Case 2:13-cv-01061-JRG-RSP Document 210 Filed 10/31/14 Page 1 of 17 PageID #: 2789
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`E-WATCH, INC. and E-WATCH
`CORPORATION
`Plaintiffs,
`
`
`v.
`
`APPLE, INC., ET AL.
`Defendants.
`
`
`§
`§
`§
`§
`§
`§
`
`
`
` NO. 2:13-CV-01077-JRG-RSP
`
` NO. 2:13-CV-01061-JRG-RSP
` (LEAD CASE)
`
` JURY TRIAL DEMANDED
`
`
`
`KYOCERA COMMUNICATIONS, INC. AND KYOCERA INTERNATIONAL, INC.’s
`AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO
`PLAINTIFFS’ COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendants Kyocera Communications, Inc. (“KCI”) and Kyocera International, Inc.
`
`(“KII”) (collectively, “Kyocera”) provide this Amended Answer to the Original Complaint for
`
`patent infringement (“Complaint”) filed by Plaintiffs e-Watch, Inc. and e-Watch Corporation
`
`(collectively, “e-Watch”).
`
`I. NATURE OF THE ACTION
`
`1.
`
`Kyocera admits that e-Watch’s pleading purports to bring a patent infringement
`
`action against Kyocera. Kyocera denies the remainder of the allegations in Paragraph 1 of the
`
`Complaint, and KII specifically denies that it made, used, sold, offered for sale, or imported any
`
`products into the United States and hence denies that it is a proper party to this case.
`
`2.
`
`Kyocera admits that, on its face, U.S. Patent No. 7,365,871 (“’871 Patent”) is
`
`entitled “Apparatus for Capturing, Converting and Transmitting a Visual Image Signal Via a
`
`Digital Transmission System” and issued on April 29, 2008. Kyocera also admits that, on its
`
`face, U.S. Patent No. 7,643,168 (“’168 Patent”) is entitled “Apparatus for Capturing, Converting
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`Kyocera Ex. 1015
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`

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`and Transmitting a Visual Image Signal Via a Digital Transmission System” and issued on
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`January 5, 2010. Kyocera denies that the ’871 Patent and the ’168 Patent (collectively,
`
`“Asserted Patents”) were validly issued by the U.S. Patent and Trademark Office.
`
`3.
`
`Kyocera lacks the knowledge or information sufficient to form a belief about the
`
`truth of the allegations of Paragraph 3 of the Complaint and therefore denies them.
`
`4.
`
`KCI denies any infringement of the ’871 Patent and the ’168 Patent and thus
`
`denies the allegations of Paragraph 4 of the Complaint. KII denies making, using, selling,
`
`importing and/or distributing any products into the United States and, thus, is incapable of
`
`infringing the Asserted Patents.
`
`5.
`
`Kyocera admits that e-Watch purports to seek damages but denies that e-Watch is
`
`entitled to any damages. Kyocera denies any infringement of the Asserted Patents and thus also
`
`denies that e-Watch is entitled to prejudgment interest as is requested in Paragraph 5 of the
`
`Complaint.
`
`II. THE PARTIES
`
`6.
`
`Kyocera lacks the knowledge or information sufficient to form a belief about the
`
`truth of the allegations of Paragraph 6 of the Complaint and therefore denies them.
`
`7.
`
`Kyocera lacks the knowledge or information sufficient to form a belief about the
`
`truth of the allegations of Paragraph 7 of the Complaint and therefore denies them.
`
`8.
`
`Kyocera admits that KCI is a corporation organized under the laws of Delaware
`
`and that it may be served by serving its registered agent CSC-Lawyers Incorporating Service
`
`Company. KCI’s principal place of business is located at 9520 Towne Centre Drive, San Diego,
`
`California 92121. Kyocera thus denies the remaining allegations of Paragraph 8 of the
`
`Complaint.
`
`
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`2
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`Kyocera Ex. 1015
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`

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`9.
`
`Kyocera admits that KII is a corporation organized under the laws of California
`
`with its principal place of business located at 8611 Balboa Avenue, San Diego, California 92123
`
`and that it may be served by serving its registered agent CSC-Lawyers Incorporating Service
`
`Company. Kyocera denies any remaining allegations of Paragraph 9 of the Complaint.
`
`III. JURISDICTION AND VENUE
`
`10.
`
`Kyocera admits that the Complaint purports to assert claims for patent
`
`infringement arising under the patent laws of the United States, including 35 U.S.C. §§ 271 and
`
`281. Kyocera admits that this Court has jurisdiction over this action pursuant to 28 U.S.C. §§
`
`1331 and 1338(a). Except as specifically admitted, Kyocera denies the allegations in paragraph
`
`10 of the Complaint.
`
`11.
`
`KCI does not dispute that this Court has personal jurisdiction over it in this
`
`particular action. KCI admits that its products have been sold in the United States, the State of
`
`Texas, and the Eastern District of Texas. KII denies that it made, used, sold, offered for sale, or
`
`imported any products into the United States and hence denies that it is a proper party to this case.
`
`Kyocera thus denies the remaining allegations in paragraph 11 of the Complaint.
`
`IV. PATENTS-IN-SUIT
`
`12.
`
`The allegations of Paragraph 12 of the Complaint present a legal conclusion to
`
`which no response is required, but if such a response were required, Kyocera would deny the
`
`same.
`
`13.
`
`Kyocera lacks the knowledge or information sufficient to form a belief about the
`
`truth of the allegations of Paragraph 13 of the Complaint and therefore denies them.
`
`14.
`
`Kyocera lacks the knowledge or information sufficient to form a belief about the
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`truth of the allegations of Paragraph 14 of the Complaint and therefore denies them.
`
`
`
`3
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`Kyocera Ex. 1015
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`

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`V. DEFENDANTS’ ACTS
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`15.
`
`Kyocera denies that it has infringed and is infringing the Asserted Patents and
`
`thus denies the allegations of Paragraph 15 of the Complaint.
`
`16.
`
`Kyocera denies that it has infringed and is infringing the Asserted Patents and
`
`thus denies the allegations of Paragraph 16 of the Complaint.
`
`17.
`
`Kyocera denies that it has infringed and is infringing the Asserted Patents and
`
`thus denies the allegations of Paragraph 17 of the Complaint.
`
`COUNT ONE
`PATENT INFRINGEMENT—U.S. PATENT NO. 7,365,871
`
`18.
`
`Kyocera realleges and incorporates by reference its denials and admissions set
`
`forth in paragraphs 1-17 above.
`
`19.
`
`20.
`
`Kyocera denies the allegations of Paragraph 19 of the Complaint.
`
`Kyocera denies the allegations of Paragraph 20 of the Complaint.
`
`COUNT TWO
`PATENT INFRINGEMENT—U.S. PATENT NO. 7,643,168
`
`21.
`
`Kyocera realleges and incorporates by reference its denials and admissions set
`
`forth in paragraphs 1-17 above.
`
`22.
`
`Kyocera denies that it has infringed and is infringing the ’168 Patent and thus
`
`denies the allegations of Paragraph 22 of the Complaint.
`
`23.
`
`Kyocera denies that it has infringed and is infringing the ’168 Patent and thus
`
`denies the allegations of Paragraph 23 of the Complaint.
`
`
`
`4
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`Kyocera Ex. 1015
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`

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`VI. JURY DEMAND
`
`24.
`
`Paragraph 24 sets forth e-Watch’s request for a jury trial to which no response is
`
`required.
`
`RESPONSE TO PLAINTIFFS’ REQUEST FOR RELIEF
`
`Kyocera requests that the Court deny all relief requested by e-Watch and dismiss the
`
`Complaint as to Kyocera with prejudice.
`
`AFFIRMATIVE DEFENSES
`
`Kyocera asserts the following defenses in response to the allegations in the Complaint,
`
`undertaking the burden of proof only as to those defenses deemed affirmative defenses by law.
`
`Kyocera reserves the right to further amend this Amended Answer and the defenses listed below
`
`as may be warranted by information developed through subsequent discovery.
`
`FIRST DEFENSE
`(Non-Infringement of the Asserted Patents)
`
`Kyocera has not infringed, and is not infringing any valid claim of the Asserted
`
`1.
`
`Patents, either literally or under the doctrine of equivalents.
`
`SECOND DEFENSE
`(Invalidity of the Asserted Patents)
`
`2.
`
`The claims of the Asserted Patents are invalid for failure to comply with the
`
`requirements of Title 35 of the United States Code, including but not limited to 35 U.S.C. §§ 101,
`
`102, 103 and/or 112.
`
`
`
`5
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`Kyocera Ex. 1015
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`

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`THIRD DEFENSE
`(Not Entitled to Enhanced Damages)
`
`e-Watch is not entitled to seek enhanced damages or attorney fees for willful and
`
`3.
`
`deliberate infringement because it failed to provide notice of alleged infringement prior to the
`
`filing of e-Watch’s Complaint, and/or because e-Watch has otherwise failed to meet the
`
`requirements for establishing willful infringement by Kyocera.
`
`FOURTH DEFENSE
`(Prosecution History Estoppel)
`
`e-Watch is estopped from asserting that one or more of the Asserted Patents and
`
`4.
`
`their respective claims are infringed under the doctrine of equivalents because of certain
`
`admissions and statements made to the U.S. Patent and Trademark Office during prosecution of
`
`the applications that resulted in the Asserted Patents and/or during prosecution of related patent
`
`applications.
`
`FIFTH DEFENSE
`(Limitation on Damages)
`
`e-Watch’s requested relief is barred or otherwise limited by certain provisions of
`
`5.
`
`Title 35 of the United States Code, including but not limited to 35 U.S.C. §§ 287 and/or 288.
`
`SIXTH DEFENSE
`(Failure to State a Claim)
`
`6.
`
`e-Watch’s complaint fails to state a claim upon which relief can be granted.
`
`SEVENTH DEFENSE
`(Unenforceability)
`
`7.
`
`The ’871 and ’168 Patents are both unenforceable due to inequitable conduct
`
`before the U.S. Patent & Trademark Office (“PTO”). The ’871 and ’168 Patents both rely on a
`
`priority claim back to application serial number 09/006,073 (“’073 application”) filed January 12,
`
`1998. That priority claim depends on the grant of a petition to revive the ’073 application that
`
`
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`6
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`Kyocera Ex. 1015
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`

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`was filed on January 3, 2003, under 37 C.F.R. § 1.137(b) approximately 22 months after the ’073
`
`application went abandoned on March 1, 2001. But for the statement signed by attorney Richard
`
`Ruble that the “entire delay” period from the “due date [March 1, 2001] for the required reply
`
`until the filing of a grantable petition under 37 C.F.R. 1.137(b) was unintentional,” the earliest
`
`effective date for the ’871 and ’168 Patents would be January 3, 2003. Based on a January 3,
`
`2003, effective date for the ’871 and ’168 Patents, all the claims of the ’871 and ’168 Patents
`
`would be invalid as anticipated under 35 U.S.C. § 102(b) by the July 15, 1999, publication of
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`WO 1999/035818 (“’818 application”), which is an international PCT application claiming
`
`priority to the ’073 application and that has the same disclosure as the disclosure in the ’871
`
`and ’168 Patents on which all the claims of those patents depend for support.
`
`8.
`
`The petition statement of unintentional delay signed by Richard Ruble was, on
`
`information and belief, a material misrepresentation of the facts and circumstances concerning
`
`the ’073 application. On information and belief, Richard Ruble was an inexperienced lawyer
`
`having no firsthand or direct knowledge of the facts and circumstances of the delay at issue and
`
`who signed the “unintentional” petition statement at the direction of the senior lawyer with
`
`power of attorney on the ’073 application, Mr. Robert Curfiss. Mr. Curfiss was aware of the
`
`consequence of abandonment for failing to timely respond to a pending office action from the
`
`PTO relating to a pending patent application. On information and belief, Mr. Curfiss knew well
`
`before January 3, 2003, that the ’073 application had been deliberately abandoned, and he
`
`nonetheless instructed Mr. Ruble to state that the abandonment of the ’073 application was
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`“unintentional.” On information and belief, by instructing Mr. Ruble to sign a petition for which
`
`Mr. Ruble had no firsthand or direct knowledge, and for which Mr. Curfiss knew to be
`
`
`
`7
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`Kyocera Ex. 1015
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`

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`Case 2:13-cv-01061-JRG-RSP Document 210 Filed 10/31/14 Page 8 of 17 PageID #: 2796
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`inaccurate, Mr. Curfiss intentionally misled the PTO into granting a petition on which the ’871
`
`and ’168 Patents would depend.
`
`9.
`
`On January 12, 1998, the ’073 application naming David Monroe as inventor was
`
`filed with the PTO. On December 7, 1999, the Examiner issued an office action rejecting all
`
`pending claims of the ’073 application. On June 7, 2000, a response to this office action was
`
`filed. On August 29, 2000, the Examiner issued a final office action and rejected all the then
`
`pending claims of the ’073 application.
`
`10.
`
`On February 21, 2001, a request for a three month extension of time (“EOT”) to
`
`file a response to the final office action was filed. This extended the deadline for Mr. Monroe’s
`
`response to February 28, 2001. Despite filing a request for extension of one week before the
`
`deadline to file his response to the final office action, a substantive response in the ’073
`
`application was not filed. Rather than continue the ’073 application prosecution, a new
`
`application serial number 09/790,381 (“the ’381 application”) was filed, which made a claim for
`
`priority back to the ’073 application and copied 42 claims therefrom. The ’381 application was
`
`filed on the same date (February 21, 2001) as the EOT in the ’073 application. Thereafter,
`
`the ’073 application became abandoned on March 1, 2001. On April 10, 2011, the PTO mailed a
`
`Notice of Abandonment concerning the ’073 application to the attorneys of record at the firm of
`
`Bracewell and Patterson. The attorney of record at that time, named on a power of attorney,
`
`included Robert C. Curfiss, who was a member of the Bracewell and Patterson firm. No
`
`response to the Notice of Abandonment was filed. Subsequently, the PTO determined that
`
`notwithstanding the February 21, 2001, mailing stamp of the ’381 application, the ’381
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`application was not complete as filed. After the missing parts were filed by Mr. Curfiss, the new
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`filing date for the ’381 application was April 11, 2002. However, because the ’381 application
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`8
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`Kyocera Ex. 1015
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`was no co-pending with the ’073 application, the ’381 application was not entitled to the priority
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`date of the ’073 application. The ’381 application went abandoned.
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`11.
`
`On January 3, 2003, attorney Richard R. Ruble filed a petition under 37 C.F.R. §
`
`1.137(b) to revive the ’073 application with the PTO. This petition states, “The entire delay in
`
`filing the required reply from the due date for the required reply until the filing of a grantable
`
`petition under 37 C.F.R. 1.137(b) was unintentional.” On information and belief, Mr. Ruble had
`
`no firsthand or direct knowledge concerning the facts and circumstances of the abandonment of
`
`the ’073 application nor of the delay period at issue. On information and belief, Mr. Ruble was
`
`instructed by Mr. Curfiss to sign the petition despite his lack of knowledge of the facts to which
`
`he was attesting and despite the knowledge of Mr. Curfiss that the ’073 application had been
`
`previously and deliberately abandoned. On information and belief, this statement was false.
`
`This statement was material because, but for this statement, the PTO would not have granted the
`
`petition and revived the ’073 application.
`
`12.
`
`In its March 11, 2003, decision on the petition to revive the ’073 application, the
`
`PTO “revived [the ’073 application] solely for purposes of continuity.” The decision on the
`
`petition permitted the application serial number 10/336,470 (“’470 application”), which issued as
`
`the ’871 Patent, to claim priority to the January 12, 1998, filing date of the ’073 application. In
`
`its decision, the PTO noted that “[i]t is not apparent whether the person signing the statement of
`
`unintentional delay was in a position to have firsthand or direct knowledge of the facts and
`
`circumstances of the delay at issue.” However, the PTO noted that the statement of unintentional
`
`delay “is being treated as having been made as a result of a reasonable inquiry into the facts and
`
`circumstances of such delay.” However, the PTO further explained that “[i]n the event that such
`
`an inquiry [regarding unintentional delay] has not been made, petitioner must make such an
`
`
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`9
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`Kyocera Ex. 1015
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`

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`inquiry [and] [i]f such inquiry results in the discovery that it is not correct that the entire delay in
`
`filing the required reply from the due date for the reply until the filing of a grantable petition [to
`
`revive] was unintentional, petitioner must notify the Office.” On information and belief, no such
`
`inquiry was ever undertaken. In addition, there were no further submissions to the PTO
`
`concerning the facts and circumstances surrounding the delay that was the subject of the petition
`
`to revive the ’073 application.
`
`13.
`
`Absent the grant of the petition to revive the ’073 application, the earliest
`
`effective date for the ’871 and ’168 Patents would have been January 3, 2003, the date on which
`
`the ’470 application was filed. The ’470 application has the same disclosure as the ’073
`
`application and also the same disclosure as a PCT international application claiming priority to
`
`the ’073 application which was published on July 15, 1999, as publication number WO
`
`1999/035818 (“’818 application”). Because the ’818 application was published more than one
`
`year prior to the January 3, 2003, filing of the ’470 application, the ’818 application is prior art
`
`under 35 U.S.C. § 102(b).
`
`14.
`
`On information and belief, Mr. Curfiss knew that the ’818 application had been
`
`published (as he was the named agent on the PCT application) prior to the January 3, 2003, filing
`
`of the petition to revive and the filing of the ’470 application, and Mr. Curfiss knew that absent a
`
`priority claim back to the ’073 application, all claims arising out of the ’470 application
`
`(including the eventually issued ’871 and ’168 Patents) were invalid. On information and belief,
`
`by instructing Mr. Ruble to sign the petition under 37 C.F.§ 1.137(b), having the knowledge that
`
`(i) the ’073 application had been deliberately abandoned, (ii) the ’818 application had been
`
`published as prior art, (iii) the ’381 application was not entitled to the priority filing date of
`
`the ’073 application, and (iv) no other application with a priority claim back to the ’073
`
`
`
`10
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`Kyocera Ex. 1015
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`

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`application was then pending, Mr. Curfiss intentionally misled the PTO concerning the facts and
`
`circumstances on which the petition was based. On information and belief, the PTO would not
`
`have issued the ’871 Patent – which claims priority to the ’073 application – or the ’168 Patent –
`
`which claims priority to the ’871 Patent – but for the misleading statement in the petition to
`
`revive. Thus, the patents-in-suit are unenforceable for inequitable conduct by Mr. Curfiss.
`
`EIGHTH DEFENSE
`(Laches)
`
`
`
`15.
`
`e-Watch delayed filing suit against Kyocera for an unreasonable and inexcusable
`
`period of time. On information and belief, e-Watch knew or at least reasonably should have
`
`known of the allegedly infringing activity by Kyocera for a number of years prior to e-Watch
`
`filing the present lawsuit. Mr. Monroe, who alleges himself to be the inventor of an integrated
`
`camera cell phone, reasonably should have known of cell phone products of Kyocera involving
`
`integrated cameras years before e-Watch filed its complaint against Kyocera.
`
`
`
`16.
`
`Notwithstanding such knowledge, e-Watch waited until December 10, 2013, to
`
`file suit even though an asserted patent issued on April 29, 2008. This delay has caused Kyocera
`
`to suffer material prejudice, including economic and evidentiary harm. Kyocera has suffered
`
`economic prejudice because, since 2008, it has made substantial investments in, and expanded
`
`production of, the products accused of infringement by e-Watch. Kyocera has suffered
`
`evidentiary prejudice because the validity of the patents-in-suit is dependent at least on (i) the
`
`recollection and records of the prosecuting attorney, Mr. Curfiss, concerning the execution and
`
`filing of a petition to revive under 37 C.F.R. § 1.137(b) for application serial number 09/006,073,
`
`and (ii) the records and recollection of Mr. Monroe concerning the public disclosure and sale of
`
`devices allegedly embodying his claimed invention and the demonstration of such a device to the
`
`PTO. On information and belief, Mr. Curfiss currently lacks recollection or records concerning
`
`
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`11
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`Kyocera Ex. 1015
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`the facts and circumstances of that petition. On information and belief, the passage of time since
`
`2008 has degraded the recollection of Mr. Curfiss and Mr. Monroe. On information and belief,
`
`certain records that might have proven the facts and circumstances of the petition to revive, the
`
`public disclosure (including demonstration to the PTO) and sale of certain devices material to the
`
`validity of the Asserted Patents have been lost and/or degraded. This lost and/or degraded
`
`evidence works a prejudice on Kyocera and hampers its ability to properly defend itself against
`
`the infringement allegations now being made.
`
`
`
`17.
`
`Kyocera reserves 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,
`
`that may now exist or in the future be available based on discovery or further factual
`
`investigation in this case.
`
`COUNTERCLAIMS
`
`Kyocera asserts the following counterclaims against e-Watch:
`
`1.
`
`This is an action for a judgment declaring the Asserted Patents to be invalid,
`
`unenforceable, and not infringed and that this case is exceptional and that Kyocera be awarded
`
`its costs and expenses, including but not limited to attorneys’ fees.
`
`THE PARTIES
`
`2.
`
`KCI is a corporation organized under the laws of Delaware with its principal
`
`place of business located at 9520 Towne Centre Drive, San Diego, California 92121
`
`3.
`
`KII is a corporation organized under the laws of California with its principal place
`
`of business located at 8611 Balboa Avenue, San Diego, California 92123.
`
`
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`12
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`Kyocera Ex. 1015
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`

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`4.
`
`According to Paragraph 6 of the Complaint, e-Watch, Inc. is a Nevada
`
`corporation with its principal place of business located at 23011 IH-10 West, San Antonio, Texas
`
`78257.
`
`5.
`
`According to Paragraph 7 of the Complaint, e-Watch Corporation is a Texas
`
`corporation with its principal place of business located at 23011 IH-10 West, San Antonio, Texas
`
`78257.
`
`JURISDICTION AND VENUE
`
`6.
`
`This Court has subject matter jurisdiction over these counterclaims under 28
`
`U.S.C. §§ 1331, 1338, 2201, and 2202.
`
`7.
`
`This Court has personal jurisdiction over e-Watch by virtue of e-Watch’s filing of
`
`the Complaint in this Court.
`
`8.
`
`e-Watch has consented to the propriety of venue pursuant to 28 U.S.C. §§ 1391
`
`and 1400(b) by filing the Complaint in this Court.
`
`FIRST COUNTERCLAIM
`(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’871 PATENT)
`
`9.
`
`Kyocera re-alleges and incorporates by reference the allegations of paragraphs 1-8
`
`of its Counterclaims.
`
`10.
`
`An actual case or controversy exists between e-Watch and Kyocera as to whether
`
`Kyocera infringes the ’871 Patent. A judicial declaration is necessary and appropriate so that
`
`Kyocera may ascertain its rights regarding the ’871 Patent.
`
`11.
`
`Kyocera has not and does not infringe any valid, enforceable claim of the ’871
`
`Patent and thus is entitled to a judicial declaration of non-infringement.
`
`
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`13
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`Kyocera Ex. 1015
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`

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`SECOND COUNTERCLAIM
`(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’168 PATENT)
`
`12.
`
`Kyocera re-alleges and incorporates by reference the allegations of paragraphs 1-8
`
`of its Counterclaims.
`
`13.
`
`An actual case or controversy exists between e-Watch and Kyocera as to whether
`
`Kyocera infringes the ’168 Patent. A judicial declaration is necessary and appropriate so that
`
`Kyocera may ascertain its rights regarding the ’168 Patent.
`
`14.
`
`Kyocera has not and does not infringe any valid, enforceable claim of the ’168
`
`Patent and thus is entitled to a judicial declaration of non-infringement.
`
`THIRD COUNTERCLAIM
`(DECLARATORY JUDGMENT FOR INVALIDITY OF THE ’871 PATENT)
`
`15.
`
`Kyocera re-alleges and incorporates by reference the allegations of paragraphs 1-8
`
`of its Counterclaims.
`
`16.
`
`An actual case or controversy exists between e-Watch and Kyocera as to whether
`
`the ’871 Patent is valid. A judicial declaration is necessary and appropriate so as to prevent e-
`
`Watch from wrongfully asserting the ’871 Patent against Kyocera.
`
`17.
`
`The claims of the ’871 Patent are invalid under 35 U.S.C. §§ 101, 102, 103 and/or
`
`112. Kyocera is thus entitled to a judicial declaration of invalidity.
`
`
`
`14
`
`Kyocera Ex. 1015
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 210 Filed 10/31/14 Page 15 of 17 PageID #: 2803
`
`FOURTH COUNTERCLAIM
`(DECLARATORY JUDGMENT FOR INVALIDITY OF THE ’168 PATENT)
`
`18.
`
`Kyocera re-alleges and incorporates by reference the allegations of paragraphs 1-8
`
`of its Counterclaims.
`
`19.
`
`An actual case or controversy exists between e-Watch and Kyocera as to whether
`
`the ’168 Patent is valid. A judicial declaration is necessary and appropriate so as to prevent e-
`
`Watch from wrongfully asserting the ’168 Patent against Kyocera.
`
`20.
`
`The claims of the ’168 Patent are invalid under 35 U.S.C. §§ 101, 102, 103 and/or
`
`112. Kyocera is thus entitled to a judicial declaration of invalidity.
`
`FIFTH COUNTERCLAIM
`(DECLARATORY JUDGMENT OF UNENFORCEABILITY OF THE ’871 PATENT)
`
`21.
`
`Kyocera re-alleges and incorporates by reference the allegations of paragraphs 7-
`
`14 of its Amended Answer and paragraphs 1-8 of its Counterclaims.
`
`22.
`
`An actual case or controversy exists between e-Watch and Kyocera as to whether
`
`the ’871 Patent is enforceable. A judicial declaration is necessary and appropriate so as to
`
`prevent e-Watch from wrongfully enforcing the ’871 Patent against Kyocera.
`
`23.
`
`The claims of the ’871 Patent are unenforceable for all of the reasons set forth
`
`above, including inequitable conduct. Kyocera is thus entitled to a judicial declaration of
`
`unenforceability.
`
`
`
`15
`
`Kyocera Ex. 1015
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 210 Filed 10/31/14 Page 16 of 17 PageID #: 2804
`
`SIXTH COUNTERCLAIM
`(DECLARATORY JUDGMENT OF UNENFORCEABILITY OF THE ’168 PATENT)
`
`24.
`
`Kyocera re-alleges and incorporates by reference the allegations of paragraphs 7-
`
`14 of its Amended Answer and paragraphs 1-8 of its Counterclaims.
`
`25.
`
`An actual case or controversy exists between e-Watch and Kyocera as to whether
`
`the ’168 Patent is enforceable. A judicial declaration is necessary and appropriate so as to
`
`prevent e-Watch from wrongfully enforcing the ’168 Patent against Kyocera.
`
`26.
`
`The claims of the ’168 Patent are unenforceable for all of the reasons set forth
`
`above, including inequitable conduct. Kyocera is thus entitled to a judicial declaration of
`
`unenforceability.
`
`PRAYER FOR RELIEF
`
`Kyocera requests the following relief:
`
`A judgment dismissing e-Watch’s Complaint against Kyocera with prejudice;
`
`A judgment in favor of Kyocera on all of its Counterclaims;
`
`A declaration that Kyocera has not and does not infringe any claim of the Asserted
`Patents;
`
`A declaration that every claim of the Asserted Patents is invalid and/or unenforceable;
`
`A finding that this case is exceptional under 35 U.S.C. § 285 and awarding Kyocera its
`cost and fees in this action, including attorneys' fees; and
`
`Such other and further relief in favor of Kyocera as the Court deems just and proper.
`
`16
`
`
`
`A.
`
`B.
`
`C.
`
`
`D.
`
`E.
`
`
`F.
`
`
`
`
`Kyocera Ex. 1015
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 210 Filed 10/31/14 Page 17 of 17 PageID #: 2805
`
`DEMAND FOR JURY TRIAL
`
`Kyocera demands a jury trial of all issues triable to a jury in this action pursuant to Fed.
`
`R. Civ. P. 38.
`
`Dated: October 31, 2014
`
`
`Respectfully submitted,
`
` /s/ Thomas R. Jackson
`Thomas R. Jackson
`(Texas Bar No. 10496700)
`Email: trjackson@jonesday.com
`
`Richard J. Johnson
`(Texas Bar No. 24088799)
`Email: jjohnson@jonesday.com
`
`JONES DAY
`2727 North Harwood Street
`Dallas, Texas 75201-1515
`Telephone: (214) 220-3939
`Facsimile: (214) 969-5100
`
`ATTORNEYS FOR DEFENDANTS
`KYOCERA COMMUNICATIONS, INC. and
`KYOCERA INTERNATIONAL, INC.
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that all counsel of record who are deemed to have consented to electronic
`
`service are being served with a copy of this document via the Court’s CM/ECF system per Local
`
`Rule CV-5(a)(3).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Thomas R. Jackson
`
`17
`
`Kyocera Ex. 1015
`
`