Ixi Mobile (R&D) Ltd. et al v. Apple, Inc.

Northern District of California, cand-4:2015-cv-03755

ANSWER to 1 Complaint, with JURY DEMAND. Document filed by Apple, Inc.

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4 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK Case No. 14-cv-7954-RJS-DF IXI Mobile (R&D) Ltd. and IXI IP, LLC, JURY TRIAL DEMANDED Plaintiffs, v. APPLE INC., Defendant. DEFENDANT APPLE INC.'S ANSWER TO IXI MOBILE (R&D) LTD. AND IXI IP, LLC'S COMPLAINT Defendant Apple Inc. ("Apple"), by and through its undersigned counsel, hereby responds to the Complaint for Patent Infringement ("Complaint") filed by Plaintiffs IXI Mobile (R&D) Ltd. and IXI IP, LLC (each a "Plaintiff" and together, "Plaintiffs") as follows: NATURE OF THE ACTION 1. Apple admits that Plaintiffs purport to bring this action under the patent laws of the United States, 35 U.S.C. § 100 et seq. Apple denies the remaining allegations set forth in Paragraph 1 of the Complaint. PARTIES 2. Apple is without knowledge or information sufficient to form a belief as to the truth of the allegations set forth in Paragraph 2 of the Complaint and, on that basis, denies them. 3. Apple is without knowledge or information sufficient to form a belief as to the truth of the allegations set forth in Paragraph 3 of the Complaint and, on that basis, denies them. -1- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 4. Apple admits that it is a California corporation with its principal offices at 1 Infinite Loop, Cupertino, CA 95014. Apple is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations set forth in Paragraph 4 of the Complaint and, on that basis, denies them. JURISDICTION AND VENUE 5. The allegations set forth in Paragraph 5 state legal conclusions to which no response is required; to the extent a response is required, Apple denies these allegations. 6. Without waiving any defense in connection with this or any other cause of action or claim, Apple admits that, for the purpose of this action only, this Court has subject matter jurisdiction over this suit pursuant to 28 U.S.C. §§ 1331 and 1338(a). 7. Apple denies that it has committed any act of infringement in this District or any other, and therefore denies that jurisdiction is proper on that basis. Apple admits that it operates retail stores in this District. The remaining allegations set forth in Paragraph 7 state legal conclusions to which no response is required; to the extent a response is required, Apple denies these allegations. 8. Apple denies that it has committed infringement in this District or any other, and therefore denies that venue is proper on that basis. Apple admits that it does business within this District. The remaining allegations set forth in Paragraph 8 state legal conclusions to which no response is required; to the extent a response is required, Apple denies these allegations. BACKGROUND 9. Apple denies the allegations in Paragraph 9 of the Complaint to the extent they seek to characterize the scope of the asserted patents or the scope of the disputed issues in this case, and Apple refers Plaintiffs to the asserted patents and their related prosecution histories for -2- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 their full and complete contents. Apple denies the remaining allegations set forth in Paragraph 9 of the Complaint. 10. Apple is without knowledge or information sufficient to form a belief as to the truth of the allegations set forth in Paragraph 10 of the Complaint and, on that basis, denies them. 11. Apple is without knowledge or information sufficient to form a belief as to the truth of the allegations set forth in Paragraph 11 of the Complaint and, on that basis, denies them. THE PATENTS-IN-SUIT 12. Apple admits that United States Patent No. 7,295,532 (the "'532 Patent") is entitled "System, Device and Computer Readable Medium for Providing Networking Services on a Mobile Device." Apple admits that Exhibit A of the Complaint purports to be a copy of the '532 Patent, and Apple refers Plaintiffs to the '532 Patent and its related prosecution history for its complete contents. Apple denies all characterizations inconsistent therewith. The allegation that the '532 Patent was "duly and legally issued" states a legal conclusion to which no response is required; to the extent a response is required, Apple denies this allegation. Apple is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations set forth in Paragraph 12, and on that basis, Apple denies them. 13. Apple admits that United States Patent No. 7,426,398 (the "'398 Patent") is entitled "Event Control System and Method for a Mobile Communication Network." Apple admits that Exhibit B of the Complaint purports to be a copy of the '398 Patent, and Apple refers Plaintiffs to the '398 Patent and its related prosecution history for its complete contents. Apple denies all characterizations inconsistent therewith. The allegation that the '398 Patent was "duly and legally issued" states a legal conclusion to which no response is required; to the extent a response is required, Apple denies this allegation. Apple is without knowledge or information -3- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 sufficient to form a belief as to the truth of the remaining allegations set forth in Paragraph 13, and on that basis, Apple denies them. 14. Apple admits that United States Patent No. 7,016,648 (the "'648 Patent") is entitled "Method, System and Computer Readable Medium for Downloading a Software Component to a Device a Short Distance Wireless Network." Apple admits that Exhibit C of the Complaint purports to be a copy of the '648 Patent, and Apple refers Plaintiffs to the '648 Patent and its related prosecution history for its complete contents. Apple denies all characterizations inconsistent therewith. The allegation that the '648 Patent was "duly and legally issued" states a legal conclusion to which no response is required; to the extent a response is required, Apple denies this allegation. Apple is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations set forth in Paragraph 14, and on that basis, Apple denies them. 15. Apple admits that United States Patent No. 7,039,033 (the "'033 Patent") is entitled "System, Device and Computer Readable Medium for Providing a Managed Wireless Network Using Short-Range Radio Signals." Apple admits that Exhibit D of the Complaint purports to be a copy of the '033 Patent, and Apple refers Plaintiffs to the '033 Patent and its related prosecution history for its complete contents. Apple denies all characterizations inconsistent therewith. The allegation that the '033 Patent was "duly and legally issued" states a legal conclusion to which no response is required; to the extent a response is required, Apple denies this allegation. Apple is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations set forth in Paragraph 15, and on that basis, Apple denies them. -4- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 APPLE'S ALLEGED INFRINGEMENT 16. Apple denies that it has committed any act of infringement. Apple admits that it has sold or currently sells various versions of the iPhone and iPad. Apple denies that it sells the Apple Watch. Apple denies the remaining allegations set forth in Paragraph 16 of the Complaint. 17. The first sentence of Paragraph 17 of the Complaint is unintelligible and, thus, does not warrant a response; to the extent that a response is required, Apple denies the allegations in the first sentence of Paragraph 17. Apple denies the remaining allegations set forth in Paragraph 17 of the Complaint. 18. Denied. 19. Denied. 20. Apple is without knowledge or information sufficient to form a belief as to the truth of the allegations set forth in Paragraph 20 of the Complaint and, on that basis, denies them. 21. Denied. FIRST COUNT FOR RELIEF (ALLEGED INFRINGEMENT OF THE '532 PATENT) 22. Apple realleges and incorporates by reference its responses to Paragraphs 1 through 21 of the Complaint as if fully set forth herein. 23. Denied. 24. Denied. 25. Denied. 26. Denied. 27. Denied. 28. Denied. -5- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 29. Denied. SECOND COUNT FOR RELIEF (ALLEGED INFRINGEMENT OF THE '398 PATENT) 30. Apple realleges and incorporates by reference its responses to Paragraphs 1 through 29 of the Complaint as if fully set forth herein. 31. Denied. 32. Denied. 33. Denied. 34. Denied. 35. Denied. 36. Denied. 37. Denied. THIRD COUNT FOR RELIEF (ALLEGED INFRINGEMENT OF THE '033 PATENT) 38. Apple realleges and incorporates by reference its responses to Paragraphs 1 through 37 of the Complaint as if fully set forth herein. 39. Denied. 40. Denied. 41. Denied. 42. Denied. 43. Denied. 44. Denied. 45. Denied. -6- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 FOURTH COUNT FOR RELIEF (ALLEGED INFRINGEMENT OF THE '648 PATENT) 46. Apple realleges and incorporates by reference its responses to Paragraphs 1 through 45 of the Complaint as if fully set forth herein. 47. Denied. 48. Denied. 49. Denied. 50. Denied. 51. Denied. 52. Denied. 53. Denied. PRAYER FOR RELIEF 54. Apple denies that Plaintiffs are entitled to the relief requested in Paragraphs (A)- (H). JURY DEMAND 55. Apple admits that Plaintiffs demand a trial by jury on all issues so triable in this action pursuant to Fed. R. Civ. P. 38(b). To the extent a response is required, Apple denies that Plaintiffs are entitled to a jury trial except as permitted by law. 56. To the extent that any allegations of the Complaint have not been previously specifically admitted or denied, Apple denies them. DEFENSES Without assuming any burden that it would not otherwise bear, and reserving its right to assert additional defenses, Apple, for its defenses, pleads: -7- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 FIRST DEFENSE (NON-INFRINGEMENT OF U.S. PATENT NO. 7,295,532) 57. Apple has not infringed and does not infringe any valid and/or enforceable claim of the '532 Patent, directly or indirectly, literally or under the doctrine of equivalents. SECOND DEFENSE (INVALIDITY OF U.S. PATENT NO. 7,295,532) 58. The '532 Patent is invalid and/or unenforceable for failure to comply with one or more of the requirements of United States Code, Title 35, including, without limitation, 35 U.S.C. §§ 101, 102, 103, and 112, the non-statutory doctrine of double patenting, and the rules, regulations, and laws pertaining thereto. THIRD DEFENSE (NON-INFRINGEMENT OF U.S. PATENT NO. 7,426,398) 59. Apple has not infringed and does not infringe any valid and/or enforceable claim of the '398 Patent, directly or indirectly, literally or under the doctrine of equivalents. FOURTH DEFENSE (INVALIDITY OF U.S. PATENT NO. 7,426,398) 60. The '398 Patent is invalid and/or unenforceable for failure to comply with one or more of the requirements of United States Code, Title 35, including, without limitation, 35 U.S.C. §§ 101, 102, 103, and 112, the non-statutory doctrine of double patenting, and the rules, regulations, and laws pertaining thereto. FIFTH DEFENSE (NON-INFRINGEMENT OF U.S. PATENT NO. 7,016,648) 61. Apple has not infringed and does not infringe any valid and/or enforceable claim of the '648 Patent, directly or indirectly, literally or under the doctrine of equivalents. -8- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 SIXTH DEFENSE (INVALIDITY OF U.S. PATENT NO. 7,016,648) 62. The '648 Patent is invalid and/or unenforceable for failure to comply with one or more of the requirements of United States Code, Title 35, including, without limitation, 35 U.S.C. §§ 101, 102, 103, and 112, the non-statutory doctrine of double patenting, and the rules, regulations, and laws pertaining thereto. SEVENTH DEFENSE (NON-INFRINGEMENT OF U.S. PATENT NO. 7,039,033) 63. Apple has not infringed and does not infringe any valid and/or enforceable claim of the '033 Patent, directly or indirectly, literally or under the doctrine of equivalents. EIGHTH DEFENSE (INVALIDITY OF U.S. PATENT NO. 7,039,033) 64. The '033 Patent is invalid and/or unenforceable for failure to comply with one or more of the requirements of United States Code, Title 35, including, without limitation, 35 U.S.C. §§ 101, 102, 103, and 112, the non-statutory doctrine of double patenting, and the rules, regulations, and laws pertaining thereto. NINTH DEFENSE (LACK OF STANDING) 65. On information and belief, Plaintiffs do not have "all substantial rights" to the '532, '398, '648, or '033 patents and therefore either one or both Plaintiffs lack standing to bring suit. Plaintiffs have also failed to provide adequate evidence of ownership of the '532, '398, '648, and '033 patents and therefore lack standing to bring suit against Apple. TENTH DEFENSE (CLAIMS BARRED) 66. Plaintiffs' claims are barred in whole or in part based on prosecution history estoppel, equitable estoppel, and/or prosecution history disclaimer. By reason of the proceedings -9- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 in the U.S. Patent and Trademark Office during the prosecution of the applications that resulted in the issuance of the '532, '398, '648, and '033 patents, Plaintiffs are estopped from claiming construction of one or more claims of the '532, '398, '648, or '033 patents that would cause any valid claim thereof to cover or include any product manufactured, used, sold, offered for sale, or imported by Apple. ELEVENTH DEFENSE (LIMITATIONS ON DAMAGES AND COSTS) 67. Any claim by Plaintiffs for damages is limited under 35 U.S.C. § 286 or § 287. Plaintiffs failed to provide adequate notice to Apple of alleged infringement and, thus, are barred under 35 U.S.C. § 287 from recovering damages prior to the date of the filing of the Complaint. Plaintiffs are barred by 35 U.S.C. § 288 from recovering costs associated with their action. TWELFTH DEFENSE (PLAINTIFF CANNOT PROVE EXCEPTIONAL CASE) 68. Plaintiffs cannot prove that this is an exceptional case justifying an award of attorney fees against Apple pursuant to 35 U.S.C. § 285. THIRTEENTH DEFENSE (LICENSE, PATENT EXHAUSTION) 69. Plaintiffs' claims for patent infringement are precluded in whole or in part (i) to the extent that any allegedly infringing products or components thereof are supplied, directly or indirectly, to or by Apple, and/or are imported, sold by, offered for sale by, made by, or made for by any entity or entities having express or implied licenses to the '532, '398, '648, or '033 patents and/or (ii) under the doctrine of patent exhaustion. FOURTEENTH DEFENSE (EQUITABLE DEFENSES) 70. Plaintiffs' claims are barred in whole or in part under principles of equity, including laches, prosecution laches, waiver, implied waiver, acquiescence, estoppel, and/or -10- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 unclean hands. For example, Plaintiffs delayed filing suit against Apple for an unreasonable and inexcusable length of time from the time they knew or reasonably should have known of their claims against Apple. This delay caused Apple to suffer prejudice. FIFTEENTH DEFENSE (ADEQUATE REMEDY AT LAW) 71. Plaintiffs are not entitled to injunctive relief because any alleged injury to Plaintiffs is not immediate or irreparable. Plaintiffs have an adequate remedy at law, and the balance of hardships and public interest do not favor an injunction in this case. SIXTEENTH DEFENSE (WAIVER) 72. Plaintiffs are barred from asserting the '532, '398, '648, and '033 patents and/or from collecting damages thereunder pursuant to the doctrine of waiver. SEVENTEENTH DEFENSE (GOVERNMENT SALES) 73. To the extent that products accused of infringing the '532, '398, '648, or '033 patents are used by and/or manufactured for the United States Government, Plaintiffs' claims against Apple with respect to such products may not be pursued in this Court and are subject to other limitations pursuant to 28 U.S.C. § 1498. EIGHTEENTH DEFENSE (FAILURE TO STATE A CLAIM) 74. The Complaint fails to state a claim upon which relief can be granted against Apple. ADDITIONAL DEFENSES RESERVED (RESERVATION OF ADDITIONAL DEFENSES) 75. Apple reserves all defenses under Rule 8 of the Federal Rules of Civil Procedure, the patent laws of the United States, and any other defenses at law or in equity that may exist -11- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 now or that may be available in the future. PRAYER FOR RELIEF Apple respectfully prays for the following relief: A. That the Court dismiss the Complaint against Apple with prejudice and find that Plaintiffs take nothing by way of their Complaint; B. That the Court enter a judgment declaring that Apple has not infringed and does not infringe the '532 Patent; C. That the Court enter a judgment declaring that Apple has not infringed and does not infringe the '398 Patent; D. That the Court enter a judgment declaring that Apple has not infringed and does not infringe the '648 Patent; E. That the Court enter a judgment declaring that Apple has not infringed and does not infringe the '033 Patent; F. That the Court enter a judgment declaring that Apple has not induced and does not induce infringement of the '532 Patent; G. That the Court enter a judgment declaring that Apple has not induced and does not induce infringement of the '398 Patent; H. That the Court enter a judgment declaring that Apple has not induced and does not induce infringement of the '648 Patent; I. That the Court enter a judgment declaring that Apple has not induced and does not induce infringement of the '033 Patent; J. That the Court enter a judgment declaring that Apple has not contributorily infringed and does not contributorily infringe the '532 Patent; -12- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 K. That the Court enter a judgment declaring that Apple has not contributorily infringed and does not contributorily infringe the '398 Patent; L. That the Court enter a judgment declaring that Apple has not contributorily infringed and does not contributorily infringe the '648 Patent; M. That the Court enter a judgment declaring that Apple has not contributorily infringed and does not contributorily infringe the '033 Patent; N. That the Court enter a judgment declaring that Apple has not willfully infringed and does not willfully infringe the '532 Patent; O. That the Court enter a judgment declaring that Apple has not willfully infringed and does not willfully infringe the '398 Patent; P. That the Court enter a judgment declaring that Apple has not willfully infringed and does not willfully infringe the '648 Patent; Q. That the Court enter a judgment declaring that Apple has not willfully infringed and does not willfully infringe the '033 Patent; R. That the Court enter a judgment denying any award to Plaintiffs for damages, enhanced damages, interest, costs, or attorneys' fees; S. That the Court deny any injunction against Apple; T. That the Court enter a judgment declaring that each claim of the '532 Patent is invalid under 35 U.S.C. § 1 et seq.; U. That the Court enter a judgment declaring that each claim of the '398 Patent is invalid under 35 U.S.C. § 1 et seq.; V. That the Court enter a judgment declaring that each claim of the '648 Patent is invalid under 35 U.S.C. § 1 et seq.; -13- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT 4 W. That the Court enter a judgment declaring that each claim of the '033 Patent is invalid under 35 U.S.C. § 1 et seq.; X. That the Court declare that this case is exceptional under 35 U.S.C. § 285 and award Apple its attorneys' fees, costs, and expenses incurred in this action; Y. That the Court award Apple any and all other relief to which Apple may show itself to be entitled; and Z. That the Court award Apple any other relief the Court may deem just, equitable, and proper. DEMAND FOR JURY TRIAL In accordance with Fed. R. Civ. P. 38(b), Apple demands a trial by jury on all issues so triable. Dated: November 24, 2014 Respectfully submitted, By /s/ Harrison J. Frahn IV HARRISON J. FRAHN IV HARRISON J. FRAHN IV hfrahn@stblaw.com PATRICK E. KING pking@stblaw.com SIMPSON THACHER & BARTLETT LLP 2475 Hanover Street Palo Alto, California 94304 Telephone: (650) 251-5000 GREGORY T. CHUEBON gchuebon@stblaw.com SIMPSON THACHER & BARTLETT LLP 425 Lexington Avenue New York, NY 10017 Tel: (212) 455-2000 Attorneys for Defendant Apple Inc. -14- DEFENDANT APPLE INC.'S ANSWER TO COMPLAINT