Case 1:17-cv-01633-VAC-MPT Document 1 Filed 11/10/17 Page 1 of 57 PageID #: 1
`Case 1:17-cv-01633-VAC-MPT Document 1 Filed 11/10/17 Page 1 of 57 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`NETSCOUT SYSTEMS, INC.,
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`Plaintiff,
`
`v.
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`PACKET INTELLIGENCE LLC,
`PACKET INTELLIGENCE HOLDINGS
`
`LLC, AND LONGHORN ASSET GROUP
`
`LLC,
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`Defendants.
`
`
`
`Civil Action No.:
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`JURY TRIAL DEMANDED
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Plaintiff NetScout Systems, Inc. (“NetScout”) for its complaint against Defendants
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`Packet Intelligence LLC, Packet Intelligence Holdings LLC, and Longhorn Asset Group LLC
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`(“Defendants”), hereby alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`Pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq, and the
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`patent laws of the United States, 35 U.S.C. § 1 et seq. , this is an action for declaratory judgment
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`of non-infringement and invalidity of United States Patent Nos. 6,651,099 (the “”099
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`patent”), 6,665,725 (the “’725 patent”), 6,771,646 (the “’646 patent”), 6,839,751 (the “’751
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`patent”), and 6,954,789 (the “’789 patent”) (collectively, the “Dietz patents,” attached hereto as
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`Exs. A-E), and for such other relief as the Court deems just and proper.
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`2.
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`NetScout files this Declaratory Judgment Action to resolve unanswered
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`allegations of infringement and invalidity regarding the Dietz patents, including allegations of
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`infringement that have been asserted against NetScout’s “InfiniStream” line of products. Three
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`of the five Dietz patents are at issue in a lawsuit filed against NetScout and its related Texas-
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`based entities in the Eastern District of Texas alleging infringement of a different line of
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`products, known as the “GeoProbe” products. See Packet Intelligence LLC v. NetScout Systems,
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`Inc, Tektronix Communications and Tektrom‘x Texas, LLC, No. 2:16-cv-00230, Di. 1 (ED. Tex.
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`Mar. 15, 2016) (the “Texas Case”). The Texas Case was filed by a shell corporation, Packet
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`Intelligence LLC, which was created by Defendants Packet Intelligence Holdings LLC and
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`Longhorn Asset Group LLC, for the sole purpose of creating jurisdiction in the Eastern District
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`of Texas. But the Texas Case targets narrow issues relating to only the GeoProbe products, and
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`leaves many allegations relating to the Dietz patents unresolved. This Declaratory Judgment
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`Action seeks to resolve, in a proper venue, allegations regarding the two Dietz patents not at
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`issue in the Texas Case and issues that were neither presented to nor considered by the court in
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`the Texas Case regarding the other three Dietz patents.
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`3.
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`The Texas Case, which is now in a post-trial stage, is limited to the GeoProbe
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`products, which were originally developed by a Texas—based company called “Tektronix” that
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`was acquired by NetScout in 2015. The Texas Case did not address whether there was
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`infringement by any other NetScout products, including the “InfiniStream” products that
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`NetScout was offering years before the Tektronix acquisition. In fact, the court in the Texas
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`Case specifically ruled that the InfiniStream products were outside the scope of that
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`case. Defendants accused the InfiniStream products of infringing the Dietz patents and moved to
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`have claims against these products added to the Texas Case. But the court in the Texas Case
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`found those claims to be untimely and denied leave for the InfiniStream products to be included.
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`

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`4.
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`In addition to not addressing the InfiniStream products, the Texas Case will not
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`resolve invalidity of any claims in two of the five Dietz patents (the ’099 and ’646 patents) and
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`the vast majority of the claims in the other three Dietz patents (the ’725, ’75 l , and ’789
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`patents). The Texas Case is only addressing whether a total of six (6) asserted claims from the
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`’725, ’751, and ’789 patents are patent-ineligible under 35 U.S.C. § 101, invalid as anticipated
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`by a single prior art reference (namely, an early NetScout network probe), and invalid for failing
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`to name the true inventors of the claimed subject matter. As such, the Texas Case will not
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`address at least: (1) invalidity of the ’099 and ”646 patents on any ground; (2) invalidity of the
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`unasserted claims of the ’725, ’75 l, and ’789 patents on any ground; and (3) invalidity of the
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`asserted claims of the ’725, ’751, and ’789 patents on other invalidity grounds, including
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`anticipation based on other prior art references and obviousness based on combinations of prior
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`art. Other than anticipation based on an early NetScout probe and incorrect inventorship, no
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`other invalidity issues were addressed at the trial in the Texas Case, including invalidity for
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`obviousness based on combinations of prior art references.
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`5.
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`NetScout files this Declaratory Judgment Action against Defendants to resolve the
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`issues that will not be resolved in the Texas Case—namely, that the lnfiniStream products do not
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`infringe any of the Dietz patents and that the claims of these patents are invalid for myriad
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`reasons.
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`PARTIES
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`6.
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`Plaintiff NetScout is a Delaware corporation with its principal place of business at
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`310 Littleton Road, Westford, MA 01886—4105.
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`7.
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`Defendant Packet Intelligence LLC (“Packet Intelligence”) is a Texas corporation
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`that rents an office at 505 East Travis Street, Suite 209, Marshall, TX 75670. Upon information
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`and belief, Packet Intelligence may be served with process through its registered agent, National
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`Registered Agents, Inc., 1999 Bryan St., Suite 900, Dallas, TX 75201—3136. Upon information
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`and belief, Packet Intelligence has no employees, owns no real property, and produces no
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`products. Further, upon information and belief, Packet Intelligence exists solely to hold the
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`Dietz patents, their related patent applications, and their foreign counterparts.
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`8.
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`Defendant Packet Intelligence Holdings LLC (“PI Holdings”) is a Delaware
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`corporation. Upon information and belief, PI Holdings can be served with process through its
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`registered agent, National Registered Agents, Inc., 160 Greentree Dr., Suite 101, Dover, DE
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`19904. Upon information and belief, PI Holdings is the sole member of Packet Intelligence.
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`Further, upon information and belief, PI Holdings’ only asset is Packet Intelligence.
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`9.
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`Defendant Longhorn Asset Group LLC (“Longhorn”) is a Delaware corporation.
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`Upon information and belief, Longhorn can be served with process through its registered agent,
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`National Registered Agents, Inc., 160 Greentree Dr., Suite 101, Dover, DE 19904. Upon
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`information and belief, Longhorn’s only asset is PI Holdings.
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`JURISDICTION AND VENUE
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`10.
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`This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
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`and under the patent laws of the United States, 35 U.S.C. § 1 et seq.
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`11.
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`This Court has jurisdiction over the subject matter of this action pursuant to 28
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`U.S.C. §§ 1331, 1338(a), 2201, 2202, and the patent laws of the United States, including 35
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`U.S.C. § 271 et seq.
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`12.
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`This Court has personal jurisdiction over PI Holdings by virtue of its sufficient
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`minimum contacts with this forum such that the exercise ofjurisdiction over PI Holdings will not
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`offend traditional notions of fair play and substantial justice.
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`

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`13.
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`This Court has personal jurisdiction over Longhorn by virtue of its sufficient
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`minimum contacts with this forum such that the exercise ofjurisdiction over Longhorn will not
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`offend traditional notions of fair play and substantial justice.
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`14.
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`This Court has personal jurisdiction over Packet Intelligence because it is a shell
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`corporation that is dominated by Delaware corporations PI Holdings and Longhorn, and that was
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`formed for the sole purpose of creating jurisdiction and venue for patent litigation in the Eastern
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`District of Texas. Packet Intelligence has no independent personnel; no independent ability to
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`make decisions; and no ability to hold funds, disburse funds, or transact business on its own
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`behalf. This Court’s exercise ofjurisdiction over Packet Intelligence will not offend traditional
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`notions of fair play and substantial justice because, upon information and belief, Packet
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`Intelligence is the alter-ego of PI Holdings and/or Longhorn, is funded entirely by and through PI
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`Holdings and/or Longhorn, and acts solely through PI Holdings and/or Longhorn to the extent
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`that it receives, holds, or disburses funds.
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`15.
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`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c) because
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`Defendants are subject to personal jurisdiction here.
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`EXISTENCE OF AN ACTUAL CONTROVERSY
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`16.
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`There is an actual controversy Within the jurisdiction of this Court under 28
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`U.S.C. §§ 2201 and 2202.
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`17.
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`The Dietz patents are directed to devices and methods for monitoring traffic in a
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`network.
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`18.
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`NetScout is a provider of application and network performance management
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`products, including network monitors. Among the products manufactured and sold by NetScout
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`is the InfiniStream® family of products, which are used to capture and analyze information from
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`

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`computer network traffic. In July 2015 , NetScout acquired certain communications businesses
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`of Danaher Corporation, including Tektronix Communications. Among the products
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`manufactured and sold by Tektronix was the GeoProbe family of products, which were used to
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`capture and analyze information from service provider (telephone) networks.
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`19.
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`On March 15, 2016, Packet Intelligence filed a complaint in the Texas Case
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`which alleged that certain GeoProbe products infringed the Dietz patents. In response to Packet
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`Intelligence’s complaint, NetScout counterclaimed for a declaration of noninfringement as to the
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`GeoProbe products and invalidity.
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`20.
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`Defendants asserted the Dietz patents in three other litigations in the past four
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`years. See Packet Intelligence LLC v. Huawez' Device USA Inc, No. 2:13—cv—00206 (ED. Tex);
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`Packet Intelligence LLC v. Cisco Systems, Inc, Nos. 2:14-cv-00252 and 2:14—cv—01 122 (ED.
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`Tex); and Packet Intelligence LLC v. Sandvine Corp. , No. 2:16-cv-00230 (ED. Tex.).
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`21.
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`On or about February 2017, Defendants requested leave to amend their
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`infringement contentions in the Texas Case to accuse NetScout’s InfiniStream product family of
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`infringing the Dietz patents. However, on or about April 27, 2017, the Texas court denied
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`Defendants’ motion, finding that Defendants had failed to act diligently in investigating whether
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`the lnfiniStream products might have infringed the asserted patents.
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`22.
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`Prior to trial in the Texas Case, Defendants withdrew their claims of infringement
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`as to the ’099 and ’646 patents, and the Court dismissed NetScout’s declaratory judgment
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`counterclaims as to those patents.
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`23.
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`The Texas Case was tried in October 2017. On October 13, 2017, a jury found
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`NetScout’s GeoProbe G10 and GeoBlade products infringed claims 10 and 17 of the ’725 patent,
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`claims 1 and 5 of the ’751 patent, and claims 19 and 20 of the ”789 patent. The jury also found
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`

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`these claims not to be invalid in light of the anticipation and inventorship defenses presented at
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`trial. Judgment has not yet been entered in the Texas Case, and NetScout anticipates filing
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`motions pursuant to Fed. R. Civ. P. 50 and 59 following entry ofjudgment, challenging, inter
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`alia, the jury’s finding that the GeoProbe products infringe these claims and that the claims are
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`not invalid in View of the prior art NetScout probe. Furthermore, the Texas court has ordered
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`briefing pursuant to Fed. R. CiV. P. 52 on the issue of whether the Dietz patents are invalid
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`because they purport to claim ineligible subject matter pursuant to 35 U.S.C. § 101.
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`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’099 PATENT
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`COUNT ONE
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`24.
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`Paragraphs 1 through 23 are incorporated by reference as if fully stated herein.
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`25.
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`Packet Intelligence claims to own all rights, title, and interest in the ’099 patent.
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`26.
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`In seeking to amend its infringement contentions in the Texas Case to add the
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`lnfiniStream family of products, Defendants accused NetScout of infringing at least one claim of
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`the ’099 patent by making, using, selling, offering for sale, and/or causing others to make, use,
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`sell, and/or offer for sale, the InfiniStream family of products.
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`27.
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`Contrary to Defendants” assertions in the Texas Case, the InfiniStream products
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`do not infringe any valid claim of the ”099 patent. The InfiniStream products are the current
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`version of the NetScout probe that NetScout has been selling for decades, dating back to well
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`before the Dietz patents. In the Texas Case, NetScout identified the prior art NetScout 6010
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`probe, version 4.5 , (“Prior Art NetScout Probe”), as anticipating the Dietz patents. Packet
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`Intelligence contended at trial in the Texas Case that the Prior Art NetScout Probe was not
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`covered by the claims of the Dietz patents. Many of the same features of the Prior Art NetScout
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`Probe are still present in the InfiniStream products, NetScout’s current version of this same
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`platform. The arguments and contentions advanced by Packet Intelligence in the Texas Case
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`purportedly to distinguish the Prior Art NetScout Probe also distinguish and demonstrate non-
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`infringement of the lnfiniStream products. Thus, Defendants are barred by judicial estoppel
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`from asserting infringement based on a theory that directly conflicts with their arguments
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`advanced in the Texas Case.
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`28.
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`NetScout further does not infringe the ’099 patent, among other reasons, because
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`the lnfiniStream products do not literally or under the doctrine of equivalents meet one or more
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`of the limitations of the claims of the ’099 patent. For example, the lnfiniStream products do not
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`meet the limitation recited in claim 1 of “‘(d) a memory storing a flow—entry database including a
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`plurality of flow-entries for conversational flows encountered by the monitor” (“limitation (d) of
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`claim 1”). The lnfiniStream products do not meet limitation (d) of claim 1 at least because they
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`do not have a database that includes any, much less a plurality of, flow-entries for
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`“conversational flows,” or that performs substantially the same function, in substantially the
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`way, to obtain substantially the same result as storing flow-entries for “conversational flows.”
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`29.
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`In addition, the InfiniStream products do not meet the limitation recited in claim 1
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`of “(e) a lookup engine connected to the parser subsystem and to the flow-entry database, and
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`configured to determine using at least some of the selected portions of the accepted packet if
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`there is an entry in the flow—entry database for the conversational flow sequence of the accepted
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`packet” (“limitation (e) of claim 1”). The InfiniStream products do not meet limitation (e) of
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`claim 1 at least because they do not have a database that includes a flow-entry for a
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`“conversational flow.” In addition, the lnfiniStream products never determine using portions of
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`a packet whether there is such a flow-entry in a flow-entry database for the “conversational
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`flow” sequence of the accepted packet, as is also required by limitation (e) of claim 1. The
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`lnfiniStream products also do not perform substantially the same function, in substantially the
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`way, to obtain substantially the same result as storing a flow—entry for a “conversational flow” or
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`determining using portions of a packet whether there is a flow—entry in a flow-entry database for
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`the “conversational flow” sequence of the accepted packet. Thus, the InfiniStream products do
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`not meet limitation (e) of claim 1 under the doctrine of equivalents either.
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`30.
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`The lnfiniStream products do not infringe claim 1 under the doctrine of
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`equivalents for the additional reason that an attempt to assert infringement under the doctrine of
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`equivalents against the InfiniStream products would encompass or ensnare prior art. For
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`example, the Dietz patents—all of which have substantially similar specifications—acknowledge
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`that “[s]ome prior art packet monitors classify packets into connection flows,” which is a term
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`“commonly used to describe all the packets involved with a single connection.” ”789 patent at
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`2:42—45. If, hypothetically, claim 1 were re-written to literally cover functionality in the
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`InfiniStream products that classifies packets into connection flows, this hypothetical version of
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`claim 1 would be invalid as anticipated or obvious in View of the admitted prior art in the Dietz
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`patents and many other prior art references more fully described below. Because this
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`hypothetical version of claim 1 would ensnare the prior art, Defendants are legally precluded
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`from asserting infringement based on a scope of equivalents that would encompass the
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`InfiniStream products.
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`31.
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`Further, Defendants are precluded from pursuing any claims of infringement as to
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`the ’099 patent based on the InfiniStream products because these products are covered by a
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`license agreement that permits NetScout to use and distribute products that use the intellectual
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`property described and claimed in the Dietz patents.
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`32.
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`Further, Defendants are precluded from pursuing any claims of infringement as to
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`the ’099 patent for any acts relating to InfiniStream products occurring on or after the 12th
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`anniversary of this patent’s grant, namely, November 18, 2015, because the ’099 patent expired
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`on this date due to Defendants’ failure to pay appropriate maintenance fees to maintain the life of
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`this patent.
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`33.
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`Defendants are precluded from asserting a claim of infringement against the
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`InfiniStream products because they are barred by the doctrines of claim and issue preclusion,
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`collateral estoppel, and resjudicata arising from the Texas Case. Specifically, a claim of
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`infringement against the InfiniStream products was a compulsory claim in connection with
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`Defendants’ assertion of the Dietz patents against NetScout in the Texas Case. Defendants’
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`belated attempt to assert these claims in the Texas Case was rejected as untimely due to
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`Defendants” failure to diligently pursue the claims. Having failed to timely pursue claims of
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`infringement against the lnfiniStream products in the Texas Case, Defendants are now barred
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`from doing so in any other case or matter.
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`34.
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`Absent a declaration that the claims of the ’099 patent are not infringed,
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`Defendants will continue to wrongfully assert the ’099 patent against NetScout, thereby causing
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`NetScout irreparable harm and injury.
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`35.
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`An actual, substantial, and justiciable controversy of sufficient immediacy and
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`reality exists between Defendants and NetScout as to whether the claims of the ’099 patent are
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`infringed. A judicial declaration is necessary and appropriate so that NetScout may ascertain its
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`rights regarding the ’099 patent.
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`36.
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`Based on the foregoing, NetScout hereby requests a declaration that the claims of
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`the ’099 patent are not infringed by the InfiniStream products.
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`DECLARATORY JUDGMENT OF INVALIDITY OF THE ’099 PATENT
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`COUNT TWO
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`37.
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`Paragraphs 1 through 36 are incorporated by reference as if fully stated herein.
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`10
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`38.
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`The ’099 patent is invalid under the patent laws of the United States, 35 U.S.C.
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`§ 101 et seq., at least because it purports to claim ineligible subject matter pursuant to 35 U.S.C.
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`§ 101.
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`39.
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`In addition, claim 1 is invalid as anticipated and/or rendered obvious by the Prior
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`Art NetScout Probe, which was publicly available at least as early as October 1998. The Prior
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`Art NetScout Probe is a packet monitor that can examine packets passing through a connection
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`point on a computer network. The Prior Art NetScout Probe implemented the “track sessions”
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`technique, which was openly discussed and standardized by the RMON Working Group in 1996
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`and described in the RMON TrackSession Publication (Ex. F). The “track sessions” technique
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`tracked disjointed, but related, connection flows that resulted from an activity, such as a client
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`requesting an application or service from a server. As such, the “track sessions” technique
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`discloses the idea of recognizing disjointed flows as belonging to a “conversational flow,” which
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`is the Dietz patents’ alleged point of novelty.
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`40.
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`In addition, the claims of the ’099 patent are invalid under pre-AIA 35 U.S.C. §§
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`102 and/or 103 in View of the prior art cited in NetScout’s Invalidity Contentions, NetScout’s
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`Notice of Reduction of Asserted Prior Art References, and the Invalidity and Unenforceability
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`Expert Report of Steve Waldbusser served in the Texas Case. Such invalidating prior art
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`includes at least the Prior Art NetScout Probe, and the NetScout 6010 probe with software
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`version 4.0 in combination with the “track sessions” functionality discussed and standardized by
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`the RMON Working Group in 1996 and disclosed in RMON publications, such as Remote
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`Network Monitoring MIB Protocol Identifiers <draft-ietf—rmonmib-rmonprot—vZ-OO.txt>
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`(“RMON TrackSession Publication”), published November 25, 1996. The claims of the ‘099
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`patent are also anticipated and/or rendered obvious by the prior art cited by Cisco and Huawei in
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`11
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`Invalidity Contentions served in previous actions brought by Packet Intelligence in the Eastern
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`District of Texas, and the prior art cited on the face and in the specification of this patent and
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`during the prosecution of this patent. The claims of the ’099 patent are also rendered obvious by
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`a prior art network monitor, such as the prior art NetScout 6010 probe, including versions 4.0
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`and 4.5, in View of the “track sessions” functionality as taught by the RMON TrackSession
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`Publication and the teachings of Cooley et 01., Data Preparation for Mining World Wide Web
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`Browsing Patterns, Journal ofKnowledge and Information Systems, Vol. 1, Issue 1, pp. 5-32
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`(February 1999) (“Cooley”) (attached hereto as Ex. G).
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`41.
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`In addition, claim 1 is at least rendered obvious by prior art network monitors of
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`the 1990s discussed in the background of the specification for the Dietz patents, in combination
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`with the “track sessions” technique disclosed in RMON Working Group publications, such as the
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`RMON TrackSession Publication. For example, the Dietz patents acknowledge that “[s]ome
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`prior art packet monitors classify packets into connection flows.” ’789 patent at 2:42-45. It
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`would have been obvious to a person of skill in the art at least by the ’099 patent’s priority date
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`of June 30, 1999, to implement the “track sessions” functionality in a prior art network monitor
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`capable of classifying packets into connection flows. A person of skill in the art would have
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`been motivated to implement “track sessions” in a prior art network monitor to improve its
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`performance and capabilities. For example, implementing “track sessions” in a network monitor
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`would enable the network monitor to not only classify packets into connection flows, but also to
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`recognize related connection flows resulting from a given activity. A person of skill in the art
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`would have recognized that such a modification was possible and would have yielded predictable
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`results, including those described in the RMON TrackSession Publication. For example, at least
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`by October 1998, such an implementation had been perfected in the Prior Art NetScout Probe,
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`12
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`which implemented the “track sessions” technique described in the RMON TrackSession
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`Publication. A person of skill in the art would have recognized that a prior art network monitor
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`of the 19903 implementing the “track sessions” technique disclosed a network monitor capable
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`of recognizing a “conversational flow.” Thus, this combination discloses the only alleged point
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`of novelty of claim 1 and renders this claim obvious.
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`42.
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`In addition, claim 1 is rendered obvious by the admitted prior art in the Dietz
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`patent, a prior art network monitor implementing the “track sessions” technique, such as the
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`Prior Art NetScout Probe in further View of Cooley (Ex. G). Cooley discloses gathering and
`
`storing information about a user’s web browsing session, such as the IP address of the computer
`
`or other device used by the user to access a website, the URLs of the websites visited, and the
`
`URLs of any websites that referred to another website. See Cooley at pp. 17-19. Cooley
`
`discloses collecting and storing this information in entries in a table, such as the table shown in
`
`Figure 6:
`
`l3
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`
`

`

`Case 1:17-cv-01633-VAC-MPT Document 1 Filed 11/10/17 Page 14 of 57 PageID #: 14
`Case 1:17-cv-01633-VAC-MPT Document 1 Filed 11/10/17 Page 14 of 57 PageID #: 14
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`Fig. 6. Sample Information from Access, Referrer, and Agent. Logs (The first column
`is for referencing purposes and would not be part of an actual log).
`
`Cooley at Fig. 6 (annotated with blue boxes). It would have been obvious to a person of skill in
`
`the art—at least by the ’099 patent’s priority date of June 30, 1999—that a prior art network
`
`monitor, including implementing “track sessions,” could be utilized to monitor, collect, and store
`
`flow—entries in a database, such entries including data such as the client IP address, website URL,
`
`and referrer, for a user’s web browsing that are described in Cooley. Cooley fiirther asserts that
`
`this information could be collected using “a remote agent.” Cooley at p. 8. A person of skill in
`
`the art would have recognized that the “remote agen ” referenced in Cooley could be a prior art
`
`packet monitor, such as the Prior Art NetScout Probe and the packet monitors discussed in the
`
`background of the Dietz patents, and that such a packet monitor could easily be modified to
`
`monitor, collect, and store the pieces of information disclosed in Cooley. The Defendants cannot
`
`reasonably dispute that such a combination would invalidate the claims because Defendants
`
`argued in the Texas Case that gathering and storing the very same information that Cooley
`
`l4
`
`
`
`

`

`Case 1:17-cv-01633-VAC-MPT Document 1 Filed 11/10/17 Page 15 of 57 PageID #: 15
`Case 1:17-cv-01633-VAC-MPT Document 1 Filed 11/10/17 Page 15 of 57 PageID #: 15
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`gathers and stores in its table, namely, the client IP address, URL, and Referrer, fully meets the
`
`purportedly novel feature of the Dietz patent claims related to “conversational flows.”
`
`43.
`
`In addition, the ”099 patent is invalid under 35 U.S.C. § 1020?) for failing to name
`
`one or more of the proper inventors of the ’099 patent who contributed to the claimed invention,
`
`including one or more members of the RMON Working Group who contributed to the
`
`conception and/or reduction to practice of the claimed invention, including, but not limited to,
`
`such claimed features as recognizing “conversational flows.” The ’099 patent is also invalid
`
`under 35 U.S.C. § 102(t) because the named inventors derived the claimed invention from the
`
`members of the RMON Working Group, who previously conceived of the invention and
`
`communicated the idea of the invention to at least named inventors Russell Dietz and Andrew
`
`Koppenhaverwmembers of the RMON Working Group—as well as named inventor Joseph
`
`Maixner, who read RMON Working Group publications, including the RMON TrackSession
`
`Publication.
`
`44.
`
`A judicial declaration that the ’099 patent is invalid because it fails to satisfy the
`
`conditions for patentability specified in Title 35 of the United States Code is necessary and
`
`appropriate at this time so that NetScout can ascertain its rights and duties with respect to the
`
`InfiniStream products, which Defendants accuse of infringing the ’099 patent.
`
`DECLARATORY JUDGMENT OF UNENFORCEABILITY OF THE ’099 PATENT
`
`COUNT THREE
`
`45.
`
`Paragraphs 1 through 44 are incorporated by reference as if fillly stated herein.
`
`46.
`
`The ’099 patent is unenforceable due to inequitable conduct perpetrated at the
`
`US. Patent and Trademark Office (“USPTO”) during prosecution of the application which led to
`
`the ”099 patent.
`
`15
`
`

`

`Case 1:17-cv-01633-VAC-MPT Document 1 Filed 11/10/17 Page 16 of 57 PageID #: 16
`Case 1:17-cv-01633-VAC-MPT Document 1 Filed 11/10/17 Page 16 of 57 PageID #: 16
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`47.
`
`For example, the ’099 patent’s named inventors and/or the ’099 patent’s
`
`prosecuting patent agent Dov Rosenfeld intentionally Withheld prior art information from the
`
`USPTO relating to the subject matter of the ’099 patent that was material to patentability.
`
`Named inventors Russell Dietz and Andrew Koppenhaver were members of the RMON Working
`
`Group, attended group meetings, and read RMON Working Group publications, such as the
`
`RMON TrackSession Publication, prior to the alleged conception date of the invention disclosed
`
`in the ’099 patent. Named inventor Joseph Maixner also regularly read RMON Working Group
`
`publications prior to the alleged conception date of the invention disclosed in the ’099 patent.
`
`48.
`
`The named inventors of the ”099 patent and/or Dov Rosenfeld not only failed to
`
`submit material RMON publications to the USPTO but also intentionally misled the USPTO to
`
`believe the RMON publications were not relevant to the prosecution of the ’099 patent. See,
`
`e. g, ’789 patent, 2:33-37 (“Though Netflow® (Cisco Systems, Inc, San Jose, Calif), RMONZ,
`
`and other network monitors are available for the real—time monitoring of networks, they lack
`
`Visibility into application content and are typically limited to providing network layer level
`
`information”) (emphasis added).
`
`49.
`
`In addition, by both knowing of the RMON Working Group’s publications and
`
`failing to identify members of the RMON Working Group as named inventors, the named
`
`inventors of the ”099 patent and/or Dov Rosenfeld deliberately misrepresented the true inventors”
`
`identities before the USPTO. This deliberate misrepresentation was done with an intent to
`
`mislead and deceive the USPTO about the identity of the true inventors of the claimed subject
`
`matter of the ’099 patent.
`
`50.
`
`A judicial declaration that the ’099 patent is unenforceable due to inequitable
`
`conduct is necessary and appropriate at this time so that NetScout can ascertain its rights and
`
`16
`
`

`

`Case 1:17-cv-01633-VAC-MPT Document 1 Filed 11/10/17 Page 17 of 57 PageID #: 17
`Case 1:17-cv-01633-VAC-MPT Document 1 Filed 11/10/17 Page 17 of 57 PageID #: 17
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`duties with respect to the InfiniStream products, which Defendants accuse of infringing the ’099
`
`patent.
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’646 PATENT
`
`COUNT FOUR
`
`51.
`
`Paragraphs 1 through 50 are incorpo