In the United States Court of Federal Claims
                                            No. 15-501C

                                     (Filed: September 26, 2019)
 **********************************             )
 3RD EYE SURVEILLANCE, LLC and                  )     Patent infringement action; proposed
 DISCOVERY PATENTS, LLC,                        )     amendment of complaint; lack of
                                                )     prejudice; complexity; fair notice;
                       Plaintiffs,              )     timeliness
                                                )
        v.                                      )
                                                )
 UNITED STATES,                                 )
                                                )
                       Defendant,               )
                                                )
        and                                     )
                                                )
 ELBIT SYSTEMS OF AMERICA, LLC,                 )
 GENERAL DYNAMICS ONE SOURCE                    )
 LLC, NORTHROP GRUMMAN                          )
 SYSTEMS CORPORATION, and                       )
 VIDSYS, INC.,                                  )
                                                )
             Defendant-Intervenors.             )
 **********************************
       Steven A. Kennedy, Kennedy Law, P.C., Dallas, TX, for plaintiffs.
        Lee Perla, Trial Attorney, Commercial Litigation Branch, Civil Division, United States
Department of Justice, Washington, D.C., for defendant. With him on the brief were Joseph H.
Hunt, Assistant Attorney General, Civil Division, and Gary L. Hausken, Director, Commercial
Litigation Branch, Civil Division, United States Department of Justice, Washington, D.C.

      Kurt G. Calia, Covington & Burling LLP, Palo Alto, CA, for defendant-intervenor Elbit
Systems of America, LLC.

      Scott Andrew Felder, Wiley Rein, LLP, Washington, D.C., for defendant-intervenor
General Dynamics One Source LLC.

       Gregory H. Lantier, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, D.C., for
defendant-intervenor Northrop Grumman Systems Corporation.

       David R. Yohannan, Yohannan Law, Alexandria, VA, for defendant-intervenor Vidsys,
Inc.
                                    OPINION AND ORDER

LETTOW, Senior Judge.

         Pending before the court in this patent infringement action is plaintiffs’ motion for leave
to file their third amended complaint. 1 Plaintiffs are the owner and exclusive licensee of three
patents, U.S. Patent Nos. 6,778,085 (the “’085 patent”), 6,798,344 (the “’344 patent”), and
7,323,980 (the “’980 patent”), each of which relate to security systems with realtime imaging
capabilities. Plaintiffs alleged in their second amended complaint the infringement of these
patents by various security systems used in secured locations owned, operated, or managed by or
for the United States. See Pls.’ Second Am. Compl. ¶ 9, ECF No. 244. The second amended
complaint, however, did not include infringement allegations for claims 11-31 of the ’980 patent.
The failure to include these allegations was not a mere oversight, but instead the result of a
decision by the Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) on
a petition filed by the government that found certain claims of the ’980 patent to be unpatentable
(and thus, unenforceable). Department of Justice v. Discovery Patents, LLC, No. IPR2016-
01041, 

, at *15 (P.T.A.B. Nov. 9, 2017). 2 But on September 9, 2019, the
Board vacated its final written decision in IPR2016-01041 and dismissed the petition, see
Termination of Proceeding at 3, Department of Justice v. Discovery Patents, LLC, No. IPR2016-
01041 (P.T.A.B. Sept. 9, 2019), Paper No. 30, in light of the Supreme Court’s recent decision in
Return Mail, Inc. v. United States Postal Serv., __ U.S. __, 

(2019) (ruling that
the federal government had no statutory basis to file a petition for inter partes review).

        Because the claims are now enforceable, plaintiffs seek to amend their complaint to
include allegations for infringement of these claims of the ’980 patent. Considering the unique
procedural circumstances that have now rendered the claims once again enforceable, the court
grants the plaintiffs’ motion for leave to file their proposed third amended complaint, with
certain caveats that must be rectified before filing.




       1
         To refer to the proposed amended complaint under consideration, the parties cited both
the “third amended complaint” and the “fourth complaint.” For clarity, the court will refer to this
complaint as the “third amended complaint.”
       2
         Throughout the briefs and during hearings, the parties refer to claims 11, 12, 14, 16-18,
and 20-31 of the ’980 patent as being “invalid” or “invalidated,” see e.g., Hr’g Tr. 6:12-14 (Sept.
10, 2019) (“the decision which invalidated certain claims of the ’980 patent”) (emphasis added)
(the date will be omitted from further citations to this hearing); Hr’g Tr. 14:11-12 (“the PTAB in
its decision invalidating these patent claims”) (emphasis added). The proper term to be used is
“unpatentable.” While the terminology may intend the same overall effect, the Board’s finding
of “unpatentable” reflects a re-opened inquiry of the initial patent grant and examination process
applying no presumption of patentability, whereas, a court’s decision of “invalidity” reflects the
application of the presumption of validity, as reflected in 35 U.S.C. § 282(a). Pursuant to 35
U.S.C. § 318(b), the Board cancels claims found unpatentable.


                                                 2
                                         BACKGROUND

         Plaintiffs, 3rd Eye Surveillance, LLC and Discovery Patents, LLC, first filed suit against
the United States in this court in May 2015, alleging patent infringement under 28 U.S.C. §
1498. See Pls.’ Compl. ¶¶ 4-5, ECF No. 1. Plaintiffs submitted amended complaints on January
26, 2016, Pls.’ First Am. Compl., ECF No. 22, and again on October 7, 2018, Pls.’ Second Am.
Compl., ECF No. 244. In response to these allegations of infringement, the United States filed
six petitions at the Board for inter partes review, under 35 U.S.C. § 311, 3 challenging the
patentability of the claims at issue in this case. 4 The Board declined to institute review on five of
the six petitions, but did institute review on most of the claims in IPR2016-01041, 5 pursuant to
35 U.S.C. § 314, which challenged the patentability of claims 11-31 of the ’980 patent. Decision
Instituting Inter Partes Review at 2, Department of Justice v. Discovery Patents, LLC, No.
IPR2016-01041 (P.T.A.B. Nov. 15, 2016), Paper No. 10. The Board then issued a final written
decision on November 9, 2017, finding claims 11, 12, 14, 16-18, and 20-31 unpatentable as
anticipated, Department of Justice v. Discovery Patents, LLC, No. IPR2016-01041, 

, at *15 (P.T.A.B. Nov. 9, 2017), consequently rendering them unenforceable in the case
at issue. The patent owners, i.e., plaintiffs in this suit, did not appeal the final written decision.
See Notice of IPR Decision at 2, ECF No. 103. Despite the issuance of this final written
decision, the Board never issued a trial certificate cancelling the claims pursuant to its authority
under 37 C.F.R. § 42.80. Termination of Proceeding at 2, Department of Justice v. Discovery
Patents, LLC., No. IPR2016-01041 (P.T.A.B. Sept. 9, 2019), Paper No. 30. In the absence of a
trial certificate, and having retained jurisdiction, the Board now has vacated its final written
decision, 

Supreme Court’s decision in Return Mail, 

, dictates
such an outcome.

        The proceedings between the United States Postal Service (“Postal Service”) and Return
Mail, Inc. (“Return Mail”) were similar to those in this case, involving a suit for infringement at
this court brought by Return Mail, see Return Mail, Inc. v. United States, No. 11-130, 

(Fed. Cl. Oct. 4, 2013), and a similar type of post-grant proceeding at the Board, see


       3
        Inter partes review was created by the Leahy-Smith America Invents Act, see Pub. L.
No. 112-29, § 6, 125 Stat. 284 (2011) (“AIA”), along with two other post-grant proceedings,
post-grant review (“PGR”), see 

business method (“CBM”) review, see 

18. The court will refer to these three proceedings collectively as AIA “post-grant proceedings”
or “post-issuance proceedings.”
       4
        The inter partes review petitions were: IPR2016-01035 for the ’344 patent; IPR2016-
01037, IPR2016-01038, and IPR2016-01039 for the ’085 patent; and IPR2016-01040 and
IPR2016-01041 for the ’980 patent.
       5
        The Board’s decision to institute review came prior to the Supreme Court’s decision in
SAS Institute, Inc. v. Iancu, ___ U.S. ___, ___, 

, 1359-60 (2018) (requiring that
the Board issue a final written decision addressing every patent claim challenged in an IPR).
This timing therefore explains how the Board instituted review, and issued a final written
decision, on only some of the challenged claims here.


                                                  3
Decision Institution of Covered Business Method Patent Review, United States Postal Serv. v.
Return Mail, Inc., No. CBM2014-00116 (P.T.A.B. Oct. 16, 2014), Paper No. 11. In Return
Mail, the Board issued its final written decision in the CBM review between the parties on
October 15, 2015, finding the challenged claims unpatentable. Final Written Decision at 3,
United States Postal Serv. v. Return Mail, Inc., CBM2014-00116 (P.T.A.B. Oct. 15, 2015),
Paper No. 41. Return Mail appealed this decision to the Federal Circuit on a number of grounds,
see Patent Owner Return Mail, Inc.’s Notice of Appeal, United States Postal Serv. v. Return
Mail, Inc., CBM2014-00116 (P.T.A.B. Dec. 11, 2015), Paper No. 42, and in August 2017, the
Federal Circuit affirmed, see Return Mail, Inc. v. United States Postal Serv., 

,
1353 (Fed. Cir. 2017). Return Mail then sought review of this decision in the Supreme Court,
which granted certiorari as to question one of the petition on “whether the government is a
‘person’ who may petition to institute review proceedings under the AIA.” Petition for a Writ of
Certiorari at i, Return Mail, 

(No. 17-1594), 

, at *i.

        The Supreme Court ultimately concluded that, “[A] federal agency is not a ‘person’ who
may petition for post-issuance review under the [America Invents Act].” Return Mail, 

. Thus, the Postal Service’s challenge of Return Mail’s patent through CBM
review was improper. This outcome, which broadly encompassed all three types of the AIA
post-grant proceedings, also meant that the government’s challenge in IPR2016-01041 to claims
of plaintiffs’ ’980 patent was improper. Hence, the Board sua sponte terminated the proceedings
of IPR2016-01041 and vacated its previous finding of unpatentability. See Termination of
Proceeding at 3, Department of Justice v. Discovery Patents, LLC., No. IPR2016-01041
(P.T.A.B. Sept. 9, 2019), Paper No. 30. Because the IPR has been terminated, the claims of the
’980 patent are enforceable.

         Plaintiffs now seek to amend the complaint for a third time, see Pls.’ Mot. for Leave to
File Third Am. Compl. (“Pls.’ Mot.”), ECF No. 294, to add infringement contentions for claims
11-31 of the ’980 patent. Defendants opposed this motion and filed a response, see Defs.’ Resp.
to Pls.’ Mot. for Leave to File Third Am. Compl. (“Defs.’ Opp’n”), ECF No. 300, to which
plaintiffs filed a reply, see Reply to Defs.’ Resp. to Pls.’ Mot. for Leave to File Third Am.
Compl. (“Pls.’ Reply”), ECF No. 301. A hearing was held on September 10, 2019. See Hr’g Tr.
4:14 to 54:6.

        As the court has noted previously, this litigation has already seen extensive proceedings,
including previous amendments to the complaint, numerous decisions on discovery motions, and
claim construction. See, e.g., 3rd Eye Surveillance, LLC v. United States, 

(2019) (addressing discovery disputes and listing prior decisions). Plaintiffs, as their counsel
notes, find themselves visited by good fortune in the form of the Board’s recent decision to
vacate its prior ruling rejecting claims of the ’980 patent. See Hr’g Tr. 6:10-12. The current
circumstances, however lucky, justify a grant of leave to amend. The court sets forth further
reasoning below in support of this disposition.

                                STANDARDS FOR DECISION

      Rule 15(a)(2) of the Rules of the Court of Federal Claims (“RCFC”) provides that a party
may amend its complaint “with [either] the opposing party’s written consent or the court’s


                                                4
leave,” which should be “freely give[n] when justice so requires.” The decision to grant or deny
leave to amend is “within the discretion of the trial court.” Mitsui Foods, Inc. v. United States,

, 1403 (Fed. Cir. 1989). RCFC 15 has been construed liberally, with the court
generally granting leave to amend barring any “apparent or declared reason” not to permit
amendment. Marchena v. United States, 

, 330 (2016), aff’d, 702 Fed. Appx.
988 (Fed. Cir. 2017) (citing A&D Auto Sales, Inc. v. United States, 

, 1158 (Fed.
Cir. 2014) (“The Claims Court rules liberally provide for amendments of the complaint after the
filing of the defendant’s answer.”)); see also Stueve Bros. Farms, LLC v. United States, 107 Fed.
Cl. 469, 475 (2012) (rejecting “the approach that pleading is a game of skill in which one
misstep by counsel may be decisive to the outcome and accept the principle that the purpose of
pleading is to facilitate a proper decision on the merits”).

         The trial court should deny leave to amend only where there is evidence of “delay, bad
faith, repeated failure to correct a complaint’s deficiencies, undue prejudice to the opposing
party, or if the amendment would be futile.” 

(citing A&D Auto

); see also Advanced Aerospace Techs., Inc. v. United States, 

, 568 (2017) (“Of course, when a proposed amendment is futile, leave to amend a pleading
should not be granted.”). An amendment would be futile if “it would not survive a motion to
dismiss.” 

(citing Meyer Grp., Ltd. v. United States, 

, 650 (2014)); see also Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro S.A. de C.V.,

, 1354-55 (Fed. Cir. 2006). Thus, the “party seeking leave must proffer sufficient
facts supporting the amended pleading [such] that the claim could survive a dispositive pretrial
motion.” 

(citation omitted).

                                            ANALYSIS

        Defendants argue that the motion for leave should be denied as futile and unduly
prejudicial. See Defs.’ Opp’n at 12, 15, 20. Specifically, defendants argue that amendment
would be futile because of principles of res judicata based on the Board’s IPR decision in 2017,
for alleging acts of indirect infringement for which the United States has not waived sovereign
immunity, and for failing to state a claim under the Iqbal/Twombly test. See 

6
Additionally, defendants argue that amendment would cause them undue prejudice because
plaintiffs failed to be diligent in pursuing a revised complaint and the amendment would “expand
this case radically” to the detriment of judicial economy. See 

These arguments are
unconvincing.

                                             I. Futility

       As to res judicata, the court notes that defendants’ Opposition was filed prior to the
Board’s order vacating its decision in IPR2016-01041, and thus many of defendants’ arguments
are now moot. Further, the court is unconvinced that any estoppel should attach to the now-



       6
        See Ashcroft v. Iqbal, 

, 678 (2009); Bell Atl. Corp. v. Twombly, 

, 570 (2007) (requiring a complaint to “state a claim to relief that is plausible on its face”).


                                                  5
vacated final written decision from the Board. Similar to an IPR outcome upholding the
patentability of the challenged claims, by vacating the decision in IPR2016-01041, the Board
reinstated its post-prosecution decision of patentability of the ’980 patent claims. When the
Board issues a final written decision in favor of the patentee upholding the patentability of the
claims, a court is not bound by this outcome. Compare Final Written Decision at 4, Coalition for
Affordable Drugs v. Acorda Therapeutics, Inc., IPR2015-01850 (P.T.A.B. March 9, 2017)
(finding the petitioner failed to demonstrate that the challenged claims are unpatentable), Paper
No. 72, with Acorda Therapeutics, Inc. v. Roxane Labs., Inc., No. 14-882-LPS, 

, at *41 (D. Del. March 31, 2017), aff’d, Acorda Therapeutics, Inc. v. Roxane Labs.,
Inc., 

, 1342 (Fed. Cir. 2018) (concluding that some of the challenged claims were
invalid). These divergent outcomes likely result from differing standards governing each
proceeding. That is, the Board applies no presumption of validity, see 35 U.S.C. § 282(a), has an
evidentiary standard of preponderance of the evidence, 35 U.S.C. § 316(e), and the available
challenges and scope of the prior art are limited, 35 U.S.C. § 311 (limiting possible grounds for
challenge to those “that could be raised under section 102 or 103 [of title 35] and only on the
basis of prior art consisting of patents or printed publications”). Courts on the other hand,
including this one, presume patent validity, see 35 U.S.C. § 282(a), apply a clear and convincing
evidentiary standard, see Microsoft Corp. v. i4i Ltd. P’ship, 

, 95 (2011), and may
find invalidity under all available defenses, see Motorola, Inc. v. United States, 

,
769 (Fed. Cir. 1984) (quoting 28 U.S.C. § 1498, Revisor’s Notes). Because of these differences,
the court will not apply estoppel here as it relates to the validity of the ’980 patent claims,
therefore, finding no futility of amendment in this regard.

        The court does, however, credit defendants’ arguments that plaintiffs’ proffered amended
complaint wrongfully alleges “indirect” infringement. See Defs.’ Opp’n at 15 (citing 

n.3). Plaintiffs have agreed to revise their proposed third amended complaint to
remove all references to indirect infringement. Pls.’ Reply at 10. Consequently, this argument is
moot. Defendants also argue that plaintiffs’ proposed third amended complaint includes claims
for joint infringement, particularly, allegations of “the United States . . . doing something in
conjunction with local authorities.” Hr’g Tr. 16:23 to 17:4. But the court does not agree.
Nothing on the face of the allegations in the third amended complaint suggests allegations of
joint infringement. As this case has progressed, albeit slowly and painstakingly, it is simply too
early in the discovery process to know if the alleged infringement is indeed performed by
multiple actors or by the United States as one entity. 7

         Defendants also argue that amendment would be futile because plaintiffs’ allegations fail
to state a claim on which relief can be granted. See Defs.’ Opp’n at 15-20. At issue is whether



       7
         As 28 U.S.C. § 1498 explicitly notes, “[T]he use or manufacture of an invention
described in and covered by a patent of the United States by a contractor, a subcontractor, or any
person, firm, or corporation for the Government and with the authorization or consent of the
Government, shall be construed as use or manufacture for the United States.” Therefore, even if
a subcontractor is performing a necessary element of the claim, this behavior is still attributable
to one single entity, and is compensable direct infringement under Section 1498.


                                                 6
plaintiffs’ factual allegations “plausibly suggest an entitlement to relief.” 

.
The court has previously addressed similar motions on this issue, see, e.g., 3rd Eye Surveillance,
LLC v. United States, 

, 58 (2018), and finds no differently today that “[t]aken at
this stage of the pleadings, where the court is required to accept plaintiffs’ factual allegations as
true, it cannot be said that the amendment would be futile [for failure to state a claim].” 

this is a complicated case, involving multiple systems and claims over a large
geographic area, does not mean that the allegations are implausible. See Hr’g Tr. 17:11-22
(“[T]his is [] a very complicated case. Now, I mention that because I think that puts us squarely
in the Iqbal/Twombly category of authorities.”). Because the court finds that plaintiffs state
plausible claims for relief, the proffered amendment would not be futile.

                                       II. Undue Prejudice

         Defendants additionally argue that allowing plaintiffs to amend the complaint would
cause them undue prejudice because plaintiffs were not diligent in proceeding with the proffered
revised complaint, and the amendment would cause the case to be expanded greatly. See Defs.’
Opp’n at 20-24. Prejudice is typically found where an amendment would result in “unfair
surprise, a broadening or fundamental change in the issues litigated, or prompting further
discovery or a need for significant new preparation.” RMA Eng’g S.A.R.L. v. United States, 

, 243 (2018) (citing Cencast Servs., L.P. v. United States, 

, 1363-64
(Fed. Cir. 2013)). While plaintiffs’ third amended complaint does add claims, thus likely
expanding the case, it does not do so unfairly. 8 Plaintiffs’ initial complaints alleged infringement
of all claims of ’980 patent, including those seeking to be added here. See, e.g., Pls.’ Compl.
¶¶ 24-28; Pl.’s First Am. Compl. ¶¶ 46, 48, 83. Not until their second amended complaint did
plaintiffs remove the infringement contentions for claims 11-31 of the ’980 patent, and then only
in response to the instituted IPR. Thus, even if defendants remain surprised either by the
Supreme Court’s decision in Return Mail or the Board’s recent vacatur of its decision in
IPR2016-01041, they cannot claim to be unfairly surprised by plaintiffs’ motion to re-introduce
these claims. While the court, like the parties, strives for prompt action on claims, it cannot be
said that the amendment sought here is unduly prejudicial, despite the potential need to revisit
matters previously thought concluded. Accordingly, beyond needing to continue to litigate this
complex infringement suit, the court does not find that the amended complaint will cause
defendants any significant prejudice.

                                          CONCLUSION

        For the reasons stated, the court determines the proposed amendments would neither be
futile nor unduly prejudicial. The court therefore concludes that good cause has been shown.




       8
         Defendants’ arguments regarding the inclusion of claim 56, a means-plus-function
claim, in the amended complaint have merit. But just as with claims of “indirect” infringement,
the plaintiffs have agreed to remove any reference to claim 56 of the ’085 patent as present in the
proposed third amended complaint. Pls.’ Reply at 10.


                                                  7
Plaintiffs’ motion for leave to file their third amended complaint is GRANTED. Plaintiffs shall
file a revised third amended complaint on or before October 11, 2019.

       It is so ORDERED.




                                                    s/ Charles F. Lettow
                                                    Charles F. Lettow
                                                    Senior Judge




                                               8