Fish & Richardson P.C.
`601 Lexington Avenue
`52nd Floor
`New York, NY 10022
`212 765 5070 main
`212 258 2291 fax
`
`
`Michael T. Zoppo
`Principal
`Zoppo@fr.com
`212 641 2268 direct
`
`
`
`
`
`VIA EMAIL
`
`February 8, 2016
`
`Lei Mei
`Reece Nienstadt
`MEI & MARK LLP
`P.O. Box 65981
`Washington, DC 20035-5981
`
`Re: Nader Ashgari-Kamrani and Kamran Ashgari-Kamrani v. USAA
`
`United District Court- Eastern District of Virginia (Norfolk)
`Civil Action No. 2:15-cv-00478-RGD-LRL
`
`Dear Messrs. Mei and Nienstadt:
`
` In the hope of moving this matter forward, we write to provide some detail as to one of the issues
`that we perceive with U.S. Patent No. 8,266,432, and one reason why we think depositions of
`prosecution counsel of related and pending applications will be necessary.
`
`The ‘432 patent purports to be a “continuation of application No. 11/239,046, filed on Sep. 30, 2005,
`now Pat. No. 7,444,676, which is a continuation of application No. 09/940,635, filed on Aug. 29,
`2001, now U.S. Pat. No. 7,356,837.” See ‘432 patent at cover. However, (1) the ‘676 patent is a
`continuation-in-part of the ‘837 patent, not a continuation, (2) the specification of the ‘676 patent
`has no overlap whatsoever with the specifications of the ‘837 and ‘432 patents,1 and (3) the ‘837
`patent issued months before the ‘432 patent application was filed. Accordingly, the ‘432 patent’s
`priority claim is improper, and its priority date is no earlier than its filing date. See 35 U.S.C. § 120;
`Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997) (“In order to gain the benefit
`of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain
`leading back to the earlier application must comply with the written description requirement of 35
`U.S.C. § 112.”); MPEP § 211.05.
`
`The publication of the ‘432 patent’s grandparent application on March 6, 2003 anticipates every
`claim of the ‘432 patent, in view of the ‘432 patent’s admission that “the current application has the
`exact same specification and Figures as those submitted with the [grandparent application that led
`to the ‘837 patent].” ‘432 Patent at col. 1:14-17 (emphasis added); see also Lockwood, 107 F.3d at
`1571-72 (using parent patents to invalidate a child patent due to a failure to maintain “the continuity
`of disclosure”).
`
`Moreover, it is our view that the single most reasonable inference from the facts is that this
`misrepresentation to the Patent Office concerning the applicable priority date was made with the
`
`1 Indeed, the applicants recognized how different the two specifications are: the ‘676 patent application was filed with a
`non-publication request whereas the ‘432 and ‘837 patent applications—which share the same specification—were not.
`
`1
`
`USAA 1046
`USAA v. Asghari-Kamrani et al.
`CBM2016-00063
`CBM2016-00064
`
`

`
`
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`February 8, 2016
`
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`intent to deceive. And since applications are still being prosecuted based on a deceptive priority
`claim—by Mei & Mark LLP—the inequitable conduct continues to this day.2 For at least these
`reasons, we believe that discovery into all of the patent prosecution counsel will be necessary. To
`the extent you represent prosecution counsel (aside from yourself, of course), kindly ensure that they
`are advised of their duty to preserve discoverable information. By this note, we so advise Mei &
`Mark LLP. If there is prosecution counsel that you do not represent, kindly identify which and we
`will make the necessary notices.
`
`Please be aware that we intend to seek sanctions (including under Rule 11) as well as attorneys’ fees.
`To the extent Plaintiffs are considering a voluntary dismissal, please be on notice that absent an
`acceptable resolution, USAA will press this issue, and all related issues, in both district court
`proceedings and the PTAB.
`
`Kindly let us have your position in three business days. If this matter is not resolved to our
`satisfaction by then, USAA will file a post grant petition on at least the bases herein.
`
`Very truly yours,
`
`/s/Michael T. Zoppo
`
`Michael T. Zoppo
`
`
`MTZ/khm
`
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`2 As prosecution counsel, we remind Mei & Mark LLP of its Rule 56 duties.
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`2
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`2