PA Advisors, LLC v. Google Inc. et al

Filing 39

Defendant Google Inc.'s Answer, Affirmative Defenses and Counterclaims to PA Advisors, LLC's Original Complaint for Patent Infringement ANSWER to Complaint with Jury Demand, COUNTERCLAIM against PA Advisors, LLC by Google Inc..(Beck, David)

PA Advisors, LLC v. Google Inc. et al

Doc. 39

Case 2:07-cv-00480-TJW

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

PA ADVISORS, LLC,

Plaintiff,
v.

Civil Action No. 2-07CY-480-TJW
JURY TRIAL REQUESTED

GOOGLE INC.; YAHOO! INC.; FACEBOOK, INC.; CONTEXTWEB, INC.; SPECIFIC MEDIA, INC.; FAST SEARCH & TRANSFER ASA; FAST SEARCH & TRANSFER, INC.; AGENTARTS, INC.; SEEVAST CORPORATION; PULSE 360, INC.; WPP GROUP USA, INC.; WPP GROUP PLC, AND 2417 REAL MEDIA, INC.
Defendants.

DEFENDANT GOOGLE INC.'S ANS\ilER. AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PA ADVISORS. LLC'S ORIGINAL COMPLAINT FOR
Defendant and counterclaimant Google Inc. ("Google") by and through the undersigned counsel, answers the Original Complaint for Patent Infringement ("Complaint") of plaintiff and counterdefendant PA ADVISORS, LLC ("Plaintiff'), as follows:

:t 1. 2.

Parties

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

truth or falsity of the allegations in paragraph Google admits

I of the Complaint

and therefore denies them.

it is a Delaware corporation with its corporate

headquarters and

principal place of business at 1600 Amphitheatre Parkway, Mountain View, Califomia, 94043.
Google admits it has appointed its agent for service as follows: Corporation Service Company

Dockets.Justia.com

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d/b/a CSC--Lawyers Incorporating Service Company, 701 Brazos Street, Suite 1050, Austin,
Texas 78701.

3. 4. 5. 6. 7. 8. 9. 10. 1.

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

truth or falsity of the allegations inparagraph 3 of the Complaint 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 Complaint and therefore denies them. Google is without knowledge or information sufhcient to form a belief as to the

truth or falsity of the allegations in paragraph 5 of the Complaint 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 6 of the Complaint 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 Complaint and therefore denies them. Google is without knöwledge or information sufficient to form a belief as to the

truth or falsity of the allegations in paragraph 8 of the Complaint 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 9 of the Complaint 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 10 of the Complaint and therefore denies them.
1

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

truth or falsity of the allegations in paragraph 11 of the Complaint and therefore denies them.

12.

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

truth or falsity of the allegations in paragraph 12 of the Complaint and therefore denies them.
1,,'

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13. 14.

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

truth or falsity of the allegations in par4graph 13 of the Complaint and therefore denies them. Google is without knowledge or information sufficient to form a belief as to the

truth or falsity of the allegations inparugraph 14 of the Complaint and therefore denies them.

Jurisdiction and Venue

15.

Google admits that the Complaint is an action for alleged patent infringement

under the patent laws of the United States, 35 U.S.C. $

l, e/

seq., andadmits 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 Complaint.

16.

In response to paragraph 16 of the Complaint 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 ti'ansferring this case to a different district. Google denies any remaining allegations in paragraph 16.

17.

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 Eastern District of Texas. Google dgnies 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
17
.

COUNT I Infrinsement of U.S. Patent No. 6.199.067

18.

Google admits that what appears

to be a copy of United

States Patent No. Google denies any

6,199,067 (the "'067 patent") is attached to the Complaint as Exhibit remaining allegations in paragraph 18.

A.

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19. 20. 21. 22. 23. 24. 25. 26. 27. 28. 29. 30.

Google admits that page 1 of Exhibit A lists Ilya Geller as the inventor of the '067
19.

patent. Google denies any remaining allegations in paragraph
Google denies the allegations in paragraph20.

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

truth or falsity of the allegations in paragraph 21 of the Complaint 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 paragraph22 of the Complaint 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 23 of the Complaint 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 pdragrap h 24

of theComplaint

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 25 of the Complaint 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 paragraph26 of the Complaint and therefore denies them. Google is without knåwledge or information sufficient to form a belief as to the

truth or falsity of the allegations inparagraph2T of the Complaint 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 28 of the Complaint 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 29 of the Complaint 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 30 of the Complaint and therefore denies them.

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'" 31. 32. 33.
infringement. Google is without knowledge or information sufficient to form a belief as to the truth or falsity of the allegations in paragraph 31 of the Complaint 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 32 of the Complaint and therefore denies them. Google denies any infringement and denies any actions could constitute willful

34. 35.

Google denies that Plaintiff

is entitled to any pre-suit damages.

Therefore,

Google denies the allegations of paragraph3{. Google denies the allegations of paragraph 35 of the Complaint. To the extent the

allegations set forth

in

parugraph 35 relate

to other defendants, Google lacks knowledge or

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

36.

Google denies the allegations of paragraph 36 of the Complaint. To the extent the

allegations set forth

in paragraph 36 relate to other defendants, Google lacks knowledge or

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

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

lI-I2

of the Complaint.

FIRST AFFIRMATIVE úEFENSE: Non:Infrineement 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.

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SECOND AFFIRMATIVE DEFENSE: Invalidity and/or Enforceabilitv of the'067 Patent
The claims of the '067 patent 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. $$

l0l,

102,103 andlor 112.
.. ;'.

THIRD AFFIRMATIVE DEFENSE: Lack of Standine
On information and beliet 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
Plaintiff s unclean hands. 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, !LC?'), alleges as follows:

,I 1.

PARTIES

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, LLP alleges that

it is a corporation

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

Marshall, Texas.

JURISDICTION AND YENUE

3.

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

U.S.C. $$ 1331 and

1338

:

''

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4.

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

virtue of Counterclaim-Defendant PA ADVISORS, LLP's admissions in the Complaint that
venue is proper in this district.

COUNT I: Declaratorv Judsment of Non-Infrinsement

5.

Counterclaim-Plaintiff Google incorporates the allegations

in

paragraphs

1

through 36 of the answer and defenses herein and paragraphs 1 through 4 of these counterclaims
as

if fully

set forth herein.

6.
patent.

Counterclaim-Defendant PA ADVISORS, LLP claims to be the owner of the '067

7.

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

Counterclaim-Plaintiff Google by filing the Complaint in this Court alleging that Counterclaim-

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

8.

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

and enforceable claim of the '067 patent.

COUNT JI: Declaratorv Judement of Invalidity and/or Unenforceabilitv

9.

Counterclaim-Plaintiff Google incorporates the allegations

in

paragraphs

1

through 36 of the answer and defenses herein and paragraphs 1 through 8 of these counterclaims
as

if fully

set forth

herein.

'i

,

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 andlor

Il2.

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

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to 35 U.S.C. $ 285, as a result of, inter alia, Plaintiffls assertion of the '067 patent

against

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

'067 patentandlor that the '067 patent is invalid andlor 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 Complaint for patent infringement with prejudice;

A judgment declaring that each claim of the '067

patent

is invalid andlor

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':iriüucing inftingement of any valid and enforceable claim the '067

of

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 fuither relief as the Court deems just

'i.:'.

I

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

Dated: December 2I. 2007
j"

i

Respectfully submitted,

By:

/s/ David J. Beck Texas Bar No. 00000070 [e-mail] BgcK, RpooBtt & Secn¡sr, L.L.P. One Houston Center I22T McKinney St., Suite 4500 Houston, TX. 77010 (7,r3) 951-3700 (713) 9st-3720 (Fax)

Lpno Arronxnv Fon DnrBNo¡.Nr Goocln INc.
OF COUNSEL:

Michael E. Richardson Texas Bar No. 24002838 mrichardson@brs firm. com BECK, ReooeN & Spcn¡sr, L.L.P. One Houston Center l22l McKinney St., Suite 4500 Houston, Texas 77010 (713) gst-3700 (713) 9sI-3720 (Fax)
Charles K. Verhoeven, California Bar No. I70I5l charlesverho even@quinnemanuel. com Quinn Emanuel Urquhart Oliver & Hedges, LLP 50 California Street, 22nd Floor San Francisco, CA 94lll (41s) 87s-6600 (4ts) 87s-6700 (Fax)

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Brian C. Cannon California Bar No. 193071
bri ancannon@quinnemanuel. com

Quinn Emanuel Urquhart Oliver & Hedges, LLP 555 Twin Dolphin Drive, Suite 560 Redwood Shores, CA 94065 (6s0) 801-s000 (6s0) 801-5100 (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(aX3XA).

lsl

Michael E. Richardson

l0