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

Filing 569

OPINION AND ORDER Denying (416) Motion for Reconsideration in case 2:12-cv-00548-MSD-TEM. Signed by District Judge Mark S. Davis and filed on 5/2/14. Copies distributed to all parties 5/2/14. Associated Cases: 2:12-cv-00548-MSD-TEM, 2:13-cv-00332-MSD-TEM(ldab, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OP VIRGINIA

Norfolk Division

VIRGINIA INNOVATION

SCIENCES,

INC.,

Plaintiff,
Case No.:

v.

2:12cv548

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

OPINION AND ORDER

Plaintiff,

or

"VIS"),

asks

Virginia

Innovation Sciences,

this Court

Inc.

("Plaintiff"

to reconsider its January 8,

summary judgment Order granting,

in part,

2014

the summary judgment

motion of invalidity

filed by defendants,

Samsung Electronics

Co.,

Electronics

Inc.,

Ltd.,

Samsung

Telecommunications
"Defendants").

America,
ECF

No.

America,

LLC
416.

(collectively
Plaintiff

and

Samsung

"Samsung"

asserts

that

or
new

evidence justifies reconsideration of the summary judgment Order
because,

during

proceeding,
("PTO")

the

Patent

preliminary

the

course

United
Trial

decisions

patents-in-suit,

with

of

an

States
and

inter partes review

Patent
Appeal

regarding

conclusions

and

Trademark

Board

institution

that

("PTAB")
of

IPR

("IPR")
Office's
issued
on

the

are partially different

from

this Court's

summary

judgment Order.

The motion has been

fully briefed and is therefore ripe for decision.1
I.

FACTUAL AND PROCEDURAL BACKGROUND

A.

General Background

At issue in this case are five2 patents:
7,899,492

("the

'711 patent"),
U.S.

'492 patent"),

U.S.

Patent No.

No. 8,135,398

Patent No.

8,224,381

("the

U.S.

("the

Patent No.

8,145,268

("the

'381 patent"),

'398 patent").

U.S. Patent No.
8,050,711

v268

"Methods,

Multimedia
The

Systems

Information

patents-in-suit

multimedia
display,

signals

and

each

and

from

address

into
of

a

Wireless

for

x492 patent,

Displaying

Communication

conversion

format

Patent

All of the patents-in-suit

Apparatus

the

patent"),

and U.S.

are continuations or continuations-in-part of the

titled

("the

of

the

Networks."

mobile

terminal

for use by an alternative

the patents-in-suit

describes

inventions

intended to resolve the inconvenience and impracticability of
viewing

multimedia

content

on

the

small

screens

of

mobile

terminals.

1 On April 10, 2014, the Court held a hearing on the motion for
reconsideration, but the hearing focused more on issues relating to
the inter partes review, and its effect on pending district court
proceedings, than the substance of the motion to reconsider.
Hr'g
Tr.,

ECF NO.

554.

2 Previously, there were six patents at issue in this case. However,
U.S. Patent No. 7,957,733 ("the '733 patent") is no longer asserted as
infringed.
Agreed Dismissal Order, ECF No. 408.
2

In the instant patent infringement action,

4, 2012,

2:12cv548

Defendants
the

have

(hereinafter "VIS I"),

directly,

patents-in-suit

selling,

and/or

including

by

making,

importing

smartphones,

PL's Am.

indirectly,

Compl.,

a

tablets,

ECF No.

121.

Plaintiff alleges that

and

willfully

using,

wide

filed on October

range

infringed

offering

of

Blu-ray

for

accused

products,

players,

and

or

prosecution

history

Additionally,

unenforceability
estoppel,

hubs.

Samsung denies VIS's claims of

infringement and asserts several affirmative defenses,
invalidity

sale,

of

and

all

other

including

patents-in-suit,

equitable

doctrines.

Samsung asserts counterclaims seeking declarations

of non-infringement,

invalidity,

and unenforceability for

each

of the patents-in-suit.

On June

14,

2013,

Markman

hearing,

action,

2:13cv332

the

same

No.

Plaintiff

causes

Defendants'

1.

days

after

filed a

the

action

as

in VIS

I,

released products.

response,

Samsung

Court

second patent

(hereinafter "VIS II"),
of

newly

In

three

infringement

alleging essentially
but

Case

asserted

conducted a

with

No.

respect

2:13cv332,

essentially

the

to
ECF

same

defenses and counterclaims as in VIS I.

By Order of October 25,

2013,

I

the

matters
ECF.

No.

Court

involve
353.

joined

for

trial

the same parties

VIS

and

the

and

VIS

II,

as

the

same patents-in-suit.

The Court then issued a new scheduling Order for

the joined cases,

and rescheduled the November 12,

2013 trial to

April

21,

2014.

Case No.

that scheduling Order,
and Plaintiff made

at trial,

2:13cv332,

ECF No.

63.

Pursuant

to

the parties narrowed the issues for trial

its

final

election of

claims

it would assert

none of which is the subject of Plaintiff's motion for

reconsideration.

The

April

21,

2014

trial

of

the two

joined

cases has been continued to May 27, 2014.
B.

On August 13,

Summary Judgment and IPR

2013,

Defendants

filed a motion for summary

judgment in this Court, seeking, among other things, a ruling of
invalidity as to the patents-in-suit.
Court

ruled

granting,

on

Defendants'

in part,

summary

and denying,

On January 8,

judgment

in part,

2014, the

motion

in

VIS

such motion.

I;

ECF No.

The Court found no willful infringement of any claims, and

413.

also found claims 21, 22, 25, 28, and 29 of the '268 patent, and

claims

15,

60,

61

and

anticipated or obvious.
that Plaintiff

asks

62

of

Id.

the

'398

patent,

invalid

as

It is these findings of invalidity

the Court

to reconsider,

particularly the

invalidity finding of claim 21 of the '268 patent as anticipated
by prior art reference "Palin."
On

September

5,

2013,

at

the

same

time

VIS

I

and

VIS

II

were proceeding before this Court, and while Defendant's summary
judgment

motion

Defendants
challenging

began
the

seeking

a

parallel
validity

ruling

of

proceedings
of

the

invalidity

was

pending,

before

PTO

directly

the

patents-in-suit.

Shortly

thereafter,

on September

PTO corrected petitions

16,

2013,

Defendants

seeking IPR of 37

patents-in-suit.

institute IPR to

claims

Because the Director of

the

authority to

were

submitted

to

the

PTAB

for

submitted to

the

from the five

the PTO has delegated

the PTAB,

the IPR petitions

consideration.

Each

of

the

claims that Defendants asked this Court to find invalid in their

August

13,

2013

summary

judgment

motion

of

invalidity

were

included in the 37 claims that Defendants asked the three judge
panel of the PTAB to find invalid in Defendants'

September 16,

2013 IPR petitions.

Although

of

the

the parties

August

this Court,

13,

2013

to

this

litigation notified the PTAB

summary judgment motion pending before

neither party advised this

Court of

the concurrent

IPR petitions or requested a stay of Court proceedings pending a
decision from the

PTAB.

Thus,

on January 8,

2014,

this

Court

issued its 72 page Opinion and Order ruling on the validity of
the patents-in-suit

issues

were

the

without

subject

any knowledge

of

an

that

IPR petition

the

exact

pending

same

before

a

three judge panel of the PTAB.

On March 6,
whether

to

2014,

instate

the PTAB rendered its decisions regarding

IPR

review

of

the

five

patents-in-suit,

granting the request to review three of the patents
and

x398),

('492

and

and denying the request to review two of
'711).

Pl.'s

Reconsideration Mem.,

Exs.

('268,

v381,

the patents
1-5,

ECF No.

417.

Approximately

one

week

later,

the

Court

was

finally

apprised of the IPR proceedings when Plaintiff filed its motion

for
ECF.

reconsideration
No.

416.

highlights

was

the

not

Order."

the

Court's

Plaintiff's

brief

deference

based

expertise.

that

the

on

the

to

this

PTAB's

Court's

2,

its

motion

the

PTAB's

PTAB's

Summary Judgment

ECF No.

decisions

417.

Moreover,

should be

specialized

afforded

knowledge

and

IPR AND THE DUTY OF CANDOR

Before addressing the motion to

Act

of

ruling.

Id. at 4.
II.

address

support

included within

PL's Reconsideration Mem.
argues

judgment

that such rulings constitute "new evidence

available prior

Plaintiff

summary
in

substantive analysis

decisions and argues

that

of

the

("AIA"),

at 35 U.S.C.

IPR provisions
Pub.

L.

No.

of

the

112-29,

§§ 311-319,

reconsider,

Leahy-Smith

125 Stat.

284

the Court must

America
(2011),

Invents
codified

and the impact of the IPR proceedings

on the district court proceedings.
A.

The IPR Procedure

The IPR procedure enacted by Congress

parties
IPR

third

to challenge a patent's validity by seeking IPR.

process

streamlined
more

in 2011 allows

set

out

in

adjudicative

cumbersome

and

the

AIA

proceeding'

time-consuming

represents

intended

a

'new,

to

inter-partes

replace

"The
more

the

reexamination

that could take upwards of three years to conclude."

Rensselaer

Polytechnic
Dist.

Institute

LEXIS

5186,

"Rensselaer")
Inc.,

No.

Wise.

Nov.

F.3d

1318,

changed

v.
*5

at

(N.D.N.Y.

(quoting

13-CV-346,

14,

2013

U.S.

see

(Fed.

PTO's

Inc.,

Dist.

adjudicative proceeding")

2014)

v.

v.

"an

Cordis

Commc'ns,

at

*3

(W.D.

Corp.,

that

710

the

examinational

(emphasis added).

U.S.

(hereinafter

162459,

(recognizing

from

2014

Sorenson

LEXIS

Labs,

2013)

review process

I:13cv633,
15,

Inc.

Abbott

Cir.

No.

Jan.

Ultratec,

2013));

1326

the

Apple

to

AIA

an

IPR "is designed to

improve upon the previous inter partes re-examination process by

Ml)

•

•

• reduc[ing]

reviewing validity,
36.2

months;

increasing

(2)

from
.

the

.

review

at

*5

Elecs.,

Inc.

(M.D.

months

the

between

and (3)

Inc.,

Fla.

No.

time

duplicative

district

court

. . . allowfing]
Automatic
6:12cvl727,

November

21,

the

PTO

spends

reexamination average

minimizing]

proceedings.'"

Primera Technology,

165692,

12

the previous
.

coordination

inter partes review;
in

to

v. Universal Remote Control,

litigation

by
and

limited discovery

Mfg.
2013

2013)

efforts

of

Sys.,
U.S

Inc.

Dist.

v.

LEXIS

(quoting Universal

Inc.,

943 F. Supp.

2d

1028, 1029-30 (CD. Cal. 2013) )3 (alteration in original).
"Under the procedures governing IPR,
on September 16,

3 In Universal

2012,

which became effective

a request for review must be filed by the

Electronics,

the Court's

summary of the improvements

resulting from the new IPR procedure relied on Changes to Implement
Inter Partes Review Proceedings, Post-Grant Review Proceedings, and
Transitional Program for Covered Business Method Patents, 77 Fed. Reg.
48,680 (Aug. 14, 2012) (codified at 37 C.F.R. §§ 42.100 et seq.).

petitioner

within

one

year

of

being

served

with

alleging infringement of the patent in issue."
U.S.

Dist.

LEXIS

5186,

inter partes review,
a

patent

§ 102

at

art)

(citing 35

complaint

Rensselaer,

2014

§ 315(b)).

"On

U.S.C.

a petitioner can challenge the validity of

only on grounds

(prior

*5

a

or

35

that

could be

U.S.C.

§ 103

raised under

35

(obviousness),

U.S.C.

and

only

then 'on the basis of prior art consisting of patents or printed
publications.'"

Automatic

165692,

(quoting

at

*5-6

petition

is

filed,

response

within

Mfg.
35

U.S.C.

the patent

three

Sys.,

2013

§ 311(b)).

owner may

months,

U.S.

or

"Once

submit

may

Dist.

LEXIS
an

IPR

a preliminary

instead

expedite

the

process by waiving the right to submit a preliminary response."
Rensselaer,
§ 313;
by

2014 U.S.

37 C.F.R.

the

PTO

Dist.

LEXIS 5186,

§ 42.107(b)).

if

the

at

*6

(citing 35 U.S.C.

"An IPR trial may be initiated

petitioner

demonstrates

a

reasonable

likelihood of prevailing with respect to at least one challenged
claim."
decide

Id.

at

whether

*7

(citing 35 U.S.C.

to

institute

IPR

filing of the preliminary response,
[within three months of]
may be filed."
13-CV-3587,

18,

2013)

PTO],

2013

[]

§ 314(a)).

within

"The PTO must

three

months

of

or, if no response is filed,

the last

date on which a response

Evolutionary Intelligence LLC v. Yelp Inc.,
U.S.

(citing

35

by regulation,

Dist.

U.S.C.

has

LEXIS

178547,

§ 314(b)).

delegated to
8

the

at

*7

"The

the

(N.D.

Cal.

Director

[PTAB]

[of

No.
Dec.

the

the authority

under section 314 to decide whether to institute an inter partes

review."

St.

Corp., No.

2014-1183,

Cir.

Apr.

24,

Accordingly,
decision,

Medical,

2014)

it

Cardiology Div.,

2014 U.S.

when

authority."

As

Jude

(citing

the

is

App.

LEXIS 7731,

37

PTAB

C.F.R.

makes

exercising

the

Rensselaer

court

&

(Fed.

42.108).

review-instituting

Director's

noted,

partes reexamination proceeding,

"[u]nlike

which was

through submissions before a PTO examiner,
before

administrative

a

panel

judges

Board ('PTAB')."

8

Volcano

at *4 n.l

§§ 42.4

"the

v.

section

314

Id.

the

conducted

Inc.

three

comprising

Rensselaer,

(citing 35 U.S.C.

judge panel of]

of

§ 6(a),

of

the

(c) ) .

inter

prior

accomplished largely
IPR under the AIA is

the

technically-trained

Patent

2014 U.S.

the

Trial

Appeal

LEXIS 5186,

Dist.

and

at *7-

"On review,

[this PTAB three

the PTO can invalidate any claim before it, and

the petitioner is collaterally estopped from later asserting in
a civil action 'that the claim is invalid on any ground that the

petitioner

raised or

reasonably

inter partes

review.'"

LEXIS 165692,

at *6

is

initiated,

one

year

extended,
U.S.

Dist.

the

after

Automatic

Mfg.

(citing 35 U.S.C.

PTAB

must

issue

commencement,

for good cause,
LEXIS

could have

5186,

a

raised during

Sys.,

§ 315(e)(2)).
final

although

*8

(citing

35

U.S.

Dist.

If the "IPR

determination within

that

to eighteen months."

at

2013

that

period

may

Rensselaer,

U.S.C.

be
2014

§ 316(a)(11)).

Any

"party

appeal

dissatisfied

with

the determination to

35 U.S.C.

§ 141).

two years before

the

the Federal

"Given this
the PTO,

and an appeal

less

than

preclusive

two

years

effect of a

Id.

under

PTAB

final

decision

Circuit."

may

Id.

(citing

IPR can take

timeframe,

can extend that timeline further."

take

PTAB's

[up to]

to

the Federal

Of course,

these

IPR can also

timeframes,

final determination

Circuit

and

the

is triggered

when the PTAB issues its final written decision - regardless of

whether an appeal is taken to the Federal Circuit.
U.S.C.

§§

issuance
Indus.,

2011)

318,

315(e),

of

PTAB

final

and

319

(triggering

determination

Inc. v. Bunzl USA Inc.,

on

IPR),

661 F.3d 629,

Compare 35

estoppel
with

642-47

upon

Bettcher

(Fed. Cir.

(triggering estoppel when all court review of inter partes

reexamination determination has been exhausted).

The impact of the new IPR procedure is only beginning to be
experienced.

Empirical data as of April 17, 2014 reflect that,

in fiscal year 2013, there were 203 decisions issued by the PTAB
regarding institution of inter partes review.

Patent Trial and

Appeal Board, AIA Progress, http://www.uspto.gov/ip/boards/bpai/
stats/041714_aia_stat_graph.pdf.

Of

the

203,

trials

were

instituted in 167, 10 were joined with existing proceedings, and
26

were

denied

-

meaning

that

approximately 87% of the cases.
2014,

there

were

335

decisions
10

trial

Id.
issued

Thus
by

was

instituted

in

far in fiscal year
the

PTAB

regarding

inter partes

institution of

were

instituted

proceeding,

in

review.

267,

1

Id.

was

Of

joined

the

335,

with

an

trials

existing

and 67 were denied - meaning that the percentage of

trials instituted dropped somewhat to approximately 80%.
B.

A

Id.

Impact of IPR on District Court Litigation

party

simultaneously

litigating

a

patent

infringement

case in federal court and an IPR proceeding before the PTAB must
consider

the

impact

example,

the

AIA

of

each

provides

proceeding

that

"[i]f

on

the

the

other.

petitioner

For

or

real

party in interest files a civil action challenging the validity
of

a

claim

petitioner

patent,

of

the

files

that

a

civil

patent

on

or

petition

action

after

for

will

either the patent owner moves

the

inter

be

date

partes

on

review

automatically

the court

to

which

lift

of

stayed

the

the

until

the stay,

the

patent owner files a civil action or counterclaim alleging that
the

petitioner

patent,

or

or

real

party

the petitioner or

court

to

dismiss

§ 411

(2014)

counterclaim

the

civil

(citing

35

challenging

in

infringed

the

real party in interest moves

the

action."

U.S.C.

the

interest

60

has

Am.

Jur.

§ 315(a)(2)).

validity

of

a

2d

Patents

However,

claim

of

a

"[a]

patent

does not constitute a civil action challenging the validity of a
claim of a patent" within the meaning of 35 U.S.C.
Id.

(citing

petition

is

35

U.S.C.

filed

by

§ 315(a)(3)).

a

party
11

to

Therefore,

district

§ 315(a)(2).
when

court

an

IPR

patent

infringement litigation involving invalidity counterclaims,

the

AIA does not contain a mandatory provision requiring a stay of

the

district

Accordingly,
proceedings

court

in such a

See

scenario is
if

Proctor

&

848-49

has

that

long recognized

When

the

proceedings.4

AIA

was

left

to

the district

court's

the district court knows about the IPR

Inc. , 549 F.3d 842,

4

infringement

the decision of whether to stay the district court

discretion - that is,

proceeding.

patent

Gamble
(Fed.

Cir.

district

introduced

Co.

v.

2008)

courts

as

Kraft

H.R.

Foods

Global,

("The Supreme Court

have broad discretion
1249

in

the

House

of

Representatives, it contained a section 320, describing criteria a
district court should use in deciding whether to grant a stay of such
litigation.
However, section 320 was later omitted by amendment
before the AIA was adopted.
Section 320 provided that: "If a party
seeks a stay of a civil action alleging infringement of a patent under
section 281, or a proceeding before the International Trade Commission
under section 337 of the Tariff Act of 1930, relating to an inter
partes review under this chapter, the court shall decide whether to
enter a stay based on (1) whether a stay, or the denial thereof, will
simplify the issues in question, and streamline the trial; (2) whether
discovery is complete and whether a trial date has been set;
(3)

whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving
party;

and

(4) whether a stay,

or the denial thereof,

will reduce the

burden of litigation on the parties and on the court."
H.R. Doc. No.
112-35 at 16 (2011) .
The omission of such provision from the final
version of the statute means that a district court remains free to use

its own discretion,
and appropriate
inherent power to grant or deny a stay.

factors,
in exercising its
See Proctor & Gamble Co. v.

Kraft

842,

Foods

Global,

Inc.,

549

F.3d

849

(Fed.

Cir.

2008)

(explaining that former 35 U.S.C. § 318 involving reexamination only
supplemented the "inherent power of the district courts to grant a
stay pending reexamination of a patent"); see also Cherokee Nation of
Oklahoma v. United States,
124 F.3d 1413,
1416
(Fed. Cir.
1997)
(describing balancing test for staying action); Peschke Map Techs.,
LLC v. J.J. Gumberg Co., Civ. Nos. 12-1525, 1527, 1528, 1530, 1572 &
1574, 2014 U.S. Dist. LEXIS 57113, at *5 (D. Del. Apr. 24, 2014)
(granting stay pending PTAB inter partes review);
ePlus,
Inc.
v.
Lawson Software, Inc., No. 3:09cv620, 2010 U.S. Dist. LEXIS 31322, *5
(E.D. Va.
Mar.
31,
2010)
(applying stay standard in patent case

involving patent reexamination).
12

to manage their dockets,

including the power to grant a stay of

proceedings.").

Here,

it seems obvious

to this

Court

that VIS and Samsung

should have notified the Court that IPR petitions were filed in
September 2013,
assertions of
Court.

and that

occurred

Court,

addressed the same

invalidity that were then being considered by the

However,

never

such IPR petitions

because counsel for both parties assert that it

to

them

that

they

had

a

duty

to

notify

this

it is necessary to review such duty and remind counsel of

their obligation to the Court with respect to such duty.5

5 During the April 10, 2014 hearing before this Court, Plaintiff stated
that the failure to advise this Court of the pending PTAB proceeding
was

not

intentional,

and

that

counsel

had

never

even

discussed

or

considered whether they should advise the Court of the concurrent PTAB
proceeding.
Hr'g Tr. 7-8, ECF No. 554.
In a post-hearing brief, VIS
later stated that "Samsung raised its intention to file IPR requests
when the parties met with Magistrate Judge Miller on August 29, 2013
for a

settlement conference

in VIS

I."

ECF No.

558.

The Court

takes

the parties at their word regarding their assertions that they did not
intend to conceal such PTAB proceedings when they failed to advise
this Court of

the IPR.

However,

it must be noted that the discussions

that occur during settlement conferences are confidential.
In order
to encourage the parties to enter into candid and fulsome discussions,
the district judge and magistrate judge co-assigned to cases do not
discuss the substance of such settlement conferences.
This policy is
reflected in

the Settlement Conference Order

on

2013,

July

24,

which

provides

that

disclose the information received during

entered by Judge Miller

"[t]he

undersigned will

the settlement conference

not
to

anyone without the permission of the party providing the information."
ECF No.

118.

Moreover,

E.D.

Va.

Loc.

Civ.

Rule 83.6(e)

describes the

rules governing mediation,
including settlement conferences,
and
provides that "[t]he substance of communications in the mediation
process shall not be disclosed to any person other than participants
in the mediation process."
13

1. Duty of Candor and Good Faith

This

Court has

standards

adopted a local

applicable

to

cases

rule regarding the ethical

before

the

Court.

It

provides

that "[t]he ethical standards relating to the practice of law in
civil cases in this Court shall be Section II of Part Six of the

Rules

of

the

superseded
Rule

from

3.3

"Candor

Virginia

of

Subsection

is

fraudulent

act

case

with

of

the

of

to

Rule,

Va.

of

entitled

Prof'l

fact

a

assisting

entitled
3.3.

lawyer shall
tribunal when
criminal

1

to

the

or
Rule

to present the client's

Performance
client

of

is

by

that

duty

qualified

the tribunal."

"Representations

or

83.1.

Conduct

a

Comment

R.

is

"[a]
to

task is

amended

Civ.

Conduct

that

Id.

the

be

Loc.

Rule

avoid

force.

may

Va.

disclose a

client."

confidences

it

Professional

to

advocate's duty of candor to
the

E.D.

"[t]he advocate's

persuasive

maintaining

time."

as

that Rule provides

necessary
by

Court

Tribunal."

. . . fail

disclosure

that

to

Rules

The

(a)(2)

not knowingly

observes

time

those

Toward

Supreme

Id.
a

while

by

Comment 3

Lawyer,"

the
to

further

provides that "[t]here are circumstances where failure to make a
disclosure

is

misrepresentation."
candor,

the

equivalent

Id.

of

In addition

to

an

affirmative

the Rule 3.3

duty of

there is also a broader general duty of candor and good

faith

that

court

of

encompasses

any

an attorney's

development

that

may
14

duty
affect

to

advise a

the

outcome

district
of

the

litigation.

United States v.

457-59

Cir.

(4th

1993).

relationship between

this

Shaffer Equip. Co.,

These

11 F.3d 450,

general
duty

general

principles,

advise and the Rule

to

and

the

3.3 duty of candor, have been discussed at length by the United
States Court of Appeals for the Fourth Circuit.

In the following passage from Shaffer Equipment,6 the Fourth
Circuit explained how these two duties apply:
It appears that the district court, in finding that
the government's attorneys violated a duty of candor
to the court,
applied the general duty of candor
imposed on all attorneys as officers of the court, as
well as the duty of candor defined by Rule 3.3.
Although

the

court

referred

to

Rule

3.3,

it

also

described the duty of candor more broadly as that duty
attendant to the attorney's role as an officer of the
court with a "continuing duty to inform the Court of
any development which may
conceivably affect
the
outcome of litigation."
[United States v. Shaffer
Equip.
Co.,
796
F.
Supp.
938,
950
(S.D.
W.
Va.
1992).]
It concluded,
"Thus, attorneys are expected
to
bring
directly
before
the
Court
all
those
conditions

and

circumstances

which

are

relevant

in

a

given case."
Id.
In its brief, the government did
not address the existence, nature, and scope of any
general duty of
candor and whether its attorneys
violated that duty.
Nevertheless, we are confident
that a general duty of candor to the court exists in
connection with an attorney's role as an officer of
the court.

Our

adversary

rests

object

on

of

the

system

for

unshakable

the system's

the

resolution

foundation

process

that

which

is

of

disputes

truth

is

the

designed

for

6 In Shaffer Equipment,
the district court found that government
attorneys breached their duty of candor in their efforts to recover
the EPA's costs of cleaning up a hazardous waste site.
The EPA onsite
coordinator
misrepresented
his
academic
achievements
and
credentials and the government's attorneys wrongfully obstructed the
defendants' efforts to "root out the discrepancies and failed to
reveal them once they learned of them."
11 F.3d 450, 452.
15

the purpose of dispensing justice.
However, because
no one has an exclusive insight into truth,
the
process depends on the adversarial presentation of

evidence,
reasoned

precedent
and
conclusions--all

custom,
and
argument
to
directed with unwavering

effort to what, in good faith, is believed to be true
on matters material to the disposition.
Even the
slightest accommodation of deceit or a lack of candor

in any material respect quickly erodes the validity of
the process.
As soon as the process falters in that
respect, the people are then justified in abandoning
support for the system in favor of one where honesty
is preeminent.

While no one would want
to
disagree with
these
generalities about the obvious, it is important to
reaffirm,
on a general basis,
the principle that
lawyers, who serve as officers of the court, have the
first line task of assuring the integrity of the
process.
Each lawyer undoubtedly has an important
duty of confidentiality to his client and must surely
advocate his client's position vigorously, but only if
it

is

truth

which

the

client

seeks

to

advance.

The

system can provide no harbor for clever devices to
divert the search, mislead opposing counsel or the
court, or cover up that which is necessary for justice
in the end.
It is without note, therefore, that we
recognize that the lawyer's duties to maintain the
confidences of a client and advocate vigorously are
trumped ultimately by a duty to guard against the
corruption that justice will be dispensed on an act of
deceit.
See 1 Geoffrey C. Hazard, Jr. and W. William
Hodes,
The Law of Lawyering 575-76
(1990)
("Where
there is danger that the tribunal will be misled, a
litigating lawyer must forsake his client's immediate
and narrow interests

in

favor

of

the

interests of

the

administration of justice itself.").
While Rule 3.3 articulates the duty of candor to the
tribunal as a necessary protection of the decision
making process,
see Hazard at
575,
and Rule 3.4
articulates an analogous duty to opposing lawyers,
neither

of

these

rules

nor

the

entire

Code

of

Professional
Responsibility
displaces
the
broader
general duty of candor and good faith required to
protect the integrity of the entire judicial process.
The Supreme Court addressed this issue most recently
16

in Chambers v. NASCO,

Inc.,

501 U.S.

32,

115 L. Ed.

2d

27, 111 S. Ct. 2123 (1991).
There, an attorney had
taken steps to place certain property at issue beyond
the jurisdiction of the district court and had filed
numerous

motions

in

bad

faith,

simply

to

delay

the

judicial process.
The district court, the court of
appeals, and the Supreme Court all agreed that neither
Federal

Rule

of

Civil

Procedure

11

(subjecting

to

sanction anyone who signs a pleading in violation of
the standards imposed by the rule)
nor 28 U.S.C.
§ 1927 (subjecting to sanction anyone who "multiplies
the proceedings . . . unreasonably and vexatiously")
could reach

the

conduct.

However,

the

Supreme

Court

accepted the district court's reliance on the inherent
power to impose sanctions, rejecting arguments that
Rule 11 and § 1927 reflect a legislative intent to
displace a court's power to vacate a judgment upon
proof that a fraud has been perpetrated upon the
court:

We
discern
no
basis
for
holding
that
the
sanctioning scheme of
the statute
[28 U.S.C.
§ 1927]
and the rules displaces
the inherent
power to impose sanctions for the bad faith
conduct described above.
taken alone or together,

These other mechanisms,
are not substitutes for

the
inherent power,
for
that power
is
both
broader and narrower than other means of imposing
sanctions.
First,
whereas each of the other
mechanisms reaches only certain individuals or
conduct,
the inherent power extends to a full
range of litigation abuses.
At the very least,
the inherent power must continue to exist to fill
in the interstices.

[Chambers, ] 501 U.S.
(emphasis added).

at

[46,]

111

S.

Ct.

at

2134

The general duty of candor and truth thus takes its
shape
from
the
larger
object
of
preserving
the
integrity of the judicial system.
For example, in
Tiverton

Board

of

469 U.S. 238, 83 L.
counsel
failed to

License

Commissioners

Ed. 2d 618, 105 S. Ct.
apprise
the Supreme

v.

Pastore,

685 (1985),
Court
that

during the appeal process, one of the respondents, a
liquor store challenging the admission of evidence at
a Rhode Island liquor license revocation proceeding,
17

had gone out of business, rendering the case moot.
Rebuking counsel for failing to comply with a duty of
candor
broader
than
Rule
3.3,
the
Supreme
Court
stated, "It is appropriate to remind counsel that they
have a 'continuing duty to inform the Court of any
development which may conceivably affect the outcome'
of the litigation."
Id. at 240 (quoting Fusari v.
Steinberg, 419 U.S. 379, 391, 42 L. Ed. 2d 521, 95 S.
Ct. 533 (1975)
(Burger, C.J. concurring))
(emphasis
added).

The general duty to preserve the integrity of the
judicial process was similarly identified in HazelAtlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238,
88

L.

Ed.

1250,

64

S.

Ct.

997

(1944).

Without

the

support of any rule,
the Court opened up a long
standing judgment because one of the litigants had
introduced

a

discovered

to

document

be

at

trial

fraudulent.

which

The

was

later

Supreme

Court

stated,

It is a wrong against the institutions set up to
protect and safeguard the public, institutions in
which
fraud
cannot
complacently
be
tolerated
consistently with the good order of
society.
Surely it
cannot be that preservation of the
integrity of the judicial process must always
wait upon the diligence of litigants.
The public
welfare
demands
that
the
agencies
of
public
justice be not so impotent that they must always
be mute and helpless victims of deception and
fraud.

Id. at 246 (emphasis added).
Shaffer Equip.,

Quickturn
2001)

Co.,

Design

11 F.3d at 457-59;

Sys.,

Inc.,

269

F.3d

see also Aptix Corp.

1369,

("The duty of candor to the court is

as much honor as that to the PTO.")

18

(Mayer,

1379

(Fed.

v.

Cir.

entitled to at least
C.J.,

dissenting).

2. Duty of Candor - Related Proceedings

This

general

and

rule-based

duty

of

places,

cases

where

application,

among

other

matters

being

adjudicated

are

adjudicator of

without

the related matter.

with an invalidity counterclaim,
the validity of
of

related

matters

requiring

of

candor

2014 U.S.

court

Dist.

October

21,

at *16.

requested

permission

which

filed

that

was

in

the

on

notifying

into
to

such

each

that category

the

respective

circumstances.

filed

was

December

to

not

until

bring

the

23,

Apple

its

instant

2013."

had

Rensselaer,

In Rensselaer,

"[w]hile Apple

December

interim,

related

At least one other court has found the

LEXIS 5186,

it

fit

notification

in

2013,

two

and an IPR proceeding involving

applicable

explained that

counsel

finds

A patent infringement suit

the same patent claims,

adjudicative tribunals.

duty

in

candor

the district

IPR petition
9,

2013,

motion

Id.

that

[to

The

in

a

it

stay],

court

participated

on

noted

telephone

conference with the court and "neglected to inform the court and

plaintiffs

that

it

had submitted an IPR petition

Id.

The Rensselaer court also noted that,

the

motion

to

stay,

"Apple

did

persuasive

reason

for

its

lack

plaintiffs

during

the

telephone

of

candor

Id.

the PTO."

during a hearing on

offer

conference

that it had filed an IPR petition."

19

not

to

with

a

particularly

the

regarding

court
the

(emphasis added).

and
fact

In addition to such directly analogous case,

federal courts

in non-patent cases have long-recognized the existence of a duty
of

candor

different

when
courts.

F.3d 1063,
a

related

inform

court

and was

Supreme Court's

to

(7th Cir.

district

had prepared

the

Court

the

Illinois

observed that
the

federal

of

at

FSI Int'l,

Inc.,

plaintiff

alleging

the

fiduciary

duties

advise

the

of

in

company.
the

a

involving

filed

the

by

state

district

court

state

a

a

200

lawsuit

Noting

he

the

may

conceivably

469 U.S.

the

at 240,

Seventh

lawsuit was
that

Circuit

to cut

off

surely could

federal

200 F.3d at 1067-68.

related

suit

litigation,

1165
in

federal

proposed

the plaintiff
another

20

its

Exchange

incomplete
a

Calleros

v.

2012),

the

(D. Minn.

corporation,

with

that

in

continuing duty

which

development

mailing

However,

Puig,

filed.

have

candor,

Securities

connection

v.

the litigation pending in

defendant

violated

disclosures

of

a

Pas tore,

892 F. Supp. 2d 1163,

directors,

another

duty

of

outcome

shareholder

that

counsel

development

the pass,

case

disclose

the litigation,
3.3

Inc.

pending

an attorney appearing before

to

that

Cleveland Hair Clinic,

In another

simultaneously

simultaneously

any

"[t]he goal

have affected the
court."

having

Rule

court

2000),

failed

admonition

affect the outcome of
and

are

In Cleveland Hair Clinic,

1067-68

federal

cases

district

court

officers,
Act

and

and

their

misleading

tender

shareholder

shareholder

and

offer

by

failed

to

had

filed

a

class-action

suit

corporation's

officers

duties

by

connection

making
with

similar state

1166.

cases

the

court

and

class

alleging

and

proposed

it

was

the

violated

their

fiduciary

misleading

actions

that

issues

to

by

the

the

have

the

accuracy and candor.'"
Lee

Corp.,

court
have

983

F.2d

concluded
flouted

Sanford-Orlando

Cir.

2008)

824,

that

that

Id.

to

"[i]t

(8th

seems

obligation

Kennel

to

Club,

at

from

instant

action."

the

related

as officers of the
the

record

with

(quoting Pinkham v. Sara

Cir.

1992)).

The

apparent

fairly

here."
Inc.,

Id.

the state-court

mention

present

at 1168 n.6
826

filed.

other

the district court observed

failure

responsibility

two

in

proceedings in favor of

state-court litigation," since "'[a]ttorneys,
court,

that

"[t]ellingly absent

In deciding to stay its

"troubled

and

is any reference to

identical

same

disclosures

had also been

the related state court litigation,

that

that

transaction,

court noted

nearly

1167.

court

directors

Motion papers

raising

at

state

incomplete

The district

[plaintiff's]

Id.

in

that

Id.;
518

F.3d

(admonishing an attorney who

see

also

1302,

district

counsel
Perez

1303

v.

(11th

failed to advise court

of potentially jurisdiction-stripping events taking place before
oral

argument

and

then

asking

court

to

vacate

in

a

opinion

after

losing his case).
This

duty

has

also

been

applied

non-patent

context

where there were federal district court proceedings and related
21

administrative

proceedings

pending

at

the

same

time.

In U.S.

Commodity Futures Trading Comm'n v. Lake Shore Asset Mgmt.
540 F. Supp.

the

2d 994

district

court

simultaneous

informed.
granted

time

was

plaintiff's

with

Association

("NFA"),

working

freeze

to

different

route

("MRA")."

Id^

the

Lake
by

district

which

the

Lake Shore Ltd.

to

of

which

was

a

the
to

not

this

the

the

NFA

order,

learned of

this

Futures

action,

a

was

completely

responsibility

after

had

order

"During

via

a

vacated by

National

assets

member

court

later

996-97.

party

Ltd.'s

restraining

was

at

a

Shortly

district

it

court,

not

Shore

court's

involving

order

Id.

the

is

997.

situation

statutory

which

filing

at

a

mandate.

which

a

in a futures trading matter,

for

assets,

unbeknownst

(hereinafter "Lake Shore"),

proceeding

request

defendant's

period,

freeze,

2008)

faced

administrative

Seventh Circuit's

vacated

111.

The district court,

freezing
the

(N.D.

Ltd.,

Seventh
issued

action

Circuit
an

asset

the same day when

filed an "emergency motion to

enforce mandate."

Id.

The motion alleged that the federal statutorily-established

NFA

administrative

previously

mentioned

Circuit,

had been

mandate

and

summarizing
and

Pastore

action,

to

in

the

Lake

Id.

events

noting

The

relied

on

that

it
22

was

of

Shore

Ltd.

court

district

issued in violation

opinion.
these

which

or

the

district
both

the

never

Seventh

Seventh Circuit's

court's

Cleveland

"unclear

had

why

Hair
none

opinion
Clinic
of

the

lawyers

in

this

responsibility

freeze order,

case

action

given

told

the

prior

that

to

the

court

the

about

issuance

preliminary

the

of

NFA

the

member

NFA

asset

injunction sought

freeze the very same assets at issue in the NFA action."

Id.

to
at

997 n.l.

3. Application of Duty of Candor to this Case
The context

litigation was

in which

this

Court

slightly different

similar to that in Lake Shore,

learned of

from

that

the related IPR

in Rensselaer,

in that both VIS and Samsung knew

of the September 2013 filing of the IPR petition,
them

PTAB

informed

ruled

the

on

reconsider,

Of

for

six

institution,

that

proceeding.

Court

the

Court

course,

at

months.

and

was

VIS

made

the same

It

aware

time

at

issue

in

this

opposing such petitions,

case,

and

but neither of

was

filed
of

that

petitioning the PTAB for an adjudication of

patents

and

not

until

the

its

motion

to

such

concurrent

Defendants

the validity of

Plaintiff

was

were
the

actively

Defendants were also asking this Court

to adjudicate the validity of the same patents and Plaintiff was

actively opposing such efforts.
At

the

April

10,

motion to reconsider,
failure

to

proceeding.

parties

notify

hearing

before

this

Court

on

the

the Court raised the issue of the parties'
the

Hr'g Tr.,

responded

2014

that

Court
ECF.

it

that

No.

554.

never
23

they

had

Counsel

occurred

to

begun

the

for each of

them

that

IPR
the

they

should

advise

this

Court

of

such

parallel

proceeding.

after the Court noted that the AIA provides

written

decision

by

the

PTAB,

a

estopped from later asserting in a

is

invalid

reasonably

on

any

could

ground

have

petitioner
civil

that

raised

that,

the

during

after a final

is

action

collaterally

that

petitioner

the claim

raised

inter partes

the

Even

or

review,

Defendants seemed to suggest that they did not think to notify
this

Court

of

the

moved so quickly.

IPR proceeding because
Hr'g Tr. 13, ECF No.

this

Court's

docket

554.

The existence of such a parallel proceeding normally comes

to the attention of the Court through one of the parties filing
a

motion

to

stay

court

institution of IPR.

proceedings

in

light

of

the

pending

request

for

See Universal Elecs., Inc., 943 F. Supp. 2d

at 1030 (considering such a stay motion).

take place here.

the

However,

that did not

Had the parties promptly notified this Court
petition,

then

the

Court

at

least

could

have

considered for itself what impact such related proceeding might

have on the scheduling of matters,7 as well as whether it wished
to

stay

the

Defendants'
"[a]

stay

'sound

proceedings

and

its

then-ongoing

summary judgment motion of
is

particularly

discretion,'

where

invalidity.

appropriate,

the

consideration

outcome

and within

of

of

After all,
the

another

court's

case

may

7 Had the Court known of the pending IPR proceeding on October 25,
2013, when it rescheduled the trial from November 12, 2013 to April
21,

2014,

it could have factored such knowledge

decision.
24

into its

scheduling

'substantially affect'

or

case pending before

district

Corp.,

Civ.

(D.N.J.

Oct.

Laborers'

Cir.

No.

2009

2009)

dispositive
court."

U.S.

(quoting

see

Civ.

No.

Cal.

Brixham

13-CV-616-JCS,

April 28,

2014)

issues'

Inc.

v.

96266,

Corp.

v.

v.

U.S.

a

Am.

*12-13

Local

215,

1215

Juniper

Dist.

in

JCM

at

544 F.2d 1207,

Ltd.

2014

the

LEXIS

Bechtel

Solutions

of
MEI,

Dist.

Int'l Union of North America,

(N.D.

*3-7

09-351,

15,

1976));

Inc. ,

a

'be

(3rd

Networks,

LEXIS

58770,

at

(granting motion to stay patent

infringement suit involving non-practicing entity pending inter
partes review);

1340,

1341

patent

see also Gould v.

(Fed.

Cir.

1983)

infringement

proceedings).

(discussing

litigation

Moreover,

Petroleum Corp.

95,

1984)

stay,

(D.

Md.

sua sponte,

Co.,

has

("A

frequently noted,

is

also

299 U.S.

true

preclusive
U.S.C.

that

effect

§§ 315(e),

248,

a

v.

Dep't

federal

254-55

it

is

"final

and
318,

court

during

court

an action before it.")

Am.

trial

705 F.2d

stay

of

reexamination

such stays may be initiated sua sponte.

See Crown Cent.

98

Control Laser Corp.,

that

written

should

has

Energy,

102

inherent

F.R.D.

power

to

(citing Landis v. North

(1936)).

true

of

And while,

as Plaintiff

trials resolve cases,

decision"

therefore

from

resolve

the

PTAB

cases.

See

it
has

35

and 319.

By failing to advise this Court of the existence of the IPR
proceedings,

VIS

and

Samsung

in

apple regarding the validity of

effect

had

two

bites

the disputed claims.

25

at

the

Moreover,

they deprived this

Court

of

the opportunity

to

inquire of

the

parties and decide for itself whether to await a ruling from the
PTAB on that issue.

As

the PTO noted in issuing its new rules

of practice implementing the AIA,

it was

"anticipated that the

rules will minimize duplication of efforts.
the

filing

of

inter-partes

an

review petition

request for inter-partes reexamination,
timelines
it

is

inter-partes

for

anticipated

that

review

the

...

By requiring

earlier

high

level

reexamination,
of

duplication

between litigation and reexamination will be reduced."

Reg.

48680,

48721.

Needless to say,

a

and by providing shorter

compared with

current

than

77 Fed.

the practice adopted by the

parties does not lend itself to promoting judicial efficiency or
accomplishing some
with enactment of

hardship

on

an

of

the purposes

the AIA.

entire

Congress

Moreover,

district

obviously intended

such practice may work a

that

seeks

to

this

expeditiously

Court

resolve its docket.

The

parties

should

have

petition

as

soon

as

was

appears,

at

least

glaring omission.

the

very

least,

it

to

the

clearly

outcome

of

a

the

filed,

and

undersigned

the

failed

to

comply

with

Judge,

their

this Court because

"development

litigation"

which

26

a

may

fact

of

failure

By not notifying the Court,

candor and good faith to
was

notified

to

the

to

have

IPR

do

so

been

a

counsel have,

at

general

of

duty

the IPR proceeding

conceivably

best

affect

demonstrated

the

by

Plaintiff's

filing of

the motion for reconsideration.

Pastore,

469 U.S. at 240.8

However, in light of the undeveloped state of

the

relatively

law

Court's

on

this

admonition

of

all

new

PTO

counsel

review

involved

in

procedure,
this

this

case

falls

short of a formal reprimand of any of the individual lawyers.9
That said,

the issuance of

this Opinion is more than sufficient

to place all patent practitioners on notice that future failures

to

disclose

to

the

Court

any

concurrent

inter

partes

review

proceedings will be met with far sharper consequences.
Like the Lake Shore court,

this Court "takes its obligation

to promote civility and collegiality between
very seriously,"

deal

of

and only

reflection."

However,

the

negatively

Court
impacts

"prepared this

Lake

Shore,

"cannot

turn

a

its

ability

opinion after a

540

F.

blind
to

the bench and bar

Supp.

eye

to

promote

2d

great

at

996.

conduct

that

the

orderly

administration of justice and resolve disputes fairly."

Id.

It

8 In light of the Court's conclusion regarding the general duty of
candor,
it is not necessary for this Court
analysis regarding the Rule 3.3 duty of candor.

9 Although

the replacement

of

inter partes

to

engage

in

reexamination

further

by

inter

partes review effected a transformation from an examinational to an
adjudicative proceeding, thus making the existence of concurrent PTO
review proceedings more similar to the concurrent litigation cases
discussed

above,

the prior

reexamination process

was

still

a

related

administrative proceeding that could "conceivably affect the outcome
of the litigation."
Pastore, 469 U.S. at 240.
Accordingly, although

the question is not squarely before this Court, there is a strong
argument that even under the old inter partes reexamination process,
the general duty of candor required parties to notify the Court of the
filing of a petition for reexamination.
27

is

this

remind
duty

Court's

counsel
to

hope

in

this

inform

the

conceivably affect
U.S.

at

240.

that

shining

this

others,

of

their

of

Court

on

and

case,

light

issue

any

Court

now

moves

continuing

development

which

the outcome of the litigation.

The

on

to

applicable to the motion to reconsider,

will

Pastore,

address

the

may
469

standard

as well as the substance

of such motion.
III.

Because

STANDARD OF REVIEW -

the

motion

for

RECONSIDERATION

reconsideration

is

a

procedural

matter not unique to patent law, when considering such a motion,
this Court looks to controlling Fourth Circuit precedent,
than

Federal

1373,

1375

Exchange

Circuit

(Fed.

No.

precedent.

Cir.

299,

457

2005);

F.3d

Controlling Fourth Circuit

judgment order,
at issue,

was

orders
Fed.

R.

orders

Dev.

2011)

trigger
Civ.

of

1340

Hasbro,
Inc.

n.2

(Fed.

law clearly provides

403

F.3d

v.

Produce

Cir.

2006).

that a summary

2014 summary judgment Order

"which did not resolve all claims against all parties,

Annes

(4th Cir.

1334,

v.

Seed,

Pennington

like the January 8,

interlocutory and

Saint

Bowling

rather

P.

Co.,

thus

subject

Inc.

v.

(citing Fed.

heightened
59(e)

partial

strict standards because

R.

Civ.

standards

P.

for

are

district
28

443

F.

at

any

App'x

54(b)).

time."

829,

While

reconsideration,

interlocutory orders,

judgment,

"Ma]

revision

Trabich,

and 60(b),

summary

to

not

subject

court retains

832

final

see

such as

to

those

the power

to

reconsider and modify its

partial summary judgments,
when such is warranted.'"
832

(quoting American

F.3d

505,

514-15

interlocutory judgments,

at

any time prior

Saint Annes Dev.

Canoe

(4th Cir.

Ass'n

v.

2003));

to

Co.,

Murphy

see

including

final

443 F. App'x at

Farms,

Fed.

judgment

R.

Inc.,

Civ.

P.

326
54(b)

(providing that interlocutory orders that resolve fewer than all

claims are "subject to revision at any time before the entry of
[final]

judgment");

Builders,

Inc.,

differing

Fayetteville

936 F.2d 1462,

standards

understandable,

as

for

Investors

1469

(4th Cir.

interlocutory

significant

time

Commercial

1991)

versus
and

v.

(same).

final

orders

resources

invested in arriving at a final judgment.

The

are

are

often

American Canoe Ass'n,

326 F.3d at 514.

The

power

committed

to

to

an

interlocutory

the

district

discretion

of

law of

the

case

of guiding that discretion."

Id.

doctrines

Mem.

such as

Hosp.

Sejman v.
1988)).

must

the

reconsider

v.

court's

generally

be

issue,

followed

since made
or

Co.,

.

at

515

Corp.,

Inc.,

. have

(3)

unless:

different

. . .

evolved as

U.S.

F.2d

1,

66,

"(1)

a

a

evidence,

the prior decision was

12

and

means

69

(1983),

(4th Cir.

the case and

subsequent
(2)

a contrary decision of

29

"is

(citing Moses H. Cone

460

845

court,

earlier decisions become law of

substantially

authority has
the

Const.

Warner-Lambert
A

produces

to

Mercury

.

ruling

trial

controlling

law applicable

clearly

erroneous

and

would

work

(internal

326

manifest

quotation

F.3d at

515

injustice."

marks

omitted);

(explaining

responsibility of

[all

Sejman,

that

levels

see

tempered

at

times

of

the

American

although it

of]

the

reach the correct judgment under law,
be

845

by

doctrine,

federal

Canoe

the

at

69

Ass'n,

"ultimate

courts

...

to

. . . that obligation may

concerns

case

is

F.2d

of

finality

and

judicial

economy").

The

law

reconsideration

decision,

"is

not

which

an

guides

'inexorable

this

Court's

command'

but

rather a prudent judicial response to the public policy favoring
an

end

to

omitted).

litigation."

decision

subsequent
Indus.

that when a

should

stages

Operating

citation

845

"As most commonly defined,

the case posits

that

Sejman,

and

"basically [a]

in

Corp.,

quotation

to

same

486

U.S.

marks

govern

68-69

case."
800,

upon a

the

(citations

rule of

same

815-16

omitted).

(1988)
The

law,

issues

Christianson

v.

in

Colt

(internal

doctrine

is

simple principle of disciplined self-consistency"

based on principles of finality and comity,

of authority.10

at

the doctrine of the law of

court decides

continue
the

F.2d

18B Wright,

as opposed to a lack

Miller & Cooper,

Federal Practice

10 "The force of law-of-the-case doctrine is affected by the nature of
the first ruling and by the nature of the
ruling is avowedly tentative or the issues
may be said that law-of-the-case principles
parties in separate proceedings likewise may
case

constraints

....

Matters

of

fact,

issues involved. If the
especially important, it
do not apply.
Different
fall outside law-of-theon

the

other

hand,

are

unlikely candidates for reconsideration after the first full effort."
30

and

Procedure:

differently,

Jurisdiction

§ 4478

(2d

ed.

2002).

Stated

"[l]aw-of-the-case principles . . . are a matter of

practice that rests on good sense and the desire to protect both

court and parties against the burdens of repeated reargument by
indefatigable diehards."

n.5

("Perpetual

therefore

Id.;

litigation

threatens

to

see Christianson,

of

deny,

any

issue

justice.").

unavoidable reality that district courts
and efficiently satisfy their
were

open

to

argument.
Inc. , No.

2006)

.

486 U.S.

.

It

is

based

on

delays,
a

and

simple but

could not

responsibilities

reconsideration

.

at 816

effectively

if every ruling

better

crafted

legal

See Hilb Rogal & Hobbs Co. v. Rick Strategy Partners,
3:05cv355,

("Courts

2006 WL

typically

*8

(E.D.

Feb.

10,

order where the motion to reconsider simply seeks

'to present a

compelling

argument

presented in the original briefs.'"
Co.

v. Business Mgmt.

(M.D.N.C. 2005)));
and

Procedure:

reconsider

Va.

interlocutory

and more

not

at

an

better

will

5908727,

that

Jurisdiction

could have

(quoting Madison River Mgmt.

Software Corp.,

18B Wright,

the party

402 F.

Supp.

Miller & Cooper,
§ 4478.1

(2d

2d 617,

619

Federal Practice

ed.

2002)

("A

trial

court could not operate if it were to yield to every request to

reconsider

each

of

the multitude

between filing and final

18B

Wright,

Miller

Jurisdiction § 4478.5

&

of

judgment.");

Cooper,

(2d ed.

rulings

31

may be made

see also Sejman,

Federal

2002).

that

Practice

and

845 F.2d

Procedure:

at

69

("Clearly,

'satisfactorily
considered

courts

and

162 U.S.

339,

Of

344

course,

decisions

of

circumstance,

not

efficiently

and decided

subsequent appeals,

could

.

.

.

perform

.

. were

if

to

be

their

a

question

(quoting Great Western Tel.

Co.

"[a]

its

court

own

has

or

although as

a

the

of

a

power

to

coordinate

rule courts

revisit

should be

'was

decision

injustice.'"

with

Christianson,

that

a

previous

may

the

decision

661

2009)

(4th Cir.

460 U.S.
Fourth

"depart []

[i]s

manifest injustice.'"
(4th Cir.

clearly

erroneous

Christianson,

California,

court

Burnham,

court

the

Arizona v.

v.

in

(1896))).

extraordinary circumstances

manifest

once

litigated anew'"

so in the absence of
initial

duties

606,

from

the

has

erroneous

Inc. v. Franchot,

the case doctrine,

would

at

to

do

817

work

In line
recognized

the case when

and

a

(quoting

(1983)).

would

[a]

work

572 F.3d 186,

(quoting United States v. Aramony,

1999)).

any

such as where

expressly

law of

in

loathe

and

U.S.

618 n.8

Circuit

'clearly

TFWS,

486

prior

192

166 F.3d 655,

In applying such exception to the law of

the Fourth Circuit explained that

" [a]

prior

decision does not qualify for this . . . exception by being just

maybe or probably wrong;

it must

strike us

as wrong with

force of a five-week-old,

unrefrigerated dead fish."

(internal

quotation

words,

citations

and

"[i]t must be 'dead wrong.'"
32

marks
Id.

omitted).

Id.

In

the

at 194

other

(citations omitted).

Accordingly,

discretionary
standard

in

standard

the

substantive

having

for

instant

analysis

determined

that

above-described

reconsideration

circumstances,

of

the

the

issues

the

is

the

Court

raised

correct

turns

in

the

to

the

parties'

briefs.
IV.

Plaintiff's
this

Court

to

PTAB's

be

"new

findings

(citing PowerOasis,
(Fed.

Court

Cir.

need

because

"a

evidence"

Inc.

accord

decision

to

and

the

PTAB

by

v.

should

give

specialized

T-Mobile USA,

Defendants
the

the

regarding

deference

by

that

and

4, ECF No.

417

522

F.3d 1299,

the

PTAB

claims

are

1132,

Defendants).

1139

(Fed.

Cir.

1985)

the

deference

valid

over

Defs.' Opp. Mem.

ECF No. 465 (quoting Interconnect Planning Corp. v. Feil,

2d

to

knowledge

Inc.,

prior art is 'never binding on the court.'"

Supp.

that

respond by arguing that

decisions

USPTO

asserts

decisions

PL's Reconsideration Mem.

2008) .

not

reconsideration

the recent

due

expertise of the PTO.

1304

seeking

should consider

institution

the

motion

DISCUSSION

(emphasis

7,

774 F.

added

by

Defendants further assert that no deference should

be accorded the PTAB's decisions because they are only decisions

regarding whether
PTAB

to

adjudication.

institute

IPR,

Moreover,

not

Samsung

final

argues

decisions
that

even

after
these

preliminary decisions to institute IPR, or not to institute IPR,
are

initial

rulings

subject

to
33

rehearing.

Id.

at

7-8.

VIS

replies

by

asserting

rulings

are

binding

afforded deference

ECF

No.

Inc.,

475

725

that
on

as

(citing

1276,

Court,

matter

Am.

&

2011)

is

but

law.

Cir.

Becton,

not

that
Pi's

Derrick

(Fed.

Inc. v.

1288-90 (Fed. Cir.

of

Hoist

1359

grounds by Therasense,

position

this

a

F.2d 1350,

its

Co.

1986)

that
they

the

PTAB

should

Rebuttal

Mem.

v.

&

be

Sowa

2,

Sons,

abrogated on other

Dickinson & Co.,

649 F.3d

(en banc)).

These assertions by Plaintiff seem to rely on the first two
Sejman factors that our Court of Appeals directs district courts

to

utilize

ruling.

in

deciding whether

Sejman,

845

F.2d

at

to

reconsider

an

However,

the

69.

interlocutory
first

of

the

three Sejman factors described above is not present in this case
because no

"subsequent

evidence"

such

that

decision.

Id.

No

Lincoln Nat'l

Cir.

1962)

construe

Ins.

in

more

has

Co.

should

not

taken place

v.

Roosth,

follow

in

306

its

this

earlier

case.

F.2d 110,

113

See
(5th

describing

factor

Sejman

adopted).

there is no different evidence produced by "a trial"

case.
the

Moreover,

submission

falling within the ambit
decisions

Court

trial

decision

Therefore,
this

this

substantially different

(clearly referencing subsequent trial in same case as

original

in

Life

trial produce[d]

even

to

of

the

if

Court

the first

still do not satisfy the

fully

below,

a

the

decision

on
34

of

the

were
PTAB

to

factor.

institution

broadly

decisions

Sejman factor,

first

IPR

Court

as

such PTAB

As

discussed

is

merely

a

threshold

determination

as

to

whether,

using

reasonable interpretation of the claim terms,

the

broadest

the petitioner has

demonstrated that there is a reasonable likelihood of the patent

claims being found invalid by a preponderance of
37 C.F.R.

such,

§ 542.100(b);

§ 314(a);

35 U.S.C.

Having

producing

As

the

Deference Owed to PTAB's Decisions

determined

that

there

substantially different
second

Sejman

factor,

is

no

subsequent

evidence,
and

asks

the

Court

whether

authority has since made a contrary decision of
to the issue at hand,

earlier

such that

decision.

regarding

Sejman,

patentability

litigation

because

PTO.

See

Patlex

reh'g,

771 F.2d 480

question

in

Corp.

v.

(Fed.

a

to

at

69.

direct

grant

Mossinghoff,

Cir.

disputes

question

authority

assigned

to

it

1985)

between

usually

on

controlling

law applicable

a

PTO

effect
patent

decisions

on
is

pending
not

one

is
by

758

F.2d

594,

604

on

("Validity often is brought

private

whether
Congress,

parties,

the

properly

the

under

the

granted

PTO,

but

the

At issue is a right that can only be conferred by the

government."

(1932))).

moves

but is strictly within the domain of the

threshold

patent.

F.2d

have

power

trial

the Court should not follow its

845

can

the

afforded to the courts,

into

§ 316.

it is not a "trial" producing "evidence."
A.

to

35 U.S.C.

the evidence.

(citing

The

Court

Crowell

v.

therefore
35

Benson,

generally

285

gives

U.S.

22,

deference

50

to

final

PTO

decisions,

based

knowledge and expertise.

part

on

See PowerOasis,

[originally]

considered by the PTO examiner is relied on by the

that

is

has

due

to

the

a

are

have

skill

in

and to be

patents.'"
60)) .

to

the

art

than

a

duly

Circuit has

some

which

the

is
was

deference

agency presumed to have

expertise

familiar

and

from

whose

duty

in

the Court is

issued patent

is

interpreting

the

their work with the level

it

is

to

Hoist & Derrick Co.,
required to

issue

only

of

valid

725 F.2d at 1359-

give a certain level
§ 282,

presumed valid,

which provides

and

the

Federal

recognized that such "statutory presumption derives

in part from recognition of
patent

patent

that

overcoming

of deference to the PTO based on 35 U.S.C.

that

issued

which includes one or more examiners who

(quoting Am.

Moreover,

of

qualified government
job,

references

other

added burden

properly done its

assumed

art

an

522 F.3d at 1304

and

prior

of

specialized

challenged,

"'no

validity

Inc.,

PTO's

that

he

the

the

(indicating

attacker,

when

in

examiners."

the

technological

Interconnect

Planning

expertise of

Corp.,

774

the

F.2d

at

1139.

Notwithstanding
deference,
federal

when

court,

reach

an

prior

decision

such

the
a

validity

district

independent
by

presumption

a

of

court

has

conclusion,"
patent

a

patent
"the

the
is

associated

challenged

obligation

regarding

examiner,
36

and

...

validity,

whether

it

be

and
on

in
to
a
an

original patent application or a reissue application,
binding on the court.'"
Plate,

Inc.,

Id.

755 F.2d 1549,

"'is never

(quoting Fromson v. Advance Offset

1555

(Fed.

Cir.

1985)).

Rather,

the

examiner's decision is merely "'evidence the court must consider
in
its

determining

whether

the

statutory burden by

(quoting Fromson,
In

light

affirming
validity

of

the

fact

patentability

whether

in
to

binding

effect

on

assumes

that

prior

a

clear

asserting

and

invalidity

convincing

has

evidence.'"

met
Id.

755 F.2d at 1555).

challenge

regarding

party

that

are

not

this

final

a

IPR

Court.

final

controlling

Court,

institute

the

prior

a

subsequent

in

certainly

decision

could somehow be binding on a district

decisions

decision

Moreover,

PTAB

PTO

by

does

even
as

to

court,

the

if

not
the

PTO
have
Court

patentability,

such rule surely

would not make subsequent non-final PTAB decisions to institute,
or not to institute IPR proceedings,
district court.
to

consider

authority"
decision,

Accordingly,

the recent

reaching
Sejman,

while the Court has the discretion

PTAB rulings,

a

845

retroactively binding on a

decision

F.2d

at

they are not

contrary

69,

and

the

"controlling

to

this

Court

is

Court's
therefore

certainly not required to overturn its prior decision based on
the

analysis

in

a

decision

by

institution of IPR.

37

the

PTAB

granting

or

denying

B. Impact of Differing Standards at PTAB and the Court
The

Sejman

Court

factor,

now

moves

asking

on

to

whether

consider

its

the

"prior

third

decision

erroneous and would work manifest injustice."
at

69.

Any

analysis

deference

required

tempered
other

by

the

contrast

standards

of

the

between

used by

determine whether,
the claim

is

a

terms,

reasonable

invalid

by

§ 42.100(b);

a

35 U.S.C.

skill

a

construction

in the relevant

(Fed.

construed,

proven

Cir.
the

invalid

by

Corp. v. i4i Ltd.

of

on

and

reasonable

what

a

Once

P'ship,

and

the

claim

whether

convincing

131 S. Ct. 2238,
38

the

this

there

being

37

§ 316.

found

C.F.R.

In contrast,

terms,

person

and

interpretation

claims

claim

is

the PTAB must

evidence.

35 U.S.C.

that

Order,

demonstrated that

patent

the

such

those used by

the

having

Phillips v. AWH Corp.,

determines

clear

PTAB

constructions

art would understand the claims

2005).

Court

accord

judgment

institute IPR,

patent's

based

of the time of invention.
1313

PTAB

the

§ 314(a);

disputed

to

clearly

845 F.2d

injustice,

claim

the petitioner has

preponderance

a

the

the

of

Sejman,

decide

summary

the broadest

likelihood

construing

adopts

using

was

final

the Court's prior decision was

In determining whether to

of

might

and would work manifest

reconsideration

legal

Court.

when

Court

in determining whether

clearly erroneous

it

this

and

Court

ordinary

to mean as

415 F.3d 1303,

terms
claims

evidence.
2246 (2011).

have
have

been
been

Microsoft

Indeed,
it

the

granted

January

8,

PTAB recognized these differing standards when

VIS's
2014

motion

to

summary

submit

to

the

judgment Order.

"[a]lthough the district

court's

PTAB

The

this

PTAB

order may be

Court's

stated

informative,

that

the

Board applies a claim construction standard that may not be the
same

as

that

adopted by

a

district

reach a different result."
12,

Case

February

Nos.

12,

12,

IPR2013-00569,

2014

IPR2013-00572,

Feb.

Order

by

court,

IPR2013-00570,

Paper

term

upon

which

it

Thus,

VIS

the

PTAB

reconsideration,

meaningfully

different

rests

from

not

Court in its Markman Opinion.

is

Paper No.

13,

Case

surprising

Nos.
that

"converted video signal,"

its

reached

the

Board may

IPR2013-00571;

No.

in construing the specific claim term,
the

the

2014 PTAB Order,

PTAB,

IPR2013-00573.

and

entire
a

argument

claim

construction

construction

adopted

Markman Opinion 52,

for

by

ECF No.

this
198

(giving the term "converted video signal" its plain and ordinary
meaning,

which

is

"a

video

signal

that

has

Summary Judgment Order 17, ECF No.

413

construction

Markman

of

the

Reconsideration Mem.
PTAB's definition of

term
Ex.

in

1 at

"convert"

its
15,
as

been

changed.");

(reaffirming the Court's

ECF No.

Opinion);
417-2

cf.

Pi's

(reflecting the

"to change the representation

of data from one form to another").11

11 Furthermore, VIS's attempt to argue that the claim constructions
reached by the PTAB and the Court are consistent, Pi's Rebuttal Mem.
39

As

the

PTAB

applied

a

different

standard,

and different standards of law,

decision

as

likely

to

whether

disclose

the

signal," VIS has

a

specific

claim

claim

to reach its differing

prior

limitation

construction

art

of

would

"converted

a

reference

video

failed to show that this Court's prior ruling

on summary judgment was clearly erroneous or that it would work

a manifest injustice if it is not revised.
69;

Franchot,

572

F.3d

at

192

(quoting

Sejman,
Aramony,

845 F.2d at
166

F.3d

at

661) .

Moreover,

apple

of

invalidity,

decision

was

finality

and

grounded.

Plaintiff's

clearly
comity

The

to

this

by

on

Court,

which

and

than the

the

that

Court

may

not

claim

construction

in

this

the

law

second bite at

this

of

evidence

argues

the

the

the

the

earlier

principles

case

to

doctrine

the

of
is

PTAB,

and evidence presented

PTAB analysis

the Court

adopt

Court's

presented

arguments

case

a

undermines

4, ECF No. 475, when they clearly are not,
new

get

necessarily informed the

conclusions which Plaintiff
However,

to

arguing

erroneous,

arguments

which were different

attempt

and the

should now adopt.

record

presented

to

a

is merely an argument for a

different

from

the

construction

which VIS argued for during the Markman process and which the Court
subsequently adopted in its Markman Opinion.
It is well-settled that
"one cannot interpret a patent one way for the validity analysis and a
different way for the infringement analysis."
A. G. Design & Assocs.
LLC v. Trainman Lantern Co., Inc., 271 F. App'x 995, 999 n.4 (Fed.
Cir. 2008); see Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d
1343, 1351 (Fed. Cir. 2001) ("A patent may not, like a "nose of wax,"
be
twisted one way
to
avoid anticipation
and another
to
find
infringement.") (quotation marks and citation omitted).
40

separate

Jones,

tribunal

29

for

the

F.3d 1549,

facts

1553

therein.

(11th Cir.

See United States v.

1994)

(recognizing that a

"'court may take judicial notice of a document
court

not

for

litigation,

the

truth

Pork Packers,
v.

("Thus,

(4th

Inc.,

Rosga,

F.

Supp.

Penn

1989) ,

Ins.

but

matter

Additionally,

to

of

the

439,

Co.

v.

1992));

(E.D.

United

Va.

2012)

887

F.2d

limited

1236,

1239

purpose

of

that the order represents or the

does

by

other

the content of court

the

litigation.'"

PTAB

the

Ins. Co. v. Rotches

447

Coil,

for

in

such litigation

(2d Cir.

'noticfe]

'only

Plaintiff

the

1388

2d

a court may

recognizing the "judicial act"

presented

asserted

(quoting Liberty Mut.

864

Colonial

Cir.

subject

matters

969 F.2d 1384,

for example,

records,'

the

but rather to establish the fact of

and related filings.'"

States

of

filed in another

Jones,

not

the

assert

parties

to

29

F.3d

that

this

at

the

1553).

evidence

litigation

was

unavailable at the time VIS filed its briefs on summary judgment

regarding

validity.

PTAB

had not

time

it

yet

submitted

Rather,

rendered

its

allow

decision

summary

Pi's Reconsideration Mem.

To

a

Plaintiff

2,

reconsideration

of

asserts

favorable

judgment

ECF No.

only

briefs

that
at

the

to

VIS

the

in

this

case.

order

based

417.

an

interlocutory

upon the subsequent decision of another adjudicative tribunal —
which

was

arguments

driven

by

the

by

a

different

parties,

claim

different
41

construction,

evidence,

and

a

different

different

legal standard - would remove all considerations of finality and

consistency by allowing parties to challenge a court's ruling
whenever that party identifies,
argument.

("Courts

in hindsight, an improved legal

See Hi lb Rogal & Hobbs Co.,

will

not

typically

2006 WL 5908727,

an

reconsider

at

order

interlocutory

*8

where the motion to reconsider simply seeks 'to present a better
and more compelling argument that the party could have presented
in the original briefs.'"
F.

Supp.

2d

at

619));

(quoting Madison River Mgmt.
18B

Wright,

Practice and Procedure:

Jurisdiction

trial

operate

Miller

court

could

not

if

&

§ 4478.1

it

were

Co.,

Cooper,
(2d ed.

to

yield

402

Federal

2002)

to

("A

every

request to reconsider each of the multitude of rulings that may
be made between filing and final

845 F.2d at

69

("Clearly,

'satisfactorily
considered

and

and

subsequent appeals,

.

see also Sejman,

courts could not perform their duties

efficiently

decided

judgment.");

.

.

.

. were

to

if
be

a

question

litigated

once
in

162 U.S.

(quoting Great Western Tel. Co.,

anew'"

at

344)).

Finally,
judgment

order

institution

conclusions.
construction

VIS,

and,

even if
in

of

the Court reconsidered its prior summary

light

IPR,

In
of

the

its

the

of

Court

Markman

term

the

PTAB's
would

Opinion,

"converted

decisions
arrive

the

video

at

Court
signal"

regarding
the

adopted
proposed

based on what a person having ordinary skill
42

same

the
by

in the

art

would

understand

invention,

gave

video signal
52, ECF No.
of

the

reference

198.

to

mean

been changed."

Therefore,

patent

"Palin,"

"converted video
construction,

claims

at

the

time

of

the term its ordinary and plain meaning -

that has

'268

the

for

Markman Opinion at 44 &

when analyzing the asserted claims

validity

in

light

the Court used this

signal."

the

PTAB

"a

In

the

prior

construction of

contrast

applied

of

to

the

this

the term

Court's

"broadest

art

claim

reasonable

interpretation"

standard to the differing evidence and argument

before

it

adopted

video

signal"

and

which

a

construction

defined

of

the

"convert"

as

term

"to

representation of data from one form to another,

change numerical data
tape."
Applying

the

construction

contrary

construction

confident

that

Order

was

discloses

the
a

its

correct

video

anticipates

decision
one.

signal

which

this

the

the

The

from cards

PTAB,

original

prior
has

Court,

art

been

and not

the

Court

summary

29-30,

to

reference

changed

ECF

No.

413.

is

"Palin"

and,

That

the

judgment

the claim term of a "converted video signal."

Summary Judgment Order at
arrived at

by

in

the

Ex. 1 at 15, ECF No. 417-1.

adopted by

adopted

change

for example to

from binary to decimal or

PL's Reconsideration Mem.,

"converted

the

thus,

See
PTAB

a different conclusion when using a different claim

construction

does

not

serve

to

43

prove

the

Court's

conclusion

erroneous.12
For
has

the reasons

authority

declines

to

case.

reconsider

do

consistency,
this

to

and

stated above,

so,

the

based

comity,

as

Accordingly,

although

on

well

summary

as

the

the

reasons

Reconsideration

of counsel in this case,

that

a

counsel

lawyer's
to

institution

general

timely notify

of

of

procedural

ECF No.

Order,

it

finality,

posture

of

for reconsideration
416,

is DENIED.

CONCLUSION

stated

is DENIED.

judgment

motion

of the Court's summary judgment Order,

For

Court plainly

considerations

Plaintiff's

V.

this

above,

The Court

Plaintiff's
reiterates

for

Motion

for

the benefit

and counsel in all future patent cases,

duty

of

candor

the Court

inter partes

of

to

the

requests

review when

such

Court
to

requires

the PTO

request

has

for

the

potential to affect the outcome of the concurrent litigation.

12 The Court notes that Defendants separately opposed the motion for
reconsideration through arguing that the motion was moot because none

of the patent claims potentially affected by the PTAB's
among those claims Plaintiff elected to assert at trial.

rulings are
Defs.' Opp.

Mem. 13-14, ECF No. 465.
While this is factually a true statement, it
misses the potential indirect, but no less significant, impact that
the instant motion could have on the trial,

because some of the claims

elected by VIS are dependent claims that rely on claims that were
previously invalidated by this Court.
Accordingly, as VIS correctly
asserts, the reversal of such invalidation would necessarily impact
the trial evidence Samsung would have to introduce in order to prove
the invalidity of the dependent claim elected by VIS.
Pi's Rebuttal
Mem.

5,

ECF No.

475.

Thus,

as

the motion for reconsideration has

the

potential to impact the litigation of at least one of the claims
Plaintiff has elected to assert at trial, the motion is not moot.
44

The
Order

to
IT

Clerk
all
IS

SO

is

DIRECTED

counsel

of

to

send

a

copy

of

this

Opinion

and

record.

ORDERED.

/S/I
Mark S.
UNITED

Norfolk,

Virginia

May 3- , 2014

45

STATES

Davis

DISTRICT

JUDGE