Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 1 of 16
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`
`IN RE: MAXIM INTEGRATED PRODUCTS,
`INC., MDL NO. 2354
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`
`This Document Relates to: 12-cv-1641
`
`)
`)
`) Master Docket
`) Misc. No. 12-244
`) MDL No. 2354
`)
`)
`) CONTI, District Judge
`)
`)
`)
`)
`) C.A. No. 2:12-cv-1641-NBF
`)
`)
`)
`)
`)
`)
`)
`)
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`MAXIM INTEGRATED PRODUCTS, INC.,
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`Plaintiff,
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`v.
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`JPMORGAN CHASE & CO. and
`JPMORGAN CHASE BANK, N.A.,
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`Defendants/Counterclaim Plaintiff.
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`
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`ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS OF
`JPMORGAN CHASE & CO. AND JPMORGAN CHASE BANK, N.A.
`TO PLAINTIFF’S COMPLAINT FOR PATENT INFRINGEMENT
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`Defendants JP Morgan Chase & Co. and JP Morgan Chase Bank, N.A. (collectively,
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`“JPM”) answer plaintiff Maxim Integrated Products, Inc.’s (“Maxim”) Complaint as follows:
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`THE PARTIES
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`1.
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`JPM is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations in paragraph 1 and therefore deny these allegations.
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`2.
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`JPM admits that JPMorgan Case is a corporation organized and existing under the
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`laws of the State of Delaware with its principal place of business located in New York, NY.
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`JPM denies the remaining allegations contained in Paragraph 2.
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`PALOALTO 145813
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`Maxim Exhibit 2005 - PNC/JPMC, CBM2014-00041 - Page 2005-001
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 2 of 16
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`3.
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`JPM admits that Chase Bank is a wholly-owned subsidiary of JPMorgan Chase.
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`JPM denies that Chase Bank has a principal place of business in New York, NY. JPM denies the
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`remaining allegations contained in Paragraph 3.
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`JURISDICTION AND VENUE
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`4.
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`JPM admits that Maxim purports to bring this action under Title 35 of the United
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`States Code.
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`5.
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`JPM admits that the U.S. District Court for the Western District of Pennsylvania
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`has subject matter jurisdiction of this Multidistrict Litigation under 28 U.S.C. §§ 1407. All
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`remaining allegations of paragraph 5, not specifically admitted, are denied.
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`6.
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`With respect to the allegations set forth in paragraph 6, JPMorgan Chase admits
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`that the United States District Court for the Western District of Pennsylvania has personal
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`jurisdiction over JPMorgan Chase for this Multidistrict Litigation. Maxim initiated a patent
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`infringement action against JPMorgan Chase in the U.S. District Court for the Eastern District of
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`Texas, Case No. 4:12-CV-00619, which was subsequently transferred to the U.S. District Court
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`for the Western District of Pennsylvania for pretrial proceedings. JPMorgan Chase denies that it
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`have committed or continues to commit any acts of infringement of the patents-in-suit in this
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`jurisdiction or elsewhere. All remaining allegations of paragraph 6, not specifically admitted, are
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`denied.
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`7.
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`With respect to the allegations set forth in paragraph 7, Chase Bank admits that
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`the U.S. District Court for the Western District of Pennsylvania has personal jurisdiction over
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`Chase Bank for this Multidistrict Litigation. Maxim initiated a patent infringement action
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`against Chase Bank in the U.S. District Court for the Eastern District of Texas, Case No. 4:12-
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`CV-00619, which was subsequently transferred to the U.S. District Court for the Western
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`PALOALTO 145813
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
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`Page 2005-002
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 3 of 16
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`District of Pennsylvania for pretrial proceedings. Chase Bank denies that it has committed or
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`continues to commit any acts of infringement of the patents-in-suit in this jurisdiction or
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`elsewhere. All remaining allegations of paragraph 7, not specifically admitted, are denied.
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`8.
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`JPM denies that venue is proper or convenient in this judicial district. JPM
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`further denies all remaining allegations of paragraph 8.
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`THE ASSERTED PATENTS
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`9.
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`JPM admits that U.S. Patent No. 5,940,510 (the “ʼ510 patent”) attached as Exhibit
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`A to the Complaint is entitled “Transfer of Valuable Information Between a Secure Module and
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`Another Module.” JPM denies the remaining allegations, including the allegation that the ʼ510
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`patent was legally issued, of paragraph 9.
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`10.
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`JPM is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of paragraph 10 and therefore deny these allegations.
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`11.
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`JPM admits that U.S. Patent No. 5,949,880 (the “ʼ880 patent”) attached as Exhibit
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`B to the Complaint is entitled “Transfer of Valuable Information Between a Secure Module and
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`Another Module.” JPM denies the remaining allegations, including the allegation that the ʼ880
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`patent was legally issued, of paragraph 11.
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`12.
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`JPM is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of paragraph 12 and therefore deny these allegations.
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`13.
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`JPM admits that U.S. Patent No. 6,105,013 (the “ʼ013 patent”) attached as Exhibit
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`C to the Complaint is entitled “Method, Apparatus, System, and Firmware for Secure
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`Transactions.” JPM denies the remaining allegations, including the allegation that the ʼ013
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`patent was legally issued, of paragraph 13.
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`PALOALTO 145813
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
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`Page 2005-003
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 4 of 16
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`14.
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`JPM is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of paragraph 14 and therefore deny these allegations.
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`15.
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`JPM admits that U.S. Patent No. 6,237,095 (the “ʼ095 patent”) attached as Exhibit
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`D to the Complaint is entitled “Apparatus for Transfer of Secure Information Between a Data
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`Carrying Module and an Electronic Device.” JPM denies the remaining allegations, including
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`the allegation that the ʼ095 patent was legally issued, of paragraph 15.
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`16.
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`JPM is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of paragraph 16 and therefore deny these allegations.
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`17.
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`JPM is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of paragraph 17 and therefore deny these allegations.
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`18.
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`JPM denies the allegations set forth in paragraph 18 of the Complaint.
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`COUNT I: Alleged Infringement of the ’510 Patent
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`19.
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`JPM hereby reiterates and incorporates by reference the responses and denials set
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`forth in paragraphs 1-18 above.
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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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`25.
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`26.
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`JPM denies the allegations set forth in paragraph 20 of the Complaint.
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`JPM denies the allegations set forth in paragraph 21 of the Complaint.
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`JPM denies the allegations set forth in paragraph 22 of the Complaint.
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`JPM denies the allegations set forth in paragraph 23 of the Complaint.
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`JPM denies the allegations set forth in paragraph 24 of the Complaint.
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`JPM denies the allegations set forth in paragraph 25 of the Complaint.
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`JPM denies the allegations set forth in paragraph 26 of the Complaint.
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`PALOALTO 145813
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
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`Page 2005-004
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 5 of 16
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`COUNT II: Alleged Infringement of the ʼ880 Patent
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`27.
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`JPM hereby reiterates and incorporates by reference the responses and denials set
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`forth in paragraphs 1-18 above.
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`28.
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`29.
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`30.
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`31.
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`32.
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`33.
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`34.
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`JPM denies the allegations set forth in paragraph 28 of the Complaint.
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`JPM denies the allegations set forth in paragraph 29 of the Complaint.
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`JPM denies the allegations set forth in paragraph 30 of the Complaint.
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`JPM denies the allegations set forth in paragraph 31 of the Complaint.
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`JPM denies the allegations set forth in paragraph 32 of the Complaint.
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`JPM denies the allegations set forth in paragraph 33 of the Complaint.
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`JPM denies the allegations set forth in paragraph 34 of the Complaint.
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`COUNT III: Alleged Infringement of the ʼ013 Patent
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`35.
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`JPM hereby reiterates and incorporates by reference the responses and denials set
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`forth in paragraphs 1-18 above.
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`36.
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`37.
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`38.
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`39.
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`40.
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`41.
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`42.
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`JPM denies the allegations set forth in paragraph 36 of the Complaint.
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`JPM denies the allegations set forth in paragraph 37 of the Complaint.
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`JPM denies the allegations set forth in paragraph 38 of the Complaint.
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`JPM denies the allegations set forth in paragraph 39 of the Complaint.
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`JPM denies the allegations set forth in paragraph 40 of the Complaint.
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`JPM denies the allegations set forth in paragraph 41 of the Complaint.
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`JPM denies the allegations set forth in paragraph 42 of the Complaint.
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`COUNT IV: Alleged Infringement of the ʼ095 Patent
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`43.
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`JPM hereby reiterates and incorporates by reference the responses and denials set
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`forth in paragraphs 1-18 above.
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`PALOALTO 145813
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
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`Page 2005-005
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 6 of 16
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`44.
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`45.
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`46.
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`47.
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`48.
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`49.
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`50.
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`JPM denies the allegations set forth in paragraph 44 of the Complaint.
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`JPM denies the allegations set forth in paragraph 45 of the Complaint.
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`JPM denies the allegations set forth in paragraph 46 of the Complaint.
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`JPM denies the allegations set forth in paragraph 47 of the Complaint.
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`JPM denies the allegations set forth in paragraph 48 of the Complaint.
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`JPM denies the allegations set forth in paragraph 49 of the Complaint.
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`JPM denies the allegations set forth in paragraph 50 of the Complaint.
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`AFFIRMATIVE DEFENSES
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`Subject to the responses above, JPM alleges and asserts the following defenses in
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`response to the allegations, undertaking the burden of proof only as to those defenses deemed
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`affirmative defenses by law, regardless of how such defenses are denominated herein. In
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`addition to the affirmative defenses described below, subject to their responses above, JPM
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`specifically reserves all rights to allege additional affirmative defenses that become known
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`through the course of discovery.
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`FIRST AFFIRMATIVE DEFENSE
`(NON-INFRINGEMENT)
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`51.
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`JPM has not infringed and is not infringing, has not induced and is not inducing
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`others to infringe, has not contributed to and is not contributing to the infringement of any valid
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`and enforceable claim of the ʼ510 patent, the ʼ880 patent, the ʼ013 patent, or the ʼ095 patent,
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`either literally or under the doctrine of equivalents.
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`PALOALTO 145813
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
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`Page 2005-006
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`SECOND AFFIRMATIVE DEFENSE
`(INVALIDITY)
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`The claims of the ʼ510 patent, the ʼ880 patent, the ʼ013 patent, and the ʼ095 patent
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`52.
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`are invalid and/or unpatentable because they do not comply with one or more of the requirements
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`of Sections 101, 102, 103, 112, 132, 251 of Title 35 of the United States Code.
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`THIRD AFFIRMATIVE DEFENSE
`(ESTOPPEL, WAIVER, ACQUIESCENCE, UNCLEAN HANDS AND/OR LACHES)
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`53. Maxim’s claims are barred, in whole or in part, by the by the doctrine of estoppel,
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`waiver, acquiescence, unclean hands, and/or laches.
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`FOURTH AFFIRMATIVE DEFENSE
`(LIMITATION OF DAMAGES UNDER 35 U.S.C. §§ 286)
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`54. Maxim’s right to seek damages and costs is limited by statute, including without
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`limitation, by 35 U.S.C. § 286.
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`FIFTH AFFIRMATIVE DEFENSE
`(LIMITATION OF DAMAGES UNDER 28 U.S.C. §§ 1498)
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`If Maxim is entitled to any relief for alleged infringement of the patents in suit,
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`55.
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`some or all of that relief is limited under 28 U.S.C. § 1498.
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`SIXTH AFFIRMATIVE DEFENSE
`(PROSECUTION HISTORY ESTOPPEL)
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`56.
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`Based on proceedings before the United States Patent and Trademark Office
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`(“PTO”) during the prosecution of the application that ultimately issued as the patent-in-suit
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`and/or the application(s) to which the patent-in-suit claim priority, Maxim is precluded or
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`otherwise estopped from asserting any construction of the claims of the patents-in-suit to cover
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`any JPM product, system, or process, either literally or under the doctrine of equivalents.
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`PALOALTO 145813
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
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`Page 2005-007
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 8 of 16
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`SEVENTH AFFIRMATIVE DEFENSE
`(EXHAUSTION, IMPLIED LICENSE, AND/OR RESTRICTIONS ON DOUBLE RECOVERY)
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`57. Maxim’s claims are barred, in whole or in part, by exhaustion, implied license,
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`and/or restrictions on double recovery.
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`EIGTH AFFIRMATIVE DEFENSE
`(LACK OF SPECIFIC INTENT)
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`58.
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`JPM lacked and lacks the specific intent to induce third parties to infringe any
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`valid claim of the ʼ510 patent, the ʼ880 patent, the ʼ013 patent, and the ʼ095 patent.
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`NINTH AFFIRMATIVE DEFENSE
`(LACK OF WILLFULNESS)
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`59.
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`JPM has not infringed and does not infringe, willfully or otherwise, any asserted
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`claims of any of the patents-in-suit, including the ʼ510 patent, the ʼ880 patent, the ʼ013 patent,
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`and the ʼ095 patent. Maxim is not entitled to increased damages under 35 U.S.C. § 284.
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`TENTH AFFIRMATIVE DEFENSE
`(INJUNCTIVE RELIEF NOT WARRANTED)
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`60. Maxim is not entitled to preliminary or permanent injunctive relief because (1)
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`Maxim is not likely to prevail on the merits; (2) Maxim has not suffered nor will they suffer
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`irreparable harm because of JPM’s conduct; (3) any harm to Maxim would be outweighed by the
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`harm to JPM if any injunction were entered; (4) Maxim has an adequate remedy at law even if
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`they were to prevail in this action; and (5) public interest would not be served by an injunction.
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`ELEVENTH AFFIRMATIVE DEFENSE
`(FAILURE TO MARK)
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`61.
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`On information and belief, Maxim’s claims for damages are limited and/or barred,
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`in part or in whole, by the failure to mark, by itself or by one or more parties licensed to practice
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`the patents-in-suit, including the ʼ510 patent, the ʼ880 patent, the ʼ013 patent, and the ʼ095
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`patent, as required by 35 U.S.C. 287.
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`PALOALTO 145813
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
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`Page 2005-008
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`RESERVATION OF ADDITIONAL DEFENSES
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`62. Maxim reserve all affirmative defenses under Rule 8(c) of the Federal Rules of
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`Civil Procedure, the Patent Laws of the United States and any other defenses, at law or in equity,
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`which may now exist or in the future may be available based on discovery and further factual
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`investigation in this case.
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`JPM, for its Counterclaims against Maxim and upon information and belief, state and
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`COUNTERCLAIMS
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`allege as follows:
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`THE PARTIES
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`1.
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`Defendant and Countclaim Plaintiff JPMorgan Chase & Co. is a corporation
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`existing and organized under the laws of Delaware with its principal place of business located in
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`New York, NY. Defendant and Counterclaim Plaintiff JPMorgan Chase Bank, N.A. is a wholly-
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`owned subsidiary of JPMorgan Chase & Co. and is a National Association with its principal
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`place of business in Columbus, Ohio.
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`2.
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`On information and belief, plaintiff and Counterclaim Defendant Maxim
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`Integrated Products, Inc. (“Maxim”) is a corporation existing and organized under the laws of
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`Delaware with a principal place of business at 120 San Gabriel Drive, Sunnyvale, California
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`94086.
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`JURISDICTION AND VENUE
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`3.
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`Subject to JPM’s affirmative defenses and denials, JPM alleges that this Court has
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`jurisdiction over the subject matter of these Counterclaims under, without limitation, 28 U.S.C.
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`§§ 1331, 1338(a), 1367, 2201, and 2202 and venue for these Counterclaims is proper in this
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`district.
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`PALOALTO 145813
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
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`Page 2005-009
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 10 of 16
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`4.
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`5.
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`This Court has personal jurisdiction over Maxim.
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`FACTUAL BACKGROUND
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`In its Complaint, Maxim asserts that JPM has infringed U.S. Patent Nos.
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`5,940,510 (“the ʼ510 patent”); 5,949,880 (“the ʼ880 patent”); 6,105,013 (“the ʼ013 patent”); and
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`6,237,095 (“the ʼ095 patent”) (collectively, the “JPM asserted patents”).
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`6.
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`The JPM asserted patents are invalid, unpatentable, unenforceable, and/or have
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`not been and are not infringed by JPM, either directly or indirectly.
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`7.
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`Consequently, there is an actual case or controversy between the parties over the
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`non-infringement, invalidity, unpatentability and/or unenforceability of the asserted patents.
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`COUNT ONE
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`Declaratory Judgment of Non-Infringement of U.S. Patent No. 5,940,510
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`8.
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`JPM restates and incorporates by reference their allegations in paragraphs 1
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`through 7 of their Counterclaims.
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`9.
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`An actual case or controversy exists between JPM and Maxim as to JPM’s non-
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`infringement of the ʼ510 patent.
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`10.
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`A judicial declaration is necessary and appropriate so that JPM may ascertain
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`their rights regarding the ʼ510 patent.
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`11.
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`JPM has not infringed and does not infringe, directly or indirectly, any valid and
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`enforceable claim of the ʼ510 patent.
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`COUNT TWO
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`Declaratory Judgment of Non-Infringement of U.S. Patent No. 5,949,880
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`12.
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`JPM restates and incorporates by reference their allegations in paragraphs 1
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`through 7 of their Counterclaims.
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`PALOALTO 145813
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
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`Page 2005-010
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 11 of 16
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`13.
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`An actual case or controversy exists between JPM and Maxim as to JPM’s non-
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`infringement of the ʼ880 patent.
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`14.
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`A judicial declaration is necessary and appropriate so that JPM may ascertain
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`their rights regarding the ʼ880 patent.
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`15.
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`JPM has not infringed and does not infringe, directly or indirectly, any valid and
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`enforceable claim of the ʼ880 patent.
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`COUNT THREE
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`Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,105,013
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`16.
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`JPM restates and incorporates by reference their allegations in paragraphs 1
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`through 7 of their Counterclaims.
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`17.
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`An actual case or controversy exists between JPM and Maxim as to JPM’s non-
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`infringement of the ʼ013 patent.
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`18.
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`A judicial declaration is necessary and appropriate so that JPM may ascertain
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`their rights regarding the ʼ013 patent.
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`19.
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`JPM has not infringed and does not infringe, directly or indirectly, any valid and
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`enforceable claim of the ʼ013 patent.
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`COUNT FOUR
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`Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,237,095
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`20.
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`JPM restates and incorporates by reference their allegations in paragraphs 1
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`through 7 of their Counterclaims.
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`21.
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`An actual case or controversy exists between JPM and Maxim as to JPM’s non-
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`infringement of the ʼ095 patent.
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`PALOALTO 145813
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
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`Page 2005-011
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 12 of 16
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`22.
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`A judicial declaration is necessary and appropriate so that JPM may ascertain
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`their rights regarding the ʼ095 patent.
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`23.
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`JPM has not infringed and does not infringe, directly or indirectly, any valid and
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`enforceable claim of the ʼ095 patent.
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`COUNT FIVE
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`Declaratory Judgment of Invalidity of U.S. Patent No. 5,940,510
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`24.
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`JPM restates and incorporates by reference their allegations in paragraphs 1
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`through 7 of their Counterclaims.
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`25.
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`An actual case or controversy exists between JPM and Maxim as to the invalidity
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`of one or more claims of the ʼ510 patent.
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`26.
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`A judicial declaration is necessary and appropriate so that JPM may ascertain
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`their rights as to the validity of the ʼ510 patent.
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`27.
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`The ʼ510 patent is invalid for failure to meet the conditions of patentability and/or
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`otherwise comply with one or more of 35 U.S.C. §§ 101, 102, 103, 112, 132, and 251.
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`COUNT SIX
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`Declaratory Judgment of Invalidity of U.S. Patent No. 5,949,880
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`28.
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`JPM restates and incorporates by reference their allegations in paragraphs 1
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`through 7 of their Counterclaims.
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`29.
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`An actual case or controversy exists between JPM and Maxim as to the invalidity
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`of one or more claims of the ʼ880 patent.
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`30.
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`A judicial declaration is necessary and appropriate so that JPM may ascertain
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`their rights as to the validity of the ʼ880 patent.
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`PALOALTO 145813
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
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`Page 2005-012
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 13 of 16
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`31.
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`The ʼ880 patent is invalid for failure to meet the conditions of patentability and/or
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`otherwise comply with one or more of 35 U.S.C. §§ 101, 102, 103, 112, 132, and 251.
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`COUNT SEVEN
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`Declaratory Judgment of Invalidity of U.S. Patent No. 6,105,013
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`32.
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`JPM restates and incorporates by reference their allegations in paragraphs 1
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`through 7 of their Counterclaims.
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`33.
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`An actual case or controversy exists between JPM and Maxim as to the invalidity
`
`of one or more claims of the ʼ013 patent.
`
`34.
`
`A judicial declaration is necessary and appropriate so that JPM may ascertain
`
`their rights as to the validity of the ʼ013 patent.
`
`35.
`
`The ʼ013 patent is invalid for failure to meet the conditions of patentability and/or
`
`otherwise comply with one or more of 35 U.S.C. §§ 101, 102, 103, 112, 132, and 251.
`
`COUNT EIGHT
`
`Declaratory Judgment of Invalidity of U.S. Patent No. 6,237,095
`
`36.
`
`JPM restates and incorporates by reference their allegations in paragraphs 1
`
`through 7 of their Counterclaims.
`
`37.
`
`An actual case or controversy exists between JPM and Maxim as to the invalidity
`
`of one or more claims of the ʼ095 patent.
`
`38.
`
`A judicial declaration is necessary and appropriate so that JPM may ascertain
`
`their rights as to the validity of the ʼ095 patent.
`
`39.
`
`The ʼ095 patent is invalid for failure to meet the conditions of patentability and/or
`
`otherwise comply with one or more of 35 U.S.C. §§ 101, 102, 103, 112, 132, and 251.
`
`
`
`PALOALTO 145813
`
`
`13
`
`
`
`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-013
`
`

`

`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 14 of 16
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`
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`PRAYER FOR RELIEF
`
`WHEREFORE, JPM pray for judgment as follows:
`
`a.
`
`b.
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`c.
`
`A judgment dismissing with prejudice Maxim’s Complaint against JPM;
`
`A judgment in favor of JPM on all of its Counterclaims;
`
`A declaration that JPM has not infringed and is not infringing, either directly or
`
`indirectly, any valid claims of the ʼ510 patent;
`
`d.
`
`e.
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`A declaration that the ʼ510 patent is invalid;
`
`A declaration that JPM has not infringed and is not infringing, either directly or
`
`indirectly, any valid claims of the ʼ880 patent;
`
`f.
`
`g.
`
`A declaration that the ʼ880 patent is invalid;
`
`A declaration that JPM has not infringed and is not infringing, either directly or
`
`indirectly, any valid claims of the ʼ013 patent;
`
`h.
`
`i.
`
`A declaration that the ʼ013 patent is invalid;
`
`A declaration that JPM has not infringed and is not infringing, either directly or
`
`indirectly, any valid claims of the ʼ095 patent;
`
`j.
`
`k.
`
`A declaration that the ʼ095 patent is invalid;
`
`A declaration that this case is exceptional and an award to JPM of their reasonable
`
`costs and expenses of litigation, including attorneys’ fees and expert witness fees;
`
`l.
`
`Such other and further relief as this Court may deem just and proper.
`
`
`
`DEMAND FOR JURY TRIAL
`
`In accordance with Rule 38 of the Federal Rules of Civil Procedure, JPM respectfully
`demands a jury trial of all issues triable to a jury in this action.
`
`PALOALTO 145813
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`
`14
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`
`
`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-014
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`

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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 15 of 16
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`
`
`
`
`Dated: April 2, 2013
`
`
`
`Respectfully Submitted,
`
`
`
`/s/ Bijal V. Vakil
`Samuel W. Braver
`PA I.D. No. 19682
`Ralph G. Fischer
`PA I.D. No. 200793
`BUCHANAN INGERSOLL & ROONEY PC
`One Oxford Centre
`301 Grant Street, 20th Floor
`Pittsburgh, PA 15219-1410
`Telephone 412.562.8800
`Facsimile 412.562.1041
`
`Bijal V. Vakil
`CA State Bar No.: 192878
`bvakil@whitecase.com
`Shamita D. Etienne-Cummings
`CA State Bar No.: 202090
`setienne@whitecase.com
`WHITE & CASE LLP
`3000 El Camino Real
`Five Palo Alto Square 9th Floor
`Palo Alto, CA 94306
`Telephone 650.213.0300
`Facsimile: 650.213.8158
`
`Attorneys for Defendants and Counterclaimants
`JPMORGAN CHASE & CO. and
`JPMORGAN BANK, N.A.
`
`
`
`
`
`PALOALTO 145813
`
`
`15
`
`
`
`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-015
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`

`

`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 16 of 16
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`
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on the 2nd day of April, 2013 the foregoing document was
`
`electronically filed with the Clerk of the Court using the CM/ECF system which will issue an
`
`electronic notification of filing to all counsel of record.
`
`/s/ Bijal V. Vakil
`Bijal Vakil
`
`PALOALTO 145813
`
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`16
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`
`
`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-016
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`