United States District Court 

for the 

Southern District of Florida 

DeCurtis LLC, Plaintiff,

v. 

Carnival Corporation, Defendant. 

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Civil Action No. 20-22945-Civ-Scola 

_______________________________________________________________________________ 

Carnival Corporation, Plaintiff,

v. 

DeCurtis Corporation and DeCurtis 

LLC, Defendants. 

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Consol. Case No. 20-21547-Civ-Scola 

SEALED Order on Report and Recommendations 

Regarding Cross Motions for Summary Judgment 

In these consolidated cases, the parties’ grievances against one another 

stem primarily from alleged intellectual-property rights related to portable 

devices aimed at enhancing guest engagement in various tourism venues. 

Carnival Corporation seeks redress against DeCurtis Corporation and DeCurtis 

LLC (together, “DeCurtis”) for breach of contract, trade-secret 

misappropriation, and patent infringement (Carnival’s 2nd Am. Compl., ECF No. 

88). DeCurtis, conversely, in its complaint, seeks declaratory relief as to noninfringement and unenforceability, and damages based on unfair competition, 

tortious interference, and antitrust violations (DeCurtis’s Am. Compl., ECF No. 

87). This matter was referred to United States Magistrate Judge Edwin G. 

Torres for a ruling on all pre-trial, non-dispositive matters, and for a report and 

recommendation on any dispositive matters. (ECF No. 102.) Presently under 

consideration is Judge Torres’s report and recommendations as to the parties’ 

cross motions for summary judgment. (Rep. & Rec., ECF No. 426.) Judge 

Torres recommends that the Court deny Carnival’s motion in its entirety, 

rejecting Carnival’s quest for judgment in its favor as to (1) its own breach-ofcontract claims; (2) DeCurtis’s monopolization, tortious-interference, unfaircompetition, and declaratory-judgment claims; and (3) DeCurtis’s affirmative 

defenses and claims as to patent unenforceability. Judge Torres also 

recommends mostly denying DeCurtis’s motion, to the extent it seeks judgment 

in its favor as to (1) Carnival’s breach-of-contract claim; and (2) some of the 

infringement theories advanced by Carnival. Conversely, Judge Torres 

recommends granting summary judgment in DeCurtis’s favor, in part, as to 

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Carnival’s infringement allegations regarding one claim of one of the three 

patents at issue in this case. Both parties have filed objections to the report 

(Carnival’s Objs., ECF No. 429; DeCurtis’s Objs., ECF No. 431) and those 

objections have been fully briefed (Carnival’s Resp. to Objs., ECF No. 452; 

DeCurtis’s Resp. to Objs., ECF No. 450).1 After careful review, the Court 

adopts Judge Torres’s report and recommendations in part (ECF No. 426), 

granting in part and denying in part the parties’ cross motions for summary 

judgment (ECF Nos. 288, 292) as further explained below. 

1. Background 

The dispute in this case centers on a “guest engagement system” that 

Carnival has patented. The invention, in broad strokes, uses wireless sensing 

technology to enable a host to seamlessly engage with guests throughout the 

host’s facilities. DeCurtis, among others, was involved as an independent 

contractor with helping Carnival develop, in disputed degrees, the patented 

system. Before the invention was patented, however, the parties’ relationship 

ended. After the split, Carnival began to suspect that DeCurtis was violating 

the parties’ confidentiality agreement and preparing to provide or providing 

infringing technology to Carnival’s competitors. This litigation ensued, as a 

consolidation of two separate actions filed by the parties. After extensive 

discovery and motion practice, remaining for disposition are, essentially, three 

groups of claims. 

One group is comprised of Carnival’s breach-of-contract claim. 

(Carnival’s 2nd Am. Compl. at 36.) Through that claim, Carnival alleges that 

DeCurtis has breached the parties’ master services agreement by failing to 

comply with a number of its provisions. 

The second group is made up of the parties’ competing claims regarding 

the three Carnival patents at issue in this case.2 Carnival alleges that DeCurtis 

has infringed the three Asserted Patents (id. at 41–62) while DeCurtis seeks 

declaratory judgments that the patents are invalid, unenforceable, and not 

infringed (DeCurtis’s Am. Compl. at 32–33, 37–58). 

1 The Court cites to the parties’ redacted filings rather than their sealed filings. Further, the 

Court initially files this order under seal, pending input from the parties regarding a redacted 

version that may be filed on the public docket.

2 The three patents at issue, which share a common specification, are U.S. Patent No.

10,045,184 (the “’184 patent” or “system patent”) (ECF No. 205-2), U.S. Patent

No. 10,049,516 (the “’516 patent” or “door-lock patent”), (ECF No. 205-3), and U.S. Patent

No. 10,157,514 (the “’514 patent or “portable-wireless-device patent”), (ECF No. 205-4). 

Collectively, these are the “Asserted Patents” or “Patents.”

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And, lastly, the third group is composed of DeCurtis’s claims for 

antitrust violations, tortious interference, and unfair competition. (Id. at 33–

36.) 

 Judge Torres issued a report and recommendation as to the parties’ 

cross motions for summary judgment, as described above. Both parties have 

objected to various aspects of that report. 

2. Standard of Review 

“In order to challenge the findings and recommendations of the 

magistrate judge, a party must file written objections which shall specifically 

identify the portions of the proposed findings and recommendation to which 

objection is made and the specific basis for objection.” Macort v. Prem, Inc., 208 

F. App’x 781, 783 (11th Cir. 2006) (quoting Heath v. Jones, 863 F.2d 815, 822 

(11th Cir.1989) (cleaned up). The objections must also present “supporting 

legal authority.” Local Mag. J. R. 4(b). Once a district court receives “objections 

meeting the specificity requirement set out above,” it must “make a de novo

determination of those portions of the report to which objection is made and 

may accept, reject, or modify in whole or in part, the findings or 

recommendations made by the magistrate judge.” Macort, 208 F. App’x at 783–

84 (quoting Heath, 863 F.2d at 822) (cleaned up). To the extent a party fails to 

object to parts of the magistrate judge’s report, those portions are reviewed, at 

a minimum, for clear error. Macort, 208 F. App’x at 784 (quoting Johnson v. 

Zema Sys. Corp., 170 F.3d 734, 739 (7th Cir.1999)). A court, in its discretion, 

need not consider arguments that were not, in the first instance, presented to 

the magistrate judge. Williams v. McNeil, 557 F.3d 1287, 1291 (11th Cir. 2009). 

3. Analysis 

Although the parties have only objected to some of Judge Torres’s 

findings and conclusions, the Court has, nonetheless reviewed the entirety of 

his report de novo. Having done so, the Court finds itself in agreement with 

much of Judge Torres’s analyses and resulting determinations, modifying it 

only as to the third group of claims and, generally, DeCurtis’s allegations of 

inequitable conduct relating to inventorship omission, as set forth in detail, 

below. Accordingly, the Court overrules DeCurtis’s objections (ECF No. 431) in 

their entirety and overrules in part and sustains in part Carnival’s objections 

(ECF No. 429). 

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A. Carnival’s Breach-of-Contract Claim

As to Carnival’s breach-of-contract allegations, both parties moved for 

summary judgment, as to various aspects of that claim. Judge Torres found 

both efforts fell short and recommended denying both motions, leaving the 

entirety of Carnival’s breach-of-contract claim for resolution through trial. 

Carnival does not object to this aspect of Judge Torres’s report but DeCurtis 

does. DeCurtis argues (1) that it should be granted summary judgment as to 

the breach-of-contract theories that Judge Torres concluded Carnival failed to 

prevail on; and (2) Judge Torres erred in denying DeCurtis’s defensive motion 

for summary judgment based on the master service agreement’s “audit 

demand” and “Carnival information” provisions. The Court is not persuaded.

First, DeCurtis provides no legal authority for its contention that a 

rejection of a plaintiff’s motion for summary judgment on its own claim should 

be converted into a defensive judgment on that claim, in favor of the 

responding party. Accordingly, the Court overrules DeCurtis’s objections as to 

Judge Torres’s rejection of Carnival’s theories based on the master service 

agreement’s forum-selection and advertising clauses. (DeCurtis’s Objs. at 16.)

Second, the Court agrees with Judge Torres that DeCurtis’s motion 

should be denied with respect to Carnival’s allegations that DeCurtis breached 

the agreement by misusing Carnival’s source code and failing to comply with 

the audit provision. As found by Judge Torres, the record reveals genuine 

issues of material fact as to both issues. DeCurtis’s objections to the contrary 

are unpersuasive.

B. The Asserted Patents

Carnival accuses DeCurtis of infringing claims 1–3, 7–8, and 11–15, of 

the ’184 patent; claims 13, 15, and 18 of the ’516 patent; and claim 11 of the 

’514 patent. As Judge Torres observes, “[t]hese infringement contentions are 

numerous and nuanced, alleging an array of infringement theories pursuant to 

35 U.S.C. §§ 271(a), 271(b), 271(c), and 271(f).” (Rep. & Rec. at 9.) DeCurtis 

sought summary judgment on only a fraction of the infringement theories 

advanced by Carnival, some relating to DeCurtis’s collaboration with 

Norwegian Cruise Lines and some with Virgin Voyages. As to DeCurtis’s 

arguments relating to the Norwegian allegations, Judge Torres found 

DeCurtis’s position wholly unsupported. In contrast, Judge Torres found one of 

DeCurtis’s four arguments as to Carnival’s Virgin allegations viable, 

recommending that the Court grant summary judgment in DeCurtis’s favor on 

that front. Unsurprisingly, in this case, each party objects to those parts of the 

report that are adverse to its respective position.

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After careful consideration, the Court overrules both parties’ objections, 

agreeing with Judge Torres’s findings, analyses, and ultimate conclusions 

regarding the infringement claims. First, as Judge Torres found, DeCurtis’s 

arguments in seeking summary judgment as to the infringement claims that 

are related to DeCurtis’s collaboration with Norwegian are wholly deficient. In 

objecting, DeCurtis ignores the deficiencies of its initial arguments and instead 

complains, essentially, that Carnival failed, in responding to DeCurtis’s motion 

for summary judgment, to marshal facts showing that Carnival itself was 

entitled to summary judgment on this claim. In doing so, DeCurtis scrambles 

the parties’ respective burdens in the context of a motion for summary 

judgment: in resisting DeCurtis’s motion, Carnival’s role was only to address 

the sufficiency of that motion; not to affirmatively show that summary 

judgment should instead be granted in Carnival’s favor. 

Next, DeCurtis’s objections regarding Judge Torres’s conclusion that 

DeCurtis is not entitled to summary judgment regarding the Patent claims that 

require an access panel equipped with a “radio,” are similarly misdirected. 

Again, in responding to DeCurtis’s motion for summary judgment, Carnival 

directed its efforts towards undermining DeCurtis’s specific argument: that 

certain testimony showed that the access panels installed on Virgin’s ship were 

not infringing because they used an infrared communication module—rather 

than a “radio”—to communicate information between any given access panel 

and its paired door. In its efforts to undercut that argument, Carnival pointed 

to documentation that, read in the light most favorable to Carnival, depicts 

DeCurtis’s system’s indeed using access panels with radios. This directly 

contradicts the testimony DeCurtis relies on, thus creating a genuine issue of 

material fact for trial. DeCurtis’s objection, that this documentation, at most, 

shows an inchoate plan to install radios, rather than actual implementation, 

amounts to nothing more than its competing interpretation of the evidence—

exactly the kind of thing that should be presented to a jury for determination at 

trial.

Continuing, DeCurtis’s arguments that it is entitled to summary 

judgment as to the “sensor network” infringement claims follow a similar 

pattern. Regarding both the alleged installation of door-access panels on 

Virgin’s ship and DeCurtis’s alleged testing of a version of its system that 

infringed upon the claimed BLE “sensor network,” Judge Torres found genuine 

issues of material fact. DeCurtis’s objections to Judge Torres’s conclusions 

again miss the mark. DeCurtis fails to acknowledge that Carnival has 

marshaled record evidence that, viewed in the light most favorable to Carnival, 

casts doubt on the evidence DeCurtis set forth trying to show noninfringement. 

Carnival was not required to come forward with record evidence controverting 

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all possible aspects of DeCurtis’s conclusory position that infringing panels 

were never installed on Virgin’s ships; instead, Carnival’s burden was to show 

that either (A) DeCurtis failed to establish an absence of a genuine issue of 

material fact or (B) if DeCurtis carried its threshold burden, to designate facts 

which, if viewed in the light most favorable to Carnival, would allow a 

reasonable juror to find in Carnival’s favor. The Court agrees with Judge Torres 

that Carnival succeeded in carrying its burden in opposing DeCurtis’s motion

as to the “sensor network” infringement claims.

The Court also agrees with Judge Torres’s finding that DeCurtis failed to 

establish entitlement to summary judgment as to Carnival’s infringement 

assertion based on DeCurtis’s offers to sell. DeCurtis’s objections focus on the 

various pieces of evidence Carnival relies on as if each document, in isolation, 

has to, independently, establish infringement. DeCurtis’s efforts miss the 

mark. When viewed collectively, and in the light most favorable to Carnival, the 

evidence, considered together, could lead a reasonable trier of fact to conclude 

that DeCurtis’s extensive, detailed communications with specific customers 

(like NCL and Virgin, for example) about the DXP system establish infringing 

offers to sell.

Finally, Carnival objects to Judge Torres’s one adverse infringement 

finding against Carnival, where he concludes that Carnival has failed to come 

forward with record evidence establishing DeCurtis’s infringement of claim 11 

of the ’514 Patent. At issue is whether DeCurtis’s wearable device infringes a 

limitation of claim 11 that requires the wearable device to “store,” in its 

“memory,” a “private identifier[] unique to the portable wireless device [the 

wearable device].” (Rep. & Rec. at 15.) Carnival complains that the report, in 

granting DeCurtis’s motion on this issue, “improperly weighs evidence and 

ignores disputed facts.” (Carnival’s Objs. at 17.) The Court disagrees: none of 

the evidence Carnival relies on supports a finding of DeCurtis’s infringement of 

the unique private-identifier limitation of claim 11. Although bits and pieces of 

that evidence might implicate discrete parts of the limitation, none of it, either 

singularly or read together, would lead the Court to infer an infringing wearable

device with memory that stores a unique private identifier. While the evidence

Carnival points to might show that the allegedly infringing product might allow

for a wearable device that has a “unique” “private identifier[]” stored in the 

“memory” of the wearable device, that does not amount to evidence, indirect or 

direct, that it actually does so—no matter how favorably to Carnival the Court 

reads the evidence. Further, the substance of Carnival’s allegations of error is, 

in many respects lacking. For example, Carnival lists several pages from 

Carnival’s expert’s opening report that it says DeCurtis cited in its motion for 

summary judgment to support DeCurtis’s position that Carnival’s privateCase 1:20-cv-22945-RNS Document 494 Entered on FLSD Docket 02/08/2023 Page 6 of 15
identifier infringement allegations are purely speculative. Carnival then posits, 

without elaboration, that “DeCurtis’s speculation objection is belied by the 

foregoing documents” (Carnival’s Objs. at 17) but doesn’t actually explain how 

and certainly doesn’t reveal any error in Judge Torres’s analysis. Ultimately, 

after careful review, the Court agrees with Judge Torres’s conclusion that 

DeCurtis should be granted summary judgment with respect to claim 11 of the 

’514 patent.3

C. DeCurtis’s Antitrust and Tort Claims 

Through its complaint, DeCurtis maintains that, because Carnival’s 

Asserted Patents are invalid, unenforceable, or both, Carnival has engaged in 

monopolization and attempted monopolization in violation of the Sherman Act; 

and tortious interference with DeCurtis’s business relationships and unfair 

competition under Florida law. These claims all arise from Carnival’s (1) 

providing notice of its patents; and (2) bringing its part of this lawsuit. In 

seeking summary judgment on these four claims, Carnival argued that, even if 

DeCurtis’s factual allegations were all accepted as true, Carnival’s lawsuit is 

nonetheless protected under the Noerr-Pennington doctrine; and its pre-suit 

communications and ensuing lawsuit are also protected under the patentprivilege doctrine. (Carnival’s Mot. for Summ. J., ECF No. 288.) Further, said 

Carnival, DeCurtis was unable to come forward with any facts that could 

establish a genuine issue for trial regarding either the sham-litigation, fraud, or 

bad-faith exceptions to those doctrines. (Id.) Finally, Carnival pointed to other 

infirmities, as well, regarding a dearth of record evidence as to various 

elements of DeCurtis’s claims. In its opposition, DeCurtis opined that the 

record raises “serious questions regarding Carnival’s conduct.” (DeCurtis’s 

Resp. to Mot. for Summ. J., ECF No. 311, 8.) In support, DeCurtis pointed to 

record evidence that it argues (1) shows Carnival made misrepresentations to 

the PTO regarding David DeCurtis’s inventorship; (2) indicates Carnival 

intended to deceive the PTO; and (3) establishes that Carnival threatened, and 

has now engaged in, sham litigation. (Id. at 8–18.) 

 In evaluating Carnival’s motion for summary judgment on these claims, 

Judge Torres notes that the resolution of the disputed validity of the Asserted 

Patents would facilitate determining whether Carnival’s conduct amounts to an 

antitrust violation, tortious interference, or unfair competition. (Rep. & Rec. at 

3 Carnival contends that documents that are the subject of a pending privilege dispute before 

Judge Torres may bolster its showing regarding its ’514 claims. Depending on the outcome of 

that controversy, the Court’s ruling is without prejudice, on that very narrowly circumscribed 

basis, to the extent Carnival might believe it has a good faith basis to renew its motion in that 

limited regard.

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7–8.) As he explains it, “the genuinely disputed facts of invalidity and 

unenforceability infect the balance of the patent-related claims.” (Id. at 8.) 

Based on this infection, Judge Torres found summary judgment on any of 

DeCurtis’s antitrust or tort claims unwarranted. While the Court agrees a 

resolution of the validity and enforceability issues would certainly aid the 

Court, the Court disagrees that this sought-after efficiency thwarts the Court’s

consideration of Carnival’s position altogether. Indeed, upon a de novo review, 

the Court finds Carnival’s points on summary judgment well taken. The Court, 

therefore, and as more fully explained below, sustains Carnival’s objections, 

and instead grants summary judgment in Carnival’s favor as to DeCurtis’s 

antitrust and tort claims as well as any other claims or defenses to the extent 

they are based on the same alleged inequitable conduct.

Under the Noerr-Pennington doctrine and the patent privilege, a 

patentholder is, ordinarily, shielded from liability based on its patent 

communications and claims. The Noerr–Pennington doctrine protects the First 

Amendment guarantee of the right of the people to petition the government. 

Under the Noerr–Pennington doctrine, those who petition the government, 

including the courts, for redress are “generally immune from antitrust liability.”

Prof’l Real Estate Invs., Inc. v. Columbia Pictures Indus., 508 U.S. 49, 56 (1993). 

Relatedly, as to the patent privilege, “federal patent law bars the imposition of 

liability for publicizing a patent in the marketplace.” Hunter Douglas, Inc. v. 

Harmonic Design, Inc., 153 F.3d 1318, 1336 (Fed. Cir. 1998), overruled on other 

grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. 

Cir. 1999). 

These protections, however, are not absolute and are subject to 

exceptions. The Noerr-Pennington doctrine can be overcome by a showing that 

the patent owner either engaged in sham litigation or obtained the patent 

through knowing and willful fraud. See Andrx Pharm., Inc. v. Elan Corp., PLC, 

421 F.3d 1227 (11th Cir. 2005) (sham litigation); Walker Process Equipment, 

Inc. v. Food Machinery and Chemical Corp., 382 U.S. 172, 174 (1965) (fraud). 

Similarly, the patent-privilege shield is ineffective upon a showing that the 

patentholder acted in bad faith. Hunter Douglas, 153 F.3d at 1336. It is these 

exceptions that are at the heart of the parties’ dispute on summary judgment.

(1) DeCurtis has failed to come forward with record evidence or 

argument establishing a genuine issue of material fact regarding the 

sham-litigation exception.

“The burden falls on the party challenging immunity to show that the 

underlying litigation is a ‘sham.’” Atico Intern. USA, Inc. v. LUV N’ Care, Ltd., 09-

60397-CIV-COHN, 2009 WL 2589148, at *3 (S.D. Fla. Aug. 19, 2009) (Cohn, 

Case 1:20-cv-22945-RNS Document 494 Entered on FLSD Docket 02/08/2023 Page 8 of 15
J.). To prove “sham litigation” DeCurtis must show that: (1) Carnival’s lawsuit 

is objectively baseless; and (2) Carnival acted with the “subjective motivation to 

interfere directly with the business relationships of a competitor.” Andrx 

Pharm., 421 F.3d at 1234 (cleaned up). Establishing that a lawsuit is 

objectively baseless is far from a simple task, requiring a showing that “no 

reasonable litigant could realistically expect success on the merits.” Prof’l Real 

Estate, 508 U.S. at 60. Importantly, a court “must remember that even when 

the law or the facts appear questionable or unfavorable at the outset, a party 

may have an entirely reasonable ground for bringing suit.” Id. at 61 n. 5 

(cleaned up). That is, “sham litigation must constitute the pursuit of claims so 

baseless that no reasonable litigant could realistically expect to secure 

favorable relief.” Id. at 62. DeCurtis’s showing does not establish that 

Carnival’s suit is objectively baseless.

DeCurtis’s attempt to show that Carnival’s case is objectively baseless is 

wholly conclusory and unsupported. The entirety of DeCurtis’s argument, in its 

summary-judgment opposition brief, was that Carnival has asserted “bogus 

‘trade secrets’ and overbroad, unenforceable patents against technology it 

knows does not infringe to make this litigation as expensive and burdensome 

as possible.” (DeCurtis’s Resp. to Carnival Mot. for Summ. J. at 17.) In support 

of its position, DeCurtis points to a Third Circuit opinion where the court there 

acknowledged that “one might imagine a situation where a single claim, 

separated from an otherwise arguably meritorious suit, is so harmful and 

costly to a defendant that it might impose anticompetitive harm on the 

defendant in a way that triggers the sham litigation exception to Noerr–

Pennington.” Avaya Inc., RP v. Telecom Labs, Inc., 838 F.3d 354, 414 (3d Cir. 

2016). DeCurtis offers no further elaboration. Without more, the Court cannot 

conclude that Carnival’s trade-secrets or any of its patent claims are objectively 

baseless or, even if they were, that they would be so harmful that they would 

taint the entirety of Carnival’s case. Accordingly, upon a de novo review, the 

Court finds the sham-litigation exception inapplicable here.

(2) DeCurtis has failed to come forward with record evidence or 

argument establishing a genuine issue of material fact regarding the 

Walker Process fraud exception.

In opposing Carnival’s motion for summary judgment, DeCurtis 

maintained the Noerr-Pennington doctrine was also inapplicable under the 

Walker Process fraud exception. Walker Process, 382 U.S. at 174 (holding that 

“the enforcement of a patent procured by fraud on the Patent Office may be 

violative of [federal antitrust law] provided the other elements necessary to a[n] 

[antitrust] case are present.”). In support, DeCurtis pointed to (1) Carnival’s

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alleged omission of David DeCurtis as an inventor of the Asserted Patents; and 

(2) Carnival’s alleged purposeful omission of David DeCurtis, intending to 

deceive the PTO in seeking the Asserted Patents. (DeCurtis’s Resp. to Carnival’s 

Mot. for Summ. J. at 8–17.) Although there may be genuine issues of material 

fact as to inventorship, the Court finds no such showing with respect to 

Carnival’s alleged intent to deceive and, accordingly, finds DeCurtis has failed 

to ward off summary judgment on this point.

The Walker Process fraud exception, as it is commonly referred to, 

requires, as a starting point, “(1) a false representation or deliberate omission 

of a fact material to patentability (2) made with the intent to deceive the patent 

examiner, (3) on which the examiner justifiably relied in granting the patent, 

and (4) but for which misrepresentation or deliberate omission the patent 

would not have been granted.” NRT Tech. Corp. v. Everi Holdings Inc., CV 19-

804-MN-JLH, 2020 WL 3403091, at *5 (D. Del. June 19, 2020), report and 

recommendation adopted, CV 19-804 (MN) (JLH), 2020 WL 5742792 (D. Del. 

Sept. 25, 2020). Further, “[c]laims of Walker Process fraud must satisfy the 

particularity requirement of Rule 9(b)” which “requires pleading the who, what, 

when, where, and how of the events at issue.” Id. As to intent to deceive, a 

patent challenger must ultimately show, by clear and convincing evidence,

“that deceptive intent [is] the single most reasonable inference to be drawn 

from the evidence.” U.S. Water Services, Inc. v. Novozymes A/S, 843 F.3d 1345, 

1352 (Fed. Cir. 2016) (“In situations of nondisclosure of information rather 

than affirmative misrepresentation, clear and convincing evidence must show 

that the applicant made a deliberate decision to withhold a known material 

reference.”) (cleaned up). 

As an initial matter, DeCurtis argues that it need only show some factual 

dispute as to deceptive intent rather than, more onerously, pointing to record 

evidence showing that deceptive intent is “the single most reasonable inference 

able to be drawn from the evidence.” Therasense, Inc. v. Becton, Dickinson & 

Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011). In support of its argument, 

DeCurtis cites several cases (DeCurtis’s Resp. to Objs. at 12; DeCurtis’s Resp. 

to Mot. for Summ. J. at 4–5, 10), which either do not stand for that proposition

or with which the Court’s disagrees. 

For example, DeCurtis cites to Ohio Willow Wood Co. v. Alps S., LLC, for 

the proposition that “district courts routinely deny summary judgment of 

inequitable conduct because of the factual issues that remain.” (DeCurtis’s 

Objs. at 12 (citing Ohio Willow, 735 F.3d at 1351); see also DeCurtis’s Resp. to 

Carnival’s Mot. For Summ. J. at 12.) But that is not what the Federal Circuit 

said in that case—far from it. Instead, the Ohio Willow Wood court made clear 

that, in evaluating a motion for summary judgment, “when there are multiple 

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reasonable inferences that may be drawn, intent to deceive cannot be found.” 

735 F.3d at 1351 (emphasis added). Although the court there reversed the 

district court’s grant of summary judgment (in favor of the patentee) on the 

intent-to-deceive element, it did not do so based on mere “factual issues,” as 

DeCurtis suggests. Instead, it did so based on the conclusion that “the 

collective weight of this evidence supports our conclusion that the evidence 

would support a finding of intent that is the single most reasonable inference to 

be drawn from the evidence at this stage of the proceedings.” Id. at 1351

(emphasis added). That is a far cry from a mere “factual issue.”

Similarly, DeCurtis looks to a Middle District of Florida district-court 

case for the same proposition, again ignoring Therasense’s “single most 

reasonable inference” language. In that case, Mitsubishi Heavy Indus., Ltd. v. 

Gen. Elec. Co., the court denied a patentee’s motion for summary judgment on 

the intent-to-deceive issue. 6:10-CV-812-ORL-28, 2012 WL 4336208, at *4 

(M.D. Fla. Sept. 21, 2012). But in doing so, the court reiterated that a

challenger, to prevail, must show that “the specific intent to deceive is the 

single most reasonable inference able to be drawn from the evidence.” Id. 

(cleaned up). And, in finding for the challenger, the court identified multiple 

pieces of evidence, including a document “directly on point,” in favor of the 

challenger as well as pivotal credibility issues which, on a motion for summary

judgment, the Court was unable resolve. Id. The Mitsubishi Heavy court did not 

clarify the precise standard on which it relied, but it appears the evidence it 

identified could have been substantial enough, read in the light most favorable 

to the challenger, to support a finding that an intent to deceive was “the single 

most reasonable inference able to be drawn” from the record.

In contrast, in Alcon Research, Ltd. v. Apotex, Inc., another case DeCurtis 

relied on, the court concluded that Therasense set forth the standard a 

challenger would need to prove at trial, not the standard on a motion for 

summary judgment. 1:09-CV-102-RLY-TAB, 2013 WL 2244338, at *8 (S.D. Ind. 

May 21, 2013). Instead, concluded the Alcon court, the proper inquiry, on a 

patentee’s motion for summary judgment, should be only “whether, viewing the 

evidence in the light most favorable to the [challenger], no reasonable trier of 

fact could find the Applicants acted with the specific intent to deceive the PTO.” 

Id. While the Court agrees that, certainly, the evidence must be viewed in the 

light most favorable to the nonmovant—here, DeCurtis—the standard in 

Therasense nonetheless still applies. That is, for a patentee to prevail on a 

motion for summary judgment, on the intent-to-deceive issue, the evidence, 

viewed in the light most favorable to the challenger, must show that no 

reasonable trier of fact could find that “the specific intent to deceive is the 

single most reasonable inference able to be drawn.” See Intercontinental Great 

Case 1:20-cv-22945-RNS Document 494 Entered on FLSD Docket 02/08/2023 Page 11 of 15
Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1352 (Fed. Cir. 2017) (in 

affirming a district court’s grant of summary judgment in favor a patentee on 

intent to deceive, concluding “that the Therasense intent standard could not be 

met”) (“[T]he record does not support an inference of deceptive intent under 

the Therasense standard.”). 

 The other two cases DeCurtis relies on are equally unavailing. Leviton 

Mfg. Co., Inc. v. Universal Sec. Instruments, Inc., for example, was decided 

before Therasense. 606 F.3d 1353 (Fed. Cir. 2010). And Morningware, Inc. v. 

Hearthware Home Products, Inc., for its part, merely concluded that a finding in 

favor of a challenger, on a motion for summary judgment, on the inequitableconduct issue, is “rarely appropriate.” 898 F. Supp. 2d 1018, 1022 (N.D. Ill. 

2012). That has little bearing on this case, where the issue is whether 

DeCurtis, who carries the burden to prove intent to deceive, has come forward 

with evidence sufficient to carry it past summary judgment. 

 In light of the Therasense standard, the Court finds DeCurtis’s showing 

wholly insufficient to get past summary judgment. Indeed, the bulk of 

DeCurtis’s support simply highlights the dearth of any intent-to-deceive 

evidence at all, never mind enough to show that the intent to deceive is the 

single most reasonable inference to be drawn from the record. For example, in 

opposing summary judgment, DeCurtis complained that “there is no evidence—

none—explaining why Carnival . . . chose to omit Mr. DeCurtis as an inventor.” 

(DeCurtis’s Resp. to Mot. for Summ. J. at 14.) Indeed, DeCurtis repeatedly 

points to a lack of any evidence from Carnival showing that David DeCurtis 

was omitted for a good-faith or legitimate reason. (Id. at 14, 16.) But a 

patentee’s failure to produce evidence affirmatively showing good faith does not 

equate to a concomitant showing of bad faith, especially when the burden falls 

to the challenger to make its case for inequitable conduct. Put simply, 

“[p]roving that the applicant knew of a reference, should have known of its 

materiality, and decided not to submit it to the PTO does not prove specific 

intent to deceive.” Therasense, 649 F.3d at 1290. DeCurtis improperly flips the 

parties’ respective burdens when it complains that “[w]hether an inference of 

‘good faith’ is reasonable here is a complex, fact[-]intensive question, ill-suited 

to summary judgment.” (DeCurtis’s Resp. to Mot. for Summ. J. at 17.) Carnival 

does not need to proactively prove good faith in order to establish that DeCurtis 

has failed to come forward with evidence “sufficient to require a finding of 

deceitful intent in the light of all the circumstances.” Therasense, 649 F.3d at 

1290 (emphasis in original). To be sure, “a patentee need not offer any good 

faith explanation unless the accused infringer first proves a threshold level of 

intent to deceive by clear and convincing evidence.” Id. at 1296 (cleaned up). 

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Moreover, the Court finds the record reveals evidence that, even if read in 

the light most favorable to DeCurtis, reasonably indicates Carnival did not 

intend to defraud the Patent Office and, instead, omitted David DeCurtis 

because it was actually believed he was not, in fact, an inventor. For example, 

not a single inventor testified that David DeCurtis should have been named on 

any Carnival patent. (See, e.g., Carnival’s Reply to Mot. for Summ. J. at 7.) But 

even if these inventors were incorrect in their beliefs, without any evidence in 

the record showing that these inventors were lying, the most that can be 

inferred is a mistake. See Great Brands, 869 F.3d at 1352 (noting that the 

challenger had presented “no admission or anything similar indicating that any 

relevant [patentee] officer or representative” “actually believed” the error was 

actually an error).

DeCurtis pins much of its position on “an internal Carnival 

memorandum in the record that predates the Asserted Patents and includes 

David DeCurtis among a ‘List of Inventors’ responsible for numerous ‘[p]atent 

ideas.’” (DeCurtis’s Resp. to Objs. at 11 (quoting Rep. & Rec. at 8 n. 7).) But to 

draw fraudulent intent from this document, the Court would have to make a 

number of unsupported inferential leaps. For example, the Court would have to 

infer that Carnival believed this document, which predates the patent 

application by almost two years and which does not track what Carnival 

actually patented, accurately lists all the inventors who should have been 

included in the application. But DeCurtis has provided no evidence that this is 

so. And, to the contrary, Carnival has presented evidence that the author of 

this document has himself testified that he may have erred in labelling the 

memo in the way that he did. (See, e.g., Carnival Objs. at 11.) Ultimately, at 

most, the memo shows a potential omission which, in and of itself is not 

enough. “[T]o find a prosecution omission fraudulent there must be evidence of 

intent separable from the simple fact of the omission.” Dippin’ Dots, Inc. v. 

Mosey, 476 F.3d 1337, 1347 (Fed. Cir. 2007) (noting that an omission “could 

happen for any number of nonfraudulent reasons—the applicant could have 

had a good-faith belief that disclosure was not necessary, or simply have 

forgotten to make the required disclosure”).

Nor is the Court persuaded by DeCurtis’s motive and pattern theories 

that it says show an intent to deceive. As to motive, DeCurtis has presented no 

actual evidence that Carnival believed David DeCurtis had any material 

information to disclose to the PTO. Nor has DeCurtis demonstrated any sort of 

pattern of deception. Both theories are supported by nothing more than 

argument and unmoored speculation. 

In sum, then, DeCurtis has failed to carry its “demanding” Therasense 

burden, in opposing Carnival’s summary-judgment motion, to come forward 

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with evidence sufficient to show that deceptive intent is “the single most 

reasonable inference able to be drawn from the evidence.” Great Brands, 869 

F.3d at 1351 (cleaned up).

(3) DeCurtis has failed to come forward with record evidence or 

argument establishing a genuine issue of material fact regarding bad 

faith to overcome the patent privilege doctrine.

Finally, DeCurtis’s arguments as to Carnival’s bad faith miss the mark 

as well. Because there is a “presumption that the assertion of a duly granted 

patent is made in good faith,” in general, “federal patent law bars the 

imposition of liability for publicizing a patent in the marketplace unless the 

plaintiff can show that the patent holder acted in bad faith.” Golan v. Pingel 

Enter., Inc., 310 F.3d 1360, 1370 (Fed. Cir. 2002) (cleaned up). Like the shamlitigation exception, the “bad faith standard cannot be satisfied absent a 

showing that the patentee’s assertions were objectively baseless.” GP Indus., 

Inc. v. Eran Indus., Inc., 500 F.3d 1369, 1373 (Fed. Cir. 2007). As more fully 

fleshed out above, DeCurtis has failed to make such a showing as to either 

Carnival’s patent notice communications or this litigation.

In sum, then, Carnival is protected from suit regarding DeCurtis’s 

antitrust, tortious interference, and unfair-competition claims under the NoerrPennington doctrine and the patent privilege. Because of this finding, the Court 

declines to pass on the parties’ separate quarrels regarding the elements of 

these claims. To the extent any of DeCurtis’s other claims or defenses also rely 

on its allegations of inequitable conduct due to inventorship omission, 

summary judgment is entered on those allegations as well.

4. Conclusion

As set forth above, the Court adopts Judge Torres’s report and 

recommendations in part (ECF No. 426). As to DeCurtis’s motion, the Court 

grants its request for summary judgment, in part, and denies it, in part. (ECF 

No. 292.) Summary judgment is thus granted in DeCurtis’s favor only with 

respect to claim 11 of the ’514 patent and the patent infringement claim that 

relies on that particular aspect of this patent in suit. As to all other theories 

raised in DeCurtis’s motion, summary judgment is denied. 

As to Carnival’s motion, on the other hand, the Court parts ways with 

the report in a key respect, rejecting its recommendation to deny Carnival’s 

motion for summary judgment in its entirety. Instead, the Court grants

Carnival’s motion for summary in part, and denies it, in part. (ECF No. 288.) 

Importantly, the Court grants summary judgment in Carnival’s favor on 

DeCurtis’s antitrust, tortious interference, and unfair-competition claims along 

Case 1:20-cv-22945-RNS Document 494 Entered on FLSD Docket 02/08/2023 Page 14 of 15
with any of DeCurtis’s claims or defenses that rest on a showing of inequitable 

conduct as to inventorship omission. In all other respects, the Court adopts the 

report’s recommendation to deny Carnival’s motion.

Accordingly, the Court sustains Carnival’s objections, in part, and 

overrules them, in part, as fully explained above (ECF No. 429). The Court 

overrules DeCurtis’s objections in their entirety (ECF No. 431).

Lastly, vast swaths of the parties’ filings, addressed in this order, were 

filed under seal, due to information designated highly confidential or 

confidential as provided for in a protective order. Accordingly, the Court directs 

the Clerk to file this order under seal, to be unsealed upon further order from 

the Court. In the meantime, however, the Court orders the parties to 

immediately meet and confer and to, thereafter, on or before February 14, 

either (1) advise the Court that the order may appear on the public docket, 

without redaction, or (2) jointly agree on a redacted version of the order, in 

accordance with the protective order in this case, and upload that version of 

the order themselves, attached to a notice of filing.

Done and ordered at Miami, Florida, on February 8, 2023.

________________________________

Robert N. Scola, Jr.

United States District Judge

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