Emblaze Ltd. v. Apple Inc.
Filing
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ANSWER to Amended Complaint with Jury Demand; COUNTERCLAIM against Emblaze Ltd. by Apple Inc.. (Barrows, Sarah) (Filed on 5/14/2012) Modified on 5/15/2012 (jlm, COURT STAFF).
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KENNETH STEINTHAL (SBN 268655)
steinthalk@gtlaw.com
SARAH BARROWS (SBN 253278)
barrowss@gtlaw.com
GREENBERG TRAURIG, LLP
4 Embarcadero Center, Suite 3000
San Francisco, CA 94111-5983
Telephone: (415) 655-1300
Facsimile: (415) 707-2010
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Michael A. Nicodema (Admitted Pro Hac Vice)
nicodemam@gtlaw.com
James J. DeCarlo (Admitted Pro Hac Vice)
decarloj@gtlaw.com
GREENBERG TRAURIG, LLP
MetLife Building
200 Park Avenue, 34th Floor
New York, New York 10166
Tel.: (212) 801-9200
Fax: (212) 801-6400
Attorneys for Defendant,
Apple Inc.
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UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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OAKLAND DIVISION
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EMBLAZE LTD.,
Plaintiff;
v.
CASE NO.4:11-CV-01079 SBA
DEFENDANT APPLE INC.’S ANSWER AND
COUNTERCLAIMS TO PLAINTIFF’S FIRST
AMENDED COMPLAINT
APPLE INC., a California Corporation,
Defendant.
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APPLE INC.’S ANSWER TO FIRST AMENDED COMPLAINT
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CASE NO. 4:11-CV-01079 SBA
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Defendant Apple Inc. (“Apple”) responds to the First Amended Complaint for Patent
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Infringement (the “Amended Complaint”) of Plaintiff Emblaze, Ltd. (“Emblaze”) as follows1:
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I.
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1.
2.
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Apple is without sufficient information or knowledge to either admit or deny the
allegations in paragraph 2 and therefore denies the same.
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Apple is without sufficient information or knowledge to either admit or deny the
allegations in paragraph 1 and therefore denies the same.
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PARTIES
3.
Apple admits that it is a California corporation with its principal offices situated at
One Infinite Loop, Cupertino, California 95014.
II.
JURISDICTION AND VENUE
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4.
Apple admits that this Court has subject matter jurisdiction over this action.
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5.
For purposes of this action only, Apple does not contest that venue is proper in this
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judicial district pursuant to 28 U.S.C. §§ 1391(b)-(c) and 1400(b).
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III.
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COUNT I - PATENT INFRINGEMENT
6.
Apple admits that what appears to be a copy of United States Patent No. 6,389,473
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(“the ’473 patent”) is attached as Exhibit A to Emblaze’s Complaint. Apple is without sufficient
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information or knowledge to either admit or deny the remaining allegations in paragraph 6 and
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therefore denies the same.
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allegations in paragraph 7 and therefore denies the same.
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8.
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Apple is without sufficient information or knowledge to either admit or deny the
allegations in paragraph 8 and therefore denies the same.
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Apple is without sufficient information or knowledge to either admit or deny the
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Apple is without sufficient information or knowledge to either admit or deny the
allegations in paragraph 9 and therefore denies the same.
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Despite previously moving to dismiss Emblaze’s First Amended Complaint under Fed. R. Civ. P. 12(b)(6) for failure to
state a claim upon which relief may be granted (Dkt. No. 105), Apple files this Answer in an abundance of caution to
address the Federal Circuit’s interpretation of the tolling provisions of the Federal Rules. See General Mills, Inc. v. Kraft
Foods Global, Inc., 495 F.3d 1378, 1379 (Fed. Cir. 2007) (“The language of the rule is unambiguous: Rule 12(a)(4) does
not extend the time for filing an answer to an amended complaint when ‘the time remaining for response to the original
pleading’ has elapsed.”).
APPLE INC.’S ANSWER TO FIRST AMENDED COMPLAINT
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CASE NO. 4:11-CV-01079 SBA
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10.
Apple admits that it has used and continues to use, has sold and/or offered to sell in
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New York and elsewhere products incorporating Apple’s HTTP Live Streaming technology. Apple
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denies that its HTTP Live Streaming technology or any other Apple products or services infringe any
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claims of the ’473 patent.
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11.
Apple admits that it announced the introduction of Apple’s HTTP Live Streaming
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technology on or about mid-2009, and that such technology is utilized in certain of Apple’s products.
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Apple denies the remaining allegations in paragraph 11.
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12.
Apple denies the allegations in paragraph 12.
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13.
Apple admits that Emblaze sent a letter to Apple on October 29, 2010 alleging that
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Apple’s HTTP Live Stream Standard technology infringes the ’473 patent and offering to discuss
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possible licensing under the ’473 patent. Apple denies the remaining allegations in paragraph 13.
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Apple admits that it has declined to take a license under the ’473 patent.
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15.
Apple denies the allegations in paragraph 15.
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16.
Apple denies the allegations in paragraph 16.
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17.
Apple denies the allegations in paragraph 17.
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IV.
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JURY DEMAND
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V.
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Apple also demands a trial by jury.
PRAYER FOR RELIEF
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Apple denies that Emblaze is entitled to the relief sought in items A through H on p. 4
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of the First Amended Complaint or any other relief Emblaze requests against Apple.
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VI.
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DENIAL OF ANY REMAINING ALLEGATIONS
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Except as specifically admitted herein, Apple denies any remaining allegations in
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Emblaze’s Complaint.
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VII.
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AFFIRMATIVE DEFENSES
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Apple incorporates by reference the foregoing paragraphs in their entirety and asserts
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the following Affirmative Defenses. In addition to the defenses described below, Apple reserves all
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affirmative defenses under Rule 8(c) of the Federal Rules of Civil Procedure, the Patent Laws of the
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APPLE INC.’S ANSWER TO FIRST AMENDED COMPLAINT
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CASE NO. 4:11-CV-01079 SBA
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United States and any other defenses, at law or in equity, which may now exist or in the future may
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be available based on discovery and further factual investigation in this case.
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FIRST AFFIRMATIVE DEFENSE
(No Infringement)
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Apple does not infringe and has not infringed any claim of the ’473 patent either
directly or by inducing or contributing to infringement by others.
SECOND AFFIRMATIVE DEFENSE
(Invalidity)
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Each of the Claims of the ’473 patent are invalid, unenforceable, and/or void for
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failing to comply with one or more of the requirements for patentability under the Patent Laws of the
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United States, including but not limited to, 35 U.S.C. §§ 101, 102, 103, 112, and 282.
THIRD AFFIRMATIVE DEFENSE
(Laches, Waiver, Estoppel)
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and/or estoppel.
FOURTH AFFIRMATIVE DEFENSE
(Notice, Damages, and Costs)
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Emblaze’s claims are barred in whole or in part by the doctrines of laches, waiver,
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Emblaze’s recovery for alleged infringement of the ’473 patent, if any, is limited to
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any alleged infringement committed no more than six years prior to the filing of its Complaint (Dkt.
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No. 1), pursuant to 35 U.S.C. § 286, and to the extent Emblaze failed to comply with the notice
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provisions of 35 U.S.C. § 287, Emblaze may not recover damages prior to the filing of its Complaint
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(Dkt. No. 1).
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U.S.C. § 288.
FIFTH AFFIRMATIVE DEFENSE
(Failure to State a Claim Upon Which Relief May Be Granted)
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Emblaze is barred from recovering costs in connection with this action under 35
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With respect to each purported claim for relief alleged in the First Amended
Complaint, Emblaze fails to state a claim against Apple upon which relief may be granted.
APPLE INC.’S ANSWER TO FIRST AMENDED COMPLAINT
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CASE NO. 4:11-CV-01079 SBA
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SIXTH AFFIRMATIVE DEFENSE
(Unclean Hands)
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the doctrine of unclean hands.
SEVENTH AFFIRMATIVE DEFENSE
(No Enhanced Damages)
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The claims alleged in the First Amended Complaint are barred, in whole or in part, by
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Emblaze is not entitled to enhanced or increased damages for willful infringement
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because Apple has not engaged in any conduct that meets the applicable standard for willful
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infringement.
EIGHT AFFIRMATIVE DEFENSE
(No Injunctive Relief)
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not immediate or irreparable, and Emblaze has an adequate remedy at law.
RESERVATION OF AFFIRMATIVE DEFENSES
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Emblaze is not entitled to injunctive relief because any alleged injury to Emblaze is
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Apple hereby reserves the right to supplement and/or amend its affirmative defenses
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as discovery proceeds in this case.
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VIII. COUNTERCLAIMS
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Incorporating by reference the foregoing paragraphs in their entirety, Apple asserts the
following counterclaims against Emblaze.
PARTIES
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32.
Counterclaim Plaintiff, Apple, is a California Corporation with its principal place of
business at One Infinite Loop, Cupertino, California 95014.
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On information and belief based on Plaintiff’s First Amended Complaint,
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Counterclaim Defendant Emblaze, Ltd. is an Israeli corporation having a principal place of business
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at Emblaze House, 22 Zarhin Street, Ra’anana, Israel 43662.
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APPLE INC.’S ANSWER TO FIRST AMENDED COMPLAINT
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CASE NO. 4:11-CV-01079 SBA
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JURISDICTION AND VENUE
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These counterclaims arise under the patent laws of the United States as enacted under
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Title 35 of the United States Code and the provisions of the Federal Declaratory Judgment Act. The
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jurisdiction of this Court is proper under 28 U.S.C. §§ 1331, 1338, 2201 and 2202.
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Venue is technically proper in this District pursuant to 28 U.S.C. §§ 1391(b) and 1400.
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COUNT I – DECLARATION OF NON-INFRINGEMENT
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Apple realleges and incorporates by reference the allegations set forth in paragraphs
34-35 above.
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Based on Emblaze’s filing of this action and Apple’s Affirmative Defenses, an actual
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controversy has arisen and now exists between Emblaze and Apple as to whether Apple has infringed
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or is infringing one or more claims of the ’473 patent.
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38.
Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., Apple
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requests the declaration of the Court that Apple does not infringe and has not infringed any valid and
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enforceable claim of the ’473 patent.
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COUNT II – DECLARATION OF PATENT INVALIDITY AND/OR UNENFORCEABILITY
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Apple realleges and incorporates by reference the allegations set forth in paragraphs
34-38 above.
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Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., Apple
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requests the declaration of the Court that the ’473 patent is invalid and/or unenforceable for failure to
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meet the conditions of patentability set forth in the Patent Laws of the United States, including but
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not limited to 35 U.S.C. §§ 101, 102, 103, 112, and 282.
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JURY DEMAND
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Apple demands a trial by jury.
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PRAYER FOR RELIEF
Apple respectfully requests a judgment against Emblaze as follows:
A.
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A declaration that Apple does not infringe and has not infringed any valid and
enforceable claim of the ’473 patent;
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A declaration that the ’473 patent is invalid and/or unenforceable;
APPLE INC.’S ANSWER TO FIRST AMENDED COMPLAINT
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CASE NO. 4:11-CV-01079 SBA
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C.
That Emblaze take nothing by its Complaint against Apple;
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D.
That the Court enter judgment against Emblaze and in favor of Apple and that
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Emblaze’s Complaint be dismissed with prejudice;
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That the Court enter a judgment that this is an exceptional case under 35
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U.S.C. § 285 and enter a judgment awarding Apple its costs and reasonable
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attorneys’ fees; and
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F.
That the Court grant Apple whatever further relief the Court may deem just
and proper.
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APPLE INC.’S ANSWER TO FIRST AMENDED COMPLAINT
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CASE NO. 4:11-CV-01079 SBA
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Dated: May 14, 2012
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GREENBERG TRAURIG, LLP
/_____s/__
James J. DeCarlo
KENNETH STEINTHAL (SBN 268655)
steinthalk@gtlaw.com
SARAH BARROWS (SBN 253278)
barrowss@gtlaw.com
GREENBERG TRAURIG, LLP
4 Embarcadero Center, Suite 3000
San Francisco, CA 94111-5983
Telephone: (415) 655-1300
Facsimile: (415) 707-2010
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Michael A. Nicodema (Admitted Pro Hac Vice)
nicodemam@gtlaw.com
James J. DeCarlo (Admitted Pro Hac Vice)
decarloj@gtlaw.com
GREENBERG TRAURIG, LLP
MetLife Building
200 Park Avenue, 34th Floor
New York, New York 10166
Tel.: (212) 801-9200
Fax: (212) 801-6400
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Attorneys for Defendant,
Apple Inc.
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APPLE INC.’S ANSWER TO FIRST AMENDED COMPLAINT
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CASE NO. 4:11-CV-01079 SBA
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