Web Tracking Solutions, Inc. et al v. Google, Inc.

Filing 28

AMENDED ANSWER to the Second Amended Complaint of Web Tracking Solutions, LLC and Daniel Wexler, Amended COUNTERCLAIM against Web Tracking Solutions, Inc., Daniel Wexler by Google, Inc.. (Curran, Patrick)

Web Tracking Solutions, Inc. et al v. Google, Inc.

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK WEB TRACKING SOLUTIONS, LLC. and DANIEL WEXLER, Plaint iffs/Counterclaim Defendants, v. GOOGLE, INC. Defendant/Counterclaim Plaintiff. ANSWER AND COUNTERCLAIMS Google, Inc. ("Google") by and through the undersigned counsel, answers the Second Amended Complaint of Web Tracking Solutions, LLC ("Web Tracking") and Daniel Wexler ("Wexler") (collectively, "Plaintiffs"), as follows: 1. Google lacks knowledge or information sufficient to form a belief as to the truth Case No. 1:08-cv-03139 (RRM) (RER)

or falsity of the allegations of paragraph 1 of the Second Amended Complaint and therefore denies them. 2. Google lacks knowledge or information sufficient to form a belief as to the truth

or falsity of the allegations of paragraph 2 of the Second Amended Complaint and therefore denies them. 3. Google admits that Google is a corporation organized under the laws of the state

of Delaware and admits that it has a place of business at 1600 Amphitheatre Parkway, Mountain View, California 94043. Google further admits that it has offices at 76 Ninth Avenue, 4th Floor, New York, New York 10011 and that it is authorized to conduct business in

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New York. Google admits that it has conducted some business in this district, but denies the remaining allegations of paragraph 3 of the Second Amended Complaint. 4. Google admits that Plaintiffs' Second Amended Complaint purports to assert

claims for patent infringement arising under the Patent Laws of the United States, 35 U.S.C. § 1 et seq., and that Plaintiffs' Second Amended Complaint alleges infringement of United States Patent No. 5,960,409 (the "'409 patent"), but denies that any of those claims are valid or sustainable. Google admits that what purports to be a copy of the '409 patent is attached as Exhibit A of the Second Amended Complaint. Google denies any remaining allegations of paragraph 4 of the Second Amended Complaint. 5. Google denies liability, but admits that this Court has subject matter jurisdiction

over this action as pled in paragraph 5 of the Second Amended Complaint. Google denies any remaining allegations of paragraph 5 of the Second Amended Complaint. 6. In response to paragraph 6 of the Second Amended Complaint and solely for the

purposes of this action, Google does not contest that it is subject to personal jurisdiction in this district. Google admits that it has conducted business in this district, but denies that it has infringed, contributed to the infringement of, and/or actively induced others to infringe the '409 patent in this or any other district. Google denies that it has offices in this district as described in paragraph 3 of the Second Amended Complaint. Google denies any remaining allegations of paragraph 6 of the Second Amended Complaint. 7. In response to paragraph 7 of the Second Amended Complaint and solely for the

purposes of this action, Google does not contest venue in this district. The interests and convenience of the parties, however, would be better served by transferring this case to a different district. Google denies that it makes, uses, sells or offers for sale products and/or

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services that when utilized fall within the scope of the '409 patent in this or any other district. Google denies the remaining allegations of paragraph 7 of the Second Amended Complaint. 8. Google lacks knowledge or information sufficient to form a belief as to the truth

or falsity of the allegations of paragraph 8 of the Second Amended Complaint and therefore denies them. 9. Complaint. 10. Google lacks knowledge or information sufficient to form a belief as to the truth Google denies the allegations of paragraph 9 of the Second Amended

or falsity of the allegations of paragraph 10 of the Second Amended Complaint and therefore denies them. 11. Google lacks knowledge or information sufficient to form a belief as to the truth

or falsity of the allegations of paragraph 11 of the Second Amended Complaint and therefore denies them. Count I 12. As to paragraph 12 of the Second Amended Complaint, Google reasserts and

incorporates by reference its responses to paragraphs 1-11 of the Second Amended Complaint as if fully set forth herein. 13. Complaint. 14. Complaint. 15. Complaint. Google denies the allegations of paragraph 15 of the Second Amended Google denies the allegations of paragraph 14 of the Second Amended Google denies the allegations of paragraph 13 of the Second Amended

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16. Complaint. 17.

Google denies the allegations of paragraph 16 of the Second Amended

The allegations of paragraph 17 of the Second Amended Complaint contain a

legal conclusion to which no response is required. To the extent a response is required, Google denies the allegations of paragraph 17 of the Second Amended Complaint. 18. Complaint. Prayer for Relief Google denies that Plaintiffs are entitled to the relief requested in their Prayer for Relief, or any other relief. Jury Demand Google admits that Plaintiffs demand a trial by jury. AFFIRMATIVE AND OTHER DEFENSES Google's investigation of Plaintiffs' claims and Google's defenses thereto is ongoing. In further answer to the Second Amended Complaint, Google asserts the following affirmative and/or other defenses. Nothing in Google's listing of these defenses here should be interpreted as imposing on Google a burden of proof that it would not otherwise have. Google reserves the right to assert additional affirmative and/or other defenses as further information is obtained. First Affirmative Defense: Noninfringement of the '409 Patent 19. Google is not infringing, and has not infringed, either literally or under the Google denies the allegations of paragraph 18 of the Second Amended

doctrine of equivalents, directly, by inducement, contributorily, or in any way, any valid, enforceable claim of the '409 patent.

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Second Affirmative Defense: Invalidity of the '409 Patent 20. Each claim of the '409 patent is invalid for failure to meet the "Conditions for

Patentability" of 35 U.S.C. §§ 102(a), 102(b), 102(c), 102(e), 102(g), and 103 because the alleged invention thereof is taught by, suggested by, and/or, would have been obvious to a person of ordinary skill in the art at the time of the alleged invention in view of, the prior art, alone or in combination, including but not limited to U.S. Patent No. 5,712,979, U.S. Patent No. 5,717,860, U.S. Patent No. 5,751,956, and U.S. Patent No. 5,812,769. 21. Each claim of the '409 patent may be invalid under 35 U.S.C. § 112(1) because

the claims fail to enable one skilled in the art to make and use the full scope of the claimed invention without undue experimentation, particularly in view of how Plaintiffs may assert that the claims of the '409 patent should be interpreted. Each claim of the '409 patent is invalid under U.S.C. § 112(2) because the claims fail to particularly point out and distinctly claim the subject matter which the applicant regarded as his invention. 22. Each claim of the '409 patent may be invalid for failure to conform to the

limitations of 35 U.S.C. § 101, because the process claimed constitutes or contains fundamental principles and/or abstract ideas and is not sufficiently tied to a particular machine or apparatus. The law in this area is currently under development and Google reserves its right to amend its position based on application of the test articulated in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), in Internet-related or other relevant contexts. Third Affirmative Defense: Unenforceability due to Laches 23. The '409 patent is unenforceable, in whole or in part, against Google under the

doctrines of laches, in light of Plaintiffs' unreasonable and inexcusable delay in bringing suit on any valid rights in the '409 patent.

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24.

Plaint iffs' delay in attempting to protect any valid rights in the '409 patent has

materially prejudiced Google, including but not limited to economic prejudice. Fourth Affirmative Defense: Unenforceability due to Expiration 25. The '409 patent expired on October 29, 2003 for failure to pay the maintenance

fee required by 35 U.S.C. § 41. 26. The '409 patent is unenforceable, in whole or in part, against Google with

respect to any period of time for which the patent was expired. Fifth Affirmative Defense: Damages Limitation 27. The '409 patent expired on October 29, 2003 for failure to pay the maintenance

fee required by 35 U.S.C. § 41. 28. expired. Sixth Affirmative Defense: Unavailability of Injunctive Relief 29. Plaint iffs cannot satisfy the requirements applicable to their request for Plaint iffs cannot seek damages for the period in which the '409 patent was

injunctive relief. 30. Plaint iffs have an adequate remedy at law. Seventh Affirmative Defense: Prosecution History Estoppel 31. The accused products and services do not contain all elements of any valid and

enforceable claim of the '409 patent, read literally or under the doctrine of equivalents, including by reason of prosecution history estoppel triggered by statements, representations, and admissions made during prosecution of the '409 patent.

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Eighth Affirmative Defense: Lack of Standing 32. Upon information and belief, by reason of the assignment records in the USPTO

assignment database, Plaintiff Web Tracking lacks standing to bring and/or maintain the present action. Ninth Affirmative Defense: Failure to Join an Indispensable Party 33. Upon information and belief, by reason of the assignment records in the USPTO

assignment database, Plaintiffs have failed to name or join an indispensable party or parties to the present action, including but not limited to certain persons or entities who may claim ownership of the '409 patent. COUNTERCLAIMS Pursuant to Rule 13 of the Federal Rules of Civil Procedure, Defendant Google, Inc. ("Google") for its Counterclaims against Web Tracking Solutions, LLC ("Web Tracking") and Daniel Wexler ("Wexler") (collectively, "Plaintiffs"), alleges 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 Pkwy, Mountain View, California 94043. 2. Plaint iffs allege that Web Tracking is a limited liability corporation organized

under the state of New York, with its principal place of business at 155 Water Street, Brooklyn, New York 11201. 3. Plaint iffs allege that Wexler is an individual residing at 481 Stratford Rd.,

Brooklyn, New York 11218.

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JURISDICTION AND VENUE 4. This Court has subject matter jurisdiction over these Counterclaims pursuant to

28 U.S.C. §§ 1331, 1338, 1367, 2201 and 2202. 5. 6. and (d). BACKGROUND FOR COUNTERCLAIMS 7. The '409 patent was issued, albeit improperly, by the United States Patent and This Court has jurisdiction over Plaintiffs. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b), (c),

Trademark Office on September 28, 1999. 8. 9. Plaint iffs have alleged that certain acts by Google infringe the '409 patent. An actual controversy exists between Google and Plaintiffs regarding the

validity and infringement of the '409 patent. FIRST CAUSE OF ACTION: Declaratory Judgment of Non-infringement 10. Google reasserts and incorporates the allegations contained in paragraphs 1

through 33 of the answer and defenses herein and paragraphs 1 through 9 of these counterclaims as if fully set forth herein. 11. Google has not infringed and is not infringing any valid and enforceable claim

of the '409 patent. SECOND CAUSE OF ACTION: Declaratory Judgment of Invalidity 12. Google reasserts and incorporates the allegations contained in paragraphs 1

through 33 of the answer and defenses herein and paragraphs 1 through 11 of these counterclaims as if fully set forth herein. 13. Each claim of the '409 patent is invalid for failure to meet the "Conditions for

Patentability" of 35 U.S.C. §§ 102(a), 102(b), 102(c), 102(e), 102(g), and 103 because the

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alleged invention thereof is taught by, suggested by, and/or, would have been obvious to a person of ordinary skill in the art at the time of the alleged invention in view of, the prior art, alone or in combination, including but not limited to U.S. Patent No. 5,712,979, U.S. Patent No. 5,717,860, U.S. Patent No. 5,751,956, and U.S. Patent No. 5,812,769. 14. Each claim of the '409 patent may be invalid under 35 U.S.C. § 112(1) because

the claims fail to enable one skilled in the art to make and use the full scope of the claimed invention without undue experimentation, particularly in view of how Plaintiffs may assert that the claims of the '409 patent should be interpreted. Each claim of the '409 patent is invalid under U.S.C. § 112(2) because the claims fail to particularly point out and distinctly claim the subject matter which the applicant regarded as his invention. 15. Each claim of the '409 patent may be invalid for failure to conform to the

limitations of 35 U.S.C. § 101, because the process claimed constitutes or contains fundamental principles and/or abstract ideas and is not sufficiently tied to a particular machine or apparatus. The law in this area is currently under development and Google reserves its right to amend its position based on application of the test articulated in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), in Internet-related or other relevant contexts. THIRD CAUSE OF ACTION: Declaratory Judgment of Unenforceability 16. Google reasserts and incorporates the allegations contained in paragraphs 1

through 33 of the answer and defenses herein and paragraphs 1 through 15 of these counterclaims as if fully set forth herein. 17. 18. The '409 patent is unenforceable due to laches and/or patent expiration. Plaint iffs unreasonably and inexcusably delayed in bringing suit on any valid

rights in the '409 patent.

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19.

Plaint iffs' delay in attempting to protect any valid rights in the '409 patent has

materially prejudiced Google, including but not limited to economic prejudice. RELIEF REQUESTED WHEREFORE, Google respectfully requests the following relief: (a) A judgment in favor of Google denying Plaintiffs all relief requested in this action

and dismissing each claim of the Complaint with prejudice; (b) A judgment declaring that Google has not infringed and is not infringing any

valid and/or enforceable claim of the '409 patent, and that Google has not contributed to or induced and is not contributing to or inducing infringement of any valid and enforceable claim of the '409 patent; (c) unenforceable; (d) A judgment declaring this to be an exceptional case under 35 U.S.C. § 285 and A judgment declaring that each claim of the '409 patent is invalid and/or

awarding Google its costs, expenses, and reasonable attorneys' fees; and (f) That the Court award Google such other and further relief as this Court may deem

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

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DATED: December 9, 2008

By: /s/ CHARLES K. VERHOEVEN QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: [phone] Facsimile: [phone] Email: [e-mail] EDWARD J. DEFRANCO THOMAS D. PEASE JAMES M. GLASS ALEXANDER RUDIS PATRICK D. CURRAN QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 51 Madison Avenue, 22nd Floor New York, New York 10010 Telephone: [phone] Facsimile: [phone] Email: [e-mail]

Attorneys for Defendant GOOGLE, INC.

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