Parallel Networks, LLC v. Adidas America, Inc. et al

Filing 276

MITSUBISHI'S ANSWER to #1 Complaint,,,,,,, AND, COUNTERCLAIM against Parallel Networks, LLC by Mitsubishi Motors North America, Inc..(McNabnay, Neil)

Parallel Networks, LLC v. Adidas America, Inc. et al

Doc. 276

IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS TYLER DIVISION PARALLEL NETWORKS, LLC, Plaintiff, v. ADIDAS AMERICA, INC., et al., Defendants. MITSUBISHI'S ANSWER AND COUNTERCLAIM TO PARALLEL NETWORKS' ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT Defendant Mitsubishi Motors North America, Inc., ("Mitsubishi") files this Answer and Counterclaim to Plaintiff Parallel Networks, LLC's ("Parallel Networks") Original Complaint for Patent Infringement ("Complaint"). Mitsubishi denies the allegations and characterizations in Parallel Networks' Complaint unless expressly admitted in the following paragraphs: 1. Mitsubishi lacks knowledge sufficient to confirm or deny the allegations 6:10-CV-00491 JURY TRIAL DEMANDED

of Paragraph 1 and therefore denies the same. 2­44. Paragraphs 2 through 44 do not require a response by Mitsubishi. To the

extent that Paragraphs 2 through 44 are deemed to require a response, Mitsubishi lacks knowledge sufficient to confirm or deny the allegations and therefore denies the same. 45. Cypress, California. 46­61. Paragraphs 46 through 61 do not require a response by Mitsubishi. To the Mitsubishi admits that it is a corporation with a place of business in

extent that Paragraphs 46 through 61 are deemed to require a response, Mitsubishi lacks knowledge sufficient to confirm or deny the allegations and therefore denies the same.

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JURISDICTION AND VENUE 62. Mitsubishi admits that this action arises under the patent laws of the

United States, Title 35 of the United States Code and that this Court has subject matter jurisdiction of this action under 28 U.S.C. §§ 1331 and 1338(a). Mitsubishi admits that it is subject to this Court's specific and general jurisdiction but denies it is due to any alleged infringement. Mitsubishi further lacks knowledge sufficient to confirm or deny the allegations against the other defendants and therefore denies the same. Except as expressly admitted herein, Mitsubishi denies each and every allegation of Paragraph 62. 63. Mitsubishi admits that venue is proper under 28 U.S.C. §§ 1391(b),

1391(c) and 1400(b), but denies that venue is convenient. Mitsubishi admits that it is subject to personal jurisdiction in the Eastern District of Texas but denies it is due to any alleged infringement. Mitsubishi lacks knowledge sufficient to confirm or deny the allegations against the other defendants and therefore denies the same. Except as expressly admitted herein,

Mitsubishi denies each and every allegation of Paragraph 63. COUNT I INFRINGEMENT OF U.S. PATENT NO. 6,446,111 64. Mitsubishi admits that U.S. Patent No. 6,446,111 (the "'111 Patent")

issued on September 3, 2002. Mitsubishi denies that the '111 Patent was duly and legally issued. Except as expressly admitted herein, Mitsubishi denies each and every allegation of Paragraph 64. 65. Mitsubishi lacks knowledge sufficient to confirm or deny the allegations

of Paragraph 65 and therefore denies the same. 66. Mitsubishi lacks knowledge sufficient to confirm or deny the allegations

of Paragraph 66 and therefore denies the same.
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67­234.

Paragraphs 67 through 234 do not require a response by Mitsubishi. To

the extent that Paragraphs 67 through 234 are deemed to require a response, Mitsubishi lacks knowledge sufficient to confirm or deny the allegations and therefore denies the same. 235. 236. 237. 238. 239­302. Mitsubishi denies the allegations of Paragraph 235. Mitsubishi denies the allegations of Paragraph 236. Mitsubishi denies the allegations of Paragraph 237. Mitsubishi denies the allegations of Paragraph 238. Paragraphs 239 through 302 do not require a response by Mitsubishi. To

the extent that Paragraphs 239 through 302 are deemed to require a response, Mitsubishi lacks knowledge sufficient to confirm or deny the allegations and therefore denies the same. 303. Mitsubishi denies the allegations of Paragraph 303 directed at Mitsubishi.

To the extent that Paragraph 303 is deemed to require a response with respect to the other Defendants, Mitsubishi lacks knowledge sufficient to confirm or deny the allegations and therefore denies the same. Except as expressly admitted herein, Mitsubishi denies each and every allegation of Paragraph 303. 304. Mitsubishi denies the allegations of Paragraph 304 directed at Mitsubishi.

To the extent that Paragraph 304 is deemed to require a response with respect to the other Defendants, Mitsubishi lacks knowledge sufficient to confirm or deny the allegations and therefore denies the same. Except as expressly admitted herein, Mitsubishi denies each and every allegation of Paragraph 304. COUNT II WILLFUL INFRINGEMENT 305. Mitsubishi denies that it received pre-suit notice of the '111 Patent.

Mitsubishi denies that it has infringed or is infringing the '111 Patent. Mitsubishi further denies
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that it has willfully infringed or is willfully infringing the '111 Patent.

Mitsubishi lacks

knowledge sufficient to confirm or deny the allegations against the other defendants and therefore denies the same. Except as expressly admitted herein, Mitsubishi denies each and every allegation of Paragraph 305. 306. Mitsubishi requests that the Court deny all relief to Parallel Networks,

including that requested by Parallel Networks in its Prayer for Relief. AFFIRMATIVE DEFENSES Mitsubishi's Affirmative Defenses are listed below. Mitsubishi reserves the right to amend its Answer to add additional Affirmative Defenses, including instances of inequitable conduct, consistent with the facts discovered in the case. FIRST DEFENSE 307. Mitsubishi does not infringe and has not infringed any claim of the '111

Patent under any theory (including directly (whether individually or jointly) or indirectly (whether contributorily or by inducement)). SECOND DEFENSE 308. The '111 Patent is invalid because the alleged invention fails to satisfy the

conditions for patentability specified in 35 U.S.C. § 100 et seq., including §§ 101, 102, 103, and 112. THIRD DEFENSE 309. To the extent that Parallel Networks, and alleged predecessors-in-interest

to the '111 Patent, failed to properly mark any of their relevant products as required by 35 U.S.C. § 287 or otherwise give proper notice that Mitsubishi's actions allegedly infringed the '111

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Patent, Mitsubishi is not liable to Parallel Networks for the acts alleged to have been performed before it received actual notice that it was allegedly infringing the '111 Patent. FOURTH DEFENSE 310. To the extent that Parallel Networks asserts that Mitsubishi indirectly

infringes, either by contributory infringement or inducement of infringement, Mitsubishi is not liable to Parallel Networks for the acts alleged to have been performed before Mitsubishi knew that its actions would cause indirect infringement. FIFTH DEFENSE 311. Parallel Networks' attempted enforcement of the '111 Patent against

Mitsubishi is barred by laches and estoppel. SIXTH DEFENSE 312. Parallel Networks' claims directed to indirect infringement, either by

contributory infringement or inducement of infringement, and willful infringement fail to state a claim for which relief may be granted. COUNTERCLAIMS The Parties 313. Counterclaim Plaintiff Mitsubishi Motors North America, Inc.,

("Mitsubishi") is a corporation with its principal place of business located in Cypress, California. 314. On information and belief based solely on Paragraph 1 of the Complaint as

pled by Parallel Networks, Parallel Networks is a Texas Limited Liability Company with its principal place of business located in Tyler, Texas.

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Jurisdiction 315. This counterclaim arises under the patent laws of the United States, Title

35, United States Code. The jurisdiction of this Court is proper under at least 35 U.S.C. § 271 et seq. and 28 U.S.C. §§ 1331, 1338, 1367, and 2201 et seq. 316. Venue is proper in this District pursuant to at least 28 U.S.C. §§ 1391 and

1400. Venue is further proper in the Tyler Division. Count I Declaratory Relief Regarding Non-infringement 317. Based on Parallel Networks' filing of this action and Mitsubishi's First

Defense, an actual controversy has arisen and now exists between the parties as to whether Mitsubishi infringes the '111 Patent. 318. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et

seq., Mitsubishi requests a declaration by the Court that it does not infringe any claim of the '111 Patent under any theory (including directly (whether individually or jointly) or indirectly (whether contributorily or by inducement)). Count II Declaratory Relief Regarding Invalidity 319. Based on Parallel Networks' filing of this action and Mitsubishi's Second

Defense, an actual controversy has arisen and now exists between the parties as to the validity of the claims of the '111 Patent. 320. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et

seq., and 35 U.S.C. § 100 et seq., Mitsubishi requests a declaration by the Court that the claims of the '111 Patent are invalid.

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Count III Declaratory Relief Regarding Unenforceability 321. Based on Parallel Networks' filing of this action and Mitsubishi's Third,

Fourth, and Fifth Defenses, an actual controversy has arisen and now exists between the parties as to the enforceability of the '111 Patent. 322. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et

seq., Mitsubishi requests a declaration by the Court that the claims of the '111 Patent are unenforceable. PRAYER Mitsubishi respectfully requests a judgment against Parallel Networks as follows: A. B. C. A declaration that the '111 Patent is unenforceable; A declaration that the asserted claims of the '111 Patent are invalid; A declaration that Mitsubishi does not infringe, under any theory, any valid claim of the '111 Patent that may be enforceable; D. E. F. G. H. A declaration that Parallel Networks take nothing by its Complaint; Judgment against Parallel Networks and in favor of Mitsubishi; Dismissal of the Complaint with prejudice; An award to Mitsubishi of its costs and attorneys' fees incurred in this action; and Further relief as the Court may deem just and proper. JURY DEMAND Mitsubishi hereby demands trial by jury on all issues.

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Dated: November 22, 2010

Respectfully submitted, FISH & RICHARDSON P.C.

By: /s/ Neil J. McNabnay Thomas M. Melsheimer Texas Bar No. 13922550 [e-mail] Neil J. McNabnay Texas Bar No. 24002583 [e-mail] Britnee M. Reamy Texas Bar No. 24053439 [e-mail] David B. Conrad Texas Bar No. 24049042 [e-mail] 1717 Main Street, Suite 5000 Dallas, Texas 75201 [phone] Telephone [phone] Facsimile Counsel for Defendant MITSUBISHI MOTORS NORTH AMERICA, INC.

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CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the above and foregoing document has been served on November 22, 2010, to all counsel of record who are deemed to have consented to electronic service via the Court's CM/ECF system per Local Rule CV-5(a)(3). /s/ Neil J. McNabnay Neil J. McNabnay

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