Wireless Ink Corporation v. Facebook, Inc. et al

Filing 17

ANSWER to Complaint with JURY DEMAND. Document filed by Google, Inc..(McGann, Kevin)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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WIRELESS INK CORP.,
:
:
Plaintiff,
:
:
:
-against:
:
FACEBOOK, INC.; GOOGLE, INC.;
:
YOUTUBE, INC.; YOUTUBE, LLC.;
:
MYSPACE, INC.,
:
:
Defendants.
:
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No. 11 Civ. 1751 (PKC)
ECF CASE

DEFENDANT GOOGLE INC.’S ANSWER
TO PLAINTIFF WIRELESS INK CORPORATION’S
COMPLAINT FOR PATENT INFRINGEMENT
Defendant Google Inc. (“Google”) responds to the Complaint for Patent Infringement
(“Complaint”) of Plaintiff Wireless Ink Corporation (“Plaintiff” or “Wireless Ink”) as follows:
Google believes that no response to the preamble of the Complaint is required, but to the
extent any response is required, and to the extent the allegations contained in the preamble are
directed at Google, Google denies the allegations contained in the preamble. To the extent the
allegations contained in the preamble are directed at any other defendant, Google is without
knowledge or information sufficient to form a belief as to the truth of the allegations contained in
the preamble of the Complaint and on that basis denies the allegations contained therein.
NATURE OF THE ACTION
1. Google admits that the U.S. Patent No. 7,908,342 B2 (the “’342 patent”) is entitled,
on its face, “Method, Apparatus and System for Management of Information Content for
Enhanced Accessibility over Wireless Communication Networks.” Google specifically denies
that the ’342 patent was duly and legally issued. Further, Google is without knowledge or

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information sufficient to form a belief as to the truth of the allegation that “Wireless Ink is the
owner of all right, title and interest in and to” the ’342 patent and on that basis denies the
allegation. Except as expressly admitted herein, Google denies the remaining allegations
contained in paragraph 1 of the Complaint.
2. To the extent they are directed at Google, Google denies the allegations contained in
paragraph 2 of the Complaint. Google specifically denies any infringement and/or inducement
of infringement of the ’342 patent by Google or YouTube, LLC (“YouTube”). To the extent the
allegations contained in paragraph 2 of the Complaint are directed at any other defendant,
Google is without knowledge or information sufficient to form a belief as to the truth of the
allegations contained in paragraph 2 of the Complaint and on that basis denies the allegations
contained therein.
3. Google admits U.S. Patent Application No. 12/548,928 was published on February
18, 2010, U.S. Patent No. 10/464,526 was filed on June 18, 2003, and Provisional Application
No. 60/389,430 was filed on June 18, 2002. To the extent the allegations contained in paragraph
3 of the Complaint are directed at any other defendant, Google is without knowledge or
information sufficient to form a belief as to the truth of the allegations contained in paragraph 3
of the Complaint and on that basis denies the allegations contained therein. Except as expressly
admitted herein, Google denies the remaining allegations contained in paragraph 3 of the
Complaint.
4. Google admits receiving the letter attached in Exhibit A addressed to it from the
Plaintiff on or about February 23, 2011. Google also admits that YouTube received the letter
attached in Exhibit A addressed to it from the Plaintiff on or about February 23, 2011. To the
extent the allegations in paragraph 4 of the Complaint purport to refer to letters, Google refers to

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the letters for their content. To the extent the allegations contained in paragraph 4 of the
Complaint are directed at any other defendant, Google is without knowledge or information
sufficient to form a belief as to the truth of the allegations contained in paragraph 4 of the
Complaint and on that basis denies the allegations contained therein. Except as expressly
admitted herein, Google denies the remaining allegations contained in paragraph 4 of the
Complaint.
5. Google admits that U.S. Patent No. 7,599,983 B2 (the “’983 patent”) is the subject of
current litigation between Google and Plaintiff. Google admits receiving the letter to the Court
attached in Exhibit B on or about January 21, 2011. To the extent the allegations in paragraph 5
of the Complaint purport to refer to a letter to Google, Google refers to that letter for its content.
To the extent the allegations contained in paragraph 5 of the Complaint are directed at Facebook,
Inc. (“Facebook”), Google is without knowledge or information sufficient to form a belief as to
the truth of the allegations contained in paragraph 5 of the Complaint and on that basis denies the
allegations contained therein. Except as expressly admitted herein, Google denies the remaining
allegations contained in paragraph 5 of the Complaint.
6. To the extent the allegations contained in paragraph 6 of the Complaint are directed at
Google, Google denies the allegations in paragraph 6. Google specifically denies any
infringement of the ’342 patent by Google or YouTube and that any alleged infringement was or
is willful, and/or purposeful and/or deliberate. Google further specifically denies that Wireless
Ink is entitled to any damages. To the extent the allegations contained in paragraph 6 of the
Complaint are directed at any other defendant, Google is without knowledge or information
sufficient to form a belief as to the truth of the allegations contained in paragraph 6 of the
Complaint and on that basis denies the allegations contained therein.

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JURISDICTION AND VENUE
7. Google admits that Wireless Ink’s Complaint purports to state a claim for patent
infringement arising under the Patent Laws of the United States, 35 U.S.C. § 101, et seq., and
that, pursuant to 28 U.S.C. §§ 1331 and 1338(a), this Court has subject matter jurisdiction over
actions arising under the Patent Laws of the United States. Except as expressly admitted herein,
Google denies the remaining allegations contained in paragraph 7 of the Complaint.
8. For purposes of this action only, Google does not contest that venue is proper as to
Google and YouTube. To the extent the allegations contained in paragraph 8 of the Complaint
are directed at any other defendant, Google is without knowledge or information sufficient to
form a belief as to the truth of the allegations contained in paragraph 8 of the Complaint and on
that basis denies the allegations contained therein. Except as expressly admitted herein, Google
denies the remaining allegations contained in paragraph 8 of the Complaint.
9. Google admits that Google and YouTube do business within the United States,
including within this Judicial District. Google specifically denies any acts of infringement of the
‘342 patent by Google or YouTube. To the extent the allegations contained in paragraph 9 of the
Complaint are directed at any other defendant, Google is without knowledge or information
sufficient to form a belief as to the truth of the allegations contained in paragraph 9 of the
Complaint and on that basis denies the allegations contained therein. Except as expressly
admitted herein, Google denies the remaining allegations contained in paragraph 9 of the
Complaint.
PARTIES

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10. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 10 of the Complaint and on that basis denies the
allegations contained therein.
11. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 11 of the Complaint and on that basis denies the
allegations contained therein.
12. Google admits that it is a Delaware Corporation with its principal place of business in
Mountain View, California.
13. Google denies that YouTube, Inc. is a Delaware Corporation, with its principal place
of business in San Bruno California. YouTube, Inc. no longer exists as a corporate entity.
Google further denies that YouTube, LLC is a Delaware Corporation, but admits that its
principal place of business is in San Bruno, California. Except as expressly admitted herein,
Google denies the remaining allegations contained in paragraph 13 of the Complaint.
14. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 14 of the Complaint and on that basis denies the
allegations contained therein.
15. To the extent they are directed at Google, Google denies the allegations contained in
paragraph 15 of the Complaint. Google specifically denies that Google or YouTube has
committed any acts defined as unlawful under 35 U.S.C. § 271 and § 154(d). To the extent the
allegations contained in paragraph 15 of the Complaint are directed at any other defendant,
Google is without knowledge or information sufficient to form a belief as to the truth of the
allegations contained in paragraph 15 of the Complaint and on that basis denies the allegations
contained therein.

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FACTUAL ALLEGATIONS
16. To the extent they are directed at Google, Google denies the allegations contained in
paragraph 16 of the Complaint. Google specifically denies any infringement of the ’342 patent
by Google or YouTube. To the extent the allegations contained in paragraph 16 of the
Complaint are directed at any other defendant, Google is without knowledge or information
sufficient to form a belief as to the truth of the allegations contained in paragraph 16 of the
Complaint and on that basis denies the allegations contained therein.
17. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 17 of the Complaint and on that basis denies the
allegations contained therein.
18. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 18 of the Complaint and on that basis denies the
allegations contained therein.
19. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 19 of the Complaint and on that basis denies the
allegations contained therein.
20. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 20 of the Complaint and on that basis denies the
allegations contained therein.
21. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 21 of the Complaint and on that basis denies the
allegations contained therein.

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22. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 22 of the Complaint and on that basis denies the
allegations contained therein.
23. To the extent the allegations in paragraph 23 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies
the allegations and Google specifically denies any infringement. Google admits that it operates
www.google.com. Except as expressly admitted herein, Google denies the remaining allegations
contained in paragraph 23 of the Complaint.
24. To the extent the allegations in paragraph 24 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies
the allegations and Google specifically denies any infringement. Google admits that it operates
www.m.google.com and www.google.com/reader/m. Except as expressly admitted herein,
Google denies the remaining allegations contained in paragraph 24 of the Complaint.
25. To the extent the allegations in paragraph 25 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies
the allegations and Google specifically denies any infringement. Google admits that it operates
mail.google.com and www.google.com/reader. Except as expressly admitted herein, Google
denies the remaining allegations contained in paragraph 25 of the Complaint.
26. To the extent the allegations in paragraph 26 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies
the allegations and Google specifically denies any infringement. Google denies the remaining
allegations contained in paragraph 26 of the Complaint.

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27. To the extent the allegations in paragraph 27 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies
the allegations and Google specifically denies any infringement. Google denies the remaining
allegations contained in paragraph 27 of the Complaint.
28. To the extent the allegations in paragraph 28 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies
the allegations and Google specifically denies any infringement.
29. To the extent the allegations in paragraph 29 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies
the allegations and Google specifically denies any infringement by YouTube. Google admits
that YouTube operates www.youtube.com. Except as expressly admitted herein, Google denies
the remaining allegations contained in paragraph 29 of the Complaint.
30. To the extent the allegations in paragraph 30 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies
the allegations and Google specifically denies any infringement by YouTube. Google admits
that YouTube operates m.youtube.com. Except as expressly admitted herein, Google denies the
remaining allegations contained in paragraph 30 of the Complaint.
31. To the extent the allegations in paragraph 31 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies
the allegations and Google specifically denies any infringement by YouTube. Google denies the
remaining allegations contained in paragraph 31 of the Complaint.
32. To the extent the allegations in paragraph 32 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies

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the allegations and Google specifically denies any infringement by YouTube. Google denies the
remaining allegations contained in paragraph 32 of the Complaint.
33. To the extent the allegations in paragraph 33 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies
the allegations and Google specifically denies any infringement by YouTube. Google denies the
remaining allegations contained in paragraph 33 of the Complaint.
34. To the extent the allegations in paragraph 34 are conclusions of law or legal
argument, they do not require a response, but to the extent a response is required Google denies
the allegations and Google specifically denies any infringement by YouTube.
35. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 35 of the Complaint and on that basis denies the
allegations contained therein.
36. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 36 of the Complaint and on that basis denies the
allegations contained therein.
37. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 37 of the Complaint and on that basis denies the
allegations contained therein.
38. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 38 of the Complaint and on that basis denies the
allegations contained therein.

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39. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 39 of the Complaint and on that basis denies the
allegations contained therein.
40. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 40 of the Complaint and on that basis denies the
allegations contained therein.
41. To the extent that the allegations in paragraph 41 purport to quote Google CEO Eric
Schmidt, Google refers to the quotes for their content, and denies that the allegations in
paragraph 41 are full and accurate quotes. The remaining allegations set forth in paragraph 41 of
the Complaint are immaterial or impertinent and do not require a response. To the extent a
response is required for the remaining allegations set forth in paragraph 41 of the Complaint, and
except as expressly admitted herein, Google denies those allegations. Except as expressly
admitted herein, Google denies the remaining allegations contained in paragraph 41 of the
Complaint.
42. The allegations set forth in paragraph 42 of the Complaint are immaterial or
impertinent and do not require a response. To the extent a response is required for the
allegations set forth in paragraph 42 of the Complaint, and except as expressly admitted herein,
Google denies those allegations. To the extent that the allegations in paragraph 42 purport to
quote Karim Temsamani, Google refers to the quote for its content, and denies that the
allegations in paragraph 42 are a full and accurate quote. To the extent the allegations in
paragraph 42 of the Complaint purport to quote an article or website, Google refers to that article
or website for its content.

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43. The allegations set forth in paragraph 43 of the Complaint are immaterial or
impertinent and do not require a response. To the extent a response is required for the
allegations set forth in paragraph 43 of the Complaint, Google denies those allegations.
44. The allegations set forth in paragraph 44 of the Complaint are immaterial or
impertinent and do not require a response. To the extent the allegations of paragraph 44 concern
entities other than Google, Google is without knowledge or information sufficient to form a
belief as to the truth of those allegations and on that basis denies them. Google admits that it
purchased AdMob for $750 million in stock. Except as expressly admitted herein, Google denies
the remaining allegations contained in paragraph 44 of the Complaint.
45. The allegations set forth in paragraph 45 of the Complaint are immaterial or
impertinent and do not require a response. To the extent a response is required for the
allegations set forth in paragraph 45 of the Complaint, and except as expressly admitted herein,
Google denies those allegations. To the extent that the allegations in paragraph 45 purport to
quote Karim Temsamani, Google refers to the quote for its content, and denies that the
allegations in paragraph 45 are a full and accurate quote.
46. The allegations set forth in paragraph 46 of the Complaint are immaterial or
impertinent and do not require a response. To the extent a response is required for the
allegations set forth in paragraph 46 of the Complaint, Google admits that it owns YouTube and
that YouTube operates m.youtube.com. Google also admits that advertisements appear on
m.youtube.com in certain instances. Except as expressly admitted herein, Google denies the
allegations contained in paragraph 46 of the Complaint.
47. The allegations set forth in paragraph 47 of the Complaint are immaterial or
impertinent and do not require a response. To the extent a response is required for the

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allegations set forth in paragraph 47 of the Complaint, and except as expressly admitted herein,
Google denies those allegations. To the extent that the allegations in paragraph 47 purport to
quote Taylor Cascino, Google refers to the quote for its content, and denies that the allegations in
paragraph 47 are a full and accurate quote.
48. The allegations set forth in paragraph 48 of the Complaint are immaterial or
impertinent and do not require a response. To the extent a response is required for the
allegations set forth in paragraph 48 of the Complaint, and except as expressly admitted herein,
Google denies those allegations. To the extent that the allegations in paragraph 48 purport to
quote Shishir Mehrotra, Google refers to the quote for its content, and denies that the allegations
in paragraph 48 are a full and accurate quote.
49. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 49 of the Complaint and on that basis denies the
allegations contained therein.
50. To the extent the allegations contained in paragraph 50 of the Complaint are directed
at MySpace, Inc. (“MySpace”), Google is without knowledge or information sufficient to form a
belief as to the truth of the allegations contained in paragraph 50 of the Complaint and on that
basis denies the allegations contained therein. Google admits that Google and MySpace entered
into an agreement in 2010. Except as expressly admitted herein, Google denies the allegations
contained in paragraph 50 of the Complaint.
51. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 51 of the Complaint and on that basis denies the
allegations contained therein.

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52. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 52 of the Complaint and on that basis denies the
allegations contained therein.
53. The allegations set forth in paragraph 53 of the Complaint are immaterial or
impertinent and do not require a response and except as expressly admitted herein, Google
denies the allegations contained in paragraph 53 of the Complaint. Google is without knowledge
or information sufficient to form a belief as to the truth of the allegations contained in paragraph
53 of the Complaint and on that basis denies the allegations contained therein. To the extent the
allegations in paragraph 53 of the Complaint purport to quote articles or websites, Google refers
to those articles or websites for their content.
54. The allegations set forth in paragraph 54 of the Complaint are immaterial or
impertinent and do not require a response and except as expressly admitted herein, Google
denies the allegations contained in paragraph 54 of the Complaint. Google is without knowledge
or information sufficient to form a belief as to the truth of the allegations contained in paragraph
54 of the Complaint and on that basis denies the allegations contained therein.
55. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 55 of the Complaint and on that basis denies the
allegations contained therein. Google specifically denies that the ‘983 patent was duly and
legally issued.
56. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 56 of the Complaint and on that basis denies the
allegations contained therein. To the extent the allegations in paragraph 56 of the Complaint
purport to quote an article or website, Google refers to that article or website for its content.

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57. Google admits that it purchased AdMob. Google is without knowledge or
information sufficient to form a belief as to the truth of the remaining allegations contained in
paragraph 57 of the Complaint and on that basis denies those allegations.
58. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 58 of the Complaint and on that basis denies the
allegations contained therein. To the extent the allegations in paragraph 58 of the Complaint
purport to quote articles or websites, Google refers to those articles or websites for their content.
59. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 59 of the Complaint and on that basis denies the
allegations contained therein. To the extent the allegations in paragraph 59 of the Complaint
purport to quote articles or websites, Google refers to those articles or websites for their content.
60. Google is without knowledge or information sufficient to form a belief as to the truth
of the allegations contained in paragraph 60 of the Complaint and on that basis denies the
allegations contained therein.
61. Google is without knowledge or information sufficient to form a belief as to the
truth of the allegations contained in paragraph 61 of the Complaint and on that basis denies the
allegations contained therein. To the extent the allegations in paragraph 61 of the Complaint
purport to quote an article or website, Google refers to that article or website for its content.
62. Google is without sufficient knowledge or information sufficient to form a belief as to
the truth of the allegations contained in paragraph 62 of the Complaint and on that basis denies
the allegations contained therein.
63. To the extent the allegations of paragraph 63 are directed to any defendant other than
Google and YouTube, Google is without sufficient knowledge or information sufficient to form a

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belief as to the truth of those allegations and on that basis denies them. Google denies the
allegations contained in paragraph 63 that are directed to either Google or YouTube. Except as
expressly admitted herein, Google denies the allegations contained in paragraph 63 of the
Complaint.
64. To the extent the allegations of paragraph 64 are directed to Facebook, Google is
without sufficient knowledge or information sufficient to form a belief as to the truth of those
allegations and on that basis denies them. Google admits that Google and the Plaintiff are
currently in a patent litigation regarding the ’983 patent. Except as expressly admitted herein,
Google denies the remaining allegations contained in paragraph 64 of the complaint.
65. To the extent the allegations contained in paragraph 65 of the Complaint are directed
at Google, Google denies the allegations contained in paragraph 65 of the Complaint, and
Google specifically denies any infringement of the ‘342 patent by Google or YouTube and
further denies that Wireless Ink possesses any valid and lawful patent rights. Google is without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
contained in paragraph 65 of the Complaint and on that basis denies those allegations.
66. To the extent the allegations contained in paragraph 66 of the Complaint are directed
at Google, Google denies the allegations contained in paragraph 66 of the Complaint, and
Google specifically denies any infringement of the ‘342 patent by Google or YouTube, any
indifference by Google or YouTube to a known patent risk, that any alleged infringement was
willful and that plaintiff is entitled to any damages. Google is without knowledge or information
sufficient to form a belief as to the truth of the remaining allegations contained in paragraph 66
of the Complaint and on that basis denies those allegations.

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67. To the extent the allegations contained in paragraph 67 of the Complaint are directed
at Google, Google denies those allegations. Google specifically denies any inducement of
infringement of the ’342 patent by Google or YouTube. Google is without knowledge or
information sufficient to form a belief as to the truth of the remaining allegations contained in
paragraph 67 of the Complaint and on that basis denies those allegations.
FIRST CLAIM FOR RELIEF
(Infringement of the ’342 Patent)
68. Google repeats and incorporates by reference its responses as set forth in paragraphs
1-67 above.
69. To the extent the allegations in paragraph 69 purport to recite what “Wireless Ink
alleges,” Google is without knowledge or information sufficient to form a belief as to what
Wireless Ink believes or alleges and on that basis denies the allegations contained therein.
Google specifically denies that it or YouTube is infringing or has infringed any claim of the ’342
patent literally or under the doctrine of equivalents, has actively induced infringement by others
or committed any other act defined in 35 U.S.C. § 271 as unlawful. To the extent the allegations
contained in paragraph 69 of the Complaint are directed at any other defendant, Google is
without knowledge or information sufficient to form a belief as to the truth of the allegations
contained in paragraph 69 of the Complaint and on that basis denies the allegations contained
therein. To the extent a response is required from Google for the remaining allegations set forth
in paragraph 69 of the Complaint, Google denies those allegations.
70. To the extent the allegations contained in paragraph 70 of the Complaint are directed
at any other defendant, Google is without knowledge or information sufficient to form a belief as
to the truth of the allegations contained in paragraph 70 of the Complaint and on that basis denies
the allegations contained therein. To the extent the allegations of paragraph 70 are directed at

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Google, Google denies those allegations, and specifically denies that the plaintiff is entitled to
any damages.
71. To the extent the allegations contained in paragraph 71 of the Complaint are directed
at any other defendant, Google is without knowledge or information sufficient to form a belief as
to the truth of the allegations contained in paragraph 71 of the Complaint and on that basis denies
the allegations contained therein. To the extent the allegations of paragraph 71 are directed at
Google, Google denies those allegations, and specifically denies any direct or inducement of
infringement of the ’342 patent by Google or YouTube, that any alleged infringement was
willful, and that Wireless Ink possesses any valid and lawful rights in the ’342 patent.
*

*

*

Google denies that Wireless Ink is entitled to the relief sought in items A through I on
page 18 of the Complaint.
AFFIRMATIVE DEFENSES
In addition to the defenses described below, Google reserves all affirmative defenses
under Rule 8(c) of the Federal Rules of Civil Procedure, the Patent Laws of the United States and
any other defenses, at law or in equity, which may now exist or in the future may be available
based on discovery and further factual investigation in this case.
FIRST AFFIRMATIVE DEFENSE
72. Google has not infringed and is not infringing any claim of the ’342 patent, either
directly or by inducing or contributing to infringement by others.

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SECOND AFFIRMATIVE DEFENSE
73.

Each of the claims of the ’342 patent is invalid, unenforceable, and/or void for

failing to comply with one or more of the requirements for patentability under the Patent Laws of
the United States, including but not limited to, 35 U.S.C. §§ 101, 102, 103, 112 et seq.
THIRD AFFIRMATIVE DEFENSE
74.

Wireless Ink is estopped from construing any valid claim of the ’342 patent to

cover or include, either literally or by application of the doctrine of equivalents, any product or
service manufactured, used, imported, sold, or offered by Google because of admissions and
statements to the United States Patent and Trademark Office in the specification of the ’342
patent and during prosecution of the application leading to the issuance of the ’342 patent.
FOURTH AFFIRMATIVE DEFENSE
75.

The claims alleged in the Complaint are barred, in whole or in part, by the

doctrine of unclean hands.
FIFTH AFFIRMATIVE DEFENSE
76.

Wireless Ink is not entitled to enhanced or increased damages for willful

infringement because Google has not engaged in any conduct that meets the applicable standard
for willful infringement. Wireless Ink has also failed to adequately plead or state a claim for
relief for willful infringement.
SIXTH AFFIRMATIVE DEFENSE
77.

Wireless Ink is not entitled to injunctive relief because any alleged injury to

Wireless Ink is not immediate or irreparable, and Wireless Ink has an adequate remedy at law.

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SEVENTH AFFIRMATIVE DEFENSE
78.

With respect to each purported claim for relief alleged in the Complaint, Wireless

Ink fails to state a claim against Google upon which relief may be granted, including but not
limited to any claim for infringement, contributory infringement, inducing infringement or
willful infringement.
EIGHTH AFFIRMATIVE DEFENSE
79.

Wireless Ink failed to provide adequate notice to Google of alleged infringement

and is thus barred under 35 U.S.C. § 287 from recovering damages prior to the date of the filing
of the Complaint.
80.

Wireless Ink is barred by 35 U.S.C. § 288 from recovering costs associated with

its action.
81.

By asserting this affirmative defense, Google does not assume any burden of

proof.
NINTH AFFIRMATIVE DEFENSE
82.

Wireless Ink cannot prove that this is an exceptional case justifying award of

attorney fees against Google pursuant to 35 U.S.C. § 285.
TENTH AFFIRMATIVE DEFENSE
83.

To the extent Wireless Ink purports to identify a Google product, Wireless Ink’s

claims for contributory infringement are barred in whole or in part under 35 U.S.C. § 271(c) in
view of the substantial non-infringing uses of such allegedly infringing product.
ELEVENTH AFFIRMATIVE DEFENSE
84.

Google’s investigation of its defenses is continuing, and Google expressly

reserves the right to allege and assert any additional affirmative defenses under Rule 8 of the

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Federal Rules of Civil Procedure, the patent laws of the United States and any other defense, at
law or in equity, that may now exist or in the future be available based upon discovery and
further investigation in this case. Google also expressly incorporates by reference herein all
defenses pleaded by any other defendant in this action in its respective answer to the Complaint.
JURY DEMAND
Google requests a trial by jury as to all issues so triable.
PRAYER FOR RELIEF
WHEREFORE, Defendant Google respectfully requests that the Court enter an Order and
Judgment:
A.

Dismissing Wireless Ink’s claims against Google with prejudice;

B.

Denying all relief sought by Wireless Ink;

C.

That Google has not infringed and is not directly or indirectly infringing

any claim of the ’342 patent, literally or under the doctrine of equivalents, under any subsection
of 35 U.S.C. § 271;
D.

That all asserted claims of the ’342 patent are invalid and/or

E.

That this case is exceptional under 35 U.S.C. § 285 and awarding to

unenforceable;

Google its costs, attorneys’ fees, and expenses incurred in defending against Wireless Ink’s
Complaint; and
F.

Awarding Google such other and further relief as the Court deems just and

proper.

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Dated: New York, New York

WHITE & CASE LLP

April 25, 2011
By: /s/ Kevin X. McGann
Kevin X. McGann
Aaron Chase
1155 Avenue of the Americas
New York, New York 10036
Telephone:
[phone]
Facsimile:
[phone]
Attorneys for Google Inc. and
YouTube, LLC

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