Actus, LLC v. Bank of America Corp. et al

Filing 184

Western Union Financial Services, Inc.'s ANSWER to 174 Amended Complaint, COUNTERCLAIM against Actus, LLC by Western Union Financial Services Inc.(Bunt, Robert)

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION ACTUS, LLC, Plaintiff, v. BANK OF AMERICA CORP.; BLAZE MOBILE, INC.; CAPITAL ONE FINANCIAL CORP.; ENABLE HOLDINGS, INC.; GOOGLE, INC.; GREEN DOT CORP.; JAVIEN DIGITAL PAYMENT SOLUTIONS, INC.; JPMORGAN CHASE & CO.; MASTERCARD INTERNATIONAL INC.; META FINANCIAL GROUP, INC.; M&T BANK CORP.; OBOPAY, INC.; SONIC SOLUTIONS; VISA, INC.; VIVENDI UNIVERSAL U.S. HOLDING CO.; VIVENDI UNIVERSAL S.A.; WAL-MART STORES, INC.; DISNEY GIFT CARD SERVICES, INC.; WESTERN UNION FINANCIAL SERVICES, INC., Defendants.

CIVIL ACTION NO.: 2:09-cv-102-TJW JURY TRIAL DEMANDED

DEFENDANT WESTERN UNION FINANCIAL SERVICES, INC.'S ANSWER AND COUNTERCLAIMS TO PLAINTIFF'S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT

Defendant Western Union Financial Services, Inc. ("Western Union") submits the following Answer and Counterclaim to the Second Amended Complaint for Patent Infringement filed by Actus, LLC ("Actus"). 1. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 1 and therefore denies the allegations. PARTIES 2. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 2 and therefore denies the allegations. 3. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 3 and therefore denies the allegations. 4. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 4 and therefore denies the allegations. 5. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 5 and therefore denies the allegations. 6. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 6 and therefore denies the allegations. 7. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 7 and therefore denies the allegations. 8. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 8 and therefore denies the allegations.

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9.

Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 9 and therefore denies the allegations. 10. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 10 and therefore denies the allegations. 11. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 11 and therefore denies the allegations. 12. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 12 and therefore denies the allegations. 13. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 13 and therefore denies the allegations. 14. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 14 and therefore denies the allegations. 15. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 15 and therefore denies the allegations. 16. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 16 and therefore denies the allegations. 17. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 17 and therefore denies the allegations. 18. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 18 and therefore denies the allegations. 2

19.

Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 19 and therefore denies the allegations. 20. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 20 and therefore denies the allegations. 21. Western Union admits the allegations contained in paragraph 21. JURISDICTION AND VENUE 22. Western Union admits that Plaintiff has brought an action arising under the patent

laws of the United States, and jurisdiction for patent infringement is provided for under 28 U.S.C. §§ 1331 and 1338(a). Western Union denies any remaining allegations in paragraph 22. 23. Western Union admits that venue may be proper in this Court under the

provisions of 28 U.S.C. §§ 1391 and 1400(b) if Plaintiff has sufficiently alleged a patent infringement cause of action. Western Union denies any remaining allegations in paragraph 23. 24. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 24 and therefore denies the allegations. 25. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 25 and therefore denies the allegations. 26. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 26 and therefore denies the allegations. 27. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 27 and therefore denies the allegations.

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28.

Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 28 and therefore denies the allegations. 29. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 29 and therefore denies the allegations. 30. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 30 and therefore denies the allegations. 31. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 31 and therefore denies the allegations. 32. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 32 and therefore denies the allegations. 33. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 33 and therefore denies the allegations. 34. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 34 and therefore denies the allegations. 35. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 35 and therefore denies the allegations. 36. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 36 and therefore denies the allegations. 37. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 37 and therefore denies the allegations. 4

38.

Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 38 and therefore denies the allegations. 39. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 39 and therefore denies the allegations. 40. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 40 and therefore denies the allegations. 41. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 41 and therefore denies the allegations. 42. Western Union admits it is subject to personal jurisdiction in Texas for the

purposes of this particular case and only in view of the facts and allegations of this particular case. Western Union denies any remaining allegations in paragraph 42. COUNT I ALLEGED INFRINGEMENT OF U.S. PATENT NO. 7,328,189 43. Western Union admits that United States Patent No. 7,328,189 ("the '189 patent)

recites on its face that it was issued on February 5, 2008, and is titled "Method and Apparatus for Conducting Electronic Commerce Transactions Using Electronic Tokens." Western Union lacks sufficient information or knowledge to form a belief as to the truth of the remaining allegations contained in paragraph 43 and therefore denies the allegations. 44. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 44 and therefore denies the allegations.

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45.

Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 45 and therefore denies the allegations. 46. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 46 and therefore denies the allegations. 47. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 47 and therefore denies the allegations. 48. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 48 and therefore denies the allegations. 49. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 49 and therefore denies the allegations. 50. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 50 and therefore denies the allegations. 51. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 51 and therefore denies the allegations. 52. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 52 and therefore denies the allegations. 53. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 53 and therefore denies the allegations. 54. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 54 and therefore denies the allegations. 6

55.

Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 55 and therefore denies the allegations. 56. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 56 and therefore denies the allegations. 57. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 57 and therefore denies the allegations. 58. Western Union denies the allegations contained in paragraph 58. COUNT II ALLEGED INFRINGEMENT OF U.S. PATENT NO. 7,249,099 59. Western Union admits that United States Patent No. 7,249,099 ("the '099 patent)

recites on its face that it was issued on July 24, 2007, and is titled "Method and Apparatus for Conducting Electronic Commerce Transactions Using Electronic Tokens." Western Union lacks sufficient information or knowledge to form a belief as to the truth of the remaining allegations contained in paragraph 59 and therefore denies the allegations. 60. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 60 and therefore denies the allegations. 61. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 61 and therefore denies the allegations. 62. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 62 and therefore denies the allegations.

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63.

Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 63 and therefore denies the allegations. 64. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 64 and therefore denies the allegations. 65. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 65 and therefore denies the allegations. 66. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 66 and therefore denies the allegations. 67. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 67 and therefore denies the allegations. 68. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 68 and therefore denies the allegations. 69. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 69 and therefore denies the allegations. 70. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 70 and therefore denies the allegations. 71. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 71 and therefore denies the allegations. 72. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 72 and therefore denies the allegations. 8

73.

Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 73 and therefore denies the allegations. 74. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 74 and therefore denies the allegations. 75. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 75 and therefore denies the allegations. 76. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 76 and therefore denies the allegations. 77. Western Union denies the allegations contained in paragraph 77. COUNT III ALLEGED INFRINGEMENT OF U.S. PATENT NO. 7,177,838 78. Western Union admits that United States Patent No. 7,177,838 ("the '838 patent)

recites on its face that it was issued on February 13, 2007, and is titled "Method and Apparatus for Conducting Electronic Commerce Transactions Using Electronic Tokens." Western Union lacks sufficient information or knowledge to form a belief as to the truth of the remaining allegations contained in paragraph 78 and therefore denies the allegations. 79. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 79 and therefore denies the allegations. 80. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 80 and therefore denies the allegations.

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81.

Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 81 and therefore denies the allegations. 82. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 82 and therefore denies the allegations. 83. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 83 and therefore denies the allegations. 84. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 84 and therefore denies the allegations. 85. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 85 and therefore denies the allegations. 86. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 86 and therefore denies the allegations. 87. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 87 and therefore denies the allegations. COUNT IV ALLEGED INFRINGEMENT OF U.S. PATENT NO. 7,376,621 88. Western Union admits that United States Patent No. 7,376,621 ("the '621 patent)

recites on its face that it was issued on May 20, 2008, and is titled "Method and Apparatus for Conducting Electronic Commerce Transactions Using Electronic Tokens." Western Union lacks

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sufficient information or knowledge to form a belief as to the truth of the remaining allegations contained in paragraph 88 and therefore denies the allegations. 89. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 89 and therefore denies the allegations. 90. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 90 and therefore denies the allegations. 91. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 91 and therefore denies the allegations. 92. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 92 and therefore denies the allegations. 93. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 93 and therefore denies the allegations. 94. Western Union lacks sufficient information or knowledge to form a belief as to

the truth of the allegations contained in paragraph 94 and therefore denies the allegations. RESPONSE TO PRAYER FOR RELIEF Paragraphs 1-15 of the Complaint's Prayer for Relief are a request for relief and, as such, do not require an admission or denial. Nevertheless, Western Union denies that Actus is entitled to the requested relief with respect to Western Union. Western Union lacks knowledge or information sufficient to form a belief as to whether Actus is entitled to the request relief with

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respect to the other defendants. Western Union denies the remaining allegations, if any, contained in paragraphs 1-15 of the Complaint's Prayer for Relief. DEFENSES In addition to the defenses alleged herein, Western Union reserves the right to allege additional defenses as they become known during the course of discovery. FIRST DEFENSE (Noninfringement) 95. Western Union has not infringed and does not infringe either directly,

contributorily, or by inducement any valid and enforceable claim of the `189 patent, either literally or under the doctrine of equivalents. 96. Western Union has not infringed and does not infringe either directly,

contributorily, or by inducement any valid and enforceable claim of the `099 patent, either literally or under the doctrine of equivalents. SECOND DEFENSE (Invalidity) 97. The claims of the `189 patent are invalid for failure to comply with one or more

requirements of 35 U.S.C. § 101 et seq., including without limitation, §§ 101, 102, 103 and/or 112. 98. The claims of the `099 patent are invalid for failure to comply with one or more

requirements of 35 U.S.C. § 101 et seq., including without limitation, §§ 101, 102, 103 and/or 112.

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THIRD DEFENSE (Estoppel/Laches/Waiver) 99. One or more of Actus' claims are barred, in whole or in part, by the doctrines of

estoppel, laches, and/or waiver. FOURTH DEFENSE (Lack of Joinder) 100. One or more of Actus' claims is barred, in whole or in part, by its failure to join

one or more necessary and/or indispensable parties. FIFTH DEFENSE (Limitation on Remedies) 101. Upon information and belief, Actus is precluded under 35 U.S.C. § 287 from

recovering damages for any alleged infringement of the `189 patent that occurred prior to Plaintiff providing Western Union with actual and specific notice of alleged infringement. 102. Upon information and belief, Actus is precluded under 35 U.S.C. § 287 from

recovering damages for any alleged infringement of the `099 patent that occurred prior to Plaintiff providing Western Union with actual and specific notice of alleged infringement. 103. Plaintiff is not entitled to injunctive relief because any injury to Plaintiff is not

immediate or irreparable, and Plaintiff has an adequate remedy at law. SIXTH DEFENSE (Standing) 104. Upon information and belief, Plaintiff lacks standing to bring a cause of action for

patent infringement as to the asserted patents.

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COUNTERCLAIMS For its counterclaim against Actus, Western Union alleges as follows: PARTIES 1. Counterclaimant Western Union Financial Services, Inc. ("Western Union") is a

Colorado corporation with its principal place of business at 12500 Belford Ave., Englewood, CO 80112. 2. Upon information and belief, counterclaim-defendant Actus is a Texas limited

liability company with its principal place of business at 201 W. Houston, Marshall, Texas 75670. JURISDICTION AND VENUE 3. This action arises under the Patent Laws of the United States, 35 U.S.C. § 101 et

seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq. This Court has jurisdiction over the subject matter of this action pursuant to 28 U.S.C. §§ 1331 and 1338(a). 4. This Court has personal jurisdiction over Actus and venue is proper in this Court

because this is the Court in which Actus instituted this action. Venue is also proper in this district pursuant to 28 U.S.C. § 1391(b) and (c). FIRST COUNTERCLAIM Declaratory Judgment of Noninfringement of U.S. Patent No. 7,328,189 5. Western Union incorporates by reference each and every allegation contained in

the preceding paragraphs.

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6.

In its Complaint, Actus alleges that Western Union infringes the `189 patent.

Western Union has not infringed and does not infringe either directly, contributorily, or by inducement any valid and enforceable claim of the `189 patent, either literally or under the doctrine of equivalents. 7. An actual and justiciable controversy requiring declaratory relief exists between

Actus and Western Union as evidenced by Actus' filing of the Complaint alleging infringement of the `189 patent by Western Union. SECOND COUNTERCLAIM (Declaratory Judgment of Noninfringement of U.S. Patent No. 7,249,099) 8. Western Union incorporates by reference each and every allegation contained in

the preceding paragraphs. 9. In its Complaint, Actus alleges that Western Union infringes the `099 patent.

Western Union has not infringed and does not infringe either directly, contributorily, or by inducement any valid and enforceable claim of the `099 patent, either literally or under the doctrine of equivalents. 10. An actual and justiciable controversy requiring declaratory relief exists between

Actus and Western Union as evidenced by Actus' filing of the Complaint alleging infringement of the `099 patent by Western Union. THIRD COUNTERCLAIM (Declaratory Judgment of Invalidity of U.S. Patent No. 7,328,189) 11. Western Union incorporates by reference each and every allegation contained in

the preceding paragraphs.

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12. 13.

By its allegations of infringement, Actus has asserted that the `189 patent is valid. The claims of the `189 patent are invalid for failure to comply with one or more

requirements of 35 U.S.C. § 101 et seq., including without limitation, §§ 101, 102, 103 and/or 112. 14. An actual and justiciable controversy requiring declaratory relief exists between

Actus and Western Union as evidenced by Actus' filing of the Complaint alleging infringement of the `189 patent by Western Union. FOURTH COUNTERCLAIM (Declaratory Judgment of Invalidity of U.S. Patent No. 7,249,099) 15. Western Union incorporates by reference each and every allegation contained in

the preceding paragraphs. 16. 17. By its allegations of infringement, Actus has asserted that the `099 patent is valid. The claims of the `099 patent are invalid for failure to comply with one or more

requirements of 35 U.S.C. § 101 et seq., including without limitation, §§ 101, 102, 103 and/or 112. 18. An actual and justiciable controversy requiring declaratory relief exists between

Actus and Western Union as evidenced by Actus' filing of the Complaint alleging infringement of the `099 patent by Western Union. PRAYER FOR RELIEF WHEREFORE, Western Union prays for an order entering judgment as follows:

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A.

Denying all claims for relief set forth in the Complaint and entering judgment in

favor of Western Union and against Actus on all claims; B. Declaring that Western Union has not infringed and is not infringing directly, or

indirectly by way of inducing or contributing to infringement of any valid and/or enforceable claim of the `189 patent; C. Declaring that Western Union has not infringed and is not infringing directly, or

indirectly by way of inducing or contributing to infringement of any valid and/or enforceable claim of the `099 patent; D. E. F. G. H. Declaring each claim of the `189 patent to be invalid; Declaring each claim of the `099 patent to be invalid; Declaring that this case is exceptional pursuant to 35 U.S.C. § 285; Awarding Western Union its attorneys' fees and costs in this matter; Awarding such other and further relief as the Court deems proper and just. JURY TRIAL DEMANDED Western Union hereby demands a trial by jury on all issues so triable.

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Respectfully submitted, DATE: September 8, 2009 By: /s/ Robert Christopher Bunt Robert Christopher Bunt State Bar No. 00787165 Parker, Bunt & Ainsworth, PC 100 East Ferguson, Suite 1114 Tyler, Texas 75702 [phone] [phone] (fax) [e-mail] ATTORNEYS FOR DEFENDANT WESTERN UNION FINANCIAL SERVICES, INC.

OF COUNSEL: David E. Sipiora (Lead Attorney) CO Bar No. 29759 Scott L. McMillan CO Bar No. 40596 TOWNSEND AND TOWNSEND AND CREW LLP 1400 Wewatta St., Suite 600 Denver, CO 80202 [phone] [phone] (fax) [e-mail] [e-mail]

CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3). All others not deemed to have consented to electronic service were served with a true and correct copy of the foregoing pursuant to Local Rule CV-5(d) via email or facsimile transmission, or by first class mail this 8th day of September 2009. /s/ Robert Christopher Bunt ROBERT CHRISTOPHER BUNT
62055934 v4

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