Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 296

FIRST AMENDED ANSWER to 285 Amended Complaint,,, COUNTERCLAIM against Eolas Technologies Incorporated by J.C. Penney Company, Inc..(Yee, Jeffrey)

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS

TYLER DIVISION
Eolas Technologies Incolporated,

s
$ $ $

Plaintiff,
v.
Adobe Systems Inc., Amazon.com, Inc. Apple Inc., Blockbuster Inc., CDW Cor?., Citigroup Inc., eBay Inc., Frito-Layr Inc., The Go Daddy Groupn Inc.o Google Inc.o J.C. Penney Company, Inc., JPMolgan Chase & Co.n New Frontier Mediar lnc.o Office Depot, Inc., Perot Systems Co"p, Playboy Enterprises International, Inc., Rent-A-Center, Inc., Staple.s, Inc., Sun Microsystems Inc., Texas Instruments Inc., Yahoo! Inc., and YouTube, LLC, Defendants

s s
$

s s
$

S
s s s
$

Civil Action No.6:09-cv-00446-LED

s s
$

s s

DEFENDANT J.C. PEI\{¡IEY CORPORATION, INC.'S FIRST AMENDED ANSWER TO PLAINTTF'F'S FIRST AMENDED COMPLAINT
Defendant J.C. Penney Corporation, Inc. ("JCP", incorrectly identified as J.C. Penney

Company, Inc. in the First Amended Complaint) hereby submits its First Amended Answer

to

Eolas Technologies Incorporated's ("Eolas"

or "Plaintiff') First Amended Complaint

("Complaint," Dkt. 285):

ANSWER

I.

PARTIES

l.

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

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

DEFENDANT J.C. pENNEy CORPORATION,INC.'S FIRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLA INT

Page I

2.

JCP is not required to answer to the allegations contained in Paragraph 2

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph2 and, therefore, denies them.

3.

JCP is not required to answer to the allegations contained in Paragraph 3

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 3 and, therefore, denies them.

4.

JCP is not required to answer to the allegations contained in Paragraph 4 of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 4 and, therefore, denies them.

5.

JCP is not required to answer to the allegations contained in Paragraph 5 of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 5 and, therefore, denies them.

6.

JCP is not required to answer to the allegations contained in Paragraph 6

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 6 and, therefore, denies them.

7.

JCP is not required to answer to the allegations contained in Paragraph 7 of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks

DEFENDANT J.C. PENNEY CORPORATION,INC.'S FIRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT

Page2

sufficient knowledge or information to form a belief as to the truth of the allegations
contained in ParagraphT and, therefore, denies them.

8.

JCP is not required to answer to the allegations contained in Paragraph 8 of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 8 and, therefore, denies them.

9.

JCP is not required to answer to the allegations contained in Paragraph 9 of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 1l and, therefore, denies them.

10.

JCP is not required to answer to the allegations contained in Paragraph

l0 of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph l1 and, therefore, denies them.
I

l.

JCP is not required to answer to the allegations contained in Paragraph I

I of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph I

I and, therefore,

denies them.

12. 13.

JCP admits to the allegations contained in Paragraph 12 of the Complaint.

JCP is not required to answer to the allegations contained in Paragraph 13

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph l3 and, therefore, denies them.

DEFENDANT J.C. PENNEY CORPORATION, INC.'S FIRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT

Page 3

14.

JCP is not required to answer to the allegations contained in Paragraph 14 of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 14 and, therefore, denies them.

15.

JCP is not required to answer to the allegations contained in Paragraph 15

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 15 and, therefore, denies them.

16.

JCP is not required to answer to the allegations contained in Paragraph 16

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
suffrcient knowledge

or information to form a belief as to the truth of the allegations

contained in Paragraph l6 and, therefore, denies them.

17.

JCP is not required to answer to the allegations contained in Paragraph 17

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 17 and, therefore, denies them.

18.

JCP is not required to answer to the allegations contained in Paragraph

l8 of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph l8 and, therefore, denies them.

19.

JCP is not required to answer to the allegations contained in Paragraph 19

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks

DEFENDANT J.C. PENNEY CORPORATION,INC.'S FIRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT

Page4

sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph l9 and, therefore, denies them.

20.

JCP is not required to answer to the allegations contained in Paragraph 20

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 20 and, therefore, denies them.

21.

JCP is not required to answer to the allegations contained in Paragraph

2l of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph

2l

and, therefore, denies them.

22.

JCP is not required to answer to the allegations contained in Paragraph 22

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph22 and, therefore, denies them.

23.

JCP is not required to answer to the allegations contained in Paragraph 23

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph23 and,therefore, denies them.

II. 24.
set forth here.

JURISDICTION AND VENUE

JCP incorporates its responses contained in Paragraphs l-23 as though fully

DEFENDANT J.C. PENNEY CORPORATION, INC.'S FIRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT

Page 5

25.

JCP admits that the Complaint includes claims

of patent infringement

that

arise under the patent laws of the United States, 35 U.S.C. $ Court has subject matter jurisdiction over this action.

l0l

et seq. JCP admits that this

26.

JCP admits that

it is subject to this Court's personal jurisdiction.

Except as

expressly admitted herein, JCP lacks sufficient knowledge or information to form a belief as to the truth of the allegations contained in Paragraph26 and, therefore, denies them.

27.

JCP admits that venue is proper with respect to JCP. Except as expressly

admitted herein, JCP lacks sufficient knowledge or information to form a belief as to the truth of the allegations contained in Paragraph2T and, therefore, denies them.

III. 28.
set forth here.

PATENT INFRINGEMENT

JCP incorporates its responses contained in Paragraphs l-27 as though fully

29.

From the face of the United States Patents Nos. 5,838,906 ("the '906 Patent)

and7,599,985 ("the'985 Patent"), the title and date of issuance appears to be as alleged in
Paragraph 30 of the Complaint. Except as stated herein, JCP lacks sufficient knowledge or information to form a belief as to the truth of the allegations contained in Paragraph 29 and,
therefore, denies them.

30. 3l.

JCP lacks suffìcient knowledge or information to form a belief as to the truth

of the allegations contained in Paragraph 30 and, therefore, denies them.
JCP is not required to answer to the allegations contained in Paragraph

3l of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph32 and, therefore, denies them.

DEFENDANT J.C. PENNEY CORPORATION,INC.'S FIRST AMENDED ANSWER PLAINTIFF'S FIRST AMENDED COMPLA INT

TO

Page6

32.

JCP is not required to answer to the allegations contained in Paragraph 32

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 33 and, therefore, denies them.

33.

JCP is not required to answer to the allegations contained in Paragraph 33

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 34 and, therefore, denies them.

34.

JCP is not required to answer to the allegations contained in Paragraph 34

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 35 and, therefore, denies them.

35.

JCP is not required to answer to the allegations contained in Paragraph 35

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 36 and, therefore, denies them.

36.

JCP is not required to answer to the allegations contained in Paragraph 36

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph3'/ and, therefore, denies them.

37.

JCP is not required to answer to the allegations contained in Paragraph 37

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks

DEFENDANT J.C. PENNEY CORPORATION,INC.'S FTRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT

PageT

sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 38 and, therefore, denies them.

38.

JCP is not required to answer to the allegations contained in Paragraph 38

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 41 and, therefore, denies them.

39.

JCP is not required to answer to the allegations contained in Paragraph 39

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
suffrcient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph

4l

and, therefore, denies them.

40.

JCP is not required to answer to the allegations contained in Paragraph 40

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph

4l

and, therefore, denies them.

41.

JCP denies the allegations contained in Paragraph 41, including but not limited and/or

to the allegations that it has directly and/or indirectly infringed (by inducement

contributory infringement), or is continuing to infringe, directly and/or indirectly, the '906
Patent and/or the '985 Patent.

42.

JCP is not required to answer to the allegations contained in Paragraph 42

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 43 and, therefore, denies them.

DEFENDANT J.C. PENNEY CORPORATION,INC.'S FIRST AMENDED ANSWER TO PLAINTTFF'S FIRST AMENDED COMPLAINT

Page 8

43.

JCP is not required to answer to the allegations contained in Paragraph 43

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 44 and, therefore, denies them.

44.

JCP is not required to answer to the allegations contained in Paragraph 44

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 45 and, therefore, denies them.

45.

JCP is not required to answer to the allegations contained in Paragraph 45

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 46 and, therefore, denies them.

46.

JCP is not required to answer to the allegations contained in Paragraph 46

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 47 and,, therefore, denies them.

47.

JCP is not required to answer to the allegations contained in Paragraph 47

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 48 and, therefore, denies them.

48.

JCP is not required to answer to the allegations contained in Paragraph 48

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks

DEFENDANT J.C. pENNEy CORPORATION, INC.'S FTRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT

Page 9

sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 49 and, therefore, denies them.

49.

JCP is not required to answer to the allegations contained in Paragraph 49

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 50 and, therefore, denies them.

50.

JCP is not required to answer to the allegations contained in Paragraph 50

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 51 and, therefore, denies them.

51.

JCP is not required to answer to the allegations contained in Paragraph

5l of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 52 and, therefore, denies them.

52.

JCP is not required to answer to the allegations contained in Paragraph 52

of

the Complaint because the allegations are not directed to JCP. Moreover, JCP lacks
sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 53 and, therefore, denies them.

53.

JCP denies the allegations contained in Paragraph 53 of the Complaint to the

extent that the allegations are directed to JCP. Moreover, JCP lacks sufficient knowledge or

information to form a belief as to the truth of the allegation contained in Paragraph 53
directed at Defendants other than JCP, and therefore, denies them.

DEFENDANT J.C. PENNEY CORPORATION,INC.'S FIRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT

Page

l0

54.

JCP denies the allegations contained in Paragraph 54 of the Complaint to the

extent that the allegations are directed to JCP. Moreover, JCP lacks sufficient knowledge or

information to form a belief as to the truth of the allegation contained in Paragraph 54
directed at Defendants other than JCP, and therefore, denies them.

55.

JCP denies the allegations contained in Paragraph 55 of the Complaint to the

extent that the allegations are directed to JCP. Moreover, JCP lacks sufficient knowledge or

information to form a belief as to the truth of the allegation contained in Paragraph 55
directed at Defendants other than JCP, and therefore, denies them.

56.

JCP denies the allegations contained in Paragraph 56 of the Complaint to the

extent that the allegations are directed to JCP. Moreover, JCP lacks sufficient knowledge or

information to form a belief as to the truth of the allegation contained in Paragraph 56
directed at Defendants other than JCP, and therefore, denies them.

PLAINTTFF'S PRAYER FOR RELIEF

57. 58.

JCP denies that Plaintiff is entitled to any of its requests for relief against JCP.

DEFENSES

JCP's Defenses are set forth below. JCP undertakes the burden of proof only

as to those defenses as required by law regardless

of how such defenses are denominated

herein. JCP reserves the right to amend its Answer to add additional Defenses.

FIRST DEFENSE

59.

JCP has not and does not directly or indirectly (by inducement, contributory

infringement, or otherwise) infringe any of the claims of the '906 Patent or the '985 Patent either

literally or under the Doctrine of Equivalents.

DEFENDANT J.C. PENNEY CORPORATION, INC.'S FIRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMEN DED COMPLAINT

Page I I

SECOND DEFENSE

60.

The '906 Patent and the '985 Patent are invalid or void for failing to satisff
as set

the conditions of patentability

forttr in 35 U.S.C $$100,

l0l, 102, 103 and/or 112.

THIRD DEFENSE
6l

.

Plaintiff is estopped from construing any valid claim of the '906 Patent or the

'985 Patent to be infringed literally or by the Doctrine of Equivalents by any act of JCP due to
the disclosures of prior art or to the admissions or statements made to the U.S. Patent and

Trademark Office during prosecution of the patents in suit or because of the disclosure or
language of the specification or claims thereof.

FOI.JRTH DEF'ENSE

62.

Plaintiff is not entitled to recover any damages to the extent that Plaintiff, or

any predecessors in interest to the '906 or the '985 Patent, or licensees thereof, failed to
properly mark any of their relevant products as required by 35 U.S.C. $287 or otherwise give
proper notice that JCP's actions actually infringed the '906 or the '985 Patent. JCP is not liable

to Plaintiff for the acts alleged to have been performed before JCP received notice that it was allegedly infringing the '906 and/or the '985 Patent.

FIFTH DEFENSE
63. herein.

JCP incorporates its responses as set forth above as though

fully set forth

64.

To the extent that Plaintiff asserts that JCP indirectly infringes, either by

contributory inûingement or inducement, JCP is not liable to Plaintifffor the acts alleged to have
been performed before JCP knew that its actions would cause the indirect infringement.

DEFENDANT J.C. PENNEY CORPORATION,INC.'S FIRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT

Page12

SD(TH DEFENSE

65.

Plaintiffs claims against JCP are improper to the extent that any allegedly

infringing products are directly or indirectly provided to JCP or by JCP to an entity having an
express or implied license to the '906 and/or the '985 Patent.

SEVENTH DEFENSE

66.

On information and belief, Plaintiffs patent rights with respect to

any

allegedly infringing products are exhausted by virtue of an express or implied license to the

'906 and/or the '985 Patent to one or more third parties.

EIGHTH DEFENSE

67.
law.

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

injury to Plaintiff is neither immediate or irreparable, and Plaintiff has adequate remedies at

IIINTH DEFENSE

68.

The '985 Patent is invalid and/or unenforceable under the doctrine of

prosecution laches.

TENTH DEFENSE

69.

On information and belief, and subject to further amendments as JCP obtains

more information during discovery, the '906 Patent and the '985 Patent are unenforceable as a
result of inequitable conduct.

70.

On information and beliet as recited in Eolas Technologies, Inc. v. Microsoft

Corp.,399 F.3d 1325 (Fed. Cir. 2005), Michael D. Doyle (Doyle), one of the inventors of the '906 Patent, knew of a browser named Viola ("Viola Browser") yet failed to disclose any
information regarding that reference to the United States Patent and Trademark Office (PTO).

DEFENDANT J.C. PENNEY CORPORATION,INC.'S FIRST AMENDED ANSWER TO PLAINTTFF'S FIRST AMENDED COMPLAINT

Page 13

71.

On information and beliet on August 37,1994, Doyle asserted in a press release

that researchers at the University of Califomia had 'ocreated software for embedding interactive program objects within hypermedia documents." That same day, Wei contacted Doyle via e-

mail in response to the press release. Wei alleged that his demonstration of Viola (version DX34)

to Sun Microsystems engineers in May 1993 exhibited a way to embed interactive objects and
transport them over the web. Wei directed Doyle in his August 31, 1994 e-mail to a document
he had prepared about Viola (the "Viola paper"), which was available on the Internet at least by

August 13,1994. Doyle downloaded and read the Viola paper. In a later email exchange, Doyle attempted

to obtain Wei's

concession that he was not the

first to invent the method for

embedding interactive program objects within hypermedia documents. Additionally, Doyle
asserted in the email exchange that Wei's invention was different from Doyle's invention.

72.

The Federal Circuit has held that "Vy'ei's May 7,1993 demonstration to two Sun

Microsystems employees without confidentiality agreements was a public use under [35 U.S.C.
$102(b)1." Eolas Technologies,399 F.3d 1325, 1335. Moreover, the Federal Circuit held that a
reasonable

jury could find at least claims I and 6 of the'906 patent obvious in light of the Viola

Browser; and a district court could find that Doyle had committed inequitable conduct by failing to disclose the Viola Browser to the PTO. Id. at 1335-36.

73.

On information and beliet on October

17

, 1994, the University of California filed

the'906 patent application. In 1998, before issuance of the'906 patent, Doyle performed more
research on Viola and made a folder labeled

"Viola stuff." This folder included press releases of

two "beta" versions of Viola from February and March of 1994.

74.

Mr. Doyle and the attorneys prosecuting the application for the '906 Patent owed

a duty of candor to the United States Patent and Trademark Office ("PTO") in connection with

DEFENDANT J.C. PENNEY CORPORATION, INC.'S FIRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT

Page 14

the prosecution of the '906 Patent. Mr. Doyle and/or the attorneys prosecuting the application

for the '906 Patent violated their duty of candor by, on information and belief, intentionally
failing to disclose the Viola browser to the PTO during the prosecution of the '906 Patent. The

Viola browser would have been material to the prosecution of the '906 Patent. Therefore, the
'906 Patent is unenforceable.

75.

This violation of the duty of candor carries through to each of the applications

claiming priority to the application for the '906 Patent, including the '985 Patent. The '906
Patent and the '985 Patent share the same specifications. On July 20, 2004, the PTO rejected the

claims pending in the application that issued as the '985 Patent under the doctrine of statutory

double-patenting and obviousness-type double patenting. The owner

of the '985

Patent

cancelled one pending claim and filed a terminal disclaimer for the remaining claims in order to

overcome the double-patenting rejections.

It was not argued that the pending claims were
Therefore, the '985 Patent is

patentably distinct from the claims
unenforceable.

of the '906 Patent.

ELEVENTH DEFENSE

76.

To the extent that Plaintiffs claims are based on acts performed by the Microsoft

Explorer browser or a user's use thereof, there can be no direct, and, therefore, no indirect
infringement due to Microsoft's purported license to the '906 Patent and/or the '985 Patent.

TWELFTH DEFENSE

77.
hands.

Plaintiffls claims are barred by the equitable doctrines of laches and/or unclean

COUNTERCLAIMS

DEFENDANT J.C. pENNEy CORPORATION, INC.'S FIRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT

Page

l5

78.
herein.

JCP incorporates its responses as set forth above as though fully set forth

79.

JCP has not directly

or indirectly

infringed, contributed

to or

induced

infringement of any valid or enforceable claim of the '906 Patent or the '985 Patent, and has not
otherwise committed any acts in violation of 35 U.S.C. ç271.

80.
and

The '906 Patent and the '985 Patent, and every claim thereof, are invalid for
103

failing to meet the conditions for patentability as set forth in 35 U.S.C. $$100, 101, 102,

l12.
8l

.

An actual controversy exists between JCP and Plaintiff concerning the alleged

infringement and validity of the '906 Patent and the '985 Patent by virtue of PlaintifPs
Complaint herein.

82. 83. 84.

JCP is entitled to judgment from this Court that no claim of either the '906

Patent or the '985 Patent has been infringed by JCP, and that all claims are invalid.

This is an exceptional case entitling JCP to an award of its attorney's fees

incurred in connection with this action pursuant to 35 U.S.C. $285.
JCP continues

to investigate this matter and reserves the right to amend its

Answer and/or Counterclaims to assert any additional defenses or counterclaims that come to
light upon fuither investigation and discovery.

PRAYER FOR RELIEF
\JVHEREFORE JCP prays that:

85. 86.
'985 Patent;

the Court dismiss the Complaint against JCP with prejudice; the Court declare that JCP has not and does not infringe the '906 Patent or the

DEFENDANT J.C. PENNEY CORPORATION,INC.'S FIRST AMENDED ANSWER PLAINTIFF'S FIRST AMEN DED COMPLAINT

TO

Page 16

87. 88.
against JCP;

the Court declare that the '906 Patent and the '985 Patent are invalid; the Court declare that Eolas is not entitled to any remedy or relief whatsoever

89. 90.

the Court award JCP its costs, together with reasonable attorneys fees and all
case under 35 U.S.C. $285; and

of its expenses for this suit because this is an exceptional

the Court award JCP such other relief as this Court may deem just and proper

at law or in equity.

Dated: June 3, 2009.

Respectfu lly submitted,

/s/ Jefrey F. Yee Jeffrey K. Joyner (admittedpro hac vice)

[e-mail] Jeffrey F. Yee (admittedpro hac vtce) [e-mail] GREENBERG TRAURIG LLP 2450 Colorado Avenue, Suite 400E Santa Monica, California 90404 Telephone: (3 l0) 586-7700 Facsimile: (3 I 0) 586-7800
Christopher M. Joe chris j oe@bj cipl aw. com Brian Carpenter brian. carpenterb@bj cip I aw. com Eric V/. Buether eric.buethere@bj ciplaw. com BuetherJoe & Carpenter, LLP 1700 Pacific, Suite 2390 Dallas, Texas 75201 Telephone: [phone] Facsimile: [phone]

Ql\

ATTORNEYS FOR DEFENDAIIT J.C. PEI\I\EY CORPORATION, INC.

DEFENDANT J.C. PENNEY CORPORATION, INC.'S FIRST AMENDED ANSWER PLAINTIFF'S FIRST AMENDED COMPLAINT

TO

PagelT

CERÏIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to have consented

to electronic service are being serued with a copy of this document via the Court's CÌvI/ECF
system per Local Rule CV-5(aX3) this 3rd day of June 2010. Any other counsel of record

will

be served by facsimile transmission and/or electronic mail pursuant to Local Rule CV-S(d).

/s/ Jefrev F. Yee Jeffrey F. Yee

DEFENDANT J.C. PENNEY CORPORATION,INC.'S FIRST AMENDED ANS\¡VER TO PLAINTIFF'S FIRST AMENDED COMPLAINT

Page

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