Google Inc. v. Rockstar Consortium US LP et al

Filing 61

ANSWER to Complaint with Jury Demand , COUNTERCLAIM against Google Inc. byMobileStar Technologies LLC, Rockstar Consortium US LP. (Budwin, Joshua) (Filed on 5/5/2014)

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Courtland L. Reichman (SBN 268873)
[e-mail]
MCKOOL SMITH HENNIGAN, P.C.
255 Shoreline Drive, Suite 510
Redwood Shores, California 94065
Telephone:
[phone]
Facsimile:
[phone]
ADDITIONAL COUNSEL LISTED
ON SIGNATURE PAGE
Attorneys for Defendants
Rockstar Consortium U.S. LP and
MobileStar Technologies LLC

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OAKLAND

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Google Inc.,

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Case No. 4:13-cv-5933-CW

Plaintiff,

DEFENDANTS ROCKSTAR
CONSORTIUM U.S. LP AND
MOBILESTAR TECHNOLOGIES
LLC’S ANSWER AND
COUNTERCLAIMS TO
PLAINTIFF’S COMPLAINT FOR
DECLARATORY JUDGMENT OF
NON-INFRINGEMENT

v.
Rockstar Consortium U.S. LP and MobileStar
Technologies LLC,
Defendants.

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JURY TRIAL DEMANDED

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Case No. 4:13-cv-5933-CW

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DEFENDANTS’ ANSWER AND COUNTERCLAIMS
TO COMPLAINT FOR DECLARATORY JUDGMENT
OF NON-INFRINGEMENT

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ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT
Defendants and Counterclaim-Plaintiffs Rockstar Consortium U.S. LP and MobileStar
Technologies LLC (collectively, “Rockstar”) file this Answer and Counterclaims to Plaintiff and
Counterclaim-Defendant Google, Inc.’s (“Google”) Complaint filed on December 23, 2013.

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NATURE OF THE ACTION
1.

Rockstar admits that Google’s Complaint purports to be a declaratory judgment

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action of non-infringement brought against Rockstar Consortium U.S. LP (“Rockstar Consortium”)

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and MobileStar Technologies LLC (“MobileStar”) that arises under the patent laws of the United

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States, Title 35 of the United States Code.

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infringement lawsuits against certain makers of mobile communication devices for infringement of

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Rockstar’s United States Patents Nos. 5,838,551, 6,037,937, 6,128,298, 6,333,973, 6,463,131,

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6,765,591, and 6,937,572 (the “Patents-in-Suit”).

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allegations in Paragraph 1 of Google’s Complaint.

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Rockstar admits that Rockstar has filed patent

Except as so admitted, Rockstar denies the

THE PARTIES
2.

On information and belief, based solely on Paragraph 2 of Google’s Complaint as

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pled by Google, Google is a Delaware corporation with its principal place of business at 1600

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Amphitheatre Parkway, Mountain View, California, 94043. On information and belief, based solely

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on Paragraph 2 of Google’s Complaint as pled by Google, Google makes available to the public an

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open-source version of Android. Except as so admitted, Rockstar denies the allegations in Paragraph

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2 of Google’s Complaint.

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3.

Rockstar admits that Rockstar Consortium is a limited partnership organized and

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existing under the laws of the state of Delaware and that its principal place of business is at Legacy

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Town Center 1, 7160 North Dallas Parkway Suite No. 250, Plano, TX 75024. Except as so

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admitted, Rockstar denies the allegations in Paragraph 3 of Google’s Complaint.

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4.

Rockstar admits that MobileStar is a limited liability corporation organized and

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DEFENDANTS’ ANSWER AND COUNTERCLAIMS
TO COMPLAINT FOR DECLARATORY JUDGMENT
OF NON-INFRINGEMENT

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existing under the laws of the State of Delaware and that MobileStar’s principal place of business is

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at Legacy Town Center 1, 7160 North Dallas Parkway, Suite No. 250, Plano, Texas 75024.

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Rockstar admits that MobileStar is a subsidiary of Rockstar Consortium. Except as so admitted,

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Rockstar denies the allegations in Paragraph 4 of Google’s Complaint.

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JURISDICTIONAL STATEMENT

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5.

Denied.

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6.

Denied.

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7.

Rockstar denies that the Court has personal jurisdiction over it. Rockstar also denies

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that it has continuous and systematic contacts with California. Rockstar admits that in certain

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instances it may seek to license its patents to those entities that may require a license. Except as so

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admitted, Rockstar denies the allegations in Paragraph 7 of Google’s Complaint.

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8.

On information and belief, Apple Inc.’s (“Apple”) headquarters are in Cupertino,

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California. Rockstar admits that Apple is a minority shareholder in Rockstar Consortium and

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Rockstar Consortium Inc. and that an employee of Apple is a member of Rockstar Consortium’s

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board of directors.

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Google’s Complaint.

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9.

Except as so admitted, Rockstar denies the allegations in Paragraph 8 of

Rockstar admits that MobileStar conducted three meetings with entities located in

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California to discuss high-level global licensing issues. Each of these meetings was subject to a non-

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disclosure agreement. One such meeting occurred after Rockstar initiated its action against Google

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in the Eastern District of Texas and was for the purpose of discussing patents that are not at issue in

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this case. Except as so admitted, Rockstar denies the allegations in Paragraph 9 of Google’s

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Complaint.

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10.

Denied.

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11.

Denied.

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INTRADISTRICT ASSIGNMENT
12.

Paragraph 12 of Google’s Complaint does not contain a statement that warrants an

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

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affirmance or denial. To the extent a response is warranted, Rockstar denies the allegations in

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Paragraph 12 of Google’s Complaint.

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ROCKSTAR’S HISTORY AND BUSINESS
13.

Rockstar admits that each of Apple, BlackBerry Corporation, and Microsoft

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Corporation (among others) are limited partners of Rockstar Consortium and that the Patents-in-Suit

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were formerly owned by Nortel Networks. Except as so admitted, Rockstar denies the allegations in

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Paragraph 13 of Google’s Complaint.

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14.

Rockstar admits that certain patents were transferred from Rockstar Bidco to its

founding licensees, including, but not limited to, Apple. Except as so admitted, Rockstar denies the
allegations in Paragraph 14 of Google’s Complaint.
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Rockstar admits that it does not make or sell products. Except as so admitted,

Rockstar denies the allegations in Paragraph 15 of Google’s Complaint.
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Rockstar admits that in certain instances it may seek to license its patents to those

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entities that may require a license. Except as so admitted, Rockstar denies the allegations in

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Paragraph 16 of Google’s Complaint.

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17.

Rockstar admits that it has asserted the Patents-in-Suit against ASUS, HTC, Huawei,

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LG, Pantech, Samsung, and ZTE (“the Eastern District Defendants”). Except as so admitted,

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Rockstar denies the allegations in Paragraph 17 of Google’s Complaint, and expressly denies the

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characterizations of “ensnared” and “dragnet.”

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18.

Rockstar admits that it brought patent infringement suits against the Eastern District

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Defendants in the Marshall Division of the United States District Court for the Eastern District of

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Texas on October 31, 2013. Except as so admitted, Rockstar denies the allegations in Paragraph 18

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of Google’s Complaint.

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19.

Rockstar admits that it has alleged that the Eastern District Defendants make, use,

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sell, offer for sale, import, export, supply and/or distribute “certain mobile communication devices

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having a version (or an adaption thereof) of Android operating system.” Except as so admitted,

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

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Rockstar denies the allegations in Paragraph 19 of Google’s Complaint.

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20.

Admitted.

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21.

Admitted.

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22.

Rockstar admits that it has asserted the Patents-in-Suit against the Eastern District

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Defendants and has accused “certain mobile communication devices having a version (or an

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adaption thereof) of Android operating system.” Rockstar admits that it has asserted infringement

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by the Nexus 7 as to ASUS with an operating system configured and installed by ASUS. Except as

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so admitted, Rockstar denies the allegations in Paragraph 22 of Google’s Complaint.

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23.

Denied.

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24.

Paragraph 24 of Google’s Complaint does not contain a statement that warrants an

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affirmance or denial. To the extent that any response is warranted, Rockstar denies the allegations in

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Paragraph 24 of Google’s Complaint.

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GOOGLE DOES NOT INFRINGE THE PATENTS IN SUIT

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25.

Denied.

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26.

Denied.

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FIRST COUNT

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(Declaration of Non-Infringement of the ʼ551 Patent)

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27.

Rockstar incorporates its responses to Paragraphs 1-26 above, as if fully set forth

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28.

Admitted.

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29.

Rockstar admits that Rockstar has accused the Eastern District Defendants of

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herein.

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infringing United States Patent No. 5,838,551 (“the ʼ551 patent”) and has alleged that each “makes,

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uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States”

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devices including “at least one electronic package comprising a component that is located between

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an EMI shield and a ground member for performing shielding operations” where “[t]he EMI shield

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is incorporated into the electronic package, which is then mounted to a circuit board” in the accused

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

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devices. Rockstar admits that it has asserted infringement by the Nexus 7 as to ASUS with an

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operating system configured and installed by ASUS. Except as so admitted, Rockstar denies the

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allegations in Paragraph 29 of Google’s Complaint.

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30.

As to the Nexus 5, Nexus 7, and Nexus 10 devices, Rockstar admits that a

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controversy exists between Google and Rockstar regarding whether such devices infringe or have

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infringed the ʼ551 patent and that a judicial declaration is necessary to determine the parties’

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respective rights regarding the ʼ551 patent. With respect to Google’s purported “Google’s Android

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platform,” however, Rockstar denies that this has any relationship to the ’551 patent. Furthermore,

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Google has not defined the “Google’s Android platform,” and its use of that phrase is vague, as it

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fails to identify a specific instance of any product. Android is an open-sourced software project with

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many contributors, and it is implemented by entities, such as the Eastern District Defendants, who

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may use different versions of the Android software and who may also develop and contribute to the

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Android software found within their products. Therefore, Rockstar is without information sufficient

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to admit or deny the remainder of the allegations in Paragraph 30 of Google’s Complaint, and on that

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basis denies such allegations.

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31.

Rockstar admits that Google purports to seek a judgment declaring that “Google’s

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Android Platform” and the Nexus 5, Nexus 7, and Nexus 10 devices do not infringe any claim of the

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ʼ551 patent. Google has not defined “Google’s Android Platform,” and its use of that phrase is

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vague, as it fails to identify a specific instance of any product. Android is an open-sourced software

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project with many contributors, and it is implemented by entities, such as the Eastern District

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Defendants, who may use different versions of the Android software and who may also develop and

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contribute to the Android software found within their products. Therefore, Rockstar is without

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information sufficient to admit or deny the remainder of the allegations in Paragraph 31 of Google’s

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Complaint, and on that basis denies such allegations.

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

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SECOND COUNT

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(Declaration of Non-Infringement of the ʼ937 Patent)

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32.

Rockstar incorporates its responses to Paragraphs 1-31 above, as if fully set forth

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33.

Admitted.

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34.

Rockstar admits that it has accused ASUS, HTC, Huawei, LG, Pantech, Samsung,

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herein.

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and ZTE of infringing United States Patent No. 6,037,937 (“the ʼ937 patent”) and has alleged that

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each “makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the

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United States” devices that support a “navigable graphical user interface (‘navigable GUI’) that

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permits a user to manipulate and control the contents of the display to maximize the use of display

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real estate.” Rockstar admits that it has asserted infringement by the Nexus 7 as to ASUS with an

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operating system configured and installed by ASUS. Except as so admitted, Rockstar denies the

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allegations in Paragraph 34 of Google’s Complaint.

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35.

Upon information and belief, the Nexus 5, Nexus 7, and Nexus 10 devices use an

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operating system configured and installed by Google. Google has not defined “Google’s Android

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Platform,” and its use of that phrase is vague, as it fails to identify a specific instance of any product.

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Android is an open-sourced software project with many contributors, and it is implemented by

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entities, such as the Eastern District Defendants, who may use different versions of the Android

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software and who may also develop and contribute to the Android software found within their

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products. Therefore, Rockstar is without information sufficient to admit or deny the remainder of

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the allegations in Paragraph 35 of Google’s Complaint, and on that basis denies such allegations.

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36.

Google has not defined “Google’s Android Platform,” and its use of that phrase is

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vague, as it fails to identify a specific instance of any product. Android is an open-sourced software

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project with many contributors, and it is implemented by entities, such as the Eastern District

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Defendants, who may use different versions of the Android software and who may also develop and

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contribute to the Android software found within their products. Therefore, Rockstar is without

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

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information sufficient to admit or deny the allegations in Paragraph 36 of Google’s Complaint, and

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on that basis denies such allegations.

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37.

Rockstar admits that Google purports to seek a judgment declaring that “Google’s

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Android Platform” and the Nexus 5, Nexus 7, and Nexus 10 devices do not infringe any claim of the

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ʼ937 patent. Google has not defined “Google’s Android Platform,” and its use of that phrase is

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vague, as it fails to identify a specific instance of any product. Android is an open-sourced software

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project with many contributors, and it is implemented by entities, such as the Eastern District

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Defendants, who may use different versions of the Android software and who may also develop and

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contribute to the Android software found within their products. Therefore, Rockstar is without

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information sufficient to admit or deny the remainder of the allegations in Paragraph 37 of Google’s

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Complaint, and on that basis denies such allegations.

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THIRD COUNT

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(Declaration of Non-Infringement of the ʼ298 Patent)

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38.

Rockstar incorporates its responses to Paragraphs 1-37 above, as if fully set forth

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39.

Admitted.

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40.

Rockstar admits that it has accused ASUS, HTC, Huawei, LG, Pantech, Samsung,

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herein.

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and ZTE of infringing United States Patent No. 6,128,298 (“the ʼ298 patent”) and has alleged that

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each “makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the

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United States” devices that support “Mobile Hotspot functionality [which] is designed to route data

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packets between wireless devices tethered to the Mobile Hotspot to nodes on a public network such

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as the Internet.” Rockstar admits that it has asserted infringement by the Nexus 7 as to ASUS with

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an operating system configured and installed by ASUS. Except as so admitted, Rockstar denies the

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allegations in Paragraph 40 of Google’s Complaint.

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41.

Upon information and belief, the Nexus 5, Nexus 7, and Nexus 10 devices use an

operating system configured and installed by Google. Google has not defined “Google’s Android

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

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Platform,” and its use of that phrase is vague, as it fails to identify a specific instance of any product.

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Android is an open-sourced software project with many contributors, and it is implemented by

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entities, such as the Eastern District Defendants, who may use different versions of the Android

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software and who may also develop and contribute to the Android software found within their

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products. Therefore, Rockstar is without information sufficient to admit or deny the remainder of

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the allegations in Paragraph 41 of Google’s Complaint, and on that basis denies such allegations.

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42.

Google has not defined “Google’s Android Platform,” and its use of that phrase is

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vague, as it fails to identify a specific instance of any product. Android is an open-sourced software

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project with many contributors, and it is implemented by entities, such as the Eastern District

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Defendants, who may use different versions of the Android software and who may also develop and

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contribute to the Android software found within their products. Therefore, Rockstar is without

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information sufficient to admit or deny the allegations in Paragraph 42 of Google’s Complaint, and

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on that basis denies such allegations.

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43.

Rockstar admits that Google purports to seek a judgment declaring that “Google’s

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Android Platform” and the Nexus 5, Nexus 7, and Nexus 10 devices do not infringe any claim of the

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ʼ298 patent. Google has not defined “Google’s Android Platform,” and its use of that phrase is

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vague, as it fails to identify a specific instance of any product. Android is an open-sourced software

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project with many contributors, and it is implemented by entities, such as the Eastern District

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Defendants, who may use different versions of the Android software and who may also develop and

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contribute to the Android software found within their products. Therefore, Rockstar is without

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information sufficient to admit or deny the remainder of the allegations in Paragraph 43 of Google’s

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Complaint, and on that basis denies such allegations.

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FOURTH COUNT

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(Declaration of Non-Infringement of the ʼ973 Patent)
44.

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Rockstar incorporates its responses to Paragraphs 1-43 above, as if fully set forth

herein.

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

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45.

Rockstar admits that MobileStar owns all rights, title, and interest in United States

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Patent No. 6,333,973 (“the ʼ973 patent”). Except as so admitted, Rockstar denies the allegations in

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Paragraph 45 of Google’s Complaint.

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46.

Rockstar admits that it has accused HTC, Huawei, LG, Pantech, Samsung, and ZTE

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of infringing the ʼ973 patent and has alleged that each “makes, uses, sells, offers for sale, imports,

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exports, supplies and/or distributes within the United States” devices that support an “integrated

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notification message center.” Rockstar admits that it has asserted infringement by the Nexus 7 as to

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ASUS with an operating system configured and installed by ASUS. Except as so admitted, Rockstar

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denies the allegations in Paragraph 46 of Google’s Complaint.

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47.

Upon information and belief, the Nexus 5, Nexus 7, and Nexus 10 devices use an

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operating system configured and installed by Google. Google has not defined “Google’s Android

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Platform,” and its use of that phrase is vague, as it fails to identify a specific instance of any product.

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Android is an open-sourced software project with many contributors, and it is implemented by

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entities, such as the Eastern District Defendants, who may use different versions of the Android

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software and who may also develop and contribute to the Android software found within their

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products. Therefore, Rockstar is without information sufficient to admit or deny the remainder of

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the allegations in Paragraph 47 of Google’s Complaint, and on that basis denies such allegations.

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48.

Google has not defined “Google’s Android Platform,” and its use of that phrase is

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vague, as it fails to identify a specific instance of any product. Android is an open-sourced software

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project with many contributors, and it is implemented by entities, such as the Eastern District

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Defendants, who may use different versions of the Android software and who may also develop and

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contribute to the Android software found within their products. Therefore, Rockstar is without

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information sufficient to admit or deny the allegations in Paragraph 48 of Google’s Complaint, and

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on that basis denies such allegations.

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49.

Rockstar admits that Google purports to seek a judgment declaring that Google’s

“Google’s Android Platform” and the Nexus 5, Nexus 7, and Nexus 10 devices do not infringe any

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

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claim of the ʼ973 patent. Google has not defined “Google’s Android Platform,” and its use of that

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phrase is vague, as it fails to identify a specific instance of any product. Android is an open-sourced

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software project with many contributors, and it is implemented by entities, such as the Eastern

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District Defendants, who may use different versions of the Android software and who may also

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develop and contribute to the Android software found within their products. Therefore, Rockstar is

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without information sufficient to admit or deny the remainder of the allegations in Paragraph 49 of

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Google’s Complaint, and on that basis denies such allegations.

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FIFTH COUNT

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(Declaration of Non-Infringement of the ʼ131 Patent)

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50.

Rockstar incorporates its responses to Paragraphs 1-49 above, as if fully set forth

51.

Rockstar admits that MobileStar owns all rights, title, and interest in United States

herein.

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Patent No. 6,463,131 (“the ʼ131 patent”). Except as so admitted, Rockstar denies the allegations in

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Paragraph 51 of Google’s Complaint.

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52.

Rockstar admits that it has accused ASUS, HTC, Huawei, LG, Pantech, Samsung,

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and ZTE of infringing the ʼ131 patent and has alleged that each “makes, uses, sells, offers for sale,

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imports, exports, supplies and/or distributes within the United States” devices that support

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“Messaging and Notification functionality.” Rockstar admits that it has asserted infringement by the

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Nexus 7 as to ASUS with an operating system configured and installed by ASUS. Except as so

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admitted, Rockstar denies the allegations in Paragraph 52 of Google’s Complaint.

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53.

Upon information and belief, the Nexus 5, Nexus 7, and Nexus 10 devices use an

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operating system configured and installed by Google. Google has not defined “Google’s Android

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Platform,” and its use of that phrase is vague, as it fails to identify a specific instance of any product.

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Android is an open-sourced software project with many contributors, and it is implemented by

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entities, such as the Eastern District Defendants, who may use different versions of the Android

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software and who may also develop and contribute to the Android software found within their

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Case No. 4:13-cv-5933-CW

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

products. Therefore, Rockstar is without information sufficient to admit or deny the remainder of

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the allegations in Paragraph 53 of Google’s Complaint, and on that basis denies such allegations.

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54.

Google has not defined “Google’s Android Platform,” and its use of that phrase is

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vague, as it fails to identify a specific instance of any product. Android is an open-sourced software

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project with many contributors, and it is implemented by entities, such as the Eastern District

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Defendants, who may use different versions of the Android software and who may also develop and

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contribute to the Android software found within their products. Therefore, Rockstar is without

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information sufficient to admit or deny the allegations in Paragraph 54 of Google’s Complaint, and

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on that basis denies such allegations.

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55.

Rockstar admits that Google purports to seek a judgment declaring that Google’s

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“Google’s Android Platform” and the Nexus 5, Nexus 7, and Nexus 10 devices do not infringe any

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claim of the ʼ131 patent. Google has not defined “Google’s Android Platform,” and its use of that

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phrase is vague, as it fails to identify a specific instance of any product. Android is an open-sourced

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software project with many contributors, and it is implemented by entities, such as the Eastern

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District Defendants, who may use different versions of the Android software and who may also

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develop and contribute to the Android software found within their products. Therefore, Rockstar is

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without information sufficient to admit or deny the remainder of the allegations in Paragraph 55 of

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Google’s Complaint, and on that basis denies such allegations.

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SIXTH COUNT

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(Declaration of Non-Infringement of the ʼ591 Patent)
56.

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Rockstar incorporates its responses to Paragraphs 1-55 above, as if fully set forth

57.

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Rockstar admits that MobileStar owns all rights, title, and interest in United States

herein.

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Patent No. 6,765,591 (“the ʼ591 patent”). Except as so admitted, Rockstar denies the allegations in

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Paragraph 57 of Google’s Complaint.

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58.

Rockstar admits that it has accused ASUS, HTC, Huawei, LG, Pantech, Samsung,

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

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and ZTE of infringing the ʼ591 patent and has alleged that each “makes, uses, sells, offers for sale,

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imports, exports, supplies and/or distributes within the United States” devices that support “VPN

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management functionality.” Rockstar admits that it has asserted infringement by the Nexus 7 as to

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ASUS with an operating system configured and installed by ASUS. Except as so admitted, Rockstar

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denies the allegations in Paragraph 58 of Google’s Complaint.

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59.

Upon information and belief, the Nexus 5, Nexus 7, and Nexus 10 devices use an

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operating system configured and installed by Google. Google has not defined “Google’s Android

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Platform,” and its use of that phrase is vague, as it fails to identify a specific instance of any product.

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Android is an open-sourced software project with many contributors, and it is implemented by

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entities, such as the Eastern District Defendants, who may use different versions of the Android

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software and who may also develop and contribute to the Android software found within their

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products. Therefore, Rockstar is without information sufficient to admit or deny the remainder of

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the allegations in Paragraph 59 of Google’s Complaint, and on that basis denies such allegations.

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60.

Google has not defined “Google’s Android Platform,” and its use of that phrase is

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vague, as it fails to identify a specific instance of any product. Android is an open-sourced software

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project with many contributors, and it is implemented by entities, such as the Eastern District

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Defendants, who may use different versions of the Android software and who may also develop and

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contribute to the Android software found within their products. Therefore, Rockstar is without

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information sufficient to admit or deny the allegations in Paragraph 60 of Google’s Complaint, and

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on that basis denies such allegations.

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61.

Rockstar admits that Google purports to seek a judgment declaring that Google’s

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“Google’s Android Platform” and the Nexus 5, Nexus 7, and Nexus 10 devices do not infringe any

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claim of the ʼ591 patent. Google has not defined “Google’s Android Platform,” and its use of that

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phrase is vague, as it fails to identify a specific instance of any product. Android is an open-sourced

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software project with many contributors, and it is implemented by entities, such as the Eastern

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District Defendants, who may use different versions of the Android software and who may also

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Case No. 4:13-cv-5933-CW

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

develop and contribute to the Android software found within their products. Therefore, Rockstar is

2

without information sufficient to admit or deny the remainder of the allegations in Paragraph 61 of

3

Google’s Complaint, and on that basis denies such allegations.

4

SEVENTH COUNT

5

(Declaration of Non-Infringement of the ʼ572 Patent)

6
7
8
9
10
11

62.

Rockstar incorporates its responses to Paragraphs 1-61 above, as if fully set forth

63.

Rockstar admits that MobileStar owns all rights, title, and interest in United States

herein.

Patent No. 6,937,572 (“the ʼ572 patent”). Except as so admitted, Rockstar denies the allegations in
Paragraph 63 of Google’s Complaint.
64.

Rockstar admits that it has accused ASUS, HTC, Huawei, LG, Pantech, Samsung,

12

and ZTE of infringing the ʼ572 patent and has alleged that each “makes, uses, sells, offers for sale,

13

imports, exports, supplies and/or distributes within the United States” devices that support “Location

14

Services functionality.” Rockstar admits that it has asserted infringement by the Nexus 7 as to ASUS

15

with an operating system configured and installed by ASUS. Except as so admitted, Rockstar denies

16

the allegations in Paragraph 64 of Google’s Complaint.

17

65.

Upon information and belief, the Nexus 5, Nexus 7, and Nexus 10 devices use an

18

operating system configured and installed by Google. Google has not defined “Google’s Android

19

Platform,” and its use of that phrase is vague, as it fails to identify a specific instance of any product.

20

Android is an open-sourced software project with many contributors, and it is implemented by

21

entities, such as the Eastern District Defendants, who may use different versions of the Android

22

software and who may also develop and contribute to the Android software found within their

23

products. Therefore, Rockstar is without information sufficient to admit or deny the remainder of

24

the allegations in Paragraph 65 of Google’s Complaint, and on that basis denies such allegations.

25
26

66.

Google has not defined “Google’s Android Platform,” and its use of that phrase is

vague, as it fails to identify a specific instance of any product. Android is an open-sourced software

27
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Case No. 4:13-cv-5933-CW

-14-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

project with many contributors, and it is implemented by entities, such as the Eastern District

2

Defendants, who may use different versions of the Android software and who may also develop and

3

contribute to the Android software found within their products. Therefore, Rockstar is without

4

information sufficient to admit or deny the allegations in Paragraph 66 of Google’s Complaint, and

5

on that basis denies such allegations.

6

67.

Rockstar admits that Google purports to seek a judgment declaring that Google’s

7

“Google’s Android Platform” and the Nexus 5, Nexus 7, and Nexus 10 devices do not infringe any

8

claim of the ʼ572 patent. Google has not defined “Google’s Android Platform,” and its use of that

9

phrase is vague, as it fails to identify a specific instance of any product. Android is an open-sourced

10

software project with many contributors, and it is implemented by entities, such as the Eastern

11

District Defendants, who may use different versions of the Android software and who may also

12

develop and contribute to the Android software found within their products. Therefore, Rockstar is

13

without information sufficient to admit or deny the remainder of the allegations in Paragraph 67 of

14

Google’s Complaint, and on that basis denies such allegations.

15

PRAYER FOR RELIEF

16

A response is not required to Google’s prayer for relief. To the extent that a response is

17

deemed required, Rockstar denies that the Nexus 5, Nexus 7, and Nexus 10 devices do not infringe

18

any of the ʼ551, ʼ937, ʼ298, ʼ973, ʼ131, ʼ591, or ʼ572 patents. Rockstar denies that judgment should

19

be entered in favor of Google and against Rockstar on each of Google’s claims. Rockstar denies that

20

this is an exceptional case under 35 U.S.C. § 285. Rockstar denies that Google should be awarded its

21

costs and attorneys’ fees in connection with this action. Rockstar denies that Google should be

22

awarded any further or additional relief. Google’s prayer should, therefore, be denied in its entirety

23

and with prejudice, and Google should take nothing.

24

JURY DEMAND

25

A response is not required to Google’s demand for a trial by jury. To the extent that a

26

response is deemed required, Rockstar requests a trial by jury pursuant to Rule 38 of the Federal

27
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Case No. 4:13-cv-5933-CW

-15-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

Rules of Civil Procedure.

2

AFFIRMATIVE DEFENSE

3
4
5
6
7
8
9
10

Google does not have standing to maintain this action with regard to any device other than
the Nexus 5, Nexus 7, Nexus 10, and Galaxy Nexus. As is set forth herein, Google has not defined
the term “Google’s Android platform,” as that term is used in Google’s Declaratory Complaint.
Google’s use of that phrase is vague, as it fails to identify a specific instance of any product. Android
is an open-sourced software project with many contributors, and it is implemented by entities, such
as the Eastern District Defendants, who may use different versions of the Android software and who
may also develop and contribute to the Android software found within their products.
COUNTERCLAIMS

11
12
13
14

Counterclaimants Rockstar Consortium and MobileStar, by and through their attorneys,
assert the following Counterclaims against Counterdefendant Google and in support thereof would
respectfully show the Court the following:1
PARTIES

15

1.

16
17

Plaintiff Rockstar Consortium US LP (“Rockstar Consortium”) is a limited

partnership organized and existing under the laws of the State of Delaware, and maintains its

18

principal place of business at Legacy Town Center 1, 7160 North Dallas Parkway Suite No. 250,

19

Plano, TX 75024.

20

2.

21

Plaintiff MobileStar Technologies LLC (“MobileStar”) is a subsidiary of Rockstar

and is a limited liability corporation organized and existing under the laws of the State of Delaware,

22
23
1

27

Rockstar believes that this Court lacks personal jurisdiction over it. See Dkt. No. 19-4 (Rockstar’s Motion to Dismiss
Under Fed. R. Civ. P. 12(b)(2) and 12(b)(3) for Lack of Personal Jurisdiction and Improper Venue and to Decline
Exercising Jurisdiction Under the Declaratory Judgment Act); Dkt. No. 58 (Order Denying Motion to Dismiss or, in the
Alternative, to Transfer). In light of the Court’s ruling, Rockstar asserts the counterclaims contained herein. In asserting
its counterclaims, Rockstar does not consent to personal jurisdiction. See SEC v. Ross, 504 F.3d 1130, 1149 (9th Cir. Or.
2007) (“[W]here a party has filed a timely and unambiguous objection to the court’s jurisdiction, we have concluded that
the party has not consented to jurisdiction. This is true even if the party has preserved its own options by simultaneously
asserting whatever claims or defenses it has against the plaintiff.”).

28

Case No. 4:13-cv-5933-CW

24
25
26

-16-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

and maintains its principal place of business at Legacy Town Center 1, 7160 North Dallas Parkway

2

Suite No. 250, Plano, TX 75024.

3
4

3.

Upon information and belief, Defendant Google, Inc. (“Google”) is a corporation

organized and existing under the laws of the state of Delaware, with its principal place of business at

5
6

1600 Amphitheatre Parkway, Mountain View, California, 94043.
BACKGROUND FACTS

7
8
9
10
11
12
13
14
15

4.

Nortel Networks, a previous assignee of the Patents-in-Suit, conducted an auction for

Nortel’s patent portfolio. The auction included the Patents-in-Suit.
5.

During the various auction dates Google, among others, bid for Nortel’s portfolio.

6.

Google made its first bid for the Nortel patent portfolio on April 4, 2011. (See

http://googleblog.blogspot.com/2011/04/patents-and-innovation.html).
7.

Google was aware of the Patents-in-Suit at the time of its initial bid.

8.

Google placed an initial bid of $900,000,000 for the Patents-in-Suit and the rest of the

16

Nortel portfolio. Google subsequently increased its bid multiple times, ultimately bidding as high as

17

$4.4 billion. That price was insufficient to win the auction, as a group led by the current shareholders

18

of Rockstar Consortium purchased the portfolio for $4.5 billion.

19
20
21
22

9.

Despite losing in its attempt to acquire the Patents-in-Suit at auction, Google has

infringed and continues to infringe the Patents-in-Suit, including, but not limited to, the sale and
offer for sale of its “Google Nexus” line of devices in the United States, including in this District.

23

10.

The Nexus devices include, but are not limited to, the Nexus 5, Nexus 7, Nexus 10,

24

and Galaxy Nexus.

25
26

JURISDICTION AND VENUE
11.

This is an action for patent infringement under the Patent Laws of the United States,

27
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Case No. 4:13-cv-5933-CW

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

35 U.S.C. § 271. This Court has exclusive subject matter jurisdiction over this case for patent

2

infringement under 28 U.S.C. § 1338.

3
4

12.

Regarding venue, Rockstar denies that venue is proper in this district pursuant to

either 28 U.S.C. § 1391, see Dkt. No. 19-4 (Rockstar’s Motion to Dismiss Under Fed. R. Civ. P.

5
6
7

12(b)(2) and 12(b)(3) for Lack of Personal Jurisdiction and Improper Venue and to Decline
Exercising Jurisdiction Under the Declaratory Judgment Act) or the provisions of 28 U.S.C. §§

8

1400, et. seq.. As to venue under 28 U S.C. § 1391, the Court has adjudicated that venue is proper.

9

See Dkt. No. 19 (Order Denying Motion to Dismiss or, in the Alternative, to Transfer). Rockstar

10

denies that venue is proper under the provisions of 28 U.S.C. § 1400, et. seq. and plans to file a

11
12
13
14

motion to transfer venue.
13.

This Court has personal jurisdiction over Defendant Google. Google has conducted

and does conduct business within the State of California. Google’s principal place of business is at

15

1600 Amphitheatre Parkway, Mountain View, California, 94043. Google, directly or through

16

subsidiaries or intermediaries (including distributors, retailers, and others), ships, distributes, offers

17

for sale, sells, and advertises (including the provision of an interactive web page) its products

18

(including its “Nexus” line of products) and/or services in the United States, the State of California,

19
20
21
22

and the Northern District of California. Google, directly and through subsidiaries or intermediaries
(including distributors, retailers, and others), has purposefully and voluntarily placed one or more of
its infringing products and/or services, as described below, into the stream of commerce with the

23

expectation that they will be purchased and used by consumers in the Northern District of

24

California. These infringing products and/or services have been and continue to be purchased and

25

used by consumers in the Northern District of California. Google has committed acts of patent

26

infringement within the State of California and, more particularly, within the Northern District of

27
28

Case No. 4:13-cv-5933-CW

-18-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1
2
3
4

California.
14.

Regarding this Court’s personal jurisdiction over Rockstar, Rockstar denies that this

Court has personal jurisdiction. See Dkt. Nos. 19-4 (Rockstar’s Motion to Dismiss Under Fed. R.
Civ. P. 12(b)(2) and 12(b)(3) for Lack of Personal Jurisdiction and Improper Venue and to Decline

5
6
7
8

Exercising Jurisdiction Under the Declaratory Judgment Act). As to personal jurisdiction, the Court
has adjudicated that it has personal jurisdiction over Rockstar. See Dkt. No. 58 (Order Denying
Motion to Dismiss or, in the Alternative, to Transfer).

9
10
11
12
13
14

ASSERTED PATENTS
15.

On November 17, 1998, U.S. Patent No. 5,838,551 (“the ’551 Patent”) entitled

“Electronic Package Carrying an Electronic Component and Assembly of Mother Board and
Electronic Package” was duly and legally issued with Yee-Ning Chan as the named inventor after
full and fair examination. Rockstar Consortium owns all rights, title, and interest in and to the ’551

15

Patent and possesses all rights of recovery under the ’551 Patent. MobileStar is the exclusive

16

licensee of the ’551 Patent, within the field of use specified in the exclusive license agreement

17

between Rockstar Consortium and MobileStar.

18
19
20
21
22
23
24
25
26

16.

On March 14, 2000, U.S. Patent No. 6,037,937 (“the ’937 Patent”) entitled

“Navigation Tool for Graphical User Interface” was duly and legally issued with Brian Finlay
Beaton, Colin Donald Smith, and Bruce Dale Stalkie as the named inventors after full and fair
examination. MobileStar owns all rights, title, and interest in and to the ’937 Patent and possesses
all rights of recovery under the ’937 Patent.
17.

On October 3, 2000, U.S. Patent No. 6,128,298 (“the ’298 Patent”) entitled “Internet

Protocol Filter” was duly and legally issued with Bruce Anthony Wootton and William G. Colvin as
the named inventors after full and fair examination. Rockstar Consortium owns all rights, title, and

27
28

Case No. 4:13-cv-5933-CW

-19-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

interest in and to the ’298 Patent and possesses all rights of recovery under the ’298 Patent.

2

MobileStar is the exclusive licensee of the ’298 Patent, within the field of use specified in the

3
4

exclusive license agreement between Rockstar Consortium and MobileStar.
18.

On December 25, 2001, U.S. Patent No. 6,333,973 (“the ’973 Patent”) entitled

5
6
7
8
9
10
11
12
13
14
15

“Integrated Message Center” was duly and legally issued with Colin Donald Smith and Brian Finlay
Beaton as the named inventors after full and fair examination. MobileStar owns all rights, title, and
interest in and to the ’973 Patent and possesses all rights of recovery under the ‘973 Patent.
19.

On October 8, 2002, U.S. Patent No. 6,463,131 (“the ’131 Patent”) entitled “System

and Method for Notifying a User of an Incoming Communication Event” was duly and legally
issued with Marilyn French-St. George, Mitch A. Brisebois and Laura A. Mahan as the named
inventors after full and fair examination. MobileStar owns all rights, title, and interest in and to the
’131 Patent and possesses all rights of recovery under the ’131 Patent.
20.

On July 20, 2004, U.S. Patent No. 6,765,591 (“the ’591 Patent”) entitled “Managing a

16

Virtual Private Network” was duly and legally issued with Matthew W. Poisson, Melissa L.

17

Desroches, and James M. Milillo as the named inventors after full and fair examination. MobileStar

18

owns all rights, title, and interest in and to the ’591 Patent and possesses all rights of recovery under

19
20
21
22

the ’591 Patent.
21.

On August 30, 2005, U.S. Patent No. 6,937,572 (“the ’572 Patent”) entitled “Call

Trace on a Packet Switched Network” was duly and legally issued with Brian B. Egan and Milos

23

Vodsedalek as the named inventors after full and fair examination. MobileStar owns all rights, title,

24

and interest in and to the ’572 Patent and possesses all rights of recovery under the ’572 Patent.

25
26

GENERAL ALLEGATIONS
22.

Google has directly and indirectly infringed and continues to directly and indirectly

27
28

Case No. 4:13-cv-5933-CW

-20-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

infringe each of the ‘551, ‘937, ‘298, ‘973, ‘131, ‘591 and ‘572 Patents by engaging in acts

2

constituting infringement under 35 U.S.C. § 271(a), (b), (c), and/or (f), including but not necessarily

3
4

limited to one or more of making, using, selling and offering to sell, in this District and elsewhere in
the United States, and importing into this District and elsewhere in the United States, certain

5
6
7
8
9
10
11
12
13
14
15

Google Devices, including Google’s Nexus 5, Nexus 7, Nexus 10, and Galaxy Nexus devices and
other Google products that infringe the patent claims involved in this action (“Google Devices”).
23.

Google is doing business in the United States and, more particularly, in the Northern

District of California by making, using, selling, importing, and/or offering for sale Google Devices
or by transacting other business in this District.
24.

On information and belief, Google uses, sells, and offers for sale at least Nexus 10

devices in the United States, including in this District.
25.

Google also uses, sells, and offers for sale Nexus 5 and Nexus 7 devices in the United

States, including in this District.
PATENT INFRINGEMENT BY GOOGLE

16
17
18
19

26.

described below, Google has infringed and/or continues to infringe the ‘551, ’937, ‘298, ‘973, ’131,
’591 and ‘572 Patents.

20

The Google Devices Infringe At Least One Claim Of The ‘551 Patent

21
22

Plaintiffs incorporate by reference paragraphs 1-25 as if fully set forth herein. As

27.

The Google Devices infringe at least claim 1 of the ‘551 Patent. Google makes, uses,

23

sells, offers for sale, imports, exports, supplies and/or distributes within the United States the

24

Google Devices and thus directly infringes one or more claims of the ’551 Patent, including at least

25

claim 1.

26

28.

Google indirectly infringes the ’551 patent by inducing infringement by others, such

27
28

Case No. 4:13-cv-5933-CW

-21-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

as resellers, of at least claim 1 in accordance with 35 U.S.C. § 271(b) in this District and elsewhere

2

in the United States. Direct infringement is the result of activities performed by the manufacturers,

3
4

resellers, and/or end-users of the Google Devices. Google had actual notice of the ’551 Patent at
least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio containing each of

5
6
7

the patents asserted herein, was further aware of the ’551 patent as a result of Rockstar’s October
31, 2013 filing of the action against the Eastern District Defendants, was further aware of the ’551

8

patent prior to filing its complaint for declaratory relief in this case, and further has knowledge of

9

its infringement of the Patents-in-Suit’551 patent by way of this Complaint.

10
11
12
13
14

29.

Google’s affirmative acts of selling Google Devices, causing the Google Devices to

be manufactured and distributed, and providing instruction manuals for Google Devices induced
Google’s manufacturers and resellers to make or use Google Devices in their normal and customary
way to infringe the ’551 patent. Through its manufacture and sales of Google Devices, Google

15

specifically intended its resellers and manufacturers to infringe the ’551 patent; further, Google was

16

aware that these normal and customary activities would infringe the ’551 patent. Google performed

17

the acts that constitute induced infringement, and would induce actual infringement, with the

18

knowledge of the ’551 patent and with the knowledge or willful blindness that the induced acts

19
20
21
22

would constitute infringement.
30.

Accordingly, a reasonable inference is that Google specifically intends for others,

such as resellers and end-use customers of the Google Devices, to directly infringe one or more

23

claims of the ‘551 Patent in the United States because Google has knowledge of the ‘551 Patent and

24

its infringement thereof and Google actually induces others, such as resellers and end-use

25

customers, to directly infringe the ‘551 patent, by using, selling, exporting, supplying and/or

26

distributing, within the United States, Google Devices for resale to others, such as resellers and end-

27
28

Case No. 4:13-cv-5933-CW

-22-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

use customers.

2

infringement.

3
4

31.

Google knew or should have known that such actions would induce actual

Google indirectly infringes the ‘551 Patent by contributing to infringement by others,

such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(c) in this District and

5
6
7

elsewhere in the United States. Direct infringement is the result of activities performed by the
manufacturers, resellers, and end-users of Google Devices. Google had actual notice of the ’551

8

Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio

9

containing each of the patents asserted herein, was further aware of the ’551 patent as a result of

10

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further

11
12
13
14

aware of the ’551 patent prior to filing its complaint for declaratory relief in this case, and further
has knowledge of its infringement of the ’551 patent by way of this Complaint.
32.

The Google Devices include at least one electronic package comprising a component

15

that is located between an EMI shield and a ground member for performing shielding operations.

16

The EMI shield is incorporated into the electronic package, which is then mounted to a circuit board

17

in Google Devices, and on information and belief, the electronic component does not function in an

18

acceptable manner absent the EMI shielding. Furthermore, the electronic package incorporating the

19
20
21
22
23

EMI shield does not operate in isolation, but is designed to operate within the Mobile
Communication Device, and absent the EMI shielding of the electronic component, the Google
Devices would not function in an acceptable manner.
33.

A reasonable inference to be drawn from the facts set forth is that the EMI shielded

24

electronic package in the Google Devices is especially made or especially adapted to operate in a

25

Google Device as an EMI shield.

26

34.

A reasonable inference to be drawn from the facts set forth is that the EMI shielded

27
28

Case No. 4:13-cv-5933-CW

-23-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

electronic package is not a staple article or commodity of commerce and that the use of the EMI

2

shielded electronic package is required for operation of the Google Devices. Any other use would

3

be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.

4

35.

The EMI shielded electronic package in Google Devices are each a material part of

5
6
7

the invention of the ’551 patent and are especially made for the infringing manufacture, sale, and
use of Google Devices. Google Devices, including the EMI shielded electronic package, are

8

especially made or adapted as an electronic package that infringes the ’551 patent. Because the

9

sales and manufacture of Google Devices including the EMI shielded electronic package infringe

10

the ’551 patent, Google’s sales of its infringing products have no substantial non-infringing uses.

11
12
13
14

36.

Accordingly, a reasonable inference is that Google offers to sell, or sells within the

United States the Google Devices which are or include a component of a patented machine,
manufacture, combination, or composition, or a material or apparatus for use in practicing one or

15

more claims of the ’551 patent, constituting a material part of the invention, knowing the same to be

16

especially made or especially adapted for use in an infringement of one or more claims of the ’551

17

patent, and the Google Devices are not a staple article or commodity of commerce suitable for

18

substantial non-infringing uses.

19
20
21

separate components, including hardware components, which have no substantial non-infringing
uses.
The Google Devices Infringe At Least One Claim Of The ‘937 Patent

22
23

Google provides to others Google Devices with distinct and

37.

The Google Devices with an operating system and hardware components configured

24

and installed by Google to support Gallery, Email, Maps and Browser functionality, infringe at least

25

claim 13 of the ‘937 Patent. Google makes, uses, tests, sells, offers for sale, imports, exports,

26

supplies and/or distributes within the United States the Google Devices and thus directly infringes

27
28

Case No. 4:13-cv-5933-CW

-24-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1
2
3
4

at least claim 13 of the ‘937 Patent.
38.

Google indirectly infringes the ‘937 patent by inducing infringement by others of at

least claim 13, such as resellers, in accordance with 35 U.S.C. § 271(b) in this District and
elsewhere in the United States. Direct infringement is the result of activities performed by the

5
6
7

manufacturers, resellers, and end-users of the Google Devices. Google received actual notice of the
’937 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio

8

containing each of the patents asserted herein, was further aware of the ’937 patent as a result of

9

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further

10

aware of the ’937 patent prior to filing its complaint for declaratory relief in this case, and further

11
12
13
14

has knowledge of its infringement of the ’937 patent by way of this Complaint
39.

Google’s affirmative acts of selling Google Devices, causing the Google Devices to

be manufactured, and providing instruction manuals for Google Devices induced Google’s

15

manufacturers and resellers to make or use the Google Devices in their normal and customary way

16

to infringe the ‘937 patent.

17

specifically intended its resellers and manufacturers to infringe the ‘937 patent; further, Google was

18

aware that these normal and customary activities would infringe the ‘937 patent. Google performed

19
20
21
22
23

Through its manufacture and sales of Google Devices, Google

the acts that constitute induced infringement, and would induce actual infringement, with
knowledge of the ‘937 patent and with the knowledge or willful blindness that the induced acts
would constitute infringement.
40.

Accordingly, a reasonable inference is that Google specifically intends for others,

24

such as resellers and end-use customers of the Google Devices, to directly infringe one or more

25

claims of the ‘937 patent in the United States because Google has knowledge of the ‘937 patent and

26

its infringement thereof and actually induces others, such as resellers and end-use customers, to

27
28

Case No. 4:13-cv-5933-CW

-25-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

directly infringe, by using, selling, exporting, supplying and/or distributing within the United States,

2

Google Communication Devices for resale to others, such as resellers and end-use customers.

3
4

Google knew or should have known that such actions would induce actual infringement.
41.

The use of at least Google Devices with an operating system and hardware

5
6
7
8
9
10
11
12
13
14

components configured and installed by Google to support Gallery, Email, Maps, Browser, and
Contacts functionality as intended by Google infringes at least method claim 1 of the ‘937 Patent.
Google uses these products and thus directly infringes at least method claim 1 of the ‘937 Patent.
42.

In addition, Google provides at least Google Devices with an operating system and

hardware components configured and installed by Google to support Gallery, Email, Maps,
Browser, and Contacts functionality to others, such as resellers and end-use customers, in the
United States who, in turn, use these products to infringe at least method claim 1 of the ‘937 Patent.
43.

Google indirectly infringes the ’937 patent by inducing infringement by others, such

15

as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in this District and

16

elsewhere in the United States. Direct infringement is the result of activities performed by the

17

manufacturers, resellers, and end-users of the Google Devices. Google received actual notice of the

18

’937 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio

19
20
21
22
23
24
25
26

containing each of the patents asserted herein, was further aware of the ’937 patent as a result of
Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further
aware of the ’937 patent prior to filing its complaint for declaratory relief in this case, and further
has knowledge of its infringement of the ’937 patent by way of this Complaint.
44.

Google provides at least Google Devices with an operating system and hardware

components configured and installed by Google to support Gallery, Email, Maps, Browser, and
Contacts functionality to others, such as resellers and end-use customers, in the United States who,

27
28

Case No. 4:13-cv-5933-CW

-26-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

in turn, use these products to infringe the ’937 Patent. Through its manufacture and sales of Google

2

Devices, Google specifically intended its resellers and manufacturers to infringe the ’937 patent.

3
4

45.

Google specifically intends for others, such as resellers and end-use customers, to

directly infringe one or more claims of the ’937 Patent in the United States. For example, Google

5
6
7

provides instructions to resellers and end-use customers regarding the use and operation of
Google’s products in an infringing way. Such instructions include at least “Google Nexus Help”

8

(available at https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518l).

9

resellers and end-use customers follow such instructions, they directly infringe the ‘937 Patent.

10

Google knows that by providing such instructions, resellers and end-use customers follow those

11
12
13
14

When

instructions, and directly infringe the ‘937 Patent. Google thus knows that its actions induce the
infringement.
46.

Google performed the acts that constitute induced infringement, and would induce

15

actual infringement, with knowledge of the ’937 patent and with the knowledge or willful blindness

16

that the induced acts would constitute infringement.

17
18
19
20
21
22

47.

Google indirectly infringes the ’937 patent, by contributing to infringement by others,

such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(c) in this District and
elsewhere in the United States. Direct infringement is the result of activities performed by the
manufacturers, resellers, and end-users of Google Devices. Google received actual notice of the
’937 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio

23

containing each of the patents asserted herein was further aware of the ’937 patent as a result of

24

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further

25

aware of the ’937 patent prior to filing its complaint for declaratory relief in this case, and further

26

has knowledge of its infringement of the ’937 patent by way of this Complaint.

27
28

Case No. 4:13-cv-5933-CW

-27-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1
2
3
4

48.

The Google Devices include functionality and hardware that, inter alia, displays a

navigable graphical user interface (“navigable GUI”) that permits a user to manipulate and control
the contents of the display to maximize the use of display real estate. This navigable GUI and the
associated hardware is included in Google Devices with an operating system and hardware

5
6
7
8
9
10
11
12
13
14
15

components configured and installed by Google to support at least the Gallery, Email, Maps,
Browser, and Contacts functionalities. On information and belief, these functionalities cannot
operate in an acceptable manner absent the navigable GUI, as it is included in every Google Device.
49.

A reasonable inference to be drawn from the facts set forth is that the navigable GUI

and the associated hardware as included in Google Devices is especially made or especially adapted
to operate on a Google Device as a navigable GUI and the associated hardware that permits a user
to manipulate or control the contents of the display to maximize the use of display real estate on the
user’s Google Devices.
50.

A reasonable inference to be drawn from the facts set forth is that the navigable GUI

16

and the associated hardware as included in the Google Device is not a staple article or commodity

17

of commerce and that the use of the navigable GUI and the associated hardware in the Google

18

Devices is required for the operation of Google Devices. Any other use would be unusual, far-

19
20
21
22

fetched, illusory, impractical, occasional, aberrant, or experimental.
51.

The Google Devices with the navigable GUI and the associated hardware are each a

material part of the invention of the ’937 patent and are especially made for the infringing

23

manufacture, sale, and use of Google Devices. Google Devices with the navigable GUI and the

24

associated hardware are especially made or adapted as a navigable GUI and associated hardware

25

that infringes the ’937 patent. Because the sales and manufacture of Google Devices with a

26

navigable GUI and associated hardware infringes the ’937 patent, Google’s sales of its infringing

27
28

Case No. 4:13-cv-5933-CW

-28-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1
2
3
4

products have no substantial non-infringing uses.
52.

Accordingly, a reasonable inference is that Google offers to sell, or sells within the

United States the Google Devices which are or include a component of a patented machine,
manufacture, combination, or composition, or a material or apparatus for use in practicing one or

5
6
7

more claims of the ’937 patent, constituting a material part of the invention, knowing the same to be
especially made or especially adapted for use in an infringement of one or more of the ʼ937 patent,

8

and the Google Devices are not a staple article or commodity of commerce suitable for substantial

9

non-infringing uses.

10
11

components, including software and hardware components, which have no substantial noninfringing uses.

12

The Google Devices Infringe At Least One Claim Of The ʼ298 Patent

13
14

Google provides to others, Google Devices with distinct and separate

53.

The Google Devices with an operating system and hardware components configured

15

and installed by Google to support portable hotspot functionality infringe at least claims 27 and 31

16

of the ‘298 Patent. Google makes, uses, sells, offers for sale, imports, exports, supplies and/or

17

distributes within the United States the Google devices and thus directly infringes at least claims 27

18

and 31 of the ‘298 Patent.

19
20
21
22

54.

Google indirectly infringes the ‘298 patent by inducing infringement by others of at

least claims 27 and 31, such as resellers, in accordance with 35 U.S.C. § 271(b) in this District and
elsewhere in the United States. Direct infringement is the result of activities performed by the

23

manufacturers, resellers, and end-users of the Google Devices. Google received actual notice of the

24

’298 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio

25

containing each of the patents asserted herein, was further aware of the ’298 patent as a result of

26

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further

27
28

Case No. 4:13-cv-5933-CW

-29-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

aware of the ’298 patent prior to filing its complaint for declaratory relief in this case, and further

2

has knowledge of its infringement of the ’298 patent by way of this Complaint..

3
4

55.

Google’s affirmative acts of selling Google Devices, causing the Google Devices to

be manufactured, and providing instruction manuals for Google Devices induced Google’s

5
6
7

manufacturers and resellers to make or use the Google Devices in their normal and customary way
to infringe the ‘298 patent.

Through its manufacture and sales of Google Devices, Google

8

specifically intended its resellers and manufacturers to infringe the ‘298 patent; further, Google was

9

aware that these normal and customary activities would infringe the ‘298 patent. Google performed

10

the acts that constitute induced infringement, and would induce actual infringement, with

11
12
13
14

knowledge of the ‘298 patent and with the knowledge or willful blindness that the induced acts
would constitute infringement.
56.

Accordingly, a reasonable inference is that Google specifically intends for others,

15

such as resellers and end-use customers of the Google Devices, to directly infringe one or more

16

claims of the ‘298 patent in the United States because Google has knowledge of the ‘298 patent and

17

its infringement thereof and actually induces others, such as resellers and end-use customers, to

18

directly infringe, by using, selling, exporting, supplying and/or distributing within the United States

19
20
21
22

Google Devices for resale to others, such as resellers and end-use customers. Google knew or
should have known that such actions would induce actual infringement.
57.

The use of at least Google Devices that support the portable hotspot functionality as

23

intended by Google infringes at least method claims 14 and 24 of the ‘298 Patent. Google uses

24

these products and thus directly infringes at least method claims 14 and 24 of the ‘298 Patent.

25
26

58.

In addition, Google provides at least Google Devices that support the portable hotspot

functionality to others, such as resellers and end-use customers, in the United States who, in turn,

27
28

Case No. 4:13-cv-5933-CW

-30-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1
2
3
4

use these products to infringe at least method claims 14 and 24 of the ‘298 Patent.
59.

Google indirectly infringes the ’298 patent by inducing infringement by others, such

as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in this District and
elsewhere in the United States. Direct infringement is the result of activities of the manufacturers,

5
6
7

resellers, and end-users of Google Devices in their intended use, including a customer’s use of the
portable hotspot functionality. Google received actual notice of the ’298 Patent at least by April 4,

8

2011, when it placed its initial bid for the Nortel patent portfolio containing each of the patents

9

asserted herein, and further has knowledge of its infringement of the Patents-in-Suit by way of this

10

Complaint, was further aware of the ’298 patent as a result of Rockstar’s October 31, 2013 filing of

11
12
13
14
15

the action against the Eastern District Defendants, was further aware of the ’298 patent prior to
filing its complaint for declaratory relief in this case, and further has knowledge of its infringement
of the ’298 patent by way of this Complaint.
60.

Google’s affirmative acts of selling its Google Devices and providing instruction

16

manuals induced the end-users of Google Devices to use Google Devices in their normal and

17

customary way to infringe the ’298 patent at least through using Mobile Hotspot functionality.

18

Google also provides instructions, including at least “Google Nexus Help” (available at

19
20
21
22

https://support.google.com/nexus/#topic=3415518), for using portable hotspot functionality.
Through its sales of Google Devices with portable hotspot functionality, Google specifically
intended the end-users of Google Devices to infringe the ’298 patent; further, Google was aware

23

that the normal and customary use of portable hotspot functionality would infringe the ’298 patent.

24

Google also enticed its end-users to use portable hotspot functionality by providing instruction

25

manuals and also providing portable hotspot functionality.

26

Google performed the acts that

constituted induced infringement, and would induce actual infringement, with the knowledge of the

27
28

Case No. 4:13-cv-5933-CW

-31-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

’298 patent and with the knowledge or willful blindness that the induced acts would constitute

2

infringement.

3
4

61.

Accordingly, a reasonable inference is that Google actively induces infringement of

the ‘298 Patent by others, such as resellers and end-use customers. Google specifically intends for

5
6
7

others, including such as resellers and end-use customers, to directly infringe one or more claims of
the ‘298 Patent in the United States because Google had knowledge of the ‘298 Patent, and Google

8

actually induces infringement by providing instructions to resellers and end-use customers

9

regarding the use and operation of Google Devices in an infringing way. Such instructions include

10

at least “Google Nexus Help” (available at https://support.google.com/nexus/#topic=3415518).

11
12
13
14

When resellers and end-use customers follow such instructions, they directly infringe the ‘298
Patent. Google knows that by providing such instructions, resellers and end-use customers follow
those instructions, and directly infringe the ‘298 Patent. Google thus knows that its actions induce

15

the infringement.

16

62.

Google indirectly infringes the ‘298 Patent by contributing to infringement by others,

17

such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(c) in this District and

18

elsewhere in the United States. Direct infringement is the result of activities performed by the

19
20
21
22

manufacturers, resellers, and end-users of Google Devices in their intended use, including a
customer’s use of the portable hotspot functionality. Google received actual notice of the ’298
Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio

23

containing each of the patents asserted herein, was further aware of the ’298 patent as a result of

24

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further

25

aware of the ’298 patent prior to filing its complaint for declaratory relief in this case, and further

26

has knowledge of its infringement of the ’298 patent by way of this Complaint. .

27
28

Case No. 4:13-cv-5933-CW

-32-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1
2
3
4

63.

The Google Devices with portable hotspot functionality allow wireless devices from a

first, or private, network to connect to a second, or public, network such as the Internet. The
portable hotspot functionality is designed to route data packets between wireless devices tethered to
the portable hotspot to nodes on a public network such as the Internet, and cannot function in a

5
6
7
8
9
10
11
12
13
14

manner that does not utilize the portable hotspot functionality available to Google Devices. Upon
information and belief, the portable hotspot functionality is designed to entice a user to access
nodes in a second, or public, network such as the Internet.
64.

A reasonable inference to be drawn from the facts set forth is that the portable hotspot

functionality in the Google Devices is especially made or especially adapted to operate on Google
Devices for providing access for wireless devices in a first, or private, network to nodes in a second,
or public, network.
65.

A reasonable inference to be drawn from the facts set forth is that the portable hotspot

15

functionality is not a staple article or commodity of commerce and that the use of the portable

16

hotspot functionality of the Google Devices is for interfacing first and second data communications

17

networks, e.g., a private network and a public network such as the Internet. Any other use would be

18

unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.

19
20
21
22

66.

The Google Devices with portable hotspot functionality are each a material part of the

’298 patent and especially made for the infringing use of the portable hotspot functionality for
interfacing private and public data communication networks. Google Devices with the portable

23

hotspot functionality are especially made or adapted to provide access for wireless devices in a first,

24

or private, network through the Google Device, to nodes in a second, or public, network that

25

perform or facilitate performance of the steps that infringe the ’298 patent. Furthermore, Google

26

provides user manuals describing the uses of Google Devices that infringe the ’298 patent. Because

27
28

Case No. 4:13-cv-5933-CW

-33-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

the sales and manufacture of Google Devices with portable hotspot functionality infringe the ’298

2

patent, Google’s sales of its infringing products have no substantial non-infringing uses.

3
4

67.

Accordingly, a reasonable inference is that Google offers to sell, or sells within the

United States the Google Devices which are or include a component of a patented machine,

5
6
7

manufacture, combination, or composition, or a material or apparatus for use in practicing one or
more claims of the ʼ298 patent, constituting a material part of the invention, knowing the same to be

8

especially made or especially adapted for use in an infringement of one or more claims of the ʼ298

9

patent, and the Google Devices are not a staple article or commodity of commerce suitable for

10

substantial non-infringing uses. Google provides to others Google Devices with an operating

11
12
13
14
15

system and hardware components configured and installed by Google to support portable hotspot
functionality.

components, including software components, which are used only to perform the infringing method
claims.
The Google Devices Infringe At Least One Claim Of The ʼ973 Patent

16
17

Google installs and configures Google Devices with distinct and separate

68.

The Google Devices with an operating system and hardware components configured

18

and installed by Google to support an integrated notification message center functionality infringe

19

at least claims 1 and 21 of the ‘973 Patent. Google makes, uses, sells, tests, uses, offers for sale,

20
21
22
23

imports, exports, supplies and/or distributes within the United States the Google devices and thus
directly infringes one or more claims of the ’973 patent, including at least claims 1 and 21.
69.

Google indirectly infringes the ‘973 patent by inducing infringement by others, such

24

as resellers, of at least claims 1 and 21 in accordance with 35 U.S.C. § 271(b) in this District and

25

elsewhere in the United States. Direct infringement is the result of activities performed by the

26

manufacturers, resellers, and end-users of the Google Devices. Google received actual notice of the

27
28

Case No. 4:13-cv-5933-CW

-34-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

’973 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio

2

containing each of the patents asserted herein, was further aware of the ’973 patent as a result of

3
4

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further
aware of the ’973 patent prior to filing its complaint for declaratory relief in this case, and further

5
6
7

has knowledge of its infringement of the ’973 patent by way of this Complaint.
70.

Google’s affirmative acts of selling Google Devices, causing the Google Devices to

8

be manufactured, and providing instruction manuals for Google Devices induced Google’s

9

manufacturers and resellers to make or use Google’s Devices in their normal and customary way to

10

infringe the ‘973 patent. Through its manufacture and sales of Google Devices, Google specifically

11
12
13
14

intended its resellers and manufacturers to infringe the ‘973 patent; further, Google was aware that
these normal and customary activities would infringe the ‘973 patent. Google performed the acts
that constitute induced infringement, and would induce actual infringement, with knowledge of the

15

‘973 patent and with the knowledge or willful blindness that the induced acts would constitute

16

infringement.

17
18
19
20
21
22

71.

Accordingly, a reasonable inference is that Google specifically intends for others,

such as resellers and end-use customers of the Google Devices, to directly infringe one or more
claims of the ‘973 patent in the United States because Google has knowledge of the ‘973 patent and
its infringement thereof and actually induces others, such as resellers and end-use customers, to
directly infringe, by using, selling, exporting, supplying and/or distributing within the United States,

23

Google Communication Devices for resale to others, such as resellers and end-use customers.

24

Google knew or should have known that such actions would induce actual infringement.

25
26

72.

The use of at least Google Devices with an operating system and hardware

components configured and installed by Google to support an integrated notification message center

27
28

Case No. 4:13-cv-5933-CW

-35-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

functionality as intended by Google infringes at least method claim 8 of the ‘973 Patent. Google

2

uses these devices within the United States and thus directly infringes one or more claims of the

3
4

’973 patent, including at least claim 8.
73.

Google indirectly infringes the ’973 patent by inducing infringement by others, such

5
6
7

as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in this District and
elsewhere in the United States. Direct infringement is the result of activities performed by the

8

manufacturers, resellers, and end-users of Google Devices. Google received actual notice of the

9

’973 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio

10

containing each of the patents asserted herein, was further aware of the ’973 patent as a result of

11
12
13
14
15

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further
aware of the ’973 patent prior to filing its complaint for declaratory relief in this case, and further
has knowledge of its infringement of the ’973 patent by way of this Complaint. .
74.

Google provides at least Google Devices with an operating system and hardware

16

components configured and installed by Google to support integrated notification message center

17

functionality to others, such as resellers and end-use customers, in the United States who, in turn,

18

use Google Devices to infringe at least method claim 8 of the ‘973 Patent. Through its manufacture

19
20
21
22

and sales of Google Devices, Google specifically intended its resellers and manufacturers to
infringe the ’973 patent.
75.

Google specifically intends for others, such as resellers and end-use customers, to

23

directly infringe one or more claims of the ‘973 Patent in the United States. For example, Google

24

provides instructions to resellers and end-use customers regarding the use and operation of Google

25

Devices in an infringing way. Such instructions include at least “Google Nexus Help” (available at

26

https://support.google.com/nexus/#topic=3415518). When resellers and end-use customers follow

27
28

Case No. 4:13-cv-5933-CW

-36-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

such instructions, they directly infringe the ‘973 Patent. Google knows that by providing such

2

instructions, resellers and end-use customers follow those instructions, and directly infringe the

3
4

‘973 Patent. Google thus knows that its actions induce the infringement.
76.

Google performed the acts that constitute induced infringement, and would induce

5
6
7
8

actual infringement, with the knowledge of the ’973 patent and with the knowledge or willful
blindness that the induced acts would constitute infringement.
77.

Google indirectly infringes the ’973 patent, by contributing to infringement by others,

9

such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(c) in this District and

10

elsewhere in the United States. Direct infringement is the result of activities performed by the

11
12
13
14

manufacturers, resellers, and end-users of Google Devices. Google received actual notice of the
’973 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio
containing each of the patents asserted herein, was further aware of the ’973 patent as a result of

15

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further

16

aware of the ’973 patent prior to filing its complaint for declaratory relief in this case, and further

17

has knowledge of its infringement of the ’973 patent by way of this Complaint. .

18
19
20
21
22

78.

The Google Devices include functionality that, inter alia, displays an integrated

notification message center contained in a single list. The notification message center is designed
to provide a user with a single list of notifications regardless of the types of messages (e.g., email,
text, etc) on the user’s Google Device. On information and belief, this functionality cannot operate

23

in an acceptable manner absent the integrated notification message center, as it is included in every

24

Google Device.

25

79.

26

A reasonable inference to be drawn from the facts set forth is that the integrated

message center in the Google Devices is especially made or especially adapted to operate on a

27
28

Case No. 4:13-cv-5933-CW

-37-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

Google Device as an integrated notification message center that provides a user with notifications

2

concerning different types of messages on the user’s Mobile Communication Device.

3
4

80.

A reasonable inference to be drawn from the facts set forth is that the integrated

notification message center in the Mobile Communication Device is not a staple article or

5
6
7
8

commodity of commerce and that the use of the integrated notification message center in Google
Devices is required for operation of the Google Devices. Any other use would be unusual, farfetched, illusory, impractical, occasional, aberrant, or experimental.

9
10
11
12
13
14

81.

Google Devices with the integrated notification message center are each a material

part of the invention of the ’973 patent and are especially made for the infringing manufacture, sale,
and use of Google Devices. Google Devices, including the integrated notification message center,
are especially made or adapted as an integrated notification message center that infringes the ’973
patent. Because the sales and manufacture of Google Devices with an integrated notification

15

message center infringes the ’973 patent, Google’s sales of its infringing products have no

16

substantial non-infringing uses.

17
18
19
20
21
22

82.

Accordingly, a reasonable inference is that Google offers to sell, or sells within the

United States the Google Devices which are or include a component of a patented machine,
manufacture, combination, or composition, or a material or apparatus for use in practicing one ore
more claims of the ʼ973 patent, constituting a material part of the invention, knowing the same to be
especially made or especially adapted for use in an infringement of one or more claims of the ʼ973

23

patent, and the Google Devices are not a staple article or commodity of commerce suitable for

24

substantial non-infringing uses.

25

separate components, including software components, which have no substantial non-infringing

26

Google provides to others Google Devices with distinct and

uses.

27
28

Case No. 4:13-cv-5933-CW

-38-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

The Google Devices Infringe At Least One Claim Of The ʼ131 Patent

1
2
3
4

83.

The Google Devices with an operating system and hardware components configured

and installed by Google to support Message and Notification functionality infringe at least claim 1
of the ‘131 Patent. Google makes, uses, sells, offers for sale, imports, exports, supplies and/or

5
6
7
8

distributes within the United States the Google Devices and thus directly infringes at least claim 1
of the ‘131 Patent.
84.

Google indirectly infringes the ‘131 patent by inducing infringement by others, such

9

as resellers, of at least claim 1 in accordance with 35 U.S.C. § 271(b) in this District and elsewhere

10

in the United States. Direct infringement is the result of activities performed by the manufacturers,

11
12
13
14

resellers, and end-users of the Google Devices. Google received actual notice of the ’131 Patent at
least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio containing each of
the patents asserted herein, was further aware of the ’131 patent as a result of Rockstar’s October

15

31, 2013 filing of the action against the Eastern District Defendants, was further aware of the ’131

16

patent prior to filing its complaint for declaratory relief in this case, and further has knowledge of

17

its infringement of the ’131 patent by way of this Complaint. .

18
19
20
21
22

85.

Google’s affirmative acts of selling Google Devices, causing the Google Devices to

be manufactured, and providing instruction manuals for Google Devices induced Google’s
manufacturers and resellers to make or use the Google Devices in their normal and customary way
to infringe the ‘131 patent.

Through its manufacture and sales of Google Devices, Google

23

specifically intended its resellers and manufacturers to infringe the ‘131 patent; further, Google was

24

aware that these normal and customary activities would infringe the ‘131 patent. Google performed

25

the acts that constitute induced infringement, and would induce actual infringement, with

26

knowledge of the ‘131 patent and with the knowledge or willful blindness that the induced acts

27
28

Case No. 4:13-cv-5933-CW

-39-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1
2
3
4

would constitute infringement.
86.

Accordingly, a reasonable inference is that Google specifically intends for others,

such as resellers and end-use customers of the Google Devices, to directly infringe one or more
claims of the ‘131 patent in the United States because Google has knowledge of the ‘131 patent and

5
6
7

its infringement thereof and actually induces others, such as resellers and end-use customers, to
directly infringe, by using, selling, exporting, supplying and/or distributing within the United States,

8

Google Communication Devices for resale to others, such as resellers and end-use customers.

9

Google knew or should have known that such actions would induce actual infringement.

10
11
12
13
14
15

87.

The use of the Google Devices with an operating system and hardware components

configured and installed by Google to support Message and Notification functionality as intended
by Google infringes at least method claim 5 of the ‘131 Patent. Google uses these products and
thus directly infringes at least method claim 5 of the ‘131 Patent.
88.

In addition, Google provides at least Google Devices with an operating system and

16

hardware components configured and installed by Google to support Message functionality to

17

others, such as resellers and end-use customers, in the United States who, in turn, use these products

18

to infringe at least method claim 5 of the ‘131 Patent.

19
20
21
22

89.

Google indirectly infringes the ’131 patent by inducing infringement by others, such

as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in this District and
elsewhere in the United States. Direct infringement is the result of activities performed by the

23

manufacturers, resellers, and end-users of Google Devices in their intended use, including a

24

customer’s use of the Message and Notifications functionality. Google received actual notice of the

25

’131 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio

26

containing each of the patents asserted herein, was further aware of the ’131 patent as a result of

27
28

Case No. 4:13-cv-5933-CW

-40-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further

2

aware of the ’131 patent prior to filing its complaint for declaratory relief in this case, and further

3
4

has knowledge of its infringement of the ’131 patent by way of this Complaint. .
90.

Google’s affirmative acts of selling Google Devices and providing instruction

5
6
7

manuals induced the end-users of Google Devices to use Google Devices in their normal and
customary way to infringe the ’131 patent at least through using Message and Notifications

8

functionality. Google also provides instructions, including at least “Google Nexus Help” available

9

on Google’s website at https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518,

10

for using the Messaging and Notifications functionality. Through its sales of the Google Devices

11
12
13
14

with Messaging and Notifications functionality, Google specifically intended the end-users of
Google Devices to infringe the ’131 patent; further, Google was aware that the normal and
customary use of the Message and Notifications functionality would infringe the ’131 patent.

15

Google also enticed its end-users to use the Messaging and Notifications functionality by providing

16

instruction manuals. Google performed the acts that constituted induced infringement, and would

17

induce actual infringement, with the knowledge of the ’131 patent and with the knowledge or

18

willful blindness that the induced acts would constitute infringement.

19
20
21
22

91.

Accordingly, a reasonable inference is that Google actively induces infringement of

the ‘131 Patent by others, such as resellers and end-use customers of the Google Devices. Google
specifically intends for others, such as resellers and end-use customers of the Google Devices, to

23

directly infringe one or more claims of the ‘131 Patent in the United States because Google had

24

knowledge of the ‘131 Patent and its infringement thereof, and Google actually induces

25

infringement by providing instructions to resellers and end-use customers regarding the use and

26

operation of Google Devices in an infringing way. Such instructions include at least “Google

27
28

Case No. 4:13-cv-5933-CW

-41-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

Nexus

2

https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518.

3
4

Help”

available

at
When resellers and

end-use customers follow such instructions, they directly infringe the ‘131 Patent. Google knows
that by providing such instructions, resellers and end-use customers follow those instructions, and

5
6
7

directly infringe the ‘131 Patent. Google thus knows that its actions induce the infringement.
92.

Google indirectly infringes the ‘131 Patent by contributing to infringement by others,

8

such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(c) in this District and

9

elsewhere in the United States. Direct infringement is the result of activities performed by the

10

manufacturers, resellers, and end-users of Google Devices in their intended use, including a

11
12
13
14

customer’s use of the Messaging and Notification functionality. Google received actual notice of
the ’131 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio
containing each of the patents asserted herein, and was further aware of the ’131 patent as a result

15

of Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was

16

further aware of the ’131 patent prior to filing its complaint for declaratory relief in this case, and

17

further has knowledge of its infringement of the ’131 patent by way of this Complaint. .

18
19
20
21
22

93.

Google’s Message and Notification functionality receives and displays message of

different types, such as a phone call, voice mail, text message, or email. The Message and
Notification Services functionality is designed to notify the user of an incoming communication and
to select the format of the message received and cannot function in a manner that does not utilize

23

the messaging functionality available to Google Devices.

24

Message and Notifications functionality is designed to entice a user to receive notifications of an

25

incoming communication.

26

94.

Upon information and belief, the

A reasonable inference to be drawn from the facts set forth is that the Message and

27
28

Case No. 4:13-cv-5933-CW

-42-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

Notifications functionality is especially made or especially adapted to operate on the Google

2

Devices for notifying a user of an incoming communication.

3
4

95.

A reasonable inference to be drawn from the facts set forth is that the Message and

Notifications functionality is not a staple article or commodity of commerce and that the use of the

5
6
7
8
9
10
11
12
13
14

Messaging and Notifications functionality of the Google Devices is for notifying a user of an
incoming communication. Any other use would be unusual, far-fetched, illusory, impractical,
occasional, aberrant, or experimental.
96.

Google Devices with Messaging and Notifications functionality are each a material

part of the ’131 patent and especially made for the infringing use of the Messaging and Notification
functionality to receive and display messages.

Google Devices including the Messaging and

Notification functionality, are especially made or adapted to notify a user of an incoming
communication that perform or facilitate performance of the steps that infringe the ’131 patent.

15

Furthermore, Google provides user manuals describing the uses of its Google Devices that infringe

16

the ’131 patent. Because the functionality provided by Google’s Messaging and Notification to

17

notify a user of an incoming communication infringes the ’131 patent, Google’s sales of its

18

infringing products have no substantial non-infringing uses.

19
20
21
22

97.

Accordingly, a reasonable inference is that Google offers to sell, or sells within the

United States the Google Devices which are or include a component of a patented machine,
manufacture, combination, or composition, or a material or apparatus for use in practicing one or

23

more claims of the ʼ131 patent, constituting a material part of the invention, knowing the same to be

24

especially made or especially adapted for use in an infringement of one or more claims of the ʼ131

25

patent, and the Google Devices are not a staple article or commodity of commerce suitable for

26

substantial non-infringing uses. Google provides to others, Google Devices with an operating

27
28

Case No. 4:13-cv-5933-CW

-43-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

system and hardware components configured and installed by Google to support Message and

2

Notification functionality. Google installs and configures on these products distinct and separate

3
4

components, including software components, which are used only to perform the infringing method
claims.

5
The Google Devices Infringe At Least One Claim Of The ʼ591 Patent

6
7

98.

The Google Devices with an operating system and hardware components configured

8

and installed by Google to support VPN management functionality, infringe at least claims 1 and 8

9

of the ‘591 Patent. Google makes, uses, sells, offers for sale, imports, exports, supplies and/or

10

distributes within the United States the Google Devices and thus directly infringes at least claims 1

11
12
13
14

and 8 of the ‘591 Patent.
99.

The use of at least Google Devices with an operating system and hardware

components configured and installed by Google to support VPN management functionality as

15

specified and intended by Google infringes at least claims 1 and 8 of the ‘591 Patent. Google uses

16

these products and thus directly infringes at least claims 1 and 8 of the ‘591 Patent.

17
18
19
20
21
22

100.

Google indirectly infringes the ‘591 patent by inducing infringement by others, such

as resellers, of at least claims 1 and 8 in accordance with 35 U.S.C. § 271(b) in this District and
elsewhere in the United States. Direct infringement is the result of activities performed by the
manufacturers, resellers, and end-users of the Google Devices. Google received actual notice of the
’591 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio

23

containing each of the patents asserted herein, was further aware of the ’591 patent as a result of

24

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further

25

aware of the ’591 patent prior to filing its complaint for declaratory relief in this case, and further

26

has knowledge of its infringement of the ’591 patent by way of this Complaint. .

27
28

Case No. 4:13-cv-5933-CW

-44-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1
2
3
4

101.

Google’s affirmative acts of selling Google Devices, causing the Google Devices to

be manufactured, and providing instruction manuals for Google Devices induced Google’s
manufacturers and resellers to make or use the Google Devices in their normal and customary way
to infringe the ‘591 patent.

Through its manufacture and sales of Google Devices, Google

5
6
7

specifically intended its resellers and manufacturers to infringe the ‘591 patent; further, Google was
aware that these normal and customary activities would infringe the ‘591 patent. Google performed

8

the acts that constitute induced infringement, and would induce actual infringement, with

9

knowledge of the ‘591 patent and with the knowledge or willful blindness that the induced acts

10
11
12
13
14

would constitute infringement.
102.

Accordingly, a reasonable inference is that Google specifically intends for others,

such as resellers and end-use customers of the Google Devices, to directly infringe one or more
claims of the ‘591 patent in the United States because Google has knowledge of the ‘591 patent and

15

its infringement thereof and actually induces others, such as resellers and end-use customers, to

16

directly infringe, by using, selling, exporting, supplying and/or distributing within the United States,

17

Google Communication Devices for resale to others, such as resellers and end-use customers.

18

Google knew or should have known that such actions would induce actual infringement.

19
20
21
22
23
24
25
26

103.

In addition, Google provides at least its Google Devices with an operating system and

hardware components configured and installed by Google to support VPN management
functionality to others, such as resellers and end-use customers, in the United States who, in turn,
use these products to infringe at least claims 1 and 8 of the ‘591 Patent.
104.

Google indirectly infringes the ’591 patent by inducing infringement by others, such

as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in this District and
elsewhere in the United States. Direct infringement is the result of activities performed by the

27
28

Case No. 4:13-cv-5933-CW

-45-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

manufacturers, resellers, and end-users of Google Devices in their intended use, including a

2

customer’s use of the VPN management functionality. Google received actual notice of the ’591

3
4

Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio
containing each of the patents asserted herein, was further aware of the ’591 patent as a result of

5
6
7
8
9
10
11
12
13
14

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further
aware of the ’591 patent prior to filing its complaint for declaratory relief in this case, and further
has knowledge of its infringement of the ’591 patent by way of this Complaint. .
105.

Google’s affirmative acts of selling its Google Devices and providing instruction

manuals induced the end-users of Google Devices to use Google Devices in their normal and
customary way to infringe the ’591 patent at least through using VPN management functionality.
Google also provides instructions, including at least “Google Nexus Help” available on Google’s
website at https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518, for using the

15

VPN management functionality. Through its sales of Google Devices with VPN management

16

functionality, Google specifically intended the end-users of Google Devices to infringe the ’591

17

patent; further, Google was aware that the normal and customary use of VPN management

18

functionality would infringe the ’591 patent. Google also enticed its end-users to use the VPN

19
20
21
22
23
24
25
26

management functionality by providing instruction manuals.

Google performed the acts that

constituted induced infringement, and would induce actual infringement, with the knowledge of the
’591 patent and with the knowledge or willful blindness that the induced acts would constitute
infringement.
106.

Accordingly, it is a reasonable inference that Google actively induces infringement of

the ‘591 Patent by others, such as resellers and end-use customers of the Google Devices. Google
specifically intends for others, such as resellers and end-use customers, to directly infringe one or

27
28

Case No. 4:13-cv-5933-CW

-46-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

more claims of the ‘591 Patent in the United States because Google had knowledge of the ‘591

2

Patent and its infringement thereof, and Google actually induces infringement by providing

3
4

instructions to resellers and end-use customers regarding the use and operation of Google’s
products in an infringing way. Such instructions include at least “Google Nexus Help” available on

5
6
7

Google’s website at https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518.
When resellers and end-use customers follow such instructions, they directly infringe the ‘591

8

Patent. Google knows that by providing such instructions, resellers and end-use customers follow

9

those instructions, and directly infringe the ‘591 Patent. Google thus knows that its actions induce

10
11
12
13
14

the infringement.
107.

Google indirectly infringes the ‘591 Patent by contributing to infringement by others,

such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(c) in this District and
elsewhere in the United States. Direct infringement is the result of activities performed by the

15

manufacturers, resellers, and end-users of Google Devices in their intended use, including a

16

customer’s use of the VPN management functionality. Google received actual notice of the ’591

17

Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio

18

containing each of the patents asserted herein, was further aware of the ’591 patent as a result of

19
20
21
22
23

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further
aware of the ’591 patent prior to filing its complaint for declaratory relief in this case, and further
has knowledge of its infringement of the ’591 patent by way of this Complaint. .
108.

Google’s VPN management functionality facilitates management of VPNs. The VPN

24

management functionality is designed for management of VPNs and cannot function in a manner

25

that does not utilize the VPN management functionality available to Google Devices. The VPN

26

management functionality is designed upon information and belief to entice a user to manage

27
28

Case No. 4:13-cv-5933-CW

-47-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1
2
3
4

VPNs.
109.

A reasonable inference to be drawn from the facts set forth is that the VPN

functionality is especially made or especially adapted to operate on the Google Devices for
providing VPN management functionality.

5
6
7

110.

A reasonable inference to be drawn from the facts set forth is that the VPN

management functionality is not a staple article or commodity of commerce and that the use of the

8

VPN management functionality of the Google Devices is for managing VPNs. Any other use

9

would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.

10
11
12
13
14

111.

The Google Devices with VPN management functionality are each a material part of

the invention of the ’591 patent and especially made for the infringing use of the VPN functionality.
Google Devices including the VPN management functionality, are especially made or adapted to
provide VPN management functionality that perform or facilitate performance of the steps that

15

infringe the ’591 patent. Furthermore, Google provides user manuals describing the uses of its

16

Google Devices that infringe the ’591 patent. Because the functionality provided by Google’s VPN

17

management functionality infringes the ’591 patent, Google’s sales of its infringing Google Devices

18

have no substantial non-infringing uses.

19
20
21
22

112.

Accordingly, a reasonable inference is that Google offers to sell, or sells within the

United States the Google Devices which are or include a component of a patented machine,
manufacture, combination, or composition, or a material or apparatus for use in practicing one or

23

more claims of the ʼ591 patent, constituting a material part of the invention, knowing the same to be

24

especially made or especially adapted for use in an infringement of one or more claims of the ʼ591

25

patent, and the Google Devices are not a staple article or commodity of commerce suitable for

26

substantial non-infringing uses. Google provides to others Google Devices with an operating

27
28

Case No. 4:13-cv-5933-CW

-48-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

system and hardware components configured and installed by Google to support VPN management

2

functionality. Google installs and configures on these products distinct and separate components,

3

including software components, which are used only to infringe the ‘591 Patent.

4

The Google Devices Infringe At Least One Claim Of The ʼ572 Patent

5
6
7

113.

The use of Google Devices with an operating system and hardware components

configured and installed by Google to support Location Services functionality, as intended by

8

Google infringes at least method claim 17 of the ‘572 Patent. Google uses these Google Devices

9

and thus directly infringes at least method claim 17 of the ‘572 Patent.

10
11
12
13
14
15

114.

In addition, Google provides at least its Google Devices with an operating system and

hardware components configured and installed by Google to support Location Services
functionality to others, such as resellers and end-use customers, in the United States who, in turn,
use these products to infringe at least method claim 17 of the ‘572 Patent.
115.

Google indirectly infringes by inducing infringement by others, such as resellers and

16

end-use customers, in accordance with 35 U.S.C. § 271(b) in this District and elsewhere in the

17

United States. Direct infringement is the result of activities performed by the manufacturers,

18

resellers, and end-users of Google Devices in their intended use, including a customer’s use of the

19
20
21
22

Location Services functionality. Google received actual notice of the ’572 Patent at least by April
4, 2011, when it placed its initial bid for the Nortel patent portfolio containing each of the patents
asserted herein, was further aware of the ’572 patent as a result of Rockstar’s October 31, 2013

23

filing of the action against the Eastern District Defendants, was further aware of the ’572 patent

24

prior to filing its complaint for declaratory relief in this case, and further has knowledge of its

25

infringement of the ’572 patent by way of this Complaint. .

26

116.

Google’s affirmative acts of selling its Google Devices and providing instruction

27
28

Case No. 4:13-cv-5933-CW

-49-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

manuals induced the end-users of Google Devices to use Google Devices in their normal and

2

customary way to infringe the ’572 patent at least through using Location Services functionality.

3
4

Google also provides instructions, including at least “Google Nexus Help,” available at
https://support.google.com/nexus/topic/3416294?hl=en&ref_topic=3415468, for using the Location

5
6
7

Services functionality. Through its sales of Google Devices with Location Services functionality,
Google specifically intended the end-users of Google Devices to infringe the ’572 patent; further,

8

Google was aware that the normal and customary use of Location Services would infringe the ’572

9

patent. Google also enticed its end-users to use the Location Services by providing instruction

10

manuals. Google performed the acts that constituted induced infringement, and would induce

11
12
13
14

actual infringement, with the knowledge of the ’572 patent and with the knowledge or willful
blindness that the induced acts would constitute infringement.
117.

Accordingly, a reasonable inference is that Google actively induces infringement of

15

the ‘572 Patent by others, such as resellers and end-use customers of the Google Devices. Google

16

specifically intends for others, such as resellers and end-use customers, to directly infringe one or

17

more claims of the ‘572 Patent in the United States because Google had knowledge of the ‘572

18

Patent and its infringement thereof, and Google actually induces infringement by providing

19
20
21
22

instructions to resellers and end-use customers regarding the use and operation of Google’s
products in an infringing way. Such instructions include at least “Google Nexus Help,” available at
https://support.google.com/nexus/topic/3416294?hl=en&ref_topic=3415468.

When resellers and

23

end-use customers follow such instructions, they directly infringe the ‘572 Patent. Google knows

24

that by providing such instructions, resellers and end-use customers follow those instructions, and

25

directly infringe the ‘572 Patent. Google thus knows that its actions induce the infringement.

26

118.

Google indirectly infringes the ‘572 Patent by contributing to infringement by others,

27
28

Case No. 4:13-cv-5933-CW

-50-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(c) in this District and

2

elsewhere in the United States. Direct infringement is the result of activities performed by the

3
4

manufacturers, resellers, and end-users of Google Devices in their intended use, including a
customer’s use of the Locations Services functionality. Google received actual notice of the ’572

5
6
7

Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio
containing each of the patents asserted herein, was further aware of the ’572 patent as a result of

8

Rockstar’s October 31, 2013 filing of the action against the Eastern District Defendants, was further

9

aware of the ’572 patent prior to filing its complaint for declaratory relief in this case, and further

10
11
12
13
14

has knowledge of its infringement of the ’572 patent by way of this Complaint. .
119.

Google’s Location Services functionality provides call trace information, i.e., a

geographic location of Google Devices. The Location Services functionality is designed to notify
the user of Google Devices of call trace information, i.e., a geographic location of the Google

15

Devices, and cannot function in a manner that does not utilize the Location Services functionality

16

available to the Google Devices. Upon information and belief, the Location Services functionality

17

is designed to entice a user to access call trace information.

18
19
20
21
22

120.

A reasonable inference to be drawn from the facts set forth is that the Location

Services functionality is especially made or especially adapted to operate on the Google Devices for
obtaining call trace information, i.e., a geographic location of the Google Devices.
121.

A reasonable inference to be drawn from the facts set forth is that the Location

23

Services functionality is not a staple article or commodity of commerce and that the use of the

24

Location Services functionality of the Google Devices is for providing call trace information. Any

25

other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.

26

122.

Google Devices with Location Services functionality are each a material part of the

27
28

Case No. 4:13-cv-5933-CW

-51-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1

’572 patent and especially made for the infringing use of the Location Services functionality to

2

receive call trace information, i.e., a geographic location of the Google Devices. The Google

3
4

Devices including the Location Services functionality are especially made or adapted to provide call
trace information that perform or facilitate performance of the steps that infringe the ’572 patent.

5
6
7

Furthermore, Google provides user manuals describing the uses of its products that infringe the
’572 patent. Because the functionality provided by Google’s Location Services to obtain call trace

8

information, i.e., a geographic location of the Google Devices, infringes the ’572 patent, Google’s

9

sales of its infringing products have no substantial non-infringing uses.

10
11
12
13
14

123.

Accordingly, a reasonable inference is that Google offers to sell, or sells within the

United States the Google Devices which are or include a component of a patented machine,
manufacture, combination, or composition, or a material or apparatus for use in practicing one or
more claims of the ʼ572 patent, constituting a material part of the invention, knowing the same to be

15

especially made or especially adapted for use in an infringement of one or more claims of the ʼ572

16

patent, and the Google Devices are not a staple article or commodity of commerce suitable for

17

substantial non-infringing uses. Google provides to others Google Devices with an operating

18

system and hardware components configured and installed by Google to support Location Services

19
20
21

functionality. Google installs and configures on these products distinct and separate components,
including software components, which are used only to perform the infringing method claims.
Request For Damages And Other Relief

22
23

124.

Google’s acts of infringement have caused damage to Rockstar Consortium and

24

MobileStar. Rockstar Consortium and MobileStar are entitled to recover from Google the damages

25

sustained by Rockstar Consortium and MobileStar as a result of Google’s wrongful acts in an

26

amount subject to proof at trial.

27
28

Case No. 4:13-cv-5933-CW

-52-

DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

1
2
3
4

125.

In addition, the infringing acts and practices of Google have caused, are causing, and,

unless such acts and practices are enjoined by the Court, will continue to cause immediate and
irreparable harm to Rockstar Consortium and MobileStar for which there is no adequate remedy at
law, and for which Rockstar Consortium and MobileStar are entitled to injunctive relief under 35

5
6
7

U.S.C. § 283.
126.

Google had actual notice of the Patents-in-Suit at least by April 4, 2011, when it

8

placed its initial bid for the Nortel patent portfolio containing the Patents-in-Suit, was further aware

9

of the Patents-in-Suit as a result of Rockstar’s October 31, 2013 filing of the action against the

10

Eastern District Defendants, was further aware of the Patents-in-Suit prior to filing its complaint for

11
12
13
14
15
16

declaratory relief in this case.
127.

Google has knowledge of its infringement of the Patents-in-Suit by way of this

Complaint and further has knowledge of its infringement of the Patents-in-Suit as a result of filing
its complaint for declaratory relief in this case.
128.

Google has willfully infringed and/or does willfully infringe the Patents-in-Suit.

17
18

DEMAND FOR JURY TRIAL
Rockstar Consortium and MobileStar hereby demand a jury trial for all issues so triable.

19

PRAYER FOR RELIEF

20
21

WHEREFORE, Rockstar Consortium and MobileStar pray for the following relief:

22

1.

23
24
25
26
27
28

A judgment that Google has directly infringed the ‘551 Patent, contributorily

infringed the ‘551 Patent, and/or induced the infringement of the ‘551 Patent;
2.

A judgment that Google has directly infringed the ‘937 Patent, contributorily

infringed the ‘937 Patent, and/or induced the infringement of the ‘937 Patent;
3.

A judgment that Google has directly infringed the ‘298 Patent, contributorily

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infringed the ‘298 Patent, and/or induced the infringement of the ‘298 Patent;
4.

A judgment that Google has directly infringed the ‘973 Patent, contributorily

infringed the ‘973 Patent, and/or induced the infringement of the ‘973 Patent;
5.

A judgment that Google has directly infringed the ‘131 Patent, contributorily

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infringed the ‘131 Patent, and/or induced the infringement of the ‘131 Patent;
6.

A judgment that Google has directly infringed the ‘591 Patent, contributorily

infringed the ‘591 Patent, and/or induced the infringement of the ‘591 Patent;
7.

A judgment that Google has directly infringed the ‘572 Patent, contributorily

infringed the ‘572 Patent, and/or induced the infringement of the ‘572 Patent;
8.

A judgment that Google’s infringement of the ‘551, ‘937, ‘298, ‘973, ‘131, ‘591 and

‘572 Patents has been willful;
9.

A ruling that this case be found to be exceptional under 35 U.S.C. § 285, and a

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judgment awarding Rockstar Consortium and MobileStar to their attorneys’ fees incurred in

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prosecuting this action;

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10.

A judgment and order requiring Google to pay Rockstar Consortium and MobileStar

damages under 35 U.S.C. § 284, including supplemental damages for any continuing post-verdict
infringement up until entry of the final judgment, with an accounting, as needed, and treble
damages for willful infringement as provided by 35 U.S.C. § 284;
11.

A judgment and order requiring Google to pay Rockstar Consortium and MobileStar

the costs of this action (including all disbursements);
12.

A judgment and order requiring Google to pay Rockstar Consortium and MobileStar

pre-judgment and post-judgment interest on the damages awarded;
13.

A judgment and order requiring that Rockstar Consortium and MobileStar be

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awarded a compulsory ongoing licensing fee as to Google;
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Entry of a permanent injunction enjoining Google, and all others in active concert

with Google, from further infringement of the Patents-in-Suit; and
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Such other and further relief as the Court may deem just and proper.

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DEFENDANTS’ ANSWER TO COMPLAINT FOR
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DATED: May 5, 2014

Respectfully submitted,

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By
/s/Joshua W. Budwin ________________
Courtland L. Reichman
MCKOOL SMITH HENNIGAN, P.C.
255 Shoreline Drive Suite 510
Redwood Shores, CA 94065
[phone]
[phone] (facsimile)
Mike McKool (Admitted Pro Hac Vice)
[e-mail]
Douglas A. Cawley (Admitted Pro Hac
Vice)
[e-mail]
Ted Stevenson III (Admitted Pro Hac Vice)
[e-mail]
David Sochia (Admitted Pro Hac Vice)
[e-mail]
McKool Smith, P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
[phone]
[phone] (facsimile)

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Joshua W. Budwin (Admitted Pro Hac Vice)
[e-mail]
McKool Smith, P.C.
300 W. 6th Street, Suite 1700
Austin, TX 78701
[phone]
[phone] (facsimile)

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Attorneys for Defendants
Rockstar Consortium U.S. LP and MobileStar
Technologies LLC

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