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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1 2 3 4 5 6 7 8 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 9 UNITED STATES DISTRICT COURT 10 NORTHERN DISTRICT OF CALIFORNIA 11 OAKLAND 12 Google Inc., 13 14 15 16 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. 17 18 JURY TRIAL DEMANDED 19 20 21 22 23 24 25 26 27 28 Case No. 4:13-cv-5933-CW -1- DEFENDANTS’ ANSWER AND COUNTERCLAIMS TO COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT 1 2 3 4 5 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. 6 7 NATURE OF THE ACTION 1. Rockstar admits that Google’s Complaint purports to be a declaratory judgment 8 action of non-infringement brought against Rockstar Consortium U.S. LP (“Rockstar Consortium”) 9 and MobileStar Technologies LLC (“MobileStar”) that arises under the patent laws of the United 10 States, Title 35 of the United States Code. 11 infringement lawsuits against certain makers of mobile communication devices for infringement of 12 Rockstar’s United States Patents Nos. 5,838,551, 6,037,937, 6,128,298, 6,333,973, 6,463,131, 13 6,765,591, and 6,937,572 (the “Patents-in-Suit”). 14 allegations in Paragraph 1 of Google’s Complaint. 15 16 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 17 pled by Google, Google is a Delaware corporation with its principal place of business at 1600 18 Amphitheatre Parkway, Mountain View, California, 94043. On information and belief, based solely 19 on Paragraph 2 of Google’s Complaint as pled by Google, Google makes available to the public an 20 open-source version of Android. Except as so admitted, Rockstar denies the allegations in Paragraph 21 2 of Google’s Complaint. 22 3. Rockstar admits that Rockstar Consortium is a limited partnership organized and 23 existing under the laws of the state of Delaware and that its principal place of business is at Legacy 24 Town Center 1, 7160 North Dallas Parkway Suite No. 250, Plano, TX 75024. Except as so 25 admitted, Rockstar denies the allegations in Paragraph 3 of Google’s Complaint. 26 4. Rockstar admits that MobileStar is a limited liability corporation organized and 27 28 Case No. 4:13-cv-5933-CW -2- DEFENDANTS’ ANSWER AND COUNTERCLAIMS TO COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT 1 existing under the laws of the State of Delaware and that MobileStar’s principal place of business is 2 at Legacy Town Center 1, 7160 North Dallas Parkway, Suite No. 250, Plano, Texas 75024. 3 Rockstar admits that MobileStar is a subsidiary of Rockstar Consortium. Except as so admitted, 4 Rockstar denies the allegations in Paragraph 4 of Google’s Complaint. 5 JURISDICTIONAL STATEMENT 6 5. Denied. 7 6. Denied. 8 7. Rockstar denies that the Court has personal jurisdiction over it. Rockstar also denies 9 that it has continuous and systematic contacts with California. Rockstar admits that in certain 10 instances it may seek to license its patents to those entities that may require a license. Except as so 11 admitted, Rockstar denies the allegations in Paragraph 7 of Google’s Complaint. 12 8. On information and belief, Apple Inc.’s (“Apple”) headquarters are in Cupertino, 13 California. Rockstar admits that Apple is a minority shareholder in Rockstar Consortium and 14 Rockstar Consortium Inc. and that an employee of Apple is a member of Rockstar Consortium’s 15 board of directors. 16 Google’s Complaint. 17 9. Except as so admitted, Rockstar denies the allegations in Paragraph 8 of Rockstar admits that MobileStar conducted three meetings with entities located in 18 California to discuss high-level global licensing issues. Each of these meetings was subject to a non- 19 disclosure agreement. One such meeting occurred after Rockstar initiated its action against Google 20 in the Eastern District of Texas and was for the purpose of discussing patents that are not at issue in 21 this case. Except as so admitted, Rockstar denies the allegations in Paragraph 9 of Google’s 22 Complaint. 23 10. Denied. 24 11. Denied. 25 26 INTRADISTRICT ASSIGNMENT 12. Paragraph 12 of Google’s Complaint does not contain a statement that warrants an 27 28 Case No. 4:13-cv-5933-CW -3- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 affirmance or denial. To the extent a response is warranted, Rockstar denies the allegations in 2 Paragraph 12 of Google’s Complaint. 3 4 ROCKSTAR’S HISTORY AND BUSINESS 13. Rockstar admits that each of Apple, BlackBerry Corporation, and Microsoft 5 Corporation (among others) are limited partners of Rockstar Consortium and that the Patents-in-Suit 6 were formerly owned by Nortel Networks. Except as so admitted, Rockstar denies the allegations in 7 Paragraph 13 of Google’s Complaint. 8 9 10 11 12 13 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. 15. 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. 16. Rockstar admits that in certain instances it may seek to license its patents to those 14 entities that may require a license. Except as so admitted, Rockstar denies the allegations in 15 Paragraph 16 of Google’s Complaint. 16 17. Rockstar admits that it has asserted the Patents-in-Suit against ASUS, HTC, Huawei, 17 LG, Pantech, Samsung, and ZTE (“the Eastern District Defendants”). Except as so admitted, 18 Rockstar denies the allegations in Paragraph 17 of Google’s Complaint, and expressly denies the 19 characterizations of “ensnared” and “dragnet.” 20 18. Rockstar admits that it brought patent infringement suits against the Eastern District 21 Defendants in the Marshall Division of the United States District Court for the Eastern District of 22 Texas on October 31, 2013. Except as so admitted, Rockstar denies the allegations in Paragraph 18 23 of Google’s Complaint. 24 19. Rockstar admits that it has alleged that the Eastern District Defendants make, use, 25 sell, offer for sale, import, export, supply and/or distribute “certain mobile communication devices 26 having a version (or an adaption thereof) of Android operating system.” Except as so admitted, 27 28 Case No. 4:13-cv-5933-CW -4- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 Rockstar denies the allegations in Paragraph 19 of Google’s Complaint. 2 20. Admitted. 3 21. Admitted. 4 22. Rockstar admits that it has asserted the Patents-in-Suit against the Eastern District 5 Defendants and has accused “certain mobile communication devices having a version (or an 6 adaption thereof) of Android operating system.” Rockstar admits that it has asserted infringement 7 by the Nexus 7 as to ASUS with an operating system configured and installed by ASUS. Except as 8 so admitted, Rockstar denies the allegations in Paragraph 22 of Google’s Complaint. 9 23. Denied. 10 24. Paragraph 24 of Google’s Complaint does not contain a statement that warrants an 11 affirmance or denial. To the extent that any response is warranted, Rockstar denies the allegations in 12 Paragraph 24 of Google’s Complaint. 13 GOOGLE DOES NOT INFRINGE THE PATENTS IN SUIT 14 25. Denied. 15 26. Denied. 16 FIRST COUNT 17 (Declaration of Non-Infringement of the ʼ551 Patent) 18 27. Rockstar incorporates its responses to Paragraphs 1-26 above, as if fully set forth 20 28. Admitted. 21 29. Rockstar admits that Rockstar has accused the Eastern District Defendants of 19 herein. 22 infringing United States Patent No. 5,838,551 (“the ʼ551 patent”) and has alleged that each “makes, 23 uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States” 24 devices including “at least one electronic package comprising a component that is located between 25 an EMI shield and a ground member for performing shielding operations” where “[t]he EMI shield 26 is incorporated into the electronic package, which is then mounted to a circuit board” in the accused 27 28 Case No. 4:13-cv-5933-CW -5- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 devices. Rockstar admits that it has asserted infringement by the Nexus 7 as to ASUS with an 2 operating system configured and installed by ASUS. Except as so admitted, Rockstar denies the 3 allegations in Paragraph 29 of Google’s Complaint. 4 30. As to the Nexus 5, Nexus 7, and Nexus 10 devices, Rockstar admits that a 5 controversy exists between Google and Rockstar regarding whether such devices infringe or have 6 infringed the ʼ551 patent and that a judicial declaration is necessary to determine the parties’ 7 respective rights regarding the ʼ551 patent. With respect to Google’s purported “Google’s Android 8 platform,” however, Rockstar denies that this has any relationship to the ’551 patent. Furthermore, 9 Google has not defined the “Google’s Android platform,” and its use of that phrase is vague, as it 10 fails to identify a specific instance of any product. Android is an open-sourced software project with 11 many contributors, and it is implemented by entities, such as the Eastern District Defendants, who 12 may use different versions of the Android software and who may also develop and contribute to the 13 Android software found within their products. Therefore, Rockstar is without information sufficient 14 to admit or deny the remainder of the allegations in Paragraph 30 of Google’s Complaint, and on that 15 basis denies such allegations. 16 31. Rockstar admits that Google purports to seek a judgment declaring that “Google’s 17 Android Platform” and the Nexus 5, Nexus 7, and Nexus 10 devices do not infringe any claim of the 18 ʼ551 patent. Google has not defined “Google’s Android Platform,” and its use of that phrase is 19 vague, as it fails to identify a specific instance of any product. Android is an open-sourced software 20 project with many contributors, and it is implemented by entities, such as the Eastern District 21 Defendants, who may use different versions of the Android software and who may also develop and 22 contribute to the Android software found within their products. Therefore, Rockstar is without 23 information sufficient to admit or deny the remainder of the allegations in Paragraph 31 of Google’s 24 Complaint, and on that basis denies such allegations. 25 26 27 28 Case No. 4:13-cv-5933-CW -6- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 SECOND COUNT 2 (Declaration of Non-Infringement of the ʼ937 Patent) 3 32. Rockstar incorporates its responses to Paragraphs 1-31 above, as if fully set forth 5 33. Admitted. 6 34. Rockstar admits that it has accused ASUS, HTC, Huawei, LG, Pantech, Samsung, 4 herein. 7 and ZTE of infringing United States Patent No. 6,037,937 (“the ʼ937 patent”) and has alleged that 8 each “makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the 9 United States” devices that support a “navigable graphical user interface (‘navigable GUI’) that 10 permits a user to manipulate and control the contents of the display to maximize the use of display 11 real estate.” Rockstar admits that it has asserted infringement by the Nexus 7 as to ASUS with an 12 operating system configured and installed by ASUS. Except as so admitted, Rockstar denies the 13 allegations in Paragraph 34 of Google’s Complaint. 14 35. Upon information and belief, the Nexus 5, Nexus 7, and Nexus 10 devices use an 15 operating system configured and installed by Google. Google has not defined “Google’s Android 16 Platform,” and its use of that phrase is vague, as it fails to identify a specific instance of any product. 17 Android is an open-sourced software project with many contributors, and it is implemented by 18 entities, such as the Eastern District Defendants, who may use different versions of the Android 19 software and who may also develop and contribute to the Android software found within their 20 products. Therefore, Rockstar is without information sufficient to admit or deny the remainder of 21 the allegations in Paragraph 35 of Google’s Complaint, and on that basis denies such allegations. 22 36. Google has not defined “Google’s Android Platform,” and its use of that phrase is 23 vague, as it fails to identify a specific instance of any product. Android is an open-sourced software 24 project with many contributors, and it is implemented by entities, such as the Eastern District 25 Defendants, who may use different versions of the Android software and who may also develop and 26 contribute to the Android software found within their products. Therefore, Rockstar is without 27 28 Case No. 4:13-cv-5933-CW -7- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 information sufficient to admit or deny the allegations in Paragraph 36 of Google’s Complaint, and 2 on that basis denies such allegations. 3 37. Rockstar admits that Google purports to seek a judgment declaring that “Google’s 4 Android Platform” and the Nexus 5, Nexus 7, and Nexus 10 devices do not infringe any claim of the 5 ʼ937 patent. Google has not defined “Google’s Android Platform,” and its use of that phrase is 6 vague, as it fails to identify a specific instance of any product. Android is an open-sourced software 7 project with many contributors, and it is implemented by entities, such as the Eastern District 8 Defendants, who may use different versions of the Android software and who may also develop and 9 contribute to the Android software found within their products. Therefore, Rockstar is without 10 information sufficient to admit or deny the remainder of the allegations in Paragraph 37 of Google’s 11 Complaint, and on that basis denies such allegations. 12 THIRD COUNT 13 (Declaration of Non-Infringement of the ʼ298 Patent) 14 38. Rockstar incorporates its responses to Paragraphs 1-37 above, as if fully set forth 16 39. Admitted. 17 40. Rockstar admits that it has accused ASUS, HTC, Huawei, LG, Pantech, Samsung, 15 herein. 18 and ZTE of infringing United States Patent No. 6,128,298 (“the ʼ298 patent”) and has alleged that 19 each “makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the 20 United States” devices that support “Mobile Hotspot functionality [which] is designed to route data 21 packets between wireless devices tethered to the Mobile Hotspot to nodes on a public network such 22 as the Internet.” Rockstar admits that it has asserted infringement by the Nexus 7 as to ASUS with 23 an operating system configured and installed by ASUS. Except as so admitted, Rockstar denies the 24 allegations in Paragraph 40 of Google’s Complaint. 25 26 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 27 28 Case No. 4:13-cv-5933-CW -8- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 Platform,” and its use of that phrase is vague, as it fails to identify a specific instance of any product. 2 Android is an open-sourced software project with many contributors, and it is implemented by 3 entities, such as the Eastern District Defendants, who may use different versions of the Android 4 software and who may also develop and contribute to the Android software found within their 5 products. Therefore, Rockstar is without information sufficient to admit or deny the remainder of 6 the allegations in Paragraph 41 of Google’s Complaint, and on that basis denies such allegations. 7 42. Google has not defined “Google’s Android Platform,” and its use of that phrase is 8 vague, as it fails to identify a specific instance of any product. Android is an open-sourced software 9 project with many contributors, and it is implemented by entities, such as the Eastern District 10 Defendants, who may use different versions of the Android software and who may also develop and 11 contribute to the Android software found within their products. Therefore, Rockstar is without 12 information sufficient to admit or deny the allegations in Paragraph 42 of Google’s Complaint, and 13 on that basis denies such allegations. 14 43. Rockstar admits that Google purports to seek a judgment declaring that “Google’s 15 Android Platform” and the Nexus 5, Nexus 7, and Nexus 10 devices do not infringe any claim of the 16 ʼ298 patent. Google has not defined “Google’s Android Platform,” and its use of that phrase is 17 vague, as it fails to identify a specific instance of any product. Android is an open-sourced software 18 project with many contributors, and it is implemented by entities, such as the Eastern District 19 Defendants, who may use different versions of the Android software and who may also develop and 20 contribute to the Android software found within their products. Therefore, Rockstar is without 21 information sufficient to admit or deny the remainder of the allegations in Paragraph 43 of Google’s 22 Complaint, and on that basis denies such allegations. 23 FOURTH COUNT 24 (Declaration of Non-Infringement of the ʼ973 Patent) 44. 25 26 Rockstar incorporates its responses to Paragraphs 1-43 above, as if fully set forth herein. 27 28 Case No. 4:13-cv-5933-CW -9- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 45. Rockstar admits that MobileStar owns all rights, title, and interest in United States 2 Patent No. 6,333,973 (“the ʼ973 patent”). Except as so admitted, Rockstar denies the allegations in 3 Paragraph 45 of Google’s Complaint. 4 46. Rockstar admits that it has accused HTC, Huawei, LG, Pantech, Samsung, and ZTE 5 of infringing the ʼ973 patent and has alleged that each “makes, uses, sells, offers for sale, imports, 6 exports, supplies and/or distributes within the United States” devices that support an “integrated 7 notification message center.” Rockstar admits that it has asserted infringement by the Nexus 7 as to 8 ASUS with an operating system configured and installed by ASUS. Except as so admitted, Rockstar 9 denies the allegations in Paragraph 46 of Google’s Complaint. 10 47. Upon information and belief, the Nexus 5, Nexus 7, and Nexus 10 devices use an 11 operating system configured and installed by Google. Google has not defined “Google’s Android 12 Platform,” and its use of that phrase is vague, as it fails to identify a specific instance of any product. 13 Android is an open-sourced software project with many contributors, and it is implemented by 14 entities, such as the Eastern District Defendants, who may use different versions of the Android 15 software and who may also develop and contribute to the Android software found within their 16 products. Therefore, Rockstar is without information sufficient to admit or deny the remainder of 17 the allegations in Paragraph 47 of Google’s Complaint, and on that basis denies such allegations. 18 48. Google has not defined “Google’s Android Platform,” and its use of that phrase is 19 vague, as it fails to identify a specific instance of any product. Android is an open-sourced software 20 project with many contributors, and it is implemented by entities, such as the Eastern District 21 Defendants, who may use different versions of the Android software and who may also develop and 22 contribute to the Android software found within their products. Therefore, Rockstar is without 23 information sufficient to admit or deny the allegations in Paragraph 48 of Google’s Complaint, and 24 on that basis denies such allegations. 25 26 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 27 28 Case No. 4:13-cv-5933-CW -10- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 claim of the ʼ973 patent. Google has not defined “Google’s Android Platform,” and its use of that 2 phrase is vague, as it fails to identify a specific instance of any product. Android is an open-sourced 3 software project with many contributors, and it is implemented by entities, such as the Eastern 4 District Defendants, who may use different versions of the Android software and who may also 5 develop and contribute to the Android software found within their products. Therefore, Rockstar is 6 without information sufficient to admit or deny the remainder of the allegations in Paragraph 49 of 7 Google’s Complaint, and on that basis denies such allegations. 8 FIFTH COUNT 9 (Declaration of Non-Infringement of the ʼ131 Patent) 10 11 12 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. 13 Patent No. 6,463,131 (“the ʼ131 patent”). Except as so admitted, Rockstar denies the allegations in 14 Paragraph 51 of Google’s Complaint. 15 52. Rockstar admits that it has accused ASUS, HTC, Huawei, LG, Pantech, Samsung, 16 and ZTE of infringing the ʼ131 patent and has alleged that each “makes, uses, sells, offers for sale, 17 imports, exports, supplies and/or distributes within the United States” devices that support 18 “Messaging and Notification functionality.” Rockstar admits that it has asserted infringement by the 19 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. 21 53. Upon information and belief, the Nexus 5, Nexus 7, and Nexus 10 devices use an 22 operating system configured and installed by Google. Google has not defined “Google’s Android 23 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 25 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 27 28 Case No. 4:13-cv-5933-CW -11- 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 2 the allegations in Paragraph 53 of Google’s Complaint, and on that basis denies such allegations. 3 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. 10 55. Rockstar admits that Google purports to seek a judgment declaring that Google’s 11 “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 17 without information sufficient to admit or deny the remainder of the allegations in Paragraph 55 of 18 Google’s Complaint, and on that basis denies such allegations. 19 SIXTH COUNT 20 (Declaration of Non-Infringement of the ʼ591 Patent) 56. 22 23 Rockstar incorporates its responses to Paragraphs 1-55 above, as if fully set forth 57. 21 Rockstar admits that MobileStar owns all rights, title, and interest in United States herein. 24 Patent No. 6,765,591 (“the ʼ591 patent”). Except as so admitted, Rockstar denies the allegations in 25 Paragraph 57 of Google’s Complaint. 26 58. Rockstar admits that it has accused ASUS, HTC, Huawei, LG, Pantech, Samsung, 27 28 Case No. 4:13-cv-5933-CW -12- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 and ZTE of infringing the ʼ591 patent and has alleged that each “makes, uses, sells, offers for sale, 2 imports, exports, supplies and/or distributes within the United States” devices that support “VPN 3 management functionality.” Rockstar admits that it has asserted infringement by the Nexus 7 as to 4 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 7 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. 14 60. Google has not defined “Google’s Android Platform,” and its use of that phrase is 15 vague, as it fails to identify a specific instance of any product. Android is an open-sourced software 16 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 20 on that basis denies such allegations. 21 61. Rockstar admits that Google purports to seek a judgment declaring that Google’s 22 “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 24 phrase is vague, as it fails to identify a specific instance of any product. Android is an open-sourced 25 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 -53- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 2 3 4 infringed the ‘298 Patent, and/or induced the infringement of the ‘298 Patent; 4. A judgment that Google has directly infringed the ‘973 Patent, contributorily infringed the ‘973 Patent, and/or induced the infringement of the ‘973 Patent; 5. A judgment that Google has directly infringed the ‘131 Patent, contributorily 5 6 7 8 9 10 11 12 13 14 infringed the ‘131 Patent, and/or induced the infringement of the ‘131 Patent; 6. A judgment that Google has directly infringed the ‘591 Patent, contributorily infringed the ‘591 Patent, and/or induced the infringement of the ‘591 Patent; 7. A judgment that Google has directly infringed the ‘572 Patent, contributorily infringed the ‘572 Patent, and/or induced the infringement of the ‘572 Patent; 8. A judgment that Google’s infringement of the ‘551, ‘937, ‘298, ‘973, ‘131, ‘591 and ‘572 Patents has been willful; 9. A ruling that this case be found to be exceptional under 35 U.S.C. § 285, and a 15 judgment awarding Rockstar Consortium and MobileStar to their attorneys’ fees incurred in 16 prosecuting this action; 17 18 19 20 21 22 23 24 25 26 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 27 28 Case No. 4:13-cv-5933-CW -54- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 2 3 4 awarded a compulsory ongoing licensing fee as to Google; 14. Entry of a permanent injunction enjoining Google, and all others in active concert with Google, from further infringement of the Patents-in-Suit; and 15. Such other and further relief as the Court may deem just and proper. 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case No. 4:13-cv-5933-CW -55- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS 1 DATED: May 5, 2014 Respectfully submitted, 2 3 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) 4 5 6 7 8 9 10 11 12 13 14 15 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) 16 17 18 19 20 Attorneys for Defendants Rockstar Consortium U.S. LP and MobileStar Technologies LLC 21 22 23 24 25 26 27 28 Case No. 4:13-cv-5933-CW -56- DEFENDANTS’ ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND COUNTERCLAIMS

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