throbber
Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 1 of 18
`
`IN THE UNITED STATES DISTRICT COURT
` FOR THE DISTRICT OF CONNECTICUT
`
`
`
`LEGO SYSTEM A/S,
`
`
`
`
` Plaintiffs/Counterclaim-Defendants,
`
`
`
`
`Civil Action No. 15-cv-00823-VLB
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`v.
`
`
`RUBICON COMMUNICATIONS, LP DBA
`SMALLWORKS AND SMALLWORKS, LLC,
`
`
`Defendant/Counterclaim-Plaintiff.
`
`
`
`
`
`DEFENDANTS’ ANSWER, DEFENSES, AND COUNTERCLAIMS
`TO AMENDED COMPLAINT
`
`Defendant Rubicon Communications, LP (“Rubicon”) and SmallWorks, LLC
`
`(“SmallWorks”) for their Answer, Defenses, and Counterclaims to the Amended
`
`Complaint of Plaintiff Lego System A/S (“Lego”) respond as follows. Every
`
`allegation not expressly admitted herein is denied.
`
`THE PARTIES
`
`Rubicon and SmallWorks separately lack knowledge or information
`
`1.
`
`sufficient to form a belief as to the truth of the allegations of Paragraph 1, and
`
`therefore separately deny all allegations of Paragraph 1.
`
`2.
`
`Rubicon no longer exists. Current manufacturing, offering for sale,
`
`and sales of the accused products are done solely by SmallWorks, which should
`
`be the only defendant entity in this lawsuit.
`
`3.
`
`Rubicon and SmallWorks separately admit that they have done a very
`
`small amount of business in the state of Connecticut, but separately deny the
`
`remainder of Paragraph 3.
`
`
`
`- 1 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 2 of 18
`
`JURISDICTION AND VENUE
`
`
`Separately Admitted.
`
`Rubicon and SmallWorks separately admit that the Court has personal
`
`4.
`
`5.
`
`jurisdiction over the subject matter, but separately deny the remainder of
`
`Paragraph 5.
`
`6.
`
`Separately denied.
`
`THE ASSERTED PATENTS
`
`Rubicon and SmallWorks separately lack knowledge or information
`
`7.
`
`sufficient to form a belief as to the truth of the allegations of Paragraph 7, and
`
`therefore separately deny all allegations of Paragraph 7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`Separately admitted.
`
`Separately admitted.
`
`Separately admitted.
`
`Separately admitted.
`
`12. Rubicon and SmallWorks separately admit that an assignment
`
`document was filed with the USPTO, but separately lack knowledge or information
`
`sufficient to form a belief as to the truth of the remaining allegations of Paragraph
`
`12, and therefore separately deny the remaining allegations of Paragraph 12.
`
`
`
`
`
`
`
`- 2 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 3 of 18
`
`DEFENDANTS’ [ALLEGED] INFRINGING ACTS
`
`13.
`
`SmallWorks admits that it makes, uses, sells, and offers for sale in the
`
`United States cases for the iPhone 4/4S, the iPhone 5/5S, iPod Touch 4th
`
`generation, and iPad mini, which allow users to connect bricks and other building
`
`elements to the cases, including Lego bricks, but denies the remainder of
`
`Paragraph 13. Rubicon denies that the allegations in Paragraph 13 are applicable
`
`to it.
`
`14.
`
`SmallWorks admits that it operates www.smallworks.com. Rubicon
`
`denies that the allegations in Paragraph 14 are applicable to it.
`
`15.
`
`SmallWorks admits that it offers cases for the iPhone 4/4S, the iPhone
`
`5/5S, iPod Touch 4th generation, and iPad mini. Rubicon denies that the allegations
`
`in Paragraph 15 are applicable to it.
`
`16.
`
`SmallWorks admits that Lego has partially quoted parts of sentences
`
`appearing on the SmallWorks website in Paragraph 16 of the Complaint.
`
`17.
`
`SmallWorks admits that it has various social media sites, but lacks
`
`knowledge as to what Lego means by “promote”, and therefore denies the
`
`remainder of Paragraph 17. Rubicon denies that the allegations in Paragraph 17
`
`are applicable to it.
`
`18.
`
`SmallWorks admits that it sells products on Amazon.com and other
`
`locations. Rubicon denies that the allegations in Paragraph 18 are applicable to it.
`
`19.
`
`Separately denied.
`
`
`
`- 3 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 4 of 18
`
`20.
`
`SmallWorks admits that it has previous knowledge of the ‘191 Patent
`
`and ‘892 Patent but denies that it infringes those patents. Rubicon denies that the
`
`allegations in Paragraph 20 are applicable to it.
`
`COUNT I – [ALLEGED] INFRINGEMENT OF THE ‘191 PATENT
`
`21. Rubicon and SmallWorks separately restate and incorporate by
`
`reference their responses to paragraphs 1 through 20 as if fully stated herein.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`27.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`
`
`COUNT II – [ALLEGED] INFRINGEMENT OF THE ‘892 PATENT
`
`28. Rubicon and SmallWorks separately restate and incorporate by
`
`reference their responses to paragraphs 1 through 20 as if fully stated herein.
`
`29.
`
`30.
`
`31.
`
`32.
`
`33.
`
`34.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`
`
`
`
`
`
`- 4 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 5 of 18
`
`
`COUNT III – [ALLEGED] INFRINGEMENT OF THE ‘085 PATENT
`
`35. Rubicon and SmallWorks separately restate and incorporate by
`
`reference their responses to paragraphs 1 through 20 as if fully stated herein.
`
`36.
`
`37.
`
`38.
`
`39.
`
`40.
`
`41.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`COUNT IV – [ALLEGED] INFRINGEMENT OF THE ‘066 PATENT
`
`42. Rubicon and SmallWorks separately restate and incorporate by
`
`reference their responses to paragraphs 1 through 20 as if fully stated herein.
`
`43.
`
`44.
`
`45.
`
`46.
`
`47.
`
`48.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`Separately denied.
`
`
`
`PRAYER FOR RELIEF
`
`Rubicon and SmallWorks separately deny all allegations not expressly
`
`admitted herein. Rubicon and SmallWorks further separately deny that Lego is
`
`entitled to any of the relief requested or to any relief whatsoever. Rubicon and
`
`
`
`- 5 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 6 of 18
`
`SmallWorks separately respectfully request that the Court: (a) dismiss this action
`
`with prejudice; (b) enter judgment in favor of SmallWorks and Rubicon; (c) award
`
`SmallWorks and Rubicon their reasonable attorneys’ fees and costs incurred in
`
`defending this action pursuant to 35 U.S.C. § 285; and (d) award SmallWorks and
`
`Rubicon such further relief as the Court deems just and appropriate.
`
`SEPARATE DEFENSES
`
`Without prejudice to the denials set forth in its Answer, without admitting
`
`any allegation in the Complaint not otherwise admitted, and without undertaking
`
`any of the burdens imposed by law on Lego, Rubicon and SmallWorks separately
`
`assert the following separate defenses:
`
`First Defense
`
`The Complaint fails to state a claim upon which relief can be granted.
`
`Second Defense
`
`The manufacture, use, sale, offer for sale, importation, and/or marketing of
`
`the accused products identified above have not infringed, does not infringe, and
`
`would not—if made, used, sold, offered for sale, imported, or marketed—infringe,
`
`either directly or indirectly, any valid and/or enforceable claim of the Asserted
`
`Patents (as such term is defined in the Complaint), either literally or under the
`
`doctrine of equivalents.
`
`Third Defense
`
`The claims of the Asserted Patents are invalid under 35 U.S.C. § 102 (a) (the
`
`language of which is incorporated herein by reference) as there is prior art that
`
`anticipates the asserted claims of the Asserted Patents. The claims of the Asserted
`
`
`
`- 6 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 7 of 18
`
`Patents are invalid under 35 U.S.C. § 103 (the language of which is incorporated
`
`herein by reference) as there are one or more prior art references in which the
`
`differences between the claimed inventions in the Asserted Patents and this prior
`
`art are such that the claimed invention in the Asserted Patents as a whole would
`
`have been obvious before the effective date of such Asserted Patents to a person
`
`having ordinary skill in the art. The asserted claims of the Asserted Patents are
`
`indefinite under 35 U.S.C. § 112 (the language of which is incorporated herein by
`
`reference).
`
`Fourth Defense
`
`Upon information and belief, neither Lego nor Lego’s licensees or assignor
`
`for the Asserted Patents have marked instrumentalities that embody any of the
`
`claims of the Asserted Patents with proper notice of the patents in compliance with
`
`35 U.S.C. § 287. Lego is not entitled to any pre-filing damages pursuant to 35 U.S.C.
`
`§ 287 for any claims to which 35 U.S.C. § 287 applies.
`
`Fifth Defense
`
`Lego’s claims are barred, in whole or in part, by the equitable doctrines of
`
`laches, waiver, acquiescence, estoppel, and/or unclean hands.
`
`Sixth Defense
`
`Any additional defenses or counterclaims that discovery may reveal,
`
`including unenforceability.
`
`*
`
`*
`
`*
`
`COUNTERCLAIMS
`
`Defendant/Counterclaim-Plaintiff SmallWorks, LLC (“SmallWorks”) for its
`
`
`
`- 7 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 8 of 18
`
`Counterclaims against Plaintiff/Counterclaim-Defendant Lego System, A/S
`
`(collectively “Counterclaim-Defendant” or “Lego”), allege as follows:
`
`
`
`THE PARTIES
`
`1.
`
`SmallWorks is a limited liability company with a place of business of
`
`7212 McNeil Drive, Suite 204, Austin, Texas 78729.
`
`2.
`
`Upon information and belief, Counterclaim-Defendant purports to be
`
`a company organized under the laws of Denmark, with its principal place of
`
`business at Aastvej 1, Dk-7190, Billund, Denmark.
`
`JURISDICTION AND VENUE
`
`3.
`
`These Counterclaims arise under the Patent Law of the United States,
`
`35 U.S.C. § 1 et seq.; and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202.
`
`4.
`
`This Court has original jurisdiction over the subject matter of these
`
`Counterclaims under 28 U.S.C. §§ 1331 and 1338(a).
`
`5.
`
`This Court has personal jurisdiction over Counterclaim-Defendant
`
`because Counterclaim-Defendant has availed itself of the rights and privileges of
`
`this forum by suing SmallWorks in this District, and/or because Counterclaim-
`
`Defendant conducts substantial business in, and has regular systemic contact
`
`with, this District.
`
`6.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400.
`
`BACKGROUND
`
`7.
`
`On or about June 8, 2010, the PTO issued U.S. Patent No. 7,731,191
`
`(“the ‘191 patent”).
`
`8.
`
`On or about January 10, 2012, the PTO issued U.S. Patent No.
`
`
`
`- 8 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 9 of 18
`
`8,091,892 (“the ‘892 patent”).
`
`9.
`
`On or about January 14, 2014, the PTO issued U.S. Patent No.
`
`8,628,085 (“the ‘085 patent”).
`
`10. On or about November 25, 2014, the PTO issued U.S. Patent No.
`
`8,894,066 (“the ‘066 patent”).
`
`11. Counterclaim-Defendant purports and claims to have the right to
`
`enforce the ‘191, ‘892, ‘085, and ‘066 patents.
`
`12. Counterclaim-Defendant sued SmallWorks for alleged infringement of
`
`the ‘191, ‘892, ‘085, and ‘066 patents in this District.
`
`COUNT I
`DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘191 PATENT
`
`13. SmallWorks realleges and incorporates by reference the allegations
`
`of counterclaim paragraphs 1-12.
`
`14. A present, genuine, and justiciable controversy exists between
`
`SmallWorks and Counterclaim-Defendant regarding, inter alia, the validity of the
`
`‘191 patent.
`
`15.
`
`The claims of the ‘191 Patent are invalid under 35 U.S.C. § 102 (a) (the
`
`language of which is incorporated herein by reference) as there is prior art that
`
`anticipates the asserted claims of the ‘191 Patent. The claims of the ‘191 Patent
`
`are invalid under 35 U.S.C. § 103 (the language of which is incorporated herein by
`
`reference) as there are one or more prior art references in which the differences
`
`between the claimed inventions in the ‘191 Patent and this prior art are such that
`
`the claimed invention in the ‘191 Patent as a whole would have been obvious before
`
`the effective date of such patent to a person having ordinary skill in the art. The
`
`
`
`- 9 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 10 of 18
`
`asserted claims of the ‘191 Patent are indefinite under 35 U.S.C. § 112 (the language
`
`of which is incorporated herein by reference).
`
`16. SmallWorks is entitled to a judicial declaration that the ‘191 patent is
`
`invalid for failure to satisfy one or more of the conditions for patentability in Title
`
`35 of the United States Code as set forth herein.
`
`COUNT II
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘191 PATENT
`
`17. SmallWorks realleges and incorporates by reference the allegations
`
`of counterclaim paragraphs 1-16.
`
`18. A present, genuine, and justiciable controversy exists between
`
`SmallWorks and Counterclaim-Defendant regarding, inter alia, whether the
`
`manufacture, use, offer for sale, sale, importation, and/or marketing of the accused
`
`products would infringe any valid or enforceable claim of the ‘191 patent, either
`
`directly or indirectly.
`
`19.
`
`The manufacture, use, offer for sale, sale, importation, and/or
`
`marketing of the accused products described would not infringe any valid or
`
`enforceable claim of the ‘191 patent, either directly or indirectly.
`
`20. SmallWorks is entitled to a judicial declaration that the manufacture,
`
`use, offer for sale, sale, importation, and/or marketing of the accused products
`
`would not infringe, directly or indirectly, any valid or enforceable claim of the ‘191
`
`patent, either literally or under the doctrine of equivalents.
`
`COUNT III
`DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘892 PATENT
`
`21. SmallWorks realleges and incorporates by reference the allegations
`
`
`
`- 10 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 11 of 18
`
`of counterclaim paragraphs 1-20.
`
`22. A present, genuine, and justiciable controversy exists between
`
`SmallWorks and Counterclaim-Defendant regarding, inter alia, the validity of the
`
`‘892 patent.
`
`23.
`
`The claims of the ‘892 Patent are invalid under 35 U.S.C. § 102 (a) (the
`
`language of which is incorporated herein by reference) as there is prior art that
`
`anticipates the asserted claims of the ‘892 Patent. The claims of the ‘892 Patent
`
`are invalid under 35 U.S.C. § 103 (the language of which is incorporated herein by
`
`reference) as there are one or more prior art references in which the differences
`
`between the claimed inventions in the ‘892 Patent and this prior art are such that
`
`the claimed invention in the ‘892 Patent as a whole would have been obvious before
`
`the effective date of such patent to a person having ordinary skill in the art. The
`
`asserted claims of the ‘892 Patent are indefinite under 35 U.S.C. § 112 (the language
`
`of which is incorporated herein by reference).
`
`24. SmallWorks is entitled to a judicial declaration that the ‘892 patent is
`
`invalid for failure to satisfy one or more of the conditions for patentability in Title
`
`35 of the United States Code as set forth herein.
`
`COUNT IV
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘892 PATENT
`
`25. SmallWorks realleges and incorporates by reference the allegations
`
`of counterclaim paragraphs 1-24.
`
`26. A present, genuine, and justiciable controversy exists between
`
`SmallWorks and Counterclaim-Defendant regarding, inter alia, whether the
`
`manufacture, use, offer for sale, sale, importation, and/or marketing of the accused
`
`
`
`- 11 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 12 of 18
`
`products would infringe any valid or enforceable claim of the ‘892 patent, either
`
`directly or indirectly.
`
`27.
`
`The manufacture, use, offer for sale, sale, importation, and/or
`
`marketing of the accused products would not infringe any valid or enforceable
`
`claim of the ‘892 patent, either directly or indirectly.
`
`28. SmallWorks is entitled to a judicial declaration that the manufacture,
`
`use, offer for sale, sale, importation, and/or marketing of the accused products
`
`would not infringe, directly or indirectly, any valid or enforceable claim of the ‘892
`
`patent, either literally or under the doctrine of equivalents.
`
`COUNT V
`DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘085 PATENT
`
`29. SmallWorks realleges and incorporates by reference the allegations
`
`of counterclaim paragraphs 1-28.
`
`30. A present, genuine, and justiciable controversy exists between
`
`SmallWorks and Counterclaim-Defendant regarding, inter alia, the validity of the
`
`‘085 patent.
`
`31.
`
`The claims of the ‘085 Patent are invalid under 35 U.S.C. § 102 (a) (the
`
`language of which is incorporated herein by reference) as there is prior art that
`
`anticipates the asserted claims of the ‘085 Patent. The claims of the ‘085 Patent
`
`are invalid under 35 U.S.C. § 103 (the language of which is incorporated herein by
`
`reference) as there are one or more prior art references in which the differences
`
`between the claimed inventions in the ‘085 Patent and this prior art are such that
`
`the claimed invention in the ‘085 Patent as a whole would have been obvious before
`
`the effective date of such patent to a person having ordinary skill in the art. The
`
`
`
`- 12 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 13 of 18
`
`asserted claims of the ‘085 Patent are indefinite under 35 U.S.C. § 112 (the language
`
`of which is incorporated herein by reference).
`
`32. SmallWorks is entitled to a judicial declaration that the ‘085 patent is
`
`invalid for failure to satisfy one or more of the conditions for patentability in Title
`
`35 of the United States Code for the reasons stated herein.
`
`COUNT VI
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘085 PATENT
`
`33. SmallWorks realleges and incorporates by reference the allegations
`
`of counterclaim paragraphs 1-32.
`
`34. A present, genuine, and justiciable controversy exists between
`
`SmallWorks and Counterclaim-Defendant regarding, inter alia, whether the
`
`manufacture, use, offer for sale, sale, importation, and/or marketing of the accused
`
`products would infringe any valid or enforceable claim of the ‘085 patent, either
`
`directly or indirectly.
`
`35.
`
`The manufacture, use, offer for sale, sale, importation, and/or
`
`marketing of the accused products would not infringe any valid or enforceable
`
`claim of the ‘085 patent, either directly or indirectly.
`
`36. SmallWorks is entitled to a judicial declaration that the manufacture,
`
`use, offer for sale, sale, importation, and/or marketing of the accused products
`
`would not infringe, directly or indirectly, any valid or enforceable claim of the ‘085
`
`patent, either literally or under the doctrine of equivalents.
`
`COUNT VII
`DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘066 PATENT
`
`37. SmallWorks realleges and incorporates by reference the allegations
`
`
`
`- 13 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 14 of 18
`
`of counterclaim paragraphs 1-36.
`
`38. A present, genuine, and justiciable controversy exists between
`
`SmallWorks and Counterclaim-Defendant regarding, inter alia, the validity of the
`
`‘066 patent.
`
`39.
`
`The claims of the ‘066 Patent are invalid under 35 U.S.C. § 102 (a) (the
`
`language of which is incorporated herein by reference) as there is prior art that
`
`anticipates the asserted claims of the ‘066 Patent. The claims of the ‘066 Patent
`
`are invalid under 35 U.S.C. § 103 (the language of which is incorporated herein by
`
`reference) as there are one or more prior art references in which the differences
`
`between the claimed inventions in the ‘066 Patent and this prior art are such that
`
`the claimed invention in the ‘066 Patent as a whole would have been obvious before
`
`the effective date of such patent to a person having ordinary skill in the art. The
`
`asserted claims of the ‘066 Patent are indefinite under 35 U.S.C. § 112 (the language
`
`of which is incorporated herein by reference).
`
`40. SmallWorks is entitled to a judicial declaration that the ‘066 patent is
`
`invalid for failure to satisfy one or more of the conditions for patentability in Title
`
`35 of the United States Code for the reasons stated herein.
`
`COUNT VIII
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘066 PATENT
`
`41. SmallWorks realleges and incorporates by reference the allegations
`
`of counterclaim paragraphs 1-40.
`
`42. A present, genuine, and justiciable controversy exists between
`
`SmallWorks and Counterclaim-Defendant regarding, inter alia, whether the
`
`manufacture, use, offer for sale, sale, importation, and/or marketing of the accused
`
`
`
`- 14 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 15 of 18
`
`products would infringe any valid or enforceable claim of the ‘066 patent, either
`
`directly or indirectly.
`
`43.
`
`The manufacture, use, offer for sale, sale, importation, and/or
`
`marketing of the accused products would not infringe any valid or enforceable
`
`claim of the ‘066 patent, either directly or indirectly.
`
`44. SmallWorks is entitled to a judicial declaration that the manufacture,
`
`use, offer for sale, sale, importation, and/or marketing of the accused products
`
`would not infringe, directly or indirectly, any valid or enforceable claim of the ‘066
`
`patent, either literally or under the doctrine of equivalents.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, SmallWorks respectfully prays for judgment in its favor and
`
`against Plaintiffs/Counterclaim-Defendant:
`
`(a) Declaring that the manufacture, use, sale, offer for sale, importation,
`
`and/or marketing of the accused products have not infringed, do not
`
`infringe, and would not—if made used, sold, offered for sale, imported, or
`
`marketed—infringe, either directly or
`
`indirectly, any valid and/or
`
`enforceable claim of the ‘191 patent, either literally or under the doctrine of
`
`equivalents;
`
`(b) Declaring that the claims of the ‘191 patent are invalid;
`
`(c) Declaring that the manufacture, use, sale, offer for sale, importation,
`
`and/or marketing of the accused products have not infringed, do not
`
`infringe, and would not—if made used, sold, offered for sale, imported, or
`
`marketed—infringe, either directly or
`
`indirectly, any valid and/or
`
`
`
`- 15 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 16 of 18
`
`enforceable claim of the ‘892 patent, either literally or under the doctrine of
`
`equivalents;
`
`(d) Declaring that the claims of the ‘892 patent are invalid;
`
`(e) Declaring that the manufacture, use, sale, offer for sale, importation,
`
`and/or marketing of the accused products have not infringed, do not
`
`infringe, and would not—if made used, sold, offered for sale, imported, or
`
`marketed—infringe, either directly or
`
`indirectly, any valid and/or
`
`enforceable claim of the ‘085 patent, either literally or under the doctrine of
`
`equivalents;
`
`(f) Declaring that the claims of the ‘085 patent are invalid;
`
`(g) Declaring that the manufacture, use, sale, offer for sale, importation,
`
`and/or marketing of the accused products have not infringed, do not
`
`infringe, and would not—if made used, sold, offered for sale, imported, or
`
`marketed—infringe, either directly or
`
`indirectly, any valid and/or
`
`enforceable claim of the ‘066 patent, either literally or under the doctrine of
`
`equivalents;
`
`(h) Declaring that the claims of the ‘066 patent are invalid;
`
`(i) Ordering that Plaintiff’s/Counterclaim-Defendant’s Complaint (D.I. 1)
`
`be dismissed with prejudice and judgment entered in favor of SmallWorks;
`
`(j) Declaring this case exceptional and awarding SmallWorks
`
`its
`
`reasonable attorneys’ fees and costs of these Counterclaims under 35
`
`U.S.C. § 285; and
`
`(k) Awarding SmallWorks such other and further relief as the Court may
`
`
`
`- 16 -
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 17 of 18
`
`deem just and proper.
`
`DEMAND FOR JURY TRIAL
`
`SmallWorks hereby demands a jury trial on all issues so triable.
`
`Dated: November 5, 2015
`
`Respectfully Submitted,
`
`/s/ Stephen P. McNamara
`Stephen P. McNamara, ct01220
`Benjamin C. White, ct27211
`ST. ONGE STEWARD JOHNSTON & REENS LLC
`986 Bedford Street
`Stamford, Connecticut 06905-5619
`Telephone: (203) 324-6155
`Email: smcnamara@ssjr.com
` bwhite@ssjr.com
` litigation@ssjr.com
`
`Dwayne Goetzel (pro hac vice)
`Ryan T. Beard (pro hac vice)
`MEYERTONS, HOOD, KIVLIN,
`KOWERT & GOETZEL, P.C.
`1120 South Capital of Texas Hwy
`Building 2, Suite 300
`Austin, Texas 78746
`(512) 853-8800 (telephone)
`(512) 853-8801 (facsimile)
`Email: dgoetzel@intprop.com
` rbeard@intprop.com
`
`Attorneys for Defendant/Counterclaimant
`
`
`
`- 17 -
`
`
`
`
`
`
`
`

`
`Case 3:15-cv-00823-VLB Document 31 Filed 11/05/15 Page 18 of 18
`
`CERTIFICATE OF SERVICE
`
`
`
`This is to certify that a true and accurate copy of the foregoing
`DEFENDANT’S ANSWER, DEFENSES, AND COUNTERCLAIMS TO AMENDED
`COMPLAINT was filed electronically and served by mail on anyone unable to
`accept electronic filing. Notice of this filing will be sent by e-mail to all parties by
`operation of the court’s electronic filing system or by mail to anyone unable to
`accept electronic filing as indicated on the Notice of Electronic Filing. Parties may
`access this filing through the court’s CM/ECF System.
`
`
`/s/Stephen P. McNamara
`Stephen P. McNamara
`
`
`
`- 18 -

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