Case 1:17-cv-02097-RBJ Document 42 Filed 11/20/17 USDC Colorado Page 1 of 24
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`
`Civil Action No. 1:17-cv-02097-CBS
`
`REALTIME ADAPTIVE STREAMING, LLC
`
`Plaintiff,
`
`v.
`
`SLING TV L.L.C.,
`SLING MEDIA INC.,
`SLING MEDIA L.L.C.,
`ECHOSTAR TECHNOLOGIES L.L.C.,
`DISH NETWORK L.L.C., and ARRIS
`GROUP, INC.,
`
`
`Defendants.
`
`
`
`DEFENDANTS SLING TV L.L.C., AND SLING MEDIA L.L.C.’S ANSWER,
`AFFIRMATIVE DEFENSES, COUNTERCLAIMS, AND JURY DEMAND TO
`PLAINTIFF REALTIME ADAPTIVE STREAMING L.L.C.’S SECOND AMENDED
`COMPLAINT
`
`
`
`Defendants Sling TV L.L.C. and Sling Media L.L.C. (collectively, “Sling”)1 by and
`
`through their undersigned counsel, hereby answer the Second Amended Complaint for
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`Patent Infringement (the “Amended Complaint,” Dkt. No. 32) of Plaintiff Realtime
`
`Adaptive Streaming L.L.C. (“Realtime”), on personal knowledge as to their own activities
`
`
`
` 1
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` Sling TV L.L.C. and Sling Media L.L.C. answer collectively as “Sling,” and further
`represent that in February of 2017 the entity formerly known as “Sling Media Inc.” was
`converted to Sling Media L.L.C., such that at no point in time upon and since the filing of
`the Original Complaint has “Sling Media Inc.” existed.
`
`
`
`
`1
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`
`Civil Action No. 1:17-cv-02097-CBS
`
`REALTIME ADAPTIVE STREAMING, LLC
`
`Plaintiff,
`
`v.
`
`SLING TV L.L.C.,
`SLING MEDIA INC.,
`SLING MEDIA L.L.C.,
`ECHOSTAR TECHNOLOGIES L.L.C.,
`DISH NETWORK L.L.C., and ARRIS
`GROUP, INC.,
`
`
`Defendants.
`
`
`
`DEFENDANTS SLING TV L.L.C., AND SLING MEDIA L.L.C.’S ANSWER,
`AFFIRMATIVE DEFENSES, COUNTERCLAIMS, AND JURY DEMAND TO
`PLAINTIFF REALTIME ADAPTIVE STREAMING L.L.C.’S SECOND AMENDED
`COMPLAINT
`
`
`
`Defendants Sling TV L.L.C. and Sling Media L.L.C. (collectively, “Sling”)1 by and
`
`through their undersigned counsel, hereby answer the Second Amended Complaint for
`
`Patent Infringement (the “Amended Complaint,” Dkt. No. 32) of Plaintiff Realtime
`
`Adaptive Streaming L.L.C. (“Realtime”), on personal knowledge as to their own activities
`
`
`
` 1
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` Sling TV L.L.C. and Sling Media L.L.C. answer collectively as “Sling,” and further
`represent that in February of 2017 the entity formerly known as “Sling Media Inc.” was
`converted to Sling Media L.L.C., such that at no point in time upon and since the filing of
`the Original Complaint has “Sling Media Inc.” existed.
`
`
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`1
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`and on information and belief as to the activities of others. Sling denies each and every
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`allegation in the Amended Complaint, unless expressly admitted herein.
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`PARTIES
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`1.
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`Sling lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 1 of the Amended Complaint, and therefore denies all such
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`allegations.
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`2.
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`Sling TV L.L.C. admits that it is a limited liability company organized under the
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`laws of the State of Colorado. Sling TV L.L.C. admits that it has a principal office at
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`9601 S. Meridian Blvd., Englewood, Colorado 80112. Sling TV L.L.C. admits that it can
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`be served through its registered agent, R. Stanton Dodge, 9601 S. Meridian Blvd.,
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`Englewood, Colorado 80112. Sling TV L.L.C. denies any remaining allegations set forth
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`in Paragraph 2 of the Amended Complaint.
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`3.
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`Sling Media L.L.C. admits that Sling Media L.L.C. is a Delaware limited liability
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`company with a principal office at 1051 E. Hillsdale Blvd., Suite 500, Foster City,
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`California 94404. Sling Media L.L.C. admits it can be served through its registered
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`agent, The Corporation Trust Company, Corporation Trust Center, 1209 Orange St.
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`Wilmington, Delaware 19801. As explained by Sling in the above footnote, at no point
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`upon and since the filing of the Original Complaint has “Sling Media Inc.” existed.
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`4.
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`EchoStar Technologies, L.L.C. (“EchoStar”) is distinct from Sling. Sling lacks
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`knowledge or information sufficient to form a belief as to the truth of the allegations in
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`Paragraph 4 of the Amended Complaint, and therefore denies all such allegations.
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`5.
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`Defendant DISH Network L.L.C. (“DISH”) is distinct from Sling. Sling lacks
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`knowledge or information sufficient to form a belief as to the truth of the allegations in
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`Paragraph 5 of the Amended Complaint, and therefore denies all such allegations.
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`6.
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`ARRIS Group, Inc. (“ARRIS”) is distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 6 of
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`the Amended Complaint, and therefore denies all such allegations.
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`7.
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`Paragraph 7 of the Amended Complaint sets forth conclusions of law to which no
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`response is required. To the extent any response is deemed to be required however,
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`Sling denies the allegations of paragraph 7 of the Amended Complaint.
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`8.
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`Sling Media L.L.C. understands that the accused ARRIS MS4000 incorporated
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`Sling Media L.L.C. technology. In addition, Paragraph 8 of the Amended Complaint
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`sets forth conclusions of law to which no response is required. To the extent any
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`response is deemed to be required however, Sling Media L.L.C denies the remaining
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`allegations of paragraph 8 of the Amended Complaint.
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`JURISDICTION AND VENUE
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`9.
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`Sling admits that the Amended Complaint is styled as an action for patent
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`infringement arising under the Patent Laws of the United States, Title 35 of the United
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`States Code. Paragraph 9 of Amended Complaint sets forth conclusions of law to
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`which no response is required. To the extent any response is deemed to be required
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`however, Sling further admits that the Amended Complaint purports to assert that
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`subject matter jurisdiction exists over such claims under 28 U.S.C. § 1331 and
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`§ 1338(a). Sling denies any remaining allegations in Paragraph 9 of the Amended
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`Complaint.
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`10. Paragraph 10 of the Amended Complaint sets forth conclusions of law to which
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`no response is required. To the extent a response is required, however, Sling TV L.L.C.
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`admits that it directly and/or through intermediaries offers to sell and/or sells products in
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`the District of Colorado, and to the extent paragraph 10 of the Amended Complaint
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`alleges that Sling TV L.L.C. has a regular and established place of business in the
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`District of Colorado, Sling TV L.L.C. admits that it has a regular and established place of
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`business in this District.
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`11. Paragraph 11 of the Amended Complaint sets forth conclusions of law to which
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`no response is required. To the extent a response is required, however, Sling Media
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`L.L.C. admits that it directly and/or through intermediaries offers to sell and/or sells
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`products in the District of Colorado. Sling Media L.L.C. denies any remaining allegations
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`in Paragraph 11 of the Amended Complaint.
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`12. Paragraph 12 of the Amended Complaint sets forth conclusions of law to which
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`no response is required. To the extent a response is deemed to be required, however,
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`EchoStar is distinct from Sling, and Sling lacks knowledge or information sufficient to
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`form a belief as to the truth of the allegations in Paragraph 12 of the Amended
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`Complaint and therefore denies all such allegations.
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`13. Paragraph 13 of the Amended Complaint sets forth conclusions of law to which
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`no response is required. To the extent a response is deemed to be required, however,
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`DISH is distinct from Sling, and Sling lacks knowledge or information sufficient to form a
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`belief as to the truth of the allegations in Paragraph 13 of the Amended Complaint and
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`therefore denies all such allegations.
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`14. Paragraph 14 of the Amended Complaint sets forth conclusions of law to which
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`no response is required. To the extent a response is deemed to be required, however,
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`ARRIS is distinct from Sling, and Sling lacks knowledge or information sufficient to form
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`a belief as to the truth of the allegations in Paragraph 14 of the Amended Complaint and
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`therefore denies all such allegations.
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`15. Paragraph 15 of the Amended Complaint sets forth conclusions of law to which
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`no response is required. To the extent a response is deemed to be required, however,
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`Sling admits that it directly and/or through intermediaries offers to sell and/or sells
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`products in the District of Colorado. Sling lacks knowledge or information sufficient to
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`form a belief as to the remaining allegations of Paragraph 15 of the Amended
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`Complaint, and therefore denies all such allegations.
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`16. Paragraph 16 of the Amended Complaint sets forth conclusions of law to which
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`no response is required. Sling TV L.L.C. admits that it is a limited liability corporation
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`organized under the laws of Colorado and that it has a regular and established place of
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`business in this District. Sling Media L.L.C. admits that its officers are located in
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`Colorado. Sling lacks knowledge or information sufficient to form a belief as to the
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`remaining allegations of Paragraph 16 of the Amended Complaint, and therefore denies
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`all such allegations.
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`ASSERTED PATENTS
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`17. Sling admits that the Amended Complaint purports to assert U.S. Patent Nos.
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`8,867,610 (“the ’610 Patent”) and 8,934,535 (“the ’535 Patent”), (collectively, “the
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`Asserted Patents”).
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`18. Sling lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 18 of the Amended Complaint, and therefore denies all
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`such allegations.
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`RESPONSE TO COUNT I
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`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,867,610
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`19. Sling repeats and incorporates by reference the foregoing paragraphs, as if fully
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`set forth herein.
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`20. Sling admits that a purported copy of United States Patent No. 8,867,610 is
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`attached to the Amended Complaint as Exhibit A, which lists the patent title as “System
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`and Methods for Video and Audio Data Distribution,” and lists the patent as being
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`issued on October 21, 2014. Sling lacks knowledge or information sufficient to form a
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`belief as to the remaining allegations of Paragraph 20 of the Amended Complaint, and
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`therefore denies all such allegations.
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`21. Denied.
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`22. Denied.
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`23. DISH is distinct from Sling, and Sling lacks knowledge or information sufficient to
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`form a belief as to the truth of the allegations in Paragraph 23 of the Amended
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`Complaint and therefore denies all such allegations.
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`24. ARRIS is distinct from Sling, and Sling lacks knowledge or information sufficient
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`to form a belief as to the truth of the allegations in Paragraph 24 of the Amended
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`Complaint and therefore denies all such allegations.
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`25. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 25 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS and therefore
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`denies all such allegations. Sling denies the remaining allegations of paragraph 25.
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`26. DISH is distinct from Sling, and Sling lacks knowledge or information sufficient to
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`form a belief as to the truth of the allegations in Paragraph 26 of the Amended
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`Complaint and therefore denies all such allegations.
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`27. Denied.
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`28. Denied.
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`29. DISH is distinct from Sling, and Sling lacks knowledge or information sufficient to
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`form a belief as to the truth of the allegations in Paragraph 29 of the Amended
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`Complaint and therefore denies all such allegations.
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`30. Denied.
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`31. Denied.
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`32. Denied.
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`33. Denied.
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`34. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 34 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS and therefore
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`denies all such allegations. Sling denies the remaining allegations of paragraph 34.
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`35. Denied.
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`36. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 36 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS and therefore
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`denies all such allegations. Sling admits that it had knowledge of the ’610 patent since
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`at least the filing of this Complaint or shortly thereafter. Sling denies the remaining
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`allegations of paragraph 36.
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`37. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 37 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS and therefore
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`denies all such allegations. Sling denies the remaining allegations of paragraph 37.
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`38. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 38 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS therefore denies
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`all such allegations. Sling denies the remaining allegations of paragraph 38.
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`39. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 38 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS and therefore
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`denies all such allegations. Sling denies the remaining allegations of paragraph 38.
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`RESPONSE TO COUNT II
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`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,934,535
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`40. Sling repeats and incorporates by reference the foregoing paragraphs, as if fully
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`set forth herein.
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`41. Sling admits that a purported copy of United States Patent No. 8,934,535 is
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`attached to the Amended Complaint as Exhibit B, which lists the patent title as “Systems
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`and Methods for Video and Audio Data Storage and Distribution,” and lists the patent as
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`being issued on January 13, 2015. Sling lacks sufficient information to form a belief as
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`to the truth of the remaining allegations of Paragraph 41 of the Amended Complaint,
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`and therefore denies all such allegations.
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`42. Denied.
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`43. Denied.
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`44. DISH is distinct from Sling, and Sling lacks knowledge or information sufficient to
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`form a belief as to the truth of the allegations in Paragraph 44 of the Amended
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`Complaint and therefore denies all such allegations.
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`45. ARRIS is distinct from Sling, and Sling lacks knowledge or information sufficient
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`to form a belief as to the truth of the allegations in Paragraph 45 of the Amended
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`Complaint and therefore denies all such allegations.
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`46. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 46 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS and therefore
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`denies all such allegations. Sling denies the remaining allegations of paragraph 46.
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`47. DISH is distinct from Sling, and Sling lacks knowledge or information sufficient to
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`form a belief as to the truth of the allegations in Paragraph 47 of the Amended
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`Complaint and therefore denies all such allegations.
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`48. Denied.
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`49. Denied.
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`50. Denied.
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`51. DISH is distinct from Sling, and Sling lacks knowledge or information sufficient to
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`form a belief as to the truth of the allegations in Paragraph 51 of the Amended
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`Complaint and therefore denies all such allegations.
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`52. Denied.
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`53. Denied.
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`54. Denied.
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`55. Denied.
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`56. Denied.
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`57. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 57 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS and therefore
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`denies all such allegations. Sling denies the remaining allegations of paragraph 57.
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`58. Denied.
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`59. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 59 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS and therefore
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`denies all such allegations. Sling admits that it had knowledge of the ’535 patent since
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`at least the filing of this Complaint or shortly thereafter. Sling denies the remaining
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`allegations of paragraph 59.
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`60. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 60 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS and therefore
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`denies all such allegations. Sling denies the remaining allegations of paragraph 60.
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`61. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 61 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS and therefore
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`denies all such allegations. Sling denies the remaining allegations of paragraph 61.
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`62. DISH, EchoStar, and ARRIS are distinct from Sling. Sling lacks knowledge or
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`information sufficient to form a belief as to the truth of the allegations in Paragraph 62 of
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`the Amended Complaint with respect to DISH, EchoStar, and ARRIS and therefore
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`denies all such allegations. Sling denies the remaining allegations of paragraph 62.
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`RESPONSE TO PRAYER FOR RELIEF
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`Sling denies the underlying allegations of Realtime’s Prayer for Relief, denies
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`that Realtime is entitled to any relief whatsoever, and requests that the Court deny all
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`relief to Realtime, enter judgment in favor of Sling, and award Sling its attorneys’ fees
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`as the prevailing party in the action.
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`[REALTIME’S] DEMAND FOR JURY TRIAL
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`Sling is not required to provide a response to Realtime’s request for a trial by
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`jury.
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`GENERAL DENIALS
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`Sling denies all allegations in the Amended Complaint not specifically admitted
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`above.
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`AFFIRMATIVE AND OTHER DEFENSES
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`Sling’s Affirmative Defenses are listed below. Sling reserves the right to amend
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`this Answer to add additional Affirmative Defenses, including allegations of inequitable
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`conduct, and/or any other defenses currently unknown to Sling, as they become known
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`throughout the course of discovery in this action. Assertion of a defense is not a
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`concession that Sling has the burden of proving the matter asserted.
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`FIRST AFFIRMATIVE DEFENSE
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`(Failure to State a Claim)
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`Realtime has failed to state a claim on which relief can be granted because Sling
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`has not performed and is not performing any act in violation of any right validly
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`belonging to Realtime. Realtime has failed to state a claim on which relief can be
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`granted regarding, but without limitation to, willful infringement and pre-suit indirect
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`infringement.
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`SECOND AFFIRMATIVE DEFENSE
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`(Non-Infringement)
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`Sling has not infringed and is not infringing, either directly, contributorily, by
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`inducement, jointly or in a divided manner, either literally or under the doctrine of
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`equivalents, or otherwise, a valid and enforceable claim of the ʼ610 Patent or the ʼ535
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`Patent.
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`THIRD AFFIRMATIVE DEFENSE
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`(Invalidity)
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`The claims of the ʼ610 Patent and the ʼ535 Patent are invalid and/or
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`unenforceable for failing to meet one or more of the requisite statutory and decisional
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`requirements and/or conditions for patentability specified in 35 U.S.C. §§ 101, 102, 103,
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`112, and/or 116, the non-statutory doctrine of double patenting, and the rules,
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`regulations, and laws pertaining thereto. For example, to the extent that Realtime
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`alleges that H.264 infringes claims of the ʼ610 Patent and the ʼ535 Patent, those claims
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`are invalid over prior art video compression standards such as H.262 (MPEG-2 Part 2)
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`and H.263.
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`FOURTH AFFIRMATIVE DEFENSE
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`(Limitation on Damages)
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`Realtime’s right to seek damages and other remedies from Sling is limited by 35
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`U.S.C. §§ 285, 286, 287, and/or 288, and may additionally be limited by 28 U.S.C. §
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`1498.
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`FIFTH AFFIRMATIVE DEFENSE
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`(Injunctive Relief Unavailable)
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`Realtime is not entitled to injunctive relief at least because any injury to Realtime
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`is not immediate or irreparable, and Realtime has an adequate remedy at law for its
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`allegations.
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`SIXTH AFFIRMATIVE DEFENSE
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`(Laches, Prosecution Laches, Waiver, Estoppel, Unclean Hands)
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`Realtime’s claims for relief are barred, in whole or in part, under principles of
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`equity including, but not limited to, laches, prosecution laches, waiver, estoppel, and/or
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`unclean hands.
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`SEVENTH AFFIRMATIVE DEFENSE
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`(No Vicarious Liability)
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`Sling is not vicariously liable to Realtime for any conduct of their affiliates, related
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`entities, or subsidiaries.
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`EIGHTH AFFIRMATIVE DEFENSE
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`(Prosecution History Estoppel)
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`To the extent that Realtime alleges infringement under the doctrine of
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`equivalents, Realtime’s alleged cause of action is barred, including, without limitation,
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`by way of example, under the doctrine of prosecution history estoppel, claim vitiation,
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`and/or recapture. By virtue of statements made, amendments made, and/or positions
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`taken during the prosecution of the applications for the ʼ610 Patent and the ʼ535 Patent,
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`and any application to which these patents claim priority, and in view of any statements
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`made, amendments made and/or positions that Realtime has taken or will take before
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`the U.S. Patent and Trademark Office during, for example, reexamination or inter partes
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`review, Realtime is estopped from asserting that the ʼ610 Patent and the ʼ535 Patent
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`cover or include any of the accused products or services of Sling.
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`NINTH AFFIRMATIVE DEFENSE
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`(Lack of Knowledge)
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`To the extent that Realtime asserts that Sling indirectly infringes, either by
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`contributory infringement or inducement of infringement, Sling is not liable for the acts
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`taking place before Sling knew that its actions would allegedly cause infringement. Any
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`and all products or actions accused of infringement have substantial uses that do not
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`infringe and do not induce or contribute to the alleged infringement of the claims of the
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`ʼ610 Patent and the ʼ535 Patent.
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`TENTH AFFIRMATIVE DEFENSE
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`(Lack of Control)
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`Realtime’s claims for relief are barred because Realtime’s injuries, if any, were
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`not caused by Sling, and Sling is not liable for the acts of others over whom they have
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`no control.
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`ELEVENTH AFFIRMATIVE DEFENSE
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`(License, Exhaustion, Single Recovery, Intervening Rights)
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`Realtime’s claims for relief are barred by the doctrines of express or implied
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`license, patent exhaustion, the single recovery rule, and/or intervening rights.
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`Case 1:17-cv-02097-RBJ Document 42 Filed 11/20/17 USDC Colorado Page 16 of 24
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`TWELFTH AFFIRMATIVE DEFENSE
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`(No Willful Infringement)
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`Realtime has failed to set forth sufficient factual allegations in its Amended
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`Complaint to support an allegation of willful infringement. There are not sufficient well
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`pleaded facts in the Amended Complaint to give rise to a plausible inference that Sling
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`acted—or will in the future act—recklessly despite an objectively high risk of
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`infringement. A solitary request for treble damages under 35 U.S.C. § 284 in the Prayer
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`for Relief is insufficient to give rise to a plausible claim of willful infringement.
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`THIRTEENTH AFFIRMATIVE DEFENSE
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`(No Pre-Suit Indirect Infringement)
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`Realtime has failed to set forth sufficient factual allegations in its Amended
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`Complaint to support an allegation of pre-suit indirect infringement. Realtime has not
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`provided any factual basis for such a claim, and instead solely alleges knowledge of the
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`patents at least as of the time of filing of the Original Complaint. The Amended
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`Complaint solely alleges post-suit knowledge of the asserted patents.
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`RESERVATION OF RIGHTS
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`Sling reserves all affirmative defenses available under Rule 8(c) of the Federal
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`Rules of Civil Procedure, the patent laws of the United States, and all other defenses, at
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`law or in equity, that may now exist or in the future be available based on discovery and
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`further investigation of the case.
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`Case 1:17-cv-02097-RBJ Document 42 Filed 11/20/17 USDC Colorado Page 17 of 24
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`SLING COUNTERCLAIMS
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`Counterclaim-Plaintiff Sling, on personal knowledge as to its own acts, and on
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`information and belief as to all others, based on its own investigation, alleges
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`Counterclaims against Realtime as follows:
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`PARTIES
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`1.
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`Sling TV L.L.C. is a limited liability company organized under the laws of
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`the State of Colorado, and can be served through its registered agent, R. Stanton
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`Dodge, 9601 S. Meridian Blvd., Englewood, Colorado 80112.
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`2.
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`Sling Media L.L.C. is a Delaware limited liability company with a principal
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`office at 1051 E. Hillsdale Blvd., Suite 500, Foster City CA 94404. Sling Media L.L.C.
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`can be served through its registered agent, The Corporation Trust Company,
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`Corporation Trust Center, 1209 Orange St. Wilmington, Delaware 19801.
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`3.
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`On information and belief based solely on Paragraph 1 of the Amended
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`Complaint, Realtime is a New York limited liability company organized and existing
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`under the laws of the State of New York. Realtime purports to have places of business
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`at 1828 E.S.E. Loop 323, Tyler, Texas 75701 and 66 Palmer Avenue, Suite 27,
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`Bronxville, NY 10708.
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`4.
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`On information and belief, Realtime’s registered agent is Richard G.
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`Tashjian, 729 Seventh Ave., 14th Floor, NY, New York 10019.
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`JURISDICTION AND VENUE
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`5.
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`The jurisdiction of this Court is proper under 28 U.S.C. §§ 1331, 1338,
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`2201, and/or 2202.
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`Case 1:17-cv-02097-RBJ Document 42 Filed 11/20/17 USDC Colorado Page 18 of 24
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`6.
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`These counterclaims arise under the Federal Declaratory Judgment Act,
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`28 U.S.C. § 2201, et seq., and the Patent Act of the United States, 35 U.S.C. § 101, et
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`seq. An actual controversy exists under the Declaratory Judgment Act because
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`Realtime’s Amended Complaint alleges that Sling infringes U.S. Patent Nos. 8,867,610
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`(“the ’610 Patent”) and 8,934,535 (“the ’535 Patent”), which Sling denies.
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`7.
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`This Court has personal jurisdiction over Realtime because it filed the
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`Amended Complaint in this Court.
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`8.
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`For purposes of these counterclaims, venue is appropriate in this judicial
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`District under 28 U.S.C. §§ 1391 and/or 1400(b), at least based on Realtime’s filing of
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`this action in this District.
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`FIRST COUNTERCLAIM
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`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ʼ610 PATENT
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`9.
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`Sling restates and incorporates by reference the entirety of the foregoing
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`paragraphs, as if fully set forth herein.
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`10. Realtime claims that it is the owner of the ’610 Patent. Realtime has
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`accused Sling of infringing allegedly valid claims of the ’610 Patent in its Amended
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`Complaint, filed against Sling on October 10, 2017.
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`11. Sling denies that it directly, indirectly, contributorily, by inducement,
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`jointly, or in a divided manner, infringes any valid claim of the ʼ610 Patent, either literally
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`or under the doctrine of equivalents, willfully or otherwise.
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`12. Accordingly, a valid and justiciable controversy has arisen and exists
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`between Realtime and Sling as to whether the ʼ610 Patent is infringed.
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`Case 1:17-cv-02097-RBJ Document 42 Filed 11/20/17 USDC Colorado Page 19 of 24
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`13. Based on the foregoing, and pursuant to 28 U.S.C. §§ 2201 and 2202,
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`Sling seeks, and is entitled to, a declaratory judgment that it does not infringe any claim
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`of the ʼ610 Patent, directly, indirectly, contributorily, by inducement, jointly, or in a
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`divided manner, either literally or under the doctrine of equivalents, willfully or otherwise.
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`SECOND COUNTERCLAIM
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`DECLARATORY JUDGMENT OF INVALIDITY OF THE ʼ610 PATENT
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`14. Sling restates and incorporates by reference the entirety of the foregoing
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`paragraphs, as if fully set forth herein.
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`15. A judicial declaration that the ’610 Patent is invalid because it fails to
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`satisfy the conditions for patentability specified in Title 35 of the United States Code is
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`necessary and appropriate at this time so that Sling can ascertain its rights and duties
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`with respect to the ’610 Patent. Sling has no adequate remedy at law.
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`16. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et
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`seq., and Title 35 of the United States Code, Sling therefore requests a judicial
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`declaration that one or more claims of the ’610 Patent are invalid and/or unenforceable
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`at least because they fail to satisfy one or more conditions for patentability specified in
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`35 U.S.C. §§ 101, 102, 103, 112, and/or 116, the non-statutory doctrine of double
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`patenting, and the rules, regulations, and laws pertaining thereto. For example, to the
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`extent that Realtime alleges that H.264 infringes claims of the ʼ610 Patent, those claims
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`are invalid over prior art video compression standards such as H.262 (MPEG-2 Part 2)
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`and H.263.
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`Case 1:17-cv-02097-RBJ Document 42 Filed 11/20/17 USDC Colorado Page 20 of 24
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`THIRD COUNTERCLAIM
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`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ʼ535 PATENT
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`17. Sling restates and incorporates by reference the entirety of the foregoing
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`paragraphs, as if fully set forth herein.
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`18. Realtime claims that it is the owner of the ’535 Patent. Realtime has
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`accused Sling of infringing allegedly valid claims of the ’535 Patent in its Amended
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`Complaint, filed against Sling on October 10, 2017.
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`19. Sling denies that it directly, indirectly, contributorily, by inducement,
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`jointly, or in a divided manner, infringes any valid claim of the ʼ535 Patent, either literally
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`or under the doctrine of equivalents, willfully or otherwise.
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`20. Accordingly, a valid and justiciable controversy has arisen and exists
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`between Realtime and Sling as to whether the ʼ535 Patent is infringed.
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`21. Based on the foregoing, and pursuant to 28 U.S.C. §§ 2201 and 2202,
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`Sling seeks, and is entitled to, a declaratory judgment that it does not infringe any claim
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`of the ʼ535 Patent, directly, indirectly, contributorily, by inducement, jointly, or in a
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`divided manner, either literally or under the doctrine of equivalents, willfully or otherwise.
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`FOURTH COUNTERCLAIM
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`DECLARATORY JUDGMENT OF INVALIDITY OF THE ʼ535 PATENT
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`22. Sling restates and incorporates by reference the entirety of the foregoing
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`paragraphs, as if fully set forth herein.
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`23. A judicial declaration that the ’535 Patent is invalid because it fails to
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`satisfy the conditions for patentability specified in Title 35 of the United States Code is
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`Case 1:17-cv-02097-RBJ Document 42 Filed 11/20/17 USDC Colorado Page 21 of 24
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`necessary and appropriate at this time so that Sling can ascertain its rights and duties
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`with respect to the ’535 Patent. Sling has no adequate remedy at law.
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`24. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et
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`seq., and Title 35 of the United States Code, Sling therefore requests a judicial
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`declaration that one or more claims of the ’535 Patent are invalid and/or unenforceable
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`at least because they fail to satisfy one or more conditions for patentability specified in
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`35 U.S.C. §§ 101, 102, 103, 112, and/or 116, the non-statutory doctrine of double
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`patenting, and the rules, regulations, and laws pertaining thereto. For example, to the
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`extent that Realtime alleges that H.264 infringes claims of the ʼ535 Patent, those claims
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`are invalid over prior art video compression standards such as H.262 (MPEG-2 Part 2)
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`and H.263.
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`PRAYER FOR RELIEF
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`WHEREFORE, Sling respectfully requests that this Court enter judgment in its favor and
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`against Realtime, and grant the following relief:
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`a. A complete denial of Realtime’s requests for damages, costs, attorney fees,
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`injunction, and any other form of relief;
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`b. Dismissal with prejudice of all claims in Realtime’s Amended Complaint against
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`Sling;
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`c. A permanent injunction restraining Realtime and its respective officers, partners,
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`employees, agents, parents, subsidiaries, and affiliates, and any other persons
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`acting on its behalf or in concert with it, from charging, suing or threatening, orally
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`Case 1:17-cv-02097-RBJ Document 42 Filed 11/20/17 USDC Colorado Page 22 of 24
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`or in writing, that the ʼ610 Pat
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