PA Advisors, LLC v. Google Inc. et al

Filing 199

ANSWER to #187 Amended Complaint, COUNTERCLAIM (Defendant 24/7 Real Media, Inc.'s Answer and Counterclaims to PA Advisors, LLC's Second Amended Complaint) against PA Advisors, LLC by 24/7 Real Media, Inc..(Blank, James)

PA Advisors, LLC v. Google Inc. et al

Doc. 199

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION PA ADVISORS, LLC, Plaintiff, -against(1) (2) (3) (4) (5) (6) GOOGLE INC., YAHOO! INC., FACEBOOK, INC., CONTEXTWEB, INC., SPECIFIC MEDIA, INC., 24/7 REAL MEDIA, INC., Defendants. DEFENDANT 24/7 REAL MEDIA, INC.'S ANSWER AND COUNTERCLAIMS TO PA ADVISORS, LLC'S SECOND AMENDED COMPLAINT Defendant 24/7 Real Media, Inc. ("24/7 Real Media"), by and through its undersigned counsel, hereby submits this Answer and Counterclaims in response to the Second Amended Complaint for Patent Infringement by Plaintiff PA Advisors, LLC ("PA Advisors" or "Plaintiff') dated August 27, 2008 (the "Second Amended Complaint"). For its Answer and Counterclaims, 24/7 Real Media states as follows: 1. 24/7 Real Media is without sufficient knowledge or information to form a belief CIVIL ACTION NO. 2-07 CV-480 DF

JURY TRIAL DEMANDED

as to the truth of the allegations contained in paragraph 1, and therefore denies the same. 2. 24/7 Real Media is without sufficient knowledge or information to form a belief

as to the truth of the allegations contained in paragraph 2, and therefore denies the same. 3. 24/7 Real Media is without sufficient knowledge or information to form a belief

as to the truth of the allegations contained in paragraph 3, and therefore denies the same.

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4.

24/7 Real Media is without sufficient knowledge or information to form a belief

as to the truth of the allegations contained in paragraph 4, and therefore denies the same. 5. 24/7 Real Media is without sufficient knowledge or information to form a belief

as to the truth of the allegations contained in paragraph 5, and therefore denies the same. 6. 24/7 Real Media is without sufficient knowledge or information to form a belief

as to the truth of the allegations contained in paragraph 6, and therefore denies the same. 7. 8. 24/7 Real Media admits the allegations contained in paragraph 7. 24/7 Real Media admits that pursuant to paragraph 8, Plaintiff purports to bring

this action under Title 35, United States Code, with subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a), but 24/7 Real Media denies any liability thereunder. 9. 24/7 Real Media denies the allegations of paragraph 9 insofar as they relate to

24/7 Real Media, except that it admits that venue is proper in the Eastern District of Texas under 28 U.S.C. §§ 1391(c) and 1400(b). 24/7 Real Media is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph 9 insofar as they relate to any other defendant, and therefore denies the same. 10. 24/7 Real Media does not contest personal jurisdiction over it in this case. 24/7

Real Media denies that it has directly infringed or contributed to or induced acts of infringement in the Eastern District of Texas or elsewhere and denies the remaining allegations contained in paragraph 10 insofar as they relate to 24/7 Real Media. 24/7 Real Media is without sufficient information or knowledge to form a belief as to the truth of the allegations contained in paragraph 10 insofar as they relate to any other defendant, and therefore denies the same. 11. 24/7 Real Media admits that U.S. Patent No. 6,199,067 entitled "System and

Method for Generating Personalized User Profiles and for Utilizing the Generated User Profiles

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to Perform Adaptive Internet Searches" (the "`067 patent") was issued on March 6, 2001, and that a copy of a document purporting to be the `067 patent had been attached as Exhibit A to the Second Amended Complaint. 24/7 Real Media is without sufficient information or knowledge to form a belief as to the truth of the remaining allegations contained in paragraph 11, and therefore denies the same. 12. 13. 24/7 Real Media admits the allegation contained in paragraph 12. 24/7 Real Media is without sufficient knowledge or information to form a belief

as to the truth of the allegations contained in paragraph 13, and therefore denies the same. 14. 24/7 Real Media is without sufficient knowledge or information to form a belief

as to the truth of the allegations contained in paragraph 14, and therefore denies the same. 15. 24/7 Real Media is without sufficient knowledge or information to form a belief

as to the truth of the allegations contained in paragraph 15, and therefore denies the same. 16. 24/7 Real Media is without sufficient knowledge or information to form a belief

as to the truth of the allegations contained in paragraph 16, and therefore denies the same. 17. 24/7 Real Media is without sufficient knowledge or information to form a belief

as to the truth of the allegations contained in paragraph 17, and therefore denies the same. 18. 19. 24/7 Real Media denies the allegations contained in paragraph 18. 24/7 Real Media asserts that the allegations of paragraph 19 insofar as they relate

to 24/7 Real Media contain non-factual statements to which no response is required and, therefore, denies these allegations. 24/7 Real Media is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph 19 as they relate to any other defendant, and therefore denies the same.

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20.

24/7 Real Media is without sufficient knowledge or information to form a belief

as to the truth of the allegations contained in paragraph 20, and therefore denies the same. 21. 24/7 Real Media denies the allegations of paragraph 21 insofar as they relate to

24/7 Real Media. 24/7 Real Media is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph 21 as they relate to any other defendant, and therefore denies the same. 22. 24/7 Real Media denies the allegations of paragraph 22 insofar as they relate to

24/7 Real Media, Inc. 24/7 Real Media is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph 22 as they relate to any other defendant, and therefore denies the same. AFFIRMATIVE DEFENSES Further answering the Second Amended Complaint, 24/7 Real Media asserts that: FIRST AFFIRMATIVE DEFENSE (Failure to State a Claim) 23. The Second Amended Complaint fails to state a claim with respect to 24/7 Real

Media upon which relief can be granted. SECOND AFFIRMATIVE DEFENSE (Non-Infringement) 24. 24/7 Real Media has not infringed, and is not infringing, any valid and

enforceable claim of the `067 patent, either literally or under the doctrine of equivalents, nor has it induced or contributorily infringed any valid and enforceable claim of the `067 patent.

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THIRD AFFIRMATIVE DEFENSE (Invalidity) 25. The `067 patent, and each claim thereof, is invalid for failure to meet at least one

of the requirements of patentability set forth in 35 U.S.C. §§ 101, 102, 103, and/or 112. FOURTH AFFIRMATIVE DEFENSE (Laches) 26. PA Advisors' claims for relief are barred, in whole or in part, by the equitable

doctrine of laches. FIFTH AFFIRMATIVE DEFENSE (35 U.S.C. § 287) 27. PA Advisors' claims for relief are barred, in whole or in part, pursuant to

35 U.S.C. § 287. SIXTH AFFIRMATIVE DEFENSE (Prosecution History Estoppel) 28. PA Advisors' claims for relief are barred under the doctrine of prosecution history

estoppel to the extent that PA Advisors alleges infringement under the doctrine of equivalents. SEVENTH AFFIRMATIVE DEFENSE (Indispensable Parties/Lack of Standing) 29. PA Advisors' claims are barred in whole or in part to the extent that parties

retaining rights to the `067 patent are not parties to this lawsuit.

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EIGHTH AFFIRMATIVE DEFENSE (Dedication to the Public) 30. PA Advisors has dedicated to the public any method or apparatus in the `067

patent but not literally claimed therein, and is estopped from claiming infringement by any such public domain method or apparatus. NINTH AFFIRMATIVE DEFENSE (Specification and Prosecution Disclaimer) 31. PA Advisors' claims for relief are barred under the doctrines of specification and

prosecution history disclaimer. TENTH AFFIRMATIVE DEFENSE (Reservation of Rights) 32. 24/7 Real Media reserves the right to assert additional defenses which may

become apparent during discovery in this action. COUNTERCLAIMS Defendant and counterclaim plaintiff 24/7 Real Media, for its counterclaims against counterclaim defendant PA Advisors, alleges as follows: 33. Defendant and counterclaim plaintiff 24/7 Real Media is a Delaware corporation

having its principal place of business at 132 West 31st Street, New York, New York 10001. 34. Upon information and belief, plaintiff and counterclaim defendant PA Advisors is

a limited liability company organized and existing under the laws of the State of Texas with its principal place of business at 207 C North Washington Avenue, Marshall, Texas 75670. 35. `067 patent. In its Second Amended Complaint, PA Advisors alleges that it is the owner of the

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36.

Under 28 U.S.C. § 1338(a), this Court has subject matter jurisdiction over these

counterclaims for declaratory judgment, brought pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. Venue for these counterclaims is proper under 28 U.S.C. §§ 1391(b) and (c) and 1400(b). 37. Based on the Second Amended Complaint that PA Advisors filed against 24/7

Real Media, a justiciable actual controversy exists between 24/7 Real Media and PA Advisors with respect to the alleged infringement and validity of the `067 patent. FIRST COUNTERCLAIM (Declaratory Judgment of Noninfringement) 38. 24/7 Real Media realleges and incorporates herein by reference all allegations in

paragraphs 33-37 above. 39. 24/7 Real Media has not infringed and is not infringing (either directly,

contributorily or by inducement), any valid and enforceable claim of the `067 patent. SECOND COUNTERCLAIM (Declaratory Judgment of Invalidity) 40. 24/7 Real Media realleges and incorporates herein by reference all allegations in

paragraphs 33-39 above. 41. The `067 patent and each claim thereof are void and invalid for failure to comply

with one or more of the requirements of Title 35, United States Code, including, but not limited to, Sections 101, 102, 103, and/or 112. EXCEPTIONAL CASE 42. This case is exceptional under 35 U.S.C. § 285.

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JURY DEMAND 24/7 Real Media respectfully demands a trial by jury of any and all issues triable of right by jury in this action. PRAYER FOR RELIEF WHEREFORE, 24/7 Real Media prays that this Court: 1. Dismiss the Second Amended Complaint in its entirety with prejudice, with PA

Advisors taking nothing by its Second Amended Complaint, with respect to 24/7 Real Media; 2. denied; 3. 4. 5. Adjudge and decree that 24/7 Real Media has not infringed the `067 patent; Adjudge and decree that the `067 patent is invalid; Award 24/7 Real Media its reasonable attorney fees and the costs of this action Adjudge and decree that all of PA Advisors' claims against 24/7 Real Media are

pursuant to 35 U.S.C. § 285; 6. and proper. Dated: September 12, 2008 Respectfully submitted, /s/ James S. Blank Harry L. Gillam, Jr. Bar #07921800 GILLAM & SMITH LLP 303 South Washington Avenue Marshall, Texas 75670 Tel: [phone] Fax: [phone] Email: [e-mail] James S. Blank (admitted pro hac vice) Email: [e-mail] Howard I. Sherman (admitted pro hac vice) Email: [e-mail]
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Award 24/7 Real Media such further and other relief as the Court may deem just

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KAYE SCHOLER LLP 425 Park Avenue New York, New York 10022 Tel: [phone] Fax: [phone] Attorneys for Defendant and Counterclaimant 24/7 Real Media, Inc.

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CERTIFICATE OF SERVICE The undersigned hereby certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a), and was served on all counsel who have consented to electronic service. Local Rule 5(a)(3)(A). By: /s/ James S. Blank James S. Blank

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