IconFind, Inc. v. Google, Inc.
Filing
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ANSWER to COUNTERCLAIM AND AFFIRMATIVE DEFENSES by IconFind, Inc..(Folgers, Anna)
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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
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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
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Attorneys for Plaintiff, IconFind, Inc.
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF CALIFORNIA
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ICONFIND, INC.,
Case No. 2:11-cv-00319-GEB-JFM
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Plaintiff,
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v.
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GOOGLE INC.,
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ICONFIND, INC.’S ANSWER AND
AFFIRMATIVE DEFENSES TO
GOOGLE INC.’S FIRST AMENDED
COUNTERCLAIM FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT OF THE '459 PATENT
Defendant.
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JURY TRIAL DEMANDED
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Plaintiff IconFind, Inc. (“IconFind”) hereby responds to the amended counterclaim Count
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One – Declaratory Judgment of Non-Infringement of the '459 Patent filed on March 24, 2011 by
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Defendant Google inc. (“Google”). Google's amended counterclaim Count Two – Declaratory
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Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s First Amended
Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent
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Judgment of Invalidity of the '459 Patent and related Second Defense of patent invalidity are the
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subject of Plaintiff Iconfind, Inc.'s Motion To Dismiss Pursuant To Frcp 12(B)(6) And Motion To
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Strike Pursuant To Frcp 12(F). Accordingly, IconFind has not answered the patent invalidity
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allegations in Google's amended counterclaim Count Two or Google's amended Second Defense.
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IconFind reserves the right to answer the patent invalidity allegations in Google's amended
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counterclaim Count Two and Google's amended Second Defense pending the outcome of its
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motion to dismiss and strike.
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COUNTERCLAIMS
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THE PARTIES
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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.
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RESPONSE:
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Admitted.
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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
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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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RESPONSE:
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Admitted.
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4.
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RESPONSE:
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Admitted that this Court has personal jurisdiction over IconFind and Google.
This Court has personal jurisdiction over IconFind.
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Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s First Amended
Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent
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5.
This Court has subject matter jurisdiction over these Counterclaims pursuant to 28
U.S.C. §§ 1331 and 1338.
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RESPONSE:
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Denied to the extent Google is entitled to any relief; otherwise admitted.
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COUNT ONE - Declaratory Judgment of Non-Infringement of the ’459 Patent
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6.
Google restates and incorporates by reference its allegations in paragraphs 1-5 of its
Answer and Counterclaims.
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RESPONSE:
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IconFind restates and incorporates by reference its responses to the allegations in paragraphs
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1 - 5 of Google's Answer and Counterclaims, inclusive, as though fully set forth herein.
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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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RESPONSE:
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Admitted.
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8.
A judicial declaration is necessary and appropriate so that Google may ascertain its
rights regarding the ’459 patent.
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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 to the extent Google is entitled to any relief; otherwise denied.
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9.
Google has not infringed and does not infringe, directly or indirectly, any valid and
enforceable claim of the ’459 patent.
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RESPONSE:
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Denied.
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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.
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Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s First Amended
Counterclaim For Declaratory Judgment Of Non-Infringement Of The '459 Patent
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EXCEPTIONAL CASE
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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.
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RESPONSE:
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Denied.
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PLAINTIFF'S AFFIRMATIVE DEFENSES
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IconFind asserts the following Affirmative Defenses against Google's First Amended
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Counterclaim and reserves the right to further amend its responses pending the outcome of its
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motion to dismiss and strike and as additional information becomes available.
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The claims of United States Patent No. 7,181,459 B2 are valid, enforceable and
infringed by Google.
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Google has infringed and continues to infringe at least claims 1, 6, 9, 16, 17, 19,
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20, 21, 22, 29, 30 and 31 of the '459 patent under 35 U.S.C. § 271(a) through Google's use,
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ownership and operation of websites in which it incorporates and facilitates Creative Commons
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licenses, including but not limited to Google Knol, Google Books and Google Picasa.
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3.
Google's amended counterclaim fail to state claims upon which relief may be
granted.
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IconFind is entitled to judgment as a matter of law on Google's amended
counterclaim.
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IconFind reserves the right to answer the patent invalidity allegations in Google's
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amended counterclaim Count Two and Google's amended Second Defense pending the outcome
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of its motion to dismiss and strike.
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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
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extent the facts known at this time would make any of said defenses available or facts developed
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in the future would make same available. No affirmative defense is waived.
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WHEREFORE, IconFind requests that judgment be entered against Google and in
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IconFind’s favor on the First Amended Counterclaims brought by Google. IconFind further
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requests that it be granted all of the relief requested in its Complaint.
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JURY DEMAND
IconFind demands a trial by jury on all issues properly triable to a jury.
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Respectfully submitted,
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WILKE, FLEURY, HOFFELT, GOULD &
BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
TRedmon@wilkefleury.com
Daniel L. Baxter (SBN 203862)
DBaxter@wilkefleury.com
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Attorneys for Plaintiff IconFind, Inc.
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/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
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Attorneys for Plaintiff IconFind, Inc.
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Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s First Amended
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 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.
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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.
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/s/ Anna B. Folgers
Attorneys for Plaintiff
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