Case: 1:13-cv-08413 Document #: 35 Filed: 01/27/14 Page 1 of 9 PageID #:186
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISON
`
`
`
`VELOCITY PATENT LLC,
`
`
`Plaintiff,
`
`v.
`
`
`MERCEDES-BENZ USA, LLC;
`MERCEDES-BENZ U.S.
`INTERNATIONAL, INC.
`
`
`
`
`Defendants.
`
`
`
`Civil Action No. 1:13-cv-08413
`
`
`
`Judge John W. Darrah
`Magistrate Judge Michael T. Mason
`
`
`
`
`
`DEFENDANT MERCEDES-BENZ USA, LLC’S
`ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIM
`TO PLAINTIFF’S COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendant Mercedes-Benz USA, LLC (“MBUSA”), by and through its undersigned
`
`
`
`
`
`
`
`
`
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`counsel, hereby submits its Answer, Affirmative Defenses, and Counterclaim (“Answer”) in
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`response to the Complaint (“Complaint”) of Velocity Patent LLC (“Velocity” or “Plaintiff”).
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`Except to the extent expressly admitted herein, MBUSA denies each and every allegation in the
`
`Complaint. The numbered paragraphs in the Answer correspond to the numbered paragraphs of
`
`the Complaint.
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`NATURE OF THE ACTION
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`1.
`
`MBUSA admits this action purports to state a civil action for patent infringement
`
`under the patent laws of the United States, 35 U.S.C. § 1 et seq.
`
`PARTIES
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`2.
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`MBUSA lacks knowledge or information sufficient to form a belief as to the truth
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`of the allegations contained in paragraph 2 of the Complaint, and, therefore, denies those
`
`allegations.
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`
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`1
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISON
`
`
`
`VELOCITY PATENT LLC,
`
`
`Plaintiff,
`
`v.
`
`
`MERCEDES-BENZ USA, LLC;
`MERCEDES-BENZ U.S.
`INTERNATIONAL, INC.
`
`
`
`
`Defendants.
`
`
`
`Civil Action No. 1:13-cv-08413
`
`
`
`Judge John W. Darrah
`Magistrate Judge Michael T. Mason
`
`
`
`
`
`DEFENDANT MERCEDES-BENZ USA, LLC’S
`ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIM
`TO PLAINTIFF’S COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendant Mercedes-Benz USA, LLC (“MBUSA”), by and through its undersigned
`
`
`
`
`
`
`
`
`
`
`counsel, hereby submits its Answer, Affirmative Defenses, and Counterclaim (“Answer”) in
`
`response to the Complaint (“Complaint”) of Velocity Patent LLC (“Velocity” or “Plaintiff”).
`
`Except to the extent expressly admitted herein, MBUSA denies each and every allegation in the
`
`Complaint. The numbered paragraphs in the Answer correspond to the numbered paragraphs of
`
`the Complaint.
`
`NATURE OF THE ACTION
`
`1.
`
`MBUSA admits this action purports to state a civil action for patent infringement
`
`under the patent laws of the United States, 35 U.S.C. § 1 et seq.
`
`PARTIES
`
`2.
`
`MBUSA lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations contained in paragraph 2 of the Complaint, and, therefore, denies those
`
`allegations.
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`1
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`Case: 1:13-cv-08413 Document #: 35 Filed: 01/27/14 Page 2 of 9 PageID #:187
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`3.
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`MBUSA admits that it is a Delaware limited liability company with its principal
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`place of business located at 1 Mercedes Drive, Montvale, New Jersey 07645.
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`4.
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`MBUSA admits that Mercedes-Benz U.S. International, Inc. is an Alabama
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`corporation with its principal place of business located at 1 Mercedes Drive, Vance, Alabama
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`35490.
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`5.
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`MBUSA admits that it markets and distributes Mercedes-Benz automobiles in the
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`United States.
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`JURISDICTION AND VENUE
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`6.
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`MBUSA admits that this purports to be an action for which subject matter
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`jurisdiction would be governed by 28 U.S.C. §§ 1331 and 1338(a).
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`7.
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`MBUSA admits that it is subject to personal jurisdiction in the Northern District
`
`of Illinois for this action. MBUSA denies the allegation that it has committed, or continues to
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`commit, acts of patent infringement.
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`8.
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`MBUSA admits that venue for this action is proper in the Northern District of
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`Illinois with respect to MBUSA. MBUSA does not admit that the Northern District of Illinois is
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`the most appropriate or convenient forum for this action. MBUSA denies the allegation that it
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`has committed, or continues to commit, acts of patent infringement.
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`THE PATENT-IN-SUIT
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`9.
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`MBUSA admits that a copy of U.S. Patent No. 5,954,781 (“the ‘781 patent”) is
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`attached to the Complaint as Exhibit A. MBUSA admits that this copy is entitled “METHOD
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`AND APPARATUS FOR OPTIMIZING VEHICLE OPERATION” and indicates that it is
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`issued on September 21, 1999. MBUSA denies that the ‘781 patent was duly and legally issued.
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`2
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`Case: 1:13-cv-08413 Document #: 35 Filed: 01/27/14 Page 3 of 9 PageID #:188
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`
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`10. MBUSA lacks knowledge or information sufficient to form a belief as to the truth
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`of the allegations contained in paragraph 10 of the Complaint, and, therefore, denies those
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`allegations.
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`COUNT I – INFRINGEMENT OF THE ‘781 PATENT
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`11. MBUSA incorporates by reference, as if fully set forth herein, its responses to
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`paragraphs 1-10 of the Complaint.
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`12. MBUSA admits that it sells automobiles with Collision Prevention Assist.
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`13. MBUSA admits that it sells automobiles with a display that provides information
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`regarding fuel.
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`14. MBUSA admits that it sells automobiles with automatic transmissions.
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`15. MBUSA denies the allegations contained in paragraph 15 of the Complaint.
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`16. MBUSA denies the allegations contained in paragraph 16 of the Complaint.
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`PRAYER FOR RELIEF
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`
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`Velocity is not entitled to any relief in this action, as prayed for or otherwise.
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`AFFIRMATIVE DEFENSES
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`MBUSA incorporates herein by reference the admissions, allegations, and denials
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`contained in its Answer above as if fully set forth herein. Without assuming any burden that it
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`would not otherwise bear and without reducing Velocity’s burden on any of the claims in the
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`Complaint, MBUSA states the following affirmative defenses to the claims in the Complaint.
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`MBUSA reserves the right to amend its affirmative defenses and to add additional affirmative
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`defenses, including, but not limited to, any defenses revealed during discovery.
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`FIRST AFFIRMATIVE DEFENSE
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`1.
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`The Complaint fails to state a claim upon which relief can be granted.
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`3
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`Case: 1:13-cv-08413 Document #: 35 Filed: 01/27/14 Page 4 of 9 PageID #:189
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`SECOND AFFIRMATIVE DEFENSE
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`2.
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`MBUSA has not infringed and is not infringing the ‘781 patent, either literally or
`
`under the doctrine of equivalents.
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`THIRD AFFIRMATIVE DEFENSE
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`
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`3.
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`The ‘781 patent and all of its claims are invalid and/or unenforceable for failing to
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`satisfy one or more requirements of the patent laws of the United States, 35 U.S.C. §§ 1 et seq.,
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`including, but not limited to, 35 U.S.C. §§ 101, 102, 103, and/or 112, and including, for example,
`
`based on U.S. Patent No. 4,631,515; U.S. Patent No. 4,901,701; and/or U.S. Patent No.
`
`5,708,584.
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`FOURTH AFFIRMATIVE DEFENSE
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`
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`4.
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`Based on claim amendments and representations made during prosecution of the
`
`patent applications that ultimately issued as the ‘781 patent, Plaintiff’s claims against MBUSA
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`are barred, in whole or in part, by the doctrine of prosecution history estoppel.
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`FIFTH AFFIRMATIVE DEFENSE
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`
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`5.
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`Velocity’s claims against MBUSA are barred, in whole or in part, by one or more
`
`of the doctrines of waiver, estoppel, laches and/or equitable acquiescence. Upon information and
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`belief, Velocity and the prior owners of the ‘781 patent unreasonably delayed filing an action
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`after Velocity and the prior owners of the ‘781 patent knew, or should have known, of the
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`allegedly infringing acts identified in the Complaint. Allowing Velocity to maintain this action
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`after such unreasonable delay would cause material prejudice to MBUSA.
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`SIXTH AFFIRMATIVE DEFENSE
`
`
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`6.
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`Velocity is barred, under 35 U.S.C. § 286, from recovering damages for any
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`alleged infringement of the ’781 patent that occurred more than six years prior to the filing of the
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`4
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`Case: 1:13-cv-08413 Document #: 35 Filed: 01/27/14 Page 5 of 9 PageID #:190
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`
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`Complaint in this action.
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`SEVENTH AFFIRMATIVE DEFENSE
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`
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`7.
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`To the extent that Velocity and/or any of its licensees under the ‘781 patent had or
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`has an obligation to mark and failed to do so, Velocity’s claims are barred, in whole or in part,
`
`under 35 U.S.C. § 287.
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`EIGHTH AFFIRMATIVE DEFENSE
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`
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`8.
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`Velocity’s claims are barred, in whole or in part, to the extent that any allegedly
`
`infringing products or components thereof are supplied, directly or indirectly, to MBUSA by any
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`entity or entities having an express or implied license to the ‘781 patent, and/or Velocity’s claims
`
`are barred, in whole or in part, under the doctrine of patent exhaustion.
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`COUNTERCLAIM
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`
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`MBUSA incorporates herein by reference the admissions, allegations, denials, and
`
`Affirmative Defenses contained in its Answer above as if fully set forth herein. For its
`
`counterclaims, MBUSA alleges, upon personal knowledge as to its own actions and upon
`
`information and belief as to the actions of Plaintiff, as follows:
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`NATURE OF THE ACTION
`
`
`
`1.
`
`This is a civil action arising under the patent laws of the United States, 35 U.S.C.
`
`§§ 1 et seq., for a declaratory judgment pursuant to 28 U.S.C. §§ 2201 and 2202 that U.S. Patent
`
`No. 5,954,781 (“the ‘781 patent”) has not been infringed and is not being infringed by MBUSA.
`
`PARTIES
`
`
`
`2.
`
`MBUSA is a Delaware limited liability company with its principal place of
`
`business in Montvale, New Jersey.
`
`
`
`5
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`
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`Case: 1:13-cv-08413 Document #: 35 Filed: 01/27/14 Page 6 of 9 PageID #:191
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`3.
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`Plaintiff’s Complaint alleges that Velocity is an Illinois limited liability
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`corporation with its principal place of business in Atherton, California.
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`JURISDICTION AND VENUE
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`
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`4.
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`This Court has subject matter jurisdiction over these counterclaims pursuant to 28
`
`U.S.C. §§ 1331, 1338(a), 2201, and 2202.
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`5.
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`Personal jurisdiction over Velocity is proper based on the commencement of this
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`action.
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`6.
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`Venue for MBUSA’s counterclaims is properly laid in this District pursuant to 28
`
`U.S.C. § 1391(b).
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`COUNTERCLAIM I
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF
`THE ‘781 PATENT
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`7.
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`MBUSA incorporates herein by reference the allegations in its Affirmative
`
`
`
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`Defenses and in paragraphs 1-6 above.
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`8.
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`9.
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`This counterclaim is for a declaratory judgment relating to the ‘781 patent.
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`This counterclaim arises under the patent laws of the United States, 35 U.S.C. §§
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`1 et seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, and a case of actual
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`controversy exists within the jurisdiction of this Court.
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`10.
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`Velocity has brought an infringement suit against MBUSA wrongfully alleging
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`that MBUSA has infringed the ‘781 patent, and will continue to infringe the ‘781 patent.
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`11. MBUSA has not infringed and is not infringing the ‘781 patent, either literally or
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`under the doctrine of equivalents.
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`12.
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`There is a justiciable controversy between MBUSA and Velocity as to the matters
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`asserted herein regarding the ‘781 patent.
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`6
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`Case: 1:13-cv-08413 Document #: 35 Filed: 01/27/14 Page 7 of 9 PageID #:192
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`13. MBUSA is entitled to a declaratory judgment that the claims of the ‘781 patent
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`have not been, and are not being, infringed.
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`PRAYER FOR RELIEF
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`WHEREFORE, counterclaimant MBUSA requests that this Court:
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`A.
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`Enter an Order dismissing the Complaint filed by Plaintiff Velocity in its entirety
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`
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`with prejudice;
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`B.
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`Enter a Declaratory Judgment in favor of MBUSA and against Velocity to the
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`effect that MBUSA has not infringed and is not infringing U.S. Patent No. 5,954,781;
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`C.
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`D.
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`Award MBUSA its costs in defending against the claims asserted by Velocity;
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`Enter an Order deeming this case exceptional and awarding MBUSA its
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`reasonable attorneys’ fees pursuant to 35 U.S.C. § 285; and
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`
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`E.
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`Award MBUSA such other and further relief as the Court may deem just and
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`appropriate.
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`7
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`Case: 1:13-cv-08413 Document #: 35 Filed: 01/27/14 Page 8 of 9 PageID #:193
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`Respectfully submitted,
`
`/s/ Steven A. Weiss
`
`One of the attorneys for Defendant
`Mercedes-Benz USA, LLC
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`
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`Dated: January 27, 2014
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`
`
`Steven A. Weiss (Weiss@sw.com)
`David L. DeBruin (DeBruin@sw.com)
`Anand C. Mathew (Mathew@sw.com)
`SCHOPF & WEISS LLP
`One South Wacker Drive, 28th Floor
`Chicago, Illinois 60606
`312.701.9300
`
`Admitted Pro Hac Vice
`Raymond A. Kurz
`Celine Jimenez Crowson
`Robert J. Weinschenk
`HOGAN LOVELLS US LLP
`Columbia Square
`555 Thirteenth Street, NW
`Washington, D.C. 20004
`202.637.5600
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`8
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`Case: 1:13-cv-08413 Document #: 35 Filed: 01/27/14 Page 9 of 9 PageID #:194
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`CERTIFICATE OF SERVICE
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`I, Steven A. Weiss, an attorney, hereby certify that on January 27, 2014, I electronically
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`filed the foregoing using the Court’s CM/ECF system, which will automatically send electronic
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`notification of such filing to all attorneys on record in this matter.
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`/s/ Steven A. Weiss
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`9
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