Masterobjects, Inc. v. Microsoft Corp

Filing 15

MICROSOFT CORPORATIONS' CORRECTED ANSWER to Complaint with Jury Demand, COUNTERCLAIM against Masterobjects, Inc. byMicrosoft Corp. (Attachments: # 1 Exhibit A)(Kalay, Leeron) (Filed on 8/1/2011)

1 2 3 4 5 6 7 8 9 10 Kelly C. Hunsaker (SBN 168307), hunsaker@fr.com Leeron G. Kalay (SBN 23579), kalay@fr.com Neil W. Warren (SBN 272770), warren@fr.com Fish & Richardson P.C. 500 Arguello Street, Suite 500 Redwood City, CA 94063 Telephone: (650) 839-5070 Facsimile: (650) 839-5071 Juanita R. Brooks (SBN 75934), brooks@fr.com Fish & Richardson P.C. 12390 El Camino Real San Diego, CA 92130 Telephone: (858) 678-5070 Facsimile: (858) 678-5099 Attorneys for Defendant MICROSOFT CORP. 11 UNITED STATES DISTRICT COURT 12 NORTHERN DISTRICT OF CALIFORNIA 13 (SAN FRANCISCO DIVISION) 14 15 16 17 18 19 Case No. CV 11-2402 EMC MASTEROBJECTS, INC., MICROSOFT CORPORATION’S CORRECTED ANSWER AND COUNTERCLAIMS TO MASTEROBJECTS, INC.’S COMPLAINT Plaintiff v. MICROSOFT CORP., Defendant. 20 21 22 Defendant, Microsoft Corp. (“Microsoft”) answers the allegations set forth in the 23 Complaint of Plaintiff MasterObjects, Inc. (“MasterObjects”). Except as expressly admitted 24 below, Microsoft denies each and every allegation in Plaintiff’s complaint. To the extent any 25 heading or non-numbered statement in Plaintiff’s Complaint contains an allegation, Microsoft 26 denies each and every allegation therein. 27 Specifically, Microsoft answers as follows: 28 MICROSOFT’S CORRECTED ANSWER AND COUNTERCLAIMS CASE NO. 3:11-CV-02402-EMC 1 2 3 4 PARTIES 1. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 1 of the complaint, and, therefore, denies those allegations. 2. Microsoft is a corporation organized under the laws of Washington, with its 5 principal place of business in Redmond, Washington. Microsoft denies all the remaining 6 allegations of paragraph 2 of the Complaint. 7 8 JURISDICTION AND VENUE 3. Microsoft admits that the Complaint purports to state a claim for patent 9 infringement under the Patent Act, 35 U.S.C. § 271. Microsoft admits that this Court has subject 10 matter jurisdiction over this matter under 28 U.S.C. § 1338(a). Microsoft denies all the remaining 11 allegations of paragraph 3 of the Complaint. 12 4. Microsoft admits, for purposes of this action only, that it is subject to personal 13 jurisdiction in this District and that it does business in this Judicial District. Microsoft denies all 14 the remaining allegations of paragraph 4 of the Complaint. 15 16 INTRADlSTRlCT ASSIGNMENT 5. 17 18 19 20 21 22 23 24 25 26 Microsoft admits the allegation of paragraph 5 of the Complaint. STATEMENT OF FACTS 6. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 6 of the complaint, and, therefore, denies those allegations. 7. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 7 of the complaint, and, therefore, denies those allegations. 8. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 8 of the complaint, and, therefore, denies those allegations. 9. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 9 of the complaint, and, therefore, denies those allegations. 10. Microsoft admits that U.S. Patent No. 7,752,326 (“the ’326 patent”) is entitled 27 “System and Method for Utilizing Asynchronous Client Server Communications Objects.” 28 Microsoft denies that the ’326 patent was duly and legally issued. Microsoft lacks sufficient 2 MICROSOFT’S CORRECTED ANSWER AND COUNTERCLAIMS CASE NO. 3:11-CV-02402-EMC 1 information to admit or deny all other allegations of paragraph 16 of the complaint, and, therefore, 2 denies those allegations. 3 11. Microsoft admits that the Abstract of the ’326 patent appears to include the 4 language quoted in paragraph 11 of the Complaint. Microsoft lacks knowledge or information 5 sufficient to form a belief regarding the remaining allegations of paragraph 11 of the Complaint 6 and on that basis denies them. 7 8 12. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 12 of the complaint, and, therefore, denies those allegations. 9 13. Microsoft denies the allegations in paragraph 13 of the Complaint. 10 14. Microsoft denies the allegations in paragraph 14 of the Complaint. 11 15. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 12 13 14 15 16 17 18 19 20 21 22 15 of the complaint, and, therefore, denies those allegations. 16. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 16 of the complaint, and, therefore, denies those allegations. 17. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 17 of the complaint, and, therefore, denies those allegations. 18. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 18 of the complaint, and, therefore, denies those allegations. 19. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 19 of the complaint, and, therefore, denies those allegations. 20. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 20 of the complaint, and, therefore, denies those allegations. 23 COUNT 1 24 PATENT INFRINGEMENT (The Instant Search Patent) 25 26 21. Microsoft admits that U.S. Patent No. 7,752,326 (“the ’326 patent”) is entitled 27 “System and Method for Utilizing Asynchronous Client Server Communications Objects.” 28 Microsoft also admits that a copy of the ’326 patent appears to be attached as Exhibit A to the 3 MICROSOFT’S CORRECTED ANSWER AND COUNTERCLAIMS CASE NO. 3:11-CV-02402-EMC 1 complaint. Microsoft denies that the ’326 patent was duly and legally issued. Microsoft lacks 2 sufficient information to admit or deny all other allegations of paragraph 21 of the complaint, and, 3 therefore, denies those allegations. 4 5 22. Microsoft lacks sufficient information to admit or deny the allegations of paragraph 22 of the complaint, and, therefore, denies those allegations. 6 23. Microsoft denies the allegations in paragraph 23 of the Complaint. 7 24. Microsoft denies the allegations in paragraph 24 of the Complaint. 8 25. Microsoft denies the allegations in paragraph 25 of the Complaint. 9 26. Microsoft denies the allegations in paragraph 26 of the Complaint. 10 27. Microsoft denies the allegations in paragraph 27 of the Complaint. 11 28. Microsoft denies that Plaintiff is entitled to any of the relief requested in its Prayer 12 for Relief. 13 29. Microsoft denies all allegations not expressly admitted herein. 14 15 AFFIRMATIVE DEFENSES 16 FIRST AFFIRMATIVE DEFENSE 17 (Non-Infringement) 18 19 30. Microsoft does not infringe and has not infringed (either directly, contributorily or by inducement) any claim of the ’326 patent. 20 SECOND AFFIRMATIVE DEFENSE 21 (Invalidity) 22 31. One or more asserted claims of the ’326 patent are invalid because they fail to 23 comply with the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 24 101, 102, 103 and 112. 25 THIRD AFFIRMATIVE DEFENSE 26 (Equitable Defenses - Laches) 27 32. Plaintiff’s claims are barred, in whole or in part by the equitable doctrine of laches. 28 4 MICROSOFT’S CORRECTED ANSWER AND COUNTERCLAIMS CASE NO. 3:11-CV-02402-EMC 1 FOURTH AFFIRMATIVE DEFENSE 2 (Equitable Defenses - Estoppel) 3 4 33. Plaintiff’s claims are barred, in whole or in part by the equitable doctrines of estoppel and/or waiver. 5 SXTH AFFIRMATIVE DEFENSE 6 (Prosecution History Estoppel) 7 34. Plaintiff’s claims are barred by the doctrine of prosecution history estoppel based 8 on statements, representations and admissions made during prosecution of the patent application 9 resulting in the ’326. 10 SEVENTH AFFIRMATIVE DEFENSE 11 (Statutory Damages Limitations) 12 35. Plaintiff’s claim for damages is statutorily limited by 35 U.S.C. § 286 and/or § 287. 13 EIGHTH AFFIRMATIVE DEFENSE 14 (Government Sales) 15 36. Plaintiff’s remedies are limited under 28 U.S.C. § 1498. 16 NINTH AFFIRMATIVE DEFENSE 17 (No Injunctive Relief) 18 19 37. Plaintiff’s claim for injunctive relief is barred because there exists an adequate remedy at law and Plaintiff’s claims otherwise fail to meet the requirements for such relief. 20 TENTH DEFENSE 21 (No Standing) 22 23 38. Plaintiff does not have standing to bring an action for infringement of the ’326 patent under the United States patent laws. 24 ELEVENTH DEFENSE 25 (Unclean Hands) 26 27 39. Some or all of Plaintiff’s claims for relief are barred and unenforceable, in whole or in part, under the doctrine of unclean hands. 28 5 MICROSOFT’S CORRECTED ANSWER AND COUNTERCLAIMS CASE NO. 3:11-CV-02402-EMC 1 TWELFTH DEFENSE 2 (Reverse Doctrine of Equivalents) 3 40. Microsoft’s accused methods and/or systems operate and/or are configured in ways 4 substantially different in principle from the way the invention described in the ’326 patent operates 5 and/or is programmed, and Plaintiff cannot sustain its burden of proving otherwise. 6 THIRTEENTH DEFENSE 7 (Failure to Mitigate Damages) 8 41. Plaintiff’s claims are barred, in whole or in part, by its failure to mitigate damages. 9 10 11 12 MICROSOFT’S COUNTERCLAIM FOR DECLARATORY RELIEF 1. Microsoft incorporates its responses to paragraphs 1-41 by reference as if fully set forth here and asserts the following counterclaims for declaratory relief against MasterObjects: 13 14 15 16 PARTIES 2. Microsoft Corporation (“Microsoft”) is a Washington corporation with its principal place of business located at One Microsoft Way, Redmond, WA 98052. 3. On information and belief, counterclaim defendant MasterObjects, Inc. 17 (“MasterObjects”) is a corporation organized and existing under the laws of California with its 18 principal place of business in Maarssen, Netherlands. 19 20 JURISDICTION AND VENUE 4. This counterclaim for a declaratory judgment arises under the Federal Declaratory 21 Judgment Act, 28 U.S.C. § 2201 et seq., and the Patent Act of the United States, 35 U.S.C. § 101 22 et seq. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1338, 2201, and 2202. 23 5. This Court also has personal jurisdiction over MasterObjects because, among other 24 reasons, MasterObjects submitted itself to the jurisdiction of this Court by bringing its complaint 25 for infringement of United States Patent No. 7,752,326 (“the ’326 patent”) in this Court. 26 6. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391 and 1400(b) because, 27 among other reasons, MasterObjects has brought its complaint for infringement of the ’326 patent 28 in this Court. 6 MICROSOFT’S CORRECTED ANSWER AND COUNTERCLAIMS CASE NO. 3:11-CV-02402-EMC 1 FACTUAL ALLEGATIONS 2 United States Patent No. 5,805,911 3 7. On September 8, 1998, the United States Patent & Trademark Office duly and 4 legally issued United States Patent No. 5,805,911 (“the ’911 patent”) entitled “Word Prediction 5 System.” A true and correct copy of the ’911 Patent is attached as Exhibit A and is incorporated 6 herein by reference. 7 8 8. Microsoft Corporation is the assignee of the ’911 Patent and has standing to bring forth these claims against MasterObjects. 9 9. The ’911 patent claims various methods and for application independent text prediction. 10 MasterObjects’ Infringing Products and Services 11 12 13 14 15 10. On information and belief, in 2004, MasterObjects introduced a software product that it calls “QuestFields.” 11. On information and belief, QuestFields includes functionality which suggests completions and additional related terms to refine a search query entered by a user. 12. On information and belief, MasterObjects sells QuestFields to customers so that 16 customers can modify their webpages to include QuestFields powered search fields which suggest 17 completions and additional related terms to refine search queries. 18 13. On information and belief, MasterObjects sells mobile Questfields to customers so 19 that customers can modify their webpages to include QuestFields powered search fields which 20 suggest completions and additional related terms to refine search queries. 21 14. On information and belief, MasterObjects sells a particular implementation of 22 Questfields, called ProductFinder Questfield, to customers permitting customers to search 23 products in a database. A ProductFinder QuestField allows users to start typing the first 24 characters of any word in a product name to activate a query. The QuestField Server immediately 25 goes out to a product database and quickly shows the first matches, while the user is typing. A 26 ProductFinder QuestField shows product names and any other metadata that is available in a 27 database. Users can submit the value found, just like a static input field in traditional web 28 applications. 7 MICROSOFT’S CORRECTED ANSWER AND COUNTERCLAIMS CASE NO. 3:11-CV-02402-EMC 1 2 15. On information and belief, MasterObjects sells mobile ProductFinder Questfields to customers. 3 16. On information and belief, MasterObjects sells a particular implementation of 4 Questfields, called PeopleFinder QuestField, to customers permitting customers to look up people 5 in a corporate directory or a people database. The PeopleFinder QuestField comes pre-configured 6 for content channels that return people data. The PeopleFinder QuestField, can display a 7 dropdown list displaying information in various ways. 8 COUNTERCLAIM I: 9 DECLARATORY RELIEF REGARDING NON-INFRINGEMENT 10 11 17. Microsoft incorporates by reference paragraphs 1-16 above as though fully repeated 18. An actual and justiciable controversy exists between Microsoft and MasterObjects here. 12 13 as to the non-infringement of the ’326 patent, as evidenced by MasterObjects’ Complaint and 14 Microsoft’s Answer to that Complaint, set forth above. 15 19. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., 16 Microsoft requests the declaration of the Court that Microsoft does not infringe and has not 17 infringed any claim of the ’326 patent. 18 COUNTERCLAIM II: 19 DECLARATORY RELIEF REGARDING INVALIDITY 20 21 22 20. Microsoft incorporates by reference paragraphs 1-19 above as though fully repeated 21. An actual and justiciable controversy exists between Microsoft and MasterObjects here. 23 as to the invalidity of the ’326 patent, as evidenced by MasterObjects’ Complaint and Microsoft’s 24 Answer to that Complaint, set forth above. 25 22. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., and 26 the Patent Act of the United States, 35 U.S.C. § 101 et seq, Microsoft requests the declaration of 27 the Court that the ’326 patent is invalid. 28 8 MICROSOFT’S CORRECTED ANSWER AND COUNTERCLAIMS CASE NO. 3:11-CV-02402-EMC 1 COUNTERCLAIM III: 2 INFRINGEMENT OF THE ’911 PATENT 3 4 5 23. Microsoft incorporates by reference paragraphs 1-22 above as though fully repeated 24. Microsoft is informed and believes, and on that basis alleges, that MasterObjects, in here. 6 connection with certain of its products, services, methods and/or systems, including QuestFields, 7 has infringed and continues to infringe the ’911 patent by making, using, offering for sale, and/or 8 selling within the United States systems or methods that embody the inventions claimed in the 9 ’911 patent; and/or by actively inducing others to make or use in the United States the systems 10 11 and/or methods claimed in one or more claim of the ’911 patent. 25. MasterObjects’ activities constitute infringement of one or more claims of the ’911 12 patent, either directly, indirectly, literally, or under the doctrine of equivalents, in violation of one 13 or more subsections of 35 U.S.C. § 271. 14 26. As a result of MasterObjects’ infringement of the ’911 patent, Microsoft has been 15 damaged and will continue to be damaged until MasterObjects is enjoined from further acts of 16 infringement. 17 27. Microsoft faces real, substantial and irreparable damage and injury of a continuing 18 nature from MasterObjects’ infringement of the ’911 patent for which Microsoft has no adequate 19 remedy at law. 20 21 22 EXCEPTIONAL CASE 28. This is an exceptional case under 35 U.S.C. § 285 and Microsoft is entitled to recover its attorneys’ fees and costs incurred in connection with this action. 23 24 PRAYER FOR RELIEF WHEREFORE, Microsoft prays for entry of judgment as follows: 25 (a) That MasterObjects take nothing by its Complaint; 26 (b) That MasterObjects’ Complaint be dismissed with prejudice; 27 (c) That the Court enter a declaration that Microsoft does not infringe and has not 28 infringed, directly or indirectly, the ’326 patent; 9 MICROSOFT’S CORRECTED ANSWER AND COUNTERCLAIMS CASE NO. 3:11-CV-02402-EMC 1 (d) That the Court declare that the ’326 patent is invalid; 2 (e) The Court enter judgment declaring that Microsoft is the owner of U.S. Patent No 3 5,805,911, that Microsoft should be entitled to all rights of recovery thereunder, and 4 that U.S. Patent No. 5,805,911 is valid and enforceable; 5 (f) The Court enjoin, by preliminary and permanent injunctions, MasterObjects; its 6 officers, principals, agents, attorneys, servants, employees and all others acting by or 7 under their direction and authority; and their successors and assigns from making, 8 using offering to sell, or selling in the United States any infringing products or any 9 other product substantially equivalent thereto which is also within the scope of any 10 11 claim of U.S. Patent No. 5,805,911; (g) Microsoft be awarded an accounting for and recovery of damages under 35 U.S.C. § 12 284 adequate to fully compensate it for infringement by MasterObjects of U.S. Patent 13 No. 5,805,911 and in an amount to be proven at trial; 14 (h) That this case be declared exceptional and that Microsoft be awarded its costs, 15 expenses, and reasonable attorney fees in this action pursuant to 35 U.S.C. § 285; and 16 (i) That Microsoft be awarded other and further relief as the Court may deem appropriate. 17 JURY DEMAND 18 Defendant, Microsoft Corporation demands a jury trial on all issues triable by jury. 19 20 Dated: August 1, 2011 FISH & RICHARDSON P.C. 21 By: /s/ Leeron G. Kalay Leeron G. Kalay 22 23 Attorneys for Defendant MICROSOFT CORP. 24 25 26 50796121.doc 27 28 10 MICROSOFT’S CORRECTED ANSWER AND COUNTERCLAIMS CASE NO. 3:11-CV-02402-EMC