IconFind, Inc. v. Google, Inc.

Filing 40

ANSWER to COUNTERCLAIM AND AFFIRMATIVE DEFENSES by IconFind, Inc..(Folgers, Anna)

Download PDF
1 2 3 4 5 6 WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP Thomas G. Redmon (SBN 47090) TRedmon@wilkefleury.com Daniel L. Baxter (SBN 203862) DBaxter@wilkefleury.com 400 Capitol Mall, 22nd Floor Sacramento, CA 95814 Phone: (916) 441-2430 Fax: (916) 442-6664 12 NIRO, HALLER & NIRO Raymond P. Niro (Admitted Pro hac vice) RNiro@nshn.com Raymond P. Niro, Jr. (Admitted Pro hac vice) RNiroJr@nshn.com Brian E. Haan (Admitted Pro hac vice) BHaan@nshn.com Anna B. Folgers (Admitted Pro hac vice) AFolgers@nshn.com 181 West Madison, Suite 4600 Chicago, IL 60602-4515 Phone: (312) 236-0733 Fax: (312) 236-3137 13 Attorneys for Plaintiff, IconFind, Inc. 7 8 9 10 11 14 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF CALIFORNIA 15 ICONFIND, INC., Case No. 2:11-cv-00319-GEB-JFM 16 Plaintiff, 17 v. 18 GOOGLE INC., 19 ICONFIND, INC.’S ANSWER AND AFFIRMATIVE DEFENSES TO GOOGLE INC.’S FIRST AMENDED COUNTERCLAIM FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT OF THE '459 PATENT Defendant. 20 JURY TRIAL DEMANDED 21 22 Plaintiff IconFind, Inc. (“IconFind”) hereby responds to the amended counterclaim Count 23 One – Declaratory Judgment of Non-Infringement of the '459 Patent filed on March 24, 2011 by 24 Defendant Google inc. (“Google”). Google's amended counterclaim Count Two – Declaratory 25 26 Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s First Amended Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent 1 Judgment of Invalidity of the '459 Patent and related Second Defense of patent invalidity are the 2 subject of Plaintiff Iconfind, Inc.'s Motion To Dismiss Pursuant To Frcp 12(B)(6) And Motion To 3 Strike Pursuant To Frcp 12(F). Accordingly, IconFind has not answered the patent invalidity 4 allegations in Google's amended counterclaim Count Two or Google's amended Second Defense. 5 IconFind reserves the right to answer the patent invalidity allegations in Google's amended 6 counterclaim Count Two and Google's amended Second Defense pending the outcome of its 7 motion to dismiss and strike. 8 COUNTERCLAIMS 9 THE PARTIES 10 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. 11 12 RESPONSE: 13 Admitted. 14 15 16 17 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 18 19 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. 20 RESPONSE: 21 Admitted. 22 4. 23 RESPONSE: 24 Admitted that this Court has personal jurisdiction over IconFind and Google. This Court has personal jurisdiction over IconFind. 25 26 Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s First Amended Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent -2- 1 5. This Court has subject matter jurisdiction over these Counterclaims pursuant to 28 U.S.C. §§ 1331 and 1338. 2 RESPONSE: 3 Denied to the extent Google is entitled to any relief; otherwise admitted. 4 5 COUNT ONE - Declaratory Judgment of Non-Infringement of the ’459 Patent 6 6. Google restates and incorporates by reference its allegations in paragraphs 1-5 of its Answer and Counterclaims. 7 RESPONSE: 8 IconFind restates and incorporates by reference its responses to the allegations in paragraphs 9 10 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. 11 RESPONSE: 12 Admitted. 13 14 8. A judicial declaration is necessary and appropriate so that Google may ascertain its rights regarding the ’459 patent. 15 RESPONSE: 16 Admitted that Google purports to seek a judicial declaration so that it may ascertain its rights 17 regarding the '459 patent; denied to the extent Google is entitled to any relief; otherwise denied. 18 9. Google has not infringed and does not infringe, directly or indirectly, any valid and enforceable claim of the ’459 patent. 19 RESPONSE: 20 Denied. 21 22 23 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. 24 25 26 Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s First Amended Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent -3- 1 EXCEPTIONAL CASE 2 13. 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 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. 3 4 5 RESPONSE: 6 Denied. 7 PLAINTIFF'S AFFIRMATIVE DEFENSES 8 IconFind asserts the following Affirmative Defenses against Google's First Amended 9 Counterclaim and reserves the right to further amend its responses pending the outcome of its 10 11 12 13 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, 14 20, 21, 22, 29, 30 and 31 of the '459 patent under 35 U.S.C. § 271(a) through Google's use, 15 ownership and operation of websites in which it incorporates and facilitates Creative Commons 16 licenses, including but not limited to Google Knol, Google Books and Google Picasa. 17 18 19 20 21 3. Google's amended counterclaim fail to state claims upon which relief may be granted. 4. IconFind is entitled to judgment as a matter of law on Google's amended counterclaim. 5. IconFind reserves the right to answer the patent invalidity allegations in Google's 22 amended counterclaim Count Two and Google's amended Second Defense pending the outcome 23 of its motion to dismiss and strike. 24 25 26 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 Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s First Amended Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent -4- 1 extent the facts known at this time would make any of said defenses available or facts developed 2 in the future would make same available. No affirmative defense is waived. 3 WHEREFORE, IconFind requests that judgment be entered against Google and in 4 IconFind’s favor on the First Amended Counterclaims brought by Google. IconFind further 5 requests that it be granted all of the relief requested in its Complaint. 6 7 JURY DEMAND IconFind demands a trial by jury on all issues properly triable to a jury. 8 9 Respectfully submitted, 10 13 WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP Thomas G. Redmon (SBN 47090) TRedmon@wilkefleury.com Daniel L. Baxter (SBN 203862) DBaxter@wilkefleury.com 14 Attorneys for Plaintiff IconFind, Inc. 11 12 /s/ Anna B. Folgers NIRO, HALLER & NIRO Raymond P. Niro (Pro hac vice) RNiro@nshn.com Raymond P. Niro, Jr. (Pro hac vice) RNiroJr@nshn.com Brian E. Haan (Pro hac vice) BHaan@nshn.com Anna B. Folgers (Pro hac vice) AFolgers@nshn.com 15 Attorneys for Plaintiff IconFind, Inc. 16 17 18 19 20 21 22 23 24 25 26 Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s First Amended Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent -5- 1 2 3 4 5 CERTIFICATE OF SERVICE The undersigned hereby certifies that on April 19, 2011 the foregoing ICONFIND, INC.’S ANSWER AND AFFIRMATIVE DEFENSES TO GOOGLE INC.’S FIRST AMENDED 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. 6 7 8 9 10 11 12 13 Michael J. Malecek Michael.malecek@kayescholer.com Kenneth Maikish Kenneth.maikish@kayescholer.com Kaye Scholer LLP Two Palo Alto Square, Suite 400 3000 El Camino Real Palo Alto, California 94306 Telephone: (650) 319-4500 Facsimile: (650) 319-4700 Attorneys for Defendant Google Inc. I certify that all parties in this case are represented by counsel who are CM/ECF participants. 14 15 16 17 18 19 20 21 22 23 24 25 26 /s/ Anna B. Folgers Attorneys for Plaintiff

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?