Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 1 of 22
`
`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`FLYPSI, INC. (D/B/A FLYPSI),
`
`Plaintiff,
`
`Civil Action No. 6:21-cv-642-ADA
`
`v.
`
`DIALPAD, INC.,
`
`JURY TRIAL DEMANDED
`
`Defendant.
`
`DEFENDANT DIALPAD, INC.’S OPPOSITION TO MOTION TO DISMISS
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`

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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 2 of 22
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`III.
`
`B.
`
`V.
`
`INTRODUCTION ............................................................................................................. 1
`BACKGROUND ............................................................................................................... 2
`A.
`The Litigation......................................................................................................... 2
`LEGAL STANDARDS ..................................................................................................... 4
`A.
`Motion to Dismiss .................................................................................................. 4
`B.
`Inequitable Conduct ............................................................................................... 5
`IV. ARGUMENT ..................................................................................................................... 7
`A.
`Dialpad has Plausibly Pleaded That Flypsi’s Withholding Of The
`Litigation And Invalidity Claim Charts Was A Material Misrepresentation. ........ 7
`1.
`Who: Inventors and Prosecution Attorneys Committed Inequitable
`Conduct. ..................................................................................................... 7
`What: Flypsi Withheld The Litigation And Invalidity Claim
`Charts From The PTO. ............................................................................... 7
`a.
`Dialpad has adequately alleged the Invalidity Claim Charts
`and Litigation are material and were not disclosed. ...................... 8
`Dialpad has adequately alleged the Invalidity Claim Charts
`are not cumulative. ....................................................................... 13
`Where: Material Information In The Litigation And Invalidity
`Claim Charts. ........................................................................................... 13
`When: Flypsi Had A Duty To Submit The Material Information to
`the PTO Beginning As Of June 21, 2021 When They Discovered
`Dialpad’s Invalidity Contentions. ............................................................ 14
`How (or Why): Flypsi Intentionally Hid The Litigation And The
`Invalidity Claim Charts From The PTO. ................................................. 14
`Dialpad has Properly Pleaded That Flypsi Intentionally Withheld The
`Litigation And Invalidity Claim Charts From The PTO. ..................................... 15
`CONCLUSION ................................................................................................................ 16
`
`b.
`
`2.
`
`3.
`
`4.
`
`5.
`
`-i-
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`

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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 3 of 22
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Arnold v. Williams,
`979 F.3d 262 (5th Cir. 2020) .....................................................................................................4
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...............................................................................................................4, 5
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ...................................................................................................................4
`
`Causey v. Sewell Cadillac-Chevrolet, Inc.,
`394 F.3d 285 (5th Cir. 2004) .....................................................................................................9
`
`Cutsforth, Inc. v. LEMM Liquidating Co., LLC,
`No. 12-CV-1200, 2013 WL 2455979 (D. Minn. June 6, 2013) ......................................2, 8, 15
`
`Doe v. MySpace, Inc.,
`528 F.3d 413 (5th Cir. 2008) .....................................................................................................1
`
`Environ Prods., Inc. v. Total Containment, Inc.,
`43 USPQ2d 1288 (E.D. Pa. 1997) .............................................................................................6
`
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009)........................................................................................ passim
`
`Flynn v. CIT Grp.,
`294 F. App’x 152 (5th Cir. 2008) ..............................................................................................4
`
`Honeywell Int’l Inc. v. Universal Avionics Sys. Corp.,
`488 F.3d 982 (Fed. Cir. 2007)....................................................................................................6
`
`Leviton Mfg. Co. v. Universal Sec. Instruments, Inc.,
`606 F.3d 1353 (Fed. Cir. 2010)............................................................................................6, 10
`
`Martin K. Eby Constr. Co. v. Dallas Area Rapid Transit,
`369 F.3d 464 (5th Cir. 2004) .....................................................................................................4
`
`Nilssen v. Osram Sylvania, Inc.,
`504 F.3d 1223 (Fed. Cir. 2007)............................................................................................6, 10
`
`Noelbiz, Inc. v. Global Connect, LLC,
`Case No. 6:12-cv-244-MHS, 2014 WL 11497796 (E.D. Tex. Oct. 27, 2014) ........................15
`
`ii
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`

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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 4 of 22
`
`Swierkiewicz v. Sorema N.A.,
`534 U.S. 506 (2002) ...................................................................................................................4
`
`Therasense, Inc. v. Becton Dickinson & Co.,
`649 F.3d 1276 (Fed. Cir. 2011) (en banc) ...............................................................5, 11, 12, 16
`
`Turner v. Pleasant,
`663 F.3d 770 (5th Cir. 2011) .....................................................................................................4
`
`W.L. Gore & Assocs., Inc. v. Medtronic, Inc.,
`850 F. Supp. 2d 630 (E.D. Va. 2012) ......................................................................................13
`
`Statutes
`
`35 U.S.C. § 103 ..............................................................................................................................12
`
`35 U.S.C. § 112 ..............................................................................................................................14
`
`Other Authorities
`
`37 C.F.R. § 1.56 ...................................................................................................................5, 6, 7, 8
`
`Fed. R. Civ. P. 8(a) ..........................................................................................................................4
`
`Fed. R. Civ. P. 12(b)(6)................................................................................................................4, 9
`
`Manual of Patent Examining Procedure § 2001.06(c) ........................................................... passim
`
`-iii-
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`

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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 5 of 22
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`Defendant Dialpad, Inc. (“Defendant” or “Dialpad”), by and through undersigned counsel,
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`hereby opposes Plaintiff Flypsi, Inc.’s (“Plaintiff” or “Flypsi”) Motion to Dismiss and Strike
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`Defendant’s Inequitable Conduct Counterclaim and Defense (“Motion to Dismiss”).
`
`I.
`
`INTRODUCTION
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`Flypsi’s Motion to Dismiss Dialpad’s inequitable conduct claim and Motion to Strike
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`Dialpad’s inequitable conduct counterclaim is long on rhetoric and short on substance. Flypsi
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`glosses over the core facts of Dialpad’s counterclaim—Flypsi’s failure to disclose claim charts
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`(the “Invalidity Claim Charts”) and this very litigation (the “Litigation”) to the examiner
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`examining U.S. Patent No. 11,281,585 (the ’585 patent) recently added to this case—and resorts
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`to retorts regarding U.S. Patent Office (“PTO”) regulations and misreading of applicable case law.
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`Once Flypsi’s rhetoric is stripped away, however, and the factual allegations of the Counterclaim
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`(Dkt. No. 34) examined, it is plain that Dialpad has asserted a plausible claim for inequitable
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`conduct.
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`As alleged in the Counterclaim, Flypsi failed to disclose both the instant action and
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`invalidity contentions, including the Invalidity Claim Charts to the PTO patent examiner. At the
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`same time, Flypsi hurried to submit the prior art produced by Dialpad without claim charts
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`demonstrating invalidity of the original four patents asserted in this case, which are in the same
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`patent family (by continuation) as the ’585 patent. Flypsi’s failure to do so is inexcusable and,
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`indeed, was done with intent to deceive the PTO. Flypsi had an affirmative duty to apprise the
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`PTO of all relevant material information—not just prior art—affecting the patentability of its
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`claims. See MPEP § 2001.06(c). Yet, Flypsi failed to do so.
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`The controlling question is whether the who, what, when, where, how and why of Flypsi’s
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`material omissions to the PTO pled by Dialpad, when viewed in the light most favorable to
`
`Dialpad, could support a finding of inequitable conduct. Doe v. MySpace, Inc., 528 F.3d 413, 418
`
`-1-
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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 6 of 22
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`(5th Cir. 2008); see also Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328-29 (Fed.
`
`Cir. 2009). Here, the answer is yes, Dialpad’s allegations are sufficient. Specifically, Dialpad’s
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`Counterclaim identifies that Flypsi, via its prosecuting attorneys, committed inequitable conduct
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`when they deliberately failed to disclose the Litigation and the Invalidity Claim Charts to the PTO,
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`despite being aware of the Litigation and the Invalidity Claim Charts. The Counterclaim explains
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`how and why the Invalidity Contentions are more than the sum of their parts and directly relevant
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`to the invalidity of the ’585 patent. At a minimum, the detailed factual allegations (including
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`supporting documentation) demonstrate a plausible inference that Flypsi’s attorneys’ failure to
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`disclose the Litigation and the Invalidity Contentions to the PTO suggests an intent to mislead the
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`PTO. Ultimately, whether Dialpad will be able to prove its affirmative defense of inequitable
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`conduct is a question that should be asked on a full record, not before discovery even begins.
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`The instant case is akin to Cutsforth, Inc. v. LEMM Liquidating Co., LLC, No. 12-CV-1200
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`SRN/JSM, 2013 WL 2455979, at *1, *7 (D. Minn. June 6, 2013) where another district court
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`denied a motion to dismiss the inequitable conduct counterclaim when the patent owner merely
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`disclosed the underlying cited prior art to PTO and not the previous litigation and invalidity claim
`
`charts discussing prior art for related patents. Like in Cutsforth, here, the Court should deny
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`Flypsi’s Motion to Dismiss Defendant’s Inequitable Conduct Counterclaims and Motion to Strike
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`Defendant’s Inequitable Conduct Affirmative Defenses.
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`II.
`
`BACKGROUND
`
`A.
`
`The Litigation
`
`On June 21, 2021, Flypsi filed an original Complaint alleging Dialpad infringed four
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`related patents: U.S. Patent Nos. 9,667,770 (the “’770 patent”), 10,051,105 (the “’105 patent”),
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`10,334,094 (the “’094 patent”), and 11,012,554 (the “’554 patent”). See Dkt. No. 1. On November
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`-2-
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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 7 of 22
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`5, 2021, Dialpad served invalidity contentions for the four asserted patents with detailed invalidity
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`claim charts. See Dkt. No. 23.
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`The to-be issued application of the ’585 patent was pending before the PTO on or after
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`November 5, 2021. (See, e.g., Counterclaim, Dkt. 34, ¶¶ 76-79). The ’585 patent was filed on April
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`28, 2021, and is a continuation of at least the ’770 patent, the ’105 patent, and the ’094 patent. (Id.
`
`¶ 75; Ex. 1, ’585 patent). The ’585 patent also claims priority to the ’554 patent. (Id.). The ’585
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`patent shares a common specification and figures with the ’770, ’105, ’094, and ’585 patents. (Id.).
`
`On November 9, 2021, the prosecuting patent attorney Stuart West of the West and Associates
`
`firm petitioned the PTO to withdraw the ’585 patent from issue and simultaneously filed with the
`
`PTO an Information Disclosure Statement (IDS) disclosing prior art referenced in the Invalidity
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`Claim Charts (the “Invalidity Contention Prior Art”) asserting invalidity of the ’770, ’105, ’094,
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`and ’554 patents. (See, e.g., Counterclaim, ¶ 87). When Mr. West filed the IDS on November 9,
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`2021, in the application that issued as the ’585 patent, he disclosed the Invalidity Contention Prior
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`Art without any context and without producing the Invalidity Claim Charts, the Invalidity
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`Contentions themselves or any other pleadings or information about the Litigation. Id. Notably,
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`Flypsi’s Information Disclosure Statement did not disclose this information about the Litigation.
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`(See, e.g., Counterclaim ¶¶ 87, 91-94). Flypsi’s Information Disclosure Statement also did not
`
`disclose the Invalidity Claim Charts disclosed by Dialpad during the Litigation. (Id.). At least for
`
`the purpose of Flypsi’s Motion, none of the preceding facts are in dispute.
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`The application of the ’585 patent was then issued and Flypsi then filed its First Amended
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`Complaint asserting infringement of the ’585 patent. See Dkt. 30. Dialpad filed its Answer and
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`Counterclaims to the First Amended Complaint. See Dkt. No. 34. In its Counterclaim, Dialpad
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`pleads a defense of inequitable conduct for the ’585 patent. Id. at 49 (Ninth Defense). Dialpad also
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`-3-
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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 8 of 22
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`pled a counterclaim seeking a declaratory judgment of unenforceability of the ’585 patent. Id. at
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`59-66 (Counterclaim Count XI).
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`III.
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`LEGAL STANDARDS
`
`A.
`
`Motion to Dismiss
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`Rule 12(b)(6) of the Federal Rules of Civil Procedure provides that a party may move to
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`dismiss a complaint for failure to state a claim upon which relief can be granted. In considering a
`
`motion to dismiss, the pleadings are construed in the light most favorable to the non-moving party,
`
`and the “court accepts ‘all well-pleaded facts as true, viewing them in the light most favorable to
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`the [counter]-plaintiff.’” Martin K. Eby Constr. Co. v. Dallas Area Rapid Transit, 369 F.3d 464,
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`467 (5th Cir. 2004) (quoting Jones v. Greninger, 188 F.3d 322, 324 (5th Cir. 1999)); see also
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`Swierkiewicz v. Sorema N.A., 534 U.S. 506, 508 n.1 (2002); Arnold v. Williams, 979 F.3d 262, 265
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`n.1 (5th Cir. 2020). The Fifth Circuit has held that a motion to dismiss under Rule 12(b)(6) is
`
`generally disfavored and is rarely granted. See Turner v. Pleasant, 663 F.3d 770, 775 (5th Cir.
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`2011) (quoting Harrington v. State Farm Fire & Cas. Co., 563 F.3d 141, 147 (5th Cir. 2009)).
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`Counter-plaintiff needs to “allege sufficient facts to raise a right to relief above the speculative
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`level.” Flynn v. CIT Grp., 294 F. App’x 152, 154 (5th Cir. 2008) (citing Bell Atl. Corp. v. Twombly,
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`550 U.S. 544, 555 (2007).) “Factual allegations must be enough to raise a right to relief above the
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`speculative level, on the assumption that all the allegations in the complaint are true… (even if
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`doubtful in fact).” Twombly, 550 U.S. at 555. “Under Rule 8(a) of the Federal Rules of Civil
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`Procedure, pleadings must contain “a short and plain statement of the claim showing that the
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`pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2).
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`A pleading must contain “enough facts to state a claim to relief that is plausible on its face.”
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`Twombly, 550 U.S. at 570. “A claim has facial plausibility when the plaintiff pleads factual content
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`that allows the court to draw a reasonable inference that the defendant is liable for the misconduct
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`-4-
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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 9 of 22
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`alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 670 (2009). Determining whether a complaint states a
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`plausible claim for relief is “a context-specific task that requires the reviewing court to draw on its
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`judicial experience and common sense.” Id.
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`B.
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`Inequitable Conduct
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`The PTO imposes a duty on “[e]ach individual associated with the filing and prosecution
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`of a patent application” to disclose information material to patentability. 37 C.F.R. § 1.56.
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`Specifically, each named inventor, “each attorney or agent who prepares or prosecutes the
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`application,” and “every other person who is substantively involved in the preparation or
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`prosecution of the application and who is associated with the inventor, the applicant, an assignee,
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`or anyone to whom there is an obligation to assign the application” owes a duty of disclosure to
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`the PTO. Id. § 1.56(c). Intentionally withholding material information is an inequitable conduct
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`that renders the entire patent unenforceable. Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d
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`1276, 1287 (Fed. Cir. 2011) (en banc).
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`Inequitable conduct is a defense that an accused infringer must plead with particularity
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`under Rule 9(b). See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328 (Fed. Cir.
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`2009). “[T]he pleading must identify the specific who, what, when, where, and how of the material
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`misrepresentation or omission committed” before the PTO. Id. Materiality means that, “but for”
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`the intentional withholding of the prior art reference, the examiner would not have allowed a patent
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`claim. Therasense, 649 F.3d at 1291-92. The party alleging inequitable conduct cannot put itself
`
`in the mind of the identified individuals to extract the answer to why, but rather must plead
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`ascertainable facts regarding who, what, when, where and how that allow the Court to reasonably
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`infer specific intent. Id. at 1328-1329.
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`“Inequitable conduct is an equitable defense to patent infringement that, if proved, bars
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`enforcement of a patent.” Therasense, 649 F.3d at 1285. “Each individual associated with the filing
`
`-5-
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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 10 of 22
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`and prosecution of a patent application has a duty of candor and good faith in dealing with the
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`[PTO], which includes a duty to disclose to the [PTO] all information known to that individual to
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`be material to patentability . . . .” 37 C.F.R. § 1.56(a); see also Honeywell Int’l Inc. v. Universal
`
`Avionics Sys. Corp., 488 F.3d 982, 999 (Fed. Cir. 2007). “A breach of this duty—including
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`affirmative misrepresentations of material facts, failure to disclose material information, or
`
`submission of false material information—coupled with an intent to deceive, constitutes
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`inequitable conduct.” Honeywell, 488 F.3d at 999.
`
`In particular, material information that is raised in trial proceedings that is relevant to
`related applications undergoing examination should be submitted on an Information
`Disclosure Statement for the examiner’s consideration. Examples of such material
`information include evidence of possible prior public use or sales, questions of
`inventorship, prior art, allegations of “fraud,” “inequitable conduct,” and "violation of duty
`of disclosure." Another example of such material information is any assertion that is made
`during litigation and/or trial proceeding which is contradictory to assertions made to the
`examiner. Environ Prods., Inc. v. Total Containment, Inc., 43 USPQ2d 1288, 1291 (E.D.
`Pa. 1997). Such information might arise during litigation and/or trial proceeding in, for
`example, pleadings, admissions, discovery including interrogatories, depositions, and other
`documents and testimony.
`
`See MPEP § 2001.06(c).
`
`The Federal Circuit held on multiple occasions that the existence of related litigations and
`
`the information related to invalidity disclosed during the course of those litigations is—for the
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`purpose of determining the merits—material to patentability. See Leviton Mfg. Co. v. Universal
`
`Sec. Instruments, Inc., 606 F.3d 1353, 1362 (Fed. Cir. 2010) (determining there was inequitable
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`conduct based on patentee’s violation of “MPEP [Manual of Patent Examining Procedure] §
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`2001.06(c)” by failing to bring invalidity information to PTO’s attention); see also Nilssen v.
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`Osram Sylvania, Inc., 504 F.3d 1223, 1228, 1234 (Fed. Cir. 2007) (holding failure to disclose
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`existence of litigation demonstrated inequitable conduct).
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`-6-
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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 11 of 22
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`IV.
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`ARGUMENT
`
`A.
`
`Dialpad has Plausibly Pleaded That Flypsi’s Withholding Of The Litigation
`And Invalidity Claim Charts Was A Material Misrepresentation.
`
`Dialpad will eventually show that the PTO would have invalidated certain claims of the
`
`’585 Patent if Flypsi had disclosed: the (1) Invalidity Claim Charts and (2) Litigation. At the
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`pleading stage, however, Dialpad does not need to prove the merits of its case. See Exergen, 575
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`F.3d at 1328-1329. Rather, Dialpad must “identify the specific who, what, when, where, and how
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`of the material misrepresentation.” Dialpad’s counterclaim has done exactly that with
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`corresponding headings. Id. (See Dkt. No. 34).
`
`1.
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`Who: Inventors and Prosecution Attorneys Committed Inequitable
`Conduct.
`
`As Flypsi concedes (Dkt. 38 (“MTD”) at p. 9), Dialpad has identified who committed the
`
`inequitable conduct. Specifically, Dialpad has alleged that at least one of the identified inventors
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`for the ’585 patent, Peter Rinfret, the prosecuting patent attorney Stuart West of the West and
`
`Associates firm, and other inventors or people at Flypsi involved in the prosecution of the ’585
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`patent deceived the PTO by failing to disclose the Invalidity Claim Charts and Litigation. (See,
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`e.g., Counterclaim, ¶¶ 76-79).
`
`2.
`
`What: Flypsi Withheld The Litigation And Invalidity Claim Charts
`From The PTO.
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`Dialpad has alleged that the Flypsi withheld material, non-cumulative information from
`
`the PTO during prosecution of the ’585 patent—specifically, the Litigation and the Invalidity
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`Claim Charts. (See, e.g., Counterclaim, ¶¶ 80-85). 37 C.F.R. § 1.56 and the Manual of Patent
`
`Examining Procedure § 2001.06(c) require: “[a]t a minimum, the applicant should call the attention
`
`of the Office to the litigation, the existence and the nature of any allegations relating to validity
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`and/or ‘fraud,’ or ‘inequitable conduct’ relating to the original patent, and the nature of litigation
`
`-7-
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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 12 of 22
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`materials relating to these issues.” This is precisely what Dialpad alleges Flypsi failed to do. See
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`id. ¶¶ 81-87.
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`Flypsi does not argue that Dialpad has failed to plead the relevant facts regarding the
`
`Litigation, the Invalidity Claim Charts, and their alleged materiality. (MTD at pp. 9-12). Instead,
`
`Flypsi argues only that the information related to the Litigation, especially the Invalidity Claim
`
`Charts would not amount to material information, and the Invalidity Claim Charts are cumulative
`
`to the prior art references charted therein. (Id.) Flypsi’s invitation to the Court to make a merits
`
`determination at the pleading phase should be rejected.
`
`a.
`
`Dialpad has adequately alleged the Invalidity Claim Charts and
`Litigation are material and were not disclosed.
`
`Flypsi erroneously claims that it had no obligation to disclose the Invalidity Claim Charts
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`related to the Litigation. See MTD at p. 6 (quoting MPEP § 2001.06(c), which provides
`
`examples—not an exhaustive list—of information that needs to be disclosed to the PTO). But,
`
`governing law demonstrates otherwise. Indeed, Flypsi was under a duty to disclose all
`
`“information material to currently pending applications.” 37 C.F.R. § 1.56; MPEP 2001.06(c).
`
`And, the MPEP specifically calls out that material information may include, inter alia, information
`
`[that] might arise during litigation and/or trial proceeding in, for example, pleadings, admissions,
`
`discovery including interrogatories, depositions, and other documents and testimony. MPEP
`
`2001.06(c) (emphasis added). Consistent with these regulations, courts have held that invalidity
`
`contention charts can constitute material information a patentee has a duty to disclose. See
`
`Cutsforth, Inc., 2013 WL 2455979, at *1 ,*7.
`
`Flypsi does not—because it cannot—dispute the plain language of these governing
`
`regulations. Instead, Flypsi seeks to have this Court engage in revisionist history regarding
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`proposed—but not adopted—PTO regulations. (See MTD at p. 6). What regulations the PTO
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`-8-
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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 13 of 22
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`considered but later opted not to adopt does not alter the plain language of MPEP 2001.06(c). And,
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`Flypsi’s efforts to create a factual dispute regarding the PTO’s intentions are inappropriate at the
`
`motion to dismiss phase and fail because Dialpad has pled that the omission of the Invalidity Claim
`
`Charts was material.
`
`Unable to dispute that Dialpad has alleged that Flypsi failed to disclose the Litigation at
`
`the time of prosecution, Flypsi invites the Court to engage in rote speculation regarding what the
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`PTO examiner was aware of. See MTD at 7-8 (claiming that the examiner was aware of the
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`Litigation by virtue of the filing of a report in other related ’770, ’105, and ’554 patents by the
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`court and/or based on at least one call, with no concrete evidence or any formal record in the ’585
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`patent file history. Of note, an interview summary in the ’585 patent contains no mention of this
`
`Litigation or claim charts. But Flypsi’s speculation regarding the PTO examiner’s knowledge does
`
`not make Dialpad’s allegations implausible. And, the Court cannot consider Flypsi’s litany of
`
`matters outside the pleadings on this issue without converting the Motion to Dismiss into one for
`
`summary judgment. See Fed. R. Civ. P. 12(b)(6); Causey v. Sewell Cadillac-Chevrolet, Inc., 394
`
`F.3d 285, 288 (5th Cir. 2004) (“Documents that a defendant attaches to a motion to dismiss are
`
`considered part of the pleadings if they are referred to in the plaintiff’s complaint and are central
`
`to [the plaintiff’s] claim.” (citing Collins v. Morgan Stanley Dean Witter, 224 F.3d 496, 498-99
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`(5th Cir. 2000)). At best, all Flypsi’s arguments regarding matters outside the pleadings do is create
`
`a dispute of fact regarding whether the PTO examiner was aware of the material impact of the
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`Litigation on the issuance of the ’585 patent—plainly not enough to warrant dismissal of Dialpad’s
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`counterclaim.
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`Indeed, there is no dispute, in the formal record of the ’585 patent before its issuance, the
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`mere existence of the Litigation was not mentioned anywhere, which is contrary to the requirement
`
`-9-
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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 14 of 22
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`specified under MPEP 2001.06(c). (“In particular, material information that is raised in trial
`
`proceedings that is relevant to related applications undergoing examination should be submitted
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`on an Information Disclosure Statement for the examiner’s consideration”.) (emphasis added).
`
`Thus, Dialpad has plausibly alleged Flypsi’s failure to disclose the undisputedly material Litigation
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`at the time of the prosecution.
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`The Litigation and the Invalidity Claim Charts are exactly the type of information the PTO
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`would have considered material and the examiner would have used to more closely examine the
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`’585 Patent and corresponding prior art from this case. See Nilssen, 504 F.3d at 1234 (“The PTO
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`obviously considers such information material and there is no basis for us to conclude otherwise.”).
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`See Leviton, 606 F.3d at 1362 (“[The patentee] should have disclosed the existence of the cases
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`themselves and material information from those cases, not just invalidating prior art.”). And there
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`is no question that Dialpad has pled facts giving rise to a plausible inference of the materiality of
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`this information. See Counterclaim, ¶¶ 80-85. Indeed, although the PTO had the prior art references
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`Dialpad gave to Flypsi, it did not have the benefit of the Invalidity Claim Charts which serve as a
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`roadmap to invalidity. As other courts have held, failing to disclose information underlying prior
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`art references gives rise to an inference of inequitable conduct. See Nilssen, 504 F.3d at 1234;
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`Leviton, 606 F.3d at 1362. Indeed, it is plausible that the PTO would not have allowed at least
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`some of the Asserted Claims if it had the Invalidity Claim Charts in its possession during
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`prosecution of the ’585 patent. The Invalidity Claim Charts specifically chart features from at least
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`nine prior art references and their different combinations thereof against the elements of Claims of
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`the ’770, ’105, ’094, and ’554 patents. As Dialpad has alleged in its Counterclaim, the ’554 and
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`’585 patents have very similar claim elements and limitations as shown below:
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`-10-
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`

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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 15 of 22
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`’554 Patent, Claim 1
`1. A method of providing telephone service,
`comprising:
`automatically storing electronic information
`that indicates an association of a secondary
`telephone number and a primary telephone
`number with a mobile device in a computer
`memory associated with a server;
`automatically transmitting information that
`indicates an access telephone number to the
`mobile device via a data channel;
`automatically associating the telephone access
`number with a switch associated with the
`server;
`receiving, at the switch associated with the
`server, an outgoing call from the mobile
`device to the access telephone number via a
`second channel;
`receiving, at the server, information from the
`switch indicating the outgoing call is being
`made to the access telephone number from the
`primary telephone number; and
`
`receiving, at the switch, information from the
`server directing the switch to:
`(a) connect the outgoing call to a contact
`telephone number indicated by the mobile
`device, and
`(b) identify a telephone number from which
`the outgoing call is being made as the
`secondary telephone number.
`
`’585 Patent, Claim 1
`1. A method of providing telephone service,
`comprising:
`automatically storing electronic information
`that indicates an association of a secondary
`telephone number and a primary telephone
`number with a mobile device in a computer
`memory associated with a server;
`automatically transmitting information that
`indicates an access telephone number to the
`mobile device via a data channel;
`automatically associating a primary telephone
`number and access telephone number pairing
`with a corresponding secondary telephone
`number and contact telephone number pairing
`in the computer memory;
`receiving, at a switch associated with the
`server, an outgoing call from the mobile
`device to the access telephone number via a
`second channel;
`receiving, at the server, information from the
`switch indicating the outgoing call is being
`made to the access telephone number from the
`primary telephone number; and
`receiving, at the switch, information from the
`server directing the switch to:
`(a) connect the outgoing call to the contact
`telephone number of the secondary telephone
`number and contact telephone number
`pairing, and
`(b) identify a telephone number from which
`the outgoing call is being made as the
`secondary telephone number.
`
`See Counterclaim ¶ 83. This fact alone gives rise to a plausible inference that these
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`elements—which were specifically identified in the Invalidity Claim Charts, but which were not
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`disclosed to the PTO—were material. See generally Therasense, Inc. v. Becton, Dickinson & Co.,
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`649 F.3d 1276, 1292 (Fed. Cir. 2011) (“Often the patentability of a claim will be congruent with
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`the validity determination—if a claim is properly invalidated in district court based on the
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`deliberately withheld reference, then that reference is necessarily material because a finding of
`
`-11-
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`

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`Case 6:21-cv-00642-ADA Document 39 Filed 02/22/22 Page 16 of 22
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`invalidity in a district court requires clear and convincing evidence, a higher evidentiary burden
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`than that used in prosecution at the PTO. However, even if a district court does not invalidate a
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`claim based on a deliberately withheld reference, the reference may be material if it would have
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`blocked patent issuance under the PTO’s different evidentiary standards.”)
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`By failing to disclose the Invalidity Claim Charts to the PTO, Flypsi also deprived the PTO
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`of specifically contemplated combinations of prior art references that invalidate the Asserted
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`Claims as obvious under 35 U.S.C. § 103. Simply submitting the r