Google Inc. v. Rockstar Consortium US LP et al

Filing 134

MOTION for Issuance of Letters Rogatory to the Superior Court of Justice of Ontario, Canada for Nortel Networks Corporation, Jean-Pierre Fortin, Angela de Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian Cruickshank, and John Eric Lumsden filed by Google Inc.. (Attachments: # 1 Exhibit A to Google's Notice of Unopposed Motion and Motion for Issuance of Letter Rogatory, # 2 Declaration of Kristin J. Madigan In Support of Google's Unopposed Motion for Issuance of Letter Rogatory, # 3 Exhibit 1, # 4 Exhibit 2, # 5 Exhibit 3, # 6 Exhibit 4, # 7 Exhibit 5, # 8 Exhibit 6, # 9 Exhibit 7, # 10 Exhibit 8, # 11 Exhibit 9, # 12 Exhibit 10, # 13 Exhibit 11, # 14 Exhibit 12, # 15 Exhibit 13, # 16 Exhibit 14, # 17 Exhibit 15, # 18 Exhibit 16, # 19 Exhibit 17, # 20 Exhibit 18, # 21 Exhibit 19, # 22 Exhibit 20, # 23 Exhibit 21, # 24 Proposed Order)(Curran, Patrick) (Filed on 9/29/2014) Modified on 9/30/2014 (cpS, COURT STAFF).

EXHIBIT 10

Case4:13-cv-05933-CW Document73 Filed05/27/14 Page1 of 22

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Cal. Bar No. 170151)
Sean Pak (Cal. Bar No. 219032)

Matthew S. Warren (Cal. Bar No. 230565)
Kristin J. Madigan (Cal. Bar No. 233436)

[e-mail]
50 California Street, 22nd Floor

San Francisco, California 94111
 [phone]
[phone] facsimile

Attorneys for Plaintiff GOOGLE INC.



UNITED STATES DISTRICT COURT



NORTHERN DISTRICT OF CALIFORNIA



OAKLAND DIVISION


 GOOGLE INC.,

CASE NO. 13-cv-5933-CW



ANSWER OF GOOGLE INC. TO
COUNTERCLAIMS FOR PATENT
INFRINGEMENT OF ROCKSTAR
CONSORTIUM US LP AND
MOBILESTAR TECHNOLOGIES LLC



Plaintiff,
v.

 ROCKSTAR CONSORTIUM US LP and
MOBILESTAR TECHNOLOGIES LLC,

Defendants.


DEMAND FOR JURY TRIAL














Case No. 13-cv-5933-CW
GOOGLE’S ANSWER TO ROCKSTAR’S COUNTERCLAIMS

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1

Google Inc. (“Google”) answers the Counterclaims of Rockstar Consortium US LP and

2 MobileStar Technologies LLC (collectively, “Rockstar”) as follows:
3
4

PARTIES
1.

Google admits that Rockstar Consortium US LP is a limited partnership organized

5 and existing under the laws of Delaware. Rockstar Consortium US LP’s principal place of
6 business is in Ottawa, Canada. Google therefore denies the remaining allegations of this
7 paragraph.
8

2.

Google admits that MobileStar Technologies LLC is a limited liability corporation

9 organized and existing under the laws of Delaware. MobileStar Technologies LLC’s principal
10 place of business is in Ottawa, Canada. Google therefore denies the remaining allegations of this
11 paragraph.
12

3.

Google’s correct name is “Google Inc.” Google otherwise admits the allegations of

13 this paragraph.
14
15

BACKGROUND FACTS
4.

Google admits that after a number of entities filed for bankruptcy protection under

16 the laws of Canada and the United States, the United States Bankruptcy Court for the District of
17 Delaware approved procedures for an auction of a patent portfolio of more than 6,000 patents. In
18 re Nortel Networks Inc., et al., Case No. 09-10138, Docket No. 5935 (July 11, 2011). Google is
19 without knowledge or information sufficient to form a belief as to the truth of the remaining
20 allegations of this paragraph, and therefore denies them.
21

5.

Google admits that one of its subsidiaries participated in the auction

22 approved by the United States Bankruptcy Court for the District of Delaware, and placed bids in
23 that auction. Google denies the remaining allegations of this paragraph.
24

6.

Google admits that, on April 4, 2011, one of its subsidiaries offered to purchase a

25 portfolio of more than 6,000 patents under the supervision of the United States Bankruptcy Court
26 for the District of Delaware. Google denies the remaining allegations of this paragraph.
27

7.

Google admits that one of its subsidiaries participated in the auction approved by

28 the United States Bankruptcy Court for the District of Delaware, and placed bids in that auction.
-1-

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GOOGLE’S ANSWER TO ROCKSTAR’S COUNTERCLAIMS

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1 Google denies the remaining allegations of this paragraph, and specifically denies that it was put
2 on notice, or otherwise aware, of any alleged infringement of the patents Rockstar has asserted in
3 this action.
4

8.

Google admits that one of its subsidiaries participated in the auction approved by

5 the United States Bankruptcy Court for the District of Delaware, and placed a bid of $900,000,000
6 to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google is
7 without knowledge or information sufficient to form a belief as to the truth of whether “a group
8 led by the current shareholders of Rockstar Consortium purchased the portfolio for $4.5 billion,”
9 and therefore denies these allegations of this paragraph. Google admits that its subsidiary placed
10 additional bids and that the winning bid at the auction was $4.5 billion. Google denies the
11 remaining allegations of this paragraph.
12

9.

Google admits that it offers for sale and sells certain devices bearing the “Nexus”

13 brand. Google denies the remaining allegations of this paragraph, and specifically denies that it
14 has committed any acts of infringement.
15

10.

Google admits that devices bearing the “Nexus” brand include the Nexus 5, Nexus

16 7, Nexus 10, and Galaxy Nexus. Google denies the remaining allegations of this paragraph.
17

JURISDICTION AND VENUE

18

11.

Google admits the allegations of this paragraph.

19

12.

This paragraph contains no assertions and therefore requires no response by

20 Google. Nonetheless, Google notes that this Court has already found personal jurisdiction over
21 Rockstar, has already found venue to be proper, and has already denied Rockstar’s motion to
22 transfer this action under 28 U.S.C. § 1404.
23

13.

Google admits that this Court has personal jurisdiction over Google. Google

24 admits that it has conducted business and does conduct business in California. Google admits that
25 its principal place of business is at 1600 Amphitheatre Parkway, Mountain View, California,
26 94043. Google admits that it offers for sale and sells in the United States and in this District
27 certain of Google’s Nexus devices. Google denies the remaining allegations in this paragraph, and
28 specifically denies that it has committed any acts of infringement.
-2-

Case No. 13-cv-5933-CW
GOOGLE’S ANSWER TO ROCKSTAR’S COUNTERCLAIMS

Case4:13-cv-05933-CW Document73 Filed05/27/14 Page4 of 22

1

14.

Google admits that this Court has personal jurisdiction over Rockstar. Google

2 denies the remaining allegations of this paragraph.
3
4

ASSERTED PATENTS
15.

Google admits that on its face, U.S. Patent No. 5,838,551 (“the ’551 Patent”) is

5 entitled “Electronic package carrying an electronic component and assembly of mother board and
6 electronic package,” identifies Yee-Ning Chan as the named inventor, and bears an issue date of
7 November 17, 1998. Google denies that the ’551 Patent was duly and legally issued. Google is
8 without knowledge or information sufficient to form a belief as to the truth of the remaining
9 allegations of this paragraph, and therefore denies them.
10

16.

Google admits that on its face, U.S. Patent No. 6,037,937 (“the ’937 Patent”) is

11 entitled “Navigation tool for graphical user interface,” identifies Brian Finlay Beaton, Colin
12 Donald Smith, and Bruce Dale Stalkie as the named inventors, bears an issue date of March 14,
13 2000. Google denies that the ’937 Patent was duly and legally issued. Google is without
14 knowledge or information sufficient to form a belief as to the truth of the remaining allegations of
15 this paragraph, and therefore denies them.
16

17.

Google admits that on its face, U.S. Patent No. 6,128,298 (“the ’298 Patent”) is

17 entitled “Internet protocol filter,” identifies Bruce Anthony Wootton and William G. Colvin as the
18 named inventors, and bears an issue date of October 3, 2000. Google denies that the ’298 Patent
19 was duly and legally issued. Google is without knowledge or information sufficient to form a
20 belief as to the truth of the remaining allegations of this paragraph, and therefore denies them.
21

18.

Google admits that on its face, U.S. Patent No. 6,333,973 (“the ’973 Patent”) is

22 entitled “Integrated message center,” identifies Colin Donald Smith and Brian Finlay Beaton as
23 the named inventors, and bears an issue date of December 25, 2001. Google denies that the ’973
24 Patent was duly and legally issued. Google is without knowledge or information sufficient to
25 form a belief as to the truth of the remaining allegations of this paragraph, and therefore denies
26 them.
27

19.

Google admits that on its face, U.S. Patent No. 6,463,131 (“the ’131 Patent”) is

28 entitled “System and method for notifying a user of an incoming communication event,”
-3-

Case No. 13-cv-5933-CW
GOOGLE’S ANSWER TO ROCKSTAR’S COUNTERCLAIMS

Case4:13-cv-05933-CW Document73 Filed05/27/14 Page5 of 22

1 identifies Marilyn French-St. George, Mitch A. Brisebois, and Laura A. Mahan as the named
2 inventors, and bears an issue date of October 8, 2002. Google denies that the ’131 Patent was duly
3 and legally issued. Google is without knowledge or information sufficient to form a belief as to
4 the truth of the remaining allegations of this paragraph, and therefore denies them.
5

20.

Google admits that on its face, U.S. Patent No. 6,765,591 (“the ’591 Patent”) is

6 entitled “Managing a virtual private network,” identifies Matthew W. Poisson, Melissa L.
7 Desroches, and James M. Milillo as the named inventors, and bears an issue date of July 20, 2004.
8 Google denies that the ’591 Patent was duly and legally issued. Google is without knowledge or
9 information sufficient to form a belief as to the truth of the remaining allegations of this
10 paragraph, and therefore denies them.
11

21.

Google admits that on its face, U.S. Patent No. 6,937,572 (“the ’572 Patent”) is

12 entitled “Call trace on a packet switched network,” identifies Brian B. Egan and Milos
13 Vodsedalek as the named inventors, and bears an issue date of August 30, 2005. Google denies
14 that the ’572 Patent was duly and legally issued. Google is without knowledge or information
15 sufficient to form a belief as to the truth of the remaining allegations of this paragraph, and
16 therefore denies them.
17
18

GENERAL ALLEGATIONS
22.

Google denies the allegations in this paragraph, and specifically denies that it has

19 committed any acts of infringement.
20

23.

Google admits that it has conducted business and does conduct business in this

21 District. Google denies the remaining allegations in this paragraph.
22

24.

Google admits that it offers for sale and sells Nexus 10 devices in the United States

23 and in this District, and that some of its employees use some of the features of that device in this
24 District. Google denies the remaining allegations in this paragraph.
25

25.

Google admits that it offers for sale and sells Nexus 5 and Nexus 7 devices in the

26 United States and in this District, and that some of its employees use some of the features of those
27 devices in this District. Google denies the remaining allegations in this paragraph.
28
-4-

Case No. 13-cv-5933-CW
GOOGLE’S ANSWER TO ROCKSTAR’S COUNTERCLAIMS

Case4:13-cv-05933-CW Document73 Filed05/27/14 Page6 of 22

ROCKSTAR’S INFRINGEMENT ALLEGATIONS

1
2

26.

Google incorporates by reference its responses to the prior paragraphs. Google

3 denies the allegations in this paragraph, and specifically denies that it has committed any acts of
4 infringement.
The ’551 Patent

5
6

27.

Google admits that it offers for sale and sells Nexus 5, Nexus 7 and Nexus 10

7 devices in the United States. Google admits that it previously offered for sale and sold Galaxy
8 Nexus devices in the United States. Google admits that it made software for the Galaxy Nexus,
9 and makes software for the Nexus 5, Nexus 7 and Nexus 10. Google admits that some of its
10 employees use some of the features of these devices in this District. Google denies the remaining
11 allegations in this paragraph.
12

28.

Google admits that one of its subsidiaries participated in the auction approved by

13 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
14 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
15 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
16 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
17 asserted in those actions. Google admits that it was aware of the ’551 Patent before filing its
18 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
19 denies that it has committed any acts of infringement, and specifically denies that by April 4,
20 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
21 patents in this action.
22

29.

Google denies the allegations in this paragraph, and specifically denies that it has

23 committed any acts of infringement.
24

30.

Google denies the allegations in this paragraph, and specifically denies that it has

25 committed any acts of infringement.
26

31.

Google admits that one of its subsidiaries participated in the auction approved by

27 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
28 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
-5-

Case No. 13-cv-5933-CW
GOOGLE’S ANSWER TO ROCKSTAR’S COUNTERCLAIMS

Case4:13-cv-05933-CW Document73 Filed05/27/14 Page7 of 22

1 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
2 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
3 asserted in those actions. Google admits that it was aware of the ’551 Patent before filing its
4 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
5 denies that it has committed any acts of infringement, and specifically denies that by April 4,
6 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
7 patents in this action.
8

32.

Google denies the allegations in this paragraph.

9

33.

Google denies the allegations in this paragraph.

10

34.

Google denies the allegations in this paragraph.

11

35.

Google denies the allegations in this paragraph, and specifically denies that it has

12 committed any acts of infringement.
13

36.

Google denies the allegations in this paragraph, and specifically denies that it has

14 committed any acts of infringement.
The ’937 Patent

15
16

37.

Google admits that it offers for sale and sells Nexus 5, Nexus 7 and Nexus 10

17 devices in the United States. Google admits that it previously offered for sale and sold Galaxy
18 Nexus devices in the United States. Google admits that it made software for the Galaxy Nexus,
19 and makes software for the Nexus 5, Nexus 7 and Nexus 10. Google admits that some of its
20 employees use some of the features of these devices in this District. Google denies the remaining
21 allegations in this paragraph.
22

38.

Google admits that one of its subsidiaries participated in the auction approved by

23 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
24 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
25 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
26 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
27 asserted in those actions. Google admits that it was aware of the ’937 Patent before filing its
28 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
-6-

Case No. 13-cv-5933-CW
GOOGLE’S ANSWER TO ROCKSTAR’S COUNTERCLAIMS

Case4:13-cv-05933-CW Document73 Filed05/27/14 Page8 of 22

1 denies that it has committed any acts of infringement, and specifically denies that by April 4,
2 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
3 patents in this action.
4

39.

Google denies the allegations in this paragraph, and specifically denies that it has

5 committed any acts of infringement.
6

40.

Google denies the allegations in this paragraph, and specifically denies that it has

7 committed any acts of infringement.
8

41.

Google denies the allegations in this paragraph, and specifically denies that it has

9 committed any acts of infringement.
10

42.

Google denies the allegations in this paragraph, and specifically denies that it has

11 committed any acts of infringement.
12

43.

Google admits that one of its subsidiaries participated in the auction approved by

13 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
14 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
15 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
16 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
17 asserted in those actions. Google admits that it was aware of the ’937 Patent before filing its
18 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
19 denies that it has committed any acts of infringement, and specifically denies that by April 4,
20 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
21 patents in this action.
22

44.

Google denies the allegations in this paragraph, and specifically denies that it has

23 committed any acts of infringement.
24

45.

Google denies the allegations in this paragraph, and specifically denies that it has

25 committed any acts of infringement.
26

46.

Google denies the allegations in this paragraph, and specifically denies that it has

27 committed any acts of infringement.
28
-7-

Case No. 13-cv-5933-CW
GOOGLE’S ANSWER TO ROCKSTAR’S COUNTERCLAIMS

Case4:13-cv-05933-CW Document73 Filed05/27/14 Page9 of 22

1

47.

Google admits that one of its wholly owned subsidiaries participated in the

2 auction approved by the United States Bankruptcy Court for the District of Delaware, and placed a
3 bid in that auction on April 4, 2011. Google admits that after Rockstar filed its patent
4 infringement actions in the Eastern District of Texas on October 31, 2013 (the “Halloween
5 actions”), Google became aware of the claims Rockstar asserted in those actions. Google admits
6 that it was aware of the ’937 Patent before filing its Complaint in this action. Google denies the
7 remaining allegations in this paragraph, specifically denies that it has committed any acts of
8 infringement, and specifically denies that it was put on notice, or was otherwise aware, at that
9 time, of any alleged infringement of the patents Rockstar has asserted in this action.
10

48.

Google denies the allegations in this paragraph.

11

49.

Google denies the allegations in this paragraph.

12

50.

Google denies the allegations in this paragraph.

13

51.

Google denies the allegations in this paragraph, and specifically denies that it has

14 committed any acts of infringement.
15

52.

Google denies the allegations in this paragraph, and specifically denies that it has

16 committed any acts of infringement.
The ’298 Patent

17
18

53.

Google admits that it offers for sale and sells Nexus 5, Nexus 7 and Nexus 10

19 devices in the United States. Google admits that it previously offered for sale and sold Galaxy
20 Nexus devices in the United States. Google admits that it made software for the Galaxy Nexus,
21 and makes software for the Nexus 5, Nexus 7 and Nexus 10. Google admits that some of its
22 employees use some of the features of these devices in this District. Google denies the remaining
23 allegations in this paragraph.
24

54.

Google admits that one of its subsidiaries participated in the auction approved by

25 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
26 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
27 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
28 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
-8-

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GOOGLE’S ANSWER TO ROCKSTAR’S COUNTERCLAIMS

Case4:13-cv-05933-CW Document73 Filed05/27/14 Page10 of 22

1 asserted in those actions. Google admits that it was aware of the ’298 Patent before filing its
2 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
3 denies that it has committed any acts of infringement, and specifically denies that by April 4,
4 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
5 patents in this action.
6

55.

Google denies the allegations in this paragraph, and specifically denies that it has

7 committed any acts of infringement.
8

56.

Google denies the allegations in this paragraph, and specifically denies that it has

9 committed any acts of infringement.
10

57.

Google denies the allegations in this paragraph, and specifically denies that it has

11 committed any acts of infringement.
12

58.

Google denies the allegations in this paragraph, and specifically denies that it has

13 committed any acts of infringement.
14

59.

Google admits that one of its subsidiaries participated in the auction approved by

15 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
16 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
17 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
18 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
19 asserted in those actions. Google admits that it was aware of the ’298 Patent before filing its
20 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
21 denies that it has committed any acts of infringement, and specifically denies that by April 4,
22 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
23 patents in this action.
24

60.

Google denies the allegations in this paragraph, and specifically denies that it has

25 committed any acts of infringement.
26

61.

Google denies the allegations in this paragraph, and specifically denies that it has

27 committed any acts of infringement.
28
-9-

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GOOGLE’S ANSWER TO ROCKSTAR’S COUNTERCLAIMS

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1

62.

Google admits that one of its subsidiaries participated in the auction approved by

2 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
3 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
4 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
5 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
6 asserted in those actions. Google admits that it was aware of the ’298 Patent before filing its
7 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
8 denies that it has committed any acts of infringement, and specifically denies that by April 4,
9 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
10 patents in this action.
11

63.

Google denies the allegations in this paragraph.

12

64.

Google denies the allegations in this paragraph.

13

65.

Google denies the allegations in this paragraph.

14

66.

Google denies the allegations in this paragraph, and specifically denies that it has

15 committed any acts of infringement.
16

67.

Google denies the allegations in this paragraph, and specifically denies that it has

17 committed any acts of infringement.
The ’973 Patent

18
19

68.

Google admits that it offers for sale and sells Nexus 5, Nexus 7 and Nexus 10

20 devices in the United States. Google admits that it previously offered for sale and sold Galaxy
21 Nexus devices in the United States. Google admits that it made software for the Galaxy Nexus,
22 and makes software for the Nexus 5, Nexus 7 and Nexus 10. Google admits that some of its
23 employees use some of the features of these devices in this District. Google denies the remaining
24 allegations in this paragraph.
25

69.

Google admits that one of its subsidiaries participated in the auction approved by

26 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
27 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
28 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
-10-

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GOOGLE’S ANSWER TO ROCKSTAR’S COUNTERCLAIMS

Case4:13-cv-05933-CW Document73 Filed05/27/14 Page12 of 22

1 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
2 asserted in those actions. Google admits that it was aware of the ’973 Patent before filing its
3 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
4 denies that it has committed any acts of infringement, and specifically denies that by April 4,
5 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
6 patents in this action.
7

70.

Google denies the allegations in this paragraph, and specifically denies that it has

8 committed any acts of infringement.
9

71.

Google denies the allegations in this paragraph, and specifically denies that it has

10 committed any acts of infringement.
11

72.

Google denies the allegations in this paragraph, and specifically denies that it has

12 committed any acts of infringement.
13

73.

Google admits that one of its subsidiaries participated in the auction approved by

14 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
15 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
16 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
17 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
18 asserted in those actions. Google admits that it was aware of the ’973 Patent before filing its
19 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
20 denies that it has committed any acts of infringement, and specifically denies that by April 4,
21 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
22 patents in this action.
23

74.

Google denies the allegations in this paragraph, and specifically denies that it has

24 committed any acts of infringement.
25

75.

Google denies the allegations in this paragraph, and specifically denies that it has

26 committed any acts of infringement.
27

76.

Google denies the allegations in this paragraph, and specifically denies that it has

28 committed any acts of infringement.
-11-

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1

77.

Google admits that one of its subsidiaries participated in the auction approved by

2 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
3 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
4 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
5 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
6 asserted in those actions. Google admits that it was aware of the ’973 Patent before filing its
7 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
8 denies that it has committed any acts of infringement, and specifically denies that by April 4,
9 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
10 patents in this action.
11

78.

Google denies the allegations in this paragraph.

12

79.

Google denies the allegations in this paragraph.

13

80.

Google denies the allegations in this paragraph.

14

81.

Google denies the allegations in this paragraph, and specifically denies that it has

15 committed any acts of infringement.
16

82.

Google denies the allegations in this paragraph, and specifically denies that it has

17 committed any acts of infringement.
The ’131 Patent

18
19

83.

Google admits that it offers for sale and sells Nexus 5, Nexus 7 and Nexus 10

20 devices in the United States. Google admits that it previously offered for sale and sold Galaxy
21 Nexus devices in the United States. Google admits that it made software for the Galaxy Nexus,
22 and makes software for the Nexus 5, Nexus 7 and Nexus 10. Google admits that some of its
23 employees use some of the features of these devices in this District. Google denies the remaining
24 allegations in this paragraph.
25

84.

Google admits that one of its subsidiaries participated in the auction approved by

26 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
27 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
28 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
-12-

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Case4:13-cv-05933-CW Document73 Filed05/27/14 Page14 of 22

1 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
2 asserted in those actions. Google admits that it was aware of the ’131 Patent before filing its
3 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
4 denies that it has committed any acts of infringement, and specifically denies that by April 4,
5 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
6 patents in this action.
7

85.

Google denies the allegations in this paragraph, and specifically denies that it has

8 committed any acts of infringement.
9

86.

Google denies the allegations in this paragraph, and specifically denies that it has

10 committed any acts of infringement.
11

87.

Google denies the allegations in this paragraph, and specifically denies that it has

12 committed any acts of infringement.
13

88.

Google denies the allegations in this paragraph, and specifically denies that it has

14 committed any acts of infringement.
15

89.

Google admits that one of its subsidiaries participated in the auction approved by

16 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
17 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
18 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
19 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
20 asserted in those actions. Google admits that it was aware of the ’131 Patent before filing its
21 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
22 denies that it has committed any acts of infringement, and specifically denies that by April 4,
23 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
24 patents in this action.
25

90.

Google denies the allegations in this paragraph, and specifically denies that it has

26 committed any acts of infringement.
27

91.

Google denies the allegations in this paragraph, and specifically denies that it has

28 committed any acts of infringement.
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Case4:13-cv-05933-CW Document73 Filed05/27/14 Page15 of 22

1

92.

Google admits that one of its subsidiaries participated in the auction approved by

2 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
3 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
4 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
5 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
6 asserted in those actions. Google admits that it was aware of the ’131 Patent before filing its
7 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
8 denies that it has committed any acts of infringement, and specifically denies that by April 4,
9 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
10 patents in this action.
11

93.

Google denies the allegations in this paragraph.

12

94.

Google denies the allegations in this paragraph.

13

95.

Google denies the allegations in this paragraph.

14

96.

Google denies the allegations in this paragraph, and specifically denies that it has

15 committed any acts of infringement.
16

97.

Google denies the allegations in this paragraph, and specifically denies that it has

17 committed any acts of infringement.
The ’591 Patent

18
19

98.

Google admits that it offers for sale and sells Nexus 5, Nexus 7 and Nexus 10

20 devices in the United States. Google admits that it previously offered for sale and sold Galaxy
21 Nexus devices in the United States. Google admits that it made software for the Galaxy Nexus,
22 and makes software for the Nexus 5, Nexus 7 and Nexus 10. Google admits that some of its
23 employees use some of the features of these devices in this District. Google denies the remaining
24 allegations in this paragraph.
25

99.

Google denies the allegations in this paragraph, and specifically denies that it has

26 committed any acts of infringement.
27

100.

Google admits that one of its subsidiaries participated in the auction approved by

28 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
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Case4:13-cv-05933-CW Document73 Filed05/27/14 Page16 of 22

1 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
2 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
3 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
4 asserted in those actions. Google admits that it was aware of the ’591 Patent before filing its
5 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
6 denies that it has committed any acts of infringement, and specifically denies that by April 4,
7 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
8 patents in this action.
9

101.

Google denies the allegations in this paragraph, and specifically denies that it has

10 committed any acts of infringement.
11

102.

Google denies the allegations in this paragraph, and specifically denies that it has

12 committed any acts of infringement.
13

103.

Google denies the allegations in this paragraph, and specifically denies that it has

14 committed any acts of infringement.
15

104.

Google admits that one of its subsidiaries participated in the auction approved by

16 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
17 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
18 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
19 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
20 asserted in those actions. Google admits that it was aware of the ’591 Patent before filing its
21 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
22 denies that it has committed any acts of infringement, and specifically denies that by April 4,
23 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
24 patents in this action.
25

105.

Google denies the allegations in this paragraph, and specifically denies that it has

26 committed any acts of infringement.
27

106.

Google denies the allegations in this paragraph, and specifically denies that it has

28 committed any acts of infringement.
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Case4:13-cv-05933-CW Document73 Filed05/27/14 Page17 of 22

1

107.

Google admits that one of its subsidiaries participated in the auction approved by

2 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
3 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
4 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
5 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
6 asserted in those actions. Google admits that it was aware of the ’591 Patent before filing its
7 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
8 denies that it has committed any acts of infringement, and specifically denies that by April 4,
9 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
10 patents in this action.
11

108.

Google denies the allegations in this paragraph.

12

109.

Google denies the allegations in this paragraph.

13

110.

Google denies the allegations in this paragraph.

14

111.

Google denies the allegations in this paragraph, and specifically denies that it has

15 committed any acts of infringement.
16

112.

Google denies the allegations in this paragraph, and specifically denies that it has

17 committed any acts of infringement.
The ’572 Patent

18
19

113.

Google admits that it offers for sale and sells Nexus 5, Nexus 7 and Nexus 10

20 devices in the United States. Google admits that it previously offered for sale and sold Galaxy
21 Nexus devices in the United States. Google admits that it made software for the Galaxy Nexus,
22 and makes software for the Nexus 5, Nexus 7 and Nexus 10. Google admits that some of its
23 employees use some of the features of these devices in this District. Google denies the remaining
24 allegations in this paragraph.
25

114.

Google denies the allegations in this paragraph, and specifically denies that it has

26 committed any acts of infringement.
27

115.

Google admits that one of its subsidiaries participated in the auction approved by

28 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
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1 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
2 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
3 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
4 asserted in those actions. Google admits that it was aware of the ’572 Patent before filing its
5 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
6 denies that it has committed any acts of infringement, and specifically denies that by April 4,
7 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
8 patents in this action.
9

116.

Google denies the allegations in this paragraph, and specifically denies that it has

10 committed any acts of infringement.
11

117.

Google denies the allegations in this paragraph, and specifically denies that it has

12 committed any acts of infringement.
13

118.

Google admits that one of its subsidiaries participated in the auction approved by

14 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
15 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
16 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
17 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
18 asserted in those actions. Google admits that it was aware of the ’572 Patent before filing its
19 Complaint in this action. Google denies the remaining allegations in this paragraph, specifically
20 denies that it has committed any acts of infringement, and specifically denies that by April 4,
21 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of the
22 patents in this action.
23

119.

Google denies the allegations in this paragraph.

24

120.

Google denies the allegations in this paragraph.

25

121.

Google denies the allegations in this paragraph.

26

122.

Google denies the allegations in this paragraph, and specifically denies that it has

27 committed any acts of infringement.
28
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Case4:13-cv-05933-CW Document73 Filed05/27/14 Page19 of 22

1

123.

Google denies the allegations in this paragraph, and specifically denies that it has

2 committed any acts of infringement.
Rockstar’s Request for Damages and Other Relief

3
4

124.

Google denies the allegations in this paragraph, and specifically denies that it has

5 committed any acts of infringement.
6

125.

Google denies the allegations in this paragraph, and specifically denies that it has

7 committed any acts of infringement. Google specifically denies that Rockstar Consortium and
8 MobileStar are entitled to injunctive relief.
9

126.

Google admits that one of its subsidiaries participated in the auction approved by

10 the United States Bankruptcy Court for the District of Delaware and, on April 4, 2011, placed a
11 bid to purchase a portfolio of more than 6,000 patents under the supervision of that Court. Google
12 admits that after Rockstar filed its patent infringement actions in the Eastern District of Texas on
13 October 31, 2013 (the “Halloween actions”), Google became aware of the claims Rockstar
14 asserted in those actions. Google admits that it was aware of the patents in this action before filing
15 its Complaint in this action. Google denies the remaining allegations in this paragraph,
16 specifically denies that it has committed any acts of infringement, and specifically denies that by
17 April 4, 2011, Google was put on notice, or was otherwise aware, of any alleged infringement of
18 the patents in this action.
19

127.

Google denies the allegations in this paragraph, and specifically denies that it has

20 committed any acts of infringement.
21

128.

Google denies the allegations in this paragraph, and specifically denies that it has

22 committed any acts of infringement.
23
24

DEMAND FOR JURY TRIAL
129.

Rockstar’s demand for a trial by jury for all issues triable to a jury does not state

25 any allegation, and Google is not required to respond. To the extent that any allegations are
26 included in the demand, Google denies these allegations.
27
28
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Case4:13-cv-05933-CW Document73 Filed05/27/14 Page20 of 22

1
2

PRAYER FOR RELIEF
130.

These paragraphs set forth the statement of relief requested by Rockstar to which

3 no response is required. Google denies that Rockstar is entitled to any of the requested relief and
4 denies any allegations.
5
6

AFFIRMATIVE DEFENSES
131.

Subject to the responses above, Google alleges and asserts the following defenses

7 in response to the allegations, undertaking the burden of proof only as to those defenses deemed
8 affirmative defenses by law, regardless of how such defenses are denominated herein. In addition
9 to the affirmative defenses described below, subject to its responses above, Google specifically
10 reserves all rights to allege additional affirmative defenses that become known through the course
11 of discovery.
12
13

FIRST DEFENSE—NON-INFRINGEMENT
132.

Google does not infringe and has not infringed (not directly, contributorily, or by

14 inducement), either literally or under the doctrine of equivalents, and is not liable for infringement
15 of any valid and enforceable claim of the ’551, ’937, ’298, ’973, ’131, ’591, or ’572 Patents
16 (collectively, the “Patents-in-Suit”).
17
18

SECOND DEFENSE—INVALIDITY
133.

The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.

19 § 101 because the claims are directed to abstract ideas or other non-statutory subject matter.
20

134.

The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.

21 § 102 because the claims lack novelty, and are taught and suggested by the prior art.
22

135.

The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.

23 § 103 because the claims are obvious in view of the prior art.
24

136.

The claims of the Patents-in-Suit are invalid and unenforceable for failure satisfy

25 the conditions set forth in 35 U.S.C. § 112, including failure of written description, lack of
26 enablement, and claim indefiniteness.
27
28
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1
2

THIRD DEFENSE—LIMITATIONS ON PATENT DAMAGES
137.

Rockstar’s claim for damages, if any, against Google for alleged infringement of

3 the Patents-in-Suit is limited by 35 U.S.C. §§ 286, 287 & 288.
4
5

FOURTH DEFENSE—PROSECUTION HISTORY ESTOPPEL
138.

By reason of statements, representations, concessions, admissions, arguments, or

6 amendments, whether explicit or implicit, made by or on behalf of the applicants during the
7 prosecution of the patent applications that led to the issuance of the Patents-in-Suit, Rockstar’s
8 claims of patent infringement are barred in whole or in part by the doctrine of prosecution
9 history estoppel.
10
11

FIFTH DEFENSE—ESTOPPEL
139.

On information and belief, Rockstar’s claims are barred, in whole or in part, by the

12 doctrines of estoppel, laches, disclaimer, patent misuse, and waiver.
13

SIXTH DEFENSE—PATENT UNENFORCEABILITY (UNCLEAN HANDS)

14

140.

15

Rockstar’s claims against Google are barred under the doctrine of unclean hands.
PRAYER FOR RELIEF

16 WHEREFORE, Google prays for judgment and relief as follows:
17

A.

Dismissing, with prejudice, Rockstar’s claims against Google;

18

B.

Denying all relief that Rockstar seeks against Google;

19

C.

Finding that this an exceptional case under 35 U.S.C. § 285;

20

D.

Awarding Google its costs and attorneys’ fees in connection with this action; and

21

E.

Such further and additional relief as the Court deems just and proper.

22 //
23 //
24 //
25 //
26 //
27 //
28 //
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1
2

JURY DEMAND
Google demands a jury trial on all issues and claims so triable.

3 DATED: May 27, 2014

Respectfully submitted,

4

QUINN EMANUEL URQUHART & SULLIVAN, LLP

5

By /s Matthew S. Warren
Charles K. Verhoeven (Cal. Bar No. 170151)
Sean Pak (Cal. Bar No. 219032)
Matthew S. Warren (Cal. Bar No. 230565)
Kristin J. Madigan (Cal. Bar No. 233436)
[e-mail]
50 California Street, 22nd Floor
San Francisco, California 94111
[phone]
[phone] facsimile

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9
10
11

Attorneys for Google Inc.

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13
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Case No. 13-cv-5933-CW
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