IconFind, Inc. v. Google, Inc.

Filing 69

ANSWER to COUNTERCLAIM (Sedond Amended) by IconFind, Inc..(Folgers, Anna) Modified on 8/30/2011 (Kaminski, H).

1
2
3
4
5

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]

6
7
8
9
10
11
12

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]

13
Attorneys for Plaintiff, IconFind, Inc.
14
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF CALIFORNIA

15
16

ICONFIND, INC.,
Plaintiff,

17
18
19
20

Case No. 2:11-cv-00319-GEB-JFM

v.

ICONFIND’S ANSWER TO
GOOGLE’S SECOND AMENDED
COUNTERCLAIMS

GOOGLE INC.,
Defendant.

21
22
23
24
25

Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s Second
Amended Counterclaims

1
THE PARTIES
2
3

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.

4
Response: Admitted.
5
6

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.

7
Response: Admitted.
8
JURISDICTION AND VENUE
9
10

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.

11

Response: Admitted.

12

4.

This Court has personal jurisdiction over IconFind.

13

Response: Admitted.

14

5.
This Court has subject matter jurisdiction over these Counterclaims
pursuant to 28 U.S.C. §§ 1331 and 1338.

15
Response: Admitted.
16
COUNT ONE - Declaratory Judgment of Non-Infringement of the ’459 Patent
17
18

6.
Google restates and incorporates by reference its allegations in
paragraphs 1-5 of its Answer and Counterclaims.

19

Response: IconFind restates and incorporates by reference its answers to the

20

allegations in paragraphs 1-5 of its Answer and Counterclaims.

21
22

7.
An actual case or controversy exists between Google and IconFind as to
whether the ’459 patent is infringed by Google.

23

Response: Admitted.

24
25

Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s Second
Amended Counterclaim

-2-

1

8.
A judicial declaration is necessary and appropriate so that Google may
ascertain its rights regarding the ’459 patent.

2
Response: Admitted that Google purports to seek a judicial declaration so that it may
3
ascertain its rights regarding the '459 patent; denied to the extent Google is entitled to
4
any relief; otherwise denied.
5
6

9.
Google has not infringed and does not infringe, directly or indirectly, any
valid and enforceable claim of the ’459 patent.

7
Response: Denied.
8
COUNT TWO - Declaratory Judgment of Invalidity of the ’459 Patent
9
10

10.
Google restates and incorporates by reference its allegations in
paragraphs 1-5 of its Counterclaims.

11

Response: IconFind restates and incorporates by reference its answers to the

12

allegations in paragraphs 1-5 of its Counterclaims.

13

16

11.
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 for at least the reasons set forth in Google’s Invalidity Contentions which are
hereby incorporated by reference and included as Exhibit 1 to this pleading, Defendant
Google Inc.’s Second Amended Answer To Plaintiff’s Complaint For Patent Infringement
And Counterclaims.

17

Response: Denied.

18

12.
The claims of the ’459 patent are invalid for claiming non-novel and/or
obvious subject matter pursuant to 35 U.S.C. §§ 102 (a), 102 (b), 102 (e), and/or 103
(a) for at least the reasons set forth in Google’s Invalidity Contentions which are hereby
incorporated by reference and included as Exhibit 1.

14
15

19
20

Response: Denied.
21
22
23

13.
The claims of the ’459 patent are invalid and/or unenforceable for failure
satisfy one or more conditions of patentability set forth in 35 U.S.C. § 112 including
failure of written description, lack of enablement, and claim indefiniteness for at least the
reasons set forth in Google’s Invalidity Contentions which are hereby incorporated by
reference and included as Exhibit 1.

24
25

Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s Second
Amended Counterclaim

-3-

1

Response: Denied.
EXCEPTIONAL CASE

2
3
4
5

14.
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.

6
Response: Denied.
7
PLAINTIFF'S AFFIRMATIVE DEFENSES
8
IconFind asserts the following Affirmative Defenses against Google's Second
9
Amended Counterclaims and reserves the right to further amend its responses as
10
additional information becomes available.
11
1.

The claims of United States Patent No. 7,181,459 B2 are valid,

12
enforceable and infringed by Google.
13
2.

Google has infringed and continues to infringe at least claims 1, 6, 9, 16,

14
17, 19, 20, 21, 22, 29, 30 and 31 of the '459 patent under 35 U.S.C. § 271(a) through
15
Google's use, ownership and operation of websites in which it incorporates and
16
facilitates Creative Commons licenses, including but not limited to Google Knol, Google
17
Books and Google Picasa.
18
3.

Google's counterclaims fail to state claims upon which relief may be

19
granted.
20
4.

IconFind is entitled to judgment as a matter of law on Google's

21
Counterclaims.
22
5.

IconFind adopts and incorporates herein all affirmative defenses available

23
pursuant to Federal Rule of Civil Procedure 8 (or any applicable statute or regulation),
24
25

Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s Second
Amended Counterclaim

-4-

1

to the extent the facts known at this time would make any of said defenses available or

2

facts developed in the future would make same available. No affirmative defense is

3

waived.

4

WHEREFORE, IconFind requests that judgment be entered against Google and

5

in IconFind’s favor on the Second Amended Counterclaims brought by Google.

6

IconFind further requests that it be granted all of the relief requested in its Complaint.

7
8

JURY DEMAND
IconFind demands a trial by jury on all issues properly triable to a jury.

9
10

Respectfully submitted,

11

/s/ Anna B. Folgers
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]

14

WILKE, FLEURY, HOFFELT, GOULD &
BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
[e-mail]
Daniel L. Baxter (SBN 203862)
[e-mail]

15

Attorneys for Plaintiff IconFind, Inc.

12
13

16
Attorneys for Plaintiff IconFind, Inc.
17
18
19
20
21
22
23
24
25

Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s Second
Amended Counterclaim

-5-

1
2
3
4
5

CERTIFICATE OF SERVICE
The undersigned hereby certifies that on August 29, 2011 the foregoing
ICONFIND’S ANSWER TO
GOOGLE’S SECOND AMENDED COUNTERCLAIMS
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
14
15

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/ Anna B. Folgers
Attorneys for Plaintiff

16
17
18
19
20
21
22
23
24
25

Iconfind, Inc.’s Answer And Affirmative Defenses To Google Inc.’s Second
Amended Counterclaim

-6-