Case 2:21-cv-00186-JRG-RSP Document 86 Filed 07/25/22 Page 1 of 22 PageID #: 4763
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`FILED UNDER SEAL—PURSUANT TO PROTECTIVE ORDER
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`JAWBONE INNOVATIONS, LLC.,
`
`Plaintiff,
`
`vs.
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Civil Action No. 2:21-cv-00186-JRG
`
`JURY TRIAL DEMANDED
`
`
`
`Defendants.
`
`
`SAMSUNG’S RESPONSE TO PLAINTIFF’S MOTION FOR PARTIAL DISMISSAL OF
`SAMSUNG’S COUNTERCLAIMS (DKT. 69)
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`
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`

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`FILED UNDER SEAL—PURSUANT TO PROTECTIVE ORDER
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`TABLE OF CONTENTS
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`Page
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`I. OUTI sess cere ereccees areata carat cnc erecta acres c ear ecereara. 1
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`Il. aNPor anocenerepecenszenecercecensreecEennere epee eCeARRTECEN ERENCEZ
`A.
`Motions to: Dismiss: Under Fed. R.. Civ: Ps: T2(O\(6) wscscscscscscscscscscscsccscssscssscscscucscs2
`B.
`Motions to Strike Under Fed. R. Civ. P. 12(f) .........cccccccccccesceesceeseeeesceeeseeeseeesseteeees a
`g;
`Pleadiig Teqmtable CondGG ws cscscscs coca crs nsccnacnacnmcnecacnmcncecuced 3
`BACKGROUND .000.ocecciccicccccccccccc cece cece cece cece cece cece eee cececceseesececceeeeescesseeseesesseaseasees4
`
`TH.
`
`
`
`
`zi
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`Zz.
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`cneecanennsennseenrenanenneennrennennsennseanrennseenesenrermenneenesnrs4
`Dr. Burnett Failed to Disclose Van Compernolle During Prosecution of
`207 Patent Application .................cecccececcescceseeeeseeeeeeeseeeseeceseceseeceseeeseeeesecenseeseeeeseeees6
`Van Compermolle Discloses Claim Limitations That Applicants Argued
`Were NotDisclosed in Prior Art Relied Upon by the Examiner During
`Prosecution of the 207 Patent Application....................cccceeeeeeeeceeeeeeeeeeeeeeeeneeeseeeeeees 7
`JAWBONE’S MOTION SHOULD BE: DENIED \iisscsescscscssscrsscucscacscsescucstucucucncucscucacucscsescue. 7
`A.
`Samsung Adequately Pled Its Inequitable Conduct Counterclaim and
`SPEIERTIocc s ce cccensusscencennenoeinencensenostcemmenoeieeieemenoeioemeemoeieet 7
`1.
`Samsung Adequately Pled the Who, What, When, Where, and
`How/Whyof the Material Omission Committed Before the
`USPTO oon ccccccececeessseeceeeseeeeceesaeeecessuaeeccessaaeeeeessaeeeeeessaeeeeeeseaeeeeeseaees 7
`Samsung Adequately Pled Facts From Which the Court Could
`Reasonably Infer That Dr. Burnett Knew of the Van Compernolle
`Reference and Withheld the Reference With the Specific Intent to
`DCCGIGsess cscs esse cuss csescusscscscucatucscucscucatucstatecats tite citstitstatatitaticatiacsabnatcscatectts 8
`Jawbone’s Arguments in Support of Its Motion to Dismiss Samsung’s
`Inequitable Conduct Counterclaim Are Meritless.................:.c:ccscceseeeseeeseeseeeeeeseeees9
`1.
`Samsung Pled Facts Sufficient to Show a Reasonable Inference of
`Intent in Support of Its Inequitable Conduct Counterclaim....................... 10
`Samsung Pled Facts Sufficient to Show the “How”and “Why”of
`Inequitable Conduct in Support of Its Counterclaim ..................00:0:cee 11
`Jawbone’s Motion to Strike Samsung’s Twenty-Fourth Affirmative
`Defense (Inequitable Conduct) Should Be Denied ..............0...0ccccceceeceeeeeeeeeeneeeees 11
`Jawbone’s Motion to Dismiss Samsung’s Allegations Based on 28 Other
`Prior Art References Is MOot..............ccccescceccesceeseeseeseeeseesseesecsecseeseeeseeeeeeseeeseeeees 12
`Jawbone’s Motion to Dismiss Samsung’s Allegations of Infectious
`Unenforceability Should Be Denied ...........0.......ccecceecceseeeseeeeeseeeeeeseeeseeeeeeneeeseeees 12
`IN THE ALTERNATIVE, SAMSUNG REQUESTS LEAVE TO AMENDITS
`ANSWER TO INCLUDE ADDITIONAL FACTS SUPPORTING ITS
`INEQUITABLE CONDUCT COUNTERCLAIM AND AFFIRMATIVE
`DEFENSE...0.....cscescescessescescesceseescessessesscsacsscsaseseaeessessessessssacsacsaseaseasesecsecsaeseceaseaceaseaeeasenees 12
`A.
`Samsung Has Good Cause UnderFed R.Civ. P. 16(b)(4) for its Amended
`PORNsacsaera rare 13
`The Court Should Freely Give Samsung Leave to Amend UnderFed. R.
`lng? Pi TS) cscs ca cscucacusscusscuss case caccacscscatacatucacucacusscuts cite tacetacecscutaatutacucacutscutscitats 14
`
`A.
`
`B.
`
`C.
`
`B.
`
`C.
`
`D.
`
`E.
`
`I¥V:
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`V.
`
`B.
`
`i
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`

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`VI.
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`Samsung’s Proposed Amendment Is Not Futile ....................................................15
`C.
`CONCLUSION ..................................................................................................................15
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`
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`ii
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`TABLE OF AUTHORITIES
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`
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`Page(s)
`
`Cases
`
`Eon Corp. IP Holdings, LLC v. T-Mobile USA, Inc.,
`No. 6:10-CV-379-LED-JDL, 2011 WL 13134896 (E.D. Tex. Dec. 13, 2011) ............... passim
`
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009)..............................................................................................3, 7
`
`Intellectual Ventures II LLC v. FedEx Corp.,
`No. 2:16-cv-980-JRG, Dkt. 396 (E.D. Tex. Mar. 19, 2018) (Ex. 7) ........................................15
`
`Invensys Sys., Inc. v. Emerson Elec. Co.,
`No. 6:12-cv-00799-LED, Dkt. 179 (E.D. Tex. July 9, 2014) (Ex. 6) ................................11, 12
`
`Mosaid Techs. Inc. v. Freescale Semiconductor, Inc.,
`No. 6:11-CV-00173, 2012 WL 12898419 (E.D. Tex. Sept. 27, 2012) ....................................15
`
`OnPoint Sys., LLC v. Protect Animals With Satellites, LLC,
`No. 4:20-CV-657, 2021 WL 3140562 (E.D. Tex. July 26, 2021) .....................................13, 14
`
`Script Sec. Sols., LLC v. Amazon.com, Inc.,
`No. 2:15-CV-1030-WCB, 2016 WL 5916627 (E.D. Tex. Oct. 11, 2016) .........................13, 14
`
`SecurityProfiling, LLC v. Trend Micro Am., Inc.,
`No. 6:16-CV-01165-RWS-JDL, 2017 WL 5150682 (E.D. Tex. Mar. 21, 2017) ................3, 11
`
`SimpleAir, Inc. v. AWS Convergence Techs.,
`No. 2:09-CV-289, 2012 WL 12978325 (E.D. Tex. Jan. 31, 2012) ...................................13, 14
`
`Sonus Networks, Inc., v. Metaswitch Networks Ltd.,
`No. 2:18-CV-00058-RWS, Dkt. 162 (E.D. Tex. Mar. 27, 2019) (Ex. 2) ..................................2
`
`U.S. Silica Co. v. Amberger Kaolinwerke Eduard Kick GmbH & Co. KG,
`No. 2:20-CV-00298-JRG, 2021 WL 5415294 (E.D. Tex. Nov. 19, 2021)................................3
`
`Other Authorities
`
`37 CFR 1.56 .....................................................................................................................................6
`
`Fed. R. Civ. P. 9(b) ......................................................................................................................2, 3
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`Fed. R. Civ. P. 12(b)(6)................................................................................................................2, 3
`
`Fed. R. Civ. P. 12(f) .........................................................................................................................3
`
`
`
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`iii
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`Fed. R. Civ. P. 15(a)(2) ........................................................................................................2, 14, 15
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`Fed. R. Civ. P. 16(b)(4)..................................................................................................2, 13, 14, 15
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`
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`iv
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`INTRODUCTION
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`I.
`
`Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
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`(“Samsung”) have adequately pled their inequitable conduct counterclaim and affirmative
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`defense. See Dkt. 61, ¶¶ 124-171 (Count XVII)1; id. at 19 (Twenty-Fourth Defense). Indeed,
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`Samsung pled the who (Dr. Gregory Burnett), what/when/where (failure to disclose Van
`
`Compernolle2 during prosecution of the application leading to the issuance of U.S. Patent No.
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`8,019,091 (“the 091 Patent”), which includes disclosures that invalidate certain claims of the 091
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`Patent), and the how/why of inequitable conduct (Van Compernolle discloses limitations that
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`applicants argued were not present in the prior art relied on by the Examiner). Samsung further
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`pled facts from which the Court could reasonably infer knowledge and intent to deceive. See
`
`Section IV.A.
`
`Jawbone Innovations, LLC’s (“Jawbone”) request to dismiss Samsung’s inequitable
`
`conduct counterclaim and affirmative defense is based on the draconian premise that the lack of
`
`a citation can undo a well-supported inequitable conduct counterclaim and affirmative defense.
`
`Jawbone is well aware that the facts supporting Samsung’s inequitable conduct counterclaim and
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`affirmative defense are in
`
`
`
` and the publicly
`
`available file history of the 091 Patent (which, as Samsung pled, demonstrates that Van
`
`Compernolle is material and non-cumulative). The Court should reject Jawbone’s motion as
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`Samsung’s pleading provides the requisite particularity and places Jawbone on clear notice of the
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`facts supporting Samsung’s inequitable conduct counterclaim and affirmative defense.
`
`
`1 Citations in this motion to paragraphs in Dkt. 61 refer to the paragraphs in Samsung’s counterclaims.
`2 Switching Adaptive Filters for Enhancing Noisy and Reverberant Speech from Microphone Array
`Recordings, in Proceedings of the IEEE International Conference on Acoustics, Speech and Signal
`Processing (April 1990) (“Van Compernolle,” Ex. 1).
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`
`
`1
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`

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`To the extent the Court finds that more particularity is required regarding Dr. Burnett’s
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`knowledge of Van Compernolle, its material and non-cumulative nature, and Dr. Burnett’s intent
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`to deceive the USPTO, Samsung alternatively moves for leave to file an amended answer that
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`includes additional details supporting Samsung’s inequitable conduct counterclaim and
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`affirmative defense. Samsung is concurrently filing its proposed amended pleading, which
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`includes additional citations to
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`, the 091 Patent File History/the 091
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`Patent, and Van Compernolle.3 Further, under Rule 16(b)(4), there is good cause for Samsung’s
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`proposed amended pleading because (1) the circumstances demonstrate that amendment at this
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`time is warranted; (2) the proposed amendment is critically important; (3) there is no prejudice to
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`Jawbone; and (4) the case schedule does not need to be adjusted as fact discovery does not close
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`until September 5, 2022 (see Dkt. 58). Thus, the more liberal standard of Rule 15(a)(2) applies,
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`and the Court should freely give Samsung leave to amend. Indeed, Samsung’s inequitable
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`conduct counterclaim and affirmative defense may result in Jawbone being barred from bringing
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`its claims in this action. Further, Dr. Burnett has yet to be deposed in this case, and it would be
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`unfair and highly prejudicial to foreclose Samsung’s inequitable conduct argument before
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`Samsung has deposed the witness whose conduct is at issue.
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`II.
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`LEGAL STANDARDS
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`A. Motions to Dismiss Under Fed. R. Civ. P. 12(b)(6)
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`“A dismissal for failure to plead fraud with particularity under Rule 9(b) is treated as a
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`dismissal for failure to state a claim under Rule 12(b)(6).” Sonus Networks, Inc., v. Metaswitch
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`Networks Ltd., No. 2:18-CV-00058-RWS, Dkt. 162 at 3 (E.D. Tex. Mar. 27, 2019) (Ex. 2). “In
`
`
`3 Samsung’s proposed amended pleading also includes amendments relating to Samsung’s inventorship,
`standing, statutory cause of action, and nonjoinder defenses, which are addressed in Samsung’s
`concurrently-filed motion for leave to amend.
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`
`
`
`2
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`

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`the Fifth Circuit, motions to dismiss under Rule 12(b)(6) are viewed with disfavor and rarely
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`granted.” U.S. Silica Co. v. Amberger Kaolinwerke Eduard Kick GmbH & Co. KG, No. 2:20-
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`CV-00298-JRG, 2021 WL 5415294, at *2 (E.D. Tex. Nov. 19, 2021).
`
`B. Motions to Strike Under Fed. R. Civ. P. 12(f)
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`“Pursuant to Federal Rule of Civil Procedure 12(f), ‘[t]he court may strike from a
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`pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous
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`matter.’” SecurityProfiling, LLC v. Trend Micro Am., Inc., No. 6:16-CV-01165-RWS-JDL, 2017
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`WL 5150682, at *2 (E.D. Tex. Mar. 21, 2017) (quoting Fed. R. Civ. P. 12(f)). “Motions to strike
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`are generally disfavored.” Id.
`
`C.
`
`Pleading Inequitable Conduct
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`“[I]nequitable conduct, while a broader concept than fraud, must be pled with
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`particularity under Rule 9(b).” Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326
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`(Fed. Cir. 2009) (quotes omitted). “Whether inequitable conduct has been pleaded with
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`particularity under Rule 9(b) is a question governed by Federal Circuit law.” Id. at 1318. A
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`pleading alleging inequitable conduct “must identify the specific who, what, when, where, and
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`how of the material misrepresentation or omission committed before the PTO.” Id. at 1328
`
`(quotes omitted). “[A]lthough knowledge and intent may be averred generally, a pleading …
`
`must include sufficient allegations of underlying facts from which a court may reasonably infer
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`that a specific individual (1) knew of the withheld material information or of the falsity of the
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`material misrepresentation, and (2) withheld or misrepresented this information with a specific
`
`intent to deceive the PTO.” Id. at 1328-29 (quotes omitted).
`
`With regard to pleading intent, it is not necessary to “show by clear and convincing
`
`evidence that the patentee had the specific intent to deceive the PTO, i.e., that the specific intent
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`to deceive is the single most reasonable inference able to be drawn.” Eon Corp. IP Holdings,
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`3
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`LLC v. T-Mobile USA, Inc., No. 6:10-CV-379-LED-JDL, 2011 WL 13134896,at *3 (E.D. Tex.
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`Dec. 13, 2011), report and recommendation adopted, 2012 WL 12893881 (E.D. Tex. Jan. 18,
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`2012). See also id. at *4 (“[W]hile Eon is correct that Therasense requires that, on the merits,
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`Defendants|[] show that deceptive intent was the single most reasonable inference, it does not
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`follow that Defendants must make such an evidentiary showing at the pleading stage.”). The
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`“allegations need not be a smoking gun,but rather [must provide] sufficient groundsto inferthe
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`requisite knowledgeandintent.” Jd. at *5 (quotes omitted).
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`iil
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`BACKGROUND
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`The 091 Patent issued from Application No. 10/667,207 (“the 207 Patent Application”),
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`whichwasfiled on September18, 2003. Dkt. 61, § 128. The namedinventors are Gregory C.
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`Burnett and Enc. E. Breitfeller. Dkt. 61, § 130.
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`—SSCSC‘C;s
`ee
`ee
`eS
`ee
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`CSCS
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`ee
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`

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`B.
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`Dr. Burnett Failed to Disclose Van Compernolle During Prosecution of 207
`Patent Application
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`On September 18, 2003, concurrently with filing the 207 Patent Application, applicants
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`submitted an Information Disclosure Statement identifying prior art patents and publications.
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`The Information Disclosure Statement did not identify Van Compernolle. See Ex. 4 at -1043-
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`1045. On February 12, 2004, applicants submitted Dr. Burnett’s declaration signed on January
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`13, 2004, which, among other things, “acknowledge[d] the duty to disclose information which is
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`material to patentability as defined in 37 CFR 1.56.” Id. at -1052-1053. On November 4, 2004,
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`applicants submitted another Information Disclosure Statement identifying additional prior art
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`patents. The Information Disclosure Statement again did not identify Van Compernolle. Id. at
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`-1066-1068.
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`The Information Disclosure Statements identified above are the only two Information
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`Disclosure Statements submitted during the prosecution of the 207 Patent Application.
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`Therefore, applicants failed to identify Van Compernolle to the USPTO during prosecution of
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`the 207 Patent Application.
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`6
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`C.
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`Van Compernolle Discloses Claim Limitations That Applicants Argued Were
`Not Disclosed in Prior Art Relied Upon by the Examiner During Prosecution
`of the 207 Patent Application
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`Van Compernolle’s disclosure anticipates or renders obvious at least claims 1, 2, 11 and
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`18 of the 091 Patent. Dkt. 61, ¶¶ 135-141. Samsung’s invalidity contentions served on March 24,
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`2022 include Exhibit A-17 (Ex. 5), which is a claim chart for the Van Compernolle reference.
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`Dkt. 61, ¶ 142. Notably, Van Compernolle has express disclosure of transfer functions, one
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`limitation that applicants argued was lacking in the prior art of record. Dkt. 61, ¶ 143. Indeed,
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`throughout the prosecution history, applicants repeatedly argued that transfer functions were not
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`disclosed in the prior art relied upon by the Examiner. See, e.g., Ex. 4 at -1222, -1238, -1403,
`
`-1405, -1406, -1457-1462, -1514-1520.
`
`IV.
`
`JAWBONE’S MOTION SHOULD BE DENIED
`
`A.
`
`Samsung Adequately Pled Its Inequitable Conduct Counterclaim and
`Affirmative Defense
`
`1.
`
`Samsung Adequately Pled the Who, What, When, Where, and
`How/Why of the Material Omission Committed Before the USPTO
`
`Samsung’s Second Amended Answer (Dkt. 61) pleads with particularity its inequitable
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`conduct counterclaim and affirmative defense. As set forth below, the pleading adequately sets
`
`forth the “who, what, when, where, and how of the material misrepresentation or omission
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`committed before the PTO.” Exergen, 575 F.3d at 1328 (quotes omitted).
`
`Regarding “who,” Samsung pled that Dr. Gregory Burnett was responsible for the
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`material omission before the USPTO constituting inequitable conduct. Dkt. 61, ¶¶ 126, 132, 144,
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`147-157. Further, regarding the “what,” “when,” and “where,” Samsung pled that the inequitable
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`conduct counterclaim is based on the failure to disclose Van Compernolle to the USPTO during
`
`prosecution of the 207 Patent Application. Id., ¶ 125. Samsung’s pleading also includes
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`numerous paragraphs explaining that Van Compernolle discloses limitations of claims 1, 2, 11,
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`7
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`and 18 of the 091 Patent (id., ¶¶ 134-141) and cites Samsung’s invalidity claim chart for Van
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`Compernolle (id., ¶ 142).
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`Samsung’s pleading further explains “how” and “why” Van Compernolle was material
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`and not cumulative of the other prior art before the USPTO. Indeed, in addition to discussing
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`Van Compernolle’s disclosure of several claim limitations and referencing Samsung’s invalidity
`
`claim chart, Samsung further explained that Van Compernolle discloses “transfer function”
`
`limitations that the applicant had argued during prosecution were not disclosed in the prior art.
`
`These allegations explain how and why Van Compernolle was not cumulative of the prior art
`
`before the Examiner. See, e.g., id., ¶ 143 (“Van Compernolle is not cumulative of any other
`
`reference before the examiner during the prosecution of the ’091 Patent. For example, Van
`
`Compernolle has express disclosure of transfer functions, one limitation that applicant argued
`
`was lacking in the prior art of record.”); id., ¶ 144 (“144. On information and belief, the
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`examiner would have rejected at least claims 1, 2, 11 and 18 of the ’091 Patent Application, had
`
`the examiner been made aware of Van Compernolle by at least [Dr.] Burnett who owed a duty of
`
`candor and good faith in dealing with the USPTO in the prosecution of ’091 Patent.”).
`
`2.
`
`Samsung Adequately Pled Facts From Which the Court Could
`Reasonably Infer That Dr. Burnett Knew of the Van Compernolle
`Reference and Withheld the Reference With the Specific Intent to
`Deceive
`
`Samsung also pled sufficient facts to demonstrate that Dr. Burnett knew about Van
`
`Compernolle before and during prosecution of the 207 Patent Application and withheld the
`
`reference with the specific intent to deceive. See, e.g., Dkt. 61, ¶¶ 145-152. In particular,
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`regarding Dr. Burnett’s knowledge of Van Compernolle, Samsung explained that Dr. Burnett
`
`was aware of Van Compernolle at least by 2001 (see Dkt. 61, ¶ 149), which is well before the
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`207 Patent Application was filed on September 18, 2003.
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`8
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`Regarding intent to deceive, Samsung pled that Dr. Burnett was aware of Van
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`Compernolle and its materiality, and that Dr. Burnett failed to disclose Van Compernolle with
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`intent to deceive the USPTO. See, e.g., Dkt. 61, ¶¶ 153-157. Samsung’s pleading further explains
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`that Dr. Burnett reviewed Van Compernolle (and by implication, was aware of its disclosure of
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`transfer functions) before the filing of the 207 Patent Application. See id., ¶¶ 149-150, 152.
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`Meanwhile, Dr. Burnett’s attorney argued during prosecution that prior art relied on by the
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`Examiner did not disclose transfer functions. See id., ¶¶ 143-144. Taken together, these
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`allegations adequately plead Dr. Burnett’s intent to deceive the USPTO as they demonstrate that
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`Dr. Burnett withheld the Van Compernolle reference while his attorney was simultaneously
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`making arguments to the USPTO that the withheld reference could contradict. See Eon Corp.,
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`2011 WL 13134896, at *5-6 (“While Eon is correct that merely indicating that the inventor was
`
`aware of both references is insufficient in and of itself to raise a reasonable inference of
`
`deceptive intent, the pleadings suggest that Dinkins continued to withhold the information while
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`simultaneously making arguments to the PTO that could be contradicted by the withheld
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`reference. … A reasonable inference can be drawn from this that Dinkins chose not to disclose
`
`the ’878 patent with the specific intent to deceive the PTO.”).
`
`B.
`
`Jawbone’s Arguments in Support of Its Motion to Dismiss Samsung’s
`Inequitable Conduct Counterclaim Are Meritless
`
`Jawbone’s motion (Dkt. 69) raises two principal arguments in support of its position that
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`Samsung’s pleading is deficient: (1) Samsung failed to plead facts sufficient to show a
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`reasonable inference of intent regarding Van Compernolle (Dkt. 69 at 5-7); and (2) Samsung
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`9
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`failed to plead the “how” and “why” of inequitable conduct regarding Van Compernolle (Dkt. 69
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`at 7). Jawbone’s motion is wrong on both counts.
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`1.
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`Samsung Pled Facts Sufficient to Show a Reasonable Inference of
`Intent in Support of Its Inequitable Conduct Counterclaim
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`Jawbone contends that “Samsung pleads no facts to support the allegation” that Dr.
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`Burnett was aware of Van Compernolle. Dkt. 69 at 5. Jawbone further contends that “Samsung
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`similarly provides no facts to support that Dr. Burnett was aware of the alleged materiality of
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`Van Compernolle,” and that “Samsung’s conclusory assertions that, ‘on information and belief,’
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`Dr. Burnett reviewed the references are not sufficient.” Id. at 5-6.
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` Indeed, there is no reasonable debate at
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`this point that Jawbone is aware of the basis for Samsung’s pleading. Nevertheless, to the extent
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`that the Court believes that additional details are required, Samsung respectfully requests that the
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`Court grant Samsung leave to amend its pleading as described below.
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`Jawbone further argues that Samsung has not adequately pled Dr. Burnett’s intent to
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`deceive. Specifically, Jawbone contends that “the whole of Samsung’s pleadings are based on
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`Dr. Burnett’s alleged knowledge of the reference and not disclosing that reference.” Dkt. 69 at 6.
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`Jawbone is incorrect. Samsung’s pleading explains that Dr. Burnett was aware of the Van
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`Compernolle reference and reviewed it (and by implication, was aware of its disclosure of
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`transfer functions) before and during prosecution. Dkt. 61, ¶¶ 149-150, 152. Meanwhile, Dr.
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`Burnett’s attorney was arguing during prosecution that prior art relied on by the Examiner did
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`not disclose transfer functions. Id., ¶¶ 143-144. As noted above, these allegations are sufficient
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`for pleading Dr. Burnett’s intent to deceive the USPTO. Eon Corp., 2011 WL 13134896, at *5-6.
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`10
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`Nevertheless, should the Court find that additional details are required, Samsung respectfully
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`requests leave to amend its pleading as described below.
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`2.
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`Samsung Pled Facts Sufficient to Show the “How” and “Why” of
`Inequitable Conduct in Support of Its Counterclaim
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`Jawbone argues that Samsung fails to plead the “how” and “why” of inequitable conduct
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`because Samsung has not demonstrated that Van Compernolle was not cumulative. See Dkt. 69
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`at 7. In particular, Jawbone argues that “Samsung does not make any effort to show that transfer
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`functions were not in the record before the Examiner.” Id.
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`This is wrong. Samsung clearly pled that Van Compernolle disclosed transfer function
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`limitations that the applicants argued were not disclosed in prior art relied on by the Examiner.
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`Dkt. 61, ¶¶ 143-144. Thus, contrary to Jawbone’s assertion, Samsung’s pleading demonstrates
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`that Van Compernolle is not cumulative of the prior art before the Examiner. Nevertheless,
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`should the Court find that additional details are required, Samsung respectfully requests leave to
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`amend its pleading to provide additional citations regarding the prosecution of the 207 Patent
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`Application, the prior art relied upon by the Examiner, and the applicants’ arguments that such
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`prior art did not disclose transfer function limitations.
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`C.
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`Jawbone’s Motion to Strike Samsung’s Twenty-Fourth Affirmative Defense
`(Inequitable Conduct) Should Be Denied
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`Jawbone also contends that Samsung’s inequitable conduct affirmative defense should be
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`struck. Dkt. 69 at 8. For the same reasons described with respect to Samsung’s inequitable
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`conduct counterclaim, Jawbone’s motion should be denied. Indeed, where a party seeks to
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`dismiss an inequitable conduct counterclaim and at the same time seeks to strike an inequitable
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`conduct affirmative defense based on the same facts, the counterclaim/affirmative defense stand
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`or fall together. See SecurityProfiling, 2017 WL 5150682, at *4 n.5; Invensys Sys., Inc. v.
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`Emerson Elec. Co., No. 6:12-cv-00799-LED, Dkt. 179 at 5 (E.D. Tex. July 9, 2014) (Ex. 6).
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`11
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`D.
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`Jawbone’s Motion to Dismiss Samsung’s Allegations Based on 28 Other
`Prior Art References Is Moot
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`Jawbone also contends that Samsung’s allegations regarding 28 other prior art references
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`(aside from Van Compernolle) should be dismissed. Dkt. 69 at 8. Samsung agrees to withdraw
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`the language in its pleading regarding the 28 other references. Further, if the Court finds that
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`amendment is required, Samsung’s proposed amended pleading (see Section V) removes the
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`allegations regarding the 28 other references. Therefore, Jawbone’s argument is moot.
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`E.
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`Jawbone’s Motion to Dismiss Samsung’s Allegations of Infectious
`Unenforceability Should Be Denied
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`Jawbone also requests that the Court dismiss Samsung’s allegations of infectious
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`unenforceability regarding all of the asserted patents. Dkt. 69 at 8. Specifically, Jawbone argues
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`that “the infectious unenforceability counterclaim should fall with the inequitable conduct
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`counterclaim” regarding the prosecution of the 207 Patent Application. Id. Jawbone does not
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`present any other reasons why the infectious unenforceability counterclaim should be dismissed.
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`Therefore, because Samsung adequately pled inequitable conduct regarding the 207 Patent
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`Application, the Court should deny Jawbone’s request to dismiss the infectious unenforceability
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`counterclaim.
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`V.
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`IN THE ALTERNATIVE, SAMSUNG REQUESTS LEAVE TO AMEND ITS
`ANSWER TO INCLUDE ADDITIONAL FACTS SUPPORTING ITS
`INEQUITABLE CONDUCT COUNTERCLAIM AND AFFIRMATIVE DEFENSE
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`As explained above, Samsung has pled its inequitable conduct counterclaim and
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`affirmative defense with the requisite particularity. Nevertheless, to the extent that the Court
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`finds that more particularity is required regarding Dr. Burnett’s knowledge of Van Compernolle,
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`its material and non-cumulative nature, and Dr. Burnett’s intent to deceive the USPTO, Samsung
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`alternatively moves for leave to file an amended answer that includes additional details
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`supporting Samsung’s inequitable conduct counterclaim.
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`12
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`A.
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`Samsung Has Good Cause Under Fed R. Civ. P. 16(b)(4) for its Amended
`Pleading
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`Rule 16(b)(4) “governs a party’s request to amend its pleading after the deadline to
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`amend passes.” OnPoint Sys., LLC v. Protect Animals With Satellites, LLC, No. 4:20-CV-657,
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`2021 WL 3140562, at *1 (E.D. Tex. July 26, 2021). “Rule 16(b)(4) provides that the Court’s
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`scheduling order may be modified only for good cause and with the judge’s consent.” Id. (quotes
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`omitted). “In determining whether good cause exists, courts consider a four-part test: ‘(1) the
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`explanation for the failure to [timely move for leave to amend]; (2) the importance of the
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`[amendment]; (3) potential prejudice in allowing the [amendment]; and (4) the availability of a
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`continuance to cure such prejudice.’” Id. (quoting S&W Enterprises, L.L.C. v. SouthTrust Bank
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`of Alabama, NA, 315 F.3d 533, 536 (5th Cir. 2003)).
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`Samsung has good cause for its proposed amended pleading under Rule 16(b)(4). First,
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`Samsung previously timely moved to amend its pleading to assert its inequitable conduct
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`counterclaim and affirmative defense, and the facts supporting the proposed amendment have
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`long been known to Jawbone. The proposed amendment simply adds citations and details
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`regarding the allegations in Samsung’s timely pleading. These circumstances demonstrate
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`that Samsung’s request for leave to amend at this time is appropriate. Further, Courts in this
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`District have previously not given this factor undue weight where the other factors indicate that
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`there is good cause for amendment. See, e.g., Script Sec. Sols., LLC v. Amazon.com, Inc., No.
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`2:15-CV-1030-WCB, 2016 WL 5916627, at *2-*4 (E.D. Tex. Oct. 11, 2016) (granting defendant
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`leave to amend its pleading nearly six months after the pleading deadline even though the Court
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`found that defendant “should not have waited nearly three months” after receiving notice of the
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`facts underlying the defenses); SimpleAir, Inc. v. AWS Convergence Techs., No. 2:09-CV-289,
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`2012 WL 12978325, at *2-*4 (E.D. Tex. Jan. 31, 2012) (granting defendant leave to amend its
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`13
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`pleading six weeks after the pleading deadline, even though the Court found that plaintiff had
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`produced the relevant documents supporting the defenses “well before the pleading deadline”).
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`Second, should the Court find that additional details are required in Samsung’s pleading, the
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`amended pleading is critically important because Samsung’s inequitable counterclaim and
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`affirmative defense could demonstrate that Jawbone should be barred from asserting its claims in
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`this litigation. See, e.g., Script Sec. Sols., 2016 WL 5916627, at *3 (finding that this factor
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`weighed in favor of amendment where defense was “an important one that bear[ed] directly on
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`the merits of the dispute between