Lupercal LLC v. CitiBank, N.A.

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

ANSWER to [28] Answer to Amended Complaint, Counterclaim by Lupercal LLC.

Interested in this case?

Current View

Full Text

3 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 LEAD CASE CITIBANK, N.A., Defendant LUPERCAL LLC, Case No. 6:19-cv-00202-ADA Plaintiff JURY TRIAL DEMANDED v. PLAINS CAPITAL BANK, Defendant PLAINTIFF'S ANSWER TO DEFENDANT'S SECOND COUNTERCLAIMS Plaintiff Lupercal LLC ("Plaintiff") answers the counterclaim of Defendant Plains Capital Bank ("Defendant") as follows: 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. 3 ANSWER: Plaintiff admits that this Court has subject matter jurisdiction over Defendant's Counterclaims relating to infringement and invalidity. Plaintiff denies any remaining allegations in paragraph 1 of Defendant's Counterclaims. 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. ANSWER: Plaintiff admits that an existing and actual case and controversy exists between Plaintiff and Defendant concerning infringement and validity of the patent-in-suit. Plaintiff denies any remaining allegations in paragraph 2 of Defendant's Counterclaims. 3. Counterdefendant-Plaintiff is subject to personal jurisdiction in this judicial district because it filed this action in this judicial district. ANSWER: Plaintiff admits that this Court has personal jurisdiction over Plaintiff. Plaintiff denies any remaining allegations in paragraph 3 of Defendant's Counterclaims. 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. ANSWER: Plaintiff admits that venue as to Defendant's Counterclaims relating to infringement and validity of the patent-in-suit lies in this district. PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 2 3 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. ANSWER: Plaintiff admits the allegations in paragraph 5 of Defendant's Counterclaims. 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. ANSWER: To the extent paragraph 6 of Defendant's Counterclaims alleges Plaintiff does not practice the invention of the '094 Patent, Plaintiff denies such an allegation. With respect to the remaining allegations in paragraph 6, Plaintiff denies it 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. ANSWER: On information and belief, Plaintiff admits the allegations in paragraph 7 of Defendant's Counterclaims. 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. ANSWER: Plaintiff realleges its answers to paragraphs 1-7 as if fully set forth herein. PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 3 3 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). ANSWER: Plaintiff denies the allegations in paragraph 9 of Defendant's Counterclaims. 10. The sole Accused Instrumentality identified in paragraph 11 of Counterdefendant- Plaintiff's 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 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. ANSWER: Plaintiff acknowledges that the "Plains Capital Mobile Banking App" is the accused instrumentality identified in paragraph 11 of the Complaint. Plaintiff denies that "an app" itself is capable of "infringing" under 35 U.S.C. § 271, which defines infringement as being conducted by a person or entity. Plaintiff denies any remaining allegations in paragraph 10 of Defendant's Counterclaims. 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. PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 4 3 ANSWER: Plaintiff alleges that users of the Accused Instrumentality to deposit a check infringe the '094 Patent, which recites "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." Accordingly, Plaintiff denies it 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. The ability to enter text associated with a captured image is further demonstrated by Defendant's information to its customers describing how to use the Accused Instrumentality. https://www.plainscapital.com/media/13611/mobile-deposit-step-by-step-guide.pdf https://www.plainscapital.com/mobiledeposit/ Plaintiff denies any remaining allegations in paragraph 11 of Defendant's Counterclaims. PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 5 3 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. ANSWER: Plaintiff alleges that users of the Accused Instrumentality to deposit a check infringe the '094 Patent, which recites "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." Accordingly, Plaintiff denies it does not allege that the Accused Instrumentality receives pre-processing parameters of the one or more images or the one or more replacement images. Plaintiff denies any remaining allegations in paragraph 12 of Defendant's Counterclaims. 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. ANSWER: The Complaint includes the following images depicting a visual representation and pre-processing performed by the Accused Instrumentality. PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 6 3 https://play.google.com/store/apps/details?id=com.mfoundry.mb.android.mb_338 https://play.google.com/store/apps/details?id=com.mfoundry.mb.android.mb_338 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 7 3 https://en.wikipedia.org/wiki/Substitute_checks_in_the_United_States https://www.plainscapital.com/mobile-deposit/ PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 8 3 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 9 3 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 10 3 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 11 3 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 12 3 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 13 3 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 14 3 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 15 3 Plaintiff denies any remaining allegations in paragraph 13 of Defendant's Counterclaims. 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. ANSWER: On information and belief, at least with respect to testing of the Accused Instrumentality, Defendant has used the Accused Instrumentality in a manner PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 16 3 that directly infringes at least one claim 42. Without waiving work product, Plaintiff denies any remaining allegations in paragraph 14 of Defendant's Counterclaims 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 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. ANSWER: Defendant was aware of the '094 and allegations of infringing the '094 Patent at least as of the date Defendant received Plaintiff's notice letter. Plaintiff's has not had an opportunity depose or to compound other discovery from Defendant to determine when Defendant first learned of the '094. Accordingly, based on information and belief Plaintiff denies any remaining allegations in paragraph 15 of Defendant's Counterclaims. 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 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 17 3 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. ANSWER: On information and belief, Plaintiff denies the allegations in paragraph 16 of Defendant's Counterclaims. 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. ANSWER: On information and belief, Plaintiff denies the allegations in paragraph 17 of Defendant's Counterclaims. 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 example, because the Accused Instrumentality does not practice each limitation of any claim of the '094 patent identified in Plaintiff's 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. ANSWER: Plaintiff is without sufficient information to admit or deny the allegations in paragraph 18 of Defendant's Counterclaims. Plaintiff, therefore denies the allegations in paragraph 18 of Defendant's Counterclaims. PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 18 3 SECOND COUNTERCLAIM Declaratory Judgment of Invalidity of the '094 Patent 19. Counterplaintiff-Defendant PlainsCapital realleges and reincorporates paragraphs 1-19 of its Counterclaims into this paragraph. ANSWER: Plaintiff incorporates its responses to paragraphs 1-18 above as if fully set forth herein. 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. ANSWER: Plaintiff denies the allegations in paragraph 20 of Defendant's Counterclaims. 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. ANSWER: Plaintiff denies the allegations in paragraph 21 of Defendant's Counterclaims. 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. ANSWER: Plaintiff denies the allegations in paragraph 22 of Defendant's Counterclaims. PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 19 3 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. ANSWER: This paragraph is not readily comprehensible and does not appear to describe allegations relevant to the '094 Patent. Further, Plaintiff lacks sufficient information as to what a person performing printing or publishing services could perform. Accordingly, on information and belief, Plaintiff denies the allegations in paragraph 23 of Defendant's Counterclaims. 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. ANSWER: This paragraph is not readily comprehensible and does not appear to describe allegations relevant to the '094 Patent. Further, Plaintiff lacks sufficient information as to what website creators could perform. Accordingly, on information and belief, Plaintiff denies the allegations in paragraph 24 of Defendant's Counterclaims. 25. The '094 patent does not use the term "mobile deposit," "check deposit," or "mobile banking." ANSWER: Plaintiff admits a text search of a pdf of the '094 Patent does not identify any matches for "mobile deposit," "check deposit," or "mobile banking." Plaintiff denies that the '094 Patent is limited to "mobile deposit," "check deposit," or "mobile PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 20 3 banking" applications of the recited patented inventions. Plaintiff denies any remaining allegations in paragraph 25 of Defendant's Counterclaims. 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. ANSWER: Plaintiff admits the named inventors of the '094 Patent invented the 51 claimed inventions recited in the '094 Patent and their applications to "mobile deposit," "check deposit," "mobile banking," image capture, image pre-processing, or transmitting pre-processed images as applicable to implementation and use of the individually recited claims. Plaintiff denies any remaining allegations in paragraph 26 of Defendant's Counterclaims. 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. ANSWER: This paragraph is not readily comprehensible. It is unclear what "the" digital content references. Plaintiff denies that with respect to the claims of the '094 Patent, "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" was conventional, routine, or well-known. Plaintiff lacks sufficient information to admit or deny any remaining allegations. Plaintiff, therefore denies any remaining allegations in paragraph 27 of Defendant's Counterclaims. 28. Prior to the earliest claimed priority date of the '094 patent, retaking an image to replace another image was known in the art. PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 21 3 ANSWER: This paragraph is not readily comprehensible. Plaintiff denies that with respect to the claims of the '094 Patent, "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" was conventional, routine, or well-known. Plaintiff lacks sufficient information to admit or deny any remaining allegations. Plaintiff, therefore denies any remaining allegations in paragraph 28 of Defendant's Counterclaims. 29. Prior to the earliest claimed priority date of the '094 patent, associating text information with the digital content was known in the art. ANSWER: This paragraph is not readily comprehensible. It is unclear what "the" digital content references. Plaintiff denies that with respect to the claims of the '094 Patent, "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" was conventional, routine, or well-known. Plaintiff lacks sufficient information to admit or deny any remaining allegations. Plaintiff, therefore denies any remaining allegations in paragraph 29 of Defendant's Counterclaims. 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. ANSWER: Plaintiff admits that in the broad sense, digital content had been processed using processing parameters, digital content has been transmitted over the Internet. Plaintiff denies that any claimed preprocessing of digital content based on PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 22 3 processing parameters as recited in any claims in the '094 Patent was conventional, routine, and well-known. Plaintiff lacks sufficient information to admit or deny any remaining allegations. Plaintiff, therefore denies any remaining allegations in paragraph 30 of Defendant's Counterclaims. 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. ANSWER: Plaintiff admits that in the broad sense, digital content had been processed using processing parameters, digital content has been transmitted over the Internet. Plaintiff denies that any submission and transmission of digital content as recited in any claims in the '094 Patent was conventional, routine, and well-known. Plaintiff lacks sufficient information to admit or deny any remaining allegations. Plaintiff, therefore denies any remaining allegations in paragraph 31 of Defendant's Counterclaims. 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. ANSWER: Plaintiff denies the allegations in paragraph 32 of Defendant's Counterclaims. 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. ANSWER: Plaintiff denies the allegations in paragraph 33 of Defendant's Counterclaims. 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 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 23 3 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. ANSWER: Plaintiff admits certain claims of U.S. Patent Nos. 7,765,482 and 8,612,515 were determined to be unpatentable by the United States Patent and Trademark Office Patent Trial and Appeal Board in IPR2015-00806, IPR2015-00807, and IPR2016-00029. Plaintiff denies any remaining allegations in paragraphs 34 of Defendant's Counterclaims. 35. On information and belief, all claims of the '094 patent are invalid under 35 U.S.C. § 102 and/or § 103 based on prior art 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. ANSWER: Plaintiff admits that U.S. Patent Nos. 6,930,709, 6,223,190, 6,018,774, and 6,035,323 were considered by the USPTO in the following actions IPR2015-00806, IPR2015-00807, and IPR2016-00029. Plaintiff also admits that during prosecution of the '094 Patent, the USPTO considered the same patent references and determined that, alone or in combination with over 200 patent references and over 1200 printed publications, that none of these patents anticipated or rendered obvious any of the claims of the '094 Patent. On information and belief, Plaintiff denies the allegations in paragraph 54 of Defendant's Counterclaims. 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. PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 24 3 ANSWER: On information and belief, Plaintiff denies the allegations in paragraph 36 of Defendant's Counterclaims. 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 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. ANSWER: Plaintiff acknowledges that several PictureWorks publications were provided to the USPTO for consideration during the prosecution of the '094 Patent, and the USPTO determined that the information regarding PictureWorks, alone or in combination with 237 patents and over 1,000 printed publications, did not anticipate or render any of the claims of the '094 Patent invalid. Plaintiff lacks sufficient information to admit or deny the actions of PictureWorks and therefore denies the allegations in paragraph 37 of Defendant's Counterclaims. 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 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 25 3 patent or renders the asserted claims obvious either alone or in combination with other prior art. ANSWER: Plaintiff acknowledges that several PictureWorks publications were provided to the USPTO for consideration during the prosecution of the '094 Patent, and the USPTO determined that the information regarding PictureWorks, alone or in combination with 237 patents and over 1,000 printed publications, did not anticipate or render any of the claims of the '094 Patent invalid. Plaintiff lacks sufficient information to admit or deny the actions of PictureWorks and therefore denies the allegations in paragraph 38 of Defendant's Counterclaims. 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. ANSWER: Plaintiff acknowledges that several PictureWorks publications were provided to the USPTO for consideration during the prosecution of the '094 Patent, and the USPTO determined that the information regarding PictureWorks, alone or in combination with 237 patents and over 1,000 printed publications, did not anticipate or render any of the claims of the '094 Patent invalid. Plaintiff lacks sufficient information PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 26 3 to admit or deny the actions of PictureWorks and therefore denies the allegations in paragraph 39 of Defendant's Counterclaims. 40. On information and belief, further prior art search efforts are likely to reveal additional invalidating prior art disclosures. ANSWER: On information and belief, Plaintiff denies the allegations in paragraph 40 of Defendant's Counterclaims. 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. ANSWER: Plaintiff denies the allegations in paragraphs 41 of Defendant's Counterclaims. 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." ANSWER: Plaintiff denies the allegations in paragraphs 42 of Defendant's Counterclaims. PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 27 3 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. ANSWER: Plaintiff denies the allegations in paragraph 43 of Defendant's Counterclaims. 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. ANSWER: Plaintiff denies the allegations in paragraph 44 of Defendant's Counterclaims. 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. ANSWER: Plaintiff denies the allegations contained in paragraph 45 of Defendant's Counterclaims. 46. Despite being unaware of any actions and/or operations accused of infringement, for example, because Counterdefendant-Plaintiff has not identified any preprocessing in the Accused Instrumentality Counterdefendant-Plaintiff made such assertions in paragraphs 19-20 of Plaintiff's First Amended Complaint. PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 28 3 ANSWER: Plaintiff denies the allegations contained in paragraph 46 of Defendant's Counterclaims. 47. Counterdefendant-Plaintiff lacked a good faith basis for making such allegations in paragraphs 19-20 of Plaintiff's First Amended Complaint. ANSWER: Plaintiff denies the allegations contained in paragraph 47 of Defendant's Counterclaims. 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. ANSWER: Plaintiff denies the allegations contained in paragraph 48 of Defendant's Counterclaims. 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. ANSWER: Plaintiff identified at least the following portions of Defendant's website encouraging its customers to download and use the Accused Instrumentality: PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 29 3 https://www.plainscapital.com/mobile-banking/ https://www.plainscapital.com/mobile-banking/ PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 30 3 Accordingly, Plaintiff denies the allegations in paragraph 48 of Defendant's Counterclaims. 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. ANSWER: Plaintiff denies the allegations in paragraph 50 of Defendant's Counterclaims. 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. ANSWER: Plaintiff admits certain claims of U.S. Patent Nos. 7,765,482 and 8,612,515 were determined to be unpatentable by the United States Patent and Trademark Office Patent Trial and Appeal Board in IPR2015-00806, IPR2015-00807, and IPR2016-00029. Plaintiff denies any remaining allegations in paragraphs 51 of Defendant's Counterclaims. 52. The '094 patent is not patentably distinct from its parent U.S. Patent Nos. 7,765,482 and 8,612,515. ANSWER: Plaintiff denies the allegations in paragraph 52 of Defendant's Counterclaims. 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 PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 31 3 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. ANSWER: Plaintiff admits that U.S. Patent Nos. 6,930,709, 6,223,190, 6,018,774, and 6,035,323 were considered by the USPTO in the following actions IPR2015-00806, IPR2015-00807, and IPR2016-00029. Plaintiff also admits that during prosecution of the '094 Patent, the USPTO considered the same patent references and determined that, alone or in combination with over 200 patent references and over 1200 printed publications, that none of these patents anticipated or rendered obvious any of the claims of the '094 Patent. Plaintiff denies the allegations in paragraph 54 of Defendant's Counterclaims. 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. ANSWER: Plaintiff denies the allegations in paragraph 54 of Defendant's Counterclaims. 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. ANSWER: Plaintiff denies the allegations in paragraph 55 of Defendant's Counterclaims. 56. At least because of Counterdefendant-Plaintiff's actions set forth in Counterclaim paragraphs 8-5[5], Counterdefendant-Plaintiff's filing of this case and continued actions pursuing this case constitute exceptional conduct under 35 U.S.C. § 285 for which PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 32 3 Counterplaintiff-Defendant is entitled to recover attorneys' fees and costs and any other appropriate relief. ANSWER: Plaintiff denies the allegations in paragraph 56 of Defendant's Counterclaims. RESPONSE TO DEFENDANTS' PRAYER FOR RELIEF Plaintiff denies all remaining allegations not specifically admitted herein and denies that the Defendants are entitled to any of the relief they have requested. Dated: October 8, 2019 Respectfully Submitted /s/ Raymond W. Mort, III Raymond W. Mort, III Texas State Bar No. 00791308 raymort@austinlaw.com THE MORT LAW FIRM, PLLC 100 Congress Ave, Suite 2000 Austin, Texas 78701 Tel/Fax: (512) 865-7950 ATTORNEYS FOR PLAINTIFF PLAINTIFF'S ANSWER TO DEFENDANT'S COUNTERCLAIMS PAGE | 33