Motorola Mobility, Inc. v. Apple, Inc.

Filing 332

Second Amended ANSWER to Complaint for Patent Infringement by Apple, Inc..(Pace, Christopher)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10cv023580-Civ-RNS
MOTOROLA MOBILITY, INC.,
Plaintiff,
v.

JURY TRIAL DEMANDED

APPLE INC.,
Defendant.

APPLE INC.,
Counterclaim Plaintiff,
v.
MOTOROLA, INC. and
MOTOROLA MOBILITY, INC.,
Counterclaim Defendants.

DEFENDANT APPLE INC.’S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTERCLAIMS TO PLAINTIFF’S ORIGINAL COMPLAINT
FOR PATENT INFRINGEMENT
Defendant Apple Inc. (“Apple”) by and through its undersigned counsel, hereby responds
to Motorola Mobility, Inc.’s (“Motorola Mobility”) Original Complaint for Patent Infringement
(“Complaint”) as follows:
I. ANSWER
INTRODUCTION
1.

Apple admits that Motorola Mobility’s Complaint alleges that Apple infringes

U.S. Patents Nos. 5,710,987 (“the ’987 patent”), 5,754,119 (“the ’119 patent”), 5,958,006 (“the
’006 patent”), 6,008,737 (“the ’737 patent”), 6,101,531 (“the ’531 patent”) and 6,377,161 (“the

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’161 patent”) (collectively, “the Asserted Patents”), and that Motorola Mobility seeks remedies
for Apple’s alleged infringement. Apple denies infringing any of the Asserted Patents and all
remaining allegations of Paragraph 1.
PARTIES
2.

On information and belief, Apple admits that Motorola Mobility is a corporation

organized and existing under the laws of the State of Delaware, having a principal place of
business at 600 North U.S. Highway 45, Libertyville, Illinois 60048. On information and belief,
Apple admits that Motorola Mobility formerly was a wholly-owned subsidiary of Motorola, Inc.
Apple further admits, on information and belief, that the Asserted Patents appear to have been
assigned to Motorola Mobility, Inc. on July 31, 2010. Apple denies the remaining allegations of
Paragraph 2.
3.

Apple admits that it is a corporation organized and existing under the laws of the

State of California, having a principal place of business at 1 Infinite Loop, Cupertino, California
95014.
JURISDICTION AND VENUE
4.

Apple admits that Motorola Mobility’s Complaint purports to be an action that

arises under the patent laws of the United States, 35 U.S.C. § 1 et seq., but denies any
wrongdoing or liability on its own behalf for the reasons stated herein. Apple admits that this
Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a). Except as so
expressly admitted herein, Apple denies the allegations in Paragraph 4 of the Complaint.
5.

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

that it offers for sale and has sold its products to persons within this District, operates retail stores
within this District, conducts business in this District, and has a registered agent for the purposes
of accepting service of process in this District. Apple denies that it has committed any acts of
infringement within this District and specifically denies any wrongdoing, infringement,
inducement of infringement or contribution to infringement. Except as so expressly admitted
herein, Apple denies the allegations in Paragraph 5 of the Complaint.
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6.

Apple admits that venue is proper as to Apple in this District pursuant to 28

U.S.C. §§ 1391(b) and 1400(b). Except as so expressly admitted herein, Apple denies the
allegations in Paragraph 6 of the Complaint.
COUNT I: INFRINGEMENT OF U.S. PATENT NO. 5,710,987
7.

Apple refers to and incorporates herein its answers as provided in Paragraphs 1-6

8.

Apple admits that the ’987 states on its face that it is entitled “Receiver Having

above.

Concealed External Antenna.” Apple further admits that the ’987 patent states on its face that it
issued on January 20, 1998. Apple denies that the ’987 patent was duly or lawfully issued.
Except as so expressly admitted herein, Apple denies the allegations in Paragraph 8 of the
Complaint.
9.

On information and belief, Apple admits that the ’987 patent appears to have been

assigned to Motorola Mobility, Inc. on July 31, 2010. Apple is otherwise without knowledge or
information sufficient to form a belief as to the truth of the allegations concerning Motorola
Mobility’s purported ownership of all right, title and interest in the ’987 patent and, therefore,
denies those allegations.
10.

Apple denies the allegations in Paragraph 10 of the Complaint.

11.

Apple denies the allegations in Paragraph 11 of the Complaint.

12.

Apple denies the allegations in Paragraph 12 of the Complaint.

13.

Apple denies the allegations in Paragraph 13 of the Complaint.

14.

Apple denies the allegations in Paragraph 14 of the Complaint.
COUNT II: INFRINGEMENT OF U.S. PATENT NO. 5,754,119

15.

Apple refers to and incorporates herein its answers as provided in Paragraphs 1-6

16.

Apple admits that the ’119 patent states on its face that it is entitled “Multiple

above.

Pager Status Synchronization System and Method.” Apple further admits that the ’119 patent
states on its face that it issued on May 19, 1998. Apple denies that the ’119 patent was duly or
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lawfully issued. Except as so expressly admitted herein, Apple denies the allegations in
Paragraph 16 of the Complaint.
17.

On information and belief, Apple admits that the ’119 patent appears to have been

assigned to Motrola Mobility, Inc. on July 31, 2010. Apple is otherwise without knowledge or
information sufficient to form a belief as to the truth of the allegations concerning Motorola
Mobility’s purported ownership of all right, title and interest in the ’119 patent and, therefore,
denies those allegations.
18.

Apple denies the allegations in Paragraph 18 of the Complaint.

19.

Apple denies the allegations in Paragraph 19 of the Complaint.

20.

Apple denies the allegations in Paragraph 20 of the Complaint.

21.

Apple denies the allegations in Paragraph 21 of the Complaint.

22.

Apple denies the allegations in Paragraph 22 of the Complaint.
COUNT III: INFRINGEMENT OF U.S. PATENT NO. 5,958,006

23.

Apple refers to and incorporates herein its answers as provided in Paragraphs 1-6

24.

Apple admits that the ’006 patent states on its face that it is entitled “Method and

above.

Apparatus for Communicating Summarized Data.” Apple further admits that the ’006 patent
states on its face that it issued on September 28, 1999. Apple denies that the ’006 patent was
duly or lawfully issued. Except as so expressly admitted herein, Apple denies the allegations in
Paragraph 24 of the Complaint.
25.

Apple is without knowledge or information sufficient to form a belief as to the

truth of the allegations concerning the allegations in Paragraph 25 of the Complaint and,
therefore, denies those allegations.
26.

Apple is without knowledge or information sufficient to form a belief as to the

truth of the allegations concerning the allegations in Paragraph 26 of the Complaint and,
therefore, denies those allegations.
27.

Apple is without knowledge or information sufficient to form a belief as to the
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truth of the allegations concerning Motorola Mobility’s purported ownership of all right, title and
interest in the ’006 patent and, therefore, denies those allegations.
28.

Apple denies the allegations in Paragraph 28 of the Complaint.

29.

Apple denies the allegations in Paragraph 29 of the Complaint.

30.

Apple denies the allegations in Paragraph 30 of the Complaint.

31.

Apple denies the allegations in Paragraph 31 of the Complaint.

32.

Apple denies the allegations in Paragraph 32 of the Complaint.
COUNT IV: INFRINGEMENT OF U.S. PATENT NO. 6,008,737

33.

Apple refers to and incorporates herein its answers as provided in Paragraphs 1-6

34.

Apple admits that the ’737 patent states on its face that it is entitled “Apparatus

above.

for Controlling Utilization of Software Added to a Portable Communication Device.” Apple
further admits that the ’737 patent states on its face that it issued on December 28, 1999. Apple
denies that the ’737 patent was duly or lawfully issued. Except as so expressly admitted herein,
Apple denies the allegations in Paragraph 34 of the Complaint.
35.

On information and belief, Apple admits that the ’737 patent appears to have been

assigned to Motorola Mobility, Inc. on July 31, 2010. Apple is otherwise without knowledge or
information sufficient to form a belief as to the truth of the allegations concerning Motorola
Mobility’s purported ownership of all right, title and interest in the ’737 patent and, therefore,
denies those allegations.
36.

Apple denies the allegations in Paragraph 36 of the Complaint.

37.

Apple denies the allegations in Paragraph 37 of the Complaint.

38.

Apple denies the allegations in Paragraph 38 of the Complaint.

39.

Apple denies the allegations in Paragraph 39 of the Complaint.

40.

Apple denies the allegations in Paragraph 40 of the Complaint.
COUNT V: INFRINGEMENT OF U.S. PATENT NO. 6,101,531

41.

Apple refers to and incorporates herein its answers as provided in Paragraphs 1-6
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above.
42.

Apple admits that the ’531 patent states on its face that it is entitled “System for

Communicating User-Selected Criteria Filter Prepared at Wireless Client to Communication
Server for Filtering Data Transferred from Host to Said Wireless Client.” Apple further admits
that the ’531 patent states on its face that it issued on August 8, 2000. Apple denies that the ’531
patent was duly or lawfully issued. Except as so expressly admitted herein, Apple denies the
allegations in Paragraph 42 of the Complaint.
43.

Apple is without knowledge or information sufficient to form a belief as to the

truth of the allegations concerning the allegations in Paragraph 43 of the Complaint and,
therefore, denies those allegations.
44.

On information and belief, Apple admits that the ’531 patent appears to have been

assigned to Motorola Mobility, Inc. on July 31, 2010. Apple is otherwise without knowledge or
information sufficient to form a belief as to the truth of the allegations concerning Motorola
Mobility’s purported ownership of all right, title and interest in the ’531 patent and, therefore,
denies those allegations.
45.

Apple denies the allegations in Paragraph 45 of the Complaint.

46.

Apple denies the allegations in Paragraph 46 of the Complaint.

47.

Apple denies the allegations in Paragraph 47 of the Complaint.

48.

Apple denies the allegations in Paragraph 48 of the Complaint.

49.

Apple denies the allegations in Paragraph 49 of the Complaint.
COUNT VI: INFRINGEMENT OF U.S. PATENT NO. 6,377,161

50.

Apple refers to and incorporates herein its answers as provided in Paragraphs 1-6

51.

Apple admits that the ’161 patent states on its face that it is entitled “Method and

above.

Apparatus in a Wireless Messaging System for Facilitating an Exchange of Address
Information.” Apple further admits that the ’161 patent states on its face that it issued on April
23, 2002. Apple denies that the ’161 patent was duly or lawfully issued. Except as so expressly
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admitted herein, Apple denies the allegations in Paragraph 51 of the Complaint.
52.

On information and belief, Apple admits that the ’161 patent appears to have been

assigned to Motorola Mobility, Inc. on July 31, 2010. Apple is otherwise without knowledge or
information sufficient to form a belief as to the truth of the allegations concerning Motorola
Mobility’s purported ownership of all right, title and interest in the ’161 patent and, therefore,
denies those allegations.
53.

Apple denies the allegations in Paragraph 53 of the Complaint.

54.

Apple denies the allegations in Paragraph 54 of the Complaint.

55.

Apple denies the allegations in Paragraph 55 of the Complaint.

56.

Apple denies the allegations in Paragraph 56 of the Complaint.

57.

Apple denies the allegations in Paragraph 57 of the Complaint.
DEMAND FOR JURY TRIAL

58.

Apple does not object to a trial by jury on all issues so triable.
REQUEST FOR RELIEF

59.

Apple denies that Motorola Mobility is entitled to any of the relief sought in its

prayer for relief, including that requested in Paragraphs (a) through (f). Apple has not directly or
indirectly infringed the Asserted Patents, either literally or by the doctrine of equivalents,
willfully or otherwise. Motorola Mobility is not entitled to recover statutory damages,
compensatory damages, enhanced damages, an accounting, injunctive relief, costs, fees, interest
or any other type of recovery from Apple. Motorola Mobility’s prayer should, therefore, be
denied in its entirety and with prejudice, and Motorola Mobility should take nothing.
II. DEFENSES
In addition to the defenses described below, Apple expressly reserves the right to allege
additional defenses as they become known through the course of discovery.
FIRST DEFENSE – FAILURE TO STATE A CLAIM
60.

The Complaint fails to state a claim upon which relief can be granted because

Apple has not performed any act or thing and is not proposing to perform any act or thing in
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violation of any rights validly belonging to Motorola Mobility
SECOND DEFENSE – NONINFRINGEMENT
61.

Apple does not infringe and has not infringed, either directly, indirectly,

contributorily or by inducement, any claims of the Asserted Patents, either literally or under the
doctrine of equivalents, willfully or otherwise.
THIRD DEFENSE – PATENT INVALIDITY
62.

Motorola Mobility’s alleged claims for infringement of the Asserted Patents are

barred because each and every claim of the Asserted Patents is invalid for failure to comply with
the requirements of Title 35 of the United States Code, including but not limited to Sections 102,
103 and/or 112.
FOURTH DEFENSE – LACHES
63.

Motorola Mobility’s claims for relief are barred in whole or in part by the

equitable doctrine of laches.
FIFTH DEFENSE – ESTOPPEL
64.

Motorola Mobility’s claims for relief are barred in whole or in part by the doctrine

of equitable estoppel.
SIXTH DEFENSE – STATUTE OF LIMITATIONS
65.

To the extent Motorola Mobility seeks damages for alleged infringement more

than six years prior to filing of this action, the relief sought by Motorola Mobility is barred by 35
U.S.C. § 286.
SEVENTH DEFENSE – ABSOLUTE INTERVENING RIGHTS
66.

To the extent Motorola Mobility seeks damages for alleged infringement of

claims 25-27 of the ’006 patent before January 12, 2010, the date of issue for the reexamination
certificate of the ’006 patent, the relief sought by Motorola Mobility is barred by 35 U.S.C.
§ 252.
EIGHTH DEFENSE – EQUITABLE INTERVENING RIGHTS
67.

To the extent Motorola Mobility seeks damages for alleged infringement of
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claims 25-27 of the ’006 patent after January 12, 2010, the date of issue for the reexamination
certificate of the ’006 patent, the relief sought by Motorola Mobility is barred by 35 U.S.C.
§ 252.
NINTH DEFENSE – NOTICE
68.

To the extent Motorola Mobility seeks damages for alleged infringement prior to

its giving actual or constructive notice of the ’987, ’119, ’006, ’737, ’531 and ’161 patents to
Apple, the relief sought by Motorola Mobility is barred by 35 U.S.C. § 287.
TENTH DEFENSE – PROSECUTION HISTORY ESTOPPEL
69.

Motorola Mobility is estopped from construing the claims of the ’987, ’119, ’006,

’737, ’531 and ’161 patents in such a way as may cover any of Apple’s products or processes by
reasons of statements made to the U.S. Patent and Trademark Office (“Patent Office”) during the
prosecution of the applications that led to the issuance of the ’987, ’119, ’006, ’737, ’531 and
’161 patents.
ELEVENTH DEFENSE – PATENT EXHAUSTION/IMPLIED LICENSE
70.

The relief sought by Motorola Mobility is barred in whole or in part by the

doctrines of patent exhaustion and/or implied license.
TWELFTH DEFENSE – LACK OF STANDING
71.

Motorola Mobility lacks standing to bring this suit because essential parties are

not named in this action.
THIRTEENTH DEFENSE – NO INJUNCTIVE RELIEF
72.

To the extent Motorola Mobility seeks injunctive relief for alleged infringement,

the relief sought by Motorola Mobility is unavailable because any alleged injury to Motorola
Mobility is not immediate or irreparable and because Motorola Mobility has an adequate remedy
at law for any alleged injury.
FOURTEENTH DEFENSE – INEQUITABLE CONDUCT
73.

The ’006 patent is unenforceable under the doctrine of inequitable conduct. On

information and belief, prior to the issuance of the ’006 patent, at least two of the inventors
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named on that patent, Gene Eggleston and Mitch Hansen, as well as the attorneys who
prosecuted the ’006 patent, including Anthony J. Sarli, Jr. and Terri S. Hughes, were aware of
material information, including prior art and office actions rejecting the claims of a pending,
related patent application on the basis of that prior art, but withheld, concealed and/or
mischaracterized that information with the intent to deceive the Patent Office.
74.

On December 19, 1995, Sarli filed United States patent application number

08/574,541, which ultimately issued as the ’006 patent (“the ’006 application”). The ’006
application was filed as a continuation-in-part of United States patent application number
08/557,657 (“the parent application”). On the same day the ’006 patent application was filed,
Sarli filed another application claiming priority to the same parent application, which was United
States patent application number 08/574,537 (“the related application”).
75.

Eggleston and Hansen were named as inventors on the ’006 application and the

related application. Sarli filed both the ’006 application and the related application on behalf of
the named inventors. Hughes assisted in prosecuting the ’006 application (at least as early as
January 8, 1998) and the related application (at least as early as July 22, 1997).
76.

The ’006 application and the related application were examined by different

examiners in different art units within the PTO. Eric Coleman examined the ’006 application,
while Le Hien Luu examined the related application.
77.

Sarli, Hughes, Eggleston, and Hansen had a duty to disclose to the PTO material

and non-cumulative information relating to the subject matter claimed in the ’006 application.
This duty to disclose such information began on December 19, 1995, the date the ’006
application was filed, and extended through September 28, 1999, the date the PTO issued the
’006 patent.
78.

During prosecution of the ’006 application, Sarli, Hughes, Eggleston, and Hansen

knew or should have known of the similarity between the ’006 application and the related
application and knew or should have known that both applications derived from the same parent
application. They also knew or should have known that different examiners from different art
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groups were processing the ’006 application and the related application. On information and
belief, Sarli, Hughes, Eggleston, and Hansen had no reason to believe that each examiner knew
about the other co-pending application.
The Inventors’ and Attorneys’ Failure to Disclose the Related Application
and Material Rejections Thereof Constituted Inequitable Conduct
79.

Sarli, Hughes, Eggleston, and Hansen failed to disclose the existence of the

related application and the office actions rejecting its claims to the PTO in connection with the
’006 application’s prosecution.
80.

The ’006 application and the related application were directed to substantially the

same subject matter. The related application’s “Field of the Invention,” “Background,” “Brief
Description of the Drawings,” “Detailed Description” and accompanying figures are all
extremely similar in form and substance to those of the ’006 patent application.
81.

The claims of the ’006 application and the related application were also directed

to substantially the same subject matter. For example, original claims 1 and 5 of the ’006
application read as follows:
1. A system for communicating data with a communication unit
associated with a first user comprising:
a host server; and
a communication server, in communication with the host
server and communication unit, comprising a data transfer
manager operable for controlling communication of the data from
the host server to the communication unit including filtering of the
data based on at least one user-definable filter parameter and
providing the communication unit with identifying information
about any of the data not passing the at least one filter parameter.
5. The system of claim 1, wherein:
the data transfer manager is further operable for
communicating the at least one filter parameter to the host server;
the host server is operable for applying the at least one
filter parameter to determine whether to transfer to the
communication server a first data unit of the data, and when the
first data unit is determined not to pass the at least one filter
parameter, for determining a first identifying information about the
first data unit and sending the first identifying information to the
communication server; and
the communication server further comprising a summary
store for storing the first identifying information, and being
operable for sending the first identifying information to the
communication unit.
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These claims were amended and ultimately issued as claims 1 and 5 in the ’006 patent:
1. A system for communicating data to a communication unit
associated with a first user comprising:
a host server operable for:
filtering individual data units based on at least one
user-definable filter parameter to identify whether a data unit is a
qualifying or non-qualifying data unit;
for qualifying data units, sending an identifying
information part and an additional part to the communication unit;
and
for non-qualifying data units sending the identifying
information part without the additional part to the communication
unit; and
a communication server, in communication with the host
server and the communication unit, comprising a data transfer
manager operable for controlling communication of the qualifying
and non-qualifying data units from the host server to the
communication unit including sending the identifying information
part and the additional part for the qualifying data units and
sending the identifying part without the additional part for the nonqualifying data units to the communication unit.
5. The system of claim 1, wherein:
the data transfer manager is further operable for
communicating the at least one filter parameter to the host server;
the host server is operable for applying the at least one
filter parameter to determine whether to transfer to the
communication server a first data unit of the data, and when the
first data unit is determined not to pass the at least one filter
parameter, for determining a first identifying information about the
first data unit and sending the first identifying information to the
communication server; and
the communication server further comprising a summary
store for storing the first identifying information, and being
operable for sending the first identifying information to the
communication unit.
Similarly, original claims 1, 5, 6, and 7 of the related application read as follows:
1. A system for communicating data with a communication unit
associated with a first user comprising:
a host server; and
a communication server, in communication with the host
server and communication unit, comprising a data transfer
manager operable for controlling communication of data between
the communication unit and host server including filtering data
from the host server based on at least one user-definable filter
parameter.
5. The system of claim 1, wherein the communication server
further comprises a user profile store storing the filter parameter,
and the data transfer manager is further operable for determining
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the filter parameter from the user profile store and communicating
the filter parameter to the host server, the host server being
operable for applying the filter parameter to determine whether to
transfer to the communication server a first data unit addressed to
the communication unit.
6. The system of claim 5, wherein the data transfer manager
further comprises a query manager operable for determining the
filter parameter from the user profile store and communicating a
query object including the filter parameter to the host server, the
host server being operable for applying the filter parameter to filter
the first data unit before transferring the first data unit to the
communication server.
7. The system of claim 6, wherein the communication server
further comprises a summary database for storing identifying
information about filtered data units, the host server being operable
for sending identifying information of a second data unit when,
after applying the filter parameter, the second data unit is
determined to match the filter parameter, the query manager being
operable for storing the identifying information of the second data
unit in the summary database and sending the identifying
information of the second data unit to the communication unit.
82.

The ’006 application and the related application contained similar subject matter.

Information relating to the related application, including knowledge of the existence of the
related application, was not cumulative to information of record in the prosecution history of the
’006 application. The existence of the related application was material to the prosecution of the
’006 application.
83.

Sarli, Hughes, Eggleston, and Hansen had a duty to disclose the existence of the

related application to the examiner of the ’006 application. On information and belief, they
failed to disclose the existence of the related application to the examiner of the ’006 application
with intent to deceive the PTO. Their failure to disclose the existence of the related application
to the examiner of the ’006 application constituted inequitable conduct.
84.

Sarli, Hughes, Eggleston, and Hansen also had a duty to disclose to the examiner

of the ’006 application any rejections of substantially similar claims in the related application.
85.

In a April 24, 1997 Office Action, Examiner Luu rejected all 39 claims in the

related application. The examiner rejected 19 claims as anticipated by U.S. Patent No. 5,621,727
(“Vaudreuil”), 15 claims as obvious over Vaudreuil alone, and 4 claims as obvious over
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Vaudreuil in combination with either U.S. Patent No. 5,276,680 (“Messenger”) or U.S. Patent
No. 5,406,557 (“Baudoin”). This Office Action was addressed to Sarli. As exemplified by the
above comparison of claim 5 of the ’006 application with original claim 7 of the related
application, the elements found by Examiner Luu to be disclosed in Vaudreuil are the same or
substantially similar to those contained in the claims of the pending ’006 application.
86.

In response to these rejections, attorney J. Ray Wood (with Hughes’s assistance)

filed an amendment on July 22, 1997. The remarks included with this amendment expressly
referenced Vaudreuil and attempted to distinguish it from the invention in the application.
87.

In a November 19, 1997 Final Office Action, the PTO again rejected all pending

claims. The examiner rejected 43 claims as obvious over Vaudreuil in combination with U.S.
Patent No. 5,621,727 (“Emery”) and 2 claims as obvious over Vaudreuil in combination with
Emery and Baudoin. Again, this Office Action was addressed to Sarli. As exemplified by the
above comparison of claim 5 of the ’006 application with original claim 7 of the related
application, the elements found by Examiner Luu to be disclosed in Vaudreuil are the same or
substantially similar to those contained in the claims of the pending ’006 application.
88.

In response to the Final Office Action, Hughes filed another amendment on April

15, 1998. This amendment canceled 39 claims, including original claim 7. It also expressly
referenced Vaudreuil and attempted to distinguish it from the invention in the application’s
remaining claims.
89.

In an April 21, 1998 Advisory Action, the PTO decided that the amendment

would not be entered and that all claims remained rejected. When Sarli and Hughes did not
respond by the July 15, 1998 deadline, the PTO issued a notice of abandonment.
90.

On April 26, 1999, the examiner of the ’006 application allowed all pending

claims in the application. The examiner previously rejected these claims, but reversed his
decision based on argument from Hughes that the prior art did not disclose the feature of the
invention of providing identifying information about data not passing the filter parameter.
91.

As named inventors and prosecution counsel of record for both the ’006
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application and the related application, Sarli, Hughes, Eggleston, and Hansen were aware of the
April 24, 1997 and November 19, 1997 Office Actions in connection with the related
application. Because the claims of the related application and the ’006 application related to
substantially similar subject matter, Examiner Luu’s April 24, 1997 and November 19, 1997
Office Actions rejecting all claims of the related application based on Vaudreuil, Messenger,
Baudoin, and Emery were material to the prosecution of the ’006 application. Examiner Luu’s
rejections were not cumulative of any other information of record in the prosecution history of
the ’006 application.
92.

Sarli, Hughes, Eggleston, and Hansen had a duty to disclose Examiner Luu’s

Office Actions rejecting the related application’s claims to the examiner of the ’006 application.
They failed to disclose these Office Actions.
93.

On information and belief, Sarli, Hughes, Eggleston, and Hansen failed to

disclose these Office Actions with intent to deceive the PTO, and their actions therefore
constituted inequitable conduct. In November 1997, they received the Final Office Action
rejecting for the second time all claims in the related application based on Vaudreuil, including
original claim 7, which claimed the use of a summary database to store identifying information
about filtered data units and the sending of that identifying information to the communication
unit. Two months later, in January 1998, they filed an amendment to the claims in the ’006
application without referencing the Office Actions rejecting all claims in the related application.
Three months after that, in April 1998, they cancelled 42 of the related application’s 46 claims,
including original claim 7. Yet, they continued to argue to the examiner of the ’006 application
– without disclosing the Office Actions rejecting all claims in the related application – that the
prior art did not disclose the feature of providing identifying information about data not passing
the filter parameter. The examiner subsequently allowed the claims of the ’006 patent.
The Inventors’ and Attorneys’ Failure to Disclose the Vaudreuil Reference
Constituted Inequitable Conduct
94.

During the prosecution of the ’006 application, Sarli, Hughes, Eggleston, and
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Hansen failed to disclose Vaudreuil. A copy of Vaudreuil is attached as Exhibit A hereto.
95.

Upon information and belief, Sarli, Hughes, Eggleston, and Hansen had

knowledge of Vaudreuil at least by April 24, 1997, during the pendency of the ’006 application,
and more than two years and five months before the issuance of the ’006 patent. They learned of
Vaudreuil at least by April 24, 1997, when the examiner reviewing the related application issued
an office action rejecting all claims and identifying Vaudreuil as relevant to the prosecution of
that application in the Notice of References Cited. Vaudreuil is one of only six references listed
on the examiner’s Notice of References Cited and was the basis (at least in part) for the rejection
of every single claim in the related application.
96.

Upon information and belief, Sarli, Hughes, Eggleston, and Hansen knew that

Vaudreuil was material prior art to the ’006 patent application because Vaudreuil teaches a
communications system that “can filter and route messages given the preferences of each user.”
See Exhibit A col. 26:2-4. Moreover, this communications system contains a translator that can
“use many different filters in sequence to accomplish . . . data-to-data conversion,” id. col.
19:23-27. Upon information and belief, Sarli, Hughes, Eggleston, and Hansen further knew that
Vaudreuil was material prior art because all of the original claims of the related application,
including original claim 7, were twice rejected on the basis of Vaudreuil.
97.

Vaudreuil is highly material prior art to the ’006 patent. The examiner of the

related application determined that Vaudreuil anticipated or rendered obvious (either alone or in
combination with other prior art) all claims of the related application. For example, the examiner
concluded that Vaudreuil anticipated original claim 7 of the related application because
Vaudreuil teaches a summary database. This summary database stores the user’s routing and
filtering settings (Exhibit A col. 23:14-17), such as the type of translation the user desires that
certain messages undergo (id. col. 19:23-27). The storing and sending of identifying information
claimed in the ’006 application is a form of translation for messages that meet a certain criteria
(i.e., filtered messages).
98.

Vaudreuil is not cumulative to any references disclosed during prosecution of the
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’006 Patent. None of the references cited to the Patent Office describe the inventions claimed in
Vaudreuil.
99.

Upon information and belief, Sarli, Hughes, Eggleston, and Hansen failed to

disclose Vaudreuil during prosecution of the ’006 patent with an intent to deceive the Patent
Office. In November 1997, they received the Final Office Action rejecting for the second time
all claims in the related application based on Vaudreuil, including original claim 7, which
claimed the use of a summary database to store identifying information about filtered data units
and the sending of that identifying information to the communication unit. Two months later, in
January 1998, they filed an amendment to the claims in the ’006 application without referencing
Vaudreuil. Three months after that, in April 1998, they cancelled 42 of the related application’s
46 claims, including original claim 7. Yet, they continued to argue to the examiner of the ’006
application – without disclosing Vaudreuil – that the prior art did not disclose the feature of
providing identifying information about data not passing the filter parameter. The examiner
subsequently allowed the claims of the ’006 patent.
100.

Vaudreuil qualifies as prior art to the ’006 patent under 35 U.S.C. § 102(e)(2).

The United States patent application that issued as Vaudreuil, U.S. Patent Application No.
499,198, was filed on July 7, 1995, more than five months prior to the December 19, 1995 filing
date of the ’006 application.
101.

Upon information and belief, the examiner did not consider Vaudreuil during

prosecution of the ’006 patent.
102.

The above acts of fraud on the Patent Office committed during the prosecution of

the ’006 patent constitute inequitable conduct.
The Inventors’ and Attorneys’ Failure to Disclose the Harkins Reference
Constituted Inequitable Conduct
103.

During the prosecution of the ’006 patent application, Sarli, Hughes, Eggleston,

and Hansen failed to disclose U.S. Patent No. 5,513,126 (“Harkins”), filed on October 4, 1993
and issued on April 30, 1996. A copy of Harkins is attached as Exhibit B hereto.
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104.

Upon information and belief, Sarli, Hughes, Eggleston, and Hansen had

knowledge of Harkins at least by April 24, 1997, during the pendency of the ’006 application,
and more than two years and five months before the issuance of the ’006 patent. They learned of
Harkins at least by April 24, 1997, when the examiner reviewing the related application issued
an office action rejecting all claims and identifying Harkins as relevant to the prosecution of that
application in the Notice of References Cited. See Exhibit C, at 9. Harkins is one of only six
references listed on the examiner’s Notice of References Cited. See id.
105.

Upon information and belief, Eggleston, Hansen, Sarli, and Hughes knew that

Harkins was material prior art to the ’006 patent application because Harkins discloses a
“Network Having Selectively Accessible Recipient Prioritized Communication Channel
Profiles.” In particular, Harkins teaches automatic filtering of communications sent by a sender
to a receiver as defined by a receiver profile. See Exhibit B, at Abstract. “The receiver profile
establishes the properties and mode for receipt of information for receivers on the network . . . .
Receivers have additional control over network senders by defining an information filter which
further controls sender channel access (to a receiver) by defining some channels as having
priority of access such as direct or delayed access, as well as selectively permitting senders to
override the receiver profile.” Id. Upon information and belief, Eggleston, Hansen and Hughes
further knew that Harkins was material prior art because they identified Harkins to the Patent
Office during prosecution of the ’531 patent. See ¶ 75 above; Exhibit D, at 5.
106.

Harkins is highly material prior art to the ’006 patent. The ’006 is currently

undergoing its second ex parte reexamination. See Exhibit E. The reexamination examiner
determined that “Harkins raises a substantial new question of patentability regarding claims 24
and 25” of the ’006 patent because it provides “new and non-cumulative teachings that a
reasonable examiner would consider important in determining patentability of the claims.” Id. at
10. Claim 24 (and dependent claim 25) as originally issued include the following limitation:
a data transfer manager, coupled with the user parameter store,
adapted to control communication of data units between the
communication unit and the host server including receiving
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individually filtered data units from the host server based on at
least one user-definable filter parameters to identify whether a data
unit is a qualifying or non-qualifying data unit, wherein for
qualifying data units, a summary part and an additional part is
received and for non-qualifying data units, the summary part
without the additional part is received, and providing the
communication unit with the summary part and the additional part
for qualifying data units and providing the communication unit
with the summary part without the additional part for nonqualifying data units.
The only alteration to this claim limitation after the first ex parte reexamination was correction
of a grammatical error through replacing with word “parameters” with the word “parameter.”
See Exhibit 3 to Motorola Mobility’s Complaint, at 20-21.

As explained by the second

reexamination examiner, the above quoted limitation is the “distinguishing feature” of claims 24
and 25 that rendered those claims patentable. Exhibit E, at 10-11. Harkins is material to claims
24 and 25 of the ’006 patent because it reads on this “distinguishing feature”:
Harkins raises a substantial new question by providing
teachings that are relevant to the distinguishing feature of claims
24 and 25. For example, Harkins suggests receiving individually
filtered data units from the host server based on at least one userdefinable filter parameter to identify whether a data unit is a
qualifying or non-qualifying data unit by teaching a device server
and Communication Channel Admin Server applying filtering
parameters before passing the data to the communication unit.
Id. at 11 (citing Harkins, col. 12; ll. 6-11; col. 7, ll. 52-54).
107.

Harkins is not cumulative to any references disclosed during prosecution of the

’006 Patent. None of the references cited to the Patent Office describe the inventions claimed in
Harkins, which anticipate and/or render obvious the ’006 patent for the reasons identified above
and in Exhibit E.
108.

Upon information and belief, Eggleston, Hansen, Sarli, and Hughes failed to

disclose Harkins during prosecution of the ’006 patent with an intent to deceive the Patent
Office. In April 1997, they received a Final Office Action rejecting all claims in the related
application and identifying Harkins as a relevant prior art reference. Six months later, in October
1998, they received an Office Action rejecting all claims in the ’006 application. Three months
later, when they filed an amendment to the claims in the ’006 application, they did so without
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referencing Harkins.
109.

Harkins qualifies as prior art to the ’006 patent under 35 U.S.C. § 102(e)(2). The

United States patent application that issued as Harkins, U.S. Patent Application No. 08/130,828,
was filed on October 4, 1993, more than two years prior to the December 19, 1995 filing date of
the ’541 application. In addition, Harkins issued on April 30, 1996, nearly three-and-a-half years
before issuance of the ’006 patent.
110.

Upon information and belief, the examiner did not consider Harkins during

prosecution of the ’006 patent.
111.

The above acts of fraud on the Patent Office committed during the prosecution of

the ’006 patent render the ’006 patent unenforceable.
III. COUNTERCLAIMS
Counterclaim-Plaintiff Apple counterclaims against Counterclaim-Defendant Motorola
Mobility as follows:
PARTIES
112.

Apple is a corporation organized under the laws of the State of California and

having a principal place of business at 1 Infinite Loop, Cupertino, CA 95014.
113.

Upon information and belief, Motorola Solutions, Inc. (formerly Motorola, Inc.)

is a corporation organized under the laws of Delaware with its principal place of business at 1303
East Algonquin Road, Schaumburg, Illinois 60048.
114.

Upon information and belief, Motorola Mobility is a corporation organized under

the laws of the State of Delaware, with a principal place of business at 600 North U.S. Highway
45, Libertyville, Illinois 60048.
JURISDICTION AND VENUE
115.

These counterclaims arise under Title 35 of the United States Code. The Court

has subject matter jurisdiction over these counterclaims pursuant to 28 U.S.C. §§ 1331, 1338(a),
2201 and 2202.
116.

Motorola Solutions, Inc. (formerly Motorola, Inc.) is subject to personal
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jurisdiction in this district arising out of its systematic and continuous contacts with this district
and its purposeful acts and/or transactions directed toward this district. Such contacts include
without limitation Motorola, Inc.’s past and ongoing infringing conduct in this district, and, on
information and belief, Motorola, Inc.’s presence and conduct of business in this district.
117.

Motorola Mobility is subject to personal jurisdiction in this district arising out of

its systematic and continuous contacts with this district and its purposeful acts and/or
transactions directed toward this district. Such contacts include without limitation Motorola
Mobility’s past and ongoing infringing conduct in this district, Motorola Mobility’s bringing of
this lawsuit in this district, and, on information and belief, Motorola Mobility’s presence and
conduct of business in this district.
118.

Venue is proper in this judicial district under 28 U.S.C. § 1391.
FIRST COUNTERCLAIM – DECLARATORY JUDGMENT
U.S. PATENT NO. 5,710,987

119.

Apple counterclaims against Motorola Mobility pursuant to the patent laws of the

United States, Title 35 of the United States Code and the Declaratory Judgments Act, 28 U.S.C.
§§ 2201 and 2202.
120.

Motorola Mobility claims to be the owner of the ’987 patent, entitled “Receiver

Having Concealed External Antenna,” filed on June 2, 1995 and issued on January 20, 1998.
The ’987 patent on its face identifies as inventor Thomas Eugene Paulick. The ’987 patent on its
face identifies as assignee Motorola, Inc. See Exhibit 1 of Motorola Mobility’s Complaint. On
information and belief, the ’987 patent appears to have been assigned to Motorola Mobility, Inc.
on July 31, 2010.
A.
121.

Declaration of Noninfringement

Apple incorporates herein by reference the answers and allegations set forth in

Paragraphs 1-120 above as if fully set forth herein.
122.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’987 patent because Motorola Mobility has brought an action against
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Apple alleging that Apple infringes the ’987 patent by making, using, offering for sale, selling
and/or importing its iPhone 4 product, which allegation Apple denies. Absent a declaration of
noninfringement, Motorola Mobility will continue to wrongfully assert the ’987 patent against
Apple, and thereby cause Apple irreparable injury and damage.
123.

Apple has not infringed the ’987 patent, either directly or indirectly, literally or

under the doctrine of equivalents, willfully or otherwise, and is entitled to a declaration to that
effect.
124.

This is an exceptional case entitling Apple to an award of its attorneys’ fees

incurred in connection with this action pursuant to 35 U.S.C. § 285.
B.
125.

Declaration of Invalidity

Apple realleges and incorporates by reference the answers and allegations set

forth in Paragraphs 1-124 above as if fully set forth herein.
126.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’987 patent because Motorola Mobility has brought an action against
Apple alleging that Apple infringes the ’987 patent by making, using, offering for sale, selling
and/or importing its iPhone 4 product, which allegation Apple denies. Absent a declaration of
invalidity, Motorola Mobility will continue to wrongfully assert the ’987 patent against Apple,
and thereby cause Apple irreparable injury and damage.
127.

The ’987 patent is invalid under the provisions of Title 35 of the United States

Code, including but not limited to Sections 102, 103 and/or 112, and Apple is entitled to a
declaration to that effect.
128.

This is an exceptional case entitling Apple to an award of its attorneys’ fees

incurred in connection with this action pursuant to 35 U.S.C. § 285.
SECOND COUNTERCLAIM – DECLARATORY JUDGMENT
U.S. PATENT NO. 5,754,119
129.

Apple counterclaims against Motorola Mobility pursuant to the patent laws of the

United States, Title 35 of the United States Code and the Declaratory Judgments Act, 28 U.S.C.
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§§ 2201 and 2202.
130.

Motorola Mobility claims to be the owner of the ’119 patent, entitled “Multiple

Pager Status Synchronization System and Method,” filed on August 31, 1995 and issued on May
19, 1998. The ’119 patent on its face identifies as inventors Michael J. Deluca and Joan S.
Deluca. The ’119 patent on its face identifies as assignee Motorola, Inc. See Exhibit 2 of
Motorola Mobility’s Complaint. On information and belief, the ’119 patent appears to have been
assigned to Motorola Mobility, Inc. on July 31, 2010.
A.
131.

Declaration of Noninfringement

Apple incorporates herein by reference the answers and allegations set forth in

Paragraphs 1-130 above as if fully set forth herein.
132.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’119 patent because Motorola Mobility has brought an action against
Apple alleging that Apple infringes the ’119 patent by making, using, offering for sale, selling
and/or importing its MobileMe service, certain iPhone products, certain iPad products, iPod
Touch products, MacBook products, MacBook Pro products, Mac Book Air products, iMac
Products, Mac mini products and Mac Pro products, which allegation Apple denies. Absent a
declaration of noninfringement, Motorola Mobility will continue to wrongfully assert the ’119
patent against Apple, and thereby cause Apple irreparable injury and damage.
133.

Apple has not infringed the ’119 patent, either directly or indirectly, literally or

under the doctrine of equivalents, willfully or otherwise, and is entitled to a declaration to that
effect.
134.

This is an exceptional case entitling Apple to an award of its attorneys’ fees

incurred in connection with this action pursuant to 35 U.S.C. § 285.
B.
135.

Declaration of Invalidity

Apple realleges and incorporates by reference the answers and allegations set

forth in Paragraphs 1-134 above as if fully set forth herein.
136.

An actual and justiciable controversy exists between Apple and Motorola
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Mobility with respect to the ’119 patent because Motorola Mobility has brought an action against
Apple alleging that Apple infringes the ’119 patent by making, using, offering for sale, selling
and/or importing its MobileMe service, certain iPhone products, certain iPad products, iPod
Touch products, MacBook products, MacBook Pro products, Mac Book Air products, iMac
Products, Mac mini products and Mac Pro products, which allegation Apple denies. Absent a
declaration of invalidity, Motorola Mobility will continue to wrongfully assert the ’119 patent
against Apple, and thereby cause Apple irreparable injury and damage.
137.

The ’119 patent is invalid under the provisions of Title 35 of the United States

Code, including but not limited to Sections 102, 103 and/or 112, and Apple is entitled to a
declaration to that effect.
138.

This is an exceptional case entitling Apple to an award of its attorneys’ fees

incurred in connection with this action pursuant to 35 U.S.C. § 285.
THIRD COUNTERCLAIM – DECLARATORY JUDGMENT
U.S. PATENT NO. 5,958,006
139.

Apple counterclaims against Motorola Mobility pursuant to the patent laws of the

United States, Title 35 of the United States Code and the Declaratory Judgments Act, 28 U.S.C.
§§ 2201 and 2202.
140.

Motorola Mobility claims to be the owner of the ’006 patent, entitled “Method

and Apparatus for Communicating Summarized Data,” filed on December 19, 1995 and issued
on September 28, 1999. The ’006 patent on its face identifies as inventors Gene Eggleston,
Mitch Hansen and Anthony Rzany. The ’006 patent on its face identifies as assignee Motorola,
Inc. See Exhibit 3 of Motorola Mobility’s Complaint.
A.
141.

Declaration of Noninfringement

Apple incorporates herein by reference the answers and allegations set forth in

Paragraphs 1-140 above as if fully set forth herein.
142.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’006 patent because Motorola Mobility has brought an action against
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Apple alleging that Apple infringes the ’006 patent by making, using, offering for sale, selling
and/or importing its MobileMe service, certain iPhone products and iPad with 3G product, which
allegation Apple denies. Absent a declaration of noninfringement, Motorola Mobility will
continue to wrongfully assert the ’006 patent against Apple, and thereby cause Apple irreparable
injury and damage.
143.

Apple has not infringed the ’006 patent, either directly or indirectly, literally or

under the doctrine of equivalents, willfully or otherwise, and is entitled to a declaration to that
effect.
144.

This is an exceptional case entitling Apple to an award of its attorneys’ fees

incurred in connection with this action pursuant to 35 U.S.C. § 285.
B.
145.

Declaration of Invalidity

Apple realleges and incorporates by reference the answers and allegations set

forth in Paragraphs 1-144 above as if fully set forth herein.
146.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’006 patent because Motorola Mobility has brought an action against
Apple alleging that Apple infringes the ’006 patent by making, using, offering for sale, selling
and/or importing its MobileMe service, certain iPhone products and iPad with 3G product, which
allegation Apple denies. Absent a declaration of invalidity, Motorola Mobility will continue to
wrongfully assert the ’006 patent against Apple, and thereby cause Apple irreparable injury and
damage.
147.

The ’006 patent is invalid under the provisions of Title 35 of the United States

Code, including but not limited to Sections 102, 103 and/or 112, and Apple is entitled to a
declaration to that effect.
148.

This is an exceptional case entitling Apple to an award of its attorneys’ fees

incurred in connection with this action pursuant to 35 U.S.C. § 285.
C.
149.

Declaration of Unenforceability

Apple realleges and incorporates by reference the answers and allegations set
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forth in Paragraphs 1-148 above as if fully set forth herein.
150.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’006 patent because Motorola Mobility has brought an action against
Apple alleging that Apple infringes the ’006 patent by making, using, offering for sale, selling
and/or importing its MobileMe service, certain iPhone products and iPad with 3G product, which
allegation Apple denies. Absent a declaration of invalidity, Motorola Mobility will continue to
wrongfully assert the ’006 patent against Apple, and thereby cause Apple irreparable injury and
damage.
151.

Upon information and belief, the ’006 patent is unenforceable due to inequitable

conduct for the reasons described in Apple’s affirmative defenses, and Apple is entitled to a
declaration to that effect.
152.

This is an exceptional case entitling Apple to an award of its attorneys’ fees

incurred in connection with this action pursuant to 35 U.S.C. § 285.
FOURTH COUNTERCLAIM – DECLARATORY JUDGMENT
U.S. PATENT NO. 6,008,737
153.

Apple counterclaims against Motorola Mobility pursuant to the patent laws of the

United States, Title 35 of the United States Code and the Declaratory Judgments Act, 28 U.S.C.
§§ 2201 and 2202.
154.

Motorola Mobility claims to be the owner of the ’737 patent, entitled “Apparatus

for Controlling Utilization of Software Added to a Portable Communication Device,” filed on
June 24, 1996 and issued on December 28, 1999. The ’737 patent on its face identifies as
inventors Michael J. Deluca, Dough Kraul and Walter L. Davis. The ’737 patent on its face
identifies as assignee Motorola, Inc. See Exhibit 4 of Motorola Mobility’s Complaint. On
information and belief, the ’737 patent appears to have been assigned to Motorola Mobility, Inc.
on July 31, 2010.
A.
155.

Declaration of Noninfringement

Apple incorporates herein by reference the answers and allegations set forth in
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Paragraphs 1-154 above as if fully set forth herein.
156.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’737 patent because Motorola Mobility has brought an action against
Apple alleging that Apple infringes the ’737 patent by making, using, offering for sale, selling
and/or importing its App Store service, certain iPhone products, certain iPad products and the
iPod Touch products, which allegation Apple denies. Absent a declaration of noninfringement,
Motorola Mobility will continue to wrongfully assert the ’737 patent against Apple, and thereby
cause Apple irreparable injury and damage.
157.

Apple has not infringed the ’737 patent, either directly or indirectly, literally or

under the doctrine of equivalents, willfully or otherwise, and is entitled to a declaration to that
effect.
158.

This is an exceptional case entitling Apple to an award of its attorneys’ fees

incurred in connection with this action pursuant to 35 U.S.C. § 285.
B.
159.

Declaration of Invalidity

Apple realleges and incorporates by reference the answers and allegations set

forth in Paragraphs 1-158 above as if fully set forth herein.
160.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’737 patent because Motorola Mobility has brought an action against
Apple alleging that Apple infringes the ’737 patent by making, using, offering for sale, selling
and/or importing its App Store service, certain iPhone products, certain iPad products and the
iPod Touch products, which allegation Apple denies. Absent a declaration of invalidity,
Motorola Mobility will continue to wrongfully assert the ’737 patent against Apple, and thereby
cause Apple irreparable injury and damage.
161.

The ’737 patent is invalid under the provisions of Title 35 of the United States

Code, including but not limited to Sections 102, 103 and/or 112, and Apple is entitled to a
declaration to that effect.
162.

This is an exceptional case entitling Apple to an award of its attorneys’ fees
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incurred in connection with this action pursuant to 35 U.S.C. § 285.
FIFTH COUNTERCLAIM – DECLARATORY JUDGMENT
U.S. PATENT NO. 6,101,531
163.

Apple counterclaims against Motorola Mobility pursuant to the patent laws of the

United States, Title 35 of the United States Code and the Declaratory Judgments Act, 28 U.S.C.
§§ 2201 and 2202.
164.

Motorola Mobility claims to be the owner of the ’531 patent, entitled “System for

Communicating User-Selected Criteria Filter Prepared at Wireless Client to Communication
Server for Filtering Data Transferred from Host to Said Wireless Client,” filed on May 15, 1998
and issued on August 8, 2000. The ’531 patent on its face identifies as inventors Gene Eggleston
and Mitch Hansen. The ’531 patent on its face identifies as assignee Motorola, Inc. See Exhibit
5 of Motorola Mobility’s Complaint. On information and belief, the ’531 patent appears to have
been assigned to Motorola Mobility, Inc. on July 31, 2010.
A.
165.

Declaration of Noninfringement

Apple incorporates herein by reference the answers and allegations set forth in

Paragraphs 1-164 above as if fully set forth herein.
166.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’531 patent because Motorola Mobility has brought an action against
Apple alleging that Apple infringes the ’531 patent by making, using, offering for sale, selling
and/or importing its MobileMe service, certain iPhone products and its iPad with 3G product,
which allegation Apple denies. Absent a declaration of noninfringement, Motorola Mobility will
continue to wrongfully assert the ’531 patent against Apple, and thereby cause Apple irreparable
injury and damage.
167.

Apple has not infringed the ’531 patent, either directly or indirectly, literally or

under the doctrine of equivalents, willfully or otherwise, and is entitled to a declaration to that
effect.
168.

This is an exceptional case entitling Apple to an award of its attorneys’ fees
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incurred in connection with this action pursuant to 35 U.S.C. § 285.
B.
169.

Declaration of Invalidity

Apple realleges and incorporates by reference the answers and allegations set

forth in Paragraphs 1-168 above as if fully set forth herein.
170.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’531 patent because Motorola Mobility has brought an action against
Apple alleging that Apple infringes the ’531 patent by making, using, offering for sale, selling
and/or importing its MobileMe service, certain iPhone products and its iPad with 3G product,
which allegation Apple denies. Absent a declaration of invalidity, Motorola Mobility will
continue to wrongfully assert the ’531 patent against Apple, and thereby cause Apple irreparable
injury and damage.
171.

The ’531 patent is invalid under the provisions of Title 35 of the United States

Code, including but not limited to Sections 102, 103 and/or 112, and Apple is entitled to a
declaration to that effect.
172.

This is an exceptional case entitling Apple to an award of its attorneys’ fees

incurred in connection with this action pursuant to 35 U.S.C. § 285.
SIXTH COUNTERCLAIM – DECLARATORY JUDGMENT
U.S. PATENT NO. 6,377,161
173.

Apple counterclaims against Motorola Mobility pursuant to the patent laws of the

United States, Title 35 of the United States Code and the Declaratory Judgments Act, 28 U.S.C.
§§ 2201 and 2202.
174.

Motorola Mobility claims to be the owner of the ’161 patent, entitled “Method

and Apparatus in a Wireless Messaging System for Facilitating an Exchange of Address
Information,” filed on August 11, 1998 and issued on April 23, 2002. The ’161 patent on its face
identifies as inventors Lisa Jane Gromelski and Gregory Lewis Cannon. The ’161 patent on its
face identifies as assignee Motorola, Inc. See Exhibit 6 of Motorola Mobility’s Complaint. On
information and belief, the ’161 patent appears to have been assigned to Motorola Mobility, Inc.
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on July 31, 2010.
A.
175.

Declaration of Noninfringement

Apple incorporates herein by reference the answers and allegations set forth in

Paragraphs 1-174 above as if fully set forth herein.
176.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’161 patent because Motorola Mobility has brought an action against
Apple alleging that Apple infringes the ’161 patent by making, using, offering for sale, selling
and/or importing certain of its iPhone products, which allegation Apple denies. Absent a
declaration of noninfringement, Motorola Mobility will continue to wrongfully assert the ’161
patent against Apple, and thereby cause Apple irreparable injury and damage.
177.

Apple has not infringed the ’161 patent, either directly or indirectly, literally or

under the doctrine of equivalents, willfully or otherwise, and is entitled to a declaration to that
effect.
178.

This is an exceptional case entitling Apple to an award of its attorneys’ fees

incurred in connection with this action pursuant to 35 U.S.C. § 285.
B.
179.

Declaration of Invalidity

Apple realleges and incorporates by reference the answers and allegations set

forth in Paragraphs 1-178 above as if fully set forth herein.
180.

An actual and justiciable controversy exists between Apple and Motorola

Mobility with respect to the ’161 patent because Motorola Mobility has brought an action against
Apple alleging that Apple infringes the ’161 patent by making, using, offering for sale, selling
and/or importing certain of its iPhone products, which allegation Apple denies. Absent a
declaration of invalidity, Motorola Mobility will continue to wrongfully assert the ’161 patent
against Apple, and thereby cause Apple irreparable injury and damage.
181.

The ’161 patent is invalid under the provisions of Title 35 of the United States

Code, including but not limited to Sections 102, 103 and/or 112, and Apple is entitled to a
declaration to that effect.
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182.

This is an exceptional case entitling Apple to an award of its attorneys’ fees

incurred in connection with this action pursuant to 35 U.S.C. § 285.
SEVENTH COUNTERCLAIM – INFRINGEMENT OF U.S. PATENT NO. 5,583,560
183.

Apple incorporates herein by reference the answers and allegations set forth in

Paragraphs 1-182 above as if fully set forth herein.
184.

Apple is the owner of the entire right, title and interest in and to U.S. Patent No.

5,583,560 (“the ’560 patent”) entitled “Method and Apparatus for Audio-Visual Interface for the
Selective Display of Listing Information on a Display,” which was duly and legally issued on
December 10, 1996 in the name of inventors Fabrice Florin, Michael Buettner, Glenn Corey,
Janey Fritsche, Peter Maresca, Peter Miller, Bill Purdy, Stuart Sharpe and Nick West. A copy of
the ’560 patent is attached as Exhibit F hereto.
185.

Upon information and belief, Motorola, Inc. and Motorola Mobility (collectively,

“Motorola”) have infringed and continue to infringe, contributorily infringe and/or induce
infringement of one or more claims of the ’560 patent, both directly and indirectly, literally or
under the doctrine of equivalents, in violation of 35 U.S.C. § 271 (a), (b) and/or (c) through the
making, use, importation, offer for sale and/or sale of set-top and DVR boxes that provide or
operate in conjunction with an interactive Guide (for TV or DVR functions), including, but not
limited to, the following products: DCT700, DCT2500, DCT3400, DCT3080, DCT6200,
DCT6208, DCT6400, DCT6412, DCX700, DCX3200 , DCX3200 P2, DCX3400, DCH70,
DCH100 , DCH200, DCH3200, DCH3416, DCH6200, DCH6416, QIP2500, QIP2708,
QIP6200, QIP6416, QIP7100 and QIP7216.1
186.

Upon information and belief, Motorola has infringed and continues to infringe,

contributorily infringe and/or induce infringement of one or more claims of the ’560 patent, in

1

The Accused Products specifically identified in Counterclaims 7-13 are not intended to
exclusively define or otherwise limit the categories of Accused Products. These named products
instead represent exemplars of the Accused Products categories set forth in each counterclaim.
Apple expects that additional Accused Products will be identified during discovery, and that
Motorola will introduce additional products in the future that also infringe the Asserted Patents.
31
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violation of 35 U.S.C. § 271(f), by, among other things, supplying or causing to be supplied in or
from the United States, without license or authority, components or products that are combined
and/or used outside the United States in a manner that falls within the scope of one or more
claims of the ’560 patent including, but not limited to, the following products: DCT700,
DCT2500, DCT3400, DCT3080, DCT6200, DCT6208, DCT6400, DCT6412, DCX700,
DCX3200, DCX3200 P2, DCX3400, DCH70, DCH100, DCH200, DCH3200, DCH3416,
DCH6200, DCH6416, QIP2500, QIP2708, QIP6200, QIP6416, QIP7100 and QIP7216.
187.

Upon information and belief, infringement of the ’560 patent by Motorola has

been willful and deliberate.
188.

Apple has suffered, and will continue to suffer, irreparable injury as a result of

Motorola’s infringement. Pursuant to 35 U.S.C. §§ 283 and 284, Apple is entitled to damages
for infringement and to a permanent injunction against further infringement.
189.

This case is exceptional, and therefore, Apple is entitled to attorneys’ fees

pursuant to 35 U.S.C. § 285.
EIGHTH COUNTERCLAIM – INFRINGEMENT OF U.S. PATENT NO. 5,594,509
190.

Apple incorporates herein by reference the answers and allegations set forth in

Paragraphs 1-189 above as if fully set forth herein.
191.

Apple is the owner of the entire right, title and interest in and to U.S. Patent No.

5,594,509 (“the ’509 patent”) entitled “Method and Apparatus for Audio-Visual Interface for the
Display of Multiple Levels of Information on a Display,” which was duly and legally issued on
January 14, 1997 in the name of inventors Fabrice Florin, Michael Buettner, Glenn Corey, Janey
Fritsche, Peter Maresca, Peter Miller, Bill Purdy, Stuart Sharpe and Nick West. A copy of the
’509 patent is attached as Exhibit G hereto.
192.

Upon information and belief, Motorola infringed and continues to infringe,

contributorily infringe and/or induce infringement of one or more claims of the ’509 patent, both
directly and indirectly, literally or under the doctrine of equivalents, in violation of 35 U.S.C.
§ 271 (a), (b) and/or (c) through the making, use, importation, offer for sale and/or sale of set-top
32
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and DVR boxes that provide or operate in conjunction with an interactive Guide (for TV or DVR
functions), including, but not limited to, the following products: DCT700, DCT2500, DCT3400,
DCT3080, DCT6200, DCT6208, DCT6400, DCT6412, DCX700, DCX3200 , DCX3200 P2,
DCX3400, DCH70, DCH100 , DCH200, DCH3200, DCH3416, DCH6200, DCH6416,
QIP2500, QIP2708, QIP6200, QIP6416, QIP7100 and QIP7216.
193.

Upon information and belief, Motorola has infringed and continues to infringe,

contributorily infringe and/or induce infringement of one or more claims of the ’509 patent, in
violation of 35 U.S.C. § 271(f), by, among other things, supplying or causing to be supplied in or
from the United States, without license or authority, components or products that are combined
and/or used outside the United States in a manner that falls within the scope of one or more
claims of the ’509 patent including, but not limited to, the following products: DCT700,
DCT2500, DCT3400, DCT3080, DCT6200, DCT6208, DCT6400, DCT6412, DCX700,
DCX3200, DCX3200 P2, DCX3400, DCH70, DCH100, DCH200, DCH3200, DCH3416,
DCH6200, DCH6416, QIP2500, QIP2708, QIP6200, QIP6416, QIP7100 and QIP7216.
194.

Upon information and belief, infringement of the ’509 patent by Motorola has

been willful and deliberate.
195.

Apple has suffered, and will continue to suffer, irreparable injury as a result of

Motorola’s infringement. Pursuant to 35 U.S.C. §§ 283 and 284, Apple is entitled to damages
for infringement and to a permanent injunction against further infringement.
196.

This case is exceptional, and therefore, Apple is entitled to attorneys’ fees

pursuant to 35 U.S.C. § 285.
NINTH COUNTERCLAIM – INFRINGEMENT OF U.S. PATENT NO. 5,621,456
197.

Apple incorporates herein by reference the answers and allegations set forth in

Paragraphs 1-196 above as if fully set forth herein.
198.

Apple is the owner of the entire right, title and interest in and to U.S. Patent No.

5,621,456 (“the ’456 patent”) entitled “Methods and Apparatus for Audio-Visual Interface for
the Display of Multiple Program Categories,” which was duly and legally issued on April 15,
33
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1997 in the name of inventors Fabrice Florin, Michael Buettner, Glenn Corey, Janey Fritsche,
Peter Maresca, Peter Miller, Bill Purdy, Stuart Sharpe and Nick West. A copy of the ’456 patent
is attached as Exhibit H hereto.
199.

Upon information and belief, Motorola has infringed and continues to infringe,

contributorily infringe and/or induce infringement of one or more claims of the ’456 patent, both
directly and indirectly, literally or under the doctrine of equivalents, in violation of 35 U.S.C.
§ 271 (a), (b) and/or (c) through the making, use, importation, offer for sale and/or sale of set-top
and DVR boxes that provide or operate in conjunction with an interactive Guide (for TV or DVR
functions), including, but not limited to, the following products: DCT700, DCT2500, DCT3400,
DCT3080, DCT6200, DCT6208, DCT6400, DCT6412, DCX700, DCX3200 , DCX3200 P2,
DCX3400, DCH70, DCH100 , DCH200, DCH3200, DCH3416, DCH6200, DCH6416,
QIP2500, QIP2708, QIP6200, QIP6416, QIP7100 and QIP7216.
200.

Upon information and belief, Motorola has infringed and continues to infringe,

contributorily infringe and/or induce infringement of one or more claims of the ’456 patent, in
violation of 35 U.S.C. § 271(f), by, among other things, supplying or causing to be supplied in or
from the United States, without license or authority, components or products that are combined
and/or used outside the United States in a manner that falls within the scope of one or more
claims of the ’456 patent including, but not limited to, the following products: DCT700,
DCT2500, DCT3400, DCT3080, DCT6200, DCT6208, DCT6400, DCT6412, DCX700,
DCX3200, DCX3200 P2, DCX3400, DCH70, DCH100, DCH200, DCH3200, DCH3416,
DCH6200, DCH6416, QIP2500, QIP2708, QIP6200, QIP6416, QIP7100 and QIP7216.
201.

Upon information and belief, infringement of the ’456 patent by Motorola has

been willful and deliberate.
202.

Apple has suffered, and will continue to suffer, irreparable injury as a result of

Motorola’s infringement. Pursuant to 35 U.S.C. §§ 283 and 284, Apple is entitled to damages
for infringement and to a permanent injunction against further infringement.
203.

This case is exceptional, and therefore, Apple is entitled to attorneys’ fees
34

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pursuant to 35 U.S.C. § 285.
TENTH COUNTERCLAIM – INFRINGEMENT OF U.S. PATENT NO. 6,282,646
204.

Apple incorporates herein by reference the answers and allegations set forth in

Paragraphs 1-203 above as if fully set forth herein.
205.

Apple is the owner of the entire right, title and interest in and to U.S. Patent No.

6,282,646 (“the ’646 patent”) entitled “System for Real-Time Adaptation to Changes in Display
Configuration,” which was duly and legally issued on August 28, 2001 in the name of inventors
Ian Hendry, Eric Anderson, Fernando Urbina. A copy of the ’646 patent is attached as Exhibit I
hereto.
206.

Upon information and belief, Motorola has infringed and continues to infringe,

contributorily infringe and/or induce infringement of one or more claims of the ’646 patent, both
directly and indirectly, literally or under the doctrine of equivalents, in violation of 35 U.S.C.
§ 271 through the making, use, importation, offer for sale and/or sale of mobile devices with a
video output, including, but not limited to, the Droid X product.
207.

Upon information and belief, infringement of the ’646 patent by Motorola has

been willful and deliberate.
208.

Apple has suffered, and will continue to suffer, irreparable injury as a result of

Motorola’s infringement. Pursuant to 35 U.S.C. §§ 283 and 284, Apple is entitled to damages
for infringement and to a permanent injunction against further infringement.
209.

This case is exceptional, and therefore, Apple is entitled to attorneys’ fees

pursuant to 35 U.S.C. § 285.
ELEVENTH COUNTERCLAIM – INFRINGEMENT OF U.S. PATENT NO. 7,380,116
210.

Apple incorporates herein by reference the answers and allegations set forth in

Paragraphs 1-209 above as if fully set forth herein.
211.

Apple is the owner of the entire right, title and interest in and to U.S. Patent No.

7,380,116 (“the ’116 patent”) entitled “System for Real-Time Adaptation to Changes in Display
Configuration,” which was duly and legally issued on May 27, 2008 in the name of inventors Ian
35
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Hendry, Eric Anderson, Fernando Urbina. A copy of the ’116 patent is attached as Exhibit J
hereto.
212.

Upon information and belief, Motorola has infringed and continues to infringe,

contributorily infringe and/or induce infringement of one or more claims of the ’116 patent, both
directly and indirectly, literally or under the doctrine of equivalents, in violation of 35 U.S.C.
§ 271 through the making, use, importation, offer for sale and/or sale of mobile devices with a
video output, including, but not limited to, the Droid X product.
213.

Upon information and belief, infringement of the ’116 patent by Motorola has

been willful and deliberate.
214.

Apple has suffered, and will continue to suffer, irreparable injury as a result of

Motorola’s infringement. Pursuant to 35 U.S.C. §§ 283 and 284, Apple is entitled to damages
for infringement and to a permanent injunction against further infringement.
215.

This case is exceptional, and therefore, Apple is entitled to attorneys’ fees

pursuant to 35 U.S.C. § 285.
TWELFTH COUNTERCLAIM – INFRINGEMENT OF U.S. PATENT NO. 7,657,849
216.

Apple incorporates herein by reference the answers and allegations set forth in

Paragraphs 1-215 above as if fully set forth herein.
217.

Apple is the owner of the entire right, title and interest in and to U.S. Patent No.

7,657,849 (“the ’849 patent”) entitled “Unlocking a Device by Performing Gestures on an
Unlock Image,” which was duly and legally issued on February 2, 2010 in the name of inventors
Imran Chaudhri, Bas Ording, Freddy Allen Anzures, Marcel Van Os, Stephen Lemay, Scott
Forstall, and Greg Christie. A copy of the ’849 patent is attached as Exhibit K hereto.
218.

Upon information and belief, Motorola has infringed and continues to infringe,

contributorily infringe and/or induce infringement of one or more claims of the ’849 patent, both
directly and indirectly, literally or under the doctrine of equivalents, in violation of 35 U.S.C.
§ 271 through the making, use, importation, offer for sale and/or sale of mobile devices with lock
pattern and/or slide unlock icon to unlock functionality, including but not limited to the Droid,
36
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Droid 2, Droid X, Droid Pro, BackFlip, Charm, Cliq, Cliq XT, Defy, Devour, Milestone, Bravo,
Citrus, Flipout, Flipside and i1 products.
219.

Upon information and belief, infringement of the ’849 patent by Motorola has

been willful and deliberate.
220.

Apple has suffered, and will continue to suffer, irreparable injury as a result of

Motorola’s infringement. Pursuant to 35 U.S.C. §§ 283 and 284, Apple is entitled to damages
for infringement and to a permanent injunction against further infringement.
221.

This case is exceptional, and therefore, Apple is entitled to attorneys’ fees

pursuant to 35 U.S.C. § 285.
DEMAND FOR JURY TRIAL
222.

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Apple demands a

jury trial for all issues so triable.
REQUEST FOR RELIEF
WHEREFORE, Apple prays for judgment as follows on Motorola Mobility’s Complaint
and on Apple’s Answer, Affirmative Defenses and Counterclaims:
A.

That each and every claim of the ’987 patent, the ’119 patent, the ’006 patent, the
’737 patent, the ’531 patent and the ’161 patent be declared not infringed and
invalid;

B.

That each and every claim of the ’006 patent be declared unenforceable;

C.

That Motorola Mobility take nothing by its Complaint and that Motorola
Mobility’s Complaint be dismissed with prejudice;

D.

That judgment be entered in favor of Apple against Motorola Mobility on
Motorola Mobility’s Complaint;

E.

That Motorola be declared to have infringed, directly and/or indirectly, literally or
under the doctrine of equivalents, the ’560 patent, the ’509 patent, the ’456 patent,
the ’646 patent, the ’116 patent and the ’849 patent under 35 U.S.C. § 271;

F.

That pursuant to 35 U.S.C. § 285 and/or other applicable laws, Motorola
37

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Mobility’s and/or Motorola, Inc.’s conduct be found to render this an exceptional
case and that Apple be awarded its attorneys’ fees incurred in connection with this
action;
G.

That Apple be awarded its cost of suit incurred herein;

H.

That Apple be awarded such other and further relief as the court may deem just
and proper.

Dated: April 24, 2012

Respectfully submitted,
/s/ Christopher R. J. Pace
Christopher R. J. Pace
[e-mail]
Edward Soto
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1395 Brickell Avenue, Suite 1200
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]

Of Counsel:
Matthew D. Powers
[e-mail]
Steven Cherensky
[e-mail]
Tensegrity Law Group LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: 650-802-6001
Mark G. Davis
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]

Attorneys for Apple Inc.
Robert T. Haslam
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Robert D. Fram
[e-mail]
Christine Saunders Haskett
[e-mail]
COVINGTON & BURLING LLP
One Front Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

Anne M. Cappella
[e-mail]
Jill J. Ho
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
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Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on April 24, 2012, I electronically filed the foregoing
document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document
is being served this day on all counsel of record or pro se parties identified on the attached
Service List in the manner specified, either via transmission of Notices of Electronic Filing
generated by CM/ECF or in some other authorized manner for those counsel or parties who are
not authorized to received electronically Notices of Electronic Filing.

/s/ Christopher R. J. Pace
Christopher R. J. Pace (Fla. Bar No. 0721166)

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SERVICE LIST
Motorola Mobility, Inc. versus Apple Inc.
Case No. 1:10cv023580-Civ-RNS
United States District Court, Southern District of Florida
Edward M. Mullins
Fla. Bar No. 863920
[e-mail]
ASTIGARRAGA DAVIS MULLINS & GROSSMAN, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Attorneys for Motorola Mobility, Inc.
Electronically served via CM/ECF
Of Counsel:
Charles K. Verhoeven
David A. Perlson
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 93111
[phone]
Raymond N. Nimrod
Edward J. DeFranco
QUINN EMANUEL URQUHART & SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
David A. Nelson
QUINN EMANUEL URQUHART & SULLIVAN, LLP
500 West Madison Street, Suite 2450
Chicago, IL 60661
[phone]
[e-mail]
Attorneys for Motorola Mobility, Inc.
Electronically served via email

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