THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

SYMBOLOGY INNOVATIONS, LLC,

Plaintiff,

v.

KEURIG DR. PEPPER, INC.

Defendant.

Civil Case No. 2:23-cv-00249-JRG

JURY TRIAL DEMANDED

MOTION TO STRIKE AND DISMISS INEQUITABLE CONDUCT DEFENSE

AND COUNTERCLAIM [DKT. NO. 7]

I. SUMMARY.

Plaintiff Symbology Innovations, LLC (“Plaintiff”) moves to strike and dismiss both Keurig Dr. 

Pepper, Inc.’s (“KDP” or “Defendant”) (1) Third Affirmative Defense, inequitable conduct [Dkt. No. 7 

at 13] and (2) Counterclaim 3 – Inequitable Conduct in the Defendants’ Answer and Counterclaims. 

[Dkt. No. 7 at 18]. KPG fails to do anything more than parrot the elements of inequitable conduct and 

vaguely accuse Leigh Rothschild or someone else involved with the prosecution of the Patents-in-Suit

of having committed fraud on the patent office. As such, the Court should grant Plaintiff’s Motion to 

Strike Defendant’s Third Affirmative Defense relating to Inequitable Conduct and Dismiss KDP’s 

Counterclaim No. 3, also related to inequitable conduct. See Exergen Corp. v. Wal-Mart Stores, Inc., 

575 F.3d 1312, 1327 (Fed. Cir. 2009).

II. LEGAL STANDARD.

“Inequitable conduct is an equitable defense to patent infringement that, if proved, bars 

enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 

2011). Rule 9(b) governs inequitable conduct claims. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 

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F.3d 1312, 1326 (Fed. Cir. 2009). “Rule 9(b) requires that in all averments of fraud or mistake, the 

circumstances constituting fraud or mistake shall be stated with particularity.” Id. (Internal quotation 

marks and bracket omitted). To meet this standard, the Federal Circuit—like other circuits—requires 

the pleading party to identify “the specific who, what, when, where, and how of the material 

misrepresentation or omission committed before the PTO.” Id. at 1327. 

Thus, a well-pleaded claim for inequitable conduct must allege facts demonstrating that “(1) an 

individual associated with the filing and prosecution of a patent application made an affirmative 

misrepresentation of a material fact, failed to disclose material information, or submitted false 

information; and (2) the individual did so with a specific intent to deceive the PTO.” Id. at 1327 n.3. 

“A pleading that simply avers the substantive elements of inequitable conduct, without setting forth the 

particularized factual bases for the allegation, does not satisfy Rule 9(b).” Id. at 1326-27. 

With respect to materiality, “[w]here a patent applicant fails to disclose prior art to the PTO, the 

prior art is but-for material if the PTO would not have allowed a claim had it been aware of the 

undisclosed prior art.” Therasense, 649 F.3d at 1292. 

III. ARGUMENT.

KDP’s complaint comes nowhere near meeting the standards to plead fraud under Rule 9(b) of 

the Federal Rules of Civil Procedure and established Federal Circuit case law for at least three (3) 

reasons, including (1) not identifying with particularity the “who” that committed fraud on the USPTO, 

(2) not satisfying the but-for materiality standard for purported prior art, and (3) failure to adequately 

plead “specific intent.” See e.g. Therasense, Inc., 649 F.3d at 1285 (Fed. Cir. 2011); Exergen Corp., 

575 F.3d at 1327 (Fed. Cir. 2009).

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A. KDP Failed to Adequately Plead the “Who” That Committed Fraud.

KDP’s defense and counterclaim relating to alleged inequitable conduct fail to adequately 

identify with particularity “who” committed specific acts with specific intent. For example, KDP 

recites in Paragraph 31, 39, 41, 42, 43, 62, 65, and 66, that a person committing the fraud is either the 

inventor “and/or the representatives associated with the filings,” which is simply not specific enough to 

satisfy Rule 9(b). See Exergen Corp., 575 F.3d at 1327 (Fed. Cir. 2009).

¶ 31 “Based on the provisional application’s disclosures and Mr. 

Rothschild’s firsthand involvement with BarPoint.com, it was known to 

Mr. Rothschild and/or the representatives associated with the filing and 

prosecution of the applications for the Patents-in-Suit, that the BarPoint 

system described in the provisional applications was offered for sale and 

publicly used prior to the filing dates of the provisional applications.”

¶ 39 “Despite Mr. Rothschild having deep knowledge of the BarPoint 

system, the Rothschild Patents, and other material, non-cumulative prior 

art related to technology Symbology alleges the Patents-in-Suit cover, Mr. 

Rothschild and/or the representatives associated with the that recites 

“and/or the representatives associated with the filing and prosecution of 

the application for the Patents-in-Suit” 

¶ 41 “Mr. Rothschild and/or the representatives associated with the filing 

and prosecution of the applications for the Patents-in-Suit, knew of the 

BarPoint system, the Rothschild Patents, and the prior art systems 

identified in the specification, and, on information and belief, deliberately

failed to disclose the prior art to the USPTO in connection with 

prosecuting the applications for the Patents-in-Suit, with the intent to 

deceive the examiner and the USPTO.”

¶42 “Had Mr. Rothschild and/or the representatives associated with the 

filing and prosecution of the applications for the Patents-in-Suit made the 

examiner aware of the BarPoint system, the Rothschild Patents, and that 

the prior art systems identified in the specification anticipate and/or render 

obvious each and every element of the independent claims of the Patentsin-Suit under Symbology’s characterization of the alleged infringing 

activity, the examiner would not have allowed the claims to issue.”

¶43 “The failure of Mr. Rothschild and/or the representatives associated 

with the filing and prosecution of the applications for the Patents-in-Suit 

to disclose the BarPoint system and the Rothschild Patents prior art, as 

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well as other material prior art, was with the intent to deceive the 

USPTO.”

¶62 “Despite the purported novelty identified in the specification and by 

the examiner during prosecution of the parent application, Mr. Rothschild 

and/or the representatives associated with the filing and prosecution of 

the applications for the Patents-in-Suit, undertook a concerted effort to 

omit the limitation related to the alleged improvement that had been 

expressly included in Claim 1 of the ’773 Patent in order to overcome the 

examiner’s rejection based on anticipation grounds.”

¶65 “Had Mr. Rothschild or the representatives associated with the filing 

and prosecution of the applications for the Patents-in-Suit made the 

examiner aware of the undisclosed, material, non-cumulative prior art in 

Mr. Rothschild’s possession, the examiner would not have allowed the

independent claims of the Patents-in-Suit to issue.”

¶66 “Mr. Rothschild and/or the representatives associated with the filing 

and prosecution of the applications for the Patents-in-Suit intended to 

deceive the USPTO by intentionally failing to disclose the BarPoint 

system, the Rothschild Patents, and the full capabilities of the prior art 

barcode scanning applications identified in the specification, in order to 

recapture patent rights to subject matter Mr. Rothschild no longer 

controlled.”

[Dkt. No. 7 at ¶¶ 31, 39, 41, 42, 43, 62, 65, and 66].

The lack of specificity in KDP’s counterclaim relating to inequitable conduct makes it 

impossible for Plaintiff to defend against as KDP fails to identify “who” is this alleged representative 

with specific particularity required to allow Plaintiff to possibly follow up with those individuals. As 

such, KDP’s pleading does not satisfy Rule 9(b) requiring it to be dismissed without prejudice until 

KDP can provide the required specify as to “who” is doing “what” to commit fraud and “when” she did 

it. 

B. KDP Failed to Adequately Plead the “Materiality” of the Prior Art.

KDP’s shotgun approach to identifying purportedly “material” prior art leaves open the 

possibility that it could even include references not even identified. This makes it impossible to defend 

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against. KDP identifies the following litany of alleged prior art without even certifying the references 

qualify as prior art or where ever even actually disclosed to the public. [See e.g. Dkt. No. 7 at ¶¶ 13, 35]. 

KDP’s ¶ 13 recites “The asserted claims of the Patents-in-Suit are anticipated and/or rendered 

obvious by, inter alia, BarPoint.com; Neomedia’s Neo Reader; Microsoft’s Smart Tags; Android’s Shop 

Savvy; Red Laser; ScanBuy; U.S. Serial No. 60/118,051; U.S. Serial No. 60/187,646; U.S. Serial No. 

60/185,546; U.S. Patent Application 2008/0004978; U.S. Patent No. 6,430,554; and/or U.S. Patent No. 

6,651,053.” [Dkt. No. 7 at ¶ 13]. 

KDP’s mere assertion that these “anticipated and/or rendered obvious” with no explanation as to 

how or why or what prior art would even be identified to be sufficient to satisfy a materiality standard 

under Therasense. KDP makes similar inadequate disclosures in the Complaint at ¶ 35 when it recites 

“each anticipate and/or render obvious each and every element of Claim 1 of the ’752 Patent and/or 

Claim of the ’369 Patent.” Unfortunately for KDP, it only identifies two of the four asserted patents or 

the actual “Patents-in-Suit.” See Dkt. No. 1 at 3. Specifically, KDP flat out ignores asserted patents, 

U.S. Patent 7,992,773 [Dkt. Nos. 1-1, 1-5] and U.S. Patent 8,936,190 [Dkt. Nos. 1-4, 1-8]. 

Indeed, KDP’s failures in pleading inequitable conduct are best articulated by the Federal 

Circuit’s holding in Therasense that found the previous standard of proof prior to 2009 was too low 

resulting in a “plague” on the courts and the patent system. See Therasense, 649 F.3d at 1289 (Fed. Cir. 

2011). The Federal Circuit remarked that over time, charging inequitable conduct became a “common 

litigation tactic” and “[l]eft unfettered, the inequitable conduct doctrine has plagued not only the courts 

but also the entire patent system.” Id. at 1289. The Federal Circuit also noted that “[w]ith inequitable

conduct casting the shadow of a hangman’s noose, it is unsurprising that patent prosecutors regularly 

bury PTO examiners with a deluge of prior art references, most of which have marginal value.” Id.

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In Therasense, the Federal Circuit recounted how inequitable conduct in patent law evolved from 

a trio of Supreme Court cases interpreting the doctrine of unclean hands. Id. at 1285 (citing Keystone 

Driller Co. v. General Excavator Co., 54 S.Ct. 146 (1933), Hazel–Atlas Glass Co. v. Hartford–Empire 

Co., 64 S.Ct. 997(1944), overruled on other grounds by Standard Oil Co. v. United States, 97 S.Ct. 31

(1976), and Precision Instrument Manufacturing Co. v. Automotive Maintenance Machinery Co., 65 

S.Ct. 993 (1945)). 

A claim for inequitable conduct requires a finding of both intent to deceive and materiality. Id. at 

1287. The Federal Circuit rejected prior lower standards that permitted proof of intent to deceive on 

findings of gross negligence or negligence, or that permitted a reduced showing of intent if the record 

contained a strong showing of materiality. Instead, the Federal Circuit held that to “prevail on a claim of 

inequitable conduct, the accused infringer must prove that the patentee acted with the specific intent to 

deceive the PTO” and must show “but-for materiality,” meaning “[w]hen an applicant fails to disclose 

prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it 

been aware of the undisclosed prior art.” Id. at 1290–91. 

Here, KDP broadly asserts that all patent claims of all the Patents-in-Suit are unenforceable due 

to a failure to disclose alleged material prior art. [Dkt. No. 7 at 65]. But KDP’s pleading fails the “butfor materiality” requirement of Therasense as it does not articulate how all of the patent claims in 

Patents-in-Suit were derived from one and/or more prior art references raise to the level of materiality 

when tellingly, not one of the multitude of Patent Examiners or Supervisors at the USPTO identified any 

of the alleged prior art, an indication that it is not material and therefore at best cumulative. 

C. KDP Failed to Adequately Plead the “Specific Intent” to Commit Fraud.

KDP does not properly plead the “specific intent” required under Therasense. KDP cannot 

satisfy the “specific intent to deceive” requirement of Therasense because it has not pled how that the 

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individuals involved in the prosecution of all of the patent claims of the Patents-in-Suit (a) knew that 

the information related to the purported allegation of derivation was material, (b) made a deliberate 

decision not to disclose that information, and (c) did so in order to deceive the USPTO into granting all 

the claims of the Patents-in-Suit. Thus, KDP fails as well on this third Therasense requirement to plead 

the proper specific intent. As such, the Court should grant Plaintiff’s motion to strike/dismiss KDP’s 

affirmative defense and counterclaim both relating to inequitable conduct. See Exergen Corp., 575 

F.3d at 1327 n.3 (Fed. Cir. 2009).

IV. CONCLUSION.

Plaintiff has met its burden for the Court to Grant this Motion to Dismiss an affirmative defense 

and counterclaim related to inequitable conduct. Here, KDP simply fails to satisfy the pleading 

standard by (1) not identifying with particularity the “who” that committed fraud on the USPTO, (2) 

not satisfying the but-for materiality standard for purported prior art, and (3) failure to adequately plead 

“specific intent.” See Exergen Corp, 575 F.3d at 1329 (holding that a defendant’s failure to identify the 

“who” of material omissions and misrepresentations was insufficient to plead the defense of inequitable 

conduct). 

//

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Dated: July 10, 2023 Respectfully Submitted,

/s/ Randall Garteiser

Randall Garteiser

 Texas Bar No. 24038912

 rgarteiser@ghiplaw.com

Christopher A. Honea

 Texas Bar No. 24059967

 chonea@ghiplaw.com

M. Scott Fuller

 Texas Bar No. 24036607

 rgarteiser@ghiplaw.com

GARTEISER HONEA, PLLC

119 W. Ferguson Street

Tyler, Texas 75702

Telephone: (903) 705-7420

COUNSEL FOR PLAINTIFF

CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the above document has been 

served to all counsel of record who are deemed to have consented to electronic service via the Court’s 

CM/ECF system on.

/s/ Randall Garteiser

Randall Garteiser

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