Regents of the University of Minnesota v. AT&T Mobility LLC
U.S. District Court, District of Minnesota
Regents of the University of Minnesota v. AT&T Mobility LLC
Trial Court Opinion
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
REGENTS OF THE UNIVERSITY OF
MINNESOTA,
Plaintiff,
v.
AT&T MOBIILITY LLC,
Defendant Civil No. 14-4666 (JRT/TNL)
ERICSSON, INC., AND NOKIA OF AMERICA
CORP.,
Intervenor- Defendants
REGENTS OF THE UNIVERSITY OF
MINNESOTA,
Plaintiff,
v.
SPRINT SOLUTIONS, INC. AND SPRINT
SPECTRUM L.P.,
Civil No. 14-4669 (JRT/TNL)
Defendants,
ERICSSON, INC., NOKIA OF AMERICA
CORP., AND NOKIA SOLUTIONS AND
NETWORKS US LLC,
Intervenor- Defendants
REGENTS OF THE UNIVERSITY OF
MINNESOTA,
Plaintiff,
v.
T-MOBILE USA, INC., Civil No. 14-4671 (JRT/TNL)
Defendant,
ERICSSON, INC., NOKIA OF AMERICA
CORP., AND NOKIA SOLUTIONS AND
NETWORKS US LLC,
Intervenor- Defendants
REGENTS OF THE UNIVERSITY OF
MINNESOTA,
Plaintiff,
v.
CELLCO PARTNERSHIP D/B/A VERIZON Civil No. 14-4672 (JRT/TNL)
WIRELESS,
Defendant,
ERICSSON, INC., ALCATEL-LUCENT USA
INC., AND NOKIA OF AMERICA CORP.,
Intervenor- Defendants
MEMORANDUM OPINION AND ORDER ON MOTIONS FOR SUMMARY JUDGMENT
Aamir Abdulqader Kazi, FISH & RICHARDSON, PC, 1180 Peachtree Street
Northeast, Atlanta, GA 30309; Conrad A Gosen, FISH & RICHARDSON, PC,
60 South Sixth Street, Suite 3200, Minneapolis, MN 55402; Frank E.
Scherkenbach, Lawrence K. Kolodney, Whitney Reichel, and Daniel Haran
Wade, FISH & RICHARDSON, PC, One Marina Park Drive, Boston, MA 02210;
John-Paul Robert Fryckman, FISH & RICHARDSON, PC, 12860 El Camino
Real, Suite 400, San Diego, CA 92130; Katherine D. Prescott, FISH &
RICHARDSON, PC, 500 Arguello Street, Suite 400, Redwood City, CA 94603;
Brian J. Slovut and Carrie Ryan Gallia, OFFICE OF THE GENERAL COUNSEL
FOR THE UNIVERSITY OF MINNESOTA, 200 Oak Street Southeast, Suite 360,
Minneapolis, MN 55455; William R. Woodford, AVANTECH LAW, LLC, 80
South Eighth Street, Suite 900, Minneapolis, MN 55402, for plaintiff;
Barbara P. Berens, Kari S. Berman, and Carrie L. Zochert, BERENS & MILLER,
PA, 80 South Eighth Street, Suite 3720, Minneapolis, MN 55402; Benjamin
Hershkowitz, Josh A. Krevitt, Laura Corbin, and Robert Scott Roe, GIBSON,
DUNN & CRUTCHER LLP, 200 Park Avenue, New York, NY 10166; Neema
Jalali, GIBSON, DUNN & CRUTCHER LLP, 555 Mission Street, Suite 3000, San
Francisco, CA 94105; Yeepay Audrey Yang, GIBSON, DUNN & CRUTCHER
LLP, 2001 Ross Avenue, Suite 2100, Dallas, TX 75201, for defendant AT&T
Mobility LLC;
David E. Finkelson and George Brian Davis, MCGUIRE WOODS LLP, Gateway
Plaza, 800 East Canal Street, Richmond VA 23219; Jason W. Cook, MCGUIRE
WOODS LLP, 2000 McKinney Avenue, Suite 1400, Dallas, TX 75201; John A.
Cotter and John Anders Kvinge, LARKIN HOFFMAN DALY & LINDGREN, LTD,
8300 Norman Center Drive, Suite 1000, Minneapolis, MN 55437; Karen D.
McDaniel, TAFT STETTINIUS & HOLLISTER LLP, 2200 IDS Center, 80 South
Eighth Street, Minneapolis, MN 55402, for defendants Sprint Solutions, Inc,
Sprint Spectrum, LP, T-Mobile USA, Inc.;
Frank C. Cimino, Jr., Jeffri A. Kaminski, and Leslie A. Lee, VENABLE LLP, 600
Massachusetts Avenue Northwest, Washington, DC 20001; 55437; Karen D.
McDaniel and Mark G. Schroeder, TAFT STETTINIUS & HOLLISTER LLP, 2200
IDS Center, 80 South Eighth Street, Minneapolis, MN 55402, for defendant
Cellco Partnership d/b/a Verizon Wireless
Casey Lynne Shomaker, Jonathan Nathanial Powers, Nicolas M. Mathews,
Alexander Jefferson Chern, and Warren H. Lipschitz, I, MCKOOL SMITH, PC,
300 Crescent Court, Suite 1500, Dallas, TX 75201; Kevin Hess, MCKOOL
SMITH, PC, 303 Colorado Street, Suite 2100, Austin, TX 78701; Steven
Peters, MCKOOL SMITH, PC, 1999 K Street Northwest, Suite 600,
Washington, DC 20006; Karen D. McDaniel, O. Joseph Balthazor, Jr., and
Michael M. Lafeber, TAFT STETTINIUS & HOLLISTER LLP, 2200 IDS Center,
80 South Eighth Street, Minneapolis, MN 55402; Theodore Stevenson, III,
ALSTON & BIRD LLP, 2200 Ross Avenue, Suite 2300, Dallas, TX 75201, for
defendant-intervenor Ericsson, Inc.
Brianne Straka, David Aaron Nelson, Marc Lawrence Kaplan, Nathaniel
Andrew Hamstra, Athena Diane Dalton, Harrison Rose, Rajat Khanna and
Stephen Andrew Swedlow, QUINN EMANUEL URQUHART & SULLIVAN,
LLP, 191 North Wacker Drive, Suite 2700, Chicago, IL 60606; Eva N.
Edmonds, QUINN EMANUEL URQUHART & SULLIVAN, LLP, 111 Huntington
Avenue, Suite 520, Boston, MA 02199; Jonathan A. Strauss, Christopher
Proczko, and Sonia L. Miller-Van Oort, SAPIENTIA LAW GROUP PLLC, 120
South Sixth Street, Suite 100, Minneapolis, MN 55402; Karen D. McDaniel,
TAFT STETTINIUS & HOLLISTER LLP, 2200 IDS Center, 80 South Eighth
Street, Minneapolis, MN 55402, for defendant-intervenors Nokia of
America Corp. and Nokia Solutions and Networks US LLC;
Plaintiff Regents of the University of Minnesota (“Regents”) filed this action against
Defendant cellular network companies (“Defendants”), claiming infringement of various
patents related to cellular data transmission technology. The parties have filed four
separate motions for summary judgment, many of which contain multiple discrete issues.
The Court will hold that the Ming PCT patent is not prior art but nonetheless allow
Defendants to rely on the Ming US application for their prior art arguments. As to the
original patent dispute, the Court will conclude that even though the rule applies to
narrowing reissues, the ’230 patent complies with the rule. The Court will deny all of
Defendants’ motions for summary judgment of non-infringement because there are
genuine disputes of material facts. And finally, the Court will deny Defendants’
allegations of unenforceability because Defendants do not meet the high bar to prove
inequitable conduct. Accordingly, the action may proceed.
BACKGROUND
I. FACTS
This action involves three groups of patents. The ’768 and ’230 patents improve
the efficiency and accuracy of cellular data transmission through error control coding,
interleaving, mapping, and precoding. (See Mem. Op. & Order Construing Claim Terms
(“Claim Construction”) at 6–8, Aug. 5, 2022, Docket No. 342.)1 The ’317 patent family
1 All docket numbers in this Order correspond to ECF No. 14-4666.
trains cellular receivers to correct for suboptimal conditions, including with null
subcarriers. (Id. at 8–9.)
The general factual background was explained extensively in the Court’s Claim
Construction Order. (See id. at 4–9.) Because the various motions for summary judgment
address disparate issues, the Court will provide specific background for individual issues
in the respective discussion sections.
II. PROCEDURAL HISTORY
In 2014, Regents filed a Complaint against Defendant cellular network companies
asserting claims of direct and indirect infringement and willful blindness. (See Am.
Compl., Jan. 30, 2015, Docket No. 25.) On Defendants’ motion, the Court dismissed
Regents’ willful blindness claims. (Mem. Op. & Order on Mots. Dismiss, Sept. 29, 2015,
Docket No. 45.) Ericsson, Inc. and Nokia of America Corp. intervened as defendants. (See
Order, Mar. 30, 2016, Docket No. 131; Order, Mar. 31, 2016, Docket No. 136.) In 2017,
the Court granted a motion for a limited stay pending a decision on inter partes review
from the United States Patent and Trademark Office (“USPTO”). (See, e.g., Order, May
19, 2017, Docket No. 237.) That stay was lifted in 2020, at which time the Court heard
and decided claim construction arguments. (See Claim Construction.) Some construction
terms were later amended pursuant to party stipulation. (Order Amending Construction
of Claim Terms, Dec. 9, 2022, Docket No. 385.)
The parties have now filed four separate motions for summary judgment on the
topics of prior art, the original patent rule, non-infringement, and inequitable conduct.
(See Pl.’s Mots. Summ. J., June 1, 2023, Docket No. 536; Defs.’ Mot. Summ. J., June 1,
2023, Docket No. 543; Def.’s Mot. Summ. J., June 1, 2023, Docket No. 580; Def.’s Mot.
Summ. J., June 1, 2023, Docket No. 586.) Regents’ motions are nondispositive, requesting
resolution of two anticipated defenses. Defendants’ motions, on the contrary, would
dispose of the action if granted in various combinations.
DISCUSSION
I. STANDARD OF REVIEW
Summary judgment is appropriate when there are no genuine issues of material
fact and the moving party can demonstrate that it is entitled to judgment as a matter of
law. Fed. R. Civ. P. 56(a). A fact is material if it might affect the outcome of the lawsuit,
and a dispute is genuine if the evidence could lead a reasonable jury to return a verdict
for either party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248(1986). A court considering a motion for summary judgment must view the facts in the light most favorable to the nonmoving party and give that party the benefit of all reasonable inferences to be drawn from those facts. Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,475 U.S. 574, 587
(1986).
Summary judgment is appropriate if the nonmoving party “fails to make a showing
sufficient to establish the existence of an element essential to that party’s case, and on
which that party will bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S.
317, 322(1986). “To defeat a motion for summary judgment, a party may not rest upon allegations, but must produce probative evidence sufficient to demonstrate a genuine issue [of material fact] for trial.” Davenport v. Univ. of Ark. Bd. of Trs.,553 F.3d 1110
,
1113 (8th Cir. 2009).
II. MING AND PRIOR ART
Regents first move for summary judgment that Patent Cooperation Treaty
application WO 03/085875 (“Ming PCT”) is not prior art. Defendants’ invalidity expert,
Dr. Stephen B. Wicker, opines that Ming PCT is prior art to the ’230 and ’768 patents. But
Regents argue that the Ming PCT application did not check the required boxes (quite
literally) for an international patent application to serve as prior art. Thus, Defendants
should be precluded, as a matter of law, from arguing invalidity based on Ming PCT.
Because Ming PCT did not “designate” the United States, the Court will grant
Regents’ Motion for Summary Judgment and hold that Ming PCT is not prior art to
the ’230 and ’768 patents as a matter of law. Nonetheless, the Court will allow Dr. Wicker
to base his prior art arguments on the Ming US patent because such substitution would
substantially comply with the Court’s invalidity disclosure deadlines and would not
unfairly prejudice Regents.2
A. Background
Defendants’ expert asserts that Ming PCT is prior art that undermines the validity
of the ’230 and ’768 patents. (See, e.g., Decl. of Conrad A. Gosen Supp. Pl.’s Mots. Summ.
2 As will be discussed later in this Order, the Court will allow Regents similar flexibility to
assert a non-timely infringement theory.
J. (“Gosen Ming Decl.”) ¶ 2, Ex. 1 (“Wicker Rpt.”) ¶¶ 249–51, June 1, 2023, Docket No.
539). The ’230 and ’768 patents each trace their priority dates to five provisional
applications filed on April 22, 2002. (Id. ¶¶ 195–96.) Ming PCT, in turn, traces priority to
Ming US, filed April 5, 2002. (Id. ¶ 249.) Ming PCT’s priority date precedes the ’230
and ’768 priority dates, so it may conceivably serve as prior art.
Pursuant to Court deadlines, Defendants supplied Regents with several batches of
proposed invalidity arguments. (See, e.g., Decl. of Conrad A. Gosen Supp. Pl.’s Reply Supp.
Mot. Summ. J. (“Gosen Ming Reply Decl.”) ¶ 6, Ex. E, Aug. 10, 2023, Docket No. 687.)
Defendants contested the validity of the ’230 and ’768 patents based on the Ming PCT
application, not the Ming US application. (E.g., Wicker Rpt. ¶ 249.) The time to raise new
invalidity defenses has now passed.
B. Analysis
“[A] patent is presumed valid, and this presumption exists at every stage of the
litigation.” Sanofi-Synthelabo v. Apotex, Inc., 470 F.3d 1368, 1375(Fed. Cir. 2006) (internal quotation omitted). A defendant bears the burden of establishing patent invalidity by clear and convincing evidence. See35 U.S.C. § 282
(a); Amgen Inc. v. F. Hoffman-La Roche Ltd.,580 F.3d 1340, 1362
(Fed. Cir. 2009). For a patent to be valid, it must be novel and nonobvious.35 U.S.C. §§ 102
, 103. This requires consideration of whether the claimed invention was previously patented and whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date” to “a person having ordinary skill in the art.”35 U.S.C. § 103
.
Regents’ Motion and Defendants’ response raise two distinct issues. First, is Ming
PCT cognizable as prior art under the provisions governing international patents? Second,
if not, may Dr. Wicker substitute the Ming US patent for the Ming PCT application to
support his prior art opinions? No, and yes.
1. Ming PCT
The parties agree that pre-America Invents Act (“pre-AIA”) 35 U.S.C. § 102(e) determines whether Ming PCT is prior art to the ’230 and ’768 patents. Pre-AIA §102(e) provides two avenues for a patent application to serve as prior art. The second is at issue here: “an international application filed under the [Patent Cooperation Treaty] shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.”35 U.S.C. § 102
(e)(2)
(emphasis added). This dispute turns on whether Ming PCT “designated the United
States” for purposes of section 102(e).
For Regents, the answer is clear. The cover of the PCT application has a section for
“Designated States.” The Ming PCT application designates a number of countries, but
none are the United States. (See Gosen Ming Decl., Ex. 2 at 2.) It therefore does not
satisfy section 102(e)(2).
Defendants point to the priority data section of the application, which indicates
that the application seeks priority to the Ming US application. (See id.) Even though the
United States is not included in the “Designated States” section, Defendants contend that
the statutory definition of “designated” in section 102(e) is more capacious. For purposes
of Chapter 35, “[t]he term ‘international application designating the United States’ means
an international application specifying the United States as a country in which a patent is
sought.” 35 U.S.C. § 351(e). Per Defendants, marking a United States patent as the
application from which priority is sought necessarily implies that a patent is sought in the
United States. After all, how could an international application seek priority to a United
States patent unless “a patent is sought” in the United States?
Though not completely unfounded, the Court will not adopt Defendants’ view. To
begin, Defendants bear the burden of proving invalidity. 35 U.S.C. § 282(a). A PCT
application is relatively weak evidence of designation when the actual designation section
of the application excludes the United States. Accepting the Defendants’ arguments
would also undermine the notice function of designation. A prospective United States
patent applicant would naturally check the “Designated States” section of a PCT
application and feel relatively secure under § 102(e)(2) if the United States was not
included in the list. It is also not overly burdensome to require an applicant to check the
appropriate boxes for designated states even if the same country is already listed in the
priority section.
The Manual of Patent Examining Procedure (“MPEP”) confirms this reading. It
clarifies that “[t]he international application for which the priority of one or more earlier
applications filed in or for a Contracting State is claimed may contain the designation of
that State.” (Gosen Ming Reply Decl. ¶ 2, Ex. A at 6 (reproducing Appendix T of the 2001
MPEP).) If claimed priority was coterminous with designation, the application would—
not may—designate the contracting state.
Ultimately, because the Ming PCT application did not “designate” the United States
for purposes of pre-AIA § 102(e)(2), the Court will grant Regents’ Motion for Summary
Judgment and not allow Defendants to argue invalidity based on the Ming PCT
application.
2. Ming US
Defendants argue in the alternative that Dr. Wicker should be allowed to substitute
the Ming US application for the Ming PCT application to make his prior art arguments.
Even though Dr. Wicker primarily opined on Ming PCT as prior art, Defendants assert—
and Regents do not contest—that the two applications are identical in their relevant
disclosures. The Court will allow Dr. Wicker to base his opinions on the Ming US
application.
Regents ask the Court to slice the bologna awfully thin. They claim Dr. Wicker did
not base any invalidity arguments on the Ming US patent. That may be technically true,
but Dr. Wicker, when first describing the Ming PCT application, noted that it
“substantively includes identical disclosure as the Ming [US application].” (Wicker Rpt.
¶ 249). While it may formally be too late for the Defendants to rely on a new ground for
invalidity, Regents can hardly claim to be caught off guard by the Ming US application.
* * *
In sum, Ming PCT may not serve as prior art to invalidate the ’230 and ’768 patents,
but Defendants may substitute Ming US to make the same arguments.
III. ’230 PATENT AND ORIGINAL PATENT RULE
The Court will grant Regents’ Motion for Summary Judgment that the ’230 patent
is not invalid under the original patent rule and deny Defendants’ inverse motion to the
same effect. Although the original patent rule applies to narrowing reissues, the ’230
patent satisfies that rule.
A. Background
The ’230 patent is a reissue of the ’647 patent, granted pursuant to 35 U.S.C. § 251.
(Wicker Rpt. ¶ 1034.) The ’647 patent incorporated five provisional patent applications
by reference. (Decl. of Alexander Chern Supp. Defs.’ Mot. Summ. J. (“Chern Decl.”) ¶ 3,
Ex. 2 at 14, June 1, 2023, Docket No. 549.)
The ’230 reissue includes some fairly significant alterations from the claims in
the ’647 patent. For example, both parties point to the following additions and changes
to claim 1 of the patent:
’647 ’230
A wireless communication device A wireless communication device
comprising: comprising:
an encoder that applies a linear a first encoder that encodes a
transformation to a stream of data stream based on an error-
information bearing symbols control code to produce encoded
selected from a constellation symbols;
having a finite alphabet to produce an interleaver that interleaves
a stream of precoded symbols that the encoded symbols to produce
are complex numbers and are not interleaved symbols;
restricted by the constellation of the a constellation mapper that
information bearing symbols; and maps the interleaved symbols to
a modulator to produce an produce a stream of information
output waveform in accordance bearing symbols selected from a
with the stream of precoded constellation having a finite
symbols for transmission through a alphabet;
wireless channel. [an] a second encoder that
applies a linear transformation to
[a] the stream of information
bearing symbols selected from [a]
the constellation having [a] the
finite alphabet to produce a stream
of precoded symbols that are
complex numbers and that are not
restricted by the constellation of the
information bearing symbols; and
a modulator to produce an output
waveform in accordance with the stream of
precoded symbols for transmission through
a wireless channel.
(Gosen Ming Decl. ¶¶ 4–5, Ex. 3 at 28, Ex. 4 at 23.)
The reissue made similar changes to claim 16 of the ’230 patent and added a new
49th claim. (Defs.’ Mem. Supp. Mot. Summ. J. at 8–9, June 1, 2023, Docket No. 555.))
Regents claim that all additions to the ’647 patent in the ’230 reissue stem from the five
provisional applications incorporated by reference into the ’647 patent.
B. Analysis
When a patent is defective, the patentee may apply for a reissued patent that
cures the error. See 35 U.S.C. § 251. The so-called “original patent rule” applies to such reissues. Stemming from judicial doctrine, Congress only allows reissue “for the invention disclosed in the original patent.”25 U.S.C. § 251
(a); Antares Pharma, Inc. v. Medac Pharma Inc.,771 F.3d 1354
, 1358–62 (Fed. Cir. 2014) (cataloging the precedential and statutory history of the original patent rule). The original specification “must clearly and unequivocally disclose the newly claimed invention” in the reissue. Antares,771 F.3d at 1362
. That is, the original specification “must do more than merely suggest or indicate the invention recited in reissue claims.” Forum US, Inc. v. Flow Valve LLC,926 F.3d 1346, 1351
(Fed. Cir. 2019); see also U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp.,315 U.S. 668, 676
(1942).
Compliance with the original patent rule is generally a matter of law, appropriate
for summary adjudication. See Forum US, 926 F.3d at 1350–51. The inquiry may still
present underlying questions of fact as to what a specification says on its face, and the
Court may consult expert evidence to construe the meaning of terms of art. See id.The inquiry focuses on the original specification rather than original claims; indeed, the very point of a reissue is often to alter the original claims. Antares,771 F.3d at 1362
. The question, then, “is whether one skilled in the art, reading the specification, would identify the subject matter of the new claims as invented and disclosed” in the original specification. Forum US,926 F.3d at 1353
(quoting In re Amos,953 F.2d 613, 618
(Fed.
Cir. 1991)).
1. Scope of the Original Patent Rule
The Court must first decide if the original patent rule even applies to the ’230
reissue. Regents claim the original patent rule only applies to broadening reissues—those
that “enlarg[e] the scope of the claims of the original patent.” 35 U.S.C. § 251(d). While
Regents are correct that broadening reissues are significantly more likely to run afoul of
the original patent rule, it would be a bridge too far to hold that the original patent rule
never applies to narrowing reissues.
Regents primarily make their case by pointing to over a century’s worth of
decisions applying the rule to broadening reissues. Many of those cases contain some
language tying the original patent rule to broadening reissues. See, e.g., Corbin Cabinet
Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42–43 (1893) (“It is settled by the authorities that,
to warrant new and broader claims in a reissue . . . it must further appear from the
original patent that they constitute parts or portions of the invention, which were
intended or sought to be covered or secured by such original patent.” (emphasis added)).
The original patent rule undoubtedly presents a heightened challenge for
broadening reissues. But even though many cases say the original patent rule applies to
broadening reissues, none say the rule applies only to broadening reissues and there are
several reasons for the Court to not so hold.
First, the statutory structure. 35 U.S.C. § 251(a) establishes the rules for reissue
patents “in general,” while section 251(d) covers broadening reissues only. If Congress
wanted the original patent rule to apply only to broadening reissues, it could have put the
rule in section 251(d). Instead, it inserted the language in section 251(a), mandating
application to all reissues.
Second, it would be a historic anomaly to apply the rule only to broadening
reissues. After all, the original patent rule first appeared nearly thirty years before the
Supreme Court even approved broadening reissues. Compare Battin v. Taggert, 58 U.S.
(17 How.) 74, 84–85 (1854) (original patent rule), with Miller v. Bridgeport Brass Co.,104 U.S. 350, 351
, 354–55 (1881) (broadening reissues); accord Antares,771 F.3d at 1359
(“The requirement became even more important when the Supreme Court first held that
broadening reissue applications were permissible.”). It would make little sense to
constrain the rule to a context that did not even exist at the time the rule developed.
Finally, and perhaps most importantly, the Federal Circuit is skeptical of a
broadening only limitation. In Cioffi v. Google, LLC, a Federal Circuit panel invalidated
reissue claims under the original patent rule. No. 18-1049, 2023 WL 2981491, at * 6 (Fed.
Cir. Apr. 18, 2023). The full court later issued an order denying Cioffi’s petition for
rehearing en banc. No. 18-1049 (Fed. Cir. July 17, 2023) (per curiam). In that order, the
Federal Circuit rejected the petitioners’ theory that the original patent rule does not apply
to narrowing reissues.
To be sure, the Federal Circuit’s statements in the order denying rehearing are not
controlling; they are dicta within dicta. Though the petitioners argued that the original
patent rule does not apply to narrowing reissues, the Federal Circuit concluded it “d[id]
not need to decide that issue” because (1) petitioners had waived that argument, and (2)
the claims at issue were broadening reissues. Id.at 2–3. Nonetheless, the order still serves as persuasive authority. The Federal Circuit concluded that neither its precedent nor the text of section 251 support limiting the original patent rule to broadening reissues.Id.
The Court will hold the same.
Although there is no firm precedential command against applying the original
patent rule to narrowing reissues, such reissues may more easily pass muster. Even if
narrowing reissues are more likely to satisfy the original patent rule, though, the Court
will not hold that they are automatically valid without examining the specific reissues in
this case.
2. Application of the Original Patent Rule
Defendants do not allege the claims in the ’230 reissue were pulled out of thin air.
(Cf. Decl. of Conrad A. Gosen Supp. Pl.’s Opp’n to Defs.’ Mot. Summ. J. ¶ 2, Ex. 1 at 12–
128,, July 13, 2023, Docket No. 660) (tracing each ’230 claim to the ’647 specification or
material incorporated therein).) The dispute instead is whether the original ’647
specification disclosed the ’230 claims in a clear enough fashion to satisfy the original
patent rule. And specifically, whether incorporation by reference is clear enough.
The law is surprisingly thin on whether material incorporated by reference satisfies
the original patent requirement. Neither party cites any case that specifically addresses
that question. But Defendants bear the burden of proof as the moving party, not to
mention the presumption of validity of the reissued patent absent clear and convincing
evidence to the contrary. See Sanofi-Synthelabo, 470 F.3d at 1375;35 U.S.C. § 282
(a).
Absent specific caselaw on the matter, Defendants rely on the general rule that
the original specification must “clearly and unequivocally” “expressly disclose[]” the
“exact embodiment claimed on reissue.” Cioffi, 2023 WL 2981491, at *4 (quoting Antares,
771 F.3d at 1362–63). Incorporation by reference, they claim, is not clear or unequivocal
enough to satisfy that standard. But the Court sees no reason why a proper citation on
the face of the reissue application is not clear enough to satisfy the original patent rule
when the only real difference would be whether the applicant wrote a proper citation to
the source material instead of copying and pasting that content into the specification.
One non-controlling opinion, Dart Indus., Inc. v. Banner, 636 F.2d 684(D.C. Cir. 1980), suggests incorporation by reference does not suffice. The reference there read “this application is a continuation-in-part of my copending application.”Id. at 686
. The court denied the reissue, claiming incorporation of the “copending application” claims would add new matter in violation of section 251.Id.
at 687–88.
Nonetheless, the incorporation statement in Dart Industries was far less explicit
than the incorporation statement in the ’647 application. Marking an application as a
“continuation-in-part” is not nearly as clear an indication of desire to incorporate as
recitation of the provisional applications, “the entire contents of which are incorporated
herein by reference.” Compare id. at 686, with (Chern Decl. ¶ 3, Ex. 2 at 14.) In fact, the court in Dart Industries contrasted the continuation-in-part language with an “incorporation by reference in an application of matter elsewhere written down (not necessarily in a patent application), for economy, amplification, or clarity of exposition, by means of an incorporating statement clearly identifying the subject matter which is incorporated and where it is to be found.”Id. at 686
(quotation omitted). The
incorporation in the ’647 specification meets that description, unambiguously
incorporating identified matter for brevity’s sake.3
Defendants not only take issue that material was incorporated by reference, but
also that the original application incorporated too many disparate sources. Again,
though, they provide little support for their “too much material” argument beyond the
general “clear and unequivocal” standard of the original patent rule. So long as the
underlying claims are in fact reflected in those sources, the Court finds the disclosure no
less explicit than a monstrous application that copies and pastes the claims instead.
3 Defendants also point to the specification requirements of 35 U.S.C. § 112, which forbids parties from incorporating “essential material” by reference. See37 C.F.R. § 157
(d). To the extent a regulation governing section 112 even applies to section 251, though, it would not apply to the ’647 application because the application was filed before the regulation was enacted. Compare69 Fed. Reg. 56482
, 56539 (Sept. 21, 2004), with (Chern Decl., Ex. 2 at 2 (showing the
application was filed in 2003).).
In sum, because reissues are presumed valid and the Court finds incorporation by
reference sufficient to satisfy the original patent rule, the Court will grant Regents’ motion
for summary judgment that the ’230 patent is not invalid and deny Defendants’ converse
motion.
IV. NON-INFRINGEMENT
In patent cases, “summary judgment of noninfringement is proper when no
reasonable factfinder could find that the accused product contains every claim limitation
or its equivalent.” Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942, 949 (Fed. Cir. 2016).
Defendants claim five separate infringement issues are ripe for summary judgment. But
because genuine disputes of material fact remain, the Court will deny Defendants’ Motion
in full.
A. Issue 1: Mapping Interleaver Output
Defendants’ move for non-infringement of ’768 claims 1, 13, 18, and 21, and ’230
claims 1, 2, 3, 16, 17, 42, 46, and 49 (collectively, the “LP Patents”). Because the Court
will allow Regents to introduce a doctrine of equivalents theory of infringement, the Court
will deny Defendants’ motion as to the first issue.
1. Background
The LP Patents all (1) encode, (2), interleave, and (3) map data. The accused
products add a step 2.5 in between interleaving and mapping: scrambling. (Sealed Exs.
Decl. Conrad A. Gosen Supp. Pl.’s Opp. Defs.’ Mot. Summ. J. Non-Infringement (“Sealed
Gosen Non-Infringement Decl.”), Ex. A ¶ 250, July 14, 2023, Docket No. 664.) Encoding
adds redundancy to information streams to allow identification and correction of errors.
(Sealed Exs. Supp. Decl. Marc L. Kaplan Supp. Defs.” Mot. Summ. J. Non-Infringement
(“Sealed Kaplan Exs.”), Ex. 2 459, June 2, 2023, Docket No. 617.) Interleaving reorders
the encoded bits. (/d. 4] 192.) Scrambling then modifies the representation of an
interleaved bit sequence so there are roughly equal numbers of ones and zeroes and
ensures there are no long sequences of ones or zeroes. (/d., Ex. 11 4 229.) Finally,
mapping, as relevant here, converts groups of ones and zeroes to predetermined symbols
that represent those bits. (/d., Ex. 2 4 72.) Of primary importance to this dispute is
everything that happens after interleaving. That is, scrambling (where applicable) and
mapping.
Defendants provide a helpful overview illustration of these steps, undisputed by
Regents, with example input data of 1100:
LP Patents:
Input data Mapped symbols
1100 Encoder 11110000 interleaver 10010011 Mapper ACDB
a Symbol A
11 SymbolB
01 Symbol
00 Symbol D
Accused Technology:
-21-
Input data Mapped symbols
1100 Encoder 11110000 Interleaver 10010011 || Scrambler | 10101010 Mapper AAAA
Sri
10 Symbol A
11 SymbolB
01 Symbol
00 06©=—- Symbol D
(Defs.’ Mem. Supp. Summ J. Non-Infringement (“Defs.’ Non-Infringement MSJ”) at
9-10, June 1, 2023, Docket No. 581.)
The LP Patent claims all specify that “the interleaved” data is mapped. (See, e.g.
Decl. Marc L. Kaplan Supp. Defs.’ Mot. Summ. J. Non-Infringement (“Unsealed Kaplan
Exs.”), Ex. 1 at 28, June 1, 2023, Docket No. 583.) Following fact discovery, Regents moved
to add a doctrine of equivalents theory to its infringement claims. (Decl. Conrad A. Gosen
Supp. Pl.’s Mot. Leave Amend, Ex. A at 9-10, Dec. 16, 2022, Docket Nos. 395, 396.) They
alleged that there is no “substantial difference” between the interleaved and scrambled
data streams for purposes of mapping because the scrambled data represents the same
underlying interleaved data. (/d.) Magistrate Judge Tony N. Leung denied Regents’
motion to add a doctrine of equivalents theory, ruling that Regents were not diligent in
timely adding the theory. (Tr. Hearing Mot. Leave to Amend at 41-44, Jan. 27, 2023,
Docket No. 444.)
2. Analysis
As Defendants note, the Magistrate Judge’s order denying Regents’ motion to add
a doctrine of equivalents theory would be all but fatal to Regents’ theory of infringement.
-22-
Failure to allow a doctrine of equivalents theory would leave Regents with only a literal
infringement claim, where Regents would have to establish that “every limitation set
forth in a claim must be found in an accused product, exactly.” Advanced Steel Recovery,
LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1319 (Fed. Cir. 2015) (quotation omitted).
Because each claim with a mapping step requires mapping “the interleaved” data
stream, technology that only maps scrambled outputs does not literally infringe the
patent.4 It maps a slightly different configuration of data than the data from the
interleaved stream. Regents claim there is a battle of the experts as to whether the
scrambled data is effectively the same as the interleaved data. (Compare Sealed Kaplan
Exs., Ex. 11 ¶¶ 232–36, with Sealed Gosen Exs., Ex. D ¶ 34.) This is precisely the argument
the doctrine of equivalents is meant to capture, though. See Warner-Jenkinson Co., Inc.
v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997) (“[A] product or process that does not
literally infringe upon the express terms of a patent claim may nonetheless be found to
infringe if there is ‘equivalence’ between the elements of the accused product or process
and the claimed elements of the patented invention.”). But even if scrambling only
changes the representation of the underlying data, Defendants’ products do not literally
map “the interleaved data stream.” They map its equivalent: the scrambled data.
4 Claims 13 and 21 of the ’768 patent discuss mapping “the encoded data stream” rather
than “the interleaved” data stream. The forthcoming analysis applies equally to that language:
no more is the unit mapping “the encoded” data than it is mapping “the interleaved” data.
At times, Regents suggest that the scrambled data is the interleaved data, so there
is literal infringement. Even under a summary judgment standard, though, the Court finds
that no reasonable jury could accept that assertion. Briefly consider the example chart,
above. The interleaved data stream is 10010011. The scrambled data stream is
10101010. By the time that scrambled data stream is mapped, it is not identical to the
interleaved data stream, even if the underlying message it carries is the same. Regents
contend that the scrambled data is the same as the interleaved data because the
underlying data is preserved, and upon unscrambling the interleaved data again appears.
But that is the whole point of this technology: to change the representation of data while
maintaining the underlying information. If a user inputs 1100 and all technology works
according to plan, the receiver will ultimately output 1100 even though the underlying
data has undergone changes of representation in the meantime.
Notwithstanding the above analysis, the Court will deny summary judgment
because it will allow Regents leave to introduce a doctrine of equivalents theory of
infringement. From a case management perspective, the Magistrate Judge was correct
to deny Regents’ motion to amend. But in a case that is nearly ten years old, the Court is
willing to allow minor flexibility on issues of timing to ensure full resolution of significant
issues. Just as the Court will allow Defendants’ to rely on the Ming US application for their
invalidity arguments, the Court will allow Regents to rely on the doctrine of equivalents
for their interleaver infringement claims. To the extent a brief reopening of discovery is
necessary to allow development of those two issues, the parties may file appropriate
motions with the Magistrate Judge.
B. Issue 2: Restricted to the Mapper
The Court will deny summary judgment as to Issue 2 because Defendants did not
advance the theory of non-infringement as to ’768 patent claims 13 and 18 that they now
expect Regents’ expert to rebut.5
1. Background
The ’768 patent has several claim limitations comparing characteristics of the
“alphabet” for a precoder with the “alphabet” for a related mapper. Signal-processing
alphabets have some number of distinct symbols. For example, the mapper in the
illustration provided for Issue 1, above, had four symbols in its alphabet: A, B, C, and D.
Claim 13, on which claim 18 is dependent, specifies a limitation for a transmitter
that includes “a precoder that linearly precodes the constellation symbols over a complex
field without restriction to an alphabet size of the constellation to produce a joint coded-
precoded data stream.” (Unsealed Kaplan Exs., Ex. 12 at 19.) The parties have jointly
stipulated that “over a complex field without restriction to an alphabet size” means “that
5 Defendants admit that their non-infringement theories for claims 1 and 21 were
contingent on the Magistrate Judge granting their motion to strike. (Defs.’ Non-Infringement
MSJ at 24.) Because the Magistrate Judge denied Defendants’ motion to strike and the Court has
affirmed that order, the Court will deny Defendants’ motion for summary judgment of non-
infringement of claims 1 and 21. (See Sealed Order at 10, Nov. 17, 2023, Docket No. 719; Mem.
Op. & Order Den. Defs.’ Appeal at 8, Feb. 22, 2024, Docket No. 738.)
can produce a number of different complex values that are not limited to the number of
constellation symbols that can be produced by the mapping unit.” (Joint Claim
Construction Statement (“JCC”) at 4, Oct. 20, 2021, Docket No. 298.) For claims 13 and
18, it is the size of the alphabet that matters. Any alphabet size that differs would satisfy
the limitation.
2. Analysis
Defendants argue there is no dispute of material fact as to whether the accused
precoders “can produce a number of different complex values that are not limited to the
number of constellation symbols that can be produced by the mapping unit,” as required
by the claim construction. (Defs.’ Non-Infringement MSJ at 21.) Defendants’ expert
found that the accused mapper and accused precoder each produce four symbols, so the
alphabet size does not change, and thus the limitation is not met. (Sealed Kaplan Exs., Ex.
11 ¶¶ 251–56.) Defendants’ argument hinges primarily on the fact that Regents’ expert
does not address whether the size of the alphabet changes.
Regents’ expert did not address the size of the alphabet because Defendants’ non-
infringement contentions did not dispute that their products infringe on the alphabet size
limitation. (See id., Ex. 16 at 6–8.) Their non-infringement contention for claim 13 simply
incorporated their contentions for claim 1 by reference. (See id. at 3, 7.) But alphabet
size does not matter for claim 1; indeed, the very motion before the Court now admits
that claim 1 presents a different alphabet issue from claim 13. (See id.) Because the
alphabet size was not disputed, there was nothing for Regents’ expert to respond to.
Defendants claim that Regents never alleged infringement of the alphabet size
limitation, so Defendants were the ones that did not need to respond. Nonetheless, in
Regents’ infringement claim chart for the ’768 patent, they claim “Defendant’s LTE
network has included and continues to include systems that also have a precoder that
linearly precodes the constellation symbols over a complex field without restriction to an
alphabet size of the constellation to produce a joint coded-precoded data stream.”
(Sealed Exs. Supp. Decl. Marc L. Kaplan Supp. Defs.’ Reply Mem. Summ. J. Non-
Infringement (“Sealed Kaplan Reply Exs.”), Ex. A at 18, Aug. 10, 2023, Docket No. 674
(emphasis added).) This infringement allegation references infringement of the alphabet
size limitation. Accordingly, the Court will deny the Motion for Summary Judgment of
non-infringement of claims 13 and 18 of the ’768 patent.
C. Issue 3: Symbol Interleaver
Defendants move for summary judgment of non-infringement of all ’768 claims.
There is a genuine dispute of material fact between the parties’ experts, so the Court will
deny Defendants’ motion.
1. Background
Each independent claim of the ’768 patent (Nos. 1, 13, 21) requires an interleaver
process. (Unsealed Kaplan Exs., Ex. 12 at 18–19.) In its claim construction order, the Court
constructed all interleaver terms, including those in the ’768 patent, identically. (Claim
Construction at 24.) The Court resolved two primary disputes in the order. (Id.)
Importantly, it rejected Regents’ assertion that “interleave” should be construed to
include interleaving groups of symbols, rather than solely interleaving individual symbols.
(Id. at 26.) The Court held that “[t]he term ‘interleave’ on its face, does not include the
interleaving of groups of symbols,” and the patents make clear the subject is individual
symbols/bits. (/d. at 26-27.)
Shortly thereafter, Regents moved for reconsideration of the Court’s construction
of interleaver terms. (PI.’s Mot. Reconsider Construction of Claim Terms, Aug. 25, 2022,
Docket No. 349.) Nowhere in the motion did Regents object to the Court’s ruling on
symbol groups. (See id. at 4-5.) Rather, it worried that the Court’s order did not give
separate definitions to interleaver in the various places it appeared throughout the ’230
and ’768 patents. (/d.) The parties stipulated to a construction providing various
definitions of the term as it appeared in different locations, which the Court approved.
(Order Am. Construction of Claim Terms, Dec. 9, 2022, Docket No. 385.) As relevant here,
it provided the following two constructions:
been reordered
produce permuted blocks of [sic: | reordering them
precoded] symbols” (768:21)
(Id. at 3.)
The accused product here interleaves quadruplets of symbols. (See Unsealed
Kaplan Ex., Ex. 8 at 9.) Regents do not dispute that these quadruplets are “groups” of
symbols.
-28-
2. Analysis
Regents raise both a procedural and a substantive argument as to why the accused
product does not fit into the carveout for group interleaving that the Court has already
addressed. Only the substantive argument is meritorious.
First, Regents argue that the Court’s construction order that addressed group
interleaving does not govern; it was superseded by the stipulated amendments. Not so.
To begin, the group analysis played no role in the amendment. Regents’ motion was
completely unrelated, challenging instead whether “interleaver” could be defined
universally. Then, in reaching a stipulated compromise, Defendants clarified with Regents
that the amendments incorporated the portion of the Court’s ruling excluding interleaved
groups. (Decl. Marc L. Kaplan Supp. Defs.’ Reply Mem. Supp. Mot. Summ. J. Non-
Infringement, Ex. 24 at 4, Aug. 10, 2023, Docket No. 673.)
Even if the Court’s ruling on interleaving groups of symbols somehow evaporated
(it did not), Regents provide no reason why the Court’s logic during claim construction
should not apply equally now.
Regents next argue that, even if the construction order governs, it does not defeat
the infringement claim. Under the Court’s construction, interleaving involves
“reordering” symbols. When groups of symbols are reordered, some symbols are also
reordered relative to one another. This theory is best illustrated by Regents’ example,
below:
\ 7
rin
\ /
\/
/ \
(PI.’s Opp. Defs.’” Mot. Summ J. Non-Infringement at 35, July 13, 2023, Docket No.
661.)
When groups are interleaved, individual symbols in one group will be reordered
relative to individual symbols in another. For example, orange 3A no longer sits in the
same position relative to green 2A. Thus, even though groups are interleaved, so too are
individual symbols. The Court’s prior orders never said groups may not be interleaved,
only that group interleaving is not independently sufficient.
As Defendants observe, it is difficult to imagine a situation in which groups will be
interleaved while individual symbols are not. Though Regents’ theory pushes the bounds
of the Court’s claim construction order, it is sufficient to go to trial when the Court can
further assess the theory after testimony. As Regents’ expert notes, the interleaver here
“take[s] the precoded symbols and reorder[s] them,” which is what the construction
order requires. (Order Am. Construction of Claim Terms at 3.)
-30-
D. Issue 4: Null Subcarrier
Issue Four essentially boils down to one question: What does it mean for a null
subcarrier to appear in a Multiple Input, Multiple Output (“MIMO”) Multi-Carrier
Waveform? Because the parties’ experts establish a genuine dispute of material fact on
the matter, the Court will deny summary judgment as to Issue Four.
1. Background
All independent claims in the ’317 patent family6 require a “null subcarrier.” (See,
e.g., Decl. Conrad A. Gosen Supp. Pl.’s Opp. to Defs.’ Mot. Summ. J. Non-Infringement
(“Unsealed Gosen Non-Infringement Exs.”), Ex. N at 20, 26, 28–29, July 13, 2023, Docket
No. 663.) For purposes of the ’317 patent family, the Court construed “subcarrier” as
follows: “In a MIMO multi-carrier waveform, one of a number of carrier frequencies
within a larger frequency band.” (Claim Construction at 37.) The Court limited subcarriers
in the ’317 family to MIMO systems because every patent in the family “clearly use[s]
MIMO systems.” (Id. at 38.) As to what a MIMO system is, the Court provided a fairly
barebones statement that “in a MIMO transmission system, the transmitter uses multiple
antennas to transmit data to a receiver.” (Id. at 37.) The Court also constructed “null
subcarrier” as “[a] subcarrier on which no value is intended to be transmitted during a
specific time period.” (Id. at 39.)
6 ’317 claim 1, ’185 claim 9, ’309 claims 13, 16, 19, 23, and 24.
In a MIMO system, the receive antennas detect a combined signal from all of the
transmit antennas. (Sealed Gosen Non-Infringement Decl., Ex. A 9194.) Defendants
provide a simplified illustration of the process as follows:
Antenna 1 =a
7) a [was
as
□□□
: a ea
Antenna 2
One “null subcarrier” ,
[=]
(Defs.’ Non-Infringement MSJ at 32 4 7 (annotations omitted).)
Essentially, the transmissions from separate antennas are “added” together. (/d.)
When both antennas transmit a null subcarrier (8) on the same frequency (here, f3), their
addition still results in continued propagation of a null subcarrier. On the contrary, when
one transmission source transmits a null subcarrier on a frequency while the other
transmitter transmits a non-zero waveform on the same frequency, the combined
waveform is no longer zero:
A Zs
nm =
Antenna 1
7) ae mika:
has
ea
: if eT
Antenna 2 ce
a No “null subcarrier” ee
Bee
-32-
(id. at 32 4 8 (annotations omitted).)
Thus, though antenna 1 transmits a null subcarrier on f3, antenna 2’s simultaneous
transmission of value G on f3 results in a combined waveform with value G. There is no
longer a null subcarrier once they are combined.
In the accused technology, the frequency addition happens by virtue of the
transmission frequencies being OFDM’ modulated, simultaneously transmitted, and then
superimposed in the propagation environment. (Sealed Kaplan Exs., Ex. 18 4 148.)
Defendants’ expert illustrates the MIMO transmission process in the accused technology
as follows:
Port 0 an >
sy | =
Port Y Se
(/d.)
? Orthogonal frequency division multiplexing.
-33-
This illustration maps on to the second of the simplified illustrations, above.
Although each antenna transmits multiple null subcarriers, they do not transmit a null
subcarrier on any of the same frequencies. Thus, none of the subcarriers that reach the
receiver after superimposition are null subcarriers. Defendants’ expert claims the
superimposition process results in a MIMO waveform. (Id.) So in the above illustration,
the combined stream would be the MIMO waveform, while the individual pre-addition
transmissions are non-MIMO waveforms. Regents’ expert contends the accused
technology still transmits null subcarriers within the MIMO system. (See, e.g., Sealed
Gosen Non-Infringement Decl., Ex. P ¶¶ 37–39.) It is undisputed that the system as a
whole is a MIMO system.
2. Analysis
The question remaining is whether, for purposes of the ’317 family, it is enough for
a null subcarrier to appear anywhere in a MIMO system. The Court analyzed the “MIMO
multi-carrier waveform” in its claim construction order but did not answer this question.
The parties present conflicting expert opinions on the matter. Defendants claim that the
null subcarrier must appear once the multiple transmissions are superimposed in the
propagation environment—i.e., where the frequency streams meet in the images, above.
That meeting, they contend, is what makes a “MIMO multi-carrier waveform.” Regents
counter that the initial transmission from the antennas (as illustrated, before the streams
meet), are still MIMO multicarrier waveforms. So the accused technology includes null
subcarriers in a MIMO multicarrier waveform. Defendants would like the Court to rule as
a matter of law, but it is for the jury to decide which expert is correct, and whether the
null subcarrier in the accused technology is in a MIMO multicarrier waveform.
E. Issue 5: Receiver Limitations
Because there is a genuine dispute of material fact as to whether user equipment
(“UE”) infringes the receiver limitation of ’309 patent claim 23 and ’768 patent claims 13
and 18 the Court will deny summary judgment for Issue 5.
1. Background
The disputed patent claims have limitations implemented at both the transmitter
and at a receiver. For example, ’309 claim 23 adds to the patented system “a wireless
communication device configured to receive the transmission signals as received signals,
wherein the wireless communication device is configured to (i) estimate a carrier
frequency offset based on the received signals and (ii) perform channel estimation of the
MIMO channel based on the received signals.” (Unsealed Kaplan Exs., Ex. 20 at 29.)
Claims 13 and 18 of ’768 likewise require “a receiver that receives the waveform from the
transmitter via a wireless communication channel, and demodulates the waveform to
produce estimated data.” (Id., Ex. 12 at 19.)
Regents did not conduct any third party discovery from UE manufacturers (e.g.
Apple or Samsung) to learn how the UE products operate as receivers. But Regents’
expert opined that, based on his knowledge and experience, essentially any UE receiving
data from the Defendants’ transmitters would have to estimate carrier frequency offsets
and perform channel estimation. (See, e.g., Sealed Gosen Non-Infringement Decl., Ex. F
¶ 166 (“Receiving the waveform, demodulating the waveform, and producing estimated
data are necessarily performed by all LTE-compliant UEs when they are connected to an
LTE network because these steps are necessary for a UE to accurately receive LTE data
transmissions from a base station.”).)
2. Analysis
Defendants present two related issues with the UE limitation: first, whether there
is sufficient evidence to show that UEs on Defendants’ networks infringe the receiver
limitation; second, whether Defendants “use” the UEs.
a. Sufficiency of the Evidence
Regents have presented enough evidence of receiver infringement to survive a
motion for summary judgment. Defendants take issue with Regent’s expert not
considering any particular UEs in forming his opinion. However, experts need not present
the best possible evidence. Rather, they must present enough evidence to suggest
infringement may be found. Because Regents’ expert opined that any UE would satisfy
the limitation, a jury could find for Regents even absent presentation of any specific UEs.
If Defendants believe that reasoning is faulty, they may expose its deficiencies through
cross examination and presentation of contrary evidence.
Defendants also claim the expert testimony is lacking because Dr. Wells does not
examine UE source code to determine how the UEs complete the required functions. But
the patent limitations do not require the estimation be conducted in any particular
manner, just that it happen at all.
If Defendants believe it was inappropriate for Dr. Wells to opine on the receiver
claims without more underlying UE data, the appropriate recourse would have been a
motion to strike under Fed. R. Evid. 702(b). But where Dr. Wells’ opinion remains part of
the record, Regents have established a genuine dispute of material fact.
b. Use and Benefit of UEs
Defendants also claim that, as network carriers, they do not use or benefit8 from
the UEs that infringe on the receiver limitation. That is, they control the transmitters, but
the receivers (e.g., an iPhone) are out of their hands. To be liable for direct infringement,
a party must “use each and every element of a claimed system.” Centillion Data Sys., LLC
v. Qwest Commc’ns Int’l Inc., 631 F.3d 1279, 1284(Fed. Cir. 2011). In Centillion, though, the Federal Circuit clarified that physical control over the infringing product was unnecessary.Id.
For example, when transmitting a message, a party may “use” the patented technology by making the recipient technology “work for [its] patented purpose.”Id.
That is the situation here. Even if the carriers do not control a given cell phone, they cause that receiver to be used for the patented purpose by transmitting the message. See also Intellectual Ventures I LLC v. Motorola Mobility LLC,870 F.3d 1320, 1329
(Fed. Cir. 2017) (“[T]o use a system, a person must control (even if indirectly) and
benefit from each claimed component.”) (emphasis added).
8 Defendants’ networks would have no use without UEs. There is no point in transmitting
data without a receiver so Defendants’ argument on lack of benefit is without merit.
* * *
Because there is a genuine dispute of material fact as to all infringement issues,
the Court will deny Defendants’ motion in full.
V. INEQUITABLE CONDUCT
Defendants move for summary judgment of unenforceability of the ’768 and ’230
patents, as well as the ’317 patent family, based on inequitable conduct. As to the first
two, Defendants allege that Regents intentionally concealed prior art from the USPTO; as
to the ’317 family, Defendants allege Regents omitted inventors during examination.
Because Regents’ omissions do not rise to the high level of inequitable conduct necessary
to establish unenforceability, the Court will deny Defendants’ motion and dismiss any
inequitable conduct defenses from this action.
A. Background
There are two distinct groups of patents at issue here, which the Court will address
in turn.
1. ’768 and ’230 Patents
As previously discussed, the challenged ’768 and ’230 patents claim priority to
several provisional applications, including Provisional Patent Nos. 60/374,886 (“’886
provisional”) and 60/374,935 (“’935 provisional”). The ’886 provisional incorporates an
article the parties refer to as the “Fades Paper,” and the ’935 provisional includes the
“ASILOMAR Paper.” (See Decl. Brianne M. Straka Supp. Defs.’ Mot. Summ. J. of
Unenforceability (“Straka Decl.”) ¶ 4, Ex. 3 at 4 (“’886 provisional”), June 1, 2023, Docket
No. 588; Straka Decl. ¶ 9, Ex. 8 at 64 (“’935 provisional”).)
The Fades paper was first published in some capacity for a conference of the
Institute of Electrical and Electronics Engineers (“IEEE”) in Taiwan between March 20–23,
2001. (Expert Report Sylvia D. Hall Ellis, Ph.D. ¶ 254, June 2, 2023, Docket No. 615.)
Defendants allege the conference was open to persons of ordinary skill in the art and
commonly distributed presented papers. (E.g. Dep. Sylvia Hall-Ellis, Ph.D. at 7, Aug. 10,
2023, Docket No. 678-1.) Regents allege that the paper was first available in a public
library on June 20, 2001. (See Decl. Conrad Gosen Supp. Pl.’s Opp. Summ. J.
Unenforceability (“Gosen Unenforceability Decl.”) ¶ 2, Ex. A. ¶ 289, July 13, 2023, Docket
Nos. 656, 657.) The ’886 provisional was filed on April 22, 2002. (’886 provisional at 2.)
The version of the Fades Paper included in the ’886 provisional application
removed the manuscript date and author names. (See Mem. Supp. Defs.’ Mot. Summ. J.
of Unenforceability (“Unenforceability MSJ”) at 10, June 1, 2023, Docket No. 587.) The
ASILOMAR paper was similarly altered in the ’935 provisional application to remove a
2000 publication date. (Id. at 12–13.)
Nearly two years after submitting the ’886 provisional application, Regents
submitted an unaltered version of the Fades paper alongside 93 other references in an
Information Disclosure Statement (“IDS”). (Straka Decl. ¶ 6, Ex. 5 at 11.) Regents referred
back to the Fades Paper at various points through their prosecution of the ’768 patent.
(See, e.g., id. at 26.)
2. ’317 Patents
The ’317 patent family claims priority to U.S. Provisional Application No.
60/472,297 (’297 provisional”). The ’297 provisional draws on the “CFO article,” and
again omits author names. (Unenforceability MSJ at 14.) The ’297 provisional lists Drs.
Giannakis and Ma as the sole inventors, while Dr. Oh and Dr. Park were listed as additional
authors on the CFO article. (See Straka Decl. ¶ 14, Ex. 13 at 2 (“’297 provisional”).)
Regents contend that Dr. Oh was a visiting researcher in Dr. Giannakis’s lab and Dr. Park
her mentor, but Dr. Oh’s work on the ’297 application was confined to writing computer
programs modeling the inventions Drs. Ma and Giannakis had already established. (See,
e.g., Gosen Unenforceability Decl., Ex. I at 5–9.)
B. Analysis
1. Standard of Review
“Inequitable conduct is an equitable defense to patent infringement that, if
proved, bars enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & Co., 649
F.3d 1276, 1285(Fed. Cir. 2011) (en banc). “Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the [PTO], which includes a duty to disclose to the [PTO] all information known to that individual to be material to patentability . . . .”37 C.F.R. § 1.56
(a). “A breach of this duty— including affirmative misrepresentations of material facts, failure to disclose material information, or submission of false material information—coupled with an intent to deceive, constitutes inequitable conduct.” Honeywell Int'l Inc. v. Universal Avionics Sys. Corp.,488 F.3d 982, 999
(Fed. Cir. 2007).
The party asserting inequitable conduct bears the burden of proving inequitable
conduct. Ulead Sys., Inc. v. Lex Computer & Mgmt. Corp., 351 F.3d 1139, 1146 (Fed. Cir. 2003). Inequitable conduct has two substantive elements. In order to succeed on their claim, Defendants must prove that in the prosecution of its patent, Regents “(1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the [PTO].” Cargill, Inc. v. Canbra Foods, Ltd.,476 F.3d 1359, 1363
(Fed. Cir. 2007) (citation omitted). Courts
disfavor inequitable conduct claims, whose remedy is the “atomic bomb of patent law,”
and in recent years the Federal Circuit has opined that inequitable conduct claims have
“become a common litigation tactic” that has come to “plague[] not only the courts but
also the entire patent system.” Therasense, 649 F.3d at 1288–89.
Under the doctrine of infectious unenforceability, inequitable conduct as to an
early application “may render unenforceable all claims which eventually issue from the
same or a related application.” Fox Indus., Inc. v. Structural Pres. Sys., Inc., 922 F.2d 801,
804 (Fed. Cir. 1990). Thus, if any of the challenged provisional applications are rendered
unenforceable by inequitable conduct, so too may later patents tracing priority to them
be disabled.
2. ’768 and ’230 Patents (Prior Art)
Defendants allege that the date omissions from the Fades paper in the ’886
provisional and ASILOMAR paper in the ’935 provisional render the resulting ’768 and ’230
patents unenforceable. Per Defendants, the dates would have revealed the papers were
prior art, rendering the applications objectionable. The Court will deny Defendants’
motion as to these two patents because the omission was neither material nor
intentional.
a. Materiality
Defendants primarily contend the omission was material because the USPTO
would have otherwise realized the papers were prior art under 35 U.S.C. § 102(b). Section 102(b) clarifies that where, as here, an inventor is the author of prior art, that art will not defeat the inventor’s application if it was publicly disclosed less than one year before the application. Defendants argue that the omitted dates show that the papers were prior art published more than one year ahead of the application date, negating the statutory carve-out.9 The materiality test is generally one of but-for causation: absent the misrepresentation, would the patent have issued? See Therasense,649 F.3d at 1296
.
9 The parties debate when, for purposes of the prior art inquiry, the Fades paper was
published. That question is not outcome-determinative. Either way, the ’935 provisional
included the ASILOMAR paper and was incorporated into both the ’768 and ’230 patents, so they
may be held invalid on the ASILOMAR paper alone. Though the Court will not dwell on a non-
dispositive matter, it will hold that the IEEE Fades paper manuscript satisfied 35 U.S.C. § 102(b)’s publication requirement. Accord Blue Calypso, LLC v. Groupon, Inc.,815 F.3d 1331, 1348
(Fed. Cir. 2016); GoPro Inc. v. Contour IP Holding LLC,908 F.3d 690, 694
(Fed. Cir. 2018).
Per Defendants, an examiner aware of the papers’ publication dates would not have
issued the patents.
The fact that the patents were issued after complete disclosure undermines the
materiality allegations. The Fades paper, with date included, was provided to the USPTO
in an IDS. The ASILOMAR paper, with date included, was disclosed in Regents’ reissue
application for the ’230 patent. Because the applications were granted after disclosure
of the papers with their dates, omission of their dates could not have been the but-for
cause of issuance.
This finding is not without some doubt. In Intellect Wireless, Inc. v. HTC Corp, the
applicant submitted a false declaration to the USPTO to overcome a prior art reference.
732 F.3d 1339, 1342(Fed. Cir. 2013). Though the applicant later submitted correct information, the Federal Circuit held the patent was still unenforceable because the applicant did not “expressly advise the PTO of [the misrepresentation’s] existence, stating specifically wherein it resides.”Id. at 1343
(citation omitted) (alteration in original). The applicant cannot fulfill their duty by “merely suppl[ying] the examiner with accurate facts without calling his attention to the untrue or misleading assertions sought to be overcome, leaving him to formulate his own conclusions.”Id.
Rather, the applicant must “take the necessary action . . . openly.”Id.
(omission in original). Defendants point to this
duty to say the omission was material unless Regents explicitly and specifically pointed
the USPTO to the paper dates while noting the prior omission, which they did not do.
Nonetheless, Intellect Wireless was about correcting an affirmative misstatement,
while this issue is about backfilling an omission. With an omission, the examiner remains
a blank slate. It would be one thing if the applicant said the papers were published in,
say, March 2002. That may require Regents to direct the examiner to the actual, earlier,
publication dates. But when the examiner does not necessarily have any date in mind
and there is no misapprehension to correct, the duty to affirmatively point the examiner
towards the correct date is less important. Accordingly, the Court will not extend the duty
from Intellect Wireless to this case.
The Court will also not accept Defendants’ invitation to forego the materiality
requirement under the “exceptional circumstances” carveout. “When a patentee has
engaged in affirmative acts of egregious misconduct,” the party alleging inequitable
conduct need not prove materiality. Therasense, 649 F.3d at 1292. “After all, a patentee is unlikely to go to great lengths to deceive the PTO with a falsehood unless it believes that the falsehood will affect issuance of the patent.”Id.
Examples of egregious misconduct include the filing of an unmistakably false affidavit, manufacturing false evidence, perjury, suppression of evidence, and bribery. Seeid. at 1293
. Defendants do not bridge the gap, though, between those examples and the omissions at issue here. Cf.id.
at 1292–93 (“Neither mere nondisclosure of prior art references to the PTO nor failure
to mention prior art references in an affidavit constitutes affirmative egregious
misconduct,” so such claims still require proof of but-for materiality.”)
b. Intent to Deceive
Specific intent to deceive must be “the single most reasonable inference able to
be drawn from the evidence.” Therasense, 649 F.3d at 1290(internal quotation omitted). “[W]hen there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found.”Id.
Because intent to deceive is not the single most reasonable
inference, the Court will deny Defendants’ motion on intent grounds as well.
First, though, it is worth a few words doing away with one unreasonable
explanation Regents supply. They allege they did not operate with intent to deceive
because the prosecuting attorney omitted author names and publication dates as his
common practice. Common occurrence does not render an otherwise unlawful activity
acceptable.
Setting aside common practice as an inherent justification, the prosecuting
attorney alleged he left the dates off manuscripts because publication dates often
changed. He may have incorrectly surmised in this case that the manuscript dates would
differ from statutory publication dates and they were therefore irrelevant, but that does
not establish intent to deceive. It establishes an incorrect judgment. Defendants contend
that intent is satisfied when an applicant conceals material they “know[] or obviously
should know would be material to the examiner.” See, e.g., Cargill, 476 F.3d at 1368. But those citations are to pre-Therasense cases. In Therasense, the Federal Circuit revisited inequitable conduct en banc because those claims were getting out of control. Therasense,649 F.3d at 1285
. As part of its efforts to hem in inequitable conduct claims, the court expressly repudiated the “should have known” standard.Id. at 1290
.
Defendants have thus not put forth a plausible defense of inequitable conduct.
3. ’317 Patents (Inventorship)
For many of the same reasons, the Court will deny Defendants’ motion with
respect to the ’317 patent family.
a. Materiality
The Court’s above analysis of the ultimate issuance of the patents after disclosure
applies equally here, counseling denial. But-for materiality has not been established. A
few additional points unique to the ’317 patents are worth mentioning.
First, Defendants have not established but-for materiality because they have not
established that Dr. Oh and Dr. Park should have been listed as inventors. Pre-AIA 35
U.S.C. § 102(f) speaks of inventors, not coauthors. Even if coauthors were omitted, the
patent could still have been issued if those coauthors were not inventors. Defendants
have not carried their burden to show that Dr. Oh and Dr. Park were coinventors and thus
have not shown the patent would not have issued but for the omission.10
Defendants also allege the egregious misconduct exception should extend to
inventorship issues. In support, they cite a Federal Circuit case that made no mention of
10 Defendants suggest inventorship need not be resolved to hold a patent unenforceable.
But the case they cite for that proposition was decided before Therasense, and thus, before the
Federal Circuit settled on a but for standard for materiality. See Advanced Magnetic Closures.
Inc. v. Rome Fastener Corp., 607 F.3d 817, 828(Fed. Cir. 2010). As discussed, though, but for causation makes inventorship a critical part of the inquiry. egregious misconduct and was issued before that court developed the carveout in Therasense, and two post-Therasense district court decisions. The Court disagrees that inventorship is a good candidate for a per se misconduct rule. The egregious misconduct exception still ties back to whether the misstatement was made in search of patentability where it would otherwise be in doubt. But inventorship omissions are a different kind of issue. There is no indication the invention would be unpatentable if Regents had added Dr. Oh as an inventor. Her omission would not advance their patent application. Such omission would be far from model behavior, but would be targeted at other ends, such as hoarding royalties or credit. The Federal Circuit has counseled that “enforcement of an otherwise valid patent does not injure the public merely because of misconduct, lurking somewhere in patent prosecution, that was immaterial to the patent’s issuance.” Therasense,649 F.3d at 1292
.
What is more, the cases that Defendants cite are about exclusion of inventors, not
authors. Even if there is an egregious misconduct carveout for exclusion of inventors,
Defendants do not advance sufficient facts that Dr. Oh and Dr. Park are inventors for
purposes of triggering that carveout.
b. Intent to Deceive
As above, the single most reasonable inference is not to deceive. To start, it is
worth noting here that the omission was not selective. It is not as if the patent prosecutor
only erased Dr. Oh’s and Dr. Park’s names; Drs. Giannakis and Ma were omitted from the
paper, too.
Defendants cite Advanced Magnetic, 607 F.3d at 832and Frank’s Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd.,292 F.3d 1363
, 1375–77 (Fed. Cir. 2002) to suggest
inventor omission is inherent evidence of intent to deceive. Again, these cases beg the
question whether Drs.’ Oh and Park were “true inventors.” And again, the Court will not
overly credit pre-Therasense rules from the wild west days of inequitable conduct.
In sum, the Court will deny Defendants’ Motion for Summary Judgment because
Defendants have not met their heavy burden for inequitable conduct of establishing
materiality or intent to deceive. And because the Court finds Defendants’ inequitable
conduct allegations are legally deficient, it will issue summary judgment for Regents and
dismiss inequitable conduct defenses from this action.
CONCLUSION
In sum, the Court will technically grant Regents’ motion for summary judgment
that Ming PCT is not prior art, though it will allow Defendants’ to substitute the Ming US
application to make the same prior art arguments. The Court will also hold as a matter of
law that the ’230 patent does not violate the original patent rule. And Defendants’
motions for summary judgment will be denied. Accordingly, because none of these
rulings terminate the action, the case may proceed.
ORDER
Based on the foregoing, and all the files, records, and proceedings herein, IT IS
HEREBY ORDERED that:
1. Plaintiffs’ Motion for Summary Judgment (1) That the Ming Reference Is Not
Prior Art and (2) That the 230 Patent Is Not Invalid Under the Original Patent
Rule [Docket No. 536]11 is GRANTED in part and DENIED in part;
Granted insofar as the Ming PCT application is not prior art, but denied
insofar as Defendants may substitute the Ming US application for
invalidity arguments;
Granted as to the holding that the ’230 patent does not violate the
original patent rule;
2. Defendants’ Motion for Summary Judgment of Invalidity of the ’230 Reissue
Patent Based on Regents’ Violation of the Original Patent Requirement [Docket
No. 543]12 is DENIED;
3. Defendants’ Motion for Summary Judgment of Non-Infringement of U.S. Patent
Nos. 7,251,768, RE45,230, 8,588,317, 8,718,185, and 8,774,309 [Docket
No. 580]13 is DENIED; and
11 ECF No. 14-4669, Docket No. 568; ECF No. 14-4671, Docket No. 556; ECF No. 14-4672,
Docket No. 587.
12 ECF No. 14-4669 Docket No. 574, ECF No. 14-4671 Docket No. 562; ECF No. 14-4672,
Docket No. 593.
13 ECF No. 14-4669 Docket No. 599, ECF No. 14-4671 Docket No. 572; ECF No. 14-4672,
Docket No. 628.
4. Defendants’ Motion for Summary Judgment of Unenforceability of U.S. Patent
Nos. 7,251,768, RE45,230, 8,588,317, 8,718,185, and 8,774,309 Based on
Inequitable Conduct [Docket No. 586]14 is DENIED.
DATED: February 23, 2024 ___s/John R. Tunheim___
at Minneapolis, Minnesota. JOHN R. TUNHEIM
United States District Judge
14 ECF No. 14-4669 Docket No. 614, ECF No. 14-4671 Docket No. 574; ECF No. 14-4672,
Docket No. 626. Trial Court Opinion
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
REGENTS OF THE UNIVERSITY OF
MINNESOTA,
Plaintiff,
v.
AT&T MOBIILITY LLC,
Defendant Civil No. 14-4666 (JRT/TNL)
ERICSSON, INC., AND NOKIA OF AMERICA
CORP.,
Intervenor- Defendants
REGENTS OF THE UNIVERSITY OF
MINNESOTA,
Plaintiff,
v.
SPRINT SOLUTIONS, INC. AND SPRINT
SPECTRUM L.P.,
Civil No. 14-4669 (JRT/TNL)
Defendants,
ERICSSON, INC., NOKIA OF AMERICA
CORP., AND NOKIA SOLUTIONS AND
NETWORKS US LLC,
Intervenor- Defendants
REGENTS OF THE UNIVERSITY OF
MINNESOTA,
Plaintiff,
v.
T-MOBILE USA, INC., Civil No. 14-4671 (JRT/TNL)
Defendant,
ERICSSON, INC., NOKIA OF AMERICA
CORP., AND NOKIA SOLUTIONS AND
NETWORKS US LLC,
Intervenor- Defendants
REGENTS OF THE UNIVERSITY OF
MINNESOTA,
Plaintiff,
v.
CELLCO PARTNERSHIP D/B/A VERIZON Civil No. 14-4672 (JRT/TNL)
WIRELESS,
Defendant,
ERICSSON, INC., ALCATEL-LUCENT USA
INC., AND NOKIA OF AMERICA CORP.,
Intervenor- Defendants
MEMORANDUM OPINION AND ORDER ON MOTIONS FOR SUMMARY JUDGMENT
Aamir Abdulqader Kazi, FISH & RICHARDSON, PC, 1180 Peachtree Street
Northeast, Atlanta, GA 30309; Conrad A Gosen, FISH & RICHARDSON, PC,
60 South Sixth Street, Suite 3200, Minneapolis, MN 55402; Frank E.
Scherkenbach, Lawrence K. Kolodney, Whitney Reichel, and Daniel Haran
Wade, FISH & RICHARDSON, PC, One Marina Park Drive, Boston, MA 02210;
John-Paul Robert Fryckman, FISH & RICHARDSON, PC, 12860 El Camino
Real, Suite 400, San Diego, CA 92130; Katherine D. Prescott, FISH &
RICHARDSON, PC, 500 Arguello Street, Suite 400, Redwood City, CA 94603;
Brian J. Slovut and Carrie Ryan Gallia, OFFICE OF THE GENERAL COUNSEL
FOR THE UNIVERSITY OF MINNESOTA, 200 Oak Street Southeast, Suite 360,
Minneapolis, MN 55455; William R. Woodford, AVANTECH LAW, LLC, 80
South Eighth Street, Suite 900, Minneapolis, MN 55402, for plaintiff;
Barbara P. Berens, Kari S. Berman, and Carrie L. Zochert, BERENS & MILLER,
PA, 80 South Eighth Street, Suite 3720, Minneapolis, MN 55402; Benjamin
Hershkowitz, Josh A. Krevitt, Laura Corbin, and Robert Scott Roe, GIBSON,
DUNN & CRUTCHER LLP, 200 Park Avenue, New York, NY 10166; Neema
Jalali, GIBSON, DUNN & CRUTCHER LLP, 555 Mission Street, Suite 3000, San
Francisco, CA 94105; Yeepay Audrey Yang, GIBSON, DUNN & CRUTCHER
LLP, 2001 Ross Avenue, Suite 2100, Dallas, TX 75201, for defendant AT&T
Mobility LLC;
David E. Finkelson and George Brian Davis, MCGUIRE WOODS LLP, Gateway
Plaza, 800 East Canal Street, Richmond VA 23219; Jason W. Cook, MCGUIRE
WOODS LLP, 2000 McKinney Avenue, Suite 1400, Dallas, TX 75201; John A.
Cotter and John Anders Kvinge, LARKIN HOFFMAN DALY & LINDGREN, LTD,
8300 Norman Center Drive, Suite 1000, Minneapolis, MN 55437; Karen D.
McDaniel, TAFT STETTINIUS & HOLLISTER LLP, 2200 IDS Center, 80 South
Eighth Street, Minneapolis, MN 55402, for defendants Sprint Solutions, Inc,
Sprint Spectrum, LP, T-Mobile USA, Inc.;
Frank C. Cimino, Jr., Jeffri A. Kaminski, and Leslie A. Lee, VENABLE LLP, 600
Massachusetts Avenue Northwest, Washington, DC 20001; 55437; Karen D.
McDaniel and Mark G. Schroeder, TAFT STETTINIUS & HOLLISTER LLP, 2200
IDS Center, 80 South Eighth Street, Minneapolis, MN 55402, for defendant
Cellco Partnership d/b/a Verizon Wireless
Casey Lynne Shomaker, Jonathan Nathanial Powers, Nicolas M. Mathews,
Alexander Jefferson Chern, and Warren H. Lipschitz, I, MCKOOL SMITH, PC,
300 Crescent Court, Suite 1500, Dallas, TX 75201; Kevin Hess, MCKOOL
SMITH, PC, 303 Colorado Street, Suite 2100, Austin, TX 78701; Steven
Peters, MCKOOL SMITH, PC, 1999 K Street Northwest, Suite 600,
Washington, DC 20006; Karen D. McDaniel, O. Joseph Balthazor, Jr., and
Michael M. Lafeber, TAFT STETTINIUS & HOLLISTER LLP, 2200 IDS Center,
80 South Eighth Street, Minneapolis, MN 55402; Theodore Stevenson, III,
ALSTON & BIRD LLP, 2200 Ross Avenue, Suite 2300, Dallas, TX 75201, for
defendant-intervenor Ericsson, Inc.
Brianne Straka, David Aaron Nelson, Marc Lawrence Kaplan, Nathaniel
Andrew Hamstra, Athena Diane Dalton, Harrison Rose, Rajat Khanna and
Stephen Andrew Swedlow, QUINN EMANUEL URQUHART & SULLIVAN,
LLP, 191 North Wacker Drive, Suite 2700, Chicago, IL 60606; Eva N.
Edmonds, QUINN EMANUEL URQUHART & SULLIVAN, LLP, 111 Huntington
Avenue, Suite 520, Boston, MA 02199; Jonathan A. Strauss, Christopher
Proczko, and Sonia L. Miller-Van Oort, SAPIENTIA LAW GROUP PLLC, 120
South Sixth Street, Suite 100, Minneapolis, MN 55402; Karen D. McDaniel,
TAFT STETTINIUS & HOLLISTER LLP, 2200 IDS Center, 80 South Eighth
Street, Minneapolis, MN 55402, for defendant-intervenors Nokia of
America Corp. and Nokia Solutions and Networks US LLC;
Plaintiff Regents of the University of Minnesota (“Regents”) filed this action against
Defendant cellular network companies (“Defendants”), claiming infringement of various
patents related to cellular data transmission technology. The parties have filed four
separate motions for summary judgment, many of which contain multiple discrete issues.
The Court will hold that the Ming PCT patent is not prior art but nonetheless allow
Defendants to rely on the Ming US application for their prior art arguments. As to the
original patent dispute, the Court will conclude that even though the rule applies to
narrowing reissues, the ’230 patent complies with the rule. The Court will deny all of
Defendants’ motions for summary judgment of non-infringement because there are
genuine disputes of material facts. And finally, the Court will deny Defendants’
allegations of unenforceability because Defendants do not meet the high bar to prove
inequitable conduct. Accordingly, the action may proceed.
BACKGROUND
I. FACTS
This action involves three groups of patents. The ’768 and ’230 patents improve
the efficiency and accuracy of cellular data transmission through error control coding,
interleaving, mapping, and precoding. (See Mem. Op. & Order Construing Claim Terms
(“Claim Construction”) at 6–8, Aug. 5, 2022, Docket No. 342.)1 The ’317 patent family
1 All docket numbers in this Order correspond to ECF No. 14-4666.
trains cellular receivers to correct for suboptimal conditions, including with null
subcarriers. (Id. at 8–9.)
The general factual background was explained extensively in the Court’s Claim
Construction Order. (See id. at 4–9.) Because the various motions for summary judgment
address disparate issues, the Court will provide specific background for individual issues
in the respective discussion sections.
II. PROCEDURAL HISTORY
In 2014, Regents filed a Complaint against Defendant cellular network companies
asserting claims of direct and indirect infringement and willful blindness. (See Am.
Compl., Jan. 30, 2015, Docket No. 25.) On Defendants’ motion, the Court dismissed
Regents’ willful blindness claims. (Mem. Op. & Order on Mots. Dismiss, Sept. 29, 2015,
Docket No. 45.) Ericsson, Inc. and Nokia of America Corp. intervened as defendants. (See
Order, Mar. 30, 2016, Docket No. 131; Order, Mar. 31, 2016, Docket No. 136.) In 2017,
the Court granted a motion for a limited stay pending a decision on inter partes review
from the United States Patent and Trademark Office (“USPTO”). (See, e.g., Order, May
19, 2017, Docket No. 237.) That stay was lifted in 2020, at which time the Court heard
and decided claim construction arguments. (See Claim Construction.) Some construction
terms were later amended pursuant to party stipulation. (Order Amending Construction
of Claim Terms, Dec. 9, 2022, Docket No. 385.)
The parties have now filed four separate motions for summary judgment on the
topics of prior art, the original patent rule, non-infringement, and inequitable conduct.
(See Pl.’s Mots. Summ. J., June 1, 2023, Docket No. 536; Defs.’ Mot. Summ. J., June 1,
2023, Docket No. 543; Def.’s Mot. Summ. J., June 1, 2023, Docket No. 580; Def.’s Mot.
Summ. J., June 1, 2023, Docket No. 586.) Regents’ motions are nondispositive, requesting
resolution of two anticipated defenses. Defendants’ motions, on the contrary, would
dispose of the action if granted in various combinations.
DISCUSSION
I. STANDARD OF REVIEW
Summary judgment is appropriate when there are no genuine issues of material
fact and the moving party can demonstrate that it is entitled to judgment as a matter of
law. Fed. R. Civ. P. 56(a). A fact is material if it might affect the outcome of the lawsuit,
and a dispute is genuine if the evidence could lead a reasonable jury to return a verdict
for either party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248(1986). A court considering a motion for summary judgment must view the facts in the light most favorable to the nonmoving party and give that party the benefit of all reasonable inferences to be drawn from those facts. Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,475 U.S. 574, 587
(1986).
Summary judgment is appropriate if the nonmoving party “fails to make a showing
sufficient to establish the existence of an element essential to that party’s case, and on
which that party will bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S.
317, 322(1986). “To defeat a motion for summary judgment, a party may not rest upon allegations, but must produce probative evidence sufficient to demonstrate a genuine issue [of material fact] for trial.” Davenport v. Univ. of Ark. Bd. of Trs.,553 F.3d 1110
,
1113 (8th Cir. 2009).
II. MING AND PRIOR ART
Regents first move for summary judgment that Patent Cooperation Treaty
application WO 03/085875 (“Ming PCT”) is not prior art. Defendants’ invalidity expert,
Dr. Stephen B. Wicker, opines that Ming PCT is prior art to the ’230 and ’768 patents. But
Regents argue that the Ming PCT application did not check the required boxes (quite
literally) for an international patent application to serve as prior art. Thus, Defendants
should be precluded, as a matter of law, from arguing invalidity based on Ming PCT.
Because Ming PCT did not “designate” the United States, the Court will grant
Regents’ Motion for Summary Judgment and hold that Ming PCT is not prior art to
the ’230 and ’768 patents as a matter of law. Nonetheless, the Court will allow Dr. Wicker
to base his prior art arguments on the Ming US patent because such substitution would
substantially comply with the Court’s invalidity disclosure deadlines and would not
unfairly prejudice Regents.2
A. Background
Defendants’ expert asserts that Ming PCT is prior art that undermines the validity
of the ’230 and ’768 patents. (See, e.g., Decl. of Conrad A. Gosen Supp. Pl.’s Mots. Summ.
2 As will be discussed later in this Order, the Court will allow Regents similar flexibility to
assert a non-timely infringement theory.
J. (“Gosen Ming Decl.”) ¶ 2, Ex. 1 (“Wicker Rpt.”) ¶¶ 249–51, June 1, 2023, Docket No.
539). The ’230 and ’768 patents each trace their priority dates to five provisional
applications filed on April 22, 2002. (Id. ¶¶ 195–96.) Ming PCT, in turn, traces priority to
Ming US, filed April 5, 2002. (Id. ¶ 249.) Ming PCT’s priority date precedes the ’230
and ’768 priority dates, so it may conceivably serve as prior art.
Pursuant to Court deadlines, Defendants supplied Regents with several batches of
proposed invalidity arguments. (See, e.g., Decl. of Conrad A. Gosen Supp. Pl.’s Reply Supp.
Mot. Summ. J. (“Gosen Ming Reply Decl.”) ¶ 6, Ex. E, Aug. 10, 2023, Docket No. 687.)
Defendants contested the validity of the ’230 and ’768 patents based on the Ming PCT
application, not the Ming US application. (E.g., Wicker Rpt. ¶ 249.) The time to raise new
invalidity defenses has now passed.
B. Analysis
“[A] patent is presumed valid, and this presumption exists at every stage of the
litigation.” Sanofi-Synthelabo v. Apotex, Inc., 470 F.3d 1368, 1375(Fed. Cir. 2006) (internal quotation omitted). A defendant bears the burden of establishing patent invalidity by clear and convincing evidence. See35 U.S.C. § 282
(a); Amgen Inc. v. F. Hoffman-La Roche Ltd.,580 F.3d 1340, 1362
(Fed. Cir. 2009). For a patent to be valid, it must be novel and nonobvious.35 U.S.C. §§ 102
, 103. This requires consideration of whether the claimed invention was previously patented and whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date” to “a person having ordinary skill in the art.”35 U.S.C. § 103
.
Regents’ Motion and Defendants’ response raise two distinct issues. First, is Ming
PCT cognizable as prior art under the provisions governing international patents? Second,
if not, may Dr. Wicker substitute the Ming US patent for the Ming PCT application to
support his prior art opinions? No, and yes.
1. Ming PCT
The parties agree that pre-America Invents Act (“pre-AIA”) 35 U.S.C. § 102(e) determines whether Ming PCT is prior art to the ’230 and ’768 patents. Pre-AIA §102(e) provides two avenues for a patent application to serve as prior art. The second is at issue here: “an international application filed under the [Patent Cooperation Treaty] shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.”35 U.S.C. § 102
(e)(2)
(emphasis added). This dispute turns on whether Ming PCT “designated the United
States” for purposes of section 102(e).
For Regents, the answer is clear. The cover of the PCT application has a section for
“Designated States.” The Ming PCT application designates a number of countries, but
none are the United States. (See Gosen Ming Decl., Ex. 2 at 2.) It therefore does not
satisfy section 102(e)(2).
Defendants point to the priority data section of the application, which indicates
that the application seeks priority to the Ming US application. (See id.) Even though the
United States is not included in the “Designated States” section, Defendants contend that
the statutory definition of “designated” in section 102(e) is more capacious. For purposes
of Chapter 35, “[t]he term ‘international application designating the United States’ means
an international application specifying the United States as a country in which a patent is
sought.” 35 U.S.C. § 351(e). Per Defendants, marking a United States patent as the
application from which priority is sought necessarily implies that a patent is sought in the
United States. After all, how could an international application seek priority to a United
States patent unless “a patent is sought” in the United States?
Though not completely unfounded, the Court will not adopt Defendants’ view. To
begin, Defendants bear the burden of proving invalidity. 35 U.S.C. § 282(a). A PCT
application is relatively weak evidence of designation when the actual designation section
of the application excludes the United States. Accepting the Defendants’ arguments
would also undermine the notice function of designation. A prospective United States
patent applicant would naturally check the “Designated States” section of a PCT
application and feel relatively secure under § 102(e)(2) if the United States was not
included in the list. It is also not overly burdensome to require an applicant to check the
appropriate boxes for designated states even if the same country is already listed in the
priority section.
The Manual of Patent Examining Procedure (“MPEP”) confirms this reading. It
clarifies that “[t]he international application for which the priority of one or more earlier
applications filed in or for a Contracting State is claimed may contain the designation of
that State.” (Gosen Ming Reply Decl. ¶ 2, Ex. A at 6 (reproducing Appendix T of the 2001
MPEP).) If claimed priority was coterminous with designation, the application would—
not may—designate the contracting state.
Ultimately, because the Ming PCT application did not “designate” the United States
for purposes of pre-AIA § 102(e)(2), the Court will grant Regents’ Motion for Summary
Judgment and not allow Defendants to argue invalidity based on the Ming PCT
application.
2. Ming US
Defendants argue in the alternative that Dr. Wicker should be allowed to substitute
the Ming US application for the Ming PCT application to make his prior art arguments.
Even though Dr. Wicker primarily opined on Ming PCT as prior art, Defendants assert—
and Regents do not contest—that the two applications are identical in their relevant
disclosures. The Court will allow Dr. Wicker to base his opinions on the Ming US
application.
Regents ask the Court to slice the bologna awfully thin. They claim Dr. Wicker did
not base any invalidity arguments on the Ming US patent. That may be technically true,
but Dr. Wicker, when first describing the Ming PCT application, noted that it
“substantively includes identical disclosure as the Ming [US application].” (Wicker Rpt.
¶ 249). While it may formally be too late for the Defendants to rely on a new ground for
invalidity, Regents can hardly claim to be caught off guard by the Ming US application.
* * *
In sum, Ming PCT may not serve as prior art to invalidate the ’230 and ’768 patents,
but Defendants may substitute Ming US to make the same arguments.
III. ’230 PATENT AND ORIGINAL PATENT RULE
The Court will grant Regents’ Motion for Summary Judgment that the ’230 patent
is not invalid under the original patent rule and deny Defendants’ inverse motion to the
same effect. Although the original patent rule applies to narrowing reissues, the ’230
patent satisfies that rule.
A. Background
The ’230 patent is a reissue of the ’647 patent, granted pursuant to 35 U.S.C. § 251.
(Wicker Rpt. ¶ 1034.) The ’647 patent incorporated five provisional patent applications
by reference. (Decl. of Alexander Chern Supp. Defs.’ Mot. Summ. J. (“Chern Decl.”) ¶ 3,
Ex. 2 at 14, June 1, 2023, Docket No. 549.)
The ’230 reissue includes some fairly significant alterations from the claims in
the ’647 patent. For example, both parties point to the following additions and changes
to claim 1 of the patent:
’647 ’230
A wireless communication device A wireless communication device
comprising: comprising:
an encoder that applies a linear a first encoder that encodes a
transformation to a stream of data stream based on an error-
information bearing symbols control code to produce encoded
selected from a constellation symbols;
having a finite alphabet to produce an interleaver that interleaves
a stream of precoded symbols that the encoded symbols to produce
are complex numbers and are not interleaved symbols;
restricted by the constellation of the a constellation mapper that
information bearing symbols; and maps the interleaved symbols to
a modulator to produce an produce a stream of information
output waveform in accordance bearing symbols selected from a
with the stream of precoded constellation having a finite
symbols for transmission through a alphabet;
wireless channel. [an] a second encoder that
applies a linear transformation to
[a] the stream of information
bearing symbols selected from [a]
the constellation having [a] the
finite alphabet to produce a stream
of precoded symbols that are
complex numbers and that are not
restricted by the constellation of the
information bearing symbols; and
a modulator to produce an output
waveform in accordance with the stream of
precoded symbols for transmission through
a wireless channel.
(Gosen Ming Decl. ¶¶ 4–5, Ex. 3 at 28, Ex. 4 at 23.)
The reissue made similar changes to claim 16 of the ’230 patent and added a new
49th claim. (Defs.’ Mem. Supp. Mot. Summ. J. at 8–9, June 1, 2023, Docket No. 555.))
Regents claim that all additions to the ’647 patent in the ’230 reissue stem from the five
provisional applications incorporated by reference into the ’647 patent.
B. Analysis
When a patent is defective, the patentee may apply for a reissued patent that
cures the error. See 35 U.S.C. § 251. The so-called “original patent rule” applies to such reissues. Stemming from judicial doctrine, Congress only allows reissue “for the invention disclosed in the original patent.”25 U.S.C. § 251
(a); Antares Pharma, Inc. v. Medac Pharma Inc.,771 F.3d 1354
, 1358–62 (Fed. Cir. 2014) (cataloging the precedential and statutory history of the original patent rule). The original specification “must clearly and unequivocally disclose the newly claimed invention” in the reissue. Antares,771 F.3d at 1362
. That is, the original specification “must do more than merely suggest or indicate the invention recited in reissue claims.” Forum US, Inc. v. Flow Valve LLC,926 F.3d 1346, 1351
(Fed. Cir. 2019); see also U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp.,315 U.S. 668, 676
(1942).
Compliance with the original patent rule is generally a matter of law, appropriate
for summary adjudication. See Forum US, 926 F.3d at 1350–51. The inquiry may still
present underlying questions of fact as to what a specification says on its face, and the
Court may consult expert evidence to construe the meaning of terms of art. See id.The inquiry focuses on the original specification rather than original claims; indeed, the very point of a reissue is often to alter the original claims. Antares,771 F.3d at 1362
. The question, then, “is whether one skilled in the art, reading the specification, would identify the subject matter of the new claims as invented and disclosed” in the original specification. Forum US,926 F.3d at 1353
(quoting In re Amos,953 F.2d 613, 618
(Fed.
Cir. 1991)).
1. Scope of the Original Patent Rule
The Court must first decide if the original patent rule even applies to the ’230
reissue. Regents claim the original patent rule only applies to broadening reissues—those
that “enlarg[e] the scope of the claims of the original patent.” 35 U.S.C. § 251(d). While
Regents are correct that broadening reissues are significantly more likely to run afoul of
the original patent rule, it would be a bridge too far to hold that the original patent rule
never applies to narrowing reissues.
Regents primarily make their case by pointing to over a century’s worth of
decisions applying the rule to broadening reissues. Many of those cases contain some
language tying the original patent rule to broadening reissues. See, e.g., Corbin Cabinet
Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42–43 (1893) (“It is settled by the authorities that,
to warrant new and broader claims in a reissue . . . it must further appear from the
original patent that they constitute parts or portions of the invention, which were
intended or sought to be covered or secured by such original patent.” (emphasis added)).
The original patent rule undoubtedly presents a heightened challenge for
broadening reissues. But even though many cases say the original patent rule applies to
broadening reissues, none say the rule applies only to broadening reissues and there are
several reasons for the Court to not so hold.
First, the statutory structure. 35 U.S.C. § 251(a) establishes the rules for reissue
patents “in general,” while section 251(d) covers broadening reissues only. If Congress
wanted the original patent rule to apply only to broadening reissues, it could have put the
rule in section 251(d). Instead, it inserted the language in section 251(a), mandating
application to all reissues.
Second, it would be a historic anomaly to apply the rule only to broadening
reissues. After all, the original patent rule first appeared nearly thirty years before the
Supreme Court even approved broadening reissues. Compare Battin v. Taggert, 58 U.S.
(17 How.) 74, 84–85 (1854) (original patent rule), with Miller v. Bridgeport Brass Co.,104 U.S. 350, 351
, 354–55 (1881) (broadening reissues); accord Antares,771 F.3d at 1359
(“The requirement became even more important when the Supreme Court first held that
broadening reissue applications were permissible.”). It would make little sense to
constrain the rule to a context that did not even exist at the time the rule developed.
Finally, and perhaps most importantly, the Federal Circuit is skeptical of a
broadening only limitation. In Cioffi v. Google, LLC, a Federal Circuit panel invalidated
reissue claims under the original patent rule. No. 18-1049, 2023 WL 2981491, at * 6 (Fed.
Cir. Apr. 18, 2023). The full court later issued an order denying Cioffi’s petition for
rehearing en banc. No. 18-1049 (Fed. Cir. July 17, 2023) (per curiam). In that order, the
Federal Circuit rejected the petitioners’ theory that the original patent rule does not apply
to narrowing reissues.
To be sure, the Federal Circuit’s statements in the order denying rehearing are not
controlling; they are dicta within dicta. Though the petitioners argued that the original
patent rule does not apply to narrowing reissues, the Federal Circuit concluded it “d[id]
not need to decide that issue” because (1) petitioners had waived that argument, and (2)
the claims at issue were broadening reissues. Id.at 2–3. Nonetheless, the order still serves as persuasive authority. The Federal Circuit concluded that neither its precedent nor the text of section 251 support limiting the original patent rule to broadening reissues.Id.
The Court will hold the same.
Although there is no firm precedential command against applying the original
patent rule to narrowing reissues, such reissues may more easily pass muster. Even if
narrowing reissues are more likely to satisfy the original patent rule, though, the Court
will not hold that they are automatically valid without examining the specific reissues in
this case.
2. Application of the Original Patent Rule
Defendants do not allege the claims in the ’230 reissue were pulled out of thin air.
(Cf. Decl. of Conrad A. Gosen Supp. Pl.’s Opp’n to Defs.’ Mot. Summ. J. ¶ 2, Ex. 1 at 12–
128,, July 13, 2023, Docket No. 660) (tracing each ’230 claim to the ’647 specification or
material incorporated therein).) The dispute instead is whether the original ’647
specification disclosed the ’230 claims in a clear enough fashion to satisfy the original
patent rule. And specifically, whether incorporation by reference is clear enough.
The law is surprisingly thin on whether material incorporated by reference satisfies
the original patent requirement. Neither party cites any case that specifically addresses
that question. But Defendants bear the burden of proof as the moving party, not to
mention the presumption of validity of the reissued patent absent clear and convincing
evidence to the contrary. See Sanofi-Synthelabo, 470 F.3d at 1375;35 U.S.C. § 282
(a).
Absent specific caselaw on the matter, Defendants rely on the general rule that
the original specification must “clearly and unequivocally” “expressly disclose[]” the
“exact embodiment claimed on reissue.” Cioffi, 2023 WL 2981491, at *4 (quoting Antares,
771 F.3d at 1362–63). Incorporation by reference, they claim, is not clear or unequivocal
enough to satisfy that standard. But the Court sees no reason why a proper citation on
the face of the reissue application is not clear enough to satisfy the original patent rule
when the only real difference would be whether the applicant wrote a proper citation to
the source material instead of copying and pasting that content into the specification.
One non-controlling opinion, Dart Indus., Inc. v. Banner, 636 F.2d 684(D.C. Cir. 1980), suggests incorporation by reference does not suffice. The reference there read “this application is a continuation-in-part of my copending application.”Id. at 686
. The court denied the reissue, claiming incorporation of the “copending application” claims would add new matter in violation of section 251.Id.
at 687–88.
Nonetheless, the incorporation statement in Dart Industries was far less explicit
than the incorporation statement in the ’647 application. Marking an application as a
“continuation-in-part” is not nearly as clear an indication of desire to incorporate as
recitation of the provisional applications, “the entire contents of which are incorporated
herein by reference.” Compare id. at 686, with (Chern Decl. ¶ 3, Ex. 2 at 14.) In fact, the court in Dart Industries contrasted the continuation-in-part language with an “incorporation by reference in an application of matter elsewhere written down (not necessarily in a patent application), for economy, amplification, or clarity of exposition, by means of an incorporating statement clearly identifying the subject matter which is incorporated and where it is to be found.”Id. at 686
(quotation omitted). The
incorporation in the ’647 specification meets that description, unambiguously
incorporating identified matter for brevity’s sake.3
Defendants not only take issue that material was incorporated by reference, but
also that the original application incorporated too many disparate sources. Again,
though, they provide little support for their “too much material” argument beyond the
general “clear and unequivocal” standard of the original patent rule. So long as the
underlying claims are in fact reflected in those sources, the Court finds the disclosure no
less explicit than a monstrous application that copies and pastes the claims instead.
3 Defendants also point to the specification requirements of 35 U.S.C. § 112, which forbids parties from incorporating “essential material” by reference. See37 C.F.R. § 157
(d). To the extent a regulation governing section 112 even applies to section 251, though, it would not apply to the ’647 application because the application was filed before the regulation was enacted. Compare69 Fed. Reg. 56482
, 56539 (Sept. 21, 2004), with (Chern Decl., Ex. 2 at 2 (showing the
application was filed in 2003).).
In sum, because reissues are presumed valid and the Court finds incorporation by
reference sufficient to satisfy the original patent rule, the Court will grant Regents’ motion
for summary judgment that the ’230 patent is not invalid and deny Defendants’ converse
motion.
IV. NON-INFRINGEMENT
In patent cases, “summary judgment of noninfringement is proper when no
reasonable factfinder could find that the accused product contains every claim limitation
or its equivalent.” Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942, 949 (Fed. Cir. 2016).
Defendants claim five separate infringement issues are ripe for summary judgment. But
because genuine disputes of material fact remain, the Court will deny Defendants’ Motion
in full.
A. Issue 1: Mapping Interleaver Output
Defendants’ move for non-infringement of ’768 claims 1, 13, 18, and 21, and ’230
claims 1, 2, 3, 16, 17, 42, 46, and 49 (collectively, the “LP Patents”). Because the Court
will allow Regents to introduce a doctrine of equivalents theory of infringement, the Court
will deny Defendants’ motion as to the first issue.
1. Background
The LP Patents all (1) encode, (2), interleave, and (3) map data. The accused
products add a step 2.5 in between interleaving and mapping: scrambling. (Sealed Exs.
Decl. Conrad A. Gosen Supp. Pl.’s Opp. Defs.’ Mot. Summ. J. Non-Infringement (“Sealed
Gosen Non-Infringement Decl.”), Ex. A ¶ 250, July 14, 2023, Docket No. 664.) Encoding
adds redundancy to information streams to allow identification and correction of errors.
(Sealed Exs. Supp. Decl. Marc L. Kaplan Supp. Defs.” Mot. Summ. J. Non-Infringement
(“Sealed Kaplan Exs.”), Ex. 2 459, June 2, 2023, Docket No. 617.) Interleaving reorders
the encoded bits. (/d. 4] 192.) Scrambling then modifies the representation of an
interleaved bit sequence so there are roughly equal numbers of ones and zeroes and
ensures there are no long sequences of ones or zeroes. (/d., Ex. 11 4 229.) Finally,
mapping, as relevant here, converts groups of ones and zeroes to predetermined symbols
that represent those bits. (/d., Ex. 2 4 72.) Of primary importance to this dispute is
everything that happens after interleaving. That is, scrambling (where applicable) and
mapping.
Defendants provide a helpful overview illustration of these steps, undisputed by
Regents, with example input data of 1100:
LP Patents:
Input data Mapped symbols
1100 Encoder 11110000 interleaver 10010011 Mapper ACDB
a Symbol A
11 SymbolB
01 Symbol
00 Symbol D
Accused Technology:
-21-
Input data Mapped symbols
1100 Encoder 11110000 Interleaver 10010011 || Scrambler | 10101010 Mapper AAAA
Sri
10 Symbol A
11 SymbolB
01 Symbol
00 06©=—- Symbol D
(Defs.’ Mem. Supp. Summ J. Non-Infringement (“Defs.’ Non-Infringement MSJ”) at
9-10, June 1, 2023, Docket No. 581.)
The LP Patent claims all specify that “the interleaved” data is mapped. (See, e.g.
Decl. Marc L. Kaplan Supp. Defs.’ Mot. Summ. J. Non-Infringement (“Unsealed Kaplan
Exs.”), Ex. 1 at 28, June 1, 2023, Docket No. 583.) Following fact discovery, Regents moved
to add a doctrine of equivalents theory to its infringement claims. (Decl. Conrad A. Gosen
Supp. Pl.’s Mot. Leave Amend, Ex. A at 9-10, Dec. 16, 2022, Docket Nos. 395, 396.) They
alleged that there is no “substantial difference” between the interleaved and scrambled
data streams for purposes of mapping because the scrambled data represents the same
underlying interleaved data. (/d.) Magistrate Judge Tony N. Leung denied Regents’
motion to add a doctrine of equivalents theory, ruling that Regents were not diligent in
timely adding the theory. (Tr. Hearing Mot. Leave to Amend at 41-44, Jan. 27, 2023,
Docket No. 444.)
2. Analysis
As Defendants note, the Magistrate Judge’s order denying Regents’ motion to add
a doctrine of equivalents theory would be all but fatal to Regents’ theory of infringement.
-22-
Failure to allow a doctrine of equivalents theory would leave Regents with only a literal
infringement claim, where Regents would have to establish that “every limitation set
forth in a claim must be found in an accused product, exactly.” Advanced Steel Recovery,
LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1319 (Fed. Cir. 2015) (quotation omitted).
Because each claim with a mapping step requires mapping “the interleaved” data
stream, technology that only maps scrambled outputs does not literally infringe the
patent.4 It maps a slightly different configuration of data than the data from the
interleaved stream. Regents claim there is a battle of the experts as to whether the
scrambled data is effectively the same as the interleaved data. (Compare Sealed Kaplan
Exs., Ex. 11 ¶¶ 232–36, with Sealed Gosen Exs., Ex. D ¶ 34.) This is precisely the argument
the doctrine of equivalents is meant to capture, though. See Warner-Jenkinson Co., Inc.
v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997) (“[A] product or process that does not
literally infringe upon the express terms of a patent claim may nonetheless be found to
infringe if there is ‘equivalence’ between the elements of the accused product or process
and the claimed elements of the patented invention.”). But even if scrambling only
changes the representation of the underlying data, Defendants’ products do not literally
map “the interleaved data stream.” They map its equivalent: the scrambled data.
4 Claims 13 and 21 of the ’768 patent discuss mapping “the encoded data stream” rather
than “the interleaved” data stream. The forthcoming analysis applies equally to that language:
no more is the unit mapping “the encoded” data than it is mapping “the interleaved” data.
At times, Regents suggest that the scrambled data is the interleaved data, so there
is literal infringement. Even under a summary judgment standard, though, the Court finds
that no reasonable jury could accept that assertion. Briefly consider the example chart,
above. The interleaved data stream is 10010011. The scrambled data stream is
10101010. By the time that scrambled data stream is mapped, it is not identical to the
interleaved data stream, even if the underlying message it carries is the same. Regents
contend that the scrambled data is the same as the interleaved data because the
underlying data is preserved, and upon unscrambling the interleaved data again appears.
But that is the whole point of this technology: to change the representation of data while
maintaining the underlying information. If a user inputs 1100 and all technology works
according to plan, the receiver will ultimately output 1100 even though the underlying
data has undergone changes of representation in the meantime.
Notwithstanding the above analysis, the Court will deny summary judgment
because it will allow Regents leave to introduce a doctrine of equivalents theory of
infringement. From a case management perspective, the Magistrate Judge was correct
to deny Regents’ motion to amend. But in a case that is nearly ten years old, the Court is
willing to allow minor flexibility on issues of timing to ensure full resolution of significant
issues. Just as the Court will allow Defendants’ to rely on the Ming US application for their
invalidity arguments, the Court will allow Regents to rely on the doctrine of equivalents
for their interleaver infringement claims. To the extent a brief reopening of discovery is
necessary to allow development of those two issues, the parties may file appropriate
motions with the Magistrate Judge.
B. Issue 2: Restricted to the Mapper
The Court will deny summary judgment as to Issue 2 because Defendants did not
advance the theory of non-infringement as to ’768 patent claims 13 and 18 that they now
expect Regents’ expert to rebut.5
1. Background
The ’768 patent has several claim limitations comparing characteristics of the
“alphabet” for a precoder with the “alphabet” for a related mapper. Signal-processing
alphabets have some number of distinct symbols. For example, the mapper in the
illustration provided for Issue 1, above, had four symbols in its alphabet: A, B, C, and D.
Claim 13, on which claim 18 is dependent, specifies a limitation for a transmitter
that includes “a precoder that linearly precodes the constellation symbols over a complex
field without restriction to an alphabet size of the constellation to produce a joint coded-
precoded data stream.” (Unsealed Kaplan Exs., Ex. 12 at 19.) The parties have jointly
stipulated that “over a complex field without restriction to an alphabet size” means “that
5 Defendants admit that their non-infringement theories for claims 1 and 21 were
contingent on the Magistrate Judge granting their motion to strike. (Defs.’ Non-Infringement
MSJ at 24.) Because the Magistrate Judge denied Defendants’ motion to strike and the Court has
affirmed that order, the Court will deny Defendants’ motion for summary judgment of non-
infringement of claims 1 and 21. (See Sealed Order at 10, Nov. 17, 2023, Docket No. 719; Mem.
Op. & Order Den. Defs.’ Appeal at 8, Feb. 22, 2024, Docket No. 738.)
can produce a number of different complex values that are not limited to the number of
constellation symbols that can be produced by the mapping unit.” (Joint Claim
Construction Statement (“JCC”) at 4, Oct. 20, 2021, Docket No. 298.) For claims 13 and
18, it is the size of the alphabet that matters. Any alphabet size that differs would satisfy
the limitation.
2. Analysis
Defendants argue there is no dispute of material fact as to whether the accused
precoders “can produce a number of different complex values that are not limited to the
number of constellation symbols that can be produced by the mapping unit,” as required
by the claim construction. (Defs.’ Non-Infringement MSJ at 21.) Defendants’ expert
found that the accused mapper and accused precoder each produce four symbols, so the
alphabet size does not change, and thus the limitation is not met. (Sealed Kaplan Exs., Ex.
11 ¶¶ 251–56.) Defendants’ argument hinges primarily on the fact that Regents’ expert
does not address whether the size of the alphabet changes.
Regents’ expert did not address the size of the alphabet because Defendants’ non-
infringement contentions did not dispute that their products infringe on the alphabet size
limitation. (See id., Ex. 16 at 6–8.) Their non-infringement contention for claim 13 simply
incorporated their contentions for claim 1 by reference. (See id. at 3, 7.) But alphabet
size does not matter for claim 1; indeed, the very motion before the Court now admits
that claim 1 presents a different alphabet issue from claim 13. (See id.) Because the
alphabet size was not disputed, there was nothing for Regents’ expert to respond to.
Defendants claim that Regents never alleged infringement of the alphabet size
limitation, so Defendants were the ones that did not need to respond. Nonetheless, in
Regents’ infringement claim chart for the ’768 patent, they claim “Defendant’s LTE
network has included and continues to include systems that also have a precoder that
linearly precodes the constellation symbols over a complex field without restriction to an
alphabet size of the constellation to produce a joint coded-precoded data stream.”
(Sealed Exs. Supp. Decl. Marc L. Kaplan Supp. Defs.’ Reply Mem. Summ. J. Non-
Infringement (“Sealed Kaplan Reply Exs.”), Ex. A at 18, Aug. 10, 2023, Docket No. 674
(emphasis added).) This infringement allegation references infringement of the alphabet
size limitation. Accordingly, the Court will deny the Motion for Summary Judgment of
non-infringement of claims 13 and 18 of the ’768 patent.
C. Issue 3: Symbol Interleaver
Defendants move for summary judgment of non-infringement of all ’768 claims.
There is a genuine dispute of material fact between the parties’ experts, so the Court will
deny Defendants’ motion.
1. Background
Each independent claim of the ’768 patent (Nos. 1, 13, 21) requires an interleaver
process. (Unsealed Kaplan Exs., Ex. 12 at 18–19.) In its claim construction order, the Court
constructed all interleaver terms, including those in the ’768 patent, identically. (Claim
Construction at 24.) The Court resolved two primary disputes in the order. (Id.)
Importantly, it rejected Regents’ assertion that “interleave” should be construed to
include interleaving groups of symbols, rather than solely interleaving individual symbols.
(Id. at 26.) The Court held that “[t]he term ‘interleave’ on its face, does not include the
interleaving of groups of symbols,” and the patents make clear the subject is individual
symbols/bits. (/d. at 26-27.)
Shortly thereafter, Regents moved for reconsideration of the Court’s construction
of interleaver terms. (PI.’s Mot. Reconsider Construction of Claim Terms, Aug. 25, 2022,
Docket No. 349.) Nowhere in the motion did Regents object to the Court’s ruling on
symbol groups. (See id. at 4-5.) Rather, it worried that the Court’s order did not give
separate definitions to interleaver in the various places it appeared throughout the ’230
and ’768 patents. (/d.) The parties stipulated to a construction providing various
definitions of the term as it appeared in different locations, which the Court approved.
(Order Am. Construction of Claim Terms, Dec. 9, 2022, Docket No. 385.) As relevant here,
it provided the following two constructions:
been reordered
produce permuted blocks of [sic: | reordering them
precoded] symbols” (768:21)
(Id. at 3.)
The accused product here interleaves quadruplets of symbols. (See Unsealed
Kaplan Ex., Ex. 8 at 9.) Regents do not dispute that these quadruplets are “groups” of
symbols.
-28-
2. Analysis
Regents raise both a procedural and a substantive argument as to why the accused
product does not fit into the carveout for group interleaving that the Court has already
addressed. Only the substantive argument is meritorious.
First, Regents argue that the Court’s construction order that addressed group
interleaving does not govern; it was superseded by the stipulated amendments. Not so.
To begin, the group analysis played no role in the amendment. Regents’ motion was
completely unrelated, challenging instead whether “interleaver” could be defined
universally. Then, in reaching a stipulated compromise, Defendants clarified with Regents
that the amendments incorporated the portion of the Court’s ruling excluding interleaved
groups. (Decl. Marc L. Kaplan Supp. Defs.’ Reply Mem. Supp. Mot. Summ. J. Non-
Infringement, Ex. 24 at 4, Aug. 10, 2023, Docket No. 673.)
Even if the Court’s ruling on interleaving groups of symbols somehow evaporated
(it did not), Regents provide no reason why the Court’s logic during claim construction
should not apply equally now.
Regents next argue that, even if the construction order governs, it does not defeat
the infringement claim. Under the Court’s construction, interleaving involves
“reordering” symbols. When groups of symbols are reordered, some symbols are also
reordered relative to one another. This theory is best illustrated by Regents’ example,
below:
\ 7
rin
\ /
\/
/ \
(PI.’s Opp. Defs.’” Mot. Summ J. Non-Infringement at 35, July 13, 2023, Docket No.
661.)
When groups are interleaved, individual symbols in one group will be reordered
relative to individual symbols in another. For example, orange 3A no longer sits in the
same position relative to green 2A. Thus, even though groups are interleaved, so too are
individual symbols. The Court’s prior orders never said groups may not be interleaved,
only that group interleaving is not independently sufficient.
As Defendants observe, it is difficult to imagine a situation in which groups will be
interleaved while individual symbols are not. Though Regents’ theory pushes the bounds
of the Court’s claim construction order, it is sufficient to go to trial when the Court can
further assess the theory after testimony. As Regents’ expert notes, the interleaver here
“take[s] the precoded symbols and reorder[s] them,” which is what the construction
order requires. (Order Am. Construction of Claim Terms at 3.)
-30-
D. Issue 4: Null Subcarrier
Issue Four essentially boils down to one question: What does it mean for a null
subcarrier to appear in a Multiple Input, Multiple Output (“MIMO”) Multi-Carrier
Waveform? Because the parties’ experts establish a genuine dispute of material fact on
the matter, the Court will deny summary judgment as to Issue Four.
1. Background
All independent claims in the ’317 patent family6 require a “null subcarrier.” (See,
e.g., Decl. Conrad A. Gosen Supp. Pl.’s Opp. to Defs.’ Mot. Summ. J. Non-Infringement
(“Unsealed Gosen Non-Infringement Exs.”), Ex. N at 20, 26, 28–29, July 13, 2023, Docket
No. 663.) For purposes of the ’317 patent family, the Court construed “subcarrier” as
follows: “In a MIMO multi-carrier waveform, one of a number of carrier frequencies
within a larger frequency band.” (Claim Construction at 37.) The Court limited subcarriers
in the ’317 family to MIMO systems because every patent in the family “clearly use[s]
MIMO systems.” (Id. at 38.) As to what a MIMO system is, the Court provided a fairly
barebones statement that “in a MIMO transmission system, the transmitter uses multiple
antennas to transmit data to a receiver.” (Id. at 37.) The Court also constructed “null
subcarrier” as “[a] subcarrier on which no value is intended to be transmitted during a
specific time period.” (Id. at 39.)
6 ’317 claim 1, ’185 claim 9, ’309 claims 13, 16, 19, 23, and 24.
In a MIMO system, the receive antennas detect a combined signal from all of the
transmit antennas. (Sealed Gosen Non-Infringement Decl., Ex. A 9194.) Defendants
provide a simplified illustration of the process as follows:
Antenna 1 =a
7) a [was
as
□□□
: a ea
Antenna 2
One “null subcarrier” ,
[=]
(Defs.’ Non-Infringement MSJ at 32 4 7 (annotations omitted).)
Essentially, the transmissions from separate antennas are “added” together. (/d.)
When both antennas transmit a null subcarrier (8) on the same frequency (here, f3), their
addition still results in continued propagation of a null subcarrier. On the contrary, when
one transmission source transmits a null subcarrier on a frequency while the other
transmitter transmits a non-zero waveform on the same frequency, the combined
waveform is no longer zero:
A Zs
nm =
Antenna 1
7) ae mika:
has
ea
: if eT
Antenna 2 ce
a No “null subcarrier” ee
Bee
-32-
(id. at 32 4 8 (annotations omitted).)
Thus, though antenna 1 transmits a null subcarrier on f3, antenna 2’s simultaneous
transmission of value G on f3 results in a combined waveform with value G. There is no
longer a null subcarrier once they are combined.
In the accused technology, the frequency addition happens by virtue of the
transmission frequencies being OFDM’ modulated, simultaneously transmitted, and then
superimposed in the propagation environment. (Sealed Kaplan Exs., Ex. 18 4 148.)
Defendants’ expert illustrates the MIMO transmission process in the accused technology
as follows:
Port 0 an >
sy | =
Port Y Se
(/d.)
? Orthogonal frequency division multiplexing.
-33-
This illustration maps on to the second of the simplified illustrations, above.
Although each antenna transmits multiple null subcarriers, they do not transmit a null
subcarrier on any of the same frequencies. Thus, none of the subcarriers that reach the
receiver after superimposition are null subcarriers. Defendants’ expert claims the
superimposition process results in a MIMO waveform. (Id.) So in the above illustration,
the combined stream would be the MIMO waveform, while the individual pre-addition
transmissions are non-MIMO waveforms. Regents’ expert contends the accused
technology still transmits null subcarriers within the MIMO system. (See, e.g., Sealed
Gosen Non-Infringement Decl., Ex. P ¶¶ 37–39.) It is undisputed that the system as a
whole is a MIMO system.
2. Analysis
The question remaining is whether, for purposes of the ’317 family, it is enough for
a null subcarrier to appear anywhere in a MIMO system. The Court analyzed the “MIMO
multi-carrier waveform” in its claim construction order but did not answer this question.
The parties present conflicting expert opinions on the matter. Defendants claim that the
null subcarrier must appear once the multiple transmissions are superimposed in the
propagation environment—i.e., where the frequency streams meet in the images, above.
That meeting, they contend, is what makes a “MIMO multi-carrier waveform.” Regents
counter that the initial transmission from the antennas (as illustrated, before the streams
meet), are still MIMO multicarrier waveforms. So the accused technology includes null
subcarriers in a MIMO multicarrier waveform. Defendants would like the Court to rule as
a matter of law, but it is for the jury to decide which expert is correct, and whether the
null subcarrier in the accused technology is in a MIMO multicarrier waveform.
E. Issue 5: Receiver Limitations
Because there is a genuine dispute of material fact as to whether user equipment
(“UE”) infringes the receiver limitation of ’309 patent claim 23 and ’768 patent claims 13
and 18 the Court will deny summary judgment for Issue 5.
1. Background
The disputed patent claims have limitations implemented at both the transmitter
and at a receiver. For example, ’309 claim 23 adds to the patented system “a wireless
communication device configured to receive the transmission signals as received signals,
wherein the wireless communication device is configured to (i) estimate a carrier
frequency offset based on the received signals and (ii) perform channel estimation of the
MIMO channel based on the received signals.” (Unsealed Kaplan Exs., Ex. 20 at 29.)
Claims 13 and 18 of ’768 likewise require “a receiver that receives the waveform from the
transmitter via a wireless communication channel, and demodulates the waveform to
produce estimated data.” (Id., Ex. 12 at 19.)
Regents did not conduct any third party discovery from UE manufacturers (e.g.
Apple or Samsung) to learn how the UE products operate as receivers. But Regents’
expert opined that, based on his knowledge and experience, essentially any UE receiving
data from the Defendants’ transmitters would have to estimate carrier frequency offsets
and perform channel estimation. (See, e.g., Sealed Gosen Non-Infringement Decl., Ex. F
¶ 166 (“Receiving the waveform, demodulating the waveform, and producing estimated
data are necessarily performed by all LTE-compliant UEs when they are connected to an
LTE network because these steps are necessary for a UE to accurately receive LTE data
transmissions from a base station.”).)
2. Analysis
Defendants present two related issues with the UE limitation: first, whether there
is sufficient evidence to show that UEs on Defendants’ networks infringe the receiver
limitation; second, whether Defendants “use” the UEs.
a. Sufficiency of the Evidence
Regents have presented enough evidence of receiver infringement to survive a
motion for summary judgment. Defendants take issue with Regent’s expert not
considering any particular UEs in forming his opinion. However, experts need not present
the best possible evidence. Rather, they must present enough evidence to suggest
infringement may be found. Because Regents’ expert opined that any UE would satisfy
the limitation, a jury could find for Regents even absent presentation of any specific UEs.
If Defendants believe that reasoning is faulty, they may expose its deficiencies through
cross examination and presentation of contrary evidence.
Defendants also claim the expert testimony is lacking because Dr. Wells does not
examine UE source code to determine how the UEs complete the required functions. But
the patent limitations do not require the estimation be conducted in any particular
manner, just that it happen at all.
If Defendants believe it was inappropriate for Dr. Wells to opine on the receiver
claims without more underlying UE data, the appropriate recourse would have been a
motion to strike under Fed. R. Evid. 702(b). But where Dr. Wells’ opinion remains part of
the record, Regents have established a genuine dispute of material fact.
b. Use and Benefit of UEs
Defendants also claim that, as network carriers, they do not use or benefit8 from
the UEs that infringe on the receiver limitation. That is, they control the transmitters, but
the receivers (e.g., an iPhone) are out of their hands. To be liable for direct infringement,
a party must “use each and every element of a claimed system.” Centillion Data Sys., LLC
v. Qwest Commc’ns Int’l Inc., 631 F.3d 1279, 1284(Fed. Cir. 2011). In Centillion, though, the Federal Circuit clarified that physical control over the infringing product was unnecessary.Id.
For example, when transmitting a message, a party may “use” the patented technology by making the recipient technology “work for [its] patented purpose.”Id.
That is the situation here. Even if the carriers do not control a given cell phone, they cause that receiver to be used for the patented purpose by transmitting the message. See also Intellectual Ventures I LLC v. Motorola Mobility LLC,870 F.3d 1320, 1329
(Fed. Cir. 2017) (“[T]o use a system, a person must control (even if indirectly) and
benefit from each claimed component.”) (emphasis added).
8 Defendants’ networks would have no use without UEs. There is no point in transmitting
data without a receiver so Defendants’ argument on lack of benefit is without merit.
* * *
Because there is a genuine dispute of material fact as to all infringement issues,
the Court will deny Defendants’ motion in full.
V. INEQUITABLE CONDUCT
Defendants move for summary judgment of unenforceability of the ’768 and ’230
patents, as well as the ’317 patent family, based on inequitable conduct. As to the first
two, Defendants allege that Regents intentionally concealed prior art from the USPTO; as
to the ’317 family, Defendants allege Regents omitted inventors during examination.
Because Regents’ omissions do not rise to the high level of inequitable conduct necessary
to establish unenforceability, the Court will deny Defendants’ motion and dismiss any
inequitable conduct defenses from this action.
A. Background
There are two distinct groups of patents at issue here, which the Court will address
in turn.
1. ’768 and ’230 Patents
As previously discussed, the challenged ’768 and ’230 patents claim priority to
several provisional applications, including Provisional Patent Nos. 60/374,886 (“’886
provisional”) and 60/374,935 (“’935 provisional”). The ’886 provisional incorporates an
article the parties refer to as the “Fades Paper,” and the ’935 provisional includes the
“ASILOMAR Paper.” (See Decl. Brianne M. Straka Supp. Defs.’ Mot. Summ. J. of
Unenforceability (“Straka Decl.”) ¶ 4, Ex. 3 at 4 (“’886 provisional”), June 1, 2023, Docket
No. 588; Straka Decl. ¶ 9, Ex. 8 at 64 (“’935 provisional”).)
The Fades paper was first published in some capacity for a conference of the
Institute of Electrical and Electronics Engineers (“IEEE”) in Taiwan between March 20–23,
2001. (Expert Report Sylvia D. Hall Ellis, Ph.D. ¶ 254, June 2, 2023, Docket No. 615.)
Defendants allege the conference was open to persons of ordinary skill in the art and
commonly distributed presented papers. (E.g. Dep. Sylvia Hall-Ellis, Ph.D. at 7, Aug. 10,
2023, Docket No. 678-1.) Regents allege that the paper was first available in a public
library on June 20, 2001. (See Decl. Conrad Gosen Supp. Pl.’s Opp. Summ. J.
Unenforceability (“Gosen Unenforceability Decl.”) ¶ 2, Ex. A. ¶ 289, July 13, 2023, Docket
Nos. 656, 657.) The ’886 provisional was filed on April 22, 2002. (’886 provisional at 2.)
The version of the Fades Paper included in the ’886 provisional application
removed the manuscript date and author names. (See Mem. Supp. Defs.’ Mot. Summ. J.
of Unenforceability (“Unenforceability MSJ”) at 10, June 1, 2023, Docket No. 587.) The
ASILOMAR paper was similarly altered in the ’935 provisional application to remove a
2000 publication date. (Id. at 12–13.)
Nearly two years after submitting the ’886 provisional application, Regents
submitted an unaltered version of the Fades paper alongside 93 other references in an
Information Disclosure Statement (“IDS”). (Straka Decl. ¶ 6, Ex. 5 at 11.) Regents referred
back to the Fades Paper at various points through their prosecution of the ’768 patent.
(See, e.g., id. at 26.)
2. ’317 Patents
The ’317 patent family claims priority to U.S. Provisional Application No.
60/472,297 (’297 provisional”). The ’297 provisional draws on the “CFO article,” and
again omits author names. (Unenforceability MSJ at 14.) The ’297 provisional lists Drs.
Giannakis and Ma as the sole inventors, while Dr. Oh and Dr. Park were listed as additional
authors on the CFO article. (See Straka Decl. ¶ 14, Ex. 13 at 2 (“’297 provisional”).)
Regents contend that Dr. Oh was a visiting researcher in Dr. Giannakis’s lab and Dr. Park
her mentor, but Dr. Oh’s work on the ’297 application was confined to writing computer
programs modeling the inventions Drs. Ma and Giannakis had already established. (See,
e.g., Gosen Unenforceability Decl., Ex. I at 5–9.)
B. Analysis
1. Standard of Review
“Inequitable conduct is an equitable defense to patent infringement that, if
proved, bars enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & Co., 649
F.3d 1276, 1285(Fed. Cir. 2011) (en banc). “Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the [PTO], which includes a duty to disclose to the [PTO] all information known to that individual to be material to patentability . . . .”37 C.F.R. § 1.56
(a). “A breach of this duty— including affirmative misrepresentations of material facts, failure to disclose material information, or submission of false material information—coupled with an intent to deceive, constitutes inequitable conduct.” Honeywell Int'l Inc. v. Universal Avionics Sys. Corp.,488 F.3d 982, 999
(Fed. Cir. 2007).
The party asserting inequitable conduct bears the burden of proving inequitable
conduct. Ulead Sys., Inc. v. Lex Computer & Mgmt. Corp., 351 F.3d 1139, 1146 (Fed. Cir. 2003). Inequitable conduct has two substantive elements. In order to succeed on their claim, Defendants must prove that in the prosecution of its patent, Regents “(1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the [PTO].” Cargill, Inc. v. Canbra Foods, Ltd.,476 F.3d 1359, 1363
(Fed. Cir. 2007) (citation omitted). Courts
disfavor inequitable conduct claims, whose remedy is the “atomic bomb of patent law,”
and in recent years the Federal Circuit has opined that inequitable conduct claims have
“become a common litigation tactic” that has come to “plague[] not only the courts but
also the entire patent system.” Therasense, 649 F.3d at 1288–89.
Under the doctrine of infectious unenforceability, inequitable conduct as to an
early application “may render unenforceable all claims which eventually issue from the
same or a related application.” Fox Indus., Inc. v. Structural Pres. Sys., Inc., 922 F.2d 801,
804 (Fed. Cir. 1990). Thus, if any of the challenged provisional applications are rendered
unenforceable by inequitable conduct, so too may later patents tracing priority to them
be disabled.
2. ’768 and ’230 Patents (Prior Art)
Defendants allege that the date omissions from the Fades paper in the ’886
provisional and ASILOMAR paper in the ’935 provisional render the resulting ’768 and ’230
patents unenforceable. Per Defendants, the dates would have revealed the papers were
prior art, rendering the applications objectionable. The Court will deny Defendants’
motion as to these two patents because the omission was neither material nor
intentional.
a. Materiality
Defendants primarily contend the omission was material because the USPTO
would have otherwise realized the papers were prior art under 35 U.S.C. § 102(b). Section 102(b) clarifies that where, as here, an inventor is the author of prior art, that art will not defeat the inventor’s application if it was publicly disclosed less than one year before the application. Defendants argue that the omitted dates show that the papers were prior art published more than one year ahead of the application date, negating the statutory carve-out.9 The materiality test is generally one of but-for causation: absent the misrepresentation, would the patent have issued? See Therasense,649 F.3d at 1296
.
9 The parties debate when, for purposes of the prior art inquiry, the Fades paper was
published. That question is not outcome-determinative. Either way, the ’935 provisional
included the ASILOMAR paper and was incorporated into both the ’768 and ’230 patents, so they
may be held invalid on the ASILOMAR paper alone. Though the Court will not dwell on a non-
dispositive matter, it will hold that the IEEE Fades paper manuscript satisfied 35 U.S.C. § 102(b)’s publication requirement. Accord Blue Calypso, LLC v. Groupon, Inc.,815 F.3d 1331, 1348
(Fed. Cir. 2016); GoPro Inc. v. Contour IP Holding LLC,908 F.3d 690, 694
(Fed. Cir. 2018).
Per Defendants, an examiner aware of the papers’ publication dates would not have
issued the patents.
The fact that the patents were issued after complete disclosure undermines the
materiality allegations. The Fades paper, with date included, was provided to the USPTO
in an IDS. The ASILOMAR paper, with date included, was disclosed in Regents’ reissue
application for the ’230 patent. Because the applications were granted after disclosure
of the papers with their dates, omission of their dates could not have been the but-for
cause of issuance.
This finding is not without some doubt. In Intellect Wireless, Inc. v. HTC Corp, the
applicant submitted a false declaration to the USPTO to overcome a prior art reference.
732 F.3d 1339, 1342(Fed. Cir. 2013). Though the applicant later submitted correct information, the Federal Circuit held the patent was still unenforceable because the applicant did not “expressly advise the PTO of [the misrepresentation’s] existence, stating specifically wherein it resides.”Id. at 1343
(citation omitted) (alteration in original). The applicant cannot fulfill their duty by “merely suppl[ying] the examiner with accurate facts without calling his attention to the untrue or misleading assertions sought to be overcome, leaving him to formulate his own conclusions.”Id.
Rather, the applicant must “take the necessary action . . . openly.”Id.
(omission in original). Defendants point to this
duty to say the omission was material unless Regents explicitly and specifically pointed
the USPTO to the paper dates while noting the prior omission, which they did not do.
Nonetheless, Intellect Wireless was about correcting an affirmative misstatement,
while this issue is about backfilling an omission. With an omission, the examiner remains
a blank slate. It would be one thing if the applicant said the papers were published in,
say, March 2002. That may require Regents to direct the examiner to the actual, earlier,
publication dates. But when the examiner does not necessarily have any date in mind
and there is no misapprehension to correct, the duty to affirmatively point the examiner
towards the correct date is less important. Accordingly, the Court will not extend the duty
from Intellect Wireless to this case.
The Court will also not accept Defendants’ invitation to forego the materiality
requirement under the “exceptional circumstances” carveout. “When a patentee has
engaged in affirmative acts of egregious misconduct,” the party alleging inequitable
conduct need not prove materiality. Therasense, 649 F.3d at 1292. “After all, a patentee is unlikely to go to great lengths to deceive the PTO with a falsehood unless it believes that the falsehood will affect issuance of the patent.”Id.
Examples of egregious misconduct include the filing of an unmistakably false affidavit, manufacturing false evidence, perjury, suppression of evidence, and bribery. Seeid. at 1293
. Defendants do not bridge the gap, though, between those examples and the omissions at issue here. Cf.id.
at 1292–93 (“Neither mere nondisclosure of prior art references to the PTO nor failure
to mention prior art references in an affidavit constitutes affirmative egregious
misconduct,” so such claims still require proof of but-for materiality.”)
b. Intent to Deceive
Specific intent to deceive must be “the single most reasonable inference able to
be drawn from the evidence.” Therasense, 649 F.3d at 1290(internal quotation omitted). “[W]hen there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found.”Id.
Because intent to deceive is not the single most reasonable
inference, the Court will deny Defendants’ motion on intent grounds as well.
First, though, it is worth a few words doing away with one unreasonable
explanation Regents supply. They allege they did not operate with intent to deceive
because the prosecuting attorney omitted author names and publication dates as his
common practice. Common occurrence does not render an otherwise unlawful activity
acceptable.
Setting aside common practice as an inherent justification, the prosecuting
attorney alleged he left the dates off manuscripts because publication dates often
changed. He may have incorrectly surmised in this case that the manuscript dates would
differ from statutory publication dates and they were therefore irrelevant, but that does
not establish intent to deceive. It establishes an incorrect judgment. Defendants contend
that intent is satisfied when an applicant conceals material they “know[] or obviously
should know would be material to the examiner.” See, e.g., Cargill, 476 F.3d at 1368. But those citations are to pre-Therasense cases. In Therasense, the Federal Circuit revisited inequitable conduct en banc because those claims were getting out of control. Therasense,649 F.3d at 1285
. As part of its efforts to hem in inequitable conduct claims, the court expressly repudiated the “should have known” standard.Id. at 1290
.
Defendants have thus not put forth a plausible defense of inequitable conduct.
3. ’317 Patents (Inventorship)
For many of the same reasons, the Court will deny Defendants’ motion with
respect to the ’317 patent family.
a. Materiality
The Court’s above analysis of the ultimate issuance of the patents after disclosure
applies equally here, counseling denial. But-for materiality has not been established. A
few additional points unique to the ’317 patents are worth mentioning.
First, Defendants have not established but-for materiality because they have not
established that Dr. Oh and Dr. Park should have been listed as inventors. Pre-AIA 35
U.S.C. § 102(f) speaks of inventors, not coauthors. Even if coauthors were omitted, the
patent could still have been issued if those coauthors were not inventors. Defendants
have not carried their burden to show that Dr. Oh and Dr. Park were coinventors and thus
have not shown the patent would not have issued but for the omission.10
Defendants also allege the egregious misconduct exception should extend to
inventorship issues. In support, they cite a Federal Circuit case that made no mention of
10 Defendants suggest inventorship need not be resolved to hold a patent unenforceable.
But the case they cite for that proposition was decided before Therasense, and thus, before the
Federal Circuit settled on a but for standard for materiality. See Advanced Magnetic Closures.
Inc. v. Rome Fastener Corp., 607 F.3d 817, 828(Fed. Cir. 2010). As discussed, though, but for causation makes inventorship a critical part of the inquiry. egregious misconduct and was issued before that court developed the carveout in Therasense, and two post-Therasense district court decisions. The Court disagrees that inventorship is a good candidate for a per se misconduct rule. The egregious misconduct exception still ties back to whether the misstatement was made in search of patentability where it would otherwise be in doubt. But inventorship omissions are a different kind of issue. There is no indication the invention would be unpatentable if Regents had added Dr. Oh as an inventor. Her omission would not advance their patent application. Such omission would be far from model behavior, but would be targeted at other ends, such as hoarding royalties or credit. The Federal Circuit has counseled that “enforcement of an otherwise valid patent does not injure the public merely because of misconduct, lurking somewhere in patent prosecution, that was immaterial to the patent’s issuance.” Therasense,649 F.3d at 1292
.
What is more, the cases that Defendants cite are about exclusion of inventors, not
authors. Even if there is an egregious misconduct carveout for exclusion of inventors,
Defendants do not advance sufficient facts that Dr. Oh and Dr. Park are inventors for
purposes of triggering that carveout.
b. Intent to Deceive
As above, the single most reasonable inference is not to deceive. To start, it is
worth noting here that the omission was not selective. It is not as if the patent prosecutor
only erased Dr. Oh’s and Dr. Park’s names; Drs. Giannakis and Ma were omitted from the
paper, too.
Defendants cite Advanced Magnetic, 607 F.3d at 832and Frank’s Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd.,292 F.3d 1363
, 1375–77 (Fed. Cir. 2002) to suggest
inventor omission is inherent evidence of intent to deceive. Again, these cases beg the
question whether Drs.’ Oh and Park were “true inventors.” And again, the Court will not
overly credit pre-Therasense rules from the wild west days of inequitable conduct.
In sum, the Court will deny Defendants’ Motion for Summary Judgment because
Defendants have not met their heavy burden for inequitable conduct of establishing
materiality or intent to deceive. And because the Court finds Defendants’ inequitable
conduct allegations are legally deficient, it will issue summary judgment for Regents and
dismiss inequitable conduct defenses from this action.
CONCLUSION
In sum, the Court will technically grant Regents’ motion for summary judgment
that Ming PCT is not prior art, though it will allow Defendants’ to substitute the Ming US
application to make the same prior art arguments. The Court will also hold as a matter of
law that the ’230 patent does not violate the original patent rule. And Defendants’
motions for summary judgment will be denied. Accordingly, because none of these
rulings terminate the action, the case may proceed.
ORDER
Based on the foregoing, and all the files, records, and proceedings herein, IT IS
HEREBY ORDERED that:
1. Plaintiffs’ Motion for Summary Judgment (1) That the Ming Reference Is Not
Prior Art and (2) That the 230 Patent Is Not Invalid Under the Original Patent
Rule [Docket No. 536]11 is GRANTED in part and DENIED in part;
Granted insofar as the Ming PCT application is not prior art, but denied
insofar as Defendants may substitute the Ming US application for
invalidity arguments;
Granted as to the holding that the ’230 patent does not violate the
original patent rule;
2. Defendants’ Motion for Summary Judgment of Invalidity of the ’230 Reissue
Patent Based on Regents’ Violation of the Original Patent Requirement [Docket
No. 543]12 is DENIED;
3. Defendants’ Motion for Summary Judgment of Non-Infringement of U.S. Patent
Nos. 7,251,768, RE45,230, 8,588,317, 8,718,185, and 8,774,309 [Docket
No. 580]13 is DENIED; and
11 ECF No. 14-4669, Docket No. 568; ECF No. 14-4671, Docket No. 556; ECF No. 14-4672,
Docket No. 587.
12 ECF No. 14-4669 Docket No. 574, ECF No. 14-4671 Docket No. 562; ECF No. 14-4672,
Docket No. 593.
13 ECF No. 14-4669 Docket No. 599, ECF No. 14-4671 Docket No. 572; ECF No. 14-4672,
Docket No. 628.
4. Defendants’ Motion for Summary Judgment of Unenforceability of U.S. Patent
Nos. 7,251,768, RE45,230, 8,588,317, 8,718,185, and 8,774,309 Based on
Inequitable Conduct [Docket No. 586]14 is DENIED.
DATED: February 23, 2024 ___s/John R. Tunheim___
at Minneapolis, Minnesota. JOHN R. TUNHEIM
United States District Judge
14 ECF No. 14-4669 Docket No. 614, ECF No. 14-4671 Docket No. 574; ECF No. 14-4672,
Docket No. 626. Reference
- Status
- Unknown