil

drawing

to

or

Procedure

all

add

defense

permissive

Motion to Strike is DENIED.
Even

141.

affirmative

the

in part,

the

inequitable

without

moderate
15.

ECF No.

leave

conduct

of

court

interpretations

Accordingly,

of

Plaintiff's

141.

reasonable

inferences

in

Defendants'

favor, no reasonable fact finder could find that "the applicant
misrepresented or omitted material information with the specific
intent to deceive
Therasense,

Inc.,

the PTO"
649

by clear and convincing

F.3d at

1287.

Accordingly,

evidence.

Plaintiff's

Motion for Summary Judgment is GRANTED. ECF No. 141.
Defendants'
No.

Request

for

Judicial

Notice

is

GRANTED.

ECF

154.

Plaintiff's Motion to Bifurcate is DENIED as moot.

ECF No.

266.

The Clerk is DIRECTED to send a copy of
Order to all
IT

IS

SO

counsel

this Opinion and

of record.

ORDERED,

m&&

/s/
Mark
UNITED

Norfolk,

Virginia

March o&_, 2014

55

STATES

S.

Davis

DISTRICT JUDGE