Vertical Computer Systems, Inc. v. Interwoven, Inc. et al

Filing 42

ANSWER to 1 Complaint, by LG Electronics Inc, LG Electronics Mobilecomm USA Inc.(Healey, David)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
VERTICAL COMPUTER SYSTEMS, INC.
Plaintiff,
v.

CIVIL ACTION NO. 2:10-cv-490

INTERWOVEN, INC., LG ELECTRONICS
MOBILECOMM U.S.A., INC., LG
ELECTRONICS INC., SAMSUNG
ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC.,

(Eastern District of Texas)
JURY TRIAL DEMANDED

Defendants.

LGE’S ANSWER TO
VERTICAL’S ORIGINAL COMPLAINT
Defendants LG Electronics Mobilecomm U.S.A., Inc. and LG Electronics Inc.
(collectively “LGE”) file this Answer and Defenses to Plaintiff Vertical Computer Systems,
Inc.’s (“Vertical”) Complaint. LGE denies the allegations and characterizations in Vertical’s
Complaint unless expressly admitted in the following paragraphs.

PARTIES
1.

LGE lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 1 of the Complaint, and therefore denies them.
2.

Paragraph 2 does not require a response by LGE. To the extent a response is

deemed required, LGE lacks knowledge or information sufficient to form a belief as to the truth
of the allegations contained in Paragraph 2 of the Complaint, and therefore denies them.
3.

LGE admits that LG Electronics Mobilecomm U.S.A., Inc. is a California

corporation. LGE admits that LG Electronics Mobilecomm U.S.A., Inc. has a principal place of
business in San Diego, CA 92131. LGE admits that LG Electronics Mobilecomm U.S.A., Inc.
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may be served with process through its registered agent, Alan K. Tse, 10101 Old Grove Road,
San Diego, CA 92131.
4.

LGE admits that LG Electronics, Inc. is a company organized and existing under

the laws of Republic of Korea. LGE admits that LG Electronics, Inc. has a principal place of
business in Seoul, Republic of Korea.
5.

Paragraph 5 does not require a response by LGE. To the extent a response is

deemed required, LGE lacks knowledge or information sufficient to form a belief as to the truth
of the allegations contained in Paragraph 5 of the Complaint, and therefore denies them.
6.

Paragraph 6 does not require a response by LGE. To the extent a response is

deemed required, LGE lacks knowledge or information sufficient to form a belief as to the truth
of the allegations contained in Paragraph 6 of the Complaint, and therefore denies them.

JURISDICTION AND VENUE
7.

LGE admits that Vertical’s Complaint purports to state claims of patent

infringement that arise under the patent laws of the United States, 35 U.S.C. §§ 101 et seq. LGE
admits that this Court has subject matter jurisdiction over the subject matter of this action under
28 U.S.C. §§ 1331 and 1338(a).
8.

Paragraph 8 does not require a response by LGE. To the extent a response is

deemed required, LGE lacks knowledge or information sufficient to form a belief as to the truth
of the allegations contained in Paragraph 8 of the Complaint, and therefore denies them.
9.

LGE admits that venue will lie in this district under 28 U.S.C. § 1391. LGE

denies that this district is more convenient for the witnesses or parties than another district and
denies that the interests of justice are served by the continued prosecution of this case in this

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district. Except as expressly admitted herein, LGE denies each and every allegation of Paragraph
9 of the Complaint.
10.

Paragraph 10 does not require a response by LGE. To the extent a response is

deemed required, LGE lacks knowledge or information sufficient to form a belief as to the truth
of the allegations contained in Paragraph 10 of the Complaint, and therefore denies them.

PURPORTED PATENT INFRINGEMENT
11.

LGE admits that U.S. Patent No. 6,826,744 (“the ’744 patent”) states on its face

that (a) it is entitled “System and Method for Generating Web Sites in an Arbitrary Object
Framework”; and (b) it was issued on November 30, 2004. LGE denies that the ’744 patent was
duly and legally issued. Except as expressly admitted in this paragraph, LGE lacks knowledge
sufficient to confirm or deny the remaining allegations of Paragraph 11 of the Complaint, and
therefore denies them.
12.

LGE admits that U.S. Patent No. 7,716,629 (“the ’629 patent”) states on its face

that (a) it is entitled “System and Method for Generating Web Sites in an Arbitrary Object
Framework”; and (b) it was issued on May 11, 2010. LGE denies that the ’629 patent was duly
and legally issued. Except as expressly admitted in this paragraph, LGE lacks knowledge
sufficient to confirm or deny the remaining allegations of Paragraph 12 of the Complaint, and
therefore denies them.
13.

LGE lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 13 of the Complaint, and therefore denies them.
14.

Paragraph 14 does not require a response by LGE. To the extent a response is

deemed required, LGE lacks knowledge or information sufficient to form a belief as to the truth
of the allegations contained in Paragraph 14 of the Complaint, and therefore denies them.
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15.

As to the allegations concerning LGE only, LGE denies the allegations of

Paragraph 15 of the Complaint. LGE lacks knowledge or information sufficient to form a belief
as to the truth of the remaining allegations contained in Paragraph 15 of the Complaint not
concerning LGE, and therefore denies them.

PURPORTED STATUTORY NOTICE
16.

LGE lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 16 of the Complaint, and therefore denies them.

PURPORTED WILLFUL INFRINGEMENT
17.

Paragraph 17 does not require a response by LGE. To the extent a response is

deemed required, LGE lacks knowledge or information sufficient to form a belief as to the truth
of the allegations contained in Paragraph 17 of the Complaint, and therefore denies them.
18.

Paragraph 18 does not require a response by LGE. To the extent a response is

deemed required, LGE lacks knowledge or information sufficient to form a belief as to the truth
of the allegations contained in Paragraph 18 of the Complaint, and therefore denies them.
19.

Paragraph 19 does not require a response by LGE. To the extent a response is

deemed required, LGE lacks knowledge or information sufficient to form a belief as to the truth
of the allegations contained in Paragraph 19 of the Complaint, and therefore denies them.
20.

Paragraph 20 does not require a response by LGE. To the extent a response is

deemed required, LGE lacks knowledge or information sufficient to form a belief as to the truth
of the allegations contained in Paragraph 20 of the Complaint, and therefore denies them.

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PURPORTED RELIEF
21.

As to the allegations concerning LGE only, LGE denies the allegations of

Paragraph 21 of the Complaint. LGE lacks knowledge or information sufficient to form a belief
as to the truth of the remaining allegations contained in Paragraph 21 of the Complaint not
concerning LGE, and therefore denies them.
22.

As to the allegations concerning LGE only, LGE denies the allegations of

Paragraph 22 of the Complaint. LGE lacks knowledge or information sufficient to form a belief
as to the truth of the remaining allegations contained in Paragraph 22 of the Complaint not
concerning LGE, and therefore denies them.

JURY DEMAND
23.

To the extent that a response is required, LGE admits that Vertical’s Complaint

contains a request for a jury trial.

RESPONSE TO VERTICAL’S PRAYER FOR RELIEF
24.

LGE requests that the Court deny all relief to Vertical, including that requested by

Vertical in its Prayer for Relief.

AFFIRMATIVE DEFENSES
25.

Pursuant to Federal Rule of Civil Procedure 8(c), and without conceding that LGE

must necessarily plead any of the following as an affirmative defense or that LGE necessarily
bears the burden of persuasion for any of the following, LGE asserts the following defenses to
Vertical’s Complaint. LGE reserves the right to amend its Answer to add additional Affirmative
Defenses consistent with the facts discovered in this case.

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FIRST AFFIRMATIVE DEFENSE
(Failure to State a Claim)
26.

Vertical’s Complaint fails to state a claim upon which relief can be granted.
SECOND AFFIRMATIVE DEFENSE
(Non-Infringement)

27.

LGE does not infringe and has not infringed under any theory (including directly

(whether individual or jointly) or indirectly (whether contributorily, or by inducement)), any
claim of the ’744 and ’629 patents (collectively, the “Asserted Patents”), either literally or under
the doctrine of equivalents.
THIRD AFFIRMATIVE DEFENSE
(Invalidity)
28.

The claims of the Asserted Patents are invalid, unenforceable, and/or void for

failure to comply with one or more requirements of the Patent Laws of the United States, 35
U.S.C. § 100, et seq., including without limitation §§ 101, 102, 103, 112 and/or 116.
FOURTH AFFIRMATIVE DEFENSE
(Laches, Waiver, Acquiescence, Estoppel, and/or Statute of Limitations)
29.

Laches, waiver, acquiescence, estoppel, and/or 35 U.S.C. § 286 bar Vertical’s

remedies under the Asserted Patents.
FIFTH AFFIRMATIVE DEFENSE
(Notice, Damages, and Costs)
30.

35 U.S.C. § 286 and/or § 287 limit Vertical’s claims for relief and alleged

damages.
31.

35 U.S.C. § 288 bars Vertical from recovering costs in connection with this

action.

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SIXTH AFFIRMATIVE DEFENSE
(Claim Construction Estoppel)
32.

Vertical is estopped from construing the claims of the Asserted Patents to cover

any LGE product because representations, omissions, and/or concessions made during
prosecution of the Asserted Patents, and/or related U.S. or foreign patents and patent
applications, limit the scope of the claims of the Asserted Patents.
SEVENTH AFFIRMATIVE DEFENSE
(Prosecution History Estoppel)
33.

Prosecution history estoppel bars Vertical from asserting infringement of claims

of the Asserted Patents under the doctrine of equivalents and from adopting claim construction
positions contrary to statements and amendments made during prosecution of the Asserted
Patents and/or related U.S. or foreign patents and patent applications.
EIGTH AFFIRMATIVE DEFENSE
(Inequitable Conduct)
34.

LGE alleges that each of the Asserted Patents is unenforceable by reason of the

Applicant’s inequitable conduct during their respective prosecutions. The basis for this
allegation is detailed in the following paragraphs. In summary, during the pendency of the
parent application, the ’744 patent, inventor Aubrey McAuley failed to disclose material prior art
that Mr. McAuley was aware of. Additionally, during the pendency of the child application, the
’629 patent, Vertical, inventor Aubrey McAuley, and Vertical’s counsel did not disclose all
material prior art it obtained during Vertical’s patent litigation with Microsoft Corporation
concerning the parent patent, the ’744 patent.
The ’744 Patent: WebOS Technology
35.

The claims of the ’744 patent are unenforceable as a result of inequitable conduct

before the United States Patent and Trademark Office (“PTO”). One or more of the people
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substantively involved in the prosecution of the application leading to the ’744 patent, including
inventor Aubrey McAuley, were aware of information material to the patentability of the ’744
patent, but withheld that information from the PTO with the intent to deceive, and made false
and misleading statements to the PTO during the prosecution of the ’744 patent, as set forth
herein.
36.

Aubrey McAuley, the named inventor of the ’744 patent, was a founder and

president of Adhesive Media, Inc. (“Adhesive”).
37.

On information and belief, Adhesive offered for sale and sold software products

and/or services based on its “WebOS” technology more than one year before October 1, 1999,
the filing date of the application leading to the ’744 patent. Those software products and/or
services included Adhesive’s “NewsFlash” product, as well as a number of websites that
Adhesive designed for particular customers, purportedly using Adhesive’s WebOS technology.
38.

On information and belief, Adhesive also published information relating to its

software products and/or services based on its “WebOS” technology more than one year before
October 1, 1999. For example, more than one year before October 1, 1999, Adhesive posted on
the Internet a diagram of the Web Object Management Facility of its WebOS technology, which
is attached hereto as Exhibit A.
39.

Exhibit A is nearly identical to Figure 5 of the ’744 patent.

40.

The specification of the ’744 patent describes Figure 5 as an alleged embodiment

of “the present invention.” See ’744 patent at 5:3-17.
41.

Therefore, Adhesive’s commercial offer for sale and sale of products and services

based on its WebOS technology, and Adhesive’s publication of information relating to its

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WebOS technology, all of which occurred more than one year before October 1, 1999, constitute
material prior art.
42.

Upon information and belief, prior to issuance of the ’744 patent, Mr. McAuley

had knowledge of Adhesive’s offer for sale and sale of its WebOS technology and Adhesive’s
publication of information relating to its WebOS technology.
43.

None of the persons involved in the prosecution of the ’744 patent, including but

not limited to Mr. McAuley, disclosed to the PTO Adhesive’s offer for sale or sale of its WebOS
technology or the publication of information relating to its WebOS technology.
44.

Information regarding Adhesive’s offer for sale and sale of WebOS technology,

and publications relating thereto, was withheld from the PTO with intent to deceive.
45.

This withholding of information material to patentability with intent to deceive

the PTO constitutes inequitable conduct, which renders the ’744 patent unenforceable.
The ’629 Patent
46.

The claims of the ’629 patent are unenforceable as a result of inequitable conduct

before the PTO. On information and belief, one or more of the people substantively involved in
the prosecution of the application leading to the ’629 patent, including inventor Aubrey McAuley
and patent agent Jack D. Stone Jr., were aware of information material to the patentability of the
’629 patent, but withheld that information from the PTO with the intent to deceive, and made
false and misleading statements to the PTO during the prosecution of the ’629 patent, as set forth
herein.
47.

During the prosecution of the ’629 patent, Vertical initiated a patent infringement

suit against Microsoft Corporation in the Eastern District of Texas, Civil Action No. 2:07-CV144 (“the Microsoft litigation”), alleging infringement of the ’744 patent.
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48.

During the course of the Microsoft litigation, material information regarding the

patentability of the ’744 patent was disclosed by Microsoft to Vertical and Vertical’s attorneys.
For example, Microsoft raised inequitable conduct allegations regarding the ’744 patent in its
Answer to Vertical’s complaint, Microsoft served invalidity contentions explaining how
numerous prior art references anticipated and/or rendered obvious the claims of the ’744 patent,
Microsoft produced copies of the underlying prior art references, and Microsoft filed a claim
construction brief arguing that numerous claims of the ’744 patent were invalid under 35 U.S.C.
§ 112.

However, this material information was not properly disclosed to the PTO during the

prosecution of the ’629 patent.
49.

Because the application leading to the ’629 patent is a continuation of the ’744

patent, and because the claims and specifications of the ’629 and ’744 patents are substantially
similar, Microsoft’s inequitable conduct allegations, invalidity contentions and arguments, and
the invalidating prior art references it produced in the Microsoft litigation are also material to the
patentability of the ’629 patent.
The ’629 Patent: Microsoft’s Inequitable Conduct Allegations
50.

On July 13, 2007, Microsoft filed its Answer, Affirmative Defenses, and

Counterclaims (“Microsoft’s Answer”) in the Microsoft litigation. Microsoft alleged that the
’744 patent was unenforceable due to the inequitable conduct of Mr. McAuley in failing to
disclose material information to the PTO. In particular, Microsoft alleged that Mr. McAuley,
with intent to deceive, failed to disclose Adhesive’s offer for sale and sale of products and
services based on Adhesive’s WebOS technology, and publications relating thereto, more than
one year prior to October 1, 1999.

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51.

Microsoft’s inequitable conduct allegations disclose critical information expressly

challenging the validity and enforceability of the related ’744 patent, and thus constitute material
prior art.
52.

None of the persons involved in the prosecution of the ’629 patent, including Mr.

McAuley and Mr. Stone, disclosed to the PTO either Microsoft’s Answer or the existence or
substance of Microsoft’s inequitable conduct allegations.
53.

Further, during prosecution of the ’629 patent, the applicant disclosed certain

prior art documents relating to Adhesive’s prior art WebOS technology relied on by Microsoft
during the Microsoft litigation, but failed to disclose the critical facts that Mr. McAuley was the
founder and president of Adhesive and other information indicating that the WebOS technology
qualified as prior art under 35 U.S.C. § 102(b).
54.

The knowledge that Mr. McAuley is both a named inventor of the ’629 patent and

the founder and president of Adhesive, as well as the date of the WebOS materials, is essential
for the PTO to fully understand the relevance and applicability of Adhesive’s prior art WebOS
technology.
55.

During prosecution of the ’629 patent, the applicant selectively disclosed to the

PTO only certain information and prior art materials from the Microsoft litigation.
56.

The selective disclosure to the PTO of information arising out of the Microsoft

litigation demonstrates that Mr. McAuley and Mr. Stone were aware of the Microsoft litigation
and the existence of material regarding the patentability of the ’629 patent information arising
out of that litigation.

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57.

This selective disclosure to the PTO also demonstrates that Mr. McAuley and Mr.

Stone made a deliberate decision to withhold material information from the PTO, and thus
demonstrates an intent to deceive.
58.

The withholding of information material to patentability with intent to deceive

constitutes inequitable conduct, which renders the ’629 patent unenforceable.
The ’629 Patent: Microsoft’s Invalidity Contentions and Claim Construction Brief
59.

On January 18, 2008, Microsoft served its Invalidity Contentions in the Microsoft

litigation.
60.

Microsoft’s Invalidity Contentions identified 58 prior art references that

anticipated and/or rendered obvious claims 1-5, 9, 11, 17-19, 21, 23, 25-29, 33, 39-41, 43, 45,
and 47-48 of the ’744 patent and provided over 50 pages of narrative analysis of how the
identified prior art anticipated and/or rendered obvious the asserted claims. The Invalidity
Contentions also included over 250 pages of claim charts mapping the prior art references to
each limitation of the asserted claims. Further, the Invalidity Contentions include an analysis of
the ’744 patent’s invalidity based on lack of enablement, lack of written description, and
indefiniteness.
61.

On July 18, 2008, Microsoft served its First Amended Invalidity Contentions in

the Microsoft litigation.
62.

Microsoft’s First Amended Invalidity Contentions added three prior art references

to Microsoft’s prior Invalidity Contentions, identifying a total of 61 prior art references that
anticipated and/or rendered obvious claims 1-5, 9, 11, 17-19, 21, 23, 25-29, 33, 39-41, 43, 45,
47-48, and 53 of the ’744 patent. As with the initial Invalidity Contentions, Microsoft First
Amended Invalidity Contentions provided over 50 pages of narrative analysis of how the
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identified prior art anticipated and/or rendered obvious the asserted claims and included over 250
pages of claim charts mapping the prior art references to each limitations of the asserted claims.
Further, the First Amended Invalidity Contentions include an analysis of the ’744 patent’s
invalidity based on lack of enablement, lack of written description, and indefiniteness.
63.

On June 6, 2008, Microsoft filed its Claim Construction Brief in the Microsoft

litigation.
64.

Microsoft argued in its Claim Construction Brief that the term “arbitrary object

framework” is fatally indefinite.
65.

The term “arbitrary object framework” is found in all independent claims of both

the ’744 and ’629 patents, making Microsoft’s indefiniteness argument material to the
patentability of the ’629 patent.
66.

Microsoft’s Invalidity Contentions, First Amended Invalidity Contentions, and

Claim Construction Brief disclose critical information expressly challenging the validity of the
related ’744 patent, and thus constitute material prior art.
67.

None of the persons involved in the prosecution of the ’629 patent, including Mr.

McAuley and Mr. Stone, disclosed to the PTO Microsoft’s Invalidity Contentions, First
Amended Invalidity Contentions, or Claim Construction Brief. Further, none of the persons
involved in the prosecution of the ’629 patent, including Mr. McAuley and Mr. Stone, disclosed
to the PTO the existence of Microsoft’s Invalidity Contentions, First Amended Invalidity
Contentions, or Claim Construction Brief or the substance of the invalidity arguments set forth
therein.
68.

Only some prior art references relied on during the Microsoft litigation were

selectively disclosed to the PTO during prosecution of the ’629 patent.

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69.

The selective disclosure to the PTO of information arising out of the Microsoft

litigation demonstrates that Mr. McAuley and Mr. Stone were aware of the Microsoft litigation
and the existence of material information regarding the patentability of the ’629 patent arising
out of that litigation.
70.

This selective disclosure to the PTO also demonstrates that Mr. McAuley and Mr.

Stone made a deliberate decision to withhold material information from the PTO, and thus
demonstrates an intent to deceive.
71.

The withholding of information material to patentability with intent to deceive

constitutes inequitable conduct, which renders the ’629 patent unenforceable.
’629 Patent: Prior Art References Produced by Microsoft
72.

In an Information Disclosure Statement, the ’629 patent applicant disclosed to the

PTO 24 of the 61 prior art references (or excerpts thereof) that were identified by Microsoft in its
Invalidity Contentions and First Amended Invalidity Contentions as anticipating and/or
rendering obvious certain claims of the ’744 patent.
73.

On information and belief, none of the persons involved in the prosecution of the

‘629 patent, including Mr. McAuley and Mr. Stone, disclosed to the PTO any references
identified in Microsoft’s Invalidity Contentions or First Amended Invalidity Contentions that
pertain to the prior art Borland Delphi technology. Specifically, none of the persons involved in
the prosecution of the ’629 patent disclosed to the PTO: (i) Borland Delphi 3 for Windows 95 &
Windows NT, User’s Guide, Borland International, Inc. (1997); (ii) Borland’s Official NoNonsense Guide to Delphi 2, Sams Publishing (1996); (iii) Osier et al., Teach Yourself Delphi 3
in 14 Days, Sams Publishing (1997); (iv) Reisdorph, Sams Teach Yourself Borland Delphi 4 in

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21 Days, Sams Publishing (1998); (v) Swan, Delphi 4 Bible, IDG Books Worldwide, Inc., Tom
Swan (1998); (vi) Teixeira et al., Borland Delphi 4 Developer’s Guide, Sams Publishing (1998).
74.

On information and belief, none of the persons involved in the prosecution of the

’629 patent, including Mr. McAuley and Mr. Stone, disclosed to the PTO any references
identified in Microsoft’s Invalidity Contentions or First Amended Invalidity Contentions that
pertain to the prior art Microsoft Visual J++ technology. Specifically, none of the persons
involved in the prosecution of the ’629 patent disclosed to the PTO:

(i) Doss, DCOM

Networking with Visual J++ 6.0, Wordware Publishing, Inc. (1999); (ii) Morgan et al., Visual
J++ Unleashed, Sams.net Publishing (1997); (iii) Mulloy, Using Visual J++ 6, Que Corporation
(1998); (iv) Wood, Visual J++ 6 Secrets, IDG Books Worldwide, Inc. (1998).
75.

On information and belief, none of the persons involved in the prosecution of the

’629 patent, including Mr. McAuley and Mr. Stone, disclosed to the PTO any references
identified in Microsoft’s Invalidity Contentions or First Amended Invalidity Contentions that
pertain to the prior art ASP technology. Specifically, none of the persons involved in the
prosecution of the ’629 patent disclosed to the PTO: (i) Fedorchek et al., ASP: Active Server
Pages, IDG Books Worldwide, Inc. (1997); (ii) Fedorov et al., ASP 2.0 Programmer’s Reference,
Wrox Press (1998).
76.

On information and belief, none of the persons involved in the prosecution of the

’629 patent, including Mr. McAuley and Mr. Stone, disclosed to the PTO any references
identified in Microsoft’s Invalidity Contentions or First Amended Invalidity Contentions that
pertain to the prior art Lotus Notes and Domino 4.5 technology. Specifically, none of the
persons involved in the prosecution of the ’629 patent disclosed to the PTO: (i) Forlini et al.,

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Lotus Notes and Domino 4.5 Professional Reference, New Riders Publishing (1997); (ii) Krantz,
Building Intranets with Lotus Notes & Domino, Maximum Press (1997).
77.

On information and belief, none of the persons involved in the prosecution of the

’629 patent, including Mr. McAuley and Mr. Stone, disclosed to the PTO any references
identified in Microsoft’s Invalidity Contentions or First Amended Invalidity Contentions that
pertain to the prior art Paradox 7 technology. Specifically, none of the persons involved in the
prosecution of the ’629 patent disclosed to the PTO: (i) Karim et al., Paradox 7 Projects for
Windows 95, The Benjamin/Cummings Publishing Company, Inc. (1997); (ii) Weingarten et al.,
Paradox 7 for Windows 95 Illustrated Brief Edition, CTI (1997).
78.

Just as was the case with the 24 prior art references from the Microsoft litigation

that the applicant did disclose to the PTO, the narrative and claim charts submitted with
Microsoft’s Invalidity Contentions and First Amended Invalidity contentions demonstrate how
the undisclosed Borland Delphi, Microsoft Visual J++, ASP, Lotus Notes and Domino 4.5, and
Paradox 7 prior art references listed in Paragraphs 73-77 above anticipate and/or render obvious
the asserted claims in the Microsoft litigation. Therefore, the undisclosed Borland Delphi,
Microsoft Visual J++, ASP, Lotus Notes and Domino 4.5, and Paradox 7 prior art references
listed in Paragraphs 73-77 above constitute material prior art.
79.

The selective disclosure to the PTO of prior art references identified by Microsoft

during the Microsoft litigation demonstrates that Mr. McAuley and Mr. Stone were aware of the
Microsoft litigation and the existence of material information regarding the patentability of the
’629 patent arising out of that litigation.

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80.

This selective disclosure to the PTO also demonstrates that Mr. McAuley and Mr.

Stone made a deliberate decision to withhold material information from the PTO, and thus
demonstrates an intent to deceive.
81.

The withholding of information material to patentability with intent to deceive

constitutes inequitable conduct, which renders the ’629 patent unenforceable.
PRAYER FOR RELIEF
WHEREFORE, LGE requests judgment as follows:
a. that the Court dismiss Vertical’s Complaint with prejudice;
b. that the Court deny Vertical any and all relief it has requested in its Complaint;
c. that the Court deny any preliminary or permanent injunctive relief in favor of Vertical
and against LGE
d. that Vertical shall take nothing by way of its Complaint
e. that the Court find that this case is an exceptional case under 35 U.S.C. § 285, and require
Vertical to pay costs of suit that LGE has incurred, including attorneys’ fees and costs, pursuant
to 35 U.S.C. § 285 and all other applicable statutes, rules, and common law; and
f. that the Court grant LGE such other and further relief as this Court deems just and
equitable.

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Respectfully submitted,
/s/ David J. Healey______________
David J. Healey
Texas Bar No. 09327980
FISH & RICHARDSON P.C.
1221 McKinney Street, Suite 2800
Houston, Texas 77010
[phone] (Telephone)
[phone] (Facsimile)
[e-mail]
Aamir Kazi
Georgia Bar No. 104235
FISH & RICHARDSON P.C.
1180 Peachtree Street, N.E. 21st Floor
Atlanta, GA 30309
[phone] (Telephone)
[phone] (Facsimile)
[e-mail]
ATTORNEYS FOR DEFENDANTS LG
ELECTRONICS MOBILECOMM U.S.A., INC.
and LG ELECTRONICS INC.
OF COUNSEL:
Michael J. McKeon
Fish & Richardson P.C.
1425 K Street, NW, 11th Floor
Washington, DC 20005
[phone] (Telephone)
[phone] (Facsimile)
[e-mail]

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the above and foregoing
document has been served on this 20th day of May, 2011 to all counsel of record who are deemed
to have consented to electronic service via the Court’s EM/ECF system per Local Rule CV5(a)(3).

/s/ Stacci H. Mahadeo

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