Case 1:10-cv-00258-SLR Document 50 Filed 05/09/11 Page 1 of 37 PageID #: 1020
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`MOBILEMEDIA IDEAS LLC,
`
`Civil Action No. 10-258-SLR
`
`Plaintiff,
`
`JURY TRIAL DEMANDED
`
`v.
`
`APPLE INC.,
`
`
`
`Defendant.
`
`DEFENDANT APPLE INC.’S FIRST AMENDED ANSWER TO COMPLAINT AND
`COUNTERCLAIMS
`
`Defendant Apple Inc. (“Apple”), by and through its undersigned attorneys, responds to
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`Plaintiff MobileMedia Ideas LLC’s (“MMI”) Amended Complaint for Patent Infringement (the
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`“Complaint”) as follows:
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`PARTIES
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`1.
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`Apple is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 1 and on that basis denies each and every allegation
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`contained therein.
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`2.
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`Apple admits that it is a corporation organized and existing under the laws of the
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`State of California and has its principal place of business in Cupertino, California. Apple also
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`admits that it designs, manufactures, markets and sells the iPhone 3G, iPhone 3GS, iPod touch,
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`iPod nano, iPod classic, iPod shuffle, iPad Wi-Fi, and iPad Wi-Fi+3G. Apple further admits that
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`it sells its devices throughout the United States and in this district at the Apple Store located at
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`Case 1:10-cv-00258-SLR Document 50 Filed 05/09/11 Page 2 of 37 PageID #: 1021
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`125 Christiana Mall, Newark, Delaware. Except as expressly admitted herein, Apple denies each
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`and every allegation set forth in Paragraph 2.
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`JURISDICTION AND VENUE
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`3.
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`Apple admits that MMI purports to bring a patent infringement action pursuant to
`
`Title 35 of the United States Code. Except as expressly admitted herein, Apple denies each and
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`every allegation set forth in Paragraph 3.
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`4.
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`Apple admits that this Court has subject matter jurisdiction over this action
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`pursuant to 28 U.S.C. §§ 1331 and 1338. Except as expressly admitted herein, Apple denies
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`each and every allegation set forth in Paragraph 4.
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`5.
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`Apple admits that this Court has personal jurisdiction over Apple. Except as
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`expressly admitted herein, Apple denies each and every allegation set forth in Paragraph 5.
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`6.
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`Apple admits that venue is proper in the District of Delaware under 28 U.S.C. §§
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`1391(c) and 1400(b), although Apple expressly reserves the right to contest whether the District
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`of Delaware is a convenient forum under, among others, the doctrine of forum non conveniens.
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`Except as expressly admitted herein, Apple denies each and every allegation set forth in
`
`Paragraph 6.
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`SUMMARY OF CLAIMS
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`7.
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`Apple admits that MMI purports to bring a patent infringement action against
`
`Apple. Except as expressly admitted herein, Apple denies each and every allegation set forth in
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`Paragraph 7.
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`8.
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`Apple is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 8 and on that basis denies each and every allegation
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`contained therein.
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`2
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`9.
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`10.
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`Apple denies each and every allegation contained in Paragraph 9.
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`Apple denies each and every allegation contained in Paragraph 10.
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`FACTS
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`11.
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`Apple admits that U.S. Patent No. 6,253,075 (the “’075 Patent”), titled “Method
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`and apparatus for incoming call rejection,” was issued on June 26, 2001, and that a copy of the
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`’075 Patent was attached to the Complaint as Exhibit A. Apple denies that the ’075 Patent was
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`duly and legally issued. Except as expressly admitted or denied herein, Apple is without
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`knowledge or information sufficient to form a belief as to the truth of the allegations in
`
`Paragraph 11 and on that basis denies each and every allegation contained therein.
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`12.
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`Apple admits that U.S. Patent No. 6,427,078 (the “’078 Patent”), titled “Device
`
`for personal communications, data collection and data processing, and a circuit card,” was issued
`
`on July 30, 2002, and that a copy of the ’078 Patent was attached to the Complaint as Exhibit B.
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`Apple denies that the ’078 Patent was duly and legally issued. Except as expressly admitted or
`
`denied herein, Apple is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 12 and on that basis denies each and every allegation
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`contained therein.
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`13.
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`Apple admits that U.S. Patent No. RE39,231 (the “’231 Patent”), titled
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`“Communication terminal equipment and call incoming control method,” was issued on August
`
`8, 2006, and that a copy of the ’231 Patent was attached to the Complaint as Exhibit C. Apple
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`denies that the ’231 Patent was duly and legally issued. Except as expressly admitted or denied
`
`herein, Apple is without knowledge or information sufficient to form a belief as to the truth of
`
`the allegations in Paragraph 13 and on that basis denies each and every allegation contained
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`therein.
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`3
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`14.
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`Apple admits that U.S. Patent No. 5,737,394 (the “’394 Patent”), titled “Portable
`
`telephone apparatus having a plurality of selectable functions activated by the use of dedicated
`
`and/or soft keys,” was issued on April 7, 1998, and that a copy of the ’394 Patent was attached to
`
`the Complaint as Exhibit D. Apple denies that the ’394 Patent was duly and legally issued.
`
`Except as expressly admitted or denied herein, Apple is without knowledge or information
`
`sufficient to form a belief as to the truth of the allegations in Paragraph 14 and on that basis
`
`denies each and every allegation contained therein.
`
`15.
`
`Apple admits that U.S. Patent No. 6,002,390 (the “’390 Patent”), titled “Text
`
`input device and method,” was issued on December 14, 1999, and that a copy of the ’390 Patent
`
`was attached to the Complaint as Exhibit E. Apple denies that the ’390 Patent was duly and
`
`legally issued. Except as expressly admitted or denied herein, Apple is without knowledge or
`
`information sufficient to form a belief as to the truth of the allegations in Paragraph 15 and on
`
`that basis denies each and every allegation contained therein.
`
`16.
`
`Apple admits that U.S. Patent No. 6,070,068 (the “’068 Patent”), titled
`
`“Communication terminal device and method for controlling a connecting state of a call into a
`
`desired connection state upon a predetermined operation by a user,” was issued on May 30,
`
`2000, and that a copy of the ’068 Patent was attached to the Complaint as Exhibit F. Apple
`
`denies that the ’068 Patent was duly and legally issued. Except as expressly admitted or denied
`
`herein, Apple is without knowledge or information sufficient to form a belief as to the truth of
`
`the allegations in Paragraph 16 and on that basis denies each and every allegation contained
`
`therein.
`
`17.
`
`Apple admits that U.S. Patent No. 6,393,430 (the “’430 Patent”), titled “Method
`
`and system for automatically recording music data files by using the hard drive of a personal
`
`
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`4
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`computer as an intermediate storage medium,” was issued on May 21, 2002, and that a copy of
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`the ’430 Patent was attached to the Complaint as Exhibit G. Apple denies that the ’430 Patent
`
`was duly and legally issued. Except as expressly admitted or denied herein, Apple is without
`
`knowledge or information sufficient to form a belief as to the truth of the allegations in
`
`Paragraph 17 and on that basis denies each and every allegation contained therein.
`
`18.
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`Apple admits that U.S. Patent No. 6,441,828 (the “’828 Patent”), titled “Image
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`display apparatus,” was issued on August 27, 2002, and that a copy of the ’828 Patent was
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`attached to the Complaint as Exhibit H. Apple denies that the ’828 Patent was duly and legally
`
`issued. Except as expressly admitted or denied herein, Apple is without knowledge or
`
`information sufficient to form a belief as to the truth of the allegations in Paragraph 18 and on
`
`that basis denies each and every allegation contained therein.
`
`19.
`
`Apple admits that U.S. Patent No. 6,446,080 (the “’080 Patent”), titled “Method
`
`for creating, modifying, and playing a custom playlist, saved as a virtual CD, to be played by a
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`digital audio/visual actuator device,” was issued on September 3, 2002, and that a copy of the
`
`’080 Patent was attached to the Complaint as Exhibit I. Apple denies that the ’080 Patent was
`
`duly and legally issued. Except as expressly admitted or denied herein, Apple is without
`
`knowledge or information sufficient to form a belief as to the truth of the allegations in
`
`Paragraph 19 and on that basis denies each and every allegation contained therein.
`
`20.
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`Apple admits that U.S. Patent No. 6,549,942 (the “’942 Patent”), titled “Enhanced
`
`delivery of audio data for portable playback,” was issued on April 15, 2003, and that a copy of
`
`the ’942 Patent was attached to the Complaint as Exhibit J. Apple denies that the ’942 Patent
`
`was duly and legally issued. Except as expressly admitted or denied herein, Apple is without
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`5
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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 20 and on that basis denies each and every allegation contained therein.
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`21.
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`Apple admits that U.S. Patent No. 6,760,477 (the “’477 Patent”), titled “Method
`
`and apparatus for entering data strings including Hangul (Korean) and ASCII characters,” was
`
`issued on July 6, 2004, and that a copy of the ’477 Patent was attached to the Complaint as
`
`Exhibit K. Apple denies that the ’477 Patent was duly and legally issued. Except as expressly
`
`admitted or denied herein, Apple is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations in Paragraph 21 and on that basis denies each and every
`
`allegation contained therein.
`
`22.
`
`Apple admits that U.S. Patent No. 7,313,647 (the “’647 Patent”), titled “Storage
`
`and reproduction apparatus,” was issued on December 25, 2007, and that a copy of the ’647
`
`Patent was attached to the Complaint as Exhibit L. Apple denies that the ’647 Patent was duly
`
`and legally issued. Except as expressly admitted or denied herein, Apple is without knowledge
`
`or information sufficient to form a belief as to the truth of the allegations in Paragraph 22 and on
`
`that basis denies each and every allegation contained therein.
`
`23.
`
`Apple admits that U.S. Patent No. 7,349,012 (the “’012 Patent”), titled “Imaging
`
`apparatus with higher and lower resolution converters and a compression unit to compress
`
`decreased resolution image data,” was issued on March 25, 2008, and that a copy of the ’012
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`Patent was attached to the Complaint as Exhibit M. Apple denies that the ’012 Patent was duly
`
`and legally issued. Except as expressly admitted or denied herein, Apple is without knowledge
`
`or information sufficient to form a belief as to the truth of the allegations in Paragraph 23 and on
`
`that basis denies each and every allegation contained therein.
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`6
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`24.
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`Apple admits that U.S. Patent No. 5,915,239 (the “’239 Patent”), titled “Voice-
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`controlled telecommunication terminal,” was issued on June 22, 1999, and that a copy of the
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`’239 Patent was attached to the Complaint as Exhibit N. Apple denies that the ’239 Patent was
`
`duly and legally issued. Except as expressly admitted or denied herein, Apple is without
`
`knowledge or information sufficient to form a belief as to the truth of the allegations in
`
`Paragraph 24 and on that basis denies each and every allegation contained therein.
`
`25.
`
`Apple admits that U.S. Patent No. 6,725,155 (the “’155 Patent”), titled “Method
`
`and apparatus for information processing, and medium for information processing,” was issued
`
`on April 20, 2004, and that a copy of the ’115 Patent was attached to the Complaint as Exhibit O.
`
`Apple denies that the ’115 Patent was duly and legally issued. Except as expressly admitted or
`
`denied herein, Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 25 and on that basis denies each and every allegation
`
`contained therein.
`
`26.
`
`Apple admits that U.S. Patent No. 5,490,170 (the “’170 Patent”), titled “Coding
`
`apparatus for digital signal,” was issued on February 6, 1996, and that a copy of the ’170 Patent
`
`was attached to the Complaint as Exhibit P. Apple denies that the ’170 Patent was duly and
`
`legally issued. Except as expressly admitted or denied herein, Apple is without knowledge or
`
`information sufficient to form a belief as to the truth of the allegations in Paragraph 26 and on
`
`that basis denies each and every allegation contained therein.
`
`27.
`
`Apple admits that on or around February 23, 2010, it received a letter from
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`Lawrence A. Horn, CEO of MobileMedia Ideas LLC, proposing that Apple license MMI’s
`
`“patent portfolio.” Apple also admits that this letter stated that various Apple products
`
`“incorporate features that infringe many of MMI’s patents” and that MMI attached to the letter
`
`
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`7
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`lists of certain Apple products and of certain MMI patents, including the patents-in-suit. Except
`
`as expressly admitted herein, Apple denies each and every allegation set forth in Paragraph 27.
`
`FIRST CAUSE OF ACTION
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`(Infringement of the ’075 Patent)
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`28.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 28.
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`29.
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`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 29 and on that basis denies each and every allegation
`
`contained therein.
`
`30.
`
`31.
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`32.
`
`Apple denies each and every allegation contained in Paragraph 30.
`
`Apple denies each and every allegation contained in Paragraph 31.
`
`Apple denies each and every allegation contained in Paragraph 34. Apple
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`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
`
`SECOND CAUSE OF ACTION
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`(Infringement of the ’078 Patent)
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`33.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 33.
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`34.
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`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 34 and on that basis denies each and every allegation
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`contained therein.
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`35.
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`36.
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`Apple denies each and every allegation contained in Paragraph 35.
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`Apple denies each and every allegation contained in Paragraph 36.
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`8
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`37.
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`Apple denies each and every allegation contained in Paragraph 37. Apple
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`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
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`THIRD CAUSE OF ACTION
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`(Infringement of the ’231 Patent)
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`38.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 38.
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`39.
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`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 39 and on that basis denies each and every allegation
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`contained therein.
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`40.
`
`41.
`
`42.
`
`Apple denies each and every allegation contained in Paragraph 40.
`
`Apple denies each and every allegation contained in Paragraph 41.
`
`Apple denies each and every allegation contained in Paragraph 42. Apple
`
`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
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`FOURTH CAUSE OF ACTION
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`(Infringement of the ’394 Patent)
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`43.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 43.
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`44.
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`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 44 and on that basis denies each and every allegation
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`contained therein.
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`45.
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`46.
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`Apple denies each and every allegation contained in Paragraph 45.
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`Apple denies each and every allegation contained in Paragraph 46.
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`9
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`47.
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`Apple denies each and every allegation contained in Paragraph 47. Apple
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`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
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`FIFTH CAUSE OF ACTION
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`(Infringement of the ’390 Patent)
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`48.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 48.
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`49.
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`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 49 and on that basis denies each and every allegation
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`contained therein.
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`50.
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`51.
`
`52.
`
`Apple denies each and every allegation contained in Paragraph 50.
`
`Apple denies each and every allegation contained in Paragraph 51.
`
`Apple denies each and every allegation contained in Paragraph 52. Apple
`
`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
`
`SIXTH CAUSE OF ACTION
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`(Infringement of the ’068 Patent)
`
`53.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 53.
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`54.
`
`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 54 and on that basis denies each and every allegation
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`contained therein.
`
`55.
`
`56.
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`Apple denies each and every allegation contained in Paragraph 55.
`
`Apple denies each and every allegation contained in Paragraph 56.
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`10
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`57.
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`Apple denies each and every allegation contained in Paragraph 57. Apple
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`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
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`SEVENTH CAUSE OF ACTION
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`(Infringement of the ’430 Patent)
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`58.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 58.
`
`59.
`
`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 59 and on that basis denies each and every allegation
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`contained therein.
`
`60.
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`61.
`
`62.
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`Apple denies each and every allegation contained in Paragraph 60.
`
`Apple denies each and every allegation contained in Paragraph 61.
`
`Apple admits that on or around February 23, 2010, it received a letter from
`
`Lawrence A. Horn, CEO of MobileMedia Ideas LLC, proposing that Apple license MMI’s
`
`“patent portfolio.” Apple also admits that this letter stated that various Apple products
`
`“incorporate features that infringe many of MMI’s patents” and that MMI attached to the letter
`
`lists of certain Apple products and of certain MMI patents, including the ’430 Patent. Except as
`
`expressly admitted herein, Apple denies each and every allegation set forth in Paragraph 62.
`
`63.
`
`64.
`
`Apple denies each and every allegation contained in Paragraph 63.
`
`Apple denies each and every allegation contained in Paragraph 64. Apple
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`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
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`11
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`EIGHTH CAUSE OF ACTION
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`(Infringement of the ’828 Patent)
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`65.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 65.
`
`66.
`
`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 66 and on that basis denies each and every allegation
`
`contained therein.
`
`67.
`
`68.
`
`69.
`
`Apple denies each and every allegation contained in Paragraph 67.
`
`Apple denies each and every allegation contained in Paragraph 68.
`
`Apple denies each and every allegation contained in Paragraph 69. Apple
`
`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
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`NINTH CAUSE OF ACTION
`
`(Infringement of the ’080 Patent)
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`70.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 70.
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`71.
`
`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 71 and on that basis denies each and every allegation
`
`contained therein.
`
`72.
`
`73.
`
`74.
`
`Apple denies each and every allegation contained in Paragraph 72.
`
`Apple denies each and every allegation contained in Paragraph 73.
`
`Apple admits that on or around February 23, 2010, it received a letter from
`
`Lawrence A. Horn, CEO of MobileMedia Ideas LLC, proposing that Apple license MMI’s
`
`“patent portfolio.” Apple also admits that this letter stated that various Apple products
`
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`12
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`“incorporate features that infringe many of MMI’s patents” and that MMI attached to the letter
`
`lists of certain Apple products and of certain MMI patents, including the ’080 Patent. Except as
`
`expressly admitted herein, Apple denies each and every allegation set forth in Paragraph 74.
`
`75.
`
`76.
`
`Apple denies each and every allegation contained in Paragraph 75.
`
`Apple denies each and every allegation contained in Paragraph 76. Apple
`
`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
`
`TENTH CAUSE OF ACTION
`
`(Infringement of the ’942 Patent)
`
`77.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 77.
`
`78.
`
`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 78 and on that basis denies each and every allegation
`
`contained therein.
`
`79.
`
`80.
`
`81.
`
`Apple denies each and every allegation contained in Paragraph 79.
`
`Apple denies each and every allegation contained in Paragraph 80.
`
`Apple admits that on or around February 23, 2010, it received a letter from
`
`Lawrence A. Horn, CEO of MobileMedia Ideas LLC, proposing that Apple license MMI’s
`
`“patent portfolio.” Apple also admits that this letter stated that various Apple products
`
`“incorporate features that infringe many of MMI’s patents” and that MMI attached to the letter
`
`lists of certain Apple products and of certain MMI patents, including the ’942 Patent. Except as
`
`expressly admitted herein, Apple denies each and every allegation set forth in Paragraph 81.
`
`82.
`
`Apple denies each and every allegation contained in Paragraph 82.
`
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`13
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`83.
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`Apple denies each and every allegation contained in Paragraph 83. Apple
`
`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
`
`ELEVENTH CAUSE OF ACTION
`
`(Infringement of the ’477 Patent)
`
`84.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 84.
`
`85.
`
`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 85 and on that basis denies each and every allegation
`
`contained therein.
`
`86.
`
`87.
`
`88.
`
`Apple denies each and every allegation contained in Paragraph 86.
`
`Apple denies each and every allegation contained in Paragraph 87.
`
`Apple denies each and every allegation contained in Paragraph 88. Apple
`
`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
`
`TWELFTH CAUSE OF ACTION
`
`(Infringement of the ’647 Patent)
`
`89.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 89.
`
`90.
`
`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 90 and on that basis denies each and every allegation
`
`contained therein.
`
`91.
`
`92.
`
`Apple denies each and every allegation contained in Paragraph 91.
`
`Apple denies each and every allegation contained in Paragraph 92.
`
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`14
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`Case 1:10-cv-00258-SLR Document 50 Filed 05/09/11 Page 15 of 37 PageID #: 1034
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`93.
`
`Apple denies each and every allegation contained in Paragraph 93. Apple
`
`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
`
`THIRTEENTH CAUSE OF ACTION
`
`(Infringement of the ’012 Patent)
`
`94.
`
`Apple incorporates by reference all prior paragraphs of this Answer in response to
`
`Paragraph 94.
`
`95.
`
`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in Paragraph 95 and on that basis denies each and every allegation
`
`contained therein.
`
`96.
`
`97.
`
`98.
`
`Apple denies each and every allegation contained in Paragraph 96.
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`Apple denies each and every allegation contained in Paragraph 97.
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`Apple denies each and every allegation contained in Paragraph 98. Apple
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`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
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`FOURTEENTH CAUSE OF ACTION
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`(Infringement of the ’239 Patent)
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`99.
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`Apple incorporates by reference all prior paragraphs of this Answer in response to
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`Paragraph 99.
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`100. Apple is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 100 and on that basis denies each and every allegation
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`contained therein.
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`101. Apple denies each and every allegation contained in Paragraph 101.
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`102. Apple denies each and every allegation contained in Paragraph 102.
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`Case 1:10-cv-00258-SLR Document 50 Filed 05/09/11 Page 16 of 37 PageID #: 1035
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`103. Apple denies each and every allegation contained in Paragraph 103. Apple
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`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
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`FIFTEENTH CAUSE OF ACTION
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`(Infringement of the ’155 Patent)
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`104. Apple incorporates by reference all prior paragraphs of this Answer in response to
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`Paragraph 104.
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`105. Apple is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 105 and on that basis denies each and every allegation
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`contained therein.
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`106. Apple denies each and every allegation contained in Paragraph 106.
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`107. Apple denies each and every allegation contained in Paragraph 107.
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`108. Apple denies each and every allegation contained in Paragraph 108. Apple
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`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
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`SIXTEENTH CAUSE OF ACTION
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`(Infringement of the ’170 Patent)
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`109. Apple incorporates by reference all prior paragraphs of this Answer in response to
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`Paragraph 109.
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`110. Apple is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 110 and on that basis denies each and every allegation
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`contained therein.
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`111. Apple denies each and every allegation contained in Paragraph 111.
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`112. Apple denies each and every allegation contained in Paragraph 112.
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`Case 1:10-cv-00258-SLR Document 50 Filed 05/09/11 Page 17 of 37 PageID #: 1036
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`113. Apple denies each and every allegation contained in Paragraph 113. Apple
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`specifically denies that MMI is entitled to any of the relief requested in the Complaint.
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`PRAYER FOR RELIEF
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`In response to MMI’s prayer for relief, Apple denies each and every allegation contained
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`therein and, further, Apple specifically denies that MMI is entitled to any of the relief requested
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`in the Complaint; specifically denies that MMI is entitled to an adjudication that any of the
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`patents-in-suit have been infringed by Apple; specifically denies that MMI has been damaged by
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`the acts of Apple in any way; specifically denies that MMI is entitled to any injunctive relief;
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`specifically denies that MMI is entitled to any award of treble, punitive, or exemplary damages;
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`specifically denies that MMI is entitled to reasonable attorneys’ fees; and specifically denies that
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`MMI is entitled to recover costs, expenses, or disbursements in this action.
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`AFFIRMATIVE DEFENSES OF DEFENDANT APPLE INC.
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`Apple alleges the following as separate and affirmative defenses to the Complaint. By
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`virtue of having listed the following defenses, Apple does not assume any legal or factual burden
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`not otherwise assigned to it under the law.
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`FIRST AFFIRMATIVE DEFENSE
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`114. Apple has not infringed and is not infringing any of the Patents-in-Suit directly,
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`indirectly, contributorily, or by inducement.
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`SECOND AFFIRMATIVE DEFENSE
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`115. Apple alleges that the Patents-in-Suit are invalid and/or unenforceable because
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`they fail to meet one or more of the conditions for patentability set forth in 35 U.S.C. §§ 101 et
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`seq.
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`Case 1:10-cv-00258-SLR Document 50 Filed 05/09/11 Page 18 of 37 PageID #: 1037
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`THIRD AFFIRMATIVE DEFENSE
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`116. MMI’s claims are barred, in whole or in part, by the doctrines of waiver, laches,
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`and/or estoppel.
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`FOURTH AFFIRMATIVE DEFENSE
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`117. The Complaint fails to state a cause of action on which relief may be granted.
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`FIFTH AFFIRMATIVE DEFENSE
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`118. MMI is barred, under the doctrine of prosecution history estoppel, from
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`construing the claims of the Patents-in-Suit in such a way as may cover any of Apple’s products
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`or processes by reasons of statements made to the United States Patent and Trademark Office
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`during the prosecution of the applications that led to the issuance of the Patents-in-Suit.
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`SIXTH AFFIRMATIVE DEFENSE
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`119. On information and belief, MMI’s claims are barred, in whole or in part, because
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`MMI does not possess all rights in the Patents-in-Suit and therefore lacks standing to bring suit.
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`SEVENTH AFFIRMATIVE DEFENSE
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`120. On information and belief, MMI’s claims are barred, in whole or in part, because
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`MMI failed to join the owner or owners of one or more of the Patents-in-Suit.
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`EIGTH AFFIRMATIVE DEFENSE
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`121. MMI is precluded from recovering costs under 35 U.S.C. § 288.
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`NINTH AFFIRMATIVE DEFENSE
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`122. MMI is not entitled to any damages prior to the time it provided actual notice of
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`alleged infringement, pursuant to the requirements of 35 U.S.C. § 287.
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`Case 1:10-cv-00258-SLR Document 50 Filed 05/09/11 Page 19 of 37 PageID #: 1038
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`TENTH AFFIRMATIVE DEFENSE
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`123. MMI’s claim for injunctive relief is barred because MMI has an adequate remedy
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`at law.
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`ELEVENTH AFFIRMATIVE DEFENSE
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`124. The ’477 and ’170 Patents are unenforceable due to inequitable conduct
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`committed before the United States Patent and Trademark Office (“USPTO”).
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`The ’477 Patent
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`125. The ’477 Patent is rendered unenforceable by the inequitable conduct committed
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`by those involved in the prosecution of the application that issued as the ’477 Patent, including at
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`least applicant Soon Ko (“Ko”) and his patent attorneys.
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`126. As the named inventor of the ’477 Patent, Ko had “a duty to disclose to the
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`[Patent] Office all information known to [him] to be material to patentability” of the ’477 Patent.
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`See 37 C.F.R. § 1.56(a). Ko specifically acknowledged that he had this duty in a declaration
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`filed on January 4, 1999. Ko breached his duty by intentionally withholding material
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`information during the prosecution of the ’477 Patent.
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`127. Ko filed U.S. Patent Application No. 09/908,376—the application that issued as
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`the ’477 Patent—on July 18, 2001. The ’477 Patent claims priority to U.S. Patent Application
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`No. 09/234,429, which was filed on January 20, 1999.
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`128. During prosecution of the ’477 Patent and its parent application, Ko was aware of
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`at least one earlier patent application that disclosed subject matter nearly identical to the ’477
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`Patent. On November 16, 1998, Ko and another person—Hiroshi Shirakawa—jointly filed U.S.
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`Patent Application No. 09/192,802, which issued as U.S. Patent No. 6,300,934 (“the Ko ’934
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`Patent”) on October 9, 2001. Ko ’934 is entitled “Method and Apparatus for Entering Hangul
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`Case 1:10-cv-00258-SLR Document 50 Filed 05/09/11 Page 20 of 37 PageID #: 1039
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`(Korean) Characters” and discloses methods and apparatuses for entering Hangul text on a
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`device by selecting Hangul components, including consonants and vowels, displayed on the
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`device’s screen. See, e.g., the Ko ’934 Patent at Abstract. Portions of the Ko ’934 Patent
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`specification are substantially similar to the ’477 Patent specification, and many figures are
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`ident