PA Advisors, LLC v. Google Inc. et al

Filing 198

ANSWER to #187 Amended Complaint Affirmative Defenses and, COUNTERCLAIM against PA Advisors, LLC by Google Inc..(Beck, David)

PA Advisors, LLC v. Google Inc. et al

Doc. 198

UNITED STATES DISTzuCT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

PA ADVISORS. LLC.

Plaintiff,

Civil Action No. 2-07CV-480-DF

ruRY TRIAL REQUESTED
Defendants.

DEFENDANT GOOGLE INC.'S ANSWER. AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PA ADVISORS. LLC'S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
Defendant and counterclaimant Google Inc. ("Google") by and through the undersigned counsel, answers the Second Amended Complaint for Patent Infringement ("SAC") of plaintiff
and counter-defendant PA ADVISORS, LLC

("Plaintiff'),

as

follows:

Parties

1. 2.

Google is without knowledge or information sufficient to form a belief as to the

truth or falsity of the allegations inparagraph 1 of the SAC and therefore denies them. Google admits

it is a Delaware

corporation with its corporate headquarters and

principal place of business at 1600 Amphitheatre Parkway, Mountain View, California, 94043,
and that it has answered and appeared in this suit.

3. 4.

Google is without knowledge or information sufficient to form a belief as to the

truth or falsity of the allegations in paragraph 3 of the SAC and therefore denies them. Google is without knowledge or information sufficient to form a belief as to the

truth or falsity of the allegations in paragraph 4 of the SAC and therefore denies them.

Dockets.Justia.com

5. 6. 7.

Google is without knowledge or information sufficient to form a belief as to the

truth or falsity of the allegations in paragraph 5 of the SAC and therefore denies them. Google is without knowledge or information sufficient to form a belief as to the

truth or falsity of the allegations inparagraph 6 of the SAC and therefore denies them. Google is without knowledge or information sufficient to form a belief as to the

truth or falsity of the allegations in paragraph 7 of the SAC and therefore denies them.

Jurisdiction and Venue

8.

Google admits that the SAC is an action for alleged patent infringement under the

patent laws of the United States,35 U.S.C. $ 1, e/ seq.,and admits that this Court has subject matter jurisdiction over such actions based on 28 U.S.C. $$ 1331 and 1338. Google denies any

allegation of infringement of the patent identified in the SAC.

9.

In response to paragraph 9 of the SAC and solely for the purpose of this action,

Google does not contest venue in this District. However, the interests and convenience of the
parties would be better served by transferring this case to a different district. Google denies any

remaining allegations in paragraph 9.

10.

Google admits that it is subject to personal jurisdiction in this District solely for

the purpose of this action. Google admits that it has conducted and does conduct business in the Eastem District of Texas. Google denies that it has committed any acts of infringement within

the Eastern District of Texas, or any other District. Google denies any remaining allegations in
paragraph 10.

513t9t2626202.1

COUNT

I
Patent No.

Infrinsement of U.S. Patent No. 6.199.067

11.

Google admits that what appears

to be a copy of United States

6,199,067 (the "'067 patent") is attached to the SAC as Exhibit allegations in paragraph I
1.

A.

Google denies any remaining

12. 13. 14. 15. 16. 17. 18. 19. 20. 21.

Google admits thatpage 1 of Exhibit A lists Ilya Geller as the inventor of the '067
12.

patent. Google denies any remaining allegations in paragraph

Google denies the allegations in paragraph 13 of the SAC.

Google is without knowledge or information suff,rcient to form a belief as to the

truth or falsity of the allegations in paragraph 14 of the SAC and therefore denies them. Google is without knowledge or information sufficient to form a belief as to the

truth or falsity of the allegations in paragraph 15 of the SAC and therefore denies them. Google is without knowledge or information sufficient to form a belief as to the

truth or falsity of the allegations in paragraph 16 of the SAC and therefore denies them. Google is without knowledge or information sufficient to form a belief as to the

truth or falsity of the allegations in paragraph 17 of the SAC and therefore denies them. Google is without knowledge or information suffrcient to form a belief as to the

truth or falsity of the allegations in paragraph l8 of the SAC and therefore denies them.
Google denies any infringement and denies any actions could constitute willful

infringement. Therefore, Google denies the allegations in paragraph 19 of the SAC.
Google denies the allegations in paragraph 20 of the SAC.

Google denies the allegations of paragraph

2l

of the SAC. To the extent the

allegations set forth

in paragraph 2l relate to other defendants, Google lacks knowledge or

51319/2626202.1

information sufficient to form a belief as to the truth of those allegations, and on this basis denies
those allegations.

22.

Google denies the allegations

of

paragraph 22

of the SAC. To the extent the

allegations set forth

in paragraph 22 relafe to other defendants, Google lacks knowledge or

information suffrcient to form a belief as to the truth of those allegations, and on this basis denies
those allegations.

Praver for Relief
Google denies that Plaintiff is entitled to the relief sought by its Prayer for Relief, set

forth on page 8 of the SAC.

FIRST AFFIRMATIVE DEFENSE: Non-Infringement of the'067 Patent
Google has not infringed and does not infringe, either directly, contributorily, or by
inducement, any valid and enforceable claim of the '067 patent.

SECOND AFFIRMATIVE DEFENSE: Invalidity and/or Enforceabilitv of the '067 Patent
The claims of the '067 palent are invalid for failure to satisfy one or more conditions of

patentability set forth in Title 35 of the United States Code, including, but not limited to, 35
U.S.C. $$ 101, 102,103 and/or

ll2.

THIRD AFFIRMATIVE DEFENSE: Lack of Standins
On information and belief, Plaintiff lacks the standing necessary to assert the claims of

the'067 patent against Google. FOURTH AFFIRMATIVE DEFENSE: Unclean Hands

On information and belief, the claims of the '067 patent are unenforceable due to
PlaintifPs unclean hands.

s1319/2626202.1

COUNTERCLAIMS
Pursuant

to Rule 13 of the Federal Rules of Civil

Procedure, Defendant Google

("Counterclaim-Plaintiff Google")

for its

Counterclaims against

PA ADVISORS, LLC

("Counterclaim-Defendant PA ADVISORS, LLC"), alleges as follows:

PARTIES

1.

Counterclaim-Plaintiff 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, CA, 94043.

2.

Counterclaim-Defendant PA ADVISORS, LLC alleges that

it is a corporation

orgarrized and existing under the laws of the state of Texas with its principal place of business in

Marshall, Texas.

JURISDICTION AND VENUE

3. 4.

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

U.S.C. $$ 1331 and 1338.
Venue is proper in this judicial district pursuant to 28 U.S.C. $$ 1391(b) and by

virtue of Counterclaim-Defendant PA ADVISORS" LLC's admissions in the SAC that venue is
proper in this district.

COUNT I: Declaratorv Judgment of Non-Infrinsement

5.

Counterclaim-Plaintiff Google incorporates the allegations

in

paragraphs

1

through 22 of the answer and defenses herein and paragraphs 1 through 4 of these counterclaims
as

if fully

set forth herein.

6.
'067 patent.

Counterclaim-Defendant PA ADVISORS. LLC claims to be the owner of the

5t319/2626202.t

7.

Counterclaim-Defendant PA ADVISORS, LLC has initiated a civil action against

Counterclaim-Plaintiff Google by filing the SAC

in this Court alleging that Counterclaim-

Plaintiff Google has infringed one or more claims of the '067 patent.

8.

Counterclaim-Plaintiff Google has not infringed and does not infringe any valid

and enforceable claim of the '067 patent.

COUNT II: Declaratory Judement of Invalidifv and/or Unenforceability

9.

Counterclaim-Plaintiff Google incorporates the allegations

in

paragraphs

1

through 22 of the answer and defenses herein and paragraphs 1 through 8 of these counterclaims
as

if fully

set forth herein.

10.

The '067 patent is invalid for failure to satisfy one or more of the conditions of

patentability set forth in Part II of Title 35 of the United States Code, including, but not limited to, 35 U.S.C. $$ 101, 102,103 and/or 112.

EXCEPTIONAL CASE
I

1.

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, Plaintiff s assertion of the '067 patent

against

Google with the knowledge that Google does not infringe any valid or enforceable claim of the

'067 pafent and/or that the '067 patent is invalid and/or unenforceable.

RELIEF REOUESTED
WHEREFORE, Google respectfully requests the following relief:

1. 2.
unenforceable;

A judgment in favor of Google denying Plaintiff all relief requested in this action

and dismissing Plaintiff s SAC for patent infringement with prejudice;

A judgment declaring that each claim of the '067

patent

is invalid

and/or

s13t9t2626202.1

3.

A judgment declaring that Google has not infringed and is not infringing

any

valid and/or enforceable claim of the '067 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'067 patent;

4. 5. 6.
and proper.

A judgment declaring that Google has not willfully infringed and is not willfully

infringing any valid andlor enforceable claim of the '067 patent.

A judgment declaring this to be an exceptional case under 35 U.S.C. $ 285 and

awarding Google its costs, expenses, and reasonable attorneys' fees; and
That the Court award Google such other and further relief as the Court deems just

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

Dated: September 10, 2008
Respectfully submitted,

By:

isl David J. Beck David J. Beck Texas Bar No. 00000070 [e-mail] Becrc, RˇopeN & Sncnpsr, L.L.P.
One Houston Center l22I McKinney St., Suite 4500 Houston, TX. 77010

(7r3) esl-3700 (713) 9sr-3720 (Fax) Ln,lo ArronNnv Fon DnrBNpaNT GoocLE INC.

51319/2626202.t

OF COUNSEL: Michael E. Richardson Texas Bar No. 24002838 mri chards on@brs firm. c om Becr, RepoeN & Secnˇsr, L.L.P. One Houston Center l22l McKinney St., Suite 4500 Houston, Texas 77010 (713) 9sr-3700 (713) 9sI-3720 (Fax)
Charles K. Verhoeven, Califomia Bar No. 17015 1 charl esverhoeven@quinnemanuel. com Quinn Emanuel Urquhart Oliver & Hedges, LLP 50 California Street, 22ndFloor San Francisco, CA 94III (41s) 875-6600 (4ls) 87s-6700 (Fax)

Brian C. Cannon Califomia Bar No. 193071 briancannon@quinnemanuel. com Quinn Emanuel Urquhart Oliver & Hedges, LLP 555 Twin Dolphin Drive, Suite 560 Redwood Shores, CA 94065 (6s0) 801-s000 (6s0) 801-s100 (Fax)

CERTIFICATE OF SERVICE
The undersigned hereby certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). As such, this motion was served on all counsel who have consented to electronic service. Local Rule CV-5(a)(3)(A).

/s/ Michael E. Richardson Michael E. Richardson

5t3t9/2626202.1