Case 2:22-md-03034-TGB ECF No. 259, PageID.19904 Filed 06/21/24 Page 1 of 49
`
`REDACTED
`
`PLAINTIFF NEO WIRELESS, LLC’S BRIEF IN
`SUPPORT OF MOTION FOR SUMMARY
`JUDGMENT ON DEFENDANTS’ INEQUITABLE
`CONDUCT AND UNCLEAN HANDS DEFENSES
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19905 Filed 06/21/24 Page 2 of 49
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`Case No. 2:22-md-03034-TGB
`HON. TERRENCE G. BERG
`JURY TRIAL DEMANDED
`
`
`
`IN RE NEO WIRELESS, LLC
`PATENT LITIG.
`
`PLAINTIFF’S MOTION FOR SUMMARY
`JUDGMENT ON DEFENDANTS’ INEQUITABLE
` CONDUCT AND UNCLEAN HANDS DEFENSES
`Plaintiff Neo Wireless, LLC (“Plaintiff” or “Neo”), through their counsel,
`
`
`
`respectfully moves this Court for summary judgment:
`
`1)
`
`Dismissing Defendants’ inequitable conduct defense and counterclaim
`
`(ECF Nos. 104, 105, 107, 108, 109);1
`
`2)
`
`Dismissing Defendants’ unclean hands defense (ECF Nos. 104, 105,
`
`107, 108, 109);2
`
`In support of its motion, Neo relies upon the authorities and arguments set
`
`forth in the accompanying brief and attached exhibits.
`
`
`1 Defendants Nissan and Honda have failed to file an Answer in this case. However,
`both Nissan and Honda joined all defendants in Defendants’ Invalidity and
`Unenforceability Contentions, which include an unenforceability section asserting
`inequitable conduct.
`2 Defendants Nissan and Honda have failed to file an Answer in this case. However,
`both Nissan and Honda joined all defendants in Defendants’ Invalidity and
`Unenforceability Contentions, which include an unenforceability section asserting
`unclean hands.
`
`1
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19906 Filed 06/21/24 Page 3 of 49
`
`Counsel for Neo conferred with counsel for Defendants on June 14th, 2024.
`
`Counsel explained the basis for this motion but was unable to obtain concurrence
`
`on the relief sought.
`
`2
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19907 Filed 06/21/24 Page 4 of 49
`
`DATED: June 20, 2024
`
`Respectfully submitted,
`
`
`
`/s/ Jason D. Cassady
`Jason D. Cassady
`Texas State Bar No. 24045625
`Email: jcassady@caldwellcc.com
`Christopher S. Stewart
`Texas State Bar No. 24079399
`Email: cstewart@caldwellcc.com
`James F. Smith
`Texas State Bar No. 24129800
`Email: jsmith@caldwellcc.com
`CALDWELL CASSADY CURRY P.C.
`2121 N. Pearl St., Suite 1200
`Dallas, Texas 75201
`Telephone:
`(214) 888-4848
`Facsimile:
`(214) 888-4849
`
`Jaye Quadrozzi (P71646)
`Email: jcquadrozzi@varnumlaw.com
`VARNUM LLP
`480 Pierce Street, Suite 300
`Birmingham, Michigan 48009
`Telephone:
`(248) 567-7800
`Facsimile:
`(214) 567-7423
`
`ATTORNEYS FOR PLAINTIFF
`NEO WIRELESS LLC
`
`
`
`
`
`
`
`3
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19908 Filed 06/21/24 Page 5 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`
`IN RE NEO WIRELESS, LLC
`PATENT LITIG.
`
`Case No. 2:22-md-03034-TGB
`HON. TERRENCE G. BERG
`JURY TRIAL DEMANDED
`
`
`PLAINTIFF NEO WIRELESS, LLC’S BRIEF IN SUPPORT OF MOTION
`FOR SUMMARY JUDGMENT ON DEFENDANTS’ INEQUITABLE
`CONDUCT AND UNCLEAN HANDS DEFENSES
`
`
`FILED UNDER SEAL
`
`
`
`
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19909 Filed 06/21/24 Page 6 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`I.
`
`TABLE OF CONTENTS
`STATEMENT OF MATERIAL FACTS ......................................................... 3
`A. The Inventorship and Ownership of the Asserted Patents. ...................... 3
`B. Project Angel, and the Inventors’ Prior Work for AT&T,
`Was Not Material to Patentability of the Asserted Patents. .................... 4
`C. Defendants Rely on Irrelevant, Inadmissible Evidence from
`an Unrelated Litigation. ........................................................................... 8
`II. APPLICABLE LAW FOR SUMMARY JUDGMENT ................................... 9
`III. DEFENDANTS LACK SUFFICIENT EVIDENCE TO MEET
`THEIR BURDEN TO SHOW INEQUITABLE CONDUCT ........................10
`A. Legal Standard for Inequitable Conduct ................................................10
`B. Defendants Cannot Raise a Genuine Issue of Material Fact That
`the Inventors Intended to Deceive the Patent Office by
`Withholding Project Angel. ...................................................................13
`1. Defendants Have No Direct Evidence That the Inventors
`Knew Project Angel Was Material or Deliberately Withheld It. .....13
`2. What Little Circumstantial Evidence Defendants Have Adduced
`Is Inadmissible or Insufficient. .........................................................15
`3. Intent to Deceive Is Not the Single Most Reasonable Inference. .....16
`4. Courts Have Dismissed the Defense Even in the Face of Much
`Stronger Evidence Than Exists Here. ...............................................20
`C. Defendants Cannot Show But-For Materiality. .....................................21
`IV. DEFENDANTS CANNOT CREATE A GENUINE ISSUE OF
`MATERIAL FACT ABOUT AN UNCLEAN HANDS DEFENSE
`DISTINCT FROM INEQUITABLE CONDUCT. .........................................24
`V. THE COURT SHOULD NOT CONSIDER DEFENDANTS’
`INADMISSIBLE EVIDENCE. ......................................................................28
`A. Defendants Cannot Adduce Admissible Evidence Regarding the
`Unproven Allegations Made in the Adaptix Litigation. ........................28
`B. Defendants Cannot Backdoor This Inadmissible Evidence
`Through Their Experts. ..........................................................................30
`VI. CONCLUSION ...............................................................................................34
`
`i
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19910 Filed 06/21/24 Page 7 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`
`STATEMENT OF ISSUES PRESENTED
`1. Whether a reasonable factfinder could find by clear and convincing evidence
`
`that the single most reasonable inference from the evidence of record is that
`
`the Named Inventors of the Asserted Patents intended to deceive the Patent
`
`Office during prosecution.
`
`2. Whether Defendants may use their stricken invalidity theories relating to
`
`Project Angel to support their inequitable conduct allegations, and, if not,
`
`whether a reasonable factfinder could find by clear and convincing evidence
`
`that Project Angel was but-for material based on the remaining evidence of
`
`record.
`
`3. Whether Defendants’ allegations of unclean hands rise and fall with their
`
`allegations of inequitable conduct, and, if not, whether a reasonable factfinder
`
`could conclude by clear and convincing evidence, based on the evidence of
`
`record, that Neo is barred from asserting the Asserted Patents due to egregious
`
`misconduct akin to perjury, the manufacture of false evidence, or the
`
`suppression of evidence.
`
`4. Whether the materials that Defendants and their experts rely on from a
`
`separate litigation involving third-party Adaptix is inadmissible and should be
`
`considered by the Court in deciding this Motion.
`
`ii
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19911 Filed 06/21/24 Page 8 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`CONCURRENCE PURSUANT TO L.R. 7.1(A)
`Pursuant to L.R. 7.1(a), the parties met-and-conferred on June 14, 2024
`
`
`
`regarding the relief sought in this Motion. Defendants did not concur on any of the
`
`relief requested herein.
`
`
`
`
`
`
`
`iii
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19912 Filed 06/21/24 Page 9 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Adaptix v. Apple
` 2015 WL 1322760 (N.D. Cal. Feb. 2, 2015) .......................................................... 9
`
`Adaptix v. Apple
` 2015 WL 218932 (N.D. Cal. Jan. 15, 2015) ............................................... 8, 9, 32
`
`Adaptix v. Apple
` 2015 WL 332111 (N.D. Cal. Jan. 23, 2015) .......................................................... 9
`
`Adaptix, Inc. v. Apple, Inc.
` No. 5:13-CV-01776-PSG (N.D. Cal.) .......................................................... passim
`
`Anderson v. Liberty Lobby, Inc.
` 477 U.S. 242 (1986) .............................................................................................11
`
`Astrazeneca Pharms. LP v. Teva Pharms. USA, Inc.
` 583 F.3d 766 (Fed. Cir. 2009) ..............................................................................10
`
`Celotex Corp. v. Catrett
` 477 U.S. 317, 322-23 (1986) ................................................................................10
`
`Chamberlain Group, Inc. v. Techtronic Indus. Co., Ltd.
` 2017 WL 1101092 (N.D. Ill. Mar. 22, 2017) .......................................................25
`
`Fujitsu Ltd. v. Tellabs Operations, Inc.
` No. 09 C 4530, 2012 WL 3133548 (N.D. Ill. July 31, 2012) ....................... 20, 21
`
`Gambro Lundia AB v. Baxter Healthcare Corp.
` 110 F.3d 1573, 42 U.S.P.Q.2d 1378 (Fed. Cir. 1997) ..........................................17
`
`Gilead Sciences, Inc. v. Merck & Co., Inc.
` 888 F.3d 1231 (Fed. Cir. 2018) ............................................................................12
`
`Horton v. Potter
` 369 F.3d 906 (6th Cir. 2004) ................................................................................10
`
`
`iv
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19913 Filed 06/21/24 Page 10 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`Kingsdown Med. Consultants, Ltd. v. Hollister Inc.
` 863 F.2d 867 (Fed. Cir. 1988) ................................................................. 11, 12, 17
`
`Lear Corp. v. NHK Seating of America Incorporated,
` No. 13-12937, 2022 WL 876021 (E.D. Mich. Mar. 23, 2022) ............................20
`
`Luv n’ Care, Ltd. v. Laurain
` 98 F.4th 1081 (Fed. Cir. 2024) .............................................................................26
`
`Matsushita Elec. Indus. Co. v. Zenith Radio Corp.
` 475 U.S. 574 (1986) .............................................................................................10
`
`McDonald v. Union Camp Corp.
` 898 F.2d 1155 (6th Cir. 1990) ..............................................................................10
`
`Numatics, Inc. v. Balluff, Inc.
` 66 F.Supp.3d 934 (E.D. Mich. 2014) ...................................................................31
`
`Peerless Indus., Inc. v. Crimson AV, LLC
` No. 11 C 1768, 2018 WL 6178237 (N.D. Ill. Nov. 27, 2018) .............................22
`
`ROY-G-BIV Corp. v. ABB, Ltd.
` 63 F.Supp.3d 690 (E.D. Tex. 2014) .....................................................................12
`
`Star Scientific v. R.J. Tobacco
` 537 F.3d 1357 (Fed. Cir. 2008) ............................................................................18
`
`Takeda Pharm. Co. v. TWi Pharm., Inc.
` 87 F.Supp.3d 1289 (N.D. Cal. 2015) ....................................................................12
`
`Therasense, Inc. v. Becton, Dickinson & Co.
` 649 F.3d 1276 (Fed. Cir. 2011) .................................................................... passim
`
`U.S. v. Tipton
` 269 Fed. Appx. 551 (6th Cir. 2008) .....................................................................31
`
`Rules
`
`Fed. R. Civ. P. 56 ....................................................................................................... 9
`
`
`v
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19914 Filed 06/21/24 Page 11 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`Fed. R. Civ. P. 56(a).................................................................................................10
`
`Fed. R. Civ. P. 56(c)(2) ..................................................................................... 28, 30
`
`Fed. R. Evid. 401 .....................................................................................................29
`
`Fed. R. Evid. 402 .............................................................................................. 29, 33
`
`Fed. R. Evid. 403 .............................................................................................. 29, 33
`
`Fed. R. Evid. 702 .....................................................................................................31
`
`Fed. R. Evid. 703 .....................................................................................................31
`
`Fed. R. Evid. 801 .....................................................................................................30
`
`Fed. R. Evid. 802 .....................................................................................................30
`
`Fed. R. Evid. 805 .....................................................................................................30
`
`
`
`vi
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19915 Filed 06/21/24 Page 12 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`In December of 2022, Defendants amended their answers to include a series
`
`of vague allegations—couched under the defenses of unclean hands, inequitable
`
`conduct, derivation/lack of inventorship, fraudulent conveyance, and lack of
`
`standing—borrowed from a wholly separate 2015 litigation, Adaptix, Inc. v. Apple,
`
`Inc., No. 5:13-CV-01776-PSG (N.D. Cal.), (the “Adaptix Litigation”) wherein the
`
`patent in suit shared a Named Inventor (Dr. Xiaodong “Alex” Li) with the Asserted
`
`Patents in this case. See generally ECF No. 105 (GM’s Am. Answer), PageID.8302–
`
`8316. In short, in that case the former employer of Dr. Li—Broadstorm—was
`
`accused of obtaining confidential AT&T information about its “Project Angel” fixed
`
`wireless system, and using it to derive the inventions in Broadstorm’s patents. See
`
`generally id. The accusations were never proven or resolved. And there was no
`
`accusation (and to this day have never uncovered any evidence) that Dr. Li was
`
`involved in that Broadstorm activity, or that he or any of the Named Inventors in this
`
`case took any information or derived inventions from AT&T. In fact, Defendants
`
`have dropped the defenses that would actually require them to prove any of those
`
`transgressions: derivation/improper inventorship, fraudulent conveyance, and lack
`
`of standing. ECF No. 244.
`
`Moreover, Defendants have not even attempted to recreate the evidence from
`
`the Adaptix Litigation in admissible form in this matter. They did not ask Neo’s
`
`inventors about possessing Project Angel documents or relying on Project Angel
`
`1
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19916 Filed 06/21/24 Page 13 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`through the inventive process in deposition. Defendants’ experts to this day rely on
`
`the same hearsay-within-hearsay statements from a 2015 order from the Adaptix
`
`court that Defendants’ 2022 pleadings used as their chief source for the alleged facts
`
`underlying that case. And for over a year, Defendants failed to even try to prove that
`
`Project Angel—the AT&T system from which Neo’s inventors allegedly derived the
`
`patented inventions—mapped to the claims of the patents in this case. When
`
`Defendants finally revealed theories at the last minute, the Court struck those
`
`contentions. ECF No. 238.
`
`Nevertheless, Defendants have informed Neo that, even though they will not
`
`pursue proving actual derivation, ownership by AT&T, or any other underlying
`
`malfeasance, they intend to persist with their unclean hands and inequitable conduct
`
`defenses based on the same conduct, desperate for some way to get these baseless
`
`allegations in front of the Court and the jury. Because no evidence supports
`
`Defendants’ maintenance of these unfounded, charged claims, Neo respectfully
`
`moves for summary judgment on Defendants’ counterclaims and affirmative
`
`defenses related to their now stricken and unproven unenforceability theories
`
`relating to Project Angel.
`
`2
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19917 Filed 06/21/24 Page 14 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`I.
`
`STATEMENT OF MATERIAL FACTS
`A. The Inventorship and Ownership of the Asserted Patents.
`The named inventors on the ’908 Patent are Xiaodong Li, Titus Lo,
`1.
`
`Kemin Li, and Haiming Huang, and they are the true inventors. Ex. A (“’908
`
`Patent”).
`
`2.
`
`The named inventors on the ’941 Patent are Xiaodong Li, Titus Lo,
`
`Kemin Li, and Haiming Huang, and they are the true inventors. Ex. B (“’941
`
`Patent”).
`
`3.
`
`The named inventors on the ’302 Patent are Xiaodong Li, Titus Lo,
`
`Kemin Li, and Haiming Huang, and they are the true inventors. Ex. C (“’302
`
`Patent”).
`
`4.
`
`The named inventors on the ’450 Patent are Xiaodong Li, Haiming
`
`Huang, Titus Lo, and Ruifeng Wang, and they are the true inventors. Ex. D (“’450
`
`Patent”).
`
`5.
`
`From 2004–2005, Drs. Alex Li, Titus Lo, Kemin Li, Haiming Huang,
`
`and Ruifeng Wang (the “Named Inventors”) filed the first predecessor applications
`
`to the Asserted Patents while working at Walbell Technologies, Inc., a company
`
`founded by Dr. Alex Li in late 2003. See Ex. E, U.S. Prov. Pat. App. No. 60/544,521
`
`(predecessor to the ’941 Patent); Ex. F, U.S. Prov. Pat. App. No. 60/721,451
`
`(predecessor to the ’450 Patent); Ex. G, U.S. Prov. Pat. App. No. 60/540,032
`
`3
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19918 Filed 06/21/24 Page 15 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`(predecessor to the ’908 and ’302 Patents); Ex. H, U.S. Prov. Pat. App. No.
`
`60/540,586 (predecessor to the ’908 and ’302 Patents).
`
`Project Angel, and the Inventors’ Prior Work for AT&T, Was
`B.
`Not Material to Patentability of the Asserted Patents.
`According to Defendants, Project Angel—the AT&T system that
`6.
`
`Defendants allege should have been disclosed to the Patent Office during
`
`prosecution of the Asserted Patents—was developed in the late 90s and deployed in
`
`public use as early as the year 2000. Ex. I (“Def.’s 2nd Supp. Inv. Contentions”) at
`
`*217–24.
`
`7.
`
`The earliest patent application for any Asserted Patent was filed on
`
`January 28, 2004. See Ex. G.
`
`8.
`
`There is no admissible evidence that the inventors derived the
`
`inventions of the Asserted Patents from AT&T or their work there, or developed the
`
`inventions of the Asserted Patents while at AT&T. Ex. J (“Linck Rpt.”) at ¶¶ 127–
`
`28.
`
`9.
`
`No named inventor on the Asserted Patents was employed by AT&T
`
`during the prosecution of the Asserted Patents. See Ex. K (Linck Rpt. Timeline); Ex.
`
`L (Alex Li Dep. Tr.) at 118:17–119:22; Ex. M (K. Li Resume); Ex. N (H. Huang
`
`LinkedIn Profile); Ex. O (T. Lo CV); Ex. P (R. Wang Resume).
`
`10. Dr. Alex Li’s only work at AT&T was a summer internship at AT&T
`
`Research in 1996 in which he testified
`
`
`
`4
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19919 Filed 06/21/24 Page 16 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`. He did not file any patent applications
`
`leading to the Asserted Patents until January 28, 2004 (at least 4 years after Project
`
`Angel allegedly was completed and 8 years after his AT&T internship). Ex. L at
`
`74:8–15, 76:5–14; Ex. G.
`
`11. Neither Dr. Kemin Li nor Dr. Haiming Huang ever worked at AT&T
`
`or on Project Angel. Ex. M; Ex. N.
`
`12. Dr. Titus Lo worked for AT&T from 1997 to 2001, but left in March
`
`2001 to work for Nextcomm, Inc. He then started work at Walbell with Dr. Alex Li
`
`in late 2003 (over 2 years after leaving AT&T) and was not named on any patent
`
`application leading to the Asserted Patents until January 28, 2004 (almost 3 years
`
`after leaving AT&T). Ex. O; Ex. G.
`
`13. Dr. Wang did not start work at AT&T until 2000 (after the alleged
`
`commercial launch of Project Angel), did not start work with Dr. Alex Li at Walbell
`
`until 2004, and was not named on any patent application leading to an Asserted
`
`Patent (the ’450 provisional) until September 28, 2005 (over a year after he joined
`
`Walbell). Ex. P; Ex. F.
`
`14. No current or former employee of AT&T other than the Named
`
`Inventors has testified in this matter or claimed to be an inventor of the Asserted
`
`Patents. See Ex. Q (Bims Dep. Tr.) at 172:14–18; Ex. R (Buehrer Dep. Tr.) at
`
`287:14–17; Ex. S (Wells Dep. Tr.) at 203:3–8, 203:16–21.
`
`5
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19920 Filed 06/21/24 Page 17 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`15. The Named Inventors of the Asserted Patents each signed an
`
`assignment representing that they owned the rights and that the rights are
`
`unencumbered for the relevant patents and applications resulting in the Asserted
`
`Patents. There is no evidence that the Named Inventors believed this representation
`
`to be false. Ex. T (PCT/US/05/03518 Assignment); Ex. U (PCT/US06/38149
`
`Assignment); Ex. V (PCT/US05/04601 Assignment).
`
`16. Project Angel differed significantly from the inventions of the Asserted
`
`Patents, and was not but-for material to patentability of the Asserted Patents. Ex. W
`
`(Mahon Rpt.) at Appx H, ¶¶ 2, 9, 12, 22, 25.
`
`17. Project Angel was cumulative of other prior art cited to the Patent
`
`Office during prosecution. Id. at Appx H, ¶¶ 2, 9, 13–15, 22, 26–27.
`
`18. For example, all of the Asserted Patents expressly disclose WiMAX or
`
`802.16a—an OFDMA system that postdates AT&T’s Project Angel. Ex. A at *3
`
`(under “Other Publications”); Ex. B at 1:56–63; Ex. C at *3 (under “Other
`
`Publications”); Ex. D at 1:40–45.
`
`19.
`
`In fact, Defendants’ own experts argue
`
`
`
`. Ex. X (Wells
`
`Rpt.) at ¶¶ 210–79; Ex. Y (Bims Rpt.) at ¶¶ 253–91, 456–93; Ex. Z (Buehrer Rpt.)
`
`¶¶ 151–209, 703–54, 983–1052.
`
`6
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19921 Filed 06/21/24 Page 18 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`20. Defendants’ experts also argue that
`
`
`
`
`
`. Ex. X at ¶¶ 475–543; Ex. Z at ¶¶ 581–628.
`
`21. The Named Inventors did not deliberately withhold Project Angel (or
`
`any other reference, for that matter) from the Patent Office. When filing the patent
`
`applications that resulted in the Asserted Patents, the inventors made
`
`
`
`”
`
`Ex. L at 176:19–21.
`
`22. The Named Inventors did not believe that Project Angel was relevant
`
`to the claimed inventions, in light of the substantial differences between Project
`
`Angel and the system that the Named Inventors were developing at Walbell. For
`
`example, the system under development at Walbell was a mobile broadband wireless
`
`system, while Project Angel was a fixed wireless system. Id. at 125:2–13; Ex. AA
`
`(T. Lo Dep. Tr.) at 80:20–81:4; Ex. BB (R. Wang Dep. Tr.) at 69:16–70:5, 102:5–
`
`20.
`
`23. Additionally, the
`
` Ex. AA at 102:16–20.
`
`
`
`
`
`7
`
`

`

`Case 2:22-md-03034-TGB ECF No. 259, PageID.19922 Filed 06/21/24 Page 19 of 49
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`C. Defendants Rely on Irrelevant, Inadmissible Evidence from an
`Unrelated Litigation.
`24. Previously, Dr. Alex Li worked at a company called Broadstorm
`
`Telecommunications, Inc. (“Broadstorm”); he was credited as a co-founder of the
`
`company, although he was recruited by Dr. Hui Liu. Ex. L at 85:19–86:4.
`
`25. Neither Dr. Lo nor Dr. Wang ever worked at Broadstorm. Id. at 88:21–
`
`89:14.
`
`26. Broadstorm, like Project Angel, focused on fixed wireless systems. Ex.
`
`CC (K. Li Dep. Tr.) at 47:17–48:2.
`
`27.
`
`In support of their allegations, Defendants
`
`
`
`
`
`. See, e.g., Adaptix v. Apple, 2015 WL 218932 (N.D. Cal.
`
`Jan. 15, 2015). In that litigation, in connection with those defendants’ derivation
`
`claim, Dr. Hui Liu was accused of recruiting three specific AT&T employees—Pal
`
`Meiyappan, Liang Hong, and James Hite—who were themselves accused of
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`misappropriating confidential AT&T information to further Broadstorm’s own R&D
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`efforts. Id. at *2.
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`28. No allegations were made in the Adaptix Litigation that any of the
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`named inventors on the Asserted Patents misappropriated confidential AT&T
`
`information. The only allegations in the Adaptix Litigation relating to a Named
`
`Inventor were that Dr. Alex Li was involved in developing a “recruitment pitch” for
`
`8
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`Case 2:22-md-03034-TGB ECF No. 259, PageID.19923 Filed 06/21/24 Page 20 of 49
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`the company. Id. No allegations were made at all with respect to any other named
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`inventor, the Asserted Patents, any related patents, Walbell/Waltical, Neocific, or
`
`Neo Wireless. See generally id.1
`
`29. Ultimately, on summary judgment, the Adaptix Court found the patents
`
`asserted in that action to be invalid for indefiniteness. No determinations were made
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`with respect to the allegations of misappropriation raised in the Adaptix Litigation,
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`and there was no finding by the Court that Dr. Alex Li was culpable of any
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`wrongdoing in connection with the allegations. See Adaptix v. Apple, 2015 WL
`
`332111 (N.D. Cal. Jan. 23, 2015) (order granting Defendants’ motion for summary
`
`judgment of invalidity); 2015 WL 1322760 (N.D. Cal. Feb. 2, 2015) (final judgment
`
`of invalidity and no infringement). The only Court order the Defendants rely on is
`
`an order denying summary judgment against the Adaptix Defendants’ derivation
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`claim and, in doing so, cataloging the facts discussed above in the light most
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`favorable to the non-movant. See Adaptix, 2015 WL 218932, at *1.
`
`II. APPLICABLE LAW FOR SUMMARY JUDGMENT
`Under Rule 56, summary judgment is proper when there is “no genuine
`
`dispute as to any material fact,” and the moving party is entitled to judgment as a
`
`
`1 As discussed further below, Neo disagrees that any of the facts Defendants rely on
`from the Adaptix litigation are material or admissible. Nevertheless, Neo catalogs
`them here for context, and contingently identifies, in underline, the most material
`information from these documents should the Court consider them at all.
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`9
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`Case 2:22-md-03034-TGB ECF No. 259, PageID.19924 Filed 06/21/24 Page 21 of 49
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`matter of law. Fed. R. Civ. P. 56(a). The moving party discharges its burden by
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`“‘showing’—that is, pointing out to the district court—that there is an absence of
`
`evidence to support the nonmoving party’s case.” Horton v. Potter, 369 F.3d 906,
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`909 (6th Cir. 2004) (citing Celotex, 477 U.S. at 325). The burden then shifts to the
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`nonmoving party, who “must do more than simply show that there is some
`
`metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith
`
`Radio Corp., 475 U.S. 574, 586 (1986). The non-moving party must put forth
`
`enough evidence to show that there exists “a genuine issue for trial.” Horton, 369
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`F.3d at 909 (citing Matsushita, 475 U.S. at 587). While the nonmoving party is
`
`entitled to reasonable inference, mere conclusory allegations are not sufficient to
`
`withstand a motion for summary judgment. McDonald v. Union Camp Corp., 898
`
`F.2d 1155, 1162 (6th Cir. 1990). Summary judgment must be granted if a nonmovant
`
`does not establish the existence of an element essential to its case and on which it
`
`will bear the burden of proof at trial. See Celotex Corp. v. Catrett, 477 U.S. 317,
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`322–23 (1986).
`
`III. DEFENDANTS LACK SUFFICIENT EVIDENCE TO MEET THEIR
`BURDEN TO SHOW INEQUITABLE CONDUCT
`A. Legal Standard for Inequitable Conduct
`When a party has failed to establish inequitable conduct by clear and
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`convincing evidence, summary judgment is properly granted against that party. See
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`Astrazeneca Pharms. LP v. Teva Pharms. USA, Inc., 583 F.3d 766, 777 (Fed. Cir.
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`10
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`Case 2:22-md-03034-TGB ECF No. 259, PageID.19925 Filed 06/21/24 Page 22 of 49
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`2009).2 “To prevail on the defense of inequitable conduct, the accused infringer must
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`prove that the applicant misrepresented or omitted material information with the
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`specific intent to deceive the PTO.” See Therasense, Inc. v. Becton, Dickinson &
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`Co., 649 F.3d 1276, 1287 (Fed. Cir. 2011) (citations omitted). “Inequitable conduct
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`resides in failure to disclose material information, or submission of false material
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`information, with an intent to deceive, and those two elements, materiality and
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`intent, must be proven by clear and convincing evidence.” See Kingsdown Med.
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`Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 872 (Fed. Cir. 1988). Materiality
`
`and intent are separate requirements. See Therasense, 649 F.3d at 1290.
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`“But for” materiality is required to establish inequitable conduct:
`
`When an applicant fails to disclose prior art to the PTO,
`that prior art is but-for material if the PTO would not have
`allowed a claim had it been aware of the undisclosed prior
`art. Hence, in assessing the materiality of a withheld
`reference, the court must determine whether the PTO
`would have allowed the claim if it had been aware of the
`undisclosed reference.
`Id. at 1291–92.
`
`With regards to intent, “[i]n a case involving nondisclosure of information,
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`clear and convincing evidence must show that the applicant made a deliberate
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`decision to withhold a known material reference. In other words, the accused
`
`
`2 See also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986) (explaining
`that a ruling on summary judgment “necessarily implicates the substantive
`evidentiary standard of proof that would apply at the trial on the merits”).
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`Case 2:22-md-03034-TGB ECF No. 259, PageID.19926 Filed 06/21/24 Page 23 of 49
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`infringer must prove by clear and convincing evidence that the applicant knew of
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`the reference, knew that it was material, and made a deliberate decision to withhold
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`it.” Id. at 1290. “A finding that the misrepresentation or omission amounts to gross
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`negligence or negligence under a ‘should have known’ standard does not satisfy this
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`intent requirement.” Id. Intent may be shown from indirect and circumstantial
`
`evidence. See id. However, a specific intent to deceive must be “the single most
`
`reasonable inference able to be drawn from the evidence.” See id. When analyzing
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`intent, evidence of good faith must be taken into account. See Kingsdown, 863 F.2d
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`at 876. The “single most reasonable interference” standard applies at summary
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`judgment. See ROY-G-BIV Corp. v. ABB, Ltd., 63 F.Supp.3d 690, 695 (E.D. Tex.
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`2014); see also Takeda Pharm. Co. v. TWi Pharm., Inc., 87 F.Supp.3d 1289 (N.D.
`
`Cal. 2015). If a reasonable alternative explanation exists, an intent to deceive cannot
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`be found. See Therasense, 649 F.3d at 1290.
`
`There is an exception to the but-for materiality requirement for “cases of
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`affirmative egregious misconduct” such as manufacturing false evidence, filing
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`unmistakably false affidavits, bribing the examiner, etc. Id. at 1292–93. This
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`exception is borne out of the doctrine of unclean hands. Id. The unclean hands
`
`doctrine cannot be used, however, to bypass the far stricter requirements for finding
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`unenforceability by way of inequitable conduct. See Gilead Sciences, Inc. v. Merck
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`& Co., Inc., 888 F.3d 1231, 1240 (Fed. Cir. 2018) (“Significantly, this is not a case
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`12
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`Case 2:22-md-03034-TGB ECF No. 259, PageID.19927 Filed 06/21/24 Page 24 of 49
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`involving alleged deficiencies in communications with the PTO during patent
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`prosecution, for which this court’s inequitable-conduct decisions, e.g., Therasense,
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`Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc), set
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`important limits on conclusions of unenforceability through that doctrine.”).
`
`B. Defendants Cannot Raise a Genuine Issue of Material Fact That
`the Inventors Intended to Deceive the Patent Office by Withholding
`Project Angel.
`To satisfy the intent requirement of inequitable conduct, “the accused
`
`infringer must prove by clear and convincing evidence that the applicant [1] knew
`
`of the reference, [2] knew that it was material, and [3] made a deliberate decision to
`
`withhold it.” Therasense, 649 F.3d at 1285. The evidence of record at most
`
`establishes that a subset of the inventors of the Asserted Patents, having worked on
`
`the project, knew of Project Angel, potentially satisfying item 1. No evidence
`
`whatsoever establishes items 2 or 3.
`
`Defendants Have No Direct Evidence That the Inventors
`1.
`Knew Project Angel Was Material or Deliberately Withheld It.
`Defendants identify three inventors that they assert performed inequitable
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`conduct based on Project Angel: Titus Lo, Ruifeng Wang, and Alex Li. See Ex. I at
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`*236–240. Despite lengthy discovery, depositions of each of these inventors, and a
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`subpoena to AT&T,