UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
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`
`
`In the Matter of
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`CERTAIN LOCATION-SHARING
`SYSTEMS, RELATED SOFTWARE,
`COMPONENTS THEREOF, AND
`PRODUCTS CONTAINING SAME
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`ORDER NO. 11:
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`Inv. No. 337-TA-1347
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`GRANTING GOOGLE LLC’S MOTION FOR LEAVE TO AMEND
`ITS RESPONSE TO THE COMPLAINT OF AGIS SOFTWARE
`DEVELOPMENT
`LLC
`AND
`ADVANCED
`GROUND
`INFORMATION
`SYSTEMS,
`INC. AND NOTICE OF
`INVESTIGATION
`
`
`
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`I.
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`(April 27, 2023)
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`INTRODUCTION
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`On April 10, 2023, Respondent Google LLC (“Google”) moved (1347-003) to amend its
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`Response to the Complaint and Notice of Investigation. EDIS Doc. No. 794093 (“Mot.”).
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`Complainants AGIS Software Development LLC and Advanced Ground Information Systems,
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`Inc. (collectively, “AGIS”) oppose this motion. EDIS Doc. No. 794681 (“AGIS Resp.”). The
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`Commission Investigative Staff supports this motion. EDIS Doc. No. 794693 (“Staff Resp.”).
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`Google represents that Respondents ASUSTeK Computer Inc., ASUS Computer International,
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`BLU Product, Inc., HMD America, Inc., HMD Global, HMD Global Oy, Kyocera Corporation,
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`Lenovo Group Ltd., Lenovo (United States), Inc., Motorola Mobility LLC, OnePlus Technology
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`(Shenzen) Co., Ltd., Panasonic Holdings Corporation, Panasonic Corporation of North America,
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`Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., Sony Corporation, TCL
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`Communication Technology Holdings Limited, TCL Electronics Holdings Limited, TCL
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`Technology Group Corporation, TCT Mobile (US) Inc., Xiaomi Corporation, Xiaomi H.K. Ltd.,
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`Xiaomi Communications Co., Ltd., and Xiaomi Inc. do not oppose this motion. Motion at cover.
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`II.
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`BACKGROUND
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`AGIS filed its Complaint on November 16, 2022. The Commission instituted this
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`Investigation on December 22, 2022, and the Notice of Investigation was published in the Federal
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`Register on December 30, 2022. 87 Fed. Reg. 80,568 (Dec. 30, 2022). On January 3, 2023, I
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`granted an unopposed motion extending the time to respond to the Complaint and Notice of
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`Investigation to February 6, 2023. Order No. 4 (Jan. 3, 2023). Google filed its response to the
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`Complaint and Notice of Investigation on February 6, 2023. EDIS Doc. No. 789577. Under the
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`current Procedural Schedule, fact discovery closes on June 30, 2023. Order No. 6 at 2 (Feb. 2,
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`2023).
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`The disputed portion of Google’s proposed amendment to the Response to the Complaint
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`and Notice of Investigation adds a defense of inequitable conduct for one of the five patents-in-
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`suit, U.S. Patent No. 8,213,970 (“the ’970 patent”).1 See generally Mot. Ex. 2 (redline showing
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`proposed additional defense). The ’970 patent was the subject of ex parte reexamination
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`proceedings. Mot. at 3. Google argues as it was reviewing the file history of the reexamination
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`proceeding for claim construction proceedings, it discovered evidence of inequitable conduct
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`committed by AGIS’s counsel during the reexamination. Id. at 2. Google further explains that it
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`promptly filed its motion to amend shortly after uncovering the relevant facts. Id.
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`III. LEGAL STANDARDS
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`Commission Rule 210.14(b)(2) governs amendments to the pleadings, including a
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`Response to the Complaint and Notice of Investigation. It reads:
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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
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` 1
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` The amended response also removes two affirmative defenses that Google agreed to withdraw,
`which does not appear to be disputed by any party. Motion at 1 n.1.
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`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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`Commission Rule 210.13(b) requires that “[a]ffirmative defenses shall be pleaded with as
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`much specificity as possible in the response.” 19 C.F.R. § 210.13(b). If a defense of
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`unenforceability is raised, a respondent “is encouraged to make the following showing when
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`appropriate: . . . the basis for such assertion, including, when prior art is relied on, a showing of
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`how the prior art renders each claim invalid or unenforceable and a copy of such prior art.” 19
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`C.F.R. § 210.13(b)(3).
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`In accordance with Commission Rule 210.13(b), some Administrative Law Judges have
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`required respondents asserting inequitable conduct to meet the pleading requirements of Federal
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`Rule of Civil Procedure 9(b), as required in district court under the Federal Circuit’s holding in
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`Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009). E.g., Certain
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`Replacement Automotive Lamps II, Inv. No. 337-TA-1292, Order No. 23 at 2–3 (June 28, 2022);
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`Certain Light-Based Physiological Measurement Devices & Components Thereof, Inv. No. 337-
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`TA-1276, Order No. 9 at 6–9 (Dec. 20, 2021). As Exergen explains, Rule 9(b) requires
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`“identification of the specific who, what, when, where, and how of the material misrepresentation
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`or omission committed before the PTO.” 575 F.3d at 1327. It also requires “sufficient allegations
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`of underlying facts from which a court may reasonably infer that a specific individual (1) knew of
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`the withheld material information or of the falsity of the material misrepresentation, and (2)
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`withheld or misrepresented this information with a specific intent to deceive the PTO.” Id. at
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`1328–29.
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`Other Administrative Law Judges have declined to impose the heightened pleading
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`standard of Rule 9(b) for inequitable conduct. E.g., Certain Elec. Devices with Optical Filters &
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`Optical Sensor Systems & Components Thereof, Inv. No. 337-TA-1187, Order No. 14 at 2 (Apr.
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`15, 2020); Certain Magnetic Tape Cartridges & Components Thereof, Inv. No. 337-TA-1058,
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`Order No. 23 at 9–10 (Feb. 8, 2018).
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`IV. DISCUSSION
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`A.
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`Google’s Amended Response is Justified Under Commission Rule
`210.14(b)(2)
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`Under these circumstances, disposition of the issues in this investigation on the merits will
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`be facilitated by allowing Google to amend its response, and therefore good cause exists to allow
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`Google to amend its response to add a defense of inequitable conduct. Further, there will be no
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`prejudice to either the public interest or the kind of prejudice Commission Rule 210.14(b)(2) is
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`concerned about to the rights of AGIS by permitting an amendment.
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`Google has timely moved to amend the Response under the circumstances. Google argues
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`that it reviewed the file history for the reexamination of the ’970 patent in preparing for claim
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`construction proceedings in this investigation. Mot. at 2. As Google explains, the file history for
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`the reexamination was not provided with the Complaint2 nor has it been produced in discovery in
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`this Investigation. Mot. at 4; see also Staff Resp. at 10 (explaining that the Staff does not know of
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`any document production would have prompted Google to formulate this defense earlier).
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`Although the ’970 patent was at issue in prior litigation, AGIS and Google stipulated in dismissing
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`that litigation that the reexamined claims were not at issue there. Mot. Ex. 3 at 1 n.1. Thus, despite
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`AGIS’s argument otherwise, I find Google’s explanation that it reviewed this reexamination file
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`history during claim construction preparations and that it sought leave to amend “as soon as
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` 2
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` Although the parties dispute whether AGIS complied with Commission Rule 210.12(c)(1) by
`not including the file history for the reexamination with the Complaint, Mot. at 9; AGIS Resp. at
`8–10, that is irrelevant to this motion.
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`practicable” after it became aware of the importance of this reexamination file history to be
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`persuasive. Mot. at 11. It is telling that AGIS does not dispute that it has failed to produce the
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`reexamination file history in this investigation. Instead, AGIS argues that Google should have been
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`aware it from other proceedings in which the file history was produced. Even if the reexamination
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`was produced in prior litigation between the parties, see AGIS Resp. Ex. 1, that does not mean
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`Google should have reviewed it and been aware of its relevance to the reexamined claims which
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`were not at issue in that litigation. I therefore find Google’s explanation to be reasonable and
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`persuasive.
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`Google also filed this motion in the early stages of this investigation. Google’s motion was
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`filed on April 10, 2023, over two and a half months before the close of fact discovery. See Order
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`No. 9. There is ample time for both parties to obtain discovery about this defense and provide their
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`contentions. Other Administrative Law Judges have permitted inequitable conduct claims to be
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`pled during fact discovery even where the facts were known to the respondent months earlier
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`because of a lack of prejudice. E.g., Certain Elec. Devices with Optical Filters & Optical Sensor
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`Systems & Components Thereof, Inv. No. 337-TA-1187, Order No. 14 at 3–4 (Apr. 15, 2020).
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`Thus, even if AGIS were correct that Google should have been aware of these facts earlier, this
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`motion is nevertheless timely. Further, as explained below, AGIS has not established that it will
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`suffer prejudice from this motion.
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`AGIS will not be prejudiced by allowing Google’s amendment. AGIS argues that it will be
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`prejudiced because it will be required to provide discovery about this defense. AGIS Resp. at 12–
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`13.3 Nevertheless, merely needing to provide discovery is not the prejudice contemplated under
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` 3
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` AGIS’s arguments about alleged discovery deficiencies by Google are irrelevant to this dispute.
`See AGIS Resp. at 12–13. If AGIS believes Google has not complied with its discovery
`obligations, it can seek appropriate relief.
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`Commission Rule 210.14(b)(2). Given the stage of this investigation, AGIS will have ample time
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`to seek discovery from Google about the basis for this defense, formulate its responses, and ensure
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`that the merits of this defense will be addressed. Nor can AGIS legitimately claim prejudice
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`because some of its litigation counsel in this investigation may need to be deposed. AGIS Resp. at
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`12–13. AGIS had its choice of counsel for the reexamination and this investigation and chose to
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`use the same counsel for both proceedings. In choosing to use its reexamination counsel as
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`litigation counsel in this investigation, AGIS took the risk that its counsel could become witnesses
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`if a claim of inequitable conduct arose. AGIS has not shown how it would be prejudiced by its
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`litigation counsel becoming witnesses for this inequitable conduct defense.
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`There is also no evidence that the public interest would be prejudiced here. The public
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`interest is satisfied by fulsome discovery of all issues that arise in the merits of an investigation.
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`The mere fact that the Federal Circuit has attempted to rein in allegations of inequitable conduct,
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`see AGIS Resp. at 8, does not show that the public interest would be harmed by allowing this
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`claim.
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`B.
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`Google’s Amended Response Is Not Futile
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`Google’s amended response is not futile, even under the heightened Exergen pleading
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`standard. Exergen requires “identification of the specific who, what, when, where, and how of the
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`material misrepresentation or omission committed before the PTO[.]” 575 F.3d at 1327. AGIS
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`does not appear to dispute that Google has sufficiently identified the who, what, where, or when
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`of the alleged omission. AGIS instead argues that Google has failed to allege specific intent and
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`the how of but-for materiality. AGIS Resp. at 13. I find that Google has adequately alleged both
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`specific intent and materiality.
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`Google has adequately pled that the attorneys identified acted with specific intent. Exergen
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`does not require that a party pleading inequitable conduct prove inequitable conduct on the
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`pleadings. Instead, it requires only “sufficient allegations of underlying facts from which a court
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`may reasonably infer that a specific individual (1) knew of the withheld material information or of
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`the falsity of the material misrepresentation, and (2) withheld or misrepresented this information
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`with a specific intent to deceive the PTO.” Id. at 1328–29. Google’s amended pleading meets this
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`burden. AGIS argues that this pleading is deficient because the key allegations are made “on
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`information and belief,” AGIS Resp. at 13. This is not fatal, because evidence of intent is often not
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`possible to discover before discovery. Google alleges that the attorneys identified were aware of
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`the Life360 litigation which was material and knew how it was material and that they participated
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`in examiner interviews, signed submissions on behalf of AGIS but did not disclose the Life360
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`litigation to the examiners. E.g., Mot. Ex. A ¶¶ 30–46, 51. These are detailed and specific factual
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`allegations from which specific intent to deceive the USPTO could be inferred, which is all that
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`Exergen requires.
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`Google has also adequately pled but-for materiality. Google’s amended response contains
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`detailed and thorough allegations explaining how it contends the Life360 litigation was material
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`to the reexamination. E.g., Mot. Ex. A ¶¶ 30–40. AGIS’s arguments otherwise go the merits of a
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`claim construction dispute that cannot be resolved on the pleadings and rely on evidence that is
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`not properly considered at this stage. See AGIS Resp. at 14–15; accord Staff Resp. at 11–12
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`(explaining Staff’s contentions that claim construction will largely address this dispute). At this
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`stage, reviewing the pleadings, Google’s allegations are adequate to state a claim for inequitable
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`conduct.
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`For the reasons set forth above, Google’s motion is granted. Google is ordered to file its
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`amended response to the Complaint and Notice of Investigation on EDIS after receiving this order.
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`Z
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`oeF. Moore
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`SO ORDERED.
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`Administrative Law Judge
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`ne
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