`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
`
`IN RE: MAXIM INTEGRATED PRODUCTS,
`INC., MDL NO. 2354
`
`
`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
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`
`
`Plaintiff,
`
`
`v.
`
`JPMORGAN CHASE & CO. and
`JPMORGAN CHASE BANK, N.A.,
`
`
`Defendants/Counterclaim Plaintiff.
`
`
`
`
`
`
`
`ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS OF
`JPMORGAN CHASE & CO. AND JPMORGAN CHASE BANK, N.A.
`TO PLAINTIFF’S COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendants JP Morgan Chase & Co. and JP Morgan Chase Bank, N.A. (collectively,
`
`“JPM”) answer plaintiff Maxim Integrated Products, Inc.’s (“Maxim”) Complaint as follows:
`
`THE PARTIES
`
`1.
`
`JPM is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations in paragraph 1 and therefore deny these allegations.
`
`2.
`
`JPM admits that JPMorgan Case is a corporation organized and existing under the
`
`laws of the State of Delaware with its principal place of business located in New York, NY.
`
`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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`
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 2 of 16
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`
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`3.
`
`JPM admits that Chase Bank is a wholly-owned subsidiary of JPMorgan Chase.
`
`JPM denies that Chase Bank has a principal place of business in New York, NY. JPM denies the
`
`remaining allegations contained in Paragraph 3.
`
`JURISDICTION AND VENUE
`
`4.
`
`JPM admits that Maxim purports to bring this action under Title 35 of the United
`
`States Code.
`
`5.
`
`JPM admits that the U.S. District Court for the Western District of Pennsylvania
`
`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.
`
`6.
`
`With respect to the allegations set forth in paragraph 6, JPMorgan Chase admits
`
`that the United States District Court for the Western District of Pennsylvania has personal
`
`jurisdiction over JPMorgan Chase for this Multidistrict Litigation. Maxim initiated a patent
`
`infringement action against JPMorgan Chase in the U.S. District Court for the Eastern District of
`
`Texas, Case No. 4:12-CV-00619, which was subsequently transferred to the U.S. District Court
`
`for the Western District of Pennsylvania for pretrial proceedings. JPMorgan Chase denies that it
`
`have committed or continues to commit any acts of infringement of the patents-in-suit in this
`
`jurisdiction or elsewhere. All remaining allegations of paragraph 6, not specifically admitted, are
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`denied.
`
`7.
`
`With respect to the allegations set forth in paragraph 7, Chase Bank admits that
`
`the U.S. District Court for the Western District of Pennsylvania has personal jurisdiction over
`
`Chase Bank for this Multidistrict Litigation. Maxim initiated a patent infringement action
`
`against Chase Bank in the U.S. District Court for the Eastern District of Texas, Case No. 4:12-
`
`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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`2
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-002
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`
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 3 of 16
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`
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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
`
`elsewhere. All remaining allegations of paragraph 7, not specifically admitted, are denied.
`
`8.
`
`JPM denies that venue is proper or convenient in this judicial district. JPM
`
`further denies all remaining allegations of paragraph 8.
`
`THE ASSERTED PATENTS
`
`9.
`
`JPM admits that U.S. Patent No. 5,940,510 (the “ʼ510 patent”) attached as Exhibit
`
`A to the Complaint is entitled “Transfer of Valuable Information Between a Secure Module and
`
`Another Module.” JPM denies the remaining allegations, including the allegation that the ʼ510
`
`patent was legally issued, of paragraph 9.
`
`10.
`
`JPM is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 10 and therefore deny these allegations.
`
`11.
`
`JPM admits that U.S. Patent No. 5,949,880 (the “ʼ880 patent”) attached as Exhibit
`
`B to the Complaint is entitled “Transfer of Valuable Information Between a Secure Module and
`
`Another Module.” JPM denies the remaining allegations, including the allegation that the ʼ880
`
`patent was legally issued, of paragraph 11.
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`12.
`
`JPM is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 12 and therefore deny these allegations.
`
`13.
`
`JPM admits that U.S. Patent No. 6,105,013 (the “ʼ013 patent”) attached as Exhibit
`
`C to the Complaint is entitled “Method, Apparatus, System, and Firmware for Secure
`
`Transactions.” JPM denies the remaining allegations, including the allegation that the ʼ013
`
`patent was legally issued, of paragraph 13.
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`PALOALTO 145813
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`3
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-003
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`
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 4 of 16
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`
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`14.
`
`JPM is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 14 and therefore deny these allegations.
`
`15.
`
`JPM admits that U.S. Patent No. 6,237,095 (the “ʼ095 patent”) attached as Exhibit
`
`D to the Complaint is entitled “Apparatus for Transfer of Secure Information Between a Data
`
`Carrying Module and an Electronic Device.” JPM denies the remaining allegations, including
`
`the allegation that the ʼ095 patent was legally issued, of paragraph 15.
`
`16.
`
`JPM is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 16 and therefore deny these allegations.
`
`17.
`
`JPM is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 17 and therefore deny these allegations.
`
`18.
`
`JPM denies the allegations set forth in paragraph 18 of the Complaint.
`
`COUNT I: Alleged Infringement of the ’510 Patent
`
`19.
`
`JPM hereby reiterates and incorporates by reference the responses and denials set
`
`forth in paragraphs 1-18 above.
`
`20.
`
`21.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`JPM denies the allegations set forth in paragraph 20 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 21 of the Complaint.
`
`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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`4
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`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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`
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`COUNT II: Alleged Infringement of the ʼ880 Patent
`
`27.
`
`JPM hereby reiterates and incorporates by reference the responses and denials set
`
`forth in paragraphs 1-18 above.
`
`28.
`
`29.
`
`30.
`
`31.
`
`32.
`
`33.
`
`34.
`
`JPM denies the allegations set forth in paragraph 28 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 29 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 30 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 31 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 32 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 33 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 34 of the Complaint.
`
`COUNT III: Alleged Infringement of the ʼ013 Patent
`
`35.
`
`JPM hereby reiterates and incorporates by reference the responses and denials set
`
`forth in paragraphs 1-18 above.
`
`36.
`
`37.
`
`38.
`
`39.
`
`40.
`
`41.
`
`42.
`
`JPM denies the allegations set forth in paragraph 36 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 37 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 38 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 39 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 40 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 41 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 42 of the Complaint.
`
`COUNT IV: Alleged Infringement of the ʼ095 Patent
`
`43.
`
`JPM hereby reiterates and incorporates by reference the responses and denials set
`
`forth in paragraphs 1-18 above.
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`PALOALTO 145813
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`5
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-005
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`
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 6 of 16
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`
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`44.
`
`45.
`
`46.
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`47.
`
`48.
`
`49.
`
`50.
`
`JPM denies the allegations set forth in paragraph 44 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 45 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 46 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 47 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 48 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 49 of the Complaint.
`
`JPM denies the allegations set forth in paragraph 50 of the Complaint.
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`AFFIRMATIVE DEFENSES
`
`Subject to the responses above, JPM alleges and asserts the following defenses in
`
`response to the allegations, undertaking the burden of proof only as to those defenses deemed
`
`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
`
`specifically reserves all rights to allege additional affirmative defenses that become known
`
`through the course of discovery.
`
`FIRST AFFIRMATIVE DEFENSE
`(NON-INFRINGEMENT)
`
`51.
`
`JPM has not infringed and is not infringing, has not induced and is not inducing
`
`others to infringe, has not contributed to and is not contributing to the infringement of any valid
`
`and enforceable claim of the ʼ510 patent, the ʼ880 patent, the ʼ013 patent, or the ʼ095 patent,
`
`either literally or under the doctrine of equivalents.
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`PALOALTO 145813
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`6
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-006
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`
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 7 of 16
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`
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`SECOND AFFIRMATIVE DEFENSE
`(INVALIDITY)
`
`The claims of the ʼ510 patent, the ʼ880 patent, the ʼ013 patent, and the ʼ095 patent
`
`52.
`
`are invalid and/or unpatentable because they do not comply with one or more of the requirements
`
`of Sections 101, 102, 103, 112, 132, 251 of Title 35 of the United States Code.
`
`THIRD AFFIRMATIVE DEFENSE
`(ESTOPPEL, WAIVER, ACQUIESCENCE, UNCLEAN HANDS AND/OR LACHES)
`
`53. Maxim’s claims are barred, in whole or in part, by the by the doctrine of estoppel,
`
`waiver, acquiescence, unclean hands, and/or laches.
`
`FOURTH AFFIRMATIVE DEFENSE
`(LIMITATION OF DAMAGES UNDER 35 U.S.C. §§ 286)
`
`54. Maxim’s right to seek damages and costs is limited by statute, including without
`
`limitation, by 35 U.S.C. § 286.
`
`FIFTH AFFIRMATIVE DEFENSE
`(LIMITATION OF DAMAGES UNDER 28 U.S.C. §§ 1498)
`
`If Maxim is entitled to any relief for alleged infringement of the patents in suit,
`
`55.
`
`some or all of that relief is limited under 28 U.S.C. § 1498.
`
`SIXTH AFFIRMATIVE DEFENSE
`(PROSECUTION HISTORY ESTOPPEL)
`
`56.
`
`Based on proceedings before the United States Patent and Trademark Office
`
`(“PTO”) during the prosecution of the application that ultimately issued as the patent-in-suit
`
`and/or the application(s) to which the patent-in-suit claim priority, Maxim is precluded or
`
`otherwise estopped from asserting any construction of the claims of the patents-in-suit to cover
`
`any JPM product, system, or process, either literally or under the doctrine of equivalents.
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`PALOALTO 145813
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`7
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`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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`
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`SEVENTH AFFIRMATIVE DEFENSE
`(EXHAUSTION, IMPLIED LICENSE, AND/OR RESTRICTIONS ON DOUBLE RECOVERY)
`
`57. Maxim’s claims are barred, in whole or in part, by exhaustion, implied license,
`
`and/or restrictions on double recovery.
`
`EIGTH AFFIRMATIVE DEFENSE
`(LACK OF SPECIFIC INTENT)
`
`58.
`
`JPM lacked and lacks the specific intent to induce third parties to infringe any
`
`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)
`
`59.
`
`JPM has not infringed and does not infringe, willfully or otherwise, any asserted
`
`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.
`
`TENTH AFFIRMATIVE DEFENSE
`(INJUNCTIVE RELIEF NOT WARRANTED)
`
`60. Maxim is not entitled to preliminary or permanent injunctive relief because (1)
`
`Maxim is not likely to prevail on the merits; (2) Maxim has not suffered nor will they suffer
`
`irreparable harm because of JPM’s conduct; (3) any harm to Maxim would be outweighed by the
`
`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)
`
`61.
`
`On information and belief, Maxim’s claims for damages are limited and/or barred,
`
`in part or in whole, by the failure to mark, by itself or by one or more parties licensed to practice
`
`the patents-in-suit, including the ʼ510 patent, the ʼ880 patent, the ʼ013 patent, and the ʼ095
`
`patent, as required by 35 U.S.C. 287.
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`PALOALTO 145813
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`8
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-008
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`
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`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 9 of 16
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`
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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
`
`Civil Procedure, the Patent Laws of the United States and any other defenses, at law or in equity,
`
`which may now exist or in the future may be available based on discovery and further factual
`
`investigation in this case.
`
`
`
`JPM, for its Counterclaims against Maxim and upon information and belief, state and
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`COUNTERCLAIMS
`
`allege as follows:
`
`THE PARTIES
`
`1.
`
`Defendant and Countclaim Plaintiff JPMorgan Chase & Co. is a corporation
`
`existing and organized under the laws of Delaware with its principal place of business located in
`
`New York, NY. Defendant and Counterclaim Plaintiff JPMorgan Chase Bank, N.A. is a wholly-
`
`owned subsidiary of JPMorgan Chase & Co. and is a National Association with its principal
`
`place of business in Columbus, Ohio.
`
`2.
`
`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
`
`Delaware with a principal place of business at 120 San Gabriel Drive, Sunnyvale, California
`
`94086.
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`JURISDICTION AND VENUE
`
`3.
`
`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.
`
`§§ 1331, 1338(a), 1367, 2201, and 2202 and venue for these Counterclaims is proper in this
`
`district.
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`PALOALTO 145813
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`9
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`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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`
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`4.
`
`5.
`
`This Court has personal jurisdiction over Maxim.
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`FACTUAL BACKGROUND
`
`In its Complaint, Maxim asserts that JPM has infringed U.S. Patent Nos.
`
`5,940,510 (“the ʼ510 patent”); 5,949,880 (“the ʼ880 patent”); 6,105,013 (“the ʼ013 patent”); and
`
`6,237,095 (“the ʼ095 patent”) (collectively, the “JPM asserted patents”).
`
`6.
`
`The JPM asserted patents are invalid, unpatentable, unenforceable, and/or have
`
`not been and are not infringed by JPM, either directly or indirectly.
`
`7.
`
`Consequently, there is an actual case or controversy between the parties over the
`
`non-infringement, invalidity, unpatentability and/or unenforceability of the asserted patents.
`
`COUNT ONE
`
`Declaratory Judgment of Non-Infringement of U.S. Patent No. 5,940,510
`
`8.
`
`JPM restates and incorporates by reference their allegations in paragraphs 1
`
`through 7 of their Counterclaims.
`
`9.
`
`An actual case or controversy exists between JPM and Maxim as to JPM’s non-
`
`infringement of the ʼ510 patent.
`
`10.
`
`A judicial declaration is necessary and appropriate so that JPM may ascertain
`
`their rights regarding the ʼ510 patent.
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`11.
`
`JPM has not infringed and does not infringe, directly or indirectly, any valid and
`
`enforceable claim of the ʼ510 patent.
`
`COUNT TWO
`
`Declaratory Judgment of Non-Infringement of U.S. Patent No. 5,949,880
`
`12.
`
`JPM restates and incorporates by reference their allegations in paragraphs 1
`
`through 7 of their Counterclaims.
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`PALOALTO 145813
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`10
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`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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`
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`13.
`
`An actual case or controversy exists between JPM and Maxim as to JPM’s non-
`
`infringement of the ʼ880 patent.
`
`14.
`
`A judicial declaration is necessary and appropriate so that JPM may ascertain
`
`their rights regarding the ʼ880 patent.
`
`15.
`
`JPM has not infringed and does not infringe, directly or indirectly, any valid and
`
`enforceable claim of the ʼ880 patent.
`
`COUNT THREE
`
`Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,105,013
`
`16.
`
`JPM restates and incorporates by reference their allegations in paragraphs 1
`
`through 7 of their Counterclaims.
`
`17.
`
`An actual case or controversy exists between JPM and Maxim as to JPM’s non-
`
`infringement of the ʼ013 patent.
`
`18.
`
`A judicial declaration is necessary and appropriate so that JPM may ascertain
`
`their rights regarding the ʼ013 patent.
`
`19.
`
`JPM has not infringed and does not infringe, directly or indirectly, any valid and
`
`enforceable claim of the ʼ013 patent.
`
`COUNT FOUR
`
`Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,237,095
`
`20.
`
`JPM restates and incorporates by reference their allegations in paragraphs 1
`
`through 7 of their Counterclaims.
`
`21.
`
`An actual case or controversy exists between JPM and Maxim as to JPM’s non-
`
`infringement of the ʼ095 patent.
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`PALOALTO 145813
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`11
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`
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`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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`
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`22.
`
`A judicial declaration is necessary and appropriate so that JPM may ascertain
`
`their rights regarding the ʼ095 patent.
`
`23.
`
`JPM has not infringed and does not infringe, directly or indirectly, any valid and
`
`enforceable claim of the ʼ095 patent.
`
`COUNT FIVE
`
`Declaratory Judgment of Invalidity of U.S. Patent No. 5,940,510
`
`24.
`
`JPM restates and incorporates by reference their allegations in paragraphs 1
`
`through 7 of their Counterclaims.
`
`25.
`
`An actual case or controversy exists between JPM and Maxim as to the invalidity
`
`of one or more claims of the ʼ510 patent.
`
`26.
`
`A judicial declaration is necessary and appropriate so that JPM may ascertain
`
`their rights as to the validity of the ʼ510 patent.
`
`27.
`
`The ʼ510 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 SIX
`
`Declaratory Judgment of Invalidity of U.S. Patent No. 5,949,880
`
`28.
`
`JPM restates and incorporates by reference their allegations in paragraphs 1
`
`through 7 of their Counterclaims.
`
`29.
`
`An actual case or controversy exists between JPM and Maxim as to the invalidity
`
`of one or more claims of the ʼ880 patent.
`
`30.
`
`A judicial declaration is necessary and appropriate so that JPM may ascertain
`
`their rights as to the validity of the ʼ880 patent.
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`PALOALTO 145813
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`
`12
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`
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`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-012
`
`
`
`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 13 of 16
`
`
`
`31.
`
`The ʼ880 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 SEVEN
`
`Declaratory Judgment of Invalidity of U.S. Patent No. 6,105,013
`
`32.
`
`JPM restates and incorporates by reference their allegations in paragraphs 1
`
`through 7 of their Counterclaims.
`
`33.
`
`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
`
`
`
`PRAYER FOR RELIEF
`
`WHEREFORE, JPM pray for judgment as follows:
`
`a.
`
`b.
`
`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.
`
`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
`
`
`14
`
`
`
`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-014
`
`
`
`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 15 of 16
`
`
`
`
`
`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
`
`
`
`Case 2:12-cv-01641-JFC Document 39 Filed 04/02/13 Page 16 of 16
`
`
`
`
`
`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
`
`
`16
`
`
`
`JPM ANSWER AND COUNTERCLAIMS
`CASE NO. 2:12-CV-0244-JFC
`2:12-CV-01641-JFC
`
`Page 2005-016
`
`