FullView, Inc. v. Polycom, Inc.
- Edward Chen
- 3:18-cv-00510
- U.S. District Court · Northern District of California
- 18
In FullView v. Polycom, Judge Chen denied Polycom’s motion to amend its answer and invalidity contentions and to compel production.
Polycom was not allowed to add the proposed inequitable-conduct claim or the two proposed prior-art references to its invalidity contentions, and it could not obtain the requested production order against FullView. The opinion concerns the parties’ ongoing patent-infringement litigation over claims 10 through 12 of the ’143 Patent.
What happened
FullView, Inc. sued Polycom, Inc., alleging infringement of patents involving panoramic viewing devices. The remaining dispute concerned claims 10 through 12 of FullView’s ’143 Patent.
Polycom asked to add an inequitable-conduct claim, add two alleged prior-art references—the Nalwa 1996 memorandum and a UNC device described in a 1999 paper—to its invalidity contentions, and require FullView to produce documents under patent-disclosure rules. FullView opposed the requests, arguing that Polycom knew or could have found the information earlier and that the materials did not disclose the patented invention.
Judge Edward M. Chen ruled that Polycom had not shown the required diligence, that its proposed inequitable-conduct claim lacked sufficient allegations of material misconduct and intent to deceive the patent office, and that FullView had not violated the disclosure rules. He denied Polycom’s motion in its entirety.
The detailed version
- FullView, Inc. v. Polycom, Inc. · No. 3:18-cv-00510
- Edward Chen
- Nov. 30, 2021
Background
FullView alleged that Polycom infringed FullView’s patents, including U.S. Patent No. 6,700,711 and the ’143 Patent. The litigation was limited to claims 10 through 12 of the ’143 Patent, which concern a panoramic viewing apparatus with image-processing devices, a reflective pyramid, and a support member intersecting the pyramid’s inner volume. The court had previously dismissed claims concerning the ’711 Patent, but this opinion addressed only Polycom’s motion concerning the ongoing ’143 Patent dispute.
Polycom sought three forms of relief in one motion: (1) leave to amend its answer to add a proposed counterclaim for inequitable conduct; (2) leave to amend its invalidity contentions to add the Nalwa 1996 technical memorandum and the UNC device described in the 1999 Majumder paper; and (3) an order compelling FullView to produce additional documents under Patent Local Rules 3-2(a) and (b).
Polycom argued that Nalwa 1996 and the UNC device were prior art that anticipated the ’143 Patent. Polycom also argued that Dr. Nalwa and FullView failed to disclose Nalwa 1996 to the patent office and failed to produce it during the litigation. FullView responded that Polycom had long known about Nalwa 1996, that the memorandum did not disclose the claimed support-member features of the ’143 Patent, and that Polycom had taken statements from FullView’s interrogatory responses out of context.
Court’s analysis
The court first considered diligence. Polycom acknowledged that it knew about Nalwa 1996 before serving its invalidity contentions because the document was cited in another reference that Polycom had used. Polycom nevertheless waited until October 19, 2021—more than a year after serving its contentions—to seek amendment. The court found that Polycom did not provide a credible explanation or evidence of the searches it claimed to have conducted, particularly because FullView argued that publicly available searches could have located the memorandum.
The court reached the same conclusion concerning the UNC device. Polycom did not explain why it could not have found the publicly available Majumder 1999 paper, learned about the UNC device earlier, or interviewed the potential witness before serving its invalidity contentions. The court therefore found that Polycom failed to show the diligence required for amendment under Patent Local Rule 3-6.
The court also held that the proposed inequitable-conduct counterclaim would be futile. Inequitable conduct requires particularized allegations that someone involved in obtaining a patent made a material misrepresentation or failed to disclose material information, and did so with a specific intent to deceive the patent office. The court found that Polycom had not shown that Nalwa 1996 disclosed the ’143 Patent’s claimed invention, including the claimed support member. It also found that Polycom had not alleged facts showing a specific intent to deceive.
The court rejected Polycom’s argument that FullView violated Patent Local Rules 3-2(a) and (b). Those rules require production of documents concerning, among other things, pre-application public use, disclosure, sale, conception, reduction to practice, design, and development of the claimed invention. Because Polycom had not shown that Nalwa 1996 disclosed the ’143 Patent’s claimed invention, the court concluded that FullView’s failure to produce the memorandum did not violate those rules.
Disposition
The court denied Polycom’s request for leave to amend its answer, denied its request to amend its invalidity contentions to add Nalwa 1996, denied its request to amend those contentions to add the UNC device, and denied its request to compel FullView to produce additional documents. Judge Edward M. Chen stated that the motion was denied in its entirety and that the order disposed of Docket No. 164.
Read the full 18-page opinion on CourtListener, the free public archive maintained by the Free Law Project.