Elan Microelectronics Corporation v. Apple, Inc.

Filing 44

ANSWER, Affirmative Defenses and COUNTERCLAIMS in Reponse to Apple, Inc's Second Amended Answer, Affirmative Defenses and Counterclaims re 43 by Elan Microelectronics Corporation. (DeBruine, Sean) (Filed on 10/20/2009) Modified on 10/21/2009 (bw, COURT STAFF).

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Elan Microelectronics Corporation v. Apple, Inc. Doc. 44 Case5:09-cv-01531-RS Document44 Filed10/20/09 Page1 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Yitai Hu (SBN 248085) (yitai. hu@alston.com) Sean P. DeBruine (SBN 168071) (sean.debruine@alston.com) S.H. Michael Kim (SBN 203491) (michael.kim@alston.com) C. August ine Rakow (SBN 254585) (augie.rakow@alston.com) ALSTON + BIRD LLP Two Palo Alto Square 3000 El Camino Real, Suite 400 Palo Alto, California 94306 Telephone: 650-838-2000 Facsimile: 650-838-2001 T. Hunter Jefferson (hunter.jefferson@alston.com) (admitted pro hac vice) ALSTON + BIRD LLP One At lant ic Center 1201 West Peachtree Street At lanta, Georgia 30309-3424 Telephone: 404-881-7333 Facsimile: 404-253-8863 Attorneys for Plaint iff and Counterdefendant ELAN MICROELECTRONICS CORPORATION UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION ELAN MICROELECTRONICS CORPORATION, Plaint iff and Counterclaim Defendant, v. APPLE, INC., Defendant and Counterclaim Plaint iff. ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. C-09-01531 RS ELAN MICROELECTRONICS CORPORATION'S ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS IN RESPONSE TO APPLE, INC.'S SECOND AMENDED ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS The Honorable Richard Seeborg Demand for Jury Trial ______________________________________________________________________________________________________________________________ ELAN'S ANSWER, AFFI RMATI VE DEFEN SES AND CASE NO.C -09 -01531 RS COUNTERCLAI MS IN RESPONSE TO APPLE'S SECOND AMENDED AN SWER, AFFIRMATI VE DEFEN SES AND CO UNTERCLAIMS Dockets.Justia.com Case5:09-cv-01531-RS Document44 Filed10/20/09 Page2 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Plaint iff Elan Microelectronics Corporation ("Elan") by and through its undersigned counsel, hereby answers the affirmat ive counterclaims raised in Defendant Apple, Inc.'s ("Apple") Second Amended Answer, Affirmat ive Defenses and Counterclaims ("Second Amended Answer"), Dkt. 43. I. ANSWER TO APPLE'S COUNTERCLAIMS Elan responds to Apple's counterclaims as fo llows: 1-30. Apple's responses to the allegat ions in Elan's Complaint require no response from Elan. PARTIES 31. Elan admits the allegat ions in paragraph 31. 32. Elan admits the allegat ions in paragraph 32. Jurisdiction and Venue 33. Elan admits the allegat ions in paragraph 33. 34. Elan does not dispute personal jurisdict ion in this district over Apple's counterclaims in Elan's lawsuit brought in this district. Elan denies the remaining allegat ions in paragraph 34. 35. Elan does not dispute that venue is proper in this district. The Dispute 36. Elan admits that it designs, markets, manufactures and sells touch-sensit ive input devices or touchpads, including the Smart-Pad product, that these products are sold in the United States by third parties not under Elan's control. Elan denies the remaining allegat ions in paragraph 36. 37. Elan admits that laptop computers including Elan touchpads are available for purchase in the United States, including through Amazon.com and Best Buy. Elan denies the remaining allegat ions in paragraph 37. 38. Elan denies the allegat ions in paragraph 38. 39. Elan admits that the Nov. 29, 2005 Order in Case No. 05-CV-05385 JW which Apple cites in paragraph 39 found that the plaint iff in that case made a prima facie showing of jurisdict ion based upon the factual allegat ions recited in paragraph 39. Elan denies that any of those alleged act ivit ies by Elan Informat ion Techno logy Group ("EITG") related to any "touch-sensit ive input devices or touchpads and related components," denies that EITG markets, sells or supports any such products and denies that ______________________________________________________________________________________________________________________________ ELAN'S ANSWER, AFFI RMATI VE DEFEN SES AND 1 CASE NO.C -09 -01531 RS COUNTERCLAI MS IN RESPONSE TO APPLE'S SECOND AMENDED AN SWER, AFFIRMATI VE DEFEN SES AND CO UNTERCLAIMS Case5:09-cv-01531-RS Document44 Filed10/20/09 Page3 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Elan direct ly sells or supports any such products directly in the United States. First Counterclaim for Declaratory Judgment `352 Patent 40. Elan incorporates herein by reference its answers above. 41. Elan admits the allegat ions in paragraph 41. 42. Elan admits the allegat ions in paragraph 42. 43. Elan admits the allegat ions in paragraph 43. 44. Elan denies the allegat ions in paragraph 44. 45. Elan denies the allegat ions in paragraph 45. Second Counterclaim for Declaratory Judgment `353 Patent 46. Elan incorporates herein by reference its answers above. 47. Elan admits the allegat ions in paragraph 47. 48. Elan admits the allegat ions in paragraph 48. 49. Elan admits the allegat ions in paragraph 49. 50. Elan denies the allegat ions in paragraph 50. 51. Elan denies the allegat ions in paragraph 51. Third Counterclaim for Patent Infringement `218 Patent 52. Elan incorporates herein by reference its answers above. 53. Elan admits that information including the title, issue date and named inventors alleged in paragraph 53 appear on the face of U.S. Patent No. 5,764,218 ("the `218 patent"). Elan is wit hout knowledge or informat ion sufficient to form a belief as to the truth of the informat ion or the remaining allegat ions in the paragraph, and on that basis denies them. 54. Elan denies the allegat ions in paragraph 54. The scope of the `218 patent is defined by the patent claims themselves. 55. Elan denies the allegat ions in paragraph 55. 56. Elan denies the allegat ions in paragraph 56. 57. Elan denies the allegat ions in paragraph 57. 58. Elan admits having actual knowledge of the `218 patent upon receipt of Apple's First ______________________________________________________________________________________________________________________________ ELAN'S ANSWER, AFFI RMATI VE DEFEN SES AND 2 CASE NO.C -09 -01531 RS COUNTERCLAI MS IN RESPONSE TO APPLE'S SECOND AMENDED AN SWER, AFFIRMATI VE DEFEN SES AND CO UNTERCLAIMS Case5:09-cv-01531-RS Document44 Filed10/20/09 Page4 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Amended Answer, Affirmat ive Defenses and Counterclaims ("First Amended Answer"), Dkt. 15, on July 1, 2009. Elan denies having actual knowledge of the patent before that date. 59. Elan denies the allegat ions in paragraph 59. 60. Elan denies the allegat ions in paragraph 60. 61. Elan denies the allegat ions in paragraph 61. Fourth Counterclaim for Patent Infringement `659 Patent 62. Elan incorporates herein by reference its answers above. 63. Elan admits that information including the title, issue date and named inventors alleged in paragraph 63 appear on the face of U.S. Patent No. 7,495,659 ("the `659 patent"). Elan is wit hout knowledge or informat ion sufficient to form a belief as to the truth of the informat ion or the remaining allegat ions in the paragraph, and on that basis denies the same. 64. Elan denies the allegat ions in paragraph 64. The scope of the `659 patent is defined by the patent claims themselves. 65. Elan denies the allegat ions in paragraph 65. 66. Elan denies the allegat ions in paragraph 66. 67. Elan denies the allegat ions in paragraph 67. 68. Elan admits having actual knowledge of the `659 patent since receiving Apple's First Amended Answer on July 1, 2009. Elan denies having actual knowledge of the patent before that date. 69. Elan denies the allegat ions in paragraph 69. 70. Elan denies the allegat ions in paragraph 70. 71. Elan denies the allegat ions in paragraph 71. Fifth Counterclaim for Patent Infringement `929 Patent 72. Elan incorporates herein by reference its answers above. 73. Elan admits that information including the title, issue date and named inventors alleged in paragraph 73 appear on the face of U.S. Patent No. 6,933,929 ("the `929 patent"). Elan is wit hout knowledge or informat ion sufficient to form a belief as to the truth of the informat ion or the remaining allegat ions in the paragraph, and on that basis denies the same. ______________________________________________________________________________________________________________________________ ELAN'S ANSWER, AFFI RMATI VE DEFEN SES AND 3 CASE NO.C -09 -01531 RS COUNTERCLAI MS IN RESPONSE TO APPLE'S SECOND AMENDED AN SWER, AFFIRMATI VE DEFEN SES AND CO UNTERCLAIMS Case5:09-cv-01531-RS Document44 Filed10/20/09 Page5 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 74. Elan denies the allegat ions in paragraph 74. The scope of the `929 patent is defined by the patent claims themselves. 75. Elan denies the allegat ions in paragraph 75. 76. Elan denies the allegat ions in paragraph 76. 77. Elan admits having actual knowledge of the `929 patent since receiving Apple's First Amended Answer on July 1, 2009. Elan denies having actual knowledge of the patent before that date. 78. Elan denies the allegat ions in paragraph 78. 79. Elan denies the allegat ions in paragraph 79. 80. Elan denies the allegat ions in paragraph 80. II. ELAN'S AFFIRMATIVE DEFENSES First Affirmative Defense Non-Infringement 81. Elan does not infringe and has not direct ly or indirectly infringed any claims o f the `218, `659 or `929 patents ("Apple Patents"), either literally or under the doctrine of equivalents, willfully or otherwise. Second Affirmative Defense Invalidity 82. Apple's claims for infringement of the Apple Patents are barred because each and every claim of the Apple Patents is invalid for failure to comply with the requirements of Tit le 35 of the United States Code, including but not limited to Sections 101, 102, 103 and/or 112. Third Affirmative Defense Laches 83. Apple's claims for relief are barred in who le or in part by the doctrine of laches. Fourth Affirmative Defense Statute of Limitations 84. To the extent Apple seeks damages for alleged infringement more than six years before the filing of this act ion, the relief sought by Apple is barred by 35 U.S.C. 286. Fifth Affirmative Defense Notice 85. To the extent Apple seeks damages for alleged infringement before giving actual or constructive notice of the Apple Patents, the relief sought by Apple is barred by 35 U.S.C. 287. ______________________________________________________________________________________________________________________________ ELAN'S ANSWER, AFFI RMATI VE DEFEN SES AND 4 CASE NO.C -09 -01531 RS COUNTERCLAI MS IN RESPONSE TO APPLE'S SECOND AMENDED AN SWER, AFFIRMATI VE DEFEN SES AND CO UNTERCLAIMS Case5:09-cv-01531-RS Document44 Filed10/20/09 Page6 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Sixth Affirmative Defense No Injunctive Relief 86. To the extent Apple seeks injunctive relief for alleged infringement, the relief sought by Apple is unavailable because any alleged injury to Apple is not immediate or irreparable and because Apple has an adequate remedy at law for any alleged injury. III. ELAN'S COUNTERCLAIMS First Counterclaim for Declaratory Judgment `218 Patent 87. Elan incorporates herein by reference its statements above. 88. Elan asserts this counterclaim against Apple pursuant to the patent laws of the United States, Tit le 35 of the United States Code, and the Declaratory Judgments Act, 28 U.S.C. 2201 and 2202. 89. In its Second Amended Answer, Apple alleges that Elan is now and has been directly and/or indirect ly infringing the `218 patent by the sale of at least its Smart-Pad product. 90. An actual controversy exists between Elan and Apple by virtue of the allegat ions in Apple's Second Amended Answer and Elan's Answer in response thereto, as to the validit y and infringement of the `218 patent. 91. The `218 patent is invalid and not infringed, as set forth in paragraphs 81 through 86 above. 92. Elan is ent it led to a judgment that the `218 patent is invalid and not infringed. Second Counterclaim for Declaratory Judgment `659 Patent 93. Elan incorporates herein by reference its statements above. 94. Elan asserts this counterclaim against Apple pursuant to the patent laws of the United States, Tit le 35 of the United States Code, and the Declaratory Judgments Act, 28 U.S.C. 2201 and 2202. 95. In its Second Amended Answer, Apple alleges that Elan is now and has been directly and/or indirect ly infringing the `659 patent by the sale of at least its Smart-Pad product. 96. An actual controversy exists between Elan and Apple by virtue of the allegat ions in Apple's Second Amended Answer and Elan's Answer in response thereto, as to the validit y and infringement of the `659 patent. 97. The `659 patent is invalid and not infringed, as set forth in paragraphs 81 through 86 above. 98. Elan is ent it led to judgment that the `659 patent is invalid and not infringed. ______________________________________________________________________________________________________________________________ ELAN'S ANSWER, AFFI RMATI VE DEFEN SES AND 5 CASE NO.C -09 -01531 RS COUNTERCLAI MS IN RESPONSE TO APPLE'S SECOND AMENDED AN SWER, AFFIRMATI VE DEFEN SES AND CO UNTERCLAIMS Case5:09-cv-01531-RS Document44 Filed10/20/09 Page7 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Third Counterclaim for Declaratory Judgment `929 Patent 99. Elan incorporates herein by reference its statements above. 100. Elan asserts this counterclaim against Apple pursuant to the patent laws of the United States, Tit le 35 of the United States Code, and the Declaratory Judgments Act, 28 U.S.C. 2201 and 2202. 101. In its Second Amended Answer, Apple alleges that Elan is now and has been directly and/or indirect ly infringing the `929 patent by the sale of at least the Smart-Pad assembly emplo yed in laptop computers. 102. An actual controversy exists between Elan and Apple by virtue of the allegat ions in Apple's Second Amended Answer and Elan's Answer in response thereto, as to the validit y and infringement of the `929 patent. 103. The `929 patent is invalid and not infringed, as set forth in paragraphs 81 through 86 above. 104. Elan is ent it led to judgment that the `929 patent is invalid and not infringed. IV. DEMAND FOR JURY TRIAL 105. Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Elan hereby demands a trial by jury on all issues so triable. V. PRAYER FOR RELIEF WHEREFORE, in addit io n to the relief Elan seeks in its Co mplaint, Elan further prays for judgment: A. that Apple's counterclaims be dismissed with prejudice; B. that judgment be entered in favor of Elan and against Apple for each and every counterclaim asserted by Apple; C. for entry of an Order declaring each and every claim o f the Apple Patents invalid and not infringed by Elan; D. an assessment of costs of defending against the counterclaims, together with an award of such interests and costs; E. that pursuant to 35 U.S.C. 285 and/or other applicable laws, Apple's conduct be found to ______________________________________________________________________________________________________________________________ ELAN'S ANSWER, AFFI RMATI VE DEFEN SES AND 6 CASE NO.C -09 -01531 RS COUNTERCLAI MS IN RESPONSE TO APPLE'S SECOND AMENDED AN SWER, AFFIRMATI VE DEFEN SES AND CO UNTERCLAIMS Case5:09-cv-01531-RS Document44 Filed10/20/09 Page8 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Dated: render this an except ional case and that Elan be awarded its attorneys' fees incurred in connection wit h the counterclaims; and F. for such other and further relief as the Court deems just and proper. October 20, 2009 Respect fully submitted, ALSTON + BIRD LLP By: /s/ Sean P. DeBruine Attorneys for Plaint iff and Counterdefendant ELAN MICROELECTRONICS CORPORATION ______________________________________________________________________________________________________________________________ ELAN'S ANSWER, AFFI RMATI VE DEFEN SES AND 7 CASE NO.C -09 -01531 RS COUNTERCLAI MS IN RESPONSE TO APPLE'S SECOND AMENDED AN SWER, AFFIRMATI VE DEFEN SES AND CO UNTERCLAIMS

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