Motorola Mobility, Inc. v. Apple, Inc.

Filing 78

RESPONSE/REPLY to 71 Response/Reply (Other) Defendant Apple Inc.'s Answer to Motorola, Inc. and Motorola Mobility, Inc.'s Joint Counterclaims by Apple, Inc.. (Pace, Christopher)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10cv023580-Civ-UU
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 ANSWER TO MOTOROLA, INC. AND MOTOROLA
MOBILITY, INC.’S JOINT COUNTERCLAIMS
Defendant Apple Inc. (“Apple”) by and through its undersigned counsel, hereby responds
to Motorola Solutions, Inc. and Motorola Mobility, Inc.’s (collectively, “Motorola”) Joint
Counterclaims, filed April 8, 2011, as follows:
ANSWER TO MOTOROLA’S JOINT COUNTERCLAIMS
1.

No response to Paragraph 1 is required.
PARTIES

2.

On information and belief, Apple admits that Motorola Solutions, Inc. is a

corporation organized under the laws of the State of Delaware, with its principal place of

business at 1303 East Algonquin Road, Schaumburg, Illinois 60196. On information and belief,
Apple admits that Motorola Mobility, Inc. 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.
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 the Joint Counterclaims purport to be counterclaims for

Declaratory Relief under Title 35 of the United States Code, as well as under 28 U.S.C. §§ 1331,
1332, 1338, 2201, and 2202. Apple does not contest the Court’s jurisdiction over the Joint
Counterclaims.
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 Joint Counterclaims.
6.

Apple admits that venue is proper in this District pursuant to 28 U.S.C. § 1391(b).

Except as so expressly admitted herein, Apple denies the allegations in Paragraph 6 of the Joint
Counterclaims. As reflected in Defendant and Counterclaim Plaintiff Apple Inc.’s Motion to
Transfer Venue [Dkt. No. 37], Apple contends this action should be transferred to the United
States District Court for the Western District of Wisconsin.

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COUNTERCLAIM I: DECLARATORY JUDGMENT OF NON-INFRINGEMENT AND
INVALIDITY OF U.S. PATENT NO. 5,583,560
7.

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

8.

Apple admits that it has asserted claims against Motorola for the infringement of

above.

U.S. Patent No. 5,583,560 (“the ’560 patent”).
9.

No response to Paragraph 9 is required.

10.

Apple denies the allegations in Paragraph 10 of the Joint Counterclaims.

11.

Apple admits that there is a substantial and continuing justiciable controversy

between Apple and Motorola as to the infringement and validity of the ’560 patent.
12.

Apple denies the allegations in Paragraph 12 of the Joint Counterclaims.

COUNTERCLAIM II: DECLARATORY JUDGMENT OF NON-INFRINGEMENT AND
INVALIDITY OF U.S. PATENT NO. 5,594,509
13.

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

14.

Apple admits that it has asserted claims against Motorola for the infringement of

above.

U.S. Patent No. 5,594,509 (“the ’509 patent”).
15.

No response to Paragraph 15 is required.

16.

Apple denies the allegations in Paragraph 16 of the Joint Counterclaims.

17.

Apple admits that there is a substantial and continuing justiciable controversy

between Apple and Motorola as to the infringement and validity of the ’509 patent.
18.

Apple denies the allegations in Paragraph 18 of the Joint Counterclaims.

COUNTERCLAIM III: DECLARATORY JUDGMENT OF NON-INFRINGEMENT
AND INVALIDITY OF U.S. PATENT NO. 5,621,456
19.

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

above.

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20.

Apple admits that it has asserted claims against Motorola for the infringement of

U.S. Patent No. 5,621,456 (“the ’456 patent”).
21.

No response to Paragraph 21 is required.

22.

Apple denies the allegations in Paragraph 22 of the Joint Counterclaims.

23.

Apple admits that there is a substantial and continuing justiciable controversy

between Apple and Motorola as to the infringement and validity of the ’456 patent.
24.

Apple denies the allegations in Paragraph 24 of the Joint Counterclaims.

COUNTERCLAIM IV: DECLARATORY JUDGMENT OF NON-INFRINGEMENT
AND INVALIDITY OF U.S. PATENT NO. 6,282,646
25.

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

26.

Apple admits that it has asserted claims against Motorola for the infringement of

above.

U.S. Patent No. 6,282,646 (“the ’646 patent”).
27.

No response to Paragraph 27 is required.

28.

Apple denies the allegations in Paragraph 28 of the Joint Counterclaims.

29.

Apple admits that there is a substantial and continuing justiciable controversy

between Apple and Motorola as to the infringement and validity of the ’646 patent.
30.

Apple denies the allegations in Paragraph 30 of the Joint Counterclaims.

COUNTERCLAIM V: DECLARATORY JUDGMENT OF NON-INFRINGEMENT AND
INVALIDITY OF U.S. PATENT NO. 7,380,116
31.

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

32.

Apple admits that it has asserted claims against Motorola for the infringement of

above.

U.S. Patent No. 7,380,116 (“the ’116 patent”).
33.

No response to Paragraph 33 is required.

34.

Apple denies the allegations in Paragraph 34 of the Joint Counterclaims.

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35.

Apple admits that there is a substantial and continuing justiciable controversy

between Apple and Motorola as to the infringement and validity of the ’116 patent.
36.

Apple denies the allegations in Paragraph 36 of the Joint Counterclaims.

COUNTERCLAIM VI: DECLARATORY JUDGMENT OF NON-INFRINGEMENT
AND INVALIDITY OF U.S. PATENT NO. 7,657,849
37.

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

38.

Apple admits that it has asserted claims against Motorola for the infringement of

above.

U.S. Patent No. 7,657,849 (“the ’849 patent”).
39.

No response to Paragraph 39 is required.

40.

Apple denies the allegations in Paragraph 40 of the Joint Counterclaims.

41.

Apple admits that there is a substantial and continuing justiciable controversy

between Apple and Motorola as to the infringement and validity of the ’849 patent.
42.

Apple denies the allegations in Paragraph 42 of the Joint Counterclaims.
DEMAND FOR JURY TRIAL

43.

Apple does not object to a trial by jury on all issues so triable.
JOINT REQUEST FOR RELIEF ON COUNTERCLAIMS I-VI

44.

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

relief, including that requested in Paragraphs (A) through (D). The ’560, ’509, ’456, ’646, ’116,
and ’849 patents are valid and infringed by Motorola. Motorola is not entitled to recover
statutory damages, compensatory damages, enhanced damages, an accounting, costs, fees,
interest or any other type of recovery from Apple. Motorola’s prayer should, therefore, be
denied in its entirety and with prejudice, and Motorola should take nothing.

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Dated: May 2, 2011

Respectfully submitted,
/s/ Christopher R. J. Pace____________
Christopher R. J. Pace (Fla. Bar No. 0721166)
Christopher R. J. Pace
Edward Soto
WEIL, GOTSHAL & MANGES LLP
1395 Brickell Avenue, Suite 1200
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Matthew D. Powers
Steven S. Cherensky
Jill J. Ho
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Mark G. Davis
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]
Robert T. Haslam
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Robert D. Fram
Christine Saunders Haskett
Samuel F. Ernst
Chris Martiniak
Winslow B. Taub
COVINGTON & BURLING LLP
One Front Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Attorneys for Apple Inc.
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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on May 2, 2011, 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-UU
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. and Motorola, Inc.
Electronically served via CM/ECF
Of Counsel:
Charles K. Verhoeven
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 93111
[phone]
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. and Motorola, Inc.
Electronically served via CM/ECF

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