Yahoo! Inc. v. Facebook, Inc.

Filing 28

ANSWER TO COUNTERCLAIM 16 Answer to Complaint, Counterclaim,, , COUNTERCLAIM against Facebook, Inc. byYahoo! Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Smith, Kevin) (Filed on 4/27/2012)

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Charles K. Verhoeven (Bar No. 170151)
[e-mail]
Jennifer A. Kash (Bar No. 203679)
[e-mail]
Kevin A. Smith (Bar No. 250814)
[e-mail]
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Plaintiff Yahoo! Inc.
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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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YAHOO! INC., a Delaware corporation,

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Plaintiff,
vs.
FACEBOOK, INC, a Delaware corporation,

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Defendant.

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CASE NO. CV-12-01212-JSW
PLAINTIFF YAHOO! INC.’s REPLY
AND COUNTER COUNTERCLAIMS TO
DEFENDANT FACEBOOK, INC.’S
ANSWER; COUNTERCLAIM AGAINST
FACEBOOK, INC FOR DECLARATORY
JUDGMENT OF NON-INFRINGEMENT
JURY TRIAL DEMANDED

Plaintiff Yahoo! Inc. (“Yahoo!”) hereby submits this Reply (“Reply”) in response to the
Counterclaim for Patent Infringement (“Counterclaim”) filed in this action by Facebook, Inc.
(“Facebook”). Yahoo!’s Counterclaims are set forth below the following Reply. For its Reply,
Yahoo! states as follows:
1.

In retaliation for Yahoo!’s good faith allegations of patent infringement,

Facebook alleges infringement of ten patents as counterclaims. However, on information and
belief, Facebook lacks a good faith basis for most, if not all, of its counterclaims, particularly
those patents that it purchased from others.
2.

Facebook purchased eight patents from non-practicing entities: two patents were

purchased from "IPG Electronics 503 Limited," a San Diego-based patent aggregator; two
patents were purchased from "Cheah Intellectual Property Licensing," a California-based patent

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02917.51778/4712943.7

PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

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holding company; one patent was purchased from "Right Point LLC," a Texas-based patent

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aggregator; and three patents were purchased from New York University's intellectual property

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licensing department. All eight of these patents were purchased by Facebook in the past five

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months, and several of these patents were purchased (independent of any separate technology

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acquisition or merger) after Yahoo! filed its complaint in this action. On information and belief,

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many, if not all, of these patents were acquired by Facebook for purposes of retaliation against

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Yahoo! in this case.

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3.

No employee or officer of Facebook or any affiliated company conceived of,

reduced to practice, or developed the alleged inventions claimed in the eight patents acquired

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from non-practicing entities. In fact, the applications for many of these patents predate

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Facebook itself.

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4.

Contrary to an agreement between in-house counsel for Facebook and in-house

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counsel for Yahoo! to raise intellectual property issues with each other in the first instance,

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Facebook provided no notice to Yahoo! of any alleged infringement, and Facebook never

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attempted to resolve any alleged infringement of any of its patents by Yahoo! prior to asserting

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them in litigation. Indeed, the PTO did not even issue U.S. Patent No. 8,150,913 until April 3,

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2012—the day Facebook asserted it.

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5.

On information and belief, Facebook failed to perform a good faith investigation

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into its counterclaims prior to asserting them in retaliation against Yahoo! For example, as

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described more fully below, Facebook purchased and asserted patents tainted by inequitable

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conduct. Furthermore, Facebook asserted its newly-acquired patents against aspects of Yahoo!'s

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products for which there is little to no publicly-available information. Unless Facebook has

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unlawfully acquired Yahoo! confidential business information, Facebook could not have

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developed a good-faith basis for many of the infringement allegations in its counterclaims.

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Because Facebook’s infringement assertions appear to be based on nothing more than

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conjecture, assumptions, and unsupported inferences about how Yahoo!’s products may possibly

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operate and because Facebook’s allegations are the result of an insufficient pre-filing

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-2PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

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investigation, Yahoo! reserves its right to seek attorneys fees, sanctions, and such other relief as

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the court may deem proper pursuant to Rule 11 of the Federal Rules of Civil Procedure.

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THE PARTIES

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1.

Admitted.

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2.

Admitted.

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JURISDICTION AND VENUE
3.

Yahoo! admits that this is a civil action for alleged patent infringement arising

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under the patent laws of the United States, Title 35 of the United States Code. Yahoo! admits

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that this Court has exclusive subject matter jurisdiction over this counterclaim pursuant to 28

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U.S.C. §1338(a).

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4.

Yahoo! admits that this Court has personal jurisdiction over Yahoo! because

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Yahoo! maintains its principal place of business in this District, does business in this District,

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and filed the Complaint in this action. Yahoo! denies having committed acts of infringement in

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this District or elsewhere.

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FACEBOOK’S ALLEGATIONS OF INFRINGEMENT
5.

Yahoo! denies that it infringes any of the Facebook patents-in-suit. Yahoo!

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specifically denies that it has committed any acts of infringement through the Yahoo! Home

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Page, Yahoo!’s Content Optimization and Relevance Engine (“C.O.R.E.”), the Yahoo! Flickr

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photo sharing service, and advertisements displayed throughout Yahoo! including on My

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Yahoo!, Yahoo! Finance, Yahoo! Sports, Yahoo! News, Yahoo! Games, Yahoo! Movies,

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Yahoo! Shopping, Yahoo! Travel, Yahoo! Autos, and Flickr. Yahoo! admits that it has been

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reported that advertisements contributed 80% of Yahoo!’s revenue in 2011, accounting for more

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than $4 billion dollars. Yahoo! admits that Flickr has at least 51 million registered users and 80

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million unique visitors worldwide per month. Yahoo! admits that Yahoo! News and Yahoo!

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Sports are the news and sports sites with the largest audiences in the United States. Yahoo!

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lacks knowledge or information sufficient to form a belief regarding the remaining allegations of

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paragraph 5 of the Counterclaim and on that basis denies them.

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-3PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

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COUNT ONE

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(ALLEGED INFRINGEMENT OF THE ‘208 PATENT)

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6.

Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

the Counterclaim as if fully set forth therein.
7.

Yahoo! admits that what appears to be a copy of the ‘208 patent is attached as an

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exhibit to Facebook’s Counterclaim and that, on its face, the ‘208 patent is entitled “Generating

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a Feed of Stories Personalized for Members of a Social Network” and issued on November 2,

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2010. Yahoo! lacks knowledge or information sufficient to form a belief as to the truth of the

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remaining allegations of paragraph 7 of the Counterclaim and therefore denies them.

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8.

Yahoo! denies the allegation in paragraph 8 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, induced others to infringe, or contributed

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to infringement of the ‘208 patent.

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9.

Yahoo! denies the allegation in paragraph 9 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, denies that it has caused or will cause

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damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

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that Facebook has been irreparably harmed and denies that there is no remedy at law.

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COUNT TWO

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(ALLEGED INFRINGEMENT OF THE ‘653 PATENT)

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10.

Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

the Counterclaim as if fully set forth therein.
11.

Yahoo! admits that what appears to be a copy of the ‘653 patent is attached as an

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exhibit to Facebook’s Counterclaim and that, on its face, the ‘653 patent is entitled “Tagging

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Digital Media” and issued on May 17, 2011. Yahoo! lacks knowledge or information sufficient

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to form a belief as to the truth of the remaining allegations of paragraph 11 of the Counterclaim

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and therefore denies them.

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12.

Yahoo! denies the allegation in paragraph 12 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, induced others to infringe, or contributed

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to infringement of the ‘653 patent.
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13.

Yahoo! denies the allegation in paragraph 13 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, denies that it has caused or will cause

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damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

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that Facebook has been irreparably harmed and denies that there is no remedy at law.

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COUNT THREE

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(ALLEGED INFRINGEMENT OF THE ‘717 PATENT)

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14.

Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

the Counterclaim as if fully set forth therein.
15.

Yahoo! admits that what appears to be a copy of the ‘717 patent is attached as an

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exhibit to Facebook’s Counterclaim and that, on its face, the ‘717 patent is entitled “Headline

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Posting Algorithm” and issued on September 11, 2001. Yahoo! lacks knowledge or information

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sufficient to form a belief as to the truth of the remaining allegations of paragraph 15 of the

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Counterclaim and therefore denies them.

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16.

Yahoo! denies the allegation in paragraph 16 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, induced others to infringe, or contributed

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to infringement of the ‘717 patent.

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17.

Yahoo! denies the allegation in paragraph 17 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, denies that it has caused or will cause

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damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

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that Facebook has been irreparably harmed, and denies that there is no remedy at law.

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COUNT FOUR

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(ALLEGED INFRINGEMENT OF THE ‘133 PATENT)

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18.

Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

the Counterclaim as if fully set forth therein.
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Yahoo! admits that what appears to be a copy of the ‘133 patent is attached as an

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exhibit to Facebook’s Counterclaim and that, on its face, the ‘133 patent is entitled “Method for

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Enabling a User to Fetch a Specific Information Item from a Set of Information Items and a

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System for Carrying Out Such a Method” and issued on April 10, 2001. Yahoo! lacks
-5PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

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knowledge or information sufficient to form a belief as to the truth of the remaining allegations

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of paragraph 19 of the Counterclaim and therefore denies them.

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20.

Yahoo! denies the allegation in paragraph 20 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, induced others to infringe, or contributed

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to infringement of the ‘133 patent.

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21.

Yahoo! denies the allegation in paragraph 21 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, denies that it has caused or will cause

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damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

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that Facebook has been irreparably harmed, and denies that there is no remedy at law.

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COUNT FIVE

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(ALLEGED INFRINGEMENT OF THE ‘949 PATENT)

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22.

Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

the Counterclaim as if fully set forth therein.
23.

Yahoo! admits that what appears to be a copy of the ‘949 patent is attached as an

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exhibit to Facebook’s Counterclaim and that, on its face, the ‘949 patent is entitled

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“Customizing Database Information for Presentation with Media Selections” and issued on June

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25, 2002. Yahoo! lacks knowledge or information sufficient to form a belief as to the truth of the

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remaining allegations of paragraph 23 of the Counterclaim and therefore denies them.

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24.

Yahoo! denies the allegation in paragraph 24 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, induced others to infringe, or contributed

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to infringement of the ‘949 patent.

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25.

Yahoo! denies the allegation in paragraph 25 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, denies that it has caused or will cause

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damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

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that Facebook has been irreparably harmed, and denies that there is no remedy at law.

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-6PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

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COUNT SIX

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(ALLEGED INFRINGEMENT OF THE ‘978 PATENT)

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26.

Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

the Counterclaim as if fully set forth therein.
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Yahoo! admits that what appears to be a copy of the ‘978 patent is attached as an

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exhibit to Facebook’s Counterclaim and that, on its face, the ‘978 patent is entitled “System and

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Method for Dynamic Profiling of Users in One-to-One Applications” and issued on May 22,

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2001. Yahoo! lacks knowledge or information sufficient to form a belief as to the truth of the

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remaining allegations of paragraph 27 of the Counterclaim and therefore denies them.

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28.

Yahoo! denies the allegation in paragraph 28 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, induced others to infringe, or contributed

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to infringement of the ‘978 patent.

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29.

Yahoo! denies the allegation in paragraph 29 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, denies that it has caused or will cause

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damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

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that Facebook has been irreparably harmed, and denies that there is no remedy at law.

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COUNT SEVEN

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(ALLEGED INFRINGEMENT OF THE ‘331 PATENT)

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30.

Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

the Counterclaim as if fully set forth therein.
31.

Yahoo! admits that what appears to be a copy of the ‘331 patent is attached as an

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exhibit to Facebook’s Counterclaim and that, on its face, the ‘331 patent is entitled “System and

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Method for Dynamic Profiling of Users in One-to-One Applications and for Validating User

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Rules” and issued on October 13, 2009. Yahoo! lacks knowledge or information sufficient to

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form a belief as to the truth of the remaining allegations of paragraph 31 of the Counterclaim and

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therefore denies them.

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-7PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

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32.

Yahoo! denies the allegation in paragraph 32 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, induced others to infringe, or contributed

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to infringement of the ‘331 patent.

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33.

Yahoo! denies the allegation in paragraph 33 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, denies that it has caused or will cause

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damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

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that Facebook has been irreparably harmed, and denies that there is no remedy at law.

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COUNT EIGHT

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(ALLEGED INFRINGEMENT OF THE ‘611 PATENT)

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34.

Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

the Counterclaim as if fully set forth therein.

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35.

Yahoo! admits that what appears to be a copy of the ‘611 patent is attached as an

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exhibit to Facebook’s Counterclaim and that, on its face, the ‘611 patent is entitled

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“Architectures, Systems, Apparatus, Methods, and Computer-Readable Medium for Providing

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Recommendations to Users and Applications Using Multidimensional Data” and issued on

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January 24, 2012. Yahoo! lacks knowledge or information sufficient to form a belief as to the

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truth of the remaining allegations of paragraph 35 of the Counterclaim and therefore denies

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them.

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36.

Yahoo! denies the allegation in paragraph 36 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, induced others to infringe, or contributed

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to infringement of the ‘611 patent.

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37.

Yahoo! denies the allegation in paragraph 37 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, denies that it has caused or will cause

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damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

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that Facebook has been irreparably harmed, and denies that there is no remedy at law.

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-8PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

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COUNT NINE

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(ALLEGED INFRINGEMENT OF THE ‘896 PATENT)

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38.

Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

the Counterclaim as if fully set forth therein.
39.

Yahoo! admits that what appears to be a copy of the ‘896 patent is attached as an

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exhibit to Facebook’s Counterclaim and that, on its face, the ‘896 patent is entitled “System for

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Controlled Distribution of User Profiles Over a Network” and issued on August 23, 2011.

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Yahoo! lacks knowledge or information sufficient to form a belief as to the truth of the

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remaining allegations of paragraph 39 of the Counterclaim and therefore denies them.

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40.

Yahoo! denies the allegation in paragraph 40 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, induced others to infringe, or contributed

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to infringement of the ‘896 patent.

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41.

Yahoo! denies the allegation in paragraph 41 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, denies that it has caused or will cause

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damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

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that Facebook has been irreparably harmed, and denies that there is no remedy at law.

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COUNT TEN

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(ALLEGED INFRINGEMENT OF THE ‘913 PATENT)

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42.

Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

the Counterclaim as if fully set forth therein.
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Yahoo! admits that what appears to be a copy of the ‘913 patent is attached as an

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exhibit to Facebook’s Counterclaim and that, on its face, the ‘913 patent is entitled “System for

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Controlled Distribution of User Profiles Over a Network” and issued on April 3, 2012. Yahoo!

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lacks knowledge or information sufficient to form a belief as to the truth of the remaining

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allegations of paragraph 43 of the Counterclaim and therefore denies them.

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44.

Yahoo! denies the allegation in paragraph 44 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, induced others to infringe, or contributed

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to infringement of the ‘913 patent.
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45.

Yahoo! denies the allegation in paragraph 45 of the Counterclaim and specifically

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denies that it has committed any acts of infringement, denies that it has caused or will cause

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damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

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that Facebook has been irreparably harmed, and denies that there is no remedy at law.

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GENERAL DENIAL
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contained in the Counterclaim.

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Except as explicitly admitted herein, Yahoo! denies each and every allegation

FACEBOOK’S REQUEST FOR RELIEF
47.

Yahoo! incorporates by reference all preceding paragraphs of this Reply and

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Counterclaim as if fully set forth herein. Yahoo! denies that Facebook is entitled to any relief

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sought in its Request for Relief. Yahoo! further denies that any conduct on its part subjects

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Yahoo! to liability for damages, or attorney’s fees under 35 U.S.C. § 285.

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AFFIRMATIVE DEFENSES
48.

Further answering the Counterclaim and as additional defenses thereto, Yahoo!

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asserts the following affirmative defenses, without admitting any allegation of the Counterclaim

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not otherwise admitted and without altering any applicable burdens of proof. Yahoo! reserves

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the right to assert any other defenses that its ongoing fact investigation or discovery may reveal.

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FIRST AFFIRMATIVE DEFENSE – NON-INFRINGEMENT

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49.

Yahoo! does not and has not infringed directly, indirectly, literally, or under the

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doctrine of equivalents, any valid and enforceable claim of the ‘208 patent, the ‘653 patent, the

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‘717 patent, the ‘133 patent, the ‘949 patent, the ‘978 patent, the ‘331 patent, the ‘611 patent, the

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‘896 patent, or the ‘913 patent.

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SECOND AFFIRMATIVE DEFENSE – INVALIDITY
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Each and every claim of the ‘208 patent, the ‘653 patent, the ‘717 patent, the ‘133

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patent, the ‘949 patent, the ‘978 patent, the ‘331 patent, the ‘611 patent, the ‘896 patent, and the

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‘913 patent are invalid, unenforceable, and/or void due to the failure to meet the requirements of

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the Unites States patent laws, 35 U.S.C. §§ 100 et seq., including but not limited to 35 U.S.C. §§

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101, 102, 103, 112, 116, and for double patenting.
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THIRD AFFIRMATIVE DEFENSE – LIMITATION OF DAMAGES
51.

Facebook’s recovery for damages for at least the ‘717 patent, the ‘133 patent, the

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‘949 patent, the ‘978 patent, the ‘331 patent, the ‘611 patent, the ‘896 patent, and the ‘913 patent

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is limited pursuant to 35 U.S.C. § 286.

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FOURTH AFFIRMATIVE DEFENSE – LACHES, EQUITABLE ESTOPPEL, WAIVER

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52.

Facebook’s claims are barred, in whole or in part, by the doctrine of laches and/or

equitable estoppel and/or waiver.

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FIFTH AFFIRMATIVE DEFENSE – PROSECUTION HISTORY ESTOPPEL,

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PROSECUTION DISCLAIMER

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history estoppel and/or prosecution disclaimer.

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Facebook’s claims are barred, in whole or in part, by the doctrine of prosecution

SIXTH AFFIRMATIVE DEFENSE – FAILURE TO MARK
54.

Facebook’s pre-lawsuit claims for damages are barred, in whole or in part, for

failure to comply with 35 U.S.C. § 287.

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SEVENTH AFFIRMATIVE DEFENSE – INEQUITABLE CONDUCT(‘896 AND ‘913

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PATENTS)

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Intentional Failure to Name a Known Inventor

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55.

On October 13, 1998, attorney C. Douglass Thomas filed U.S. Provisional Patent

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Application No. 60/104311 (“the ‘311 provisional”). The ‘311 provisional contained eighty-

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seven claims and named two inventors—Chris Cheah and Joseph Liauw. Both Mr. Cheah and

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Mr. Liauw signed a verified statement in connection with the ‘311 provisional swearing, among

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other things, that each qualified “as an independent inventor” of the subject matter in the ‘311

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provisional.

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56.

On October 13, 1999, Mr. Thomas filed U.S. Patent Application No. 09/417,456

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(“the ‘456 application”). The ‘456 application contained nine new paragraphs in the “Summary

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of the Invention” section. All other material in the ‘456 application was repeated, effectively

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word-for-word, from the ‘311 provisional, and the claims of the ‘456 application were virtually

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identical to those in the ‘311 provisional. No substantive material from the ‘311 provisional was
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deleted prior to filing of the ‘456 application. The ‘456 application claimed priority to the ‘311

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provisional. However, unlike the ‘311 provisional, the ‘456 application did not name Mr. Liauw

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as an inventor.

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57.

PTO regulations require that “[i]f multiple inventors are named in a provisional

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application, each named inventor must have made a contribution, individually or jointly, to the

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subject matter disclosed in the provisional application. ” 37 C.F.R. § 1.45(c). These regulations

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further require that “deleting the name or names of the inventor or inventors” in a provisional

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application requires, among other things “[a] statement by the person or persons whose name or

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names are being deleted that the inventorship error occurred without deceptive intention on the

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part of such person or persons.” 37 C.F.R. § 1.48(e). No such statement was provided by Mr.

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Liauw in prosecution of the ‘311 provisional or the ‘456 application. In fact, even though the

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‘456 application was filed by the same attorney, contained all the subject matter disclosed in the

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‘311 provisional and claims virtually identical to those in the ‘311 provisional, and claimed

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priority to the ‘311 provisional, the PTO was never informed by Mr. Thomas, by Mr. Cheah, or

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by anyone else with a duty of candor toward the PTO that the subject matter of the ‘456

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application was invented at least in part by Mr. Liauw.

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58.

On information and belief, Mr. Thomas and/or Mr. Cheah’s failure to disclose

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Mr. Liauw’s inventive contribution to the PTO was intentional. Both Mr. Thomas and/or Mr.

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Cheah filed the ‘311 provisional just one year prior to the filing of the ‘456 application. On

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information and belief, Mr. Thomas and/or Mr. Cheah intentionally failed to disclose to the PTO

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Mr. Liauw’s contribution to inventorship of the subject matter of the ‘456 application in order to

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deceive the PTO into granting the ‘456 application, because without an affidavit from Mr.

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Liauw, the ‘456 application could not have issued as a United States Patent. However, due to

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Mr. Thomas and/or Mr. Cheah’s inequitable conduct, the ‘456 application issued as U.S. Patent

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7,003,546 (“the ‘546 patent”), to which the ‘896 and ‘913 patents claim priority as purported

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continuations.

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59.

The ‘896 and ‘913 patents contain all the substantive disclosures of the ‘311

provisional and claim priority to that provisional application. Yet Mr. Liauw was never named
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as an inventor on either of these patents, and Mr. Liauw never submitted a declaration regarding

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an error in inventorship in connection with prosecution of either of these patents or in

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prosecution of the applications to which these patents claim priority. On information and belief,

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to deceive the PTO regarding the fact that Mr. Liauw never submitted a “Deletion of Inventor”

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declaration as required by PTO regulations, Mr. Thomas and/or Mr. Cheah submitted, in

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connection with each of the ‘896 and ‘913 patents, a Transmittal Form stating that a

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“DELETION OF INVENTOR(S)” Oath or Declaration was submitted in “[a] copy from a prior

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application (37 CFR 1.63(d)).” This was false and deceptive, because no Oath or Declaration by

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Mr. Liauw was ever submitted.

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60.

Upon information and belief, but for this intentional deception by Mr. Thomas

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and/or Mr. Cheah, both of whom had a duty of candor towards the PTO in connection with

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prosecution of the ‘896 and ‘913 patents, the PTO would not have issued the ‘896 and ‘913

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patents due to the failure to name all inventors.

14 Intentional Deception of the PTO Regarding the Addition of New Material to the ‘913 Patent
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61.

The ‘913 and ‘896 patents are unenforceable due to inequitable conduct for a

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separate reason: On information and belief, Mr. Thomas and/or Mr. Cheah intentionally

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deceived the PTO regarding the addition of new matter highly material to the patentability of the

18

claims of the ‘913 patent in order to gain allowance of those claims. But for this intentional

19

deception, none of the claims of the ‘913 patent would have been granted.

20

62.

The ‘913 patent claims priority as a purported continuation of five non-

21

provisional applications, the first of which was the ‘456 application. In particular, the ‘913

22

patent claims priority as a purported continuation of:

23

(1)

24

(2)

25

(3)

26

(4)

27
28

(5)

U.S. Patent Application No. 12/818,092, filed on June 17,
2010, now the ‘896 patent;
U.S. Patent Application No. 12/258,291, filed on October 24,
2008, now U.S. Patent No. 7,743,100 (“the ‘100 patent”);
U.S. Patent Application No. 11/840,968 (“the ‘968
application”), filed on August 19, 2007, which is pending;
U.S. Patent Application No. 11/170,370, filed on June 28,
2005, now U.S. Patent No. 7,277,911 (“the ‘911 patent”);
and
U.S. Patent Application No. 09/417,456, filed on October 13,
1999, Now U.S. Patent No. 7,003,546 (“the ‘546 patent”).
-13-

PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1
63.

All of the issued patents listed above—the ‘546 patent, the ‘911 patent, the ‘100

2
patent, the ‘896 patent, and the ‘913 patent—were prosecuted by the same attorney (Mr.
3
Thomas) and examined by the same PTO examiner, Bharat N. Barot. In fact, Mr. Thomas and
4
Mr. Barot had corresponded regarding prosecution of purported continuations of the ‘456
5
application for nearly a decade, and Mr. Barot has examined six separate purported
6
continuations of the ‘456 application (not including the ‘456 application itself, which Mr. Barot
7
also examined).
8
64.

On August 22, 2011, Mr. Thomas filed U.S. Patent Application No. 13/215,103

9
(“the ‘103 application”), the application that issued as the ‘913 patent. Every claim of the ‘103
10
application included, among others, the following limitations:
11
(1)
12
13
14
15

(2)

16
17

(3)

18
19
20
21

(4)

22

(5)

“allow a first registered user to identify other registered users
via a user interface and to indicate a desire to establish an
access relationship with the other registered users, wherein
each access relationship allows the first registered user to
access a user profile of an identified other registered user via
the user interface and image content items of the identified
other registered user via the user interface”;
“establish access relationships between the first registered user
and the other registered users without requiring the other
registered users to individually approve the access
relationships”;
“allow the first registered user to select from the user interface
the user profile of another registered user with respect to which
an access relationship has been established with the first
registered user, in response to which the networked server
system provides to the selected user profile for display to the
first registered [sic] in the user interface, wherein the selected
user profile includes representations of at least some of the
image content items associated with the selected user profile;”
“allow the first registered user to select and view one of the
image content items in the user interface”; and
“allow the first registered user to interact with the selected
image content item via the user interface.”

23
65.

Neither the ‘311 provisional, nor the ‘546 patent, nor the ‘911 patent, nor the

24
‘968 application, nor the ‘100 patent, nor the ‘896 patent disclose at least the above limitations.
25
In fact, none of these patents or their applications disclose anything resembling these and other
26
limitations in the claims of the ‘103 application. In short, the claims of the ‘103 application
27
28
-14PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

were very different than anything that had previously appeared in any of the applications and

2

patents to which the ‘103 application claimed priority.

3

66.

On information and belief, Mr. Thomas and Mr. Cheah, who had been

4

continually prosecuting related patent applications that did not disclose any of the above

5

limitations for nearly a decade, were well aware that the claims they had drafted for the ‘103

6

application were not supported by the disclosure of the applications to which the ‘103

7

application claimed priority as a continuation.

8

67.

On information and belief, Mr. Thomas and Mr. Cheah sought to remedy this

9

deficiency by adding new material to the ‘103 application that had never appeared in any of the

10

applications to which the ‘103 application claimed priority as a continuation. In particular, Mr.

11

Thomas and/or Mr. Cheah added the following new matter to the ‘103 application that had never

12

before appeared in the ‘311 provisional, the ‘546 patent, the ‘911 patent, the ‘968 application,

13

the ‘100 patent, or the ‘896 patent:1

14

As a computer system that provides a service for controlled access over
a network to user profiles having associated image content provided by
registered users of the service, one embodiment of can, for example,
include a networked server system accessible by remote user devices
via the network, and at least one database accessible by the networked
server system and configured to store the user profiles of the registered
users, image content items associated with the user profiles, and
relationship data that specifies access relationships established between
the registered users. The networked server system comprising at least
one processor and at least one memory. The networked server system
can be programmed, via executable program instructions, to: (i) allow
users to register with the service and the registered users to each create
a user profile comprising profile information about the respective
registered user and a plurality of image content items of data types
corresponding to one or more of photo data or video data; (ii) allow a
first registered user to identify other registered users via a user
interface and to indicate a desire to establish an access relationship
with the other registered users, wherein each access relationship allows
the first registered user to access a user profile of an identified other
registered user via the user interface and image content items of the
identified other registered user via the user interface; (iii) establish
access relationships between the first registered user and the other
registered users without requiring the other registered users to
individually approve the access relationships; (iv) allow the first
registered user to select from the user interface the user profile of

15
16
17
18
19
20
21
22
23
24
25
26
27
28

1

Redlined comparisons of the disclosure of the ‘913 patent and each of the six applications to
which it claims priority are attached to this Answer as Exhibits A-1 through A-6.

-15PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

another registered user with respect to which an access relationship has
been established with the first registered user, in response to which the
networked server system provides the selected user profile for display
to the first registered in the user interface, wherein the selected user
profile includes representations of at least some of the image content
items associated with the selected user profile; (v) allow the first
registered user to select and view one of the image content items in the
user interface; and (vi) allow the first registered user to interact with
the selected image content item via interactive controls of the user
interface.

2
3
4
5
6

As a method of providing a service for controlled access over a
network to user profiles having associated image content provided by
registered users of the service, the service provided using a networked
server system comprising at least one processor and at least one
memory and accessible by remote user devices via the network, one
embodiment of the method can, for example, include at least: (a)
allowing users to register with the service and the registered users to
each create a user profile comprising profile information about the
respective registered user and a plurality of image content items of data
types corresponding to one or more of photo data or video data; (b)
allowing a first registered user to identify other registered users via a
user interface and to indicate a desire to establish an access relationship
with the other registered users, wherein each access relationship allows
the first registered user to access a user profile of an identified other
registered user via the user interface and image content items of the
identified other registered user via the user interface; (c) establishing
access relationships between the first registered user and the other
registered users without requiring the other registered users to
individually approve the access relationships; (d) storing in at least one
database accessible by the networked server system (i) user profiles of
registered users, (ii) image content items provided by the registered
users and (iii) relationship data that specifies access relationships
established between the registered users; (e) allowing the first
registered user to select from the user interface the user profile of
another registered user with respect to which an access relationship has
been established with the first registered user, in response to which the
networked server system provides the selected user profile for display
to the first registered in the user interface, wherein the selected user
profile includes representations of at least some of the image content
items associated with the selected user profile; (f) allowing the first
registered user to select and view one of the image content items in the
user interface; and (g) allowing the first registered user to interact with
the selected image content item via interactive controls of the user
interface.

7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24

68.

Had the above new matter not been added to the specification of the ‘103

25

application by Mr. Thomas and/or Mr. Cheah, the PTO would have rejected each every claim of

26

the ‘103 application as invalid under 35 U.S.C. § 112. Moreover, had Mr. Thomas and/or Mr.

27

Cheah notified the PTO of the addition of new matter—as was their obligation under PTO

28

regulations and their duty of candor to the PTO—the PTO would have rejected each every claim
-16PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

of the ‘103 application as invalid under 35 U.S.C. §§ 112, 132, and/or 251. See, e.g., MPEP §

2

2136.06. Alternatively (or additionally), the PTO would have assigned each and every claim a

3

priority date of August 22, 2011 (instead of October 13, 1998) and rejected these claims as

4

anticipated under 35 U.S.C. § 102 by numerous prior art references and systems.

5

69.

On information and belief, Mr. Thomas and/or Mr. Cheah knew all of the above

6

to be true. However, on information and belief, at the time the ‘103 application was filed, Mr.

7

Thomas and/or Mr. Cheah also knew that the claims of the ‘546, ‘911, ‘100, and ‘896 patents

8

did not cover any popular social networking sites (such as, for example, Facebook) and wished

9

to remedy this deficiency in the ‘103 application. Moreover, on information and belief, at the

10

time of the filing of the ‘103 patent, Mr. Thomas and/or Mr. Cheah knew that the disclosure of

11

the applications to which the ‘913 patent claims priority did not support or enable the claim

12

scope Mr. Thomas and/or Mr. Cheah sought.

13

70.

On information and belief, in an attempt to remedy both these deficiencies—

14

deficiencies in the claims of previously-issued patents and deficiencies in the disclosure of the

15

applications in the Cheah patent family—Mr. Thomas and Mr. Cheah drafted claims for the ‘103

16

application that did not resemble anything disclosed in previous applications and added the new

17

matter quoted above as purported support for these new claims. However, Mr. Thomas and Mr.

18

Cheah, despite knowing that new matter had been added to the ‘103 application and despite

19

knowing that this new matter was highly material to patentability of the claims of that

20

application, never disclosed the presence of any new matter to the PTO. To the contrary, Mr.

21

Thomas and/or Mr. Cheah filed documents with the PTO stating that the ‘103 application was a

22

“continuation” of the above-referenced applications—a representation that was false. See, e.g.,

23

MPEP 201.07 (“The disclosure presented in the continuation must be the same as that of the

24

original application, i.e., the continuation should not include anything which would constitute

25

new matter if inserted in the original application.”).

26

71.

As a result of Mr. Thomas and Mr. Cheah’s intentional deception, the ‘913 patent

27

issued without any rejection by the PTO based on 35 U.S.C. § 112, and the PTO never

28

considered any prior art from the time period between October 13, 1998 and August 22, 2011.
-17PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

Absent Mr. Thomas and Mr. Cheah’s inequitable conduct, none of the claims of the ‘913 patent

2

would have issued in their present form.

3

72.

Every claim of the ‘913 patent is unenforceable due to inequitable conduct and

4

every claim of the ‘896 patent is unenforceable under the doctrine of infectious unenforceability.

5

COUNTER-COUNTERCLAIMS

6

Without admitting any of the allegations of the Complaint other than those expressly

7 admitted herein, and without prejudice to Yahoo!’s right to plead additional counterclaims as the
8 facts of the matter warrant, Yahoo! hereby asserts the following counter-counterclaims against
9 Facebook:
10
11
12
13

PARTIES
1.

Counter-counterclaimant Yahoo! is a corporation organized under the laws of

Delaware, with its principal place of business at 701 1st Avenue, Sunnyvale, California, 94089.
2.

Counter-counterclaim Defendant Facebook is a corporation organized under the

14

laws of Delaware, with its principal place of business at 1601 Willow Road, Menlo Park,

15

California, 94025.

16
17
18
19

JURISDICTION AND VENUE
3.

By filing its Answer and Counterclaim, Facebook has consented to the personal

jurisdiction of this Court.
4.

In view of the filing by Facebook of its Counterclaim and Yahoo!’s defenses,

20

there exists an actual and justiciable controversy between the parties regarding the validity,

21

enforceability, and alleged infringement of U.S. Patent No. 7,827,208 (the “‘208 patent”), U.S.

22

Patent No. 7,945,653 (the “‘653 patent”), U.S. Patent No. 6,288,717 (the “‘717 patent”), U.S.

23

Patent No. 6,216,133 (the “‘133 patent”), U.S. Patent No. 6,411,949 (the “‘949 patent), U.S.

24

Patent No. 6,236,978 (the “‘978 patent”), U.S. Patent No. 7,603,331 (the “‘331 patent”), U.S.

25

Patent No. 8,103,611 (the “‘611 patent”), U.S. Patent No. 8,005,896 (the “‘896 patent”), and

26

U.S. Patent No. 8,150,913 (the “‘913 patent”).

27
28
-18PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

5.

Subject matter jurisdiction is proper under the Federal Declaratory Judgment Act,

2

28 U.S.C. §§ 2201 and 2202, the patent laws of the United States, 35 U.S.C. §§ 100 et seq.,

3

concerning actions related to patents, and 28 U.S.C. §§ 1331 and 1338.

4

6.

Venue is proper in this Court under 28 U.S.C. § 1391(b) and (c) and § 1400(b)

5

because Facebook does business in the State of California, has committed acts of infringement

6

in this State and in this District, has a regular and established place of business in this District, is

7

subject to personal jurisdiction in this District, and filed counterclaims for patent infringement in

8

this District..

9

COUNT ONE

10

Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,827,208

11
12

7.

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

its Counter-Counterclaims, as set forth above.

13

8.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘208

15

9.

Yahoo! denies Facebook’s allegations of infringement.

16

10.

An actual case or controversy exists between Yahoo! and Facebook as to whether

14

17
18
19
20

patent.

the ‘208 patent is infringed by Yahoo!.
11.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights regarding the ‘208 patent.
12.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

21

Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

22

indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

23

the ‘208 Patent.

24

COUNT TWO

25

Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,945,653

26
27

13.

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

its Counter-Counterclaims, as set forth above.

28
-19PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

14.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘653

3

15.

Yahoo! denies Facebook’s allegations of infringement.

4

16.

An actual case or controversy exists between Yahoo! and Facebook as to whether

2

5

patent.

the ‘653 patent is infringed by Yahoo!.

6
7

17.

its rights regarding the ‘653 patent.

8
9

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

18.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

10

indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

11

the ‘653 Patent.

12

COUNT THREE

13

Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,288,717

14
15

19.

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

its Counter-Counterclaims, as set forth above.

16

20.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘717

18

21.

Yahoo! denies Facebook’s allegations of infringement.

19

22.

An actual case or controversy exists between Yahoo! and Facebook as to whether

17

20
21
22
23

patent.

the ‘717 patent is infringed by Yahoo!.
23.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights regarding the ‘717 patent.
24.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

24

Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

25

indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

26

the ‘717 Patent.

27
28
-20PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

COUNT FOUR

2

Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,216,133

3
4

25.

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

its Counter-Counterclaims, as set forth above.

5

26.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘133

7

27.

Yahoo! denies Facebook’s allegations of infringement.

8

28.

An actual case or controversy exists between Yahoo! and Facebook as to whether

6

9

patent.

the ‘133 patent is infringed by Yahoo!.

10
11

29.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights regarding the ‘133 patent.

12

30.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

13

Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

14

indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

15

the ‘133 Patent.

16

COUNT FIVE

17

Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,411,949

18
19

31.

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

its Counter-Counterclaims, as set forth above.

20

32.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘949

22

33.

Yahoo! denies Facebook’s allegations of infringement.

23

34.

An actual case or controversy exists between Yahoo! and Facebook as to whether

21

24
25
26
27
28

patent.

the ‘949 patent is infringed by Yahoo!.
35.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights regarding the ‘949 patent.
36.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or
-21PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

2

the ‘949 Patent.

3

COUNT SIX

4

Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,236,978

5
6

37.

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

its Counter-Counterclaims, as set forth above.

7

38.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘978

9

39.

Yahoo! denies Facebook’s allegations of infringement.

10

40.

An actual case or controversy exists between Yahoo! and Facebook as to whether

8

11

patent.

the ‘978 patent is infringed by Yahoo!.

12
13

41.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights regarding the ‘978 patent.

14

42.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

15

Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

16

indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

17

the ‘978 Patent.

18

COUNT SEVEN

19

Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,603,331

20
21

43.

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

its Counter-Counterclaims, as set forth above.

22

44.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘331

24

45.

Yahoo! denies Facebook’s allegations of infringement.

25

46.

An actual case or controversy exists between Yahoo! and Facebook as to whether

23

26
27
28

patent.

the ‘331 patent is infringed by Yahoo!.
47.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights regarding the ‘331 patent.
-22PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

48.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

2

Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

3

indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

4

the ‘331 Patent.

5

COUNT EIGHT

6

Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,103,611

7
8

49.

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

its Counter-Counterclaims, as set forth above.

9

50.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘611

11

51.

Yahoo! denies Facebook’s allegations of infringement.

12

52.

An actual case or controversy exists between Yahoo! and Facebook as to whether

10

13

patent.

the ‘611 patent is infringed by Yahoo!.

14
15

53.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights regarding the ‘611 patent.

16

54.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

17

Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

18

indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

19

the ‘611 Patent.

20

COUNT NINE

21

Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,005,896
55.

22
23

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

its Counter-Counterclaims, as set forth above.
56.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘896

26

57.

Yahoo! denies Facebook’s allegations of infringement.

27

58.

An actual case or controversy exists between Yahoo! and Facebook as to whether

24
25

28

patent.

the ‘896 patent is infringed by Yahoo!.
-23PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1
2

59.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights regarding the ‘896 patent.

3

60.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

4

Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

5

indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

6

the ‘896 Patent.

7

COUNT TEN

8

Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,150,913

9
10

61.

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

its Counter-Counterclaims, as set forth above.

11

62.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘913

13

63.

Yahoo! denies Facebook’s allegations of infringement.

14

64.

An actual case or controversy exists between Yahoo! and Facebook as to whether

12

15

patent.

the ‘913 patent is infringed by Yahoo!.

16
17

65.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights regarding the ‘913 patent.

18

66.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

19

Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

20

indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

21

the ‘913 Patent.

22

COUNT ELEVEN

23

Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 7,827,208
67.

24
25

its Counter-Counterclaims, as set forth above.
68.

26
27

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘208

patent.

28
-24PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

69.

Yahoo! denies Facebook’s allegations of infringement and asserts that the '208

2

patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

3

incorporated herein by reference.

4
5

70.

the claims of the ‘208 patent are invalid and unenforceable.

6
7

71.

10

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights as to whether the claims of the ‘208 patent are invalid and unenforceable.

8
9

An actual case or controversy exists between Yahoo! and Facebook as to whether

72.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

Yahoo! is entitled to a judgment finding that the claims of the ‘208 patent are invalid and
unenforceable.

11

COUNT TWELVE

12

Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 7,945,653

13
14

73.

its Counter-Counterclaims, as set forth above.

15
16
17

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

74.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘653

75.

Yahoo! denies Facebook’s allegations of infringement and asserts that the '653

patent.

18

patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

19

incorporated herein by reference.

20
21
22
23
24

76.

An actual case or controversy exists between Yahoo! and Facebook as to whether

the claims of the ‘653 patent are invalid and unenforceable.
77.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights as to whether the claims of the ‘653 patent are invalid and unenforceable.
78.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

25

Yahoo! is entitled to a judgment finding that the claims of the ‘653 patent are invalid and

26

unenforceable.

27
28
-25PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

COUNT THIRTEEN

2

Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 6,288,717

3
4

79.

its Counter-Counterclaims, as set forth above.

5
6

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

80.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘717

81.

Yahoo! denies Facebook’s allegations of infringement and asserts that the '717

patent.

7
8

patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

9

incorporated herein by reference.

10
11

82.

the claims of the ‘717 patent are invalid and unenforceable.

12
13

An actual case or controversy exists between Yahoo! and Facebook as to whether

83.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights as to whether the claims of the ‘717 patent are invalid and unenforceable.

14

84.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

15

Yahoo! is entitled to a judgment finding that the claims of the ‘717 patent are invalid and

16

unenforceable.

17

COUNT FOURTEEN

18

Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 6,216,133

19
20

85.

its Counter-Counterclaims, as set forth above.

21
22
23

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

86.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘133

87.

Yahoo! denies Facebook’s allegations of infringement and asserts that the '133

patent.

24

patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

25

incorporated herein by reference.

26
27

88.

An actual case or controversy exists between Yahoo! and Facebook as to whether

the claims of the ‘133 patent are invalid and unenforceable.

28
-26PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1
2

89.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights as to whether the claims of the ‘133 patent are invalid and unenforceable.

3

90.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

4

Yahoo! is entitled to a judgment finding that the claims of the ‘133 patent are invalid and

5

unenforceable.

6

COUNT FIFTEEN

7

Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 6,411,949

8
9

91.

its Counter-Counterclaims, as set forth above.

10
11

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

92.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘949

93.

Yahoo! denies Facebook’s allegations of infringement and asserts that the '949

patent.

12
13

patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

14

incorporated herein by reference.

15
16

94.

the claims of the ‘949 patent are invalid and unenforceable.

17
18

An actual case or controversy exists between Yahoo! and Facebook as to whether

95.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights as to whether the claims of the ‘949 patent are invalid and unenforceable.

19

96.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

20

Yahoo! is entitled to a judgment finding that the claims of the ‘949 patent are invalid and

21

unenforceable.

22

COUNT SIXTEEN

23

Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 6,236,978
97.

24
25

its Counter-Counterclaims, as set forth above.
98.

26
27

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘978

patent.

28
-27PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

99.

Yahoo! denies Facebook’s allegations of infringement and asserts that the '978

2

patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

3

incorporated herein by reference.

4
5

100.

the claims of the ‘913 patent are invalid and unenforceable.

6
7

101.

10

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights as to whether the claims of the ‘913 patent are invalid and unenforceable.

8
9

An actual case or controversy exists between Yahoo! and Facebook as to whether

102.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

Yahoo! is entitled to a judgment finding that the claims of the ‘913 patent are invalid and
unenforceable.

11

COUNT SEVENTEEN

12

Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 7,603,331

13
14

103.

its Counter-Counterclaims, as set forth above.

15
16
17

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

104.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘331

105.

Yahoo! denies Facebook’s allegations of infringement and asserts that the '331

patent.

18

patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

19

incorporated herein by reference.

20
21
22
23
24

106.

An actual case or controversy exists between Yahoo! and Facebook as to whether

the claims of the ‘331 patent are invalid and unenforceable.
107.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights as to whether the claims of the ‘331 patent are invalid and unenforceable.
108.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

25

Yahoo! is entitled to a judgment finding that the claims of the ‘331 patent are invalid and

26

unenforceable.

27
28
-28PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

COUNT EIGHTEEN

2

Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 8,103,611

3
4

109.

its Counter-Counterclaims, as set forth above.

5
6

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

110.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘611

111.

Yahoo! denies Facebook’s allegations of infringement and asserts that the '611

patent.

7
8

patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

9

incorporated herein by reference.

10
11

112.

the claims of the ‘611 patent are invalid and unenforceable.

12
13

An actual case or controversy exists between Yahoo! and Facebook as to whether

113.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights as to whether the claims of the ‘611 patent are invalid and unenforceable.

14

114.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

15

Yahoo! is entitled to a judgment finding that the claims of the ‘611 patent are invalid and

16

unenforceable.

17

COUNT NINETEEN

18

Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 8,005,896

19
20

115.

its Counter-Counterclaims and paragraphs 55-72 of its defenses, as set forth above.

21
22
23

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

116.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘896

117.

Yahoo! denies Facebook’s allegations of infringement and asserts that the '896

patent.

24

patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

25

incorporated herein by reference.

26
27

118.

An actual case or controversy exists between Yahoo! and Facebook as to whether

the claims of the ‘896 patent are invalid and unenforceable.

28
-29PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1
2

119.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights as to whether the claims of the ‘896 patent are invalid and unenforceable.

3

120.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

4

Yahoo! is entitled to a judgment finding that the claims of the ‘896 patent are invalid and

5

unenforceable.

6

COUNT TWENTY

7

Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 8,150,913

8
9

121.

its Counter-Counterclaims and paragraphs 55-72 of its defenses, as set forth above.

10
11
12

Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

122.

Facebook has asserted claims against Yahoo! for alleged infringement of the ‘913

123.

Yahoo! denies Facebook’s allegations of infringement and asserts that the '913

patent.

13

patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

14

incorporated herein by reference.

15
16
17
18
19

124.

An actual case or controversy exists between Yahoo! and Facebook as to whether

the claims of the ‘913 patent are invalid and unenforceable.
125.

A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

its rights as to whether the claims of the ‘913 patent are invalid and unenforceable.
126.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

20

Yahoo! is entitled to a judgment finding that the claims of the ‘913 patent are invalid and

21

unenforceable.

22

COUNT TWENTY-ONE

23

Infringement of the '903 Patent

24
25
26
27

127.

Yahoo! realleges and incorporates by reference the allegations of Paragraphs 1-31

of its March 12, 2012 Complaint as though fully set forth herein.
128.

Yahoo! is the owner of all rights, title, and interest in United States Patent No.

7,933,903 (“the ‘903 patent”), entitled “System and Method to Determine the Validity of and

28
-30PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

Interaction on a Network,” which was duly and properly issued by the USPTO on April 26,

2

2011. A copy of the ‘903 patent is attached as Exhibit 1.

3

129.

Upon information and belief, in violation of 35 U.S.C. § 271, Facebook is and

4

has been directly infringing the ‘903 patent by making, using, selling, and/or offering to sell in

5

the United States, or importing into the United States, products or processes that practice the

6

inventions claimed in the ‘903 patent, including without limitation, Facebook Ads. Facebook

7

has had knowledge of the ‘903 patent from at least February 27, 2012, when Yahoo! notified

8

Facebook of its infringement, and its infringement since at least that date has been willful.

9

130.

As a result of Facebook’s unlawful infringement of the ‘903 patent, Yahoo! has

10

suffered and will continue to suffer damage. Yahoo! is entitled to recover from Facebook the

11

damages suffered by Yahoo! as a result of its unlawful acts.

12

131.

On information and belief, Facebook intends to continue its unlawful infringing

13

activity, and Yahoo! continues to and will continue to suffer irreparable harm — for which there

14

is no adequate remedy at law — from such unlawful infringing activities unless this Court

15

enjoins Facebook from further infringing activities.

16

COUNT TWENTY-TWO

17

Infringement of the '315 Patent

18
19
20

132.

Yahoo! realleges and incorporates by reference the allegations of Paragraphs 1-31

of its March 12, 2012 Complaint as though fully set forth herein.
133.

Yahoo! is the owner of all rights, title, and interest in United States Patent No.

21

7,698,315 (“the ‘315 patent”), entitled “System and Method Allowing Advertisers to Manage

22

Search Listings in Pay for Placement Search System Using Grouping,” which was duly and

23

properly issued by the USPTO on April 13, 2010. A copy of the ‘315 patent is attached as

24

Exhibit 2.

25

134.

Upon information and belief, in violation of 35 U.S.C. § 271, Facebook is and

26

has been directly infringing the ‘315 patent by making, using, selling, and/or offering to sell in

27

the United States, or importing into the United States, products or processes that practice the

28

inventions claimed in the ‘315 patent, including without limitation, Facebook Ads.
-31PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

135.

As a result of Facebook’s unlawful infringement of the ‘315 patent, Yahoo! has

2

suffered and will continue to suffer damage. Yahoo! is entitled to recover from Facebook the

3

damages suffered by Yahoo! as a result of its unlawful acts.

4

136.

On information and belief, Facebook intends to continue its unlawful infringing

5

activity, and Yahoo! continues to and will continue to suffer irreparable harm — for which there

6

is no adequate remedy at law — from such unlawful infringing activities unless this Court

7

enjoins Facebook from further infringing activities.

8
9

EXCEPTIONAL CASE
137.

On information and belief, and in addition to the reasons set forth in Yahoo!’s

10

complaint, this is an exceptional case entitling Yahoo! to an award of its attorneys’ fees incurred

11

in connection with defending and prosecuting this action pursuant to 35 U.S.C. § 285, as a result

12

of, inter alia, Facebook’s assertion of the ‘208 patent, the ‘653 patent, the ‘717 patent, the ‘133

13

patent, the ‘949 patent, the ‘978 patent, the ‘331 patent, the ‘611 patent, the ‘896 patent, and the

14

‘913 patent against Yahoo! without a reasonable belief that Yahoo! infringes any valid or

15

enforceable claim. Further, Facebook’s infringement of the ‘903 patent is willful and in

16

knowing disregard of Yahoo!’s patent rights, rendering this case exceptional.

17
18

PRAYER FOR RELIEF
WHEREFORE, Yahoo! prays for the following relief:

19

A.

A judgment in favor of Yahoo! on all of its Counter- Counterclaims;

20

B.

That Facebook be declared to have willfully infringed, induced others to

21 infringe and/or committed acts of contributory infringement with respect to the claims of the
22 patents-in-suit as alleged above;
23

C.

That Facebook and its officers, agents, servants, employees, and all those

24 persons acting or attempting to act in active concert or in participation with them or acting on their
25 behalf be immediately, preliminarily and permanently enjoined from further infringement of the
26 patents-in-suit;
27

D.

That Facebook be ordered to account for and pay to Yahoo! all damages

28 caused to Yahoo! by reason of Facebook's infringement of the patents-in-suit pursuant to 35
-32PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1 U.S.C. § 284 and that such damages be trebled in view of the willful and deliberate nature of the
2 infringement;
3

E.

A judgment dismissing Facebook’s Counterclaim against Yahoo! with

4 prejudice and costs, with Facebook taking nothing;
5

F.

A declaration that Yahoo! has not and does not infringe, contribute to the

6 infringement of, or induce others to infringe, either directly or indirectly, any valid and
7 enforceable claim of the ‘208 patent.
8

G.

A declaration that Yahoo! has not and does not infringe, contribute to the

9 infringement of, or induce others to infringe, either directly or indirectly, any valid and
10 enforceable claim of the ‘653 patent.
11

H.

A declaration that Yahoo! has not and does not infringe, contribute to the

12 infringement of, or induce others to infringe, either directly or indirectly, any valid and
13 enforceable claim of the ‘717 patent.
14

I.

A declaration that Yahoo! has not and does not infringe, contribute to the

15 infringement of, or induce others to infringe, either directly or indirectly, any valid and
16 enforceable claim of the ‘133 patent.
17

J.

A declaration that Yahoo! has not and does not infringe, contribute to the

18 infringement of, or induce others to infringe, either directly or indirectly, any valid and
19 enforceable claim of the ‘949 patent.
20

K.

A declaration that Yahoo! has not and does not infringe, contribute to the

21 infringement of, or induce others to infringe, either directly or indirectly, any valid and
22 enforceable claim of the ‘978 patent.
23

L.

A declaration that Yahoo! has not and does not infringe, contribute to the

24 infringement of, or induce others to infringe, either directly or indirectly, any valid and
25 enforceable claim of the ‘331 patent.
26

M.

A declaration that Yahoo! has not and does not infringe, contribute to the

27 infringement of, or induce others to infringe, either directly or indirectly, any valid and
28 enforceable claim of the ‘611 patent.
-33PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

N.

A declaration that Yahoo! has not and does not infringe, contribute to the

2 infringement of, or induce others to infringe, either directly or indirectly, any valid and
3 enforceable claim of the ‘896 patent.
4

O.

A declaration that Yahoo! has not and does not infringe, contribute to the

5 infringement of, or induce others to infringe, either directly or indirectly, any valid and
6 enforceable claim of the ‘913 patent.
7

P.

A declaration that every claim of the ‘208 patent is invalid and/or

Q.

A declaration that every claim of the ‘653 patent is invalid and/or

R.

A declaration that every claim of the ‘717 patent is invalid and/or

S.

A declaration that every claim of the ‘133 patent is invalid and/or

T.

A declaration that every claim of the ‘949 patent is invalid and/or

U.

A declaration that every claim of the ‘978 patent is invalid and/or

V.

A declaration that every claim of the ‘331 patent is invalid and/or

W.

A declaration that every claim of the ‘611 patent is invalid and/or

X.

A declaration that every claim of the ‘896 patent is invalid and/or

Y.

A declaration that every claim of the ‘913 patent is invalid and/or

Z.

A declaration that this case is exceptional and an award to Yahoo! of its

8 unenforceable;
9
10 unenforceable;
11
12 unenforceable;
13
14 unenforceable;
15
16 unenforceable;
17
18 unenforceable;
19
20 unenforceable;
21
22 unenforceable;
23
24 unenforceable;
25
26 unenforceable;
27

28 reasonable costs and expenses of litigation, including attorneys’ fees and expert witness fees; and,
-34PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

AA.

That Yahoo! be granted such other and additional relief as the Court deems

2 just and proper.
3
4 DATED: April 27, 2012

Respectfully submitted,

5
6
7
8
9

By: /s/ Kevin A. Smith
Charles K. Verhoeven
Jennifer A. Kash
Kevin A. Smith
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]

10
11

Attorneys for Plaintiff Yahoo! Inc.

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-35PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1

DEMAND FOR JURY TRIAL

2

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff Yahoo! hereby

3 demands a trial by jury as to all issues so triable.
4
5 DATED: April 27, 2012

Respectfully submitted,

6
7
8
9
10

By /s/ Kevin A. Smith
Charles K. Verhoeven
Jennifer A. Kash
Kevin A. Smith
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]

11
12

Attorneys for Plaintiff Yahoo! Inc.

13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-36PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW

1
2

CERTIFICATE OF SERVICE
I, Kevin A. Smith, declare under penalty of perjury under the laws of the State of

3 California and the United States that the following is true and correct:
4

On April 27, 2012, I caused to be served the following document(s):

5

PLAINTIFF YAHOO! INC.’s REPLY AND COUNTER COUNTERCLAIMS TO
DEFENDANT FACEBOOK, INC.’S ANSWER; COUNTERCLAIM AGAINST
FACEBOOK, INC FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT

6
7

8 via electronic mail to the following parties:
9 Michael Graham Rhodes ([e-mail])
Heidi Keefe ([e-mail])
10 Joseph Haag ([e-mail])
Mark Selwyn ([e-mail])
11 Mark Weinstein ([e-mail])
12 Stephen Neal ([e-mail])
13 via U.S. Mail to the following parties:
14 Cynthia D. Vreeland
Lee F. William
15
Wilmer Cutler Pickering Hale and Dorr LLP
16 60 State Street
Boston, MA 02109
17
Dated: April 27, 2012
18

/s/ Kevin A. Smith

19
20
21
22
23
24
25
26
27
28
-37PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS

CV-12-01212-JSW