1st Media LLC v. Napster, Inc. et al

Filing 40

ANSWER to 1 Complaint with Jury Demand, COUNTERCLAIM against 1st Media LLC by Defendant Napster, Inc., Plaintiff 1st Media LLC. Certificate of Interested Parties due by 4/26/2007. Discovery Plan/Scheduling Order due by 5/31/2007.(Rounds, Michael)

1st Media LLC v. Napster, Inc. et al

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Case 2:07-cv-00056-LDG-GWF

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1 Michael D. Rounds [e-mail] 2 Nevada Bar No. 4734 WATSON ROUNDS 3 5371 Kietzke Lane Reno, NV 89511 4 Telephone: [phone] Facsimile: [phone] 5 Henry Bunsow* [e-mail] 6 David Stewart* [e-mail] 7 Ethan B. Andelman* [e-mail] 8 HOWREY LLP 9 525 Market Street, Suite 3600 San Francisco, California 94105 10 Telephone: [phone] Facsimile: [phone] 11 *Attorney has complied with LR IA 10-2 12 Attorneys for Defendant Napster, Inc. 13 14 15 16 1ST MEDIA, LLC, 17 18 vs. Plaintiff, ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. 2:07 - CV-00056-LDG-GWF UNITED STATES DISTRICT COURT DISTRICT OF NEVADA

ANSWER AND COUNTERCLAIM OF DEFENDANT NAPSTER, INC. JURY DEMAND

19 NAPSTER, INC., REALNETWORKS, INC., KSOLO, INC., and SLEP-TON 20 ENTERTAINMENT CORPORATION d/b/a SOUND CHOICE ACCOMPANIMENT 21 TRACKS, 22 Defendants.

23 AND RELATED COUNTERCLAIMS 24

Defendant Napster, Inc. ("Napster") hereby answers the complaint of Plaintiff 1st Media, LLC 25 as follows: 26 1. 27 laws, and thus this Court has jurisdiction pursuant to 28 U.S.C. § 1338(a). 28
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Napster admits that the complaint purports to allege causes of action under the patent

Dockets.Justia.com

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Napster admits that it transacts business in this District and thus venue is proper in this

2 District. Napster denies the remaining allegations of Paragraph 2. 3 3. Napster admits that Exhibit A appears to be a copy of U.S. Patent No. 5,464,946 (the

4 "'946 Patent"), issued on November 7, 1995, listing Scott Lewis as the inventor. Napster lacks 5 sufficient information on which to form a belief as to the truth of the remaining allegations of 6 Paragraph 3, and on that basis denies them. 7 4. Napster admits the allegations of the first and second sentences of Paragraph 4. Napster

8 denies the remaining allegations of Paragraph 4. 9 5. Napster lacks sufficient information on which to form a belief as to the truth of the

10 allegations of Paragraph 5, and on that basis denies them. 11 6. Napster lacks sufficient information on which to form a belief as to the truth of the

12 allegations of Paragraph 6, and on that basis denies them. 13 7. Napster lacks sufficient information on which to form a belief as to the truth of the

14 allegations of Paragraph 7, and on that basis denies them. 15 8. Napster lacks sufficient information on which to form a belief as to the truth of the

16 allegations of Paragraph 8, and on that basis denies them. 17 9. Napster lacks sufficient information on which to form a belief as to the truth of the

18 allegations of Paragraph 9, and on that basis denies them. 19 10. Napster lacks sufficient information on which to form a belief as to the truth of the

20 allegations of Paragraph 10, and on that basis denies them. 21 11. Napster denies that it has infringed the '946 Patent directly or indirectly. Napster lacks

22 sufficient information on which to form a belief as to the truth of the remainder of the allegations of 23 Paragraph 11, and on that basis denies them. 24 12. Napster admits that it maintains websites accessible over the internet through which it

25 provides certain products and services. Napster denies the remaining allegations of Paragraph 12 26 directed towards it. Napster lacks sufficient information on which to form a belief as to the truth of the 27 allegations of Paragraph 12 directed towards RealNetworks, and on that basis denies them. 28
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Napster admits that Sound Choice audio files are available through its online products.

2 Napster denies the remaining allegations of Paragraph 13 directed towards it. Napster lacks sufficient 3 information on which to form a belief as to the truth of the allegations of Paragraph 13 directed 4 towards the other defendants, and on that basis denies them. 5 14. Napster denies the allegations of Paragraph 14 directed towards it. Napster lacks

6 sufficient information on which to form a belief as to the truth of the allegations of Paragraph 14 7 directed towards the other defendants, and on that basis denies them. 8 15. Napster denies the allegations of Paragraph 15 directed towards it. Napster lacks

9 sufficient information on which to form a belief as to the truth of the allegations of Paragraph 15 10 directed towards the other defendants, and on that basis denies them. 11 12 13 14 15 16. Napster requests a trial by jury. AFFIRMATIVE DEFENSES For its affirmative defenses, Napster alleges the following: First Affirmative Defense The '946 patent is invalid for failure to comply with the requirements of 35 U.S.C. §§ 101, 102,

16 103, 112, 115, 116 and/or other statutory requirements. 17 18 19 20 21 22 23 24 Second Affirmative Defense 1st Media's claims are barred by the doctrine of laches. Third Affirmative Defense 1st Media's claims are barred by the doctrine of estoppel. Fourth Affirmative Defense 1st Media's claims are barred by the doctrine of unclean hands. Fifth Affirmative Defense 1st Media's claims for damages and injunction are barred in whole or in part by operation of 35

25 U.S.C. §§ 286, 287 and/or other statutory provisions. 26 /// 27 /// 28 ///
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Sixth Affirmative Defense Napster has not and does not willfully or otherwise infringe, contribute to infringement of, or

3 actively induce others to infringe, either literally or by application of the doctrine of equivalents, any 4 claim of the '946 patent. 5 6 COUNTERCLAIM Counterplaintiff Napster, Inc. ("Napster"), for its counterclaim against Counterdefendant 1st

7 Media, LLC. ("1st Media"), alleges as follows: 8 9 1. PARTIES Napster is a corporation organized under the laws of Delaware, having its principal

10 place of business at 9044 Melrose Ave., Los Angeles, CA 90069. 11 2. Upon information and belief, 1st Media is a limited liability company organized under

12 the laws of Nevada, with its principal place of business in this District. 13 14 3. JURISDICTION AND VENUE These counterclaims are based upon the Patent Laws of the United States, Title 35 of

15 the United States Code, §1 et seq. The Court has jurisdiction over the counterclaims pursuant to 28 16 U.S.C. §§ 1331, 1338(a), 2201, and 2202. 17 4. Venue is proper in this District pursuant to 28 U.S.C. § 1391, because Counterdefendant

18 1st Media resides in this District. 19 20 5. CASE AND CONTROVERSY U.S. Patent No. 5,464,946 ("the '946 Patent"), entitled "System and Apparatus for

21 Interactive Multimedia Entertainment" issued on November 7, 1995. 1st Media purports to be the 22 owner of the '946 Patent. 23 24 Patent. 25 7. There is an actual justifiable case or controversy between Napster and 1st Media arising 6. 1st Media has sued Napster in the present action, alleging infringement of the '946

26 under the Patent Laws, 35 U.S.C. § 1 et seq. This case or controversy arises by virtue of 1st Media's 27 filing of this suit, which purports to allege that Napster infringes the '946 Patent and Napster's Answer 28 thereto, which asserts the invalidity and noninfringement of the '946 Patent.
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COUNT 1 DECLARATORY JUDGMENT OF INVALIDITY Napster incorporates by reference Paragraphs 1 - 7 into this count as though fully set

4 forth herein. 5 9. On information and belief, the '946 Patent is invalid for failure to comply with the

6 requirements of 35 U.S.C. §§ 101, 102, 103, 112, 115, 116 and/or other statutory requirements, and on 7 that basis, Napster requests declaratory judgment that the '946 Patent is invalid. 8 9 10 10. COUNT 2 DECLARATORY JUDGMENT OF NONINFRINGEMENT Napster incorporates by reference Paragraphs 1 - 9 into this count as though fully set

11 forth herein. 12 11. No current or former Napster product infringes any valid claim of the '946 Patent, and

13 on that basis, Napster requests declaratory judgment that Napster has not infringed the '946 Patent. 14 15 12. RESERVATION OF COUNTERCLAIMS Napster reserves the right to assert any other counterclaims that discovery may reveal,

16 including, but not limited to, claims arising out of false or misleading statements to the United States 17 Patent and Trademark Office. 18 19 20 21 22 23 24 25 26 27 28
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PRAYER FOR RELIEF WHEREFORE, Napster respectfully prays for the following relief: A. that this Court deny and all relief requested by Plaintiff in its Complaint and any relief whatsoever, and that the Complaint be dismissed with prejudice; B. C. D. that this Court declare the '946 Patent invalid; that this Court declare that Napster has not infringed any valid claim of the '946 Patent; that this Court declare the case to be exceptional pursuant to 35 U.S.C. § 285 and that costs of this action and attorneys' fees be awarded to Napster; E. that this Court grant such other and further relief to Napster as this Court may deem just and equitable and as the Court deems appropriate.

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1 2 3 4 Dated: April 16, 2007 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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DEMAND FOR JURY TRIAL Defendant Napster hereby demands trial by jury in this action.

Respectfully submitted, By: /s/ Michael D. Rounds Michael D. Rounds [e-mail] Nevada Bar No. 4734 WATSON ROUNDS 5371 Kietzke Lane Reno, NV 89511 Telephone: [phone] Facsimile: [phone] Henry Bunsow [e-mail] David Stewart [e-mail] Ethan B. Andelman [e-mail] HOWREY LLP 525 Market Street, Suite 3600 San Francisco, California 94105 Telephone: [phone] Facsimile: [phone] Attorneys for Defendant NAPSTER, INC.

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CERTIFICATE OF SERVICE Pursuant to Fed. R. Civ. P. 5(b), I certify that I am an employee of the law offices of Watson

3 Rounds, and that on this date, a true and correct copy of the foregoing document was served upon the 4 following individuals via electronic mail through the United States District Court's CM/ECF system: 5 L. Kristopher Rath Hutchinson & Steffen 6 Peccole Professional park 10080 West Alta Drive, Suite 200 7 Las Vegas, NV 89145 8 Jonathan T. Suder Edward R. Nelson 9 Friedman, Suder & Cooke Tindall Square Warehouse No. 1 10 604 East 4th Street, Suite 200 Fort Worth, TX 76102 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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Dated: April 16, 2007 By: _______________________________

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