Opinion
01 Civ. 3578 (RWS).
November 22, 2006
KAPLAN GILMAN, Attorneys for Plaintiff, Woodbridge, NJ, By: JEFFREY I. KAPLAN, ESQ., Of Counsel.
ARENT FOX, Attorney for Defendant, New York, NY, By: STEVEN KIMELMAN, ESQ., DAVID N. WYNN, ESQ., Of Counsel.
ARENT FOX, Attorney for Defendant, Washington, DC, By: JAMES H. HULME, ESQ., JANINE A. CARLAN, ESQ., JOHN K. HSU, ESQ., Of Counsel.
OPINION
In this patent infringement action, both Defendant Lansa, Inc. ("Lansa") and Plaintiff ResQNet.com, Inc. ("ResQNet") have moved pursuant to Rule 56, Fed.R.Civ.P., for partial summary judgment on the issue of ResQNet's alleged inequitable conduct in the prosecution of U.S. Patent No. 6,295,075 ("the '075 Patent"). For the reasons set forth below, the motion of ResQNet is granted, and the motion of Lansa is denied.
Prior Proceedings
The relevant procedural history of this case was set forth in detail in the opinions of January 13, 2005, ResQNet.com, Inc. v. Lansa, Inc., 382 F. Supp. 2d 424 (S.D.N.Y. 2005) ("ResQNet IV"), and September 15, 2005, ResQNet.com, Inc. v. Lansa, Inc., No. 01 Civ. 3578 (RWS), 2005 WL 2241524 (S.D.N.Y. Sept. 15, 2005) ("ResQNet VI"), familiarity with which is assumed. In brief, ResQNet originally alleged that Lansa infringed five patents: U.S. Patent Nos. 5,530,961 (the "'961 Patent"), 5,792,659 (the "'659 Patent"), 5,812,127 (the "'127 Patent"), 5,831,608 (the "'608 Patent"), and the '075 Patent. Only claims relating to the `075 and `608 patents remain at issue.
The Court previously granted Lansa's motion for leave to amend its answer in order to assert an affirmative defense of inequitable conduct in the prosecution of the `075 Patent. ResQNet IV, 382 F. Supp. 2d at 448-52. Lansa's amended answer, filed on February 1, 2005, alleges that during the prosecution of the '075 Patent, ResQNet and/or its attorney knowingly withheld material prior art from the patent examiner. (Def.'s Second Am. Answer at 11.)
The instant motions were heard and marked fully submitted on January 18, 2006.
The Facts
The facts relating to the dispute over inequitable conduct are gleaned principally through the prosecution history of the '075 patent and the discovery process in this litigation. While intent may be in dispute, the material facts are not, except as noted below.
All of the ResQNet patents at issue in this litigation relate to screen recognition and terminal emulation — processes that enable a local personal computer (PC) to exchange information with a remote mainframe computer and display that information for users in graphical format. As the Federal Circuit explained, by way of general background,
Mainframe computers permit multiple users to simultaneously access one central computer. Before the widespread use of PCs, each user would connect to the mainframe using a so-called "dumb terminal." . . . A dumb terminal, as its name implies, did not process or reformat the data received from the mainframe. Rather, the dumb terminal simply displayed the information from the mainframe. Symmetrically, the dumb terminal sent all data entry back to the mainframe for processing. Because a dumb terminal's monitor generally was a monochromatic green, the display was called a "green screen."ResQNet.com, Inc. v. Lansa, Inc., 346 F.3d 1374, 1375-76 (Fed. Cir. 2003) ("ResQNet II"). As technology developed, it became popular to replace the dumb terminals with PCs, which are capable of running their own software. In many cases, however, it remains important to allow users of PCs to utilize software on the legacy mainframe. From the user's perspective, rather than have the PC mimic the appearance of a dumb terminal, "it is desirable to display information from the legacy mainframe on the PC in a graphical user interface (`GUI') format [that] includes icons, windows, help menus, and other features. . . ." ResQNet.com, Inc. v. Lansa, Inc., No. 01 Civ. 3578 (RWS), 2002 WL 31002811 (S.D.N.Y. Sept. 5, 2002) ("ResQNet I"). To utilize the software on the mainframe, however, the PC must send and receive information "only in the manner understood by the mainframe, i.e., as if a dumb terminal were connected to the mainframe."ResQNet II, 346 F.3d at 1375-76. To this end, screen-recognition and terminal-emulation software "translates between the GUI world of the PC and the plain text, green-screen world of the legacy mainframe system." ResQNet I, 2002 WL 31002811, at *1.
As the Federal Circuit noted, "[i]n a prior art technique of screen recognition, the mainframe would send a screen identification (screen ID), along with other information, to the local PC. Once it received the screen ID, the PC would display the information in a predetermined manner. If the screen ID changed, the manner of presentation would also change." ResQNet II, 346 F.3d at 1376. To avoid problems associated with having the mainframe send the screen ID to the local PC, the `961 and `608 Patents relate to alternate methods for identifying information sent from a mainframe and determining the proper manner of presentation. In each case, "the structure is an algorithm for analyzing the downloaded information to generate a screen ID." Id. at 1382.
Claim 1 of the `075 Patent "is a pure method claim," Id. at 1383, and encompasses:
In general, a method claim not tied to a particular device "must be interpreted to cover any process that performs the method steps." Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1312 (Fed. Cir. 2002).
The method of communicating between a host computer [i.e., the mainframe] and a remote terminal [i.e., a local PC] over a data network comprising steps of:
establishing a first communication session between said terminal and a communications server via a first communications channel;
downloading, from said server to said terminal, communications software for communicating between said terminal and said host and a plurality of specific screen identifying information;
utilizing said communications software to implement a second communications session between said terminal and said host via a second communications channel independent of said server;
receiving a screen from said host to said terminal;
if said received screen matches one of the plurality of specific screen identifying information, displaying a customized GUI screen; and
if said received screen does not match one of the plurality of specific screen identifying information, displaying a default GUI screen.
(`075 Patent, ¶ 1, at col. 4-5.)
Under the method specified by claim 1 of the '075 patent, the PC employs an algorithm — that is not limited to but may be of the type described in the '961 Patent — to generate a unique screen ID for each screen of information downloaded from the mainframe. The generated screen ID is then compared with a table of screen IDs that has been previously downloaded from a communications server in order to determine the appropriate customized GUI screen. If the table downloaded from the communications server does not contain a match for the generated screen ID, a default GUI screen is displayed. (`075 Patent, col. 3-4.)
The '075 patent application was filed on July 10, 1997, with one independent claim that did not contain any limitation regarding screen recognition or GUI technology:
1. The method of communicating between a host computer and a remote terminal over a data network comprising steps of:
establishing a first communication session between said terminal and a communications server;
downloading, from said server to said terminal, communications software for communicating between said terminal and said host;
utilizing said communications software to implement a second communications session between said terminal and said host.
ResQNet distinguished its alleged invention from the prior art by characterizing its invention as a three-way protocol in which a local terminal communicated with a remote server and also, separately, a host computer. In a petition to the PTO dated July 10, 1997, ResQNet stated that:
There is no suggestion [in the prior art] to use different communications sessions, one between a server and the local NC terminal, and a second between the NC terminal and the host, in order to implement communications software between the host and the terminal, and in order to display downloaded screens of information.
* * *
[T]he three way protocol described above and recited in all of applicants' claims is not disclosed or even remotely suggested.
(Carlan Aff. Ex. A, at ZEP 12853.)
The patent examiner rejected claim 1 as anticipated by U.S. Patent No. 5,754,830 to Butts et al. ("Butts"). In response, ResQNet further argued that its application "relates to a technique of utilizing a remote server in order to assist in presenting a graphical user interface (GUI) to a user." (Id. at ZEP 12872.)
After two separate amendments to claim 1, ResQNet amended claim 1 for a third time to include screen recognition, GUI, and default GUI:
1. (Thrice Amended) The method of communicating between a host computer and a remote terminal over a data network comprising steps of
establishing a first communication session between said terminal and a communications server via a first communications channel;
downloading, from said server to said terminal, communications software for communicating between said terminal and said host and a plurality of specific screen identifying information; [and]
utilizing said communications software to implement a second communications session between said terminal and said host via a second communications channel independent of said server; [.]
receiving a screen from said host to said terminal;
if said received screen matches one of the plurality of specific screen identifying information, displaying a customized GUI screen; and
if said received screen does not match one of the plurality of specific screen identifying information, displaying a default GUI screen.
Underlined text indicates additions to the initial claim 1, while bracketed text indicates deletions.
ResQNet explained that the amendment "added limitations directed to a selection of a GUI screen that may be customized in the circumstance that the screen received from the host matches one of a plurality of screen identifying information, or, alternatively may be a default GUI screen if the received screen from the host does not so match." (Id. at ZEP 12922-23.) ResQNet further explained that it "believed that this automated selection between a custom GUI and a default GUI is not known to exist in the cited prior art." (Id. at ZEP 12936.)
After ResQNet's third amendment to the claims, the patent examiner allowed the claims but requested that the title be amended to reflect the claimed invention, changing the title from "Configurable Terminal Capable of Communicating with Various Remote Computers" to "A Configurable Remote Terminal Determines Whether to Display Customized or Default GUI Screen in According to [sic] Specific Screen Identifying Information." (Id. at ZEP 12936.) The '075 patent issued on September 25, 2001.
In addition to Butts, material before the patent examiner during the prosecution of the `075 Patent included the `659 Patent, which is listed on the cover of the `075 Patent as having been cited. The `659 Patent describes displaying a GUI and explains in detail that screen IDs are used to identify the screens, and that the identified screen is turned into a customized screen with specified layout, colors, and context sensitive help. ('659 patent, col. 3).
The `075 Patent also acknowledged that displaying a GUI was prior art. The '075 Patent's background section describes the admitted prior art as follows:
U.S. Pat. No. 5,530,961 . . . describes a technique for identifying these green screens and presenting them in a graphical user interface (GUI) format . . . While the '961 patent and '583 application describe a technique which is a great improvement over the prior art, there is a potential storage and overhead problem presented by such [prior] arrangements.
(`075 Patent, col. 1, lines 45-67.) The '961 Patent was cited and considered by the examiner of the `075 Patent. (Kaplan Decl. of Dec. 1, 2005, Ex. B.)
Lansa's claim of inequitable conduct is based upon ResQNet's failure to submit two items of prior art, namely U.S. Patent No. 5,179,700 ("Aihara") and the commercially available software program Flashpoint. According to Lansa, Aihara discloses the means for receiving information to be displayed on a screen, the means for processing the information to generate a screen ID, and the means for displaying the information based on the generated screen ID. During the prosecution of the `961 Patent, the examiner rejected certain of the originally filed claims in light of Aihara, and allowed the claims only after ResQNet amended them.
According to Lansa, Flashpoint contains each and every element of the '075 patent. In a 1991 document entitled "Flashpoint: The First Step to Cooperative Processing," the developer of the software described Flashpoint as a "graphical user interface [GUI] development tool which dramatically reduces the time and cost of creating PC-based graphical user interfaces to existing IBM mainframe applications." (Carlan Aff. Ex. C, at Bates 1347.) Flashpoint shows a screen identification technology that results in GUI, and also default GUI. Flashpoint "automatically captures and parses host screens, analyzing attribute bytes to determine field position, type, and length," and can "identify screens as unique." (Id. at Bates 1352.) When Flashpoint receives an unidentified screen from the host, "it simply changes the color and fonts to match the graphical defaults defined in the rest of the interface." (Id.)
Concerning the three-way communication element required by claim 1 of the '075 patent, Lansa asserts that Flashpoint can reside on a remote server and can be downloaded from a server to a terminal. According to ResQNet, the Flashpoint documents show that Flashpoint does not operate on a server, but must be installed from disks. A Flashpoint tutorial published in 1993 assumes "that you have installed Flashpoint. If not, follow the instructions printed on . . . the Flashpoint installation disks. . . ." (Kaplan Aff. Ex. F, at Bates 1366.) The tutorial also notes that "[i]t is assumed that you have a connection to a host system." (Id.) According to ResQNet, there is no disclosure in Flashpoint of a comparison to information previously downloaded from a server to provide automatic selection between customized and default GUIs, as required by claim 1 of the `075 Patent.
ResQNet submitted both of the aforementioned Flashpoint references to the PTO during the reexamination of the '961 Patent in 2001 and 2002. The patent examiner for the '961 reexamination rejected the existing '961 Patent claims, citing Flashpoint and another reference. ResQNet amended the claims of the '961 Patent during the reexamination by adding limitations in order to obtain allowance:
1. (Amended) A user terminal for connecting to a remote host comprising:
means for receiving information to be displayed as a first image on a screen;
means for processing said information to generate a screen identification ("ID") from said first image, said ID being generated as a function of the number, location, and length of each field in said first image said ID uniquely identifying said first image, said means for processing further including means for determining the value of a particular field chosen by a user to identify the screen as unique; and
means for displaying said information on a user display as a second image having display parameters associated with said stored ID, said second image being determined based upon the generated ID.
2. . . . means for comparing said generated ID to a list of stored IDs, and for selecting display parameters associated with a stored ID which matches said generated ID, and
means for displaying said information on a user display as a second image having display parameters associated with said stored ID, said second image being determined based upon the generated ID. . . .
(Carlan Aff. Ex. F, Amendment at 6-7.)
Underlined text indicates additions to the initial claims.
Todres Yampel, one of the two named inventors on the `075 Patent, testified at his deposition that he first heard of Flashpoint in the early 1990s. (Kaplan Decl. of Dec. 1, 2005, Ex. A, Yampel Dep. at 88.) Lansa showed Yampel the document entitled Flashpoint: The First Step to Cooperative Processing, and then asked him if the program ran on a server. Yampel, who noted that he had never seen the document before (id. at 89), stated, "I think it can." (Id. at 93-94.) Yampel further testified that he didn't recall whether he had ever seen any Flashpoint manuals (id. at 88), had never seen the Flashpoint software product at any time (id. at 89) and did not know any details about Flashpoint, other than that it is some kind of "attempt to customize screens." (Id.)
Jeffrey Kaplan, counsel for ResQNet, has stated that he never heard of Flashpoint until after the '075 patent issued. (Kaplan Decl. of Dec. 1, 2005, ¶ 9.) The Summary Judgment Standard
Pursuant to Rule 56 of the Federal Rules of Civil Procedure, summary judgment is appropriate where there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). The moving party has the initial burden of showing that there are no material facts in dispute, Adickes v. S.H. Kress Co., 398 U.S. 144, 157 (1970), and can discharge this burden by demonstrating that there is an absence of evidence to support the nonmoving party's case.Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). The nonmoving party then must come forward with "specific facts showing that there is a genuine issue for trial," Fed.R.Civ.P. 56(e), as to every element "essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex, 477 U.S. at 322.
The Court "must resolve all ambiguities and draw all reasonable inferences in favor of the party defending against the motion."Lopez v. S.B. Thomas, Inc., 831 F.2d 1184, 1187 (2d Cir. 1987);Eastway Constr. Corp. v. New York, 762 F.2d 243, 249 (2d Cir. 1985). However, the Court must inquire whether "there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. . . ." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). Thus, where "substantive law compels a heightened evidentiary scrutiny, a court must apply such scrutiny at the summary judgment stage," Helmsley-Spear, Inc. v. Westdeutsche Landesbank, 692 F. Supp. 194, 203 (S.D.N.Y. 1988) (citing Anderson, 477 U.S. at 255), and grant summary judgment where the nonmovant's evidence is not sufficiently probative. See Anderson at 249-50.
The Standard For Inequitable Conduct
"To hold a patent unenforceable for inequitable conduct, a court must find, by clear and convincing evidence, that the applicant omitted or misrepresented material facts with the intention of misleading or deceiving the patent examiner." Dayco Prods., Inc. v. Total Containment, Inc., 32 F.3d 1358 (Fed. Cir. 2003) (citing Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1261 (Fed. Cir. 2001); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1312 (Fed. Cir. 2000); Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1048 (Fed. Cir. 1995)). Where, as here, it is alleged that the applicant failed to disclose material information to the patent examiner, the party alleging inequitable conduct "must offer clear and convincing proof of: (1) prior art or information that is material; (2) knowledge chargeable to applicant of that prior art or information and of its materiality; and (3) failure of the applicant to disclose the art or information resulting from an intent to mislead the PTO."FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415 (Fed. Cir. 1987).
The Federal Circuit has explained that "to survive summary judgment, [the non-moving party must] introduce evidence from which a trier of fact could find materiality and intent by clear and convincing evidence." Abbott Labs., v. TorPharm, Inc., 300 F.3d 1367, 1379 (Fed. Cir. 2002). "Both of those distinct elements must be shown by clear and convincing evidence."Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1359 (Fed. Cir. 2003).
The Code of Federal Regulations provides that:
[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) opposing an argument of unpatentability relied on by the Office, or
(ii) asserting an argument of patentability.37 C.F.R. § 1.56(b). Material references may include any information that a reasonable patent examiner would find important in deciding whether the proposed claims are patentable.Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1234, 1236 (Fed. Cir. 2003). Information that is merely cumulative of references already before the examiner is not material. Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1378 (Fed. Cir. 2001).
In addition to demonstrating materiality, a party alleging inequitable conduct must also show the applicants' intent to deceive the PTO. See Li Second Family Ltd. P'ship v. Toshiba Corp., 231 F.3d 1373, 1381 (Fed. Cir. 2000). "Intent to deceive cannot be inferred solely from the fact that information was not disclosed; there must be a factual basis for a finding of deceptive intent." Hebert v. Lisle Corp., 99 F.3d 1109, 1116 (Fed. Cir. 1996) (citing Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815, 822 (Fed. Cir. 1992)). Because intent can rarely be proven by direct evidence, "[i]t is most often proven by `a showing of acts the natural consequences of which are presumably intended by the actor.'" Merck Co. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1422 (Fed. Cir. 1989) (quoting Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1151 (Fed. Cir. 1983)).
The Federal Circuit has noted the unfortunate proliferation of charges of inequitable conduct:
The habit of charging inequitable conduct in almost every major patent case has become an absolute plague. Reputable lawyers seem to feel compelled to make the charge against other reputable lawyers on the slenderest grounds, to represent their client's interests adequately, perhaps. They get anywhere with the accusation in but a small percentage of cases, but such charges are not inconsequential on that account . . . A patent litigant should be made to feel that an unsupported charge of inequitable conduct in the Patent Office is a negative contribution to the rightful administration of justice.Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1419 (Fed. Cir. 1988); see also Hayes Microcomputer Prods., Inc. v. Ven-Tel, Inc., 982 F.2d 1527, 1546 (Fed. Cir. 1992) (noting that the Federal Circuit "deplore[s] such unfounded accusations of inequitable conduct as occurred here"); E.I. Dupont De Nemours Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1439 (Fed. Cir. 1988) ("Fraud in the PTO has been overplayed, is appearing in nearly every patent suit, and is cluttering up the patent system." (quoting Kimberly-Clark v. Johnson Johnson, 745 F.2d 1437, 1454 (Fed. Cir. 1984)).
In cases where the allegedly concealed prior art is not material and/or is merely cumulative, the Federal Circuit frequently has dismissed charges of inequitable conduct. See, e.g., In re Harita, 847 F.2d 801 (Fed. Cir. 1988) (reversing finding of inequitable conduct, holding no inequitable conduct as a matter of law); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415 (Fed. Cir. 1987) (noting the extremely high standard required to show inequitable conduct, which is not "a magic incantation to be asserted against every patentee"); Halliburton Co. v. Schlumberger Tech. Corp., 925 F.2d 1435 (Fed. Cir. 1991) (holding that no balancing of materiality and intent necessary where references are cumulative, and reversing as abuse of discretion district court's finding of inequitable conduct because prior art withheld was cumulative); CFMT, Inc., v. Yieldup Int'l Corp., 349 F.3d 1333 (Fed. Cir. 2003) (reversing trial court finding of inequitable conduct); Engel Indus., Inc. v. The Lockformer Co., 946 F.2d 1528 (Fed. Cir. 1991) (reversing inequitable conduct holding as unsupportable as a matter of law because reference was cumulative); Unidynamics Corp. v. Automatic Prods. Int'l, 157 F.3d 1311 (Fed. Cir. 1998) (affirming district court's dismissal on summary judgment of inequitable conduct claims because prior art allegedly withheld was cumulative); LNP Eng'g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347 (Fed. Cir. 2002) (noting no duty to disclose cumulative prior art).
District courts also frequently have dismissed charges of inequitable conduct at the summary judgment stage. See, e.g., Tenneco Auto. Operating Co. v. Visteon Corp., 375 F. Supp. 2d 366 (D. Del. 2005); Fuji Photo Film v. Jazz Photo Corp., 173 F. Supp. 2d 268 (D.N.J. 2001); Suncast Corp. v. Avon Plastics Inc., No. 97C178, 1999 WL 782080 (N.D. Ill. Sept. 28, 1999); TRW Fin. Sys., Inc. v. Unisys Corp., 835 F. Supp. 994 (E.D. Mich. 1993).
Of those cases granting summary judgment on the issue of inequitable conduct, many were reversed on appeal. In one of the few cases where a summary judgment finding of inequitable conduct was upheld, the patent owner had submitted a false declaration and not disclosed its own activities and responded to the motion by merely submitting a conclusory statement that it did not intend to deceive the patent office. Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1190-93 (Fed. Cir. 1993). The Federal Circuit has limited that decision to the specific facts at issue there. In doing so, the Federal Circuit has emphasized the high standard required to prove inequitable conduct, that both materiality and intent are subject to a clear and convincing burden, and that inequitable conduct is almost never established at the summary judgment stage. See, e.g., Monsanto, 363 F.3d at 1240-42; Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1345-46 (Fed. Cir. 2003); Fiskars, Inc. v. Hunt Mfg. Co., et al., 221 F.3d 1318, 1327 (Fed. Cir. 2000) (all rejecting attempts to extend Paragon).
The ResQNet Motion For Summary Judgment Is Granted
ResQNet has carried its burden on summary judgment as to each item of prior art alleged to have been intentionally withheld from the patent examiner during the prosecution of the `075 Patent. In order to withstand the motion for summary judgment, Lansa must offer evidence sufficient for the Court to find by a clear and convincing standard: "(1) prior art or information that is material; (2) knowledge chargeable to applicant of that prior art or information and of its materiality; and (3) failure of the applicant to disclose the art or information resulting from an intent to mislead the PTO." FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415 (Fed. Cir. 1987). As set forth below, ResQNet properly has pointed out the absence of evidence to support such a finding. Accordingly, summary judgment is appropriate.
Lansa Has Not Shown That the Aihara Reference Is Material
ResQNet has carried its burden of showing an absence of evidence to establish that the Aihara reference was material and not cumulative of prior art references already before the patent examiner. As noted above, the '659 Patent was considered by the '075 Patent examiner, and is listed on the cover of the '075 Patent as having been cited. It describes what Lansa has claimed was concealed in Aihara, that is "displaying a graphical user interface." More specifically, the '659 patent explains in detail that screen IDs are used to identify the screens, and that the identified screen is turned into a customized screen with colors, context sensitive help, etc. (i.e., a graphical user interface (GUI) screen). (Kaplan Decl. of Nov. 16, 2005, Ex. F, '659 patent, col. 3). Moreover, the '075 patent itself acknowledged that displaying a GUI was prior art.
During deposition, counsel for ResQNet read to Lansa's technical expert the allegation Lansa made in its Memorandum in Support of the Motion to Amend the Complaint about the teaching of the concealed prior art:
First, applicant and their attorney failed to disclose U.S. Patent No. 5,179,700 ("the Aihara reference") to the Examiner of the '075 patent. Lansa's expert, Mr. C.H.D. Gibson, explains in his July 20, 2004 expert report in reference to a claim element of the '075 patent, that displaying a graphical user interface (GUI) screen is described in the Aihara reference.
Lansa's expert testified as follows:
Q: Is the idea of displaying a graphical user interface disclosed in the Aihara reference, as you recall?
A: Yes, sir.
Q: And is the idea of displaying a graphical user interface disclosed in the '961 patent, as you recall?
A: Yes.
Q: And is the idea of displaying a graphical user interface disclosed in the '659 patent, as you recall?
A: Yes.
(Kaplan Decl. of Nov. 16, 2005, Ex. B, Gibson Dep. Tr. at 45.) The Lansa expert thus agreed that the allegedly "concealed" information is contained within a reference that was cited and considered by the patent examiner. Even if the '659 Patent is not prior art to the '075 Patent, the '961 Patent was cited in the '075 Patent file, and the '961 and '659 Patents have substantially identical specifications, with all the same teachings and text.
The allegation that the Aihara reference is material merely because it teaches "displaying a graphical user interface screen" does not support a claim of inequitable conduct because: (1) the '075 Patent applicants disclosed a prior art reference that showed displaying a graphical user interface screen, (2) the '075 Patent applicants advised the patent examiner in the '075 Patent application that such systems were old prior art, and (3) the Lansa technical expert agreed that the only specific teaching that Lansa has specifically alleged was material, namely "displaying a graphical user interface (GUI) screen," is described in the prior art considered by the patent examiner.
Lansa also argues that the citation of Aihara in the '961 Patent reexamination and the '608 Patent prove Aihara was per se material because the '961, '608, and '075 Patents all relate to "similar technology." This argument has been rejected by the Federal Circuit. See Kimberly-Clark, 745 F.2d 1437 (Fed. Cir. 1984). If materiality were established because the Aihara reference relates to "similar technology, namely screen recognition and terminal emulation," then ResQNet has established that Aihara was cumulative for the same reason, since the examiner had before him several prior art references, including the `961 Patent, that related to "similar technology, namely screen recognition and terminal emulation."
Because the allegedly concealed prior art teaching is merely cumulative of references already before the PTO, it cannot be material, and thus no inequitable conduct can have occurred based on any alleged concealment of Aihara. Engel Indus., Inc., 946 F.2d at 1534 (Fed. Cir. 1991) (reversing holding of inequitable conduct entered after trial and holding that "[w]hen a reference is cumulative of prior art that was before the examiner, the element of materiality is not established, and inequitable conduct cannot lie."); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415 (Fed. Cir. 1987) (noting that prior art or information is not material if "less pertinent than or merely cumulative with prior art or information cited to or by the PTO"); Kimberly-Clark Corp. v. Johnson Johnson, 745 F.2d 1437, 1456 (Fed. Cir. 1984), (holding no inequitable conduct when, as here, art discussed in the background of the invention section of the patent application and admitted as prior art renders withheld prior art cumulative).
Lansa Has Not Shown That Flashpoint Is Material
Lansa has contended that Flashpoint should have been submitted to the patent examiner as material prior art because it disclosed the automated selection between customized and default GUIs. (Lansa Mem. Supp. at 13-14.)
Claim 1 of the '075 Patent is directed to a three-way host-server-terminal architecture, and the automated selection between customized and default GUIs in such an environment. A review of the limitations of claim 1 show that the claim requires a comparison of the screen downloaded from the host during the second communications session with the specific screen-identifying information downloaded from the server during the first communications session. This comparison then results in the generation of customized GUIs or default GUIs depending upon whether there is a match. The specification notes, in relevant part:
Download screen ID 203 downloads the table of information from server 103 to terminal 104 for identifying a particular screen which has been downloaded from host 102. The connection from NC terminal 104 to host 102 is established at block 204 . . . If the list of screen IDs previously downloaded at block 203 does not contain the ID generated, then a default GUI screen is presented.
(Kaplan Decl. of Dec. 1, 2005, Ex. D, originally filed specification of '075 Patent application, at 7-8 and fig. 2.)
The Flashpoint documentation does not show such an automatic selection between default and customized GUIs by comparing the host screen to screen-identifying information previously downloaded from the server, as described above. The Flashpoint Tutorial document explains that Flashpoint should be installed from a disk, not a server, and assumes a prior communications connection to a host computer. The only evidence Lansa has offered to show that Flashpoint runs on a server is Yampel's deposition testimony that he thought it could, an answer based on his contemporaneous review of a Flashpoint document that he testified he had never seen before. This evidence is not sufficient for a reasonable person to conclude by a clear and convincing standard that Flashpoint is material. Lansa Has Not Shown Intent to Mislead or Deceive
Even if it could be shown that Flashpoint was material to the `075 Patent, summary judgment would still be appropriate because Lansa has failed to show "knowledge chargeable to [the] applicant of that prior art or information and of its materiality, and . . . failure of the applicant to disclose the art or information resulting from an intent to mislead the PTO."Manitowoc, 835 F.2d at 1415.
It is undisputed that Yampel, one of the named inventors on the `075 Patent, had heard of Flashpoint prior to the `075 Patent application. However, Yampel also has declared that prior to his deposition he had never seen the Flashpoint documents that were presented to him at the deposition (Yampel Decl. ¶ 6), that his familiarity was limited to "a passing mention of Flashpoint at a tradeshow years [before the `075 Patent application]" (id. ¶ 6), and that he "never at any time had any idea . . . as to how the internals of Flashpoint work, how it processes default GUIs, if at all, how it is installed, where it is hosted, what if any algorithms it uses, etc." (Id. ¶ 7.) Lansa has presented no evidence to rebut this testimony.
It also is undisputed that two Flashpoint documents were submitted to the PTO by ResQNet during the re-examination of the `961 Patent in late 2001 and early 2002, but Lansa has failed to bring forth any evidence to counter the declaration of Kaplan, counsel for ResQNet, that he never heard of Flashpoint until after the '075 patent issued on September 25, 2001.
On the record before the Court, there is no evidence that ResQNet knew more about Flashpoint at the time of the `075 Patent application than its name and the most basic aspects of its function. The Federal Circuit addressed a similar situation inLife Technologies, Inc. v. Clontech Laboratories, 224 F.3d 1320 (Fed. Cir. 2000), where the trial court entered a finding of inequitable conduct based upon the alleged failure to disclose the work of another. In reversing, the Federal Circuit explained that:
Knowledge of [the] details [of the work of rival researcher Goff] would have been required for the Examiner to consider whether Goff was a prior inventor. Because the inventors lacked such crucial information, the incomplete knowledge that they did have regarding Goff would not have been material to a reasonable examiner. . . . They had heard from colleagues that Goff presented results similar to theirs, but the record does not show that the inventors learned any additional details regarding Goff's work. Thus, the inventors could not have revealed anything to the Examiner regarding this presentation beyond conjecture and a vague report of similar results. Such incomplete information would be singularly unhelpful to the Examiner in determining whether the invention was patentable, and consequently, would not be material.224 F.3d at 1327.
In Life Technologies, the trial court's finding of inequitable conduct had been entered after a full bench trial on the merits at which the trial judge had been given the opportunity to evaluate credibility, and sort out conflicting testimony. Notwithstanding, the Federal Circuit found that regardless of anything that occurred at trial, mere passing knowledge that other similar work had been done, without proof of specific knowledge of the specific item in the claim invention alleged as material, could not constitute inequitable conduct and reversal was appropriate, even under the strict "abuse of discretion" standard. Id.
In Hartness International, Inc. v. Simplimatic Engineering Co., 819 F.2d 1100 (Fed. Cir. 1987) the Federal Circuit also affirmed the trial court's rejection of a claim of inequitable conduct because the patent owner had only generally heard of some prior art, and did not know the specific details alleged to be material.
Because a reasonable factfinder could not conclude on the record before the Court that ResQNet knew the specific details alleged to be material in this case, summary judgment should be granted as to the defense of inequitable conduct with respect to Flashpoint.
Finally, Lansa has argued that it properly pled the defense of inequitable conduct with respect to both Aihara and Flashpoint, "may fully proceed with the claim in this case, and would not be limited to only the assertions in its pleadings." (Lansa Mem. Opp'n at 7-9.) However, a party cannot defeat a motion for summary judgment by urging that it pled its defense correctly. At this stage, Lansa is required to come forward with sufficient evidence to enable a reasonable factfinder to return a verdict in its favor on the basis of a clear and convincing standard. Anderson, 477 U.S. at 249. Because it has failed to do so with respect to both Aihara and Flashpoint, summary judgment on the claim of inequitable conduct is appropriate.
The Lansa Motion For Summary Judgment Is Denied
The Lansa motion for summary judgment is the obverse of ResQNet's motion, and the facts and authorities are equally relevant. Because it has been determined that ResQNet's motion should be granted, Lansa's motion must be denied.
Conclusion
For the reasons set forth above, the motion of ResQNet for summary judgment on the issue of inequitable conduct is granted and the motion of Lansa for summary judgment is denied.
It is so ordered.