F & G Research, Inc. v. Google, Inc.

Filing 23

Case 0:06-cv-60905-CMA

Document 23

Entered on FLSD Docket 09/18/2006

Page 1 of 3

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORID A C ase No . : 06-60905-CIV -ALTONAGA/Turnoff

F & G RESEARCH, INC . , Plaintiff,
vs .

GOOGLE INC . , Defendant .

PLAINTIFF F & G RESEARCH, INC .'S REPLY TO DEFENDANT GOOGLE INC .'S COUNTERCLAIMS Plaintiff, F & G Research, Inc. ("F&G"), by and through its undersigned counsel, hereby replies to the Counterclaims of Defendant Google Inc . ("Google") and states : F&G responds to the numbered paragraphs of Google's counterclaims as follows : 1 . As to paragraph 1 : F&G denies each and every allegation in Google's denials and responses as set forth in its Answer . 2 . As to paragraphs 2 3, 4, 5, 9, 10, 15, 16, 21, 22, 25, 26, 27, 28, 31, 32, 34, 35, and 37 inclusive, each and every allegation admitte d 3 . As to paragraphs 6, 7, 8, 11, 12, 13, 14, 17, 18, 19, 20, 23, 24, 29, 30, 38 and 39 inclusive, each and every allegation denie d 4 . As to paragraph 33 and 36 F&G is without sufficient knowledge to form a belie f as to the allegations contained therein and thus denies the same . 5 . Thus, leaving Google to its strict proof thereof at the trial of this cause .

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Case 0:06-cv-60905-CMA

Document 23

Entered on FLSD Docket 09/18/2006

Page 2 of 3

And further replying : 6 . While F&G has licensed the '229 Patent to mouse manufacturers and resellers, the mouse itself is not the material element at issue with respect to Google . In this case, it is the Google Earth software that is the subject of the patent infringement claim against Google . 7 . 35 U .S .C . § 271(c), provides that contributory infringement is defined as the manufacture, use, offer to sell or sale of "a material or apparatus for use in practicing a patented process, constituting a material part of the invention . . . (as noted previously and above this is the Google Earth software product, not the mouse) shall be liable as a contributory infringer" (parenthetical added) . The mouse is not a material part of the claimed invention in this claim as a non-scrolling mouse, e.g., can be used to practice the claimed method invention as long as the mouse has a control to initiate the patented process embodied in the software . 8 . 35 U .S .C § 271(d), restates that "no patent owner otherwise entitled to relief for infringement or contributory infringement shall be denied relief . . . by reason of his having done one of the following : . . . (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent ." Therefore a license to use a (scrolling) mouse to perform the patented process does not relieve the contributory infringer of liability where the material part of the invention claimed is the software embodying the method steps . WHEREFORE, F & G Research, Inc . prays that: 1 . Google's counterclaims be dismissed with prejudiced ; and 2 . the court grant any further relief deemed just and equitable .

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Case 0:06-cv-60905-CMA

Document 23

Entered on FLSD Docket 09/18/2006

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Dated : September 13`h , 2006 Fort Lauderdale, Florida

Respectfully Submitted ,

V \ All n V . B fsky , Fl rida Bar Numbel' 433980 abrufskyrt~cwiplaw .com CHRISTOPHER & WEISBERG, P .A . 200 East Las Olas Boulevard, Suite 2040 Fort Lauderdale, Florida 33301 Telephone : [phone] Facsimile : [phone] Attorneys for F & G Research, Inc .

CERTIFICATE OF SERVIC E WE HEREBY CERTIFY that a true and correct copy of the foregoing PLAINTIFF F & G RESEARCH , INC .'S REPLY TO DEFENDANT ' S COUNTERCLAIMS, is being se rv ed via facsimile and deposited with the United States Postal Service in First Class postage-paid envelopes this 13`h , day of September, 2006, addressed to : Gregory Hillyer, Esq . Feldman Gale, P .A . 201 South Biscayne Boulevard Miami Center - 19th Floor Miami , Florida 33132 Counsel for Google, Inc . Ramsey M . Al-Salam, Esq . Perkins Coie LL P 1201 Third Avenue, 40th Floor Seattle , Washington 9810 1 Of Counsel for Google, Inc .

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