Lodsys, LLC v. Combay, Inc. et al

Filing 48

Quickoffice's ANSWER to 26 Amended Complaint, Affirmative Defenses, COUNTERCLAIM against Lodsys, LLC by Quickoffice, Inc..(Tadlock, Charles)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
LODSYS, LLC,
Case No. 2:11-cv-272
Plaintiff,
v.

PATENT CASE

COMBAY, INC., et al.,

JURY TRIAL DEMANDED
Defendants.

ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
OF DEFENDANT QUICKOFFICE, INC.
Defendant and counterclaim plaintiff Quickoffice, Inc. (“Quickoffice”) submits, pursuant
to Fed. R. Civ. P. 8, the following Answer and Affirmative Defenses to the Amended Complaint
for Patent Infringement (“Amended Complaint”) filed by Plaintiff Lodsys, LLC (“Lodsys”), and
also asserts, pursuant to Fed. R. Civ. P. 13, the following Counterclaims against Lodsys.
ANSWER
Quickoffice responds to the allegations of the Amended Complaint, by corresponding
numbered paragraphs, as follows:
The Parties
1.

Quickoffice admits that Lodsys purports to be a Texas limited liability company

with its principal place of business in Marshall, Texas.
2.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 2, and therefore denies those allegations.
3.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 3, and therefore denies those allegations.

4.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 4, and therefore denies those allegations.
5.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 5, and therefore denies those allegations.
6.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 6, and therefore denies those allegations.
7.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 7, and therefore denies those allegations.
8.

Quickoffice admits it is a corporation organized and existing under the laws of the

State of Delaware and that it has its principal place of business in Plano, Texas.
9.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 9, and therefore denies those allegations.
10.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 10, and therefore denies those allegations.
11.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 11, and therefore denies those allegations.
12.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 12, and therefore denies those allegations.
Jurisdiction and Venue
13.

Quickoffice admits that this Court has subject matter jurisdiction over this action.

Quickoffice admits that venue of this action in this District is provided by 28 U.S.C. §§ 1391 and
1400(b). Further answering, Quickoffice states that venue is proper in other districts pursuant to
28 U.S.C. §§ 1391 and 1400(b), and Quickoffice reserves all rights to move for transfer of venue

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of this action, severance, or consolidation with other related actions. Quickoffice denies that it
has committed acts of infringement in this District. As to the allegations of Paragraph 13
relating to the other defendants, or the events giving rise to the claims, Quickoffice is without
knowledge or information sufficient to form a belief as to the truth of those allegations, and
therefore denies those allegations.
14.

Quickoffice admits that it is subject to personal jurisdiction in this District.

Quickoffice denies that it conducts business utilizing the claimed systems and methods and
therefore denies that there is any valid cause of action arising from Quickoffice’s business
contacts or other activities in the State of Texas or this District. As to the allegations of
Paragraph 14 relating to the other defendants, Quickoffice is without knowledge or information
sufficient to form a belief as to the truth of those allegations, and therefore denies those
allegations.
Answer to Claims of Infringement of U.S. Patent No. 7,620,565 B2
15.

Quickoffice admits that United States Patent No. 7,620,565 (the “‘565 Patent”)

bears on its face an issue date of November 17, 2009. Quickoffice is without knowledge or
information sufficient to form a belief as to the truth of the other allegations of Paragraph 15, and
therefore denies those allegations.
16.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 16, and therefore denies those allegations.
17.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 17, and therefore denies those allegations.
18.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 18, and therefore denies those allegations.

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19.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 19, and therefore denies those allegations.
20.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 20, and therefore denies those allegations.
21.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 21, and therefore denies those allegations.
22.

Quickoffice denies the allegations of Paragraph 22.

23.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 23, and therefore denies those allegations.
24.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 24, and therefore denies those allegations.
25.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 25, and therefore denies those allegations.
26.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 26, and therefore denies those allegations.
27.

Quickoffice denies that it has committed acts of infringement of the ‘565 Patent,

denies that it has caused damage to Lodsys, and denies that Lodsys is entitled to recover
damages from Quickoffice. Quickoffice further denies that any acts by Quickoffice will cause
irreparable harm to Lodsys and denies that Lodsys is entitled to an injunction. Quickoffice
further denies that it has committed willful or deliberate infringement of the ‘565 Patent and
denies that Lodsys is entitled to increased damages or attorneys’ fees and costs. As to the other
defendants, Quickoffice is without knowledge or information sufficient to form a belief as to the
truth of the allegations of Paragraph 27, and therefore denies those allegations.

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Answer to Claims of Infringement of U.S. Patent No. 7,222,078 B2
28.

Quickoffice admits that United States Patent No. 7,222,078 (the “‘078 Patent”)

bears on its face an issue date of May 22, 2007.

Quickoffice is without knowledge or

information sufficient to form a belief as to the truth of the other allegations of Paragraph 28, and
therefore denies those allegations.
29.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 29, and therefore denies those allegations.
30.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 30, and therefore denies those allegations.
31.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 31, and therefore denies those allegations.
32.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 32, and therefore denies those allegations.
33.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 33, and therefore denies those allegations.
34.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 34, and therefore denies those allegations.
35.

Quickoffice denies the allegations of Paragraph 35.

36.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 36, and therefore denies those allegations.
37.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 37, and therefore denies those allegations.

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38.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 38, and therefore denies those allegations.
39.

Quickoffice is without knowledge or information sufficient to form a belief as to

the truth of the allegations of Paragraph 39, and therefore denies those allegations.
40.

Quickoffice denies that it has committed acts of infringement of the ‘078 Patent,

denies that it has caused damage to Lodsys, and denies that Lodsys is entitled to recover
damages from Quickoffice. Quickoffice further denies that any acts by Quickoffice will cause
irreparable harm to Lodsys and denies that Lodsys is entitled to an injunction. Quickoffice
further denies that it has committed willful or deliberate infringement of the ‘565 Patent and
denies that Lodsys is entitled to increased damages or attorneys’ fees and costs. As to the other
defendants, Quickoffice is without knowledge or information sufficient to form a belief as to the
truth of the allegations of Paragraph 40, and therefore denies those allegations.
Response to Jury Demand
In answer to this unnumbered paragraph, Quickoffice also demands a trial by jury on all
issues so triable.
Response to Prayer for Relief
This unnumbered paragraph does not require a response. Quickoffice denies any liability
to Lodsys.

AFFIRMATIVE DEFENSES
Pursuant to Fed. R. Civ. P. 8(c), Quickoffice asserts the following affirmative defenses,
without admitting that Quickoffice would bear the burden of proof on any of the following:

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Failure to State a Claim
1.

With respect to any and all allegations against Quickoffice, the Amended

Complaint fails to state a claim upon which relief may be granted.
License/Exhaustion of Patent Rights and First Sale
2.

Apple, Inc. (“Apple”) is licensed to the ‘565 Patent and the ‘078 Patent

(collectively, the “Patents-in-Suit”). Such license permits Apple to offer and otherwise make
available to Quickoffice and others products and services that embody the inventions contained
in the Patents-in-Suit.

Plaintiff’s infringement claims against Quickoffice are based on

Quickoffice’s use of products and services that Apple is authorized to provide under such license
and which Plaintiff claims embody the Patents-in-Suit. Under the patent law doctrines of
exhaustion and first sale, Quickoffice can use the products and services Apple provides to it free
of claims of infringing the Patents-in-Suit. Therefore, Plaintiff’s claims against Quickoffice are
barred by the license to Apple and the doctrines of patent exhaustion and first sale.
Non-Infringement
3.

Quickoffice has not infringed and does not infringe any claims of the ‘565 Patent

or the ‘078 Patent.
Invalidity
4.

The ‘565 Patent and the ‘078 Patent are invalid for failure to comply with the

statutory requirements of one or more of the provisions set forth in the United States Patent
Laws, including without limitation 35 U.S.C. §§ 101, 102, 103, 112, 116, 119, 120 and/or 185,
and the rules, regulations and laws pertaining thereto.

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Prosecution History Estoppel
5.

To the extent any of Lodsys’s allegations of infringement are construed or are

asserted to be allegations of infringement under the doctrine of equivalents, on information and
belief, all or some of Lodsys’s claims for relief are barred by the doctrine of prosecution history
estoppel.
Laches
6.

All or some of Lodsys’s claims for relief are barred by the doctrine of laches.

Equitable Estoppel
7.

All or some of Lodsys’s claims for relief are barred by the doctrine of equitable

estoppel.
Waiver
8.

All or some of Lodsys’s claims for relief are barred by the doctrine of waiver.
Unclean Hands

9.

Lodsys’s claims for relief are barred by the doctrine of unclean hands.
Bad Faith/Exceptional Case

10.

Lodsys has brought this suit in bad faith making it an exceptional case, thereby

entitling Quickoffice to recover its costs and attorneys’ fees pursuant to 35 U.S.C. § 285.
Without limitation, (a) Lodsys filed this lawsuit against Quickoffice based on its Quickoffice
Connect application for iPhone, with full knowledge that such claims were barred by Apple’s
license to the Patents-in-Suit; and (b) prior to Lodsys filing suit, Quickoffice provided Lodsys
with a detailed written explanation of why Quickoffice’s products do not infringe, but Lodsys
never responded to Quickoffice and instead filed this suit.

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Quickoffice reserves the right to add additional defenses that may be disclosed during
discovery or otherwise.

COUNTERCLAIMS
Pursuant to Fed. R. Civ. P. 13, Quickoffice alleges the following Counterclaims against
Lodsys:
Parties
1.

Counterclaim Plaintiff Quickoffice, Inc. (“Quickoffice”) is a Delaware

corporation with a place of business in Plano, Texas.
2.

Counterclaim Defendant Lodsys, LLC (“Lodsys”) is, on information and belief, a

Texas limited liability company with a place of business in Marshall, Texas.
Jurisdiction and Venue
3.

Quickoffice’s Counterclaims arise under the United States Patent Laws, 35

U.S.C. § 1 et seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. This Court
has subject matter jurisdiction over Quickoffice’s Counterclaims pursuant to 28 U.S.C. §§ 1331,
1338, 2201 and 2202. This Court has personal jurisdiction over Lodsys at least by virtue of
Lodsys’s filing of its original complaint and the Amended Complaint against Quickoffice in this
Court, and venue lies in this district pursuant to 28 U.S.C. §§ 1331(c) and 1400(b). (Quickoffice
reserves all rights to move for transfer of venue of this action, severance, or consolidation with
other related actions.)
4.
Patent.

Lodsys has asserted that Quickoffice infringes the ‘565 Patent and the ‘078
Actual controversies exist between Lodsys and Quickoffice regarding whether

Quickoffice is protected by Apple’s license to the Patents-in-Suit (see Paragraph 2 of

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Quickoffice’s Affirmative Defenses, above), as well as the alleged infringement by Quickoffice,
validity and enforceability of the ‘565 Patent and the ‘078 Patent.
COUNT I: Declaratory Judgment that Lodsys’s Claims Against Quickoffice
Are Barred by Virtue of Apple’s License to the Patents-in-Suit and the
Doctrines of Patent Exhaustion and First Sale
5.

Quickoffice incorporates by reference each preceding allegation as if expressly

stated herein.
6.

On or about May 31, 2011, Lodsys filed its original complaint against Quickoffice

as a defendant. On or about July 21, 2011, Lodsys filed its Amended Complaint against
Quickoffice.
7.

The Amended Complaint alleges (as did the original complaint) that Quickoffice

infringes the ‘565 Patent and the ‘078 Patent by making, selling, using, importing and/or offering
to sell infringing software, including Quickoffice Connect for iPhone.
8.

Apple is licensed to the ‘565 Patent and the ‘078 Patent. Such license permits

Apple to offer and otherwise make available to Quickoffice and others products and services that
embody the inventions contained in the Patents-in-Suit. Lodsys’s infringement claims against
Quickoffice are based on Quickoffice’s use of products and services that Apple is authorized to
provide under such license and which Lodsys claims embody the Patents-in-Suit. Under the
patent law doctrines of exhaustion and first sale, Quickoffice can use the products and services
Apple provides to it free of claims of infringing the Patents-in-Suit.
9.

Notwithstanding the Apple license, Lodsys has asserted claims of infringement

against Quickoffice. Therefore, an actual and justiciable controversy exists between Quickoffice
and Lodsys regarding whether Lodsys’s claims against Quickoffice are barred by the license to
Apple and the doctrines of patent exhaustion and first sale.

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10.

Pursuant to 28 U.S.C. §§ 2201 and 2202, Quickoffice is entitled to a declaratory

judgment that Lodsys’s claims against Quickoffice are barred by the license to Apple and the
doctrines of patent exhaustion and first sale.
COUNT II: Declaratory Judgment of Non-Infringement of the ‘565 Patent
11.

Quickoffice incorporates by reference each preceding allegation as though

expressly stated herein.
12.

Quickoffice has not infringed, contributed to the infringement of, or induced

infringement of any valid and enforceable claim of the ‘565 Patent.
13.

An actual controversy exists between Quickoffice and Lodsys regarding Lodsys’s

allegations of infringement of the ‘565 Patent.
14.

Pursuant to 28 U.S.C. §§ 2201 and 2202, Quickoffice is entitled to a declaratory

judgment that it has not infringed, contributed to the infringement of, or induced infringement of
any valid and enforceable claim of the ‘565 Patent.
COUNT III: Declaratory Judgment of Non-Infringement of the ‘078 Patent
15.

Quickoffice incorporates by reference each preceding allegation as though

expressly stated herein.
16.

Quickoffice has not infringed, contributed to the infringement of, or induced

infringement of any valid and enforceable claim of the ‘078 Patent.
17.

An actual controversy exists between Quickoffice and Lodsys regarding Lodsys’s

allegations of infringement of the ‘078 Patent.
18.

Pursuant to 28 U.S.C. §§ 2201 and 2202, Quickoffice is entitled to a declaratory

judgment that it has not infringed, contributed to the infringement of, or induced infringement of
any valid and enforceable claim of the ‘078 Patent.

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COUNT IV: Declaratory Judgment of Invalidity and/or
Unenforceability of the ‘565 Patent
19.

Quickoffice incorporates by reference each preceding allegation as though

expressly stated herein.
20.

The claims of the ‘565 Patent are invalid for failing to comply with the conditions

and requirements for patentability as set forth in United States Patent Laws, including without
limitation 35 U.S.C. §§ 101, 102, 103, 112, 116, 119, 120 and/or 185, and the rules, regulations,
and laws pertaining thereto, and/or are otherwise unenforceable.
21.

An actual controversy exists between Quickoffice and Lodsys regarding the

validity and enforceability of the ‘565 Patent.
22.

Pursuant to 28 U.S.C. §§ 2201 and 2202, Quickoffice is entitled to a declaratory

judgment that the claims of ‘565 Patent are invalid and/or unenforceable in whole or in part.
COUNT V: Declaratory Judgment of Invalidity and/or
Unenforceability of the ‘078 Patent
23.

Quickoffice incorporates by reference each preceding allegation as though

expressly stated herein.
24.

The claims of the ‘078 Patent are invalid for failing to comply with the conditions

and requirements for patentability as set forth in United States Patent Laws, including without
limitation 35 U.S.C. §§ 101, 102, 103, 112, 116, 119, 120 and/or 185, and the rules, regulations,
and laws pertaining thereto, and/or are otherwise unenforceable.
25.

An actual controversy exists between Quickoffice and Lodsys regarding the

validity and enforceability of the ‘078 Patent.
26.

Pursuant to 28 U.S.C. §§ 2201 and 2202, Quickoffice is entitled to a declaratory

judgment that the claims of ‘078 Patent are invalid and/or unenforceable in whole or in part.

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DEMAND FOR JURY TRIAL ON QUICKOFFICE’S COUNTERCLAIMS
Quickoffice demands a trial by jury on all issues so triable that are raised by its
counterclaims.

REQUESTS FOR RELIEF
Quickoffice respectfully requests the Court enter judgment in its favor and grant the
following relief:
A.

Dismiss with prejudice Lodsys’s Amended Complaint.

B.

Enter a declaratory judgment that Lodsys’s claims against Quickoffice are barred

by the license to Apple and the doctrines of patent exhaustion and first sale.
C.

Enter a declaratory judgment that Quickoffice has not infringed and does not

presently infringe the ‘565 Patent.
D.

Enter a declaratory judgment that Quickoffice has not infringed and does not

presently infringe the ‘078 Patent.
E.

Enter a declaratory judgment that the claims of the ‘565 Patent are invalid and/or

unenforceable.
F.

Enter a declaratory judgment that the claims of the ‘078 Patent are invalid and/or

unenforceable.
G.

Find that this is an exceptional case and award Quickoffice its reasonable

attorneys’ fees and costs, pursuant to 35 U.S.C. § 285.
H.

Award Quickoffice its costs and expenses.

I.

Grant Quickoffice such other relief as this Court deems just.

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Dated: August 29, 2011

Respectfully submitted, 

___________________________________
Craig Tadlock
Texas State Bar No. 00791766
TADLOCK LAW FIRM
400 E. Royal Lane, Suite 290
Irving, Texas 75039
214-785-6014 (phone)
[e-mail]
and
315 N. Broadway, Suite 307
Tyler, Texas 75702
903-283-2758 (phone)
Counsel for Defendant Quickoffice, Inc.

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was served on all counsel of
record via the Court’s CM/ECF system, on this the 29th day of August, 2011.

____________________________________
Craig Tadlock

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