Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 1 of 19
`
`IClayton C. James (Cal. Bar No. 287800)
`clay.james@hoganlovells.com
`Srecko Vidmar (Cal. Bar No. 241120)
`lucky.vidmar@hoganlovells.com
`HOGAN LOVELLS US LLP
`Three Embarcadero Center, Suite 1500
`San Francisco, California 94111
`Telephone: (415) 374-2300
`Facsimile: (415) 374-2499
`
`Robert H. Sloss (Cal. Bar No. 87757)
`bob.sloss@oracle.com
`ORACLE CORPORATION
`500 Oracle Parkway, MS 5OP7
`Redwood Shores, California 94065
`Telephone: (650) 506-5200
`Facsimile: (650) 506-7114
`
`Attorneys for ORACLE CORPORATION and
`ORACLE AMERICA, INC.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`ORACLE CORPORATION, a Delaware
`corporation, and ORACLE AMERICA,
`INC., a Delaware corporation
`
`Plaintiffs,
`
`v.
`
`LANDMARK TECHNOLOGY, LLC, a
`Delaware limited liability company,
`
`Case No. 3:13-cv-03203-NC
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT,
`INVALIDITY AND
`UNEFORCEABILITY OF U.S.
`PATENT NOS. 5,576,951 AND
`7,010,508
`
`Defendant.
`
`DEMAND FOR JURY TRIAL
`
`Plaintiffs Oracle Corporation and Oracle America, Inc. (collectively “Oracle”), through
`
`their undersigned counsel, seek a declaration that U.S. Patent Nos. 5,576,951 (the “‘951 patent”)
`
`and 7,010,508 (the “’508 patent”) are invalid and have not been directly or indirectly infringed by
`
`Oracle and that the ’951 patent is unenforceable because of inequitable conduct committed during
`
`its prosecution.
`
`In support of its request for declaratory judgment relief, Oracle alleges, on
`
`knowledge with respect to its own acts and on information and belief with respect to all other
`
`matters, as follows:
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`Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 2 of 19
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`NATURE OF THE ACTION
`
`1.
`
`This is an action for a declaratory judgment of patent non-infringement and
`
`invalidity arising under the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., and the patent
`
`laws of the United States, Title 35 of the United States Code.
`
`THE PARTIES
`
`2.
`
`Plaintiff Oracle Corporation is a Delaware corporation with its principal place of
`
`business in Redwood Shores, California.
`
`3.
`
`Plaintiff Oracle America, Inc. is a Delaware corporation with its principal place of
`
`business in Redwood Shores, California.
`
`4.
`
`Defendant Landmark Technology, LLC (“Landmark”) is a Delaware corporation
`
`that represents its principal place of business to be at 719 W. Front Street, Suite 157, Tyler, Texas
`
`75702.
`
`JURISDICTION AND VENUE
`
`5.
`
`The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
`
`§§ 1331, 1338(a), 2201(a) and 2202.
`
`6.
`
`This Court has personal
`
`jurisdiction over Landmark because of Landmark’s
`
`contacts within the State of California, which include orchestrating and directing its patent
`
`licensing business from within the State of California. Upon information and belief, Landmark
`
`derives substantial revenues from its patent licensing activities within California. Landmark’s
`
`contacts with California include at least the following:
`
`a.
`
`Lawrence B. Lockwood, the managing member of Landmark Technology,
`
`LLC, resides in California;
`
`b.
`
`Mr. Lockwood has previously asserted patents from the same family as the
`
`Landmark patents in federal courts in California;
`
`c.
`
`At least some of Landmark’s employees or consultants who are directly
`
`involved in Landmark’s current attempted commercialization of its patents reside in
`
`California;
`
`d.
`
`Landmark has licensed its patents to one or more California companies in
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`Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 3 of 19
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`agreements that are governed by California law and in which Landmark agreed to litigate
`
`any disputes related to the agreements in California;
`
`e.
`
`Landmark’s lead attorneys involved in Landmark’s assertion of its patents
`
`reside in California; and
`
`f.
`
`Patrick Nunally – Landmark’s executive who communicated with Oracle
`
`regarding Landmark’s patents – resides in California.
`
`7.
`
`8.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391(b)-(c).
`
`This is an intellectual property matter, which shall be assigned on a district-wide
`
`basis under Civil L.R. 3-2(c).
`
`9.
`
`An immediate, real, and justiciable controversy exists between Oracle and
`
`Landmark as to whether the ’951 patent and the ’508 patent are valid and have been infringed by
`
`Oracle and as to whether the ’951 patent
`
`is unenforceable based on inequitable conduct
`
`committed before the United States Patent & Trademark Office (“PTO”).
`
`FACTUAL ALLEGATIONS
`
`10.
`
`The PTO issued the ’951 patent, entitled “Automated Sales and Services System,”
`
`on November 19, 1996. Lawrence B. Lockwood is listed as the sole inventor on the face of the
`
`’951 patent.
`
`11.
`
`On March 7, 2006,
`
`the PTO issued the ’508 patent, entitled “Automated
`
`Multimedia Data Processing Network,” and also listing Lawrence B. Lockwood as the sole
`
`named inventor.
`
`12.
`
`The ’951 patent and the ’508 patent are in the same patent family, each claiming
`
`priority to U.S. Patent Application No. 06/613,525 filed by Mr. Lockwood on May 24, 1984, and
`
`later issued as U.S. Patent No. 4,567,359. Each of the five figures in the ’508 patent is also
`
`present in the ’951 patent.
`
`13.
`
`Landmark claims to be the owner of all rights in the ’951 patent and the ’508
`
`patent.
`
`14.
`
`On April 30, 2013, Patrick Nunally, Executive Vice President for the Technology
`
`Licensing Group of Landmark, sent a letter to Oracle, a true and correct copy of which is attached
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`Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 4 of 19
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`as Exhibit A to this Complaint.
`
`15. While the April 30, 2013 letter was issued on Landmark letterhead listing an
`
`address in Tyler, Texas, Mr. Nunally actually resides in California.
`
`16.
`
`In the letter, Landmark expressly identified the ’951 patent and alleged that
`
`Oracle’s website at www.oracle.com makes use of the claimed technology of the ’951 patent.
`
`The letter further “offer[ed] [Oracle] a license to use [Landmark’s] patented technology,” and
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`enclosed a proposed license agreement.
`
`17.
`
`The form license agreement required a payment by Oracle in an unspecified
`
`amount in exchange for a license to a “Patent” that is not identified in that form license
`
`agreement. The form agreement lists Lawrence Lockwood, the named inventor of both the ’951
`
`and ’508 patents, as the Managing Member of Landmark.
`
`18.
`
`Over the past several years, Landmark has asserted the ’951 patent and the ’508
`
`patent in dozens of actions against over one hundred operators of e-commerce websites. In fact,
`
`in May and June 2013 alone, Landmark filed at least nine separate patent infringement actions
`
`asserting the ’951 patent and the ’508 patent.
`
`19.
`
`In each of these lawsuits filed in 2013, Landmark asserted both the ’951 patent and
`
`the ’508 patent against operators of e-commerce websites. Landmark has asserted both the ‘951
`
`patent and the ‘508 patent against Oracle customers, some of which have requested
`
`indemnification from Oracle.
`
`20.
`
`Landmark’s letter to Oracle alleging that Oracle’s website practices the ’951
`
`patent, as well as Landmark’s prodigious history of asserting the ’951 patent and the ’508 patent,
`
`which are in the same patent family, constitute affirmative acts by Landmark related to the
`
`enforcement of the ’951 patent and the ’508 patent against Oracle.
`
`21.
`
`Contrary to Landmark’s contentions, Oracle does not infringe any claims of the
`
`’951 patent or the ’508 patent.
`
`22.
`
`Furthermore, contrary to Landmark’s contentions, the claims of the ’951 patent
`
`and the ’508 patent are invalid for failing to satisfy one or more conditions for patentability under
`
`35 U.S.C. §§ 101, 102, 103 and/or 112.
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`23.
`
`As described below, during prosecution of the applications that became the ’951
`
`patent, the inventor and his agents made several false statements to the PTO and failed to disclose
`
`material information.
`
`In each instance, the false statements and failure to disclose relevant
`
`information were material
`
`to patentability and violated applicable duties of candor. The
`
`applicant’s inequitable conduct included wholesale, verbatim copying of claims from an unrelated
`
`patent.
`
`24.
`
`Based on the communication from Landmark asserting the ’951 patent and
`
`Landmark’s history of asserting the ‘951 and ‘508 patents, Oracle has a reasonable apprehension
`
`that Landmark will institute litigation against Oracle. Further, based on at least the facts alleged
`
`below, the dispute between Oracle and Landmark regarding the validity, infringement and
`
`enforceability of the ’951 patent and the ’508 patent is real, substantial, definite and concrete.
`
`COUNT I: DECLARATION OF NON-INFRINGEMENT OF THE ’951 PATENT
`
`25.
`
`26.
`
`Oracle incorporates herein each of the allegations above.
`
`Landmark has alleged that Oracle infringes the ’951 patent through the use of,
`
`inter alia, its www.oracle.com website.
`
`27.
`
`Oracle has not infringed and is not infringing, directly or indirectly, any valid and
`
`enforceable claim of the ’951 patent because, inter alia, Oracle’s www.oracle.com website does
`
`not include a computer search system for retrieving information or a computerized system for
`
`selecting and ordering a variety of products as specifically claimed in the ’951 patent.
`
`28.
`
`A substantial,
`
`immediate, and real controversy exists between Oracle and
`
`Landmark regarding Oracle’s alleged infringement of the ’951 patent.
`
`29.
`
`Oracle is entitled to a declaration that Oracle does not infringe the ’951 patent.
`
`COUNT II: DECLARATION OF INVALIDITY OF THE ’951 PATENT
`
`30.
`
`31.
`
`32.
`
`Oracle incorporates herein each of the allegations above.
`
`Landmark has asserted that the claims of the ’951 patent are valid.
`
`Oracle contends that the claims of the ’951 patent are invalid for failing to satisfy
`
`one or more conditions for patentability under 35 U.S.C. §§ 101, 102, 103 and/or 112 because,
`
`inter alia, computerized sales and services systems claimed in the ’951 patent, such as Prestel,
`
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`Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 6 of 19
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`Minitel, and Viewtron, were known in the art before the critical date of the ’951 Patent.
`
`33.
`
`A substantial,
`
`immediate, and real controversy exists between Oracle and
`
`Landmark regarding the validity of the ’951 patent.
`
`34.
`
`Oracle is entitled to a declaration that the ’951 patent is invalid.
`
`COUNT III: DECLARATION OF NON-INFRINGEMENT OF THE ’508 PATENT
`
`35.
`
`36.
`
`Oracle incorporates herein each of the allegations above.
`
`The ’508 patent is in the same patent family as the ’951 patent, and has been
`
`asserted by Landmark along with the ’951 patent in a large number of Landmark’s patent
`
`infringement actions, including Landmark’s most recent wave of actions, including against Oracle
`
`customers and against operators of websites with functionality similar
`
`to that of
`
`the
`
`www.oracle.com website referenced in Landmark’s letter to Oracle
`
`37.
`
`Oracle has not infringed and is not infringing, directly or indirectly, any valid and
`
`enforceable claim of the ’508 patent because, inter alia, Oracle’s www.oracle.com website does
`
`not include an automated multimedia system for data processing as claimed in the ’508 patent.
`
`38.
`
`Oracle is entitled to a declaration that Oracle does not infringe the ’508 patent.
`
`COUNT IV: DECLARATION OF INVALIDITY OF THE ’508 PATENT
`
`39.
`
`40.
`
`41.
`
`Oracle incorporates herein each of the allegations above.
`
`Landmark has asserted that the claims of the ’508 patent are valid.
`
`Oracle contends that the claims of the ’508 patent are invalid for failing to satisfy
`
`one or more conditions for patentability under 35 U.S.C. §§ 101, 102, 103 and/or 112 because,
`
`inter alia, computerized multimedia data processing systems claimed in the ’508 patent, including
`
`systems known as “Prestel,” “Minitel,” and “Viewtron,” were known in the art before the critical
`
`date of the ’508 Patent.
`
`42.
`
`A substantial,
`
`immediate, and real controversy exists between Oracle and
`
`Landmark regarding the validity of the ’508 patent.
`
`43.
`
`Oracle is entitled to a declaration that the ’508 patent is invalid.
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`COUNT V: DECLARATION OF UNENFORCEABILITY OF THE ’951 PATENT
`
`44.
`
`45.
`
`Oracle incorporates herein each of the allegations above.
`
`In demanding that Oracle take a license to the ’951 patent, Landmark has asserted
`
`that the claims of the ’951 patent are enforceable.
`
`46.
`
`Oracle contends that the ’951 Patent is unenforceable due to four instances of
`
`inequitable conduct described more fully below, either alone or in combination.
`
`47.
`
`Therefore, a substantial, immediate, and real controversy exists between Oracle
`
`and Landmark regarding the enforceability of the ’951 patent.
`
`First Instance of Inequitable Conduct: Failure to Notify the PTO of Copied Claims
`
`48.
`
`Prosecuting a patent application is an ex parte process, and patent applicants are
`
`subject to the duties of good faith, candor, and disclosure, among others, including a duty to
`
`disclose to the PTO all information known to that individual to be material to patentability.
`
`49.
`
`On March 16, 1994, Henri J.A. Charmasson, a patent attorney, filed with the PTO
`
`U.S. Patent Application No. 08/210,301 (the “’301 application”). The sole named inventor in the
`
`’301 application was Lawrence Lockwood.
`
`50.
`
`The ’301 application presented twelve claims for examination to the United States
`
`Patent and Trademark Office (“PTO”). Claims 1-10 of the ’301 application were exact copies of
`
`claims 1-6, 9, 25, 26, and 28, respectively, from U.S. Patent No. 5,241,671 (the “’671 Patent”),
`
`which issued on August 31, 1993. In addition, claim 11 of the ’301 application was a substantial
`
`copy of claim 39 of the ’671 Patent.
`
`51.
`
`The ’671 Patent was issued to Michael Reed and others, and assigned to
`
`Encyclopaedia Britannica, Inc. Upon information and belief, the inventors and the assignee of the
`
`’671 patent are unrelated to the applicants of the ’301 application.
`
`52.
`
`37 C.F.R. § 1.607(c) requires that “[w]hen an applicant [for patent] presents a
`
`claim which corresponds exactly or substantially to a claim of a patent, the applicant shall
`
`identify the patent and the number of the patent claim….”
`
`53. MPEP § 2001.06(d), both in its current incarnation and as it existed at the time the
`
`’301 application was filed, states that “[w]here claims are copied or substantially copied from a
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`Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 8 of 19
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`patent, 37 CFR 1.607(c) requires applicant shall, at the time he or she presents the claim(s),
`
`identify the patent and the numbers of the patent claims…”
`
`54.
`
`Applicants did not notify the PTO that claims 1-11 of the ’301 application were
`
`copied from the ’671 Patent.
`
`55.
`
`37 C.F.R. § 10.23(c)(7) states that “[k]nowingly withholding from the [PTO]
`
`information identifying a patent or patent application of another from which one or more claims
`
`have been copied” constitutes disreputable or gross misconduct.
`
`56. MPEP § 2001.06(d), both in its current incarnation and as it existed at the time the
`
`‘951 Patent was filed, states that “the information required by 37 CFR 1.607(c) as to the source of
`
`copied claims is material information under 37 CFR 1.56….”
`
`57.
`
`Applicants’ failure to notify the PTO that claims 1-11 of the ’301 application were
`
`copied from the ’671 Patent and to identify which claims of the ’671 Patent were copied,
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`constitutes affirmative egregious misconduct.
`
`58.
`
`Applicants’ failure to notify the PTO of the copied claims was material to the
`
`patentability of at least claims 1-9 of the ’951 Patent as issued, which correspond to originally
`
`filed claims 1-7 and 10-11 in the ’301 application, because failure to identify such information to
`
`the PTO is per se material to patentability.
`
`59.
`
`In addition, applicants’ failure to notify the PTO of the copied claims was material
`
`to the patentability of at least claims 1-9 of the ’951 Patent because identifying the copied claims
`
`would have triggered an interference, a much more thorough and in-depth examination as to
`
`whether the claims of the ’301 application were entitled to be issued in light of the existence of
`
`identical claims in a previously-issued U.S. Patent.
`
`60.
`
`On information and belief, the ‘951 Patent would not have issued if the applicants’
`
`had notified the PTO of the copied claims.
`
`61. When he filed the ’301 application, Mr. Charmasson was an experienced patent
`
`attorney. He became a registered patent attorney in 1974, and directly prosecuted over 300
`
`patents to issue, as well as many applications that were abandoned. On information and belief,
`
`Mr. Charmasson has filed and prosecuted well over one hundred patent applications that claimed
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`Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 9 of 19
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`to be a continuation, continuation-in-part, or divisional of a previous application.
`
`62.
`
`On information and belief, applicants affirmatively chose not to notify the PTO
`
`that they copied the claims of the ’301 application from the ’671 Patent with the intent to mislead
`
`the PTO. Alternatively, such intent to mislead the PTO is the only reasonable inference from the
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`totality of the circumstances alleged in this complaint.
`
`63.
`
`Therefore, applicants’ failure to notify the PTO of the copied claims constitutes
`
`inequitable conduct that renders the ‘951 Patent unenforceable.
`
`Second Instance of Inequitable Conduct: False Claim of Priority in the ’973 Application
`
`64.
`
`35 U.S.C. § 120 allows for a patent application to claim priority to an earlier-filed
`
`application only where the earlier-filed application discloses the invention in the later-filed
`
`application in the manner provided by 35 U.S.C. § 112.
`
`65. MPEP § 201.08 defines a continuation-in-part application as “an application filed
`
`during the lifetime of an earlier nonprovisional application, repeating some substantial portion or
`
`all of the earlier nonprovisional application and adding matter not disclosed in the said earlier
`
`nonprovisional application.”
`
`66.
`
`The ’951 Patent claims priority to May 24, 1984 – the filing date of U.S. Patent
`
`4,567,359 – through a series of applications including U.S. Patent Application Nos. 06/822/115
`
`(the “’115 application”), 07/152,973 (the “’973 application”), 07/396,283 (the “’283
`
`application”), and 08/116,654 (the “’654 application”).
`
`67.
`
`Applicants’ claim of a May 24, 1984 priority date was based on applicants’
`
`representations to the PTO that the ’115, ’973, ’283, and ’654 applications were an unbroken
`
`chain of continuation or continuation-in-part applications leading back to the original application
`
`filed on May 24, 1984.
`
`68.
`
`Specifically, in applications filed on February 18, 1988, August 21, 1989,
`
`September 3, 1993, and March 16, 1994, Mr. Charmasson represented to the PTO that the ’973
`
`application is a continuation-in-part of the ’115 application.
`
`69.
`
`This representation was false since the specification of the ’973 application does
`
`not share any substantive overlap with the specification of the ’115 application nor does it repeat
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`Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 10 of 19
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`any substantial portion of the ’115 application. In fact, the ’973 application was an entirely new
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`application, with brand new figures and a completely new specification.
`
`70.
`
`Therefore, applicants were not entitled to claim priority under 35 U.S.C. § 120 to
`
`the ’115 application at any point during the prosecution of the applications that led to the issuance
`
`of the ’951 patent. In addition, because the ’115 application was abandoned long before the ’301
`
`application was filed, applicants were not entitled to claim priority under 35 U.S.C. § 120 to the
`
`‘115 application in the ’301 application.
`
`71.
`
`As such, the applicants’ claim of priority to May 24, 1984, through the ’973
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`application was false.
`
`72.
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`The PTO takes a patent applicant’s representations regarding priority as true and
`
`does not conduct an independent inquiry into whether the earlier application satisfies the
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`requirements of 35 U.S.C. § 120 or 35 U.S.C. § 112.
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`73.
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`Therefore, such representations regarding claim priority to the PTO are critical to a
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`fair and honest examination because the PTO conducts its prior art search as if the pending
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`application is entitled to the priority date claimed by the applicant.
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`74.
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`Applicants’ priority claim to the ’115 application, when that application shares no
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`substantive overlap with later applications that claim priority to the ’115 application, constitutes
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`affirmative egregious misconduct.
`
`75.
`
`Applicants’ false priority claim is also inherently material to the patentability of all
`
`claims of the ‘951 Patent because the PTO limited the scope of its prior art search to an earlier
`
`date than what the applicants were actually entitled to.
`
`76.
`
`Specifically, because several limitations in each independent claim of the ’951
`
`Patent have 35 U.S.C. § 112 support, if at all, only in the ’973 application, applicants’ false
`
`priority claim is material because it prevented the PTO from considering prior art at least between
`
`1984 (the earliest priority date claimed by the ’951 Patent) and 1988 (the date of the ’973
`
`application). As one example, the limitation “program means for controlling the display on said
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`display device of inquiries and acceptable answers” in claim 10 of the ’951 Patent has 35 U.S.C.
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`§ 112 support only in the ’973 application, if at all.
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`Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 11 of 19
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`77.
`
`Given the rapid development of technology at issue at the time of the examination
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`of the ’301, ’654, ’283, ’973 and ’115 applications, applicants’ false claim of priority precluded
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`the PTO from examining the later-pending applications against later relevant prior art.
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`78.
`
`On information and belief, the ’951 Patent would not have issued if the applicants
`
`had not made a false priority claim to the ’115 application.
`
`79.
`
`On information and belief, applicants’ false statements to the PTO regarding
`
`priority were made with the intent to mislead the PTO. Alternatively, such intent to mislead the
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`PTO is the only reasonable inference from the totality of the circumstances alleged in this
`
`complaint, including patent prosecution experience of Mr. Charmasson and the lack of any
`
`substantive overlap in applications that might otherwise have supported the applicants’
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`representations regarding priority.
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`80.
`
`Therefore, applicants’ false priority claims related to the ’115 application
`
`constitute inequitable conduct that renders the ’951 Patent unenforceable.
`
`Third Instance of Inequitable Conduct: False Claim of Priority in the ’283 Application
`
`81.
`
`In addition to the false claim of priority related to the ’973 application, applicants
`
`also misrepresented the content and priority related to the ’283 application. Specifically, in
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`applications filed on August 21, 1989, September 3, 1993, and March 16, 1994, Mr. Charmasson
`
`represented to the PTO that the claims presented in the ’951 Patent are entitled to claim priority to
`
`May 24, 1984, because the ’283 application is a continuation-in-part of the ’973 application.
`
`82.
`
`This representation was false, as the specification of the ’283 application does not
`
`share any substantive overlap with the specification of the ’973 application nor does it repeat
`
`some substantial portion of the ’973 application.
`
`83.
`
`Therefore, applicants were not entitled to claim priority under 35 U.S.C. § 120 to
`
`the ’973 application at any point during the prosecution of the applications that led to the issuance
`
`of the ’951 patent. In addition, because the ’973 application was abandoned long before the ’301
`
`application was filed, applicants were not entitled to claim priority under 35 U.S.C. § 120 to the
`
`‘973 application in the ’301 application.
`
`84.
`
`As such, the applicants’ claim of priority to May 24, 1984, through the ’283
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`Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 12 of 19
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`application was false.
`
`85.
`
`As noted above, this false claim of priority to the ’973 application, when that
`
`application shares no substantive overlap with later applications that claim priority to the ’973
`
`application, constitutes affirmative egregious misconduct.
`
`86.
`
`Applicants’ false priority claim is inherently material to the patentability of all
`
`claims of the ’951 Patent because the PTO limited the scope of its prior art search to an earlier
`
`date than that to which the applicants were entitled.
`
`87.
`
`Specifically, because several limitations in each independent claim of the ’951
`
`Patent have 35 U.S.C. § 112 support, if at all, only in the ’283 application, applicants’ false
`
`priority claim is material because it prevented the PTO from searching for prior art between 1984
`
`(the earliest priority date claimed by the ’951 Patent) and 1989 (the filing date of the ’283
`
`application). As one example, the limitation “accessing means for providing access to said
`
`related information in said another entry path means” in claim 1 of the ’951 patent has 35 U.S.C.
`
`§ 112 support only in the ’283 application, if at all.
`
`88.
`
`Given the rapid development of technology at issue at the time of the examination
`
`of the ’301, ’654, ’283, ’973 and ’115 applications, applicants’ false claim of priority precluded
`
`the PTO from examining the later-pending applications against later relevant prior art.
`
`89.
`
`On information and belief, the ’951 Patent would not have issued if the applicants
`
`had not made a false priority claim to the ’973 application.
`
`90.
`
`On information and belief, applicants’ false statements to the PTO regarding
`
`priority were made with the intent to mislead the PTO. Alternatively, such intent to mislead the
`
`PTO is the only reasonable inference from the totality of the circumstances alleged in this
`
`complaint, including patent prosecution experience of Mr. Charmasson and the lack of any
`
`substantive overlap in applications that might otherwise have supported the applicants’
`
`representations regarding priority.
`
`91.
`
`Therefore, applicants’ false priority claims related to the ’973 application
`
`constitute inequitable conduct that renders the ’951 Patent unenforceable.
`
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`Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 13 of 19
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`Fourth Instance of Inequitable Conduct: Misrepresentations Regarding Content and
`
`Priority of ’301 Application
`
`92.
`
`On March 16, 1994, Mr. Charmasson submitted to the PTO the ’301 application,
`
`which later issued as the ‘951 Patent, in which he stated that the ’301 application was a
`
`continuation of the ’654 application and also a continuation of U.S. Application No. 08/096,610
`
`(the “’610 application”).
`
`93.
`
`On November 28, 1994, the PTO issued an Office Action in which it notified the
`
`applicants that the ’301 application could not be a continuation of the ’654 application because
`
`the disclosure of the ’301 application is not the same as the disclosure of the ’654 application.
`
`94.
`
`This instruction was consistent with MPEP § 201.07, which provides that for an
`
`application to be a “continuation,” “the disclosure presented in the continuation must be the same
`
`as that of the original application; i.e., the continuation should not include anything which would
`
`constitute new matter if inserted in the original application.”
`
`95.
`
`In response, the applicants submitted an Amendment and Reply on February 10,
`
`1995 in which they stated that the ’301 application is a continuation-in-part of the ’654
`
`application and also a continuation-in-part of the ’610 application. However, later in the same
`
`Amendment and Reply, the applicants again stated that the ’301 application is a straight
`
`continuation of the ’610 application and also a straight continuation of the ’654 application.
`
`96.
`
`On September 26, 1995, the PTO issued a second Office Action where the
`
`examiner pointed out that the ’301 application cannot be a continuation-in-part and a continuation
`
`at the same time.
`
`97.
`
`On November 3, 1995, the applicants submitted a second Amendment and Reply,
`
`in which they stated that the ’301 application is a continuation-in-part of the ’654 application and
`
`a continuation-in-part of the ’610 application because neither the ’654 application nor the ’610
`
`application contained the full disclosure of the ’301 application. However, in the same
`
`Amendment and Reply, the applicants represented to the PTO that the ’301 application is a
`
`straight continuation of the combination of the ’654 and ’610 applications.
`
`98.
`
`In so doing, the applicants represented to the PTO that all matter in the ’301
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`Case 3:13-cv-03203-NC Document 1 Filed 07/11/13 Page 14 of 19
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`application can be found in either the ’654 application or the ’610 application. On the basis of
`
`this representation, the PTO issued the ’951 Patent as a continuation of the combination of the
`
`’654 application and the ’610 application.
`
`99.
`
`In conducting its examination of the ’301 application, the PTO made it clear that it
`
`took applicants at their word, noting that applicants’ statements regarding priority were “taken
`
`automatically in good faith and candor; any discrepancies are a matter for the court.”
`
`100. However, the applicants’ statements specified above were not made in good faith
`
`and candor. Instead, they were false. Contrary to the applicants’ representation to the PTO that
`
`the ’301 application is a combination of the ’654 and ’610 applications, the ’301 application
`
`contains a substantial amount of disclosure that does not appear in either the ’654 or ’610
`
`applications, including six figures and at least nine full columns of written description,
`
`specifically figures 12-17 of the ’301 application and col. 1, l.56-col. 2, l. 63, col. 6, l. 36-col. 8, l.
`
`2, col. 11, ll. 55-65, col. 15, ll. 11-20, col. 16, ll. 24-36, and col. 16, l. 43-col. 23, l. 41 of the
`
`specification as it eventually issued in the ’951 patent.
`
`101.
`
`The vast majority of the new matter added into the ’301 application came verbatim
`
`from the ’973 application and several limitations in each independent claim of the ’951 Patent
`
`have 35 U.S.C. § 112 support, if at all, only in the ’973 or ‘283 applications. For this reason,
`
`applicants’ false priority claim is material because it prevented the PTO from considering prior
`
`art at least between 1984 (the earliest priority date claimed by the ’951 Patent) and 1989 (the date
`
`of the ’283 application). As one example, the limitation “program means for controlling the
`
`display on said display device of inquiries and acceptable answers” in claim 10 of the ’951 Patent
`
`has 35 U.S.C. § 112 support only in the ’973 application, if at all. As another example, the
`
`limitation “accessing means for providing access to said related information in said ano