Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 1 of 31
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`CALDARELLI HEJMANOWSKI & PAGE LLP
`William J. Caldarelli (SBN #149573)
`12340 El Camino Real, Suite 430
`San Diego, CA 92130
`Tel: (858) 720-8080
`Fax: (858) 720-6680
`wjc@chplawfirm.com
`
`FABIANO LAW FIRM, P.C.
`Michael D. Fabiano (SBN #167058)
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`Telephone: (619) 742-9631
`mdfabiano@fabianolawfirm.com
`
`OSBORNE LAW LLC
`John W. Osborne (Pro Hac Vice App. Pending)
`33 Habitat Lane
`Cortlandt Manor, NY 10567
`Telephone: (914) 714-5936
`josborne@osborneipl.com
`
`WATTS LAW OFFICES
`Ethan M. Watts (SBN #234441)
`12340 El Camino Real, Suite 430
`San Diego, CA 92130
`Telephone: (858) 509-0808
`Facsimile: (619) 878-5784
`emw@ewattslaw.com
`
`Attorneys for Defendant and
`Counterclaimant Ameranth, Inc.
`
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`
`Case No. 14-cv-1303 DMS (WVG)
`
`ANSWER OF AMERANTH, INC.
`TO COMPLAINT FOR
`DETERMINATION OF PRIORITY;
`COUNTERCLAIMS
`
`IPDEV CO.,
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`Plaintiff,
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`v.
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`
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`AMERANTH, INC.,
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`Defendant.
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`ANSWER OF AMERANTH TO COMPLAINT FOR DETERMINATION
`OF PRIORITY; COUNTERCLAIMS Case No. 14-cv-1303 DMS (WVG)
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 2 of 31
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`AMERANTH, INC.,
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`Counterclaimant,
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`v.
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`IPDEV CO.,
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`Counterdefendant.
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`ANSWER OF AMERANTH TO COMPLAINT FOR DETERMINATION
`OF PRIORITY; COUNTERCLAIMS Case No. 14-cv-1303 DMS (WVG)
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 3 of 31
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`ANSWER TO COMPLAINT
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`Defendant and Counterclaimant Ameranth, Inc. (“Ameranth”) responds to
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`the Complaint of Plaintiff IPDEV Co. (“IPDEV”) as follows:
`1.
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`Ameranth admits that IPDEV is an Illinois corporation located at the
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`address stated at the complaint, and is an affiliate of QuikOrder, Inc.
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`(“QuikOrder”) (fka as National Systems Corporation), which in turn indemnifies
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`and is co-represented with Pizza Hut, Inc. and Pizza Hut of America, Inc. (“Pizza
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`Hut”) in the consolidated patent infringement lawsuits brought by Ameranth and
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`pending before this Court. Ameranth admits that IPDEV is the current owner of
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`record of the ‘449 and ‘739 patents (but not the original owner of the ‘739 patent
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`or even the employer of the inventors named thereon), but denies and disputes the
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`Admitted.
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`Admitted.
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`Admitted.
`
`Admitted.
`
`Admitted.
`
`Admitted.
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`validity of the ‘449 patent as further described herein.
`2.
`3.
`4.
`5.
`6.
`7.
`8.
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`Admitted. However, Ameranth contends that IPDEV works in
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`concert with QuikOrder and this action is being used by QuikOrder, Pizza Hut,
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`their joint litigation counsel, and other members of the Joint Defense Group in the
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`consolidated patent infringement cases as part of their joint defense strategy.
`9.
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`Ameranth admits that Cupps and Glass filed the ‘793 Application on
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`November 24, 1997, and that the ‘793 application issued on November 23, 1999
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`as the ‘739 patent. Ameranth lacks information and belief to admit or deny the
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`remaining allegations of this paragraph, and on that basis denies them.
`10. Admitted.
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`ANSWER OF AMERANTH TO COMPLAINT FOR DETERMINATION
`OF PRIORITY; COUNTERCLAIMS Case No. 14-cv-1303 DMS (WVG)
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 4 of 31
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`11. Admitted; however, Ameranth denies and disputes the validity of the
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`‘449 patent as further described herein and denies that the claimed subject matter
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`was disclosed, described in or encompassed by the ‘739 patent or the ‘645
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`application.
`12. Admitted.
`13. Admitted.
`14. Ameranth admits that the applicants of the ’729 application
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`disclaimed, for certain claims contained in that application only, the part of the
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`term that would extend beyond the expiration of the term of the ‘850 patent.
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`Except as admitted, denied.
`15. Admitted.
`16. Ameranth admits that the applicants of the ’990 application
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`disclaimed, for certain claims contained in that application only, the part of the
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`term that would extend beyond the expiration of the term of the ‘850 patent.
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`Except as admitted, denied.
`17. Ameranth admits that the IPDEV’s ‘199 application substantially
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`copied claims 1-18 of the ‘077 patent and added claims 19-21. Ameranth further
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`admits that IPDEV’s Preliminary Statement to the Patent Office states: “Applicant
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`notes that filed claims 1-18 are copied from claims 1-18 of issued U.S. Patent No.
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`8,146,077, issued March 27, 2012 from U.S. Application No. 11/112,990 filed
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`April 22, 2005 (the ‘077 Patent).” Ameranth denies that IPDEV brought to the
`
`attention of the patent examiner of the ‘449 patent that the copied claims were
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`patented by a different inventor than the inventor of the ‘739 patent of which the
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`‘199 application purported to be a continuation, or that IPDEV’s statements to the
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`examiner of the ‘449 patent constituted a request for an interference. Except as
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`expressly admitted, denied.
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 5 of 31
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`18. Ameranth admits that the Patent Office issued a Notice of Rejection
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`of claims 1-21 of the ‘199 application on or about June 6, 2013 for the reasons
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`stated therein. Ameranth further admits that, subsequently, on or about December
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`4, 2013, IPDEV submitted an amendment of the ‘199 application claims to the
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`Patent Office. Except as expressly admitted, denied.
`19. Admitted.
`20. Ameranth admits that claims 1-18 of the IPDEV ‘449 patent
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`(although not the specification) substantially copy the claims and encompass
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`substantially the same subject matter as claims 1-18 of Ameranth’s ‘077 patent.
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`Ameranth denies and disputes the validity of the ‘449 patent as further described
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`herein. Except as expressly admitted, denied.
`21. Denied. Ameranth further denies and disputes the validity of the
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`‘449 patent as further described herein.
`22. Ameranth admits that the ‘077 patent is a continuation in part of the
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`‘850 patent. Except as expressly admitted, denied.
`23. Denied. Ameranth further denies and disputes the validity of the
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`‘449 patent as further described herein.
`24. Ameranth admits that the ‘350 patent is a continuation of the ‘850
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`patent, and that the ‘077 patent is a continuation in part of the ‘850 patent. Except
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`as expressly admitted, denied.
`25. Denied. Ameranth further denies and disputes the validity of the
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`‘449 patent as further described herein.
`26. Ameranth admits that IPDEV asserts a priority date of November 24,
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`1997 for the ‘449 patent by virtue of characterizing it as a continuation of the
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`application which issued as the ‘739 patent, but denies that the ‘449 patent claims
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`are actually entitled to such priority date. Ameranth admits that all claims of
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`Ameranth’s ‘325, ‘850 and ‘770 patents have an effective priority date of at least
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 6 of 31
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`as early as September 21, 1999, and further notes that Ameranth’s patents were
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`reviewed by multiple patent examiners between 2001 and 2012 and were issued
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`and allowed by the Patent Office specifically over the ‘739 patent, among other
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`references. Ameranth admits that regulations regarding practice before the
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`USPTO as contained in 37 CFR section 41.207(a)(1) and section 41.201 speak for
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`themselves and read as officially published, but denies that they apply to or
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`govern the operation of the Court in which this lawsuit has been filed. Except as
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`expressly admitted, denied.
`27. Denied. Ameranth further denies and disputes the validity of the
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`‘449 patent as further described herein.
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`AFFIRMATIVE DEFENSES
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`As additional and affirmative defenses, Ameranth alleges as follows:
`
`First Affirmative Defense
`
`(Lack of Patentability under 35 USC section 102)
`28. As alleged herein, the ‘449 patent, and the claims thereof, are not
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`based on or supported by the subject matter contained in the ‘739 patent or
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`application No. 09/282,645, and therefore are not entitled to a priority date senior
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`to Ameranth’s ‘077, ‘325 or ‘850 patents (and in fact that the earliest effective
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`filing date to which the ‘449 patent claims would be entitled is August 22, 2012).
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`Therefore, the ‘449 patent claims are not new and fail to satisfy the requirement of
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`novelty under 35 USC section 102.
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`Second Affirmative Defense
`
`(Lack of Patentability under 35 USC section 103)
`29. As alleged herein, the ‘449 patent, and the claims thereof, are not
`
`based on or supported by subject matter contained in the ‘739 patent or
`
`application No. 09/282,645, and therefore are not entitled to a priority date senior
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`to Ameranth’s ‘077, ‘325 or ‘850 patents (and in fact that the earliest effective
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 7 of 31
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`
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`filing date to which the ‘449 patent would be entitled is August 22, 2012).
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`Therefore, the claims of the ‘449 patent are not non-obvious and fail to satisfy the
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`requirements of patentability under 35 USC section 103.
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`Third Affirmative Defense
`
`(Failure to Disclose True Inventorship)
`30. As alleged herein, the claims of the ‘449 patent (copied from
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`Ameranth’s ‘077 patent) are not based on or supported by subject matter
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`contained in the ‘739 patent or application No. 09/282,645, which dealt with a
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`different inventive idea, namely: (a) the use of “geocodes” to determine whether a
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`customer is within a restaurant’s specified geographic delivery area and/or
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`whether a restaurant is within the customer’s specified geographic take-out area;
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`and (b) the facilitation of the placement of an order from a customer’s standard PC
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`type computer (e.g., desktops and laptops) to a restaurant through either
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`conversion of the order into voice data transmitted by telephone to the restaurant
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`or transmission of a facsimile order to the restaurant. The true inventors of the
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`claims set forth in the “copycat” ‘449 patent are not the persons identified on the
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`‘449 patent, but rather are the inventors named in Ameranth’s ‘077 patent.
`31. Tellingly, the inventors listed on the ‘449 patent (Bryan Cupps and
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`Tim Glass) did not authorize a statement or declaration in connection with the
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`application for the ‘449 patent (which was filed 15 years after the filing of the
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`application for the Cupps ‘739 patent) contending that they had conceived of
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`Ameranth’s non- PC-standard based invention or invented the subject matter
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`claimed therein, or that the specification for the ‘739 patent supported the claims
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`of the ‘449 patent. To the contrary, independent applications filed with the Patent
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`Office by Cupps and Glass in 2001, after the priority date of Ameranth’s ‘077
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`patent, make it clear that they knew that the specification of the ‘739 patent did
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 8 of 31
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`not support or disclose the non-PC-standard based subject matter of the claims in
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`the ‘449 patent copied from the ‘077 patent.
`32. Furthermore, the original assignee of the ‘739 patent, Food.com (by
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`which Cupps and Glass had been employed) acknowledged that Cupps and Glass
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`had not conceived of or invented Ameranth’s patented inventions. Food.com
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`partnered with Ameranth in July of 1999 in order to obtain and use Ameranth’s
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`inventions and technology, which Food.com needed and admitted it did not
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`possess. Thus, an internal Food.com memo entitled “Ameranth Licensing
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`Contract” dated September 13, 1999 (and which QuikOrder, Pizza Hut and their
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`counsel have seen by virtue of their participation in discovery in the consolidated
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`patent infringement lawsuits pending before this Court) states, in relevant part:
`
` I
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` have met with Keith McNally to agree on the deal points on a
`Licensing Agreement. Here are the products and services we would
`want.
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`1. Menu Wizard- this is a tool which digitally constructs and
`updates restaurant menus …
`
`
`2.
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`3.
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`Communications Wizard- this tool creates a standard that can
`be used to integrate with any POS terminal and establishes the
`online ordering protocol.
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`Reservations- Food.com would have the exclusive rights to the
`online reservation system. They would help us create a hybrid
`system that can connect with the POS …
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`33. These statements demonstrate that Food.com did not possess any
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`invention or technology duplicating the functionality of Ameranth’s menu
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`generation, online and mobile ordering with point of sale (“POS”) integration or
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`online reservations with POS integration inventions, despite the fact that the
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`Notice of Allowance for their ‘739 patent had been issued by the Patent Office in
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 9 of 31
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`December of 1998, roughly 9 months earlier. Moreover, the memo explains that
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`Food.com was seeking “exclusive rights” to Ameranth’s Menu Wizard technology
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`because that tool created a “barrier to entry” in the online and mobile food
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`ordering market, and to Ameranth's hybrid reservations system with POS
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`integration, a further acknowledgment (made by persons skilled in the art, at the
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`time of the invention) that neither Cupps, Food.com or anyone else in the industry
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`had conceived of or possessed Ameranth’s inventions.
`34. Thus, both the named inventors of the ‘739 patent (Cupps and Glass),
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`and their employer and original assignee of the ‘739 patent (Food.com),
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`acknowledged that Cupps and Glass had not conceived of or invented Ameranth’s
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`inventions. Despite these facts, IPDEV, 15 years later, covertly copied the claims
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`from Ameranth’s ‘077 patent into Application No. 13,592,199 and falsely
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`represented to the Patent Office that Cupps and Glass had conceived of such
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`inventions earlier in order to improperly obtain the ‘449 patent.
`35. Additionally, IPDEV’s affiliate, QuikOrder, took the position in and
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`around 2001 in the United States District Court for the Northern District of
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`California, when it was sued by Food.com (the prior owner of the ‘739 patent) for
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`infringement of the ‘739 patent, not only that the ‘739 patent was invalid, but
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`further that the claims of the Cupps ‘739 patent (on which IPDEV’s ‘449 patent
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`supposedly is based) were limited to a single inventive idea (an online ordering
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`system that uses geocodes to match customers with restaurants in the appropriate
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`delivery/take-out geographic area), and therefore could not encompass or disclose
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`the entirely different invention described in the claims of Ameranth’s ‘077 patent,
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`now improperly copied by IPDEV in the claims of the ‘449 patent. As QuikOrder
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`stated in a November 26, 2001 claim construction brief filed with the United
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`States District Court for the Northern District of California: “The purported
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`invention of the ‘739 patent is a single variation on an admittedly ‘prior art’
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 10 of 31
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`theme. The ‘739 patent is characterized as an online ordering system that matches
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`customers with appropriate vendors, such as restaurants providing food delivery
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`services. While admitted prior art ordering systems match customers to
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`appropriate vendors using the customer’s address … or telephone prefix, the
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`system claimed by the ‘739 patent uses ‘geocodes.’” Food.com’s claim
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`construction position, and the Northern District of California’s claim construction
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`order in that lawsuit, similarly described the “geocode” based invention disclosed
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`in the ‘739 patent.
`36. Likewise, in connection with the prosecution of a different patent
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`application before the Patent Office in 2004 (Application No. 09/007,578),
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`IPDEV/QuikOrder and its counsel argued that that the Cupps ‘739 patent does not
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`disclose, and in fact teaches away from, the concepts and inventions contained and
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`described in Ameranth’s patents and now duplicated in the claims of the ‘449
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`patent.
`37.
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`In an earlier and separate patent application filed by IPDEV with the
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`Patent Office supposedly based on the Cupps ‘739 patent (Application No.
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`09/282,645), IPDEV previously attempted to duplicate claims of Ameranth’s ‘077
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`patent in or around July of 2012. The patent examiner for that ‘645 application (a
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`different examiner than the one later assigned to the application for the ‘449
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`patent), in an August 28, 2012 interview summary, noted the dramatic differences
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`between: (a) the claims IPDEV sought to copy from Ameranth’s ’077 patent
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`(focusing on “different display sizes of different user devices during
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`mobile/remote ordering,” according to the patent examiner); and (b) the “geocode
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`and location information for food ordering” claims that IPDEV sought to derive
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`from the Cupps ‘739 patent, and pointed out in the office communication that the
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`two sets of claims “are for a different invention.” Emphasis added. The ‘645
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`application patent examiner’s comments further reconfirmed what Cupps and
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 11 of 31
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`Glass, Food.com, QuikOrder, and IPDEV itself knew and previously
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`acknowledged—the ‘739 patent is directed to an entirely different inventive
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`concept than that disclosed by and described in the claims of Ameranth’s non-PC-
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`standard based ‘077 patent, and now improperly copied into the ‘449 patent.
`38.
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`Importantly, none of the evidence described in paragraphs 30 to 34
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`and 36 to 37 above demonstrating that Cupps and Glass did not invent the claims
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`of the ‘449 patent (copied from Ameranth’s ‘077 patent) was provided by IPDEV
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`to the patent examiner for the ‘449 patent. Although the patent examiner did,
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`incorrectly, allow the ‘449 patent to issue, he provided no reasons whatsoever for
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`the notice of allowance, provided no comments as to the substance of any prior art
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`review, and made no indication that he had reviewed any of the extensive
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`prosecution history of Ameranth’s ‘077 patent, further confirming that he relied
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`on and was misled by the misstatements and extensive withholding of material
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`information by IPDEV and its counsel1.
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`Fourth Affirmative Defense
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`(Lack of Conception and Diligent Reduction to Practice)
`39. The claims of the ‘449 patent were not conceived by or diligently
`
`reduced to practice by the inventors named in the ‘449 patent or the owners of
`
`such patent, rendering the ‘449 patent invalid under (pre-AIA) 35 USC section
`
`102. Additionally, the failure to diligently reduce such claims to practice
`
`constitutes abandonment of such claims, resulting in such claims being invalid
`
`and unenforceable.
`
`
`1 Further demonstrating that the examiner of the ‘449 patent was confused when
`he approved and issued the ‘449 patent, he cited to only 3 “prior art” references in
`the ‘449 patent. These references are dated August of 2004, June 2012, and May
`2013, references which would not be relevant to a patent application seeking a
`November 1997 priority date, such as IPDEV sought with the application for the
`‘449 patent.
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`9
`ANSWER OF AMERANTH TO COMPLAINT FOR DETERMINATION
`OF PRIORITY; COUNTERCLAIMS Case No. 14-cv-1303 DMS (WVG)
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 12 of 31
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`Fifth Affirmative Defense
`
`(Lack of Sufficient Written Description in Specification)
`40. Neither the specification of the ‘449 patent, nor the content of the
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`‘739 patent or application No. 09/282,645, contains a sufficient written
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`description to support the invention claimed in the claims of the ‘449 patent, in
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`violation of 35 USC section 112. The ‘739 patent, on which the claims of the
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`‘449 patent supposedly are based, describes a system that: (a) uses “geocodes” to
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`determine whether a customer is within a restaurant’s specified geographic
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`delivery area and/or whether a restaurant is within the customer’s specified
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`geographic take-out area; and (b) facilitates placement of an order from a
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`customer’s computer to a restaurant through either conversion of the order into
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`voice data transmitted by telephone to the restaurant or transmission of a facsimile
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`order to the restaurant. In contrast, the claims of the ‘449 patent (copied from
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`Ameranth’s ‘077 patent) describe a system for customized configuration and
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`layout of menus to conform with non-PC-standard and different display sizes and
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`characteristics of two or more different wireless handheld computing devices
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`(e.g., “smartphones”), and real time communication and data synchronization
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`between a wireless handheld computing device, a web page and a master database.
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`These claims are not described or disclosed in, or otherwise supported by, the
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`specification of the ‘449 patent, nor the content of the ‘739 patent or application
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`No. 09/282,645, rendering the ‘449 patent and the claims thereof invalid2.
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`2 IPDEV even deleted an extensive discussion of geocodes from the Abstract of
`Application No. 13/592,199 (which eventually issued as the ‘449 patent) in an
`apparent attempt to obscure the primary focus of the application from the
`Examiner.
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`ANSWER OF AMERANTH TO COMPLAINT FOR DETERMINATION
`OF PRIORITY; COUNTERCLAIMS Case No. 14-cv-1303 DMS (WVG)
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 13 of 31
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`Sixth Affirmative Defense
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`(Lack of Enablement in Specification)
`41. The ‘449 patent fails to satisfy the requirement of enablement
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`imposed by 35 USC section 112 because neither the specification of the ‘449
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`patent, nor the content of the ‘739 patent or application No. 09/282,645, enables a
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`relevant person of skill in the art to make and use the invention claimed in the
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`claims of the ‘449 patent.
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`Seventh Affirmative Defense
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`(Inequitable Conduct)
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`42.
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`IPDEV, its principals, affiliates and counsel, acted with inequitable
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`conduct before the Patent Office in connection with prosecution and procurement
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`of the ‘449 patent as further alleged herein and with the specific intent to deceive
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`the Patent Office, but for which the ‘449 patent would not have issued, rendering
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`the ‘449 patent invalid and unenforceable.
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`Eighth Affirmative Defense
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`(Unclean Hands)
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`43.
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`IPDEV, its principals, affiliates and counsel, acted with unclean
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`hands before the Patent Office in connection with prosecution and procurement of
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`the ‘449 patent as further alleged herein, but for which the ‘449 patent would not
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`have issued, rendering the ‘449 patent invalid and unenforceable.
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`Ninth Affirmative Defense
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`(Estoppel)
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`44.
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`IPDEV is estopped from asserting the validity of the claims of the
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`‘449 patent or contending that the ‘449 patent, or any claims thereof, is entitled to
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`priority over any of Ameranth’s patents or any of the claims thereof by virtue of
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`contradictory positions that IPDEV, through its attorneys, agents, affiliates, and
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`those in privity or acting in concert with it, have taken:
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`ANSWER OF AMERANTH TO COMPLAINT FOR DETERMINATION
`OF PRIORITY; COUNTERCLAIMS Case No. 14-cv-1303 DMS (WVG)
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 14 of 31
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`
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`(a)
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`in the consolidated patent infringement lawsuits filed by
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`Ameranth against QuikOrder, Pizza Hut and other members of the Joint Defense
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`Group in this Court (in affirmative defenses, in counterclaims, in discovery
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`responses, in invalidity contentions and in a joint motion in support of the
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`defendants’ motion to stay proceedings, among other places);
`(b)
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`in proceedings before the Patent Trial and Appeal Board with
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`respect to the nearly identical claims of Ameranth’s ‘077 patent and the claims of
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`Ameranth’s ‘850 and ‘325 patents (including asserting that the claims of
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`Ameranth’s patents were invalid under 35 USC sections 101 and 112 and
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`contending that such claims “cover nothing more than an abstract idea”);
`(c)
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`in other filings before the Patent Office regarding a different
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`patent application but involving the ‘739 patent from which the ‘449 patent claims
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`priority (among other things, traversing the ‘739 patent and contending that the
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`‘739 patent did not disclose or teach elements of the subject matter now claimed
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`in the ‘449 patent);
`(d)
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`through a direct and contradictory admission made by
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`IPDEV’s President and managing agent, James Kargman, to Ameranth’s Chief
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`Executive Officer on December 12, 2007; and
`(e)
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`in filings made by QuikOrder in the United States District
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`Court for the Northern District of California in and around 2001 asserting that the
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`‘739 patent was invalid when QuikOrder was being sued by Food.com (the prior
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`owner of the ‘739 patent) for infringement of the ‘739 patent.
`45. Consequently, IPDEV is estopped from asserting the validity of the
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`claims of the ‘449 patent or contending that the ‘449 or any claims thereof is
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`entitled to priority over any of Ameranth’s patents or any of the claims thereof.
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`ANSWER OF AMERANTH TO COMPLAINT FOR DETERMINATION
`OF PRIORITY; COUNTERCLAIMS Case No. 14-cv-1303 DMS (WVG)
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 15 of 31
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`Tenth Affirmative Defense
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`(Anticipation and Obviousness)
`46. Because the ‘449 patent is not entitled to a priority date senior to
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`Ameranth’s ‘077 patent, the ‘449 patent, and the claims thereof, is invalid as being
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`anticipated by the ‘077 patent and rendered obvious by the ‘077 patent, which
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`describes and discloses every element of the claims of the ‘449 patent, pursuant to
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`35 USC sections 102 and 103.
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`Eleventh Affirmative Defense
`
`(Time Barred Claim)
`47. Because IPDEV is attempting to assert its purported interference
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`claims based on the ‘449 patent claims against Ameranth’s ‘850 patent, which was
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`issued by the Patent Office on May 7, 2002, and Ameranth’s ‘325 patent, which
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`was issued by the Patent Office on March 22, 2005, such an interference challenge
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`is untimely and time barred pursuant to, inter alia, (pre-AIA) 35 USC section
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`135(b)(1), which requires any such interference claim to be made, if at all, within
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`one year of the date of issuance of the patent to be challenged.
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`Twelfth Affirmative Defense
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`(Laches)
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`48.
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`IPDEV’s interference claims against Ameranth’s patents are barred
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`by the doctrine of laches. IPDEV acquired the ‘739 patent from the trustee of the
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`bankruptcy estate of Food.com (the prior owner of the ‘739 patent) on or about
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`February 3, 2004. IPDEV, its affiliate QuikOrder, and their common controlling
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`persons (including but not limited to James Kargman) had knowledge of
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`Ameranth’s ‘850 and ‘325 patents, and Ameranth’s intent to enforce those patents,
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`since at least February of 2006. Nevertheless, and without justification, IPDEV
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`waited until August 22, 2012 to file the application that issued as the ‘449 patent
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`(copying the claims of Ameranth’s ‘077 patent) supposedly based upon ‘739
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`13
`ANSWER OF AMERANTH TO COMPLAINT FOR DETERMINATION
`OF PRIORITY; COUNTERCLAIMS Case No. 14-cv-1303 DMS (WVG)
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 16 of 31
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`
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`patent, which IPDEV now asserts supports interference claims against Ameranth’s
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`‘850, ‘325 and ‘077 patents. This delay is unreasonable and results in undue
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`prejudice to Ameranth. Consequently, the doctrine of laches bars IPDEV’s
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`interference claims asserted herein.
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`Thirteenth Affirmative Defense
`
`(Invalidity of ‘449 Patent Under (pre-AIA) 35 USC section 135(b)(1))
`49. The claims of IPDEV’s ‘449 patent are invalid under (pre-AIA) 35
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`USC section 135(b)(1), which states, in relevant part: "A claim which is the same
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`as, or for the same or substantially the same subject matter as, a claim of an issued
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`patent may not be made in any application unless such a claim is made prior to
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`one year from the date on which the patent was granted."
`50.
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`IPDEV asserts in its complaint in this matter that the claims of
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`Ameranth’s ‘850 and ‘325 patents are “obvious variants of the claims of the
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`Ameranth ‘077 patent,” and therefore are for the same or substantially the same
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`subject matter as the claims of the ‘077 patent (the ‘325 patent is a continuation of
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`the ‘850 patent, and the ‘077 patent is a continuation in part of the ‘850 patent).
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`IPDEV further asserts in its complaint that claims of the Ameranth patents (the
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`‘077, ‘325 and ‘850 patents) interfere with claims of the ‘449 patent. The ‘850
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`patent issued on May 7, 2002. The ‘325 patent issued on March 22, 2005.
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`IPDEV did not apply for the ‘449 patent claims until August 22, 2012, well past
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`the one year time period in which any application for a claim for the same or
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`substantially the same subject matter as the claims of Ameranth’s issued ‘850 and
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`‘325 patents would have had to have been filed with the Patent Office. Therefore,
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`the claims of the ‘449 patent are invalid.
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`14
`ANSWER OF AMERANTH TO COMPLAINT FOR DETERMINATION
`OF PRIORITY; COUNTERCLAIMS Case No. 14-cv-1303 DMS (WVG)
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`Case 3:14-cv-01303-DMS-WVG Document 13 Filed 06/16/14 Page 17 of 31
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`Fourteenth Affirmative Defense
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`(Failure to State a Claim)
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`51.
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`IPDEV fails to state claims upon which relief can be granted with
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`respect to Ameranth’s ‘850 and ‘325 patents.
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`PRAYER FOR RELIEF
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`WHEREFORE, Ameranth prays for relief as follows:
`1.
`2.
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`That IPDEV take nothing by way of its claims herein;
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`For a judicial declaration that the ‘449 patent, and all claims thereof,
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`is invalid and unenforceable;
`3.
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`For a determination that the ‘449 patent is not entitled to any priority
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`over Ameranth’s ‘325, ‘850 and ‘077 patents;
`4.
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`That the Court deem this to be an exceptional case and award
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`attorneys’ fees and costs in favor of Ameranth; and
`5.
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`For such other and further relief as the Court deems just and proper.
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`COUNTERCLAIMS
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`By and for its counterclaims against IPDEV, Ameranth further alleges as
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`follows:
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`The Parties
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`1.
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`Ameranth is a Delaware corporation registered to do business in
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`California and located in San Diego, California.
`2.
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`On information and b