Microunity Systems Engineering, Inc v. Acer Inc. et al

Filing 91

ANSWER to 1 Complaint,,,, COUNTERCLAIM against Microunity Systems Engineering, Inc by Motorola Inc.,.(Abraham, Amanda)

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION MICROUNITY SYSTEMS ENGINEERING, INC. Plaintiff, v. (l) ACER INC., a Republic of China corporation, (2) ACER AMERICA CORPORATION, a California corporation, (3) APPLE, INC., a California corporation, (4) AT&T INC., a Delaware corporation, (5) AT&T MOBILITY LLC, a Delaware limited liability company, (6) CELLCO PARTNERSHIP, a Delaware partnership, (7) EXEDEA, INC., a Texas corporation, (8) GOOGLE INC., a Delaware corporation, (9) HTC CORPORATION, a Republic of China corporation, (10) HTC AMERICA, INC., a Texas corporation, (11) LG Electronics, Inc., a Korean limited company, (12) LG Electronics Mobilecomm U.S.A., Inc., a California corporation, (13) MOTOROLA, INC., a Delaware corporation, (14) NOKIA CORPORATION a Finnish corporation, (15) NOKIA INC., a Delaware corporation, (16) PALM, [NIC., a Delaware corporation, (17) QUALCOMM INC., a Delaware corporation, (18) SAMSUNG ELECTRONICS CO., LTD., a Korean limited company, (19) SAMSUNG, SEMICONDUCTOR INC., a California corporation, (20) SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, a Delaware limited liability company, (21) SPRINT NEXTEL CORPORATION, a Kansas corporation, (21)TEXAS INSTRUMENTS INC., a Delaware corporation, Defendants. § § § § § § § § § § § § § § § § § § CIVIL ACTION NO: 2:10-cv-185 § § § § § § § § § § § § § § § § § §

DEFENDANT MOTOROLA, INC'S ANSWER AND COUNTERCLAIMS TO PLAINTIFF MICROUNITY SYSTEMS ENGINEERING, INC.'S COMPLAINT FOR PATENT INFRINGEMENT

Motorola's Answer and Counterclaims to MicroUnity's Complaint

Page 1 of 12

Plaintiff MicroUnity Systems Engineering, Inc.'s ("MicroUnity" or "Plaintiff") Complaint for Patent Infringement of as follows: 1. Motorola is without knowledge or information sufficient to form a belief as to THE PARTIES

Defendant Motorola, Inc. ("Motorola") hereby files its Answer and Counterclaims to

answer is required. Motorola is without knowledge or information sufficient to form a them. 3.

the truth of the allegations contained in paragraph 1 and, therefore, denies them. 2.

belief as to the truth of the allegations contained in paragraph 2 and, therefore, denies answer is required. Motorola is without knowledge or information sufficient to form a them. 4.

The allegations of paragraph 2 are not directed to Motorola, and therefore no

belief as to the truth of the allegations contained in paragraph 3 and, therefore, denies answer is required. Motorola is without knowledge or information sufficient to form a denies them. 5.

The allegations of paragraph 3 are not directed to Motorola, and therefore no

belief as to the truth of the allegations contained in paragraph 4 of the and, therefore, Delaware, that it has a principle place of business as specified in paragraph 5, and that cell remainder of the allegations in paragraph 5. Motorola admits that it is incorporated under the laws of the state of

The allegations of paragraph 4 are not directed to Motorola, and therefore no

phones such as the Droid are manufactured and sold by Motorola. Motorola denies the

Motorola's Answer and Counterclaims to MicroUnity's Complaint

Page 2 of 12

answer is required. Motorola is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 6, and therefore denies them. belief as to the truth of the allegations of paragraph 7, and therefore denies them. belief as to the truth of the allegations of paragraph 8, and therefore denies them. belief as to the truth of the allegations of paragraph 9, and therefore denies them. 10. 11. 12. 9. 8. 7. answer is required. Motorola is without knowledge or information sufficient to form a answer is required. Motorola is without knowledge or information sufficient to form a answer is required. Motorola is without knowledge or information sufficient to form a

6.

The allegations of paragraph 6 are not directed to Motorola, and therefore no The allegations of paragraph 7 are not directed to Motorola, and therefore no The allegations of paragraph 8 are not directed to Motorola, and therefore no The allegations of paragraph 9 are not directed to Motorola, and therefore no The allegations of paragraph 10 are not directed to Motorola, and therefore The allegations of paragraph 11 are not directed to Motorola, and therefore The allegations of paragraph 12 are not directed to Motorola, and therefore

no answer is required. Motorola is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 10, and therefore denies them. belief as to the truth of the allegations of paragraph 11, and therefore denies them. belief as to the truth of the allegations of paragraph 12, and therefore denies them. no answer is required. Motorola is without knowledge or information sufficient to form a no answer is required. Motorola is without knowledge or information sufficient to form a

Motorola's Answer and Counterclaims to MicroUnity's Complaint

Page 3 of 12

no answer is required. Motorola is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 13, and therefore denies them. belief as to the truth of the allegations of paragraph 14, and therefore denies them. belief as to the truth of the allegations of paragraph 15, and therefore denies them. belief as to the truth of the allegations of paragraph 16, and therefore denies them. 17. JURISDICTION AND VENUE 16. 15. 14. no answer is required. Motorola is without knowledge or information sufficient to form a no answer is required. Motorola is without knowledge or information sufficient to form a no answer is required. Motorola is without knowledge or information sufficient to form a

13.

The allegations of paragraph 13 are not directed to Motorola, and therefore The allegations of paragraph 14 are not directed to Motorola, and therefore The allegations of paragraph 15 are not directed to Motorola, and therefore The allegations of paragraph 16 are not directed to Motorola, and therefore

denies the remaining allegations contained in paragraph 17. 18.

respect to Motorola, admits that venue is proper under 28 U.S.C. §§ 1391(b)-(c). Motorola

Motorola admits that this Court has subject matter jurisdiction and, with

the truth of the allegations of paragraph 18, and therefore denies them. 19.

Motorola is without knowledge or information sufficient to form a belief as to Motorola admits that, on its face, Exhibit C appears to be United States Patent INFRINGEMENT OF U.S. PATENT NO. 5,742,840 C1

No. 5,742,840 C1 ("the `840 patent"), entitled "General Purpose, Multiple Precision Parallel Operation, Programmable Media Processor," issued on April 21, 1998 and assigned to
Motorola's Answer and Counterclaims to MicroUnity's Complaint Page 4 of 12

MicroUnity. Motorola is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations of paragraph 19, and therefore denies them. 20.

Certificate 5,742,840 C1 for the `840 patent issued in response to Reexamination Request amended; claims 2-6, 8, and 9 are dependent on an amended claim and are determined to be patentable; and claims 7-10 are cancelled. 21. Motorola is without knowledge or

No. 90/007,583, in which claim 11 is confirmed, claim 1 is determined to be patentable as information sufficient to form a belief as to the truth of the remaining allegations of paragraph 20, and therefore denies them. no answer is required. Motorola is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 21, and therefore denies them. 22. The allegations of paragraph 21 are not directed to Motorola, and therefore

Motorola admits that, on its face, Exhibit C1 appears to be Reexamination

22. The remaining allegations of paragraph 22 are not directed to Motorola, and therefore no answer is required. Motorola is without knowledge or information sufficient to form a therefore denies them. 23. 24. belief as to the truth of the allegations directed to other defendants of paragraph 22, and no answer is required. Motorola is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 23, and therefore denies them.

Motorola denies the allegations directed to Motorola contained in paragraph

The allegations of paragraph 23 are not directed to Motorola, and therefore Motorola denies the allegations directed to Motorola contained in paragraph

24. The remaining allegations of paragraph 24 are not directed to Motorola, and therefore
Motorola's Answer and Counterclaims to MicroUnity's Complaint

no answer is required. Motorola is without knowledge or information sufficient to form a

Page 5 of 12

belief as to the truth of the allegations directed to other defendants of paragraph 24, and therefore denies them. 25. 25. The remaining allegations of paragraph 25 are not directed to Motorola, and therefore no answer is required. Motorola is without knowledge or information sufficient to form a Motorola denies the allegations directed to Motorola contained in paragraph

belief as to the truth of the allegations directed to other defendants of paragraph 25, and therefore denies them. 26. INFRINGEMENT OF U.S. PATENT NO. 7,730,287 B2

No. 7,730,287 B2 ("the `287 patent"), entitled "Method and Software for Group FloatingPoint Arithmetic Operations," issued on June 1, 2010 and assigned to MicroUnity. Motorola is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations of paragraph 26, and therefore denies them. 27. no answer is required. Motorola is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 27, and therefore denies them. 28. 29. The allegations of paragraph 27 are not directed to Motorola, and therefore

Motorola admits that, on its face, Exhibit U appears to be United States Patent

no answer is required. Motorola is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 28, and therefore denies them. no answer is required. Motorola is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 29, and therefore denies them.
Motorola's Answer and Counterclaims to MicroUnity's Complaint

The allegations of paragraph 28 are not directed to Motorola, and therefore The allegations of paragraph 29 are not directed to Motorola, and therefore

Page 6 of 12

no answer is required. Motorola is without knowledge or information sufficient to form a no answer is required. Motorola is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 31, and therefore denies them. answer is required. 32. JURY DEMAND belief as to the truth of the allegations of paragraph 30, and therefore denies them. 31.

30.

The allegations of paragraph 30 are not directed to Motorola, and therefore

The allegations of paragraph 31 are not directed to Motorola, and therefore

Paragraph 32 does not contain any allegations of fact and therefore no PLAINTIFF'S PRAYER FOR RELIEF

Motorola denies that Plaintiff is entitled to any of requested relief against Motorola.

Motorola's Answer and Counterclaims to MicroUnity's Complaint

Page 7 of 12

amend its Answer to add additional Affirmative Defenses. herein. 33. 34.

Motorola's Affirmative Defenses are provided below. Motorola reserves the right to Motorola restates its responses as set forth above as if separately set forth Motorola has not and does not directly or indirectly (such as by inducement FIRST AFFIRMATIVE DEFENSE

AFFIRMATIVE DEFENSES

or contributory infringement) infringe any of the claims of U.S. Patent No. 5,742,840 C1 either literally or under the Doctrine of Equivalents. 35. 36. SECOND AFFIRMATIVE DEFENSE

herein

Motorola restates its responses as set forth above as if separately set forth

conditions of patentability as set forth in 35 U.S.C §§100, 101, 102, 103 and 112. herein. 37. 38. THIRD AFFIRMATIVE DEFENSE

U.S. Patent No. 5,742,840 C1 is invalid or void for failing to satisfy the Motorola restates its responses as set forth above as if separately set forth

5,742,840 C1 to be infringed literally or by the Doctrine of Equivalents by any act of disclosure or language of the specification or claims thereof.
Motorola's Answer and Counterclaims to MicroUnity's Complaint

Motorola due to the disclosures of prior art or to the admissions or statements made to the

MicroUnity is estopped from construing any valid claim of U.S. Patent No.

U.S. Patent and Trademark Office during prosecution of the patents in suit or because of the

Page 8 of 12

herein.

39.

actions actually infringed the Patents, Motorola is not liable to MicroUnity for the acts Patent No. 5,742,840 C1. herein. 41.

alleged to have been performed before Motorola received notice that it was infringing U.S. Motorola restates its responses as set forth above as if separately set forth FIFTH AFFIRMATIVE DEFENSE

products as required by 35 U.S.C. §287 or otherwise give proper notice that Motorola's

40.

Motorola restates its responses as set forth above as if separately set forth

FOURTH AFFIRMATIVE DEFENSE

To the extent that MicroUnity failed to properly mark any of its relevant

the acts alleged to have been performed before Motorola knew that its actions would cause the indirect infringement. herein. 43. 44. SIXTH AFFIRMATIVE DEFENSE

either by contributory infringement or inducement, Motorola is not liable to MicroUnity for

42.

To the extent that MicroUnity asserts that Motorola indirectly infringes,

Motorola restates its responses as set forth above as if separately set forth

to an entity having an express or implied license to U.S. Patent No. 5,742,840 C1.

allegedly infringing products are directly or indirectly provided to Motorola or by Motorola

MicroUnity's claims against Motorola are improper to the extent that any

Motorola's Answer and Counterclaims to MicroUnity's Complaint

Page 9 of 12

herein.

45. 46.

Motorola restates its responses as set forth above as if separately set forth

SEVENTH AFFIRMATIVE DEFENSE

remedies at law. herein. 47. 48.

injury to MicroUnity is neither immediate nor irreparable, and MicroUnity has adequate Motorola restates its responses as set forth above as if separately set forth EIGHTH AFFIRMATIVE DEFENSE

MicroUnity is not entitled to any injunctive relief as demanded because any

from obtaining damages from Motorola. 49.

MicroUnity is barred by the doctrine of laches and/or equitable estoppel Plaintiff has filed a prior lawsuit against Motorola alleging an identical claim NINTH AFFIRMATIVE DEFENSE

action. That case is now pending in this Court as Docket Number 2:10-cv-91-TJW; styled

causes of action in parallel proceedings. This action should therefore be dismissed, as these issues have already been joined in the earlier filed case. herein. 50. COUNTERCLAIMS

MicroUnity v. Acer et al. The Plaintiff may not simultaneously assert the same causes of

involving the '840 patent and accused devices as alleged against Motorola in this cause of

action in separate proceedings, and Motorola should not be required to defend the same

Motorola restates its responses as set forth above as if separately set forth

Motorola's Answer and Counterclaims to MicroUnity's Complaint

Page 10 of 12

infringement of any valid or enforceable claim of U.S. Patent No. 5,742,840 C1 and has not otherwise committed any acts in violation of 35 U.S.C. §271. 53. 54. 52. patentability as set forth in 35 U.S.C. §§100, 101, 102, 103 and 112.

51.

Motorola has not directly or indirectly infringed, contributed to or induced U.S. Patent No. 5,742,840 C1 is invalid for failing to meet the conditions for

the alleged infringement and validity of U.S. Patent No. 5,742,840 C1 by virtue of MicroUnity's complaint herein. patents are invalid. 55. 56.

An actual controversy exists between Motorola and MicroUnity concerning

5,742,840 C1 has not been and is not being infringed by Motorola and that the foregoing fees incurred in connection with this action pursuant to 35 U.S.C. §285. This is an exceptional case entitling Motorola to an award of its attorneys'

Motorola is entitled to judgment from this Court that U.S. Patent No.

amend its Answer and/or Counterclaims to assert any additional defenses or counterclaims that come to light upon further investigation and discovery. WHEREFORE Motorola prays that: 57. 58. PRAYER FOR RELIEF

Motorola continues to investigate this matter and reserves the right to

Patent No. 5,742,840 C1; 59.

the Court dismiss the Complaint against Motorola with prejudice; the Court declare that U.S. Patent No. 5,742,840 C1 is invalid;

the Court declare that Motorola has not infringed and does not infringe U.S.

Motorola's Answer and Counterclaims to MicroUnity's Complaint

Page 11 of 12

whatsoever against Motorola; and 61. 62.

60.

the Court declare that MicroUnity is not entitled to any remedy or relief

and all of its expenses for this suit because this is an exceptional case under 35 U.S.C. §285; proper.

the Court award Motorola its costs, together with reasonable attorneys fees the Court award Motorola such other relief as this Court may deem just and Respectfully submitted,

ATTORNEYS FOR DEFENDANT MOTOROLA, INC. The undersigned hereby certifies that all counsel of record who are deemed to have CERTIFICATE OF SERVICE

Carl Roth [e-mail] Brendan Roth [e-mail] Amanda Abraham [e-mail] ROTH LAW FIRM 115 N. Wellington, Suite 200 Marshall, TX 75670-3396 Telephone: [phone] Facsimile: [phone]

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) this 11th day of August, 2010. Any other counsel of record will be served by facsimile transmission and/or first class mail. ________________________________________________ AMANDA A. ABRAHAM

Motorola's Answer and Counterclaims to MicroUnity's Complaint

Page 12 of 12