Certusview Technologies, LLC v. S & N Locating Services, LLC et al
Filing
542
OPINION AND ORDER Denying 436 Motion in Limine; Granting 494 MOTION to Enforce the Court's Order dated March 7, 2016; Overruling 529 Objection; Denying 336 Second Amended ANSWER to Complaint, COUNTERCLAIM. Plaintiff/Counter- Defendan t's Rule 52(c) Motion is DENIED, and Plaintiff/Counter- Defendant's remaining Motion in Limine, ECF No. 436, is DENIED. Further, Plaintiff/Counter-Defendant's Motion to Enforce the Court's Memorandum Order, ECF No. 4 94, is GRANT ED and Plaintiff/Counter-Defendant's Objections to Defendants/Counter- Plaintiffs' Post-Trial Brief, ECF No. 529, are OVERRULED. With respect to Defendants/Counter-Plaintiffs' declaratory judgment counterclaim for inequitable conduct, asserted in its Second Amended Answer and Counterclaim, ECF No. 336, for the reasons discussed above, such counterclaim is DENIED on each of the five grounds alleged. It is therefore ORDERED that judgment be entered in favor of Plaintiff/Counter-Def endant as to Defendants/Counter-Plaintiffs' declaratory judgment counterclaim for inequitable conduct. IT IS SO ORDERED. Signed by District Judge Mark S. Davis and filed on 8/2/16. Copies distributed to all parties 8/2/16. (Attachments: # 1 Part 2) (ldab, )
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
Norfolk Division
CERTUSVIEW TECHNOLOGIES,
LLC,
Plaintiff/Counter-Defendant,
Case No.:
S&N LOCATING SERVICES,
S&N COMMUNICATIONS,
2:13cv346
LLC and
INC.,
Defendants/Counter-Plaintiffs.
OPINION AND
CertusView
Technologies,
"Plaintiff/Counter-Defendant")
action
alleging
Communications,
ORDER
that
S&N
Inc.'s
LLC
filed
this
Locating
("S&N"
("CertusView"
patent
Services,
or
and
S&N
"Defendants/Counter-
an amended answer asserting an
declaratory judgment counterclaim.
infringement
LLC
Plaintiffs") infringed the five Patents-in-Suit.
by filing
or
S&N responded
inequitable conduct
Although the Court granted
S&N's Motion for Judgment on the Pleadings and found that each
of
the
asserted
claims
of
the
Patents-in-Suit
were
invalid
because they did not claim patent-eligible subject matter, S&N's
inequitable conduct declaratory
for trial.1
judgment
counterclaim
remained
After a five-day bench trial, and with the benefit
For a more detailed factual and procedural history, see May 22, 2015
Opinion and Order,
Order,
ECF No.
250.
ECF No.
325,
and January 21,
2015 Opinion and
of
post-trial
conclusions
briefs
and
law,
S&N's
of
proposed
findings
inequitable
of
fact
and
conduct
declaratory
conduct
declaratory
judgment counterclaim is ripe for decision.
Before
ruling
on
the
inequitable
judgment counterclaim,
the Court must address the following four
motions
CertusView
filed
counterclaim:
by
(1)
CertusView's
CertusView's
remaining
CertusView's
Motion
Memorandum Order,
to
Materials
After
findings
of
on
in
494;
S&N's
these
fact
in
Enforce
ECF No.
52(c)
and
the
No.
March
of
7,
ECF
will
law
(2)
4 36;
Brief,
Court
the
motion;
CertusView's
Post-Trial
conclusions
ECF
Court's
(4)
with
trial
Limine,
the
motions,
and
association
Rule
Motion
to
Cited
ruling
in
(3)
2016
Objections
No.
529.2
present
regarding
its
S&N's
inequitable conduct declaratory judgment counterclaim.
I.
Before
and
CERTUSVIEWS RULE 52(c)
during
trial,
partial
judgment,
pursuant
52(c),
asserting,
among
to
CertusView
Federal
other
2016.
ECF No.
533.
As
moved
Rule
such Motion has
for
of
Civil
that
things,3
2 CertusView also filed a Motion for Partial
15,
MOTION
the
entry
of
Procedure
Court
is
Reconsideration on June
limited relevance
to
the
subjects of the instant Opinion and Order and has just recently become
ripe, the Court will address such Motion separately.
3 During
trial,
demonstrate
the
five
conduct.
the
grounds
S&N
had
Trial Tr. Vol.
Court's
matters
CertusView
is
also
argued
that CertusView engaged in
determination
coterminous
5A,
of
asserted
that
for
a
994:24-999:20,
CertusView's
with
the
S&N
had
failed
to
inequitable conduct on any of
finding
ECF No.
Rule
Court's
52(c)
of
502.
inequitable
However,
motion
determination
on
as
these
regarding
precluded
from
inequitable
ruling,
entering
conduct
that
judgment
counterclaim
certain claims
of
in
S&N's
because
the
the
favor
on
Court's
Patents-in-Suit
its
previous
are
patent
ineligible pursuant to 35 U.S.C.
§ 101,
finding of inequitable conduct.
See Final Pretrial Order,
ECF
No.
Trial
472;
Tr.
argues
CertusView's
Vol.
that
"threshold
proceed
to
5B,
a
that
consider
Ultramercial,
Inc.
2014)
J.,
U.S.
593,
602
"must
Hulu,
concurring),
(2010)
and
asserts
asserted
claims
the
eligible subject matter,
matter,
additional
and
claims
No.
patent
ECF
511.
eligibility
before
a
772
709,
that,
Flook,
718
because
437
the
did
(Fed.
Kappos,
U.S.
Court
not
is
a
can
relying
which cites Bilski v.
v.
516;
court
issues,"
F.3d
No.
41,
CertusView
validity
Patents-in-Suit
on
Cir.
561
584,
593
found
the
claim
patent-
such "threshold test" was not satisfied
therefore
of
the
Court
invalidity
CertusView's Post-Trial Br.
the
ECF
20-21,
satisfied
Parker
CertusView
this
be
LLC,
(197 8).
in
of
subordinate
v.
of
Br.,
1113:15-1119:6,
determination
test"
(Mayer,
Post-Trial
is inconsistent with a
at 20-21.
should
or
not
consider
unenforceability.
While acknowledging that
patent eligibility requirements of
§ 101
should ideally be
addressed early in a case before moving on to other requirements
for
patentability,
S&N
responds
by
arguing
that
CertusView's
inequitable conduct,
the Court
consolidates
its ruling on
the
remaining grounds of CertusView's Rule 52(c) motion with its findings
regarding inequitable conduct below.
inequitable
Trademark
conduct
Office
its patents were
argues
that
actionable
finding
of
conduct
28-30,
a
not
be
conduct
finding
States
excused
of
before
patent
ineligibility
and
inconsistent
Patent
legal
a
S&N further
the
PTO
finding
such
issues.
of
remains
because
a
inequitable
findings
Defs.'
and
simply because
ineligibility
as
different
address
Post-Trial
Br.,
517.
CertusView
Rule
United
later invalidated by this Court.
patent
ECF NO.
the
should not
inequitable
are
Federal
("PTO")
after
substantively
before
of
is
seeking
Civil
a
partial
Procedure
judgment
52(c).
Federal
pursuant
Rule
of
to
Civil
Procedure 52(c) allows the Court to "enter judgment against
[a]
party on a claim or defense that, under the controlling law, can
be maintained or defeated only with a favorable finding on that
issue,"
once
that
Fed.
Civ.
P.
R.
party
has
For
52(c).
been
the
fully
heard
on
such
following reasons,
issue.
the
Court
finds that CertusView has not demonstrated that controlling law
precludes the Court from entering judgment in S&N's favor on its
inequitable conduct counterclaim.
While
directly
the
parties
addressing
ineligibility finding
4 There
the
not
effect
on
is one district
finding of § 101 patent
have
an
court
of
cited
a
35
inequitable
case
any
controlling
U.S.C.
conduct
§ 101
law
patent
counterclaim,4
implicitly recognizing that a
ineligibility does not preclude consideration
of an inequitable conduct counterclaim.
In Exergen Corp.
v. Kaz USA,
there are many decisions from the United States Court of Appeals
for
the
§ 102
Federal
or
Circuit
§ 103
addressing
invalidity
the
finding
on
effect
an
of
a
35
U.S.C.
inequitable
conduct
counterclaim and concluding that a finding of patent invalidity
does
not
Calcar,
preclude
Inc.
Cir. 2014)
v.
Am.
to
finding
Honda
of
Motor
inequitable
on
the
conduct");
F.2d
conduct,
and
1182,
determination
1188
(Fed.
under
inequitable
Cir.
No.
1988)
F.3d
1185,
See
1189
Am.
(Fed.
materiality
Inc.
1993)
v.
finding
that
regards
that
a
as
"conduct
13-cv-10628,
the
under
2015
court
§ 101,
in
the
WL
found
but
jury's
to
the
then
patent
was
of
984
patent
engaged
in
invalidated
invalid
1466
under
inequitable conduct
(D.
of
Mass.
certain
noted
Inc.,
849 F.2d 1461,
procurement
that
inequitable
finding
defendant
Inc.,
8082402
for
KLM Labs.,
(affirming
v. Kason Indus.,
(finding
"[t]he
issue non-obvious . . . does not
of
with
and unenforceable
that
but remanding for determination of
(unpublished),
ineligible
and
conduct
counterclaim
Inc.,
Cir.
§ 102
patent); Buildex Inc.
§ 102(b)
768
stating
Paragon Podiatry Lab.,
invalidity
(Fed.
Co.,
conduct.
pursuant to § 102 and § 103,
verdict finding the patents at
weigh
inequitable
(affirming the district court's finding that a patent
was both invalid,
due
a
in
the
Dec.
claims
a
patent
7,
were
footnote
is
2015)
patent
that
counterclaims for inequitable conduct and for an exceptional case
finding remained pending.
See also Exergen Corp v. Brooklands, Inc.,
No. I:12cvl2243, ECF Doc. No. 152 (D. Mass. Feb. 4, 2016) (allowing
discovery to proceed on inequitable conduct counterclaim after finding
of § 101 patent ineligibility).
still
cf.
relevant
to
Apotex Inc.
2014)
Kason's
v.
UCB,
request
Inc.,
for
attorney
763 F.3d 1354,
fees . . . ");
1361-63
(Fed.
Cir.
(affirming district court's finding that patent applicant
committed
inequitable
conduct,
and
affirming,
without
considering,
district court's determination that certain patent
claims were
invalid,
will
look
to
pursuant
such cases
to
35
because,
U.S.C.
as
S&N
§ 112).
argues,
The
a
Court
finding
of
patent invalidity, pursuant to § 102 or § 103, is analogous to a
finding of patent
ineligibility,
pursuant
determination under each statute results
entire patent should not have issued.
to
in a
Defs.'
§ 101,
in that a
finding that
the
Post-Trial Br. at
29.
As
this
Court
previously
to
noted
strike
in
its
S&N's
decision
denying
CertusView's
motion
inequitable
conduct
counterclaim,
a finding of patent ineligibility under § 101 and
a finding of inequitable conduct are not inherently inconsistent
as
they address substantively different
2015
Op.
&
Order,
15-16
differences
between
finding
inequitable
of
a
n.3,
finding
conduct
(quoting Therasense,
Inc.
v.
1276,
Cir.
2011)
1288-89
(Fed.
ECF
of
legal
No.
patent
with
Becton,
its
325
issues.
May 22,
(discussing
ineligibility
"atomic
bomb"
Dickinson & Co.,
(en banc))).5
the
and
a
remedy
649
F.3d
For example,
a
5 While a finding of patent ineligibility and a finding of inequitable
conduct are not inherently inconsistent, there may conceivably be
cases where a finding of patent ineligibility precludes consideration
determination of patent ineligibility under § 101 addresses the
question of whether the subject matter at issue in a patent is
of
"the
kind
protection.
of
discover[y]"
Parker,
Alternatively,
437
eligible
for
at
see
U.S.
inequitable
594;
conduct
is
a
statutory
35
patent
U.S.C.
judicial
§ 101.
doctrine
concerned with a patent applicant's deceptive conduct before the
PTO.
Therasense,
649 F.3d at
1285-86.
Moreover,
a finding of
patent ineligibility is a claim-by-claim determination,
and the
Court's determination of ineligibility as to the asserted claims
of
the
Patents-in-Suit
in-Suit patent
ECF
No.
250.
did not
ineligible.
By
See
contract,
renders an entire patent,
render all
January 21,
a
finding
of
of
2015
the
unenforceable.
1288-89.
"[a]
Op.
of
inequitable
attorneys'
conduct
& Order,
inequitable
Therasense,
conduct
64 9 F.3d at
finding of inequitable conduct may
also spawn antitrust and unfair competition claims,"
award
Patents-
and potentially other patents in the
same technology family,
Additionally,
claims
fees
often
under
makes
35
a
case
U.S.C.
lead to an
§ 285
because
"exceptional,"
or
a
of
an
inequitable
conduct
counterclaim
because
the
patent
ineligibility finding extends to the entire patent, see Zenith Elecs.
Corp.
v.
PDI Commc'n Sys.,
Inc.,
522 F.3d 1348,
1367 n.ll
(Fed.
Cir.
2008), there are no related patents at issue, there are no antitrust
or unfair competition issues, there are no issues involving attorneys'
fees,
and there are no issues involving the crime or fraud exception
to the attorney-client privilege.
See Therasense,
649 F.3d at 1288-89
(discussing potential remedies upon finding of inequitable conduct and
how such remedies can exceed requested relief of patent invalidity).
Such a scenario is not present here.
finding
of
inequitable
conduct
"may
also
prove
the
fraud exception to the attorney-client privilege."
(citations omitted).
Finally,
crime
or
Id. at 1289
a finding of inequitable conduct,
"[u]nlike other deficiencies . . . cannot be cured by reissue or
reexamination."
The
Id.
also
Court
at 1288
notes
that,
Motion relies on Bilski v.
v.
Flook,
437 U.S.
Ultramercial,
such
cases
patent
584
Inc.
do
v.
not
(citations omitted).
Kappos,
(1978),
Hulu,
LLC,
support
counterclaim.
inequitable
conduct
at
that
"must
be
Ultramercial,
772
addressed
F.3d
Rule
(2010),
F.3d 709
(Fed.
that
consideration of
those
they
cases
simply
patent
at
at
593
proposition
Indeed,
unremarkable proposition that
561 U.S.
772
the
all;
Plaintiff's
52(c)
Parker
and Judge Mayer's concurrence in
ineligibility precludes
conduct
while
finding
of
an inequitable
do
stand
2014),
not
for
address
the
rather
eligibility is a question
the
717
a
Cir.
outset
(Mayer,
of
litigation."
J.,
concurring).
Stretching that common sense proposition to mean that absence of
patent
eligibility precludes
is a bridge too far.
sparse,
to
While
inequitable
conduct
legal precedent on this topic is
because a determination of patent
§ 101
is
typically
actionability
resolved
before
eligibility pursuant
a
opportunity to file an answer and raise an
defendant
has
the
inequitable conduct
counterclaim, or learn of inequitable conduct during discovery,
the
Court
finds
itself
in
the
8
rare
circumstance
where
both
issues
have
been
raised,
are
not
inconsistent,
and
should
be
that,
in
addressed.
For
this
the
case,
foregoing
reasons,
the
a finding of patent
inequitable
conduct
are
Court
ineligibility and a finding of
not
inconsistent,
therefore DENIES CertusView's Rule 52(c)
II.
Prior
to
CERTUSVIEW'S
trial,
ECF No.
to
52(c)
CertusView's
remaining Motion
Rule
filed
one
motion,
remains.6
introducing evidence of materiality,
the
for
document
determining
Court
containing
43 6, only one of which,
that
test
Limine
the
Motion on such basis.
asserts
part
in
and
MOTION IN LIMINE
CertusView
six Motions in Limine,
concludes
S&N
related
CertusView's
is
estopped
from
first prong of a two-
inequitable
conduct,
regarding
CertusView's alleged misrepresentations or omissions to the PTO.
CertusView
Mots,
that
asserts
in Limine,
the
Court's
two
23-27,
§ 101
arguments
in
ECF No. 437.
patent
support
First,
ineligibility
of
its
motion.
CertusView argues
ruling
determined
the issue of materiality in S&N's inequitable conduct claim and,
thus,
S&N
is collaterally estopped from presenting evidence of
6 The Court addressed CertusView's first,
third,
fourth,
and fifth
Motions in Limine in its March 7, 2016 Memorandum Order.
ECF No. 493.
Further, the Court addressed CertusView's second Motion in Limine,
regarding S&N's expert Ivan Zatkovich during Zatkovich's testimony at
trial.
To the extent that any issue regarding Zatkovich's expert
testimony remains, the Court addresses Zatkovich's testimony on issues
of
all
materiality below.
that
remains.
Thus,
CertusView's
sixth Motion
in
Limine
is
materiality.
Second,
CertusView asserts
that S&N is precluded
from introducing evidence of materiality because it waived such
argument
when
S&N
argued
in
favor
of
a
finding
ineligibility under § 101.
For the following reasons,
finds
failed
of
that
estopped
CertusView
from
has
introducing
to
evidence
demonstrate
of
the Court
that
materiality
patent
S&N
on
is
either
ground.
Collateral estoppel "forecloses
of
fact
or
law
that
are
identical
'the relitigation of
to
issues
which
issues
have
been
actually determined and necessarily decided in prior litigation
in
which
the
party
against
whom
[collateral estoppel]
asserted had a full and fair opportunity to litigate.'"
v.
Braswell Servs.
(quoting Ramsay v.
Grp.,
U.S.
Inc.,
134 F.3d 219,
224
Sedlack
(4th Cir.
1998)
Immigration and Naturalization Serv.,
F.3d 206, 210 (4th Cir. 1994)).7
is
14
Specifically,
To apply collateral estoppel or issue preclusion to an
issue or fact, the proponent must demonstrate that (1)
the issue or fact is identical to the one previously
litigated; (2) the issue or fact was actually resolved
in the prior proceeding;
(3) the issue or fact was
critical and necessary to the judgment in the prior
proceeding; (4) the judgment in the prior proceeding
is final and valid; and (5) the party to be foreclosed
7
On procedural issues not unique to the Federal Circuit's exclusive
jurisdiction, the Federal Circuit will apply the precedent of the
regional circuit,
Eyewear, Inc. v.
which in this case is the Fourth Circuit.
Zenni Optical Inc., 713 F.3d 1377, 1380
See Aspex
(Fed. Cir.
2013) (citing Dana v. E.S. Originals, Inc., 342 F.3d 1320, 1323 (Fed.
Cir. 2003)).
Thus, the Court relies on a statement of the law,
regarding collateral estoppel, from the United States Court of Appeals
for the
Fourth Circuit.
10
by the prior resolution of the issue or fact had a
full and fair opportunity to litigate the issue or
fact in the prior proceeding.
In
re Microsoft Corp.
Cir.
2004)
355
on an
issue,
waived
due
may
to
litigation,
also
a
be
or
foreclosed when
judicial
admission.
Fargo Bank,
see Martinez
has
issue
judicial
has
been
admission
the
v.
141
N.A. , 762
Bally's
La.,
Everett v.
(4th Cir.
F.3d 339,
Inc.,
244
facts necessary to
2015)
347
Pitt Cty.
(quoting Minter
(4th Cir.
F.3d 474,
477
2014));
(5th Cir.
("Although a judicial admission is not itself evidence,
the
effect
statement
made
of
by
withdrawing
counsel
during
a
fact
the
a waiver,
omitted)).
from
course
considered a judicial admission if it was
the
(4th
"'intentional and unambiguous waivers that release the
Bd. of Educ. , 788 F.3d 132,
2 001)
that
A
establish the waived conclusion of law.'"
Wells
326
the presentation of evidence
opposing party from its burden to prove
v.
F.3d 322,
(citations omitted).
Alternatively,
includes
Antitrust Litig.,
contention.
of
made
trial
statement
is
'deliberate,
Everett, 788 F.3d at 141 (quoting Minter,
and
be
(citation
admission is binding only
clear,
A
intentionally as
releasing the opponent from proof of fact."
"A purported judicial
may
it
if
unambiguous.'"
762 F.3d at 324).
Addressing first CertusView's collateral estoppel argument,
the
Court
finds
that,
because
S&N's
counterclaim is substantively different
11
inequitable
conduct
from the issues decided
in
the
Court's
demonstrate
that
§ 101
S&N
ruling,
is
CertusView
has
collaterally estopped
failed
to
from introducing
evidence of materiality as to inequitable conduct.
As discussed
more fully in Section I of this Opinion and Order, a finding of
patent
ineligibility
address
substantively different
§ 101
ruling
addressed
materiality is not
and the
and
issue of
a
a
finding
of
legal
separate
inequitable
issues.
legal
As
issue,
conduct
the
the
Court's
issue
of
"identical to the one previously litigated,"
materiality was not
prior proceeding."
In re Microsoft,
"actually resolved in
355
F.3d at 326.
the
Further,
as S&N's inequitable conduct counterclaim was not at issue when
the Court considered S&N's Motion for Judgment on the
Pleadings
based
and
on
ineligibility,
S&N
opportunity to litigate the
proceeding."
presenting
Id.
evidence
did
not
issue
"a
full
[of materiality]
Therefore,
of
have
S&N
materiality
on
is
not
the
basis
fair
in the prior
precluded
of
from
collateral
estoppel.
As
to
CertusView's
CertusView
has
not
second
argument,
demonstrated
and unambiguous[ly]"
clear[ly],
materiality
earlier
in
this
that
waived
the
S&N
its
litigation.
Court
finds
that
"deliberate[ly],
arguments
CertusView
regarding
has
not
presented the Court with any particular statement from S&N that
waives,
evidence
or
of
acknowledges
materiality
waiver
on
its
12
of,
its
ability
inequitable
to
present
conduct
claims.
Further,
and
a
as
discussed above,
finding
inconsistent,
of
or
a
finding of
inequitable
actually
patent
conduct
inconsistent
are
in
ineligibility
not
this
inherently
case.
Thus,
S&N's general arguments in favor of patent ineligibility do not
evidence
ability
an
to
"intentional
present
and
evidence
unambiguous
that
waiver[]"
CertusView
provided
of
its
material
misrepresentations or omissions to the PTO during prosecution of
the Patents-in-Suit.
Everett,
788
F.3d at 141.
Therefore,
S&N
is not precluded from presenting evidence of materiality on the
basis of judicial estoppel.
For these reasons,
the Court DENIES
CertusView's sixth and final Motion in Limine.
III.
On March 8,
CERTUSVIEW'S MOTION TO ENFORCE
2016,
CertusView filed a
Motion
to Enforce
Court's Memorandum Order precluding the author of
U.S.
Pub.
offering
No.
expert
2006/0077095
testimony.
(discussed
ECF No.
based on the Court's March 7,
in
494.
the
the reference
detail
below)
from
CertusView asserts,
2016 Memorandum Order precluding
Page Tucker ("Mr. Tucker") from offering expert testimony, that
the Court should not
consider certain portions of Mr. Tucker's
deposition testimony that were designated by S&N because they
constitute
improper
CertusView
argues
portions
of Mr.
statements
lay
that
witness
the
Court
testimony.
should
Specifically,
not
consider
Tucker's deposition testimony that comment
written
in
an
Amendment
13
and
Reply
to
the
PTO
the
on
by
CertusView's patent counsel,
2016,
S&N
filed
its
Motion to Enforce.
this
Joseph Teja ("Teja").
Response
ECF No.
Opposition
496.
to
CertusView's
No reply brief was filed on
issue.
The
portions
of
Mr.
identified by CertusView,
witness testimony.
deposition
because,
Order,
as
the
Tucker's
be
found
may not
admitted
in
its
offer expert
or lay
as
March
expert
7,
2016
testimony
Memorandum
testimony.
lay witness
Mr.
Second,
the
are
on subjects
that do
not
disputed portions
not
proper
lay
of
portions
of
4,
"scientific,
Fed. R. Evid.
Mr.
witness
require
Tucker's
testimony
Mr.
Tucker's
Teja's
commenting on the
testimony
statements
in
the
because
consists
Amendment
truth or accuracy of
701.
deposition
the line from lay witness into expert witness
Specifically,
Order,
Tucker was permitted to testify
technical, or other specialized knowledge."
testimony
Mem.
However, while the Court found that Mr. Tucker may
not offer expert testimony,
cross
as
Mr. Tucker has not been designated as an expert in this
ECF No. 493.
a
testimony,
the disputed portions of Mr. Tucker's
cannot
Court
deposition
are not proper expert witness
First,
testimony
matter and he
as
in
On March 8,
testimony.
of
and
they
reading
Reply and
such statements.
Such
testimony constitutes improper lay testimony because Mr. Tucker
is
interpreting
advocating
and
construing
the patentability of
14
patent
a
counsel's
specific patent
statements
in a patent
prosecution submission to the PTO, and comparing such statements
against
Mr.
his own patent.
Tucker
through
the
comparing
lens
Essentially,
an
of
invention
a
patent
the testimony evidences
seeking
attorney's
Tucker's own patented invention.
to
be
patented,
arguments,
to
Mr.
A lay witness may not normally
construe and interpret patent claim limitations and compare such
limitations
requires
Care,
24,
v.
No.
prior
2:13cv07228,
2015)
Inc. , 254 F.
LLC
the
(citing
Supp. 2d 1119,
CureMD.com,
48
F.
testimony
certain
is
appropriate
portions
of
identified by CertusView,
witness
testimony
deposition testimony.
such
Munchkin,
Inc.
WL
in
774046,
support);
1123 (CD.
Supp.
some
for
Mr.
because
See
2015
cases
(recognizing there may be
lay
art
specialized knowledge.
Ltd.,
Feb.
against
3d
and
*3
Gart
600,
635
circumstances
Tucker's
v.
Luv N'
(CD.
v.
Cal.
Logitech,
Cal. 2003); cf^ 523 IP
comparison
are
at
testimony
(S.D.N.Y.
where
lay witness
purposes).
deposition
2014)
As
such,
testimony,
as
both improper expert witness and
the
Therefore,
Court
will
disregard
the Court GRANTS
such
CertusView's
Motion to Enforce the Court's Memorandum Order.
IV.
On
CERTUSVIEW'S
May
5,
2016,
Cited in Defendants'
OBJECTIONS TO
CertusView
Post-Trial
S&N'S
filed
Brief.
POST-TRIAL
Objections
ECF No.
529.
BRIEF
to
Material
CertusView
broadly objects to S&N's citation to the following in its
Trial
Brief:
(l)
CertusView's
First
15
Interrogatory
Post-
Responses,
filed
under
seal
at
ECF
Nos.
344-5
and
407;
(2)
CertusView's
Opposition to S&N's Motion to Compel and Exhibit A, ECF No. 152;
(3)
a portion of Curtis Chambers'
under
seal
Support
at
of
ECF
its
CertusView's
No.
Emergency
attached
Motion
Proposed Findings of
ECF No. 485; and (5)
("Block")
203-3,
Deposition Transcript,
to
to
Compel,
Fact
testimony.
filed on this
with
respect
to
201,
judicial
parties'
"can
be
admissions,
accurately
accuracy cannot
S&N
documents
notice
because
and
802
2011)
Penn
(4th Cir.
Supp. 2d 741,
take
judicial
parties'
the
reasonably be
(citing Colonial
of
readily
see O'Neal v. Donahoe,
1239
filed
a
(4)
Law,
747 n.8
previously
public
facts
to
No reply
F.
Supp.
Ins.
2d 709,
Co.
v.
the
such
documents
from
sources
R.
715
Coil,
As such,
in
887
whose
Evid.
201;
(E.D. Va.
F.2d 1236,
Corp.,
598 F.
the Court will
the
The Court may take such notice
"at
Fed. R. Evid.
the
n.7
and
record and
any stage of the proceeding."
documents
records
Fed.
questioned."
court
prior admissions.
filed on
court
within
determined
(E.D. Va. 2009)).
of
response
ECF No. 531.
1989) ; Roach v. Option One Mortg.
notice
200;
pursuant to Federal Rule of Evidence
the Court,
take
No.
issue.
Court's docket,
may
ECF
in
an undesignated portion of Gregory Block's
deposition
First,
Memorandum
and Conclusions of
CertusView's objections on May 12, 2016.
brief was
S&N's
filed
201(d).
Further,
the Court notes that the previously filed court documents were
16
discussed
such
during
trial,
and
testimony
documents
is
recorded
in
generally Trial
Tr.
Vol.
argument
692:11-701:14,
Tr. Vol. 5B,
consider
4A,
1078:22-1081:16,
documents
the
and
trial
ECF No. 511.
previously
filed
on
regarding
transcript.
ECF No.
Thus,
the
See
510;
Trial
the Court may
Court's
docket
in
support of S&N's arguments regarding such documents.
Second,
deposition
with respect to the undesignated portion of Block's
testimony,
S&N
explains
that
its
citation
to
such
testimony was inadvertent and is unnecessary to its argument.
Thus,
based upon S&N's
consider such
deposition
and
citation
transcript,
need not
Therefore,
address
the
representation
to
the
Court
the undesignated portion of
the
Court
will
CertusView's
Court
that
OVERRULES
Material Cited in Defendants'
disregard
objection
such
need not
Block's
citation
to such citation.
CertusView's
Objections
to
Post-Trial Brief.
V. FINDINGS OF FACT8
A. Factual and Procedural Background
1.
LLC,
State
Plaintiff/Counter-Defendant,
CertusView
Technologies,
is a Florida corporation organized under the laws of the
of Florida.
technology
for
infrastructure.
CertusView,
prevention
First Am.
among
of
Compl.
other things,
damage
to
develops
underground
for Patent Infringement ^ 8,
To the extent that the following facts are not stipulated to or
agreed upon by the parties,
the Court finds each fact by a
preponderance of the evidence.
17
ECF No.
55.
CertusView is a wholly owned subsidiary of Dycom
Industries,
2.
LLC
and
Inc.
Defendants/Counter-Plaintiffs,
S&N
corporations,
Carolina.
Communications,
No.
Inc.,
Locating
Services,
North
Carolina
are
organized under the laws of the State of North
S&N Communications,
Locating Services,
Defenses,
S&N
LLC
Inc. is the parent company of S&N
Defs.'
and Countercls.
Second Am.
Answer,
to Pl.'s First Am.
Affirmative
Compl.
1 1.2,
ECF
336.
3.
The
subject
of
the
counterclaim to CertusView's
instant
dispute
arises
as
a
First Amended Complaint for Patent
Infringement of five United States Patents: No. 8,340,359 ("'359
Patent"),
No.
Patent"),
8,265,344
No.
("'344
8,532,341
("'001 Patent")
Patent"),
("'341
(collectively,
the
No.
Patent"),
8,290,204
and
No.
('"204
8,407,001
"Patents-in-Suit").
ECF No.
55.
4.
Steven
("Chambers")
are
Nielsen
named
Jeffrey Farr ("Farr")
'341
("Nielsen")
inventors
on
and
the
five
Curtis
Chambers
Patents-in-Suit.
is a named inventor on the '001,
'204, and
Patents.
5.
Nielsen
is
the
Chairman,
President,
and
Chief
Executive Officer of Dycom and the President of CertusView.
6.
Chambers
is
the
Vice
President
Officer of Dycom.
18
and
Chief
Information
7.
Farr is the Director of Engineering at Dycom.
8.
Joseph Teja
before
the
United
("Teja")
States
represented Dycom and CertusView
Patent
and
Trademark
Office
("PTO")
during the prosecution of the Patents-in-Suit.
9.
CertusView
filed
the
action against S&N on May 29,
on the Patents-in Suit.
10.
The Court
underlying
patent
infringement
2013, alleging that S&N infringed
Compl., ECF No. 1.
issued an Opinion and Order on January 21,
2015 regarding S&N's Motion for Judgment on the Pleadings, ECF
No.
197,
claims
in which the Court determined that all of the asserted
of
the
Patents-in-Suit
were
invalid
for
failure
patentable subject matter under 35 U.S.C. § 101.
is a
list of such invalidated asserted claims:
and 21 of
Patent;
the
'204
claim 1 of
Patent;
the
claims
1,
'35 9 Patent;
4,
13,
The following
claims
7,
16,
of the '341 Patent; and claim 1 of the '001 Patent.
2015 Op.
11.
against
& Order,
S&N's
Second
CertusView,
unenforceable
Farr,
ECF No.
and
prosecution
2,
the
17,
19,
'344
and 28
January 21,
250.
Amended
asserting
because
1,
and 17 of
claims 1,
to claim
the
Answer
that
alleges
the
inventors,
counsel,
Teja,
19
counterclaim
Patents-in-Suit
Nielsen,
Chambers,
committed
conduct during prosecution of the Patents-in-Suit.
In particular, S&N alleges that:
a
are
and
inequitable
ECF No. 336.
A.
Nielsen,
Chambers,
and
Teja
each
committed
inequitable conduct by failing to disclose as prior art the ESRI
ArcPad software during prosecution of the
S&N
also
alleges
that
Farr
committed
'344 and '204 Patents.
inequitable
conduct
by
failing to disclose the ESRI ArcPad software during prosecution
of
the
'204 Patent.
B.
inequitable
TelDig
Nielsen,
conduct
Utility
Chambers,
failing
by
Suite
and
disclose
and
to
TelDig
prosecution of the Patents-in-Suit.
committed
inequitable
conduct
by
Teja
Mobile
each
as
committed
prior
art
systems9
the
during
S&N also alleges that Farr
failing
to
disclose
as
prior
9 CertusView asserts that the TelDig Utility Suite is the only TelDig
prior
art
that
S&N's
Second
Amended
Answer
and
Counterclaim
sufficiently alleged to have not been disclosed by CertusView during
prosecution of the Patents-in-Suit.
Thus, CertusView argues, S&N
cannot claim that CertusView committed inequitable conduct by failing
to disclose the TelDig Mobile system.
However, the Second Amended
Answer specifically discusses TelDig Mobile,
U 79, and lists specific
claims to which "the TelDig products disclosed in the MIR[]
relevant,"
system in
than
H 90.
Thus,
are thus
while S&N's discussion of the TelDig Mobile
its Second Amended Answer and Counterclaim is more limited
S&N's
discussion
of
the
TelDig
identified "the specific who,
material misrepresentation or
Exergen Corp v.
Utility
Suite,
S&N
adequately
what, when, where, and how of the
omission committed before the PTO."
Wal-Mart Stores,
Inc.,
575 F.3d 1312,
1328
(Fed.
Cir.
2009); see also May 22, 2015 Op. & Order at 34-36.
Further, the pre
trial filings in this matter provide CertusView with sufficient notice
regarding S&N's assertion that CertusView failed to disclose the
TelDig Mobile system as material prior art during the prosecution of
the Patents-in-Suit.
of
the
TelDig
As such,
Mobile
system
even if S&N had not included discussion
in
its
Second
Amended
Answer
and
Counterclaim, the Court would permit amendment of S&N's pleadings
regarding TelDig Mobile as doing so would aid presentation of the
merits of the case
Civ.
P.
and CertusView would not be prejudiced.
15(b)(1).
20
Fed.
R.
art the TelDig Utility Suite and TelDig Mobile
systems during
prosecution of the '204, '341, and '001 Patents.
C
Nielsen,
Chambers,
Farr,
and
Teja
each
committed
inequitable conduct by naming Jeffrey Farr as an inventor on the
'204 and '341 Patents.10
D.
Nielsen,
Chambers,
and
Teja
each
inequitable conduct by failing to name Gregory Block
as
an
inventor of
the
'359,
'344,
'204,
and
'341
committed
("Block")
Patents.
S&N
also alleges that Farr committed inequitable conduct by failing
to name Block as an inventor of
E.
Nielsen,
the
'204 and
Chambers,
and
'341 Patents.
Teja
each
committed
inequitable conduct by making material misrepresentations to the
PTO
concerning
2007/0219722
the
prior
to Sawyer Jr.
art
references
et al.
U.S.
("Sawyer")
Pub.
No.
in view of U.S.
Pub. No. 2006/0077095 to Tucker ("Tucker") during prosecution of
the
'344
Patent.
12.
S&N's
inequitable
conduct
counterclaim
proceeded
to
trial on March 8, 2016.
B.
13.
2008,
10
The
'359
Patents-in-Suit
Patent,
which
was
filed
and ultimately issued on December 25,
S&N also
alleged
that
Nielsen,
Chambers,
on
2012,
Farr,
September
11,
is entitled,
and Teja each
committed inequitable conduct by naming Jeffrey Farr as an inventor on
the "001 Patent.
However, this claim was dismissed with prejudice on
March 3,
2016.
Order,
ECF No.
489.
21
"Electronic
Manifest
'359 Patent,
PX-003.
14.
and
The
of
Underground
'344 Patent,
ultimately
issued
Facility
Locate
Marks."
which was filed on February 5,
on
September
11,
2012,
is
2009,
entitled,
"Electronic Manifest of Underground Facility Locate Operation."
'344 Patent,
15.
and
PX-001.
The '204 Patent,
ultimately
"Searchable
issued
Electronic
Marking Operations."
16.
The
which was filed on February 11, 2009,
on
October
Records
of
'204 Patent,
'001 Patent,
Dispensing
for
of
'001 Patent,
17.
and
The
Markers
'341
"Electronically
18.
The
issued
Patent"),
entitled,
Facility
2013,
is
Location Data
to
by
System
a
Locate
PX-002.
which was filed on December 16,
Patent,
issued
Marking
'341 Patent,
'359
as
which
on
and
United
was
September
Documenting
application 12/029,732,
and
is
entitled,
2009,
"Systems
Electronically Display
or
Marking
Tool."
PX-004.
ultimately
Utilities."
Using
2012,
Underground
and ultimately issued on March 26,
and Methods
16,
Locate
filed
10,
on
March
2013,
Operations
is
for
12,
2013,
entitled,
Underground
PX-005.
'344
Patents
claim
priority
to
which was filed on February 12,
States
on September 10,
2013.
22
Patent
The
No.
8,532,342
patent
2008,
("'342
'342 Patent is entitled,
"Electronic
Manifest
'342 Patent,
DX-341.
19.
The
Patent.
of
Underground
Facility
Locate
'341 Patent is a continuation-in-part of
Both the
'204
the
and
Patents
Patent,
'342
'341
and
following:
(1)
12/366,853,
filed on February 6,
Patent
No.
8,280,117
White
Lines
for
("'117
Electronic Images,"
patent
and
Planned
'117 Patent,
18,
2008,
Patent"),
and
now
United
entitled
Excavation
PX-022.
entitled,
"Virtual
Planned Excavation Sites."
20.
The
11/685,602,
United
The
29,
2009.
See
Patent
White
'306 Patent,
No.
"Virtual
Sites
'117 Patent
for
is
a
filed on
8,24 9,3 06
Lines
on
("'306
Delimiting
DX-354.
'001 Patent claims priority to patent application
which
States
States
the
application
continuation-in-part of patent application 12/050,555,
March
'204
issued as United States
Patent"),
Indicating
the
claim priority to
(2)
2009,
Marks."
was
Patent
filed
No.
on
March
7,64 0,105
'001 Patent,
PX-004.
13,
("'105
The
2007
and
Patent")
issued
as
on December
'105 Patent is entitled
"Marking System and Method with Location and/or Time Tracking."
C.
21.
means
In general,
to
improve
Patents-in-Suit Products
CertusView's products were developed as a
record-keeping
operations.
23
and
documentation
of
locate
22.
The
'359
and
'344
Patents
claim
CertusView's e-Sketch technologies.
22,
ECF No.
23.
inventions
Trial Tr.
related
Vol.
IB,
24.
The
4A,
'204
and
'341
25.
759:22-761:14,
The
CertusView's
Trial Tr.
99:16-
507.
Patents
claim
inventions
related
CertusView's Virtual WhiteLine and e-Sketch technologies.
Tr. Vol.
to
'001
766:5-13,
Patent
ECF No.
claims
to
Trial
510.
inventions
related
to
e-Sketch and electronic marking wand technologies.
Vol.
2A,
241:4-7,
CertusView's
ECF No.
e-Sketch
505.
technology
allows
locators
to
document a locate operation by sketching on top of an image with
a
sketch
utility
toolbar,
lines,
drawing
and
property
tie-downs
to
lines,
the
adding
image,
and
landmarks,
creating
a
searchable electronic record that includes geographic data tied
to
such markings.
759:13;
E-Sketch
Trial
Tr.
Vol.
Demonstrative
4A at
740:12-742:1,
Video,
PX-041;
754:7-
PowerPoint
Presentation "Using Innovation to Prevent Damages," PX-059.
26.
CertusView's
Virtual
WhiteLine
product
allows
excavators to show on an image, with a high level of precision,
where they intend to dig.
27.
Trial Tr. Vol. 4A at 739:21-740:3.
CertusView's electronic marking wand product uses GPS
and other technology to capture and display,
in real
time,
the
precise location where paint is applied to the ground during a
locate operation.
Data from the marking wand, generated during
24
a locate operation,
program.
is automatically imported into the
e-Sketch
Trial Tr. Vol. 4A at 729:20-736:15.
D. Inventorship of the Patents-in-Suit
1.
28.
result
Nielsen and Chambers
Conception of CertusView's e-Sketch product began as a
of
the
"Virtual
Locator
2007"
project,
development initiative undertaken in fall 2006.
IB at
a
research
Trial Tr.
The
first meeting
regarding
the
Virtual
Locator 2007
project took place in Atlanta, Georgia in October 2006.
that meeting,
UtiliQuest,
findings.
30.
During
Nielsen and Chambers met with the management team
a
facility locating,
2007
Vol.
101:12-102:13.
29.
of
and
Dycom
performs
underground
to present their research and
development
Trial Tr. Vol.
Nielsen
and
subsidiary
that
IB at 101:19-102:2, 185:7-187:19.
Chambers
discussed
the
Virtual
Locator
initiative and aspects of the inventions described in the
Patents-in-Suit in a white-board session.
Trial Tr.
Vol.
IB at
185:7-187:19.
31.
Notes
taken during
that white-board session parallel
certain claims of the Patents-in-Suit and demonstrate conception
of
certain
inventions
claimed
particularly claim 1 of the
Patent.
Trial Tr. Vol.
in
the
Patents-in-Suit,
'359 Patent and claim 1 of the
2A at 254:20-262:9;
PX-113.
25
'344
White Board Notes,
32.
Conception of
the
inventions
claimed in the
Patents-
in-Suit continued after October 2006 through additional meetings
regarding the Virtual Locator 2007 project and other activities,
including:
A.
In December 2006,
and development
in
Washington,
marking
wand
team,
D.C,
and
the Virtual Locator 2007 research
including Chambers,
discussing
e-Sketch
how
to
met with an attorney
patent
inventions.
Trial
the
Tr.
electronic
Vol.
IB
at
101:19-102:13.
B.
of
the
In December
Virtual
Locator
2006,
2007
Chambers
created a
projects.
video
Such video
of
one
detailed a
prototype of the electronic marking wand and e-Sketch concepts.
Trial Tr. Vol.
IB at 193:8-195:2; Video,
C. In April 2007,
experiments
Chambers
PX-042.
Nielsen and Chambers ran a series of
with a Garmin running watch.
and
Nielsen
were
able
to
Using Google
display
GPS
Earth,
coordinates,
generated by the Garmin running watch and stored in a KML file,
on a Google Earth map image.
Trial Tr. Vol IB at 195:20-197:5;
Trial Tr. Vol. 2A at 202:14-205:9; Google Earth File 1,
PX-034;
Google Earth File 2, PX-035; Google Earth File 3, PX-036.
33.
Nielsen
inventions
April 2007.
4B,
and
claimed
in
Trial Tr.
818:15-819:5,
Chambers
the
'359
Vol.
ECF No.
completed
and
2A at
503.
26
'344
conception
Patents
206:4-207:14;
no
of
the
later
than
Trial Tr.
Vol.
34.
and
After conception of the inventions claimed in the '359
'344
Patents
was
complete,
CertusView
and
Dycom
conducted
prototype and pilot programs of the electronic marking wand and
e-Sketch products
Orlando,
during the
summer and early fall of
Florida and Beltsville,
Maryland.
2007
Trial Tr. Vol.
in
IB at
100:10-102:24.
2.
35.
Farr
became
Farr
involved
in
CertusView's
invention at the beginning of the project.
729:6-10.
Farr
conceptualize
prototypes.
worked
the
marking
with
wand
Trial Tr. Vol. 3A,
Wand Physical
Ex.
1,
PX-037;
Trial Tr. Vol.
Nielsen
and
invention
472:13-23,
electronic
and
wand
4A at
Chambers
build
to
working
ECF No. 504; Marking
Marking Wand Physical
Ex.
2,
PX-
03 8; Marking Wand Physical Ex. 3, PX-03 9.
36.
'001
Patent,
which relates to the electronic marking wand invention,
as well
as
an
Farr
inventor
is
an
on
marking wand patent
Patent,
37.
the
'105
inventor
Patent,
and parent of
the
the
on
the
original
'001
GPS-enabled
Patent.
See
'001
PX-004.
Farr
also
WhiteLine product.
Vol.
undisputed
led
development
Trial Tr. Vol.
4A at 742:16-743:12.
27
of
2A at
CertusView's
242:10-20;
Virtual
Trial Tr.
38.
Aspects of the Virtual WhiteLine technology have been
patented,
including
inventor on the
39.
in
the
'117
'117 Patent.
Patent.
'117 Patent,
Farr
is
a
named
PX-022.
Eventually, Farr became involved with combining the e-
Sketch and Virtual
WhiteLine
241:8-242:24; Trial Tr. Vol.
40.
products.
Trial
4A at 743:13-25,
Tr.
Vol.
2A at
760:10-18.
Beginning in fall 2008, Farr oversaw a team working on
"Project Trinity," an effort which, among other things, included
integrating CertusView's Virtual
Sketch
invention.
Trial
WhiteLine product with the
Tr.
Vol.
4A
at
748:4-19.
eIn
particular,
A. In October 2008, the Project Trinity team completed
the
of
Project Trinity rollout plan which
the
Vol.
Virtual
4A
at
WhiteLine
and
749:4-750:10;
e-Sketch
Monthly
included the
"marriage"
inventions.
Trial
Departmental
Tr.
Report
Information Technology October 2008, PX-102.
B.
In
November
implemented
e-Sketch
approval
Dallas,
in
Georgia.
Trial
in
2008,
Project
Lawrenceville,
Texas,
Tr.
the
Austin,
Vol.
4A
Georgia
Texas,
at
Trinity
and
and
team
ticket
Lawrenceville,
750:11-751:12;
Monthly
Departmental Report - Information Technology November 2008,
PX-
103.
C
In
December
implemented e-Sketch and
2008,
ticket
28
the
approval
Project
Trinity
in Marietta,
team
Georgia.
Trial Tr. Vol.
4A at 751:13-752:9; Monthly Departmental Report -
Information Technology December 2008,
D.
In
February
PX-104.
2009,
the
Project
Trinity
team
implemented e-Sketch in Forest Park, Georgia and ticket approval
in
Forest
Vol.
Park,
4A
at
Georgia
and
Commerce,
California.
Monthly
Departmental
752:11-753:5;
Information Technology February 2009,
41.
As
noted above,
the
'204
42.
"at
Farr's
least
one
independent
every
'204
43.
the
in
to
image"
of
the
the
Vol.
Trial
'204
the
'204
and
Patent—and
Vol.
6,
7,
3B,
8,
44.
Patent
Vol.
continuation-in-
PX-002.
Patent
dealt
appears
is
a
10,
in
the
each
12,
and 14
675:10-677:23,
on
specific
ECF
of
No.
involved
process
of
in
a
the
"collaborative
'204
Patent,
3B at 677:12-19; Trial Tr.
effort"
and
the
509;
of the
Vol.
on
Farr's
work
on
29
the
'117
during
"may
have
'204 Patent.
4A at 701:2-14.
Teja determined that Farr was an inventor of
based
with
limitation
additional
involvement collaboratively in every claim"
Trial Tr.
a
'204 Patent,
Patent
'204
Report
4A at 762:8-764:25.
Farr was
inventive
Tr.
is
limitation—which
contained in claims
Patent.
Trial Tr.
input
claim
claim
limitations
contribution
Tr.
PX-105.
Patent
part of the '342 and '117 Patents.
Trial
Patent
the
'204
and
his
contributions to the
471:16.
'204 Patent.11
Trial Tr. Vol. 3A at 470:18-
CertusView relied on Teja's recommendations
inventorship.
Trial
Tr.
265:16; Trial Tr. Vol.
45.
Farr's
Vol.
at
242:10-243:25,
264:12-
3B at 627:11-628:5.
contribution
to
"at least one digital image"
claim of the
'341 Patent,
claims 8,
and 21.
13,
2A
regarding
the
'341
limitation,
as well as
Trial Tr.
Vol.
Patent
dealt
with
the
which appears in every
specific contributions to
4A at 692:11-20,
698:9-23,
766:19-768:13.
46.
Teja determined that Farr was an inventor of
Patent
based
on
Farr's
contributions
Trial Tr. Vol.
recommendations
242:10-243:25,
47.
Farr's
work
to
the
regarding
2A at
'204
Block
employee,
Vol
11
IB
at
receive
and
the
as
well
'341
as
Patent.
CertusView relied on Teja's
any
'204,
Patent,
'341
Trial
or
Vol.
2A at
3B at 627:11-628:5.
financial
'341,
Tr.
reward
for being
'001 Patents.
Trial
265:17-19.
joined
working
as
103:9-17.
CertusView's
below.
Patent
inventorship.
3.
48.
'117
264:12-265:16; Trial Tr. Vol.
Farr did not
Vol.
the
3A at 471:17-473:16.
named as an inventor on the
Tr.
on
the
process
Dycom
a
Block
in
September
"developer"
or
"As
an
for
determining
30
as
a
"architect."
application
See infra UK 60-62.
2007
Trial
architect,
inventorship
contract
is
Tr.
[Block's]
discussed
duties included accepting software specifications and developing
technical
specifications
assessing
feasible
technology
those requirements."
49.
on
Block Depo. Tr.
conceived
by
prototypes,
Sketch product
by
prototypes.
and
requirements,
that
would
implement
at 23:2-14.
Block implemented some of the
Chambers
product
the
solutions
While working for Dycom,
inventions
Sketch
based
and
Nielsen,
writing
Trial
source
Tr.
Vol.
related
code
IB
at
for
to
e-
the
e-
104:5-105:4;
Trial Tr. Vol. 2A at 250:5-16; Block Depo. Tr. at 49:17-50:3.
50.
Block
specifications
implemented
that
he
features
received from
of
e-Sketch
Chambers
and drawings Block received from Nielsen.
250:10-253:12;
Industries,
eSketch,
May
5,
2008,
at
Trial Tr.
Vol.
107:21-109:19;
and
confirming
Block
signed
a
with Dycom,
Agreement
with Dycom,
rights.
Dycom.
Tr.
instructions
2A at
Dycom
Inc., System Requirements Specification for Locating
On
Assignment
Dycom
Depo.
on
DX-041.
51.
employee
Block
and
based
Confidentiality
before
he
became
assigning ownership of any
that
he
did
not
reserve
a
full-time
inventions
any
and
to
invention
Such Agreement covered Block's entire engagement with
Trial Tr. Vol 2A at 245:1-246:24;
96:8-97:1;
Dycom
Assignment Agreement,
Technology,
LLC
PX-044.
31
-
Block Depo. Tr. at
Confidentiality
and
52.
On
February
26,
2009,
Confidentiality and Assignment
Block
signed
Employee
with Dycom,
Agreement
an
assigning
ownership of any work product created during his employment to
Dycom and confirming that he did not reserve any prior invention
rights.
Such Agreement
Dycom.
Trial
97:6-15;
Tr.
Vol.
covered Block's
2A at
entire
247:20-249:9;
engagement with
Block Depo.
Tr.
Employee Confidentiality and Assignment Agreement,
at
PX-
045.
53.
Block
contribution to
Suit.
Trial
does
not
claim
to
have
made
the e-Sketch product or any of
Tr.
Vol.
2A
at
24 9:12-22;
Trial
any
inventive
the Patents-inTr.
Vol.
3B
at
628:17-19; Block Depo. Tr. at 101:22-106:15.
54.
claim of
No witness testified that Block was an inventor of any
the
Patents-in-Suit
or
that
he
should have
been
listed
as an inventor to any of the Patents-in-Suit.
55.
Block,
however,
was
named
as
CertusView patents related to e-Sketch,
Patent
No.
8,907,980
("'980
relating to revision layers.
Patent"),
inventor
on
other
including United States
which
Trial Tr. Vol.
Block Depo. Tr. at 42:20-44:1;
56.
an
'980 Patent,
claims
inventions
2A at 253:13-254:6;
PX-025.
Block was not deprived of any financial reward for not
being named as
an
inventor on
the
Patents-in-Suit,
nor did he
receive any financial reward for being a named inventor on other
CertusView patents,
including
later patents
32
related
to
the
e-
Sketch products.
Vol.
4B at
Trial Tr. Vol.
2A at 265:20-266:1;
Trial Tr.
828:17-22.
E. Commercial Strategy
57.
In
April
2008,
Dycom
hired
consulting firm Commercial Strategy,
LLC
to assist it with the development of
and patent
portfolio.
("Crawford")
were
Don Davis
the
Commercial Strategy.
Tr.
Vol.
3A
at
its
intellectual property
and David
directors
Trial Tr. Vol.
IB at
Master
property
("Commercial Strategy")
("Davis")
managing
534:15-535:3;
intellectual
and
Crawford
founders
125:13-126:25;
Services
of
Trial
Agreement
for
Consulting Services, April 22, 2008, DX-074.12
58.
for
On April 22,
Commercial
2008,
Strategy
Dycom completed a Statement of Work
which
directed
Commercial
Strategy
to
begin immediately implementing a work plan, including searching
for
prior
art,
conducting
invention disclosures,
inventor
interviews,
supporting patent
counsel,
drafting
and auditing
12 The Court has entered numerous Orders in this matter,
ordering
certain documents to be sealed.
See ECF Nos. 105, 106, 126, 192, 295,
357, 359, 402, 422, 471, 477, 487, 488, 528.
The parties, however,
have
referred
to
the
contents
of
a
number
of
these
sealed
documents
throughout their unredacted filings, post-trial briefing, and in open
court
during the bench trial
of
this matter.
Further,
several
such
sealed documents were entered into evidence and the public record
during the bench trial.
Therefore, to the extent that the parties
have
discussed
filings,
into evidence,
the
contents
of
these
and in open court,
sealed
documents
the Court considers the parties'
3 Commc'ns,
589
(E.D.
Va.
LLC
v. Limelight Networks,
2009).
33
in
their
or have entered such documents
arguments regarding
need for such information to be sealed to have
Level
572,
the
briefings,
Inc.,
been waived.
611 F. Supp.
See
2d
Dycom's existing intellectual property rights.
Master Services
Agreement for Consulting Services, April 22, 2008, DX-074.
59.
with
Commercial
CertusView
Strategy,
and
patent
particularly
counsel
intellectual property development,
patent
counsel,
hosting
researching
invention
interviews.
Trial
Tr.
551:11-553:23; Trial Tr.
60.
When
3A at
Vol.
identifying
and
sessions,
Vol.
support
technical
Strategy
description
and
541:10-542:6,
potential
employee
Tom
invention interviews.
61.
would
prepare
an
counsel for review.
62.
interviews,
the
Trial Tr.
Trial Tr.
Teja
Vol.
with
inventors,
who would help convey
and
("Batchelder"),
Commercial
who
led
the
3B at 610:11-611:6.
disclosure
Trial Tr.
might
and
invention interviews,
invention
inventor
610:1-611:6.
invention,
Vol.
art,
547:16-548:11,
inventions
primarily Batchelder,
Particularly
applications,
in
Batchelder
After completing
Commercial Strategy,
the
prior
conducting
3B at 558:8-14,
of
CertusView's
non-patent
Crawford would work with a technologist,
the
worked
including communicating with
patent
capture
to
Crawford,
CertusView and
Davis,
to
and Crawford,
submit
to
patent
3B at 625:15-626:11.
continuation-in-part
participate
in
the
patent
invention
and Crawford and Teja would review the final claims
patent
Vol.
application
to
determine
3B at 627:1-628:5.
34
proper
inventorship.
63.
results
When researching prior art,
of
the
patent
prior
art
searches,
prior art that he found or received,
prior
art
624:9,
references
to
Teja.
Crawford would review the
or
the
non-patent
and would provide pertinent
Trial
Tr.
Vol.
3B
at
618:12-
652:6-657:12.
F.
Prior Art Disclosure
1. Market Intelligence Report ("MIR")
64.
Within the first three months of Commercial Strategy's
engagement with Dycom,
document
entitled
("MIR"),
dated
"confidential,"
and
Commercial Strategy prepared for Dycom a
"Market
July
which
22,
2008
surveyed
included competitive
and business strategy of
558:15-559:4,
Intelligence
633:7-22;
6.0"
"draft"
and
in
locate
industry
intellectual
the
such companies.
Market
Version
marked
and
players
research on
Report
the
property
Trial Tr.
Vol.
3B at
Intelligence Report Version 6.0,
July 22, 2008, DX-091 [hereinafter "MIR"].
65.
The
MIR
Trail Tr. Vol.
66.
June
was
never
or
otherwise
2A at 273:8-16; Trial Tr. Vol.
finalized.
4B at 828:2-11.
The information in the MIR was sourced between May and
2008,
MIR
at
(industry players)
6,
of
and
on
a
subset
was
interest
identified approximately
profiles
published
of
fifty
designed
to
to Dycom,"
"target"
companies
35
on
"analyze
MIR at
companies
the
target
companies
3.
The MIR
and provided
list
"that
[were]
found
of
interest
and
therefore
found
to
be
highly
relevant to Dycom objectives," MIR at 9, including:
A.
("ESRI"),
Environmental
a
developer.
geographic
Systems
Research
information
Institute,
systems
("GIS")
Inc.
software
ESRI offered a variety of GIS software products and
services,
including the
ESRI
ArcPad
software
product.
MIR at
47-55.
B. TelDig Systems,
that
sells
Inc.
("TelDig"),
software products related to the
a Canadian company
location industry.
TelDig products include the TelDig Utility Suite, TelDig Mobile,
and TelDig One Call.
67.
MIR at 75-79.
With respect to ESRI, the MIR noted that
"many [ESRI]
applications including the ArcPad software read very closely to
the
eSketch concept,"
problems
Dycom
particular,
is
and "ESRI does appear to be
interest[ed]
the MIR
in
noted that
solving."
the
ESRI
improvement to using " [p]aper map books"
field because
to capture,
at
ArcPad product
MIR
wireless
storage.
is an
and display geographic information in near
further
states
data
sharing,
utilization
In
"field-based personnel
real time" with "great[er] accuracy while on-site."
The
47.
to locate assets in the
the ArcPad product allows
analyze,
MIR
investing in
management,
that
ESRI's
data
technology
analysis,
mapping
MIR at 55.
36
and
GIS,
includes:
ticket
and
MIR at 49.
image
GPS,
management,
and
audio
68.
With
respect
particular interest
to
TelDig,
the
is the TelDig
MIR
noted
that
"[o] f
Utility Suite product which
appears similar to the eSketch concept," and also noted that "it
does
appear
Dycom
is
noted
that
that
interested
products
the
the
with
locator
download[]
the
and
tickets,
dig
Utility
site,
in
75.
Suite
ticket
MIR at 76.
connection
investing
MIR at
locate
solving problems
In particular,
"is
a
the
system of
dispatching
and
MIR
software
workforce
TelDig
Utility
Suite,
"enabl[es]
locate requests from the one call
back,"
allowing
edit[]
locator
that
The MIR also noted that TelDig Mobile,
the
paperless handling of
to
is
in."
TelDig
for
management."
in
TelDig
"the
and process []
and
damage
remote
them"
report
center
locator
and
the
[to]
"fill []
modules
to
in
upload
completed tickets at the end of the day," using a "unique dragand-drop
drawing
tool
with
pre-formatted
icons."
MIR
at
77.
The MIR further states that TelDig technology includes: wireless
data sharing,
ticket management, mapping and GIS, and image and
audio storage.
69.
July
2008
Crawford provided Chambers with a copy of the MIR in
and
Trial Tr. Vol.
70.
technical
MIR at 79.
the
two
discussed
3B at 634:8-18,
Chambers
point
did
of
not
view."
the
MIR
shortly
thereafter.
636:24-638:3.
find
the
MIR
Trial
Tr.
to
be
Vol.
"valuable
3B
at
from
a
634:8-18.
Specifically, regarding ESRI and TelDig, Chambers disagreed with
37
the
conclusions
to be
in
incorrect
the
based upon his
TelDig technology.
237:6; Trial Tr.
71.
MIR because
he
such
understanding of
Trial Tr. Vol.
Vol.
believed
2A at
conclusions
the
ESRI
212:18-218:7,
and
235:15-
3B at 634:19-635:3
With respect to ESRI,
Chambers relied on his personal
research and experience with ESRI products to conclude that the
MIR's
statements
Specifically,
in 2007,
regarding
ESRI
technology
were
inaccurate.
Chambers was aware of the ESRI products
because,
CertusView had assessed ESRI as a possible
"off-the-
shelf" solution to implement the e-Sketch application.
However,
CertusView concluded
that
the ESRI product
did
not
offer
base functionality needed for the e-Sketch prototype,
the
requiring
expensive custom development to use the ESRI product for the eSketch application.
72.
Further,
Trial Tr. Vol. 2A at 231:9-237:6.
Crawford
conducted
regarding ESRI and concluded that,
information in the MIR,
additional
research
based on his research and the
ESRI was not material to patentability.
Trial Tr. Vol. 3B at 641:20-642:21; Dycom Competitive Technology
Research ESRI,
73.
With
May 29, 2008, DX-083.
respect
previous
experience
TelDig's
products
with
to
regarding TelDig were
13.
to
TelDig,
TelDig
conclude
inaccurate.
Specifically,
38
Chambers
and
that
his
the
Trial Tr.
relied
on
understanding
MIR's
Vol.
his
of
conclusions
2A at
213:3-
A.
Chambers
had
been
aware
of
TelDig
CertusView entered into a Non-Disclosure Agreement
TelDig,
in April
2008,
regarding
Trial Tr. Vol. 2A at 213:14-214:6.
was
("NDA")
parser
with
technology.
Such NDA provided that Dycom
"willing to provide" TelDig with information concerning its
"business of
was
TelDig's
because
locating underground
facilities"
and
that TelDig
"willing to provide" Dycom with "more detailed information"
concerning
TelDig One Call,
TelDig Nexus products.
TelDig Utility, TelDig Mobile, and
Non-Disclosure Agreement between Dycom
and TelDig, April 10, 2008, DX-071.
B.
software
Chambers had seen a full demonstration of TelDig's
in
2007,
prior
CertusView and TelDig.
C.
Chambers
to
execution
of
the
NDA
between
Trial Tr. Vol. 2A at 214:7-216:10.
also
had
conversations
with
individuals
from TelDig, after execution of the NDA, regarding e-Sketch and
Chambers
product
did
not
that
receive
functioned
any
like
indication
e-Sketch.
that
Trial
TelDig
Tr.
Vol.
had
2A
a
at
216:14-218:7.
74.
TelDig
Crawford
and
concluded
information
patentability.
TelDig
conducted
in
the
that,
MIR,
Particularly,
included participating
additional
based
TelDig
on
his
was
research
regarding
research
not
and
the
material
to
Crawford's additional
research on
in a WebEx demonstration of
39
the
TelDig One Call software through a Canadian Dycom subsidiary.
Trial Tr.
75.
Vol.
3B at
Neither
regarding ESRI
previous
638:21-641:1.
the
MIR,
or TelDig,
patent
nor
counsel.
included
information
provided to Teja or
was
CertusView's
Trial
the
Tr.
Vol.
2A
at
271:9-273:7,
280:18-281:3; Trial Tr. Vol 2B, 370:23-371:4, ECF No. 508.13
76.
other
However,
companies
relevant
certain
and
information
products,
and material
that
in
the
MIR,
CertusView
regarding
concluded
was
to patentability was provided to patent
counsel and cited during prosecution of a number of CertusView's
patent
applications.
Dynatel,
Trimble,
For
Metrotech,
which
Vol.
were
discussed
in
related
Subsite,
Celeritas,
the
MIR,
CertusView patent
3A at 481:5-483:17,
were
78.
designed
When
to
it
was
allow
and
Trial
ESRI
and the ESRI ArcPad
software was first released in 2000 or 2001.
ECF No.
3M
during
applications.
ESRI is a GIS software developer,
1005:12-1006:6,
cited
to
517:20-518:17.
2.
77.
products
RadioDetection,
prosecution of various
Tr.
example,
Trial Tr. Vol. 5A,
502.
developed,
users
to
the
employ
ESRI
the
ArcPad
ESRI
software
software,
a
was
GIS
13 The MIR itself has never been provided to the PTO, and the MIR is
not
listed as
Patent,
PX-004;
"prior
art"
for any of
the
Patents-in-Suit.
See
'344
PX-001; '204 Patent, PX-002; '359 Patent, PX-003; '001 Patent,
'341 Patent, PX-005.
Further, no evidence was presented at
trial that Farr knew of or reviewed the MIR.
40
database package, on a mobile device to "join maps and databases
together."
Trial Tr. Vol.
Vol.
235:20-236:4;
2A at
ESRI,
May 29,
79.
5A at 1006:16-1007:9; see Trial Tr.
Dycom Competitive
2008,
DX-083.
ESRI
No
products
Technology Research
introduced in evidence,
or
specific
ESRI
references
were
nor did S&N identify a particular ESRI
ArcPad product version or reference that it alleges should have
been disclosed to the PTO.
80.
CertusView considered partnering with ESRI in 2007 and
integrating
However,
ESRI
as
partnership
require
noted
was
In
functionality,
ESRI
as
above,
not
extensive
product.
the
software
part
its
CertusView
feasible
because
customization
particular,
of
the
to
ESRI
e-Sketch
determined
the
with
software
did
that
such
software
ESRI
work
product.
would
the
e-Sketch
not
have
the
"out of the box," necessary for e-Sketch because
software
did
not
document
paint
or
markers
on
the
ground while a locate operation was taking place, nor did ESRI
software geo-code or timestamp when such marks were made in the
ESRI database.
81.
with
Trial Tr.
Vol.
2A at 235:20-237:6.
Teja had general knowledge of ESRI through his work
CertusView,
but
he
became aware of
specific prior
references regarding the ESRI software products
Office
Action
during
patent application.
prosecution
Trial Tr.
Vol.
41
of
an
art
through a PTO
unrelated
CertusView
2B at 324:24-326:17.
82.
There is no evidence that Teja,
Nielsen,
Chambers,
or
Farr knew of these specific ESRI prior art references before the
PTO's
citation
of
such
references
during
prosecution
of
the
unrelated patent application.
83.
Upon reviewing the specific ESRI prior art references,
Teja determined that such references were not material to any of
the
Patents-in-Suit
because
in
many
duplicative"
respects
submitted to
Trial Tr.
84.
during
Vol.
the
out
specific
of
Teja learned of
the
ESRI
Four
"cumulative
references
he
or
had
the Patents-in-Suit.
ArcFM,
White
ArcGIS,
Manual,
of
2004,
'359,
caution,"
references
'341,
regarding
the
'001,
2006,
1-28;
1-192;
Mobile GIS, ESRI White Paper,
cited ArcFM UT,
art
of
and
to
Teja
PTO
Patents,
'001
the
the
Trial
514:6-516:18.
Applications,
PX-003;
abundance
specific ESRI prior art references.
Paper,
Mapping
"an
in the early stages of prosecution when
references
prosecution
'359 Patent,
other
prior
3A at 476:15-477:16,
during
Field
of
the
three Patents that were
85.
of
were
3A at 477:25-478:23.
prosecution
Tr. Vol.
references
the PTO during prosecution of
Nonetheless,
submitted
such
ESRI
'359,
(2)
and
9,
were
cited
Patents:
Geocoding
(1)
in
Mobile GIS Software for
2006;
Sept. 2004.
'341 Patent,
'341
ArcGIS
(3) ArcPad,
brochure,
products
PX-005.
and
(4)
'001 Patent,
The
ArcPad:
PX-004;
'341 Patent also
"A GIS for Utilities Based on Standards," White
42
Paper, AED SICAD, Sept.
2008, 1-28.
'001 Patent also cited ESRI
Dec.
9,
'341 Patent,
PX-005.
Corporate Introduction,
2009 (original publication date unknown).
The
printed on
'001 Patent,
PX-004.
86.
Teja
references
Patents
to
did
the
because
not
submit
the
specific
PTO during prosecution of
the
'344
Patent
had
ESRI
the
issued before
prior
'344
he
and
art
'204
learned of
the specific ESRI prior art references and Teja had already paid
the
issuance
fee
for
the
'204
Patent.
Trial
Tr.
Vol.
3A
at
476:15-477:16.
87.
The specific ESRI references submitted by Teja to the
PTO were never used as a basis for rejection of the
and
'001
Patents
Trial Tr.
Vol.
or
3A at
any
other patent
in
the
'359,
'341,
e-Sketch
family.
related
to
4 77:17-24.
3. TelDig
88.
aspects
TelDig
of
develops
infrastructure
software
products
interventions.
Among
other
all
things,
TelDig developed ticket management systems for One Call centers
and
dealt
polygons."
2A at
with
Trial Tr.
creation
Vol.
and
IB at
editing
of
152:20-159:19;
"notification
Trial Tr.
Vol.
276:4-277:3.
89.
did
the
No
TelDig
S&N
identify
products
a
were
particular
introduced
TelDig
in
Utility
evidence,
Suite
nor
product
version or reference that it alleges should have been disclosed
43
to the PTO.
Mobile
Further,
product
S&N did not identify a particular TelDig
version
that
it
alleges
should
have
been
disclosed to the PTO.
90.
CertusView
interviewed TelDig
in 2007
as
a potential
vendor and participated in TelDig sales demonstrations.
Tr.
Vol
2A at
91.
of
214:7-216:10.
Dycom and TelDig entered into an NDA for the exchange
information in April 2008,
about TelDig One Call,
Nexus
Trial
products.
including exchange of
TelDig Utility,
Trial
Tr.
Vol.
information
TelDig Mobile,
2A
at
and TelDig
213:14-214:6;
Disclosure Agreement between Dycom and TelDig,
April
10,
Non-
2008,
DX-071.
92.
In
2009,
trade
show,
which
CertusView
partnership
Sketch
at
Davis
which
to
he
might
the
identified
be
integrate
interested
other
product.
Trial
Tr.
Summary Notes,
in
Ground
as
a
forming
Virtual
Alliance
company
a
technology
WhiteLine
Davis'
Vol.
work,
2A
particularly
with
and e-
PX-043.
93.
systems,
Common
TelDig
CertusView's
with
Call
software
attended
at
TelDig's
219:1-220:9;
integrating
CertusView's
Trade
One
Show
Virtual
WhiteLine and e-Sketch concepts with TelDig's One Call software,
continued
throughout
2009,
culminating
in
a
"Services
and
Integration Agreement" between TelDig and CertusView on November
5, 2009.
Services and Integration Agreement between CertusView
44
and TelDig, November 5,
2009, DX-134.
Such integration allowed
TelDig One Call users to launch CertusView's Virtual WhiteLine
software from the One
Call
program.
allowed
Call
system
for
the
One
Further,
and
the
such integration
Virtual
WhiteLine
software to work together and share information for the benefit
of both entities'
94.
During
integrate
the
software,
Farr
users.
the
time
Virtual
and
that
Vol.
2A at 301:1-309:6.
CertusView and TelDig sought
WhiteLine
others
TelDig's drawing tool,
saw
product
a
live
and
web
the
One
to
Call
demonstration
of
which Farr believed to be associated with
TelDig One Call software.
95.
Trial Tr.
Trial Tr. Vol.
4B at 799:7-23.
Based on CertusView's interactions with TelDig between
2007 and 2010,
demonstrated,
CertusView understood,
and the evidence at trial
that:
A. TelDig's notification system included a high-level,
large-area drawing tool used by excavators to mark an image and
denote the area of excavation.
Such drawing tool,
not have the ability to input specific utilities,
however,
did
tie-downs,
or
landmarks on an image of a narrow and highly specific geographic
area,
or timestamp such additions to an image.
2A at 221:12-227:13; Trial Tr.
Vol.
Trial Tr. Vol.
4A at 774:1-777:4;
Email Re:
TelDig Systems - TelDig Web Drawing Tool Integration-vl 10.doc,
PX-057.
Integration
of
the
TelDig
One
Virtual WhiteLine product allowed One
45
Call
Call
software
users
and
the
to mark up a
very specific geographic area on a high-resolution aerial image
for an excavator.
B.
drawing
tool,
Trial Tr.
Once
a
the
Vol.
drawing
2A at 306:22-308:8.
was
drawing was
completed
saved to
format, an image or graphics format.
does
not
(image,
same
allow
a
mark-ups,
file
or
locator
geo-code
to
search
single PNG file.
coordinates
222:10;
Trial
through
TelDig
web server in PNG
A file saved in PNG format
include
data,
the
and
layers
of
timestamps,
layers
of
data
information
etc.)
in
the
saved within
a
Further, a PNG file is not able to record geo-
coded locate marks,
GPS
to
the
using
i.e. paint on the ground matched to specific
for
Tr.
each
Vol.
mark.
4A
Trial
at
Tr.
776:7-25;
Vol.
Trial
2A
Tr.
at
Vol
221:12-
4B
at
802:13-804:2.
C. The TelDig drawing tool, while not used in such a
fashion,
might be used to mark a digital image and to show the
results of a locate operation.
However, the TelDig drawing tool
was used for a different purpose, and its use for the purpose of
documenting a locate operation was like
nail in a screw."
96.
Trial Tr.
On August 2,
TelDig Mobile
brochure,
Vol.
2012,
news
Vol.
alert.
Trial
2A at 298:7-301:4.
via Crawford's
Tr.
3B at 580:1-582:12;
a hammer to
Chambers and Crawford learned of a
Gail Sternstein ("Sternstein"),
a
"us[ing]
Vol.
administrative assistant
who had received the brochure as
IB
at
162:24-168:22;
Sternstein Depo.
46
Trial
Tr.
Tr. at 49:15-51:15;
Email
2,
from Sternstein to
August 2,
2012,
Chambers,
re:
Fwd:
Mobile TelDig-page
DX-203; TelDig Mobile Product Brochure,
DX-
294.
97.
The
language
that
included
in
TelDig
was
the
Mobile
brochure
identical
MIR,
to
included
bullet
the
Further, the TelDig Mobile brochure
point
the
describing
bullet
TelDig
Mobile
language
system.
included a partial picture
of a drawing tool and its use on a large scale map image.
Tr. Vol.
point
Trial
IB at 168:24-170:5; TelDig Mobile Product Brochure,
DX-
294.
98.
from
Upon receiving a copy
Sternstein,
with Nielsen.
at
did
581:7-16.
not
Chambers
Trial Tr.
Chambers
contain
any
and
Vol.
and
new
of
the TelDig Mobile
Crawford
discussed
IB at 168:15-22;
Crawford
or
the
brochure
Trial Tr.
concluded
different
brochure
that
the
information
Vol.
3B
brochure
regarding
TelDig's software from what they already knew or had previously
learned from their interactions with TelDig.
at
641:10-19.
Thus,
Nielsen,
Chambers,
Trial Tr.
and
Crawford
Vol.
did
3B
not
send the TelDig Mobile brochure to Teja and the brochure was not
submitted to the PTO in relation to any of
Trial Tr. Vol.
99.
On
supporting
screen
2B at 362:1-12; Trial Tr. Vol.
October
documents,
shots
the Patents-in-Suit.
of
the
17,
2012,
Teja
and
three
images
TelDig
sketch
47
3A at 479:3-16.
received
tool,
which
from
an
were
Louis
affidavit,
labeled
A.
as
Simone
("Simone
Affidavit").
The
three
TelDig
screen
shots
were
created by Premier Utility Services, who used a "personal highly
customized
version
of
Tel[D]ig
Vol.
2B at
offer[ed
them]
special
contract requirements . . . ."
features to exceed [their]
Tr.
that
365:7-366:18;
Affidavit
of
Louis
A.
Trial
Simone,
DX-
286.
100.
October
17,
employee,
was
Teja forwarded the Simone Affidavit and documents,
2012,
asking
material
Disclosure
for
to
Crawford
input
Trial
to
October 17,
Tr.
Vol.
Halky,
because,
if
to
with
the
at
FWD:
CertusView
information
an
Information
PTO
forwarded
a
the
file
2B
re:
Travis
needed
then
Chambers,
2012,
he
("IDS")
Crawford
Chambers.
and
"ASAP"
e-Sketch,
Statement
information.
Crawford
to
on
the
to
the
information
361:13-365:10;
URGENT-Please
cite
Email
review
to
from
ASAP,
DX-221.
101. The three TelDig screen shots included with the Simone
Affidavit bore a
at
"striking"
CertusView had
ilk,"
before.
particular,
measurements,
seen this
Trial
the
resemblance to e-Sketch,
three
similar
Tr.
TelDig
to
information,
Vol.
2B
or
at
screen shots
certain
markings
but no one
drawings
of
"this
366:5-369:21.
In
showed markings
or
tie-downs
and
that
might be made during a locate operation, on a Google Earth photo
image.
Affidavit of Louis A. Simone, DX-286.
48
102. Based
on
"TelDig
had
2012."
Trial Tr.
such
a
the
Simone
graphing
information
tool
Vol.
as
on
2B at
an
Affidavit,
aerial
Teja
images
371:16-26.
"admission
of
anything that resembled prior art,"
concluded
that
sometime
However,
after
Teja viewed
infringement
rather
than
because the e-Sketch patent
applications had been filed several years prior and the diagrams
"looked
claims
like
of
they
the
plausibly
[e-Sketch]
could
patent"
priority dates of the applications.
have
been
several
covered
Trial Tr. Vol.
the
after
years
by
the
3A at 486:4-
488:19.
103. Teja first received materials relevant to TelDig,
that
he believed might need to be included in a patent prosecution,
in
connection
materials
After
with
from
Ivan
receiving
materials,
and
applications
other
the
present
Zatkovich's
such
CertusView
the
expert
e-Sketch
technology
as
("Zatkovich")
materials,
Zatkovich's
in
litigation,
Teja
cited
report
technology
families.
in
exhibits
expert
such
Trial
report.
exhibits,
pending
family
and
Tr.
and
patent
possibly
Vol
3A
at
479:3-23.
104. Even
report,
were
though TelDig materials,
cited
in
pending
Sketch technology family,
rejection based on TelDig.
patent
and Zatkovich's
applications
in
expert
the
e-
Teja has not received an Office Action
Trial Tr. Vol. 3A at 484:3-18.
49
G. Misrepresentation to the PTO
105. During prosecution of United States Patent Application
No.
12/366,050,
which
ultimately
issued
as
the
'344
Patent,
Examiner Nancy Bitar issued a non-final Office Action on October
6,
2011,
obvious,
rejecting
1-26
pursuant to 35 U.S.C.
2007/0219722
Pub.
claims
No.
to
Sawyer Jr.
2006/0077095
History U.S.
44, DX-234
to
of
such patent
§ 103(a),
et.
al.
Tucker
application
based on U.S.
in view of
U.S.
("Tucker").
Complete
File
('344 Patent),
inventions
address
the
discussed
problem
in
of
the
Tucker
underground
and
that cannot be trusted.
Vol.
In
at
his
marking
382:10-383:22.
a named
inventor on
system was
facilities
particular,
the
on
the
ground
"permanently capture and store"
digital
reference,
which
would
Page
because
the
be
Trial Tr.
("Mr.
explained
the
"problems"
the
invention
location of
later
maps,
Tucker
Tucker reference,
designed to eliminate
Sawyer
facility
maintained by utility owners,
that
1133-
(hereinafter "'344 Patent File History, DX-234").
references
Tucker"),
No.
("Sawyer")
Patent Application 12/366,050
106. The
2B
Pub.
as
used
with
would
utilities
to
excavator-during excavation—that the excavator was
notify
in a
the
"encroaching
on a utility line and what type of line it is and how close they
are."
Tucker
aware of
paint
or
Depo.
Tr.
anyone using his
flags,"
and
the
at
113:19-115:2.
invention to
only
50
time
Mr.
Tucker
is
not
"record the location of
that
he
is
aware
of
his
invention being used in conjunction with paint or flags on the
ground was to "test[]
the system."
Tucker Depo.
Tr. at 117:9-
23.
107.
number
Examiner
of
familiar
Bitar
CertusView's
with
reviewed
Virtual
Examiner
the
'344
WhiteLine
Bitar,
and
had
Email re:
The
remake), November 16,
108. Teja
occasions,
"Six Families"
2011,
and
others,
(sounds
Examiner
December
Trial Tr. Vol.
et
al.,
re:
for
good
as
Teja
a
was
professional
Trial Tr.
6,
Bitar
2 011
Vol.
like a
the
pending
2B at 401:14-402:1;
Meeting with Examiners
on
when
attended an examiner interview in Washington,
Bitar,
well
2B at
Godfather
PX-072.
interviewed
including
as
patents.
a
working relationship with Examiner Bitar.
399:9-21;
Patent
a
Teja
number
and
of
Nielsen
with Examiner
Patent
'344
D.C.
application.
Email from Teja to Nielsen,
in D.C,
November 28,
2011,
DX-177.
109. During that examiner interview, Nielsen and Teja used
a PowerPoint presentation to highlight
Examiner Bitar.
In part,
certain information for
the presentation discussed the Sawyer
and Tucker references and sought to distinguish such references
from
the
claimed
U.S.
Patent
inventions
Application
December 6, 2011,
of
the
12/366,853
PX-131.
51
'344
for
Patent.
Examiner
Overview
Nancy
of
Bitar,
110. During the examiner interview,
Examiner
Bitar
what
locate operation.
takes place
Nielsen explained to
in a conventional,
prior art
Trial Tr. Vol. 2b at 414:14-815:14; Overview
of U.S. Patent Application 12/366,853 for Examiner Nancy Bitar,
December 6,
2011,
2-25,
PX-131.
111. During the examiner interview, and following Nielsen's
presentation,
Teja
directed
Examiner
Bitar's
attention
several portions of the Tucker and Sawyer references,
paragraph
005
of
the
Tucker
reference,
conventional locate operation,
which
to
including
described
and paragraph 0014 of
a
the Tucker
reference, which Teja used to explain that the objective of both
Tucker
and
Sawyer
is
to
operations.
Trial
Tr.
Vol.
U.S.
Patent
December 6,
Application
2011,
112. On
February
interview,
Teja,
and
in
Reply
26-48,
pursuant to 37
2B
at
with
conventional
419:14-423:13;
for
Examiner
locate
Overview
Nancy
of
Bitar,
PX-131.
Nielsen,
C.F.R.
away
12/366,853
13,
response
do
to
2012,
after
attending
the
and
Chambers
submitted
an
the
October
§ 1.111.
6,
Trial Tr.
2011
Vol.
examiner
Amendment
Office
Action,
3A at 431:14-24;
'344 Patent File History, 688-711, DX-234.
113. In
gave
a
Office
the
summary of
Action.
explained
that
February
the
With
"Tucker
13,
2012
references
respect
is
to
Amendment
Reply,
cited
in the
October
the
Tucker
reference,
concerned primarily
52
and
with
6,
Teja
2011
Teja
assembling
and
providing
lines,"
and
an
locations
penetrating
with
or
locations
activities—rather,
precision
documentation
database
utility
or
sites
location
of
support of Tucker's PI Grid is in no manner concerned with,
the
line
of
in
on,
utility
database
created
dependent
"the
accurate
this
of
of
database
actual
same
reference,
Teja
explained
system and methods
teachings
of
that
disclosed
Tucker,
Sawyer
only
concerned
utility
line
location,
With respect to the
"Sawyer
in Tucker,"
is
ground-
is
wherever the utility lines may be located."
Sawyer
future
relates
and
primarily
to
the
"beyond
the
concerned
with
maintaining a record of the activity of a field operator as the
operator
collects,
edits,
and/or
location of utility lines."
updates
data
'344 Patent File
regarding
History,
the
700-06,
DX-234.
114. Teja explained in the February 13,
Reply,
that "the amendments to the independent claims are based
at least in part on moving
preamble
to
recitation of
the
a
body
of
language previously recited
the
claims
'locate operation,'
so
as
to
in the
clarify
the
which is completely absent
from the cited prior art references."
695,
2012 Amendment and
'344 Patent File History,
DX-234.
115. Teja
continued,
stating
that
"[f]urther
the claim amendments relating to a locate
'ticket'
support
can be found
throughout Applicant's specification as originally filed
53
for
(e.g.,
see paragraphs
'locate
[0002] , [0003] , [0023] , and
operation,'
the
concept
of
a
[0046] ).
locate
As with a
ticket
including
information identifying a dig area to be excavated or disturbed
during
planned
Applicant's
excavation
independent
activities,
claims,
cited prior art references."
is
as
now
completely
recited
absent
from
'344 Patent File History,
in
the
695, DX-
234.
116. Teja made
to the examiner"
a
locate
"with
such statements
because
he
was
"advocating
that Tucker and Sawyer " [esch]ewed the idea of
operation,"
presumably
intending
something
to
replace
better."
locate
Trial
Tr.
operations
Vol.
2B
at
399:25-340:22
117. Further,
Teja
stated
location
of
in the February 13,
that
" [s] ince
planned
Tucker
excavation
2012 Amendment and Reply,
is
not
concerned
activities
per
with
se,
the
Tucker
similarly is not concerned with locate operations to identify a
presence or absence of underground facilities within a specified
dig area in advance of planned excavation activities in the dig
area."
'344 Patent File History, 703, DX-234.
118. Later in the
Teja
stated that
February
13,
2012
"[a]lso like Tucker,
Amendment
Sawyer is not
and Reply,
concerned
with the location of planned excavation activities per se,
thus
similarly
is
not
concerned
with
locate
operations
and
to
identify a presence or absence of underground facilities within
54
a specified dig area in advance of planned excavation activities
at
the
dig
suggest
area.
any
operation
As
such,
concepts
(e.g.,
a
Sawyer also
related
timestamp
operation occurred)."
to
does
not
documentation
indicative
of
disclose
of
that
need
Bitar
Tucker
for
in
and
distinguishable
operation,
Sawyer
Vol.
2B at
the
the
digitally records
of
patentability,
disclosed
marks
from
where
locate
locate
'344 Patent File History, 706, DX-234.
favor
physical
a
the
when
119. Teja made such statements as part of his
Examiner
or
on
the
attempting
system
ground
that
applies
location of
paint
the
to
and
claiming a
on
show
"obviates
entirely"
e-Sketch inventions
locator
the
a
argument to
the
were
locate
the
ground
and
locate mark.
Trial
Tr.
358:12-360:14.
120. On
April
Office Action,
23,
2012,
Examiner
Bitar
rejecting the amended claims of
on new grounds.
issued
the
another
'344
Patent
The Examiner found that "Applicant's arguments,
in the amendment filed 2/13/2012 with respect to the rejections
of claims 1-26 under 35 U.S.C. 103(a) have been fully considered
but
are
moot
necessitated
been
by
withdrawn.
ground (s)
of
view
in
the
of
the
amendments.
However,
rejection
2008/021863)[("Evans")]."
is
new
ground(s)
Therefore
upon
further
made
in
view
'344 Patent
234.
55
the
of
rejection
rejection
consideration,
of
File
Evans
History,
et
has
a
new
al
(US
652,
DX-
121. In response to the April 23, 2012 Office Action,
submitted an Amendment and Reply on June 12,
File History,
81-94,
122. In
'344 Patent
DX-234.
June
the
2012.
Teja
12,
2012
Amendment
and
Reply,
Teja
explained that "Sawyer and Evans fail to disclose or suggest all
of the limitations of claim 1.
at
least
of
the
fail
at
pavement
to disclose
least
or
one
other
locate operation.'"
and
method
does
not
for
123.
the
locate
physical
a
GIS
locate
data
applied
to
ground,
technician during
89, DX-234.
transaction'
marks
the
Teja
at
all."
(Abstract)
'344
Patent
90, DX-234.
Examiner
Bitar
had
and
considered
Sawyer references during prosecution of
Tr. Vol.
mark
representation
"Sawyer, which is directed to a 'system
generating
discuss
File History,
by
locate
'344 Patent File History,
further reiterated that
Sawyer and Evans
'at least one digital
physical
surface
In particular,
2B at
397:6-398:2;
the
'344 Patent,
both
the
Tucker
'344 Patent.
PX-001
and
Trial
(listing prior
art submitted to the PTO).
124. Examiner
Bitar
Allowability as to the
ultimately
'344 Patent,
a
Notice
'344 Patent File History,
DX-234.
125. In the July 11, 2012 Notice of Allowability,
Bitar
of
on July 11, 2012, over the
Tucker, Sawyer, and Evans references.
25-30,
issued
stated
that
"[a]fter
reviewing
56
the
remarks
made
Examiner
by
the
Applicant
action
on
the
6/13/2012
Examiner
in
response
finds
the
to
remarks
the
to
non-final
be
persuasive.
combination of cited references Tucker et al
Sawyer
et
al
2008/0021863)
(US
2007/0219722) ,
[d] o not
teach or suggest
or the newly added features.
'344 Patent File History,
stated
that
operation
July
none
comprising
excavation
Notice
prior
at
least
identified
and
using
al
(US
claims
claims elements."
in
at
Allowability
"[1]
advance
least
of
one
further
the
the
locate
planned
physical
locate
pavement or other surface by the locate
one
underground
the
by
et
features of
teaches:
technician during the locate operation,
the
the
of
art
identifying,
mark applied to ground,
Evans
combination of
2012
the
activities
2006/0077095),
28, DX-234.
27,
of
(US
The
No other found prior art of record
teaches or fairly suggests the
126. The
and
office
ticket
a presence or absence of
facility
information;
within
and
[2]
the
dig
at
least
area
one
digital representation of the at least one physical locate mark
applied to
technician
the
during
communication
transmit
record
ground,
the
locate
operation;
and/or
the
the
locate
that
is
operation
verifiable."
PX-234.
57
so
and
memory
electronically store
location operation
29,
the
interface
and/or
of
pavement or other surface by the locate
'344
to
controls
electronically
searchable
electronic
performance
Patent
the
File
of
the
History,
VI.
LEGAL STANDARD AND PRELIMINARY FINDINGS
A. Duty of a Patent Applicant
"Each individual associated with the filing and prosecution
of a patent application has a duty of candor and good faith in
dealing with the [Patent and Trademark] Office, which includes a
duty
to disclose
individual
to be
section."
37
Universal
2007);
Cir.
Mach.
to the Office
material
C.F.R.
Avionics
Molins
1995)
PLC
§
information known
to patentability as
1.56(a);
Sys.
v.
all
Corp.,
see
488
Textron,
Inc.,
48
982,
U.S.
806,
818
(1945)).
Int'l
999
F.3d
(citing Precision Instrument Mfg.
Co., • 324
defined
Honeywell
F.3d
to that
in
this
Inc.
v.
(Fed.
1178
1172,
Cir.
(Fed.
Co. v. Auto.
Individuals
Maint.
associated
with the filing and prosecution of a patent application include:
"(1)
or
Each inventor named in the application;
agent
Every
who
prepares
other
preparation
person
or
associated with
37 C.F.R.
pending
or
who
is
prosecution
the
of
a
The
cancelled or withdrawn
becomes abandoned."
of
the
involved
application
to disclose
application
and
or
Conversely,
and
(3)
in
the
who
is
individuals.14
exists
until
from consideration,
Id. § 1.56(a).
Each attorney
application;
or other relevant
duty
patent
the
substantively
inventor,"
§ 1.56(c).
claim
prosecutes
(2)
the
as
to each
"claim
is
the application
"[t]here is no
14 "Individuals other than the attorney, agent or inventor may comply
with this section by disclosing information to the attorney, agent, or
inventor."
37 C.F.R.
§ 1.56(d).
58
duty
to
submit
patentability
information
of
any
which
existing
is
not
claim."
material
Id.
to
the
Additionally,
information that is material to patentability does not include
information that is "cumulative to information already of record
or being made of record in the application."
Id. § 1.56(b).
A breach of such duty of candor and good faith constitutes
inequitable
conduct.
Molins,
Innovations,
LLC v. Holtzbrinck Publishers,
526, 543 (N.D. Ohio 2012)
patent
applications
in
honesty]
constitutes
F.3d
1178)).
at
48
F.3d
at
LLC,
Responsive
911 F.
Supp.
2d
("A breach of this duty [to prosecute
the
PTO
with
candor,
inequitable conduct."
The
1178;
parties
do
not
good
faith,
and
(citing Molins,
dispute
that
each
48
named
inventor to the Patents-in-Suit and the attorney who prosecuted
the Patents-in-Suit—that is,
Nielsen,
Chambers,
Farr, and Teja—
have a duty of candor and good faith to the PTO.
B. Inequitable Conduct
"Inequitable
conduct
infringement that,
Therasense,
(Fed.
Cir.
is
if proven,
an
equitable
bars
defense
enforcement
to
patent
of a patent."
Inc. v. Beeton, Dickinson & Co., 649 F.3d 1276, 1285
2011)
(en
banc).
To
prevail
on
a
defense
or
counterclaim of inequitable conduct, "the accused infringer must
prove
that
the
applicant
misrepresented
or
omitted
material
information with the specific intent to deceive the PTO" and, at
trial, must prove both materiality and specific intent "by clear
59
and convincing evidence."
Star Sci.,
1365
Inc.
v.
(Fed. Cir.
that
the
LLC v.
(Fed.
Reynolds Tobacco Co.,
2008)).
applicant
TransWeb,
1303-04
R.J.
Id^ at 1287 (emphasis added) (citing
The Therasense standard also requires
have
knowledge
of
such
3M Innovative Properties Co.,
Cir.
537 F.3d 1357,
2016)
("A judgment of
materiality.
812 F.3d 1295,
inequitable
conduct
requires clear and convincing evidence of materiality, knowledge
of materiality,
Therasense,
meets
its
and a deliberate decision to deceive."
649
F.3d
burden,
at
then
1290)).
the
"If the
district
accused
court
must
(citing
infringer
weigh
the
equities to determine whether the applicant's conduct before the
PTO
warrants
Therasense,
1365).
rendering
649
"[A]s
F.3d
a
at
general
the
entire
1287
(citing
rule,
this
patent
Star
unenforceable."
Sci.,
doctrine
537
F.3d
at
should
only
be
applied in instances where the patentee's misconduct resulted in
the unfair benefit of receiving an unwarranted claim."
Id. at
1292 (citing Star Sci., 537 F.3d at 1366).
As
explained
in
Therasense,
inequitable conduct is
at 1288
525
cannot
issue.
other
be
1349
(Fed.
Cir.
patentability
cured by
Instead,
reissue
above-stated
'atomic bomb'
(quoting Aventis Pharma S.A.
F.3d 1334,
Unlike
"the
the
2008)
patent law."
v. Amphastar Pharm.,
(Rader,
deficiencies,
or
of
remedy
J.,
Id.
Inc.,
dissenting)).
inequitable
reexamination of
for
conduct
the patents
at
"inequitable conduct regarding any single claim
60
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?