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

Filing 58

Defendant Google Inc.'s First Amended ANSWER to 1 Complaint, Defenses and, COUNTERCLAIM against I/P Engine, Inc. by Google, 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 GOOGLE INC.'S FIRST AMENDED ANSWER, DEFENSES AND
COUNTERCLAIMS TO PLAINTIFF I/P ENGINE, INC.'S COMPLAINT
Defendant Google Inc. ("Google"), by and through its undersigned counsel, hereby
answers Plaintiff I/P Engine, Inc.'s ("I/P Engine") Complaint ("Complaint").
NATURE OF ACTION
1.

Google 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"). Google 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.

Google admits that Plaintiff's claims purport to arise under the United States

Patent Act, but denies that such claims have merit.
3.

Google 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.

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

denies infringing the '420 and '664 patent. In addition, to the extent that the remaining
allegations set forth in paragraph are directed to Google, Google 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 Google.
5.

Google does not contest venue in this District for this case. Google denies

infringing the '420 and '664 patent. In addition, to the extent that the remaining allegations set
forth in paragraph are directed to Google, Google 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 Google.
PARTIES
6.

Google 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 Google, and

therefore no answer is required.
8.

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

Delaware with its headquarters and principal place of business at 1600 Amphitheatre Parkway,
Mountain View, California 94043. Google admits that it has facilities and employs workers in
the state of Virginia.
9.

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

therefore no answer is required.
10.

The allegations of paragraph 10 of the Complaint are not directed to Google, and

therefore no answer is required.

2

11.

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

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

Google 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.

Google 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.

Google 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.
15.

Google 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.

Google 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.

Google admits that the amount of content (e.g., web pages) available on the

Internet has grown since the mid-to-late 1990s. Google also admits that users accessed Internet
web pages by visiting portal sites, some of which presented content categorized directories
through which the users could select links to available web pages. Google lacks sufficient
information to form a belief as to the truth or falsity of the remaining allegations contained in
paragraph 17 and, on that basis, denies them.
18.

Google 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.

3

19.

Google 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.

Google 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.

Google admits that AOL has offered content through AOL.com and other web

sites. Google 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.

Google admits that the increase in volume of available Internet content can create

issues for manual categorization processes. Google lacks sufficient information to form a belief
as to the truth or falsity of the remaining allegations contained in paragraph 22 and, on that basis,
denies them.
23.

Google 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.

Google 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.

Google admits that query-based search engines incorporating algorithms exist.

Google lacks sufficient information to form a belief as to the truth or falsity of the remaining
allegations contained in paragraph 25 and, on that basis, denies them.
The Search Engine Industry
26.

Google 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.

Google admits that GoTo.com, later renamed Overture Services, Inc.

("Overture"), auctioned the placement of links to web sites in their search results. In GoTo.com,

4

whichever bidder bid the most would have the best position on the search results page. Google
lacks sufficient information to form a belief as to the truth or falsity of the remaining allegations
contained in paragraph 27 and, on that basis, denies them.
28.

Google admits that GoTo.com, later renamed Overture, auctioned the placement

of links to web sites in their search results. In GoTo.com, whichever bidder bid the most would
have the best position on the search results page. Google lacks sufficient information to form a
belief as to the truth or falsity of the remaining allegations contained in paragraph 28 and, on that
basis, denies them.
29.

Google admits that in GoTo.com, whichever bidder bid the most would have the

best position on the search results page, the next highest bidder would appear second in the
search results, and each successive entry would be awarded to the next highest bidder. In
GoTo.com, a bidder would only pay the bid amount if an end-user "clicked" on the link to its
web site. Google lacks sufficient information to form a belief as to the truth or falsity of the
remaining allegations contained in paragraph 29 and, on that basis, denies them.
30.

Google 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.

Google 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.

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

remaining allegations in paragraph 32.

5

33.

Google admits the '664 patent is related to the '420 patent and relates to search

engines. Google denies any remaining allegations in paragraph 33.
34.

Google 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 Google, no answer is required. Google 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.

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

36.

Google 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." Google denies any remaining
allegations in paragraph 36.
37.

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

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

Google 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.

6

Development of the Search Engine Industry
39.

Google admits that it generates revenue through search advertising. Paragraph 39

does not include a citation for the quotations. Google lacks sufficient information to form a
belief as to the truth of falsity of the remaining allegations contained in paragraph 39 and on that
basis, denies them.
40.

Paragraph 40 does not include a citation for the quotation. Google 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.

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

Technology. Google 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 Google, Google denies the remaining allegations in
paragraph 41. To the extent that the allegations set forth in paragraph 41 are not directed to
Google, no answer is required.
Google's Use of the Patented Technology
42.

Google denies the allegations in paragraph 42.

43.

Google denies that it adopted Lang/Kosak Relevance Filtering Technology with

its use of "Quality Score." AdWords is the online advertising auction system used to display
advertisements next to search results on www.google.com. Google admits that it uses what
refers to externally as "Quality Scores" in AdWords, but denies that the allegations of paragraph
43 provide a full and complete description of any "Quality Score". Google denies any remaining
allegations in paragraph 43.

7

44.

Google admits that AdWords is the online advertising auction system used to

display advertisements next to search results on www.google.com. Google admits that some
third party websites include Google services that allow advertisements to be shown on their
websites in connection with searches performed through their websites. The system that
performs this function is called AdSense for Search. Google admits that it uses what is referred
to externally as one or more "Quality Scores" in AdWords and AdSense for Search, but denies
that the allegations of paragraph 44 provide a full and complete description of any "Quality
Score," AdWords, or AdSense for Search. Google denies any remaining allegations in paragraph
44.
45.

Google admits that some third party websites include Google services that allow

advertisements to be shown on their websites in connection with searches performed through
their websites. The system that performs this function is called AdSense for Search. Google
denies that the allegations of paragraph 45 provide a full and complete description of AdSense
for Search. Google denies any remaining allegations of paragraph 45.
46.

Google denies the allegations in paragraph 46.

47.

Google denies the allegations in paragraph 47.
Google's Knowledge of the Patented Technology

48.

Google denies the allegations of paragraph 48.

49.

Google admits that it was involved in litigation with Overture related to United

States Patent No. 6,269,361. Google admits that in order to resolve this litigation, other issues
with Yahoo!.com, Google, Overture and Yahoo! entered into a confidential settlement
agreement. Google admits that as part of that settlement agreement, it entered into a license
agreement for United States Patent No. 6,269,361 and any patents or patent applications related

8

to U.S. Patent Application No. 09/322,677, and any foreign counterparts. Google denies any
remaining allegations in paragraph 49.
50.

Google admits that it incurred a non-recurring non-cash charge of $201.0 million

in the third quarter of 2004 related to this settlement. Google denies any remaining allegations in
paragraph 50.
51.

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

the allegations contained in paragraph 51 and, on that basis, denies them.
52.

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

allegations contained in paragraph 52 and, on that basis, denies them.
53.

Google denies the allegations in paragraph 53.
AOL's Use of the Patented Technology

54.

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

therefore no answer is required.
55.

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

therefore no answer is required.
56.

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

therefore no answer is required.
57.

Google denies that it adopted Lang/Kosak Relevance Filtering Technology with

its use of "Quality Score. Google admits that AOL Search Marketplace is a rebranded version of
Google AdWords. AdWords is the online advertising auction system used to display relevant
advertisements next to search results on www.google.com. Google admits that it uses what is
referred to externally as one or more "Quality Scores" in AdWords, but denies that the

9

allegations of paragraph 57 provide a full and complete description of any "Quality Score".
Google denies any remaining allegations in paragraph 57.
58.

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

therefore no answer is required.
59.

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

therefore no answer is required.
60.

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

therefore no answer is required.
62.

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

therefore no answer is required.
63.

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

therefore no answer is required.
64.

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

therefore no answer is required.
65.

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

therefore no answer is required.

10

67.

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

therefore no answer is required.
68.

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

therefore no answer is required.
69.

Google denies that it adopted Lang/Kosak Relevance Filtering Technology with

its use of "Quality Score." Google admits that IAC's 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]. The system that performs this function is called AdSense for Search.
Google admits that it uses what is referred to externally as one or more "Quality Scores" in
AdSense for Search, but denies that the allegations of paragraph 69 of the Complaint provide a
full and complete description of any "Quality Score". Google denies any remaining allegations
in paragraph 69 of the Complaint.
70.

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

therefore no answer is required.
71.

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

therefore no answer is required.
73.

The allegations of paragraph 73 of the Complaint are not directed to Google, and

therefore no answer is required.
74.

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

therefore no answer is required.

11

75.

Google denies that it adopted Lang/Kosak Relevance Filtering Technology with

its use of "Quality Score." Google admits that Target's website[s] include a Google search
engine and allow advertisements to be shown on its website[s] in connection with searches
performed through its website[s]. The system that performs this function is called AdSense for
Search. Google admits that it uses what is referred to externally as one or more "Quality Scores"
in AdSense for Search, but denies that the allegations of paragraph 75 of the Complaint provide a
full and complete description of any "Quality Score". Google denies any remaining allegations
in paragraph 75 of the Complaint.
76.

The allegations of paragraph 76 of the Complaint are not directed to Google, and

therefore no answer is required.
77.

Google admits that Target uses Google advertising products. Google denies the

remaining allegations in paragraph 77 of the complaint.
FIRST CLAIM FOR RELIEF
(Infringement of U.S. Patent No. 6,314,420)
78.

Google incorporates by reference its responses contained in paragraphs 1 through

77 above.
79.

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

"Collaborative/Adaptive Search Engine." In addition, Google 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. Google also admits that what appears to be a true and correct copy of the '420 patent was
attached as Exhibit A. Google 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 Google, and

therefore no answer is required.
12

81.

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

therefore no answer is required.
82.

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

therefore no answer is required.
83.

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

therefore no answer is required.
84.

Google denies the allegations in paragraph 84 of the complaint.

85.

Google denies the allegations in paragraph 85 of the complaint.

86.

Google denies the allegations in paragraph 86 of the complaint.

87.

Google denies the allegations in paragraph 87 of the complaint.

88.

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

therefore no answer is required.
89.

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

therefore no answer is required.
90.

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

therefore no answer is required.
91.

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

therefore no answer is required.
92.

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

therefore no answer is required.
93.

To the extent paragraph 93 is directed to Google products, Google denies the

allegations of paragraph 93 of the complaint. Paragraph 93 of the Complaint are not directed to
Google, and therefore no answer is required.

13

94.

The allegations of paragraph 94 of the Complaint are not directed to Google, and

therefore no answer is required.
95.

The allegations of paragraph 95 of the Complaint are not directed to Google, and

therefore no answer is required.
96.

The allegations of paragraph 96 of the Complaint are not directed to Google, and

therefore no answer is required.
97.

The allegations of paragraph 97 of the Complaint are not directed to Google, and

therefore no answer is required.
98.

To the extent paragraph 98 is directed to Google products, Google denies the

allegations of paragraph 8 of the complaint. The allegations of paragraph 98 of the Complaint are
not directed to Google, and therefore no answer is required.
99.

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

therefore no answer is required.
100.

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

therefore no answer is required.
101.

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

therefore no answer is required.
102.

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

therefore no answer is required.
103.

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

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

14

104.

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

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

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

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

Google incorporates by reference its responses contained in paragraphs 1 through

105 above.
107.

Google 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, Google 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. Google also admits that what
appears to be a true and correct copy of the '664 patent was attached as Exhibit B. Google 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 Google, and

therefore no answer is required.
109.

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

therefore no answer is required.
110.

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

therefore no answer is required.

15

111.

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

therefore no answer is required.
112.

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

therefore no answer is required.
113.

Google denies the allegations of paragraph 113 of the Complaint.

114.

Google denies the allegations of paragraph 114 of the Complaint.

115.

Google denies the allegations of paragraph 115 of the Complaint.

116.

Google admits that the Complaint contains reference to the ‘664 patent. Google

denies the remaining allegations in paragraph 116.
117.

Google admits that the Complaint contains reference to the ‘664 patent. Google

denies the remaining allegations in paragraph 117.
118.

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

therefore no answer is required.
119.

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

therefore no answer is required.
120.

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

therefore no answer is required.
121.

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

therefore no answer is required.
122.

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

therefore no answer is required.
123.

To the extent paragraph 123 is directed to Google products, Google denies the

allegations of paragraph 123of the complaint.

16

124.

The allegations of paragraph 124 of the Complaint are not directed to Google, and

therefore no answer is required.
125.

The allegations of paragraph 125 of the Complaint are not directed to Google, and

therefore no answer is required.
126.

The allegations of paragraph 126 of the Complaint are not directed to Google, and

therefore no answer is required.
127.

The allegations of paragraph 127 of the Complaint are not directed to Google, and

therefore no answer is required.
128.

To the extent paragraph 128 is directed to Google products, Google denies the

allegations of paragraph 128 of the complaint.
129.

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

therefore no answer is required.
130.

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

therefore no answer is required.
131.

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

therefore no answer is required.
132.

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

therefore no answer is required.
133.

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

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

17

134.

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

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

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

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

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

1.

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

that Plaintiff is entitled to any relief.
2.

Google denies that Plaintiff is entitled to any damages

3.

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

4.

Google denies that Plaintiff is entitled to any further relief.
DEFENSES

137.

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

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

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

or the '664 patent (collectively, the "I/P Engine patents").

18

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.
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
Google, 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. Google 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.

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

its corporate headquarters at 1600 Amphitheatre Parkway, Mountain View, California 94043.

19

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
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 Google 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 Google has infringed the '664
patent.

20

COUNT I
(DECLARATORY RELIEF REGARDING NON-INFRINGEMENT
OF THE '420 PATENT)
150.

An actual and justiciable controversy exists between Google and Plaintiff as to

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

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

entitled to a declaration of the Court that Google 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 Google and Plaintiff as to

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

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

entitled to a declaration of the Court that Google 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 OF THE '420 PATENT)
154.

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

validity of the '420 patent, as evidenced by Plaintiff’s Complaint and Google’s Answer to
Plaintiff's Complaint.
155.

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

entitled to a declaration of the Court that each claim of the '420 patent is invalid for failure to
21

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 OF THE '664 PATENT)
156.

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

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

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

entitled to a declaration of the Court that each claim of the '664 patent is invalid 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, Google respectfully requests:
1)

A judgment in favor of Google 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 Google has not infringed and is not infringing any

valid and/or enforceable claim of the '420 patent or the '664 patent, and that Google 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 Google its costs, expenses, and reasonable attorneys' fees; and

22

5)

That the Court award Google such other and further relief as the Court deems just

and proper.

DEMAND FOR JURY TRIAL
Pursuant to Rule 38 of the Federal Rules for Civil Procedure, Google hereby requests a
trial by jury for all issues so triable.
DATED: December 5, 2011

/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
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Attorneys for Google Inc.

23

CERTIFICATE OF SERVICE
I hereby certify that on December 5, 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.,
Target Corporation,
IAC Search & Media, Inc., and
Gannett 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]
11434978_1.DOC

24