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`SCHIFF HARDIN LLP
`GEORGE C. YU (CSB #193881)
`gyu@schiffhardin.com
`DUANE H. MATHIOWETZ (CSB #111831)
`dmathiowetz@schiffhardin.com
`PATRICK LAI (CSB #289978)
`plai@schiffhardin.com
`One Market, Spear Street Tower
`Thirty-Second Floor
`San Francisco, CA 94105
`Telephone:
`(415) 901-8700
`Facsimile:
`(415) 901-8701
`
`ASHE, P.C.
`OLIVER R. ASHE, JR. (Pro Hac Vice)
`oashe@ashepc.com
`11440 Isaac Newton Square North, Ste. 210
`Reston, VA 20190
`Telephone:
`(703) 467-9001
`Facsimile:
`(703) 467-9002
`
`Attorneys for Plaintiff
`IPDEV Co.
`
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`IPDEV CO.,
`
`Plaintiff, and Counterclaim-
`Defendant
`
`v.
`
`AMERANTH, INC.,
`
`Defendant, and
`Counterclaimant.
`
`CASE NO. 3:14-cv-01303-DMS-WVG
`
`PLAINTIFF AND COUNTERCLAIM-
`DEFENDANT IPDEV CO.’S ANSWER
`TO AMERANTH, INC.’S
`COUNTERCLAIMS
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`CASE NO. 3:14-cv-01303-DMS-WVG
`PLAINTIFF AND COUNTERCLAIM-DEFENDANT IPDEV CO.’S ANSWER TO AMERANTH, INC.’S COUNTERCLAIMS
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`

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`ANSWER TO COUNTERCLAIMS
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`Plaintiff and Counterclaim-Defendant IPDEV Co. (“IPDEV”), by its attorneys, hereby
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`replies to and answers the Counterclaims of Defendant and Counterclaimant Ameranth, Inc.,
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`(“Ameranth”) as follows:
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`THE PARTIES
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`
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`1.
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`On information and belief, IPDEV admits the allegations of paragraph 1 of the
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`Counterclaims.
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`2.
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`IPDEV admits that IPDEV is an Illinois corporation headquartered in Chicago,
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`Illinois, and IPDEV is an affiliate of QuikOrder, Inc. IPDEV also admits that QuikOrder
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`provides an on-line ordering system and mobile-optimized version of the on-line ordering system
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`used by Pizza Hut and is providing a defense and indemnity to Pizza Hut in the consolidated
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`infringement actions before this Court. IPDEV further admits that IPDEV, QuikOrder and Pizza
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`Hut share common legal counsel in the cases pending before this Court. IPDEV denies the
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`remaining allegations of paragraph 2 of the Counterclaims.
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`JURISDICTION AND VENUE
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`3.
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`4.
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`5.
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`6.
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`7.
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`IPDEV admits the allegations of paragraph 3 of the Counterclaims.
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`IPDEV admits the allegations of paragraph 4 of the Counterclaims.
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`IPDEV admits the allegations of paragraph 5 of the Counterclaims.
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`IPDEV admits the allegations of paragraph 6 of the Counterclaims.
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`IPDEV admits the allegations of paragraph 7 of the Counterclaims.
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`COUNT 1: INVALIDITY OF THE ’449 PATENT
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`8.
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`In response to paragraph 8 of the Counterclaims, IPDEV incorporates by
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`references its responses to paragraphs 1-7 of the Counterclaims.
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`9.
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`10.
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`11.
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`IPDEV admits the allegations of paragraph 9 of the Counterclaims.
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`IPDEV denies the allegations of paragraph 10 of the Counterclaims.
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`IPDEV admits that (Pre-AIA) 35 U.S.C. section 135(b)(1) is set forth in relevant
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`part in paragraph 11 of the Counterclaims. IPDEV further admits that the claims of Ameranth’s
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`’850 and ’325 patents are “obvious variants of the claims of the Ameranth ’077 patent” and,
`- 1 -
`
`CASE NO. 3:14-cv-01303-DMS-WVG
`PLAINTIFF AND COUNTERCLAIM-DEFENDANT IPDEV CO.’S ANSWER TO AMERANTH, INC.’S COUNTERCLAIMS
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`therefore, would be properly designated as corresponding to a count defined by one or more of
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`the ’449 and/or ’077 patent claims. IPDEV also admits that the ’850 patent issued on May 7,
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`2002, the ’325 patent issued on March 22, 2005, and that IPDEV applied for the ’449 patent on
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`August 22, 2012. IPDEV denies the remaining allegations of paragraph 11 of the Counterclaims.
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`12.
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`13.
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`14.
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`15.
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`16.
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`is required.
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`IPDEV denies the allegations of paragraph 12 of the Counterclaims.
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`IPDEV denies the allegations of paragraph 13 of the Counterclaims.
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`IPDEV denies the allegations of paragraph 14 of the Counterclaims.
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`IPDEV denies the allegations of paragraph 15 of the Counterclaims.
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`Paragraph 16 of the Counterclaims states a legal conclusion to which no response
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`17.
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`IPDEV admits that Ameranth seeks relief as alleged but denies that Ameranth is
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`entitled to such relief.
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`COUNT 2: INEQUITABLE CONDUCT
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`
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`18.
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`In response to paragraph 18 of the Counterclaims, IPDEV incorporates by
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`references its response to paragraphs 1-17 of the Counterclaims.
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`19.
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`20.
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`21.
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`22.
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`23.
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`24.
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`IPDEV denies the allegations in paragraph 19 of the Counterclaims.
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`IPDEV denies the allegations in paragraph 20 of the Counterclaims.
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`IPDEV denies the allegations in paragraph 21 of the Counterclaims.
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`IPDEV denies the allegations in paragraph 22 of the Counterclaims.
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`IPDEV denies the allegations in paragraph 23 of the Counterclaims.
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`IPDEV admits that the claims of Ameranth’s ’850 and ’325 patents are “obvious
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`variants of the claims of the Ameranth ’077 patent” and, therefore, would be properly designated
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`as corresponding to a count defined by one or more of the ’449 and/or ’077 patent claims.
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`IPDEV also admits that (Pre-AIA) 35 U.S.C. section 135(b)(1) is set forth in relevant part in
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`paragraph 24 of the Counterclaims. IPDEV also admits that the ’449 patent application was
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`submitted to the USPTO on August 22, 2012. IPDEV denies the remaining allegations in
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`paragraph 24 of the Counterclaims.
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`25.
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`IPDEV denies the allegations in paragraph 25 of the Counterclaims.
`- 2 -
`CASE NO. 3:14-cv-01303-DMS-WVG
`PLAINTIFF AND COUNTERCLAIM-DEFENDANT IPDEV CO.’S ANSWER TO AMERANTH, INC.’S COUNTERCLAIMS
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`
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`26.
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`IPDEV admits that in the consolidated District Court patent infringement litigation
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`involving Ameranth’s ’077, ’850 and ’325 patents, QuikOrder, Pizza Hut and other members of
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`the Joint Defense Group have asserted certain infringement action defenses. IPDEV denies the
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`remaining allegations in paragraph 26 of the Counterclaims.
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`27.
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`On information and belief, IPDEV acknowledges that Pizza Hut and other
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`members of the Joint Defense Group, of which IPDEV is not a member, have alleged in covered
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`business method petitions that the claims of the ’077, ’325 and ’850 patents fail to satisfy the
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`written description and definiteness requirements of section 112, and fail to claim patentable
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`subject matter under section 101. IPDEV also acknowledges that QuikOrder and Pizza Hut
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`joined in motions to stay the consolidated cases before the District Court pending determination
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`of those covered business method petitions. IPDEV denies the remaining allegations in
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`paragraph 27 of the Counterclaims.
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`28.
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`Paragraph 28 of the Counterclaims states a legal conclusion to which no response
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`is required. To the extent a response is required, IPDEV denies the factual allegations of
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`paragraph 28 of the Counterclaims.
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`29.
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`IPDEV admits that the claims of the ’449 patent are copied from the claims of
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`Ameranth’s ’077 patent. IPDEV further admits that the claims of Ameranth’s ’850 and ’325
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`patents are “obvious variants of the claims of the Ameranth ’077 patent” and, therefore, would be
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`properly designated as corresponding to a count defined by one or more of the ’449 and/or ’077
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`patent claims. IPDEV denies the remaining allegations in paragraph 29 of the Counterclaims.
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`
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`30.
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`IPDEV admits that the claims of the ’449 patent are copied from the claims of
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`Ameranth’s ’077 patent. IPDEV further admits that the claims of Ameranth’s ’850 and ’325
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`patents are “obvious variants of the claims of the Ameranth ’077 patent” and, therefore, would be
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`properly designated as corresponding to a count defined by one or more of the ’449 and/or ’077
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`patent claims. IPDEV denies the remaining allegations in paragraph 30 of the Counterclaims.
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`31.
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`32.
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`IPDEV denies the allegations in paragraph 31 of the Counterclaims.
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`IPDEV admits that in a CRN.com article on November 6, 2002, James Kargman is
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`quoted as saying that QuikOrder’s point of sale (“POS”) system was: “the only solution on the
`- 3 -
`
`CASE NO. 3:14-cv-01303-DMS-WVG
`PLAINTIFF AND COUNTERCLAIM-DEFENDANT IPDEV CO.’S ANSWER TO AMERANTH, INC.’S COUNTERCLAIMS
`
`
`
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`market I am aware of that has a direct tie into an online ordering facility.” IPDEV denies the
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`remaining allegations in paragraph 32 of the Counterclaims.
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`33.
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`IPDEV admits that IPDEV submitted the application for the ’449 patent to the
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`Patent Office copying the claims of Ameranth’s ’077 patent. IPDEV denies the remaining
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`allegations of paragraph 33 of the Counterclaims.
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`34.
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`IPDEV admits that IPDEV and their counsel knew that Food.com was the prior
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`owner of the Cupps ’739 patent, and that the patent was purchased by IPDEV. IPDEV denies the
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`remaining allegations in paragraph 34 of the Counterclaims.
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`35.
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`36.
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`37.
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`IPDEV denies the allegations of paragraph 35 of the Counterclaims.
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`IPDEV denies the allegations of paragraph 36 of the Counterclaims.
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`IPDEV denies the allegations of paragraph 37 of the Counterclaims.
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`EXCEPTIONAL CASE DETERMINATION
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`38.
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`IPDEV admits that on June 24, 2014, counsel for Ameranth sent a letter to
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`litigation counsel for IPDEV in this matter demanding that IPDEV dismiss the interference
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`lawsuit with prejudice and renounce the obtained ’449 patent. IPDEV also admits that a copy of
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`the letter is attached to the Counterclaims as Exhibit 1. IPDEV denies the remaining allegations
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`of paragraph 38 of the Counterclaims.
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`AFFIRMATIVE DEFENSE
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`For its affirmative defenses, IPDEV alleges as follows:
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`39.
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`Ameranth’s second counterclaim of inequitable conduct is barred because the
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`
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`counterclaim fails to state a claim against IPDEV upon which relief may be granted.
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`PRAYER FOR RELIEF
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`WHEREFORE, IPDEV respectfully requests the following relief:
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`1.
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`2.
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`IPDEV denies that Ameranth is entitled to any relief;
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`
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`An order finding each of Ameranth’s Counterclaims without merit and dismissing
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`each of them with prejudice;
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`3.
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`Costs and expenses in this action;
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`- 4 -
`CASE NO. 3:14-cv-01303-DMS-WVG
`PLAINTIFF AND COUNTERCLAIM-DEFENDANT IPDEV CO.’S ANSWER TO AMERANTH, INC.’S COUNTERCLAIMS
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`
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`///
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`4.
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`A declaration that this is an exceptional case and an award of attorneys’ fees to
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`IPDEV pursuant to 35 U.S.C. § 285; and
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`5.
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`Such further relief as the court deems just and proper
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`Dated: July 7, 2014
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`
`SCHIFF HARDIN LLP
`
`By: /s/ George C. Yu
`George C. Yu
`Duane H. Mathiowetz
`Patrick Lai
`Attorneys for Plaintiff and Counter-Defendant
`IPDEV Co.
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`- 5 -
`CASE NO. 3:14-cv-01303-DMS-WVG
`PLAINTIFF AND COUNTERCLAIM-DEFENDANT IPDEV CO.’S ANSWER TO AMERANTH, INC.’S COUNTERCLAIMS
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a true and correct copy of PLAINTIFF AND
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`COUNTERCLAIM-DEFENDANT IPDEV CO.’S ANSWER TO AMERANTH, INC.’S
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`COUNTERCLAIMS has been served on July 7, 2014 to all current and/or opposing counsel of
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`record, if any, who are deemed to have consented to electronic service via the Court’s EM/ECF
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`system per CivLR 5.4(d). Any other counsel of record will be served by electronic mail,
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`facsimile and/ or overnight delivery upon their appearance in this matter.
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`I hereby under penalty of perjury of the laws of the United States that the foregoing is true
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`and correct. Executed this 7th day of July, 2014 at San Francisco, California.
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`
`
`SCHIFF HARDIN LLP
`
`By: /s/ George C. Yu
`George C. Yu
`Duane H. Mathiowetz
`Patrick Lai
`Attorneys for Plaintiff and Counterclaim-
`Defendant IPDEV Co.
`
`
`
`
`
`27502-0065
`
`SF\321093064.5
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`
`
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`- 6 -
`CASE NO. 3:14-cv-01303-DMS-WVG
`PLAINTIFF AND COUNTERCLAIM-DEFENDANT IPDEV CO.’S ANSWER TO AMERANTH, INC.’S COUNTERCLAIMS
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