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, )

renders the entire patent unenforceable."
Med.

Consultants,

(Fed.

Cir.

Ltd.

1988)

(en

v.

Hollister

banc)).

Id.

Inc.,

" [T] he

(citing Kingsdown

863

taint

F.2d

of

a

867,

877

finding

of

inequitable conduct can spread from a single patent to render
unenforceable other related patents and applications in the same
technology family, . . . endanger[ing]
a

company's

citations

patent

portfolio."

omitted).

Further,

a substantial portion of

Id.

a

at

finding of

1288-89

(internal

inequitable conduct

may prompt antitrust and unfair competition claims,

"prove the

crime or fraud exception to the attorney-client privilege,"
support a finding

that a case

potential award of attorneys'

is "exceptional,"

or

leading

fees under 35 U.S.C.

to a

§ 285.

Id.

at 1289 (internal citations omitted).

"[T]he

materiality

required

conduct is but-for materiality."

to

establish

Id. at 1291.

inequitable
Regarding the

withholding of prior art:

When an applicant fails to disclose prior art to the
PTO, that prior art is but-for material if the PTO
would not have allowed a claim had it been aware of

the undisclosed prior
materiality

of

a

art.

withheld

Hence,

in assessing

reference,

the

court

the
must

determine whether the PTO would have allowed the claim
if it had been aware of the undisclosed reference. In

making
should

this patentability determination,
the court
apply
the
preponderance
of
the
evidence

standard

and

give

claims

their

broadest

reasonable

construction.

Id.

at 1291-92

alleges

that

(citations omitted).

a

patentee

committed
61

Similarly,

where a party

inequitable

conduct

by

misrepresenting

information

to

the

PTO,

such

party

must

demonstrate that the specific alleged misrepresentation was butfor material.

allowed

Id.

the

1354,

1361

have

misconduct");

1333,

1345

(Fed.

e.g.,

be

"but-for

the

the

patentee's

PTO

'556

of

The

material"

patent

but

would

the

evidence

Circuit

v.

Alps

allowed

a

Inc.,

a

PTO

735

F.3d

Willow

Wood

In determining

claim

but

should

and

"the

Sherman's

LLC,

"Ohio

court

standard

Dr.

S.,

763

patentee's

because

649 F.3d at 1291).

have

UCB,

for

have

patentee's

(finding

[hereinafter

Therasense,

Federal

v.

Cir.

2013)

would not

the

Inc.

Co.

broadest reasonable construction.
F.3d at 1345;

PTO

for

2014)

misrepresentation,

preponderance

the

Willow Wood

(2013)"](citing Therasense,
whether

Apotex

Cir.

allowed

is,

but

(Fed.

to

Ohio

That

claim

See,

misrepresentations
would not

1291.

patent

misrepresentation.
F.3d

at

give

for

the

apply
claims

Ohio Willow Wood

the
their

(2013),

735

649 F.3d at 1291.

has

recognized

a

narrow exception

to

the requirement to prove but-for materiality in instances where

a patent applicant engages in particularly egregious misconduct
arising

from

scheme[s]'

F.3d at

"'deliberately

planned

and

carefully

to defraud the PTO and the courts."

1292

(quoting Hazel-Atlas Glass

Co., 322 U.S. 238, 245 (1944)).

Co.

Therasense,

649

Hartford-Empire

"When the patentee has engaged

in affirmative acts of egregious misconduct,
62

v.

executed

such as the filing

of an unmistakably false affidavit,
Id.

(citations

omitted).

the misconduct is material."

However,

"neither

mere

nondisclosure

of prior art references to the PTO nor failure to mention prior
art references in an affidavit constitutes affirmative egregious

misconduct,

claims of inequitable conduct that are based on such

omissions require proof of but-for materiality."
93.

Further,

Id.

at 1292-

"[t]here is nothing wrong with advocating,

in good

faith, a reasonable interpretation of the teachings of the prior
art."

Apotex

Target Corp.,

Inc.,

763

F.3d

at

1361-62

(citing

Rothman

556 F.3d 1310, 1328-29 (Fed. Cir. 2009)).

v.

"While

the law prohibits genuine misrepresentations of material fact, a

prosecuting attorney is free to present argument in favor of
patentability without fear of committing inequitable conduct."
Rothman,

556 F.3d at 1328-29 (citing Young v. Lumenis,

F.3d 1336,

1348

Abbott Labs.,

counsel's

and

(Fed. Cir.

512

that

interpretation of
(citing
1320,

Life

1326

F.3d 1363,

representation

explaining

its

Techs.,

(Fed.

2007));

Cir.

1379

accord Innogenetics,
(Fed.

"amounted

"an

Inc.

v.

and

Cir.

to

applicant

claims

mere

is

the

2008)

attorney

free

to

v.

argument"

advocate
of

Labs.,

Inc.,

Instead,

N.V.

(noting that

teachings

Clontech

2000))).

Inc., 492

its

prior art"
224

F.3d

such limited exception

to but-for materiality applies only when a patentee's omission
or misrepresentation is knowing and deliberate.
649 F.3d at 1292 (citing Hazel-Atlas Glass,

63

See Therasense,

322 U.S.

at 245).

The

Federal

Circuit

has

emphasized

distinction

between

the

materiality and

inequitable

conduct

counterclaim.

separate requirements."
Inc.

v.

Id.

Promega Corp.,

323

in

its

intent

opinions

elements

the

of

an

"Intent and materiality are

at 1290 (citing Hoffman-La Roche,
F.3d 1354,

1359

(Fed.

Cir.

2003)).

"A district court should not use a 'sliding scale,' where a weak

showing

of

intent

may

be

showing of materiality,
district
Id.

court

Instead,

sufficient

and vice versa."

may not
"a

found

infer intent

court

must

weigh

based

Id.

solely
the

on

a

strong

Importantly,

"a

from materiality."

evidence

of

intent

to

deceive independent of its analysis of materiality. Proving that
the applicant knew
materiality,

of a reference,

and decided not

should have known of

its

to submit it to the PTO does

not

prove specific intent to deceive."

Id.

(citing Star Sci., 537

F.3d at 1366).

Under the

intent element of

inequitable conduct,

alleging inequitable conduct must demonstrate
acted with

"the

specific

intent

to

deceive

1290 (citing Star Sci. , 537 F.3d at 1366).

misrepresentation

or

omission

amounts

to

the party

that the patentee
the

PTO."

Id.

at

"A finding that the

gross

negligence

or

negligence under a 'should have known' standard does not satisfy
this intent requirement."

876).

the

"[T]o meet

specific

Id.

(quoting Kingsdown,

863 F.2d at

the clear and convincing evidence

intent

to

deceive
64

must

be

'the

standard,

single

most

reasonable

(quoting

inference

Star

Sci.,

able

537

to

be

F.3d

drawn

at

from

1366).

the

evidence.'"

Indeed,

the

Id,

evidence

"'must be sufficient to require a finding of deceitful intent in

the

light of all

863

F.2d at

inferences
found."

873).

that
Id.

Vision

reference,

"the

that

withhold

it

inequitable
need not

infringer first
deceive

by

at

and

1290.

the

good

faith

. . . prove[s]

clear

and

Cir.

ICOS

2008)).

a

prior

art

clear

and

the reference,

deliberate

decision

alleging

proof,

of

party

the

'patentee

the

accused

a threshold level of intent

F.3d at

evidence.'"

1368).

to

the

explanation unless

convincing

(quoting Star Sci. , 537

v.

be

by

knew of

a

burden

of

prove

"Because

bears

any

made

cannot

Corp.

(Fed.

nondisclosure

must

reasonable

deceive

Techs.

1376

the applicant

material,
Id.

a

to

Scanner

1365,

(quoting Kingsdown,

are multiple

intent

infringer

that

conduct

offer

of

accused

was

it."

F.3d

Id.

there

(citing

case

the

when

drawn,

528

convincing evidence
knew

be

1290-91

Corp.,

in

circumstances.'"
"Hence,

may

at

Sys.

Further,

the

Id.

at

"The absence of

to

1291

a good

faith explanation for withholding a material reference does not,
by itself, prove intent to deceive."

Id.

C. Inventorship

"Conception

is

the

touchstone

of

completion of the mental part of invention."
Co.

v.

Barr Labs. , Inc. , 40 F.3d 1223,

65

inventorship,

the

Burroughs Wellcome

1227-28

(Fed.

Cir.

1994)

(citing Sewall v. Walters,

21 F.3d 411,

415

(Fed. Cir.

1994)).

"'Conception is the formation in the mind of the inventor,

definite

and

invention,
Ethicon,

Cir.

as

Inc.

1998)

Inc.,

permanent
it
v.

is
U.S.

idea

of

hereafter

to

F.2d

1367,

1376

Inc.

(Fed.

complete

be

Surgical Corp.,

(quoting Hybritech,

802

the

applied

and
in

operative
practice.'"

135 F.3d 1456,

v.

of a

1460

(Fed.

Monoclonal
1986))).

Cir.

Antibodies,
An

idea

is

sufficiently "definite and permanent" when "'only ordinary skill
would be necessary to reduce the invention to practice, without
extensive research or experimentation.'"
Wellcome,

Id. (quoting Burroughs

40 F.3d at 1228).

"A joint invention is the product of collaboration between
two

or

more

addressed."
Educ.

v.

35 U.S.C.

persons
Univ.

Hedrick,

§ 116).

working

together

to

solve

the

of Pittsburgh of Commonwealth Sys.
573

F.3d 1290,

"In a

1297

(Fed.

joint invention,

Cir.

problem

of Higher

2009)

(citing

each inventor must

contribute to the joint arrival at a definite and permanent idea

of the invention as it will be used in practice."
(citing Price v. Symsek,

Joint

inventors

988 F.2d 1187,

"need

contemporaneously . . . nor

not

work
must

66

(Fed.

physically
each

equally or to each claim of the patent."
§ 116).

1229

inventor

Id.

Id. at 1298
Cir.

1993)).

together

or

contribute

(citing 35 U.S.C.

"All that is required of a joint inventor is that he
or she (1) contribute in some significant manner to
the
conception or
reduction
to practice
of
the
invention,

(2)

make

a

contribution

to

the

claimed

invention that is not insignificant in quality, when
that contribution is measured against the dimension of
the

full

explain

invention,

to

the

and

real

(3)

do

inventors

more

than

well-known

merely

concepts

and/or the current state of the art."

Israel Bio-Eng'g Project v. Amgen,

(Fed.

Cir.

2007)

1351

(Fed.

Cir.

Inc.,

(quoting Pannu v.
1998)).

However,

475 F.3d 1256,

1263-64

Iolab Corp., 155 F.3d 1344,
"one does

not qualify as a

joint inventor by merely assisting the actual inventor after
conception of the claimed invention."
at 1460
Corp.

(citing Sewall,

v.

Moreover,

at issue,
the

21 F.3d at 416-17;

Libbey-Owens Ford Co.,

1985)).

Ethicon,

Inc.,

13 5 F.3d

Shatterproof Glass

758 F.2d 613,

624

(Fed.

Cir.

depending on the scope of the patent claims

"one of ordinary skill in the art who simply reduced

inventor's

idea

to

practice

is

not

necessarily

a

joint

inventor, even if the specification discloses that embodiment to
satisfy the best mode requirement."

Id.

(citing Sewall, 21 F.3d

at 416).
VII.

As
of

FACTUAL AND

noted above,

inequitable

Chambers,

inventor)
software

Teja,

and Farr

to

OF

S&N'S

CLAIMS

S&N has asserted five grounds

conduct

failed
during

LEGAL ANALYSIS

against

CertusView:

for a claim

(1)

Nielson,

(to the extent that he is named as

disclose

prosecution

of

as
the

67

prior
'344

art
and

the
'204

ESRI

an

ArcPad

Patents;

(2)

Nielson,

Chambers,

Teja,

named as an inventor)

and

Farr

(to

the

extent

that

he

is

failed to disclose as prior art the TelDig

Utility Suite and TelDig Mobile software during prosecution of
the

Patents-in-Suit;

wrongfully

(4)

Patents;
that

he

named

is

Farr

Nielsen,
as

the

Nielsen,

Chambers,

PTO

as

'359,

of

an

an

Chambers,

inventor
Teja,

inventor)

'344,

on

the

and

Farr

failed

'204,

Teja,

and

to

Farr

and

'341

'204

(to the

name

'341

and

extent

Block

Patents;

as

an

and

(5)

and Teja made material misrepresentations to

concerning

prosecution of

Nielsen,

Chambers,

named

inventor

the

(3)

the

the

'344

Sawyer/Tucker

Patent.

The

references

Court

will

during

address

each

argument in turn.
A.

Failure to Disclose Prior Art
1.

S&N

committed

asserts

that

inequitable

ESRI ArcPad

Nielsen,

conduct

by

Chambers,

failing

Farr,

to

disclose

art the ESRI ArcPad software during prosecution of

'204 Patents.15

material

S&N asserts

prior

art

and

that

Nielsen,

the

ESRI

and

the

ArcPad

Chambers,

Teja

as

prior

'344 and

software

Farr,

and

is

Teja

15 As noted above, S&N did not identify any specific ESRI prior art
reference

as material,

nor

evidence in this matter.

did

it enter

any

ESRI prior

art

into

However, as significant testimony regarding

the ESRI ArcPad software product, as well as the specific ESRI prior
art references CertusView cited during the prosecution of the '001,
'341, and '359 Patents, was elicited at trial, the Court will consider
S&N's arguments regarding both the ESRI ArcPad software and the

specific

ESRI

prior

art

references

software.

68

discussing

the

ESRI

ArcPad

withheld ESRI ArcPad prior art

during prosecution of

the

'344

and '204 Patents with the specific intent to deceive the PTO.16
In

response,

specific

CertusView

ESRI

ArcPad

prior

withheld from the

PTO,

the

prior

ESRI

ArcPad

material.

Instead,

argues

that

art

S&N

that

failed

to

CertusView

identify

allegedly

and that S&N failed to demonstrate

art

discussed

at

CertusView argues,

the

trial

is

specific

that

but-for

ESRI prior

art references that CertusView learned of during prosecution of

an

unrelated

prosecution
material

patent,

of

the

because

and

'341,

they

which
'359,

were

CertusView

and

'001

cumulative

of

cited

Patents,
other

during

were

not

prior

art

CertusView had already submitted to the

PTO during prosecution

of the

CertusView argues,

'344 and

'204 Patents.

Finally,

S&N

has not demonstrated that CertusView withheld ESRI ArcPad prior

art

with

the

specific

intent

of

deceiving

the

PTO

regarding

ESRI.

The Court finds that S&N has not demonstrated, by clear and
convincing

evidence,

that

CertusView

withheld

material

ESRI

ArcPad prior art with the specific intent of deceiving the PTO

16 The Court notes that S&N appears to have abandoned its argument that
CertusView intentionally withheld ESRI ArcPad prior art references
during prosecution of the '344 Patent, discussing only the '204 Patent
in its Post-Trial Brief.

69

during prosecution of the '204 and '344 Patents.17

First,

has

is

not

demonstrated

material.18
that

Further,

CertusView was

prosecution

of

that

the

ArcPad

software

but-for

other specific ESRI prior art references
aware

the

ESRI

S&N

of,

'341,

and provided

'359,

and

to

'001

the

PTO

Patents,

during

are

not

material,

but are cumulative of other references that CertusView

provided

to

Patents.

the

PTO

Second,

withheld

the

ESRI

art references,

during

S&N

prosecution

has

ArcPad

not

of

the

demonstrated

software,

or

any

during prosecution of the

'204 and
that

'344

CertusView

specific

ESRI

prior

'204 and '344 Patents

with the specific intent to deceive the PTO.
First,

with respect

prior art,

"[b]ecause the

requirement
appl [ies]
assessing

to

is
the

from

the

the

analysis of
perspective

preponderance

whether

the

materiality of

of

withheld

would have blocked patentability."
F.3d

at

1345

(citing

this but-for materiality
of

the
or

the ESRI ArcPad

the

PTO,

[the

evidence

Court]

standard

misrepresented

in

information

Ohio Willow Wood (2013), 735

Therasense,

649

F.3d

at

1291-92).

Specifically, S&N asserts that, had CertusView provided the ESRI
ArcPad

software

to

the

PTO,

the

'204

Patent

would

have

been

17 It is undisputed that CertusView cited at least four specific ESRI
prior art references during prosecution of
Patents. See supra H 85.

the

'001,

'341, and

'359

18 The parties do not appear to dispute that some version of the ESRI
ArcPad software is prior art to the Patents-in-Suit.

70

"blocked"

patents

because

as

image—the

ESRI ArcPad anticipated or made

it had the
matter

at

capability of

issue

in

marking up

dependent

claim

obvious

such

a photographic
17

of

the

'204

Patent ("[t]he method of claim 1, wherein the at least one input

image comprises at least one photographic

image.").19

Post-Trial Br.,

S&N has

that

ESRI

17,

ArcPad

ECF No.

517.

possessed

However,

such

not proven

functionality.

S&N

introduced no evidence that a version of ESRI ArcPad,

marking up a photographic image,
'344

Patents.

software

Instead,

"out of

programming

Dr.

the box,"

and

Dymond
that is,

customization,

representation of

was prior art

was

testified
absent
unable

a physical locate mark,

has

capable of

to the
that

Defs.'

'204 and

ESRI

ArcPad

additional personal
to

store

or do

a

digital

"ticketing"

"digital representation" of physical locate marks.20

or

Trial Tr.

Vol. 5A at 1010:14-1011:2, 1011:15-1012:18.21

19 The Court notes that, while S&N does not address in its Post-Trial
Brief whether the

ESRI ArcPad software would have blocked issuance of

the '344 Patent,

claim 1 of the '344 Patent describes an apparatus

which can process a searchable electronic record that contains a
similarly marked-up digital image.
'344 Patent, Col. 17:40-18:14, PX001.

20 At trial, S&N cross-examined Dr. Dymond on an image created by ESRI
ArcMap software, a desktop application that might be used to mark up
an image.
Trial Tr. Vol. 5B at 1069:13-1070:13.
However, as Dr.
Dymond explained, such image was created by a separate ESRI product,
and ESRI ArcPad does not possess such functionality absent additional
programming and customization.

21 At trial,

S&N's own expert,

Ivan Zatkovich,

did not provide an

opinion regarding the materiality of any specific ESRI reference or
publication, determining in his expert report only that TelDig was
material in view of the ESRI software products.
71

Trial Tr. Vol. 4B at

Further,
references

with

that

respect

to

the

specific

CertusView learned of

unrelated patent application,

ESRI

prior

art

during prosecution of

an

CertusView did not have a duty to

submit such specific prior art references during prosecution of
the

'204 and '344 Patents.

issued when Teja,
of

the

specific

First,

the

'344 Patent had already

and other CertusView employees,
ESRI

prior

art

references

became aware

discussed at

S&N has not demonstrated that any CertusView employee,
knew of

Thus,

such references

until

after

the

'344

CertusView did not have a duty to

prior art

C.F.R.

references

§ 1.56(a).

with respect

Second,

to

Patent

trial.

or Teja,

had

issued.

disclose such specific

the

'344

CertusView did not

Patent.

have

See

37

a duty

to

submit the specific ESRI prior art references during prosecution
of

the

'204

906:13-15.

Patent

because

However,

the

unpersuasive as
S&N has
software,
or the TelDig

such

Court

references

finds

such

are

cumulative

combination

not
demonstrated
that
products
(as discussed

to

of

be

the
ESRI ArcPad
below),
had the

necessary functionality to record and store a digital representation
of

a

physical

locate

mark.

See Dome

Patent

L.P.

v.

Lee,

799

F.3d

1372, 1379 (Fed. Cir. 2015) (explaining that the prior art and the
inventions claimed must be, in part, similar enough such that "'the
subject

matter

as

a

whole

would have

been

obvious

at

the

time

the

invention was made to a person having ordinary skill in the art'"
(quoting
35
U.S.C.
§
103
(2006))).
Further,
even
if
such
functionality existed in the prior art, S&N has not demonstrated that

there existed the appropriate motivation to combine the teachings in
such prior art references and a reasonable expectation of success in
making such combination.

See Id. at 1380

are found in the prior art,

("If all elements of a claim

. . . the factfinder must further consider

the factual questions of whether a person of ordinary skill in the art

would be motivated to combine those references, and whether in making
that combination, a person of ordinary skill would have had a
reasonable expectation of success."

(citing Medichem, S.A. v.

S.L., 437 F.3d 1157,

2006))).

1164

(Fed. Cir.

72

Rolabo,

other references that CertusView provided to the PTO and are not
material.
when

it

See 37

C.F.R.

'teaches

no

§ 1.56(b).

more

than

what

"A reference is
a

reasonable

cumulative

examiner

would

consider to be taught by the prior art already before the PTO.'"
Regeneron Pharm. , Inc.

61 (S.D.N.Y. 2015)
Lilly

&

Co.,

v.

144

F.

Supp.

3d 530,

560-

(quoting Regents of the Univ. of Cal. v. Eli

119

Alternatively,

Merus B.V.,

F.3d

"[w]hen

1575

Cir.

reference

1997)).

a

limitation of particular importance not elsewhere disclosed,

it

is not

v.

Id.

particular

(Fed.

discloses

cumulative."

a

1559,

(citing McKesson Info.

Sols,

Bridge Med., Inc., 487 F.3d 897, 914 (Fed. Cir. 2007)).
testified

at

trial,

the

specific

ESRI

prior

art

Inc.

As Teja

references

provide information, regarding the use of GIS software to record
data regarding utilities, similar to the information that forms
the

basis

of

the

Tucker,

Sawyer,

and

Evans

references

CertusView provided to the PTO during prosecution of the
Patent.

Thus,

the

specific

ESRI

prior

cumulative and not material as they "teach[]

art

that

'204

references

are

no more than what a

reasonable examiner would consider to be taught by the prior art
already before the PTO."
Additionally,

the

Id.
fact

that

the

'359,

'341,

and

'001

Patents issued over specific ESRI prior art references indicates
that
the

such
'204

references
Patent.

are

Having

not

but-for

reviewed

73

the

material
specific

with
ESRI

respect
prior

to
art

references,

which S&N argues should have been submitted during

prosecution

of

the

'204 Patent,

such references did not

'001 Patents.

"block"

Therefore,

the ESRI ArcPad product,
MIR and its

ESRI

prior

the

examiner

issuance of

S&N has not

the

'359,

that

'341,

demonstrated that

and

either

of which CertusView was aware from the

own interactions with ESRI,

art

determined

references,

that

or the

CertusView

specific

learned

of

cited

during

prosecution of an unrelated patent, are but-for material to the
issuance of

the

Second,
has

not

'204 and

even if ESRI prior art

demonstrated

software,

or

prosecution

'344 Patents.

any
of

that

'204

intent to deceive the PTO.
must be

CertusView

specific

the

were but-for material,

ESRI

and

withheld

prior

'344

art

Patents

As noted above,

the

ESRI

references,
with

the

S&N

ArcPad

during
specific

a finding of intent

"'the single most reasonable inference able to be drawn

from the evidence.'" Therasense,
Sci.,

537 F.3d at

to be

drawn

from

1366).

the

64 9 F.3d at 12 90

(quoting Star

The single most reasonable inference

evidence

in

this

matter

is

that

the

reason

CertusView did not submit ESRI ArcPad prior art to the PTO, or
to

Teja,

during

prosecution of

the

'204

and

'344

Patents

was

because it believed the ESRI ArcPad software to be incompatible
with

its

e-Sketch

inventions.

CertusView

reviewed

the

ESRI

software and determined that it was "too big and too expensive"
to use with e-Sketch,

which led it to conclude that ESRI was not

74

material or relevant to its e-Sketch inventions.
learning of

specific

ESRI prior art

references,

Teja submitted those references to the
during

caution,"
Patents,
to

prosecution

PTO,

the

upon

CertusView and

"in an abundance of

'359,

'341,

and

'001

further belying any suggestion that CertusView intended

deceive

the

PTO.

references,

lending

references,

and

Thus,

of

However,

Each

credence

the

ESRI

Patent

to

issued

CertusView's

ArcPad

software,

over

belief

were

not

the

ESRI

that

such

material.

S&N has not demonstrated that CertusView withheld material

ESRI prior art

during prosecution of

the

'204 and

'344 Patents

with the specific intent to deceive the PTO.
S&N has

attempted

to

prove

CertusView's

intent

to

deceive

the PTO by arguing that CertusView's misconduct during discovery
regarding the MIR (which includes descriptions of both ESRI and

TelDig

products)

intent,

because

supports
there

is

a
an

the litigation misconduct

"strong

"unmistakable"

regarding

withholding of material prior art,
the PTO.
argument,

Defs.'
S&N

Post-Trial

relies

on

a

Br.

[hereinafter

district

court's

inequitable conduct.

that

a

connection

14.

between

In support of

decision

"Ohio Willow Wood
finding

deceptive

described in the MIR,
at

recent

of

the MIR and the alleged

Circuit in the Ohio Willow Wood case,

2016)

inference"

from

the

patent

affirming

applicant

its

Federal

813 F.3d 1350 (Fed.

(2016)"],

from

Cir.

the

committed

However, the Ohio Willow Wood applicant's
75

conduct differs

such applicant

from the conduct at issue

had a duty

in this case,

because

to submit specific documents,

which

discussed prior art, to the PTO during patent reexamination as
such documents could correct his

counsel's misrepresentation on

a key point of contention during such reexamination, because the
applicant

withheld

such

documents,

and

because

"had no explanation for his failure to present
to the PTO.

Id.

at 135 9-60.

CertusView,

the

applicant

[such documents]"

however,

did not have

a duty to submit the MIR to the PTO22 and did not withhold the
information contained in the MIR from the PTO with knowledge of
its materiality.

culled

through

products,
counsel

Instead,

the

approximately

identified
and

the

the evidence reflects that CertusView

in

PTO

the

MIR

information

fifty
and

companies,

provided

regarding

to

such

and
its

their
patent

companies

and

products that it believed to be relevant and material to the e-

Sketch inventions.
information

interactions

incorrect.

in

CertusView disregarded the ESRI and TelDig

the

with

MIR

ESRI

because

and

TelDig,

it

believed,

that

such

based

on

its

information

was

Thus, while CertusView's misconduct during discovery

22 CertusView did not have a duty to submit the MIR to the PTO because
it is not material prior art.
Instead, the MIR was a confidential
"draft" document, created after the priority dates of the Patents-inSuit, including market
their products,
both
inventions.
See infra
the MIR was not prior

research on approximately fifty companies and
material
and non-material
to
the
e-Sketch
Sect. VII.A.2.a.
Further, S&N concedes that
art, Trial Tr. Vol. 5B at 1158:9-11, instead

referring to such document as a
Post-Trial Rebuttal Br.

at

"compendium of prior

11.

76

art,"

Defs.'

is worthy of condemnation and sanction,23 such misconduct does
not evidence the specific intent to deceive the PTO.
For
ArcPad

these

reasons,

software

Patents,

or

that

is

S&N has

but-for

not

demonstrated

material

such software was

to

the

that

the

'204

ESRI

and

'344

withheld during prosecution

of the '204 and '344 Patents with the specific intent to deceive
the

PTO.

Therefore,

demonstrated

that

the

Court

CertusView

concludes

committed

that

S&N

has

inequitable

not

conduct

related to the ESRI ArcPad software.

2. TelDig Utility Suite and TelDig Mobile
S&N

asserts

that

committed

inequitable

art

TelDig

the

Nielson,

conduct

Mobile

Patents-in-Suit.24

by

Chambers,

failing

software

Teja,

to

during

and

Farr

as

prior

disclose

prosecution

of

the

S&N asserts that the TelDig Mobile software

is material prior art because such product predated the priority

dates

of

"essential"

23

Indeed,

the

Patents-in-Suit

and

"salient"

sanctions

were

and

claim

already

is

capable

limitations

imposed

litigation misconduct on September 1, 2015.

on

of
of

meeting
the

CertusView

an

e-Sketch

for

its

ECF No. 364.

24 The Court notes that S&N appears to have abandoned its argument that
CertusView

intentionally

during prosecution of

the

withheld

the

TelDig

Patents-in-Suit.

At

Utility
trial,

Suite

product

S&N failed

to

introduce evidence of the TelDig Utility Suite product's capabilities
or use, much less any documentary evidence regarding such product.
Further, S&N's Post-Trial brief does not address the TelDig Utility
Suite product, discussing only the TelDig Mobile product.
Therefore,

as it has no evidence regarding the TelDig Utility Suite product to
consider, the Court cannot find that CertusView committed inequitable
conduct by intentionally withholding the TelDig Utility Suite product
from the PTO during prosecution of the Patents-in-Suit.

77

patents,

namely,

the ability to electronically record physical

locate marks on a digital image.25
Further,

S&N

asserts

that

Defs.' Post-Trial Br. at 6-9.

Nielsen,

Chambers,

Farr,

and

Teja

withheld such product during prosecution of the Patents-in-Suit
with

the

specific

intent

to

deceive

the

PTO.

In

response,

CertusView argues that S&N failed to demonstrate that the TelDig
Mobile

product

material.

that

is

prior

Finally,

CertusView

art

or

that

such

CertusView argues,

withheld

TelDig

product

was

but-for

S&N has not demonstrated

Mobile

prior

art

with

the

specific intent of deceiving the PTO regarding TelDig.
The Court finds that S&N has not demonstrated,

convincing

evidence,

that

CertusView

withheld

by clear and

material

TelDig

Mobile prior art with the specific intent of deceiving the PTO
during

prosecution

of

the

Patents-in-Suit.

First,

version of the TelDig Mobile product appears
and within CertusView's knowledge,
such

product

demonstrated

product,

was

but-for

that

or any

to be prior art,

And,

withheld

specific TelDig prior

second,

such

art

S&N

has

not

TelDig

Mobile

reference,

during

prosecution of the Patents-in-Suit with the specific
deceive

some

S&N has not demonstrated that

material.

CertusView

while

intent to

the PTO.

2S At trial, the element of "marking up a digital image"

was described

as "essential," by Chambers, Trial Tr. Vol. 2A at 291:3-11, and Teja
described the element of making a "digital representation of at least
one physical

locate mark"

the claims," Trial Tr.

Vol.

as

"one of

the

salient

2B at 379:21-380:3.

78

considerations

of

a. Materiality

At least some version of the TelDig Mobile product is prior
art

to

the

Patents-in-Suit

used by others

in this country"

Patents-in-Suit,
35

U.S.C.

because

35

U.S.C.

§ 102(a)

such product

16,

"known or

before the filing dates of the

§ 102(a)

(Mar.

was

(2006)

2013)),

or

(current version
such

product

was

at
"in

public use or on sale in this country" more than one year before

the Patents-in-Suit were
TelDig

Mobile

because it

is

with

which

the

A.B.

Chance

product

Stratoflex,
Cir.

filed,

falls

id.

§ 102(b).26

within

the

"'reasonably pertinent
[e-Sketch]

Co.,
Inc.

1983)).

234
v.

The

F.3d

was

654,

(Fed.

664

Corp.,

'344,

713

'341,

of

the

prior

art

the particular problem

invention

Aeroquip
'359,

to

scope

Further,

involved.'"

Cir.

F.2d

and

2000)

1530,

'204

Ruiz

(quoting

1535

(Fed.

Patents

claim

priority to a parent application filed on February 12, 2008,

the

and

'001 Patent claims priority to a parent application filed on

March 13,

2007.

Prior to

developing products
prevention,
the

v.

locate

those dates,

for infrastructure

TelDig was

involved in

intervention and damage

including products that aided in and contributed to
operation

field.

Chambers

participated

in

a

demonstration of TelDig products, including TelDig Utility Suite

26 The Court cites to a version of 35 U.S.C. § 102 that predates the
America Invents Act,

Pub. L. No. 112-29,

125 Stat.

284

(2013), because

each of the Patents-in-Suit claim priority to applications filed
before the effective date of the America Invents Act, March 16, 2013,
making the prior version of § 102 applicable to the Patents-in-Suit.

79

and TelDig Mobile,

in 2007.

Additionally,

information on

relevant market players

TelDig

Utility

Suite

2008,

indicating

and TelDig

that

and products,

Mobile,

information

the MIR sourced its
including

between May and June

regarding

the

products

discussed in the MIR was publicly available prior to May 2008.
Further,
Mobile

the

TelDig Mobile

product,

priority dates
TelDig

among
of

Mobile

on

849:12;

the

others,

was

indicates
being

Patents-in-Suit.

brochure's

testified that he

2006,

the

brochure

creation

Archive.

marketed

While
is

observed such document

Internet

Trial

that

the date

recorded,

Vol

Dymond's agreement

that

the

of

the
the

Zatkovich

on March 12,

4B

see also Trial Tr. Vol 5A at 1054:13-23

TelDig

before

unknown,

Tr.

the

at

848:11-

(explaining Dr.

TelDig Mobile brochure was

created

in the 2004 timeframe) .27
While a description of the full capabilities of the TelDig
Mobile

prior

art

product

was

not

introduced

at

trial,

the

evidence at trial indicates that such product includes some type

of "drawing editor" or drawing tool.

The MIR stated that TelDig

Mobile had a "[u]nique, easy-to-use drag-and-drop drawing module

27 While the TelDig Mobile brochure demonstrates that some version of
the TelDig Utility Suite and TelDig Mobile products,
of

TelDig Mobile's

drawing module,

are

prior

art

and some version

to

the

Patents-in-

Suit, S&N has not demonstrated that either CertusView or its patent
counsel received or reviewed such document prior to August 2, 2012.
Further, the Court need not address whether the TelDig Mobile brochure
is prior art because, as discussed below,
prior art, it is not material.

80

even

if

such document

is

with pre-formatted icons to send a layout of the dig and locate
site."

MIR at 77.

Additionally,

by spring 2008,

Chambers knew

that TelDig had a drawing tool that would allow a product user

to mark up a digital image to show a notification perimeter or

shape.28
TelDig

Trial Tr. Vol 2A at 283:19-24, 287:7-12.
Mobile

product

brochure

included

a

demonstrates

"drawing

that

editor,"

as

the

Further, the
TelDig

evidenced

by

Mobile
a

small

partial picture of such tool in the lower right-hand corner of
the document.
S&N,

TelDig Mobile Product Brochure, DX-294.

however,

TelDig Mobile
demonstrated

product
that

been

"blocked"

See

Ohio

Therasense,

has not demonstrated that any version of

if

Willow
649

Patents-in-Suit

is

but-for material

issuance

of

the

such product

Wood

F.3d

at

were

reduced

to

been provided

735

1291-92) .

F.3d

Even
the

if

The

record

information.

is
The

unclear
Court

regarding

notes

that

how

to

the

1345

the

claims
or

not
have

PTO.

(citing
of

the

"salient"

locate marks on a

Chambers

Chambers

would

at

"essential"

feature of electronically recording physical

28

S&N has

Patents-in-Suit

had

(2013),

because

the

did

learned
not

this

observe

a

demonstration of TelDig's drawing tool during the presentation he
participated in with TelDig in 2007.
Trial Tr. Vol. IB at 215:1216:10.
However, Chambers received additional information regarding
TelDig through CertusView's 2008 NDA and 2009 integration agreement
with TelDig.

81

digital image,29 S&N has not demonstrated that the TelDig Mobile
product was capable of making such electronic record.

Looking

specifically

to

S&N's

anticipation

evidence,

S&N

has not proven that the TelDig Mobile product anticipated every

element and limitation of any claim in the Patents-in-Suit.30
"Invalidation on

[grounds of

anticipation]

requires

that

every

element and limitation of the claim was previously described in

29 The Court notes that a prior art reference disclosing an essential
limitation of an invention may be material, even if a patent is not
found to be invalid based on such reference or no element-by-element
invalidity analysis is performed with respect to other limitations of
the asserted claims.

See Am.

Calcar,

Inc.

v.

Am.

Honda Motor Co.,

768

F.3d 1185, 1189 (Fed. Cir. 2014) (explaining that the PTO and courts
employ different evidentiary standards for claim construction, thus
"'even

if

a

district

court

does

not

invalidate

a

claim

based

on

a

deliberately withheld reference, the reference may be material if it
would
have
blocked
patent
issuance
under
the
PTO's
different
evidentiary standards.'" (quoting Therasense, 649 F.3d at 1291-92));
cf. Ohio Willow Wood (2016), 813 F.3d at 1359 (affirming district
court's finding that non-disclosure of letters discussing prior art
because
they
spoke
to
"the
dispositive
issue,"
were
material
corroboration).

30 At trial,

S&N appeared to be prepared to present evidence,

via

Zatkovich's expert
testimony,
that certain TelDig products were
material because, if such products had been provided to the PTO during
prosecution of the Patents-in-Suit,

the Patents-in-Suit would not have
issued on grounds of both anticipation and obviousness.
Trial Tr.
Vol. 4B at 846:20-847:4, 887:9-14 (discussing Zatkovich's obviousness

conclusion in his expert report).
However, Zatkovich only briefly
discussed obviousness, testifying almost entirely regarding the TelDig
Mobile product's anticipation of the e-Sketch product, or the TelDig
Mobile product's ability to perform the "essential" features of the eSketch invention, and did not introduce any additional evidence
regarding the obviousness conclusion that he disclosed in his expert
report.
Further, S&N's Post-Trial Brief does not argue that TelDig
rendered e-Sketch obvious.
Thus, S&N has not demonstrated that the
TelDig products would have blocked issuance of the Patents-in-Suit on

the basis of obviousness.

See Dome Patent L. P. , 799 F.3d at

1379-80

(Fed. Cir. 2015) (discussing the legal standard for demonstrating the
obviousness of a claim for the purpose of invalidating such claim);
supra n.21.
As such, the Court cannot find that the TelDig products
are material

on such a

basis.

82

a single prior art reference, either expressly or inherently, so
as

to place

a person of

invention."

1082

ordinary skill

Sanofi-Synthelabo v.

(Fed.

Cir.

2008)

Apotex,

(citations

evidence via Zatkovich,

in possession of
Inc.,

550

omitted).

F.3d

S&N

its expert witness,31

Vol.

4B

at

insufficient

850:16-851:25.

to

demonstrate

anticipated claim 1 of

the

Patents-in-Suit,

version or model of
TelDig
could

reference,
meet

that the TelDig

TelDig

Mobile

the

TelDig

Patent,

Zatkovich

evidencing

every

receive

'204

because

element

and

that

or

Instead,

opinion upon multiple
not

the

that

Mobile

brochure,

not

which

press

could

not

TelDig
of

into

CertusView

Mobile
claim

his

releases,

identify

product
in

the

anticipation

which

CertusView

evidence,

did

a

or a singular

a

based

entered

product

much less any claim of

limitation

Zatkovich

TelDig
were

the

Trial

Zatkovich's opinion is

the TelDig Mobile prior art,

Patents-in-Suit.

did

However,

1075,

presented

Mobile product anticipated claim 1 of the '204 Patent.32
Tr.

the

not

and

receive

the
or

31 The Court notes that it has only considered Zatkovich's testimony
for

the

purpose

of

determining

whether

the

TelDig

Mobile

product

anticipates the Patents-in-Suit, as Zatkovich did not apply the proper
test for determining but-for materiality and is not qualified to
determine whether
issuance

of

the

the

TelDig Mobile product was

Patents-in-Suit.

Trial

Tr.

Vol.

but-for material
4B at

to

880:14-883:18

(discussing Zatkovich's application of the "reasonable examiner" test
for materiality-a standard that predates the Therasense decision).

32 Zatkovich did not discuss at trial any specific claims within the
'359, '341, '344, or '001 Patents which he argues are anticipated by
the TelDig Mobile product, although certain portions of Zatkovich's
expert report regarding these patents was discussed during crossexamination.

83

review until

877:4.

2012.

Trial

For example,

Tr.

Vol.

4B at

853:13-855:18,

875:11-

Zatkovich relied on a TelDig press release

that stated "TelDig Mobile has the unique feature of being able
to

and

create

information
ticket,

handle

back

coming

useful

TelDig Mobile

dig

when

site
from

damages

brochure,

sketches

to

the

field

occurs,"
opine

which

precious

the

completed

with

in

that

become

combination

TelDig Mobile's

editor was able to record locate marks on the ground.
Vol.

with

the

drawing

Trial Tr.

4B at 895:12-23.

[W]e know that TelDig Mobile has
the ability to
complete
locator reports
which
include
marked up
sketches.
We know that.
It says that specifically in
the brochure.

We know that—and from that,

I used this

information to
say it necessarily has
locate marks, otherwise the[re] will not
information when damages occur.

to contain
be precious

Trial

Tr.

point

to

singular

Vol
a

4B

specific

TelDig

elements and

at

prior

896:2-8.33

However,

version

TelDig

art

limitations of

described and compare

of

reference,

Zatkovich could not

Mobile
in

which

prior
each

a single e-Sketch patent

such reference

against

art,
of

or
the

claim is

any claim in

the

33 The Court notes that it is skeptical of Zatkovich's interpretation
of the prior art references he relied on for his anticipation opinion,
particularly in light of Zatkovich's testimony that he did not possess
personal knowledge of how the TelDig products operate.
Trial Tr. Vol.
4B at 876:24-877:16, 879:8-880:6.
However, as Zatkovich was not able

to compare all elements and limitations of a single claim of the
Patents-in-Suit against a singular TelDig prior art reference, the
Court need not consider the efficacy of Zatkovich's partial comparison
at

trial.

84

Patents-in-Suit.34

Trial Tr. Vol. 4B at 897:4-901:24.

did not demonstrate

that

Thus,

S&N

the TelDig Mobile product anticipated

any of the claims of the Patents-in-Suit.
Further,

even

if

the

Court

limited

its

consideration

of

anticipation to the "essential" and "salient" claim limitations
included in claim 1 of the Patents-in-Suit,

that is, the ability

to

marks

electronically

image,

record

S&N has not

possessed

such

demonstrate

physical

demonstrated that

functionality.

that:

locate

(1)

the

a

digital

the TelDig Mobile product

At

TelDig

on

trial,

Mobile

S&N

drawing

failed

tool

had

resolution necessary to record locate marks on an image;

TelDig

Mobile

specific

product

geographical

mark; and (3)

had

the

ability

location

data

to

track

associated

the

(2)

the

and

with

to

record

a

locate

the TelDig Mobile product was capable of producing

the necessary locate data in a searchable electronic record.
First,

S&N

has

not

demonstrated

that

the

TelDig

Mobile

drawing tool had the resolution capabilities necessary to allow

a

locate

physical

technician
locate

to

make

mark.

a

The

digital
goal

of

representation
e-Sketch

of

was

a
to

3i Zatkovich testified that, while he could not point to a singular
TelDig reference that discussed all the elements and limitations of a
claim, he mapped at least one documentary reference, that he believed
described some aspect of TelDig Mobile, against each limitation of a
claim.
Trial Tr. Vol. 4B at 888:4-22.
However, as noted above, the
only TelDig document in evidence, or that CertusView was aware of and

reviewed, and that Zatkovich
TelDig Mobile brochure.

relied

85

upon

for

his

opinions,

is

the

electronically document

locate

operations

of specificity," Trial Tr. Vol.

"[w] ith a high

2A at 289:25-290:4,

can display an image "at six inches per pixel,"
4B at 783:11-18.
detailed

in

level

and e-Sketch

Trial Tr. Vol.

While e-Sketch's resolution capability is not

the

Patents-in-Suit

claims

of

inherently

the

Patents-in-Suit,

require

a

each

digital

image

of

to

the

be

displayed with "sufficient resolution"

such that a locate mark,

that

can be

is,

a small paint mark or flag,

image.

See

[input

images]

'204

Patent,

may

be

of

Col.

19:48-50,

sufficient

recorded on

PX-002

resolution

such

("Generally,

at

an

optimal

elevation to be useful as a record of the locate operation.");
'344

Patent,

19:58-61,
'001

Col.

PX-005

Patent,

7:55-58,

(same);

PX-004

PX-001

(same);

'359 Patent,

(describing

inventions

ground and record such locate marks

device).

specific

Patent,

Col.

7:54-56 (same); cf^
to

both

mark

the

for display on a separate

Additionally, S&N's expert agreed,

Court's question,

provide

Col.

'341

in response to the

that a record of a locate mark must be able to

information,

and

a

locate

mark

cannot

be

recorded on a "one mile by one mile square" basis or on a "one
block by one block square" basis.

Trial Tr. Vol. 4B at 856:24-

857:18; see Trial Tr. Vol. 5A at 926:14-927:11 (explaining that
"in order to be reasonably useful," the accuracy of a sketch
tool would need to be within "two to four feet").

86

Evidence
Mobile's
large

at

trial,

however,

indicates

that

TelDig

drawing tool has resolution sufficient to display a

geographic

area,

several

blocks

or

TelDig Mobile Product Brochure, DX-2 94

the TelDig Mobile "drawing editor").

testified

representative
products,

that

the

of

did not

TelDig's

sketching

have

the

more

in

size.

See

(displaying what appears

to be several square miles at "IX Zoom"

Farr

only

in a partial photo of

Further,

One

both Chambers and

Call

capabilities

capability

drawing

across

for a user

tool,

TelDig's
to

input

specific utilities, tie-downs, or landmarks on a highly specific
geographic

area,

because

the drawing

tool

was used

perimeter or shape on a large geographic area.

to show a

Trial Tr. Vol.

2A at 221:12-227:13; Trial Tr. Vol. 4A at 774:1-777:4; Email Re:

TelDig Systems - TelDig Web Drawing Tool Integration-vl 10.doc,

PX-057 (displaying an image of a three-block area in a drawing
tool used for TelDig's One Call product).35

In determining whether the TelDig drawing tool possessed sufficient
resolution capabilities, the Court does not consider the TelDig sketch
tool screen shots provided to CertusView with the Simone Affidavit in
October 2012,
DX-286.
First, the screen shots are undated and the

tool is part of a "highly customized version of Tel[D]ig that
offer[ed] special features to exceed [] contract requirements . . . ."
Trial Tr. Vol. 2B at 365:7-366:18; Affidavit of Louis A. Simone, DX286.

Further, upon viewing such screen shots, CertusView determined

that it had never seen such information, or drawings of "this ilk,"
before.

Trial Tr.

Vol.

2B at 366:5-369:21.

Thus,

based on the

evidence at trial, it appears that such screen shots do not accurately
represent the capabilities of the TelDig drawing tool prior art, much
less that CertusView was aware of such capabilities and withheld such
information from the PTO.

87

At

trial,

TelDig

Mobile

resolution

the

Court

to

Zatkovich provided

product
allow

a

could
user

the

display
to

only

an

record

image

with

a

locate

that

mark.

is unpersuaded by Zatkovich's

conclusion is uncorroborated,

testimony

the

sufficient
However,

testimony because

such

and Zatkovich came to such opinion

by inference based on a combination of multiple non-technical
press releases and the TelDig Mobile brochure.
4B at

853:13-855:18,

875:11-877:4.

Further,

Trial Tr. Vol.

Zatkovich did not

participate in any demonstration of TelDig Mobile product,

Trial

Tr. Vol. 4B at 876:24-877:8, did not speak to or contact anyone
at TelDig for information,

purchase
889:2-17.

or

use

Trial Tr. Vol.

TelDig Mobile

software,

4B at 879:8-880:6,

or

Trial

at

Tr.

Vol.

4B

Thus, S&N has not demonstrated that the TelDig Mobile

drawing tool could display an image with sufficient resolution
to allow for a digital representation of a physical locate mark.

Second,

product

had

geographical

S&N

the

that

not

demonstrated

ability

location

Patents-in-Suit.

requires

has

to

1

"geographic

of

track

as

data,

Claim

that

required

both

the

coordinates"

and

or

PX-003

(requiring

that

the

"data

TelDig

record

by

'359

associated with the individual locate marks.
18:4-12,

the

specific

certain
and

of

'001

"location

Mobile

Patents

data"

'3 59 Patent,
set

the

comprise[,

be

Col.
in

part,] a set of geographic points along a marking path of the at

least one underground facility,
88

the set of geographic points

including geographical coordinates corresponding to the at least
one physical locate mark . . .");
004

(requiring

information

relating

the system for electronically displaying

to

to

comprise

the

tool . . .").

requirements,
with

the

ticket,

by

use

the

Mobile
the

locate
added

Chambers

the

testified

is

individual

Trial Tr.

geographic coordinates

system

that,

in

locate

notes
Vol.

information

the

or

the

marking

contrast

marks

with

made

to

available
the

One

Call

data

to

the

Further,

drawing

(latitude and longitude)

locate

technician

4B at 854:9-855:17.

TelDig

such

and recorded

locate

location

locate

location data

or

associated

unless

additional

the

receive

geographical

product

explained,

to

marking

technician,

electronic record.

as

of

processor

specific

not with

personally

"a

Zatkovich

TelDig

the

'001 Patent, Col. 8:19-28, PX-

tool

uses

provided on the

locate ticket to pull up a map—not to record locate marks,

less

to

record

locate mark.

the

geographic

Trial Tr.

coordinates

associated

Vol. 2A at 221:5-20;

Finally,

both Chambers

location data

to track

a

TelDig
PX-057.

and Farr testified that the TelDig

Call drawing tool was not able
geographic

with

Email Re:

Systems - TelDig Web Drawing Tool Integration-vl 10.doc,

much

One

and record specific

for each locate mark because

sketches

completed with such drawing tool were saved in PNG format, which
has

"no

way

represented."

to

store

Trial

GPS

Tr.

coordinates

Vol.

2A

89

at

for

each

of

221:21-222:10;

the

lines

Trial

Tr.

Vol.

4A at 776:7-777:4.

TelDig

Mobile

Thus,

product

had

S&N has not demonstrated that the

the

ability

to

track

and

record

specific geographical location data, as required in the '359 and
'001

Patents.

Third,

S&N

has

not

demonstrated

that

the

TelDig

Mobile

product had the ability to create a searchable electronic record
capable of

recording the necessary locate operation data.

inventions

detailed

in

claim

1

of

the

'359,

'344,

The

and

'204

Patents each require that certain locate data be recorded in a
searchable

record of
PX-002

a

electronic

a

locate

Patent,

a

'204

"searchable

Patent,

Col.

"searchable electronic record"

representation of

Col.

or

operation."

(requiring the

"digital

manifest

17:53-18:21,

at

least

PX-003

one

electronic

34:52-35:9,
to include

locate mark");

(requiring

the

'359

"searchable

electronic record" to include a set of geographic points along a
marking

path,

technician,

property

name

of

address,

company responsible

operation,

and

ticket

(requiring

the

"searchable

image,
digital

Evidence

geographic

timestamp,

number);

location

representation of

at

'344

the

least

one

of

locate

for performing

locate

Col.

record"

dig

at trial demonstrated that

the

Patent,

electronic

of

name

to

area,

17:40-18:19
include

timestamp,

physical

locate

the TelDig Mobile

an

and

mark).

product

does not possess the capability to store such locate data in a
single "searchable electronic record."

90

Instead,

the evidence at

trial indicates that the TelDig Mobile product,

like the TelDig

One

in

Call

product,

saved

any marked

up

images

PNG

format,

which is an image or graphics file format.36

As Farr testified,

PNG

store

format

is

an

image

elements within it,

[or]

then

data

retrieve

776:7-25.

such

Instead,

images like a PNG

high

level

such,

GPS

Chambers

things,

to

recorded."

file,

unable

to

"individual

layer artifacts within [the]
in

a

search.

Trial

Tr.

image" and
Vol.

4A

at

"the only underlying data you can include in

[is]

information called EXIF data,

location

for

testified,

"store

GPS

Trial Tr.

the

PNG

picture

format

coordinates

Vol.

2A at

is
for

222:2-7.

which is a

itself . . . ."
unable,
each

As

among

of

Further,

other

the

lines

PNG format

is unable to "measure in pixel," making it impractical to verify
the

geographic

locate

marks

or

locational

included

in

a

accuracy
PNG

of

file.

digitally
Thus,

S&N

recorded
has

not

demonstrated that the TelDig Mobile product had the ability to
create a searchable electronic record meeting the limitations of
claim 1 of the '359,

'344, and '204 Patents.

36 Zatkovich presented the only evidence at trial disputing the TelDig
Mobile product's use of PNG format.
One Call used PNG format,
4B

at

872:20-873:9.

Zatkovich testified that TelDig

but TelDig Mobile did not.

Zatkovich,

however,

did

not

Trial Tr. Vol.
discuss

the

file

mechanism by which TelDig Mobile saves marked up images, and he
provided no documentary support for his assertion.
Additionally,
Zatkovich's reliability on this point is further undercut by his
failure to use, test, or investigate the TelDig Mobile product.

91

Additionally,
documents,

and

prosecution

the

Zatkovich's

of

other

issued

patents

fact

over

that

expert

e-Sketch

the

Teja

submitted

report,

patent

TelDig

to

the

PTO

applications,

references

and

TelDig
during

and

such

Zatkovich's

report, suggests that TelDig's products are not but-for material
with

respect

to

the

TelDig information,

Patents-in-Suit.

Having

reviewed

the examiner determined that such references

did not prevent issuance of other e-Sketch Patents.
S&N

has

not

demonstrated

which CertusView was

with TelDig,

that

TelDig

Mobile

product,

of

is but-for material to the Patents-in-Suit.

Finally,
to

the

Therefore,

aware from the MIR and its own interactions

b.

material

such

even
the

if

the

Intent

TelDig

Patents-in-Suit,

Mobile

S&N

has

product
not

was

but-for

demonstrated

that

the "'single most reasonable inference able to be drawn from the

evidence,'" see Therasense,

537

F.3d

at

1366),

during

prosecution

intent

to

is

deceive

649 F.3d at 1290

that

of

the

the

CertusView

PTO.

is

record that CertusView knew that the

material

and

information

that

from

the

withheld

Patents-in-Suit
There

CertusView
PTO.

(quoting Star Sci.,

with

scant

the

product
specific

evidence

in

the

TelDig Mobile product was

deliberately

Rather,

such

the

withheld

evidence

at

such
trial

demonstrates that CertusView did not submit TelDig prior art

to

the

it

PTO,

or

pass

on

TelDig

information

92

to

Teja,

because

believed TelDig to be inventing products in, and concerned with,
a

completely different

portion of

the

locate

operation

field:

ticket management and One Call center software.
In particular,
as

when Chambers

was

questioned by the Court,

to why he did not believe that the use of TelDig's products

transferred

to

CertusView's

e-Sketch

invention,

he

explained

that he, and others at CertusView,

thought TelDig products and

e-Sketch were "totally different."

Trial Tr.

Vol.

2A at 288:2-

8.

THE

COURT:

And

so what

was

the

distinction,

the

difference or the lack of transferability that caused
you to believe [TelDig] was not something about which
the Patent Office should be made known?

THE WITNESS [Chambers] : The use case is totally
different. From our perspective you've got a locator
in the field who is marking not only the facility
marks, they're documenting all the facility marks, but
they're also documenting the type of facility. Is it
an electric line? Is it a gas line? So generating the
APWA color codes are the standard across the country
for that. None of these tools, TelDig in particular,
had any way to convey color or utility type about the
facilities. And that's a major part, because there's a
lot of times where, if you're digging and there's a

water line or a sewer line, you can probably, if
you're not doing a deep hole, you can probably work on
top of that. So not having the ability to capture that
information, because it was for a totally different
use case,

we thought made it irrelevant.

THE COURT: So what was being done with the TelDig
Utility Suite

in

its

most

generic

and basic

form was

allowing somebody to indicate on a diagram or map of
some sort where the dig was going to take place?
THE WITNESS

[Chambers]:

93

That's correct.

THE COURT: And what you hoped to do with e-Sketch
to place marks showing what was going on at the

was

site with associated information?

THE

WITNESS

[Chambers]:

That's

correct.

With

a

high level of specificity.
THE COURT:
And so you felt it was different
because you didn' t feel that what was in the TelDig
Utility Suite was a subset of what you planned to do
with e-Sketch?

THE WITNESS

Trial

Tr.

Vol.

suggestion

deceive
Court,

that

the
Dr.

2A

[Chambers]: Correct.

at

289:2-290:8.

CertusView

PTO,

upon

Dymond

"redlining process"

possessed

being

also

asked

explained

Further
the

which differentiated

its

had

product

by

COURT:

When

you

say

that

these

that

editing the sketches refers to a redlining process
whereby the locator may use the proposed software to
edit the utility maps so that the maps more accurately
reflect
the
actual
location
of
the
underground
utilities, and here now you're suggesting that you
can't -- if I understand correctly, you can't use
that, or it's not intended to be used for placing
locate marks, the next question that comes to mind is,
well, why not? Why isn't [th] is analogous? If you

can't

[sic]

use it for redlining for utilities,

why

can't you use it for -- why shouldn't somebody have
known that you could also use it for placing locate
marks?
Are
you
saying
that
the
specificity
is
different with respect to the placing of locate marks

94

the
a

from what

Trial Tr. Vol.

sketches,

to

created

1058:2-1059:15.

THE

any

intent

questions

TelDig

the e-Sketch inventions were designed to do.
at

specific

similar
that

belying

5A

than with respect to correcting location of utilities

on the map?1371
THE WITNESS [Dr. Dymond]: I think there's two issues,
if I can answer you. I think one is, yes, I don't
think that the accuracy of the data and the software
are sufficient for doing two-inch paint marks. . . .
I think two, what the testimony is that we heard
before in that it was a .PNG file format, meaning it's
a picture format, is that we can't do lines with
coordinates.

I

think that's No.

2.

So what we can do,

though, is we can redline. We can put a circle around
this area on the map, we can put an approximation of
the line which is basically Windows Paint, if you
will. It's pixelated. We can put a little line with an
arrow to it and say you've got a line here we didn't
know about. So it's a redline, and it says we've got a
problem here and we send it back to the City of
Norfolk that says there is now a sewer line here that
we didn't know about, update your maps to make them
more

Trial Tr.

accurate.

Vol.

5A at 1060:12-1061:20.

CertusView

TelDig

software

employees

and

received

confidential

separate agreements with TelDig,

multiple

information,

evidence

at

trial

pursuant

to

of

two

which led them to conclude that

TelDig was not relevant or material to
The

demonstrations

indicates

a

its e-Sketch inventions.
similar

conclusion:

that

TelDig's products are concerned with a different portion of the
locate

operation

field.

It

is

on

this

basis

that

CertusView

withheld the MIR,

the discussion of TelDig within the MIR, and

the

product

TelDig Mobile

from Teja

and

the

PTO.

Thus,

based

37 The Court notes that the quoted portion of the trial transcript
accurately reproduces the Court's exchange with Dr. Dymond.
the Court misspoke on the record.
Therefore, the Court

However,
has here
placed a sic after "can't" because the Court should have said "can."

95

upon the evidence presented at trial,

and discussed above,

S&N

has not demonstrated that CertusView withheld TelDig information

from the PTO with the specific intent to deceive the PTO.
For

the

reasons

stated

while some version of
Patents-in-Suit,

the

above,

the

Court

concludes

that,

the TelDig Mobile product is prior art to
S&N has not demonstrated that such product

is but-for material to the Patents-in-Suit or that such product
was withheld during prosecution of the Patents-in-Suit with the
specific

intent

demonstrated

to

deceive

that

the

CertusView

PTO.

As

committed

such,

S&N

has

inequitable

not

conduct

related to the TelDig Mobile product.

B. Misrepresentation of Inventorship
1.

S&N

asserts

committed

that

inequitable

Farr

Nielsen,

conduct

by

Chambers,

submitting

Teja,

to

and

PTO

the

Farr

false

Inventor Declarations for the '204 and '341 Patents naming Farr
as

an inventor on the

such

'204 and

Inventor Declarations

are

'341 Patents.
false

because

S&N asserts
no

witness

that

"could

point with conviction to any contributions that would justify
naming

[Farr]

as

Defs.'

Post-Trial

an

inventor"

Brief

at

on

25.

the
S&N

'204

and

'341

further

Patents.

asserts

that

submitting such false Inventor Declarations was necessarily butfor material and such submission was done with intent to deceive

the

PTO.

In

response,

CertusView

96

argues,

first,

Farr

is

an

inventor of

to

prove

the

that

'204 and

the

CertusView argues,
S&N

with

has

not

the

Inventor

inventorship.38

Declarations

that

intent

are

false.

such Declarations

to deceive

failed

Second,

the

PTO

were

submitted

regarding

Farr's

The Court will address each argument in turn.

For the following reasons,

demonstrated

and that S&N has

even if the Inventor Declarations were false,

demonstrated

specific

'341 Patents,

that

Nielsen,

the Court finds that S&N has not

Chambers,

false Inventor Declarations for the

is a joint inventor,

Teja,

or

'204 and

Farr

submitted

'341 Patents.

with Nielsen and Chambers,

of the

Farr

'204 and

'341 Patents because he helped conceptualize and invent two of
e-Sketch's

marking

predecessor

components,

wand and Virtual

conceptualize

and

execute

WhiteLine
the

CertusView's

products,

"marriage"

WhiteLine and e-Sketch products.

electronic

and he helped

between

the

Virtual

The electronic marking wand

product is used by locate operators to capture the color of the

paint sprayed on the ground during a locate operation and the
precise location of such paint on the ground.

As noted above,

Farr is an undisputed inventor of the '001 Patent, which relates

to the electronic marking wand,
marking

wand patent,

the

and the original GPS enabled

'105 Patent.

The

Virtual

WhiteLine

CertusView does not appear to dispute that submission of a false

Inventor Declaration satisfies the but-for materiality standard
necessary for proof of an inequitable conduct claim.
As such, the
Court does not address the materiality of the Inventor Declarations
for the

'204 and '341 Patents.

97

product

is used

precision,
high

the

by excavators

area where

resolution aerial

above,

Farr

is

the

to show,

with

they intend to

image

of

a

undisputed

ticket

inventor

a high

dig

by

level of

marking up

location.
of

the

As

'117

related to CertusView's Virtual WhiteLine technology,

a

noted

Patent,

a priority

patent claimed by both the '204 and '341 Patents.
The

'204
and

Patent,

Patent

the

'204 Patent.
those
which

'341

The

figures,
Farr

is

a

Patent

and

relationship between

the

'117
the

Patent,

claims

from

'117 and

drawn

the

the

'204 Patent,
18-34

columns

base

Similarly,

'117

'117

18-34
from

the

the

Patent

the
'117

'204

a

'204

'204

Patent,

and

'204

and

the

from

(3)

In
the

certain

options

'204

'117 Patent,
claims

of

describing

from

of

Patent.

continuation-in-part

certain

the

conceptual

came

different

in

of

Patent.

Patent,

Patent,

'117

Patent—all

the

'204

included figures 9-16 from the
the

'117

the

reused

as

the

descriptions of

and

regarding

were

Patent,

the

of

Patent,

images,

'341

from

Patent
of

of

continuation-in-part

create—demonstrating

9-16

were

from

possible

figures

(2)

figures,

a

certain claims
to

(1)

is

'204 Patent borrowed figures,

helped

particular,

continuation-in-part

of

the

columns
both

the

Patents.

Farr also helped conceptualize and implement the "marriage"
of

the

Virtual

WhiteLine

others recognized the

and

e-Sketch

inventions.

Farr

and

direct relationship between documentation

98

created by an excavator in the Virtual WhiteLine product and its
communication

to

a

locator

similarities between the

via

the

integration

of

e-Sketch

product

and

two products and their "use[]

Trial Tr. Vol. 4A at 760:10-18.
to

the

the

In particular,

Virtual

saw

cases."

Farr contributed

WhiteLine

invention

and

e-

Sketch by recognizing that the ability to vary the base image,
on

which

product,

an

excavator

draw

using

the

could be transferred to e-Sketch,

draw on a

series

searchable

electronic

473:10

might

of

(explaining

images

and save

record.

Teja's

'204 and '341 Patents).

See

view of

Virtual

allowing a locator to

such altered

Trial

Tr.

Farr's

Additionally,

WhiteLine

Vol.

images

3A at

as

a

470:18-

contributions

to

the

Farr contributed to both

Virtual WhiteLine and e-Sketch inventions regarding the ability
to

import data from the electronic marking wand.

integration of

the

Virtual

WhiteLine

product

Further,

the

and e-Sketch was

largely coordinated by "Project Trinity," of which Farr was the
"team

lead."

In

November

2008,

the

implemented e-Sketch in Lawrenceville,
e-Sketch product for use.

the

Project

Georgia,

In December 2008,

team implemented e-Sketch in Marietta,
2009,

Project

Trinity

team

team

rolling out

the

the Project Trinity

Georgia,

implemented

Trinity

and, in February

e-Sketch

in

Forest

Park, Georgia.
Finally,
contributed to

the
the

evidence
specific

at

trial

limitations

99

demonstrated
and claims of

that
the

Farr
'204

and

'341

inventive

Patents.

process

With

was

respect

a

to

the

"collaborative

the

'204

every claim in the
made
input

specific
images,

Patent

the

'204

Patent.

which appears in each independent

and

is,

'204 Patent.

therefore,

Farr

inventive

contributions,

to

6,

claims

of

Farr's

Farr explained that he contributed the "at least

of

claim

and

Specifically,

limitation,

every

effort,"

the

may

claim

in

Patent,

contributions

one input image"

appear

'204

7,

8,

10,

a

limitation

on

also explained that

he

regarding
12,

the

and 14 of

specific
the

Patent:

In claim 8, my contribution is to the different types
of
maps
generally,
but
a
topographical
map
in
specific, which stemmed from our work that we had done
with Virtual WhiteLine and with another product of
mine called the OmniLoom which dealt with facility
records. We saw a need to have different types of
maps,
and
so
I
individually
contributed
the
topographical map to claim 8.

In claim 10, the facility map came directly from that
work with a product called OmniLoom which dealt with
facility records where we saw a benefit in adding
sketching on top of the facility records themselves as
a point of reference. So I contributed to claim 10.

In claim 12, where you see the at least one input
image that I mentioned earlier, I contributed to the
architectural construction and engineering drawings
that

stemmed from work with Virtual

WhiteLine

where we

worked with excavators who worked off of those types
of maps, and so I have individual contribution there.
And

in

claim

14,

I

have

individual

contribution

in

creating a grid system where you don't have a base map
yet the grid system can have a foundation to the
world,
to
the
real
world
location
by
having
a
geographic representation of that grid. . . .

100

'204

[I]n claim 6 it says, "The method of claim 1 wherein
the at least one input image comprised of a scan or
converted manual freehand sketch of the geographic
area." I contributed to the at least one input as I
had

mentioned

across

collaborative

other

claims,

contribution

to

as

the

well

as

converted

I

had

manual

freehand sketch.

And in claim 7 it's carrying from claim 1, says, "One
map of the geographic area, which is generally the map
of

the

that,

area."

Trial Tr.

Vol.

in-part of the

collaborative

included

therefore,

in
a

to the

'341 Patent,

'204 Patent,

contributed the

Farr

had

contribution

"at
all

contributions

Farr explained that he specifically
image"

of

the

the

that

to

which is a continuation-

least one digital

contribution

explained

claims

claims
to

he
8,

of

each

also
13,

'341

claim

of

made
and

21

limitation,
Patent

the

specific
of

the

is,

Patent.

inventive

'341

Patent,

Regarding

Farr contributed to "using the location identification

unit which includes

that alternative

triangulation ... to select at

display."
Farr

which

and

'341

related to his work with the electronic marking wand.
claim 8,

to

3B at 675:14-677:11.

With respect

is

I

as well.

location capability,

least one

Trial Tr. Vol 4A at 767:16-21.

explained

that

his

contribution

was

digital

the

image for

Regarding claim 13,
based

on

his

work

developing the electronic marking wand, the "GPS-enabled marking
device"

mentioned

768:6.

Finally,

in

claim

13.

Trial

Tr.

Vol.

4A

at

767:22-

claim 21 is the apparatus designed to perform
101

the inventive method discussed in claim 8.

Farr contributed

to using

discussed in claim 8,

the

Regarding claim 21,

"location identification unit,"

and to the apparatus used to select the

one digital image specifically discussed in claim 21.
Vol

Trial Tr.

4A at 768:7-13.

Thus,

considering Farr's

wand

and

'117

Patent,

Virtual

Virtual

WhiteLine

Farr's

WhiteLine

contributions

and

to

as

an

to

contributions
dimensions

state of

and

Farr
'204

'341

made

and

full

a

'341

significant

integrating

the

and

Farr's

Patents,

specific

the

sufficiently

Patents.

when

invention,

to well-known

that

regarding

because

the

his

Farr's

incomplete.

appeared

and

the

and

products,

of

Inventor

'204 and '341 Patents did not falsely name

added

argues

testimony

times,

the

inventorship

Further,

measured
and

significant

against

such

concepts

Farr's

the

contributions

and

the

current

not

credit

Farr's

the

'204

the art.

S&N

Patents

were

of

improved on

the

his

conceptualizing

'204

inventor.

contribution

with the electronic marking

products,

e-Sketch

the

Declarations for the
Farr

work

work

confused

Defs.'

and

Court

should

contributions

testimony

to

was

at

ultimately the Court found his testimony,
other witness,

contradictory

Post-Trial Br. at 25-26.

uncertain

times

and,

'341

at

While Farr

during

trial,

uncontradicted by any

regarding his contributions to the

102

and

'204 and

'341

Patents

to

be

Additionally,

the

consistent

Court

and

notes,

sufficiently

the

apparent

credible.

miscommunication

between CertusView's counsel and Farr regarding Farr's inventive
contributions

to

the

'204

and

'341

Patents,

rather

than

intent to mislead the Court,

appears to be

the cause of

initial

regarding

specific

confusing

testimony

the

an

Farr's

claims

to

which he contributed.

Second,
'204

and

even

if

Farr

'341 Patents,

was

misnamed

as

an

inventor

on

the

S&N has not demonstrated that misnaming

Farr as an inventor was done with the specific intent to deceive
the

PTO.

The

evidence

through Nielsen,
determining

at

Chambers,

inventorship

trial

demonstrated

that

CertusView,

Crawford,

and Teja, had a process for

for

Patents-in-Suit,

the

including

tracking idea submissions and software development and a claimby- claim determination of who should be named as an inventor on
a patent.

Trial

610:17-611:6.

regarding

Tr.

Vol.

CertusView

inventorship,

3A at

was

and

reflect the advice of counsel.
Farr,

or CertusView,

459:16-460:22;

also

advised

the

Inventorship

Further,

by

Trial

patent

Tr.

Vol.

counsel

Declarations

it does not appear that

had a motive for deceiving the

PTO because

Farr did not financially benefit from being named as an inventor
of

the

'204 and

S&N argues
and

'341 Patents.

that misnaming Farr as

an inventor of

the

'204

'341 Patents is analogous to the case of Advanced Magnetic

103

Closures,

Inc. v. Rome Fastener Corp.,

607 F.3d 817

(Fed. Cir.

2010), in which the Federal Circuit held that a patent applicant

committed inequitable

conduct

when he

invented

As

Advanced

a

device.

the

predates the Therasense decision, and,

falsely claimed that he
Magnetic

thus,

limited applicability in the

Court

to

disagree

with

(describing

the

standards).

S&N's

Following

whether

the

instant

pre-Therasense
the

applicant's

See

at

and

decision,

in Advanced

leads

id.

materiality

Therasense

conduct

the opinion is
which

case,

assessment.

case

relies on a lower

standard for evaluating materiality and intent,
of

Closures

it

829-30
intent

is

Magnetic

the

unclear

Closures

would satisfy the heightened standard for materiality and intent
necessary to prove a claim of inequitable conduct.
Further,

were

even

applicable,

distinguishable
Federal

the

the
from

Circuit

the applicant,

if

Advanced

applicant's
the

present

Magnetic

actions

in

facts.

affirmed the district

Closures

that

case

are

example,

For

court's

decision

the

determination that

the only inventor named in the patent,

evidenced

deceptive intent because

(1) Mr. Bauer was either 'unable or
articulate
[his]
claimed
invention'
deposition, directing opposing counsel
patent;

(2)

[]

Mr.

Bauer

offered

unwilling to
during
his
to read the

difficult-to-follow

explanations of the magnetic strength experiments he
performed when he claimed to have conceived of the
invention;
(3)
[]
Mr.
Bauer
submitted
multiple
sketches

admit

of

were

his

invention

that

'reconstructed'

104

he

was

after

forced

[the

to

later

defendant]

challenged their authenticity; (4) [] Mr. Bauer could
not offer any 'scientific or technical explanation' of
his own patent, even though the
'only allegedly
patentable' claim is based on scientific principles of
magnetism; and (5) [] Mr. Bauer offered an evasive,
argumentative, and at times contradictory testimony on
his status as

Id.

at

830

inventor.

(quoting Advanced Magnetic

Fastener Corp.,

No.

July 17,

(unpublished)).

2008)

explained,

98cv7766,

and demonstrated,

electronic

marking

2008

WL

Closures,
2787981,

By contrast,

Inc.
*7-9

v.

Rome

(S.D.N.Y.

Farr ultimately

his contributions to CertusView's

wand,

Virtual

WhiteLine,

and

e-Sketch

technologies and the relationship between such technologies and
the patents claiming such inventions, including the Patents-inSuit.

at

had

Further,

the Court notes that Farr's inventorship was not

issue at the

not

yet

alleged

inventor of the

credit

during
"to

Trial Tr.

3B

to

the

Vol

deposition in August 2014,

Farr

to

his

list

Thus,

specific

[his]

667:17-668:8

difference

improperly

deposition

articulate
at

was

'341 Patents.

inability

unwillingness

as

that

'204 and

Farr's

contributed

time of his

between his

named

claimed

an

to

an

which

inability

invention."

(detailing Farr's
deposition

as

the Court does not

claims

as

as S&N

he

or
See

explanation

testimony and his

trial testimony).
The

CertusView

and

Court

finds

submitted

'341 Patents.

that

false

Further,

S&N

has

Inventor

not

demonstrated

the

'204

S&N has not demonstrated that,

even

105

Declarations

for

that

if

CertusView

had

submitted

false

Inventor

Declarations,

such

Declarations were submitted with the specific intent to deceive
the

PTO.

Therefore,

S&N has

conduct

committed inequitable

not

demonstrated

regarding

that

Farr's

CertusView

inventorship of

the '204 and '341 Patents.39
2.

S&N

asserts

committed

inequitable

Inventor

omitting

Patents

for

the

of

S&N

the

submission

response,

he

as

by

the

an

'359,

was
was

CertusView

Block was
and

an

that

known

that

with

argues,

of

the

as

first,

Inventor

the

'359,

false

and

'341

patents.

S&N

the

'204,

source

such

false

material

S&N
'344,

Declarations

and

code

including

Post-Trial

deceive

that

PTO

'344,

e-Sketch,

to

Farr

'204,

'359,

but-for

and

the

such

Defs.'

intent

inventor of
the

'344,

submitting

necessarily

done

to

the majority of

invention.

asserts

Teja,

submitting

inventor

wrote

product

e-Sketch

further

Declarations

Patents

Block

because

software

features

that

for

Chambers,

that Block was an inventor of

'341

24.

Nielsen,

conduct

Declarations

Patents,
asserts

that

Block

Brief

PTO.

failed
'204,

submitted

at

Inventor

and

the

key

such
In

to prove
and
with

'341
the

39 CertusView further asserts that, even if inventorship was incorrect,
the proper remedy is correction of such error pursuant

to 35 U.S.C.

§ 256—not a finding of inequitable conduct.
However, as the Court has
determined that Farr was not incorrectly named as an inventor of the
'204

and

'341

Patents,

the

Court

argument on this point.

106

need

not

address

CertusView's

'359,

'344,

'204,

CertusView argues,
S&N

has

with

not

the

and

'341

Patents

were

false.

Second,

even if the Inventor Declarations were false,

demonstrated

specific

that

intent

such

Declarations

to deceive

were

submitted

the

PTO

regarding Block's

has

not

demonstrated

inventorship.40
First,

Nielsen,

the

Court

Chambers,

Declarations

for

finds

Teja,
the

omitting Block as

Block

development
invention.

conception

not,

the

Farr

the

the

submitted

'344,

'204,

S&N has

'359,

'344,

portions

in

Instead,

of

S&N

an inventor.

developed
does

or

'359,

Block is an inventor of

While

that

of

evidence

e-Sketch

and

not
'204,

'341

and

trial

invention

took

Patents,

that

'341 Patents.

software,

constitute

at

Inventor

demonstrated

e-Sketch

this matter,

false

that

such

conception or

demonstrates

place

before

that

Block

began work at Dycom and CertusView.

As noted above,
2006,

during

Locator

the

2007

participants

conception of the e-Sketch product began in

work

of

Nielsen

program.
met

for

The

the

and

Chambers

Virtual

first

time,

on

Locator

Virtual

2007

project

and

Chambers

and Nielsen

presented their research to the group,

the

in October 2006.

During

that meeting, Chambers recorded ideas related to the original e-

40 As discussed above,
submission

of

a

false

materiality standard,
of

the

Inventor

CertusView does not appear to dispute
Inventor

Declaration

satisfies

the

that

but-for

and the Court does not address the materiality

Declarations

for

Patents.

107

the

'359,

'344,

'204,

and

'341

Sketch

inventions

by

taking

notes

of

photographing a white-board session.
trial,

the

notes

correspond

Patents

to

and

and

the

elements

describe

manifest."

records

the

Conception

of

of

of

the

proceedings

and

As Chambers described at
that

claim

concept

the

October

1

of

a

of

"searchable

e-Sketch

the

2006

meeting

'359

and

'344

electronic

invention

continued

through a series of meetings regarding the Virtual Locator 2007
project,

discussions

with

an

attorney

regarding

electronic marking wand and e-Sketch inventions,

the

e-Sketch

concept

through

pilot

Maryland.

Nielsen and Chambers

conception

of

discovered

a

ground

with

the

e-Sketch

means

by

explained

product

in

they

could

which

specificity

programs

and

accuracy

in

April

Florida

and

they completed

2007,

display

a

the

and testing of

that

using

patenting

when

paint

Garmin

on

they
the

running

watch and Google Earth map.

Block

began

work

as

a

contract

employee

with

Dycom

and

CertusView in September 2007, almost a year after conception of
the

e-Sketch

invention began.

Block added to,
and

Chambers

or modified,

between

Block was asked,
Sketch product
prepared

a

October

the

concepts

2006

and

of

employment.

requirements

In
and

implementation of the e-Sketch invention,

108

that

detailed by Nielsen

April

by Chambers and Nielsen,

during his
set

S&N presented no evidence

2007.

Instead,

to implement the eparticular,

Chambers

specifications

for

see Dycom Industries,

Inc. System Requirements Specification for Locating eSketch,

DX-

041,

the

and

Block

followed

those

requirements.

During

beginning of his work with Dycom, Block explained that he had to
overcome

his

lack

of

familiarity

with

the

locate

order to perform the tasks assigned to him.

48:25-49:16.
electronic

Block further explained that

manifest,

manifest,

and

presented

to

drawing
him by

107:17-109:19.

on

any

incorporating

of

on

Nielsen.

Finally,

the

such

a

an

Block Depo.

the

in

Block Depo.

image

the

Tr.

at

of

an

into

field,

at

in

Tr.

concepts

satellite

image

industry

the

were

46:12-48:2,

Block does not claim to be an inventor

Patents-in-Suit,

and

no

witness

presented

testimony that Block was an inventor on any claim of the '359,
'344,

'204,

or

'341

Patents.

Block,

however,

did

provide

inventive contributions on other CertusView e-Sketch patents and
he

is named

as an

inventor

on such

patents,

namely

the

'980

Patent which claims inventions related to revision layers.
Second,

the Court finds

named as an inventor of the
S&N has

not

demonstrated

that even if Block should have been

'359,

that

'344,

'204, or '341 Patents,

Block was

omitted as

with the specific intent of deceiving the PTO.
no evidence
inventor.

an inventor

S&N has provided

that CertusView intentionally omitted Block
To

the contrary,

as explained above,

as an

CertusView and

Teja had a well-established process for accurately determining
and representing patent inventorship.

109

Additionally,

CertusView

did not
this

have

a motive

matter.

omitting
named

Neither

Block

as

an

to misrepresent

as

an

inventor

Block

nor

Block's

CertusView

inventor,

and

in

patents,

other

inventorship in

Block,

benefitted

when

did

he

not

was

from

later

receive

any

financial benefit from his status as an inventor.

Therefore,

S&N

submitted false
or

'341

if

CertusView

has

not

demonstrated

Inventor Declarations

Patents.

Further,

had

S&N has

submitted

false

for

not

the

that
'359,

demonstrated

CertusView
'344,

'204,
even

Declarations,

Inventor

that,

such

Declarations were submitted with the specific intent to deceive
the

PTO.

As

such,

S&N

has

not

demonstrated

that

committed inequitable conduct regarding Block's

CertusView

inventorship of

the '359, '344, '204, or '341 Patents.41
C. Material Misrepresentation of Prior Art

Finally,

S&N asserts that Nielsen,

Chambers,

and Teja made

material misrepresentations to the PTO concerning the Sawyer and
Tucker

references

Specifically,

S&N

during

argues

prosecution

that

Teja

of

made

the

a

'344

Patent.

material

factual

misrepresentation to the PTO in the February 13, 2012 Amendment
and Reply by stating that

the concepts of a "locate operation"

41 CertusView also asserts that,

even if inventorship was incorrect,

the proper remedy is correction of such error pursuant to 35 U.S.C.
§ 256—not a finding of inequitable conduct.
However, as the Court has
determined that Block was not incorrectly omitted as an inventor of
the

'359,

'344,

'204,

or

'341

Patents,

CertusView's argument on this point.

110

the

Court

need

not

address

and "locate ticket" were "completely absent from the cited prior
art references."
First,

In response,

CertusView

inequitable

conduct

argument[s]

that

argues

teachings

fact,

of

that

allegations

the

Tucker

but

CertusView raises three defenses.

amended
and

rather

S&N
on

this

claims

Sawyer

not

to

issue

were

were

good-faith

failed

prove

because

patentable

its

"Teja's
over

the

misrepresentations

arguments

for

of

patentability

distinguishing the amended claims over the teaching of the prior
art."

CertusView's

Post-Trial

Br.,

107,

ECF No.

516.

Second,

CertusView argues that S&N has not demonstrated that the alleged

misstatements regarding Tucker and Sawyer were but-for material.
Finally,
such
the

CertusView

statements
PTO.

The

argues

were

made

Court

that

S&N

with

will

has

the

address

not

demonstrated

specific
each

intent

of

to

that

deceive

CertusView's

three

defenses in turn.

First,

the

Court

finds

that

S&N

has

not

Teja's statements in the February 13, 2012
are
that

factual
the

misrepresentations.

concepts

of

a

"locate

Instead,
operation"

demonstrated

that

Amendment and Reply
Teja's
and

statements,

"locate

ticket"

are "completely absent from the cited prior art references," are

a reasonable,

albeit

somewhat

inartful,

attempt

to distinguish

the teachings of Tucker and Sawyer from the claims of the

'344

Patent.

with

As

advocating,

explained
in

good

above,

faith,

a

"[t]here
reasonable

111

is

nothing

wrong

interpretation

of

the

teachings of the prior art."

(citing

Rothman,

556

Apotex Inc.,

F.3d at

particularly in light of the
Nielsen

and

Teja

on

763 F.3d at 1361-62

1328-29).

Teja's statements,

examiner interview conducted by

December

6,

2011,

discussing

information presented in the February 13,

Reply,

[such]

argument[s]

in favor

Teja is "free to

of patentability

fear of committing inequitable conduct."

same

2012 Amendment and

are examples of "attorney argument."

present

the

Rothman,

without

556 F.3d at

1329 (citing Young, 492 F.3d at 1348).
Second,

the Court finds that even if Teja's statements were

misrepresentations,
statements

Patent.
'344

were

Instead,

Patent

S&N

but-for

has

not

material

demonstrated

to

the

issuance

that
of

the

such
'344

the Examiner's Notice of Allowability for the

indicates

that

the

'344

Patent

issued

distinct from the alleged misrepresentations.

for

reasons

Specifically,

the

Notice of Allowability stated that none of the prior art taught
(1)

the

conventional

locate

digital

representation

applied

to

locate

operation,

the

"electronically
searchable

of

ground"
and

transmit

electronic

operation;

at

by

least

the

(2)

"at

physical
technician

locate

History,

29,

PX-234.

The

112

Notice

mark
the
to

store

operation

performance of the locate operation is verifiable."
File

locate

one

during

electronically
the

least

interface

communication

and/or
of

one

locate

the

record

and

of

so

the
that

'344 Patent
Allowability

demonstrates that it is the '344 Patent's additions to the prior

art locate operation that caused the '344 Patent to be allowed.
Further,

the

record of

Examiner

prior

references,

art,

which

Bitar

access

including

repeatedly

locate operations.
Examiner

had

to,

the

and

Tucker,

discussed

issue

two

Patent.

The patent prosecution file

thoroughly

whether

were

reviewed

rejections

such,

the

concepts

the

Examiner

of

"locate

"completely absent"

alleged
L.L.C

at

separate

As

*20

misstatements
v.

the

Examiner's

Tex.

of

their

Feb.

capable

21,

No.

or

Evans

prior

and

in

of

art

Sawyer

the

'344

determining

"locate

See

4:09cvl827,

2012)

and

ticket"

and according

weight.

the

WesternGeco

2012 WL 567430,

(explaining

reliance on the

independent

claims

operation"

proper

full

in addition to others,

the

was

a

indicates that

Tucker

from the prior art

ION Geophysical Corp.,

(S.D.

Sawyer,

conventional

references and relied on such references,

to

considered,

prior art

that
in

"[t]he

this

case

makes clear that any alleged misrepresentation by Roebuck cannot
have been the but-for cause of the patent's issuance").

Third, the Court finds that even if Teja's statements were
material misrepresentations,
statements

were

PTO.

noted

As

made

evidence standard,
single

most

with

above,
the

reasonable

S&N has not demonstrated that such
the

"[t]o

specific

meet

the

intent

clear

to

deceive

and

convincing

specific intent to deceive must be
inference

113

able

to

be

drawn

the

from

'the
the

evidence.'"
537
most

F.3d at

1366).

reasonable

Teja made

PTO.
made

Therasense,

the

S&N has

inference

not

to

be

the Court finds

alleged

reasonable

F.3d at

drawn

argument,

(quoting Star Sci. ,

in

this

that

the

matter

single
is

that

to mislead and deceive

it to be more

misstatements

attorney

1290

demonstrated

alleged misstatements

Instead,
the

649

for

the

the

likely that Teja

purpose

distinguishing

of

the

making

Tucker

a

and

Sawyer references from the claims of the '344 Patent.
Therefore,
the

Tucker

the Court finds that Teja's statements regarding

and

Sawyer

references

in

the

Amendment and Reply during prosecution of

not misrepresentations,
"reasonable
Apotex

1328-29).

763

F.3d at

Further,

the

'344

but are attorney argument,

interpretation of

Inc.,

February

the

teachings

1361-62

of

2012

Patent,

are

advocating a

the prior art."

(citing Rothman,

such statements are

13,

556

F.3d at

not but-for material

to

the issuance of the '344 Patent and they were not made with the
specific

intent

demonstrated

to

that

deceive

the

CertusView

PTO.

As

committed

such,

S&N

inequitable

has

not

conduct

related to Teja's statements regarding Tucker and Sawyer.
VIII.

For

the

Defendant's Rule

reasons
52(c)

CONCLUSION

discussed

above,

Motion is DENIED,

Plaintiff/Counter-

and Plaintiff/Counter-

Defendant's remaining Motion in Limine,

ECF No.

Further,

Motion

Plaintiff/Counter-Defendant's

114

436,
to

is DENIED.

Enforce

the

Court's

Memorandum

Order,

ECF

Plaintiff/Counter-Defendant's
Plaintiffs'

With
judgment
Second

for

Answer

discussed above,

entered

in

529,

favor

inequitable

and

GRANTED

Defendants/Counter-

conduct,

Counterclaim,

and

are OVERRULED.

ECF

such counterclaim

the five grounds alleged.
be

ECF No.

to

is

Defendants/Counter-Plaintiffs'

counterclaim

Amended

reasons

to

4 94,

Objections

Post-Trial Brief,

respect

No.

is

declaratory

asserted
No.

336,

DENIED

on

in

its

for

the

each of

It is therefore ORDERED that judgment
of

Plaintiff/Counter-Defendant

Defendants/Counter-Plaintiffs'

as

to

declaratory judgment counterclaim

for inequitable conduct.

The
Order

to

IT

Clerk is REQUESTED
all

IS

SO

counsel

of

to send a copy of

this Opinion and

record.

ORDERED.

'imi&y

/S/
Mark
UNITED

Norfolk,

Virginia

August <^w , 2016

115

STATES

S.

Davis

DISTRICT

JUDGE