Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 1 of 55 PageID #: 2298
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`SIPCO, LLC and IP CO., LLC d/b/a INTUS
`IQ,
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`Plaintiffs,
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`STREETLINE, INC., KAPSCH
`TRAFFICCOM HOLDING CORP., and
`KAPSCH TRAFFICCOM U.S. CORP.
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` C.A. No. 16-830-RGA
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ANSWER AND COUNTERCLAIMS TO
`SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`Defendant Streetline, Inc. (“Streetline”) hereby responds to SIPCO, LLC’s (“SIPCO”)
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`v.
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`Defendants.
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`and IP Co., LLC’s (“IPCO”) (collectively, “Plaintiffs”) Second Amended Complaint for Patent
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`Infringement (“Second Amended Complaint”). Streetline denies each and every allegation
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`contained in the Complaint that is not expressly admitted below. Any factual allegation below is
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`admitted only as to the specific admitted facts, not as to any purported conclusions,
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`characterizations, implications or speculations that arguably follow from the admitted facts.
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`Streetline denies that Plaintiffs are entitled to the relief requested or any other relief.
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`PARTIES
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`1.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 1 and therefore denies them.
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`2.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 2 and therefore denies them.
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`

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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 2 of 55 PageID #: 2299
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`3.
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`Streetline admits that it is a corporation organized under the laws of Delaware,
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`with its principal place of business located at 1200 Park Place, San Mateo, CA 94403. Streetline
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`admits that its registered agent is Incorporating Services, Ltd., 3600 S. Dupont Highway, Dover,
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`DE 19901. Except as so admitted, denied.
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`4.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 4 and therefore denies them.
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`5.
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`Streetline admits that Kapsch TrafficCom Holding Corp acquired Streetline in
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`April 2015 and that Streetline is a wholly-owned subsidiary of Kapsch TrafficCom Holding
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`Corp. Except as so admitted, denied.
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`6.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 6 and therefore denies them.
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`7.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 7 and therefore denies them.
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`JURISDICTION AND VENUE
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`8.
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`Streetline admits that this Court has subject matter jurisdiction under 28 U.S.C. §§
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`1331 and 1338(a). Except as so admitted, denied.
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`9.
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`Streetline admits that this Court has personal jurisdiction over Streetline. Except
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`as so admitted, denied.
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`10.
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`Streetline admits, for the purposes of this action only, that venue is proper in this
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`District. Except as so admitted, denied.
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`PLAINTIFFS
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`11.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 11 and therefore denies them.
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`2
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 3 of 55 PageID #: 2300
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`12.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 12 and therefore denies them.
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`13.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 13 and therefore denies them.
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`14.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 14 and therefore denies them.
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`15.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 15 and therefore denies them.
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`16.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 16 and therefore denies them.
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`DEFENDANTS
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`17.
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`Streetline admits that it provides a parking management solution. Except as so
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`admitted, denied.
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`18.
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`Streetline admits that it provides a parking management solution, which is
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`described on Streetline’s website. Except as so admitted, denied.
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`19.
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`Streetline admits that its parking management solution uses products supplied by
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`Dust Networks group of Linear Technology Corporation, which on information and belief, was
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`acquired by Analog Devices. Streetline is without knowledge or information to admit or deny the
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`allegations of paragraph 19 and therefore denies them.
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`20.
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`Streetline admits that it provides solutions named Parker, ParkerMap, ParkEdge,
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`Enforcement, ParkSight, and ParkingData, which are described on Streetline’s website. Except
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`as so admitted, denied.
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`3
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 4 of 55 PageID #: 2301
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`21.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 21 and therefore denies them.
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`22.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch
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`TrafficCom Holding Corp. and Kapsch TrafficCom U.S. Corp. (collectively, “Kapsch”). Thus,
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`no response is required. To the extent a response is required, Streetline is without knowledge or
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`information to admit or deny the allegations in Paragraph 21 and therefore denies them.
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`23.
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`Streetline admits that Paragraph 23 purports to show a screen shot of Kapsch’s
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`website. Except as so admitted, denied.
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`24.
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`Streetline admits that Paragraph 24 purports to quote from Kapsch’s website.
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`Except as so admitted, denied.
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`25.
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`Streetline is without knowledge or information to admit or deny the allegations in
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`Paragraph 25 and therefore denies them.
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`26.
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`The allegations of Paragraph 26 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`COUNT I
`INFRINGEMENT OF U.S. PATENT NO. 8,908,842
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`Streetline incorporates by reference, as if set forth in full herein, its answers to
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`27.
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`Paragraphs 1 through 26 above.
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`28.
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`Streetline admits that the title of U.S. Patent No. 8,908,842 (“the ’842 Patent”) is
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`“Multi-Functional General Purpose Transceivers and Devices” and that Plaintiffs attached what
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`purports to be a copy of the ’842 Patent as Exhibit 1 to the Second Amended Complaint.
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`Streetline is without knowledge or information to admit or deny the remaining allegations of
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`Paragraph 28 and therefore denies them.
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`29.
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`Denied.
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`4
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 5 of 55 PageID #: 2302
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`30.
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`The allegations in Paragraph 30 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`31.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch. Thus,
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`no response is required. To the extent a response is required, denied.
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`32.
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`Denied.
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`COUNT II
`INFRINGEMENT OF U.S. PATENT NO. 8,625,496
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`Streetline incorporates by reference, as if set forth in full herein, its answers to
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`33.
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`Paragraphs 1 through 26 above.
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`34.
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`Streetline admits that the title of U.S. Patent No. 8,625,496 (“the ’496 Patent”) is
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`“Wireless Network System and Method for Providing Same” and that Plaintiffs attached what
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`purports to be a copy of the ’496 Patent as Exhibit 2 to the Second Amended Complaint.
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`Streetline is without knowledge or information to admit or deny the remaining allegations of
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`Paragraph 34 and therefore denies them.
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`35.
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`36.
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`Denied.
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`The allegations of Paragraph 36 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`37.
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`38.
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`Denied.
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`The allegations of Paragraph 38 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`39.
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`On February 7, 2018, the Court dismissed Plaintiffs’ allegations of induced
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`infringement against Streetline. Thus, no response is required. To the extent a response is
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`required, denied.
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`5
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 6 of 55 PageID #: 2303
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`40.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch. Thus,
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`no response is required. To the extent a response is required, denied.
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`41.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch. Thus,
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`no response is required. To the extent a response is required, denied.
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`42.
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`Denied.
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`COUNT III
`INFRINGEMENT OF U.S. PATENT NO. 8,233,471
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`Streetline incorporates by reference, as if set forth in full herein, its answers to
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`43.
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`Paragraphs 1 through 26 above.
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`44.
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`Streetline admits that the title of U.S. Patent No. 8,233,471 (“the ’471 Patent”) is
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`“Wireless Network System and Method for Providing Same” and that Plaintiffs attached what
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`purports to be a copy of the ’471 Patent as Exhibit 3 to the Second Amended Complaint.
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`Streetline is without knowledge or information to admit or deny the remaining allegations of
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`Paragraph 44 and therefore denies them.
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`45.
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`46.
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`Denied.
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`The allegations of Paragraph 46 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`47.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch. Thus,
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`no response is required. To the extent a response is required, denied.
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`48.
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`Denied.
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`COUNT IV
`INFRINGEMENT OF U.S. PATENT NO. 8,223,010
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`49.
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`Streetline incorporates by reference, as if set forth in full herein, its answers to
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`Paragraphs 1 through 26 above.
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`6
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`

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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 7 of 55 PageID #: 2304
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`50.
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`Streetline admits that the title of U.S. Patent No. 8,223,010 (“the ’010 Patent”) is
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`“Systems And Methods for Monitoring Vehicle Parking” and that Plaintiffs attached what
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`purports to be a copy of the ’010 Patent as Exhibit 4 to the Second Amended Complaint.
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`Streetline is without knowledge or information to admit or deny the remaining allegations of
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`Paragraph 50 and therefore denies them.
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`51.
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`52.
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`Denied.
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`The allegations of Paragraph 52 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`53.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch. Thus,
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`no response is required. To the extent a response is required, denied.
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`54.
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`Denied.
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`COUNT V
`INFRINGEMENT OF U.S. PATENT NO. 7,697,492
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`Streetline incorporates by reference, as if set forth in full herein, its answers to
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`55.
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`Paragraphs 1 through 26 above.
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`56.
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`Streetline admits that the title of U.S. Patent No. 7,697,492 (“the ’492 Patent”) is
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`“Systems And Methods For Monitoring And Controlling Remote Devices” and that Plaintiffs
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`attached what purports to be a copy of the ’492 Patent as Exhibit 5 to the Second Amended
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`Complaint. Streetline is without knowledge or information to admit or deny the remaining
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`allegations of Paragraph 56 and therefore denies them.
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`57.
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`58.
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`Denied.
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`The allegations of Paragraph 58 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`7
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 8 of 55 PageID #: 2305
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`59.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch. Thus,
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`no response is required. To the extent that a response is required, denied.
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`60.
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`Denied.
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`COUNT VI
`INFRINGEMENT OF U.S. PATENT NO. 7,468,661
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`Streetline incorporates by reference, as if set forth in full herein, its answers to
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`61.
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`Paragraphs 1 through 26 above.
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`62.
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`Streetline admits that the title of U.S. Patent No. 7,468,661 (“the ’661 Patent”) is
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`“Systems And Methods for Monitoring and Controlling Remote Devices” and that Plaintiffs
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`attached what purports to be a copy of the ’661 Patent as Exhibit 6 to the Second Amended
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`Complaint. Streetline is without knowledge or information to admit or deny the remaining
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`allegations of Paragraph 62 and therefore denies them.
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`63.
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`64.
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`Denied.
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`The allegations of Paragraph 64 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`65.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch. Thus,
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`no response is required. To the extent that a response is required, denied.
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`66.
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`Denied.
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`COUNT VII
`INFRINGEMENT OF U.S. PATENT NO. 7,103,511
`Streetline incorporates by reference, as if set forth in full herein, its answers to
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`67.
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`Paragraphs 1 through 26 above.
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`68.
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`Streetline admits that the title of U.S. Patent No. 7,103,511 (“the ’511 Patent”) is
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`“Wireless Communication Networks For Providing Remote Monitoring of Devices” and that
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`8
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 9 of 55 PageID #: 2306
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`Plaintiffs attached what purports to be a copy of the ’511 Patent as Exhibit 7 to the Second
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`Amended Complaint. Streetline is without knowledge or information to admit or deny the
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`remaining allegations of paragraph 68 and therefore denies them.
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`69.
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`70.
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`Denied.
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`The allegations of Paragraph 70 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`71.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch. Thus,
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`no response is required. To the extent that a response is required, denied.
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`72.
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`Denied.
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`COUNT VIII
`INFRINGEMENT OF U.S. PATENT NO. 6,914,893
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`Streetline incorporates by reference, as if set forth in full herein, its answers to
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`73.
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`Paragraphs 1 through 26 above.
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`74.
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`Streetline admits that the title of U.S. Patent No. 6,914,893 (“the ’893 Patent”) is
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`“System and Method for Monitoring and Controlling Remote Devices” and that Plaintiffs
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`attached what purports to be a copy of the ’893 Patent as Exhibit 8 to the Second Amended
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`Complaint. Streetline is without knowledge or information to admit or deny the remaining
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`allegations of Paragraph 74 and therefore denies them.
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`75.
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`76.
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`Denied.
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`The allegations of Paragraph 76 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`77.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch. Thus,
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`no response is required. To the extent that a response is required, denied.
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`78.
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`Denied.
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`9
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 10 of 55 PageID #: 2307
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`COUNT IX
`INFRINGEMENT OF U.S. PATENT NO. 6,437,692
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`Streetline incorporates by reference, as if set forth in full herein, its answers to
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`79.
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`Paragraphs 1 through 26 above.
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`80.
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`Streetline admits that the title of U.S. Patent No. 6,437,692 (“the ’692 Patent”) is
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`“System And Method For Monitoring And Controlling Remote Devices” and that Plaintiffs
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`attached what purports to be a copy of the ’692 Patent as Exhibit 9 to the Second Amended
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`Complaint. Streetline is without knowledge or information to admit or deny the remaining
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`allegations of Paragraph 80 and therefore denies them.
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`81.
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`82.
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`Denied.
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`The allegations of Paragraph 82 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`83.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch. Thus,
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`no response is required. To the extent that a response is required, denied.
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`84.
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`Denied.
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`COUNT X
`INFRINGEMENT OF U.S. PATENT NO. 6,249,516
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`Streetline incorporates by reference, as if set forth in full herein, its answers to
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`85.
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`Paragraphs 1 through 26 above.
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`86.
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`Streetline admits that the title of U.S. Patent No. 6,249,516 (“the ’516 Patent”) is
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`“Wireless Network Gateway and Method for Providing Same” and that Plaintiffs attached what
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`purports to be a copy of the ’516 Patent as Exhibit 10 to the Second Amended Complaint.
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`Streetline is without knowledge or information to admit or deny the remaining allegations of
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`Paragraph 86 and therefore denies them.
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`10
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 11 of 55 PageID #: 2308
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`87.
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`88.
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`Denied.
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`The allegations of Paragraph 88 call for a legal conclusion to which no response is
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`required, and on that basis, they are denied.
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`89.
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`On February 7, 2018, the Court dismissed Plaintiffs’ claims against Kapsch. Thus,
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`no response is required. To the extent that a response is required, denied.
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`90.
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`Denied.
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`PATENT STATUS
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`91.
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`Streetline is without knowledge or information to admit or deny the allegations of
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`Paragraph 91 and therefore denies them.
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`PRAYER FOR RELIEF
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`Streetline denies that Plaintiffs are entitled to any relief requested in their “Prayer for
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`Relief.”
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`AFFIRMATIVE DEFENSES
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`Without prejudice to the denials set forth in its Answer, Streetline alleges the following
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`affirmative defenses. Streetline reserves the right to add any additional defenses (including but
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`not limited to inequitable conduct) or counterclaims which may now exist or in the future may be
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`available based on discovery and further factual investigation in this action.
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`FIRST AFFIRMATIVE DEFENSE
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`(Failure to State a Claim)
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`The Second Amended Complaint fails to state a claim upon which relief may be granted.
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`11
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 12 of 55 PageID #: 2309
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`SECOND AFFIRMATIVE DEFENSE
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`(Non-Infringement)
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`Streetline has not infringed and does not infringe any claim of the U.S. Patent Nos.
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`8,908,842; 8,625,496; 8,233,471; 8,223,010; 7,697,492; 7,468,661; 7,103,511; 6,914,893;
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`6,437,692; and 6,249,516 (collectively, “the Asserted Patents”).
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`THIRD AFFIRMATIVE DEFENSE
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`(Invalidity)
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`The claims of the Asserted Patents are invalid and unenforceable because they fail to
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`satisfy one or more conditions for patentability as set forth in 35 U.S.C. § 101 et seq., including,
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`without limitation, sections 102, 103, and/or 112.
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`FOURTH AFFIRMATIVE DEFENSE
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`(Prosecution History Estoppel)
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`The claims of the Asserted Patents are subject to the doctrine of prosecution history
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`estoppel based on statements, representations, and admissions made during prosecution of the
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`Asserted Patents and/or any related patent applications such that no claim thereof covers the
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`products accused in the Second Amended Complaint.
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`FIFTH AFFIRMATIVE DEFENSE
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`(Damages Limited by Statute)
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`Plaintiffs’ claims for damages are statutorily limited by 35 U.S.C. §§ 286 and/or 287, and
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`Plaintiffs are barred by 35 U.S.C. § 288 from recovering costs associated with this action.
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`SIXTH AFFIRMATIVE DEFENSE
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`(Remedies Limited by Statute)
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`Plaintiffs’ remedies are limited by 28 U.S.C. § 1498(a).
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`12
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 13 of 55 PageID #: 2310
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`SEVENTH AFFIRMATIVE DEFENSE
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`(Laches, Waiver, Estoppel)
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`The claims alleged in the Second Amended Complaint are barred, in whole or in part, by
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`the doctrines of waiver, laches, and/or estoppel.
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`COUNTERCLAIMS
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`Pursuant to Rule 13 of the Federal Rules of Civil Procedure, Defendant and
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`Counterclaim-Plaintiff Streetline, Inc. (“Streetline”) for its counterclaims against Plaintiffs and
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`Counterclaim-Defendants SIPCO, LLC, (“SIPCO”) and IP CO., LLC (“IPCO”) (collectively,
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`“Counterclaim-Defendants”), alleges as follows:
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`PARTIES
`
`1.
`
`Streetline is a corporation organized under the laws of Delaware, with its
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`principal place of business located at 1200 Park Place, San Mateo, CA 94403.
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`2.
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`SIPCO alleges that it is a limited liability company organized and existing under
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`the laws of the State of Georgia, and having a principal office at 2600 Abbey Court, Alpharetta,
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`Georgia, 30004.
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`3.
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`IPCO alleges that it is a limited liability company organized and existing under
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`the laws of the State of Georgia and having its principal office at 8215 Roswell Road, Building
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`900, Suite 950, Atlanta, Georgia 30350.
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`JURISDICTION AND VENUE
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`4.
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`This Court has subject matter jurisdiction over these Counterclaims pursuant to 28
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`U.S.C. §§ 1331, 1338, 2201, and 2202.
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`13
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 14 of 55 PageID #: 2311
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`5.
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`This Court has personal jurisdiction over Counterclaim-Defendants because
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`Counterclaim-Defendants have submitted themselves to the jurisdiction of this Court by
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`asserting the instant action against Streetline in this District.
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`6.
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`Venue in this Court is proper inasmuch as these Counterclaims arise out of the
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`claim of infringement made by SIPCO and IPCO in this District and SIPCO and IPCO have
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`asserted that venue is proper in this District.
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`7.
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`On June 30, 2017, Counterclaim-Defendants filed their Second Amended
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`Complaint for Patent Infringement (“Second Amended Complaint”) alleging, among other
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`things, that Streetline infringes claims of U.S. Patent Nos. 8,908,842 (the ’842 Patent); 8,625,496
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`(“the ’496 Patent”); 8,233,471 (“the ’471 Patent”); 8,223,010 (“the ’010 Patent); 7,697,492 (“the
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`’492 Patent”); 7,468,661(“the ’661 Patent”); 7,103,511 (“the ’511 Patent”); 6,914,893 (“the ’893
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`Patent”); 6,437,692 (“the ’692 Patent”); and 6,249,516 (“the ’516 Patent”) (collectively, “the
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`Asserted Patents”).
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`COUNT I
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`(Declaratory Judgment of Invalidity of U.S. Patent No. 8,908,842)
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`8.
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`Streetline restates and incorporates by reference the allegations in its Answer and
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`Affirmative Defenses and paragraphs 1-7 of these Counterclaims as if fully set forth herein.
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`9.
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`An actual case or controversy exists between Streetline and SIPCO/IPCO as to
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`whether or not the ’842 Patent is invalid.
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`10.
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`At least claim 16 of the ’842 Patent is invalid because it fails to satisfy conditions
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`for patentability specified in 35 U.S.C. § 101 et seq., including, without limitation sections 102,
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`103, and/or 112, because the alleged invention of the ’842 Patent is taught by, suggested by,
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`14
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`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 15 of 55 PageID #: 2312
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`and/or anticipated or obvious in view of the prior art, is not enabled, is indefinite, and/or is
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`unsupported by the written description of the patented invention.
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`11.
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`Claim 16 of the ’842 Patent claims:
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`A device for communicating information, the device comprising:
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`a processor; and
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`a memory, the memory comprising logical instructions that when executed by the processor are
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`configured to cause the device to:
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`wirelessly transmit a signal comprising instruction data for delivery to a network of addressable
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`low-power transceivers;
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`establish a communication link between at least one low-power transceiver in the network of
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`addressable low-power transceivers and a central location based on an address included in the
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`signal, the communication link comprising one or more low-power transceivers in the network of
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`addressable low-power transceivers; and
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`receive one or more low-power RF signals and communicate information contained within the
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`signals to the central location along with a unique transceiver identification number over the
`
`communication link.
`
`12.
`
`For example, at least claim 16 of the ’842 Patent is taught by, suggested by,
`
`and/or anticipated or obvious in view of, at least, U.S. Pat. No. 5,157,687 to Tymes (“Tymes”).
`
`13.
`
`On July 18, 2016, Emerson Electric Co. (“Emerson”) filed a petition for covered
`
`business method patent review of claims 1, 7, 9, 16 and 17 of the ’842 Patent on the following
`
`grounds: (1) § 101 for ineligible subject matter; (2) § 103 obvious over Robert E. Kahn, et al,
`
`“Advances in Packet Radio Technology,” 66 Proc. IEEE 1468 (1978) (“Kahn”); (3) § 103
`
`obvious over Kahn in view of Burchfiel, J., et al., Functions and Structure of a Packet Radio
`
`15
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`

`

`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 16 of 55 PageID #: 2313
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`Station, AFIPS National Computer Conference (1975) (Cornell University) (“Burchfiel”); (4) §
`
`103 obvious over Tymes; and (5) § 112 lack of written description. Emerson Electric Co. v.
`
`SIPCO, LLC, CBM2016-00095, Petition, Paper No. 2 at 16 (PTAB July 18, 2016).
`
`14.
`
`On January 23, 2017, the Patent Trial and Appeal Board (“PTAB”) instituted a
`
`covered business method review on claims 1, 7, 9, 16, and 17 of the ’842 Patent on the following
`
`grounds: § 101, § 112, and § 103 obvious over Tymes. Id. at Decision, Paper No. 12 at 50-51
`
`(PTAB Jan. 23, 2017).
`
`15.
`
`On January 16, 2018, in a Final Written Decision, the PTAB ruled, among other
`
`things, that claims 1, 7, 9, 16, and 17 of the ’842 Patent are invalid and/or unenforceable under
`
`35 U.S.C. §§ 101 and 103, in view of Tymes. Id., Final Written Decision, Paper No. 39 (PTAB
`
`Jan. 16, 2018).
`
`16.
`
`On February 28, 2018, SIPCO filed a notice of appeal. CBM2016-00095 is
`
`currently on appeal at the Court of Appeals for the Federal Circuit.
`
`17.
`
`For at least the reasons discussed above, those in Emerson’s petition for covered
`
`business method review, those in the PTAB’s decision instituting covered business method
`
`review, and the reasons cited in the PTAB’s Final Written Decision, which are hereby
`
`incorporated by reference, at least claim 16 of the ’842 Patent is invalid.
`
`18.
`
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
`
`Streetline requests a declaration of the Court that the ’842 Patent is invalid because it fails to
`
`satisfy conditions for patentability specified in 35 U.S.C. § 101 et seq., including without
`
`limitation, sections 101, 102, 103, and/or 112, because the alleged invention of the ’842 Patent
`
`lacks utility, is taught by, suggested by, and/or anticipated or obvious in view of the prior art, is
`
`not enabled, is indefinite, and/or is unsupported by the written description of the alleged patented
`
`16
`
`

`

`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 17 of 55 PageID #: 2314
`
`invention, and no claim of the ’842 Patent can be validly construed to cover any of Streetline’s
`
`products.
`
`COUNT II
`
`(Declaratory Judgment of Invalidity of U.S. Patent No. 8,625,496)
`
`19.
`
`Streetline restates and incorporates by reference the allegations in its Answer and
`
`Affirmative Defenses and paragraphs 1-18 of these Counterclaims as if fully set forth herein.
`
`20.
`
`An actual case or controversy exists between Streetline and SIPCO/IPCO as to
`
`whether or not the ’496 Patent is invalid.
`
`21.
`
`At least claim 27 of the ’496 Patent is invalid because it fails to satisfy conditions
`
`for patentability specified in 35 U.S.C. § 101 et seq., including, without limitation sections 102,
`
`103, and/or 112, because the alleged invention is taught by, suggested by, and/or anticipated or
`
`obvious in view of the prior art, is not enabled, is indefinite, and/or is unsupported by the written
`
`description of the patented invention.
`
`22.
`
`Claim 27 of the ’496 Patent claims:
`
`In a wireless system comprising a plurality of second nodes and a first node configured to
`
`implement a first node process, the first node process including receiving data packets via a first
`
`node wireless radio, sending data packets via said wireless radio, communicating with a network,
`
`performing node link tree housekeeping functions, maintaining a second node link tree having
`
`second node link entries representing each of the plurality of second nodes, dynamically
`
`updating the tree to reflect the current operational status of the second nodes, and rerouting data
`
`packets around inactive or malfunctioning second nodes, a second node in the plurality of second
`
`nodes, the second node configured to implement a second node process including:
`
`sending and receiving data packet via a second node wireless radio;
`
`17
`
`

`

`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 18 of 55 PageID #: 2315
`
`maintaining a send/receive data buffer in a digital memory; and
`
`selecting a link to the first node that is one of a direct link to the first node and an indirect link to
`
`the first node through at least one of the remainder of the plurality of second nodes.
`
`23.
`
`For example, at least claim 27 of the ’496 Patent is taught by, suggested by,
`
`and/or anticipated or obvious in view of, at least, Burchfiel in view of Gitman, I., et al., Routing
`
`in Packet-Switching Broadcast radio Networks, IEEE Transactions on Communications (1976)
`
`(“Gitman”).
`
`24.
`
`Burchfiel discloses a packet radio network, e.g., wireless system, that comprises a
`
`first node, e.g., stations, and second nodes, e.g., repeaters or terminals, to exchange data packets.
`
`The disclosed network relies on the stations to initialize the network and construct a connectivity
`
`matrix, or second node link tree, which maintains information about which repeaters are in direct
`
`communication with the station. The connectivity matrix is used to determine routing parameters
`
`given to the repeaters and is stored within a connection table at the station. Burchfiel teaches that
`
`dynamic routing changes are performed locally within the packet radio network by permitting a
`
`repeater to specify an alternate address for the next hop after some number of unsuccessful
`
`attempts to forward the packet along its specified route. Burchfiel also discloses that persistent
`
`alternative routing of packets signals that a repeater or station has failed and the station detecting
`
`it must reconfigure the packet radio network to route all traffic around the failed element.
`
`25.
`
`Burchfiel further discloses implementing in each of a plurality of second nodes, or
`
`repeaters, a second node process that includes sending and receiving data packets, maintaining a
`
`send/receive data buffer in digital memory, and selecting a link to the first node that is one of a
`
`direct link to the first node and an indirect link to the first node through at least one of the
`
`remainder of the plurality of second nodes.
`
`18
`
`

`

`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 19 of 55 PageID #: 2316
`
`26.
`
`Gitman discloses a search protocol used by a repeater when encountering
`
`blocking. Gitman teaches that repeaters select the label of a node to reroute a packet, and teaches
`
`that the label of a repeater defines the complete path between the station and a repeater.
`
`27.
`
`It would have been obvious to a person of ordinary skill in the art to combine the
`
`teachings of Burchfiel and Gitman.
`
`28.
`
`On or about November 9, 2016, Emerson filed a petition for inter partes review
`
`(“IPR”) of claims 21-24, 37-39 and 45 of the ’496 Patent. See Emerson Electric Co. v. IPCO,
`
`LLC, IPR2017-00213, Petition, Paper No. 2 (PTAB Nov. 9, 2016).
`
`29.
`
`On or about May 15, 2017, the PTAB instituted IPR on claims 21-24, 37-39 and
`
`45 of the ’496 Patent on the following grounds: (1) claims 21, 22, 24, 37, 38, and 45 as
`
`unpatentable under § 103 as obvious over Burchfiel and Gitman, and (2) claims 23 and 39 as
`
`unpatentable under § 103 as obvious over Burchfiel, Gitman, and Kahn, R., The Organization of
`
`Computer Resources into a Packet Radio Network, National Computer Conference (1975)
`
`(“Kahn75”). Id. at Decision, Paper No. 13 at 23-24 (PTAB May 15, 2017).
`
`The IPR is currently pending.
`
`Claims 24 and 37 of the ’496 Patent are substantially similar to claim 27 of the
`
`30.
`
`31.
`
`’496 Patent.
`
`32.
`
`For at least the reasons discussed above, those in Emerson’s petition for IPR, and
`
`those in the PTAB’s decision instituting IPR, which are hereby incorporated by reference, at
`
`least claim 27 of the ’496 Patent is invalid in view of Burchfiel and Gitman.
`
`33.
`
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
`
`Streetline requests a declaration of the Court that the ’496 Patent is invalid because it fails to
`
`satisfy conditions for patentability specified in 35 U.S.C. § 101 et seq., including without
`
`19
`
`

`

`Case 1:16-cv-00830-RGA Document 39 Filed 03/26/18 Page 20 of 55 PageID #: 2317
`
`limitation, sections 101, 102, 103, and/or 112, because the alleged invention of the ’496 Patent
`
`lacks utility, is taught by, suggested by, and/or anticipated or obvious in view of the prior art, is
`
`not enabled, is indefinite, and/or is unsupported by the written description of the alleged patented
`
`invention, and no claim of the ’496 Patent can be validly construed to cover any of Streetline’s
`
`products.
`
`COUNT III
`
`(Declaratory Judgment of Invalidity of U.S. Pat. No. 8,233,471)
`
`34.
`
`Streetline restates and incorporates by reference the allegations in its Answer and
`
`Affirmative Defenses and paragraphs 1-33 of these Counterclaims as if fully set forth herein.
`
`35.
`
`An actual case or controversy exists between Streetline and SIPCO/IPCO as to
`
`whether or not the ’471 Patent is invalid.
`
`36.
`
`At least claim 17 of the ’471 Patent is invalid because it fails to satisfy conditions
`
`for patentability specified in 35 U.S.C. § 101 et seq., including, without limitation sections 102,
`
`103,