Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 1 of 22
`
`Exhibit F
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page1 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 2 of 22
`
`COOLEY LLP
`STEPHEN C. NEAL (170085)
`(nealsc@cooley.com)
`MICHAEL G. RHODES (116127)
`(rhodesmg@cooley.com)
`HEIDI L. KEEFE (178960)
`(hkeefe@cooley.com)
`MARK R. WEINSTEIN (193043)
`(mweinstein@cooley.com)
`5 Palo Alto Square
`3000 El Camino Real
`Palo Alto, CA 94306-2155
`Telephone:
`(650) 843-5000
`Facsimile:
`(650) 849-7400
`
`Attorneys for Defendant
`FACEBOOK, INC.
`
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`WILLIAM F. LEE (Pro Hac Vice Pending)
`(william.lee@wilmerhale.com)
`CYNTHIA D. VREELAND (Pro Hac Vice
`Pending)
`(cynthia.vreeland@wilmerhale.com)
`60 State Street
`Boston, MA 02109
`Telephone:
`(617) 526-6000
`Facsimile:
`(617) 526-5000
`
`MARK D. SELWYN (244180)
`(mark.selwyn@wilmerhale.com)
`JOSEPH F. HAAG (248749)
`(joseph.haag@wilmerhale.com)
`950 Page Mill Road
`Palo Alto, CA 94304
`Telephone:
`(650) 858-6000
`Facsimile:
`(650) 858-6100
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`YAHOO! INC.,
`
`Plaintiff,
`
`v.
`
`FACEBOOK, INC.,
`
`Defendant.
`
`Case No. CV-12-01212-JSW
`
`DEFENDANT FACEBOOK, INC.’S
`ANSWER; COUNTERCLAIM
`AGAINST YAHOO! INC. FOR
`PATENT INFRINGEMENT
`
`JURY TRIAL DEMANDED
`
`FACEBOOK, INC.,
`
`Counterclaim-plaintiff,
`
`v.
`
`YAHOO! INC.,
`
`Counterclaim-defendant.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`FACEBOOK, INC.’S ANSWER AND
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 2 of 22
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page2 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 3 of 22
`
`Defendant Facebook, Inc. (“Facebook”) hereby submits the following Answer to the
`
`Complaint for Patent Infringement of Yahoo! Inc. (“Yahoo!”). Facebook’s Counterclaim for
`
`Patent Infringement against Yahoo! is set forth below following the Answer.
`
`THE PARTIES
`
`1.
`
`Facebook lacks sufficient information to form a belief as to the truth of the
`
`allegations recited in this paragraph, and on that basis denies them.
`
`2.
`
`Facebook admits that it is a Delaware corporation with its principal place of
`
`business at 1601 Willow Road, Menlo Park, California 94025. Facebook admits it operates a
`
`website at www.facebook.com as well as associated mobile applications and social plugins.
`
`Except as expressly admitted herein, Facebook denies the remaining allegations of this paragraph.
`
`NATURE OF THE ACTION
`
`3.
`
`4.
`
`5.
`
`6.
`
`This paragraph contains a legal conclusion to which no response is required.
`
`Facebook denies the allegations set forth in this paragraph.
`
`JURISDICTION AND VENUE
`
`This paragraph contains legal conclusions to which no response is required.
`
`Facebook admits that this Court has personal jurisdiction over Facebook.
`
`Facebook denies that it has committed any acts of patent infringement and/or contributed to or
`
`induced acts of patent infringement by others in this or any other District.
`
`7.
`
`8.
`
`Facebook admits that venue is proper in this judicial district.
`
`INTRADISTRICT ASSIGNEMENT
`
`This paragraph contains legal conclusions to which no response is required.
`
`FACTUAL BACKGROUND
`
`Yahoo!’s History
`
`9.
`
`This paragraph of the Complaint consists of allegations regarding Yahoo! that
`
`Facebook lacks sufficient information to admit or deny, and on that basis, Facebook denies the
`
`allegations of this paragraph.
`
`10.
`
`This paragraph of the Complaint consists of allegations regarding Yahoo! that
`
`Facebook lacks sufficient information to admit or deny, and on that basis, Facebook denies the
`FACEBOOK, INC.’S ANSWER AND
`1.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 3 of 22
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page3 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 4 of 22
`
`allegations of this paragraph.
`
`11.
`
`This paragraph of the Complaint consists of allegations regarding Yahoo! that
`
`Facebook lacks sufficient information to admit or deny, and on that basis, Facebook denies the
`
`allegations of this paragraph.
`
`12.
`
`This paragraph of the Complaint consists of allegations regarding Yahoo! that
`
`Facebook lacks sufficient information to admit or deny, and on that basis, Facebook denies the
`
`allegations of this paragraph.
`
`13.
`
`This paragraph of the Complaint consists of allegations regarding Yahoo! that
`
`Facebook lacks sufficient information to admit or deny, and on that basis, Facebook denies the
`
`allegations of this paragraph.
`
`Yahoo!’s Alleged Innovations
`
`14.
`
`This paragraph of the Complaint consists of allegations regarding Yahoo! that
`
`Facebook lacks sufficient information to admit or deny, and on that basis, Facebook denies the
`
`allegations of this paragraph.
`
`15.
`
`This paragraph of the Complaint consists of allegations regarding Yahoo! that
`
`Facebook lacks sufficient information to admit or deny, and on that basis, Facebook denies the
`
`allegations of this paragraph.
`
`16.
`
`This paragraph of the Complaint consists of allegations regarding Yahoo! that
`
`Facebook lacks sufficient information to admit or deny, and on that basis, Facebook denies the
`
`allegations of this paragraph.
`
`17.
`
`This paragraph of the Complaint consists of allegations regarding Yahoo! that
`
`Facebook lacks sufficient information to admit or deny, and on that basis, Facebook denies the
`
`allegations of this paragraph.
`
`Yahoo!’s Patents-in-Suit
`
`18.
`
`Facebook admits that messaging and privacy are offered as options on certain
`
`websites. Facebook denies that “[w]ithout Yahoo!’s achievements, websites such as Facebook
`
`would not enjoy repeat visitors or substantial advertising revenue.” Facebook further denies that
`
`the functions identified in this paragraph of the Complaint involved any innovation by Yahoo!.
`FACEBOOK, INC.’S ANSWER AND
`2.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 4 of 22
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page4 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 5 of 22
`
`Facebook lacks sufficient information to form a belief as to the truth of the remaining allegations
`
`recited in this paragraph, and on that basis denies them.
`
`19.
`
`Facebook admits that website operators who offer services for free may seek to
`
`generate revenue through other means, such as advertising. The remaining allegations of this
`
`paragraph consist of assertions regarding Yahoo! that Facebook lacks sufficient information to
`
`admit or deny, and on that basis, Facebook denies them.
`
`20.
`
`Facebook admits that Internet users may regard privacy as important in connection
`
`with their use of certain websites, and that some users of certain websites may want to ensure that
`
`sensitive information shared on those sites is shared only with specific users. As to practices and
`
`features of individual websites or the preferences of individual Internet users, Facebook lacks
`
`sufficient information to form a belief as to the truth of the allegations recited in this paragraph,
`
`and on that basis denies them. The remaining allegations of this paragraph consist of assertions
`
`regarding Yahoo! that Facebook lacks sufficient information to admit or deny, and on that basis,
`
`Facebook denies them.
`
`21.
`
`Facebook admits that users of some websites may wish to customize their
`
`experiences according to their needs and interests. As to preferences of individual users,
`
`Facebook lacks sufficient information to form a belief as to the truth of the allegations recited in
`
`this paragraph, and on that basis denies them. The remaining allegations of this paragraph consist
`
`of assertions regarding Yahoo! that Facebook lacks sufficient information to admit or deny, and
`
`on that basis, Facebook denies them.
`
`22.
`
`Facebook admits that some websites incorporate social features, and that the
`
`Internet enables many forms of communication. The remaining allegations of this paragraph
`
`consist of assertions regarding Yahoo! that Facebook lacks sufficient information to admit or
`
`deny, and on that basis, Facebook denies them.
`
`23.
`
`Facebook admits that users who connect with and meet new people online may
`
`wish to communicate with them, and that instant messaging and e-mail are available means of
`
`communication on certain websites. As to preferences of individual users, Facebook lacks
`
`sufficient information to form a belief as to the truth of the allegations recited in this paragraph,
`FACEBOOK, INC.’S ANSWER AND
`3.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 5 of 22
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page5 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 6 of 22
`
`and on that basis denies them. The remaining allegations of this paragraph consist of assertions
`
`regarding Yahoo! that Facebook lacks sufficient information to admit or deny, and on that basis,
`
`Facebook denies them.
`
`Facebook’s History
`
`24.
`
`Facebook admits that it was founded in 2004, that it is a widely trafficked web site,
`
`and that Mr. Mark Zuckerberg is its founder and CEO. Facebook admits that the New Yorker
`
`magazine in an article dated September 20, 2010 attributed the following statement to Mr.
`
`Zuckerberg: “The thing that’s been really surprising about the evolution of Facebook is—I think
`
`then and now—that if we didn’t do this someone else would have done it.” Facebook denies the
`
`remaining allegations in this paragraph.
`
`25.
`
`Facebook admits that Yahoo! has been granted certain patents. Facebook denies
`
`the remaining allegations in this paragraph.
`
`26.
`
`27.
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook admits that it has a feature called News Feed, which was launched in
`
`2006, and that Facebook has privacy settings. Facebook denies Yahoo!’s characterizations of
`
`certain statements made in third party publications, as the publications speak for themselves.
`
`Facebook denies the remaining allegations set forth in this paragraph.
`
`28.
`
`Facebook admits it generates revenue through the sale of ads, that it offers a
`
`number of methods by which ads can be purchased, and that certain ads on Facebook may be
`
`charged on a CPC (cost per click) basis. Facebook denies the remaining allegations set forth in
`
`this paragraph.
`
`29.
`
`Facebook admits that it takes steps to prevent fraudulent actions taken with respect
`
`to advertisements on Facebook. Facebook denies the remaining allegations set forth in this
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook denies the allegations set forth in this paragraph.
`
`paragraph.
`
`30.
`
`31.
`
`//
`
`//
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`FACEBOOK, INC.’S ANSWER AND
`4.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 6 of 22
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page6 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 7 of 22
`
`YAHOO!’S ALLEGATIONS OF INFRINGEMENT:
`
`THE ’566, ’111, ’599, AND ’861 PATENTS
`
`32.
`
`Facebook denies the allegations in this paragraph.
`
`COUNT I
`
`(ALLEGED INFRINGEMENT OF THE ’566 PATENT)
`
`33.
`
`Facebook incorporates by reference paragraphs 1-32 of this Answer and
`
`Counterclaim as if fully set forth herein.
`
`34.
`
`Facebook admits that a copy of U.S. Patent No. 6,907,566 (the “’566 patent”) was
`
`attached to the Complaint as Exhibit 1. Facebook admits that the ’566 patent bears an issuance
`
`date of June 14, 2005 and a title of “Method and System for Optimum Placement of
`
`Advertisements on a Webpage.” Facebook denies the remaining allegations of this paragraph.
`
`35.
`
`Facebook admits that it received a letter from Yahoo! dated February 27, 2012 in
`
`which Yahoo! insisted that Facebook obtain a license to the ’566 patent, among others. Facebook
`
`denies the remaining allegations of this paragraph.
`
`36.
`
`37.
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook denies the allegations set forth in this paragraph.
`
`COUNT II
`
`(ALLEGED INFRINGEMENT OF THE ’111 PATENT)
`
`38.
`
`Facebook incorporates by reference paragraphs 1-32 of this Answer and
`
`Counterclaim as if fully set forth herein.
`
`39.
`
`Facebook admits that a copy of U.S. Patent No. 7,100,111 (the “’111 patent”) was
`
`attached to the Complaint as Exhibit 2. Facebook admits that the ’111 patent bears an issuance
`
`date of August 29, 2006 and a title of “Method and System for Optimum Placement of
`
`Advertisements on a Webpage.” Facebook denies the remaining allegations of this paragraph.
`
`40.
`
`Facebook admits that it received a letter from Yahoo! dated February 27, 2012 in
`
`which Yahoo! insisted that Facebook take a license to the ’111 patent, among others. Facebook
`
`denies the remaining allegations of this paragraph.
`
`41.
`
`Facebook denies the allegations set forth in this paragraph.
`FACEBOOK, INC.’S ANSWER AND
`5.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 7 of 22
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page7 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 8 of 22
`
`42.
`
`Facebook denies the allegations set forth in this paragraph.
`
`COUNT III
`
`(ALLEGED INFRINGEMENT OF THE ’599 PATENT)
`
`43.
`
`Facebook incorporates by reference paragraphs 1-32 of this Answer and
`
`Counterclaim as if fully set forth herein.
`
`44.
`
`Facebook admits that a copy of U.S. Patent No. 7,373,599 (the “’599 patent”) was
`
`attached to the Complaint as Exhibit 3. Facebook admits that the ’599 patent bears an issuance
`
`date of May 13, 2008 and a title of “Method and System for Optimum Placement of
`
`Advertisements on a Webpage.” Facebook denies the remaining allegations of this paragraph.
`
`45.
`
`Facebook admits that it received a letter from Yahoo! dated February 27, 2012 in
`
`which Yahoo! insisted that Facebook take a license to the ’599 patent, among others. Facebook
`
`denies the remaining allegations of this paragraph.
`
`46.
`
`47.
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook denies the allegations set forth in this paragraph.
`
`COUNT IV
`
`(ALLEGED INFRINGEMENT OF THE ’861 PATENT)
`
`48.
`
`Facebook incorporates by reference paragraphs 1-32 of this Answer and
`
`Counterclaim as if fully set forth herein.
`
`49.
`
`Facebook admits that a copy of U.S. Patent No. 7,668,861 (the “’861 patent”) was
`
`attached to the Complaint as Exhibit 4. Facebook admits that the ’861 patent bears an issuance
`
`date of February 23, 2010 and a title of “System and Method To Determine the Validity of an
`
`Interaction on a Network.” Facebook denies the remaining allegations of this paragraph.
`
`50.
`
`Facebook admits that it received a letter from Yahoo! dated February 27, 2012 in
`
`which Yahoo! insisted that Facebook take a license to the ’861 patent, among others. Facebook
`
`denies the remaining allegations of this paragraph.
`
`51.
`
`52.
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook denies the allegations set forth in this paragraph.
`
`//
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`FACEBOOK, INC.’S ANSWER AND
`6.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 8 of 22
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page8 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 9 of 22
`
`YAHOO!’S ALLEGATIONS OF INFRINGEMENT: THE ’590 AND ’935 PATENTS
`
`53.
`
`Facebook denies the allegations in this paragraph.
`
`COUNT V
`
`(ALLEGED INFRINGEMENT OF THE ’590 PATENT)
`
`54.
`
`Facebook incorporates by reference paragraphs 1-31 and 53 of this Answer and
`
`Counterclaim as if fully set forth herein.
`
`55.
`
`Facebook admits that a copy of U.S. Patent No. 7,269,590 (the “’590 patent”) was
`
`attached to the Complaint as Exhibit 5. Facebook admits that the ’590 patent bears an issuance
`
`date of September 11, 2007 and a title of “Method and System for Customizing Views of
`
`Information Associated with a Social Network User.” Facebook denies the remaining allegations
`
`of this paragraph.
`
`56.
`
`Facebook admits that it received a letter from Yahoo! dated February 27, 2012 in
`
`which Yahoo! insisted that Facebook take a license to the ’590 patent, among others. Facebook
`
`denies the remaining allegations of this paragraph.
`
`57.
`
`58.
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook denies the allegations set forth in this paragraph.
`
`COUNT VI
`
`(ALLEGED INFRINGEMENT OF THE ’935 PATENT)
`
`59.
`
`Facebook incorporates by reference paragraphs 1-31 and 53 of this Answer and
`
`Counterclaim as if fully set forth herein.
`
`60.
`
`Facebook admits that a copy of U.S. Patent No. 7,599,935 (the “’935 patent”) was
`
`attached to the Complaint as Exhibit 6. Facebook admits that the ’935 patent bears an issuance
`
`date of October 6, 2009 and a title of “Control for Enabling a User to Preview Display of Selected
`
`Content Based on Another User’s Authorization Level.” Facebook denies the remaining
`
`allegations of this paragraph.
`
`61.
`
`Facebook admits that it received a letter from Yahoo! dated February 27, 2012 in
`
`which Yahoo! insisted that Facebook take a license to the ’935 patent, among others. Facebook
`
`denies the remaining allegations of this paragraph.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`FACEBOOK, INC.’S ANSWER AND
`7.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 9 of 22
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page9 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 10 of 22
`
`62.
`
`63.
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook denies the allegations set forth in this paragraph.
`
`YAHOO!’S ALLEGATIONS OF INFRINGEMENT: THE ’509 AND ’227 PATENTS
`
`64.
`
`Facebook denies the allegations in this paragraph.
`
`COUNT VII
`
`(INFRINGEMENT OF THE ’509 PATENT)
`
`65.
`
`Facebook incorporates by reference paragraphs 1-31 and 64 of this Answer and
`
`Counterclaim as if fully set forth herein.
`
`66.
`
`Facebook admits that a copy of U.S. Patent No. 7,454,509 (the “’509 patent”) was
`
`attached to the Complaint as Exhibit 7. Facebook admits that the ’509 patent bears an issuance
`
`date of November 18, 2008 and a title of “Online Playback System with Community Bias.”
`
`Facebook denies the remaining allegations of this paragraph.
`
`67.
`
`Facebook admits that it received a letter from Yahoo! dated February 27, 2012 in
`
`which Yahoo! insisted that Facebook take a license to the ’509 patent, among others. Facebook
`
`denies the remaining allegations of this paragraph.
`
`68.
`
`69.
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook denies the allegations set forth in this paragraph.
`
`COUNT VIII
`
`(ALLEGED INFRINGEMENT OF THE ’227 PATENT)
`
`70.
`
`Facebook incorporates by reference paragraphs 1-31 and 64 of this Answer and
`
`Counterclaim as if fully set forth herein.
`
`71.
`
`Facebook admits that a copy of U.S. Patent No. 5,983,227 (the “’227 patent”) was
`
`attached to the Complaint as Exhibit 8. Facebook admits that the ’227 patent bears an issuance
`
`date of November 9, 1999 and a title of “Dynamic Page Generator.” Facebook denies the
`
`remaining allegations of this paragraph.
`
`72.
`
`Facebook admits that it received a letter from Yahoo! dated February 27, 2012 in
`
`which Yahoo! insisted that Facebook take a license to the ’227 patent, among others. Facebook
`
`denies the remaining allegations of this paragraph.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`FACEBOOK, INC.’S ANSWER AND
`8.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 10 of 22
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page10 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 11 of 22
`
`73.
`
`74.
`
`75.
`
`76.
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook denies the allegations set forth in this paragraph.
`
`COUNT IX
`
`(ALLEGED INFRINGEMENT OF THE ’648 PATENT)
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook incorporates by reference paragraphs 1-31 and 75 of this Answer and
`
`Counterclaim as if fully set forth herein.
`
`77.
`
`Facebook admits that a copy of U.S. Patent No. 7,747,648 (the “’648 patent”) was
`
`attached to the Complaint as Exhibit 9. Facebook admits that the ’648 patent bears an issuance
`
`date of June 29, 2010 and a title of “World Modeling Using a Relationship Network with
`
`Communication Channels to Entities.” Facebook denies the remaining allegations of this
`
`paragraph.
`
`78.
`
`Facebook admits that it received a letter from Yahoo! dated February 27, 2012 in
`
`which Yahoo! insisted that Facebook take a license to the ’648 patent, among others. Facebook
`
`denies the remaining allegations of this paragraph.
`
`79.
`
`80.
`
`81.
`
`82.
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook denies the allegations set forth in this paragraph.
`
`COUNT X
`
`(ALLEGED INFRINGEMENT OF THE ’501 PATENT)
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook incorporates by reference paragraphs 1-31 and 81 of this Answer and
`
`Counterclaim as if fully set forth herein.
`
`83.
`
`Facebook admits that a copy of U.S. Patent No. 7,406,501 (the “’501 patent”) was
`
`attached to the Complaint as Exhibit 10. Facebook admits that the ’501 patent bears an issuance
`
`date of July 29, 2008 and a title of “System and Method for Instant Messaging Using an E-Mail
`
`Protocol.” Facebook denies the remaining allegations of this paragraph.
`
`84.
`
`Facebook admits that it received a letter from Yahoo! dated February 27, 2012 in
`
`which Yahoo! insisted that Facebook take a license to the ’501 patent, among others. Facebook
`FACEBOOK, INC.’S ANSWER AND
`9.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 11 of 22
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page11 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 12 of 22
`
`denies the remaining allegations of this paragraph.
`
`85.
`
`86.
`
`Facebook denies the allegations set forth in this paragraph.
`
`Facebook denies the allegations set forth in this paragraph.
`
`YAHOO!’S PRAYER FOR RELIEF
`
`Facebook incorporates by reference all preceding paragraphs of this Answer and
`
`Counterclaim as if fully set forth herein. Facebook denies that Yahoo! is entitled to any relief
`
`sought in Yahoo!’s Prayer for Relief against Facebook.
`
`DEMAND FOR JURY TRIAL
`
`Facebook demands a jury trial for all issues so triable.
`
`AFFIRMATIVE DEFENSES
`
`To the extent not expressly admitted above, the factual allegations contained in the
`
`Complaint are denied. Without altering any applicable burdens of proof, Facebook alleges the
`
`following affirmative defenses:
`
`FIRST AFFIRMATIVE DEFENSE – NON-INFRINGEMENT
`
`1.
`
`Facebook does not infringe and has not infringed any claim of the ’566 patent, the
`
`’111 patent, the ’599 patent, the ’861 patent, the ’590 patent, the ’935 patent, the ’509 patent, the
`
`’227 patent, the ’648 patent, or the ’501 patent.
`
`SECOND AFFIRMATIVE DEFENSE – INVALIDITY
`
`2.
`
`One or more of the claims of the ’566 patent, the ’111 patent, the ’599 patent, the
`
`’861 patent, the ’590 patent, the ’935 patent, the ’509 patent, the ’227 patent, the ’648 patent, and
`
`the ’501 patent are invalid for failure to satisfy the conditions of patentability set forth in 35
`
`U.S.C. § 101, 102, 103, and/or 112.
`
`THIRD AFFIRMATIVE DEFENSE – LIMITATION OF DAMAGES
`
`3.
`
`Yahoo!’s recovery for damages for at least the ’227 patent and the ’566 patent is
`
`limited pursuant to 35 U.S.C. § 286.
`
`FOURTH AFFIRMATIVE DEFENSE – LACHES, EQUITABLE ESTOPPEL, WAIVER
`
`4.
`
`Yahoo!’s claims are barred, in whole or in part, by the doctrine of laches and/or
`
`equitable estoppel and/or waiver.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`FACEBOOK, INC.’S ANSWER AND
`10.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 12 of 22
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page12 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 13 of 22
`
`FIFTH AFFIRMATIVE DEFENSE – FAILURE TO MARK
`
`5.
`
`Yahoo!’s pre-lawsuit claims for damages are barred, in whole or in part, for failure
`
`to comply with 35 U.S.C. § 287.
`
`SIXTH AFFIRMATIVE DEFENSE – NO INJUNCTIVE RELIEF
`
`6.
`
`Yahoo!’s demand to enjoin Facebook is barred, as Yahoo! has suffered neither
`
`harm nor irreparable harm from Facebook’s actions.
`
`SEVENTH AFFIRMATIVE DEFENSE - LICENSE
`
`7.
`
`Yahoo!’s claims are barred, in whole or in part, because Facebook has an express
`
`and/or implied license under one of more of the patents-in-suit.
`
`EIGHTH AFFIRMATIVE DEFENSE – FAILURE TO STATE A CLAIM
`
`8.
`
`The Complaint fails to state a claim upon which relief can be granted.
`
`Facebook reserves all other affirmative defenses pursuant to Rule 8(c) of the Federal
`
`Rules of Civil Procedures, the Patent Laws of the United States, and any other defenses, at law or
`
`in equity, that now exist or in the future may be available based on discovery and further factual
`
`investigation in this case.
`
`COUNTERCLAIM FOR PATENT INFRINGEMENT AGAINST YAHOO!
`
`Facebook, Inc. (“Facebook”) by and through its undersigned counsel, alleges the
`
`following counterclaim against Yahoo! Inc. (“Yahoo!”) for infringement of U.S. Patent No.
`
`7,827,208 (the “’208 patent”), U.S. Patent No. 7,945,653 (the “’653 patent”), U.S. Patent No.
`
`6,288,717 (the “’717 patent”), U.S. Patent No. 6,216,133 (the “’133 patent”), U.S. Patent No.
`
`6,411,949 (the “’949 patent), U.S. Patent No. 6,236,978 (the “’978 patent”), U.S. Patent No.
`
`7,603,331 (the “’331 patent”), U.S. Patent No. 8,103,611 (the “’611 patent”), U.S. Patent No.
`
`8,005,896 (the “’896 patent”), and U.S. Patent No. 8,150,913 (the “’913 patent”) all assigned to
`
`Facebook (the “Facebook patents-in-suit”):
`
`THE PARTIES
`
`1.
`
`Facebook is a corporation organized and existing under the laws of the State of
`
`Delaware, having its principal place of business at 1601 Willow Road, Menlo Park, California
`
`94025.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`FACEBOOK, INC.’S ANSWER AND
`11.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 13 of 22
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page13 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 14 of 22
`
`2.
`
`Facebook is informed and believes, and on that basis alleges, that counterclaim-
`
`defendant Yahoo! is a Delaware corporation with its principal place of business at 701 First
`
`Avenue, Sunnyvale, California 94089.
`
`JURISDICTION AND VENUE
`
`3.
`
`This is a civil action for patent infringement arising under the patent laws of the
`
`United States, Title 35 of the United States Code. This Court has exclusive subject matter
`
`jurisdiction over this counterclaim pursuant to 28 U.S.C. § 1338(a).
`
`4.
`
`This Court has personal jurisdiction over Yahoo! because Yahoo! maintains its
`
`principal place of business in this District, does business in this District and has committed acts of
`
`infringement in this District and elsewhere. Yahoo! also consented to personal jurisdiction by
`
`filing the Complaint in this action. Venue is appropriate in this District pursuant to 28 U.S.C. §§
`
`1391(b)-(c) and § 1400(b).
`
`YAHOO!’S INFRINGEMENT OF FACEBOOK’S PATENTS
`
`5.
`
`Yahoo! infringes the Facebook patents-in-suit through, by way of example and not
`
`limitation, the Yahoo! Home Page, Yahoo!’s Content Optimization and Relevance Engine
`
`(“C.O.R.E.”), the Yahoo! Flickr photo sharing service, and advertisements displayed throughout
`
`Yahoo! including on My Yahoo!, Yahoo! Finance, Yahoo! Sports, Yahoo! News, Yahoo! Games,
`
`Yahoo! Movies, Yahoo! Shopping, Yahoo! Travel, Yahoo! Autos, and Flickr. According to
`
`Yahoo! advertisements contributed 80% of Yahoo!’s revenue in 2011 accounting for more than
`$4 billion dollars.1 Yahoo claims a 300% increase in click-throughs on the Yahoo! Home Page
`since launching its C.O.R.E. system2, which it says “personalizes 2.2 billion pieces of content for
`Yahoo! Users” every day and is used across all of its services. Yahoo! claims that Flickr has over
`51 million registered users and over 80 million unique visitors worldwide.3 Yahoo! claims that
`Yahoo! News and Yahoo! Sports are the most popular news and sports sites in the United States.4
`
`1 See United States Securities and Exchange Commission, Form 10-K for Yahoo! Inc. for Year
`Ending December 31, 2011.
`2 See http://www.webpronews.com/yahoo-blake-irving-2012-03.
`3 See http://advertising.yahoo.com/article/flickr.html.
`4 See http://advertising.yahoo.com/article/yahoo-news.html,
`http://advertising.yahoo.com/article/yahoo-sports.html.
`
`FACEBOOK, INC.’S ANSWER AND
`12.
`COUNTERCLAIMS
`CV-12-01212-JSW
`Case 1:15-cv-00102-MR Document 21-2 Filed 08/10/15 Page 14 of 22
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`

`
`
`Case3:12-cv-01212-JSW Document16 Filed04/03/12 Page14 of 21Case 4:16-cv-01730-YGR Document 49-7 Filed 05/09/16 Page 15 of 22
`
`COUNT ONE
`
`(Infringement by Yahoo! of U.S. Patent No. 7,827,208)
`
`6.
`
`Facebook incorporates by reference paragraphs 1 through 4 of this Counterclaim
`
`as if fully set forth herein.
`
`7.
`
`Facebook is the owner of all right, title, and interest in U.S. Patent No. 7,827,208
`
`(“’208 patent”), entitled “Generating a Feed of Stories Personalized for Members of a Social
`
`Network,” issued by the U.S. Patent and Trademark Office on November 2, 2010. A true and
`
`correct copy of the ’208 patent is attached as Exhibit A.
`
`8.
`
`Yahoo! has infringed and is continuing to infringe the ’208 patent by making,
`
`using, selling and/or offering to sell in the United States, or importing into the United States,
`
`products or processes that practice the ’208 patent in violation of 35 U.S.C. § 271(a), including
`
`without limitation the Photostream, Recent Activity and Groups Activity on the Yahoo! Flickr
`
`photo sharing service.
`
`9.
`
`Yahoo!’s infringement of the ’208 patent has caused and will continue to cause
`
`damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284.
`
`Facebook has been irreparably harmed by Yahoo!’s infringement, for which there is no adequate
`
`remedy at law, and such harm will continue unless Yahoo! is enjoined by this Court.
`
`COUNT TWO
`
`(Infringement by Yahoo! of U.S. Patent No. 7,945,653)
`
`10.
`
`Facebook incorporates by reference paragraphs 1 through 4 of this Counterclaim
`
`as if fully set forth herein.
`
`11.
`
`Facebook is the owner of all right, title, and interest in U.S. Patent No. 7,945,653
`
`(the “’653 patent”), entitled “Tagging Digital Media,” issued by the U.S. Patent and Trademark
`
`Office on May 17, 2011. A true and correct copy of the ’653 patent is attached as Exhibit B.
`
`12.
`
`Yahoo! has infringed and is continuing to infringe the ’653 patent by making,
`
`using, selling and/or offering to sell in the United States, or importing into the United States,
`
`products or processes that practice the ’653 patent in violation of 35 U.S.C. § 271(a), including
`
`without limitation the People in Photos feature on the Yahoo!