Case 1:16-cv-00290-MN Document 8 Filed 05/16/16 Page 1 of 19 PageID #: 398
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 16-290-SLR
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`JURY TRIAL DEMANDED
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`)))))))))
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`GODO KAISHA IP BRIDGE I,
`
`Plaintiff,
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`v.
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`OMNIVISION TECHNOLOGIES, INC.,
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`Defendant.
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`DEFENDANT OMNIVISION TECHNOLOGIES, INC.’S
`ANSWER TO COMPLAINT FOR PATENT INFRINGEMENT
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`Defendant OmniVision Technologies, Inc. (“OmniVision”) hereby answers Plaintiff
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`Godo Kaisha IP Bridge 1’s (“IP Bridge”) Complaint for Patent Infringement (“Complaint”), on
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`personal knowledge as to its own activities and on information and belief as to the activities of
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`others, as follows:
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`THE PARTIES
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`1.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 1 of the Complaint, and on that basis denies
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`them.
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`2.
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`OmniVision admits that it is a corporation organized and existing under the laws
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`of the State of Delaware, and has a principal place of business at 4275 Burton Drive, Santa
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`Clara, California 95054. Except as expressly admitted, OmniVision denies the allegations
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`contained in paragraph 2 of the Complaint.
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`JURISDICTION AND VENUE
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`3.
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`OmniVision admits that the complaint purports to allege an action for patent
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`infringement under the patent laws of the United States of America, Title 35 of the United
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`States. While parties cannot confer subject matter jurisdiction on a federal court, OmniVision
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`admits this Court has subject matter jurisdiction over an action for patent infringement pursuant
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`to 28 U.S.C. §§ 1331 and 1338(a). Except as expressly admitted, OmniVision denies the
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`allegations contained in paragraph 3 of the Complaint.
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`4.
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`OmniVision does not contest personal jurisdiction in the District of Delaware.
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`OmniVision admits that it is a corporation organized and existing under the laws of the State of
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`Delaware. OmniVision admits that it has a registered agent for service of process in the State
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`of Delaware. Except as expressly admitted, OmniVision denies the allegations contained in
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`paragraph 4 of the Complaint.
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`5.
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`OmniVision does not contest personal jurisdiction in the District of Delaware.
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`Except as expressly admitted, OmniVision denies the allegations contained in paragraph 5 of
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`the Complaint.
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`6.
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`For the purpose of this action only, OmniVision admits that venue is proper in
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`the District of Delaware pursuant to 28 U.S.C. §§ 1391(b) and 1400(b). OmniVision denies
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`that this Court is a convenient venue for this action and seeks transfer to a more convenient
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`forum. Except as expressly admitted, OmniVision denies the allegations contained in
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`paragraph 6 of the Complaint.
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`PATENTS-IN-SUIT
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`7.
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`OmniVision admits that Exhibit A to the Complaint purports to be a copy of
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`U.S. Patent No. 6,583,324 (“the ’324 patent”). OmniVision further admits that, on its face,
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`the ’324 patent is entitled “Multi-layered wiring layer and method of fabricating the same,” has
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`an issue date of March 25, 2003. OmniVision lacks knowledge or information sufficient to
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`2
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`form a belief as to the truth of the remaining allegations contained in paragraph 7 of the
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`Complaint, and on that basis denies them.
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`8.
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`OmniVision admits that Exhibit B to the Complaint purports to be a copy of
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`U.S. Patent No. 6,794,677 (“the ’677 patent”). OmniVision further admits that, on its face,
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`the ’677 patent is entitled “Semiconductor integrated circuit device and method for fabricating
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`the same,” has an issue date of September 21, 2004. OmniVision lacks knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations contained in
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`paragraph 8 of the Complaint, and on that basis denies them.
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`9.
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`OmniVision admits that Exhibit C to the Complaint purports to be a copy of
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`U.S. Patent No. 6,709,950 (“the ’950 patent”). OmniVision further admits that, on its face,
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`the ’950 patent is entitled “Semiconductor device and method of manufacturing the same,” has
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`an issue date of March 23, 2004. OmniVision lacks knowledge or information sufficient to
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`form a belief as to the truth of the remaining allegations contained in paragraph 9 of the
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`Complaint, and on that basis denies them.
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`10.
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`OmniVision admits that Exhibit D to the Complaint purports to be a copy of
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`U.S. Patent No. 7,126,174 (“the ’174 patent”). OmniVision further admits that, on its face,
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`the ’174 patent is entitled “Semiconductor device and method of manufacturing the same,” has
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`an issue date of October 24, 2006. OmniVision lacks knowledge or information sufficient to
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`form a belief as to the truth of the remaining allegations contained in paragraph 10 of the
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`Complaint, and on that basis denies them.
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`11.
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`OmniVision admits that Exhibit E to the Complaint purports to be a copy of
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`U.S. Patent No. 8,084,796 (“the ’796 patent”). OmniVision further admits that, on its face,
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`the ’796 patent is entitled “Solid state imaging apparatus, method for driving the same and
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`3
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`camera using the same,” has an issue date of December 27, 2011. OmniVision lacks
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`contained in paragraph 11 of the Complaint, and on that basis denies them.
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`12.
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`OmniVision admits that Exhibit F to the Complaint purports to be a copy of U.S.
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`Patent No. 8,106,431 (“the ’431 patent”). OmniVision further admits that, on its face, the ’431
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`patent is entitled “Solid state imaging apparatus, method for driving the same and camera using
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`the same,” has an issue date of January 31, 2012. OmniVision lacks knowledge or information
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`sufficient to form a belief as to the truth of the remaining allegations contained in paragraph 12
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`of the Complaint, and on that basis denies them.
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`13.
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`OmniVision admits that Exhibit G to the Complaint purports to be a copy of
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`U.S. Patent No. 8,378,401 (“the ’401 patent”). OmniVision further admits that, on its face,
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`the ’401 patent is entitled “Solid state imaging apparatus, method for driving the same and
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`camera using the same,” has an issue date of February 19, 2013. OmniVision lacks knowledge
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`or information sufficient to form a belief as to the truth of the remaining allegations contained
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`in paragraph 13 of the Complaint, and on that basis denies them.
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`14.
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`OmniVision admits that Exhibit H to the Complaint purports to be a copy of
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`U.S. Patent No. 7,279,727 (“the ’727 patent”). OmniVision further admits that, on its face,
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`the ’727 patent is entitled “Semiconductor device,” has an issue date of October 9, 2007.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the truth of the
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`remaining allegations contained in paragraph 14 of the Complaint, and on that basis denies
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`them.
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`15.
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`OmniVision admits that Exhibit I to the Complaint purports to be a copy of U.S.
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`Patent No. 7,709,900 (“the ’900 patent”). OmniVision further admits that, on its face, the ’900
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`4
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`patent is entitled “Semiconductor device,” has an issue date of May 4, 2010. OmniVision lacks
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`contained in paragraph 15 of the Complaint, and on that basis denies them.
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`16.
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`OmniVision admits that Exhibit J to the Complaint purports to be a copy of U.S.
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`Reissue Patent No. 41,867 (“the ’867 patent”). OmniVision further admits that, on its face,
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`the ’867 patent is entitled “MOS image pick-up device and camera incorporating same,” has an
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`issue date of October 26, 2010. OmniVision lacks knowledge or information sufficient to form
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`a belief as to the truth of the remaining allegations contained in paragraph 16 of the Complaint,
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`and on that basis denies them.
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`17.
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`OmniVision admits that the ’324, ’677, ’950, ’174, ’796, ’431, ’401, ’727, ’900,
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`and ’867 patents are collectively referred to as the “IP Bridge patents” in the Complaint.
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`NOTICE AND PRE-SUIT NEGOTIATIONS
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`18.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations regarding IP Bridge policy contained in paragraph 18 of the Complaint,
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`and on that basis denies them. OmniVision admits that counsel for OmniVision and counsel for
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`IP Bridge engaged in pre-lawsuit discussions. Except as expressly admitted, OmniVision denies
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`the allegations contained in paragraph 18 of the Complaint.
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`19.
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`20.
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`OmniVision denies the allegations contained in paragraph 19 of the Complaint.
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`OmniVision admits that counsel for OmniVision and counsel for IP Bridge
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`engaged in pre-lawsuit discussions. Except as expressly admitted, OmniVision denies the
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`allegations contained in paragraph 20 of the Complaint.
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`21.
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`OmniVision admits that on March 28, 2016, counsel for IP Bridge sent
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`OmniVision’s counsel purported claim charts identifying the OmniVision OV8858 image sensor
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`5
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`and documents purporting to be copies the ’324, ’677, ’950, ’174, ’796, ’431, ’401, ’727, ’900,
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`and ’867 patents. Except as expressly admitted, OmniVision denies the allegations contained in
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`paragraph 21 of the Complaint.
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`22.
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`OmniVision admits that counsel for IP Bridge sent OmniVision’s counsel
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`additional purported claim charts, certain of which identify the OmniVision OV23850 image
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`sensor, the OmniVision OV4689 image sensor, the OmniVision OV8850 image sensor, the
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`OmniVision OV5650 image sensor, and the OmniVision OV10640 image sensor. Except as
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`expressly admitted, OmniVision denies the allegations contained in paragraph 22 of the
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`Complaint.
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`23.
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`24.
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`OmniVision denies the allegations contained in paragraph 23 of the Complaint.
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`OmniVision admits that on April 7, 2016, counsel for OmniVision sent a letter to
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`IP Bridge’s counsel informing IP Bridge that OmniVision was no longer available to meet on
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`April 20, 2016. Except as expressly admitted, OmniVision denies the allegations contained in
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`paragraph 24 of the Complaint.
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`25.
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`OmniVision admits that on April 12, 2016, counsel for IP Bridge sent an email
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`informing OmniVision’s counsel that IP Bridge considered OmniVision in breach of the
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`Forbearance Agreement. Except as expressly admitted, OmniVision denies the allegations
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`contained in paragraph 25 of the Complaint. OmniVision explicitly denies that it breached or
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`rescinded the Forbearance Agreement. In the Forbearance Agreement executed by the parties, IP
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`Bridge agreed “it will not file any lawsuit, claim or other action of any kind or nature in any
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`forum . . . against OmniVision . . . during the Forbearance Period.” The Forbearance Agreement
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`had an effective date of March 18, 2016, and defined the Forbearance Period as “a period
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`extending forty-five (45) days from the effective date of this Agreement.” IP Bridge breached
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`6
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`the Forbearance Agreement, notably by filing this lawsuit against OmniVision on April 22, 2016,
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`during the Forbearance Period which did not expire until May 2, 2016.
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`COUNT I
`ALLEGED PATENT INFRINGEMENT OF U.S. PATENT NO. 6,538,324
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`26.
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`OmniVision incorporates and realleges paragraphs 1-25 of its Answer as if fully
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`set forth herein in response to the allegations contained in paragraph 26 of the Complaint.
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`27.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 27 of the Complaint, and on that basis denies
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`them.
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`28.
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`29.
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`OmniVision denies the allegations contained in paragraph 28 of the Complaint.
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`OmniVision admits that it has not executed a license with IP Bridge to the ’324
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`patent. Except as expressly admitted, OmniVision denies the allegations contained in paragraph
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`29 of the Complaint.
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`30.
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`OmniVision denies the allegations contained in paragraph 30 of the Complaint,
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`including those in Exhibit K to the Complaint.
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`31.
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`32.
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`33.
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`OmniVision denies the allegations contained in paragraph 31 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 32 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 33 of the Complaint.
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`COUNT II
`ALLEGED PATENT INFRINGEMENT OF U.S. PATENT NO. 6,794,677
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`34.
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`OmniVision incorporates and realleges paragraphs 1-33 of its Answer as if fully
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`set forth herein in response to the allegations contained in paragraph 34 of the Complaint..
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`35.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 35 of the Complaint, and on that basis denies
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`them.
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`7
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`36.
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`37.
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`OmniVision denies the allegations contained in paragraph 36 of the Complaint.
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`OmniVision admits that it has not executed a license with IP Bridge to the ’677
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`patent. Except as expressly admitted, OmniVision denies the allegations contained in paragraph
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`37 of the Complaint.
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`38.
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`OmniVision denies the allegations contained in paragraph 38 of the Complaint,
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`including those in Exhibit L to the Complaint.
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`39.
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`40.
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`41.
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`OmniVision denies the allegations contained in paragraph 39 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 40 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 41 of the Complaint.
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`COUNT III
`ALLEGED PATENT INFRINGEMENT OF U.S. PATENT NO. 6,709,950
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`42.
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`OmniVision incorporates and realleges paragraphs 1-41 of its Answer as if fully
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`set forth herein in response to the allegations contained in paragraph 42 of the Complaint..
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`43.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 43 of the Complaint, and on that basis denies
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`them.
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`44.
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`45.
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`OmniVision denies the allegations contained in paragraph 44 of the Complaint.
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`OmniVision admits that it has not executed a license with IP Bridge to the ’950
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`patent. Except as expressly admitted, OmniVision denies the allegations contained in paragraph
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`45 of the Complaint.
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`46.
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`OmniVision denies the allegations contained in paragraph 46 of the Complaint,
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`including those in Exhibit M to the Complaint.
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`47.
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`48.
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`OmniVision denies the allegations contained in paragraph 47 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 48 of the Complaint.
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`8
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`49.
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`OmniVision denies the allegations contained in paragraph 49 of the Complaint.
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`COUNT IV
`ALLEGED PATENT INFRINGEMENT OF U.S. PATENT NO. 7,126,174
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`50.
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`OmniVision incorporates and realleges paragraphs 1-49 of its Answer as if fully
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`set forth herein in response to the allegations contained in paragraph 50 of the Complaint.
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`51.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 51 of the Complaint, and on that basis denies
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`them.
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`52.
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`53.
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`OmniVision denies the allegations contained in paragraph 52 of the Complaint.
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`OmniVision admits that it has not executed a license with IP Bridge to the ’174
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`patent. Except as expressly admitted, OmniVision denies the allegations contained in paragraph
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`53 of the Complaint.
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`54.
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`OmniVision denies the allegations contained in paragraph 54 of the Complaint,
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`including those in Exhibit N to the Complaint.
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`55.
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`56.
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`57.
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`OmniVision denies the allegations contained in paragraph 55 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 56 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 57 of the Complaint.
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`COUNT V
`ALLEGED PATENT INFRINGEMENT OF U.S. PATENT NO. 8,084,796
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`58.
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`OmniVision incorporates and realleges paragraphs 1-57 of its Answer as if fully
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`set forth herein in response to the allegations contained in paragraph 58 of the Complaint.
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`59.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 59 of the Complaint, and on that basis denies
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`them.
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`60.
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`OmniVision denies the allegations contained in paragraph 60 of the Complaint.
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`9
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`61.
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`OmniVision admits that it has not executed a license with IP Bridge to the ’796
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`patent. Except as expressly admitted, OmniVision denies the allegations contained in paragraph
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`61 of the Complaint.
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`62.
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`OmniVision denies the allegations contained in paragraph 62 of the Complaint,
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`including those in Exhibit O to the Complaint.
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`63.
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`64.
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`65.
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`OmniVision denies the allegations contained in paragraph 63 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 64 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 65 of the Complaint.
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`COUNT VI
`ALLEGED PATENT INFRINGEMENT OF U.S. PATENT NO. 8,106,431
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`66.
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`OmniVision incorporates and realleges paragraphs 1-65 of its Answer as if fully
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`set forth herein in response to the allegations contained in paragraph 66 of the Complaint.
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`67.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 67 of the Complaint, and on that basis denies
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`them.
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`68.
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`69.
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`OmniVision denies the allegations contained in paragraph 68 of the Complaint.
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`OmniVision admits that it has not executed a license with IP Bridge to the ’431
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`patent. Except as expressly admitted, OmniVision denies the allegations contained in paragraph
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`69 of the Complaint.
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`70.
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`OmniVision denies the allegations contained in paragraph 70 of the Complaint,
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`including those in Exhibit P to the Complaint.
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`71.
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`72.
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`73.
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`OmniVision denies the allegations contained in paragraph 71 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 72 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 73 of the Complaint.
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`10
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`COUNT VII
`ALLEGED PATENT INFRINGEMENT OF U.S. PATENT NO. 8,378,401
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`74.
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`OmniVision incorporates and realleges paragraphs 1-73 of its Answer as if fully
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`set forth herein in response to the allegations contained in paragraph 74 of the Complaint.
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`75.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 75 of the Complaint, and on that basis denies
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`them.
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`76.
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`77.
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`OmniVision denies the allegations contained in paragraph 76 of the Complaint.
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`OmniVision admits that it has not executed a license with IP Bridge to the ’401
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`patent. Except as expressly admitted, OmniVision denies the allegations contained in paragraph
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`77 of the Complaint.
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`78.
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`OmniVision denies the allegations contained in paragraph 78 of the Complaint,
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`including those in Exhibit Q to the Complaint.
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`79.
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`80.
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`81.
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`OmniVision denies the allegations contained in paragraph 79 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 80 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 81 of the Complaint.
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`COUNT VIII
`ALLEGED PATENT INFRINGEMENT OF U.S. PATENT NO. 7,279,727
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`82.
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`OmniVision incorporates and realleges paragraphs 1-81 of its Answer as if fully
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`set forth herein in response to the allegations contained in paragraph 82 of the Complaint.
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`83.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 83 of the Complaint, and on that basis denies
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`them.
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`84.
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`OmniVision denies the allegations contained in paragraph 84 of the Complaint.
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`11
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`85.
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`OmniVision admits that it has not executed a license with IP Bridge to the ’727
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`patent. Except as expressly admitted, OmniVision denies the allegations contained in paragraph
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`85 of the Complaint.
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`86.
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`OmniVision denies the allegations contained in paragraph 86 of the Complaint,
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`including those in Exhibit R to the Complaint.
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`87.
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`88.
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`89.
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`OmniVision denies the allegations contained in paragraph 87 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 88 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 89 of the Complaint.
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`COUNT IX
`ALLEGED PATENT INFRINGEMENT OF U.S. PATENT NO. 7,709,900
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`90.
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`OmniVision incorporates and realleges paragraphs 1-89 of its Answer as if fully
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`set forth herein in response to the allegations contained in paragraph 90 of the Complaint.
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`91.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 91 of the Complaint, and on that basis denies
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`them.
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`92.
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`93.
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`OmniVision denies the allegations contained in paragraph 92 of the Complaint.
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`OmniVision admits that it has not executed a license with IP Bridge to the ’900
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`patent. Except as expressly admitted, OmniVision denies the allegations contained in paragraph
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`93 of the Complaint.
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`94.
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`OmniVision denies the allegations contained in paragraph 94 of the Complaint,
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`including those in Exhibit S to the Complaint.
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`95.
`
`96.
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`97.
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`OmniVision denies the allegations contained in paragraph 95 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 96 of the Complaint.
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`OmniVision denies the allegations contained in paragraph 97 of the Complaint.
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`12
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`COUNT X
`ALLEGED PATENT INFRINGEMENT OF U.S. REISSUE PATENT NO. 41,867
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`98.
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`OmniVision incorporates and realleges paragraphs 1-97 of its Answer as if fully
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`set forth herein in response to the allegations contained in paragraph 98 of the Complaint.
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`99.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 99 of the Complaint, and on that basis denies
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`them.
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`100. OmniVision denies the allegations contained in paragraph 100 of the Complaint.
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`101. OmniVision admits that it has not executed a license with IP Bridge to the ’867
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`patent. Except as expressly admitted, OmniVision denies the allegations contained in paragraph
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`101 of the Complaint.
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`102. OmniVision denies the allegations contained in paragraph 102 of the Complaint,
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`including those in Exhibit T to the Complaint.
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`103. OmniVision denies the allegations contained in paragraph 103 of the Complaint.
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`104. OmniVision denies the allegations contained in paragraph 104 of the Complaint.
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`105. OmniVision denies the allegations contained in paragraph 105 of the Complaint.
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`CONCLUSION
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`106. OmniVision denies the allegations contained in paragraph 106 of the Complaint.
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`107. OmniVision denies the allegations contained in paragraph 107 of the Complaint.
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`108. OmniVision denies that IP Bridge is entitled to an award of attorneys’ fees.
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`OmniVision lacks knowledge or information sufficient to form a belief as to the truth of the
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`remaining allegations contained in paragraph 108 of the Complaint, and on that basis denies
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`them.
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`13
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`109.
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`Paragraph 109 of the Complaint does not does not contain any allegation against
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`OmniVision to which a response is required.
`
`PRAYER FOR RELIEF
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`Paragraphs A-G set forth the statement of relief requested by IP Bridge to which no
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`response is required. To the extent a response is required, OmniVision denies any and all
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`allegations contained in the remainder of the Complaint and denies that IP Bridge is entitled to
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`any of the relief requested in paragraphs A-G of its prayer for relief or to any other relief in any
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`form whatsoever. OmniVision further denies each and every allegation contained in the
`
`Complaint to which it has not specifically responded.
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`JURY DEMAND
`
`IP Bridge’s demand for a jury trial does not state any allegation against OmniVision to
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`which a response is required. To the extent that any allegations are included in the demand,
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`OmniVision denies such allegations.
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`DEFENSES
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`Subject to the foregoing responses, OmniVision alleges and asserts the following
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`defenses in response to the allegations, undertaking the burden of proof only as to those defenses
`
`deemed affirmative defenses by law, regardless of how such defenses are denominated herein.
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`In addition to the defenses described below, OmniVision specifically reserves all rights to allege
`
`additional defenses that become known through the course of discovery.
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`FIRST DEFENSE
`
`110.
`
`IP Bridge’s Complaint fails to state a claim upon which relief may be granted.
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`Case 1:16-cv-00290-MN Document 8 Filed 05/16/16 Page 15 of 19 PageID #: 412
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`SECOND DEFENSE
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`111. OmniVision has not infringed, contributed to the infringement of, or induced
`
`others to infringe, or infringed in any way any valid claim of the ’324, ’677, ’950, ’174, ’796,
`
`’431, ’401, ’727, ’900, and/or ’867 patents, directly or indirectly, literally or by equivalents, at
`
`least because the accused OmniVision products do not perform one or more limitations of each
`
`of the claims of the ’324, ’677, ’950, ’174, ’796, ’431, ’401, ’727, ’900, and ’867 patents. In
`
`addition, OmniVision has not infringed, contributed to the infringement of, or induced others to
`
`infringe, or infringed in any way any valid claim of the ’324, ’677, ’950, ’174, ’796, ’431, ’401,
`
`’727, ’900, and/or ’867 patents, directly or indirectly, literally or by equivalents, to the extent
`
`that OmniVision does not make, use, offer to sell, sell, or import any of the accused image
`
`sensors within or into the United States and does not perform, induce a third party to perform, or
`
`contribute to a third party’s performance of any limitations of the ’324, ’677, ’950, ’174, ’796,
`
`’431, ’401, ’727, ’900, and/or ’867 patents within the United States. In addition, to the extent
`
`that IP Bridge alleges that OmniVision indirectly infringes the ’324, ’677, ’950, ’174, ’796, ’431,
`
`’401, ’727, ’900, and/or ’867 patents, OmniVision has at all relevant times believed in good faith
`
`that the use of the accused OmniVision products does not infringe any valid claim of
`
`the ’324, ’677, ’950, ’174, ’796, ’431, ’401, ’727, ’900, and/or ’867 patents, and that the asserted
`
`claims of the ’324, ’677, ’950, ’174, ’796, ’431, ’401, ’727, ’900, and/or ’867 patents are invalid
`
`thus negating at least the “specific intent” element of such claims. To the extent that IP Bridge
`
`alleges that OmniVision contributes to the infringement of the ’324, ’677, ’950, ’174, ’796, ’431,
`
`’401, ’727, ’900, and/or ’867 patents, these claims are further barred in whole or in part under 35
`
`U.S.C. § 271(c) in view of the substantial non-infringing uses of OmniVision’s alleged
`
`infringing products. OmniVision has engaged in all relevant activities in good faith, thereby
`
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`Case 1:16-cv-00290-MN Document 8 Filed 05/16/16 Page 16 of 19 PageID #: 413
`
`precluding IP Bridge, even if it were to prevail, from recovering enhanced damages for willful
`
`infringement under 35 U.S.C. § 284 or recovering its attorneys’ fees and/or costs under 35
`
`U.S.C. § 285. In addition, to the extent that IP Bridge does not allege that OmniVision performs
`
`every limitation of the ’324, ’677, ’950, ’174, ’796, ’431, ’401, ’727, ’900, and/or ’867 patents,
`
`OmniVision has not infringed, contributed to the infringement of, or induced others to infringe,
`
`or infringed in any way any valid claim of the ’324, ’677, ’950, ’174, ’796, ’431, ’401, ’727,
`
`’900, and/or ’867 patents, directly or indirectly, literally or by equivalents, at least because
`
`OmniVision does not exercise direction or control over a third party that performs any
`
`limitations of the ’324, ’677, ’950, ’174, ’796, ’431, ’401, ’727, ’900, and/or ’867 patents.
`
`THIRD DEFENSE
`
`112.
`
`The claims of the ’324, ’677, ’950, ’174, ’796, ’431, ’401, ’727, ’900, and/or ’867
`
`patents are invalid for failure to comply with one or more of the requirements of 35 U.S.C.
`
`§§ 101, 102, 103, and/or 112. Upon information and belief, the ’727 and ’900 patents are invalid
`
`in view of, for example, U.S. Patent No. 5,949,111 entitled “Semiconductor device and
`
`fabrication process therefor,” which was filed on November 10, 1997 and issued on September 7,
`
`1999. Upon information and belief, the ’324 patent is invalid in view of, for example, U.S.
`
`Patent No. 6,346,745 entitled “CU-A1 combined interconnect system,” which was filed on
`
`December 4, 1998 and issued on February 12, 2002. Upon information and belief, the ’950
`
`patent is invalid in view of, for example, U.S. Patent No. 5,330,928 entitled “Method for
`
`fabricating stacked capacitors with increased capacitance in a dram cell,” which was filed on
`
`September 28, 1992 and issued on July 19, 1994. Upon information and belief, the ’174 patent is
`
`invalid in view of, for example, U.S. Patent No. 4,912,061 entitled “Method of forming a
`
`salicided self-aligned metal oxide semiconductor device using a disposable silicon nitride
`
`16
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`Case 1:16-cv-00290-MN Document 8 Filed 05/16/16 Page 17 of 19 PageID #: 414
`
`spacer,” which was filed on April 4, 1988 and issued on March 27, 1990. Upon information and
`
`belief, the ’401, ’796, and ’431 patents are invalid in view of, for example, U.S. Patent No.
`
`6,992,714 entitled “Image pickup apparatus having plural pixels arranged two-dimensionally,
`
`and selective addition of different pixel color signals to control spatial color arrangement,” which
`
`was filed on May 31, 2000 and issued on January 31, 2006. Upon information and belief,
`
`the ’677 patent is invalid in view of, for example, U.S. Patent No. 5,899,706 entitled “Method of
`
`reducing loading variation during etch processing,” which was filed on June 30, 1997 and issued
`
`on May 4, 1999. Upon information and belief, the ’867 patent is invalid in view of, for example,
`
`U.S. Patent No. 6,277,679 entitled “Method of manufacturing thin film transistor,” which was
`
`filed on November 24, 1999 and issued on August 21, 2001.
`
`FOURTH DEFENSE
`
`113. By reason of proceedings in the United States Patent and Trademark Office, and
`
`by reasons of amendments, disclaimers, disavowals, admissions, representations, arguments,
`
`and/or statements made by the applicants or on their behalf, IP Bridge is estopped from
`
`construing the claims of the ’324, ’677, ’950, ’174, ’796, ’431, ’401, ’727, ’900, and/or ’867
`
`patents to cover and/or include any acts or products of OmniVision and is otherwise estopped
`
`from claiming that any claim in any asserted patent is of sufficient scope to cover and/or
`
`include any accused acts or products either literally or under the doctrine of equivalents.
`
`FIFTH DEFENSE
`
`114. OmniVision is informed and believes, and thereon alleges, that IP Bridge may
`
`not claim pre-lawsuit damages, in whole or in part, for failure to comply with 35 U.S.C. § 287.
`
`17
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`Case 1:16-cv-00290-MN Document 8 Filed 05/16/16 Page 18 of 19 PageID #: 415
`
`SIXTH DEFENSE
`
`115.
`
`IP Bridge’s claims for relief and prayer for damages are barred by the equitable
`
`doctrines of laches, waiver, and/or estoppel.
`
`SEVENTH DEFENSE
`
`116.
`
`IP Bridge has failed to state facts and/or a legal basis sufficient to permit the
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`Court to grant equitable or injunctive relief against OmniVision.
`
`EIGHTH DEFENSE
`
`117.
`
`IP Bridge’s claims against OmniVision are barred under the doctrine of unclean
`
`hands.
`
`RESERVATION OF ADDITIONAL DEFENSES
`
`118. OmniVision reserves all defenses under the Federal Rules of Civil Procedure, the
`
`Patent Laws of the United States, and any other defenses, at law or in equity, that may now exist
`
`or in the future be available based on discovery and further factual investigation in this case.
`
`18
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`Case 1:16-cv-00290-MN Document 8 Filed 05/16/16 Page 19 of 19 PageID #: 416
`
`OF COUNSEL:
`
`POTTER ANDERSON & CORROON LLP
`
`Respectfully submitted,
`
`By:
`
`/s/ David E. Moore
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
`
`Attorneys for Defendant OmniVision
`Technologies, Inc.
`
`Edward G. Poplawski
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Tel: (323) 210-2901