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TVnGO Ltd. v. LG Electronics, Inc.

United States District Court, D. New Jersey

May 23, 2019

TVnGO Ltd. BVI, Plaintiff,
v.
LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC., Defendants.

          SANDELANDS EYET LLP, Matthew T. Eyet, Esq., KING & SPALDING LLP, Charles E. Cantine, Esq. Joseph Diamante, Esq. Timothy H. Caine, Esq. Counsel for Plaintiff

          WALSH PIZZI O'REILLY FALANGA LLP, Liza M. Walsh, Esq. Selina M. Ellis, Esq. and MORGAN, LEWIS & BOCKIUS LLP, Natalie Bennett, Esq. Collin W. Park, Esq. Eric Kraeutler, Esq. Ghee J. Lee, Esq. Counsel for Defendants

          OPINION

          RENÉE MARIE BUMB, U.S.D.J.

         In this patent infringement suit, Plaintiff TVnGO Ltd. (BVI) asserts that Defendants LG Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively, “LG”), are infringing five of TVnGO's patents[1] which claim methods and devices that make televisions “smart”-- i.e., able to display both television content and internet streaming content. LG asserts that the claims of all five patents are unenforceable based on the doctrine of inequitable conduct. LG makes this assertion in both an affirmative defense and a counterclaim.[2] Before the Court is TVnGO's Motion to Dismiss the counterclaim pursuant to Fed.R.Civ.P. 12(b)(6) / Motion to Strike the affirmative defense pursuant to Fed.R.Civ.P. 12(f). For the reasons stated herein, the motion will be denied.

         I.

         LG's inequitable conduct theory is based on alleged failures to disclose-- or in some instances, with respect to the ‘220 and ‘621 patents[3], alleged failures to properly disclose--prior art to the USPTO during the prosecution of the applications that resulted in the Patents-in-Suit. The prior art is: (1) Japanese Patent Publication No. JP2003-018575 (“the ‘575 Publication”) and (2) additional references disclosing the same subject matter of the European counterpart to the Patents-in-Suit (“the EP Publications”).[4]

         A. The ‘220 patent prosecution

         The application that would result in the issuance of the ‘220 patent[5] was filed on July 6, 2007, and the ‘220 patent issued on March 6, 2012. (TAD ¶¶ 19, 24) LG asserts that at no time during this prosecution did TVnGO's prosecuting attorneys, Mr. Klima and Mr. Kavrukov (nor anyone else), disclose the EP Publications to the USPTO. (Id. ¶ 38) Further, LG explains why, in its view, this nondisclosure matters. LG asserts that the EP Publications were “materially relevant” “because these references were used as a ground for rejecting the counterpart European patent application” to the Patents-in-Suit. (Id. ¶ 38) LG elaborates, “[h]ad the USPTO received and considered the EP Publications and the material relevance of the EP Publications to the patentability of the Patents-in-Suit, it would have been evident that at least one independent claim of each of the Patents-in-Suit was invalid, ” which would have led the USPTO to reject TVnGO's patent application. (Id. ¶ 39)

         Somewhat similarly, LG alleges that Mr. Klima “disclosed” the ‘575 Publication to the USPTO in a manner that effectively prevented the USPTO from considering it. Specifically, LG alleges that

[o]n December 23, 2011, more than six months after the participants in the prosecution of the [‘220 patent] Application became aware of the ‘575 Publication and after the prosecution of the [] Application had already closed, Mr. William L. Klima of the Nath Law Group filed an Information Disclosure Statement (“IDS”) in the [] Application, listing several references, including the ‘575 Publication, and enclosing a copy of the ‘575 Publication in Japanese with an English abstract. However, Mr. Klima did not include in the IDS any requisite certification statement under 37 C.F.R. 1.97(e) or any explanation as to the relevance of the listed references, including the ‘575 Publication, despite the prior knowledge that the ‘575 Publication was applied by the Japanese Patent Office to reject the Japanese counterpart ‘930 JP Application.

(TAD ¶ 22)

         LG alleges that five days later, the USPTO notified Mr. Klima that the IDS did not comply with the applicable regulation and therefore the information in the IDS “had not been considered.” (TAD ¶ 23) LG further alleges that no one sought to correct the deficiency, and thereafter the ‘220 patent issued on March 6, 2012. (Id. ¶ 24)

         LG alleges that the ‘575 Publication was materially relevant to the ‘220 patent application because the Japanese Patent Office applied the ‘575 Publication “in the rejection of the [Japanese] counterpart” to the ‘220 patent application. (TAD ¶ 24)

         B. The ‘621 patent prosecution

         The application that would result in the issuance of the ‘621 patent was filed on November 25, 2015, and the ‘621 patent issued on October 17, 2017. (TAD ¶¶ 27, 29)

         With respect to the EP Publications, LG alleges they were disclosed in an IDS filed with the USPTO on January 26, 2017. (TAD ¶ 38) LG does not allege that there was any problem with this particular IDS filed by Mr. Kavrukov in this particular ...


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