Bicameral LLC v. NXP USA, Inc. et al

Western District of Texas, txwd-6:2018-cv-00294

ANSWER to {{1}} Complaint, with Jury Demand, COUNTERCLAIM against NXP Semiconductors N.V., NXP USA, Inc., NXP B.V. by NXP Semiconductors N.V., NXP USA, Inc., NXP B.V.

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7 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION BICAMERAL LLC, Plaintiff, v. Civil Action No.: 6:18-cv-00294 NXP USA, INC., NXP SEMICONDUCTORS Jury Trial Demanded N.V., and NXP B.V., Defendants. NXP USA, INC., NXP SEMICONDUCTORS N.V., AND NXP B.V.'S ANSWER TO BICAMERAL LLC'S COMPLAINT FOR PATENT INFRINGEMENT, AND COUNTERCLAIMS OF NXP USA, INC. Defendants NXP USA, Inc., NXP Semiconductors N.V., and NXP B.V. (collectively, "NXP") provide this Answer to Plaintiff Bicameral LLC's Complaint for Patent Infringement ("Complaint"). 1 NXP hereby denies all allegations in the Complaint except for those specifically admitted in this Answer. PARTIES 1. Plaintiff Bicameral is a limited liability company organized and existing under the laws of the State of Texas, having its principal place of business at 17330 Preston Road, Suite 200D, Dallas, Texas 75252. ANSWER: NXP lacks knowledge or information sufficient to form a belief about the truth of the allegations in this paragraph and, therefore, denies those allegations. 1 Bicameral voluntarily dismissed NXP Semiconductors USA, Inc. on November 28, 2018. Dkt. No. 20. 7 2. On information and belief, Defendant NXP-USA is a Delaware corporation having its principal place of business at 6501 William Cannon Drive West, Austin, TX 78735. ANSWER: Admitted. 3. On information and belief, Defendant NXPSemi-USA is a Delaware corporation having its principal place of business at 6501 William Cannon Drive West, Austin, TX 78735. ANSWER: NXP Semiconductors USA, Inc. has been dismissed from this case and, therefore, no response to the allegations in this paragraph is required. To the extent a response is required, NXP denies the allegations in this paragraph. 4. On information and belief, Defendant NXP-Netherlands is a corporation organized under the laws of the Netherlands, having its principal place of business at High Tech Campus 60, 5656 AG Eindhoven, the Netherlands. ANSWER: Admitted. 5. On information and belief, Defendant NXPSemi-Netherlands is a corporation organized under the laws of the Netherlands, having its principal place of business at High Tech Campus 60, 5656 AG Eindhoven, the Netherlands. ANSWER: Admitted. JURISDICTION AND VENUE 6. This is an action under the patent laws of the United States, 35 U.S.C. §§ 1, et seq., for infringement by NXP of claims of U.S. Patent Nos. 6,008,727; 6,321,331; 6,639,538; 6,754,223; and RE42,092 ("the Patents-in-Suit"). ANSWER: NXP admits that the Complaint alleges infringement by NXP of U.S. Patent Nos. 6,008,727; 6,321,331; 6,639,538; 6,754,223; and RE42,092 ("the Patents-in-Suit"). NXP denies that it has infringed any of the Patents-in-Suit. 7. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 2 7 1338(a). ANSWER: Admitted. 8. NXP-Netherlands and NXPSemi-Netherlands are subject to the personal jurisdiction of his Court because, among other things, NXP-Netherlands and NXPSemi- Netherlands have committed and continue to commit acts of patent infringement in the State of Texas, directly, through their subsidiaries, and/or through authorized distributors, including by making, using, offering to sell, and/or selling, Accused NXP Products and services in Texas, and/or importing the Accused NXP Products into Texas. In addition, or in the alternative, this Court has personal jurisdiction over NXP-Netherlands and NXPSemi-Netherlands pursuant to Fed. R. Civ. P. 4(k)(2). ANSWER: Denied. 9. Venue is proper as to NXP-Netherlands and NXPSemi-Netherlands in this district under 28 U.S.C. § 1391(c) because, inter alia, NXP-Netherlands and NXPSemi-Netherlands are foreign corporations. ANSWER: NXP admits that NXP B.V. and NXP Semiconductors N.V. are foreign corporations. NXP does not dispute that venue is proper in the United States District Court for the Western District of Texas for NXP B.V. and NXP Semiconductors N.V. for purposes of this case. 10. NXP-USA is subject to personal jurisdiction of this Court because, inter alia, on information and belief, (i) NXP-USA maintains office locations in the State of Texas; (ii) NXP- USA is registered to transact business in the State of Texas; and (iii) NXP-USA has committed and continues to commit acts of patent infringement in the State of Texas, including by making, using, offering to sell, and/or selling accused products and services in Texas, and/or importing 3 7 the Accused Products into Texas. ANSWER: NXP admits that this Court has personal jurisdiction over NXP USA, Inc. NXP admits that NXP USA, Inc. maintains office locations in the State of Texas and that NXP USA, Inc. is registered to transact business in the State of Texas. NXP denies that NXP USA, Inc. has infringed any of the Patents-in-Suit. NXP denies any remaining allegations in this paragraph. 11. Venue is proper as to NXP-USA in this district because, inter alia, on information and belief, NXP-USA maintains a regular and established place of business in this judicial district, and NXP-USA has committed and continues to commit acts of patent infringement in this judicial district, including by making, using, offering to sell, and/or selling Accused NXP Products and services in this district, and/or importing Accused NXP Products and services into this district. ANSWER: NXP admits that venue is proper as to NXP USA, Inc. in this judicial district. NXP admits that NXP USA, Inc. maintains a regular and established place of business in this judicial district. NXP denies that NXP USA, Inc. has infringed any of the Patents-in-Suit. NXP denies any remaining allegations in this paragraph. 12. NXPSemi-USA is subject to personal jurisdiction of this Court because, inter alia, on information and belief, (i) NXPSemi-USA maintains office locations in the State of Texas; (ii) NXPSemi-USA was registered to transact business in the State of Texas; (iii) NXP- USA has registered to transact business as NXPSemi-USA; and (iv) NXPSemi-USA has committed and continues to commit acts of patent infringement in the State of Texas, including by making, using, offering to sell, and/or selling accused products and services in Texas, and/or importing the Accused Products into Texas. 4 7 ANSWER: NXP Semiconductors USA, Inc. has been dismissed from this case and, therefore, no response to the allegations in this paragraph is required. To the extent a response is required, NXP denies the allegations in this paragraph. 13. Venue is proper as to NXPSemi-USA in this district because, inter alia, on information and belief, NXPSemi-USA maintains a regular and established place of business in this judicial district, and NXPSemi-USA has committed and continues to commit acts of patent infringement in this judicial district, including by making, using, offering to sell, and/or selling Accused NXP Products and services in this district, and/or importing Accused NXP Products and services into this district. ANSWER: NXP Semiconductors USA, Inc. has been dismissed from this case and, therefore, no response to the allegations in this paragraph is required. To the extent a response is required, NXP denies the allegations in this paragraph. BACKGROUND On December 28, 1999, the United States Patent and Trademark Office duly and lawfully issued U.S. Patent No. 6,008,727 (the "'727 Patent"), entitled "Selectively Enabled Electronic Tags." The '727 Patent is attached as Exhibit A. ANSWER: NXP admits that a copy of U.S. Patent No. 6,008,727 (the "'727 Patent") is attached to the Complaint as Exhibit A. NXP admits that the '727 Patent is titled "Selectively Enabled Electronic Tags" and issued on December 28, 1999. NXP denies the '727 Patent is valid. NXP lacks knowledge or information sufficient to form a belief about the truth of the remaining allegations in this paragraph and, therefore, denies those allegations. 5 7 On November 21, 2001, the United States Patent and Trademark Office duly and lawfully issued U.S. Patent No. 6,321,331 (the "'331 Patent"), entitled "Real Time Debugger Interface for Embedded Systems." The '331 Patent is attached as Exhibit B. ANSWER: NXP admits that U.S. Patent No. 6,321,331 (the "'331 Patent") is attached to the Complaint as Exhibit B. NXP admits that the '331 Patent is titled "Real Time Debugger Interface for Embedded Systems" and issued on November 20, 2001. NXP denies the '331 Patent is valid. NXP lacks knowledge or information sufficient to form a belief about the truth of the remaining allegations in this paragraph and, therefore, denies those allegations. On October 28, 2003, the United States Patent and Trademark Office duly and lawfully issued U.S. Patent No. 6,639,538 (the "'538 Patent"), entitled "Real-Time Transient Pulse Monitoring System and Method." The '538 Patent is attached as Exhibit C. ANSWER: NXP admits that U.S. Patent No. 6,639,538 (the "'538 Patent") is attached to the Complaint as Exhibit C. NXP admits that the '538 Patent is titled "Real-Time Transient Pulse Monitoring System and Method" and issued on October 28, 2003. NXP denies the '538 Patent is valid. NXP lacks knowledge or information sufficient to form a belief about the truth of the remaining allegations in this paragraph and, therefore, denies those allegations. On June 22, 2004, the United States Patent and Trademark Office duly and lawfully issued U.S. Patent No. 6,754,223 (the "'223 Patent"), entitled "Integrated Circuit That Processes Communication Packets With Co-Processor Circuitry To Determine A Prioritized Processing Order For a Core Processor." The '223 Patent is attached as Exhibit D. ANSWER: NXP admits that U.S. Patent No. 6,754,223 (the "'223 Patent") is attached to the Complaint as Exhibit D. NXP admits that the '223 Patent is titled "Integrated Circuit That 6 7 Processes Communication Packets With Co-Processor Circuitry to Determine a Prioritized Processing Order for a Core Processor" and issued on June 22, 2004. NXP denies the '223 Patent is valid. NXP lacks knowledge or information sufficient to form a belief about the truth of the remaining allegations in this paragraph and, therefore, denies those allegations. On February 1, 2011, the United States Patent and Trademark Office duly and lawfully issued U.S. Patent No. RE42,092 (the "'092 Patent"), entitled "Integrated Circuit That Processes Communication Packets With A Buffer Management Engine Having A Pointer Cache." The '092 Patent is attached as Exhibit E. ANSWER: NXP admits that U.S. Patent No. RE42,092 (the "'092 Patent") is attached to the Complaint as Exhibit E. NXP admits that the '092 Patent is titled "Integrated Circuit That Processes Communication Packets With a Buffer Management Engine Having a Pointer Cache" and reissued on February 1, 2011. NXP denies the '092 Patent is valid. NXP lacks knowledge or information sufficient to form a belief about the truth of the remaining allegations in this paragraph and, therefore, denies those allegations. Bicameral is the assignee and owner of the right, title, and interest in and to the Patents- in-Suit, including the right to assert all causes of action arising under said patents and the right to any remedies for infringement. ANSWER: NXP lacks knowledge or information sufficient to form a belief about the truth of the allegations in this paragraph and, therefore, denies those allegations. [ALLEGED] NOTICE 14. By letter dated August 23, 2018, Bicameral notified NXP-USA of the existence of the Patents-in-Suit, and of infringement thereof by NXP and its customers. Bicameral's August 7 7 23, 2018 letter identified exemplary infringing NXP products and an exemplary infringed claim for each of the Patents-in-Suit. ANSWER: NXP admits that NXP USA, Inc. received a letter dated August 23, 2018, from Plaintiff's counsel that stated that Bicameral LLC owns the Patents-in-Suit. NXP admits that this August 23, 2018 letter alleged infringement of the Patents-in-Suit, and other patents, by "a number of products and services made, used, sold or offered for sale in the United States, or imported into the United States, by NXP and/or its predecessors." NXP admits that the August 23, 2018 letter alleged that "NXP customers use NXP products in a way that has infringed and continues to infringe" the Patents-in-Suit and other patents. NXP admits that the August 23, 2018 letter named examples of products that allegedly infringe at least claim 1 of each of the Patents-in-Suit. NXP denies any remaining allegations in this paragraph. 15. By letter dated August 23, 2018, Bicameral notified NXPSemi-USA of the existence of the Patents-in-Suit, and of infringement thereof by NXP and its customers. Bicameral's August 23, 2018 letter identified exemplary infringing NXP products and an exemplary infringed claim for each of the Patents-in-Suit. ANSWER: NXP Semiconductors USA, Inc. has been dismissed from this case and, therefore, no response to the allegations in this paragraph is required. To the extent a response is required, NXP denies the allegations in this paragraph. 16. By letter dated August 23, 2018, Bicameral notified NXP-Netherlands of the existence of the Patents-in-Suit, and of infringement thereof by NXP and its customers. Bicameral's August 23, 2018 letter identified exemplary infringing NXP products and an exemplary infringed claim for each of the Patents-in-Suit. ANSWER: NXP admits that NXP B.V. received a letter dated August 23, 2018, from 8 7 Plaintiff's counsel that stated that Bicameral LLC owns the Patents-in-Suit. NXP admits that this August 23, 2018 letter alleged infringement of the Patents-in-Suit, and other patents, by "a number of products and services made, used, sold or offered for sale in the United States, or imported into the United States, by NXP and/or its predecessors." NXP admits that the August 23, 2018 letter alleged that "NXP customers use NXP products in a way that has infringed and continues to infringe" the Patents-in-Suit and other patents. NXP admits that the August 23, 2018 letter named examples of products that allegedly infringe at least claim 1 of each of the Patents-in-Suit. NXP denies any remaining allegations in this paragraph. 17. By letter dated August 23, 2018, Bicameral notified NXPSemi-Netherlands of the existence of the Patents-in-Suit, and of infringement thereof by NXP and its customers. Bicameral's August 23, 2018 letter identified exemplary infringing NXP products and an exemplary infringed claim for each of the Patents-in-Suit. ANSWER: NXP admits that NXP Semiconductors B.V. received a letter dated August 23, 2018, from Plaintiff's counsel that stated that Bicameral LLC owns the Patents-in-Suit. NXP admits that this August 23, 2018 letter alleged infringement of the Patents-in-Suit, and other patents, by "a number of products and services made, used, sold or offered for sale in the United States, or imported into the United States, by NXP and/or its predecessors." NXP admits that the August 23, 2018 letter alleged that "NXP customers use NXP products in a way that has infringed and continues to infringe" the Patents-in-Suit and other patents. NXP admits that the August 23, 2018 letter named examples of products that allegedly infringe at least claim 1 of each of the Patents-in-Suit. NXP denies any remaining allegations in this paragraph. 18. In addition, on August 28, 2001, while prosecuting U.S. Patent Application No. 09/941,284, Freescale Semiconductor, Inc., which merged with NXP, notified the U.S. Patent 9 7 and Trademark Office of the existence of the '727 Patent. ANSWER: NXP admits that the '727 Patent was listed on an Information Disclosure Statement submitted with U.S. Patent Application No. 09/941,284 on August 28, 2001, by the applicants' patent attorney. NXP admits that NXP Semiconductors N.V. merged with Freescale Semiconductor, Ltd. NXP denies any remaining allegations in this paragraph. 19. In addition, Freescale Semiconductor, Inc., which merged with NXP, notified the U.S. Patent and Trademark Office of the existence of the '331 Patent while prosecuting U.S. Patent Application Nos. 11/864,292; 12/016,664; 12/040,215; and 13/210,281. ANSWER: NXP admits that NXP Semiconductors N.V. merged with Freescale Semiconductor, Ltd. NXP admits that the '331 Patent was listed on an Information Disclosure Statements submitted during prosecution of U.S. Patent Application Nos. 11/864,292; 12/016,664; 12/040,215; and 13/210,281 by the applicants' patent attorney. NXP denies any remaining allegations in this paragraph. 20. Accordingly, each of the NXP Defendants has received notice of the Patents-in- Suit and of infringement thereof by NXP and its customers. ANSWER: This paragraph states a legal conclusion to which no response is required. To the extent a response is required, NXP incorporates by reference its answers to paragraphs 14 through 19 as if fully set forth herein and denies any remaining allegations in this paragraph. 21. As of the date of this Complaint, Bicameral has not received any response from NXP. ANSWER: Admitted. COUNT I: [ALLEGED] INFRINGEMENT OF THE '727 PATENT 22. Plaintiff incorporates the preceding paragraphs as if fully set forth herein. ANSWER: NXP incorporates by reference its answers to the preceding paragraphs as 10 7 if fully set forth herein. 23. On information and belief, the NXP Defendants have, individually, and jointly under control of NXP-Netherlands and NXPSemi-Netherlands, infringed the '727 Patent pursuant to 35 U.S.C. § 271(a), literally or under the doctrine of equivalents, by making, using, offering to sell, selling in the United States, and/or importing into the United States NXP UCODE RFID and all other EPC Class-1 Generation-2 UHF RFID standard compliant RFID devices, including the products identified in Attachment A ("Accused NXP Products"). ANSWER: Denied. NXP also denies that Attachment A was attached to the Complaint. 24. For example, on information and belief, the NXP Defendants have infringed at least claim 1 of the '727 Patent by making, using, selling, and/or offering to sell in the United States, and/or importing into the United States, the SL3S1003 family of RFID devices. An SL3S1003 device is a single electronic tag comprising a processor, such as its digital control block. Ex. 1, p. 5. An SL3S1003 device comprises a readable memory for holding an identification number connected to the processor, such as the EEPROM holding the "Tag Identified" (TID). Ex. 1, p. 12. An SL3S1003 device comprises an antenna connected to the processor for RF broadcasting of the identification number. Ex. 1, p. 5. An SL3S1003 device comprises a power supply for powering the antenna to broadcast the identification number, such as the circuitry for supplying power to the tag. Ex. 1, p. 10. An SL3S1003 device comprises an interconnect switch integrally defined in the single electronic tag for user defined interconnection of at least two members, such as the readable memory and the processor. For example, pursuant to the EPC Radio-Frequency Identity Protocols Class-1 Generation-2 UHF RFID Protocol for Communications at 860 MHz – 960 MHz Version 1.2.0, the SL3S1003 device accepts a "Select" 11 7 command based on user-defined criteria, which interconnects the memory holding the TID and the processor to selectively allow radiofrequency broadcasting of the identification number. Ex. 2. ANSWER: Denied. 25. On information and belief, the NXP Defendants have induced, and continue to induce, infringement of the '727 Patent pursuant to 35 U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging others, including, but not limited to, its partners, software developers, customers, distributors, and end users, to make, use, sell, and/or offer to sell in the United States, and/or import into the United States, the Accused NXP Products by, among other things, providing instructions, manuals, and technical assistance relating to the integration, set up, programming, use, operation, updates, and maintenance of said products, such as hardware manuals, software manuals, data sheets, application examples, and other technical documentation available on the NXP website. ANSWER: Denied. 26. On information and belief, the NXP Defendants have committed the foregoing infringing activities without a license. ANSWER: NXP denies that it infringes the '727 Patent. NXP admits that it is not expressly licensed to practice the '727 Patent. 27. On information and belief, the NXP Defendants' infringing activities commenced at least six years prior to the filing of this complaint, entitling Bicameral to past damages. ANSWER: Denied. 28. On information and belief, NXP knew the '727 Patent existed, knew of its claims, and knew of infringing NXP products while committing the foregoing infringing acts, thereby 12 7 willfully, wantonly, and deliberately infringing the '727 Patent. ANSWER: Denied. COUNT II: [ALLEGED] INFRINGEMENT OF THE '331 PATENT 29. Plaintiff incorporates the preceding paragraphs as if fully set forth herein. ANSWER: NXP incorporates by reference its answers to the preceding paragraphs as if fully set forth herein. 30. On information and belief, the NXP Defendants have, individually, and jointly under control of NXP-Netherlands and NXPSemi-Netherlands, infringed the '331 Patent pursuant to 35 U.S.C. § 271(a), literally or under the doctrine of equivalents, by making, using, offering to sell, selling in the United States, and/or importing into the United States ARM Cortex based devices incorporating Embedded Trace Macrocell technology, including the products identified in Attachment A ("Accused NXP Products"). ANSWER: Denied. NXP also denies that Attachment A was attached to the Complaint. 31. For example, on information and belief, the NXP Defendants have infringed at least claim 1 of the '331 Patent by making, using, selling, and/or offering to sell in the United States, and/or importing into the United States, the LPC408x/7x ARM Cortex-M4 Microcontroller. Ex. 3. The Accused NXP Products are processors having a real time debugging interface, such as the Embedded Trace Macrocell. Ex. 3, p. 2. The Accused NXP Products comprise an instruction memory means for storing instructions to be executed by said processor, such as the on-chip flash program memory. Ex. 3. The Accused NXP Products comprise program counter means directly coupled to said instruction memory means for indexing said instructions. Ex. 4, Excerpts from ARM Cortex-M4 Technical Reference Manual, p. 3-48. The 13 7 Accused NXP Products comprise cause register means for indicating information regarding interrupts and exceptions, such as the Interrupt Program Status Register. Ex. 5, Exerpt from ARM Cortex-M4 Generic User Guide, p. 2-6. The Accused NXP Products comprise a first decoder means, such as the Embedded Trace Macrocell and the Trace Port Interface Unit, for indicating information about an instruction executed by said processor during a clock cycle, said first decoder means being directly coupled to said instruction memory means, said program counter means, and said cause register means, said first decoder means having a first output, such as the Trace Port Interface. Ex. 4, p. 2-21. In the Accused NXP Products, the first output provides information regarding activity of said processor in real time. Ex. 3, p. 2. ANSWER: Denied. 32. On information and belief, the NXP Defendants have induced, and continue to induce, infringement of the '331 Patent pursuant to 35 U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging others, including, but not limited to, its partners, software developers, customers, distributors, and end users, to make, use, sell, and/or offer to sell in the United States, and/or import into the United States, the Accused NXP Products by, among other things, providing instructions, manuals, and technical assistance relating to the integration, set up, programming, use, operation, updates, and maintenance of said products, such as hardware manuals, software manuals, data sheets, application examples, and other technical documentation available on the NXP website. ANSWER: Denied. 33. On information and belief, the NXP Defendants have committed the foregoing infringing activities without a license. ANSWER: NXP denies that it infringes the '331 Patent. NXP admits that it is not 14 7 expressly licensed to practice the '331 Patent. 34. On information and belief, the NXP Defendants' infringing activities commenced at least six years prior to the filing of this complaint, entitling Bicameral to past damages. ANSWER: Denied. 35. On information and belief, NXP knew the '331 Patent existed, knew of its claims, and knew of infringing NXP products while committing the foregoing infringing acts, thereby willfully, wantonly, and deliberately infringing the '331 Patent. ANSWER: Denied. COUNT III: [ALLEGED] INFRINGEMENT OF THE '538 PATENT 36. Plaintiff incorporates the preceding paragraphs as if fully set forth herein. ANSWER: NXP incorporates by reference its answers to the preceding paragraphs as if fully set forth herein. 37. On information and belief, the NXP Defendants have, individually, and jointly under control of NXP-Netherlands and NXPSemi-Netherlands, infringed the '538 Patent pursuant to 35 U.S.C. § 271(a), literally or under the doctrine of equivalents, by making, using, offering to sell, selling in the United States, and/or importing into the United States Digital Accelerometers, including the products identified in Attachment A ("Accused NXP Products"). ANSWER: Denied. NXP also denies that Attachment A was attached to the Complaint. 38. For example, on information and belief, the NXP Defendants have infringed at least claim 1 of the '538 Patent by making, using, selling, and/or offering to sell in the United States, and/or importing into the United States, the Xtrinsic MMA865xFC digital accelerometer family. The Accused NXP Products comprise a system for characterizing a stimulus represented by an analog signal, such as acceleration along an axis. Ex. 6, NXP Xtrinsic MMA865xFC 15 7 Family. The Accused NXP Products comprise conversion circuitry continuously receiving the analog signal and converting the analog signal into digital data, such as the ADC block. Id. The Accused NXP Products comprise digital circuitry, such as the Embedded Functions Block, in .communication with the conversion circuitry to receive continuously the digital data from the conversion circuitry, the digital circuitry dynamically computing from the digital data a value that characterizes a parameter of the stimulus while the digital circuitry continuously receives new digital data from the conversion circuitry. Id. ANSWER: Denied. 39. On information and belief, the NXP Defendants have induced, and continue to induce, infringement of the '538 Patent pursuant to 35 U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging others, including, but not limited to, its partners, software developers, customers, distributors, and end users, to make, use, sell, and/or offer to sell in the United States, and/or import into the United States, the Accused NXP Products by, among other things, providing instructions, manuals, and technical assistance relating to the integration, set up, programming, use, operation, updates, and maintenance of said products, such as hardware manuals, software manuals, data sheets, application examples, and other technical documentation available on the NXP website. ANSWER: Denied. 40. On information and belief, the NXP Defendants have committed the foregoing infringing activities without a license. ANSWER: NXP denies that it infringes the '331 Patent. NXP admits that it is not expressly licensed to practice the '331 Patent. 41. On information and belief, the NXP Defendants' infringing activities commenced 16 7 at least six years prior to the filing of this complaint, entitling Bicameral to past damages. ANSWER: Denied. 42. On information and belief, NXP knew the '538 Patent existed, knew of its claims, and knew of infringing NXP products while committing the foregoing infringing acts, thereby willfully, wantonly, and deliberately infringing the '538 Patent. ANSWER: Denied. COUNT IV: [ALLEGED] INFRINGEMENT OF THE '223 PATENT 43. Plaintiff incorporates the preceding paragraphs as if fully set forth herein. ANSWER: NXP incorporates by reference its answers to the preceding paragraphs as if fully set forth herein. 44. On information and belief, the NXP Defendants have, individually, and jointly under control of NXP-Netherlands and NXPSemi-Netherlands, infringed the '223 Patent pursuant to 35 U.S.C. § 271(a), literally or under the doctrine of equivalents, by making, using, offering to sell, selling in the United States, and/or importing into the United States QORIQ Platforms and Processors, including the products identified in Attachment A ("Accused NXP Products"). ANSWER: Denied. NXP also denies that Attachment A was attached to the Complaint. 45. For example, on information and belief, the NXP Defendants have infringed at least claim 1 of the '223 Patent by making, using, selling, and/or offering to sell in the United States, and/or importing into the United States, the QORIQ T4240 family of communication processors. The Accused NXP Products include an integrated circuit that processes communication packets. Ex. 7, Excerpts from the QorIQ T4240 Communications Processor Deep Dive. The integrated circuit comprises co-processor circuitry, such as the Frame Manager 17 7 (FMan), Queue Manager (QMan), and Buffer Manager (BMan), configured to receive and store communication packets in data buffers and determine a prioritized processing order. Ex. 8, Excerpts from T4240 Product Brief. The co-processor circuitry is configured to determine priorities for the communication packets, place entries in priority queues based on the priorities, and arbitrate the entries to establish the prioritized processing order. Id. The co-processor circuitry is configured to determine the priorities based on a number of outstanding requests for processing from individual ones of the priority queues, including based on algorithms used for ingress and/or egress processing. Ex. 8, pp. 25-26. The integrated circuit comprises a core processor, such as the Power Architecture processing cores, configured to execute a packet processing software application that directs the core processor to process the communication packets in the data buffers based on the prioritized processing order. Ex. 7. In the Accused NXP Products, the co-processor circuitry is configured to operate in parallel with the core processor. Ex. 8, p. 7. ANSWER: Denied. 46. On information and belief, the NXP Defendants have induced, and continue to induce, infringement of the '223 Patent pursuant to 35 U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging others, including, but not limited to, its partners, software developers, customers, distributors, and end users, to make, use, sell, and/or offer to sell in the United States, and/or import into the United States, the Accused NXP Products by, among other things, providing instructions, manuals, and technical assistance relating to the integration, set up, programming, use, operation, updates, and maintenance of said products, such as hardware manuals, software manuals, data sheets, application examples, and other technical documentation available on the NXP website. 18 7 ANSWER: Denied. 47. On information and belief, the NXP Defendants have committed the foregoing infringing activities without a license. ANSWER: NXP denies that it infringes the '223 Patent. NXP admits that it is not expressly licensed to practice the '223 Patent. 48. On information and belief, the NXP Defendants' infringing activities commenced at least six years prior to the filing of this complaint, entitling Bicameral to past damages. ANSWER: Denied. 49. On information and belief, NXP knew the '223 Patent existed, knew of its claims, and knew of infringing NXP products while committing the foregoing infringing acts, thereby willfully, wantonly, and deliberately infringing the '223 Patent. ANSWER: Denied. COUNT V: [ALLEGED] INFRINGEMENT OF THE '092 PATENT 50. Plaintiff incorporates the preceding paragraphs as if fully set forth herein. ANSWER: NXP incorporates by reference its answers to the preceding paragraphs as if fully set forth herein. 51. On information and belief, the NXP Defendants have, individually, and jointly under control of NXP-Netherlands and NXPSemi-Netherlands, infringed the '092 Patent pursuant to 35 U.S.C. § 271(a), literally or under the doctrine of equivalents, by making, using, offering to sell, selling in the United States, and/or importing into the United States QORIQ Platforms and Processors, including the products identified in Attachment A ("Accused NXP Products"). ANSWER: Denied. NXP also denies that Attachment A was attached to the Complaint. 19 7 52. For example, on information and belief, the NXP Defendants have infringed at least claim 1 of the '092 Patent by making, using, selling, and/or offering to sell in the United States, and/or importing into the United States, the QORIQ T4240 family of communication processors. The Accused NXP Products include an integrated circuit that processes communication packets. Ex. 7. The integrated circuit comprises a core processor, such as Power Architecture processing cores, configured to create a plurality of external buffers that are external to the integrated circuit and configured to store the communication packets where each external buffer is associated with a pointer that corresponds to the external buffer. Ex. 9, Excerpts from QorIQ SDK and Ex. 10, Excerpts from NXP DPAA Deep Dive. The integrated circuit comprises a pointer cache configured to store the pointers that correspond to the external buffers, such as, for example, BMan and/or QMan cache. The integrated circuit comprises control logic, such as the Buffer Manager (BMan), configured to allocate the external buffers as the corresponding pointers are read from the pointer cache and de-allocate the external buffers as the corresponding pointers are written back to the pointer cache. Exs. 8-10. The control logic is configured to transfer an exchaustion signal if a number of the pointers to the de-allocated buffers reaches a minimum threshold, such as a Depletion Threshold. See, e.g., Ex. 10, p. 13 and Ex. 9, p. 626. The core processor is configured to create additional external buffers and their corresponding pointers in response to the exhaustion signal. For example, the Power Architecture cores may direct the BMan to create additional external buffers and their corresponding pointers when existing buffers are depleted. Id. ANSWER: Denied. 53. On information and belief, the NXP Defendants have induced, and continue to induce, infringement of the '092 Patent pursuant to 35 U.S.C. § 271(b), by actively and 20 7 knowingly inducing, directing, causing, and encouraging others, including, but not limited to, its partners, software developers, customers, distributors, and end users, to make, use, sell, and/or offer to sell in the United States, and/or import into the United States, the Accused NXP Products by, among other things, providing instructions, manuals, and technical assistance relating to the integration, set up, programming, use, operation, updates, and maintenance of said products, such as hardware manuals, software manuals, data sheets, application examples, and other technical documentation available on the NXP website. ANSWER: Denied. 54. On information and belief, the NXP Defendants have committed the foregoing infringing activities without a license. ANSWER: NXP denies that it infringes the '092 Patent. NXP admits that it is not expressly licensed to practice the '092 Patent. 55. On information and belief, the NXP Defendants' infringing activities commenced at least six years prior to the filing of this complaint, entitling Bicameral to past damages. ANSWER: Denied. 56. On information and belief, NXP knew the '092 Patent existed, knew of its claims, and knew of infringing NXP products while committing the foregoing infringing acts, thereby willfully, wantonly, and deliberately infringing the '092 Patent. ANSWER: Denied. [PLAINTIFF'S] PRAYER FOR RELIEF NXP denies that Plaintiff is entitled to any relief from NXP and denies all of the allegations of Paragraphs A, B, C, D, E, F, G, H, and I of Plaintiff's Prayer for Relief. 21 7 [PLAINTIFF'S] DEMAND FOR JURY TRIAL No response is required to Plaintiff's Demand for Jury Trial; however, to the extent that a response is required, NXP admits that Plaintiff has requested a trial by jury of all claims so triable. AFFIRMATIVE DEFENSES 57. NXP asserts the following affirmative defenses without assuming any burden of pleading or proof that would otherwise rest on Plaintiff. NXP reserves the right to amend its answer to assert different and additional affirmative defenses as additional information becomes known through discovery and further investigation. FIRST AFFIRMATIVE DEFENSE (Lack of Personal Jurisdiction) 58. This Court lacks personal jurisdiction over NXP Semiconductors N.V. and NXP B.V. SECOND AFFIRMATIVE DEFENSE (Invalidity) 59. One or more claims of the Patents-in-Suit are invalid for failing to comply with the conditions of patentability set forth in 35 U.S.C. §§ 101, 102, 103, 112, and/or 251. THIRD AFFIRMATIVE DEFENSE (Prosecution History Estoppel) 60. Plaintiff is estopped from construing the claims of the Patents-in-Suit to cover or otherwise include, either literally or by the application of the doctrine of equivalents, products made, used, offered for sale, or sold in the United States by NXP, and products imported into the United States by NXP, because of admissions and statements made to the United States Patent Office during prosecution of the applications leading to the issuance of these patents and because of disclosures and language in the specifications and claims of these patents. 22 7 FOURTH AFFIRMATIVE DEFENSE (Limitation on Damages and Costs) 61. Plaintiff's claims for damages and costs, if any, are statutorily limited by 35 U.S.C. §§ 286, 287, 288. FIFTH AFFIRMATIVE DEFENSE (No Willful Infringement) 62. NXP has not willfully infringed any of the Patents-in-Suit. SIXTH AFFIRMATIVE DEFENSE (Not an Exceptional Case) 63. This is not an exceptional case within the meaning of 35 U.S.C. § 285 based on any of NXP's actions. RESERVATION OF RIGHTS 64. NXP reserves all remaining affirmative defenses under Federal Rule of Civil Procedure 8(c), the patent laws of the United States, and any other defenses, in law or equity, that may exist now or in the future be available based on discovery and further factual investigation in this case. NXP USA, INC.'S COUNTERCLAIMS Defendant and Counterclaim-Plaintiff NXP USA, Inc. brings the following counterclaims against Plaintiff and Counterclaim-Defendant Bicameral LLC ("Bicameral"). THE PARTIES 1. NXP USA, Inc. is a Delaware corporation with its principal place of business at 6501 William Cannon Drive West, Austin, Texas 78735. 2. Bicameral alleges that it is a limited liability company organized and existing under the laws of the State of Texas with its principal place of business at 17330 Preston Road, Suite 200D, Dallas, Texas 75252. 23 7 JURISDICTION AND VENUE 3. Under 28 U.S.C. § 1338(a), this Court has subject matter jurisdiction over these counterclaims for declaratory judgment brought pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. 4. By filing its Complaint for Patent Infringement ("Complaint"), Bicameral has consented to the personal jurisdiction of this Court. 5. Venue for these counterclaims is proper under 28 U.S.C. §§ 1391 and 1400(b). 6. Based on Bicameral's allegations of infringement in the Complaint, a justiciable and actual controversy exists between NXP USA, Inc. and Bicameral concerning the alleged infringement and validity of U.S. Patent Nos. 6,008,727; 6,321,331; 6,639,538; 6,754,223; and RE42,092 ("the Patents-in-Suit"). FIRST COUNTERCLAIM (Declaratory Judgment of No Infringement) 7. NXP USA, Inc. incorporates by reference the allegations in paragraphs 1 through 6 above as if fully set forth herein. 8. NXP USA, Inc. has not infringed, and is not infringing, any claim of the Patents- in-Suit. 9. Because there exists a real and justiciable controversy between the parties regarding infringement of the Patents-in-Suit, this Court should make declarations that NXP USA, Inc. does not infringe the Patents-in-Suit. SECOND COUNTERCLAIM (Declaratory Judgment of Invalidity) 10. NXP USA, Inc. incorporates by reference the allegations in paragraphs 1 through 9 above as if fully set forth herein. 11. One or more claims of the Patents-in-Suit are invalid for failure to comply with 24 7 the conditions of patentability set forth in 35 U.S.C. §§ 101, 102, 103, 112, and/or 251. 12. Because there exists a real and justiciable controversy between the parties regarding the validity of the Patents-in-Suit, this Court should make declarations that the Patents- in-Suit are invalid. JURY DEMAND NXP USA, Inc. respectfully demands a trial by jury on all issues so triable in this action pursuant to Federal Rule of Civil Procedure 38. PRAYER FOR RELIEF WHEREFORE, NXP USA, Inc. respectfully requests that the Court enter judgment for it and award the following relief: A. Declaratory judgment that NXP USA, Inc. has not infringed, and does not infringe, any valid and enforceable claim of the Patents-in-Suit; B. Declaratory judgment that the claims of the Patents-in-Suit are invalid; C. Declaratory judgment that Bicameral recovers nothing from NXP USA, Inc.; D. Dismissal of all claims in the Compliant against NXP USA, Inc. with prejudice; E. An award to NXP USA, Inc. of its costs and reasonable attorneys' fees; and F. Judgment awarding NXP USA, Inc. such further necessary and proper relief as the Court may deem just and reasonable. 25 7 Dated: January 11, 2019 Respectfully submitted, /s/ Jeffrey M. White David L. Witcoff (admitted pro hac vice) Illinois State Bar No. 06183629 dlwitcoff@jonesday.com JONES DAY 77 West Wacker Chicago, IL 60601 Telephone: (312) 782-3939 Facsimile: (312) 782-8585 Jeffrey M. White Texas State Bar No. 24064380 jwhite@jonesday.com JONES DAY 2727 North Harwood Street Suite 500 Dallas, Texas 75201 Telephone: (214) 220-3939 Facsimile: (214) 969-5100 Attorneys for NXP USA, Inc., NXP Semiconductors N.V., and NXP B.V. 26 7 CERTIFICATE OF SERVICE I hereby certify that on January 11, 2019, I electronically filed the foregoing with the Clerk of the Court using the CM/ECF system, which will send notification of such filing to the following counsel of record for Plaintiff Bicameral LLC: Andrey Belenky Dmitry Kheyfits Kheyfits Belenky LLP 1140 Avenue of the Americas 9th Floor New York, NY 10036 Raymond W. Mort, III The Mort Law Firm, PLLC 106 E. Sixth Street Suite 900 Austin, TX 78701 /s/ Jeffrey M. White Jeffrey M. White 27