Case 1:22-cv-00304-JLH Document 217 Filed 06/13/24 Page 1 of 21 PageID #: 9603
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ROBOCAST, INC.,
`a Delaware corporation,
`
`Plaintiff,
`
`v.
`
`YOUTUBE LLC., a Delaware limited liability
`company; and GOOGLE LLC, a
`Delaware limited liability company,
`
`Defendants.
`
`C.A. No. 22-304-JLH
`JURY TRIAL DEMANDED
`
`REDACTED PUBLIC
`VERSION
`
`DEFENDANTS GOOGLE LLC AND YOUTUBE LLC’S FIRST AMENDED ANSWER
`TO PLAINTIFF ROBOCAST, INC.’S COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendants Google LLC and YouTube, LLC (collectively, “Google”), by and through
`the undersigned counsel, answer the Complaint for Patent Infringement (“Complaint”) (D.I. 1)
`of plaintiff Robocast, Inc. (“Plaintiff” or “Robocast”) as follows.
`THE PARTIES
`Google is without knowledge or information sufficient to form a belief as to the
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`1.
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`truth or falsity of the allegations in paragraph 1 of the Complaint and on that basis, denies them.
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`2.
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`Google admits that YouTube, LLC (“YouTube”) is a limited liability company
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`organized under the laws of Delaware with its principal place of business at 901 Cherry Avenue,
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`San Bruno, California 94066.
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`3.
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`Google admits that Google LLC is a limited liability company organized under
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`the laws of Delaware with its principal place of business at 1600 Amphitheatre Parkway,
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`Mountain View, California 94043.
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`4.
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`Google admits that it is the parent company of YouTube.
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`JURISDICTION AND VENUE
`Google admits that this action invokes the United States patent laws, and that this
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`5.
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`Court has subject matter jurisdiction over patent law claims pursuant to 28 U.S.C §§ 1331 and
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`1338(a).
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`6.
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`Google does not context that this Court has personal jurisdiction solely for the
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`purposes of this particular action. Google specifically denies that it has committed any acts of
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`infringement within this district, or any other district. Otherwise denied.
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`7.
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`Google admits that venue is proper in this judicial district for the purposes of this
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`particular action, but contends that requiring the parties to litigate here is not convenient or in the
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`interests of justice under 28 U.S.C. § 1404(a). Otherwise denied.
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`THE PATENTS-IN-SUIT
`Google admits that what purports to be a copy of U.S. Patent No. 7,155,451 (“the
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`8.
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`’451 patent”) is attached as Exhibit 1 to the Complaint. Google further admits that the face of
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`what appears to be the ’451 patent indicates that its title is “Automated Browsing System For
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`Publishers And Users On Networks Serving Internet And Remote Devices” and that the date of
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`the patent is December 26, 2006. Google denies that the ’451 patent was duly and legally issued.
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`Google denies that Robocast has any right to sue on or recover damages for infringement of the
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`’451 patent. Google is without knowledge or information sufficient to form a belief as to the
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`truth or falsity of the remaining allegations in paragraph 8 of the Complaint and on that basis,
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`denies them.
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`9.
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`Google admits that what purports to be a copy of U.S. Patent No. 8,606,819 (“the
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`’819 patent”) is attached as Exhibit 2 to the Complaint. Google further admits that the face of
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`what appears to be the ’819 patent indicates that its title is “Automated Content Scheduler And
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`Displayer” and that the date of the patent is December 10, 2013. Google denies that the ’819
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`patent was duly and legally issued. Google denies that Robocast has any right to recover damages
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`for infringement of the ’819 patent. Google is without knowledge or information sufficient to
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`form a belief as to the truth or falsity of the remaining allegations in paragraph 9 of the Complaint
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`and on that basis, denies them.
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`10.
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`Google admits that what purports to be a copy of U.S. Patent No. 8,965,932 (“the
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`’932 patent”) is attached as Exhibit 2 to the Complaint. Google further admits that the face of
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`what appears to be the ’932 patent indicates that its title is “Automated Content Scheduler And
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`Displayer” and that the date of the patent is February 24, 2015. Google denies that the ’932
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`patent was duly and legally issued. Google denies that Robocast has any right to recover damages
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`for infringement of the ’932 patent. Google is without knowledge or information sufficient to
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`form a belief as to the truth or falsity of the remaining allegations in paragraph 10 of the
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`Complaint and on that basis, denies them.
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`11.
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`Google admits that the faces of what appear to be the ’451 Patent, the ’819 Patent,
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`and the ’932 Patent refer to other U.S. Patent applications and granted patents. Google denies
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`that any of the Patents-in-Suit is entitled the priority date of September 3, 1996 or the date of the
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`referenced provisional patent application. Google is without knowledge or information sufficient
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`to form a belief as to the truth or falsity of the remaining allegations in paragraph 11 of the
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`Complaint and on that basis, denies them.
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`12.
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`Plaintiff’s allegations in paragraph 12 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`13.
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`Plaintiff’s allegations in paragraph 13 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`14.
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`Plaintiff’s allegations in paragraph 14 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`15.
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`Plaintiff’s allegations in paragraph 15 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`16.
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`Plaintiff’s allegations in paragraph 16 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`17.
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`Plaintiff’s allegations in paragraph 17 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`18.
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`Plaintiff’s allegations in paragraph 18 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`19.
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`Plaintiff’s allegations in paragraph 19 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`20.
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`Plaintiff’s allegations in paragraph 20 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`21.
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`Plaintiff’s allegations in paragraph 21 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`22.
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`Plaintiff’s allegations in paragraph 22 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`23.
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`Plaintiff’s allegations in paragraph 23 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`24.
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`The allegations of paragraph 24 relate to claims that have been dismissed as to the
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`’819 and ’932 patents; therefore, no response is necessary as to these patents. Google admits that
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`on February 26, 2020, Google’s outside counsel referred to the Patents-in-Suit in a subpoena to
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`Robocast in the case Virentem Ventures, LLC v. YouTube, LLC, et al., C.A. No. 1:18-cv-00917-
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`MN (D. Del.). Google further admits that Google received a copy of Robocast’s complaint in
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`this action, which refers to the Patents-in-Suit. Google denies the remaining allegations of
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`paragraph 24 of the complaint. Google specifically denies that it infringes any valid claim of the
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`Plaintiff’s patents, willfully, indirectly, or otherwise.
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`YOUTUBE’S INFRINGING OPERATION OF
`ITS YOUTUBE INTERNET PLATFORM1
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`Google admits that it operates a digital video platform at www.youtube.com.
`
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`25.
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`Google admits that computer servers are used to publish the website on a variety of devices.
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`Google otherwise denies the remaining allegations in paragraph 25 and specifically denies that it
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`infringes any valid claim of Plaintiff’s patents. The remaining allegations in paragraph 25 of the
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`Complaint appear intended to reflect the state of the art, claim scope, an appropriate construction
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`of any of the claim terms, the subject matter of the claims, or a claim of infringement, and Google
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`therefore denies them. Google specifically denies that it infringes any valid claim of Plaintiff’s
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`patents.
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`26.
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`Plaintiff’s allegations in paragraph 26 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
`
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`1 Google includes the headings from Robocast’s complaint for ease of reference only.
`Google denies the statement in this heading and all other headings that Google infringes any
`valid patent.
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`Case 1:22-cv-00304-JLH Document 217 Filed 06/13/24 Page 7 of 21 PageID #: 9609
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`27.
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`Plaintiff’s allegations in paragraph 27 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`28.
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`Plaintiff’s allegations in paragraph 28 of the Complaint appear intended to reflect
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`the state of the art, claim scope, an appropriate construction of any of the claim terms, the subject
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`matter of the claims, or a claim of infringement, and Google therefore denies them. Google
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`specifically denies that it infringes any valid claim of Plaintiff’s patents.
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`29.
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`Google admits that it receives revenue associated with advertising. The remaining
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`allegations in paragraph 29 of the Complaint appear intended to reflect the state of the art, claim
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`scope, an appropriate construction of any of the claim terms, the subject matter of the claims, or
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`a claim of infringement, and Google therefore denies them. Google specifically denies that it
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`infringes any valid claim of Plaintiff’s patents.
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`COUNT I
`INFRINGEMENT OF U.S. PATENT NO. 7,155,451
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`Google realleges and incorporates by reference its responses to paragraphs 1-29
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`30.
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`above as if fully set forth herein.
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`31.
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`32.
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`33.
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`34.
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`35.
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`Google denies the allegations in paragraph 31 of the Complaint.
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`Google denies the allegations in paragraph 32 of the Complaint.
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`Google denies the allegations in paragraph 33 of the Complaint
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`Google denies the allegations in paragraph 34 of the Complaint.
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`Google denies the allegations in paragraph 35 of the Complaint.
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`36.
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`Google denies the allegations in paragraph 36 of the Complaint.
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`COUNT II
`INFRINGEMENT OF U.S. PATENT NO. 8,606,819
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`37.
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`Google realleges and incorporates by reference its responses to paragraphs 1-36
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`
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`above as if fully set forth herein.
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`38.
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`39.
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`Google denies the allegations in paragraph 38 of the Complaint.
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`The allegations of paragraph 39 relate to a claim that has been dismissed;
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`therefore, no response is necessary. To the extent a response is necessary, Google denies the
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`allegations of paragraph 39.
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`40.
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`The allegations of paragraph 40 relate to a claim that has been dismissed;
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`therefore, no response is necessary. To the extent a response is necessary, Google denies the
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`allegations of paragraph 40.
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`41.
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`The allegations of paragraph 41 relate to a claim that has been dismissed;
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`therefore, no response is necessary. To the extent a response is necessary, Google denies the
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`allegations of paragraph 41.
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`42.
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`43.
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`44.
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`Google denies the allegations in paragraph 42 of the Complaint.
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`Google denies the allegations in paragraph 43 of the Complaint.
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`COUNT III
`INFRINGEMENT OF U.S. PATENT NO. 8,965,932
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`Google realleges and incorporates by reference its responses to paragraphs 1-43
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`above as if fully set forth herein.
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`45.
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`46.
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`Google denies the allegations in paragraph 45 of the Complaint.
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`The allegations of paragraph 46 relate to a claim that has been dismissed;
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`therefore, no response is necessary. To the extent a response is necessary, Google denies the
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`allegations of paragraph 46.
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`47.
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`The allegations of paragraph 47 relate to a claim that has been dismissed;
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`therefore, no response is necessary. To the extent a response is necessary, Google denies the
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`allegations of paragraph 47.
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`48.
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`The allegations of paragraph 48 relate to a claim that has been dismissed;
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`therefore, no response is necessary. To the extent a response is necessary, Google denies the
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`allegations of paragraph 48.
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`49.
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`50.
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`Google denies the allegations in paragraph 49 of the Complaint.
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`Google denies the allegations in paragraph 50 of the Complaint.
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`PRAYER FOR RELIEF
`51.
`Google denies that plaintiff is entitled to any relief whatsoever, including all relief
`requested in Plaintiff’s “Prayer for Relief.” To the extent any statement in the Prayer for Relief
`is deemed factual and/or requires a response, it is denied.
`DEFENSES
`52.
`Subject to the responses above, Google and YouTube allege and assert the
`following defenses in response to the allegations, undertaking the burden of proof only as to those
`defenses deemed affirmative by law, regardless of how such defenses are denominated herein.
`In addition, to the defenses described below, and subject to its responses above, Google and
`YouTube specifically reserve all rights to allege additional defenses that become known through
`the course of discovery.
`
`FIRST DEFENSE—NON-INFRINGEMENT
`53.
`Google and YouTube do not infringe and have not infringed (directly,
`contributorily, or by inducement), either literally or under doctrine of equivalents, and are not
`liable for infringements of any valid and enforceable claim of the ’451, ’819, or ’932 Patents
`(collectively, the “Patents-in-Suit”).
`SECOND DEFENSE—INVALIDITY
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`54.
`The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.
`§ 101 because the claims are directed to abstract ideas or other non-statutory subject matter.
`55.
`The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.
`§ 102 because the claims lack novelty and are taught and suggested by the prior art.
`56.
`The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.
`§ 103 because the claims are obvious in view of the prior art.
`57.
`The claims of the Patents-in-Suit are invalid and unenforceable for failure to
`satisfy the conditions set forth in 35 U.S.C. § 112 including failure to contain a written
`description, lack of enablement, and indefiniteness.
`58.
`The claims of the ‘451 patent are invalid for obviousness-type double patenting,
`including but not limited to based on the ‘819 and ‘932 patents.
`THIRD DEFENSE—LIMITATIONS ON PATENT DAMAGES
`59.
`Plaintiff’s claim for damages, if any, against Google and YouTube for alleged
`infringement of the Asserted Patents are limited by 35 U.S.C. §§ 286, 287, and/or 288.
`FOURTH DEFENSE—PROSECUTION HISTORY ESTOPPEL
`60.
`By reason of statements, representations, concessions, admissions, arguments,
`and/or amendments, whether explicit or implicit, made by or on behalf of the applicant during
`the prosecution of the patent applications that led to the issuance of the Asserted Patents,
`Plaintiff’s claims of infringement are barred in whole or in part by the doctrine of prosecution
`history estoppel.
`
`FIFTH DEFENSE—INEQUITABLE CONDUCT
`61.
`On information and belief, the Patents-in-Suit are unenforceable because Mr.
`Torres violated his duty of candor to, and engaged in inequitable conduct before, the United
`States Patent & Trademark Office (“USPTO”) during the prosecution of the parent application
`to the Patents-in-Suit, Application No. 08/922,063 (the “’063 application”), and this inequitable
`conduct infects each of the Patents-in-Suit and renders them unenforceable. Mr. Torres both
`made deliberate and materials misrepresentations to, and deliberately withholding information
`
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`Case 1:22-cv-00304-JLH Document 217 Filed 06/13/24 Page 11 of 21 PageID #: 9613
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`from, the USPTO with the intent to deceive the USPTO to achieve allowance of the claims of
`the ’063 application.
`62.
`37 C.F.R. § 1.56 (as in effect in 1999, i.e., during the prosecution of ’063
`application) imposes a duty of candor and good faith on patent applications and others associated
`with the filing and prosecution of patent applications.
`63.
`On information and belief, Mr. Torres violated this duty of candor and good faith
`by submitting a false declaration under 37 C.F.R. § 1.131 to the USPTO in order to overcome a
`prior art rejection. Additionally, on information and belief, Mr. Torres violated this duty of
`candor and good faith by withholding from the USPTO material evidence that contradicted
`representations made in the declaration. Further, on information and belief, Mr. Torres’ actions
`were undertaken with the intent to deceive the USPTO into granting a patent.
`64.
`Specifically, during the prosecution of the ’063 Application, the USPTO issued a
`Non-Final Office Action dated September 29, 1998 rejecting the single pending claim in the ’063
`Application as “unpatentable over Richardson et al. (USP 5,809,247) in view of Davis et al (USP
`5,796,953).”
`65. Mr. Torres waited for six months—until March 29, 1999—before he filed an
`extension of time and a Continued Prosecution Application (“CPA”). The CPA made no changes
`to the ’063 application or the rejected claims.
`66.
`On March 14, 1999, the USPTO issued a Final Office Action where the examiner
`again rejected the ’063 application as “unpatentable over Richardson et al. (USP 5,809,247) in
`view of Davis et al (USP 5,796,953).” The Examiner specifically noted how Mr. Torres had
`made no changes to the ’063 application or the rejected claims: “This is a continuation of
`applicant’s earlier Application No. 08/922,063. All claims are drawn to the same invention
`claimed in the earlier application and could have been finally rejected on the grounds and art of
`record in the next Office action if they had been entered in the earlier application. Accordingly,
`THIS ACTION IS MADE FINAL, even though it is a first action in this case.”
`
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`67.
`An applicant may overcome a rejection based upon prior art by following the
`procedure set forth in 37 C.F.R. § 1.131 (1999). In particular, pursuant to 37 C.F.R. § 1.131
`(1999), a patent applicant can seek to establish that a reference is not prior art by submitting an
`oath or declaration showing that the applicant invented the claimed subject matter before the date
`of the reference used as a basis for rejecting a claim:
`[w]hen any claim of an application or a patent under reexamination
`is rejected, the inventor of the subject matter of the rejected claim,
`the owner of the patent under reexamination, or the party qualified
`under §§ 1.42, 1.43, or 1.47, may submit an appropriate oath or
`declaration to establish invention of the subject matter of the
`rejected claim prior to the effective date of the reference or activity
`on which the rejection is based.
`
`
`68.
`To do so, the applicant must make a “showing of facts shall be such, in character
`and weight, as to establish reduction to practice prior to the effective date of the reference, or
`conception of the invention prior to the effective date of the reference coupled with due diligence
`from prior to said date to a subsequent reduction to practice or to the filing of the application.”
`37 C.F.R. § 1.131.
`69.
`As part of this showing, “[o]riginal exhibits of drawings or records, or
`photocopies thereof, must accompany and form part of the affidavit or declaration or their
`absence must be satisfactorily explained.” 37 C.F.R. § 1.131.
`70.
`U.S. Patent No. 5,809,247 (“Richardson”) was the primary reference used to
`reject the ’063 application. Richardson was filed on July 22, 1996.
`71.
`On November 12, 1999, Mr. Torres responded to the Final Office Action by
`claiming that the ’063 application was entitled to claim priority to Mr. Torres’ earlier-filed
`Provisional Application No. 60/025360. Provisional Application No. 60/025360 was filed on
`September 2, 1996.
`72.
`Since the provisional filing date of September 2, 1996 was after the July 22, 1996
`filing date of Richardson, Mr. Torres also filed a declaration pursuant to 37 C.F.R. § 1.131 to
`establish that Richardson was not prior art.
`
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`73.
`In his November 12, 1999 response to the Final Office Action, Mr. Torres did not
`offer substantive arguments trying to distinguish the pending claims from the disclosures of
`Richardson. Instead, Mr. Torres relied on an attached declaration: “None of the references cited
`by the Examiner teaches or discloses the present invention as claimed. In any event, Applicant
`herewith submits a Declaration pursuant to 37 CFR Section 131 to overcome [sic] Richardson
`reference and has amended claim 1 to further define the invention.”
`74.
`Specifically, Mr. Torres’s stated in the declaration that he “conceived in the
`United States the invention claimed in the above-identified patent application prior to July 22,
`1996, the filing date of [prior art reference] US Patent No. 5,809,247.” To support its arguments,
`Mr. Torres attached as Exhibit A to the declaration a purported fax dated before July 22, 1996
`from himself to a “tech writer” that the declaration contended “illustrate[d] the conception of his
`invention.” Specifically, the declaration stated that, in the fax, Mr. Torres had “describe[d his]
`invention for users who are surfing sites to have a way to see more than one web page per click.
`The letter suggests means that are provided to cue up many pages and have them automatically
`‘play’ in your browser. Furthermore, such an automated software scheduler and player could
`‘automate search results,’ ‘print dozens of pages of its own,’ and enable users to ‘pick from pages
`that were made specially as it [sic] sequence, like a story.’”
`75. Mr. Torres further asserted in the declaration that “pursuant to this conception,
`[he] exercised due diligence from prior to said date, July 22, 1996, the filing date of the cited
`Richardson et al. patent, to a subsequent constructive reduction to practice, namely the filing of
`a provisional application on September 3, 1996. Further evidence of such due diligence includes
`the establishment of a software project team to implement the invention from before July 22,
`1996 through August.”
`76.
`On information and belief, Mr. Torres fabricated the purported fax attached to his
`declaration as Exhibit A and submitted it to the USPTO. Accordingly, on information and belief,
`his statements in the declaration regarding conception and the fax to Mr. Hertzig were knowingly
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`false. See, e.g., Robocast, Inc. v. Microsoft Corporation, Civil Action No. 10-1055-RGA (D.
`Del. February 21, 2014), D.I. 499 at 21-25; id. D.I. 387 at 6-7.
`77.
`On information and belief, Mr. Torres’s statements in the declaration regarding
`reduction to practice were also knowingly false, including because no such “software project
`team” had been “establish[ed]” from before July 22, 1996. See, e.g., id.
`78.
`In addition, on information and belief, Mr. Torres came into possession of a letter
`during the prosecution of the ’063 application from John Halbert that contradicted his statement
`in his declaration regarding establishing a project team to implement the invention from before
`July 22, 1996, and Mr. Torres knowingly and intentionally withheld this letter from the Patent &
`Trademark Office despite its materiality to the ’063 application and Mr. Torres’s prior false
`statements during prosecution. See, e.g., id.
`79.
`On information and belief, further information regarding these allegations can be
`found at paragraphs 45 through 132 of Amended Answer and Defenses of Defendant Apple Inc.,
`D.I. 210, Apple Inc.’s Answering Brief in Opposition to Robocast’s Motion for Summary
`Judgment of No Unenforceability, D.I. 370, and pages 23-27 of Memorandum Opinion, D.I. 457,
`all in Robocast, Inc. v. Apple Inc., C.A. No. 11-235-RGA; Microsoft’s Answer, D.I. 220,
`Microsoft Corporation’s Answering Brief in Opposition to Robocast’s Motion for Summary
`Judgment of No Unenforceability and No Unclean Hands, D.I. 360, and pages 21-25 of
`Memorandum Opinion, D.I. 499 all in Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-
`1055-RGA.
`80. Mr. Torres’s declaration was submitted in order to establish that Richardson was
`not prior art to his claimed invention.
`81.
`On information and belief, Mr. Torres’s declaration constituted an affirmative act
`of egregious misconduct before the USPTO.
`82.
`On information and belief, Mr. Torres’s declaration constituted an unmistakably
`false affidavit.
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`On information and belief Mr. Torres’s declaration constituted a knowingly false
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`83.
`affidavit.
`84.
`On information and belief, Mr. Torres’s declaration constituted an unmistakably
`false affidavit submitted in an attempt to secure allowance of the claims of his patent application.
`85.
`One or more of the misrepresentations or omissions by Mr. Torres and/or
`Robocast to the USPTO was per se material. For example, knowingly submitting a false affidavit
`during prosecution to the USPTO is per se material.
`86.
`The Patents-in-Suit each claim priority to the ’063 application. Each of the
`Patents-in-Suit has an immediate and necessary relationship to Mr. Torres’ misconduct in the
`prosecution of the ’063 application. The claims of the Patents-in-Suit are also sufficiently similar
`to one or more of those at issue in the ’063 application.
`87. Mr. Torres’ inequitable conduct in prosecution of the ’063 application infects, and
`renders unenforceable, the claims of the Patents-in-Suit.
`88.
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`89.
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`90.
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`On information and belief,
`was an attempt by Mr. Torres and Robocast’s lead litigation counsel to secure allowance
`of the claims of patent applications Robocast was continuing to prosecute before the USPTO,
`including the applications leading to the ’819 and ’932 Patents, by avoiding informing the
`USPTO that Mr. Torres and Robocast had previously submitted false information.
`91.
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`On information and belief,
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`92.
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`, in an attempt to secure allowance of the claims of
`patent applications Robocast was continuing to prosecute before the USPTO, including the
`applications leading to the ’819 and ’932 Patents, by avoiding informing the USPTO that Mr.
`Torres and Robocast had previously submitted false information.
`93.
`The failure to correct Mr. Torres’ declaration submitted in prosecution of the ’063
`Patent is per se material. For example, the failure to correct an unmistakably false declaration is
`per se material. See, e.g., Intellect Wireless, Inc. v. HTC Corp., 732 F.3d 1339, 1342 (Fed. Cir.
`2013); MPEP § 2001.04.
`94.
`The Patents-in-Suit each claim priority to the ’063 application. Each of the
`Patents-in-Suit has an immediate and necessary relationship to Mr. Torres, Robocast, and their
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`agents’ misconduct in the prosecution of the ’063 application, including the failure to correct Mr.
`Torres’ declaration
`. The claims of the Patents-in-Suit
`are also sufficiently similar to one or more of those at issue in the ’063 application.
`95. Mr. Torres’ inequitable conduct in prosecution of the ’063 application infects, and
`renders unenforceable, the claims of the Patents-in-Suit. Moreover, on information and belief,
`the failure to correct the declaration was motivated by a desire to secure allowance of the then-
`pending applications leading to the ’819 and ’932 Patents.
`96.
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`97.
`Such allegations of fraud and inequitable conduct were material to the
`prosecutions of the then-pending related applications leading to the ’819 and ’932 Patents,
`including under MPEP § 2001.06(c), and should have been disclosed to the USPTO during
`prosecution of those applications.
`98.
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`was an attempt to secure allowance of patent claims Robocast was continuing to pursue,
`including the ’819 and ’932 Patent claims.
`99.
`In addition, on information and belief,
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`. On information and
`belief, the failure to do so was an attempt to secure allowance of patent claims Robocast was
`continuing to pursue, including the ’819 and ’932 Patent claims.
`100. The ’451 Patent has an immediate and necessary relationship to Mr. Sofer’s and
`Robocast’s other agents’ failure to disclose the inequitable conduct allegations during
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