Case 2:22-md-03034-TGB ECF No. 280, PageID.30867 Filed 08/01/24 Page 1 of 22
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`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 REPLY IN SUPPORT OF NEO’S
`MOTION FOR SUMMARY JUDGMENT
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`
`FILED UNDER SEAL
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`

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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30868 Filed 08/01/24 Page 2 of 22
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`
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`TABLE OF CONTENTS
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`Neo Advances the Correct Legal Standard. ...................................................... 1
`I.
`II. Defendants Fail to Raise Any Record Evidence that Precludes
`Drawing Other Reasonable Inferences Regarding Non-Disclosure
`of Project Angel. ............................................................................................... 4
`III. Defendants Fail to Marshal Sufficient Evidence of Inequitable `
`
`Conduct. ............................................................................................................ 6
`A.
`Intent to Deceive Is Not a Reasonable Inference. .................................... 6
`B. Defendants Cannot Show Materiality With Stricken Theories. .............. 8
`C. Adaptix Materials Are Not Admissible at Trial. ...................................... 9
`IV. Defendants’ Cursory Unclean Hands Theory is Inadequate. ......................... 12
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`i
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30869 Filed 08/01/24 Page 3 of 22
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`TABLE OF AUTHORITIES
`
`
`Cases
`
`Adaptix, Inc. v. Apple, Inc.
` No. 5:13-CV-01776-PSG, 2015 WL 218932 (N.D. Cal. Jan. 15, 2015) ..... passim
`
`Adidas Am., Inc. v. TRB Acquisitions LLC
` 2017 WL 337983 (D. Or. Jan. 23, 2017) .............................................................. 13
`
`American Calcar, Inc. v. American Honda Motor Co.
` 768 F.3d 1185 (Fed. Cir. 2014) ....................................................................... 8, 11
`
`Anderson v. Liberty Lobby, Inc.
` 477 U.S. 242 (1986) ............................................................................................. 14
`
`Baumel v. Barber Power L. Grp., PLLC
` No. 3:22-cv-00170, 2023 WL 6121001 (W.D.N.C. Sept. 18, 2023) ................... 11
`
`Baxter Int’l, Inc. v. CareFusion Corp.
` No. 15 C 9986, 2022 WL 981115 (N.D. Ill. Mar. 31, 2022) ................................. 3
`
`Brown v. City of Shreveport
` No. CV 11-1260, 2017 WL 405419 (W.D. La. Jan. 30, 2017) ............................ 10
`
`Bryant v. Kentucky
` 490 F.2d 1273 (6th Cir. 1974) .............................................................................. 12
`
`CAO Lighting, Inc. v. Feit Elec. Co., Inc.
` No. CV 20-04926-AB (PJW), 2023 WL 3316997 (C.D. Cal. Mar. 16, 2023) ...... 3
`
`Epicentre Strategic Corp. v. Cleveland Constr. Inc.
` No. 04-40278, 2007 WL 1017644 (E.D. Mich. Mar. 30, 2007) .......................... 12
`
`Fujitsu Ltd. v. Tellabs Operations, Inc.
` No. 09 C 4530, 2012 WL 3133548 (N.D. Ill. July 31, 2012) ................................ 8
`
`Fuma Int’l LLC v. R.J. Reynolds Vapor Co.
` No. 1:19-CV-260, 2020 WL 3470458 (M.D.N.C. Mar. 6, 2020) .......................... 3
`
`ii
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30870 Filed 08/01/24 Page 4 of 22
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`Griffin v. Keystone Mushroom Farm, Inc.
` 453 F. Supp. 1283 (E.D. Pa. 1978) ....................................................................... 15
`
`Hope v. Hewlett-Packard Co.
` No. 14-11497, 2016 WL 827381 (E.D. Mich. Mar. 3, 2016) .............................. 10
`
`Illumina, Inc. v. BGI Genomics Co.
` 559 F. Supp. 3d 1072 (N.D. Cal. 2021) .................................................................. 6
`
`Intercontinental Great Brands LLC v. Kellogg N. Am. Co.
` 869 F.3d 1336 (Fed. Cir. 2017) ..................................................................... 1, 2, 3
`
`Lear Corp. v. NHK Seating of Am. Inc.
` No. 13-12937, 2022 WL 876021 (E.D. Mich. Mar. 23, 2022) ..........................3, 8
`
`Luv n’ Care, Ltd. v. Laurain
` 98 F.4th 1081 (Fed. Cir. 2024) ............................................................................. 14
`
`Navico Inc. v. Garmin Int’l, Inc.
` No. 2:16-CV-00190-JRG-RSP, 2017 WL 3676787 (E.D. Tex. Aug. 25, 2017) ... 3
`
`Navico Inc. v. Garmin Int’l, Inc. ..................................................................................
` No. 2:16-CV-00190-JRG-RSP, 2017 WL 3701189 (E.D. Tex. Aug. 7, 2017) ..... 3
`
`Optium Corp. v. Emcore Corp.
` 603 F.3d 1313 (Fed. Cir. 2010) .............................................................................. 2
`
`Skillz Platform Inc. v. Aviagames Inc.,
` No. 21-CV-02436-BLF, 2023 WL 6542147 (N.D. Cal. Oct. 6, 2023) ..............2, 3
`
`Sysmex Corp. v. Beckman Coulter, Inc.
` No. 29-1642, 2022 WL 1503987 (D. Del. May 6, 2022) ....................................... 3
`
`Therasense, Inc. v. Becton, Dickinson & Co.
` 649 F.3d 1276 (Fed. Cir. 2011) .................................................................... passim
`
`United States v. Collier
` 68 F. App’x 676 (6th Cir. 2003) ........................................................................... 11
`
`
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`iii
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30871 Filed 08/01/24 Page 5 of 22
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`Virgil v. City of Newport
` 545 F. Supp. 3d 444 (E.D. Ky. 2021) ................................................................... 10
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`W. Plastics, Inc. v. DuBose Strapping, Inc.
` No. 2021-1371, 2022 WL 576218 (Fed. Cir. Feb. 25, 2022) ................................. 2
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`Statutes
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`35 U.S.C. § 285 ........................................................................................................ 15
`
`Rules
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`Fed. R. Civ. P. 11 ..................................................................................................... 15
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`Fed. R. Civ. P. 26(e) ................................................................................................. 15
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`Fed. R. Civ. P. 37(c)(1) ............................................................................................ 15
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`Fed. R. Civ. P. 56(c) ................................................................................................. 14
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`Fed. R. Evid. 201(b) ................................................................................................. 11
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`iv
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30872 Filed 08/01/24 Page 6 of 22
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`I.
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`Neo Advances the Correct Legal Standard.
`The prior standard for inequitable conduct “plagued not only the courts but
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`also the entire patent system.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d
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`1276, 1289 (Fed. Cir. 2011) (en banc). “[A]llegations of inequitable conduct [were]
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`routinely brought on ‘the slenderest grounds.’” Id. Therasense provided the cure; it
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`“tighten[ed] the standards for finding both intent and materiality in order to redirect
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`a doctrine that has been overused to the detriment of the public.” Id. at 1290.
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`Defendants’ allegations—based on an order from a different case involving
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`different people at a different company at a different time—are a variant of the
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`“plague” Therasense eradicated. Thus, Defendants want Therasense not to apply to
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`them; they claim it only applies at trial. ECF No. 264 at *13–15. But Therasense is
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`an expansive panacea for purging weak inequitable conduct theories at any stage.
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`
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`For example, in Intercontinental Great Brands LLC v. Kellogg N. Am. Co.,
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`the Federal Circuit could not have been clearer that the Therasense standard applied
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`at summary judgment. 869 F.3d 1336, 1352 (Fed. Cir. 2017). There, the patentee,
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`during a USPTO proceeding, “relied critically on a particular phrase” in an article
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`that was in fact a misprint. Id. at 1351. Defendants asserted inequitable conduct
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`based on the patentee’s failure to inform the Board of the misprint. Id. Counsel had
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`read the misprint and updated articles, and testimony suggested the critical sentence
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`was obviously a misprint. Id. at 1352. Nevertheless, the Federal Circuit determined
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`1
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30873 Filed 08/01/24 Page 7 of 22
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`that “without more evidence of the [patentee’s] belief, one reasonable inference on
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`the record—especially given [defendant’s] burden of persuasion—is that [the
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`patentee] did not believe that there was a misprint.” Id. And “when there are multiple
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`reasonable inferences that may be drawn, intent to deceive cannot be found.” Id. at
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`1351 (citing Therasense, 649 F.3d at 1290–91). Accordingly, “the district court
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`properly concluded that the record [did] not support an inference of deceptive intent
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`under the Therasense standard.” Id. at 1352; see also W. Plastics, Inc. v. DuBose
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`Strapping, Inc., No. 2021-1371, 2022 WL 576218, at *1 (Fed. Cir. Feb. 25, 2022)
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`(affirming summary judgment where the defendant “did not set forth evidence to
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`meet the high standard of establishing that the patent applicant intended to deceive”).
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`Defendants create a false binary between selecting the summary judgment
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`standard and inequitable conduct standard of Therasense. ECF No. 264 at *16. Faced
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`with a similar argument, the court in Skillz Platform Inc. v. Aviagames Inc. explained
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`that, while “the Court must apply the summary judgment standard, doing so requires
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`consideration of the clear and convincing evidence standard.” No. 21-CV-02436-
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`BLF, 2023 WL 6542147, at *5 (N.D. Cal. Oct. 6, 2023) (quoting Optium Corp. v.
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`Emcore Corp., 603 F.3d 1313, 1319–20 (Fed. Cir. 2010)). Thus, even “considering
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`the evidence and drawing all reasonable inferences in [defendant’s] favor,” the Court
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`found that, because there were “multiple reasonable inferences that may be drawn
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`about the four named inventors’ intent…specific intent to deceive [was] not the
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`2
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30874 Filed 08/01/24 Page 8 of 22
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`single most reasonable inference able to be drawn from the evidence.” Id. at 7. Thus,
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`“no reasonable trier of fact could return a verdict in [defendant’s] favor.” Id.
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`Defendants’ only case to the contrary is Sysmex Corp. v. Beckman Coulter,
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`Inc., No. 29-1642, 2022 WL 1503987, at *3 (D. Del. May 6, 2022).1 But the Sysmex
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`court did apply Therasense: “the proper inquiry is whether . . . a factfinder could
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`reasonably conclude that deceptive intent is the single most reasonable inference.’”
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`Id. at *2 (emphasis added). And to the extent Sysmex suggests a court cannot
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`consider whether the record supports multiple reasonable inferences, it is contrary
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`to Federal Circuit precedent. See Kellogg, 869 F.3d at 1352. And Sysmex admits it
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`goes against the common practice of district courts. 2022 WL 15803987, at *4.2
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`1 Defendants rely predominately and misleadingly on pre-Therasense cases to
`suggest that summary judgment on inequitable conduct is somehow “rare.” ECF No.
`264 at *14, 31–32. “Even if that may have been true pre-Therasense, it is no longer
`the case.” Baxter Int’l, Inc. v. CareFusion Corp., No. 15 C 9986, 2022 WL 981115,
`at *8 (N.D. Ill. Mar. 31, 2022).
`2 See, e.g., Baxter, 2022 WL 981115, at *8 (collecting cases); Lear Corp. v. NHK
`Seating of Am. Inc., No. 13-12937, 2022 WL 876021, at *10 (E.D. Mich. Mar. 23,
`2022) (granting summary judgment because the evidence permitted multiple
`reasonable inferences); CAO Lighting, Inc. v. Feit Elec. Co., Inc., No. CV 20-04926-
`AB (PJW), 2023 WL 3316997, at *4 (C.D. Cal. Mar. 16, 2023) (same); Fuma Int’l
`LLC v. R.J. Reynolds Vapor Co., No. 1:19-CV-260, 2020 WL 3470458, at *3
`(M.D.N.C. Mar. 6, 2020) (“the circumstantial evidence of intent to deceive is built
`on several layers of inference, and it is insufficient for a fact finder to conclude . . .
`there was a deliberate intent to deceive”); Navico Inc. v. Garmin Int’l, Inc., No. 2:16-
`CV-00190-JRG-RSP, 2017 WL 3701189, at *2 (E.D. Tex. Aug. 7, 2017) (“there are
`multiple reasonable inferences . . . Thus, as a matter of law, [defendant] cannot show
`a ‘specific intent’ to deceive”), report and recommendation adopted, 2017 WL
`3676787 (E.D. Tex. Aug. 25, 2017).
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`3
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30875 Filed 08/01/24 Page 9 of 22
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`II. Defendants Fail to Raise Any Record Evidence that Precludes Drawing
`Other Reasonable Inferences Regarding Non-Disclosure of Project Angel.
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`Nowhere do Defendants argue that the single most reasonable inference to be
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`drawn from record evidence is intent to deceive. ECF No. 264 at *23–25. At most,
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`they argue that a factfinder could infer intent to deceive. Id. at 25. For example,
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`Defendants do not appear to dispute that the evidence reasonably supports an
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`inference that the inventors considered other recent fixed-wireless systems like
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`WiMax or Vijayan the most relevant,
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`. Compare
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`ECF No. 154 at *32 with ECF No. 264 at *31–34. Nor do they contest that Dr. Li’s
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`testimony or Dr. Mahon’s analysis supports this inference. ECF No. 254 at *18.
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`Even Defendants’ own experts argue that WiMax and Vijayan anticipate or render
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`obvious the asserted claims. Id. at ¶¶ 19–20.
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`Similarly, Defendants do not identify evidence precluding the reasonable
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`inference that the inventors believed Project Angel—
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`—was immaterial. Defendants do not dispute the inventors had not worked at
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`AT&T for a year or more before being named on any patent application. ECF No.
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`264 at *34. They likewise do not dispute that Dr. Li testified he wanted to build
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`mobile wireless systems. ECF No. 254-4 at 125:2–13. Nor do they dispute that Dr.
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`Lo and Dr. Wang
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`. ECF No. 254-12
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`(T. Lo Dep. Tr.) at 80:20–81:4; ECF No. 254-13 (R. Wang Dep. Tr.) at 69:16–70:5.
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`Defendants wrongly contend this inference is foreclosed by
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`4
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`Finally, Defendants also imply that the inventors knew Project Angel was material
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`because they derived the claimed inventions from Project Angel. ECF No. 264 at
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`*23–25. But as discussed below, these Adaptix materials do not support that
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`inference, are inadmissible, and Defendants dropped their actual derivation defense.
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`To be sure, Defendants dispute that Project Angel is, in fact, cumulative or
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`immaterial. As they do with materiality above, they also use expert testimony to
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`raise a factual dispute over cumulativeness itself. ECF No. 264 at *32–34. But
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`“raising a factual dispute is not enough to foreclose the other reasonable inferences
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`5
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30877 Filed 08/01/24 Page 11 of 22
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`and prove that intentional deceit is the single most reasonable inference.” Illumina,
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`Inc. v. BGI Genomics Co., 559 F. Supp. 3d 1072, 1090 (N.D. Cal. 2021). Defendants
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`fail to marshal evidence precluding an inference that the inventors thought the
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`reference was either immaterial (
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`) or cumulative (
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`). Thus, “multiple reasonable inferences[] may be
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`drawn, [and] intent to deceive cannot be found.” Therasense, 649 F.3d at 1290–91.
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`III. Defendants Fail to Marshal Sufficient Evidence of Inequitable Conduct.
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`In addition to not foreclosing other reasonable inferences, Defendants also fail
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`to even supply legally sufficient clear and convincing evidence to support an
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`inference of inequitable conduct in the first place.
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`Intent to Deceive Is Not a Reasonable Inference.
`A.
`Defendants’ “ample evidence” of intent to deceive is scant and tethered to a
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`tortured theory. Defendants never identify who had intent; they simply assert
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`“inventors deliberately withheld Project Angel.” ECF No. 264 at *25. Their theory
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`hinges on Dr. Li allegedly deriving the asserted inventions from Project Angel
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`“through hiring key AT&T personnel” (Dr. Lo and Dr. Wang), “consult[ing] them
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`on the latest development of Project Angel, [and] immediately fil[ing] patent
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`applications on [Project Angel].” Id. at *26. Given Defendants have dropped their
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`derivation and improper inventorship theories, this theory is facially suspect. And it
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`6
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30878 Filed 08/01/24 Page 12 of 22
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`fails entirely at least given that: no current or former employee of AT&T has claimed
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`to be an inventor of the Asserted Patents; Dr. Lo was not named on an application
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`until almost 3 years after leaving AT&T; and Dr. Wang worked at AT&T
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` and was not named on any patent application
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`until over a year after he joined Walbell. ECF No. 254 at ¶¶ 11–14.
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`Defendants also have no evidence of deliberate intent to withhold Project
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`Angel. They predominately rely on three sources: the summary judgment order in
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`Adaptix, Inc. v. Apple, Inc., No. 5:13-CV-01776-PSG, 2015 WL 218932, at *2 (N.D.
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`Cal. Jan. 15, 2015), four patent applications filed by the inventors, and the disclosure
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`of WiMax in applications leading to the asserted patents.3 ECF No. 264 at *25–26.
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`But the Adaptix Order makes no mention of any inventor other than Dr. Li, and even
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`as to him, it merely states, “[a]long with Xiaodong Li, another one of Adaptix’s co-
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`founders, Liu proposed to strategically hire key Project Angel engineers from
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`AT&T.” Adaptix, 2015 WL 218932, at *2. While the opinion also explains that
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`Adaptix had possession of AT&T technical files related to Project Angel, it makes
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`no other statements related to any of the inventors, Neo, or any predecessor-in-
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`3 Defendants make no allegations that Kemin Li and Huang intended to deceive the
`patent office. Despite failing to ask the inventors why Project Angel was not
`submitted, Defendants fault the inventors—third parties in this case—for failing to
`submit affidavits. But “the patentee need not offer any good faith explanation unless
`the accused infringer first proves a threshold level of intent to deceive by clear and
`convincing evidence.” Therasense, 649 F.3d at 1291.
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`7
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30879 Filed 08/01/24 Page 13 of 22
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`interest of the patents. Id. Nor does it tie Dr. Li to any wrongdoing at all. Moreover,
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`as a denial of summary judgment, the Adaptix Order provides no factual findings.
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`Defendants’ focus on the filing of three patent applications shortly after Dr.
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`Lo was hired fares no better, since Dr. Lo had not worked for AT&T for almost three
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`years before being listed as a co-inventor. ECF No. 254 at ¶ 12. And Defendants cite
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`no evidence permitting a reasonable inference that Dr. Lo derived his inventions
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`from his former employer. Finally, the inventors’ disclosure of WiMAX does
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`nothing to support Defendants’ theory. ECF No. 264 at *27. Far from showing intent
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`to deceive, the disclosure of another (cumulative) material reference to the patent
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`office is evidence of good faith.4 Id. at *12.
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`This evidence considered together does not support Defendant’s theory or
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`permit an inference of intent to deceive. See, e.g., Lear Corp., 2022 WL 876021, at
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`*10 (granting summary judgment based on failure to marshal evidence to show by
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`clear and convincing evidence intent to deceive).5
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`B. Defendants Cannot Show Materiality With Stricken Theories.
`Defendants do not contest that their materiality arguments for Project Angel
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`4 American Calcar, Inc. v. American Honda Motor Co. is inopposite, as the inventors
`did not provide a partial disclosure of WiMax. 768 F.3d 1185, 1190 (Fed. Cir. 2014).
`5 Defendants’ attempt to distinguish Lear and Fujitsu Ltd. v. Tellabs Operations,
`Inc., No. 09 C 4530, 2012 WL 3133548, at *1 (N.D. Ill. July 31, 2012), depends on
`the Court accepting the unproven idea that the inventors have “an adjudicated history
`of devising plans to exploit confidential information.” ECF No. 264 at *35.
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`8
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30880 Filed 08/01/24 Page 14 of 22
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`depend on belatedly disclosed invalidity theories. In fact, Defendants’ opposition
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`expressly relies on the stricken theories. See ECF No. 264 at *16–18. Nor do
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`Defendants contest that the reasons the Court struck those theories—namely,
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`Defendants’ delay in developing them, and the prejudice to Neo “by the need to
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`conduct discovery or new analysis at this stage in the case in response to Defendants’
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`untimely contentions”—apply equally to Defendants’ unenforceability theories.
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`ECF No. 254 at *22–23 (quoting ECF No. 238, PageID.12302).
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`Instead, Defendants merely observe that this Court did not strike Defendants’
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`unenforceability counterclaims because Neo did not move to strike them. ECF No.
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`264 at *21. That does not justify repackaging Defendants’ belated invalidity theories
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`under the label of inequitable conduct or preclude this motion.
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`C. Adaptix Materials Are Not Admissible at Trial.
`Finally, Defendants fail to adequately explain why the Adaptix materials from
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`a different case in a different court, regarding different patents and inventors,
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`involving a different company and conduct during a different time period, meet the
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`threshold relevance standards of Rules 401, 402, and 403. ECF No. 254 at *29–30;
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`see also ECF No. 264 at *30–31. Defendants identify only a single line that bears
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`any relationship with this case: “Xiaodong Li . . . proposed to strategically hire key
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`Project Angel engineers for AT&T.” ECF No. 264 at *8. But Defendants have failed
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`to establish how Dr. Li’s proposed hiring practices years ago at a different company
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`9
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`Case 2:22-md-03034-TGB ECF No. 280, PageID.30881 Filed 08/01/24 Page 15 of 22
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`are relevant to whether he intended to deceive the patent office during the
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`prosecution of the Asserted Patents in this case. Cf. Brown v. City of Shreveport, No.
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`CV 11-1260, 2017 WL 405419, at *5 (W.D. La. Jan. 30, 2017) (disregarding
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`summary judgment evidence for failure to respond to evidentiary objections).
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`Defendants do not meet their burden “to show that the material is admissible
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`as presented or to explain the admissible form that is anticipated.” Hope v. Hewlett-
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`Packard Co., No. 14-11497, 2016 WL 827381, at *2 (E.D. Mich. Mar. 3, 2016). For
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`example, Defendants conclude without explanation that they can present Adaptix
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`materials through trial examination of Dr. Li. ECF No. 264 at *30. They cite no
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`corroborating testimony and fail to explain how Dr. Li will testify on behalf of
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`Adaptix regarding activities occurring roughly twenty years ago. See, generally, ECF
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`No. 254-4 at 85:5–90:22. Nor do Defendants have any basis to assume that Dr. Li—
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`a third party outside the subpoena power of any MDL Court—will even attend trial.
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`Similarly, Defendants fail to demonstrate the residual exception of Rule 807.
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`“Courts in the Sixth Circuit take a restrictive view of the residual exception . . .
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`employing Rule 807 very rarely, and only in exceptional circumstances.” Virgil v.
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`City of Newport, 545 F. Supp. 3d 444, 469 (E.D. Ky. 2021) (citations and quotations
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`omitted). In view of Defendants’ failure to even ask Dr. Li about Project Angel,
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`subpoena the Adaptix personnel actually mentioned in the Order, or muster any other
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`admissible corroborating evidence, Defendants cannot show that they could not,
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`10
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`through reasonable efforts, have obtained evidence more probative than the Adaptix
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`order, as required by Rule 807(a)(2). Nor do they explain why the Court should adopt
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`statements from the order, given that order contained no factual findings.6 Id.
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`Defendants cannot rely on judicial notice for the Adaptix Order. “A judicially
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`noticed fact must be one not subject to reasonable dispute.” FED. R. EVID. 201(b).
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`The parties clearly dispute Defendants’ inferences from that order, and the charged,
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`opposed allegations of derivation by Broadstorm employees (though irrelevant here)
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`are clearly “subject to reasonable dispute.” See, e.g., United States v. Collier, 68 F.
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`App’x 676, 683 (6th Cir. 2003) (affirming denial of judicial notice of bankruptcy
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`order because findings were subject to dispute).
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`Even if Adaptix emails could qualify as business records, ECF No. 264 at 30,
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`Defendants fail to explain why the hearsay within those emails is admissible, or even
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`identify the emails and how they support the full scope of Defendants’ theories.
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`Similarly, Defendants do not provide any reason why Dr. Li’s statement about
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`recruiting talent was “so contrary to the declarant’s proprietary or pecuniary interest”
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`or exposed him “to civil or criminal liability” at the time of the email.7
`
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`6 Baumel v. Barber Power L. Grp., PLLC, cited by Defendants, is inapposite as the
`the court order was not relied on for the truth of the opinions and findings therein.
`No. 3:22-cv-00170, 2023 WL 6121001, at *2 (W.D.N.C. Sept. 18, 2023).
`7 American Calcer, Inc. v. American Honda Motor Co., Inc. has no bearing on this
`issue as it involved statements that the patent owner made in a previous proceeding
`that contradicted testimony to the jury. 768 F.3d 1185, 1192 (Fed. Cir. 2014).
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`11
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`Defendants’ evidence of inequitable conduct is nothing but a patchwork of
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`inadmissible evidence and unsupported inferences; these “allegations, rooted in
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`speculation” cannot meet the clear and convincing burden to support the defense on
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`summary judgment. Bryant v. Kentucky, 490 F.2d 1273, 1275 (6th Cir. 1974).
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`IV. Defendants’ Cursory Unclean Hands Theory is Inadequate.
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`Defendants’ unclean hands allegations do not save their failed inequitable
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`conduct theory. First, unclean hands (separate from inequitable conduct) is only
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`available as against an equitable claim. Epicentre Strategic Corp. v. Cleveland
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`Constr. Inc., Civil Case No. 04-40278, 2007 WL 1017644, at *19 (E.D. Mich. Mar.
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`30, 2007). Furthermore, the entirety of Defendants’ Project-Angel-based unclean
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`hands theory is provided in a single paragraph with a single record citation. ECF No.
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`264 at *40. Defendants do not assert extraordinary circumstances like “perjury, the
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`manufacture of false evidence, and the suppression of evidence” contemplated for
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`unclean hands in Therasense. 649 F.3d at 1287. They simply conclude that the “the
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`inventors deliberately withheld Project Angel from the Patent Office” and that the
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`asserted claims otherwise would never have been allowed. Defendants’ cursory
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`analysis cannot clear their clear and convincing burden, for at least the reasons that
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`their inequitable conduct theory is insufficient. See ECF No. 254 at *24–28.
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`Facing dismissal, Defendants try to muddy the record with some theory, any
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`theory, to defer adjudication of the unclean hands defense. So, Defendants advance
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`12
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`a theory based on German litigation—newly manufactured and debuting in this case
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`for the very first time in this Response. But it is also legally deficient, lacks any
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`factual support, and is untimely.
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`Even setting aside Neo’s adamant disagreement with Defendants’
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`characterization of the facts, the defense is based entirely on Neo continuing to
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`litigate its claims in this Court, and the Noerr-Pennington doctrine bars a defense
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`based merely on Neo’s pursuit of litigation. See Adidas Am., Inc. v. TRB Acquisitions
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`LLC, 2017 WL 337983, at *4 (D. Or. Jan. 23, 2017) (dismissing unclean hands
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`defense that was “directed at conduct involving litigation or incidental to the
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`prosecution of litigation such that [it is] subject to dismiss under the Noerr-
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`Pennington doctrine.”). Nor have Defendants made any showing in their Response
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`that Neo’s continued litigation meets the “sham” or any other exception to the
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`doctrine. See id. at *5 (requiring, for example, that the litigation be “objectively
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`baseless” and subjectively brought to interfere with the Defendants’ business).8
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`Moreover, a reasonable fact finder could not find, on these allegations, the
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`“unconscionable acts” required for unclean hands. If it were unconscionable for a
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`litigant to pursue claims in one tribunal in the face of an adverse finding in an entirely
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`8 Defendants’ cited cases do not confront the Noerr-Pennington doctrine, and in any
`event, relate to allegations of misconduct in the litigation rather than the mere
`bringing of it (Edge Systems), or plausible allegations of bad faith that were at least
`sufficient at the 12(b)(6) stage (Incase Designs).
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`13
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`different tribunal, Defendants themselves would be guilty of unconscionable acts as
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`they continue to pursue invalidity defenses despite the PTAB’s denial of institution
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`of multiple of Defendants’ IPRs. See generally ECF No. 197, PageID.11538–41.
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`Furthermore, Defendants fail to factually support even their legally deficient
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`theory. Their entire response rests on attorney argument and claims of “undisputed
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`facts,” ECF No. 264 at *41, but that is insufficient to avoid summary judgment. See
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250–52 (1986). As described in its
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`response to Defendants’ summary judgment motion, Neo strongly disputes that a
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`German Court’s informal findings on a different patent with different wording,
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`interpreted under a different legal framework, has any bearing on Neo’s correct
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`application of this Court’s claim construction to the facts here. See ECF No. 266 at
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`*21–23. And Defendants marshal no admissible evidence that the German Court’s
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`ruling has “an immediate and necessary connection” to the relief sought here. Luv
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`n’ Care, Ltd. v. Laurain, 98 F.4th 1081, 1094 (Fed. Cir. 2024). They offer only a
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`lawyer’s summary of a hearing in Germany,9 ECF No. 264-19; and a self-serving
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`letter from Defendants’ own counsel, ECF No. 264-20. But they cite no analysis
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`comparing each element of the counterpart German patent to each element to the
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`’908 and ’302 patent claims; no analysis of German law and the interpretation of the
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`9 Neo objects to this declaration under FRCP 56(c) as containing hearsay within
`hearsay because it purports to offer for their truth out-of-court statements by a
`German judge and Neo’s counsel.
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`14
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`German patent’s claims; and no insight into the German court’s factual basis for its
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`finding (essential for the factfinder here to have any hope of evaluating whether that
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`finding should have prompted parallel action by Neo in this case). With no showing
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`on these key issues, Defendants have insufficient evidence to sustain their claim.10
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`Finally, the Court can reject this newly concocted theory for a simpler reason:
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`Defendants have never before presented it in discovery, which is why Neo did not
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`address it in its opening motion. While the German hearing occurred on April 30th,
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`after fact discovery closed, Defendants never supplemented their discovery
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`responses or contentions per FRCP 26(e) in the more than two months since.
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`Defendants sent Neo a letter about that very hearing on May 30th, replete with empty
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`sanctions threats under FRCP 11 and 35 U.S.C. § 285, but never mentioned a new
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`unclean hands theory. ECF No. 264-20. Even while conferring specifically about
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`this motion in mid-June, and about how Defendants’ unclean hands defense differed
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`from inequitable conduct, Defendants never mentioned this theory and confirmed
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`that the unclean hands defense was related to the same facts as the P