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