11 F. Supp. 3d 622
E.D. Va.2014Background
- VIS sued Samsung for patent infringement of five related patents (continuations/continuation‑in‑part of a 2005 application) covering multimedia on mobile devices; Samsung denied infringement and asserted invalidity and equitable defenses.
- Samsung amended its answer to add a thirteenth counterclaim and affirmative defense alleging inequitable conduct (signature on a declaration and withholding of the Rakib prior art) after VIS amended its complaint to add willful infringement.
- VIS moved to strike the inequitable conduct counterclaim (or for summary judgment); Samsung sought judicial notice of travel distances (granted).
- The inequitable conduct allegations: (1) Dr. Ann Wang signed Prof. Halal’s name on the '341 application declaration (alleged forgery/untrue signature); (2) failure to disclose the Rakib reference during prosecution of the '733 and '398 patents.
- The court evaluated (a) whether Samsung could add the inequitable conduct counterclaim without leave under Rule 15, and (b) whether summary judgment was appropriate under the Therasense standard (but‑for materiality and specific intent proved by clear and convincing evidence).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the inequitable conduct counterclaim (and related affirmative defense) may be added in response to VIS’s amended complaint without leave | VIS: Samsung needed leave because the counterclaim is not tied to the added willful infringement allegation and expands the case beyond the amendment | Samsung: Addition is proportional to VIS’s amendment (both add bad‑faith theories); permissive or moderate Rule 15 views permit pleading anew | Court: Denied motion to strike — under either permissive or moderate approaches Rule 15 allowed Samsung to add the counterclaim/defense without leave |
| Whether Dr. Wang’s signing of Prof. Halal’s name constitutes inequitable conduct (intent to deceive) | VIS: Signature was authorized or a technical mistake; multiple reasonable inferences preclude finding specific intent; MPEP procedures allow correction | Samsung: Circumstantial evidence and inconsistent testimony create a genuine issue of intent; false signature may be an unmistakably false affidavit or statutory defect rendering patent invalid | Court: Granted summary judgment for VIS — no reasonable factfinder could conclude by clear and convincing evidence that specific intent to deceive existed; also not but‑for material because the error could have been remedied |
| Whether withholding Rakib during prosecution of the '733 patent was inequitable conduct | VIS: No duty to disclose Rakib under MPEP §609.02 for parent‑cited art; even if not disclosed, Rakib was considered in parent file so not but‑for material | Samsung: Duty to disclose for co‑pending applications (McKesson/MPEP §2001.06); nondisclosure was material and intentional | Court: Granted summary judgment for VIS — MPEP §609.02 applied (no duty to resubmit art already of record in parent), and examiner is presumed to consider parent references so Samsung cannot show but‑for materiality |
| Whether withholding Rakib during prosecution of the '398 patent was inequitable conduct | VIS: Same MPEP rule removes duty to disclose prior art cited in ancestor parent; no duty for '398 examiner | Samsung: Alleged nondisclosure was material and intentional | Court: Granted summary judgment for VIS — MPEP §609.02 bars duty to disclose to the '398 examiner; no but‑for materiality shown |
Key Cases Cited
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (establishes but‑for materiality and specific intent as elements of inequitable conduct and an egregious‑misconduct exception)
- Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008) (intent to deceive must be proved by clear and convincing evidence; circumstantial evidence requires single most reasonable inference)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (summary judgment standard; view evidence in nonmovant’s favor and assess whether reasonable jury could find for nonmovant)
- In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (defines standard for willful infringement; explains effect of adding willfulness on scope of litigation)
- Knorr‑Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (willful infringement can lead to enhanced damages and punitive relief)