IconFind, Inc. v. Google, Inc.

Filing 36

MEMORANDUM by IconFind, Inc. in support of 35 Motion to Dismiss and Motion to Strike. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Proposed Order)(Folgers, Anna) Modified on 4/20/2011 (Becknal, R).

EXHIBIT A

Case 2:11-cv-00319-GEB -JFM Document 27

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Filed 04/11/11 Page 1 of 6

Michael J. Malecek (State Bar No. 171034)
Email address: [e-mail]
Kenneth Maikish (State Bar No. 267265)
Email address: [e-mail]
KAYE SCHOLER LLP
Two Palo Alto Square, Suite 400
3000 El Camino Real
Palo Alto, California 94306
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant
GOOGLE INC.

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UNITED STATES DISTRICT COURT

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FOR THE EASTERN DISTRICT OF CALIFORNIA

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ICONFIND, INC.,

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Plaintiff,
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v.

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GOOGLE INC.,
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Defendant.

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Case No. 2:11-CV-00319 GEB JFM
DEFENDANT GOOGLE INC.’S
FIRST AMENDED ANSWER TO
PLAINTIFF’S COMPLAINT FOR
PATENT INFRINGEMENT AND
COUNTERCLAIMS

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FIRST AMENDED ANSWER TO COMPLAINT
Case No. 2:11-CV-00319 GEB JFM

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Filed 04/11/11 Page 2 of 6

Defendant and counterclaimant Google Inc. (“Google”), by and through the undersigned

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counsel, answers the Complaint of Patent Infringement of Plaintiff (the “Complaint”) and

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counterclaim defendant IconFind, Inc. (“IconFind”) as follows:

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1.

Google admits that Plaintiff’s Complaint purports to state an action for patent

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infringement and that this Court has subject matter jurisdiction over patent law claims. Google

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denies any remaining allegations of paragraph 1.

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2.

Google is without knowledge or information sufficient to form a belief as to the

truth of the allegations of paragraph 2, and therefore denies them.
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Google is without knowledge or information sufficient to form a belief as to the

truth of the allegations of paragraph 3, and therefore denies them.
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Google admits that Google Inc. is a Delaware corporation with a principal place of

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business in Mountain View, California. Google admits that it owns and operates

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www.google.com, knol.google.com, books.google.com, and picasa.google.com.

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5.

Solely for the purposes of this action, Google does not contest personal jurisdiction

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in this District. Google denies that it has committed any acts of infringement within this or any

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other district and denies any remaining allegations of paragraph 5.

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6.

Solely for the purposes of this action, Google admits that venue is proper in the

Eastern District of California.

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7.

Denied.

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8.

Google is without knowledge or information sufficient to form a belief as to the

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truth of the allegations of paragraph 8, and therefore denies them.
9.

Google admits that it received a letter from Plaintiff’s counsel, dated January 19,

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2009 regarding IconFind and related to the U.S. Patent No. 7,181,459 (“the ’459 patent” or the

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Patent-in-suit”). Google also admits that reference to the ’459 patent appears on the face of U.S.

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Patent Nos. 7,664,734; 7,693,825; and 7,788,274. Google denies that it has committed any acts of

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infringement of the ’459 patent and denies any remaining allegations of paragraph 9.

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FIRST AMENDED ANSWER TO COMPLAINT
Case No. 2:11-CV-00319 GEB JFM

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Denied.

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Filed 04/11/11 Page 3 of 6

Denied.

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AFFIRMATIVE DEFENSES

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12.

Further answering the Complaint, Google asserts the following defenses. In doing

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so, Google does not assume the burden of proof with respect to those related matters for which,

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pursuant to law, Plaintiff bears the burden. In addition to the affirmative defenses described

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below, subject to its responses above, Google specifically reserves all rights to allege additional

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affirmative defenses that become known through the course of discovery.

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First Defense

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Google does not infringe and has not infringed (not directly, contributorily, or by

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inducement) and is not liable for infringement of any valid and enforceable claim of the ’459

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patent.

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Second Defense
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The claims of the ’459 patent are invalid under 35 U.S.C. § 101 because they fail to

claim patentable subject matter insofar as each seeks to claim an abstract idea.
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The claims of the ’459 patent are invalid because they fail to meet the “conditions

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for patentability” of 35 USC §§ 102, 103, and/or 112 because the claims lack utility; are taught by,

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suggested by, and/or obvious in view of, the prior art; and/or are not adequately supported by the

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written description of the patented invention.

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Third Defense
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’459 patent are limited by 35 U.S.C. §§ 286, 287, and/or 288.

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IconFind’s claim for damages, if any, against Google for alleged infringement of the

Fourth Defense
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On information and belief, IconFind’s claims for relief are barred, in whole or in

part, by the equitable doctrines of laches and estoppel.

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FIRST AMENDED ANSWER TO COMPLAINT
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Filed 04/11/11 Page 4 of 6

Fifth Defense

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Any and all products or actions accused of infringement have substantial uses that

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do not infringe and do not induce or contribute to the alleged infringement of the claims of the ’459

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patent.

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COUNTERCLAIMS
Pursuant to Rule 13 of the Federal Rules of Civil Procedure, Google for its Counterclaims
against IconFind, alleges as follows:

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THE PARTIES
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Google is a corporation organized and existing under the laws of the State of

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Delaware, with its principal place of business at 1600 Amphitheatre Parkway, Mountain View,

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California 94043.

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2.

Upon information and belief, Plaintiff IconFind, Inc. is a corporation organized and

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existing under the laws of California with a principal place of business at 1660 Drew Circle #27,

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Davis, California 95618.

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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.

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4.

This Court has personal jurisdiction over IconFind.

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5.

This Court has subject matter jurisdiction over these Counterclaims pursuant to 28

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U.S.C. §§ 1331 and 1338.

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COUNT ONE - Declaratory Judgment of Non-Infringement of the ’459 Patent

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6.

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Google restates and incorporates by reference its allegations in paragraphs 1-5 of its

Answer and Counterclaims.
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An actual case or controversy exists between Google and IconFind as to whether the

’459 patent is infringed by Google.

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FIRST AMENDED ANSWER TO COMPLAINT
Case No. 2:11-CV-00319 GEB JFM

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8.

Filed 04/11/11 Page 5 of 6

A judicial declaration is necessary and appropriate so that Google may ascertain its

rights regarding the ’459 patent.
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Google has not infringed and does not infringe, directly or indirectly, any valid and

enforceable claim of the ’459 patent.

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COUNT TWO - Declaratory Judgment of Invalidity of the ’459 Patent

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10.

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Google restates and incorporates by reference its allegations in paragraphs 1-5 of its

Counterclaims.
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The ’459 patent is invalid under 35 U.S.C. § 101 because it fails to claim patentable

subject matter insofar as it seeks to claim an abstract idea.
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The ’459 patent is invalid because it fails to meet the “conditions for patentability”

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of 35 USC §§ 102, 103, and/or 112 because the alleged invention thereof lacks utility; is taught by,

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suggested by, and/or obvious in view of, the prior art; and/or is unsupported by the written

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description of the patented invention.

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EXCEPTIONAL CASE
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On information and belief, this is an exceptional case entitling Google to an award

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of its attorneys’ fees incurred in connection with defending and prosecuting this action pursuant to

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35 U.S.C. § 285, as a result of, inter alia, IconFind’s assertion of the Patent-in-suit against Google

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with the knowledge that Google does not infringe any valid or enforceable claim of the Patent-in-

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suit and/or that the Patent-in-suit is invalid and/or unenforceable.

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PRAYER FOR RELIEF

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WHEREFORE, Google prays for judgment as follows:

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a.

A judgment dismissing IconFind’s Complaint against Google with prejudice;

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b.

A judgment declaring that Google has not infringed, contributed to the infringement

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of, or induced others to infringe, either directly or indirectly, any valid and

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enforceable claim of the ’459 patent;

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c.

A judgment declaring that the ’459 patent is invalid and unenforceable;

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FIRST AMENDED ANSWER TO COMPLAINT
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A judgment declaring that Google has not willfully infringed and is not willfully
infringing any valid and/or enforceable claim of the ’459 patent.

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e.

A judgment declaring that this case is exceptional and an award to Google of its

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reasonable costs and expenses of litigation, including attorneys’ fees and expert

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witness fees;

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f.

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A judgment declaring, limiting or barring IconFind’s ability to enforce the ’459
patent in equity;

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Such other and further relief as this Court may deem just and proper.

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DEMAND FOR JURY TRIAL

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In accordance with Fed. R. Civ. P. 38(b), Google demands a trial by jury on all issues so
triable.
Dated: April 11, 2011

Respectfully submitted,
KAYE SCHOLER LLP

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By: /s/ Michael J. Malecek
Michael J. Malecek
Attorney for Defendant
GOOGLE INC.

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FIRST AMENDED ANSWER TO COMPLAINT
Case No. 2:11-CV-00319 GEB JFM