Motorola Mobility, Inc. et al v. TiVo Inc.
Filing
73
ANSWER to 1 Complaint,, Amended COUNTERCLAIM against General Instrument Corporation, Motorola Mobility, Inc., Time Warner Cable Inc.,, Time Warner Cable LLC by TiVo Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(Baxter, Samuel)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TEXARKANA DIVISION
MOTOROLA MOBILITY, INC. and
)
GENERAL INSTRUMENT CORPORATION, )
)
Plaintiffs,
)
)
vs.
)
)
TIVO INC.,
)
)
Defendant.
)
)
)
)
)
)
)
TIVO INC.,
)
)
)
Counterclaim Plaintiff,
)
)
vs.
)
MOTOROLA MOBILITY, INC., GENERAL )
)
INSTRUMENT CORPORATION, TIME
)
WARNER CABLE INC., and TIME
)
WARNER CABLE LLC,
)
)
Counterclaim Defendants.
)
______________________________________ )
Case No. 5:11-cv-00053-MHS-CMC
JURY TRIAL DEMANDED
DEFENDANT TIVO INC.'S 1) ANSWER TO PLAINTIFFS' COMPLAINT
AND 2) AMENDED COUNTERCLAIMS
Defendant TiVo Inc. ("TiVo") hereby files this Answer and Amended Counterclaims
pursuant to the Federal Rules of Civil Procedure and Steps 9 and 10 of the Court's Scheduling
Order in this case (Dkt. 53).
TiVo answers the Complaint for Patent Infringement and Declaratory Relief (the
"Complaint") of Plaintiffs Motorola Mobility, Inc. ("Motorola Mobility") and General Instrument
2608763
-1-
Corporation ("General Instrument") (collectively, "Motorola" or "Plaintiffs") as set forth below.
Unless specifically admitted, TiVo denies each and every allegation made by Plaintiffs in the
Complaint and states as follows:
INTRODUCTION
1.
TiVo admits that the United States Patent and Trademark Office issued U.S. Patent
Nos. 5,949,948 (the "'948 Patent"), 6,304,714 (the "'714 Patent") and 6,356,708 (the "'708
Patent"). TiVo admits that the '948, '714, and '708 Patents state on their face that they were
assigned to Imedia Corporation. Except as expressly admitted herein, TiVo denies each and every
allegation of Paragraph 1.
2.
TiVo admits that it was founded in 1997. TiVo admits that TiVo filed a patent
application in July 1998. TiVo admits that TiVo obtained U.S. Patent Nos. 6,233,389 (the "'389
patent") and 7,529,465 (the "'465 patent") (collectively, "the TiVo Patents"), among others.
Except as expressly admitted herein, TiVo denies each and every allegation of Paragraph 2.
3.
TiVo admits that TiVo is the plaintiff in the case entitled TiVo Inc. v. Verizon
Communications Inc., et al., 2:09-cv-00257-JRG (E.D. Tex.) (the "Verizon Lawsuit"). TiVo
admits that TiVo has accused various QIP set-top boxes of infringing certain claims of the TiVo
Patents. TiVo is without sufficient knowledge to form a belief as to the truth or falsity of the
remaining allegations contained in Paragraph 3 and therefore denies the remaining allegations in
said Paragraph.
4.
TiVo admits that Plaintiffs seek the relief stated in their Complaint.
THE PARTIES
5.
On information and belief, TiVo admits that Motorola Mobility, Inc. is a Delaware
corporation with a principal place of business in Libertyville, Illinois.
6.
On information and belief, TiVo admits that General Instrument Corp. is a
Delaware corporation with a principal place of business in Horsham, Pennsylvania. TiVo is
without sufficient knowledge to form a belief as to the truth or falsity of the remaining allegations
contained in Paragraph 6 and therefore denies the remaining allegations in said Paragraph.
2608763
-2-
7.
TiVo admits that TiVo is a Delaware corporation with a principal place of business
at 2160 Gold Street, Alviso, California 95002. TiVo admits that it can be served with process
through Corporation Service Company, its registered agent in Austin, Texas.
JURISDICTION AND VENUE
8.
TiVo admits that Plaintiffs contend jurisdiction exists under 28 U.S.C. §§ 1331,
1338(a) and under 28 U.S.C. §§ 2201 and 2202. Except as expressly admitted herein, TiVo denies
each and every allegation of Paragraph 8.
9.
TiVo admits that Plaintiffs contend that personal jurisdiction and venue are proper
in this Court pursuant to 28 U.S.C. §§ 1391 and/or 1400. TiVo admits that TiVo does business in
this state and district. TiVo admits that it has previously commenced litigation in this district
related to the TiVo Patents. Except as expressly admitted herein, TiVo denies each and every
allegation of Paragraph 9.
FACTUAL BACKGROUND
10.
TiVo admits that the '948 Patent on its face states that it was purportedly filed on
November 20, 1995 and purportedly issued on September 7, 1999. TiVo admits that the '948
Patent states on its face a title of "Method and Apparatus for Implementing Playback Features for
Compressed Video Data" and states on its face that the inventors were Messrs. Krause, Shen and
Tom. TiVo further admits on information and belief that a copy of the '948 Patent is attached as
Exhibit A to the Complaint. Except as expressly admitted herein, TiVo denies each and every
allegation contained in Paragraph 10.
11.
TiVo admits that the '714 patent on its face states that it was purportedly issued on
October 16, 2001. TiVo admits that the '714 Patent states on its face a title of "In-Home Digital
Video Unit With Combine Archival Storage and High-Access Storage" and states on its face that
the inventors were Messrs. Krause, Heller, Tom and Shen. TiVo further admits on information
and belief that a copy of the '714 Patent is attached as Exhibit B to the Complaint. Except as
expressly admitted herein, TiVo denies each and every allegation contained in Paragraph 11.
2608763
-3-
12.
TiVo admits that the '708 patent on its face states that it was purportedly issued on
March 12, 2002. TiVo admits that the '708 Patent states on its face a title of "Method and
Apparatus for Implementing Playback Features for Compressed Video Data" and states on its face
that the inventors were Messrs. Krause, Shen and Tom. TiVo further admits on information and
belief that a copy of the '708 Patent is attached as Exhibit C to the Complaint. Except as expressly
admitted herein, TiVo denies each and every allegation contained in Paragraph 12.
13.
TiVo admits that the '389 patent issued on May 15, 2001. TiVo admits that TiVo
owns the '389 patent. TiVo admits that the '389 Patent is entitled "Multimedia Time Warping
System" and that the inventors were Messrs. Barton, McInnis, Moskowitz, Goodman, Chow and
Kao. TiVo further admits on information and belief that a copy of the '389 Patent is attached as
Exhibit D to the Complaint.
14.
TiVo admits that the '465 patent issued on May 5, 2009. TiVo admits that TiVo
owns the '465 patent. TiVo admits that the '465 Patent is entitled "System for Time Shifting
Multimedia Content Streams" and that the inventors were Messrs. Barton, McInnis, Moskowitz,
Goodman, Chow and Kao. TiVo further admits on information and belief that a copy of the '465
Patent is attached as Exhibit E to the Complaint.
15.
TiVo denies each and every allegation contained in Paragraph 15.
16.
TiVo admits that it has participated in MPEG LA as a licensee. TiVo is without
sufficient knowledge to form a belief as to the truth or falsity of the remaining allegations
contained in Paragraph 16 and therefore denies the remaining allegations in said Paragraph.
17.
TiVo is without sufficient knowledge to form a belief as to the truth or falsity of the
allegations contained in Paragraph 17 and therefore denies each and every allegation contained in
said Paragraph.
18.
TiVo is without sufficient knowledge to form a belief as to the truth or falsity of the
allegations contained in Paragraph 18 and therefore denies each and every allegation contained in
said Paragraph.
19.
2608763
TiVo denies each and every allegation contained in Paragraph 19.
-4-
20.
TiVo admits that the '948, '714 and '708 Patents state on their face that they were
purportedly originally assigned to Imedia Corporation. TiVo is without sufficient knowledge to
form a belief as to the truth or falsity of the remaining allegations contained in Paragraph 20 and
therefore denies each and every remaining allegation contained in said Paragraph.
21.
TiVo admits that it was founded in 1997. TiVo admits that TiVo develops DVR
products. TiVo admits that TiVo submitted a patent application in July 1998 entitled Multimedia
Time Warping System. TiVo admits that TiVo obtained the '389 Patent and the '465 Patent.
Except as expressly admitted herein, TiVo denies each and every allegation contained in
Paragraph 21.
22.
TiVo admits the allegations contained in Paragraph 22.
23.
TiVo admits that TiVo filed a lawsuit in the U.S. District Court for the Eastern
District of Texas against AT&T Inc. on or about August 26, 2009 (the "AT&T Lawsuit"). TiVo
admits that, in the AT&T Lawsuit, TiVo asserted that AT&T infringed the TiVo patents.
24.
TiVo admits the allegations contained in Paragraph 24.
25.
TiVo admits that TiVo served a subpoena on Motorola, Inc. on or about August 27,
2010 seeking documents from Motorola. TiVo admits that Motorola, Inc. served its objections to
that subpoena on or about October 8, 2010. TiVo is without sufficient knowledge to form a belief
as to the truth or falsity of whether or when Motorola Mobility ceased being a subsidiary of
Motorola, Inc., and therefore denies that allegation. TiVo admits that TiVo served a subpoena on
Motorola Mobility on or about January 14, 2011. TiVo admits that Motorola Mobility served its
objections and produced certain documents in February 2011. TiVo admits that TiVo has
requested production of the source code used by the DVRs manufactured or otherwise produced
by Motorola for or sold to Verizon and that TiVo is in the process of meeting and conferring with
Motorola Mobility. Except as expressly admitted herein, TiVo denies each and every allegation
contained in Paragraph 25.
26.
TiVo is without sufficient knowledge to form a belief as to the truth or falsity of
whether or why Verizon has demanded that Motorola defend and/or indemnify it in the Verizon
2608763
-5-
Lawsuit, and therefore denies that allegation. TiVo denies each and every remaining allegation
contained in Paragraph 26.
FIRST CAUSE OF ACTION
(Infringement of the '714 Patent)
27.
TiVo incorporates by reference Paragraphs 1-26, inclusive, set forth above as if
fully set forth herein.
28.
TiVo denies each and every allegation contained in Paragraph 28.
29.
TiVo denies each and every allegation contained in Paragraph 29.
30.
TiVo admits that in 2005 EchoStar disclosed the '714 patent as prior art in the
EchoStar Litigation. Except as expressly admitted herein, TiVo denies each and every allegation
of Paragraph 30.
31.
TiVo denies each and every allegation contained in Paragraph 31.
32.
TiVo denies each and every allegation contained in Paragraph 32.
33.
TiVo denies each and every allegation contained in Paragraph 33.
34.
TiVo denies each and every allegation contained in Paragraph 34.
35.
TiVo denies each and every allegation contained in Paragraph 35.
SECOND CAUSE OF ACTION
(Infringement of the '948 Patent)
36.
TiVo incorporates by reference Paragraphs 1-35, inclusive, set forth above as if
fully set forth herein.
37.
TiVo denies each and every allegation contained in Paragraph 37.
38.
TiVo denies each and every allegation contained in Paragraph 38.
39.
TiVo admits that in 2005 EchoStar disclosed the '948 patent as prior art in the
EchoStar Litigation. Except as expressly admitted herein, TiVo denies each and every allegation
of Paragraph 39.
40.
41.
2608763
TiVo denies each and every allegation contained in Paragraph 40.
TiVo denies each and every allegation contained in Paragraph 41.
-6-
42.
TiVo denies each and every allegation contained in Paragraph 42.
43.
TiVo denies each and every allegation contained in Paragraph 43.
44.
TiVo denies each and every allegation contained in Paragraph 44.
THIRD CAUSE OF ACTION
(Infringement of the '708 Patent)
45.
TiVo incorporates by reference Paragraphs 1-44, inclusive, set forth above as if
fully set forth herein.
46.
TiVo denies each and every allegation contained in Paragraph 46.
47.
TiVo denies each and every allegation contained in Paragraph 47.
48.
TiVo is without sufficient knowledge to form a belief as to the truth or falsity of the
allegations contained in Paragraph 48 and therefore denies each and every allegation contained in
said Paragraph.
49.
TiVo denies each and every allegation contained in Paragraph 49.
50.
TiVo denies each and every allegation contained in Paragraph 50.
51.
TiVo denies each and every allegation contained in Paragraph 51
52.
TiVo denies each and every allegation contained in Paragraph 52.
53.
TiVo denies each and every allegation contained in Paragraph 53.
FOURTH CAUSE OF ACTION
(Invalidity of the '389 Patent)
54.
TiVo incorporates by reference Paragraphs 1-53, inclusive, set forth above as if
fully set forth herein.
55.
56.
TiVo denies each and every allegation contained in Paragraph 56.
57.
2608763
TiVo denies each and every allegation contained in Paragraph 55.
TiVo denies each and every allegation contained in Paragraph 57.
-7-
FIFTH CAUSE OF ACTION
(Invalidity of the '465 Patent)
58.
TiVo incorporates by reference Paragraphs 1-57, inclusive, set forth above as if
fully set forth herein.
59.
TiVo denies each and every allegation contained in Paragraph 59.
60.
TiVo denies each and every allegation contained in Paragraph 60.
61.
TiVo denies each and every allegation contained in Paragraph 61.
SIXTH CAUSE OF ACTION
(Non-infringement of the '389 Patent)
62.
TiVo incorporates by reference Paragraphs 1-61, inclusive, set forth above as if
fully set forth herein.
63.
TiVo denies each and every allegation contained in Paragraph 63.
64.
TiVo denies each and every allegation contained in Paragraph 64.
65.
TiVo denies each and every allegation contained in Paragraph 65.
SEVENTH CAUSE OF ACTION
(Non-infringement of the '465 Patent)
66.
TiVo incorporates by reference Paragraphs 1-65, inclusive, set forth above as if
fully set forth herein.
67.
TiVo denies each and every allegation contained in Paragraph 67.
68.
TiVo denies each and every allegation contained in Paragraph 68.
69.
TiVo denies each and every allegation contained in Paragraph 69.
PRAYER FOR RELIEF
70.
Answering the Prayer section of the Complaint, TiVo denies that Plaintiffs are
entitled to any relief in any form whatsoever from TiVo and specifically denies that Plaintiffs are
entitled to any of the relief requested in said section of the Complaint (including Paragraphs A-J).
2608763
-8-
AFFIRMATIVE AND OTHER DEFENSES
71.
TiVo asserts defenses as set forth below. By pleading these defenses, TiVo does
not in any way agree or concede that TiVo has the burden of proof or persuasion on any of these
issues. In addition to the defenses described below, TiVo expressly reserves the right to allege
additional defenses and amend its Answer to Plaintiffs' Complaint as they become known through
the course of discovery or otherwise.
FIRST DEFENSE
(Failure to State a Claim)
72.
The Complaint, and each purported cause of action asserted therein, fails to state a
claim upon which relief can be granted.
SECOND DEFENSE
(Non-Infringement of the Asserted Patents)
73.
TiVo does not infringe and has not infringed, either directly or indirectly, literally
or under the doctrine of equivalents, contributed to the infringement of, or induced the
infringement of any valid claim of the '714, '948, and/or '708 Patents and is not liable for
infringement of the '714, '948, and/or '708 Patents.
THIRD DEFENSE
(Invalidity of the Asserted Patents)
74.
One or more claims of the '714, '948, and/or '708 Patents are invalid for failing to
comply with the patent law provisions of the United States, as codified in Title 35 of the United
States Code, including without limitation, 35 U.S.C. §§ 102, 103, and/or 112.
FOURTH DEFENSE
(Failure to Provide Notice)
75.
Plaintiffs' ability to recover for any alleged infringement is barred or limited by the
failure of Plaintiffs and/or their licensees to meet the requirements of 35 U.S.C. § 287.
2608763
-9-
FIFTH DEFENSE
(Laches/Estoppel)
76.
Plaintiffs make claims that are barred or limited by the doctrines of laches and/or
estoppel.
SIXTH DEFENSE
(Improper Venue)
77.
Venue is improper over all or several of Plaintiffs' claims because the questions of
law and fact raised in said claims are duplicative of questions of law and fact in a related case
presently before this Court, TiVo Inc. v. Verizon Communications, Inc., et al., Case No. 2:09-cv257-JRG.
AMENDED COUNTERCLAIMS OF TIVO INC.
TiVo alleges as follows:
78.
TiVo incorporates by reference Paragraphs 1-77, inclusive, set forth above as if
fully set forth herein.
Jurisdiction and Venue
79.
These Counterclaims arise under the Declaratory Judgment Act, 28 U.S.C. §§
2201, 2202 et seq. and the Patent Laws of the United States of America, 35 U.S.C. §§ 1 et seq. In
TiVo's First, Second and Third Counterclaims, TiVo seeks a declaratory judgment that the '714,
'948, and '708 Patents asserted against TiVo in this action are invalid and not infringed. In TiVo's
Fourth, Fifth, and Sixth Counterclaims herein, TiVo alleges that Motorola, and Time Warner
Cable Inc. and Time Warner Cable LLC (collectively, "Time Warner Cable") infringe TiVo's '389
Patent, '465 Patent, and '195 Patent.
80.
This Court has subject matter jurisdiction over these Counterclaims pursuant to
28 U.S.C. §§ 1331, 1338(a), 2201 and 2202, including because Plaintiffs have accused TiVo of
infringing the '714, '948, and '708 Patents.
2608763
- 10 -
81.
To the extent venue over Plaintiffs' claims is found to be proper, venue in this
judicial district is proper over these Counterclaims pursuant to U.S.C. §§ 1391 (b) and (c),
including because Motorola and Time Warner Cable have committed acts of infringement in this
District.
The Parties
82.
TiVo is a corporation organized and existing under the laws of the State of
Delaware, having a principal place of business at 2160 Gold Street, Alviso, California 95002.
83.
On information and belief, Motorola Mobility, Inc. is a corporation existing under
the laws of the State of Delaware having a principal place of business in Libertyville, Illinois.
84.
On information and belief, General Instrument Corp. is a corporation existing under
the laws of the State of Delaware having a principal place of business in Horsham, Pennsylvania.
85.
On information and belief, Time Warner Cable Inc. is a corporation existing under
the laws of the State of Delaware having a principle place of business at 60 Columbus Circle, New
York, NY 10023.
86.
On information and belief, Time Warner Cable LLC is a limited-liability
corporation existing under the laws of the State of Delaware having a principle place of business at
60 Columbus Circle, New York, NY 10023.
Factual Background
87.
TiVo was founded in 1997 and is a pioneer in the field of digital video recording.
TiVo created the first commercially viable DVR. TiVo owns patents to protect its innovative ideas
that revolutionize the way consumers access home entertainment.
88.
TiVo is the owner of the entire right, title and interest in and to U.S. Patent No.
6,233,389 ("the '389 patent"), entitled "Multimedia Time Warping System," which was duly
issued on May 15, 2001. A copy of the '389 patent is attached as Exhibit A hereto.
2608763
- 11 -
89.
TiVo is the owner of the entire right, title and interest in and to U.S. Patent No.
7,529,465 ("the '465 patent"), entitled "System for Time Shifting Multimedia Content Streams,"
which was duly issued on May 5, 2009. A copy of the '465 patent is attached as Exhibit B hereto.
90.
TiVo is the owner of the entire right, title and interest in and to U.S. Patent No.
6,792,195 ("the '195 patent"), entitled "Method And Apparatus Implementing Random Access
And Time-Based Functions On A Continuous Stream Of Formatted Digital Data," which was duly
issued on September 14, 2004. A copy of the '195 patent is attached as Exhibit C hereto.
91.
In addition to patenting technologies related to digital video recording devices,
digital video recording device software and personal television services, TiVo competes in these
markets. TiVo is a leading provider of technology and services for digital video recorders. As of
October 31, 2011, there were approximately 2 million subscriptions to the TiVo service.
92.
On information and belief, Motorola provide set-top boxes with DVR functionality,
including without limitation Motorola products bearing, for example, a "QIP" designation (e.g.,
QIP72xx Series, QIP64xx Series, and QIP27xx Series), "DCH" designation (e.g., DCH 34xx
Series and DCH64xx Series), "DCT" designation (e.g., DCT64xx Series), "DCX" designation
(e.g., DCX34xx Series), and related products, among others. These set-top boxes are provided to
service providers, including without limitation Verizon Communications, Inc. and Time Warner
Cable.
93.
On information and belief, Motorola has been providing set-top boxes with DVR
functionality at least as early as on or around September 2005, when Verizon introduced its "FiOS
TV" product in Texas. Motorola's set-top boxes are available through Verizon's FiOS TV service
in at least 9 million homes across 14 states: New York, New Jersey, California, Delaware, Texas,
Florida, Maryland, Pennsylvania, Indiana, Massachusetts, Virginia, Rhode Island, Oregon and
Washington.
94.
Motorola has infringed and is infringing TiVo's '389 Patent, '465 Patent, and '195
Patent.
2608763
- 12 -
95.
On information and belief, Time Warner Cable serves 29 states, including
Alabama, Arizona, California, Colorado, Hawaii, Idaho, Illinois, Indiana, Kansas, Kentucky,
Maine, Massachusetts, Michigan, Missouri, Nebraska, New Hampshire, New Jersey, New
Mexico, New York, North Carolina, Ohio, Pennsylvania, South Carolina, Tennessee, Texas,
Virginia, Washington, West Virginia and Wisconsin, with more than 14 million customers.
96.
Time Warner Cable provides set-top boxes with DVR functionality to its
customers. Motorola is one of Time Warner's suppliers of set-top boxes with DVR functionality.
These set-top boxes include without limitation Motorola set-top boxes bearing, for example, a
"DCH" designation (e.g., DCH 34xx Series and DCH64xx Series), "DCT" designation (e.g.,
DCT64xx Series), "DCX" designation (e.g., DCX34xx Series), and related products, among
others.
97.
Time Warner Cable has infringed and is infringing TiVo's '389 Patent, '465 Patent,
and '195 Patent.
98.
Plaintiffs and Counterclaim-Defendants Motorola Mobility and General Instrument
Corporation (together "Motorola") allege in their Complaint that they are the sole holders of the
entire right, title, and interest in the '714, '948, and '708 Patents.
99.
Motorola's Complaint expressly accused TiVo of infringing the '714, '948, and '708
Patents. TiVo has denied each and every such allegation.
100.
As a result of Motorola's actions and statements, including the filing of the
Complaint, an actual and justiciable controversy has arisen between TiVo and Motorola with
regard to the validity and infringement of the '714, '948, and '708 Patents.
101.
A judicial declaration and determination is necessary and appropriate at this time
given Plaintiffs' allegations and in order that TiVo may ascertain its rights and duties with respect
to the '714, '948, and '708 Patents.
2608763
- 13 -
FIRST COUNTERCLAIM
(Declaratory Judgment of Invalidity and Non-Infringement of
U.S. Patent No. 6,304,714)
102.
TiVo incorporates by reference the allegations set forth in Paragraphs 78-101,
inclusive, set forth above as if fully set forth herein.
103.
By this Counterclaim, TiVo seeks a judicial declaration and determination that
TiVo does not infringe and has not directly or indirectly infringed, either literally or under the
doctrine of equivalents, contributed to the infringement of, or induced the infringement of any
valid claim of the '714 Patent and is not liable for infringement of the '714 Patent.
104.
By this Counterclaim, TiVo seeks a judicial declaration and determination that one
or more claims of the '714 Patent are invalid for failing to comply with the patent law provisions
of the United States, as codified in Title 35 of the United States Code.
SECOND COUNTERCLAIM
(Declaratory Judgment of Invalidity and Non-Infringement of
U.S. Patent No. 5,949,948)
105.
TiVo incorporates by reference the allegations set forth in Paragraphs 78-104,
inclusive, set forth above as if fully set forth herein.
106.
By this Counterclaim, TiVo seeks a judicial declaration and determination that
TiVo does not infringe and has not directly or indirectly infringed, either literally or under the
doctrine of equivalents, contributed to the infringement of, or induced the infringement of any
valid claim of the '948 patent and is not liable for infringement of the '948 patent.
107.
By this Counterclaim, TiVo seeks a judicial declaration and determination that one
or more claims of the '948 Patent are invalid for failing to comply with the patent law provisions
of the United States, as codified in Title 35 of the United States Code.
2608763
- 14 -
THIRD COUNTERCLAIM
(Declaratory Judgment of Invalidity and Non-Infringement of
U.S. Patent No. 6,356,708)
108.
TiVo incorporates by reference the allegations set forth in Paragraphs 78-107,
inclusive, set forth above as if fully set forth herein.
109.
By this Counterclaim, TiVo seeks a judicial declaration and determination that
TiVo does not infringe and has not directly or indirectly infringed, either literally or under the
doctrine of equivalents, contributed to the infringement of, or induced the infringement of any
valid claim of the '708 Patent and is not liable for infringement of the '708 Patent.
110.
By this Counterclaim, TiVo seeks a judicial declaration and determination that one
or more claims of the '708 patent are invalid for failing to comply with the patent law provisions
of the United States, as codified in Title 35 of the United States Code.
FOURTH COUNTERCLAIM
(Motorola's and Time Warner Cable's Infringement of
U.S. Patent No. 6,233,389)
111.
TiVo incorporates by reference the allegations set forth in Paragraphs 78-110,
inclusive, set forth above as if fully set forth herein.
112.
TiVo is the owner of the entire right, title and interest in and to the '389 Patent.
113.
On information and belief, Counterclaim Defendant Motorola has infringed and is
currently infringing the '389 patent, in violation of 35 U.S.C. § 271, by, among other things,
making, using, offering for sale, selling, and/or importing within this judicial district and
elsewhere in the United States, without license or authority, products and/or processes falling
within the scope of one or more claims of the '389 patent including without limitation Motorola's
set-top boxes with DVR functionality including at least set-top boxes bearing, for example, the
"QIP" designation (e.g., QIP72xx Series, QIP64xx Series, and QIP27xx Series), "DCH"
designation (e.g., DCH 34xx Series and DCH64xx Series), "DCT" designation (e.g., DCT64xx
Series), "DCX" designation (e.g., DCX34xx Series), and related products. Some of these
2608763
- 15 -
infringing products also are at issue in the case TiVo Inc. v. Verizon Communications, Inc., et al.,
Case No. 2:09-cv-257-JRG.
114.
On information and belief, Counterclaim Defendant Motorola, induced and is
actively inducing the infringement of the '389 patent, with knowledge of the '389 patent and
knowledge that they were inducing the infringement of the '389 patent, in violation of 35 U.S.C. §
271(b), by, among other things, actively and knowingly aiding and abetting, assisting and
encouraging others, including without limitation Verizon Communications, Inc., Time Warner
Cable, and other customers of Motorola, as well as end users of Motorola products, to directly
infringe the '389 patent with respect to the making, using, offering for sale, selling, and/or
importing within this judicial district and elsewhere in the United States, without license or
authority, products and/or processes falling within the scope of one or more claims of the '389
patent including without limitation Motorola's set-top boxes with DVR functionality including at
least set-top boxes bearing, for example, the "QIP" designation (e.g., QIP72xx Series, QIP64xx
Series, and QIP27xx Series), "DCH" designation (e.g., DCH 34xx Series and DCH64xx Series),
"DCT" designation (e.g., DCT64xx Series), "DCX" designation (e.g., DCX34xx Series), and
related products. Some of these infringing products also are at issue in the case TiVo Inc. v.
Verizon Communications, Inc., et al., Case No. 2:09-cv-257-JRG.
115.
On information and belief, Counterclaim Defendant Time Warner Cable has
infringed and is currently infringing the '389 patent, in violation of 35 U.S.C. § 271, by, among
other things, making, using, offering for sale, selling, and/or importing within this judicial district
and elsewhere in the United States, without license or authority, products and/or processes falling
within the scope of one or more claims of the '389 patent, including without limitation Motorola
set-top boxes bearing, for example, a "DCH" designation (e.g., DCH 34xx Series and DCH64xx
Series), "DCT" designation (e.g., DCT64xx Series), "DCX" designation (e.g., DCX34xx Series),
and related products, among others.
116.
On information and belief, Counterclaim Defendant Time Warner Cable, induced
and is actively inducing the infringement of the '389 patent, with knowledge of the '389 patent and
2608763
- 16 -
knowledge that it was inducing the infringement of the '389 patent, in violation of 35 U.S.C. §
271(b), by, among other things, actively and knowingly aiding and abetting, assisting and
encouraging others, including without limitation Motorola, as well as end users of Time Warner
Cable products, to directly infringe the '389 patent with respect to the making, using, offering for
sale, selling, and/or importing within this judicial district and elsewhere in the United States,
without license or authority, products and/or processes falling within the scope of one or more
claims of the '389 patent including without limitation Motorola set-top boxes bearing, for example,
a "DCH" designation (e.g., DCH 34xx Series and DCH64xx Series), "DCT" designation (e.g.,
DCT64xx Series), "DCX" designation (e.g., DCX34xx Series), and related products, among
others.
117.
On information and belief, Counterclaim Defendants Motorola and Time Warner
Cable have contributorily infringed and are currently contributorily infringing the '389 patent, in
violation of 35 U.S.C. § 271(c), by, among other things, selling, offering for sale, and/or importing
within this judicial district and elsewhere in the United States, without license or authority,
products or components of products which constitute a material part of the '389 patent, with
knowledge of the '389 patent and knowing that such products and/or components are especially
made or especially adapted for use in the infringement of the '389 patent, and not staple articles or
commodities of commerce suitable for substantial noninfringing use.
118.
On information and belief, Counterclaim Defendant Motorola has infringed and is
currently infringing the '389 patent, in violation of 35 U.S.C. § 271(f), by, among other things,
supplying or causing to be supplied in or from the United States, without license or authority,
components or products that are combined and/or used outside the United States in a manner that
falls within the scope of one or more claims of the '389 patent including without limitation
Motorola's set-top boxes with DVR functionality including at least set top boxes bearing, for
example, the "QIP" designation (e.g., QIP72xx Series, QIP64xx Series, and QIP27xx Series),
"DCH" designation (e.g., DCH 34xx Series and DCH64xx Series), "DCT" designation (e.g.,
DCT64xx Series), "DCX" designation (e.g., DCX34xx Series), and related products. Some of
2608763
- 17 -
these infringing products also are at issue in the case TiVo Inc. v. Verizon Communications, Inc., et
al., Case No. 2:09-cv-257-JRG.
119.
On information and belief, Counterclaim Defendant Time Warner Cable has
infringed and is currently infringing the '389 patent, in violation of 35 U.S.C. § 271(f), by, among
other things, supplying or causing to be supplied in or from the United States, without license or
authority, components or products that are combined and/or used outside the United States in a
manner that falls within the scope of one or more claims of the '389 patent including without
limitation Motorola set-top boxes bearing, for example, a "DCH" designation (e.g., DCH 34xx
Series and DCH64xx Series), "DCT" designation (e.g., DCT64xx Series), "DCX" designation
(e.g., DCX34xx Series), and related products, among others.
120.
On information and belief, Counterclaim Defendants Motorola's and Time Warner
Cable's infringement of the '389 patent has been and continues to be willful and deliberate.
Motorola and Time Warner Cable, with knowledge of the '389 patent, engaged in objectively
reckless conduct when they continued selling the infringing products in the face of an objectively
high risk that they were infringing TiVo's valid United States patents.
121.
As a consequence of Counterclaim Defendants Motorola's and Time Warner
Cable's infringement, TiVo is entitled to recover damages adequate to compensate it for the
infringement complained of herein, but in no event less than a reasonable royalty.
122.
Unless enjoined, Counterclaim Defendants Motorola and Time Warner Cable will
continue to infringe the '389 patent, and TiVo will suffer irreparable injury as a direct and
proximate result of Motorola's and Time Warner Cable's conduct.
123.
TiVo has been damaged by Counterclaim Defendants Motorola's and Time Warner
Cable's conduct, and until an injunction issues, will continue to be damaged in an amount yet to be
determined.
2608763
- 18 -
FIFTH COUNTERCLAIM
(Motorola's and Time Warner Cable's Infringement of
U.S. Patent No. 7,529,465)
124.
TiVo incorporates by reference the allegations set forth in Paragraphs 78-123,
inclusive, set forth above as if fully set forth herein.
125.
TiVo is the owner of the entire right, title and interest in and to the '465 Patent.
126.
On information and belief, Counterclaim Defendant Motorola has infringed and is
currently infringing the '465 patent, in violation of 35 U.S.C. § 271, by, among other things,
making, using, offering for sale, selling, and/or importing within this judicial district and
elsewhere in the United States, without license or authority, products and/or processes falling
within the scope of one or more claims of the '465 patent including without limitation Motorola's
set-top boxes with DVR functionality including at least set-top boxes bearing, for example, the
"QIP" designation (e.g., QIP72xx Series, QIP64xx Series, and QIP27xx Series), "DCH"
designation (e.g., DCH 34xx Series and DCH64xx Series), "DCT" designation (e.g., DCT64xx
Series), "DCX" designation (e.g., DCX34xx Series), and related products. Some of these
infringing products also are at issue in the case TiVo Inc. v. Verizon Communications, Inc., et al.,
Case No. 2:09-cv-257-JRG.
127.
On information and belief, Counterclaim Defendant Motorola induced and is
actively inducing the infringement of the '465 patent, with knowledge of the '465 patent and
knowledge that it was inducing the infringement of the '465 patent, in violation of 35 U.S.C. §
271(b), by, among other things, actively and knowingly aiding and abetting, assisting and
encouraging others, including without limitation Verizon Communications, Inc., Time Warner
Cable, and other customers of Motorola, as well as end users of Motorola products, to directly
infringe the '465 patent with respect to the making, using, offering for sale, selling, and/or
importing within this judicial district and elsewhere in the United States, without license or
2608763
- 19 -
authority, products and/or processes falling within the scope of one or more claims of the '465
patent including without limitation Motorola's set-top boxes with DVR functionality including at
least set-top boxes bearing, for example, the "QIP" designation (e.g., QIP72xx Series, QIP64xx
Series, and QIP27xx Series), "DCH" designation (e.g., DCH 34xx Series and DCH64xx Series),
"DCT" designation (e.g., DCT64xx Series), "DCX" designation (e.g., DCX34xx Series), and
related products. Some of these infringing products also are at issue in the case TiVo Inc. v.
Verizon Communications, Inc., et al., Case No. 2:09-cv-257-JRG.
128.
On information and belief, Counterclaim Defendant Time Warner Cable has
infringed and is currently infringing the '465 patent, in violation of 35 U.S.C. § 271, by, among
other things, making, using, offering for sale, selling, and/or importing within this judicial district
and elsewhere in the United States, without license or authority, products and/or processes falling
within the scope of one or more claims of the '465 patent including without limitation Motorola
set-top boxes bearing, for example, a "DCH" designation (e.g., DCH 34xx Series and DCH64xx
Series), "DCT" designation (e.g., DCT64xx Series), "DCX" designation (e.g., DCX34xx Series),
and related products, among others.
129.
On information and belief, Counterclaim Defendant Time Warner Cable induced
and is actively inducing the infringement of the '465 patent, with knowledge of the '465 patent and
knowledge that it was inducing the infringement of the '465 patent, in violation of 35 U.S.C. §
271(b), by, among other things, actively and knowingly aiding and abetting, assisting and
encouraging others, including without limitation Motorola, as well as end users of Time Warner
Cable products, to directly infringe the '465 patent with respect to the making, using, offering for
sale, selling, and/or importing within this judicial district and elsewhere in the United States,
without license or authority, products and/or processes falling within the scope of one or more
claims of the '465 patent including without limitation Time Warner Cable's set-top boxes with
DVR functionality including at least set-top boxes bearing, for example, the "Motorola"
designation (e.g., DCX Series, DCH Series, and DCT Series), and related products.
2608763
- 20 -
130.
On information and belief, Counterclaim Defendants Motorola and Time Warner
Cable have contributorily infringed and are currently contributorily infringing the '465 patent, in
violation of 35 U.S.C. § 271(c), by, among other things, selling, offering for sale, and/or importing
within this judicial district and elsewhere in the United States, without license or authority,
products or components of products which constitute a material part of the '465 patent, with
knowledge of the '465 patent and knowing that such products and/or components are especially
made or especially adapted for use in the infringement of the '465 patent, and not staple articles or
commodities of commerce suitable for substantial noninfringing use.
131.
On information and belief, Counterclaim Defendant Motorola has infringed and is
currently infringing the '465 patent, in violation of 35 U.S.C. § 271(f), by, among other things,
supplying or causing to be supplied in or from the United States, without license or authority,
components or products that are combined and/or used outside the United States in a manner that
falls within the scope of one or more claims of the '465 patent including without limitation
Motorola's set-top boxes with DVR functionality including at least set-top boxes bearing, for
example, the "QIP" designation (e.g., QIP72xx Series, QIP64xx Series, and QIP27xx Series),
"DCH" designation (e.g., DCH 34xx Series and DCH64xx Series), "DCT" designation (e.g.,
DCT64xx Series), "DCX" designation (e.g., DCX34xx Series), and related products. Some of
these infringing products also are at issue in the case TiVo Inc. v. Verizon Communications, Inc., et
al., Case No. 2:09-cv-257-JRG.
132.
On information and belief, Counterclaim Defendant Time Warner Cable has
infringed and is currently infringing the '465 patent, in violation of 35 U.S.C. § 271(f), by, among
other things, supplying or causing to be supplied in or from the United States, without license or
authority, components or products that are combined and/or used outside the United States in a
manner that falls within the scope of one or more claims of the '465 patent including without
limitation Motorola set-top boxes bearing, for example, a "DCH" designation (e.g., DCH 34xx
Series and DCH64xx Series), "DCT" designation (e.g., DCT64xx Series), "DCX" designation
(e.g., DCX34xx Series), and related products, among others.
2608763
- 21 -
133.
On information and belief, Counterclaim Defendants Motorola's and Time Warner
Cable's infringement of the '465 patent has been and continues to be willful and deliberate.
Motorola and Time Warner Cable, with knowledge of the '465 patent, engaged in objectively
reckless conduct when they continued selling the infringing products in the face of an objectively
high risk that they were infringing TiVo's valid United States patents.
134.
As a consequence of Counterclaim Defendants Motorola's and Time Warner
Cable's infringement, TiVo is entitled to recover damages adequate to compensate it for the
infringement complained of herein, but in no event less than a reasonable royalty.
135.
Unless enjoined, Counterclaim Defendants Motorola and Time Warner Cable will
continue to infringe the '465 patent, and TiVo will suffer irreparable injury as a direct and
proximate result of Motorola's and Time Warner Cable's conduct.
136.
TiVo has been damaged by Counterclaim Defendants Motorola's and Time Warner
Cable's conduct, and until an injunction issues, will continue to be damaged in an amount yet to be
determined.
SIXTH COUNTERCLAIM
(Motorola's and Time Warner Cable's Infringement of
U.S. Patent No. 6,792,195)
137.
TiVo incorporates by reference the allegations set forth in Paragraphs 78-136,
inclusive, set forth above as if fully set forth herein.
138.
TiVo is the owner of the entire right, title and interest in and to the '195 Patent.
139.
On information and belief, Counterclaim Defendant Motorola has infringed and is
currently infringing the '195 patent, in violation of 35 U.S.C. § 271, by, among other things,
making, using, offering for sale, selling, and/or importing within this judicial district and
elsewhere in the United States, without license or authority, products and/or processes falling
within the scope of one or more claims of the '195 patent including without limitation Motorola 's
set-top boxes with DVR functionality including at least set-top boxes bearing, for example, the
"QIP" designation (e.g., QIP72xx Series, QIP64xx Series, and QIP27xx Series), "DCH"
2608763
- 22 -
designation (e.g., DCH 34xx Series and DCH64xx Series), "DCT" designation (e.g., DCT64xx
Series), "DCX" designation (e.g., DCX34xx Series), and related products. Some of these
infringing products also are at issue in the case TiVo Inc. v. Verizon Communications, Inc., et al.,
Case No. 2:09-cv-257-JRG.
140.
On information and belief, Counterclaim Defendant Motorola induced and is
actively inducing the infringement of the '195 patent, with knowledge of the '195 patent and
knowledge that it was inducing the infringement of the '195 patent, in violation of 35 U.S.C. §
271(b), by, among other things, actively and knowingly aiding and abetting, assisting and
encouraging others, including without limitation Verizon Communications, Inc., Time Warner
Cable, and other customers of Motorola, as well as end users of Motorola products, to directly
infringe the '195 patent with respect to the making, using, offering for sale, selling, and/or
importing within this judicial district and elsewhere in the United States, without license or
authority, products and/or processes falling within the scope of one or more claims of the '195
patent including without limitation Motorola's set-top boxes with DVR functionality including at
least set-top boxes bearing, for example, the "QIP" designation (e.g., QIP72xx Series, QIP64xx
Series, and QIP27xx Series), "DCH" designation (e.g., DCH 34xx Series and DCH64xx Series),
"DCT" designation (e.g., DCT64xx Series), "DCX" designation (e.g., DCX34xx Series), and
related products. Some of these infringing products also are at issue in the case TiVo Inc. v.
Verizon Communications, Inc., et al., Case No. 2:09-cv-257-JRG.
141.
On information and belief, Counterclaim Defendant Time Warner Cable has
infringed and is currently infringing the '195 patent, in violation of 35 U.S.C. § 271, by, among
other things, making, using, offering for sale, selling, and/or importing within this judicial district
and elsewhere in the United States, without license or authority, products and/or processes falling
within the scope of one or more claims of the '195 patent including without limitation Motorola
set-top boxes bearing, for example, a "DCH" designation (e.g., DCH 34xx Series and DCH64xx
Series), "DCT" designation (e.g., DCT64xx Series), "DCX" designation (e.g., DCX34xx Series),
and related products, among others.
2608763
- 23 -
142.
On information and belief, Counterclaim Defendant Time Warner Cable induced
and is actively inducing the infringement of the '195 patent, with knowledge of the '195 patent and
knowledge that it was inducing the infringement of the '195 patent, in violation of 35 U.S.C. §
271(b), by, among other things, actively and knowingly aiding and abetting, assisting and
encouraging others, including without limitation Motorola, as well as end users of Time Warner
Cable products, to directly infringe the '195 patent with respect to the making, using, offering for
sale, selling, and/or importing within this judicial district and elsewhere in the United States,
without license or authority, products and/or processes falling within the scope of one or more
claims of the '195 patent including without limitation Time Warner Cable's set-top boxes with
DVR functionality including at least set-top boxes bearing, for example, the "Motorola"
designation (e.g., DCX Series, DCH Series, and DCT Series), and related products.
143.
On information and belief, Counterclaim Defendants Motorola and Time Warner
Cable have contributorily infringed and are currently contributorily infringing the '195 patent, in
violation of 35 U.S.C. § 271(c), by, among other things, selling, offering for sale, and/or importing
within this judicial district and elsewhere in the United States, without license or authority,
products or components of products which constitute a material part of the '195 patent, with
knowledge of the '195 patent and knowing that such products and/or components are especially
made or especially adapted for use in the infringement of the '195 patent, and not staple articles or
commodities of commerce suitable for substantial noninfringing use.
144.
On information and belief, Counterclaim Defendant Motorola has infringed and is
currently infringing the '195 patent, in violation of 35 U.S.C. § 271(f), by, among other things,
supplying or causing to be supplied in or from the United States, without license or authority,
components or products that are combined and/or used outside the United States in a manner that
falls within the scope of one or more claims of the '195 patent including without limitation
Motorola's set-top boxes with DVR functionality including at least set-top boxes bearing, for
example, the "QIP" designation (e.g., QIP72xx Series, QIP64xx Series, and QIP27xx Series),
"DCH" designation (e.g., DCH 34xx Series and DCH64xx Series), "DCT" designation (e.g.,
2608763
- 24 -
DCT64xx Series), "DCX" designation (e.g., DCX34xx Series), and related products. Some of
these infringing products also are at issue in the case TiVo Inc. v. Verizon Communications, Inc., et
al., Case No. 2:09-cv-257-JRG.
145.
On information and belief, Counterclaim Defendant Time Warner Cable has
infringed and is currently infringing the '195 patent, in violation of 35 U.S.C. § 271(f), by, among
other things, supplying or causing to be supplied in or from the United States, without license or
authority, components or products that are combined and/or used outside the United States in a
manner that falls within the scope of one or more claims of the '195 patent including without
limitation Motorola set-top boxes bearing, for example, a "DCH" designation (e.g., DCH 34xx
Series and DCH64xx Series), "DCT" designation (e.g., DCT64xx Series), "DCX" designation
(e.g., DCX34xx Series), and related products, among others.
146.
On information and belief, Counterclaim Defendants Motorola's and Time Warner
Cable's infringement of the '195 patent has been and continues to be willful and deliberate.
Motorola and Time Warner Cable, with knowledge of the '195 patent, engaged in objectively
reckless conduct when they continued selling the infringing products in the face of an objectively
high risk that they were infringing TiVo's valid United States patents.
147.
As a consequence of Counterclaim Defendants Motorola's and Time Warner
Cable's infringement, TiVo is entitled to recover damages adequate to compensate it for the
infringement complained of herein, but in no event less than a reasonable royalty.
148.
Unless enjoined, Counterclaim Defendants Motorola and Time Warner Cable will
continue to infringe the '195 patent, and TiVo will suffer irreparable injury as a direct and
proximate result of Motorola's and Time Warner Cable's conduct.
149.
TiVo has been damaged by Counterclaim Defendants Motorola's and Time Warner
Cable's conduct, and until an injunction issues, will continue to be damaged in an amount yet to be
determined.
2608763
- 25 -
DEMAND FOR JURY TRIAL
TiVo demands a trial by jury on all issues triable of right by a jury raised in Plaintiffs'
Complaint, TiVo's Answer, and TiVo's Counterclaims.
PRAYER FOR RELIEF
WHEREFORE, TiVo prays for judgment against Motorola and Time Warner Cable, as
follows:
A.
That the '714, '948, and '708 Patents are not infringed and are invalid.
B.
That Motorola take nothing by their claims for relief;
C.
That Motorola's claims for relief be dismissed with prejudice;
D.
That the '389 and '465 Patents are valid and enforceable.
E.
That Motorola and Time Warner Cable have directly infringed the '389, '465, and
'195 Patents.
F.
That Motorola and Time Warner Cable have induced the infringement of the '389,
'465, and '195 Patents.
G.
That Motorola and Time Warner Cable have contributorily infringed the '389, '465,
and '195 Patents.
H.
That Motorola and Time Warner Cable and any of their affiliates, subsidiaries,
officers, directors, employees, agents, representatives, licensees, successors, assigns, and all those
acting for any of them and/or on any of their behalf, or acting in concert with any of them directly
or indirectly, be enjoined from infringing, inducing others to infringe or contributing to the
infringement of the '389, '465, and '195 Patents;
I.
That Motorola and Time Warner Cable and any of their affiliates, subsidiaries,
officers, directors, employees, agents, representatives, licensees, successors, assigns, and all those
acting for any of them and/or on any of their behalf, or acting in concert with any of them directly
or indirectly, deliver to TiVo all products that infringe the '389, '465, and '195 for destruction at
TiVo's option;
2608763
- 26 -
J.
That Motorola and Time Warner Cable be ordered to pay compensatory damages to
TiVo, together with pre-judgment interest and post-judgment interest as allowed by law;
K.
That Motorola and Time Warner Cable be ordered to provide an accounting;
L.
That Motorola and Time Warner Cable be ordered to pay supplemental damages to
TiVo, including without limitation interest;
M.
That the infringement by Motorola and Time Warner Cable be adjudged willful and
that the damages be increased under 35 U.S.C. § 284 to three times the amount found or
measured;
N.
That the Court enter judgment against Motorola and Time Warner Cable and in
favor of TiVo in all respects;
O.
That the Court determine this is an exceptional case under 35 U.S.C. § 285 and an
award of attorneys' fees and costs to TiVo is warranted in this action; and
P.
For any such other and further relief as the Court deems just and equitable.
Dated: March 26, 2012
McKool Smith, P.C.
By: /s/ Sam Baxter
Sam Baxter, Attorney-in-Charge
State Bar No. 01938000
sbaxter@mckoolsmith.com
McKool Smith
104 East Houston Street. Suite 300
Marshall, TX 75670
TEL: 903.923.9000
FAX: 903.923.9099
Garret W. Chambers
State Bar No. 00792160
gchambers@mckoolsmith.com
McKool Smith
300 Crescent Court, Suite 1500
Dallas TX 75201
TEL: 214.978.4016
FAX: 214.978.4044
Attorneys for Defendant TiVo Inc.
2608763
- 27 -
CERTIFICATE OF SERVICE
The undersigned hereby certifies that the foregoing document was served on counsel of
record by electronic filing and electronic service this 26th day of March, 2012.
/s Garret W. Chambers
2608763
- 28 -
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?