Streetspace, Inc v. Google, Inc. et al

Filing 52

RESPONSE in Opposition re 49 MOTION to Dismiss (correcting missing signature) filed by Streetspace, Inc. (Attachments: # 1 Declaration Trevor Coddington, # 2 Exhibit A, # 3 Proof of Service)(Coddington, Trevor) (kaj).

EXHIBIT A

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MATTHEW D. POWERS (Bar No. 104795)
[e-mail]
EDWARD R. REINES (Bar No. 135960)
[e-mail]
SONAL N. MEHTA (Bar No. 222086)
[e-mail]
WEIL, GOTSHAL & MANGES LLP
Silicon Valley Office
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Apple, Inc.
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9

UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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13

ELAN MICROELECTRONICS
CORPORATION,

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APPLE, INC.’S SECOND AMENDED
ANSWER, AFFIRMATIVE DEFENSES,
AND COUNTERCLAIMS TO ELAN
MICROELECTRONICS
CORPORATION’S COMPLAINT FOR
PATENT INFRINGEMENT

Plaintiff and Counterclaim
Defendant,

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15

Case No. C-09-01531 RS

v.
APPLE, INC.,

Hon. Richard Seeborg

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Defendant and Counterclaim
Plaintiff.

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Demand for Jury Trial

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20

Defendant Apple, Inc. (“Apple”) by and through its undersigned counsel, hereby

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responds to Plaintiff Elan Microelectronics Corporation’s (“Elan”) Complaint for Patent

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Infringement (“Complaint”) as follows:

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I.

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ANSWER

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PARTIES

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1.

Apple is without knowledge or information sufficient to form a belief as to

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the truth of the statements in Paragraph 1 of the Complaint, and, on that basis, denies those

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allegations.
APPLE’S SECOND AMENDED ANSWER, DEFENSES AND
COUNTERCLAIMS

Case No. C-09-01531 RS

Case5:09-cv-01531-RS Document43

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2.

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Apple admits that U.S. Patent No. 5,825,352 (“the ’352 patent”) states on

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its face that it is entitled “Multiple Finger Contact Sending Method for Emulating Mouse Buttons

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and Mouse Operations on a Touch Sensor Pad.” Apple is without knowledge or information

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sufficient to form a belief as to the truth of the allegations concerning Elan’s purported ownership

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of all right and title to the ’352 patent and, therefore, denies those allegations. Except as so

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expressly admitted herein, Apple denies the allegations in Paragraph 2 of the Complaint.

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3.

Apple admits that U.S. Patent No. 7,274,353 (“the ’353 patent”) states on

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its face that it is entitled “Capacitive Touchpad Integrated with Key and Handwriting Functions.”

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Apple is without knowledge or information sufficient to form a belief as to the truth of the

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allegations concerning Elan’s purported ownership of all right and title to the ’353 patent and,

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therefore, denies those allegations. Except as so expressly admitted herein, Apple denies the

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allegations in Paragraph 3 of the Complaint.

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4.

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15

Apple admits the allegations in Paragraph 4 of the Complaint.
JURISDICTION AND VENUE

5.

Apple admits that Elan’s Complaint purports to be an action that arises

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under the patent laws of the United States, 35 U.S.C. § 1 et seq., but denies any wrongdoing or

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liability on its own behalf for the reasons stated herein. Apple admits that this Court has subject

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matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a). Except as so expressly admitted herein,

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Apple denies the allegations in Paragraph 5 of the Complaint.

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6.

Apple admits that it resides in this district and has a regular place of

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business in this district. Apple denies that it has committed any acts of infringement within this

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district and specifically denies any wrongdoing, infringement, inducement of infringement or

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contribution to infringement. Apple admits that venue is proper as to Apple in this District

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pursuant to 28 U.S.C. §§ 1391(b) and 1400(b). Except as so expressly admitted herein, Apple

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denies the allegations in Paragraph 6 of the Complaint.

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THE DISPUTE

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7.

Apple denies the allegations in Paragraph 7 of the Complaint.

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8.

Apple denies the allegations in Paragraph 8 of the Complaint.

APPLE’S SECOND AMENDED ANSWER, DEFENSES AND
COUNTERCLAIMS

Case No. C-09-01531 RS

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9.

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Apple admits that it designs, markets and sells computer and consumer

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electronics products including touch-sensitive input devices. Apple admits that it does or has

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designed, marketed, and sold the Apple iBook, PowerBook and MacBook portable computers,

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iPhone mobile phones and iPod Touch digital medial player devices, which do or have included

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touch-sensitive input devices.

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allegations in Paragraph 9 of the Complaint.

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8
9

Except as so expressly admitted herein, Apple denies the

FIRST CLAIM
10.

Apple refers to and incorporates herein its answers as provided in

Paragraphs 1-9 above.

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11.

Apple denies the allegations in Paragraph 11 of the Complaint.

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12.

Apple denies the allegations in Paragraph 12 of the Complaint.

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13.

Apple denies the allegations in Paragraph 13 of the Complaint.

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14.

Apple denies the allegations in Paragraph 14 of the Complaint.

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15.

Apple denies the allegations in Paragraph 15 of the Complaint.

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16
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SECOND CLAIM
16.

Apple refers to and incorporates herein its answers as provided in

Paragraphs 1-15 above.

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17.

Apple denies the allegations in Paragraph 17 of the Complaint.

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18.

Apple denies the allegations in Paragraph 18 of the Complaint.

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19.

Apple denies the allegations in Paragraph 19 of the Complaint.

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20.

Apple denies the allegations in Paragraph 20 of the Complaint.

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21.

Apple denies the allegations in Paragraph 21 of the Complaint.

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PRAYER FOR RELIEF
22.

Apple denies that Elan is entitled to any of the relief sought in its prayer for

25

relief. Apple has not directly or indirectly infringed the ’352 and ’353 patents, either literally or

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by the doctrine of equivalents, willfully or otherwise. Elan is not entitled to recover statutory

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damages, compensatory damages, enhanced damages, an accounting, injunctive relief, costs, fees,

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APPLE’S SECOND AMENDED ANSWER, DEFENSES AND
COUNTERCLAIMS

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interest, or any other type of recovery from Apple. Elan’s prayer should, therefore, be denied in

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its entirety and with prejudice, and Elan should take nothing.

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DEMAND FOR JURY TRIAL

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23.

Apple does not object to a trial by jury on all issues so triable.

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II.

6

DEFENSES

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As and for its affirmative defenses, Apple alleges as follows:

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FIRST DEFENSE – NON-INFRINGEMENT

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24.

Apple does not infringe and has not directly or indirectly infringed any

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claims of the ’352 and ’353 patents, either literally or under the doctrine of equivalents, willfully

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or otherwise.

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SECOND DEFENSE – INVALIDITY

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25.

Elan’s alleged claims for infringement of the ’352 and ’353 patents are

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barred because each and every claim of the ’352 and ’353 patents is invalid for failure to comply

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with the requirements of Title 35 of the United States Code, including but not limited to

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Sections 101, 102, 103, and/or 112.

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THIRD DEFENSE – LACHES

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19

26.

Elan’s claims for relief are barred in whole or in part by the doctrine of

laches.

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FOURTH DEFENSE – ESTOPPEL

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27.

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equitable estoppel.

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24
25

Elan’s claims for relief are barred in whole or in part by the doctrine of

FIFTH DEFENSE – STATUTE OF LIMITATIONS
28.

To the extent Elan seeks damages for alleged infringement more than six

years prior to filing of this action, the relief sought by Elan is barred by 35 U.S.C. § 286.

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27
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APPLE’S SECOND AMENDED ANSWER, DEFENSES AND
COUNTERCLAIMS

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SIXTH DEFENSE – NOTICE

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29.

To the extent Elan seeks damages for alleged infringement prior to its

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giving actual or constructive notice of the ’352 and ’353 patents to Apple, the relief sought by

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Elan is barred by 35 U.S.C. § 287.

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SEVENTH DEFENSE – NO INJUNCTIVE RELIEF

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30.

To the extent Elan seeks injunctive relief for alleged infringement, the

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relief sought by Elan is unavailable because any alleged injury to Elan is not immediate or

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irreparable and because Elan has an adequate remedy at law for any alleged injury.

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III.

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COUNTERCLAIMS

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12

Counterclaim-Plaintiff Apple counterclaims against Counterclaim-Defendant Elan
as follows:

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15
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PARTIES
31.

Apple is a corporation organized under the laws of the State of California

and having a principal place of business at 1 Infinite Loop, Cupertino, CA 95014.
32.

Elan alleges that it is a corporation organized under the laws of Taiwan

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R.O.C. with a principal place of business at No. 12, Innovation 1st Road, Science Based

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Industrial Park, Hsinchu Taiwan R.O.C.

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20

JURISDICTION AND VENUE
33.

These counterclaims arise under Title 35 of the United States Code. The

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Court has subject matter jurisdiction over these counterclaims pursuant to 28 U.S.C. §§ 1331,

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1338(a), 2201, and 2202.

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34.

Elan is subject to personal jurisdiction in this district arising out of its

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systematic and continuous contacts with this district and its purposeful acts and/or transactions

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directed toward this district. Such contacts include without limitation Elan’s past and ongoing

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infringing conduct in this district, Elan’s bringing of this lawsuit in this district, and, on

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information and belief, Elan’s presence and conduct of business in this district through ELAN

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Information Technology Group, operating in Cupertino, California 95015.
APPLE’S SECOND AMENDED ANSWER, DEFENSES AND
COUNTERCLAIMS

Case No. C-09-01531 RS

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35.

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Filed10/05/09 Page6 of 15

Venue is proper in this judicial district under 28 U.S.C. § 1391.
THE DISPUTE

36.

Elan designs, markets, manufactures and sells touch-sensitive input devices

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or touchpads and related components, including but not limited to the Smart-Pad product. These

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products are incorporated into products that are sold in the United States and are used by

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consumers in the United States, including for example, as part of laptop computers.

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37.

Laptop computers including Elan touchpads and related components are

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available for purchase throughout the United States, including in this judicial district. These

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products are available for purchase in this judicial district from retailers, distributors and middle-

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men, including for example, at retail outlets (e.g., Best Buy) and on the internet (e.g.,

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www.amazon.com).

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38.

Upon information and belief, Elan touchpads and related components are

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used by consumers and users of the laptop computers including such touchpads and components

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throughout the United States, including in this judicial district.

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39.

Upon information and belief, Elan markets, sells and supports its touch-

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sensitive input devices or touchpads and related components in the United States directly and

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through its agent Elan Information Technology Group (“EITG”). EITG is Elan’s wholly-owned

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subsidiary, with its principle place of business in this judicial district. See Order Denying

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Defendant Elan Microelectronics’ Motion to Dismiss in Agilent Technologies, Inc. v. Elan

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Microelectronics Corp., Case No. 04-5385-JW (N.D. Cal. Nov. 29, 2005). Elan maintains a

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“worldwide network of sales channels and technical support,” including in North America. Id.

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EITG is the North American hub for that network. Id. Elan’s co-founder, chief-engineer and

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head of R&D served as President and registered agent of EITG. Id. EITG directly purchases

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products from Elan and turns around to sell them to California companies. Id. Elan has caused

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its products to be imported into the United States, specifically to the Northern District of

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California. Id. Elan maintains a continuous business relationship with the United States through

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its EITG office. Id. Elan directs its customers in North America to contact EITG for products

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and services. Id.
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COUNTERCLAIMS

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FIRST COUNTERCLAIM – DECLARATORY JUDGMENT

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’352 PATENT

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4

40.

Apple incorporates herein by reference the allegations of paragraphs 1 - 39

of this Answer, Affirmative Defenses and Counterclaims (“Answer”).

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41.

Apple counterclaims against Elan pursuant to the patent laws of the United

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States, Title 35 of the United States Code, and the Declaratory Judgments Act, 28 U.S.C. §§ 2201

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and 2202.

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9
10

42.

In its Complaint, Elan alleges that Apple is now and has been directly

and/or indirectly infringing the ’352 patent by the sale of at least its iBook, PowerBook,
MacBook, iPhone and iPod Touch products.

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43.

An actual controversy exists between Elan and Apple by virtue of the

12

allegations of Elan’s Complaint and Apple’s Answer as to the validity and infringement of the

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’352 patent.

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44.

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through 30 above.

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45.

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The ’352 patent is invalid and not infringed, as set forth in paragraphs 24

Apple is entitled to judgment that the ’352 patent is invalid and not

infringed.

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SECOND COUNTERCLAIM – DECLARATORY JUDGMENT

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’353 PATENT

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21

46.

Apple incorporates herein by reference the allegations of paragraphs 1 - 45

of this Answer.

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47.

Apple counterclaims against Elan pursuant to the patent laws of the United

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States, Title 35 of the United States Code, and the Declaratory Judgments Act, 28 U.S.C. §§ 2201

24

and 2202.

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26

48.

In its Complaint, Elan alleges that Apple is now and has been directly

and/or indirectly infringing the ’353 patent by the sale of its iPhone and iPod Touch products.

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APPLE’S SECOND AMENDED ANSWER, DEFENSES AND
COUNTERCLAIMS

Case No. C-09-01531 RS

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49.

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An actual controversy exists between Elan and Apple by virtue of the

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allegations of Elan’s Complaint and Apple’s Answer as to the validity and infringement of the

3

’353 patent.

4

50.

5

through 30 above.

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51.

7

The ’353 patent is invalid and not infringed, as set forth in paragraphs 24

Apple is entitled to judgment that the ’353 patent is invalid and not

infringed.

8

THIRD COUNTERCLAIM – PATENT INFRINGEMENT

9

’218 PATENT

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11

52.

Apple incorporates herein by reference the allegations of paragraphs 1 - 51

of this Answer.

12

53.

Apple is the owner of the entire right, title and interest in and to U.S. Patent

13

No. 5,764,218 (“the ’218 patent”) entitled “Method And Apparatus For Contacting A Touch-

14

Sensitive Cursor-Controlling Input Device To Generate Button Values,” which was duly and

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legally issued on June 9, 1998 in the name of inventors Mark A. Della Bona, Jonathan Dorfman

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and Jay F. Hamlin. A copy of the ’218 patent is attached as Exhibit A hereto.

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54.

The ‘218 patent claims methods and apparatuses for a touch-sensitive

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cursor-controlling input device that detects contact intervals when the user contacts the touch-

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sensitive input device, detects gap intervals between subsequent contact intervals, and moves the

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cursor on the display screen and enables an operator to perform with a single touch-sensitive

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input device numerous control operations, such as cursor manipulation, click, multi-click, drag,

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click-and-drag, and multi-click-and-drag operations based on the duration of the contact and gap

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intervals.

24

55.

Upon information and belief, Elan’s touch-sensitive input devices or

25

touchpads and related components employ the methods and/or apparatuses claimed in the ‘218

26

patent, including but not limited to the Smart-Pad product, employ the methods and/or

27

apparatuses claimed in the ‘218 patent by detecting contact intervals for touches on the touchpad,

28

detecting gap intervals between such contact intervals, and based on the duration of those
APPLE’S SECOND AMENDED ANSWER, DEFENSES AND
COUNTERCLAIMS

Case No. C-09-01531 RS

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intervals, distinguishing between three or more gestures (e.g., “vertical scroll,” “tapping,”

2

“magnifier”) and reporting the gesture that has been identified to the host device (e.g., laptop

3

computer). In addition, driver software for Elan’s touch-sensitive input devices such as the

4

Smart-Pad allows a user to enable one-finger, two-finger, and three-finger tapping and to select

5

which laptop control operations correlate to different gestures.

6

56.

Laptop computers employing Elan’s touch-sensitive input devices or

7

touchpads and related components employing the methods and/or apparatuses claimed in the ‘218

8

patent, including but not limited to the Smart-Pad product, are imported into, offered for sale, sold

9

and used in the United States.

10

57.

Upon information and belief, Elan has been and is currently directly

11

infringing, in violation of 35 U.S.C. § 271, the ’218 patent through its use, importation, offer for

12

sale and/or sale of touch-sensitive input devices or touchpads and related components employing

13

the methods and/or apparatuses claimed in the ‘218 patent, including but not limited to the Smart-

14

Pad product, in the United States, including through its agent EITG.

15
16
17

58.

Elan has had actual knowledge of the ‘218 patent since at least July 1,

59.

Upon information and belief, Elan has been and is currently indirectly

2009.

18

infringing, in violation of 35 U.S.C. § 271, the ’218 patent. Upon information and belief, the

19

‘218 patent is directly infringed by, without limitation, manufacturers and others in the

20

distribution channel of laptop computers, using, selling, offering for sale and/or importing in the

21

United States, Elan’s touch-sensitive input devices or touchpads employing the methods and

22

apparatuses claimed in the ‘218 patent through their processing of gestures, including but not

23

limited to the Smart-Pad product. Upon information and belief, Elan induces that infringement

24

through its intentional marketing, sale and/or support, including technical support, of such devices

25

in the United States, including through EITG, and through the intentional design, marketing,

26

manufacture, sale and/or support, including technical support, of such devices abroad to induce

27

direct infringement in the United States.

28

includes, without limitation, active encouragement of the use, sale, offer for sale and/or

Upon information and belief, Elan’s inducement

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COUNTERCLAIMS

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importation in the United States, of such devices to enable gestures that infringe the ‘218 patent

2

on such devices, including through the promotion and provision of software drivers and

3

marketing literature that induces direct infringement. Upon information and belief, Elan has

4

known or should have known that these actions would cause direct infringement of the ‘218

5

patent and did so with specific intent to encourage direct infringement.

6

60.

Apple has suffered, and will continue to suffer, irreparable injury as a

7

result of Elan’s infringement. Pursuant to 35 U.S.C. §§ 283 and 284, Apple is entitled to

8

damages for infringement and to a permanent injunction against further infringement.

9
10

61.

This case is exceptional, and therefore, Apple is entitled to attorneys’ fees

pursuant to 35 U.S.C. § 285.

11

FOURTH COUNTERCLAIM – PATENT INFRINGEMENT

12

’659 PATENT

13
14
15

62.

Apple incorporates herein by reference the allegations of paragraphs 1 - 61

of this Answer.
63.

Apple is the owner of the entire right, title and interest in and to U.S. Patent

16

No. 7,495,659 (“the ’659 patent”) entitled “Touch Pad For Handheld Device,” which was duly

17

and legally issued on February 24, 2009 in the name of inventors Greg Marriott, Guy Bar-Nahum,

18

and Steven Bollinger. A copy of the ’659 patent is attached as Exhibit B hereto.

19

64.

The ‘659 patent claims methods and apparatuses for a touchpad system that

20

maps the touchpad into native sensor coordinates and produces native values of the native sensor

21

coordinates when events occur on the touchpad. The system further includes filtering the native

22

values of the native sensor coordinates based on the type of events that occur on the touchpad.

23

The system additionally includes generating a control signal based on the native values of the

24

native sensor coordinates when a desired event occurs on the touch pad.

25

65.

Upon information and belief, Elan’s touch-sensitive input devices or

26

touchpads and related components employ the methods and/or apparatuses claimed in the ‘659

27

patent, including but not limited to the Smart-Pad product, employ the methods and/or

28

apparatuses claimed in the ‘659 patent by including a touchpad and controller that defines a
APPLE’S SECOND AMENDED ANSWER, DEFENSES AND
COUNTERCLAIMS

Case No. C-09-01531 RS

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logical device unit associated with the surface of a touchpad, receives native values associated

2

with native sensor coordinates based on touches to the touchpad, filters those values, adjusts the

3

native values to a new value associated with the logical device unit, and reports the new, filtered

4

values to the host processor on the laptop such that the amount of data sent based on values

5

associated with the logical device unit is less than the native values associated with sensor

6

coordinates on the touchpad.

7

66.

Laptop computers employing Elan’s touch-sensitive input devices or

8

touchpads and related components employing the methods and/or apparatuses claimed in the ‘218

9

patent, including but not limited to the Smart-Pad product, are imported into, offered for sale, sold

10

and used in the United States.

11

67.

Upon information and belief, Elan has been and is currently directly

12

infringing, in violation of 35 U.S.C. § 271, the ’659 patent through its use, importation, offer for

13

sale and/or sale of touch-sensitive input devices or touchpads employing the methods and/or

14

apparatuses claimed in the ‘659 patent, including but not limited to the Smart-Pad product, in the

15

United States, including through its agent EITG.

16
17
18

68.

Elan has had actual knowledge of the ‘659 patent since at least July 1,

69.

Upon information and belief, Elan has been and is currently indirectly

2009.

19

infringing, in violation of 35 U.S.C. § 271, the ’659 patent. Upon information and belief, the

20

‘659 patent is directly infringed by, without limitation, manufacturers and others in the

21

distribution channel of laptop computers, using, selling, offering for sale and/or importing in the

22

United States, Elan’s touch-sensitive input devices or touchpads employing the methods and

23

apparatuses claimed in the ‘659 patent through their processing of touches, including but not

24

limited to the Smart-Pad product. Upon information and belief, Elan induces that infringement

25

through its intentional marketing, sale and/or support, including technical support, of such devices

26

in the United States, including through EITG, and through the intentional design, marketing,

27

manufacture, sale and/or support, including technical support, of such devices abroad to induce

28

direct infringement in the United States.

Upon information and belief, Elan’s inducement

APPLE’S SECOND AMENDED ANSWER, DEFENSES AND
COUNTERCLAIMS

Case No. C-09-01531 RS

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includes, without limitation, active encouragement of the use, sale, offer for sale and/or

2

importation in the United States of such devices to enable processing of touches that infringe the

3

‘659 patent on such devices, including through the promotion and provision of touchpads and

4

related controllers and marketing literature that induces direct infringement. Upon information

5

and belief, Elan has known or should have known that these actions would cause direct

6

infringement of the ‘659 patent and did so with specific intent to encourage direct infringement.

7

70.

Apple has suffered, and will continue to suffer, irreparable injury as a

8

result of Elan’s infringement. Pursuant to 35 U.S.C. §§ 283 and 284, Apple is entitled to

9

damages for infringement and to a permanent injunction against further infringement.

10
11

71.

This case is exceptional, and therefore, Apple is entitled to attorneys’ fees

pursuant to 35 U.S.C. § 285.

12

FIFTH COUNTERCLAIM – PATENT INFRINGEMENT

13

’929 PATENT

14
15
16

72.

Apple incorporates herein by reference the allegations of paragraphs 1 - 71

of this Answer.
73.

Apple is the owner of the entire right, title and interest in and to U.S. Patent

17

No. 6,933,929 (“the ’929 patent”) entitled “Housing For A Computing Device,” which was duly

18

and legally issued on August 23, 2005 in the name of inventor Chris J. Novak. A copy of the

19

’929 patent is attached as Exhibit C hereto.

20
21
22

74.

The ‘929 patent claims an improved housing for a computing device,

including a touchpad system.
75.

Upon information and belief, Elan’s touch-sensitive input devices or

23

touchpads in touchpad systems and touchpad housing assemblies, including but not limited to the

24

Smart-Pad assembly employed in laptop computers, employ the apparatus claimed in the ‘929

25

patent because they comprise a touchpad housing with a recess, a touchpad that sits in the recess

26

and a touchpad label (covering) over the touchpad and housing that is substantially permanently

27

attached to the housing to secure the touchpad within the cavity formed by the recess. The recess

28

in the Smart-Pad assembly coincides with the shape of the touchpad and has substantially the
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COUNTERCLAIMS

Case No. C-09-01531 RS

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same depth as the thickness of the touchpad. The recess also surrounds an opening that allows

2

wires from the touchpad to be provided internal to the touchpad housing.

3

76.

Laptop computers employing Elan’s touch-sensitive input devices or

4

touchpads and related components employing the methods and/or apparatuses claimed in the ‘218

5

patent, including but not limited to the Smart-Pad assembly are imported into, offered for sale,

6

sold and used in the United States.

7

77.

Elan has had actual knowledge of the ‘929 patent since at least July 1,

78.

Upon information and belief, Elan has been and is currently indirectly

8
9

2009.

10

infringing, in violation of 35 U.S.C. § 271, the ’929 patent. Upon information and belief, the

11

‘929 patent is directly infringed by, without limitation, manufacturers and others in the

12

distribution channel of laptop computers, using, selling, offering for sale and/or importing in the

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United States, Elan’s touch-sensitive input devices or touchpads in touchpad systems and

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touchpad housing assemblies claimed in the ‘929 patent, including but not limited to the Smart-

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Pad assembly. Pursuant to Rule 11(b)(3), it is likely that reasonable opportunity for further

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investigation or discovery will confirm that Elan induces that infringement through its intentional

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marketing, sale and support of such devices in the United States, including through EITG, and

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through the intentional design, marketing, manufacture, sale and support of such devices abroad

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to induce direct infringement in the United States. Pursuant to Rule 11(b)(3), it likely that

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reasonable opportunity for further investigation or discovery will confirm that Elan’s inducement

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includes active encouragement, participation and/or assistance in the design and manufacture of

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touchpad systems or housing assemblies that infringe the ‘929 patent as part of its activities in

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conjunction with the manufacture, marketing, sale and support of touchpads employed in such

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systems or housing assemblies in laptop computers. Pursuant to Rule 11(b)(3), it likely that

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reasonable opportunity for further investigation or discovery will confirm that Elan has known or

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should have known that these actions would cause direct infringement of the ‘929 patent and did

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so with specific intent to encourage direct infringement.

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Case5:09-cv-01531-RS Document43

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79.

Filed10/05/09 Page14 of 15

Apple has suffered, and will continue to suffer, irreparable injury as a

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result of Elan’s infringement. Pursuant to 35 U.S.C. §§ 283 and 284, Apple is entitled to

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damages for infringement and to a permanent injunction against further infringement.

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5

80.

This case is exceptional, and therefore, Apple is entitled to attorneys’ fees

pursuant to 35 U.S.C. § 285.

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DEMAND FOR JURY TRIAL
81.

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Apple hereby

demands a trial by jury on all issues so triable.

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PRAYER FOR RELIEF
WHEREFORE, Apple prays for judgment as follows on Elan’s Complaint and on
Apple’s Answer, Affirmative Defenses and Counterclaims:
A.

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nothing;
B.

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C.

For entry of an Order declaring each and every claim of the ’352 and ’353
patents invalid and not infringed by Apple;

D.

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That judgment be entered in favor of Apple against Elan on Elan’s
Complaint;

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That Elan’s Complaint be dismissed with prejudice and that Elan take

For entry of an Order declaring that Elan has infringed, directly or
indirectly, the ’218, ’659 and ’929 patents under 35 U.S.C. § 271;

E.

That Elan, its officers, agents, servants, employees, attorneys and those

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persons in active concert or participation with any of them, be preliminarily

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and permanently restrained and enjoined from directly and indirectly

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infringing the ’218, ’659 and ’929 patents;

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F.

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That Elan be required to pay damages to compensate Apple for Elan’s
infringement pursuant to 35 U.S.C. § 284;

G.

An assessment of pre-judgment and post-judgment interest and costs
against Elan, together with an award of such interest and costs;

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H.

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That pursuant to 35 U.S.C. § 285 and/or other applicable laws, Elan’s

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conduct be found to render this an exceptional case and that Apple be

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awarded its attorneys’ fees incurred in connection with this action;

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I.

That Elan be required to pay Apple’s costs of suit;

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J.

That Apple be awarded such other and further relief as the court may deem

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just and proper.

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Dated: October 5, 2009

WEIL, GOTSHAL & MANGES LLP

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By:

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/s/ Edward R. Reines
EDWARD R. REINES
[e-mail]
Attorneys for Defendant and
Counterclaim Plaintiff Apple, Inc.

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