Sprint Communications Company LP v. Vonage Holdings Corp., et al

Filing 22

ANSWER to Complaint with Jury Demand, COUNTERCLAIM against all plaintiffs by theglobe.com, Inc., Voiceglo Holdings, Inc..(Nehrbass, Scott)

Sprint Communications Company LP v. Vonage Holdings Corp., et al

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF KANSAS SPRINT COMMUNICATIONS COMPANY L.P., Plaintiff, - against THEGLOBE.COM, INC., VOICEGLO HOLDINGS, INC., VONAGE HOLDINGS CORP., and VONAGE AMERICA, INC., Defendants. ) ) ) ) ) ) ) ) ) ) ) )

Case No. 05-2433-JWL JURY TRIAL DEMANDED

ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIM Defendants Theglobe.com, Inc. and Voiceglo Holdings, Inc., by their attorneys, for their answer to the first amended complaint: 1. Deny knowledge or information sufficient to form a belief as to the truth of the

allegations of paragraph 1. 2. 3. Admit the allegations of paragraphs 2-3. Deny knowledge or information sufficient to form a belief as to the truth of the

allegations of paragraphs 4-5. JURISDICTION 4. Admit that the Court has subject matter jurisdiction to hear this action under 28

U.S.C. §§ 1331 and 1338; admit that the plaintiff alleges infringement of United States Patents, and except as so admitted deny the allegations of paragraph 6. 5. Deny the allegations of paragraphs 7-9.

Dockets.Justia.com

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FACTUAL BACKGROUND 6. Admit that a copy of U.S. Patent No. 6,304,572 was attached to the Complaint as

Exhibit A, and except as so admitted deny knowledge or information sufficient to form a belief as to the truth of the allegations contained in paragraph 10. 7. Admit that a copy of U.S. Patent No. 6,633,561 was attached to the Complaint as

Exhibit B, and except as so admitted deny knowledge or information sufficient to form a belief as to the truth of the allegations contained in paragraph 11. 8. Admit that a copy of U.S. Patent No. 6,463,052 was attached to the Complaint as

Exhibit C, and except as so admitted deny knowledge or information sufficient to form a belief as to the truth of the allegations contained in paragraph 12. 9. Admit that a copy U.S. Patent No. 6,452,932 was attached to the Complaint as

Exhibit D, and except as so admitted deny knowledge or information sufficient to form a belief as to the truth of the allegations contained in paragraph 13. 10. Admit that an incomplete and erroneous copy of U.S. Patent No. 6,473,429 was

attached to the Complaint as Exhibit E, and except as so admitted deny knowledge or information sufficient to form a belief as to the truth of the allegations contained in paragraph 14. 11. Admit that an incomplete and erroneous copy U.S. Patent No. 6,298,064 was

attached to the Complaint as Exhibit F, and except as so admitted deny knowledge or information sufficient to form a belief as to the truth of the allegations contained in paragraph 15. 12. Admit that an incomplete and erroneous copy of U.S. Patent No. 6,665,294 was

attached to the Complaint as Exhibit G, and except as so admitted deny knowledge or information sufficient to form a belief as to the truth of the allegations contained in paragraph 16.

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13.

Admit that Voiceglo Holdings, Inc. offers the products and services described at

the Internet "web sites" associated with the domain names www.voiceglo.com and www.glophone.com.; deny knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 17 as to defendants Vonage Holdings Corp. and Vonage America, Inc.; and otherwise deny the allegations of paragraph 17. 14. Deny the allegations of paragraph 18. COUNT 1 15. in full. 16. Deny the allegations of paragraphs 20-23. COUNT 2 17. in full. 18. Deny the allegations of paragraphs 25-28. COUNT 3 19. in full. 20. Denies the allegations of paragraphs 30-33. COUNT 4 21. in full. 22. Deny the allegations of paragraphs 35-38. Paragraphs 1-20, above, are realleged and incorporated by reference as if set forth Paragraphs 1-18, above, are realleged and incorporated by reference as if set forth Paragraphs 1-16, above, are realleged and incorporated by reference as if set forth Paragraphs 1-14, above are realleged and incorporated by reference as if set forth

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COUNT 5 23. in full. 24. Deny the allegations of paragraphs 40-43. COUNT 6 25. 26. Paragraphs 1-24, above, are incorporated by reference as if set forth in full. Deny the allegations of paragraphs 45-48. COUNT 7 27. 28. Paragraphs 1-26, above, are incorporated by reference as if set forth in full. Deny the allegations of paragraphs 50-53. FIRST AFFIRMATIVE DEFENSE 29. Plaintiff's claim is barred by the standard of infringement laid down in Paragraphs 1-22, above, are realleged and incorporated by reference as if set forth

Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 569 (1898) (quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531, 573 (1864)), and followed and applied in such cases as Autogiro Co. of Am. v. United States, 384 F.2d 391, 399-401 (Ct. Cl. 1967) and Merrill v. Builders Ornamental Iron Co., 197 F.2d 16, 20 (10th Cir. 1952). SECOND AFFIRMATIVE DEFENSE 30. Plaintiff's claim is barred by the doctrine of equivalents. Voiceglo Holdings, Inc.

does not use any apparatus or process that does the same work in substantially the same way, and accomplishes substantially the same result, as any "invention" described and claimed in any one or more of the patents identified in the First Amended Complaint (collectively, the "Asserted Patents"). The doctrine of equivalents is properly considered an integral part of the standard of infringement pleaded in the complaint on which plaintiff bears the burden of proof; however, to

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the extent that controlling Supreme Court precedent is not followed and the doctrine of equivalents is characterized as a "defense" to so-called "literal" infringement, that "defense" is so pleaded here in the alternative. THIRD AFFIRMATIVE DEFENSE 31. Plaintiff's claim is barred by "the doctrine that a patentee may not broaden his

claims by describing the product in terms of function." General Elec. Co. v. Wabash Co., 304 U.S. 364, 371 (1938). Accord Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271, 277 (1949); United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942); Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 256-258 (1928). FOURTH AFFIRMATIVE DEFENSE 32. The Asserted Patents are invalid under 35 U.S.C. § 112 for lack of adequate

written description, and for purporting to claim subject matter that is neither described in nor equivalent to any "invention" that is described in the specifications of the Asserted Patents. FIFTH AFFIRMATIVE DEFENSE 33. The Asserted Patents are invalid under 35 U.S.C. § 112 for failing to point out and

distinctly claim that part or portion of the subject matter disclosed in the patents' specifications that the named inventor regarded as his "invention" or improvement upon the prior art. SIXTH AFFIRMATIVE DEFENSE 34. The Asserted Patents are invalid under 35 U.S.C. §§ 102 and 103 for claiming

subject matter that, at relevant times, would have been obvious to a person having ordinary skill in the art of the Asserted Patents.

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SEVENTH AFFIRMATIVE DEFENSE 35. Plaintiff's claim is barred by estoppel, including one or more "file wrapper"

estoppels arising from admissions or representations made to the United States Patent and Trademark Office ("USPTO") in order to induce the issuance of a patent on subject matter described and claimed in the Asserted Patents. EIGHTH AFFIRMATIVE DEFENSE 36. Plaintiff's claim is barred, in whole or in part, by laches. NINTH AFFIRMATIVE DEFENSE 37. The Court lacks jurisdiction over the person of defendant Theglobe.com, Inc. TENTH AFFIRMATIVE DEFENSIVE 38. Venue in this district is improper as to defendant Theglobe.com, Inc. ELEVENTH AFFIRMATIVE DEFENSE 39. The first amended complaint improperly misjoins Theglobe.com, Inc. and

Voiceglo Holdings, Inc. with unrelated co-parties defendant whose alleged activities have nothing to do with Theglobe.com, Inc. or Voiceglo Holdings, Inc. The Court should issue an order severing Theglobe.com, Inc. and Voiceglo Holdings, Inc. from this action in accordance with Fed. R. Civ. P. 21. COUNTERCLAIM Voiceglo Holdings, Inc. ("Voiceglo"), by its attorneys, as and for its counterclaim in this action alleges: 40. Voiceglo is a corporation organized and existing under the laws of the State of

Delaware, having its principal place of business in Ft. Lauderdale, Florida.

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41.

Upon information and belief, Sprint Communications Company L.P. ("SCC") is a

limited partnership organized and existing under the laws of the State of Delaware, having its principal place of business at Overland Park, Kansas. 42. The Court has subject matter jurisdiction to hear this counterclaim under 28

U.S.C. §§ 1331, 1338(a), and 1367. 43. On or about October 12, 2005, counterclaim defendant SCC filed a First

Amended Complaint in this Court (the "FAC") accusing Voiceglo of infringing no fewer than seven (7) patents identified in paragraphs 10-16 of the FAC (collectively, the "Asserted Patents"). 44. Voiceglo has denied, and continues to deny, that it has infringed any of the

Asserted Patents. 45. The Asserted Patents are invalid for non-compliance with the requirements of

patentability under the Patent Act of 1952, as amended, including on the grounds set forth in paragraphs 31-34, above. 46. An actual controversy exists between SCC and Voiceglo with regard to whether

Voiceglo has infringed the Asserted Patents or any of them. 47. Voiceglo is entitled to judgment declaring that it has not infringed any of the

Asserted Patents. 48. 49. Voiceglo is entitled to judgment declaring that the Asserted Patents are invalid. Voiceglo is entitled to judgment declaring that it is not liable to SCC for

infringement of the Asserted Patents, or any of them, on any theory.

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WHEREFORE, Theglobe.com, Inc. and Voiceglo Holdings, Inc., pray that the Court: (i) (ii) (iii) (iv) dismiss plaintiff's complaint with prejudice; declare, adjudge, and decree that the Asserted Patents are invalid under 35 U.S.C.§§ 102, 103, and 112; declare, adjudge, and decree that Theglobe.com, Inc. and Voiceglo Holdings, Inc. have not infringed the Asserted Patents; declare, adjudge, and decree that this case is "exceptional" and award Theglobe.com, Inc. and Voiceglo Holdings, Inc. their costs and reasonable attorneys' fees incurred in defending this action pursuant to 35 U.S.C. § 285; award Theglobe.com, Inc. and Voiceglo Holdings, Inc. such other and further relief as the Court may deem just and proper. DEMAND FOR JURY TRIAL These defendants respectfully demand a trial by jury on all claims and issues so triable. Dated: November 21, 2005 FOULSTON SIEFKIN LLP By /s/Scott C. Nehrbass James D. Oliver #8604 Scott C. Nehrbass #16285 40 Corporate Woods Suite 1050 9401 Indian Creek Parkway Overland Park, Kansas 66210 Telephone: [phone] Fax: [phone] Email: [e-mail] Email: [e-mail]

(v)

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James W. Dabney (admitted pro hac vice) Henry C. Lebowitz (admitted pro hac vice) Malcolm J. Duncan (admitted pro hac vice) FRIED, FRANK, HARRIS, SHRIVER & JACOBSON LLP One New York Plaza New York, New York 10004 Telephone: [phone] Fax: [phone] Email: [e-mail] Email: [e-mail] Email: [e-mail] ATTORNEYS FOR DEFENDANTS THEGLOBE.COM, INC. and VOICEGLO HOLDINGS, INC.

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CERTIFICATE OF SERVICE I hereby certify that on this 7th day of November, 2005, I electronically filed the above and foregoing with the clerk of the court by using the CM/ECF system, which will send a notice of electronic filing to the following: B. Trent Webb [e-mail] Adam P. Seitz [e-mail] Eric A. Buresh [e-mail] Shook Hardy & Bacon L.L.P. 2555 Grand Blvd. Kansas City, MO 64108-2613 Telephone: [phone] Fax: [phone] ATTORNEYS FOR PLAINTIFF SPRINT COMMUNICATIONS COMPANY L.P. Don R. Lolli [e-mail] Patrick J. Kaine [e-mail] Dysart Taylor Lay Cotter & McMonigle, P.C. 4420 Madison Avenue Kansas City, MO 64111 Telephone: [phone] Fax: [phone] Patrick D. McPherson [e-mail] Patrick C. Muldoon

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[e-mail] Duane Morris, LLP 1667 K Street, N.W. Washington, DC 20006-1608 Telephone: [phone] Fax: [phone] ATTORNEYS FOR DEFENDANT VONAGE HOLDINGS CORPORATION AND VONAGE AMERICA, INC.

/s/ Scott C. Nehrbass

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