IconFind, Inc. v. Google, Inc.

Filing 26

ANSWER to COUNTERCLAIM 18 by IconFind, Inc.(Haan, Brian) Modified on 4/12/2011 (Mena-Sanchez, L).

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WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP Thomas G. Redmon (SBN 47090) [e-mail] Daniel L. Baxter (SBN 203862) [e-mail] 400 Capitol Mall, 22nd Floor Sacramento, CA 95814 Phone: [phone] Fax: [phone] NIRO, HALLER & NIRO Raymond P. Niro (Admitted Pro hac vice) [e-mail] Raymond P. Niro, Jr. (Admitted Pro hac vice) [e-mail] Brian E. Haan (Admitted Pro hac vice) [e-mail] Anna B. Folgers (Admitted Pro hac vice) [e-mail] 181 West Madison, Suite 4600 Chicago, IL 60602-4515 Phone: [phone] Fax: [phone] Attorneys for Plaintiff, IconFind, Inc. IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF CALIFORNIA ICONFIND, INC., Case No. 2:11-cv-00319-GEB-JFM Plaintiff, ICONFIND, INC.'S ANSWER AND AFFIRMATIVE DEFENSES TO GOOGLE INC.'S COUNTERCLAIM FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE '459 PATENT JURY TRIAL DEMANDED

16 17 v. 18 GOOGLE INC., 19 Defendant. 20 21 22 Plaintiff IconFind, Inc. ("IconFind") hereby responds to the counterclaim Count One ­ 23 Declaratory Judgment of Non-Infringement of the '459 Patent filed on March 24, 2011 by 24 Defendant Google inc. ("Google"). Google's counterclaim Count Two ­ Declaratory Judgment 25 26

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of Invalidity of the '459 Patent and related Second Defense of patent invalidity are the subject of Plaintiff Iconfind, Inc.'s Motion To Dismiss Pursuant To Frcp 12(B)(6) And Motion To Strike Pursuant To Frcp 12(F). Accordingly, IconFind has not answered the patent invalidity

allegations in Google's counterclaim Count Two or Google's Second Defense. IconFind reserves the right to answer the patent invalidity allegations in Google's counterclaim Count Two and Google's Second Defense pending the outcome of its motion to dismiss and strike.
COUNTERCLAIMS THE PARTIES 1. Google is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 1600 Amphitheatre Parkway, Mountain View, California 94043. RESPONSE: Admitted. 2. Upon information and belief, Plaintiff IconFind, Inc. is a corporation organized and existing under the laws of California with a principal place of business at 1660 Drew Circle #27, Davis, California 95618. RESPONSE: Admitted. JURISDICTION AND VENUE 3. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b) and by virtue of IconFind's admissions in the Complaint that venue is proper in this district. RESPONSE: Admitted. 4. This Court has personal jurisdiction over IconFind.

RESPONSE: Admitted that this Court has personal jurisdiction over IconFind and Google. 5. This Court has subject matter jurisdiction over these Counterclaims pursuant to 28 U.S.C. §§ 1331 and 1338.
Iconfind, Inc.'s Answer And Affirmative Defenses To Google Inc.'s Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent

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RESPONSE: Denied that Google is entitled to any relief; otherwise admitted. COUNT ONE - Declaratory Judgment of Non-Infringement of the '459 Patent 6. Google restates and incorporates by reference its allegations in paragraphs 1-5 of its Answer and Counterclaims. RESPONSE: IconFind restates and incorporates by reference its responses to the allegations in paragraphs 1 - 5 of Google's Answer and Counterclaims, inclusive, as though fully set forth herein. 7. An actual case or controversy exists between Google and IconFind as to whether the '459 patent is infringed by Google. RESPONSE: Admitted. 8. A judicial declaration is necessary and appropriate so that Google may ascertain its rights regarding the '459 patent. RESPONSE:

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Admitted that Google purports to seek a judicial declaration so that it may ascertain its rights

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regarding the '459 patent; denied that Google is entitled to any relief; otherwise denied. 9. Google has not infringed and does not infringe, directly or indirectly, any valid and enforceable claim of the '459 patent. RESPONSE: Denied.

COUNT TWO - Declaratory Judgment of Invalidity of the '459 Patent
IconFind reserves the right to answer the allegations of Count Two pending the outcome of its motion to dismiss and strike. EXCEPTIONAL CASE 12. On information and belief, this is an exceptional case entitling Google to an award of its attorneys' fees incurred in connection with defending and prosecuting this action pursuant to 35
Iconfind, Inc.'s Answer And Affirmative Defenses To Google Inc.'s Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent

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U.S.C. § 285, as a result of, inter alia, IconFind's assertion of the Patent-in-suit against Google with the knowledge that Google does not infringe any valid or enforceable claim of the Patent-in-suit and/or that the Patent-in-suit is invalid and/or unenforceable. RESPONSE: Denied.

PLAINTIFF'S AFFIRMATIVE DEFENSES IconFind asserts the following Affirmative Defenses against Google's Counterclaims and reserves the right to further amend its responses pending the outcome of its motion to dismiss and strike and as additional information becomes available. 1. The claims of United States Patent No. 7,181,459 B2 are valid, enforceable and

infringed by Google. 2. Google has infringed and continues to infringe at least claims 1, 6, 9, 16, 17, 19,

20, 21, 22, 29, 30 and 31 of the '459 patent under 35 U.S.C. § 271(a) through Google's use, ownership and operation of websites in which it incorporates and facilitates Creative Commons licenses, including but not limited to Google Knol, Google Books and Google Picasa. 3. 4. 5. Google's counterclaims fail to state claims upon which relief may be granted. IconFind is entitled to judgment as a matter of law on Google's Counterclaims. IconFind reserves the right to answer the patent invalidity allegations in Google's

counterclaim Count Two and Google's Second Defense pending the outcome of its motion to dismiss and strike. 6. IconFind adopts and incorporates herein all affirmative defenses available

pursuant to Federal Rule of Civil Procedure 8 (or any applicable statute or regulation), to the extent the facts known at this time would make any of said defenses available or facts developed in the future would make same available. No affirmative defense is waived.

Iconfind, Inc.'s Answer And Affirmative Defenses To Google Inc.'s Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent

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WHEREFORE, IconFind requests that judgment be entered against Google and in IconFind's favor on the Counterclaims brought by Google. IconFind further requests that it be granted all of the relief requested in its Complaint. JURY DEMAND IconFind demands a trial by jury on all issues properly triable to a jury.

Respectfully submitted, WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP Thomas G. Redmon (SBN 47090) [e-mail] Daniel L. Baxter (SBN 203862) [e-mail] Attorneys for Plaintiff IconFind, Inc. /s/ Brian E. Haan NIRO, HALLER & NIRO Raymond P. Niro (Pro hac vice) [e-mail] Raymond P. Niro, Jr. (Pro hac vice) [e-mail] Brian E. Haan (Pro hac vice) [e-mail] Anna B. Folgers (Pro hac vice) [e-mail] Attorneys for Plaintiff IconFind, Inc.

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Iconfind, Inc.'s Answer And Affirmative Defenses To Google Inc.'s Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent

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CERTIFICATE OF SERVICE The undersigned hereby certifies that on April 8, 2011 the foregoing ICONFIND, INC.'S ANSWER AND AFFIRMATIVE DEFENSES TO GOOGLE INC.'S COUNTERCLAIM FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE '459 PATENT was filed with the Clerk of Court using the CM/ECF system, which will then send a notification of such filing to the following counsel of record. Michael J. Malecek [e-mail] Kenneth Maikish [e-mail] Kaye Scholer LLP Two Palo Alto Square, Suite 400 3000 El Camino Real Palo Alto, California 94306 Telephone: [phone] Facsimile: [phone] Attorneys for Defendant Google Inc. I certify that all parties in this case are represented by counsel who are CM/ECF participants.

/s/ Brian E. Haan Attorneys for Plaintiff