Visual Interactive Phone Concepts, Inc. v. Google, Inc.

Filing 18

ANSWER to Amended Complaint with Affirmative Defenses with Jury Demand, COUNTERCLAIM filed by Google, Inc. against Visual Interactive Phone Concepts, Inc. by Google, Inc.. (Alamo, Michelle)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION

VISUAL INTERACTIVE PHONE CONCEPTS,
INC., a Nevada Corporation,
Hon. Lawrence P. Zatkoff
Plaintiff,
Mag. Judge Laurie Michelson
vs.
GOOGLE INC.,
a Delaware Corporation,

Case No. 11-cv-12348

Defendant.

GOOGLE INC.’S ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS
Defendant and Counterclaimant Google Inc. (“Google”), by its undersigned counsel,
answers Plaintiff Visual Interactive Phone Concepts, Inc.‟s (“VIPC”) First Amended Complaint
For Patent Infringement, Dkt. No. 16, as follows:
THE PARTIES
1.

Google lacks knowledge or information sufficient to form a belief about the truth

of the allegations in paragraph 1 and therefore, denies the same.
2.

With respect to paragraph 2, Google admits that it is a corporation organized and

existing under the laws of the State of Delaware, with its principal place of business at 1600
Amphitheatre Parkway, Mountain View, California 94043.

Google denies any remaining

allegations of paragraph 2.
3.

Google lacks knowledge or information sufficient to form a belief about the truth

of the allegations in paragraph 3 and therefore, denies the same.

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4.

Google admits that it is a technology company that develops, uses, and sells

products and services. Google admits that the Nexus One is a mobile phone that was offered for
sale on the Google Web Store. Google admits that it develops an open-source software stack for
mobile devices that includes an operating system, middleware and applications, called the
Android platform ("Android").

Google admits that it develops a software product called

"Android Market" that enables developers to publish and distribute their products to users of
certain Android-compatible phones. Google admits that it develops software applications for use
on mobile devices. Google admits that it provides a payment processing service called "Google
Checkout" that may be used to process purchases made through Android Market. Google denies
any remaining allegations of paragraph 4.
5.

Google denies the allegations in paragraph 5.

6.

Solely for purposes of this action, Google admits that it does business within this

Judicial District. Google denies that it has committed any acts of patent infringement within this
or any other district.
JURISDICTION
7.

Google admits that the Amended Complaint purports to state an action for patent

infringement. Google denies that it has committed any acts of patent infringement within this or
any other district.
8.

Google admits that the Amended Complaint purports to state an action for patent

infringement and that this Court has subject matter jurisdiction over patent law claims. Google
denies that it has committed any acts of patent infringement within this or any other district.

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9.

Solely for purposes of this action, Google does not contest personal jurisdiction in

this District. Google denies that it has committed any acts of infringement within this or any
other district and denies any remaining allegations of paragraph 9.
10.

Google denies the allegations in paragraph 10.

11.

Solely for purposes of this action, Google admits that venue is proper in the

Eastern District of Michigan under 28 U.S.C. §§ 1391 and 1400, but denies that this district is
the most convenient or appropriate forum and reserves its right to challenge or move for a
change of venue under 28 U.S.C. § 1404 or any other applicable legal grounds.

FACTUAL BACKGROUND
A. The Patents at Issue
12.

Google admits that United States Patent No. 5,606,361 (“the „361 Patent”), titled

“Videophone interactive mailbox facility system and method of processing information,”
indicates on its face that it was issued on February 25, 1997. Google lacks knowledge or
information sufficient to form a belief about the truth of the remaining allegations in paragraph
12 and therefore, denies the same.
13.

Google admits that United States Patent No. 5,724,092 (“the „092 Patent”), titled

“Videophone interactive mailbox facility system and method of processing information,”
indicates on its face that it was issued on March 3, 1998.

Google lacks knowledge or

information sufficient to form a belief about the truth of the remaining allegations in paragraph
13 and therefore, denies the same.
B. Development of the Patents
14.

Google lacks knowledge or information sufficient to form a belief about the truth

of the allegations in paragraph 14 and therefore, denies the same.
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15.

Google lacks knowledge or information sufficient to form a belief about the truth

of the allegations in paragraph 15 and therefore, denies the same.
16.

Google admits that paragraph 16 appears to contain a correct quotation of the

„092 patent. Google otherwise denies the allegations in paragraph 16.
17.

Google denies the allegations in paragraph 17.

18.

Google denies the allegations in paragraph 18.

19.

Google admits that the face of the „361 Patent indicates that: (1) it was issued on

February 25, 1997, (2) Davidsohn and Cinotti are the inventors, and (3) the patent application
was filed on May 10, 1995. Google lacks knowledge or information sufficient to form a belief
about the truth of the remaining allegations in paragraph 19 and therefore, denies the same.
20.

Google admits that the face of the „092 Patent indicates that: (1) it was issued on

March 3, 1998, (2) Davidsohn and Cinotti are the inventors, and (3) the patent application was
filed on September 12, 1996. Google lacks knowledge or information sufficient to form a belief
about the truth of the remaining allegations in paragraph 20 and therefore, denies the same.
21.

Google lacks knowledge or information sufficient to form a belief about the truth

of the allegations in paragraph 21 and therefore, denies the same.
C. The 2008 Reexamination Requests
22.

Upon information and belief, admitted.

23.

Google admits that Exhibits 1 and 2 to the Amended Complaint indicate that the

United States Patent and Trademark Office issued Ex Parte Reexamination Certificates for both
the „361 and „092 patents. Google denies the remaining allegations in paragraph 23.
24.

Google admits that the face of the Ex Parte Reexamination Certificate for the „361

patent in Exhibit 1 to the Amended Complaint indicates that it was issued on April 6, 2010.
Google denies any remaining allegations in paragraph 24.
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25.

Google admits that the face of the Ex Parte Reexamination Certificate for the „092

patent in Exhibit 2 to the Amended Complaint indicates that it was issued on May 11, 2010.
Google denies any remaining allegations in paragraph 25.
26.

Google lacks knowledge or information sufficient to form a belief about the truth

of the allegations in paragraph 26 and therefore, denies the same.
CLAIM FOR RELIEF
Count I – Direct Infringement
27.

Google re-alleges and incorporates by reference its answer to paragraphs 1

through 26 of its Answer as if fully set forth herein.
28.

Google denies the allegations in paragraph 28.

29.

Google admits that that it develops and supports an open-source software stack

for mobile devices that includes an operating system, middleware and applications, called the
Android platform ("Android").

Google admits that Android is designed, at least in part,

according to Google's specifications. Google admits that it has sold mobile devices on the
Google web store.

Google admits that wireless service providers have distributed mobile

phones. Google denies that it has committed any acts of infringement within this or any other
district and denies any remaining allegations of paragraph 29.
30.

Google admits that products running Android Market may allow consumers to

purchase products published to Android Market.

Google admits that Google's servers are

utilized when purchases are made through Android Market. Google admits that information
regarding the transaction may be stored on Google's servers.

Google denies that it has

committed any acts of infringement within this or any other district and denies any remaining
allegations of paragraph 30.

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31.

Google admits that Android Market provides a marketplace through which a

consumer may purchase products such as games, applications and video content. Google denies
the allegations in paragraph 31.
32.

Google admits that users of the Android Market are required to have a Google

Checkout account in order to make purchases using Android Market.

Google admits that

creating a Google Checkout account involves creating a user profile and may involve providing
credit card or other payment information to Google. Google admits that credit card information
is encrypted. Google denies that it has committed any acts of infringement within this or any
other district and denies any remaining allegations of paragraph 32.
33.

Google admits that it processes payment when a user purchases products using

Android Market. Google admits that these products may include games, applications or video
content. Google admits that it may have contractual relationships with entities that sell products
through Android Market. Google admits that it may collect a transaction fee associated with
payment for a product. Google denies that it has committed any acts of infringement within this
or any other district and denies any remaining allegations of paragraph 33.
34.

Google admits that it has developed software for the Nexus One and Nexus S

mobile devices. Google denies that it has committed any acts of infringement within this or any
other district and denies any remaining allegations of paragraph 34.
35.

Google admits that that the Nexus One mobile device and the Nexus S mobile

device may allow a user to access Android Market to purchase products. Google admits that
those products may include applications, games and/or video content. Google denies that it has
committed any acts of infringement within this or any other district and denies any remaining
allegations of paragraph 35.

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36.

Google admits that products manufactured by parties other than Google are

installed with the Android operating system and with Android market. Google further admits
that these products may allow users to purchase products through Android Market and Google
Checkout and that transactions made using Android Market and Google Checkout involve the
use of Google's servers. Google denies that it has committed any acts of infringement within this
or any other district and denies any remaining allegations of paragraph 36.
37.

Google denies the allegations in paragraph 37.

38.

Google denies the allegations in paragraph 38.

39.

Google denies that it has committed any acts of infringement within this or any

other district and denies any remaining allegations of paragraph 39.
40.

Google denies that it has committed any acts of infringement within this or any

other district and denies any remaining allegations of paragraph 40.
41.

Google denies that it has committed any acts of infringement within this or any

other district and denies any remaining allegations of paragraph 41.

Count II – Indirect and Contributory Infringement
42.

Google re-alleges and incorporates by reference its answer to paragraphs 1

through 41 of its Answer as if fully set forth herein.
43.

Google denies that it has committed any acts of infringement within this or any

other district and denies any remaining allegations of paragraph 43.
44.

Google admits that it maintains a file system containing patent information

received from the United States Patent and Trademark Office.

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Google admits that

http://www.google.com/patents provides access through the internet to this file system. Google
denies any remaining allegations of paragraph 44.
45.

Google admits that it maintains a file system containing patent information

received from the United States Patent and Trademark office.

Google admits that

http://www.google.com/patents provides access through the internet to this file system. Google
admits that its employees maintain the aforementioned file system containing patent information.
Google admits that information regarding the VIPC patents is contained in the aforementioned
file system. Google denies any remaining allegations of paragraph 45. Google further denies
any allegation that it had actual or constructive notice of the VIPC patents by virtue of the
aforementioned file system or otherwise.
46.

Google denies that it has committed any direct or indirect acts of infringement, or

otherwise induced or contributed to any acts of infringement by third parties, within this or any
other district and denies any remaining allegations of paragraph 46.
47.

Google admits that it provides its Android operating system and Android Market

to handset manufacturers for use on their handsets. Google admits that Google Checkout may be
used in conjunction with transactions initiated in Android Market.

Google admits that it

provides the Android operating system to any party for use in their products, including through
Google's website http://source.android.com/. Google further admits that it provides the Android
Market to handset manufacturers for use in their products.

Google admits that it maintains

websites such as http://developer.android.com/ to describe the Android operating system
and http://market.android.com/ to describe Android Market.
allegations of paragraph 47.

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Google denies any remaining

48.

Google admits that it provides the Android operating system to any party for use

in their products, including through Google's website http://source.android.com/. Google further
admits that it provides the Android Market to handset manufacturers for use in their products.
Google admits that it maintains websites such as http://developer.android.com/ to describe the
Android operating system and http://market.android.com/ to describe Android Market. Google
further admits that it licenses certain Android and Android Market marks to third parties for use
in their marketing or advertising. Google denies any remaining allegations of paragraph 48.
49.

Google admits that it provides information relating to the development of

products to third parties that develop products published to Android Market. Google denies any
remaining allegations of paragraph 49.
50.

Google denies that it has committed any direct or indirect acts of infringement, or

otherwise contributed to any acts of infringement by third parties, within this or any other district
and denies any remaining allegations of paragraph 50.
51.

Google denies that it has committed any direct or indirect acts of infringement, or

otherwise induced or contributed to any acts of infringement by third parties, within this or any
other district and denies any remaining allegations of paragraph 51.
52.

Google denies that it has committed any direct or indirect acts of infringement, or

otherwise induced or contributed to any acts of infringement by third parties, within this or any
other district and denies any remaining allegations of paragraph 52.
53.

Google denies that it has committed any direct or indirect acts of infringement, or

otherwise induced or contributed to any acts of infringement by third parties, within this or any
other district and denies any remaining allegations of paragraph 53.

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54.

Google denies that it has committed any direct or indirect acts of infringement, or

otherwise induced or contributed to any acts of infringement by third parties, within this or any
other district and denies any remaining allegations of paragraph 54.
55.

Google denies that it has committed any direct or indirect acts of infringement, or

otherwise induced or contributed to any acts of infringement by third parties, within this or any
other district and denies any remaining allegations of paragraph 55.
56.

Google denies that it has committed any direct or indirect acts of infringement, or

otherwise induced or contributed to any acts of infringement by third parties, within this or any
other district and denies any remaining allegations of paragraph 56.

AFFIRMATIVE DEFENSES
Further answering the Complaint, Google asserts the following affirmative and other
defenses. In addition to the affirmative and other defenses described below, subject to its
responses above, Google specifically reserves all rights to allege additional affirmative and other
defenses that become known through the course of discovery.
1.

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

because Google does not infringe and has not infringed (not directly, contributorily, or by
inducement) and is not liable for infringement of any valid and enforceable claim of the ‟361 or
„092 patents.
2.

The claims of the ‟361 and „092 patents are invalid for claiming non-novel and/or

obvious subject matter pursuant to 35 U.S.C. §§ 102 (a), 102 (b), 102 (e), and/or 103 (a),
including, but not limited to being taught by, suggested by, and/or obvious in view of, the prior
art.

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3.

The claims of the ‟361 and „092 patents are invalid and/or unenforceable for

failure satisfy one or more conditions of patentability set forth in 35 U.S.C. § 112, including
failure of written description, lack of enablement, and claim indefiniteness.
4.

VIPC‟s claim for damages, if any, against Google for alleged infringement of the

‟361 and „092 patents is limited by 35 U.S.C. §§ 286, 287, and/or 288.
5.

On information and belief, VIPC‟s claims for relief are barred, in whole or in part,

by the equitable doctrines of laches and estoppel.
6.

Any and all products or actions accused of infringement have substantial uses that

do not infringe and do not induce or contribute to the alleged infringement of the claims of the
‟361 and „092 patents.
7.

VIPC is partially or wholly barred from the relief sought because of Parker

Hannifin‟s intervening rights under 35 U.S.C. §§ 252 & 307(b).
8.

VIPC is not entitled to injunctive relief because any alleged injury to VIPC is not

immediate or irreparable, and VIPC has an adequate remedy at law.

COUNTERCLAIMS
For its counterclaims against Plaintiffs and Counter-Defendant Visual Interactive Phone
Concepts, Inc. (“VIPC”), Defendant and Counter-Plaintiff Google Inc. (“Google”) states as
follows:
THE PARTIES
1.

Google is a corporation organized and existing under the laws of the State of

Delaware, with its principal place of business at 1600 Amphitheatre Parkway, Mountain View,
California 94043.

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2.

Upon information and belief, VIPC is a corporation organized and existing under

the laws of the State of Nevada, with a principal place of business at 1 President Street, Staten
Island, New York, 10314.
JURISDICTION AND VENUE
3.

Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b) and by

virtue of VIPC‟s admissions in the First Amended Complaint that venue is proper in this District.
4.

This Court has personal jurisdiction over VIPC who has submitted to such

jurisdiction by bringing a complaint in this Court against Google Inc. for infringement of United
States Patent Nos. 5,606,361 (“the „361 Patent”) and 5,724,092 (“the „092 Patent”) (collectively
“the Asserted Patents”).
5.

This Court has subject matter jurisdiction over these Counterclaims pursuant to 28

U.S.C. §§ 1331 and 1338.
FACTS GIVING RISE TO THE COUNTERCLAIMS
6.

On May 27, 2011, Counterclaim-Defendant commenced a civil lawsuit against

Google alleging that Google infringed one or more claims of the Asserted Patents.
7.

Counterclaim-Defendant created an actual and justiciable case and controversy

between Counterclaim-Defendant and Google concerning whether the claims of the Asserted
Patents are valid and/or infringed by Google.
8.

Google has not directly or indirectly infringed, and is not directly or indirectly

infringing, upon any claims of the Asserted Patents.

COUNT ONE - Declaratory Judgment of Non-Infringement of ‘361 Patent
9.

Google restates and incorporates by reference its allegations in paragraphs 1-8 of

its Counterclaims as if fully set forth herein.
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10.

An actual case or controversy exists between Google and VIPC as to whether the

‟361 patent is infringed by Google.
11.

A judicial declaration is necessary and appropriate so that Google may ascertain

its rights regarding the ‟361 patent.
12.

Google has not infringed and does not infringe, directly or indirectly, any valid

and enforceable claim of the ‟361 patent.

COUNT TWO - Declaratory Judgment of Non-Infringement of ‘092 Patent
13.

Google restates and incorporates by reference its allegations in paragraphs 1-12 of

its Counterclaims as if fully set forth herein.
14.

An actual case or controversy exists between Google and VIPC as to whether the

‟092 patent is infringed by Google.
15.

A judicial declaration is necessary and appropriate so that Google may ascertain

its rights regarding the ‟092 patent.
16.

Google has not infringed and does not infringe, directly or indirectly, any valid

and enforceable claim of the ‟092 patent.

COUNT THREE - Declaratory Judgment of Invalidity of ‘361 Patent
17.

Google restates and incorporates by reference its allegations in paragraphs 1-16 of

its Counterclaims as if fully set forth herein.
18.

The claims of the ‟361 patent are invalid for claiming non-novel and/or obvious

subject matter pursuant to 35 U.S.C. §§ 102 (a), 102 (b), 102 (e), and/or 103 (a), including, but
not limited to being taught by, suggested by, and/or obvious in view of, the prior art.

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19.

The claims of the ‟361 patent are invalid and/or unenforceable for failure satisfy

one or more conditions of patentability set forth in 35 U.S.C. § 112 including failure of written
description, lack of enablement, and claim indefiniteness.

COUNT FOUR - Declaratory Judgment of Invalidity of ‘092 Patent
20.

Google restates and incorporates by reference its allegations in paragraphs 1-19 of

its Counterclaims as if fully set forth herein.
21.

The claims of the ‟092 patent are invalid for claiming non-novel and/or obvious

subject matter pursuant to 35 U.S.C. §§ 102 (a), 102 (b), 102 (e), and/or 103 (a), including, but
not limited to being taught by, suggested by, and/or obvious in view of, the prior art.
22.

The claims of the ‟092 patent are invalid and/or unenforceable for failure satisfy

one or more conditions of patentability set forth in 35 U.S.C. § 112 including failure of written
description, lack of enablement, and claim indefiniteness.

EXCEPTIONAL CASE
23.

On information and belief, this is an exceptional case entitling Google to an award

of its attorneys‟ fees incurred in connection with defending and prosecuting this action pursuant
to 35 U.S.C. § 285, as a result of, inter alia, VIPC‟s assertion of the Patents-in-Suit against
Google with the knowledge that Google does not infringe any valid or enforceable claim of the
Patents-in-Suit and/or that the Patents-in-Suit are invalid and/or unenforceable.

PRAYER FOR RELIEF
WHEREFORE, Google prays for judgment as follows:
a. A judgment dismissing VIPC‟s Complaint against Google with prejudice;

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b. A judgment declaring that Google has not infringed, contributed to the infringement of,
or induced others to infringe, either directly or indirectly, any valid and enforceable claim of the
‟361 or „092 patents;
c. A judgment declaring that the ‟361 and „092 patents are invalid and unenforceable;
d. A judgment declaring that Google has not willfully infringed and is not willfully
infringing any valid and/or enforceable claim of the ‟361 or „092 patents;
e. A judgment declaring that this case is exceptional and an award to Google of its
reasonable costs and expenses of litigation, including attorneys‟ fees and expert witness fees;
f. A judgment declaring, limiting or barring VIPC‟s ability to enforce the ‟361 and „092
patents in equity; and
g. Such other and further relief as this Court may deem just and proper.

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DEMAND FOR JURY TRIAL
In accordance with Fed. R. Civ. P. 38(b), Google demands a trial by jury on all issues so
triable.

Respectfully submitted,
DICKINSON WRIGHT PLLC
s/ Michelle L. Alamo
Michelle L. Alamo (P60684)
500 Woodward Ave, Suite 4000
Detroit, Michigan 48226
Tel: [phone]
Fax: [phone]
[e-mail]
Attorneys for Defendant Google Inc.
Date : August 22, 2011

I hereby certify that on August 22, 2011, I electronically filed
the foregoing paper with the Clerk of the Court using the ECF
system which will send notification of such filing to counsel of
record.
/s/ Michelle L. Alamo (P60684)
DICKINSON WRIGHT PLLC
500 Woodward Avenue, Suite 4000
Detroit, Michigan 48226
[phone]
[e-mail]

DETROIT 28155-430 1217169v1

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