throbber
Case 2:22-md-03034-TGB ECF No. 63, PageID.2264 Filed 08/24/22 Page 1 of 19
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHICAN
`SOUTHERN DIVISION
`
`IN RE NEO WIRELESS, LLC,
`
`PATENT LITIG.
`
`NEO WIRELESS, LLC,
`
`Plaintiff,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`TOYOTA MOTOR NORTH AMERICA,
`INC., TOYOTA MOTOR SALES, U.S.A.,
`INC., & TOYOTA MOTOR ENGINEERING
`& MANUFACTURING NORTH
`AMERICA, INC., & TOYOTA MOTOR
`CREDIT CORPORATION
`
`Defendants.
`
`NO. 2:22-MD-03034-TGB
`
`HON. TERRENCE G. BERG
`
`NO. 2:22-CV-11406-TGB
`
`HON. TERRENCE G. BERG
`
`JURY TRIAL DEMANDED
`
`DEFENDANTS’ ANSWER AND AFFIRMATIVE DEFENSES TO PLAINTIFF’S FIRST
`AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendants Toyota Motor Corporation (“TMC”), Toyota Motor North America, Inc.
`
`(“TMNA”), Toyota Motor Sales, U.S.A., Inc. (“TMS”), Toyota Motor Engineering &
`
`Manufacturing North America, Inc. (“TEMA”), and Toyota Motor Credit Corporation
`
`(“TMCC”) (collectively, “Toyota”) answer and assert defenses to the First Amended Complaint
`
`for Patent Infringement (“First Amended Complaint”) filed by Plaintiff Neo Wireless, LLC on
`
`June 24, 2022.
`
`EAST/194818918
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`1
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`

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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2265 Filed 08/24/22 Page 2 of 19
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`THE PARTIES
`
`1.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 1 of the First Amended Complaint and therefore denies them.
`
`2.
`
`Toyota Motor Corporation admits that it is a corporation organized and existing
`
`under the laws of Japan, with a place of business at 1 Toyota-Cho, Toyota City, Aichi Prefecture,
`
`471-8571, Japan. Toyota denies the remaining allegations of Paragraph 2 of the First Amended
`
`Complaint.
`
`3.
`
`Toyota Motor North America, Inc. admits that it is a corporation organized and
`
`existing under the laws of California with its principal place of business at 6565 Headquarters
`
`Drive, Plano, Texas, 75024. TMNA admits that its registered agent is CT Corporation System, at
`
`1999 Bryan Street, Suite 900, Dallas, Texas, 75201. Toyota denies the remaining allegations of
`
`Paragraph 3 of the First Amended Complaint.
`
`4.
`
`Toyota Motor Sales, U.S.A., Inc. admits that it is a corporation organized under the
`
`laws of California with its principal place of business at 6565 Headquarters Drive, Plano, Texas
`
`75024. TMS admits that its registered agent is CT Corporation System, at 1999 Bryan Street, Suite
`
`900, Dallas, Texas, 75201. Toyota denies the remaining allegations of Paragraph 4 of the First
`
`Amended Complaint.
`
`5.
`
`Toyota Motor Engineering & Manufacturing North America, Inc. admits that it is
`
`a corporation organized and existing under the laws of the State of Kentucky with its principal
`
`place of business at 6565 Headquarters Drive, Plano, Texas 75024. TEMA admits that its
`
`registered agent is CT Corporation System, at 1999 Bryan Street, Suite 900, Dallas, Texas, 75201.
`
`Toyota denies the remaining allegations of Paragraph 5 of the First Amended Complaint.
`
`2
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2266 Filed 08/24/22 Page 3 of 19
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`6.
`
`Toyota Motor Credit Corporation admits that it is a corporation organized and
`
`existing under the laws of the State of California with its principal place of business at 6565
`
`Headquarters Drive, Plano, Texas 75024. TMCC admits that its registered agent is CT Corporation
`
`System, at 1999 Bryan Street, Suite 900, Dallas, Texas, 75201. Toyota denies the remaining
`
`allegations of Paragraph 6 of the First Amended Complaint.
`
`JURISDICTION AND VENUE
`
`7.
`
`8.
`
`9.
`
`Admitted.
`
`Admitted.
`
`Paragraph 9 contains legal conclusions to which no response is required. To the
`
`extent a response is required, for the purposes of this action only, Toyota does not dispute that
`
`venue is proper in this District. Toyota denies all remaining allegations in Paragraph 9.
`
`10.
`
`Paragraph 10 contains legal conclusions to which no response is required. To the
`
`extent a response is required, for the purposes of this action only, Toyota does not dispute that
`
`venue is proper in this District. Toyota denies all remaining allegations in Paragraph 10.
`
`11.
`
`Paragraph 11 contains legal conclusions to which no response is required. To the
`
`extent a response is required, for the purposes of this action only, Toyota does not contest personal
`
`jurisdiction. Toyota denies all remaining allegations in Paragraph 11.
`
`12.
`
`Paragraph 12 contains legal conclusions to which no response is required. To the
`
`extent a response is required, for the purposes of this action only, Toyota does not contest personal
`
`jurisdiction. Toyota denies all remaining allegations in Paragraph 12.
`
`3
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2267 Filed 08/24/22 Page 4 of 19
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`13.
`
`Paragraph 13 contains legal conclusions to which no response is required. To the
`
`extent a response is required, for the purposes of this action only, Toyota does not contest personal
`
`jurisdiction. Toyota denies all remaining allegations in Paragraph 13.
`
`14.
`
`Paragraph 14 contains legal conclusions to which no response is required. To the
`
`extent a response is required, for the purposes of this action only, Toyota does not contest personal
`
`jurisdiction. Toyota denies all remaining allegations in Paragraph 14.
`
`15.
`
`Paragraph 15 contains legal conclusions to which no response is required. To the
`
`extent a response is required, for the purposes of this action only, Toyota does not contest personal
`
`jurisdiction. Toyota denies all remaining allegations in Paragraph 15.
`
`16.
`
`Paragraph 16 contains legal conclusions to which no response is required. To the
`
`extent a response is required, for the purposes of this action only, Toyota does not contest personal
`
`jurisdiction. Toyota denies all remaining allegations in Paragraph 16.
`
`17.
`
`Paragraph 17 contains legal conclusions to which no response is required. To the
`
`extent a response is required, for the purposes of this action only, Toyota does not contest personal
`
`jurisdiction. Toyota denies all remaining allegations in Paragraph 17.
`
`18.
`
`Paragraph 18 contains legal conclusions to which no response is required. To the
`
`extent a response is required, for the purposes of this action only, Toyota does not contest personal
`
`jurisdiction. Toyota denies all remaining allegations in Paragraph 18.
`
`THE ASSERTED PATENTS
`
`The ’366 Patent
`
`19.
`
`Toyota admits that U.S. Patent No. 8,467,366 (“the ’366 patent”) was issued on
`
`June 18, 2013 and is titled “Methods and Apparatus for Random Access in Multi-Carrier
`
`4
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`

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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2268 Filed 08/24/22 Page 5 of 19
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`Communication Systems.” Toyota admits that Exhibit 1 to the First Amended Complaint appears
`
`to be a copy of the ’366 patent. Toyota denies all remaining allegations in Paragraph 19.
`
`20.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 20 of the First Amended Complaint and therefore denies them.
`
`21.
`
`Denied.
`
`The ’908 Patent
`
`22.
`
`Toyota admits that U.S. Patent No. 10,833,908 (“the ’908 patent”) was issued on
`
`April 17, 2018 and is titled “Channel Probing Signal for a Broadband Communication System.”
`
`Toyota admits that Exhibit 2 to the First Amended Complaint appears to be a copy of the ’908
`
`patent. Toyota denies all remaining allegations in Paragraph 22.
`
`23.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 23 of the First Amended Complaint and therefore denies them.
`
`24.
`
`Denied.
`
`The ’941 Patent
`
`25.
`
`Toyota admits that U.S. Patent No. 10,075,941 (“the ’941 patent”) was issued on
`
`September 11, 2018 and is titled “Methods and Apparatus for Multi-Carrier Communication
`
`Systems with Adaptive Transmission and Feedback.” Toyota admits that Exhibit 3 to the First
`
`Amended Complaint appears to be a copy of the ’941 patent. Toyota denies all remaining
`
`allegations in Paragraph 25.
`
`26.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 26 of the First Amended Complaint and therefore denies them.
`
`27.
`
`Denied.
`
`5
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2269 Filed 08/24/22 Page 6 of 19
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`The ’450 Patent
`
`28.
`
`Toyota admits that U.S. Patent No. 10,447,450 (“the ’450 patent”) was issued on
`
`October 15, 2019 and is titled “Method and System for Multi-Carrier Communication with
`
`Reduced Overhead.” Toyota admits that Exhibit 4 to the First Amended Complaint appears to be
`
`a copy of the ’450 patent. Toyota denies all remaining allegations in Paragraph 28.
`
`29.
`
`Toyota lacks sufficient knowledge and information to admit or deny the
`
`allegations in Paragraph 29 of the First Amended Complaint and therefore denies them.
`
`30.
`
`Denied.
`
`The ’512 Patent
`
`31.
`
`Toyota admits that U.S. Patent No. 10,965,512 (“the ’512 patent”) was issued on
`
`March 30, 2021 and is titled “Method and Apparatus Using Cell-Specific and Common Pilot
`
`Subcarriers in Multi-Carrier, Multi Cell Wireless Communication Networks.” Toyota admits that
`
`Exhibit 5 to the First Amended Complaint appears to be a copy of the ’512 patent. Toyota denies
`
`all remaining allegations in Paragraph 31.
`
`32.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 32 of the First Amended Complaint and therefore denies them.
`
`33.
`
`Denied.
`
`The ’302 Patent
`
`34.
`
`Toyota admits that U.S. Patent No. 10,771,302 (“the ’302 patent”) was issued on
`
`September 8, 2020 and is titled “Channel Proving Signal for a Broadband Communication
`
`System.” Toyota admits that Exhibit 6 to the First Amended Complaint appears to be a copy of the
`
`’302 patent. Toyota denies all remaining allegations in Paragraph 34.
`
`6
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2270 Filed 08/24/22 Page 7 of 19
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`35.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 35 of the First Amended Complaint and therefore denies them.
`
`36.
`
`37.
`
`Denied.
`
`Denied.
`
`FACTUAL ALLEGATIONS
`
`38.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 38 of the First Amended Complaint and therefore denies them.
`
`39.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 39 of the First Amended Complaint and therefore denies them.
`
`40.
`
` Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 40 of the First Amended Complaint and therefore denies them.
`
`41.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 41 of the First Amended Complaint and therefore denies them.
`
`42.
`
`43.
`
`Denied.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 43 of the First Amended Complaint and therefore denies them.
`
`44.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 44 of the First Amended Complaint and therefore denies them.
`
`45.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 45 of the First Amended Complaint and therefore denies them.
`
`7
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`EAST/194818918
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2271 Filed 08/24/22 Page 8 of 19
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`46.
`
`Toyota admits that certain Toyota-branded and Lexus-branded vehicles have 4G
`
`LTE capabilities. Toyota lacks sufficient knowledge and information to admit or deny the
`
`remaining allegations in Paragraph 46 of the First Amended Complaint and therefore denies them.
`
`47.
`
`Toyota admits that certain Toyota-branded and Lexus-branded vehicles have 4G
`
`LTE connectivity and its Connected Services. Toyota denies the remaining allegations in
`
`Paragraph 47 of the First Amended Complaint.
`
`48.
`
`Toyota admits that the Toyota App is compatible with certain Toyota-branded
`
`vehicles and that available features vary by vehicle and subscription type. Toyota denies the
`
`remaining allegations in Paragraph 48 of the First Amended Complaint.
`
`49.
`
`50.
`
`Denied.
`
`Toyota admits that certain Toyota-branded and Lexus-branded vehicles have 4G
`
`LTE connectivity and its Connected Services. Toyota denies the remaining allegations in
`
`Paragraph 50 of the First Amended Complaint.
`
`51.
`
`Toyota admits that certain Toyota-branded and Lexus-branded vehicles have 4G
`
`LTE connectivity and its Connected Services. Toyota denies the remaining allegations in
`
`Paragraph 51 of the First Amended Complaint.
`
`52.
`
`Toyota admits that certain Toyota-branded and Lexus-branded vehicles have 4G
`
`LTE connectivity and its Connected Services. Toyota denies the remaining allegations in
`
`Paragraph 52 of the First Amended Complaint.
`
`53.
`
`Toyota lacks sufficient knowledge and information to admit or deny the allegations
`
`in Paragraph 53 of the First Amended Complaint and therefore denies them.
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`8
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2272 Filed 08/24/22 Page 9 of 19
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`54.
`
`Toyota denies that Neo Wireless provided Toyota with actual notice of Neo
`
`Wireless’s allegation of Toyota’s infringement prior to the filing of this lawsuit. Toyota lacks
`
`sufficient knowledge and information to admit or deny the remaining allegations in Paragraph 54
`
`of the First Amended Complaint and therefore denies them.
`
`55.
`
`Denied.
`
`TOYOTA’S [ALLEGED] ACTS OF PATENT INFRINGEMENT
`
`56.
`
`Toyota incorporates its responses to Paragraphs 1 through 55 by reference as if fully
`
`set forth herein.
`
`57.
`
`58.
`
`59.
`
`60.
`
`61.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Toyota admits that TMC owns and operates the Toyota Motor Corporation Official
`
`Global Website Toyota denies the remaining allegations in Paragraph 61 of the First Amended
`
`Complaint.
`
`62.
`
`Toyota admits that in 2017 it created the “One Toyota” initiative. Toyota denies the
`
`remaining allegations in Paragraph 62 of the First Amended Complaint.
`
`63.
`
`Toyota admits that in 2017 it created the “One Toyota” initiative. Toyota denies the
`
`remaining allegations in Paragraph 63 of the First Amended Complaint.
`
`64.
`
`65.
`
`66.
`
`Denied.
`
`Denied.
`
`Denied.
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`EAST/194818918
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`9
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`

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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2273 Filed 08/24/22 Page 10 of 19
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`67.
`
`68.
`
`69.
`
`70.
`
`Denied.
`
`Denied.
`
`Denied.
`
`On information and belief, Toyota admits that TMNA received a letter addressed
`
`to Mr. Fujimoto with an attached table of patents from Neo Wireless on or about December 1,
`
`2021. Toyota denies the remaining allegations in Paragraph 70 of the First Amended Complaint.
`
`71.
`
`Toyota admits that TMS was served with the Complaint in this action and that
`
`TMCC waived service of the Amended Complaint. Toyota denies that any entity other than
`
`TMNA can be deemed to have received the November 2021 letter “by virtue of the One Toyota
`
`initiative.” Toyota denies the remaining allegations in Paragraph 71 of the First Amended
`
`Complaint.
`
`72.
`
`73.
`
`74.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT ONE: [ALLEGED] INFRINGEMENT OF THE ’366 PATENT
`
`75.
`
`Toyota incorporates its responses to the allegations of all of the foregoing
`
`paragraphs as if fully set forth herein.
`
`76.
`
`77.
`
`Denied.
`
`Toyota admits that certain Toyota-branded and Lexus-branded vehicles have 4G
`
`LTE connectivity and its Connected Services. Toyota denies the remaining allegations in
`
`Paragraph 77 of the First Amended Complaint.
`
`78.
`
`Denied.
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`10
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2274 Filed 08/24/22 Page 11 of 19
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`79.
`
`80.
`
`81.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT TWO: [ALLEGED] INFRINGEMENT OF THE ’908 PATENT
`
`82.
`
`Toyota incorporates its responses to the allegations of all of the foregoing
`
`paragraphs as if fully set forth herein.
`
`83.
`
`84.
`
`Denied.
`
`Toyota admits that certain Toyota-branded and Lexus-branded vehicles have 4G
`
`LTE connectivity and its Connected Services. Toyota denies the remaining allegations in
`
`Paragraph 84 of the First Amended Complaint.
`
`85.
`
`86.
`
`87.
`
`88.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT THREE: [ALLEGED] INFRINGEMENT OF THE ’941 PATENT
`
`89.
`
`Toyota incorporates its responses to the allegations of all of the foregoing
`
`paragraphs as if fully set forth herein.
`
`90.
`
`91.
`
`Denied.
`
`Toyota admits that certain Toyota-branded and Lexus-branded vehicles have 4G
`
`LTE connectivity and its Connected Services. Toyota denies the remaining allegations in
`
`Paragraph 91 of the First Amended Complaint.
`
`92.
`
`Denied.
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`EAST/194818918
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2275 Filed 08/24/22 Page 12 of 19
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`93.
`
`94.
`
`95.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT FOUR: [ALLEGED] INFRINGEMENT OF THE ’450 PATENT
`
`96.
`
`Toyota incorporates its responses to the allegations of all of the foregoing
`
`paragraphs as if fully set forth herein.
`
`97.
`
`98.
`
`Denied.
`
`Toyota admits that certain Toyota-branded and Lexus-branded vehicles have 4G
`
`LTE connectivity and its Connected Services. Toyota denies the remaining allegations in
`
`Paragraph 98 of the First Amended Complaint.
`
`99.
`
`Denied.
`
`100. Denied.
`
`101. Denied.
`
`102. Denied.
`
`COUNT FIVE: [ALLEGED] INFRINGEMENT OF THE ’512 PATENT
`
`103.
`
`Toyota incorporates its responses to the allegations of all of the foregoing
`
`paragraphs as if fully set forth herein.
`
`104. Denied.
`
`105.
`
`Toyota admits that certain Toyota-branded and Lexus-branded vehicles have 4G
`
`LTE connectivity and its Connected Services. Toyota denies the remaining allegations in
`
`Paragraph 105 of the First Amended Complaint.
`
`106. Denied.
`
`107. Denied.
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`EAST/194818918
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`12
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2276 Filed 08/24/22 Page 13 of 19
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`108. Denied.
`
`109. Denied.
`
`COUNT SIX: [ALLEGED] INFRINGEMENT OF THE ’302 PATENT
`
`110.
`
`Toyota incorporates its responses to the allegations of all of the foregoing
`
`paragraphs as if fully set forth herein.
`
`111. Denied.
`
`112.
`
`Toyota admits that certain Toyota-branded and Lexus-branded vehicles have 4G
`
`LTE connectivity and its Connected Services. Toyota denies the remaining allegations in
`
`Paragraph 112 of the First Amended Complaint.
`
`113. Denied.
`
`114. Denied.
`
`115. Denied.
`
`116. Denied.
`
`RESPONSE TO PLAINTIFF’S PRAYER FOR RELIEF
`
`Toyota denies the allegations contained in Plaintiff’s Prayer for Relief and further denies
`
`that Plaintiff is entitled to any relief whatsoever, including any of the relief sought in paragraphs
`
`a-g of Plaintiff’s Prayer for Relief. Plaintiff’s Prayer for Relief should, therefore, be denied in its
`
`entirety and with prejudice, and Plaintiff should take nothing.
`
`TOYOTA’S DEFENSES
`
`Upon information and belief, and subject to its responses above, Toyota asserts the
`
`following defenses in response to the allegations of the First Amended Complaint, without
`
`admitting or acknowledging that Toyota bears the burden of proof as to any of them or that any
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2277 Filed 08/24/22 Page 14 of 19
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`must be pleaded as defenses. Regardless of how such defenses are listed herein, Toyota undertakes
`
`the burden of proof only as to those defenses that are deemed affirmative defenses as a matter of
`
`law. Toyota expressly reserves the right to amend or raise additional defenses pursuant to any
`
`docket control order or additional information becomes available through further investigation and
`
`discovery.
`
`Toyota incorporates by reference the factual background recited infra in Paragraphs 1
`
`through 116.
`
`FIRST DEFENSE
`(Failure to State a Claim)
`
`The First Amended Complaint fails to state a claim upon which relief can be granted and/or
`
`sufficient to constitute a cause of action against Toyota.
`
`SECOND DEFENSE
`(Noninfringement)
`
`Toyota does not infringe and has not infringed directly, indirectly, literally or under the
`
`doctrine of equivalents, or in any other manner, and is not liable for infringement of any valid and
`
`enforceable claim of the Patents-in-Suit. It is not the case that each and every limitation of the
`
`asserted claims is present either directly or indirectly, and either literally or under the doctrine of
`
`equivalents, in the Accused Products.
`
`THIRD DEFENSE
`(Invalidity)
`
`The claims of the Patents-in-Suits are invalid for failure to comply with the requirements
`
`of Title 35 of the United States Code, including, without limitation, 35 U.S.C. §§ 101, 102, 103,
`
`and/or 112. For example, one or more claims of the Patents-in-Suit are invalid because they claim
`
`patent-ineligible subject matter. As another example, the claims of the Patents-in-Suit are
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2278 Filed 08/24/22 Page 15 of 19
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`anticipated and/or rendered obvious by one or more prior art references and are thus invalid under
`
`35 U.S.C. §§ 102 and/or 103. Additionally, one or more claims of the Patents-in-Suit are invalid
`
`for failing to satisfy the written description, enablement, and/or definiteness requirements of 35
`
`U.S.C. § 112.
`
`FOURTH DEFENSE
`(Statutory Limit on Damages)
`
`Plaintiff’s claim for damages and/or cost is statutory limited by 35 U.S.C. §§ 286, 287,
`
`and/or 288. Without limitation, any claim for damages by Plaintiff is limited by 35 U.S.C. § 287
`
`to only those damages occurring after proper and sufficient notice of infringement of the Patents-
`
`in-Suit to Toyota. Toyota alleges upon information and belief that any claim for pre-lawsuit
`
`damages is barred, in whole or in part, for failure to comply with the patent marking and notice
`
`requirements of 35 U.S.C. § 287.
`
`FIFTH DEFENSE
`(Express License, Implied License, Patent Exhaustion, and Single Recovery Rule)
`
`On information and belief, Plaintiff’s claims are barred, in whole or in part, by express
`
`license agreements and/or under the doctrines of implied license, patent exhaustion, or the single
`
`recovery rule. Plaintiff’s claims for damages for infringement are limited or entirely foreclosed
`
`under the doctrine of patent exhaustion to the extent that allegedly infringing components and/or
`
`products are supplied, directly or indirectly to Toyota by any entity or entities having license to
`
`some or all of the Patents-in-Suit.
`
`SIXTH DEFENSE
`(No Willful Infringement)
`
`Plaintiff is not entitled to enhanced or increased damages for willful infringement because
`
`Toyota has not engaged in any conduct that meets the applicable standard for willful infringement.
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`Case 2:22-md-03034-TGB ECF No. 63, PageID.2279 Filed 08/24/22 Page 16 of 19
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`SEVENTH DEFENSE
`(No Exceptional Case)
`
`Plaintiff cannot prove that this is an exceptional case justifying award of attorneys’ fees
`
`against Toyota pursuant to 35 U.S.C. § 285.
`
`EIGHTH DEFENSE
`(Waiver, Estoppel, Acquiescence, Unclean Hands)
`
`On information and belief, Plaintiff’s claims are barred, in whole or in part, or their
`
`remedies limited, by the doctrines of waiver, implied waiver, estoppel, acquiescence, and/or
`
`unclean hands.
`
`NINTH DEFENSE
`(Prosecution History Estoppel)
`
`Plaintiff’s claims for relief are barred, in whole or in part, by prosecution history estoppel
`
`and/or prosecution history disclaimer based on amendments, statements, admissions, omissions,
`
`representations, disclaimers, and/or disavowals made by the applications for the Patents-in-Suit.
`
`TENTH DEFENSE
`(FRAND)
`
`On information and belief, Plaintiff’s claims for relief are barred, or damages are limited,
`
`by the FRAND commitments of Plaintiff or Plaintiff’s predecessors in interest.
`
`ELEVENTH DEFENSE
`(Lack of Standing)
`
`On information and belief, if Plaintiff is not the current or sole owner of the Patents-in-
`
`Suit, Plaintiff’s claims and requested relief are barred by Plaintiff’s lack of standing.
`
`TWELFTH DEFENSE
`(Unenforceability/Inequitable Conduct)
`
`16
`
`EAST/194818918
`
`

`

`Case 2:22-md-03034-TGB ECF No. 63, PageID.2280 Filed 08/24/22 Page 17 of 19
`
`On information and belief, the Patents-in-Suit are unenforceable due to inequitable conduct
`
`during prosecution. One or more individuals who owed a duty of candor to the U.S. Patent and
`
`Trademark Office (“USPTO”) during prosecution of the Patents-in-Suit deliberately and
`
`knowingly withheld material information form the USPTO in connection with the prosecution of
`
`the application, in violation of their duty of candor to the USPTO as prescribed by 37 C.F.R. §
`
`1.56. The withholding was made with the specific intent to deceive the USPTO.
`
`THIRTEENTH DEFENSE
`(Doctrine of Ensnarement)
`
`On information and belief, Plaintiff’s claims are barred in whole or in part by the doctrine
`
`of ensnarement.
`
`FOURTEENTH DEFENSE
`(Reservation of Remaining Defenses)
`
`Toyota reserves all defenses under Rule 8(c) of the Federal Rules of Civil Procedure, the
`
`Patent Laws of the United States, and any other defenses, at law or in equity, which may now exist
`
`or in the future be available based on discovery.
`
`TOYOTA’S DEMAND FOR JURY TRIAL
`
`Toyota demands a trial by jury on all issues triable by right of jury.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Toyota prays for judgment in its favor and against Plaintiff as follows:
`
`A.
`
`B.
`
`That Plaintiff take nothing by its First Amended Complaint;
`
`That the Court enter judgment against Plaintiff and in favor of Toyota and that the
`
`First Amended Complaint be dismissed with prejudice;
`
`C.
`
`Order and adjudge that Toyota has not infringed any valid and enforceable claims
`
`of the Asserted Patents;
`
`17
`
`EAST/194818918
`
`

`

`Case 2:22-md-03034-TGB ECF No. 63, PageID.2281 Filed 08/24/22 Page 18 of 19
`
`D.
`
`Order and adjudge that the claims of the Asserted Patents are invalid and
`
`unenforceable;
`
`E.
`
`That the Court deem this an exceptional case under 35 U.S.C. § 285 and award
`
`Toyota its costs, expenses, and attorneys’ fees, together with interest; and
`
`F.
`
`That the Court grant and/or award to Toyota any and all further relief that the Court
`
`deems just and proper.
`
`Dated: August 24, 2022
`
`Respectfully submitted,
`
`/s/ Paul R. Steadman
`Paul R. Steadman (Illinois Bar No. 6238160)
`Matthew Satchwell (Illinois Bar No. 6290672)
`Shuzo Maruyama (Illinois Bar No. 6313434)
`DLA PIPER LLP (US)
`444 West Lake Street, Suite 900
`Chicago, IL 60606-0089
`Tel: 312.368.2135
`Fax: 312.251.2850
`paul.steadman@us.dlapiper.com
`matthew.satchwell@us.dlapiper.com
`shuzo.maruyama@us.dlapiper.com
`
`Brian Erickson (Texas Bar No. 24012594)
`DLA PIPER LLP (US)
`303 Colorado Street, Suite 3000
`Austin, Texas 78701-4653
`Tel: 512.457.7059
`Fax: 512.721.2263
`brian.erickson@us.dlapiper.com
`
`Counsel for Defendants Toyota Motor
`Corporation, Toyota Motor North America, Inc.,
`Toyota Motor Sales, U.S.A., Inc. and Toyota
`Motor Engineering & Manufacturing North
`America, Inc. and Toyota Motor Credit
`Corporation
`
`18
`
`EAST/194818918
`
`

`

`Case 2:22-md-03034-TGB ECF No. 63, PageID.2282 Filed 08/24/22 Page 19 of 19
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 3rd day of June 2022, I electronically filed the foregoing with
`the Clerk of Court using the CM/ECF system, which will send notification of such filing via
`electronic mail to all counsel of record. Any other counsel of record will be served by first class
`U.S. mail.
`
`/s/ Paul R. Steadman
`Paul R. Steadman
`
`19
`
`EAST/194818918
`
`

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