Case 2:15-cv-01774-RCJ-VCF Document 139 Filed 08/03/16 Page 1 of 11
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`UNITED STATES DISTRICT COURT
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`DISTRICT OF NEVADA
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`2:15-cv-01774-RCJ-VCF
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`ORDER
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`Plaintiff,
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`vs.
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`AEVOE CORP.,
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`______________________________________
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`RACING OPTICS, INC.,
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`Defendant.
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`This case arises out of competing patents for lens-protection technology. Pending before
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`the Court is a Motion for Judgment on the Pleadings (ECF No. 66). The Court denies the
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`motion.
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`I.
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`FACTS AND PROCEDURAL HISTORY
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`Since 1999, Plaintiff Racing Optics, Inc., through its founders Stephen, Bart, and Seth
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`Wilson (collectively, “the Inventors”), has developed and delivered lens-protection systems,
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`including “tear-off” protectors for high-speed racing consisting of stacks of optically engineered
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`laminated lenses applied to race car windshields, motorcycle goggles, and racing helmet visors.
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`(Compl. ¶ 2, ECF No. 1). Once damaged, the top layer of the lens can be torn off to reveal a
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`new, undamaged layer, providing a clear view. (Id.). The technology is also used in the medical,
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`military, consumer, and industrial fields. (Id. ¶ 3). Most importantly here, Racing Optics
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`Case 2:15-cv-01774-RCJ-VCF Document 139 Filed 08/03/16 Page 2 of 11
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`developed a “bubble-free” screen protector that avoids difficult-to-remove air bubbles created
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`when applying conventional screen protectors by eliminating the full adhesive in the central area
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`of the screen and spacing the protector away from the screen with an “air bearing.” (Id. ¶ 5).
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`Racing Optics filed U.S. Patent Application No. 12/780,443 for the bubble-free screen
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`protector technology, titled “Touch Screen Shield,” on May 14, 2010. (Id. ¶ 6). In mid-2012,
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`after the ‘443 Application had been published but while it was still pending, Defendant Aevoe
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`Corp.’s President and Executive Director Jon Lin contacted Racing Optics and informed it that
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`Aevoe was the assignee of U.S. Patent No. 8,044,942 for a bubble-free screen protector invented
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`by Lin. (Id. ¶ 6–8). The ‘942 Patent claimed priority to a January 18, 2011 provisional
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`application. (Id. ¶ 8). By 2013, Aevoe had filed five patent infringement actions based on the
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`‘942 Patent, including three in this District presided over by Chief Judge Navarro. (Id. ¶ 8 &
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`n.1). On March 15, 2013, Racing Optics filed a divisional application of the still-pending ‘443
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`Application, U.S. Patent Application No. 13/838,311, also titled “Touch Screen Shield.” (See
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`U.S. Patent No. 8,974,620, at [21, 22, 62], ECF No. 1-3). On January 16, 2015, Racing Optics
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`filed a continuation application of the still-pending ‘311 Application (itself a divisional
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`application of the still-pending ‘443 Application), U.S. Patent Application No. 14/599,176, also
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`titled “Touch Screen Shield.” (See U.S. Patent No. 9,104,256, at [21, 22, 60], ECF No. 1-2). The
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`‘311 Application issued as the ‘620 Patent on March 10, 2015. The ‘176 Application issued as
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`the ‘256 Patent on August 11, 2015. The ‘443 Application issued as the ‘545 Patent on
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`September 8, 2015.
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`In summary, Racing Optics is the assignee of U.S. Patents No. 8,974,620; 9,104,256; and
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`9,128,545 (collectively, “the Patents”), which issued on March 10, 2015; August 11, 2015; and
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`September 8, 2015, respectively. (Id. ¶¶ 23–28). Racing Optics sued Aevoe in this Court for
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`Case 2:15-cv-01774-RCJ-VCF Document 139 Filed 08/03/16 Page 3 of 11
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`direct, contributory, and inducement infringement of claims 12, 14–16, and 18–20 of the ‘545
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`Patent; claims 1–4, 6–7, 9–17, and 19–23 of the ‘256 Patent; and claims 1–11 and 13–14 of the
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`‘620 Patent via the production, use, offer for sale, and/or importation into the United States of
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`screen protectors for electronic devices, including the iVisor AG, iVisor XT, and iVisor Glass
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`(collectively, “the Accused Products”). (Id. ¶¶ 30, 42, 53). Aevoe answered and filed
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`counterclaims for non-infringement, invalidity, and unenforceability due to fraud upon or
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`inequitable conduct before the Patent Office. Racing Optics amended to add a claim of
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`infringement of U.S. Patent No. 9,274,625, which issued on March 1, 2016. Aevoe has moved
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`for judgment on the pleadings against the claim for infringement of the ‘620 Patent. The Court
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`now addresses that motion.
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`II.
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`LEGAL STANDARDS
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`“After the pleadings are closed—but early enough not to delay trial—a party may move
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`for judgment on the pleadings.” Fed. R. Civ. P. 12(c). The standards governing a Rule 12(c)
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`motion are the same as those governing a Rule 12(b)(6) motion. See Dworkin v. Hustler
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`Magazine, Inc., 867 F.2d 1188, 1192 (9th Cir. 1989) (“The principal difference . . . is the time of
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`filing. . . . [T]he motions are functionally identical . . . .”).
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`Federal Rule of Civil Procedure 8(a)(2) requires only “a short and plain statement of the
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`claim showing that the pleader is entitled to relief” in order to “give the defendant fair notice of
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`what the . . . claim is and the grounds upon which it rests.” Conley v. Gibson, 355 U.S. 41, 47
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`(1957). Federal Rule of Civil Procedure 12(b)(6) mandates that a court dismiss a cause of action
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`that fails to state a claim upon which relief can be granted. A motion to dismiss under Rule
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`12(b)(6) tests the complaint’s sufficiency. See N. Star Int’l v. Ariz. Corp. Comm’n, 720
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`F.2d 578, 581 (9th Cir. 1983). When considering a motion to dismiss under Rule 12(b)(6) for
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`Case 2:15-cv-01774-RCJ-VCF Document 139 Filed 08/03/16 Page 4 of 11
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`failure to state a claim, dismissal is appropriate only when the complaint does not give the
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`defendant fair notice of a legally cognizable claim and the grounds on which it rests. See Bell
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`Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). In considering whether the complaint is
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`sufficient to state a claim, the court will take all material allegations as true and construe them in
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`the light most favorable to the plaintiff. See NL Indus., Inc. v. Kaplan, 792 F.2d 896, 898 (9th
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`Cir. 1986). The court, however, is not required to accept as true allegations that are merely
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`conclusory, unwarranted deductions of fact, or unreasonable inferences. See Sprewell v. Golden
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`State Warriors, 266 F.3d 979, 988 (9th Cir. 2001). A formulaic recitation of a cause of action
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`with conclusory allegations is not sufficient; a plaintiff must plead facts pertaining to his own
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`case making a violation plausible, not just possible. Ashcroft v. Iqbal, 556 U.S. 662, 677–79
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`(2009) (citing Twombly, 550 U.S. at 556) (“A claim has facial plausibility when the plaintiff
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`pleads factual content that allows the court to draw the reasonable inference that the defendant is
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`liable for the misconduct alleged.”). In other words, under the modern interpretation of Rule
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`8(a), a plaintiff must not only specify or imply a cognizable legal theory (Conley review), but
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`also must plead the facts of his own case so that the court can determine whether the plaintiff has
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`any plausible basis for relief under the legal theory he has specified or implied, assuming the
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`facts are as he alleges (Twombly-Iqbal review).
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`“Generally, a district court may not consider any material beyond the pleadings in ruling
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`on a Rule 12(b)(6) motion. However, material which is properly submitted as part of the
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`complaint may be considered on a motion to dismiss.” Hal Roach Studios, Inc. v. Richard Feiner
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`& Co., 896 F.2d 1542, 1555 n.19 (9th Cir. 1990) (citation omitted). Similarly, “documents
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`whose contents are alleged in a complaint and whose authenticity no party questions, but which
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`are not physically attached to the pleading, may be considered in ruling on a Rule 12(b)(6)
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`Case 2:15-cv-01774-RCJ-VCF Document 139 Filed 08/03/16 Page 5 of 11
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`motion to dismiss” without converting the motion to dismiss into a motion for summary
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`judgment. Branch v. Tunnell, 14 F.3d 449, 454 (9th Cir. 1994). Moreover, under Federal Rule
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`of Evidence 201, a court may take judicial notice of “matters of public record.” Mack v. S. Bay
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`Beer Distribs., Inc., 798 F.2d 1279, 1282 (9th Cir. 1986). Otherwise, if the district court
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`considers materials outside of the pleadings, the motion to dismiss is converted into a motion for
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`summary judgment. See Arpin v. Santa Clara Valley Transp. Agency, 261 F.3d 912, 925 (9th Cir.
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`2001).
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`III. ANALYSIS
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`Aevoe argues that Racing Optics abandoned the ‘620 Patent by failing to comply with
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`statutory oath requirements. The parties appear to agree that the ‘620 Patent issued from the
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`‘311 Application, which was filed on March 15, 2013. They also appear to agree that: (1) the
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`‘311 Application included a pre-AIA-compliant inventor’s oath; (2) on May 3, 2013, the Patent
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`Office issued Racing Optics a notice indicating that an AIA-compliant inventor’s oath would be
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`required; (3) on April 2, 2015, after the ‘620 Patent had issued on March 10, 2015, Racing
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`Optics petitioned the Patent Office for late acceptance of an AIA-compliant inventor’s oath,
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`arguing that the failure to previously submit an AIA-compliant oath had been inadvertent,
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`unintentional, and with no deceptive intent; and (4) on October 13, 2015, the Patent Office
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`granted the petition in part, noting that it would enter the corrected oath into the file and that the
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`file “speaks for itself,” but declining to issue any statement as to the abandonment issue for lack
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`of jurisdiction because the ‘620 Patent had been granted. Aevoe argues that the ‘620 Patent (or
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`the ‘311 Application) was abandoned as a matter of law when Racing Optics failed to submit the
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`AIA-compliant inventor’s oath before paying the issue fee, notwithstanding the Patent Office’s
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`grant of the petition for late filing.
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`Case 2:15-cv-01774-RCJ-VCF Document 139 Filed 08/03/16 Page 6 of 11
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`A.
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`Abandonment under the Rules of the Patent Office
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`It is important to distinguish between abandonment under pre-AIA § 102(c) or other
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`statutes and abandonment of an application under the Patent Office’s internal rules of practice:
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`Once an application is deemed abandoned under the rules of practice of the Patent
`Office, the inventor loses the benefit of the filing date of that application for the
`purpose of applying the statutory bar provisions of Section 102(b), but the
`inventor may file a new application with a new filing date and still obtain a patent
`if no statutory bar has occurred and the circumstances as a whole do not indicate
`abandonment of the right to a patent under § 102(c).
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` Donald S. Chisum, Chisum on Patents § 6.03[2], at 6-315 to 6-316 (2015) (footnotes omitted).
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`Here, it is clear that the Patent Office has made no determination of the abandonment issue under
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`its own rules of practice and refuses to make any such determination for lack of jurisdiction.
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`Anyway, the Patent Office’s compliance with its own internal procedures is not before the Court.
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`As Racing Optics correctly notes, “the examiner’s or the applicant’s absolute compliance with
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`the internal rules of patent examination becomes irrelevant after the patent has issued.”
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`Magnivision, Inc. v. Bonneau Co., 115 F.3d 956, 960 (Fed. Cir. 1997). The Court need only
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`examine whether the invention or the ‘311 Application was abandoned as a matter of law under
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`pre-AIA § 102(c) or other applicable statutes.
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`B.
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`1.
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`Statutory Abandonment
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`§ 102(c)
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`Aevoe notes that the AIA amendments to 35 U.S.C. § 102 went into effect on March 17,
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`2015 and argues that pre-AIA § 102(c) therefore governs the ‘620 Patent because the ‘311
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`Application that resulted in the ‘620 Patent was filed on March 15, 2013. That appears to be
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`correct:
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`///
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`///
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`Case 2:15-cv-01774-RCJ-VCF Document 139 Filed 08/03/16 Page 7 of 11
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`(n) EFFECTIVE DATE.—
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`the
`this section,
`in
`(1) IN GENERAL.—Except as otherwise provided
`amendments made by this section shall take effect upon the expiration of the 18-
`month period beginning on the date of the enactment of this Act, and shall apply
`to any application for patent, and to any patent issuing thereon, that contains or
`contained at any time—
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`(A) a claim to a claimed invention that has an effective filing date as defined in
`section 100(i) of title 35, United States Code, that is on or after the effective date
`described in this paragraph; or
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`(B) a specific reference under section 120, 121, or 365(c) of title 35, United States
`Code, to any patent or application that contains or contained at any time such a
`claim.
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`Leahy–Smith America Invents Act, Pub. L. No. 112-29, § 3(n), 125 Stat. 284, 293 (2011). The
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`AIA was signed into law by President Obama on September 16, 2011. Eighteen months later
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`was March 16, 2013. Racing Optics does not argue to the contrary.
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`The pre-AIA abandonment statute read, “A person shall be entitled to a patent
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`unless . . . he has abandoned the invention.” Pub. L. No. 82-593, §102(c), 66 Stat, 792, 797
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`(1952). The concept of abandonment had been developed in the law before its 1952 codification,
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`most famously in the case of Mason v. Hepburn, 13 App. D.C. 86 (D.C. Cir. 1898). In that
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`appeal of a Patent Office ruling in an interference proceeding between two competing patents,
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`the court ruled that Mason had abandoned his invention of a rifle magazine when he stored it for
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`seven years without using it and only applied for a patent when he learned that a competitor,
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`Hepburn, had independently invented a similar magazine and applied for his own patent. 3A
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`Donald S. Chisum, Chisum on Patents § 10.08[2], at 10-327 (2012). The Mason court ruled that
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`Mason had abandoned the invention in the sense of pre-AIA § 102(g), under which a later
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`invention is not anticipated by a prior invention if the prior inventor has abandoned, suppressed,
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`or concealed the prior invention. In other words, Hepburn’s right to a patent was not foreclosed
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`Case 2:15-cv-01774-RCJ-VCF Document 139 Filed 08/03/16 Page 8 of 11
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`by Mason’s earlier invention because Mason had abandoned, suppressed, or concealed his own
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`invention in the meantime. The Mason court first ruled, however, that Mason had not abandoned
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`his invention in the sense of pre-AIA § 102(c). See Mason, 13 App. D.C. at 96 (distinguishing
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`pre-AIA § 102(c)-type abandonment from pre-AIA § 102(g)-type abandonment) (“Strictly
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`speaking, abandonment after the completion of the inventive act applies in a case where the right
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`of the public to the use is involved [pre-AIA §102(c)-type abandonment], and not in one where
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`the contention is between rival claimants merely of the monopoly [pre-AIA §102(g)-type
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`abandonment].”); id. at 91 (citing Bates v. Coe, 98 U.S. 31, 46 (1878)) (“The public did not and
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`was not intended to receive any benefit from it during the seven years that intervened between
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`the construction and the application for the patent. Not having been given or abandoned to
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`public use, there was nothing in the mere lapse of time to prevent Mason receiving a patent.”).
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`In other words, a person only abandons an invention in the sense of pre-AIA § 102(c) by
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`abandoning it to public use.
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`Here, there is no allegation or evidence that Racing Optics ever did or failed to do
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`anything indicating an intention to abandon the invention(s) in the ‘620 Patent in the sense of
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`pre-AIA § 102(c). Aevoe argues Racing Optics abandoned the ‘311 Application under pre-AIA
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`§ 102(c) on February 6, 2015 when it paid the issue fee before submitting an AIA-compliant
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`inventor’s oath, because the inventor’s oath was due on or before that date. See 35 U.S.C.
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`§ 115(f) (2013). According to Aevoe, paying the issue fee without having filed the oath that was
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`statutorily due on or before payment indicates Racing Optics’s intention to abandon the
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`invention. But mere failure to supply a required oath cannot be said to indicate an intention to
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`abandon an invention to public use under pre-AIA § 102(c) without more. Here, Racing Optics
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`paid the issue fee contemporaneously with this alleged act of abandonment, and paying an issue
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`Case 2:15-cv-01774-RCJ-VCF Document 139 Filed 08/03/16 Page 9 of 11
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`fee (like the other myriad acts Racing Optics took in furtherance of obtaining the ‘620 Patent
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`both before and after paying the issue fee) indicates an intention to obtain a patent and thereby
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`exclude the public from using the invention, not an intention to abandon the invention to public
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`use. See Mason, 13 App. D.C. at 91. Mere negligence only results in abandonment where the
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`negligence is in failing to apply for a patent at all until one notices similar products in the
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`market. See Consol. Fruit-Jar Co. v. Wright, 94 U.S. 92, 95–96 (1876) (affirming the district
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`court’s invalidation of John L. Mason’s 1870 patent for Mason jars, because he had abandoned
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`the invention to the public by selling some jars in 1859 and failing to apply for a patent until
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`1868, long after similar jars had appeared in the market). The present case is entirely dissimilar.
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`The only alleged neglect here was a failure to comply with a technical statutory requirement of
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`the application—a failure the statute itself excused in any case, see infra—not a failure to pursue
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`an application until after the invention was abandoned to public use. There is no evidence at all
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`of abandonment to public use here, which Defendant must prove by clear and convincing
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`evidence in order to overcome the statutory presumption of validity. See Commil USA, LLC v.
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`Cisco Sys., Inc., 135 S. Ct. 1920, 1929 (2015) (citing 35 U.S.C. § 282(a); Microsoft Corp. v. i4i
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`Ltd. P’ship, 131 S. Ct. 2238, 2245–47 (2011)). Racing Optics did not abandon the invention
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`under pre-AIA § 102(c).
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`2.
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`§ 115(f)
`Still, § 115(f) required the oath to be filed no later than the date the issue fee was paid.
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`The question is whether Congress intended such a failure to invalidate any patent that
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`nevertheless issues. Congress has answered the question by providing a “savings clause”
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`directly under § 115 that delineates when such a failure will not result in invalidity or
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`unenforceability:
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`Case 2:15-cv-01774-RCJ-VCF Document 139 Filed 08/03/16 Page 10 of 11
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`(h) Supplemental and corrected statements; filing additional statements.--
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`(1) In general.--Any person making a statement required under this section
`may withdraw, replace, or otherwise correct the statement at any time. If
`a change is made in the naming of the inventor requiring the filing of 1 or
`more additional statements under this section, the Director shall establish
`regulations under which such additional statements may be filed.
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`. . . .
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`(3) Savings clause.--A patent shall not be invalid or unenforceable based
`upon the failure to comply with a requirement under this section if the
`failure is remedied as provided under paragraph (1).
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`Id. § 115(h), (h)(1), (h)(3) (emphases added). This version of § 115 was effective as of
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`September 16, 2012, and it therefore applies to the ‘311 Application filed on March 15, 2013.
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`See Leahy–Smith America Invents Act, Pub. L. No. 112-29, § 4(e), 125 Stat. 284, 297 (2011).
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`The savings clause permits an applicant to “replace” or “otherwise correct” a statement governed
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`by the section “at any time.” The Court finds that correction of a previously submitted oath to
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`comply with AIA standards fits comfortably within the savings clause. An AIA-compliant oath
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`is a “correct[ion]” of a pre-AIA-compliant oath. “[A]ny” time means the time for filing a
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`correction is without limitation, so the savings clause permits corrected oaths to be filed either
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`before or after the issue fee is paid.
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`3.
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`§ 111(a)(4)
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`Aevoe argues that the failure was not properly remedied, however, because the savings
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`clause of § 115(h) applies only to “this section,” i.e., § 115, and it cannot have cured a separate
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`infirmity under § 111. Specifically, “Upon failure to submit the fee and oath or declaration
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`within such prescribed period, the application shall be regarded as abandoned, unless it is shown
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`to the satisfaction of the Director that the delay in submitting the fee and oath or declaration was
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`unavoidable or unintentional.” Id. § 111(a)(4) (1994).
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`Case 2:15-cv-01774-RCJ-VCF Document 139 Filed 08/03/16 Page 11 of 11
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`But the Court finds that § 111 incorporates § 115’s savings clause. The “oath” referred to
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`in § 111(a)(4) is the “oath or declaration as prescribed by section 115.” Id. § 111(a)(2)(C)
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`(emphasis added). The provision for replacement and corrected oaths “at any time” under
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`§ 115(h) is part of the “oath . . . prescribed” and “prescribed period” referred to in § 111(a)(2)(C)
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`and (a)(4). To construe § 111 not to incorporate §115’s savings clause would be to read § 115’s
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`savings clause out of the statute and thereby ignore part of Congress’s definition of the
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`prescribed period for submitting oaths, which includes replacements and corrections made “at
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`any time.”
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`C.
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`The Administrative Procedures Act (“APA”)
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`Aevoe’s argument that the issuance of the ‘620 Patent violated the APA because it was
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`arbitrary, capricious, an abuse of discretion, or otherwise contrary to law is frivolous. The Court
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`of Appeals has squarely ruled that Patent Office actions are not subject to challenge under the
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`APA due to the comprehensive legislative scheme providing for various forms of review under
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`Title 35. See Pregis Corp. v. Kappos, 700 F.3d 1348, 1357–61 (Fed. Cir. 2012).
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`CONCLUSION
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`IT IS HEREBY ORDERED that the Motion for Judgment on the Pleadings (ECF No. 66)
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`is DENIED.
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`IT IS SO ORDERED.
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`Dated this 14th day of July, 2016.
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`_____________________________________
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` ROBERT C. JONES
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` United States District Judge
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`Dated this 2nd day of August, 2016.