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`
`Kevin J. O'Connor
`LUM, DRASCO & POSITAN, LLC
`103 Eisenhower Parkway
`Roseland, NJ 07068-1049
`(973) 403-9000
`Email: koconnor@lumlaw.com
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. 2:11-cv-07044-PGS-DEA
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`MARLOWE PATENT HOLDINGS LLC,
`
`
`
`
`
`Plaintiff,
`
`v.
`
`FORD MOTOR COMPANY,
`
`
`
`Defendant.
`
`
`
`DEFENDANT FORD MOTOR COMPANY’S
`MOTION FOR RULE 11 SANCTIONS
`
`
`
`
`
`

`
`
`
`Case 3:11-cv-07044-PGS-DEA Document 47 Filed 06/10/13 Page 2 of 4 PageID: 203Case 2:15-cv-01274-JRG-RSP Document 55-3 Filed 12/22/15 Page 2 of 67 PageID #: 423
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`This is a patent infringement lawsuit in which Plaintiff Marlowe Patent Holdings LLC
`
`(“MPH”) has accused Defendant Ford Motor Company (“Ford”) of infringing U.S. Patent No.
`
`7,489,786 (the “’786 patent”). Ford hereby moves the Court to enter sanctions pursuant to Fed.
`
`R. Civ. P. 11(c) against MPH because it knew, at the time the complaint was filed, that the ’786
`
`patent is both invalid and unenforceable. The grounds for this Motion, as will be developed
`
`more fully in the Brief in Support, are as follows:
`
`1.
`
`More than one year before filing the application that led to the ’786 patent, the
`
`inventor of the ’786 patent began selling devices that embody the invention claimed in the ’786
`
`patent. These sales invalidate all claims of the ’786 patent.
`
`2.
`
`Despite having full knowledge of these sales, the inventor of the ’786 patent never
`
`disclosed the relevant technical details of these prior art products to the U.S. Patent and
`
`Trademark Office. Because these sales embodied the invention claimed in the ’786 patent, they
`
`would have been highly material to the examiner. Indeed, but for these the inventor withholding
`
`these technical details, the U.S. Patent and Trademark Office would not have issued ’786 patent.
`
`Moreover, the single most reasonable inference is that the inventor withheld these sales in order
`
`to deceive the U.S. Patent and Trademark Office. The ’786 patent is thus unenforceable due to
`
`the inventor’s inequitable conduct.
`
`3.
`
`Because an invalid and unenforceable patent cannot be infringed, MPH has no
`
`legitimate basis for accusing Ford of infringing the ’786 patent. MPH’s Complaint was thus
`
`filed in violation of Federal Rule of Civil Procedure 11.
`
`For the reasons set forth above, as well as in Ford’s Brief in Support of this Motion, Ford
`
`respectfully requests that this Court dismiss MPH’s claims with prejudice and award sanctions
`
`
`
`2
`
`

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`
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`against MPH for violation of Rule 11, including reasonable costs and attorneys’ fees. At the time
`
`of this Motion, Ford’s attorneys’ fees and expenses exceed $200,000.
`
`
`
`Respectfully submitted,
`
` /s/ John S. LeRoy
`Thomas A. Lewry (Michigan Bar No. P36399)
`John M. Halan (Michigan Bar No. P37616)
`John S. LeRoy (Michigan Bar No. P61964)
`Amy C. Leshan (Michigan Bar No. P69328)
`BROOKS KUSHMAN P.C.
`1000 Town Center, Twenty-Second Floor
`Southfield, Michigan 48075
`Tel: (248) 358-4400; Fax: (248) 358-3351
`Email: jleroy@brookskushman.com
`
`Kevin J. O'Connor
`LUM, DRASCO & POSITAN, LLC
`103 Eisenhower Parkway
`Roseland, NJ 07068-1049
`(973) 403-9000
`Email: koconnor@lumlaw.com
`
`
`
`Attorneys for Defendant Ford Motor Co.
`
`
`3
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`
`
`
`
`
`
`Dated: June 10, 2013
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`
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`
`
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`

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`CERTIFICATE OF SERVICE
`
`I certify that I served:
`
`DEFENDANT FORD MOTOR COMPANY’S
`MOTION FOR RULE 11 SANCTIONS
`
`on June 10, 2013 by:
`
`
`
`
`
`
` X
`
`
`delivering (via electronic mail to rcatalina@szaferman.com;
`pkaese@szaferman.com; rcatalina@newtechlegal.com)
`
` X mailing (via First-Class mail)
`
`a copy to:
`
`RICHARD A. CATALINA, JR. (RC 4462)
`Szaferman Lakind Blumstein & Blader PC
`101 Grovers Mill Road, Suite 200
`Lawrenceville, NJ 08648
`609.275.0400
`
`
`Attorneys for Plaintiff
`
`
`
`
`
`
`
` /s/ John S. LeRoy
`
`
`
`
`
`
`
`
`
`
`
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`
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`
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`4
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`

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`
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`Case 3:11-cv-07044-PGS-DEA Document 47-1 Filed 06/10/13 Page 1 of 23 PageID: 206Case 2:15-cv-01274-JRG-RSP Document 55-3 Filed 12/22/15 Page 5 of 67 PageID #: 426
`
`Kevin J. O'Connor
`LUM, DRASCO & POSITAN, LLC
`103 Eisenhower Parkway
`Roseland, NJ 07068-1049
`(973) 403-9000
`Email: koconnor@lumlaw.com
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. 3:11-cv-07044-PGS-DEA
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`MARLOWE PATENT HOLDINGS LLC,
`
`
`
`
`
`Plaintiff,
`
`v.
`
`FORD MOTOR COMPANY,
`
`
`
`Defendant.
`
`
`
`BRIEF IN SUPPORT OF DEFENDANT
`FORD MOTOR COMPANY’S MOTION FOR
`RULE 11 SANCTIONS
`
`
`
`
`
`

`
`
`
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`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 1
`
`FACTUAL BACKGROUND ............................................................................................. 2
`
`I.
`
`II.
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Marlowe’s ’786 Patent ............................................................................................ 2
`
`Marlowe Sold the Patented Interface More Than One Year Before He
`Filed the Application for the ’786 Patent ................................................................ 4
`
`The Toyota/Panasonic Interface Marlowe Sold Generates the Patented
`“Device Presence Signal” ....................................................................................... 8
`
`The Toyota/Panasonic Interface Marlowe Sold Translates Commands
`between the Car Stereo and the Audio Device ..................................................... 10
`
`Marlowe Personally Designed and Programmed the Blitzsafe Interfaces ............ 11
`
`Marlow Has “Lost” Evidence Pertaining To the Toyota/Panasonic
`Interface and Purportedly Cannot Recall the Technical Details ........................... 11
`
`III.
`
`ANALYSIS ....................................................................................................................... 13
`
`A.
`
`B.
`
`C.
`
`D.
`
`Rule 11 Standard ................................................................................................... 13
`
`The ’786 Patent Is Invalid Because Marlowe Placed the Claimed Interface
`on Sale More Than A Year before Filing the Application for the ’786
`Patent..................................................................................................................... 14
`
`Marlowe Committed Fraud On The Patent Office By Failing To Inform
`The Patent Office That He Had Sold The Patented Design Before The
`Critical Date .......................................................................................................... 15
`
`Because Marlowe knew the ’786 Patent was Invalid and Unenforceable,
`Yet Filed and maintained this Lawsuit, the Court Should Dismiss the
`Lawsuit and Award Ford Fees and Expenses ....................................................... 18
`
`IV.
`
`CONCLUSION ................................................................................................................. 19
`
`
`
`
`
`
`
`
`
`ii
`
`

`
`
`
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`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Bradgate Assocs., Inc. v. Fellows, Read & Assocs.,
`
`999 F.2d 745 (3d Cir.1993)............................................................................................... 13
`
`Business Guides, Inc. v. Chromatic Communications Enters., Inc.,
`
`498 U.S. 533 (1991) .......................................................................................................... 13
`
`CTC Imports and Exports v. Nigerian Petroleum Corp.,
`
`951 F.2d 573 (3d Cir.1991)............................................................................................... 13
`
`Garr v. U.S. Healthcare, Inc.,
`
`22 F.3d 1274 (3d Cir. 1994).............................................................................................. 13
`
`LaBounty Manufacturing, Inc. v. USITC,
`
`958 F.2d 1066 (Fed. Cir. 1992)......................................................................................... 17
`
`Microsoft Corp. v. i4i Ltd. P’ship.,
`
`131 S.Ct. 2238 (2011) ....................................................................................................... 14
`
`Paragon Podiatry Laboratory, Inc. v. KLM Lab’s Inc.,
`
`984 F.2d, 1182 (Fed. Cir. 1993)........................................................................................ 17
`
`Therasense, Inc. v. Becton, Dickinson & Co.,
`
`649 F.3d 1276 (Fed. Cir. 2011)............................................................................. 15, 16, 18
`
`
`Statutes
`
`35 U.S.C. § 102 ................................................................................................................... 1, 14, 15
`
`35 U.S.C. § 285 ............................................................................................................................. 18
`
`
`Rules
`
`Fed. R. Civ. P. 11(b)(2)................................................................................................................. 13
`
`
`
`
`
`
`iii
`
`

`
`
`
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`
`
`
`I.
`
`INTRODUCTION
`
`Plaintiff Marlowe Patent Holding (“MPH”) asserts that defendant Ford Motor Company
`
`(“Ford”) infringes U.S. Patent No. 7,489,786 (the “’786 patent”). Ford moves to dismiss this
`
`case and award sanctions against MPH and ’786 inventor Ira Marlowe (“Marlowe”), because he
`
`knew at the time the complaint was filed that the ’786 patent is both invalid and unenforceable.
`
`The ’786 patent is invalid as a matter of law because Marlowe began selling devices
`
`embodying his purported invention years before filing his patent application with the U.S. Patent
`
`and Trademark Office (“USPTO”). This is a violation of 35 U.S.C. §102(b), which prohibits
`
`patenting anything that has been “on sale” in this country for more than one year.
`
`The ’786 patent is unenforceable as a matter of equity because Marlowe failed to disclose
`
`to the USPTO the relevant technical details regarding the products he had sold years before filing
`
`his patent application—details that would have prevented him from obtaining the ’786 patent.
`
`
`
`For these reasons, Ford requests that this Court dismiss this case with prejudice, and
`
`award Ford all attorneys’ fees and expenses (including its expert fees) that Ford has incurred in
`
`defending this baseless lawsuit. To date, Ford’s attorneys’ fees and expenses exceed $200,000.
`
`
`
`
`
`
`
`1
`
`

`
`
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`II.
`
`FACTUAL BACKGROUND
`
`A.
`
`Marlowe’s ’786 Patent
`
`Marlowe filed his application for the ’786 patent on December 11, 2002. (Exhibit B,
`
`’786 Patent.1) In the Complaint, Marlowe described the subject matter of the ’786 patent as
`
`follows:
`
`The ’786 patent pertains to an audio device integration system that enables after-
`market audio products such as a CD player, a CD changer, an MP3 player, a
`satellite receiver, a digital audio broadcast receiver, and other auxiliary sources to
`be connected to, operate with, and be controlled from, an existing stereo system in
`an automobile.
`
`(Dkt. #1 at ¶ 7.)
`
`Figure 2A of the ’786 patent, reproduced below, shows an example of the patented
`
`interface (20, highlighted in yellow), located between an aftermarket CD player (15) and a car
`
`radio (10).
`
`
`
`
`
`
`1 All letter exhibits refer to the exhibits attached to the Declaration of Thomas G. Matheson
`(“Matheson Decl.”), which is being filed concurrently herewith.
`
`
`
`2
`
`

`
`
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`The ’786 patent includes 99 claims directed to variations of Marlowe’s audio interface.
`
`The interfaces can generally be divided into three categories, the primary difference being the
`
`functions performed by the internal microprocessor (shown in bold below):
`
`Category
`
`Sample Claims
`
`Category I
`
`1, 24 and 33
`
`Category II
`
`49, 86 and 99
`
`Category III
`
`57, 66 and 92
`
`Interface Elements
`1) microcontroller which translates “incompatible signals”
` between the car stereo and audio devices
`2) one connector to a car stereo
`3) two connectors to audio devices
`1) microcontroller which sends a “device presence signal”
` to the car stereo
`2) one connector to a car stereo
`3) another connector to an audio device
`1) microcontroller which sends a “device presence signal”
` to the car stereo and which translates “incompatible
` signals” between the car stereo and audio device.
`2) one connector to the car stereo
`3) another connector to the audio device
`
`
`
`In the co-pending Dice Electronics Litigation (Case No. 2:10-cv-01199; “Dice
`
`Litigation”), Marlowe explained that the “device presence signal” recited in the claims was an
`
`“important aspect” of the patented interface—the aspect that distinguished the interface from the
`
`prior art:
`
`One important aspect of the ’786 invention relates to a “device presence signal.”
`Prior audio devices that were made for installation in an automobile typically
`generated and transmitted a “device presence signal” to the car stereo, which let
`the stereo know there was an audio device connected, and kept the stereo in a
`state responsive to signals from the audio device. Such a signal was required
`because, for the car stereo to control an audio device connected to an input of the
`car stereo, the car stereo has to “know” that such a device is connected, active,
`and ready for commands.
`
`* * *
`
`If one attempts to control from the car stereo, or play through the car stereo, audio
`from a portable “walkman,” iPod, or other device not designed specifically to go
`in an automobile, there will be no device presence signal. . . . To solve this
`problem, the ’786 patent proposed a unique solution of dispensing entirely with
`the need for the audio device to generate the device presence signal. Instead, the
`
`
`
`3
`
`

`
`
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`interface, rather than just translating commands between the [audio device] and
`the car stereo, would be pre-programmed to itself generate the device presence
`signal. . . .
`
`(MPH’s Claim Construction Brief, Dice Litigation Dkt. # 149 at 2-3, underlining in original,
`italics added.)
`
`Marlowe Sold the Patented Interface More Than One Year Before
`He Filed the Application for the ’786 Patent
`
`B.
`
`Marlowe
`
`owns
`
`and
`
`controls Blitzsafe
`
`of America,
`
`Inc.
`
`(“Blitzsafe”)
`
`(www.blitzsafe.com). (Exhibit 1,2 MPH’s Interrogatory Responses at 3.) Blitzsafe sells
`
`interfaces for connecting CD players and other aftermarket audio devices to vehicle stereo
`
`systems. (Id. at 9.)
`
`Blitzsafe’s early advertising materials confirm that it began selling interfaces for
`
`connecting Toyota car stereos to Panasonic CD-changers in the fall of 1998, several years before
`
`the application for the ’786 patent was filed.
`
`
`2 All numbered exhibits refer to the exhibits attached to the Declaration of John S. LeRoy
`(“LeRoy Decl.”), which is being filed concurrently herewith.
`
`
`
`4
`
`

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`
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`(Exhibit D.)
`
`
`
`As this advertisement confirms, Blitzsafe (Marlowe) was selling two versions of the
`
`Toyota/Panasonic interfaces in 1998, one with a single audio device input, and another with dual
`
`CD changer inputs. An archived copy3 of Blitzsafe’s website dated March 2001 confirms the
`
`
`3 As detailed in Section II.F, infra, Marlowe tried to conceal this information from Ford by
`claiming that his copies of the files had been destroyed, then deleting archived copies on the
`Internet. Ford found the information presented here one a mirror site of the Internet Archive
`5
`
`
`
`

`
`
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`Blitzsafe part numbers for these two products were TOY/PAN DMX V.1B (single input) and
`
`TOY/PAN DMX V.2B (dual input):
`
`(Exhibit W.)
`
`
`
`
`located at the Bibliotheca Alexandrina in Egypt that Marlowe was unaware of and failed to
`destroy.
`
`
`
`6
`
`

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`As part of its case investigation, Ford purchased the Blitzsafe Toyota-to-Panasonic CD
`
`changer interface shown below in an unopened Blitzsafe packaging container.
`
`
`
`
`
`
`
` (Matheson Decl., ¶ 33.)
`
`As shown below, the circuit board for this interface includes a 1999 Copyright date.
`
`
`
`
`
`(Matheson Decl., ¶ 35.)
`
`The circuit board includes a microcontroller chip having a “9934” date code indicating
`
`that it was manufactured in August (week 34) 1999. (Matheson Decl., ¶ 35.) The circuit board
`
`
`
`7
`
`

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`
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`also includes a comparator chip having a “931” date code indicating that it was manufactured in
`
`August (week 31) 1999. (Id.)
`
`C.
`
`The Toyota/Panasonic Interface Marlowe Sold Generates the
`Patented “Device Presence Signal”
`
`Ford retained Dr. Matheson to examine the Toyota/Panasonic interface that Marlowe was
`
`selling more than one year before he filed the application for the ’786 patent. Dr. Matheson
`
`confirmed that the Toyota/Panasonic interface produces a “device presence signal” as claimed in
`
`the ’786 patent. (Matheson Decl., ¶ 41.) For purposes of making this determination, Dr.
`
`Matheson used the construction of device presence signal set forth by MPH in its opening claim
`
`construction brief in the Dice litigation—namely that a device presence signal is “the signal that
`
`maintains the stereo in a state responsive to data and audio signals.” (Dice Litigation, Dkt. # 149
`
`at 10.)
`
`Dr. Matheson confirmed the presence of the claimed “device presence signal” by
`
`connecting the Toyota/Panasonic interface to a Toyota car stereo and digitally recording the data
`
`packets that were sent from the car stereo to the interface and vice versa. (Matheson Decl., ¶ 41.)
`
`As soon as power is connected to the Toyota stereo, the Toyota stereo sends a message to
`
`the Blitzsafe interface to determine if it is connected. (Id., ¶ 40; Exhibit Y, AVC-LAN Traffic
`
`Chart.) The Blitzsafe interface responds with a message “Register CD-CH1” to register the
`
`presence of a CD changer (even if no CD changer is connected). (Id., ¶ 41.) The Toyota stereo
`
`then tells the Blitzsafe interface to stop the CD player. (Id.) The Blitzsafe interface sends an
`
`acknowledgement of that stop command back to the Toyota stereo. (Id.)
`
`When the “CD” button is pushed on the front of the Toyota stereo, the stereo issues two
`
`commands to the Blitzsafe interface instructing it to “Play CD.” (Id., ¶ 41; Exhibit Y, AVC-
`
`LAN Traffic Chart.) The Blitzsafe interface responds with two “Play acknowledge”
`
`
`
`8
`
`

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`transmissions. (Id.) As a result, the Toyota stereo switches from playing audio from the FM
`
`tuner to playing the audio received from the Panasonic CD changer, or whatever other audio
`
`device the Blitzsafe interface is connected to. (Id.)
`
`The following graphic summarizes the key message exchanges between the Toyota stereo
`
`and the Blitzsafe interface.
`
`Because the “Register CD-CH1,” “Stop Acknowledge” and the “Play acknowledge”
`
`signals generated by the Blitzsafe interface (shown in yellow above) maintain the car stereo in an
`
`operational state responsive to signals generated by the Panasonic CD changer, the Blitzsafe
`
`interface generates a “device presence signal” as Marlowe interprets that term. (Matheson Decl.,
`
`
`
`¶ 41, 55.)
`
`Significantly, any Blitzsafe interface that was compatible with a “1998+” Toyota car
`
`stereo necessarily generated the claimed “device presence signal” because all MY1998-MY2003
`
`Toyota stereos require this exact message exchange to work properly. (Id, ¶ 29.)
`
`
`
`9
`
`

`
`
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`Ford presented this evidence to Marlowe, but Marlowe has not provided any evidence or
`
`explanation refuting Ford’s analysis.
`
`D.
`
`The Toyota/Panasonic Interface Marlowe Sold Translates
`Commands between the Car Stereo and the Audio Device
`
`Dr. Matheson also confirmed that the microprocessor in the Toyota/Panasonic interface
`
`translates and communicates signals between the car stereo and the audio device, as claimed in
`
`the ’786 patent. To begin with, the communication formats of the two devices—the Toyota car
`
`stereo and the Panasonic CD changer—are physically and electrically different in almost every
`
`possible way, inherently requiring that the Blitzsafe interface perform a translation between the
`
`two devices. (Matheson Decl., ¶ 28.) The following table summarizes some of the key
`
`differences.
`
`
`No. of Connector Pins
`No. of Data Pins
`Voltage Level
`Clock Rates
`Encoding Method
`Data Packet
`
`Toyota Car Stereo
`12
`2
`2.5 V
`25000Hz
`Differential Level Encoding
`Most Significant Byte First
`
`Panasonic CD Changer
`8
`1
`5 V
`500Hz
`Pulse-Width Encoding
`Least Significant Byte First
`
`
`(Id., ¶¶ 17-19, 23-25, 28.)
`
`Because the manner of communication with the Toyota car stereo and the Panasonic CD
`
`changer was both physically and electrically different, it was necessary for the microprocessor in
`
`the Blitzsafe Toyota/Panasonic interface to translate the commands and data between the car
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`stereo and the CD changer. (Id., ¶¶ 45-46.) Without this translation ability, the Blitzsafe
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`interface would not be capable of interfacing the Panasonic CD changer to the Toyota car stereo
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`to allow the stereo to control the player and play music. (Id., ¶¶ 54-55.)
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`10
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`E.
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`
`Marlowe Personally Designed and Programmed the Blitzsafe
`Interfaces
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`Marlowe is Blitzsafe’s sole engineer. (Exhibit 2, MPH’s Initial Disclosures at Addendum
`
`A.) During his deposition in the Dice Litigation, Marlowe testified that he personally designed
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`the Blitzsafe interfaces, and programmed the microprocessors inside of them. (Exhibit 3,
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`Marlowe Dep. Tr. at 71:23-24, 74:3-7, 133:4-6.)
`
`F.
`
`Marlow Has “Lost” Evidence Pertaining To the Toyota/Panasonic
`Interface and Purportedly Cannot Recall the Technical Details
`
`At his deposition in the Dice Litigation, Marlowe testified in detail about the various
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`devices he built and sold over the years. (See, e.g., Exhibit 3, Marlowe Dep. Tr. at 20:2-26:8.)
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`But, incredibly, he could not recall whether the Blitzsafe Toyota/Panasonic interfaces included
`
`the claimed “device presence signal.”
`
`Q.
`
`A.
`
`So did this [Toyota/Panasonic] interface generate a device present signal?
`
`I have no idea. I don't know what the – I don't know. I have nothing on
`this.
`
`(Id. at 137:5-8.)
`
`Marlowe claimed that his early documents pertaining to the Blitzsafe interfaces,
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`including the Toyota/Panasonic interface, were destroyed in a “flood.” (Id. at 31:15-20, 137:15-
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`18.) He also claimed that his early computer files pertaining to the Blitzsafe interfaces, including
`
`the Toyota/Panasonic interface, were destroyed in an “unrecoverable” computer failure. (Id. at
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`241:7-10.)
`
`Key evidence of Marlowe’s early, invalidating sales was stored on an Internet archive,
`
`known as the Internet Archive (www.archive.org) located in San Francisco. The Internet
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`Archive regularly stores the contents of web sites over time. A person searching for an historical
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`version of a particular web site need only type the name of the web site and the Internet Archive
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`
`
`11
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`

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`will present a listing of the archived copies in date order. Clicking a link brings up the web site
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`as it existed on the date the Internet Archive stored it.
`
`After Marlowe learned of the existence of the Internet Archive, he asked its operators to
`
`destroy all archived copies of his Blitzsafe web site. (Exhibit 1, MPH Interrogatory Responses at
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`2-3.) Ford was nonetheless able to locate a backup of the Internet Archive at the Bibliotheca
`
`Alexandrina in Egypt. When Ford accessed that backup, it discovered evidence confirming that
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`Blitzsafe selling the patented interface more than one year before Marlowe filed his patent
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`application.
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`
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`12
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`III.
`
`ANALYSIS
`
`A.
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`Rule 11 Standard
`
`A party must have a good faith basis for filing and maintaining a lawsuit. Federal Rule of
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`Civil Procedure 11 provides that by presenting a pleading to the court, a party is certifying “the
`
`claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous
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`argument for extending, modifying, or reversing existing law or for establishing new law.” Fed.
`
`R. Civ. P. 11(b)(2).
`
`In interpreting Rule 11, the Third Circuit has held that “[t]he signer’s signature on a
`
`pleading, motion, or other paper certifies the signer has done three things: (1) read the pleading,
`
`motion, or paper; (2) made a reasonable inquiry into the contents of the pleading, motion, or
`
`other paper and concluded that it is well grounded in fact and warranted in law; and (3) has not
`
`acted in bad faith in signing the document.” Garr v. U.S. Healthcare, Inc., 22 F.3d 1274, 1278
`
`(3d Cir. 1994) (citing CTC Imports and Exports v. Nigerian Petroleum Corp., 951 F.2d 573, 578
`
`(3d Cir.1991)). The court applies an objective standard to determine the reasonableness of the
`
`inquiry required by Rule 11. Id. (citing Business Guides, Inc. v. Chromatic Communications
`
`Enters., Inc., 498 U.S. 533, 548-50 (1991); Bradgate Assocs., Inc. v. Fellows, Read & Assocs.,
`
`999 F.2d 745, 752 (3d Cir.1993)).
`
`As explained below, this lawsuit is frivolous because Marlowe knew, that the time he
`
`filed this lawsuit, that [1] his patent was invalid because Marlowe personally sold the
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`invalidating Blitzsafe Toyota-Panasonic interface more than one year before filing his patent
`
`application, and [2] he obtained his patent by committing fraud on the USPTO by failing to
`
`inform the PTO that the Blitzsafe Toyota-Panasonic interface he sold practiced the alleged
`
`invention of his patent application.
`
`
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`13
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`

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`B.
`
`The ’786 Patent Is Invalid Because Marlowe Placed the Claimed
`Interface on Sale More Than A Year before Filing the Application
`for the ’786 Patent
`
`U.S. patent law prohibits patenting a product that was on-sale in the United States more
`
`than one year prior to the filing date of the application for that patent. 35 U.S.C. § 102(b).
`
`Specifically, 35 U.S.C. § 102 provides “conditions for patentability; novelty and loss of right to
`
`patent.” (Emphasis added.) Section 102(b) states:
`
`A person shall be entitled to a patent unless –
`
`* * *
`
`(b) the invention was patented or described in a printed publication in this or a
`foreign country or in public use or on sale in this country, more than one year
`prior to the date of the application for patent in the United States.
`
`35 U.S.C. § 102(b) (emphasis added).
`
`Ford must establish invalidity by clear and convincing evidence. Microsoft Corp. v. i4i
`
`Ltd. P’ship., 131 S.Ct. 2238, 2242 (2011).
`
`The application for the ’786 patent was filed on December 11, 2002, meaning that any
`
`sales of the patented product before December 11, 2001 (commonly referred to as the “critical
`
`date”) would render the ’786 patent invalid. As explained in above, Marlowe’s Blitzsafe
`
`company was selling Toyota/Panasonic interfaces in November 1998, more than two years
`
`before the critical date. (Matheson Decl., ¶ 15.) Marlowe cannot contradict this evidence
`
`because he testified under oath [1] that he has lost all evidence concerning the technical details of
`
`the Toyota-Panasonic interface, and [2] that he cannot recall the details. (Exhibit 3, Marlowe
`
`Dep. Tr. at 137:5-18.)
`
`Dr. Matheson’s unrebutted declaration provides a thorough technical analysis of
`
`Marlowe’s Toyota/Panasonic interface and how it invalidates the claims of the ’786 patent. Dr.
`
`Matheson proved that the interface generates the patented “device presence signal” recited in
`
`
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`14
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`

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`many of the ‘786 patent claims. (Matheson Decl., ¶¶ 54-55.) Dr. Matheson also proved that the
`
`interface performs the translation requirements of the ’786 patent. (Id., ¶¶ 45-46.) As explained
`
`above, the interface could not work without generating the claimed “device presence signal” and
`
`performing the claimed “translation.” (Id., ¶¶ 41, 54-55.)
`
`Exhibit X
`
`to Dr. Matheson’s declaration
`
`is a claim chart proving
`
`that
`
`the
`
`Toyota/Panasonic interfaces, which Marlowe offered for sale long before the critical date, meet
`
`the limitations of the claims of the ’786 patent. Specifically, Dr. Matheson demonstrates that the
`
`Toyota-Panasonic interfaces anticipate claim numbers 1, 2, 3, 6, 7, 13-15, 23, 25, 27, 31, 33, 34,
`
`38, 41-43, 49-55, 92, 93 and 99 under 35 U.S.C. § 102(b), and render the remaining claims
`
`obvious under 35 U.S.C. § 103. (Matheson Decl., ¶¶ 54-55.)
`
`As noted, Marlowe has no ability to contradict any of this evidence. Accordingly, the
`
`’786 patent is unquestionably invalid and Marlowe should never have filed this lawsuit.
`
`C.
`
`Marlowe Committed Fraud On The Patent Office By Failing To
`Inform The Patent Office That He Had Sold The Patented Design
`Before The Critical Date
`
`A patent is unenforceable when an inventor fails to disclose material prior art to the
`
`USPTO with an intent to deceive the Patent Office. Therasense, Inc. v. Becton, Dickinson &
`
`Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc). In this case, Marlowe disclosed the
`
`existence of the prior art Blitzsafe Toyota/Panasonic interfaces to the USPTO, but