Va. Innovation Scis., Inc. v. Samsung Elecs. Co.

Decision Date28 March 2014
Docket NumberCase No. 2:12CV548.
Citation11 F.Supp.3d 622
CourtU.S. District Court — Eastern District of Virginia

Aaron Ward Purser, Timothy E. Grochocinski, Joseph Paul Oldaker, Innovalaw, P.C., Orland Park, IL, W. Ryan Snow, David Caldwell Hartnett, Crenshaw Ware & Martin PLC, Norfolk, VA, Anthony Michael Vecchione, Edward E. Casto, Jr., Thomas C. Cecil, Edward R. Nelson, III, Jonathan Hart Rastegar, Nelson Bumgardner Casto, P.C., Fort Worth, TX, Claire Abernathy Henry, Thomas John Ward, Jr., Ward & Smith Law Firm, Longview, TX, for Plaintiff.

Jonathan Patrick Crawford, Susan Van Keulen, O'Melveny & Myers LLP, Menlo Park, CA, Jordan Raphael, Brian Berliner, Marc M. Breverman, O'Melveny & Myers LLP, Los Angeles, CA, Scot Colin Rives, Brett Johnston Williamson, Cameron William Westin, Sanjeev B. Mehta, O'Melveny & Meyers LLP, Newport Beach, CA, Eric Samuel Namrow, O'Melveny & Myers LLP, Washington, DC, Robert William McFarland, Sarah Kate McConaughy, McGuirewoods LLP, Norfolk, VA, for Defendants.


MARK S. DAVIS, District Judge.

This matter is currently before the Court on two motions filed by plaintiff Virginia Innovation Sciences, Inc. (hereinafter Plaintiff or “VIS”) regarding a counterclaim advanced by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively “Samsung” or Defendants). ECF Nos. 141, 266. Plaintiff's first motion requests that the Court strike Defendants' thirteenth counterclaim, relating to inequitable conduct, or, in the alternative, grant summary judgment in favor of VIS on such counterclaim. Mot. to Strike 1, ECF No. 141. Plaintiff's second motion alternatively requests that, if the Court denies the first motion, the Court enter an order “bifurcating this case into a jury trial and a bench trial, and, in the jury trial, excluding evidence relating solely to inequitable conduct and Defendants' 35 U.S.C. § 111 defense.” ECF No. 266. Also before the Court is Defendants' request for judicial notice filed in response to VIS's first motion. ECF No. 154. All three motions have been fully briefed and are therefore ripe for decision.

After examination of the briefs and the record, the Court determines that a hearing is unnecessary, as the facts and legal arguments are adequately presented, and the decisional process would not be aided significantly by oral argument. See Fed.R.Civ.P. 78(b) ; E.D. Va. Loc. Civ. R. 7(J). For the reasons that follow, the Court GRANTS Defendants' request for judicial notice. ECF No. 154. With regard to Plaintiff's first motion, the Court DENIES Plaintiff's request to strike Defendants' counterclaim and affirmative defense of inequitable conduct, but GRANTS summary judgment in favor of Plaintiff on Defendants' thirteenth counterclaim. ECF No. 141. Having granted summary judgment in favor of Plaintiff on Defendants' counterclaim of inequitable conduct, the Court DENIES as moot Plaintiff's motion to bifurcate. ECF No. 266.


At issue in this case are five1 patents: U.S. Patent No. 7,899,492 (“the '492 patent”), U.S. Patent No. 8,050,711 (“the '711 patent”), U.S. Patent No. 8,145,268 (“the '268 patent”), U.S. Patent No. 8,224,381 (“the '381 patent”), and U.S. Patent No. 8,135,398 (“the '398 patent”). All of the patents-in-suit are continuations or continuations-in-part of the '492 patent, which in turn issued from U.S. Patent Application No. 11/165,341 (“the '341 application”), filed June 24, 2005. The '711, '268, and '381 patents are continuations from the '492 patent and, thus, claim priority directly to the '492 patent, which ultimately claims priority to provisional application number 60/588,359, filed on July 16, 2004. The '711, '268, and '381 patents all share a substantively identical specification (“the '492 specification”). U.S. Patent No. 7,957,733 (“the ' 733 patent”), which is no longer at issue in this case, was filed on May 22, 2007 as a continuation-in-part of the '492 patent. The '398 patent is a continuation from the '733 patent. The shared specification of the '733 and '398 patents (“the '398 specification”) includes all of the '492 specification along with additional material. Each of the patents-in-suit describes inventions intended to resolve the inconvenience and impracticability of viewing multimedia content on the small screens of mobile terminals.


In the instant patent infringement action, VIS alleges that Defendants have directly, indirectly, and willfully infringed the patents-in-suit by making, using, offering for sale, selling, and/or importing a wide range of accused products, including smartphones, tablets, Blue-ray players, and hubs. Pl.'s First Am. Compl., ECF No. 121. Samsung denies VIS's claims of infringement and asserts several affirmative defenses, including invalidity of all patents-in-suit, prosecution history estoppel and other equitable doctrines. Additionally, Samsung asserts counterclaims seeking declarations of non-infringement and invalidity for each of the patents-in-suit. Samsung's thirteenth counterclaim, which is at issue in the instant motions, alleges that “VIS's enforcement of the '492, '711, '268, '381, '733, and/or '398 Patents is barred, in whole or in part, as a result of VIS's inequitable conduct committed during prosecution of one or more of the Patents–in–Suit at the U.S. Patent and Trademark Office (USPTO).” Defs.' Answer to the First Am. Compl. 33, ECF No. 132. The alleged inequitable conduct includes submission of the '341 Application Declaration with a forgery of one of the inventor's signature, Prof. Halal's signature, and the withholding of “materially relevant information from the USPTO with the intent to deceive” during prosecution of the '733 and '398 patents, particularly the “Rakib” prior art reference. Id. at 34–40.

The Court held its Markman hearing in this matter on June 11, 2013 and issued its Markman opinion on September 25, 2013. ECF No. 198. Since the Markman hearing, there have been numerous filings in this matter and several motions remain pending before the Court. By Order of October 25, 2013, the Court joined for trial this matter and Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd., et al., Case No. 2:13cv322. ECF No. 353. The trial of the two matters is now set for April 21, 2014. On November 15, 2013 the Court ruled on Defendants' Motion to Dismiss VIS's Claim for Willful Infringement; granting, in part, and denying, in part such motion. ECF No. 395. The Court found that the claim for willful infringement failed to state a plausible claim for relief with regard to willful infringement of the '711, ' 268, and '381 patents. On January 8, 2014, the Court ruled on Defendants' Motion for Summary Judgment; granting, in part, and denying, in part, such motion. ECF No. 413. The Court found no willful infringement, and also found claims 21, 22, 25, 28, and 29 of the '268 patent and claims 15, 60, 61 and 62 of the '398 patent invalid as anticipated.

Turning to the instant motions, the Court first addresses Defendants' unopposed request for judicial notice because that request impacts the remaining motions. ECF No. 154. The Court then addresses Plaintiff's motion to strike, or, in the alternative, for summary judgment and the associated responses, briefs, and declarations. ECF Nos. 141, 142, 152, 153, 173, 174, and 189. Finally, the Court will address Plaintiff's motion to bifurcate and the associated responses and briefs. ECF Nos. 266, 267, 318, and 346.

A. Defendants' Request for Judicial Notice

Federal Rule of Evidence 201 “governs judicial notice of ... adjudicative fact[s].” Fed.R.Evid. 201(a). The Court is permitted to take judicial notice “on its own,” Fed.R.Evid. 201(c)(1), however, the Court “must take judicial notice if a party requests it and the court is supplied with the necessary information,” Fed.R.Evid. 201(c)(2).

Defendants request that the Court take judicial notice of the travel distances to a specific address in Arlington, Virginia from various starting locations. Request for Judicial Notice 1–2, ECF No. 154. Information on these distances, sourced from online resources,2 was supplied to the Court in an Appendix of Exhibits. App'x of Exs., Exs. K–N, ECF Nos. 155–7, 155–8, 155–9, & 155–10. Plaintiff takes no position with regard to this request.

Federal Rule of Evidence 201 permits district courts to “judicially notice a fact that is not subject to reasonable dispute because it: (1) is generally known within the trial court's territorial jurisdiction; or (2) can be accurately and readily determined from sources whose accuracy cannot be reasonably questioned.” Fed.R.Evid. 201(b). The United States Court of Appeals for the Fourth Circuit has ruled that “geographical information is especially appropriate for judicial notice.” United States v. Johnson, 726 F.2d 1018, 1021 (4th Cir.1984) ; see also United States v. Lavender, 602 F.2d 639, 641 (4th Cir.1979). Accordingly, district courts within the Fourth Circuit have on several occasions taken notice of travel distances, including in cases where the information was supplied from online sources.See, ElcomSoft, Ltd. v. Passcovery Co., Ltd., 958 F.Supp.2d 616, 622 (E.D.Va.2013), reconsideration denied (Dec. 19, 2013) (taking “judicial notice that Russia is far from this District, and that any willing witnesses will face significant travel costs”); Rogers v. Metro. Life Ins. Co., No. CIV. JKB–12–1012, 2013 WL 2151675, at *8 n. 5 (D.Md. May 15, 2013) (referring to driving distances obtained from in taking “judicial notice that Odenton, Maryland ... is approximately eighteen miles from downtown Baltimore, twenty-seven miles from downtown Washington, and fifteen miles from Annapolis”); United States v. Franklin, No. CRIM. MJG–11–0095, 2012 WL 71018, at *1...

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