EMG Technology, LLC v. Apple, Inc.

Filing 205

EMG Technology, LLC's ANSWER to 185 Answer to Amended Complaint, Counterclaim filed by Barnes & Noble by EMG Technology, LLC.(Ainsworth, Charles)

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION EMG TECHNOLOGY, LLC, Plaintiff, v. APPLE INC., AMERICAN AIRLINES, INC., DELL, INC., HYATT CORPORATION, MARRIOTT INTERNATIONAL, INC., & BARNES & NOBLE, INC., Defendants. PLAINTIFF EMG TECHNOLOGY, LLC'S ANSWER TO DEFENDANT BARNES & NOBLE, INC.'S COUNTERCLAIMS TO EMG'S FIFTH AMENDED COMPLAINT FOR PATENT INFRINGEMENT Plaintiff EMG Technology, LLC ("EMG") hereby responds to the Counterclaims of Defendant Barnes & Noble, Inc. ("Barnes & Noble") (Docket No. 185) asserted in response to EMG's Fifth Amended Complaint as follows. Unless expressly admitted herein, EMG generally denies all allegations in the Counterclaims. EMG expressly denies that Barnes & Noble is entitled to any relief whatsoever in connection with its Counterclaims, including, but not limited to, all relief requested in Barnes & Noble's Prayer. The Parties 40. 41. Responsive to Counterclaim Paragraph 40, EMG admits the allegations. Responsive to Counterclaim Paragraph 41, EMG admits the allegations. Jurisdiction 42. 43. Responsive to Counterclaim Paragraph 42, EMG admits the allegations. Responsive to Counterclaim Paragraph 43, EMG admits the allegations. Case No. 6:08-cv-447-LED

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Count I Declaratory Relief Regarding Non-infringement 44. Responsive to Counterclaim Paragraph 44, EMG admits that an actual

controversy currently exists between EMG and Barnes & Noble as to Barnes & Noble's infringement of the `196 Patent. Except as expressly admitted, the allegations are denied. 45. Responsive to Counterclaim Paragraph 45, EMG denies that Barnes & Noble is

entitled to the declaratory relief referenced in Paragraph 45. 46. Responsive to Counterclaim Paragraph 46, EMG admits that an actual

controversy currently exists between EMG and Barnes & Noble as to Barnes & Noble's infringement of the `845 Patent. Except as expressly admitted, the allegations are denied. 47. Responsive to Counterclaim Paragraph 47, EMG denies that Barnes & Noble is

entitled to the declaratory relief referenced in Paragraph 47. Count II Declaratory Relief Regarding Invalidity 48. Responsive to Counterclaim Paragraph 48, EMG admits that an actual

controversy currently exists between EMG and Barnes & Noble as to the validity of the claims of the `196 Patent. 49. Responsive to Counterclaim Paragraph 49, EMG denies that Barnes & Noble is

entitled to the declaratory relief referenced in Paragraph 49. 50. Responsive to Counterclaim Paragraph 50, EMG admits that an actual

controversy currently exists between EMG and Barnes & Noble as to the validity of the claims of the `845 Patent. 51. Responsive to Counterclaim Paragraph 51, EMG denies that Barnes & Noble is

entitled to the declaratory relief referenced in Paragraph 51.

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Count III Declaratory Relief Regarding Unenforceability 52. Responsive to Counterclaim Paragraph 52, EMG admits that an actual

controversy currently exists between EMG and Barnes & Noble as to the enforceability of the `196 Patent. 53. Responsive to Counterclaim Paragraph 53, EMG denies that Barnes & Noble is

entitled to the declaratory relief referenced in Paragraph 53. 54. Responsive to Counterclaim Paragraph 54, EMG denies the allegations and denies

that Barnes & Noble is entitled to the declaratory relief referenced in Paragraph 54. 55. Responsive to Counterclaim Paragraph 55, EMG admits that an actual

controversy currently exists between EMG and Barnes & Noble as to the enforceability of the `845 Patent. 56. Responsive to Counterclaim Paragraph 56, EMG denies that Barnes & Noble is

entitled to the declaratory relief referenced in Paragraph 56. 57. Responsive to Counterclaim Paragraph 57, EMG denies the allegations and denies

that Barnes & Noble is entitled to the declaratory relief referenced in Paragraph 57. 58. Responsive to Counterclaim Paragraph 58, EMG denies the allegations. Count IV False Marking 59. Responsive to Counterclaim Paragraph 59, EMG incorporates by reference its

responses to Counterclaim Paragraphs 40-58 above as though fully set forth herein. 60. Responsive to Counterclaim Paragraph 60, EMG denies the allegations.

61-65. Responsive to Counterclaim Paragraphs 61-65, EMG admits that the MallTV website located at http://www.malltv.com (the "MallTV Website") is owned and controlled by

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EMG. EMG further admits that the MallTV Website speaks for itself, as revised from time to time. Except as expressly admitted, EMG denies the allegations. 66. Responsive to Counterclaim Paragraph 66, EMG denies the allegations.

67-8. Responsive to Counterclaim Paragraphs 67-68, the Paragraphs assert conclusions of law to which no response by EMG is necessary. To the extent a response by EMG is required, EMG denies the allegations. 69. Responsive to Counterclaim Paragraph 69, EMG denies the allegations.

EMG'S AFFIRMATIVE DEFENSES TO BARNES & NOBLE'S COUNTERCLAIMS EMG asserts the following affirmative defenses to Barnes & Noble's Counterclaims: First Affirmative Defense (Failure to State a Claim) 70. EMG. Second Affirmative Defense (Laches) 71. The claims asserted in the Counterclaims are barred by the doctrine of laches. Third Affirmative Defense (Waiver) 72. The claims asserted in the Counterclaims are barred by the doctrine of waiver. Fourth Affirmative Defense (Estoppel) 73. 74. The claims asserted in the Counterclaims are barred by the doctrine of estoppel. EMG reserves the rights to assert any other defenses to Barnes & Noble's The Counterclaims fail to state a claim upon which relief may be granted against

Counterclaims that discovery may reveal.

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PRAYER FOR RELIEF WHEREFORE, EMG prays that this Court enter judgment against Barnes & Noble on Barnes & Noble's Counterclaims as follows: (a) Dismissing Barnes & Noble's Counterclaims with prejudice and ordering that Barnes & Noble is entitled to no recovery on the Counterclaims, including but not limited to all relief requested in Barnes & Noble's Prayer for Relief; (b) Ordering that this is an exceptional case pursuant to 35 U.S.C. § 285, and awarding EMG its attorney fees and full costs of suit; and (c) Awarding EMG such other and further relief as this Court deems just and appropriate. JURY DEMAND EMG demands a jury trial on all issues so triable. Dated: January 4, 2010 OF COUNSEL: Robert D. Becker Cal. Bar No. 160648 Shawn G. Hansen Cal. Bar No. 197033 MANATT, PHELPS & PHILLIPS, LLP 1001 Page Mill Road, Building 2 Palo Alto, CA 94304 Telephone: [phone] Facsimile: [phone] E-mail: [e-mail] E-mail: [e-mail] Stanley M. Gibson Cal. Bar No. 162329 Joshua S. Hodas, Ph.D. Cal. Bar No. 250812 JEFFER, MANGELS, BUTLER AND MARMARO, LLP 1900 Avenue of the Stars, Seventh Floor 5 Respectfully Submitted, By: /s/ Charles Ainsworth Robert M. Parker State Bar No. 15498000 Charles Ainsworth State Bar No. 00783521 Robert Christopher Bunt State Bar No. 00787165 PARKER, BUNT & AINSWORTH, P.C. 100 E. Ferguson, Suite 1114 Tyler, TX 75702 903/531-3535 903/533-9687 E-mail: [e-mail] E-mail: [e-mail] ATTORNEYS FOR PLAINTIFF EMG TECHNOLOGY, LLC

Los Angeles, CA 90067 Telephone: [phone] Facsimile: [phone] E-mail: [e-mail] E-mail: [e-mail] CERTIFICATE OF SERVICE I hereby certify that all counsel of record, who are deemed to have consented to electronic service, are being served this 4th day of January, 2010, with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3). /s/ Charles Ainsworth CHARLES AINSWORTH
300039127.1

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