Vertical Computer Systems Inc (fka VCSY)

[lbman]

Here is Interwoven's motion...

30 pages worth, minus a bunch of redacted info (Blacked out )

Sounds very desperate!!!! $$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$

BIJAL V. VAKIL (Cal. Bar No. 192878)
[e-mail]
NOAH A. BRUMFIELD (Cal. Bar No. 203653)
[e-mail]
JENNIFER P. GOSSAIN (Cal. Bar No. 254174)
[e-mail]
THOMAS C. FLYNN (Cal. Bar No. 257945)
[e-mail]
WHITE&CASE LLP
3000 El Camino Real
5 Palo Alto Square, 9th Floor
Palo Alto, CA 94306
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR PLAINTIFF AND COUNTERCLAIMDEFENDANT
INTERWOVEN, INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
INTERWOVEN, INC.,
Plaintiff,
vs.
VERTICAL COMPUTER SYSTEMS, INC.,
Defendant.
)))))))))))))))))
Civil Case No.: 3:10-cv-04645-RS
PLAINTIFF AND COUNTERCLAIM
DEFENDANT INTERWOVEN, INC.’S NOTICE
OFMOTION AND MOTION FOR SUMMARY
JUDGMENT FOR UNENFORCEABILITY AND
INVALIDITY OF U.S. PATENT NO. 6,826,744
AND U.S. PATENT NO. 7,716,629
Date: November 29, 2012
Time: 1:30 p.m.
Dept: Courtroom 3
Judge: Hon. Richard Seeborg
JURY TRIAL DEMANDED
FILED UNDER SEAL
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TO DEFENDANT AND ITS ATTORNEY OF RECORD:
PLEASE TAKE NOTICE that on November 29, 2012 at 1:30 p.m., or as soon thereafter
as the matter may be heard, before the Honorable Judge Richard Seeborg in Courtroom 3 of this
Court, located at 450 Golden Gate Avenue, San Francisco, CA 94102, Plaintiff and
Counterclaim-Defendant Interwoven, Inc. (“Interwoven”) will, and hereby does, move this Court
for an order of Unenforceability and Invalidity of U.S. Patent No. 6,826,744 and U.S. Patent No.
7,716,629 (collectively, “Patents-in-Suit”). The Patents-in-Suit are unenforceable because the
inventor knew of his own WebOS product and intentionally withheld this material prior art with
the intent to deceive the U.S. Patent and Trademark Office. Further, the Patents-in-Suit are
invalid under the 35 U.S.C. § 102(b) on-sale bar because the claimed inventions in the Patents-in-
Suit were based upon the inventor’s own WebOS line of products, which were on sale and in
public use more than one year prior to filing of the Patents-in-Suit. This motion is based upon
this Notice of Motion, the Memorandum of Points and Authorities in Support of the Motion, all
pleadings and records on file in this action and any and all other arguments and evidence
presented to this Court at, or before, the hearing on this motion.
Dated: October 22, 2012 Respectfully submitted,
WHITE&CASE LLP
By: /s/ Bijal V. Vakil
Bijal V. Vakil
ATTORNEYS FOR PLAINTIFF AND COUNTERCLAIMDEFENDANT
INTERWOVEN, INC.
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NOAH A. BRUMFIELD (Cal. Bar No. 203653)
[e-mail]
BIJAL V. VAKIL (Cal. Bar No. 192878)
[e-mail]
JENNIFER P. GOSSAIN (Cal. Bar No. 254174)
[e-mail]
THOMAS C. FLYNN (Cal. Bar No. 257945)
[e-mail]
WHITE&CASE LLP
3000 El Camino Real
5 Palo Alto Square, 9th Floor
Palo Alto, CA 94306
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR PLAINTIFF AND COUNTERCLAIMDEFENDANT
INTERWOVEN, INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
INTERWOVEN, INC.,
Plaintiff,
vs.
VERTICAL COMPUTER SYSTEMS, INC.,
Defendant.
)))))))))))))))))))
Civil Case No.: 3:10-cv-04645-RS
PLAINTIFF AND COUNTERCLAIM
DEFENDANT INTERWOVEN, INC.’S
MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT OF ITS MOTION
FOR SUMMARY JUDGMENT FOR
UNENFORCEABILITY AND INVALIDITY OF
U.S. PATENT NO. 6,826,744 AND U.S.
PATENT NO. 7,716,629
Date: November 29, 2012
Time: 1:30 p.m.
Dept: Courtroom 3
Judge: Hon. Richard Seeborg
JURY TRIAL DEMANDED
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TABLE OF CONTENTS
I. INTRODUCTION................................................................................................................... 1
II. STATEMENT OF UNDISPUTED FACTS ........................................................................... 3
A. The WebOS Product Pre-dates the Patents-in-Suit ...................................................... 3
B. The Prior Art, Parent Patent, and Child Patent Contain the Same Drawing
Depicting the WebOS Product ..................................................................................... 4
C. The Inventor Confirmed that these Drawings Were Correct by Leaving them
Unchanged in the Recent Reexaminations of the Patents-in-Suit ................................ 7
III. LEGAL STANDARD FOR SUMMARY JUDGMENT ........................................................ 7
IV. ARGUMENT .......................................................................................................................... 9
A. The Patents-in-Suit are Unenforceable Because the Inventor Engaged in
Inequitable Conduct and Intentionally Deceived both the Patent Office and the
Public ............................................................................................................................ 9
1. The Inventor Provided the WebOS Diagram to His Patent Attorney ............... 10
2. The ’744 Patent Refers to the WebOS Diagram as an Embodiment of the
Invention ........................................................................................................... 11
3. The Inventor Intentionally Misled the Patent Office by Failing to Disclose
WebOS in the ’744 Patent ................................................................................ 13
4. Alternatively, the Inventor Intentionally Misled the Patent Office by
Disclosing the WebOS Drawing in the ’744 Patent as an Embodiment of the
Invention ........................................................................................................... 18
5. Infectious Unenforceability Also Renders the Child ’629 Patent
Unenforceable ................................................................................................... 18
6. Alternatively, the ’629 Patent is Not Entitled to the Filing Date of the
Unenforceable ’744 Patent................................................................................ 19
B. Both the ’744 and ’629 Patents Are Subject to an On-Sale bar and are Invalid in
Light of the Sale and Public Use of the Inventor’s Own WebOS Product ................ 19
1. It is Undisputed WebOS Was On Sale and in Public Use in the United
States More than One Year Prior to the Filing Date of the ’744 Patent ........... 20
2. WebOS is an Embodiment of the ’744 Patent and was Ready to Patent Prior
to the Filing of the ’744 Patent ......................................................................... 20
V. CONCLUSION ..................................................................................................................... 23
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TABLE OF AUTHORITIES
Page(s)
Abbott Labs. v. Geneva Pharms., Inc.,
182 F.3d 1315 (Fed. Cir. 1999) ........................................................................................... 9, 20
Advanced Magnetic Closures, Inc. v. Rome Fastener,
607 F.3d 817 (Fed. Cir. 2010) ................................................................... 13, 14, 15, 16, 17, 18
Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1985) .................................................................................................................. 7
Aventis Pharma S.A. v. Hospira, Inc.,
675 F.3d 1324 (Fed. Cir. 2012) ............................................................................................... 13
Baxter Int’l, Inc. v. McGaw, Inc.,
149 F.3d 1321 (Fed. Cir. 1998) ............................................................................................... 19
Celotex Corp. v. Catrett,
477 U.S. 317 (1986) .................................................................................................................. 7
Fox Indus., Inc. v. Structural Preservation Sys., Inc.,
922 F.2d 801 (Fed. Cir. 1990) ........................................................................................... 18, 19
In re Cygnus Telecommc’ns Tech., LLC,
481 F. Supp. 2d 1029 (N.D. Cal. 2007) (Whyte, J.) ........................................................... 8, 21
Pfaff v. Wells Elecs., Inc.,
525 U.S. 55 (1998) .......................................................................................................... 8, 9, 20
Scaltech, Inc. v. Retec/Tetra, LLC,
269 F.3d 1321 (Fed. Cir. 2001) ................................................................................. 8, 9, 20, 21
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
537 F.3d 1357 (Fed. Cir. 2008) ................................................................................................. 8
Therasense, Inc. v. Becton Dickinson & Co.,
649 F.3d 1276 (Fed. Cir. 2011) ..................................................................................... 8, 13, 17
Therasense, Inc. v. Becton, Dickinson and Co., Case No. 3:04-cv-02123,
2012 LEXIS 42100 (N.D. Cal. Mar. 27, 2012) ......................................................................... 7
Townsend Eng’g Co. v. HiTec Co.,
829 F.2d 1086 (Fed. Cir. 1987) ................................................................................................. 7
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STATUTES
35 U.S.C. § 102(b) ........................................................................................ 3, 4, 7, 8, 9, 11, 19, 23
OTHER AUTHORITIES
Fed. R. Civ. P. 56 ............................................................................................................................ 7
MPEP § 1.56 ................................................................................................................................... 8
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I. INTRODUCTION
The two patents in this case, U.S. Patent No. 6,826,744 (the “’744 Patent”) and the child
U.S. Patent No. 7,716,629 (the “’629 Patent”) (collectively, “Patents-in-Suit”), are both based on
the inventor’s own product, WebOS, which was on sale and in public use years before October 1,
1999, the filing date of the parent ’744 Patent. In the application that resulted in the ’744 Patent,
the inventor included a drawing depicting an embodiment of his invention—a drawing identical
to the one used in the manuals to describe his own earlier WebOS product. This WebOS drawing
has been labeled as Figure 5 in the Patents-in-Suit. Despite knowing that the WebOS product was
on sale and in public use for years before filing the patent applications, the inventor failed to
disclose this material prior art product to the United States Patent and Trademark Office (“Patent
Office”) during the prosecution of the parent ’744 Patent. The inventor now tries to distance
himself from this inequitable conduct by claiming that Figure 5, the WebOS drawing, should
never have been part of the patent disclosures, or if it should have been, it only describes an
“environment” of the invention, not an embodiment.
The inventor’s attempts to explain away his inequitable conduct now are wholly
unconvincing. Tellingly, the inventor has repeatedly presented this exact same WebOS drawing
to the Patent Office with no changes whatsoever and without admitting to the Patent Office that
any change based on the drawings was necessary. This WebOS drawing, taken from the
inventor’s earlier WebOS product manuals, was included in the ’744 Patent application and used
to describe an embodiment of the invention. The exact same WebOS drawing was included in the
child application that resulted in the ’629 Patent.1 This WebOS drawing, Figure 5 of the Patentsin-
Suit, remained unchanged throughout the recent reexaminations of the Patents-in-Suit.
Moreover, the specification detailing Figure 5 as an embodiment of the inventions as claimed in
the Patents-in-Suit never changed, not even during the recent reexaminations. Although, again,
1 Another continuation application, U.S. Patent Appl. No. 12/777,885, which also claims priority
back to the parent ’744 Patent, is currently pending in front of the Patent Office. While that
application has not yet been confirmed as patentable by the Patent Office, and thus is not at issue
in this case, notably, the exact same WebOS drawing is again disclosed in that application.
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the patentee attempted to cover up this inequitable conduct by simply substituting the word
“environment” whenever the word “embodiment” appeared in the specification when referring to
the WebOS drawing in the child ’629 Patent. Such an attempt to continue the deception to the
Patent Office is, again, wholly unconvincing.
The patentee cannot have his cake and eat it too. Either the WebOS drawing is part of the
patented subject matter, or it is not. If the WebOS drawing is part of the patented subject matter,
then the inventor’s own WebOS product, on sale years before he filed for a patent, renders the
Patents-in-Suit invalid. If the WebOS drawing is not part of the patented subject matter, then it is
incumbent on the patentee to return to the Patent Office to try to get these Patents-in-Suit reissued
in light of full disclosures about the inventor’s own prior art WebOS product. It would then be up
to the Patent Office to confirm whether the claimed invention is patentable. Otherwise, the
inventor’s ever-shifting story, running the gamut from the WebOS drawing describing an
embodiment of the claimed invention, to the WebOS drawing describing an “environment” of the
claimed invention, to the WebOS drawing having nothing to do with the claimed invention, runs
entirely afoul of the public notice function of the United States Patent Laws.
Interwoven submits the following issues for the Court’s consideration and seeks a
determination:
1) that the parent ’744 Patent is unenforceable due to inequitable conduct based on
the inventor’s failure to disclose material prior art, namely his own WebOS prior
art, with an intent to deceive the Patent Office;
2) that the child ’629 Patent, which claims priority to the parent ’744 Patent, is
infected by the unenforceability of the parent ’744 Patent, and is thus also
unenforceable;
3) that in the alternative, the child ’629 Patent is not entitled to the filing date of the
invalid and unenforceable parent ’744 Patent; and/or
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4) that the Patents-in-Suit are invalid under the 35 U.S.C. § 102(b) on-sale bar
because the inventor’s own WebOS product was on sale and in public use over one
year prior to October 1, 1999, the filing date of the ’744 Patent.
There are no disputed facts at issue here. There is no dispute that the inventor included a
drawing from his own prior WebOS product in the application that resulted in the ’744 Patent.
There is no dispute that the ’744 patent specification describes this WebOS drawing as an
embodiment of the invention. There is no dispute that the inventor knew of his own WebOS
product and in fact, conceded the product was on sale well before October 1, 1998, more than one
year prior to the filing date of the ’744 patent. There is no dispute that during the prosecution of
the ’744 Patent, the inventor never disclosed the WebOS product to the Patent Office, or the fact
that the drawing describing an embodiment of the claimed invention came from the WebOS
product, which had been on sale and in public use for years. There is no dispute that the child
’629 Patent is a continuation of the parent ’744 Patent and claims priority to the ’744 Patent.
Accordingly, the Patents-in-Suit are invalid and/or unenforceable and this Court should grant
Interwoven’s motion for summary judgment.
II. STATEMENT OF UNDISPUTED FACTS
A. The WebOS Product Pre-dates the Patents-in-Suit
The inventor’s own company, Adhesive Software, Inc. (“Adhesive”), had been marketing
and selling its WebOS line of products for years, long before the patent applications, long before
Vertical’s acquisition of the applications that lead to the Patents-in-Suit, and long before
Vertical’s assertion of these Patents-in-Suit in litigation against numerous companies, including
Microsoft Corporation, LG Electronics, Samsung Electronics—and in this case, Interwoven. Red
act
e
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Figure 5 of the ’744 and ’629 Patents
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C. The Inventor Confirmed that these Drawings Were Correct by Leaving them
Unchanged in the Recent Reexaminations of the Patents-in-Suit
As seen above, the inventor and Vertical used the same WebOS diagram as Figure 5,
disclosing the same elements and features in the same relationships, for both the ’744 and ’629
Patents. During the recent reexaminations of both patents, the inventor and Vertical again chose
to leave the drawing untouched. Further, despite attempts to now call Figure 5 an “environment”
rather than an embodiment of the invention, the description of Figure 5 in the specification
remains otherwise unchanged.
III. LEGAL STANDARD FOR SUMMARY JUDGMENT
Summary judgment should be granted where “there is no genuine issue as to any material
fact and that the moving party is entitled to a judgment as a matter of law.” Fed. R. Civ. P. 56;
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). The standard for summary judgment requires
that “there be no genuine issue of material fact,” meaning that “the mere existence of some
alleged factual dispute between the parties will not defeat an otherwise properly supported motion
for summary judgment.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1985)
(emphasis in original). A genuine issue of material fact exists “if the evidence is such that a
reasonable jury could return a verdict for the non-moving party.” Id. at 248.
“Summary judgment is as appropriate in a patent case as in any other.” Townsend Eng’g
Co. v. HiTec Co., 829 F.2d 1086, 1089 (Fed. Cir. 1987). Here, Interwoven presents four issues
suitable for summary judgment determination: that the parent ’744 Patent is unenforceable due to
inequitable conduct; that the child ’629 Patent is infected by the unenforceability of the
parent ’744 Patent and is also unenforceable; that in the alternative, the child ’629 Patent is not
entitled to the filing date of the invalid and unenforceable parent ’744 patent; and/or that the
Patents-in-Suit are invalid under the 35 U.S.C. § 102(b) on-sale bar. See, e.g., Therasense, Inc. v.
Becton, Dickinson and Co., Case No. 3:04-cv-02123, 2012 LEXIS 42100, at *39-41 (N.D. Cal.
Mar. 27, 2012) (Alsup, J.) (granting summary judgment of unenforceability on remand, due to
inequitable conduct based on inconsistent, incoherent explanation without documentary
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corroboration of alleged reasons to withhold prior art); In re Cygnus Telecommc’ns Tech., LLC,
481 F. Supp. 2d 1029, 1051-52 (N.D. Cal. 2007) (Whyte, J.) (granting summary judgment of
invalidity based on the on-sale bar due to public use of the system even when inventor had only
sought to recoup costs and not to make a profit).
A person applying for a patent has a continuing obligation to disclose prior art to the
Patent Office. See MPEP at § 1.56. To prevail on a motion for inequitable conduct, a party must
show that an individual “failed to disclose material information” during the prosecution of the
patent application and the “individual did so with a specific intent to deceive the PTO.” Star
Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008). Information
is material if “the PTO would not have allowed a claim had it been aware of the undisclosed prior
art.” Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d 1276, 1291 (Fed. Cir. 2011).
Specific intent requires a showing of clear and convincing evidence that Vertical “knew of the
reference, knew that it was material, and made a deliberate decision to withhold it.” Id. at 1290.
According to Therasense, materiality and intent are distinct prongs and should be considered
separately, without using a sliding scale approach to permit a lesser finding of one prong in light
of a stronger finding of the other. Id. at 1290.
Based on the on-sale bar, a person is not entitled to a patent if the invention was “in public
use or on sale in this country, more than one year prior to the date of the application.” 35 U.S.C.
§ 102(b). The Supreme Court has set forth a two-pronged test for deciding whether the on-sale
bar portion of § 102(b) applies: (1) the product whose sale is claimed to be invalidating must be
the subject of a commercial offer for sale, and (2) the invention must be ready for patenting. Pfaff
v. Wells Elecs., Inc., 525 U.S. 55, 67-68 (1998). Regarding the former prong, the Federal Circuit
has held that it is “not necessary for [a defendant] to show that all embodiments of the invention
were on sale more than one year before filing. It is sufficient to show that one embodiment of the
invention was offered for sale during the one-year period.” Scaltech, Inc. v. Retec/Tetra, LLC,
269 F.3d 1321, 1330 (Fed. Cir. 2001). As for the latter prong, an invention is ready for patenting
when “the concept of the invention [is] complete,” with no express requirement that it be reduced
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to practice. Pfaff, 525 at 60-61, 66. “[P]roof that prior to the critical date the inventor had
prepared drawings or other descriptions of the invention that were sufficiently specific to enable a
person skilled in the art to practice the invention” can establish readiness for patenting. Id. at 67-
68. When an invention is on sale, this short-circuits the ready for patenting analysis, and
“obviates any need for inquiry into conception.” Scaltech, 269 F.3d at 1331 (quoting Abbott
Labs. v. Geneva Pharms., Inc., 182 F.3d 1315, 1318-19 (Fed. Cir. 1999)).
Here, summary judgment is appropriate. The facts are undisputed. The inventor knew of
his own prior WebOS product. The WebOS product was on sale and in public use since at least
1996, more than one year prior to October 1, 1999, the filing of the application that resulted in the
parent ’744 Patent, to which the child ’629 Patent claims priority. Figure 5 of the Patents-in-Suit
is identical to the WebOS drawing taken from the WebOS product manuals, and is described as
an embodiment of the invention in the ’744 Patent. The patentee never disclosed the fact that
WebOS was on sale more than one year prior to the Patent Office during the prosecution of
the ’744 Patent. A negative inference of an intent to deceive must be made in light of the
patentee’s behavior throughout the prosecution of the child ’629 Patent, as well as during the
reexamination of the Patents-in-Suit. For example, the patentee now attempts to describe Figure
5 as an “environment,” not an “embodiment” of the inventions. And although the patentee
attempted to whitewash the specification by changing the word “embodiment” to the word
“environment” when referring to Figure 5, the specification describing Figure 5 remains
otherwise unchanged. Thus, the Patents-in-Suit are unenforceable because the inventor had
knowledge of his own prior-art WebOS product and intentionally deceived the Patent Office by
not disclosing it to the Patent Office despite having a continuing obligation to do so. Further, the
Patents-in-Suit are invalid due to the 35 U.S.C. section 102(b) on-sale bar.
IV. ARGUMENT
A. The Patents-in-Suit are Unenforceable Because the Inventor Engaged in
Inequitable Conduct and Intentionally Deceived both the Patent Office and
the Public
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illustrated an embodiment of the invention, the Patent Office would never have granted the
patent. This is precisely the definition of “materiality” set forth in Therasense, 649 F.3d at 1291
(finding that information is material if “the PTO would not have allowed a claim had it been
aware of the undisclosed prior art”).
3. The Inventor Intentionally Misled the Patent Office by Failing to
Disclose WebOS in the ’744 Patent
Despite including the WebOS drawing as Figure 5 and describing it as an embodiment of
the invention in the specification of the parent ’744 Patent, the inventor elected not to disclose the
WebOS product itself to the Patent Office during prosecution of that application. On the face of
the parent ’744 Patent and in its prosecution history, there is no mention of the WebOS product or
any materials pertaining to the WebOS product.
This selective disclosure—representing the diagram as the invention but hiding the
WebOS product itself (from which the diagram was taken)—can only be explained as deliberate
action by the patentee with the specific intent to mislead the Patent Office. See Aventis Pharma
S.A. v. Hospira, Inc., 675 F.3d 1324, 1335-36 (Fed. Cir. 2012) (affirming a district court’s finding
of specific intent to deceive the Patent Office when the patentees selectively chose to provide the
Patent Office with a reference identifying a particular problem to be solved but concealed other
prior art disclosing the corresponding solution).
The child ’629 Patent suffers from all of the same defects. The deliberate intent is even
more apparent because the inventor only disclosed his prior art WebOS system during the
prosecution of the child ’629 Patent after Microsoft raised it as prior art during litigation, almost
49 months after the filing of the child ’629 Patent application. Compare Vakil Decl. at Ex. I
(Information Disclosure Statement submitted during prosecution of the ’629 Patent (Dec. 22,
2008)) with Vakil Decl. at Ex. A (’629 Patent, filed Nov. 29, 2004).
The inventor’s evasive conduct during the deposition and total refusal to explain his patent
also weigh in favor of a finding of deceptive intent. Advanced Magnetic Closures, Inc. v. Rome
Fastener, 607 F.3d 817, 830-31 (Fed. Cir. 2010). In Advanced Magnetic Closures, the Federal
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4. Alternatively, the Inventor Intentionally Misled the Patent Office by
Disclosing the WebOS Drawing in the ’744 Patent as an Embodiment
of the Invention
The facts above are undisputed. Now, in an effort to overcome this clear inequitable
conduct, Vertical claims that the WebOS product and Figure 5 are entirely unrelated to the
invention of the Patents-in-Suit.
That WebOS (and Figure 5) bears no relationship whatsoever to the Patents-in-Suit is
completely unbelievable. But if it were true that there is no connection between the WebOS
product, Figure 5, and the alleged invention, then the patentee misled the Patent Office and the
public by putting forth a completely irrelevant diagram as an alleged embodiment, leaving the
same diagram in during prosecution of the ’629 Patent, and again leaving the same diagram in
during the recent reexamination of both Patents-in-Suit.
5. Infectious Unenforceability Also Renders the Child ’629 Patent
Unenforceable
Based on the doctrine of infectious unenforceability, inequitable conduct in the parent
’744 Patent also transfers to the child ’629 Patent. See Fox Indus., Inc. v. Structural Preservation
Sys., Inc., 922 F.2d 801, 803-804 (Fed. Cir. 1990) (finding that “the duty of candor extends
throughout the patent’s entire prosecution history” and a breach of this duty “may render
unenforceable all claims which eventually issue from the same or a related application”). The
Federal Circuit later clarified this doctrine, holding that claims in a divisional application bearing
no relation to the omitted art are not unenforceable due to inequitable conduct committed in the
Redacted
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parent. Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1332 (Fed. Cir. 1998) (emphasis
added).
The present case is in stark contrast to the Baxter exception and remains squarely within
the realm of the doctrine described by Fox. The claims of the child ’629 Patent extend from the
parent ’744 Patent through a continuation, not a divisional, and are also tied to the omitted
WebOS prior art product. The child ’629 Patent cites WebOS on its face, the amended
specification indicates that the WebOS diagram is an “environment” of the invention, and the
claims of the child ’629 Patent are merely system variants of the parent ’744 Patent claims. Vakil
Decl. at Ex. A (’629 Patent, col. 5:6-19).
Because the child ’629 Patent claims are inextricably linked to the omitted WebOS art
from the parent ’744 Patent, the commission of inequitable conduct during prosecution of the
parent ’744 Patent infects the child ’629 Patent and renders it unenforceable as well.
6. Alternatively, the ’629 Patent is Not Entitled to the Filing Date of the
Unenforceable ’744 Patent
If the Court finds that the child ’629 Patent is not infected by the unenforceability of the
parent ’744 Patent, at the very least, the child ’629 Patent should not be entitled to the filing date
of the invalid and unenforceable parent ’744 Patent. An invalid and unenforceable patent cannot
serve as an application back to which a continuation application may claim priority.
Interwoven therefore requests the Court find that the child ’629 Patent may not claim a
priority date any earlier than its November 29, 2004 filing date.
B. Both the ’744 and ’629 Patents Are Subject to an On-Sale bar and are Invalid
in Light of the Sale and Public Use of the Inventor’s Own WebOS Product
Not only are the Patents-in-Suit unenforceable, plagued by the inequitable conduct
committed during prosecution of the parent ’744 Patent, the Patents-in-Suit are also invalid under
35 U.S.C. § 102(b). Early sales and public use of the inventor’s own WebOS line of products
embodying the patents render the Patents-in-Suit invalid under the 35 U.S.C. § 102(b) on-sale
bar.
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1. It is Undisputed WebOS Was On Sale and in Public Use in the United
States More than One Year Prior to the Filing Date of the ’744 Patent
The initial step in analyzing the first prong of the on-sale bar analysis, regarding
commercial offer for sale, is to determine the earliest filing date of the patent at issue. The
inventor filed for the ’744 Patent on October 1, 1999. The critical date for application of the onsale
bar in this instance is one year earlier, October 1, 1998.
The second step, determining whether the product was the subject of a commercial offer
for sale, is clearly met in this case.
Vertical
does not dispute the occurrence of these transactions. Documents describing multiple sales,
offers for sale, and instances of public usage, including news articles and Vertical’s own press
releases, in addition to the inventor’s testimony, provide irrefutable support that the WebOS and
NewsFlash products were on sale, sold, and in public use prior to the October 1, 1998 date. Vakil
Decl. at Ex. F (McAuley Deposition Exhibit 6) (describing sales and existing public use of
WebOS and NewsFlash on January 11, 1998); Vakil Decl. at Ex. G (McAuley Deposition Exhibit
8) (describing use of NewsFlash by an early customer in 1996); Vakil Decl. at Ex. H (McAuley
Deposition Exhibit 15) (Adhesive’s web site describing WebOS and its selling price, circa 1996).
2. WebOS is an Embodiment of the ’744 Patent and was Ready to Patent
Prior to the Filing of the ’744 Patent
The second prong of the on-sale bar analysis is to determine whether an invention is ready
for patenting, when “the concept of the invention [is] complete.” Pfaff, 525 at 60-61, 66.
Readiness for patenting may be established by drawings or descriptions of the invention. Id. at
67-68. Further, when an invention is actually on sale, this “obviates any need for inquiry into
conception” and short-circuits the readiness analysis. Scaltech, 269 F.3d at 1331 (quoting Abbott
Labs. v. Geneva Pharms., Inc., 182 F.3d 1315, 1318-19 (Fed. Cir. 1999)).
As the WebOS product was both on sale and captured in drawings and description of the
invention before the October 1, 1998 critical date, the second prong is met.
Redacted
Redacted
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Within the section labeled “Detailed Description of the Invention,” the specification of the
parent ’744 Patent describes that the “arbitrary objects,” central to the invention as claimed in the
Patents-in-Suit, permit the creation of “dynamic web pages wherein objects used to construct the
form, function, and content of the web page can contain dynamic elements and static elements.”
Vakil Decl. at Ex. D (’744 Patent, col. 4:64-67). Immediately after this description, the patent
specification refers to Figure 5 as depicting “components of one embodiment of the present
invention used to generate web sites,”5 specifically highlighting various WebOS elements
including a “Web OS Object Manager,” “WebOS object library,” and “WebOS Information
Database.” Id., at col. 5:4-17 (emphasis added).
The WebOS product is one and the same as the subject matter of the claimed invention as
disclosed in the Patents-in-Suit, and it was incumbent on the part of the inventor to serve the
public interest in disclosing this to the Patent Office. See In re Cygnus Telecommc’ns Tech. LLC,
481 F. Supp. 2d at 1050 (“The public interest is best served, and the most effective patent
examination occurs when, at the time an application is being examined, the Office is aware of and
evaluates the teachings of all information material to patentability.”). Both the inventor and his
counsel “had a duty to ensure filings were accurate” as “patent applications are ex parte
proceedings which have substantial effect upon the rights of the public.” Id.
In the specification of the child ’629 Patent, Vertical swapped the word “embodiment”
with the word “environment,” under the guise of a typographical error. Vakil Decl. at Ex. A
(’629 Patent, col. 5:6-19).6 This change, proper or not, fails to alter the analysis. Even as a
purported “environment” of the invention, the diagram remains closely integrated to the WebOS
5 Vertical has claimed that its use of the legal word “embodiment” is a typographical error.
Vertical’s Opening Claim Construction Brief, at p. 4 (Oct. 27, 2011).
6 Notably, the patentee never sought to correct this “typographical” error in the parent ’744
Patent, through either a Certificate of Corrections when the patent first issued, through a reissue,
through the recent reexamination, or by any other means.
Redacted
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product, at least in terms of the object manager and object library, and still depicts a significant
relationship between WebOS and the subject matter of the patent. Moreover, Vertical disclosed
information about its WebOS product line to the Patent Office during prosecution of the ’629
Patent, further highlighting the strong relevance of WebOS to the subject matter of the patent.
Vakil Decl. at Ex. I (Information Disclosure Statement submitted during prosecution of the ’629
Patent (Dec. 22, 2008)).
See Vakil Decl. at Ex.
J (Vertical’s Response to Interwoven’s Second Set of Interrogatories (Nos. 6-13), p. 6 (response
to Interrogatory No. 10 stating that WebOS “does not describe or suggest any element of any
claim of the Patents-in-Suit”) (emphasis added)); Vertical’s Answer to the Amended Complaint,
Dkt. No. 45, at ¶¶ 23-28 (alleging that “[t]o the extent that Adhesive sold or offered for sale
software and/or services that can be described as ‘WebOS’ technology, those goods and/or
services were unrelated and totally immaterial to the invention of the ’744 Patent.”) (emphasis
added);
Not only are the suggestions of Vertical and the inventor in direct conflict to the public
notice function of patents, Vertical and the inventor may not reap the benefits of disclosing a
specific embodiment, potentially avoiding prior art, and only later claim that the disclosure is of
something completely unrelated. If the WebOS diagram shows an embodiment of the invention,
then the parent ’744 Patent is invalid because the WebOS product depicted in the diagram was on
sale more than a year prior to the filing date of the parent ’744 Patent. The child ’629 Patent is
also invalid for the same reason, despite Vertical’s attempts to insulate it from WebOS. On the
other hand, if the WebOS diagram is completely unrelated to the invention as claimed by Vertical
and McAuley, then the PTO granted both of the Patents-in-Suit based on a deliberately
misleading and erroneous disclosure of what the claimed invention actually involves.
Redacted
Redacted
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V. CONCLUSION
The uncontested facts before the Court show that both of the Patents-in-Suit are
unenforceable because the inventor deliberately withheld the existence of the WebOS product,
and the fact that it was on sale and in public use years before the filing of the Patents-in-Suit,
from the Patent Office during the entire prosecution of the parent ’744 Patent and for nearly 49
months after filing the continuation that led to the child ’629 Patent. Unenforceability of the
parent ’744 Patent infects the child ’629 Patent, making it unenforceable as well. Alternatively,
the child ’629 Patent is not entitled to claim priority back to an invalid and unenforceable parent
patent. Finally, both Patents-in-Suit are also subject to an on-sale bar because of early sales and
public use of the inventor’s own WebOS line of products.
Interwoven respectfully asks that this Court grant summary judgment that:
1) the parent ’744 Patent is unenforceable due to inequitable conduct;
2) the child ’629 Patent is unenforceable based on the doctrine of infectious
unenforceability;
3) alternatively, if the Court finds the parent ’744 Patent unenforceable, but elects not to
apply the doctrine of infectious unenforceability, Interwoven respectfully requests that
the Court find that the child ’629 Patent may only claim a priority date no earlier than
its filing date, November 29, 2004; and
4) that the Court grant summary judgment of invalidity of the Patents-in-Suit based on
the 35 U.S.C. § 102(b) on-sale bar in light of the sale and public use of the WebOS
product more than one year prior to the filing of the Patents-in-Suit.
The patentee cannot have its cake and eat it too. Allowing the inventor to obtain a patent
on an invention years after the same invention has been sold to the public, based on a pattern of
actions taken to mislead the patent office, flies in the face of the fundamental quid pro quo
exchange that is the foundation of the patent system. A patent may fairly grant rights to its owner
only as consideration for full and appropriate disclosure in light of the duty of candor.
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