Certusview Technologies, LLC v. S&N Locating Services, LLC
198 F. Supp. 3d 568
| E.D. Va. | 2016Background
- CertusView sued S&N for patent infringement on five patents (e‑Sketch / Virtual WhiteLine / marking wand family). The court previously held the asserted claims patent‑ineligible under 35 U.S.C. § 101.
- S&N counterclaimed for a declaratory judgment of inequitable conduct against inventors Nielsen, Chambers, Farr and prosecution counsel Teja, alleging five discrete grounds (failure to disclose ESRI ArcPad; failure to disclose TelDig products; false inventorship as to Farr; omission of Block as inventor; and misrepresentations concerning Sawyer/Tucker).
- After a five‑day bench trial, the court considered CertusView’s pre/post‑trial motions (Rule 52(c) partial judgment, motion in limine, motion to enforce expert exclusion, and objections to citations).
- The court concluded § 101 invalidity does not automatically bar consideration of inequitable conduct claims and denied CertusView’s Rule 52(c) and motion in limine; it granted the motion to enforce (excluded portions of lay testimony that crossed into expert territory) and overruled certain objections to cited materials.
- On the merits, the court evaluated materiality (but‑for standard) and specific intent under Therasense for each of S&N’s five theories and found S&N failed to prove inequitable conduct by clear and convincing evidence. Judgment entered for CertusView on the counterclaim.
Issues
| Issue | Plaintiff's Argument (CertusView) | Defendant's Argument (S&N) | Held |
|---|---|---|---|
| Does a court finding of § 101 patent ineligibility preclude adjudication of an inequitable conduct counterclaim? | § 101 is a threshold that, if unmet, precludes consideration of subordinate patentability/unenforceability issues. | § 101 and inequitable conduct address different legal questions; invalidity under § 101 does not excuse misconduct before the PTO. | Court: § 101 ineligibility does not inherently preclude inequitable conduct; denied Rule 52(c). |
| Did CertusView commit inequitable conduct by withholding ESRI ArcPad prior art? | ESRI was not material or specific references were cumulative; no intent to deceive. | ESRI products were relevant prior art that should have been disclosed and were withheld. | Court: S&N failed to show but‑for materiality or specific intent; no inequitable conduct. |
| Did CertusView commit inequitable conduct by withholding TelDig Utility Suite / TelDig Mobile prior art? | TelDig evidence was not shown to anticipate or render claims obvious; CertusView reasonably treated TelDig as addressing different use cases. | TelDig Mobile had a drawing/editor capable of recording locate marks and was material and withheld. | Court: Although some TelDig materials are prior art, S&N failed to prove but‑for materiality or specific intent; no inequitable conduct. |
| Were false inventorship declarations (Farr as inventor; omission of Block) inequitable conduct? | Declarations were correct or any error was not made with intent to deceive; inventorship determinations followed counsel/process. | Farr was not an inventor; Block implemented key code and was wrongly omitted—false declarations were material and made with intent. | Court: Farr contributed sufficiently to be an inventor; Block was not shown to have conceived the claimed inventions; no clear and convincing evidence of false declarations or intent. |
| Were Teja’s statements about Sawyer/Tucker to the PTO material misrepresentations amounting to inequitable conduct? | Teja’s argument that ‘‘locate operation/ticket’’ concepts were absent was attorney argument, not a factual misrepresentation; not but‑for material or made with intent to deceive. | Statements were factual misrepresentations that affected allowance and demonstrate intent. | Court: Statements were reasonable attorney argument; even if misstatements, S&N did not prove but‑for materiality or intent; no inequitable conduct. |
Key Cases Cited
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) (sets heightened standards for proving inequitable conduct: but‑for materiality and specific intent to deceive).
- Am. Calcar, Inc. v. Am. Honda Motor Co., 768 F.3d 1185 (Fed. Cir. 2014) (district court may find both invalidity and inequitable conduct; invalidity does not necessarily foreclose materiality inquiry).
- Apotex Inc. v. UCB, Inc., 763 F.3d 1354 (Fed. Cir. 2014) (affirmed inequitable conduct where misconduct was but‑for material).
- Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013) (discusses but‑for materiality analysis and evaluating intent).
- Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008) (intent and materiality are separate elements; courts should not apply sliding scale).
- Hazel‑Atlas Glass Co. v. Hartford‑Empire Co., 322 U.S. 238 (U.S. 1944) (egregious fraud exception where deliberately false affidavits make misconduct material).
- Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182 (Fed. Cir. 1993) (inequitable conduct and invalidity can coexist).
- Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (patent eligibility should ordinarily be addressed early; does not address inequitable conduct).