Ex. 2001-0001
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`PUBLIC VERSION
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`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 WIRELESS DEVICES WITH so
`AND/OR 4o CAPABILITIES AND
`COMPONENTS THEREOF
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`In“ 337-TA-868
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`ORDER NO. 94:
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`DENYING COMPLAINANTS’ MOTION FOR SUMMARY
`DETERMINATION THAT U.S. PATENT NO. 7,941,150IS NOT
`UNENFORCEABLE FOR INEQUITABLE CONDUCT
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`(February 4, 2014)
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`On December 12, 2013, complainants InterDigital Communications, Inc., InterDigital
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`Technology Corporation, IPR Licensing, Inc., and InterDigital Holdings, Inc. (collectively,
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`“InterDigital”) filed a motion for summary determination that U.S. Patent No. 7,941,151 (“the
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`’l5l Patent”) is not unenforceable for inequitable conduct of the respective inventors or
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`prosecuting law firm.
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`(Motion Docket No. 868-O84.) To the extent the motion for summary
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`determination is denied,
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`InterDigita1 seeks an order specifying all facts that are without
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`substantial controversy and therefore deemed established. On January 2, 2014, respondents
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`Samsung Electronics Co. Ltd. Samsung Telecommunications America, LLC, ZTE Corporation,
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`ZTE (USA), Inc., Huawei Technologies Co., Ltd., Huawei Device USA,
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`Inc. Future Wei
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`Technologies, Inc., Nokia Corporation, and Nokia, Inc. (collectively, “Respondents”) filed an
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`opposition. On the same day, the Commission Investigative Staff (“Staff”) filed a response
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`opposing the motion. On January 13, 2014, Inte1"Digitalfiled a motion for leave to file a reply.
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`(Motion Docket No. 868-094.) On January 16, 2014, Respondents filed an opposition to the
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`l
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`InterDigital Tech. Corp.
`Exhibit 2001
`ZTE Corp. v. InterDigital Tech. Corp.
`IPR2014-00275
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` Ex. 2001-0002
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`PUBLIC VERSION
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`motion for leave to file a reply. Motion Docket No. 868-094 is DENIED. As of the date of this
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`order, no other responses have been received.
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`Respondents originally asserted that the ’151 Patent was unenforceable due to the failure
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`to disclose six different
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`references to the U.S. Patent and Trademark Office (USPTO).
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`(InterDigital Br. at 1; Respondents Br. at 1 n.l.)
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`In their response to this motion, Respondents
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`conceded that they only intend to pursue their allegations of inequitable conduct regarding one of
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`those references—an article published by Siemens, entitled “Downlink Control Channel
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`Configuration for Enhanced Uplink Dedicated Transport Channel,” Ref No. Tdoc R1-030004,
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`dated January 2003 (“the Siemens Reference”).
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`(Respondents Br. at l n.l; Respondents Br.
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`Exhibit I: RX-3425: TSG-RAN Working Group 1 # 30, Tdoc R1-030004, Siemens, Downlink
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`Control Channel Configuration for Enhanced Uplink Dedicated Transport Channel, dated
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`January 2003.) Thus, the ALJ will only consider the arguments regarding the Siemens Reference
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`because the other allegations of inequitable conduct have been withdrawn.
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`The following facts are undisputed. One of the named inventors of the ’l5l Patent
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`submitted a document entitled
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`(InterDigital Statement of Undisputed Material Facts dated December 6, 2013 (“SUP”) W 2, 6;
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`Respondents’ Response to InterDigital’s Statement of Undisputed Facts dated January 2, 2014
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`(“RRSUF”) {[112, 6.)
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`L
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`(Id)
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`was a seven page “note”
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`-
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`whichwasfiledwithUSPTOon November18,2003. (RespondentsBr.Ex.P, Halt
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`Deposition, at 50:17-21; 54:7-56:5.)
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`that became the parent of the ’151 Patent.
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`2
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` Ex. 2001-0003
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`PUBLIC VERSION
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`(InterDigital Br. at 12; Respondents Br. at 12 (both citing Respondents Br. Exhibit Q, !
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`Deposition at 91:7-19).)
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`—
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`includesthefollowingstatements:“Note1:Wehavean earlier
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`disclosure on the use of impossible combinations (Steven Dick first half of summer 2002) which
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`may apply in this context ? Note 2: Siemens has presented an earlier contribution (attached R1­
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`03-0004) similar to Method 1. —>It needs to be checked what remains patentable in method
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`1 taking into account Note 1 and 2.” (SUF fll3 (citingInterDigitalBr. Exhibit 3: _
`—
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`atIDC868ITC60011073(emphasisinoriginal);RRSUF113.)_
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`(SUP11114.5;RRSUFii4.5.)
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`-
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`The Siemens Reference was not submitted to the USPTO during the prosecution of the
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`’151 Patent or its parent.
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`(SUF 1]37.)
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`InterDigital argues that there is no evidence that either the inventors or the prosecuting
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`attorneys of the ’l50 Patent or its parent application withheld the Siemens Reference with the
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`specific intent to deceive the USPTO.
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`(lnterDigital Br. at 22-27.)
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`InterDigital asserts that the
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`most reasonable inference is that the failure to disclose the Siemens Reference was the result of a
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`clerical mistake and that Respondents have presented no evidence that any person made the
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`deliberate decision to withhold the Siemens Reference. (Id. at 22-27.)
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`Respondents oppose the motion. Respondents argue that while materiality alone cannot
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`form the basis of an inference of intent to deceive, the degree of materiality of the reference is
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`relevant to the issue of intent.
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`(Respondents’ Br. at 18-19.) Respondents contend that the
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`SiemensReferenceis extremelymaterial as recognizedby the named inventorsthemselves!
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`_.
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`(Id.at 19-20.)Respondentsarguethatan inferenceof intentto deceivethe
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`USPTO can be drawn from the named inventors’ failure to question the omission of the Siemens
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`3
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` Ex. 2001-0004
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`PUBLIC VERSION
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`Reference from the IDS despite knowing of its materiality.
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`(Respondents’ Br. at 22-23.)
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`Respondents assert
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`that
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`the inventors were motivated to deceive the USPTO because
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`(Respondents’ Br. at 23-24.) Respondents also argue that the
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`prosecuting attorneys also acted with intent to deceive because it is unreasonable that the
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`attorneys overlooked the reference that was specifically identified
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`(Respondents’ Br. at 26-28.)
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`Finally, Respondents contend that InterDigital’s story is not
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`credible given the importance of the reference and the presentation of arguments for patentability
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`that Respondents assert would have been foreclosed if the Siemens Reference had been
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`disclosed.
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`(Id. at 29-31.)
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`Staff does not support
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`the motion.
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`Staff submits that summary determination is
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`inappropriate because the testimony of the persons working for the law firm accused of having
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`committed inequitable conduct is susceptible to multiple interpretations.
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`(Staff Br. at 7.) Staff
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`contends that different inferences could be drawn from their testimony depending on which parts
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`of their testimony are deemed the most credible. (Id.) Staff asserts that there is no hard evidence
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`to support InterDigital’s theory that the omission of the Siemens Reference from the initial IDS
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`filed during the prosecution of the parent application of the ’15l Patent was a clerical oversight.
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`(1d.) Staff notes that the employee who allegedly prepared the IDS had no recollection of the
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`events surrounding the preparation of this IDS. (Id.) Staff argues the InterDigital‘s explanation
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`of the events may be accurate, but it is at least possible to infer that the employee who prepared
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`the IDS saw it and consciously decided to omit it. (Id.) Staff also notes that one the prosecuting
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`attorneys noted that
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`it would be impossible to miss named inventors’ notes regarding the
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`Siemens Reference upon reading the Disclosure Note and that such notes would have set off “red
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`4
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` Ex. 2001-0005
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`PUBLIC VERSION
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`flags” for him. (Id. at 8.) Staff submits that an inference can be drawn that an attomey reading
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`_
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`wouldhaverecognizedtheimportanceof theSiemensReference,anda
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`further inference can be drawn that “anyone who read the invention disclosure and did not act on
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`those notes by ensuring that the Siemens Reference was disclosed to the USPTO must have done
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`so deliberately.” (Id.) Finally,
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`-.
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`Staff asserts that an inference could be drawn that the attorney who drafted the parent
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`application saw the inventors’ notes and the Siemens Reference,
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`—.
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`(Id at 9.) Staffsubmitsthat theseinferencesmay be insufficientto proveby clear
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`and convincing evidence that inequitable conduct occurred. However, Staff argues that drawing
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`all justifiable inferences in favor of respondents, there is a plausible argument that the attorney
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`who drafted the parent application of the ’151 Patent acted with the specific intent to deceive the
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`USPTO. (Id. at 10.) Thus, Staff submits that InterDigital’s motion should be denied.
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`Pursuant to Commission Rule 210.18, summary determination “. . . shall be rendered if
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`pleadings and any depositions, answers to interrogatories, and admissions on file, together with
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`the affidavits, if any, show that there is no genuine issue as to any material fact and that the
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`moving party is entitled to a summary detennination as a matter of law.” 19 C.F.R. § 210.18(b);
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`see also DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1322 (Fed. Cir. 2001); Wenger
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`Mfg, Inc. v. Coating Machinery Sys., lnc., 239 F.3d 1225, 1231 (Fed. Cir. 2001). The evidence
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`“must viewed in the light most favorable to the party opposing the motion . . . with doubt
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`resolved in favor of the nomnovant.” Crown Operations Int’l, Ltd. v. Solutia, Ina, 289 F.3d
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`5
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` Ex. 2001-0006
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`PUBLIC VERSION
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`1367, 1375 (Fed. Cir. 2002); see also Xerox Corp. v. 3Com Corp, 267 F.3d 1361, 1364 (Fed.
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`Cir. 2001) (“When ruling on a motion for summary judgment, all of the nonrnovant’s evidence is
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`to be credited, and all justifiable inferences are to be drawn in the nomnovant’s favor.”). “Issues
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`of fact are genuine only if the evidence is such that a reasonable [fact finder] could return a
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`verdict for the nonmoving party.” Ia’.at 1375 (quoting Anderson v. Liberty Lobby, lnc., 477 U.S.
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`242, 248 (1986)). The trier of fact should “assure itself that there is no reasonable version of the
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`facts, on the summary judgment record, whereby the nomnovant could prevail, recognizing that
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`the purpose of summary judgment is not to deprive a litigant of a fair hearing, but to avoid an
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`unnecessary trial.” EMI Group N. Am., Inc. v. Intel Corp, 157 F.3d 887, 891 (Fed. Cir. 1998).
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`“Where an issue as to a material fact cannot be resolved without observation of the demeanor of
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`witnesses in order to evaluate their credibility, summary judgment
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`is not appropriate.” Sand!
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`Technology, Ltd. v. Resco Metal & Plastics Corp, 264 F.3d 1344, 1357 (Fed. Cir. 2001) (Dyk,
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`J., concurring). “In other words, ‘[s]um1naryjudgment is authorized when it is quite clear what
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`the truth is,’ [citations omitted], and the law requires judgment
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`in favor of the movant based
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`upon facts not in genuine dispute.” Paragon Podiatry Laboratory, Inc. v. KLM Laboratories,
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`Inc., 984 F.2d 1182, 1185 (Fed. Cir. 1993).
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`“Inequitable conduct is an equitable defense to patent infringement that, if proved, bars
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`enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285
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`(Fed. Cir. 2011) (en bane). “To prove inequitable conduct, the challenger must show by clear
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`and convincing evidence that the patent applicant (1) misrepresented or omitted information
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`material to patentability, and (2) did so with specific intent to mislead or deceive the PTO.” In re
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`Rosuvaslatin Calcium Patent Litig., 703 F.3d 511, 519 (Fed. Cir. 2012) (citing Therasense, 649
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`F.3d at 1287). “Intent and materiality are separate requirements.” Therasense, 694 F.3d at 1290
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`6
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` Ex. 2001-0007
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`PUBLIC VERSION
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`(citing Hoflmann-La Roche, Inc. v. Promega Corp, 323 F.3d 1354, 1359 (Fed. Cir. 2003)).
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`“[T]he materiality required to establish inequitable conduct is, in general, but-for materiality.”
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`Am. Calcar,
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`Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1334 (Fed. Cir. 2011)
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`(citing
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`Therasense, 649 F.3d at 1291). “When an applicant fails to disclose prior art to the PTO, that
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`prior art is but-for material if the PTO would not have allowed a claim had it been aware of the
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`undisclosed prior art.” Am. Calcar, 651 F.3d at 1334 (citing Therasense, 649 F.3d at 1291).
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`“The court in Therasense sought to impart objectivity to the law of inequitable conduct
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`by requiring that the ‘the accused infringer must prove the patentee acted with the specific intent
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`to deceive the PTO....’”
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`Rosuvastatin Calcium Parent Litig., 703 F.3d at 522 (quoting
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`Therasense, 649 F.3d at 1290). “A finding that the misrepresentation or omission amount to
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`gross negligence or negligence under a ‘should have known’ standard does not satisfy this intent
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`requirement.” Therasense, 649 F.3d at 1290 (citations omitted). “Therasense explained that in
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`order to show that the patentee acted with the specific intent to deceive the PTO, a defendant
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`must prove ‘that the applicant knew of the reference, knew that it was material, and made a
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`deliberate decision to withhold it.” Ist Media, LLC v. Electronic Arts, Inc, 694 F.3d 1367, 1372
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`(Fed. Cir. 2012) (emphasis in original) (quoting Therasense, 649 F.3d at 1290); see also
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`Therasense, 649 F.3d at 1290 (“In a case involving nondisclosure of information, clear and
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`convincing evidence must show that the applicant made a deliberate decision to withhold a
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`known material reference.” (emphasis in original) (quotation marks omitted)).
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`“While deceptive intent can be inferred from indirect and circumstantial evidence, that
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`‘inference must not only be based on sufficient evidence, but it must also be the single most
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`reasonable inference able to be drawn from the evidence to meet the clear and convincing
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`evidence standard.”’ Am. Calcar, 651 F.3d at 1334 (quoting Star Scientific, Inc. v. R..]. Reynolds
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`7
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` Ex. 2001-0008
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`PUBLIC VERSION
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`Tobacco C0., 537 F.3d 1357, 1366 (Fed. Cir. 2008)). “Indeed, the evidence must be sufficient to
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`require a finding of deceitful intent in the light of all the circumstances.” Therasense, 649 F.3d
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`at 1290 (emphasis in original) (quotations omitted). “Hence, when there are multiple reasonable
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`inferences that may be drawn, intent to deceive camiot be found.” Id. at 1290-91.
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`The ALJ “should not use a ‘sliding scale,’ where a weak showing of intent may be found
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`sufficient based on a strong showing of materiality, and vice versa.” Therasense, 649 F.3d at
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`1290. “Instead, a court must weigh the evidence of intent to deceive independent of its analysis
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`of materiality.” Id. “Proving that the applicant knew of a reference, should have known of its
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`materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.”
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`Id.
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`This motion presents an extremely close case as to whether summary determination
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`should be granted. However, viewing the evidence most favorably to non-movants and drawing
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`all justifiable inferences in their favor, the ALJ agrees with Staff that disputed issues of fact
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`preclude a grant of summary determination. The ALJ notes that he does not find Respondents’
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`convoluted conspiracy theory based on their contentions regarding InterDigital’s business model
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`to be persuasive. What the ALJ does find persuasive are the statements that Staff highlighted
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`from the testimony of the prosecuting attomeys and the fact that named inventors specifically
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`identified and highlighted the Siemens Reference in the invention disclosure and it was still not
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`disclosed. The ALJ finds that this evidence suggests, just barely, that a full record and further
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`briefing will be needed to resolve this issue. However, while the ALJ will allow this allegation
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`to proceed to the hearing, the ALJ further notes that as laid out above, the standard for finding
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`inequitable conduct based on the failure to disclose a reference is high indeed, and that when
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`based on inferences drawn from circumstantial evidence, specific intent to deceive the USPTO
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`8
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` Ex. 2001-0009
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`must be the single most reasonable inference able to be drawn from the evidence to meet the
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`clear and convincing standard need to show inequitable conduct. Accordingly, with that caveat,
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`Motion Docket No. sea-024 is DENIED.‘
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`A
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`Within seven days of the date of this document, each party shall submit to the Office of
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`theyAdministrative Law Judges a statement as to whether or not it seeks to have any portion of
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`this document deleted from the public version. Any party seeking to have any portion of this
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`document deleted from the public version thereof shall also submit to this office a copy of this
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`document with red brackets indicating any portion asserted to contain confidential business
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`information. The parties’ submissions may be made by facsimile and/or hard copy by the
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`aforementioned date. The parties’ submissions concerning the public version of this document
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`need not be filed with the Commission Secretary.
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`SO ORDERED.
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`%% :2 f.
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`f
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`Theodore R. Essex
`Administrative Law Judge
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`' As for InterDigital’s request for established facts pursuant to Commission Rule 210.l8(e), the AL! DENIES the
`request because of the number of disputes in the record and the potential confusion that such incomplete findings
`could cause on the eve of hearing.
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`9
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` Ex. 2001-0010
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`CERTAIN WIRELESS DEVICES WITH 3G AND/OR 4G
`CAPABILITIES AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-863
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`PUBLIC CERTIFICATE OF SERVICE
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`I, Lisa R. Barton, hereby certify that the attached ORDER 94 has been served by hand
`upon the Commission Investigative Attorney, Lisa A. Murray, Esq., and the following parties as
`indicated on I -
`,
`1 Q
`,
`-.
`
`Lisa R. Barton, Acting Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
`
`On Behalf of Complainants InterDigital Communications, Inc.. InterDigital Technology
`Corporation. IPR Licensing,Inc. and InterDigital Holding, Inc.:
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`Maximilian A. Grant, Esq.
`LATHAM& WATKINSLLP
`555 Eleventh Street, NW, Suite 1000
`Washington, DC 20004
`
`) Via Hand Delivery
`(W ExpressDelivery
`) Via First Class Mail
`) Other:
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`On Behalf of Respondents ZTE Corporation and ZTE (USA)Inc.:
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`Jay H. Reiziss, Esq.
`BRINKS GILSON & LIONE
`1775 Pennsylvania Ave., Suite 900
`Washington, DC 20006-2219
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`On Behalf of Respondents Nokia Corporation and Nokia Inc.:
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`Marsha E. Mullin, Esq.
`ALSTON & mm) LLP
`333 South Hope Street, 16th Floor
`Los Angeles, CA 90071
`
`( /P056-land Delivery
`(
`Via Express Delivery
`(
`) Via First Class Mail
`(
`) Other:
`
`(
`(
`(
`(
`
`) V' ‘Hand Delivery
`ExpressDelivery
`) Via First Class Mail
`) Other:
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`On Behalf of Respondents Samsung Electronics America. Inc..,Samsung
`Telecommunications America LLC and Samsung Electronics Co.. Ltd.:
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`Stephen J. Rosemnan, Esq.
`ROPES & GRAY LLP
`700 12th Street NW, Suite 900 '
`Washington, DC 20005
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`)
`
`a Hand Delivery
`Via Express Delivery
`) Via First Class Mail
`) Other:
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`

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` Ex. 2001-0011
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`CERTAIN WIRELESS DEVICES WITH 3G AND/OR 4G
`CAPABILITIES AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-868
`
`Certificate of Service —Page 2
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`
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`LEXIS-NEXIS
`9473 Springboro Pike
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