UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
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`In the Matter of:
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`Before The Honorable Bryan F. Moore
`Administrative Law Judge
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`CERTAIN LOCATION-SHARING
`SYSTEMS, RELATED SOFTWARE,
`COMPONENTS THEREOF, AND
`PRODUCTS CONTAINING SAME
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`Investigation No. 337-TA-1347
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`COMPLAINANTS AGIS SOFTWARE DEVELOPMENT LLC AND ADVANCED
`GROUND INFORMATION SYSTEMS, INC.’S OPPOSITION TO
`GOOGLE LLC’S MOTION FOR LEAVE TO AMEND ITS RESPONSE
`TO THE COMPLAINT AND NOTICE OF INVESTIGATION
`(MOT. NO. 1347-003)
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`I. 
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`II. 
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`III. 
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`IV. 
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`V. 
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1 
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`FACTUAL AND PROCEDURAL BACKGROUND........................................................ 3 
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`LEGAL STANDARDS ...................................................................................................... 4 
`A. 
`Amendment to Pleadings ........................................................................................ 4 
`B. 
`Inequitable Conduct ................................................................................................ 6 
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`ARGUMENT ...................................................................................................................... 7 
`Google Fails to Show Good Cause to Add an Inequitable Conduct
`A. 
`Defense ................................................................................................................... 7 
`Google’s Belated Inequitable Conduct Defense Would Not
`1. 
`Facilitate Disposition of the ’970 Patent or Promote the
`Public Interest ............................................................................................. 7 
`AGIS Fully Complied with Commission Rule 210.12(c)(1) ...................... 8 
`2. 
`Google’s Lack of Diligence is Not Good Cause ....................................... 10 
`3. 
`Google’s Proposed Amendment Would Prejudice AGIS ..................................... 11 
`Google Has Insufficiently Pleaded Inequitable Conduct ...................................... 13 
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`B. 
`C. 
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`CONCLUSION ................................................................................................................. 15 
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Certain Elec. Devices, Including Handheld Wireless Commc’ns Devices,
`Inv. Nos. 337-TA-673/337-TA-667, Order No. 39C (Sept. 17, 2009) ................................6, 12
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`Certain Liquid Crystal Display Devices & Prods. Containing the Same,
`Inv. No. 337-TA-782, Order No. 8 (Oct. 4, 2011) .....................................................................5
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`Certain Optical Disk Controller Chips & Chipsets & Prods. Containing Same,
`Including DVD Players & PC Optical Storage Devices II,
`Inv. No. 337-TA-523, Order No. 40 (Apr. 21, 2005) ................................................................5
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`Certain Replacement Auto. Lamps II,
`Inv. No. 337-TA-1292, Order No. 23 (June 28, 2022) ..............................................................4
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`Certain Replacement Auto. Lamps,
`Inv. No. 337-TA-1291, Order No. 21 (June 28, 2022) ..............................................................5
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`Certain Tobacco Heating Articles & Components Thereof,
`Inv. No. 337-TA-1199, Order No. 19 (Oct. 22, 2020) ...............................................................5
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`Certain Video Displays, Components Thereof, & Prods. Containing Same,
`Inv. No. 337-TA-687, Order No. 24 (May 28, 2010) ................................................................6
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`Certain Video Security Equip. & Sys., Related Software Components Thereof, &
`Prods. Containing Same,
`Inv. No. 337-TA-1281, Order No. 14 (Mar. 2, 2022) ................................................................5
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`Certain Wearable Monitoring Devices Sys. & Components Thereof (“Wearable
`Devices”),
`Inv. No. 337-TA-1190, Order No. 11 (May 6, 2020) ..........................................................7, 13
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`Certain Wireless Devices with 3G Capabilities & Components Thereof,
`Inv. No. 337-TA-800, Order No. 59 (Jan. 17, 2013) ....................................................... passim
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`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009)......................................................................................6, 13, 14
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`Kisor v. Wilkie,
`139 S. Ct. 2400 (2019) .......................................................................................................10, 14
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`Laerdal Medical Corp. v. Int’l Trade Comm’n,
`910 F.3d 1207 (Fed. Cir. 2018)..................................................................................................9
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`Lannom Mfg. Co., Inc. v. U.S. Int’l Trade Comm’n,
`799 F.2d 1572 (Fed. Cir. 1986)................................................................................................13
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`Nikken USA Inc. v. Robinson-May, Inc.,
`51 F. App’x 874 (Fed. Cir. 2002) ..............................................................................................9
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`Physiological Measurement Devices,
`Inv. No. 337-TA-1276, Order No. 9 (Dec. 20, 2021) ..............................................................13
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`Sonix Technology Co., Ltd. v. Publications Int’l, Ltd.,
`844 F.3d 1370 (Fed. Cir. 2017)............................................................................................9, 10
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`Therasense, Inc. v. Becton, Dickson and Co.,
`649 F.3d 1276 (Fed. Cir. 2011) (en banc) ....................................................................... passim
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`Other Authorities
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`19 C.F.R. §§ 210.9 and 210.10 ........................................................................................................9
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`19 C.F.R. § 210.12(c)(1) ..................................................................................................................9
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`19 C.F.R. § 210.13(b)(3) ..................................................................................................................4
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`19 C.F.R. § 210.14(b)(2) ..................................................................................................................4
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`19 C.F.R. § 210.15 .......................................................................................................................1, 3
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`37 C.F.R. § 1.555 ...........................................................................................................................14
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`37 C.F.R. § 1.565(a).......................................................................................................................14
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`87 Fed. Reg. 72,509-10 ....................................................................................................................3
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`87 Fed. Reg. 80,568-69 ................................................................................................................3, 9
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`Exhibit
`1
`2
`3
`4
`5
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`6
`7
`8
`9
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`TABLE OF EXHIBITS
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`Description
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`Production Letter
`E-mail from E. DiMarco to E. Langdon regarding Google Motion for Leave
`Preliminary Conference Transcript (Annotated)
`Google Resp. to Compl. - Appendix B (Annotated)
`(CBI) Google’s First Supp. Resp. to AGIS’s Interrogs. (Nos. 1-58) (Apr. 7, 2023)
`(Annotated)
`Compl. at Appx. A1 (’970 Certified Prosecution History) - Excerpted
`E-mail from E. Langdon to Respondents regarding Motion to Strike
`McAlexander Expert Report on Claim Construction (Annotated)
`PTO Litigation Search for ’970 Patent
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`I.
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`INTRODUCTION
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`Pursuant to 19 C.F.R. § 210.15(c) and Ground Rule 5, Complainants AGIS Software
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`Development LLC and Advanced Ground Information Systems, Inc. (collectively, “AGIS” or
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`“Complainants”), respectfully oppose Respondent Google LLC’s (“Google”) Motion for Leave to
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`Amend Its Response to the Complaint and Notice of Investigation (Mot. No. 1347-003)
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`(“Motion”). AGIS respectfully requests that the Administrative Law Judge (“ALJ”) deny Google’s
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`Motion to add its proposed inequitable conduct affirmative defense (the “Proposed Defense”) for
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`failure to show good cause and failure to sufficiently plead the Proposed Defense.1
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`Google’s Motion is not predicated on new facts produced during discovery. Rather, as
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`Google admits, its Motion is based entirely on the ’970 Reexam History—a publicly available,
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`nonconfidential set of documents. Through its participation as the third-party requestor of the
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`reexamination, Google received service of these documents on a rolling basis as they were filed
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`with the USPTO. Additionally, Google had these documents in its possession since at least March
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`1, 2022, when AGIS produced the entire ’970 Reexam History to Google in the co-pending district
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`court case.2 Despite possessing the documents long before filing its verified Response to the
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`Complaint in this Investigation (“Response”)3, Google waited two months after filing its Response
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`to raise the Proposed Defense. Google’s unsupportable claim that it “identified the facts supporting
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`its defense during the process of analyzing the parties’ proposed constructions” is disingenuous.4
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`Google cannot use its lack of diligence to manufacture good cause.
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`1 Complainants do not oppose Google’s proposed amended response to remove the affirmative defenses of public
`interest (Eighth Defense) and equitable estoppel (Sixth Defense).
`2 See Ex. 1. AGIS produced the ’970 Reexam History bearing Bates numbers AGIS2_00401720-AGIS2_00403661.
`3 See Google Resp. to Compl., EDIS Doc. ID No. (Feb. 6, 2023).
`4 Ex. 2, E-mail from E. DiMarco to E. Langdon (Apr. 3, 2023); id. at 2 (Apr. 5, 2023).
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`Despite receiving a three-week extension of time, Google’s Motion makes clear that it was
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`not diligent in preparing its Response.5 Google’s counsel represented to the ALJ during the
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`Preliminary Conference that it was well-aware of the ’970 Reexam History and its importance:
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`Importantly, the issue with respect to the reexam of the ’970 Patent, yes, that came
`out of reexam, but importantly it came out of reexam with a number of revised
`limitation language that have not been litigated, not been construed.
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`Ex. 3 (Prelim Conf. Tr. at 25:20-25).6 Thereafter, Google’s Response identified the ’970 Reexam
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`History as prior art.7 Despite these prior representations to the Court, Google contends it only first
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`“began studying the . . . ’970 Reexam History as part of claim construction efforts in this
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`investigation.”8 Google’s attempt to feign ignorance either lacks candor or admits a lack of
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`diligence. Third-Party Requestor Google’s alleged failure to investigate the ’970 Reexam History
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`since early 2021 cannot support good cause. If Google were to claim it was diligent in reviewing
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`the ’970 Reexam History when preparing its Response, that is evidence that it failed to act
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`“promptly [in] rais[ing] its proposed amendment,” as it now claims.9 Tellingly, Google’s Motion
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`omits when it first obtained the ’970 Reexam History because that critical fact undermines any
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`alleged good cause for belatedly adding its Proposed Defense.
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`Google also fails to cite any legal authority that supports its Motion. Google fails to apply
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`the fourteen ALJ Orders and nine Federal Court cases it cites to the facts of this Investigation—
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`nor can it. As detailed below, Google has not and cannot demonstrate good cause and lack of
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`prejudice, which require previously unavailable information and diligence post-Response.
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`5 See Order No. 4 (Jan. 3, 2023).
`6 All emphasis or emphases added unless otherwise noted.
`7 See Ex. 4 at 17 (Google’s Resp. to Compl. - Appendix B).
`8 Mot. at 2. Google is represented in this Investigation by 20 attorneys from two law firms. Eight of those attorneys
`also represented Google in the co-pending district court case at the time AGIS served the ’970 Reexam History on
`Google in that litigation. That none of these attorneys identified the Proposed Defense before filing the Response
`further underscores Google’s lack of diligence and belies any good cause argument.
`9 Ex. 2, E-mail from E. DiMarco to E. Langdon (Apr. 5, 2023).
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`Moreover, Google fails to sufficiently plead its Proposed Defense, and Google has failed to
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`provide any substantive information in response to AGIS Interrogatory No. 25, which requested
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`the bases for any affirmative defense.
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`Accordingly, Google’s Motion to add its Proposed Defense should be denied. 10
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`II.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`On November 17, 2022, AGIS filed the instant Complaint alleging a violation of Section
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`337 of the Tariff Act of 1930, as amended, alleging infringement of the ’970 Patent and four other
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`related patents.11 The Commission instituted this Investigation on December 30, 2022. See 87 Fed.
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`Reg. 80,568-69 (Dec. 30, 2022) (“NOI”). The ALJ then granted Google’s request for an extension
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`of time to file its Response, finding good cause because “Respondents further explain that ‘[t]he
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`extension of time will give Respondents necessary time to verify the factual issues and investigate
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`the allegations raised in the Complaint.’” Order No. 4 (Jan. 3, 2023). That same day, the parties
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`exchanged initial discovery requests, and as relevant here, AGIS’s Interrogatory No. 25 requested
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`Google to “[s]tate the bases for any affirmative defense(s) . . . that You intend to raise in this
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`Investigation.” See Ex. 5 at 61-62.
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`Prior to Google filing its Response, on January 30, 2023, the ALJ held a Preliminary
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`Conference, during which Google’s counsel provided its overview of the litigation history—
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`emphasizing the importance of the ’970 Reexam History to this Investigation: “importantly it
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`came out of reexam with a number of revised limitation language that have not been litigated, not
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`been construed.” See Ex. 3 at 25:21-25. The ALJ also inquired about pleading amendments,
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`including defenses—Google did not raise an inequitable conduct defense:
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`10 To the extent Google seeks leave to file a reply, AGIS respectfully submits that such request should be denied
`pursuant to 19 C.F.R. § 210.15, which states that a “moving party shall have no right to reply.” Google could have—
`and should have—addressed all issues raised in this Opposition in its Motion.
`11 U.S. Patent Nos. 9,467,838; 9,445,251; 9,749,829; and 9,820,123. See 87 Fed. Reg. 72,509-10 (Nov. 25, 2022).
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`And then on Respondents’ side, I believe there was a motion to extend the
`response…are there any unique theories, any unusual inventorship issues, any
`defenses that I should be aware of that are other than the common defenses?
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`MR. CORBETT: Your honor, I would say at this time no, there is nothing we
`would need or want to discuss with you that is a unique theory. Our responses
`will be submitted next week.
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`Id. at 14:20-15:5 Google then filed its verified Response on February 6, 2023, asserting twelve
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`affirmative defenses. Google admitted “that Appendix A1 purports to be one certified copy of the
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`prosecution history for the ’970 patent.” Google Resp. to Compl. at 13 ¶ 62. Google also included
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`Appendix B—a prior art list—which identified the ’728 Patent,12 the Life360 Litigation,13 and the
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`’970 Reexam History. See Ex. 4 (Appendix B). Google failed, however, to provide “a showing of
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`how the prior art renders each claim invalid or unenforceable and a copy of such prior art.” See
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`19 C.F.R. § 210.13(b)(3).
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`III.
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` LEGAL STANDARDS
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`A.
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`Amendment to Pleadings
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`Commission Rule 210.14(b)(2) provides:
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`If disposition of the issues in an investigation on the merits will be facilitated, or
`for other good cause shown, the presiding administrative law judge may allow
`appropriate amendments to pleadings other than complaints upon such conditions
`as are necessary to avoid prejudicing the public interest and the rights of the parties
`to the investigation.
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`19 C.F.R. § 210.14(b)(2).
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`ALJs routinely deny motions for leave to amend a response to the complaint where a
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`respondent fails to show the requisite good cause by delaying in seeking leave to amend its
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`response. See Certain Replacement Auto. Lamps II, Inv. No. 337-TA-1292, Order No. 23 at 2 (June
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`28, 2022) (“Respondents have failed to show good cause to amend their responses because of their
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`12 The ’728 Patent is not asserted in this Investigation and has never been asserted against Google or the Respondents.
`13 The ’970 Patent was not asserted in the Life360 Litigation nor was Google involved in the Life360 Litigation.
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`delay in seeking leave to amend.”); Certain Replacement Auto. Lamps, Inv. No. 337-TA-1291,
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`Order No. 21 at 2 (June 28, 2022) (same); Certain Video Security Equip. & Sys., Related Software
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`Components Thereof, & Prods. Containing Same, Inv. No. 337-TA-1281, Order No. 14 at 4 (Mar.
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`2, 2022) (no good cause where respondent “unnecessarily delayed in seeking leave to amend its
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`response to the complaint”). Good cause does not exist where a respondent knows about, and has
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`access to, publicly available documents forming the basis of the defense that were available pre-
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`response. See Certain Optical Disk Controller Chips & Chipsets & Prods. Containing Same,
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`Including DVD Players & PC Optical Storage Devices II, Inv. No. 337-TA-523, Order No. 40 at
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`10 (Apr. 21, 2005) (no good cause where “Respondents have known about and had access to the
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`publicly-available Taiwanese counterpart patent and the ’773 patent since this investigation was
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`instituted, and could have explored the difference much earlier”); cf. Certain Liquid Crystal
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`Display Devices & Prods. Containing the Same, Inv. No. 337-TA-782, Order No. 8 at 7-8 (Oct. 4,
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`2011) (no good cause where “[t]he new factual allegations added in [respondent’s] proposed
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`amended response . . . [were] all based on public information that was reasonably within
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`[respondent’s] possession at the time of its original response”).
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`Good cause also does not exist where respondents “delayed seeking leave to amend their
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`response to the complaint while they were in possession of the information that supposedly forms
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`the basis of alleged inequitable conduct defense.” Certain Tobacco Heating Articles &
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`Components Thereof, Inv. No. 337-TA-1199, Order No. 19 at 2 (Oct. 22, 2020); see also Certain
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`Wireless Devices with 3G Capabilities & Components Thereof , Inv. No. 337-TA-800, Order No.
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`59 at 2–3 (Jan. 17, 2013) (denying motion to amend because respondent failed to identify “material
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`facts in its proposed [] defense that were unavailable” before filing its response); cf. Certain
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`Replacement Auto. Serv. & Collision Parts & Components Thereof, Inv. No. 337-TA-1160, Order
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`No. 14 at 1-2 (Oct. 15, 2019) (no good cause where the amended response was “based on
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`information that [respondent] had prior to the institution of the Investigation”).
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`Failure to diligently add the proposed affirmative defense does not support good cause.
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`Certain Video Displays, Components Thereof, & Prods. Containing Same, Inv. No. 337-TA-687,
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`Order No. 24 at 3 (May 28, 2010) (respondent “has not demonstrated that it acted with diligence
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`in identifying that [the proposed] defense was applicable to the Investigation” and “failed to timely
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`move to amend” by “wait[ing] two months to file its motion to amend” after identifying the
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`proposed defense); Certain Elec. Devices, Including Handheld Wireless Commc’ns Devices, Inv.
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`Nos. 337-TA-673/337-TA-667, Order No. 39C at 8, n.2 (Sept. 17, 2009) (denying respondent’s
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`attempt to revise inequitable conduct defense to include a citation to an additional patent because
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`respondent “does not allege that it neither knew nor could not have discovered the involvement of
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`the ’763 patent through an exercise of due diligence prior to filing” its original response).
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`B.
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`Inequitable Conduct
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`“The substantive elements of inequitable conduct are: (1) an individual associated with the
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`filing and prosecution of a patent application made an affirmative misrepresentation of a material
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`fact, failed to disclose material information, or submitted false material information; and (2) the
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`individual did so with a specific intent to deceive the PTO.” Exergen Corp. v. Wal-Mart Stores,
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`Inc., 575 F.3d 1312, n.3 (Fed. Cir. 2009). Federal Circuit law governs whether inequitable conduct
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`is pleaded with particularity. Exergen, at 1318. “Intent and materiality are separate requirements,”
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`and a “court should not use a ‘sliding scale,’ where a weak showing of intent may be found
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`sufficient based on a strong showing of materiality, and vice versa” because “the materiality
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`required to establish inequitable conduct is but-for materiality.” Therasense, Inc. v. Becton,
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`Dickson and Co., 649 F.3d 1276, 1291 (Fed. Cir. 2011) (en banc). “Without sufficient factual
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`support, a court is ‘correct not to draw any permissive inference of deceptive intent. Otherwise,
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`the result would be to subject ‘every patentee’ to wasteful litigation ‘based on the detection of a
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`few negligently made errors.’” Certain Wearable Monitoring Devices Sys. & Components Thereof
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`(“Wearable Devices”), Inv. No. 337-TA-1190, Order No. 11 at 6-7 (May 6, 2020) (striking
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`inequitable conduct defense and denying motion for leave to amend) (citations omitted).
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`IV. ARGUMENT
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`Google’s Motion should be denied because Google has failed to the make the requisite
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`good cause showing. Assuming arguendo good cause did exist, Google’s Proposed Defense fails
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`as a matter of law because it fails to sufficiently plead “specific intent” and “but-for materiality.”
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`Therasense, 649 F.3d at 1291.
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`A.
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`Google Fails to Show Good Cause to Add an Inequitable Conduct Defense
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`1.
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`Google’s Belated Inequitable Conduct Defense Would Not Facilitate
`Disposition of the ’970 Patent or Promote the Public Interest
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`Google’s legally incorrect interpretation of Rule 210.14(b)(2) suggests that a lack of good
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`cause can be substituted by a showing that the Proposed Defense “would facilitate the disposition”
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`of the claims as to the ’970 Patent (one of five Asserted Patents). Mot. at 8-9. Google’s argument
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`is based on an erroneous premise that “[t]he ’970 patent is the only patent-in-suit” of importance.
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`Id. at n.5. However, the Commission instituted this Investigation as to all five Asserted Patents. In
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`fact, Google requested an extended Target Date because of the number of asserted patents and
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`asserted claims. See J.S. Proposing Target Date, EDIS Doc. ID 788149, at 3 (Jan. 17, 2023).
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`Google’s cited legal authority fails to support its position. Mot. at 8-9. Google cites Light-
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`Emitting Diodes, where respondents were permitted to add license, exhaustion, and improper
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`inventorship defenses based on newly discovered evidence during depositions and which were
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`disclosed in respondents’ contention interrogatory responses. Inv. No. 337-TA-1172, Order No.
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`15 (Feb. 20, 2020). In Audiovisual Components, respondents were permitted to supplement a pre-
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`existing patent exhaustion defense and add an inventorship defense because respondents learned
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`the identity of licensees and the role of certain individuals during discovery. Inv. No. 337-TA-837,
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`Order No. 21 at 2-3 (Sept. 6, 2012). Finally, in Wireless Devices, respondents were granted leave
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`to add a waiver defense because they provided notice in a detailed contention interrogatory
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`response. Inv. No. 337-TA-953, Order No. 23 at 3-6 (Sept. 14, 2015). Google fails to cite any
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`“newly” acquired evidence—because there is none—and has yet to provide any response to AGIS
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`Interrogatory No. 25, which seeks the factual and legal bases for any defense in this Investigation.
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`As to public interest, the Federal Circuit, sitting en banc, stated that “patent prosecutors,
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`inventors, courts, and the public at large have an interest in reining in inequitable conduct.”
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`Therasense, at 1294. Google’s reliance on Thompson-Hayward is unavailing because it addressed
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`“the submission of falsified affidavits” to the patent examiner. See Thompson-Hayward, at 31
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`Similarly, Energy Heating addressed a continuation that was issued during the pendency of the
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`appeal after a district court judgment found inequitable conduct. Energy Heating, at 1300. Those
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`cases involved the precise “affirmative egregious misconduct” the Federal Circuit sought to
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`address in creating the but-for materiality test to reign-in inequitable conduct assertions—none of
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`which are present here. Therasense, at 1292-93 (“Because neither mere disclosure of prior art
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`references to the PTO nor failure to mention prior art references in an affidavit constitutes
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`affirmative egregious misconduct, claims of inequitable conduct that are based on such omission
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`require proof of but-for materiality.”).
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`Accordingly, Google’s belated Motion should be denied because it would not facilitate the
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`expeditious disposition of this Investigation and would be contrary to the public interest.
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`2.
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`AGIS Fully Complied with Commission Rule 210.12(c)(1)
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`Google falsely accuses AGIS of failing to comply with Rule 210.12(c)(1) as “an
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`independent reason why good cause exists for Google’s proposed amendment.” Mot. at 9. As an
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`initial matter, Google does not allege that Appendix A1 attached to the Complaint is not a certified
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`copy of the ’970 Patent prosecution history. That is because Appendix A1 is a certified copy of
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`the ’970 Patent prosecution history. Specifically, 19 C.F.R. § 210.12(c)(1) requires: “One certified
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`copy of the [PTO] prosecution history for each involved U.S. patent, plus three additional copies
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`thereof.” AGIS included a certified copy of the prosecution history for the ’970 Patent, certified
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`as of September 12, 2022, by the PTO. See Ex. 6.14 In fact, the PTO explicitly states that “[a]
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`Certified File Wrapper includes the complete prosecution history and is commonly used in judicial
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`proceedings.”15 Google’s own verified Response admitted “that Appendix A1 purports to be one
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`certified copy of the prosecution history for the ’970 patent, plus three additional copies thereof.”
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`Google’s Resp. to Compl. 13 ¶ 62. Google also omits any mention of 19 C.F.R. §§ 210.9(a) and
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`210.10(a)(1), which state that: “[t]he Commission shall examine the complaint for sufficiency and
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`compliance with the applicable sections of this chapter,” and “[t]he Commission shall determine
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`whether the complaint is properly filed and whether an investigation should be instituted on the
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`basis of the complaint.” Accord Laerdal Medical Corp. v. Int’l Trade Comm’n, 910 F.3d 1207,
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`1213 (Fed. Cir. 2018) (recognizing the Commission is required to ensure compliance during pre-
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`institution under 19 C.F.R. §§ 210.9 and 210.10). The Commission examined AGIS’s Complaint
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`(including Appendix A1) and instituted this Investigation. See NOI.
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`Google’s reliance on Federal Circuit opinions in Nikken and Sonix is misplaced. In each,
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`the Federal Circuit makes clear that, for the purposes of claim construction, the reexamination
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`history is “relevant to determining the claim scope.” Nikken USA Inc. v. Robinson-May, Inc., 51
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`F. App’x 874, 884 (Fed. Cir. 2002) (finding “statements made during the prosecution history,
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`14 See Ex. 6, Compl. at Appx. A1 (’970 Certified Prosecution History), EDIS Doc. ID No. 784696 (Nov. 16, 2022).
`15 See PTO, Order Certified Copies, available at: https://www.uspto.gov/patents/apply/checking-application-
`status/order-certified-copies (last accessed Apr. 20, 2023).
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`including reexamination proceedings, are relevant to determining the claim scope”); Sonix
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`Technology Co., Ltd. v. Publications Int’l, Ltd., 844 F.3d 1370, 1375 (Fed. Cir. 2017) (reversing
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`district court’s grant of summary judgement of invalidity because “the court rejected the
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`prosecution and reexamination history as not providing additional guidance”). That the Federal
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`Circuit considers the reexamination history relevant to claim scope neither renders a PTO’s
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`certified prosecution history as non-certified, nor alters the interpretation of Commission Rule
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`210.12. Google fails to offer any alternative cannon of regulatory interpretation, much less any
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`basis for ambiguity. “The regulation then just means what it means—and the court must give it
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`effect as the court would any law.” Kisor v. Wilkie, 139 S. Ct. 2400, 2415 (2019).
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`3.
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`Google’s Lack of Diligence is Not Good Cause
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`Google’s claim that it “prepared its initial response based on the state of the record as it
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`existed per AGIS’s complaint” is disingenuous and not credible. Mot. at 9. Despite filing the
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`request for the ’970 reexamination in May 2020 and receiving service of related documents as they
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`were filed with the USPTO, receiving AGIS’s production of the ’970 Reexam History in the co-
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`pending district court case on March 1, 2022, discussing the importance of the ’970 reexamination
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`during the Preliminary Conference—before Google filed its Response—and citing the ’728 Patent,
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`the Life360 Litigation, and the ’970 Reexam History as prior art in its verified Response, Google
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`inexplicably failed to consider the ’970 Reexam History when “Google prepared its initial
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`response.” See Exs. 3 (Prelim. Conf. Tr.); Ex. 4 (Appendix B). Google’s lack of diligence in
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`investigating public documents that it was aware of and that were in its possession in preparing its
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`defenses in this Investigation is not good cause. See, supra, § III.A.
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`Finally, Google’s cited authority fails to support its position. As noted above, Audiovisual
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`Components does support Google’s position. In Protective Cases, a respondent was permitted to
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`add a prosecution history laches defense because another respondent had already pleaded the
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`defense, thus presenting no new issues in the investigation. Inv. No. 337-TA-955, Order No. 7 at
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`2-3 (July 13, 2015). Fitness Devices is no different—there, respondents were allowed to add an
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`inequitable conduct defense because facts supporting the defense were produced in discovery, and
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`other respondents pleaded a similar defense in their response. Inv. No. 337-TA-1265, Order No.
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`10 at 3 (Aug. 16, 2021). Like Audiovisual Components, the ALJ in Memory Modules allowed
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`respondents to amend their pre-existing unclean hands defense to add additional factual allegations
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`discovered during discovery. Inv. No. 337-TA-1089, Order No. 24 at 2-4 (Oct. 23, 2018). Finally,
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`in Human Milk, respondents were permitted to add an inequitable conduct defense because the
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`underlying facts were learned during a third-party deposition, and respondents detailed their theory
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`in interrogatory responses. Inv. No. 337-TA-1120, Order No. 29 at 1-6 (Mar. 22, 2019). The facts
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`presented in those orders are not analogous here. Accordingly, Google’s Motion should be denied.
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`B.
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`Google’s Proposed Amendment Would Prejudice AGIS
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`Google wrongly asserts no prejudice exists because: (1) it “is seeking leave as soon as
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`practicable after learning the import[sic] of the ’970 Reexam History;” (2) “the Investigation is in
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`its early stages;” (3) the Proposed Defense would not “require AGIS to undertake significant
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`discovery or other efforts in response;” and (4) no “other substantive issues or deadlines in this
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`investigation” would be impacted. Mot. at 11-13.
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`First, Google fails to substantiate any facts supporting its self-serving assertion that it
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`sought “leave as soon as practicable after learning the import[sic] of the ’970 Reexam History.”
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`Id. As detailed above, Google initiated the ’970 Reexamination, admitted it was aware of the
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`“import” of the ’970 Reexamination during the Preliminary Conference—prior to filing its
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`Response—and cited the ’728 Patent, the Life360 Litigation, and the ’970 Reexam History in its
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`Response. See Exs. 3, 4. Tellingly, Google fails to identify a single fact that demonstrates it was
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`diligent in reviewing the ’970 Reexam History until just days prior to noticing the Motion. See
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`Wireless Commc’ns Devices, Inv. Nos. 337-TA-673/337-TA-667, Order No. 39C at 8, n.2. After
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`waiting until the late stages of the claim construction process to review the ’970 Reexam History,
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`Google now seeks to add an extraordinary defense. This is prejudicial to AGIS.
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`Second, Google’s cited orders do not support its