Elan Microelectronics Corporation v. Apple, Inc.

Filing 15

FIRST AMENDED ANSWER to 1 Complaint, Affirmative Defenses and , COUNTERCLAIMS against Elan Microelectronics Corporation'S Complaint for Patient Infringement byApple, Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C) (Reines, Edward) (Filed on 7/1/2009) Text modified on 7/1/2009 (bw, COURT STAFF).

Elan Microelectronics Corporation v. Apple, Inc.

Doc. 15

Case5:09-cv-01531-RS Document15

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1 MATTHEW D. POWERS (Bar No. 104795) matthew. powers (f weil.com 2 EDW ARD R. REINS (Bar No. 135960) edward.reines (f weil.com

3 SONALN. MEHTA (BarNo. 222086)
sonal.mehta (f weil.com

4 WEIL, GOTSHAL & MANGES LLP
Silicon Valley Office
5 201 Redwood Shores Parkway

Redwood Shores, CA 94065
6 Telephone: [phone]

Facsimile: [phone]
7

Attorneys for Apple, Inc.
8

9 10
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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION ELAN MICROELECTRONICS CORPORATION,
Case No. C-09-01531 RS
APPLE, INC.' S FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO ELAN MICROELECTRONICS CORPORATION'S COMPLAINT FOR

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13

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Plaintiff and Counterclaim Defendant,
v.

16 APPLE, INC.,
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18

PATENT ININGEMENT
Hon. Richard Seeborg Defendant and Counterclaim Plaintiff.
Demand for Jury Trial

19

20 Defendant Apple, Inc. ("Apple") by and through its undersigned counsel, hereby
21 responds to Plaintiff Elan Microelectronics Corporation's ("Elan") Complaint for Patent

n4 L 2 ANSWER
22 Infringement ("Complaint") as follows:

25 PARTIES
26
1.

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

27 the truth of the statements in Paragraph 1 of the Complaint, and, on that basis, denies those
28 allegations.
APPLE, FIRST AMENDED ANSWER, AFIRMATIVE DEFENSES, AND COUNTERCLAIMS
CASE NO. C-09-01531 RS

Dockets.Justia.com

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1

2.

Apple admits that U.S. Patent No. 5,825,352 ("the '352 patent") states on

2 its face that it is entithid "Multiple Finger Contact Sending Method for Emulating Mouse Buttons

3 and Mouse Operations on a Touch Sensor Pad." Apple is without knowledge or information
4 sufficient to form a belief as to the truth of the allegations concerning Elan's purported ownership

5 of all right and title to the '352 patent and, therefore, denies those allegations. Except as so
6 expressly admitted herein, Apple denies the allegations in Paragraph 2 of the Complaint.

7

3.

Apple admits that U.S. Patent No. 7,274,353 ("the '353 patent") states on

8 its face that it is entitled "Capacitive Touchpad Integrated with Key and Handwriting Functions."

9 Apple is without knowledge or information sufficient to form a belief as to the truth of the
10 allegations concerning Elan's purported ownership of all right and title to the '353 patent and,

11 therefore, denies those allegations. Except as so expressly admitted herein, Apple denies the
12 allegations in Paragraph 3 of the Complaint.
13

4.

Apple admits the allegations in Paragraph 4 of the Complaint.

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15

JURISDICTION AND VENUE
5.

Apple admits that Elan's Complaint purports to be an action that arses

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

17 liability on its own behalf for the reasons stated herein. Apple admits that this Court has subject
18 matter jurisdiction under 28 U.S.c. §§ 1331 and 1338(a). Except as so expressly admitted herein,
19 Apple denies the allegations in Paragraph 5 of the Complaint.

20

6.

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

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

22 district and specifically denies any wrongdoing, infringement, inducement of infringement or
23 contribution to infringement. Apple admits that venue is proper as to Apple in this District
24 pursuant to 28 U.S.C. §§ 1391(b) and 1400(b). Except as so expressly admitted herein, Apple
25 denies the allegations in Paragraph 6 of the Complaint.

26 THE DISPUTE
27
28
7.
8.

Apple denies the allegations in Paragraph 7 of the Complaint. Apple denies the allegations in Paragraph 8 of the Complaint.
CASE

APPLE. FIRST AMENDED ANSWER, AFFIRMATIVE
DEFENSES, AND COUNTERCLAIMS

NO. C-09-01531 RS

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9.

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

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

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

4 iPhone mobile phones and iPod Touch digital medial player devices, which do or have included
5 touch-sensitive input devices. Except as so expressly admitted herein, Apple denies the

7 FIRST CLAIM
8

6 allegations in Paragraph 9 of the Complaint.

10.

Apple refers to and incorporates herein its answers as provided II

9 Paragraphs 1-9 above.

10
11

11.

Apple denies the allegations in Paragraph 11 of the Complaint. Apple denies the allegations in Paragraph 12 of the Complaint.
Apple denies the.

12.
13. 14. 15.

12
13

allegations in Paragraph 13 of the Complaint.

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.

SECOND CLAIM
16.

16

Apple refers to and incorporates herein its answers as provided II

17 Paragraphs 1-15 above.

18 19

17. 18. 19.

Apple denies the allegations in Paragraph 17 of the Complaint.
Apple denies the allegations in Paragraph 18 of the Complaint.
Apple denies the allegations in Paragraph 19 of the Complaint.

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21

20. 21.

Apple denies the allegations in Paragraph 20 of the Complaint. Apple denies the allegations in Paragraph 21 of the Complaint.

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23

PRA YER FOR RELIEF
22.

24

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

27 damages, compensatory damages, enhanced damages, an accounting, injunctive relief, costs, fees,
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APPLE, FIRST AMENDED ANSWER, AFFIRMATIVE
DEFENSES, AND COUNTERCLAIMS
CASE

NO. C-09-01531 RS

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1 interest, or any other type of recovery from Apple. Elan's prayer should, therefore, be denied in
2 its entirety and with prejudice, and Elan should take nothing.

3 DEMAND FOR JURY TRIAL
4
5

23.

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

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

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7
8

FIRST DEFENSE - NON-INFRINGEMENT
24.

9

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

10 claims of the '352 and '353 patents, either literally or under the doctrine of equivalents, wilfully

11 or otherwise.

12 SECOND DEFENSE - INVALIDITY
13

25.

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

14 bared because each and every claim of the '352 and '353 patents is invalid for failure to comply

15 with the requirements of Title 35 of the United States Code, including but not limited to
16 Sections 101, 102, 103, and/or 112.

17 THIRD DEFENSE - LACHES
18

26.

Elan's claims for relief are bared in whole or in par by the doctrine of

19 laches.

20 FOURTH DEFENSE - ESTOPPEL
21

27.

Elan's claims for relief are bared in whole or in part by the doctrine of

22 equitable estoppel.

23 FIFTH DEFENSE - STATUTE OF LIMITATIONS
24
28.

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

25 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, FIST AMENDED ANSWER. AFFIRMATIVE
DEFENSES, AND COUNTERCLAIMS
CASE NO. C-09-0IS31 RS

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1

SIXTH DEFENSE - NOTICE
29.

2

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

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

4 Elan is bared by 35 U.S.C. § 287.

5 SEVENTH DEFENSE - NO INJUNCTIVE RELIEF
6

30.

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

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

9 COUNTERCLAIMS III. 10
12 as follows:

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

11 Counterclaim-Plaintiff Apple counterclaims against Counterclaim-Defendant Elan

13 PARTIES
14

31.

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

15 and having a principal place of business at 1 Infinite Loop, Cupertino, CA 95014.
16

32.

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

17 R.O.C. with a principal place of business at No. 12, Innovation 1st Road, Science Based
18 Industrial Park, Hsinchu Taiwan R.O.C.

19 JURSDICTION AND VENU
20
33.

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

21 Court has subject matter jurisdiction over these counterclaims pursuant to 28 U.S.c. §§ 1331,
22 1338(a), 2201, and 2202.

23

34.

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

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

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

26 infringing conduct in this district, Elan's bringing of this lawsuit in this district, and, on
27 information and belief, Elan's presence and conduct of business in this district through ELAN
28 Information Technology Group, operating in Cupertino, California 95015.
APPLE, FIRST AMENDED ANSWER, AFFMATIVE
DEFENSES, AND COUNTERCLAIMS
CASE NO. C-09-01S31 RS

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35.

Venue is proper in this judicial district under 28 U.S.c. § 1391.

2
3

FIRST COUNTERCLAIM - DE

CLARA TORY JUDGMENT
'352

PATENT

4

36.

Apple incorporates herein by reference the allegations of paragraphs 1 - 35

5 of this Answer, Affirmative Defenses and Counterclaims ("Answer").

6

37.

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

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

8 and 2202.
9

38.

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

10 and/or indirectly infringing the '352 patent by the sale of at least its iBook, PowerBook,
11 MacBook, iPhone and iPod Touch products.
12

39.

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

13 allegations of Elan's Complaint and Apple's Answer as to

14 '352 patent.
15

40.

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

16 through 30 above.

17

41.

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

18 infringed.

20 '353 PATENT
21

19 SECOND COUNTERCLAIM - DECLARATORY JUDGMENT
42.

Apple incorporates herein by reference the allegations of paragraphs 1 - 41

22 of this Answer.
23

43.

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

24 States, Title 35 of the United States Code, and the Declaratory Judgments Act, 28 U.S.C. §§ 2201
25 and 2202.

26

44.

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

27 and/or indirectly infringing the '353 patent by the sale of its iPhone and iPod Touch products.
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DEFENSES, AND COUNTERCLAIMS
CASE NO. C-09-01531 RS

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1

45.

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

2 allegations of Elan's Complaint and Apple's Answer as to the validity and infringement of the
3 '353 patent.

4

46.

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

5 through 30 above.

6

47.

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

7 infringed.

9 '218 PATENT
10

8 THIRD COUNTERCLAIM-PATENT INFRINGEMENT
48.

Apple incorporates herein by reference the allegations of paragraphs 1 - 47

11 of this Answer.
12

49.

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 Touch14 Sensitive Cursor-Controlling Input Device To Generate Button Values," which was duly and
15 legally issued on June 9, 1998 in the name of inventors Mark A. Della Bona, Jonathan Dorfman

16 and Jay F. Hamlin. A copy of the' 218 patent is attached as Exhibit A hereto.
17

50.

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

18 indirectly, infringing, in violation of 35 U.S.C. § 271, the '218 patent through its design,
19 marketing, manufacture and/or sale of touch-sensitive input devices or touchpads, including but

20 not limited to the Smar-Pad.
21

51.

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

22 result of Elan's infringement. Pursuant to 35 U.S.c. §§ 283 and 284, Apple is entitled to
23 damages for infringement and to a permanent injunction against further infringement.

24

52.

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

25 pursuant to 35 U.S.C. § 285.
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CASE NO. C-09-0I531 RS

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FOURTH COUNTERCLAIM - PATENT INFRINGEMENT
'659

2
3

PATENT

53.

Apple incorporates herein by reference the allegations of paragraphs 1 - 52

4 of this Answer.

5

54.

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

6 No. 7,495,659 ("the '659 patent") entitled "Touch Pad For Handheld Device," which was duly
7 and legally issued on February 24, 2009 in the name of inventors Greg Marrott, Guy Bar-Nahum,

8 and Steven Bollinger. A copy of the '659 patent is attached as Exhibit B hereto.
9
55.

Pursuant to Rule 11(b)(3) and upon information and belief, it is likely that

10 reasonable opportunity for further investigation or discovery wil confirm that Elan has been and

11 is currently, directly and/or indirectly, infringing, in violation of 35 U.S.C. § 271, the '659 patent

12 through its design, marketing, manufacture and/or sale of touch-sensitive input devices or
13 touchpads, including but not limited to the Smar-Pad.
14

56.

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

15 result of Elan's infringement. Pursuant to 35 U.S.C. §§ 283 and 284, Apple is entitled to
16 damages for infringement and to a permanent injunction against further infringement.
17

57.

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

18 pursuant to 35 U.S.C. § 285.

20 '929 PATENT
21

19 FIFTH COUNTERCLAIM - PATENT INFRINGEMENT
58.

Apple incorporates herein by reference the allegations of paragraphs 1 - 57

22 of this Answer.
23

59.

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

24 No. 6,933,929 ("the '929 patent") entitled "Housing For A Computing Device," which was duly

25 and legally issued on August 23, 2005 in the name of inventor Chris J. Novak. A copy of the
26 '929 patent is attached as Exhibit C hereto.
27

60.

Pursuant to Rule 11(b)(3) and upon information and belief, it is likely that

28 reasonable opportunity for further investigation or discovery wil confirm that Elan has been and
APPLE, FIRST AMENDED ANSWER, AFFMATIVE
DEFENSES, AND COUNTERCLAIMS

CASE NO. C-09-0l531 RS

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1 is currently, directly and/or indirectly, infringing, in violation of 35 U.S.c. § 271, the '929 patent
2 through its design, marketing, manufacture and/or sale of touch-sensitive input devices or
3 touchpads, including but not limited to the Smar-Pad.

4

61.

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

5 result of Elan's infringement. Pursuant to 35 u.S.C. §§ 283 and 284, Apple is entitled to

6 damages for infringement and to a permanent injunction against further infringement.
7

62.

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

8 pursuant to 35 U.S.C. § 285.

9 DEMAND FOR JURY TRIAL
10

63.

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

11 demands a trial by jury on all issues so triable.

12 : PRAYER FOR RELIEF
13 WHEREFORE, Apple prays for judgment as follows on Elan's Complaint and on
14 Apple's Answer, Affirmative Defenses and Counterclaims:

15

A.

That Elan's Complaint be dismissed with prejudice and that Elan take
nothing;

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17 18

B.

That judgment be entered II favor of Apple against Elan on Elan's

Complaint;
C. For entry of an Order declarng each and every claim of the '352 and '353

19

20
21

patents invalid and not infringed by Apple;
D.

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

22
23

E.

That Elan, its officers, agents, servants, employees, attorneys and those
persons in active concert or participation with any of them, be preliminarly
and permanently restrained and enjoined from directly and indirectly
infringing the '218, '659 and '929 patents;

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25

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28
F.

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

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CASE NO. C-09-0I53I RS

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1

G.

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

2
3

H.

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

4
5

conduct be found to render this an exceptional case and that Apple be
awarded its attorneys' fees incurred in connection with this action;
i.
J.

6

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

7
8

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

9

10 Dated: July 1,2009
11

WEIL, GOTSHAL & MANGES LLP

12
13

By:

lsi Edward R. Reines

EDW ARD R. REINS edward.reines (f weil.com

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15

Attorneys for Defendant and Counterclaim Plaintiff Apple, Inc.

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APPLE, FIRST AMENDED ANSWER, AFFIRMATIVE
DEFENSES, AND COUNTERCLAIMS

CASE NO. C-09-0I53I RS

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