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)
creichman@mckoolsmithhennigan.com
MCKOOL SMITH HENNIGAN, P.C.
255 Shoreline Drive, Suite 510
Redwood Shores, California 94065
Telephone:
(650) 394-1400
Facsimile:
(650) 394-1422
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
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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
20
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.
24
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
26
software and who may also develop and contribute to the Android software found within their
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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
4
vague, as it fails to identify a specific instance of any product. Android is an open-sourced software
5
project with many contributors, and it is implemented by entities, such as the Eastern District
6
Defendants, who may use different versions of the Android software and who may also develop and
7
contribute to the Android software found within their products. Therefore, Rockstar is without
8
information sufficient to admit or deny the allegations in Paragraph 54 of Google’s Complaint, and
9
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
12
claim of the ʼ131 patent. Google has not defined “Google’s Android Platform,” and its use of that
13
phrase is vague, as it fails to identify a specific instance of any product. Android is an open-sourced
14
software project with many contributors, and it is implemented by entities, such as the Eastern
15
District Defendants, who may use different versions of the Android software and who may also
16
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.
19
SIXTH COUNT
20
(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
5
denies the allegations in Paragraph 58 of Google’s Complaint.
6
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
8
Platform,” and its use of that phrase is vague, as it fails to identify a specific instance of any product.
9
Android is an open-sourced software project with many contributors, and it is implemented by
10
entities, such as the Eastern District Defendants, who may use different versions of the Android
11
software and who may also develop and contribute to the Android software found within their
12
products. Therefore, Rockstar is without information sufficient to admit or deny the remainder of
13
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
17
Defendants, who may use different versions of the Android software and who may also develop and
18
contribute to the Android software found within their products. Therefore, Rockstar is without
19
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
23
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
26
District Defendants, who may use different versions of the Android software and who may also
27
28
Case No. 4:13-cv-5933-CW
-13-
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
28
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
28
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
28
Case No. 4:13-cv-5933-CW
-17-
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
Case No. 4:13-cv-5933-CW
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DEFENDANTS’ ANSWER TO COMPLAINT FOR
DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS
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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;
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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;
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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;
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A judgment that Google’s infringement of the ‘551, ‘937, ‘298, ‘973, ‘131, ‘591 and
‘572 Patents has been willful;
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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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Case No. 4:13-cv-5933-CW
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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
(650) 394-1400
(650) 394-1422 (facsimile)
Mike McKool (Admitted Pro Hac Vice)
mmckool@McKoolSmith.com
Douglas A. Cawley (Admitted Pro Hac
Vice)
dcawley@McKoolSmith.com
Ted Stevenson III (Admitted Pro Hac Vice)
tstevenson@McKoolSmith.com
David Sochia (Admitted Pro Hac Vice)
dsochia@McKoolSmith.com
McKool Smith, P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
(214) 978-4000
(214) 978-4044 (facsimile)
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Joshua W. Budwin (Admitted Pro Hac Vice)
jbudwin@McKoolSmith.com
McKool Smith, P.C.
300 W. 6th Street, Suite 1700
Austin, TX 78701
(512) 692-8700
(512) 692-8744 (facsimile)
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Attorneys for Defendants
Rockstar Consortium U.S. LP and MobileStar
Technologies LLC
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Case No. 4:13-cv-5933-CW
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DEFENDANTS’ ANSWER TO COMPLAINT FOR
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