Lupercal LLC v. CitiBank, N.A.

Western District of Texas, txwd-6:2019-cv-00201

ANSWER to [27] Amended Complaint with Jury Demand, COUNTERCLAIM against Lupercal LLC by Plains Capital Bank.

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1 UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION LUPERCAL LLC, Plaintiff Case No. 6:19-cv-00201-ADA v. JURY TRIAL DEMANDED CITIBANK, N.A., LEAD CASE Defendant LUPERCAL LLC, Plaintiff Case No. 6:19-cv-00202-ADA v. JURY TRIAL DEMANDED PLAINS CAPITAL BANK, Defendant DEFENDANT PLAINSCAPITAL BANK'S ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT AND COUNTERCLAIMS 1 Defendant PlainsCapital Bank,1 through its undersigned counsel, submits its Answer to the First Amended Complaint filed by Plaintiff Lupercal LLC on September 16, 2019 (ECF No. 29, in case 6:19-cv-00202-ADA; refiled September 17, 2019, ECF No. 27 in lead case 6:19-cv-00201-ADA). Defendant reserves its right to amend this Answer and Counterclaims when and if it becomes appropriate to do so. Except as specifically admitted below, Defendant denies the allegations of Plaintiff Lupercal's First Amended Complaint. NATURE OF THE ACTION 1. This is an action for patent infringement arising under 35 U.S.C. § 1 et seq. ANSWER: Paragraph 1 contains legal conclusions to which no response is required. To the extent a response is required, Defendant admits only that the First Amended Complaint alleges that this is an action for patent infringement arising under 35 U.S.C. § 1 et seq., but otherwise denies the allegations of paragraph 1. PARTIES 2. Lupercal is a limited liability company organized and existing under the laws of the State of Texas with its principal place of business in Dallas, Texas. ANSWER: Defendant lacks sufficient knowledge or information to form a belief as to truth or falsity of the allegations in paragraph 2 and, therefore, denies them. 1 Plaintiff incorrectly identified "Plains Capital Bank" with a blank space between "Plains" and "Capital." 2 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 3. Upon information and belief, Defendant, Plains Capital, is a Texas company having a principal place of business in this judicial district at 201 W 5th St Ste 100, Austin, TX 78701. ANSWER: Defendant admits only that PlainsCapital Bank is a bank chartered under the laws of the State of Texas, with its home office designated in Dallas, TX. Defendant admits that it has a branch office located at 201 W. 5th St., Austin, TX 78701. Defendant otherwise denies the remaining allegations of paragraph 3. JURISDICTION AND VENUE 4. This Court has original jurisdiction over the subject matter of this action pursuant to 28 U.S.C. §§ 1331 and 1338(a). ANSWER: Paragraph 4 contains legal conclusions to which no response is required. To the extent a response is required, Defendant admits only that this Court has jurisdiction over actions for patent infringement that arise under the federal patent laws of the United States. 5. Upon information and belief, Defendant is subject to personal jurisdiction of this Court based upon it having regularly conducted business, including the acts complained of herein, within the State of Texas and this judicial district and/or deriving substantial revenue from goods and services provided to individuals in Texas and in this District. ANSWER: Paragraph 5 contains legal conclusions to which no response is required. To the extent a response is required, Defendant admits only that it maintains a 3 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 place of business and conducts business within this district. Defendant denies the remaining allegations of paragraph 5. 6. Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400 because Defendants have committed acts of infringement and have regular and established places of business in this judicial district. ANSWER: Paragraph 6 contains legal conclusions to which no response is required. To the extent a response is required, Defendant admits only that it maintains a place of business in this district. Defendant denies the remaining allegations of paragraph 6. COUNT I (INFRINGEMENT OF U.S. PATENT NO. 9,386,094) 7. Lupercal incorporates paragraphs 1 through 6 as though fully set forth herein. ANSWER: Defendant incorporates by reference its answers to paragraphs 1 through 6 of the First Amended Complaint. 8. Plaintiff is the owner, by assignment, of U.S. Patent No. 9,386,094 (the "'094 Patent"), entitled SYSTEM AND METHOD FOR MEDIA SUBMISSION, which issued on July 5, 2016. A copy of the '094 Patent is attached as Exhibit A. ANSWER: Paragraph 8 contains legal conclusions to which no response is required. To the extent a response is required, Defendant admits only that Plaintiff attached a copy of what it alleges is U.S. Patent No. 9,386,094 to Plaintiff's First 4 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 Amended Complaint as Exhibit A. Defendant admits that Exhibit A purports to identify July 5, 2016, as the issue date and purports to contain the title "SYSTEM, METHOD AND APPARATUS FOR MEDIA SUBMISSION." Defendant lacks sufficient knowledge or information to form a belief as to truth or falsity of the remaining allegations in paragraph 8 and, therefore, denies them. 9. The '094 Patent is valid, enforceable, and was duly issued in full compliance with Title 35 of the United States Code. ANSWER: Paragraph 9 contains legal conclusions to which no response is required. To the extent a response is required, Defendant denies the allegations of paragraph 9. 10. Defendant provides the Plains Capital Mobile Banking App for use with Apple iOS devices and Android devices, which is available for download from Apple's iTunes App Store and Google Play Apps: 5 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 https://www.plainscapital.com/mobile-banking/ https://www.plainscapital.com/mobile-banking/ https://www.plainscapital.com/mobile-banking/ 6 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 https://itunes.apple.com/us/app/plainscapital-mobile-banking/id1108061964?mt=8 https://play.google.com/store/apps/details?id=com.mfoundry.mb.android.mb_338 7 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 https://www.plainscapital.com/mobile-deposit/ https://play.google.com/store/apps/details?id=com.mfoundry.mb.android.mb_338 https://www.plainscapital.com/mobile-deposit/ ANSWER: Paragraph 10 contains legal conclusions to which no response is required. To the extent a response is required, Defendant denies the allegations of paragraph 10. 11. Defendant controls the operation and use of the Plains Capital Mobile Banking App and encourages its customers to use the Plains Capital Mobile Banking App 8 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 to deposit checks to the customer's accounts with Defendant. The Defendant's Plains Capital Mobile Banking App is the Accused Instrumentality through which Defendant and its customers infringe the '094 Patent. ANSWER: Paragraph 11 contains legal conclusions to which no response is required. To the extent a response is required, Defendant denies the allegations of paragraph 11. 12. At least by developing, distributing, operating, promoting, and encouraging the use of the Plains Capital Mobile Banking App, Defendant encourages its customers to use the Plains Capital Mobile Banking App to practice the claimed methods, which Defendant controls the use of and derives a direct benefit and profit from. ANSWER: Paragraph 12 contains legal conclusions to which no response is required. To the extent a response is required, Defendant denies the allegations of paragraph 12. 13. Upon information and belief, Defendant has infringed and continues to infringe one or more claims, including Claim 42, of the '094 Patent by developing, distributing, operating, promoting, and encouraging the use of the Plains Capital Mobile Banking App in the United States without authority. Defendant has infringed and continues to infringe the '094 Patent either directly or through the acts of inducement in violation of 35 U.S.C. § 271. 9 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 ANSWER: Paragraph 13 contains legal conclusions to which no response is required. To the extent a response is required, Defendant denies the allegations of paragraph 13. 14. Defendant has been on notice of the '094 Patent at least as early as February 25, 2019 when it received a notice letter from Defendant, which included a claim chart comparing the '094 Patent claims to the Plains Capital Mobile Banking App. ANSWER: Paragraph 14 contains legal conclusions to which no response is required. To the extent a response is required, Defendant admits only that shortly before March 11, 2019, when the instant First Amended Complaint was filed, it received a letter from The Mort Law Firm, and that the letter included what purports to be a chart related to the '094 patent. Defendant denies the remaining allegations of paragraph 14. 15. Claim 42 recites: 42. A computer implemented method performed by an image submission tool on a user device, comprising: causing the image submission tool to generate a visual representation of one or more images, the visual representation enabling a user to determine whether the one or more images should be replaced with one or more replacement images; 10 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 causing the image submission tool to enable a user to enter text information for association with the one or more images or the one or more replacement images; causing the image submission tool to pre-process the one or more images or the one or more replacement images to produce one or more pre-processed images, the pre-processing by the image submission tool controlled by one or more pre- processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party; causing the image submission tool to enable a user to submit the one or more pre-processed images; and causing the image submission tool to transmit the one or more pre- processed images. ANSWER: Defendant admits that paragraph 15 recites what purports to be a copy of claim 42 of the '094 patent. To the extent Plaintiff intends anything more by reciting this claim, Defendant denies the remaining allegations of paragraph 15. 16. The Plains Capital Mobile Banking App enables account holders to deposit checks electronically by taking a photo of the front and back of the check. After selecting an account to deposit the check to, the user enters the amount of the check. 11 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 ANSWER: Paragraph 16 contains legal conclusions to which no response is required. To the extent a response is required, Defendant admits only that users may choose to use functions available through the PlainsCapital Bank Mobile Banking App. Defendant denies the remaining allegations of paragraph 16. 17. The photo of the front and back is manually taken by the user—as a result, the images produced may be blurry or otherwise undesirable, and the application enables the user to retake a given photo (front or back). A visual representation of the photos is displayed on the screen. ANSWER: Paragraph 17 contains legal conclusions to which no response is required. To the extent a response is required, Defendant denies the allegations of paragraph 17. 18. After selecting an account to deposit the check to, the user enters the amount of the check. ANSWER: Paragraph 18 contains legal conclusions to which no response is required. To the extent a response is required, Defendant denies the allegations of paragraph 18. 19. Upon being accepted by the user (via the Plains Capital Mobile Banking App), the application pre-processes the front and back images to produce and front and back pre-processed images that is controlled by one or more preprocessing parameters received from a device (e.g., a server used to download the Plains Capital Mobile 12 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 Banking App) separate from the user device (user's smart phone) in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party. ANSWER: Paragraph 19 contains legal conclusions to which no response is required. To the extent a response is required, Defendant denies the allegations of paragraph 19. 20. The following illustrates an exemplary use of the Plains Capital Mobile Banking App according to the claim limitations as explained above. 13 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 14 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 15 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 16 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 17 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 18 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 ANSWER: Paragraph 20 contains legal conclusions to which no response is required. To the extent a response is required, Defendant denies the allegations of paragraph 20. 21. Lupercal has been damaged by Defendant's infringing activities. ANSWER: Paragraph 21 contains legal conclusions to which no response is required. To the extent a response is required, Defendant denies the allegations of paragraph 21. PR AYER FOR RELIEF WHEREFORE, Plaintiff respectfully requests the Court enter judgment against Defendant: 1. declaring that the Defendant has infringed the '094 Patent; 2. awarding Plaintiff its damages suffered as a result of Defendant's infringement of the '094 Patent; 3. awarding Plaintiff its costs, attorneys' fees, expenses, and interest; and 4. granting Plaintiff such further relief as the Court finds appropriate. ANSWER: Defendant denies that Plaintiff is entitled to any such judgment or relief, requested or otherwise. JURY DEMAND Plaintiff demands trial by jury, Under Fed. R. Civ. P. 38. ANSWER: Defendant admits Plaintiff purports to demand a jury trial. 19 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 DEFENSES Defendant PlainsCapital asserts the defenses below with knowledge as to its own actions and on information and belief with respect to the actions of others. By doing so, Defendant does not concede that any of the following must necessarily be pleaded as affirmative defenses or that any of the following is not already at issue by virtue of the forgoing denials. Moreover, Defendant reserves its rights to plead additional defenses as discovery into the facts of the matter warrant. FIRST DEFENSE (Invalidity of the '094 Patent) 1. All asserted claims of the '094 patent identified by Plaintiff's First Amended Complaint are invalid for failure to satisfy one or more of the conditions of patentability under the patent laws of the United States, 35 U.S.C. §§ 100, et seq., including §§ 101, 102, 103, and 112. 2. All asserted claims are invalid under §§ 101, 102, 103, and 112 for the reasons set forth in Defendant's Preliminary Invalidity Contentions served September 27, 2019. 3. Each of the asserted claims specifically identified in Plaintiff's First Amended Complaint is invalid for failure to constitute patentable subject matter under 35 U.S.C. § 101. For example, each of the asserted claims is directed to the abstract idea of generating a visual representation of an image, associating information with the image, and formatting the image for submission. None of the elements of the asserted claims, 20 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 considered both individually and as ordered combinations, transform the nature of the claims into a patent-eligible invention. 4. Prior to the earliest claimed priority date of the '094 patent, a person performing printing or publishing services could perform a prepress process to generate a printer's proof, which is a visual representation of an image; perform typesetting of textual material with the image; preprocess the image based on printer's specifications; and submit the processed image for print or publication. 5. Prior to the earliest claimed priority date of the '094 patent, website creators could perform similar manipulation and processing of digital content for publication on the Internet with high degree of automation. 6. The '094 patent does not use the term "mobile deposit," "check deposit," or "mobile banking." 7. The named inventors of the '094 patent did not invent "mobile deposit," "check deposit," "mobile banking," image capture, image pre-processing, or transmitting pre-processed images. 8. Prior to the earliest claimed priority date of the '094 patent, generating a visual representation of the digital content was known in the art. 9. Prior to the earliest claimed priority date of the '094 patent, retaking an image to replace another image was known in the art. 10. Prior to the earliest claimed priority date of the '094 patent, associating text information with the digital content was known in the art. 21 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 11. Prior to the earliest claimed priority date of the '094 patent, preprocessing digital content based on processing parameters, including from a third party, was known in the art. 12. Prior to the earliest claimed priority date of the '094 patent, submitting and transmitting the digital content, including preprocessed digital content, over the Internet was known in the art. 13. Each of the asserted claims specifically identified in Plaintiff's First Amended Complaint is invalid under one or both of 35 U.S.C. §§ 102 and 103 as either anticipated or obvious based on prior art disclosures. 14. Each of the asserted claims of the '094 patent is not patentably distinct from its parent U.S. Patent Nos. 7,765,482 and 8,612,515. 15. Many of the claims in U.S. Patent Nos. 7,765,482 and 8,612,515 were found to be unpatentable by the United States Patent and Trademark Office Patent Trial and Appeal Board in Google Inc. v. Summit 6 LLC, IPR2015-00807; Samsung Electronics Co., Ltd. v. Summit 6 LLC, IPR2016-00029; and Google Inc. v. Summit 6 LLC, IPR2015- 00806. 16. On information and belief, each of the asserted claims of the '094 patent is invalid under 35 U.S.C. § 102 and/or § 103 based on disclosed in Google Inc. v. Summit 6 LLC, IPR2015-00807; Samsung Electronics Co., Ltd. v. Summit 6 LLC, IPR2016-00029; and Google Inc. v. Summit 6 LLC, IPR2015-00806. 22 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 17. On information and belief, the claimed invention was described, in public use, on sale, or otherwise available to the public in the United States prior to the earliest claimed priority date of the '094 patent. 18. On information and belief, PictureWorks provided an Internet software technology called NetCard that was capable of combining text, images, video, and sound for publication over e-mail. On information and belief, NetCard was described, in public use, on sale, or otherwise available to the public in the United States prior to the earliest claimed priority date of the '094 patent. On information and belief, NetCard either anticipates the asserted claims of the '094 patent or renders the asserted claims obvious either alone or in combination with other prior art. 19. On information and belief, PictureWorks provided an imaging software application called PhotoEnhancer for use on a motion picture phone. On information and belief, PhotoEnhancer included a one-step image processing tool that could automatically edit and improve pictures from digital cameras. On information and belief, PhotoEnhancer was described, in public use, on sale, or otherwise available to the public in the United States prior to the earliest claimed priority date of the '094 patent. On information and belief, PhotoEnhancer either anticipates the asserted claims of the '094 patent or renders the asserted claims obvious either alone or in combination with other prior art. 20. On information and belief, PictureWorks provided an Internet software technology called Real Estate Internet Marketing Toolkit that enabled a user to create digital content and post it to the Internet. On information and belief, Real Estate Internet Marketing Toolkit was described, in public use, on sale, or otherwise available to the 23 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 public in the United States prior to the earliest claimed priority date of the '094 patent. On information and belief, Real Estate Internet Marketing Toolkit either anticipates the asserted claims of the '094 patent or renders the asserted claims obvious either alone or in combination with other prior art. 21. On information and belief, further prior art search efforts are likely to reveal additional invalidating prior art disclosures. 22. Each of the asserted claims specifically identified in Plaintiff Lupercal's First Amended Complaint is invalid under 35 U.S.C. § 112 for failure to satisfy one or both of the enablement and written description requirements. For example, the '094 patent lacks a written description supporting: "causing the image submission tool to pre-process the one or more images or the one or more replacement images to produce one or more pre-processed images, the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party." It also lacks an enabling disclosure for this claim element. 23. Each of the asserted claims specifically identified in Plaintiff's First Amended Complaint is invalid under 35 U.S.C. § 112 for indefiniteness. For example, each of the independent claims contains limitations that are meaningless, thereby, failing to reasonably define the scope of the claimed invention. 24 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 SECOND DEFENSE (Noninfringement of the '094 Patent) 24. Defendant does not infringe, directly or indirectly (either literally or under the doctrine of equivalents), any valid and/or enforceable claim of the '094 patent identified in Plaintiff's First Amended Complaint. 25. The sole Accused Instrumentality identified in paragraph 11 of Plaintiff's First Amended Complaint, "Plains Capital Mobile Banking App," does not infringe any asserted claim of the '094 patent either literally or under the doctrine of equivalents. 26. For example, Defendant does not directly or indirectly infringe any asserted claim of the '094 patent because the Accused Instrumentality does not perform, and is not configured to perform, the functions required to practice each limitation of any asserted claim identified in Plaintiff's First Amended Complaint. For example, the Accused Instrumentality is not configured to preprocess one or more images to produce one or more preprocessed images. 27. In addition to the averments of paragraphs 24-26 of these Defenses, Defendant also does not contribute to or induce infringement of any asserted claim of the '094 patent identified in Plaintiff's First Amended Complaint because the Accused Instrumentality does not practice each limitation of any asserted claim of the '094 patent identified in Plaintiff's First Amended Complaint. Further, Defendant has not and does not knowingly induce infringement of any claim of the '094 patent identified in Plaintiff's First Amended Complaint, nor does Defendant possess the specific intent to encourage 25 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 others to infringe any claim of the '094 patent identified in Plaintiff's First Amended Complaint. THIRD DEFENSE (Failure to Give Notice) 28. On information and belief, Plaintiff has not complied with the requirements of 35 U.S.C. § 287 or provided actual notice to Defendant before receipt by the Defendant of a letter from The Mort Law Firm dated February 16, 2019, which was purportedly mailed February 18, 2019, and is, therefore, precluded in whole or in part from seeking any recovery for alleged damages for the purported infringement of the '094 patent prior to the receipt of said letter. 29. On information and belief, Plaintiff does not design, manufacture, or sell any product that is or has been marked according to 35 U.S.C. § 287. 30. Further, in addition to the averments of paragraphs 28-29 of these Defenses, Defendant lacked actual knowledge of, and Defendant was not willfully blind to, the '094 patent either before or after receiving Plaintiff's letter. FOURTH DEFENSE (Unavailability of Pre-Suit Damages) 31. Defendant lacked knowledge of, and Defendant was not willfully blind to, the '094 patent asserted by Plaintiff. Accordingly, Plaintiff is not entitled to recover any damages for indirect infringement resulting at least from acts that transpired prior to the mailing of Plaintiff's letter to Defendant. 26 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 FIFTH DEFENSE (No Injunctive Relief) 32. Plaintiff is not entitled to injunctive relief because any alleged injury to Plaintiff is not immediate or irreparable and Plaintiff has an adequate remedy at law. SIXTH DEFENSE (Failure to State a Claim) 33. Defendant has not undertaken, performed, induced, or contributed to any act that is in violation of any rights validly belonging to Plaintiff. SEVENTH DEFENSE (Lack of Standing) 34. Plaintiff is not entitled to relief because Plaintiff does not have standing to enforce the '094 patent. 35. On information and belief, no certificate of formation was filed with Texas Secretary of State for the entity named Lupercal, LLC. On information and belief, the entity named Lupercal, LLC, is not an existing taxable entity under Texas Comptroller of Public Accounts. On information and belief, the purported assignment to Plaintiff is void or ineffective because the entity named Lupercal, LLC, either does not exist or is not a properly formed limited liability company under the laws of the State of Texas. 36. Because any assignment to Lupercal, LLC, is void or ineffective, Plaintiff lacks standing to enforce the '094 patent. 27 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 COUNTERCLAIMS Defendant PlainsCapital pleads the following Counterclaims against Plaintiff Lupercal. JURISDICTION AND VENUE 1. These Counterclaims arise under the Federal Declaratory Judgment Act and the patent laws of the United States, and more particularly, under Title 28 U.S.C. §§ 2201 and 2202, and Title 35 U.S.C. §§ 101, et seq., respectively. Jurisdiction is based on 28 U.S.C. §§ 1338 and 2201. 2. The pending litigation and disputes between Counterclaimant-Defendant and Counterdefendant-Plaintiff establish an existing and actual case and controversy between them regarding, inter alia, whether Counterclaimant-Defendant infringes any claim of U.S. Patent No. 9,386,094 ("the '094 patent") and whether any claim of the '094 patent is valid. 3. Counterdefendant-Plaintiff is subject to personal jurisdiction in this judicial district because it filed this action in this judicial district. 4. Venue for these Counterclaims is proper in this judicial district under 28 U.S.C. §§ 1391 and 1400 because Counterdefendant-Plaintiff filed this action in this district court. 28 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 THE PARTIES 5. In its First Amended Complaint, Counterdefendant-Plaintiff purports to be a limited liability company organized and existing under the laws of the State of Texas with its principal place of business in Dallas, Texas. 6. On information and belief, Counterdefendant-Plaintiff does not manufacture, advertise, make, sell, or import any product that embodies any claim of the '094 patent. 7. Counterplaintiff-Defendant is a bank chartered under the laws of the State of Texas with its home office designated at 2323 Victory Avenue, Suite 1400, Dallas, Texas. FIRST COUNTERCLAIM (Declaratory Judgment of Noninfringement of the '094 Patent) 8. Counterplaintiff-Defendant realleges and reincorporates paragraphs 1-7 of its Counterclaims into this paragraph. 9. Counterplaintiff-Defendant does not directly infringe, induce the infringement, or contribute to the infringement of any valid and/or enforceable claim of the '094 patent (either literally or under the doctrine of equivalents). 10. The sole Accused Instrumentality identified in paragraph 11 of Counterdefendant-Plaintiff's First Amended Complaint, "Plains Capital Mobile Banking App," does not directly infringe (either literally or under the doctrine of equivalents) any claim of the '094 patent. For example, Counterplaintiff-Defendant does not directly infringe any claim of the '094 patent because the Accused Instrumentality does not 29 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 perform, and is not configured to perform the functions required to practice the limitations recited in any claim of the '094 patent. For example, the Accused Instrumentality is not configured to preprocess one or more images to produce one or more preprocessed images, as alleged by Counterdefendant-Plaintiff. 11. Counterdefendant-Plaintiff's First Amended Complaint does not allege that the Accused Instrumentality enables entering text information for association with the one or more images or the one or more replacement images. 12. Counterdefendant-Plaintiff's First Amended Complaint does not allege that the Accused Instrumentality receives the one or more pre-processing parameters in a conversion of the one or more images or the one or more replacement images and therefore cannot show infringement of any asserted claim of the '094 patent. 13. Counterdefendant-Plaintiff's First Amended Complaint does not include a screenshot of any "visual representation" or "pre-processing" allegedly performed by the Accused Instrumentality and therefore cannot show infringement of any asserted claim of the '094 patent. 14. Counterdefendant-Plaintiff has not operated the Accused Instrumentality and is not aware of any user operating the Accused Instrumentality, in a manner that directly infringe any claim of the '094 patent. 15. Counterplaintiff-Defendant does not contribute to the infringement of any claim of the '094 patent because Counterplaintiff-Defendant lacked knowledge of, and Counterplaintiff-Defendant was not willfully blind to, the '094 patent either before or after receiving Counterdefendant-Plaintiff's letter. Accordingly, Counterdefendant-Plaintiff is 30 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 not entitled to recover any damages for contributory infringement resulting from acts that transpired prior to the mailing of Counterdefendant-Plaintiff's letter to Counterplaintiff- Defendant. 16. Counterplaintiff-Defendant does not induce the infringement of (either literally or under the doctrine of equivalents) any claim of the '094 patent. Counterplaintiff-Defendant does not induce the infringement of any claim of the '094 patent because the Accused Instrumentality does not perform, and is not configured to perform the functions required to practice the limitations recited in each claim of the '094 patent. Further, no customer of Counterplaintiff-Defendant has performed operations that practice the limitations recited in each claim of the '094 patent. Further, Counterplaintiff- Defendant has not and does not knowingly induce infringement of any claim of the '094 patent, nor does Counterplaintiff-Defendant possess the specific intent to encourage others to infringe any claim of the '094 patent either before or after receiving Counterdefendant- Plaintiff's letter. 17. Counterplaintiff-Defendant does not induce the infringement of any claim of the '094 patent because Counterplaintiff-Defendant lacked knowledge of, and Counterplaintiff-Defendant was not willfully blind to, the '094 patent either before or after receiving Counterdefendant-Plaintiff's letter. Accordingly, Plaintiff is not entitled to recover any damages for induced infringement resulting from acts that transpired prior to the mailing of Counterdefendant-Plaintiff's letter to Counterplaintiff-Defendant. 18. In addition to the averments of paragraphs 8-17 of these Counterclaims, Counterplaintiff-Defendant does not willfully infringe of any claim of the '094 patent, for 31 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 example, because the Accused Instrumentality does not practice each limitation of any claim of the '094 patent identified in Plaintiff's First Amended Complaint. Further, Counterplaintiff-Defendant has not and does not act in a wanton manner because, on information and belief, each claim of the '094 Patent is invalid, and an invalid claim cannot be infringed. SECOND COUNTERCLAIM (Declaratory Judgment of Invalidity of the '094 Patent) 19. Counterplaintiff-Defendant PlainsCapital realleges and reincorporates paragraphs 1-18 of its Counterclaims into this paragraph. 20. All claims of the '094 patent are invalid for failure to satisfy one or more of the conditions of patentability under the patent laws of the United States, 35 U.S.C. §§ 100, et seq., including §§ 101, 102, 103, and 112. 21. All asserted claims are invalid under §§ 101, 102, 103, and 112 for the reasons set forth in Defendant's Preliminary Invalidity Contentions served September 27, 2019. 22. All claims of the '094 patent are invalid for failure to constitute patentable subject-matter under 35 U.S.C. § 101. For example, each of the asserted claims is directed to the abstract idea of generating a visual representation of an image, associating information with the image, and formatting the image for submission. None of the elements of the asserted claims, considered both individually and as ordered combinations, transform the nature of the claims into a patent-eligible invention. 32 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 23. Prior to the earliest claimed priority date of the '094 patent, a person performing printing or publishing services could perform a prepress process to generate a printer's proof, which is a visual representation of an image; perform typesetting of textual material with the image; preprocess the image based on printer's specifications; and submit the processed image for print or publication. 24. Prior to the earliest claimed priority date of the '094 patent, website creators could perform similar manipulation and processing of digital content for publication on the Internet with high degree of automation. 25. The '094 patent does not use the term "mobile deposit," "check deposit," or "mobile banking." 26. The named inventors of the '094 patent did not invent "mobile deposit," "check deposit," "mobile banking," image capture, image pre-processing, or transmitting pre-processed images. 27. Prior to the earliest claimed priority date of the '094 patent, generating a visual representation of the digital content was known in the art. 28. Prior to the earliest claimed priority date of the '094 patent, retaking an image to replace another image was known in the art. 29. Prior to the earliest claimed priority date of the '094 patent, associating text information with the digital content was known in the art. 30. Prior to the earliest claimed priority date of the '094 patent, preprocessing digital content based on processing parameters, including from a third party, was known in the art. 33 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 31. Prior to the earliest claimed priority date of the '094 patent, submitting and transmitting the digital content, including preprocessed digital content, over the Internet was known in the art. 32. All claims of the '094 patent are invalid under one or both of 35 U.S.C. §§ 102 and 103 as either anticipated or obvious based on prior art disclosures. 33. All claims of the '094 patent are not patentably distinct from its parent U.S. Patent Nos. 7,765,482 and 8,612,515. 34. Many of the claims in U.S. Patent Nos. 7,765,482 and 8,612,515 were found to be unpatentable by the United States Patent and Trademark Office Patent Trial and Appeal Board in Google Inc. v. Summit 6 LLC, IPR2015-00807; Samsung Electronics Co., Ltd. v. Summit 6 LLC, IPR2016-00029; and Google Inc. v. Summit 6 LLC, IPR2015- 00806. 35. On information and belief, all claims of the '094 patent are invalid under 35 U.S.C. § 102 and/or § 103 based on disclosures disclosed in Google Inc. v. Summit 6 LLC, IPR2015-00807; Samsung Electronics Co., Ltd. v. Summit 6 LLC, IPR2016-00029; and Google Inc. v. Summit 6 LLC, IPR2015-00806. 36. On information and belief, the claimed invention was in public use, on sale, or otherwise available to the public in the United States prior to the earliest claimed priority date of the '094 patent. 37. On information and belief, PictureWorks provided an Internet software technology called NetCard that was capable of combining text, images, video, and sound for publication over e-mail. On information and belief, NetCard was described, in public 34 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 use, on sale, or otherwise available to the public in the United States prior to the earliest claimed priority date of the '094 patent. On information and belief, NetCard either anticipates the asserted claims of the '094 patent or renders the asserted claims obvious either alone or in combination with other prior art. 38. On information and belief, PictureWorks provided an imaging software application called PhotoEnhancer for use on a motion picture phone. On information and belief, PhotoEnhancer included a one-step image processing tool that could automatically edit and improve pictures from digital cameras. On information and belief, PhotoEnhancer was described, in public use, on sale, or otherwise available to the public in the United States prior to the earliest claimed priority date of the '094 patent. On information and belief, PhotoEnhancer either anticipates the asserted claims of the '094 patent or renders the asserted claims obvious either alone or in combination with other prior art. 39. On information and belief, PictureWorks provided an Internet software technology called Real Estate Internet Marketing Toolkit that enabled a user to create digital content and post it to the Internet. On information and belief, Real Estate Internet Marketing Toolkit was described, in public use, on sale, or otherwise available to the public in the United States prior to the earliest claimed priority date of the '094 patent. On information and belief, Real Estate Internet Marketing Toolkit either anticipates the asserted claims of the '094 patent or renders the asserted claims obvious either alone or in combination with other prior art. 40. On information and belief, further prior art search efforts are likely to reveal additional invalidating prior art disclosures. 35 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 41. All claims of the '094 patent are invalid under 35 U.S.C. § 112 for failure to satisfy one or both of the enablement and written description requirements. For example, the '094 patent lacks a written description supporting: "causing the image submission tool to pre-process the one or more images or the one or more replacement images to produce one or more pre-processed images, the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party." It also lacks an enabling disclosure for this claim element. 42. All claims of the '094 patent are invalid under 35 U.S.C. § 112 for indefiniteness. For example, each of the independent claims contains limitations that are meaningless, thereby, failing to reasonably define the scope of the claimed invention." EXCEPTIONAL CASE 43. This case is an exceptional case under 35 U.S.C. § 285, and Counterplaintiff-Defendant is entitled to recover attorney fees and costs incurred in connection with this action from Counterdefendant-Plaintiff because Counterdefendant- Plaintiff does not have a reasonable basis for bringing this litigation. 44. On information and belief, Counterdefendant-Plaintiff has not seen, and is not aware of, any "pre-processing" being deployed in connection with the Accused Instrumentality, as alleged in paragraphs 19-20 of Counterdefendant-Plaintiff's First Amended Complaint. 36 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 45. On information and belief, Counterdefendant-Plaintiff cannot prove direct infringement or indirect infringement as alleged in its First Amended Complaint without showing that the allegations in paragraphs 19-20 of Counterdefendant-Plaintiff's First Amended Complaint are true. 46. Despite being unaware of any actions and/or operations accused of infringement, for example, because Counterdefendant-Plaintiff has not identified any pre- processing in the Accused Instrumentality Counterdefendant-Plaintiff made such assertions in paragraphs 19-20 of Plaintiff's First Amended Complaint. 47. Counterdefendant-Plaintiff lacked a good faith basis for making such allegations in paragraphs 19-20 of Plaintiff's First Amended Complaint. 48. Counterdefendant-Plaintiff lacked a good-faith basis for making such allegations in paragraphs 19-25 of Plaintiff's Original Complaint. 6:19-cv-00202-ADA, Dkt. No. 1. Counterdefendant-Plaintiff's lack a good-faith basis is evidenced by the removal of Original Complaint paragraphs 19-25 and replacing them with First Amended Complaint paragraphs 19-20. Accordingly, Counterdefendant-Plaintiff's First Amended Complaint admits that the Original Complaint was baseless and lacked a good-faith basis for its allegations. 49. Counterdefendant-Plaintiff has not identified any page of Defendant's website that promote or encourages users to practice the claimed methods of any claim of the '094 patent, as alleged in paragraph 12 of Counterdefendant-Plaintiff's First Amended Complaint. 37 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 50. On information and belief, Counterdefendant-Plaintiff cannot prove direct infringement or indirect infringement as alleged in its First Amended Complaint without showing that the allegations in paragraphs 12 and 19-20 Counterdefendant-Plaintiff's First Amended Complaint are true. 51. Many of the claims in U.S. Patent Nos. 7,765,482 and 8,612,515 were found to be unpatentable by the United States Patent and Trademark Office Patent Trial and Appeal Board in Google Inc. v. Summit 6 LLC, IPR2015-00807; Samsung Electronics Co., Ltd. v. Summit 6 LLC, IPR2016-00029; and Google Inc. v. Summit 6 LLC, IPR2015- 00806. 52. The '094 patent is not patentably distinct from its parent U.S. Patent Nos. 7,765,482 and 8,612,515. 53. Each claim of the '094 patent is unpatentable at least for the reasons found by the United States Patent and Trademark Office Patent Trial and Appeal Board in Google Inc. v. Summit 6 LLC, IPR2015-00807; Samsung Electronics Co., Ltd. v. Summit 6 LLC, IPR2016-00029; and Google Inc. v. Summit 6 LLC, IPR2015-00806. 54. Counterdefendant-Plaintiff lacked a good faith basis for filing this suit or asserting any claim of the '094 patent because the claims of the parent patents were found invalid. 55. Counterdefendant-Plaintiff lacked a good faith basis for making the allegations in paragraphs 12 and 19-20 of Counterdefendant-Plaintiff's First Amended Complaint. 38 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 56. At least because of Counterdefendant-Plaintiff's actions set forth in Counterclaim paragraphs 8-56, Counterdefendant-Plaintiff's filing of this case and continued actions pursuing this case constitute exceptional conduct under 35 U.S.C. § 285 for which Counterplaintiff-Defendant is entitled to recover attorneys' fees and costs and any other appropriate relief. PRAYER FOR RELIEF 57. WHEREFORE, Counterplaintiff-Defendant respectfully requests that this Court enter judgment in its favor and grant the following relief: a. A declaration that Counterplaintiff-Defendant does not infringe and has not infringed any of claims 1-51 of the '094 patent; b. A declaration that the following claims 1-51 of the '094 patent are invalid; c. A judgment that Counterdefendant-Plaintiff Lupercal's case against Counterplaintiff-Defendant is exceptional under 35 U.S.C. § 285 and an award to Counterplaintiff-Defendant for their costs and reasonable attorney fees; and d. Any further relief in Counterplaintiff-Defendant's favor that the Court may deem just and proper. JURY DEMAND 58. Counterplaintiff-Defendant demands a trial by jury of all matters to which it is entitled to trial by jury pursuant to Fed. R. Civ. P. 38. 39 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 Dated: September 30, 2019 Respectfully submitted, /s/ Kevin D. Rodkey John G. Flaim Texas Bar No. 00785864 BAKER & MCKENZIE LLP 1900 North Pearl Street, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-3000 Facsimile: (214) 978-3099 john.flaim@bakermckenzie.com Jeffrey A. Berkowitz (pro hac vice) Jency J. Mathew (pro hac vice) FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190-5675 Telephone: 571-203-2700 Fax: 202-408-4400 jeffrey.berkowitz@finnegan.com jency.mathew@finnegan.com Kevin D. Rodkey (pro hac vice) Shawn S. Chang (pro hac vice) FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 271 17th St. NW, Suite 1400 Atlanta, GA 30363-6209 Telephone: 404-653-6400 Fax: 404-653-6444 kevin.rodkey@finnegan.com shawn.chang@finnegan.com ATTORNEYS FOR DEFENDANT PLAINSCAPITAL BANK 40 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT 1 CERTIFICATE OF SERVICE I hereby certify that on September 30, 2019, I electronically filed the foregoing with the Clerk of Court using the CM/ECF system, which will send a notification of such filing ("NEF") to the counsel of record who have appeared in this case on behalf of the parties. /s/ Kevin D. Rodkey Kevin D. Rodkey 41 DEFENDANT'S ANSWER AND COUNTERCLAIMS TO FIRST AMENDED COMPLAINT