I/P Engine, Inc. v. AOL, Inc. et al

Filing 42

Gannett Company, Inc.'s ANSWER to 1 Complaint, and, COUNTERCLAIM against I/P Engine, Inc. by Gannett Company, Inc..(Noona, Stephen)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
I/P ENGINE, INC.
Plaintiff,
v.

Civil Action No. 2:11-cv-512

AOL, INC., et al.,
Defendants.

DEFENDANT GANNETT COMPANY, INC.'S ANSWER, DEFENSES AND
COUNTERCLAIMS TO PLAINTIFF I/P ENGINE, INC.'S COMPLAINT

Defendant Gannett Co., Inc., improperly named as Gannett Company, Inc., ("Gannett"),
by and through its undersigned counsel, hereby answers Plaintiff I/P Engine, Inc.'s ("I/P Engine")
Complaint ("Complaint").
NATURE OF ACTION
1.

Gannett admits that this purports to be an action for infringement of U.S. Patent Nos.

6,314,420 ("the '420 patent") and 6,775,664 ("the '664 patent"). Gannett is without knowledge or
information sufficient to form a belief as to the truth of the remaining allegations in paragraph 1
and, on that basis, denies them. To the extent that the allegations set forth in paragraph 1 relate
to other defendants, such allegations require no response from Google.
JURISDICTION AND VENUE
2.

Gannett admits that Plaintiff's claims purport to arise under the United States Patent Act,

but denies that such claims have merit.
3.

Gannett does not contest that the Court has jurisdiction over the subject matter of this

action under 28 U.S.C. §§ 1331 and 1338(a).
4.

Gannett does not contest personal jurisdiction in this District for this case. Gannett

denies infringing the '420 and '664 patent. In addition, to the extent that the remaining
allegations set forth in paragraph are directed to Gannett, Gannett denies the remaining

allegations in paragraph 4. To the extent that the allegations set forth in paragraph 4 relate to
other defendants, such allegations require no response from Gannett.
5.

Gannett does not contest venue in this District for this case. Gannett denies infringing the

'420 and '664 patent. In addition, to the extent that the remaining allegations set forth in
paragraph are directed to Gannett, Gannett denies the remaining allegations in paragraph 5. To
the extent that the allegations set forth in paragraph 5 relate to other defendants, such allegations
require no response from Gannett.
PARTIES
6.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 6 and, on that basis, denies them.
7.

The allegations of paragraph 7 of the Complaint are not directed to Gannett, and therefore

no answer is required.
8.

The allegations of paragraph 8 of the Complaint are not directed to Gannett, and therefore

no answer is required.
9.

The allegations of paragraph 9 of the Complaint are not directed to Gannett, and therefore

no answer is required.
10.

Gannett admits that it is a corporation organized under the laws of the State of Delaware

with its headquarters and principal place of business at 7950 Jones Branch Drive, McLean,
Virginia 22107. Gannett admits that it has facilities and employs workers in the state of
Virginia.
11.

The allegations of paragraph 11 of the Complaint are not directed to Gannett, and

therefore no answer is required.
FACTUAL BACKGROUND
The Inventors' Involvement in Early Search Companies
12.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 12 and, on that basis, denies them.
13.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 13 and, on that basis, denies them.
14.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 14 and, on that basis, denies them.

2

15.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 15 and, on that basis, denies them.
16.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 16 and, on that basis, denies them.
17.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 17 and, on that basis, denies them.
18.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 18 and, on that basis, denies them.
19.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 19 and, on that basis, denies them.
20.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 20 and, on that basis, denies them.
21.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 21 and, on that basis, denies them.
22.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 22 and, on that basis, denies them.
23.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 23 and, on that basis, denies them.
24.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 24 and, on that basis, denies them.
25.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 25 and, on that basis, denies them.
The Search Engine Industry
26.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 26 and, on that basis, denies them.
27.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 27 and, on that basis, denies them.
28.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 28 and, on that basis, denies them.
29.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 29 and, on that basis, denies them.
3

30.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

remaining allegations contained in paragraph 30 and, on that basis, denies them.
The '420 and '664 Patents
Development of the Search Engine Industry
31.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 31 and, on that basis, denies them.
32.

Gannett admits the '420 patent is directed to search engines. Gannett denies any

remaining allegations in paragraph 32.
33.

Gannett admits the '664 patent is related to the '420 patent and relates to search engines.

Gannett denies any remaining allegations in paragraph 33.
34.

Gannett denies incorporating any technology claimed by the '420 and '664 patents into

any of its products. To the extent that the allegations set forth in paragraph 34 are not directed to
Gannett, no answer is required. Gannett lacks sufficient information to form a belief as to the
truth or falsity of the remaining allegations contained in paragraph 34 and, on that basis, denies
them.
35.

Gannett denies each and every allegation of paragraph 35 of the Complaint.

36.

Gannett admits that claim 10 of the '420 patent includes the following language: "A

search engine system comprising: a system for scanning a network to make a demand search for
informons relevant to a query from an individual user; a content-based filter system for receiving
the informons from the scanning system and for filtering the informons on the basis of applicable
content profile data for relevance to the query; and a feedback system for receiving collaborative
feedback data from system users relative to informons considered by such users; the filter system
combining pertaining feedback data from the feedback system with the content profile data in
filtering each informon for relevance to the query." Gannett denies any remaining allegations in
paragraph 36.
37.

Gannett denies that Gannett products use the Lang/Kosak Relevance Filtering

Technology. In addition, to the extent that the allegations set forth in paragraph are directed to
Gannett, Gannett denies the remaining allegations in paragraph 37. To the extent that the
allegations set forth in paragraph 37 are not directed to Gannett, no answer is required.
38.

Gannett lacks sufficient information to form a belief as to the truth or falsity of the

allegations contained in paragraph 38 and, on that basis, denies them.
4

Development of the Search Engine Industry
39.

Paragraph 39 does not include a citation for the quotation. Gannett lacks sufficient

information to form a belief as to the truth or falsity of the allegations contained in paragraph 39
and, on that basis, denies them.
40.

Paragraph 40 does not include a citation for the quotation. Gannett lacks sufficient

information to form a belief as to the truth or falsity of the allegations contained in paragraph 40
and, on that basis, denies them.
41.

Gannett denies that Gannett products use the Lang/Kosak Relevance Filtering

Technology. Gannett also denies marketing its search advertising systems based on the features
of the Lang/Kosak Relevance Filtering Technology. In addition, to the extent that the allegations
set forth in paragraph are directed to Gannett, Gannett denies the remaining allegations in
paragraph 41. To the extent that the allegations set forth in paragraph 41 are not directed to
Gannett, no answer is required.
Google's Use of the Patented Technology
42.

The allegations of paragraph 42 of the Complaint are not directed to Gannett, and

therefore no answer is required.
43.

The allegations of paragraph 43 of the Complaint are not directed to Gannett, and

therefore no answer is required.
44.

The allegations of paragraph 44 of the Complaint are not directed to Gannett, and

therefore no answer is required.
45.

The allegations of paragraph 45 of the Complaint are not directed to Gannett, and

therefore no answer is required.
46.

The allegations of paragraph 46 of the Complaint are not directed to Gannett, and

therefore no answer is required.
47.

The allegations of paragraph 47 of the Complaint are not directed to Gannett, and

therefore no answer is required.
Google's Knowledge of the Patented Technology
48.

The allegations of paragraph 48 of the Complaint are not directed to Gannett, and

therefore no answer is required.
49.

The allegations of paragraph 49 of the Complaint are not directed to Gannett, and

therefore no answer is required.
5

50.

The allegations of paragraph 50 of the Complaint are not directed to Gannett, and

therefore no answer is required.
51.

The allegations of paragraph 51 of the Complaint are not directed to Gannett, and

therefore no answer is required.
52.

The allegations of paragraph 52 of the Complaint are not directed to Gannett, and

therefore no answer is required.
53.

The allegations of paragraph 53 of the Complaint are not directed to Gannett, and

therefore no answer is required.
AOL's Use of the Patented Technology
54.

The allegations of paragraph 54 of the Complaint are not directed to Gannett, and

therefore no answer is required.
55.

The allegations of paragraph 55 of the Complaint are not directed to Gannett, and

therefore no answer is required.
56.

The allegations of paragraph 56 of the Complaint are not directed to Gannett, and

therefore no answer is required.
57.

The allegations of paragraph 57 of the Complaint are not directed to Gannett, and

therefore no answer is required.
58.

The allegations of paragraph 58 of the Complaint are not directed to Gannett, and

therefore no answer is required.
59.

The allegations of paragraph 59 of the Complaint are not directed to Gannett, and

therefore no answer is required.
60.

The allegations of paragraph 60 of the Complaint are not directed to Gannett, and

therefore no answer is required.
AOL's Knowledge of the Patented Technology
61.

The allegations of paragraph 61 of the Complaint are not directed to Gannett, and

therefore no answer is required.
62.

The allegations of paragraph 62 of the Complaint are not directed to Gannett, and

therefore no answer is required.
63.

The allegations of paragraph 63 of the Complaint are not directed to Gannett, and

therefore no answer is required.

6

64.

The allegations of paragraph 64 of the Complaint are not directed to Gannett, and

therefore no answer is required.
65.

The allegations of paragraph 65 of the Complaint are not directed to Gannett, and

therefore no answer is required.
IAC's Use of the Patented Technology
66.

The allegations of paragraph 66 of the Complaint are not directed to Gannett, and

therefore no answer is required.
67.

The allegations of paragraph 67 of the Complaint are not directed to Gannett, and

therefore no answer is required.
68.

The allegations of paragraph 68 of the Complaint are not directed to Gannett, and

therefore no answer is required.
69.

The allegations of paragraph 69 of the Complaint are not directed to Gannett, and

therefore no answer is required.
70.

The allegations of paragraph 70 of the Complaint are not directed to Gannett, and

therefore no answer is required.
71.

The allegations of paragraph 71 of the Complaint are not directed to Gannett, and

therefore no answer is required.
Others that Use the Patented Technology
72.

The allegations of paragraph 72 of the Complaint are not directed to Gannett, and

therefore no answer is required.
73.

Gannett denies that its publishing website[s] uses the Lang/Kosak Relevance Filtering

Technology. To the extent the allegations of paragraph 73 of the Complaint are not directed to
Gannett, no answer is required.
74.

The allegations of paragraph 74 of the Complaint are not directed to Gannett, and

therefore no answer is required.
75.

The allegations of paragraph 75 of the Complaint are not directed to Gannett, and

therefore no answer is required.
76.

Gannett admits that its publishing website[s] displays advertisements alongside its

product search results.
77.

Gannett admits that its website[s] use a Google search engine and allow advertisements

to be shown on its website[s] in connection with searches performed through its website[s].
7

Gannett denies that any of the functionality on its website[s] uses the Lang/Kosak Relevance
Filtering Technology. Gannett denies that the allegations of paragraph 77 of the Complaint
provide a full and complete description of how advertisements are analyzed or ranked on
Gannett's website[s]. Gannett denies any remaining allegations in paragraph 77 of the
Complaint.
FIRST CLAIM FOR RELIEF
(Infringement of U.S. Patent No. 6,314,420)
78.

Gannett incorporates by reference its responses contained in paragraphs 1 through 77

above.
79.

Gannett admits that the '420 patent appears on its face to be entitled

"Collaborative/Adaptive Search Engine." In addition, Gannett admits that the patent on its face
states that the named inventors of the '420 patent are Messrs Andrew K. Lang and Donald M.
Kosak. Gannett also admits that what appears to be a true and correct copy of the '420 patent
was attached as Exhibit A. Gannett lacks sufficient information to form a belief as to the truth or
falsity of the remaining allegations contained in paragraph 79 and, on that basis, denies them.
80.

The allegations of paragraph 80 of the Complaint are not directed to Gannett, and

therefore no answer is required.
81.

The allegations of paragraph 81 of the Complaint are not directed to Gannett, and

therefore no answer is required.
82.

The allegations of paragraph 82 of the Complaint are not directed to Gannett, and

therefore no answer is required.
83.

The allegations of paragraph 83 of the Complaint are not directed to Gannett, and

therefore no answer is required.
84.

The allegations of paragraph 84 of the Complaint are not directed to Gannett, and

therefore no answer is required.
85.

The allegations of paragraph 85 of the Complaint are not directed to Gannett, and

therefore no answer is required.
86.

The allegations of paragraph 86 of the Complaint are not directed to Gannett, and

therefore no answer is required.
87.

The allegations of paragraph 87 of the Complaint are not directed to Gannett, and

therefore no answer is required.
8

88.

The allegations of paragraph 88 of the Complaint are not directed to Gannett, and

therefore no answer is required.
89.

The allegations of paragraph 89 of the Complaint are not directed to Gannett, and

therefore no answer is required.
90.

The allegations of paragraph 90 of the Complaint are not directed to Gannett, and

therefore no answer is required.
91.

The allegations of paragraph 91 of the Complaint are not directed to Gannett, and

therefore no answer is required.
92.

The allegations of paragraph 92 of the Complaint are not directed to Gannett, and

therefore no answer is required.
93.

Gannett denies the allegations in paragraph 93 of the complaint.

94.

Gannett denies the allegations in paragraph 94 of the complaint.

95.

Gannett denies the allegations in paragraph 95 of the complaint.

96.

Gannett admits that the Complaint contains reference to the '420 patent. Gannett denies

the remaining allegations in paragraph 96.
97.

Gannett admits that the Complaint contains reference to the '420 patent. Gannett denies

the remaining allegations in paragraph 97.
98.

The allegations of paragraph 98 of the Complaint are not directed to Gannett, and

therefore no answer is required.
99.

The allegations of paragraph 99 of the Complaint are not directed to Gannett, and

therefore no answer is required.
100.

The allegations of paragraph 100 of the Complaint are not directed to Gannett, and

therefore no answer is required.
101.

The allegations of paragraph 101 of the Complaint are not directed to Gannett, and

therefore no answer is required.
102.

The allegations of paragraph 102 of the Complaint are not directed to Gannett, and

therefore no answer is required.
103.

To the extent the allegations in paragraph 103 of the Complaint are directed to Gannett,

Gannett denies the allegations in paragraph 103. To the extent the allegations in paragraph 103
of the Complaint are not directed to Gannett, no answer is required.

9

104.

To the extent the allegations in paragraph 104 of the Complaint are directed to Gannett,

Gannett denies the allegations in paragraph 104. To the extent the allegations in paragraph 104
of the Complaint are not directed to Gannett, no answer is required.
105.

To the extent the allegations in paragraph 105 of the Complaint are directed to Gannett,

Gannett denies the allegations in paragraph 105. To the extent the allegations in paragraph 104
of the Complaint are not directed to Gannett, no answer is required.
SECOND CLAIM FOR RELIEF
(Infringement of U.S. Patent NO. 6,775,664)
106.

Gannett incorporates by reference its responses contained in paragraphs 1 through 105

above.
107.

Gannett admits that the '664 patent appears on its face to be entitled "Information Filter

System and Method for Integrated Content-based and Collaborative/Adaptive Feedback
Queries." In addition, Gannett admits that the patent on its face states that the named inventors
of the '664 patent are Messrs Andrew K. Lang and Donald M. Kosak. Gannett also admits that
what appears to be a true and correct copy of the '664 patent was attached as Exhibit B. Gannett
lacks sufficient information to form a belief as to the truth or falsity of the remaining allegations
contained in paragraph 107 on that basis, denies them.
108.

The allegations of paragraph 108 of the Complaint are not directed to Gannett, and

therefore no answer is required.
109.

The allegations of paragraph 109 of the Complaint are not directed to Gannett, and

therefore no answer is required.
110.

The allegations of paragraph 110 of the Complaint are not directed to Gannett, and

therefore no answer is required.
111.

The allegations of paragraph 111 of the Complaint are not directed to Gannett, and

therefore no answer is required.
112.

The allegations of paragraph 112 of the Complaint are not directed to Gannett, and

therefore no answer is required.
113.

The allegations of paragraph 113 of the Complaint are not directed to Gannett, and

therefore no answer is required.
114.

The allegations of paragraph 114 of the Complaint are not directed to Gannett, and

therefore no answer is required.
10

115.

The allegations of paragraph 115 of the Complaint are not directed to Gannett, and

therefore no answer is required.
116.

The allegations of paragraph 116 of the Complaint are not directed to Gannett, and

therefore no answer is required.
117.

The allegations of paragraph 117 of the Complaint are not directed to Gannett, and

therefore no answer is required.
118.

The allegations of paragraph 118 of the Complaint are not directed to Gannett, and

therefore no answer is required.
119.

The allegations of paragraph 119 of the Complaint are not directed to Gannett, and

therefore no answer is required.
120.

The allegations of paragraph 120 of the Complaint are not directed to Gannett, and

therefore no answer is required.
121.

The allegations of paragraph 121 of the Complaint are not directed to Gannett, and

therefore no answer is required.
122.

The allegations of paragraph 122 of the Complaint are not directed to Gannett, and

therefore no answer is required.
123.

Gannett denies the allegations in paragraph 123 of the complaint.

124.

Gannett denies the allegations in paragraph 124 of the complaint.

125.

Gannett denies the allegations in paragraph 125 of the complaint.

126.

Gannett admits that the Complaint contains reference to the '664 patent. Gannett denies

the remaining allegations in paragraph 126.
127.

Gannett admits that the Complaint contains reference to the '664 patent. Gannett denies

the remaining allegations in paragraph 127.
128.

The allegations of paragraph 128 of the Complaint are not directed to Gannett, and

therefore no answer is required.
129.

The allegations of paragraph 129 of the Complaint are not directed to Gannett, and

therefore no answer is required.
130.

The allegations of paragraph 130 of the Complaint are not directed to Gannett, and

therefore no answer is required.
131.

The allegations of paragraph 131 of the Complaint are not directed to Gannett, and

therefore no answer is required.
11

132.

The allegations of paragraph 132 of the Complaint are not directed to Gannett, and

therefore no answer is required.
133.

To the extent the allegations in paragraph 133 of the Complaint are directed to Gannett,

Gannett denies the allegations in paragraph 133. To the extent the allegations in paragraph 133
of the Complaint are not directed to Gannett, no answer is required.
134.

To the extent the allegations in paragraph 134 of the Complaint are directed to Gannett,

Gannett denies the allegations in paragraph 134. To the extent the allegations in paragraph 134
of the Complaint are not directed to Gannett, no answer is required.
135.

To the extent the allegations in paragraph 135 of the Complaint are directed to Gannett,

Gannett denies the allegations in paragraph 135. To the extent the allegations in paragraph 135
of the Complaint are not directed to Gannett, no answer is required.
DEMAND FOR JURY TRIAL
136.

Gannett admits that plaintiff has requested a trial by jury, and joins in that demand.
PRAYER FOR RELIEF

1.

Gannett denies that it has infringed at least one claim of the '420 or '664 patent and that

Plaintiff is entitled to any relief.
2.

Gannett denies that Plaintiff is entitled to any damages

3.

Gannett denies that Plaintiff is entitled to costs and attorneys' fees.

4.

Gannett denies that Plaintiff is entitled to any further relief.

137.

DEFENSES
Without admitting or acknowledging that it bears the burden of proof as to any of them,

Gannett asserts the following affirmative and other defenses.
FIRST DEFENSE
Non-Infringement of the I/P Engine patents
138.

Gannett has not infringed, and is not infringing, any valid claim of the '420 patent or the

'664 patent (collectively, the "I/P Engine patents").
SECOND DEFENSE
Invalidity and/or Enforceability of the I/P Engine patents
139.

The claims of the I/P Engine patents are invalid for failure to satisfy one or more

conditions of patentability set forth in Title 35 of the United States Code, including, but not
limited to, 35 U.S.C. §§ 101, 102, 103 and/or 112.
12

THIRD DEFENSE
Laches/Estoppel
140.

On information and belief, Plaintiff's claims are barred, in whole or in part, by the

equitable doctrines of laches and estoppel.
FOURTH DEFENSE
Limitation on Damages and Recovery
141.

Plaintiff's ability to recover damages is limited by the provisions of 35 U.S.C. §§ 286-

287.
GOOGLE'S COUNTERCLAIMS FOR DECLARATORY RELIEF
Gannett, for its counterclaims against Plaintiff I/P Engine, states and alleges as follows:
NATURE OF THE ACTION
142.

These counterclaims seek declaratory judgments of non-infringement and invalidity of

the '420 and '664 patents asserted by I/P Engine in this action. Gannett seeks judgment under the
patent laws of the United States, 35 U.S.C. § 101 et seq., and the Declaratory Judgment Act, 28
U.S.C. § 2201, 2202.
PARTIES
143.

Gannett is a corporation organized and existing under the laws of Delaware, with its

corporate headquarters at 7950 Jones Branch Drive, McLean, Virginia 22107.
144.

I/P Engine has alleged that it is a corporation organized and existing under the laws of the

Commonwealth of Virginia, with its principal place of business in New York, New York.
JURISDICTION AND VENUE
145.

This Court has subject matter jurisdiction over these counterclaims pursuant to 28 U.S.C.

§§ 1331, 1338, the patent laws of the United States, 35 U.S.C. §§ 101 et seq., and the
Declaratory Judgment Act, 28 U.S.C. §§ 2201, 2202.
146.

Plaintiff I/P Engine has consented to personal jurisdiction of this Court by commencing

its action for patent infringement in this Court.
147.

To the extent the action initiated by I/P Engine's Complaint is adjudicated in this District,

venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b) and (c).
148.

The '420 patent was issued by the United States Patent and Trademark Office on

November 6, 2001. Plaintiff I/P Engine, based on averments in its Complaint, claims to be the

13

assignee of the '420 patent and claims to hold the right to sue and recover for past, present, and
future infringement thereof. Plaintiff I/P Engine also claims that Gannett has infringed the '420
patent.
149.

The '664 patent was issued by the United States Patent and Trademark Office on August

10, 2004. Plaintiff I/P Engine, based on averments in its Complaint, claims to be the assignee of
the '664 patent and claims to hold the right to sue and recover for past, present, and future
infringement thereof. Plaintiff I/P Engine also claims that Gannett has infringed the '664 patent.
COUNT I
(DECLARATORY RELIEF REGARDING NON-INFRINGEMENT OF THE '420
PATENT)
150.

An actual and justiciable controversy exists between Gannett and Plaintiff as to Gannett's

non-infringement of the '420 patent, as evidenced by Plaintiff's Complaint and Gannett's Answer
to Plaintiff's Complaint.
151.

Pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., Gannett is entitled to

a declaration of the Court that Gannett has not infringed and does not currently infringe any
claim of the '420 patent, either directly, contributorily, or by inducement.
COUNT II
(DECLARATORY RELIEF REGARDING NON-INFRINGEMENT OF THE '664
PATENT)
152.

An actual and justiciable controversy exists between Gannett and Plaintiff as to Gannett's

non-infringement of the '664 patent, as evidenced by Plaintiff's Complaint and Gannett's Answer
to Plaintiff's Complaint.
153.

Pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., Gannett is entitled to

a declaration of the Court that Gannett has not infringed and does not currently infringe any
claim of the '664 patent, either directly, contributorily, or by inducement.
COUNT III
(DECLARATORY RELIEF REGARDING INVALIDITY AND/OR
UNENFORCEABILITY OF THE '420 PATENT)
154.

An actual and justiciable controversy exists between Gannett and Plaintiff as to the

validity of the '420 patent, as evidenced by Plaintiff's Complaint and Gannett's Answer to
Plaintiff's Complaint.

14

155.

Pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., Gannett is entitled to

a declaration of the Court that each claim of the '420 patent is invalid and/or unenforceable for
failure to satisfy one or more of the conditions of patentability set forth in Part II of Title 35 of
the United States Code, including, but not limited to, 35 U.S.C. §§ 101, 102, 103 and/or 112.
COUNT IV
(DECLARATORY RELIEF REGARDING INVALIDITY AND/OR
UNENFORCEABILITY OF THE '664 PATENT)
156.

An actual and justiciable controversy exists between Gannett and Plaintiff as to the

validity of the '664 patent, as evidenced by Plaintiff's Complaint and Gannett's Answer to
Plaintiff's Complaint.
157.

Pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., Gannett is entitled to

a declaration of the Court that each claim of the '664 patent is invalid and/or unenforceable for
failure to satisfy one or more of the conditions of patentability set forth in Part II of Title 35 of
the United States Code, including, but not limited to, 35 U.S.C. §§ 101, 102, 103 and/or 112.
REQUEST FOR RELIEF
WHEREFORE, Gannett respectfully requests:
1)

A judgment in favor of Gannett denying Plaintiff all relief requested in this action
and dismissing Plaintiff's Complaint for patent infringement with prejudice;

2)

A judgment declaring that each claim of the '420 patent and each claim of the '664
patent is invalid and/or unenforceable;

3)

A judgment declaring that Gannett has not infringed and is not infringing any
valid and/or enforceable claim of the '420 patent or the '664 patent, and that
Gannett has not contributed to or induced and is not contributing to or inducing
infringement of any valid and enforceable claim of the '420 patent or the '664
patent;

4)

A judgment declaring this to be an exceptional case under 35 U.S.C. § 285 and
awarding Gannett its costs, expenses, and reasonable attorneys' fees; and

5)

That the Court award Gannett such other and further relief as the Court deems just
and proper.

15

DEMAND FOR JURY TRIAL
Pursuant to Rule 38 of the Federal Rules for Civil Procedure, Gannett hereby requests a
trial by jury for all issues so triable.
Dated: November 14, 2011

Respectfully submitted,
/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
David Bilsker
QUINN EMANUEL URQUHART & SULLIVAN LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Counsel for Gannet Co., Inc.

16

CERTIFICATE OF SERVICE
I hereby certify that on November 14, 2011, I will electronically file the foregoing with
the Clerk of Court using the CM/ECF system, which will send a notification of such filing (NEF)
to the following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Counsel for Plaintiff, I/P Engine, Inc.
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Counsel for Google, Inc., AOL Inc.,
Target Corporation,
IAC Search & Media, Inc., and
Gannet Co., Inc.
/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Counsel for Gannet Co., Inc.
11404080_1.DOC

17