Masterobjects, Inc. v. Microsoft Corp

Filing 21

ANSWER TO COUNTERCLAIM 15 Answer to Complaint, Counterclaim "PLAINTIFF MASTEROBJECTS, INC.'S AMENDED ANSWER TO DEFENDANT MICROSOFT CORP.'S COUNTERCLAIMS" byMasterobjects, Inc.. (Bishop, George) (Filed on 8/16/2011)

1 2 3 4 5 6 7 SPENCER HOSIE (CA Bar No. 101777) shosie@hosielaw.com GEORGE F. BISHOP (CA Bar No. 89205) gbishop@hosielaw.com DIANE S. RICE (CA Bar No. 118303) drice@hosielaw.com WILLIAM P. NELSON (CA Bar No. 196091) wnelson@hosielaw.com HOSIE RICE LLP 600 Montgomery Street, 34th Floor San Francisco, CA 94111 (415) 247-6000 Tel. (415) 247-6001 Fax 8 Attorneys for Plaintiff 9 MASTEROBJECTS, INC. 10 11 UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION 12 13 14 MASTEROBJECTS, INC., Case No. C 11-2402 EMC 15 16 17 Plaintiff, v. MICROSOFT CORP., 18 19 Defendant. PLAINTIFF MASTEROBJECTS, INC.’S AMENDED ANSWER TO DEFENDANT MICROSOFT CORP.’S COUNTERCLAIMS JURY TRIAL DEMANDED 20 21 22 23 24 25 26 27 28 PLAINTIFF’S AMENDED ANSWER TO COUNTERCLAIMS CASE NO. C 11-2402 EMC 1 ANSWER TO COUNTERCLAIMS 2 MasterObjects, Inc. (“MasterObjects”), Plaintiff and Counter-Defendant, hereby 3 states its Answer to the Counterclaims alleged by Microsoft Corp. (“Microsoft”), demands a 4 jury trial, and alleges as follows: 5 6 1. Answering the allegations in Paragraph 1, MasterObjects admits the allegations in the responses to paragraphs 1-41 incorporated by reference by Microsoft only 7 8 to the extent said responses consist of unqualified admissions of the allegations in 9 MasterObjects’ complaint; in all other respects, MasterObjects denies each and every 10 allegation in Microsoft’s responses and this paragraph. 11 12 13 PARTIES 2. Answering the allegations in Paragraph 2, MasterObjects admits said allegations. 14 3. Answering the allegations in Paragraph 3, MasterObjects admits that it is a 15 16 corporation, admits that its principal place of business is now Maarssen, Netherlands, and 17 denies each and every remaining allegation in said paragraph. JURISDICTION AND VENUE 18 19 4. Answering the allegations in Paragraph 4, MasterObjects admits that subject 20 matter jurisdiction exists for Microsoft’s “Counterclaim I” and “Counterclaim II.” 21 MasterObjects lacks knowledge or information sufficient to admit or deny each and every 22 allegation remaining in said paragraph, and on that basis denies each and every allegation 23 remaining in said paragraph. 24 25 5. Answering the allegations in Paragraph 5, MasterObjects admits said 26 allegations. 27 28 PLAINTIFF’S AMENDED ANSWER TO COUNTERCLAIMS 1 CASE NO. C 11-2402 EMC 1 6. Answering the allegations in Paragraph 6, MasterObjects admits said 2 allegations. 3 FACTUAL ALLEGATIONS 4 United States Patent No. 5,805,911 5 6 7. Answering the allegations in Paragraph 7, MasterObjects lacks knowledge or information sufficient to admit or deny said allegations, and on that basis denies each and 7 8 9 every allegation set forth in said paragraph. 8. Answering the allegations in Paragraph 8, MasterObjects lacks knowledge or 10 information sufficient to admit or deny said allegations, and on that basis denies each and 11 every allegation set forth in said paragraph. 12 13 9. Answering the allegations in Paragraph 9, MasterObjects lacks knowledge or information sufficient to admit or deny said allegations, and on that basis denies each and 14 every allegation set forth in said paragraph. 15 MasterObjects’ [Allegedly] Infringing Products and Services 16 17 10. Answering the allegations in Paragraph 10, MasterObjects admits said 18 allegations. 19 11. Answering the allegations in Paragraph 11, MasterObjects admits that 20 QuestFields includes functionality that can be used in connection with suggesting 21 completions and additional related terms to refine a search query, and lacking knowledge or 22 information sufficient to admit or deny the remaining allegations denies each and every 23 remaining allegation set forth in said paragraph. 24 25 12. Answering the allegations in Paragraph 12, MasterObjects admits that it 26 licenses QuestFields to customers, that customers can modify their webpages to include 27 QuestFields-powered search fields, and that QuestFields can be used in connection with 28 PLAINTIFF’S AMENDED ANSWER TO COUNTERCLAIMS 2 CASE NO. C 11-2402 EMC 1 suggesting completions and additional related terms to refine a search query, and lacking 2 knowledge or information sufficient to admit or deny the remaining allegations denies each 3 and every remaining allegation set forth in said paragraph. 4 5 6 13. Answering the allegations in Paragraph 13, MasterObjects admits that it licenses QuestFields to customers for mobile use, that customers can modify their webpages to include QuestFields-powered search fields, and that QuestFields can be used in connection 7 8 with suggesting completions and additional related terms to refine a search query, and 9 lacking knowledge or information sufficient to admit or deny the remaining allegations 10 denies each and every remaining allegation set forth in said paragraph. 11 14. Answering the allegations in Paragraph 14, MasterObjects admits that 12 MasterObjects sells an implementation of QuestFields called ProductFinder, that 13 ProductFinder enables customers to search for products in a database, that users may start 14 typing the first characters of a word in a product name to begin a query, that the QuestField 15 16 Server may communicate with a product database and show the first matches while the user 17 is typing, that a ProductFinder QuestField can be used in connection with a product database 18 to show product names and other metadata that is available in the database, and that users can 19 submit a value found, and that users can submit values in an input field in web applications, 20 and lacking knowledge or information sufficient to admit or deny the remaining allegations 21 denies each and every remaining allegation set forth in said paragraph. 22 15. Answering the allegations in Paragraph 15, MasterObjects admits said 23 allegations. 24 25 16. Answering the allegations in Paragraph 16, MasterObjects sells an 26 implementation of QuestFields called PeopleFinder QuestField, that PeopleFinder enables 27 customers to search for people information in connection with a corporate directory or a 28 PLAINTIFF’S AMENDED ANSWER TO COUNTERCLAIMS 3 CASE NO. C 11-2402 EMC 1 people database, that PeopleFinder may be delivered with examples of configurations of 2 content channels that can enable the return of people information, and that PeopleFinder can 3 display information in a dropdown list in various ways, and lacking knowledge or 4 information sufficient to admit or deny the remaining allegations denies each and every 5 remaining allegation set forth in said paragraph. 6 COUNTERCLAIM I: 7 DECLARATORY RELIEF REGARDING NON-INFRIGEMENT 8 9 17. Answering the allegations in Paragraph 17, MasterObjects restates and 10 realleges its answer to Paragraphs 1 through 16 above as if set forth fully herein. 11 18. Answering the allegations in Paragraph 18, MasterObjects admits said 12 allegations. 13 19. Answering the allegations in Paragraph 19, MasterObjects admits that 14 Microsoft requests declaratory relief, but denies that Microsoft is entitled to relief and denies 15 16 each and every allegation remaining in said paragraph. 17 COUNTERCLAIM II: 18 DECLARATORY RELIEF REGARDING INVALIDITY 19 20. Answering the allegations in Paragraph 20, MasterObjects restates and 20 realleges its answer to Paragraphs 1 through 19 above as if set forth fully herein. 21 21. Answering the allegations in Paragraph 21, MasterObjects admits said 22 allegations. 23 22. Answering the allegations in Paragraph 22, MasterObjects admits that 24 25 Microsoft requests declaratory relief, but denies that Microsoft is entitled to relief and denies 26 each and every allegation remaining in said paragraph. 27 28 PLAINTIFF’S AMENDED ANSWER TO COUNTERCLAIMS 4 CASE NO. C 11-2402 EMC 1 COUNTERCLAIM III: 2 INFRINGEMENT OF THE ‘911 PATENT 3 23. Answering the allegations in Paragraph 23, MasterObjects restates and 4 realleges its answer to Paragraphs 1 through 22 above as if set forth fully herein. 5 6 24. Answering the allegations in Paragraph 24, MasterObjects denies each and every allegation set forth in said paragraph. 7 8 25. Answering the allegations in Paragraph 25, MasterObjects denies each and 9 every allegation set forth in said paragraph. 10 26. Answering the allegations in Paragraph 26, MasterObjects denies each and 11 every allegation set forth in said paragraph. 12 13 27. Answering the allegations in Paragraph 27, MasterObjects denies each and every allegation set forth in said paragraph. 14 EXCEPTIONAL CASE 15 16 28. Answering the allegations in Paragraph 28, MasterObjects denies each and 17 every allegation set forth in said paragraph. 18 AFFIRMATIVE DEFENSES 19 FIRST AFFIRMATIVE DEFENSE 20 (Non-Infringement) 21 29. MasterObjects does not infringe and has not infringed (either directly, 22 23 contributorily or by inducement) any claim of the ’911 patent. 24 SECOND AFFIRMATIVE DEFENSE 25 (Invalidity) 26 27 28 PLAINTIFF’S AMENDED ANSWER TO COUNTERCLAIMS 5 CASE NO. C 11-2402 EMC 30. 1 One or more asserted claims of the ’911 patent are invalid because they fail to 2 comply with the requirements of 35 U.S.C. § 101 et seq., including, without limitation, 3 sections 101, 102, 103 and 112. 4 THIRD AFFIRMATIVE DEFENSE 5 (Equitable Defenses - Laches) 6 31. Microsoft’s claims are barred, in whole or in part by the equitable doctrine of 7 8 laches. 9 FOURTH AFFIRMATIVE DEFENSE 10 (Equitable Defenses - Estoppel) 11 32. Microsoft’s claims are barred, in whole or in part by the equitable doctrines 12 of estoppel and/or waiver. 13 SIXTH AFFIRMATIVE DEFENSE 14 (Prosecution History Estoppel) 15 33. 16 Microsoft’s claims are barred by the doctrine of prosecution history estoppel 17 based on statements, representations and admissions made during prosecution of the patent 18 application resulting in the ’911 patent. 19 SEVENTH AFFIRMATIVE DEFENSE 20 (Statutory Damages Limitations) 21 34. Microsoft’s claim for damages is statutorily limited by 35 U.S.C. § 286 and/or 22 23 § 287. EIGHTH AFFIRMATIVE DEFENSE 24 (Government Sales) 25 26 35. Microsoft’s remedies are limited under 28 U.S.C. § 1498. 27 28 PLAINTIFF’S AMENDED ANSWER TO COUNTERCLAIMS 6 CASE NO. C 11-2402 EMC 1 NINTH AFFIRMATIVE DEFENSE 2 (No Injunctive Relief) 3 36. Microsoft’s claim for injunctive relief is barred because there exists an 4 adequate remedy at law and Microsoft’s claims otherwise fail to meet the requirements for 5 such relief. 6 TENTH DEFENSE 7 (No Standing) 8 9 37. Microsoft does not have standing to bring an action for infringement of the 10 ’911 patent under the United States patent laws. 11 ELEVENTH DEFENSE 12 (Unclean Hands) 13 38. Some or all of Microsoft’s claims for relief are barred and unenforceable, in 14 whole or in part, under the doctrine of unclean hands. 15 TWELFTH DEFENSE 16 (Reverse Doctrine of Equivalents) 17 18 39. Microsoft’s accused methods and/or systems operate and/or are configured in 19 ways substantially different in principle from the way the invention described in the ’911 20 patent operates and/or is programmed, and Microsoft cannot sustain its burden of proving 21 otherwise. 22 THIRTEENTH DEFENSE 23 (Failure to Mitigate Damages) 24 25 40. Microsoft’s claims are barred, in whole or in part, by its failure to mitigate 26 damages. 27 28 PLAINTIFF’S AMENDED ANSWER TO COUNTERCLAIMS 7 CASE NO. C 11-2402 EMC 1 FOURTEENTH DEFENSE 2 (Substantial Non-Infringing Uses) 3 4 5 41. Any and all products or actions accused of infringement have substantial uses that do not infringe and do not induce or contribute to the alleged infringement of the claims 6 of the ’911 Patent. 7 FIFTEENTH DEFENSE 8 (Dedication to the Public) 9 42. Microsoft has dedicated to the public any method, system, and/or product 10 disclosed in the ’911 patent but not literally claimed therein and is therefore estopped from 11 12 claiming infringement by any such public domain method, system, and/or product. PRAYER FOR RELIEF 13 14 Answering Microsoft’s Prayer for Relief, MasterObjects denies that Microsoft is 15 entitled to any of the relief it requests, including the relief Microsoft requests in its 16 paragraphs (a) – (i), and prays that Microsoft take nothing by its Counterclaims. 17 WHEREFORE, Plaintiff MasterObjects further prays for entry of judgment: 18 A. that the Patents-in-Suit are valid and enforceable; B. that Microsoft has infringed one or more claims of the Patents-in-Suit; C. that Microsoft account for and pay to Plaintiff all damages caused by the 19 20 21 22 infringement of the Patents-in-Suit, which by statute can be no less than a reasonable royalty; 23 24 25 D. that this Court issue a preliminary and final injunction enjoining Microsoft, its officers, agents, servants, employees and attorneys, and any other person in active concert or participation with them, from continuing the acts herein complained of, and more 26 27 28 PLAINTIFF’S AMENDED ANSWER TO COUNTERCLAIMS 8 CASE NO. C 11-2402 EMC 1 particularly, that Microsoft and such other persons be permanently enjoined and restrained 2 from further infringing the instant search patent; 3 E. that MasterObjects be granted pre-judgment and post-judgment interest on the 4 damages caused to them by reason of Microsoft’s infringement of the Patents-in-Suit; 5 6 F. that this Court require Microsoft to file with this Court, within thirty (30) days after entry of final judgment, a written statement under oath setting forth in detail the manner 7 8 9 in which Defendant has complied with the injunction; G. that this be adjudged an exceptional case and that MasterObjects be 10 awarded its attorney’s fees in this action pursuant to 35 U.S.C. § 285; 11 H. that this Court award MasterObjects its costs and disbursements in this 12 civil action, including reasonable attorney’s fees; and 13 I. that MasterObjects be granted such other and further relief as the Court 14 may deem just and proper under the current circumstances. 15 16 Dated: August 16, 2011 17 Respectfully submitted, /s/George F. Bishop__________________ SPENCER HOSIE (CA Bar No. 101777) shosie@hosielaw.com GEORGE F. BISHOP (CA Bar No. 89205) gbishop@hosielaw.com DIANE S. RICE (CA Bar No. 118303) drice@hosielaw.com WILLIAM P. NELSON (CA Bar No. 196091) wnelson@hosielaw.com HOSIE RICE LLP 600 Montgomery Street, 34th Floor San Francisco, CA 94111 (415) 247-6000 Tel. (415) 247-6001 Fax 18 19 20 21 22 23 24 25 26 Attorneys for Plaintiff MASTEROBJECTS, INC. 27 28 PLAINTIFF’S AMENDED ANSWER TO COUNTERCLAIMS 9 CASE NO. C 11-2402 EMC DEMAND FOR JURY TRIAL 1 2 Plaintiff, by its undersigned attorneys, demands a trial by jury on all issues so triable. 3 Dated: August 16, 2011 Respectfully submitted, 4 /s/ George F. Bishop___________________ SPENCER HOSIE (CA Bar No. 101777) shosie@hosielaw.com GEORGE F. BISHOP (CA Bar No. 89205) gbishop@hosielaw.com DIANE S. RICE (CA Bar No. 118303) drice@hosielaw.com WILLIAM P. NELSON (CA Bar No. 196091) wnelson@hosielaw.com HOSIE RICE LLP 600 Montgomery Street, 34th Floor San Francisco, CA 94111 (415) 247-6000 Tel. (415) 247-6001 Fax 5 6 7 8 9 10 11 12 13 Attorneys for Plaintiff MASTEROBJECTS, INC. 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PLAINTIFF’S AMENDED ANSWER TO COUNTERCLAIMS 10 CASE NO. C 11-2402 EMC