Overture Services, Inc. v. Google Inc.

Filing 19

ANSWER TO COUNTERCLAIM by Overture Services, Inc.. (Frankel, William)

Overture Services, Inc. v. Google Inc.

Doc. 19

Case 3:02-cv-01991-JSW

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Filed 06/25/2002

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LATHAM & WATKINS Anthony I. Fenwick (Bar No. 158667) Allon Stabinsky (Bar No. 197642) 135 Commonwealth Drive Menlo Park, California 94025 Telephone: [phone] Facsimile: [phone] BRINKS HOFER GILSON & LIONE Jack C. Berenzweig (Admitted Pro Hac Vice) William H. Frankel (Admitted Pro Hac Vice) Jason C. White (Admitted Pro Hac Vice) Charles M. McMahon (Admitted Pro Hac Vice) NBC Tower - Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff OVERTURE SERVICES, INC.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION
No. C 02-01991 CRB ADR

OVERTURE SERVICES, INC., a Delaware Corporation, Plaintiff, vs. GOOGLE INC., a California Corporation, Defendant.

PLAINTIFF OVERTURE SERVICES' REPLY TO DEFENDANT'S COUNTERCLAIMS

Plaintiff Overture Services, Inc. ("Overture") replies to the counterclaims of Defendant Google Inc. ("Google") as follows:

Dockets.Justia.com

Case 3:02-cv-01991-JSW

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PLAINTIFF OVERTURE'S REPLY TO DEFENDANT'S COUNTERCLAIMS CASE NO. C 02-01991 CRB ADR

General Allegations 30. 31. 32. 33. Admitted. Admitted. Admitted. Overture is informed and believes that Google is a California corporation

with its principal place of business in Mountain View, California, and on that basis admits the allegations in paragraph 33. 34. Admitted. First Counterclaim (Declaratory Judgment of Non-Infringement) 35. No response is necessary to the allegations incorporated from paragraphs

1 through 10. With respect to the allegations incorporated from paragraph 12, denied. With respect to the allegations incorporated from paragraphs 30 through 34, admitted. 36. 37. Denied. Denied. Second Counterclaim (Declaratory Judgment of Invalidity) 38. No response is necessary to the allegations incorporated from paragraphs

1 through 10. With respect to the allegations incorporated from paragraphs 14 and 30 through 34, admitted. With respect to the allegations incorporated from paragraphs 15 through 19, denied. As of April 28, 1998, GoTo.com operated a beta or test version of a system then under development, and the beta or test version of a system then under development hosted advertisements as of April 28, 1998, but the beta or test version of a system then under development was not the system claimed by the '361 patent. In addition, Overture cannot respond to Google's information and belief. 39. 40. Denied. Denied.
BRINKS HOFER GILSON & LIONE NBC Tower ­ Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: [phone] Facsimile: [phone]

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Third Counterclaim (Declaratory Judgment of Unenforceability) No response is necessary to the allegations incorporated from paragraphs

1 through 10. With respect to the allegations incorporated from paragraphs 14 and 30 through 34, admitted. With respect to the allegations incorporated from paragraph 21, admitted, except as to the characterization of Mr. Davis as the lead named inventor. With respect to the allegations incorporated from paragraphs 15 through 19 and 22 through 29, denied. As of April 28, 1998, GoTo.com operated a beta or test version of a system then under development, and the beta or test version of a system then under development hosted advertisements as of April 28, 1998, but the beta or test version of a system then under development was not the system claimed by the '361 patent. In addition, Overture cannot respond to Google's information and belief. 42. 43. Denied. Denied.

OVERTURE'S AFFIRMATIVE DEFENSES TO GOOGLE'S COUNTERCLAIMS First Affirmative Defense (Failure to State a Claim) Google's Counterclaims for Declaratory Judgment of Non-Infringement,

Invalidity, and Unenforceability fail to state a claim upon which relief may be granted. Second Affirmative Defense (Infringement) Google is directly infringing, inducing infringement by others, and/or

contributorily infringing one or more claims of the '361 patent. Third Affirmative Defense (Validity) The claims of the '361 patent are valid and enforceable.
BRINKS HOFER GILSON & LIONE NBC Tower ­ Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: [phone] Facsimile: [phone]

PLAINTIFF OVERTURE'S REPLY TO DEFENDANT'S COUNTERCLAIMS CASE NO. C 02-01991 CRB ADR

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PLAINTIFF OVERTURE'S REPLY TO DEFENDANT'S COUNTERCLAIMS CASE NO. C 02-01991 CRB ADR

Fourth Affirmative Defense (Truth of the Statements) 4. The statements made by Darren J. Davis in the declaration he submitted

pursuant to 27 C.FR. § 1.132 are true. 5. The statements made by John G. Rauch in the Amendment and Remarks

submitted with Mr. Davis's declaration also are true. 6. Because these statements are true, there are no false statements to

support Google's allegation of inequitable conduct. Fifth Affirmative Defense (Lack of Intent to Deceive) 7. Mr. Davis did not intend to deceive the U.S. Patent and Trademark Office,

including in connection with the submission of his declaration. 8. GoTo.com did not intend to deceive the U.S. Patent and Trademark

Office, including in connection with the submission of Mr. Davis's declaration. 9. Counsel for GoTo.com did not intend to deceive the U.S. Patent and

Trademark Office, including in connection with the submission of Mr. Davis's declaration or the accompanying Amendment and Remarks. 10. Because there was no intent to deceive the U.S. Patent and Trademark

Office, there could be no acts of inequitable conduct.

PRAYER WHEREFORE, Overture prays for a judgment: (a) (b) (c) adjudging that Google has infringed the '361 patent; adjudging that the '361 patent is enforceable and not invalid; granting a permanent injunction restraining and enjoining Google,

and its officers and representatives, from further infringement of the '361 patent during the remaining term thereof;
BRINKS HOFER GILSON & LIONE NBC Tower ­ Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: [phone] Facsimile: [phone]

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(d)

awarding Overture damages for Google's infringement of the '361

patent, in an amount to be determined at trial, together with prejudgment interest, and that such damages be trebled pursuant to 35 U.S.C. § 284 because of the willful and deliberate character of the infringement; (e) awarding Overture its costs and attorneys' fees, and adjudging this

case to be an exceptional case pursuant to 35 U.S.C. § 285; (f) proper and just; and (g) dismissing Google's counterclaims with prejudice. awarding such other and further relief as the Court may deem

JURY DEMAND Overture hereby demands trial by jury as to all issues in this action triable by a

Dated: June 25, 2002

By:

/s/ William H. Frankel Attorney for Plaintiff OVERTURE SERVICES, INC.

PLAINTIFF OVERTURE'S REPLY TO DEFENDANT'S COUNTERCLAIMS CASE NO. C 02-01991 CRB ADR

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BRINKS HOFER GILSON & LIONE NBC Tower ­ Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: [phone] Facsimile: [phone]