By Memorandum Order entered by The Honorable Leonard P. Stark in Graphics Properties Holdings, Inc. v. Google, Inc., C.A. No. 12-1394-LPS (D.Del., November 20, 2014) (consolidated), the Court granted the motion of defendants Google, Inc., Lenovo Holding Company, Inc. and Lenovo (United States) Inc. to amend their answer pursuant to Federal Rule of Civil Procedure 15(a) to add a defense alleging that the patent-in-suit, U.S. Patent No. 8,144,158 (“the ‘158 patent”), which is a continuation of United States Patent No. 6,650,327 (“the ‘327 patent”), is unenforceable due to plaintiff Graphic Properties’ inequitable conduct before the United States Patent and Trademark Office (“USPTO”). Specifically, defendants claimed that plaintiff and its attorneys withheld a Federal Circuit Order with intent to deceive the USPTO concerning the prior construction of the term “scan conversion” in the ‘327 patent. Id. at 2-3. Plaintiff contended the amendment of the answer would be futile because it did provide the USPTO with actual notice of the District Court Order during the patent prosecution. Id. at 3. The Court concluded that, regardless of whether the examiner was provided with the District Court’s Order, it was undisputed that the examiner was not given the subsequent Federal Circuit Order which contained statements not contained in the District Court’s Order. Id. at 3-4. Thus, the amendment was not futile and leave to amend was granted. Id. at 4-6.
A copy of the Memorandum Order is attached.