`
`UNITED STATES DISTRICT COURT FOR
`THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`ROSETTA-WIRELESS CORP., an Illinois
`Corporation,
`
`
`
`
`
`
`
`Plaintiff
`
`
`
`Civil Action No. 15-cv-10608
`
`
`
`
`
`
`
`
`v.
`
`
`LG ELECTRONICS CO., a Foreign
`Corporation, and LG ELECTRONICS USA
`INC., a Delaware Corporation,
`
`
`
`
`
`Defendants.
`
`
`LG ELECTRONICS U.S.A., INC.’S ANSWER, DEFENSES AND COUNTERCLAIMS
`TO PLAINTIFF ROSETTA-WIRELESS CORP.’S COMPLAINT FOR PATENT
`INFRINGEMENT
`
`Defendant LG Electronics U.S.A., Inc. (“LGEUSA” or “Defendant”) respectfully submits
`
`
`
`
`
`its Answer, Defenses and Counterclaims to the Complaint filed on November 24, 2015
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`(“Complaint”) by Plaintiff Rosetta-Wireless Corp. (“Rosetta” or “Plaintiff”) alleging
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`infringement of U.S. Patent No. 7, 149, 511 (“the ’511 Patent”).
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`PARTIES
`
`1.
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`Rosetta is a corporation organized and existing under the laws of Illinois. Rosetta
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`was founded in 2000 to develop and market novel solutions to consumers’ wireless access
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`problems. Rosetta has a principal place of business at 15522 Hawkhaven Road, Homer Glen, IL
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`60441.
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`Answer: LGEUSA is without knowledge or information sufficient to form a belief as to
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`the truth of the allegations of Paragraph 1 of the Complaint and therefore denies those
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`allegations.
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`1
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`ROSETTA-2013
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`0001
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`
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`Case: 1:15-cv-10608 Document #: 18 Filed: 12/23/15 Page 2 of 11 PageID #:104
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`2.
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`Upon information and belief, Defendant LG Electronics Co. is a foreign
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`corporation having a place of business at LG Twin Towers 20, Yeouido dong, Yeongdeungpo-
`
`gu, Seoul, Republic of Korea 150-721 with its United States headquarters at 10101 Old Grove
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`Road, San Diego CA 92131. LG Electronics Co. does substantial business in this judicial district
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`including the marketing, sale, offering for sale, and importation of cellular telephone devices that
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`are accused of patent infringement in this case.
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`Answer: Denied.
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`3.
`
`Upon information and belief, Defendant LG Electronics USA Inc. is a corporation
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`organized and existing under the laws of Delaware, having a principal place of business at 1000
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`Sylvan Avenue, Englewood Cliffs, NJ 07632. LG Electronics USA Inc. is registered to do
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`business in Illinois and can be served with process through its registered agent, United States
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`Corporation Co., at 801 Adlai Stevenson Drive, Springfield, IL 62703.
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`Answer: Admitted.
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`4.
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`LG Electronics Co. and LG Electronics USA Inc. are referred to collectively as
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`“LG.”
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`Answer: Paragraph 4 of the Complaint does not require a response.
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`JURISDICTION AND VENUE
`
`5.
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`The court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a) because this action arises under the patent laws of the United States, 35 U.S.C. §§ 1 et
`
`seq. Venue is proper in this federal district pursuant to 28 U.S.C. §§ 1391(b)-(c) and 1400(b) in
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`that each Defendant has done business in this District, has committed acts of infringement in this
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`District, and continues to commit acts of infringement in this District, entitling Plaintiff to relief.
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`Answer: LGEUSA admits that this action is styled as one for the alleged violation of the
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`patent laws, 35 U.S.C. §§ 1 et seq. and that this Court has subject matter jurisdiction under 28
`2
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`ROSETTA-2013
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`0002
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`Case: 1:15-cv-10608 Document #: 18 Filed: 12/23/15 Page 3 of 11 PageID #:105
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`U.S.C. §§ 1331 and 1338(a). LGEUSA also admits that venue is proper in this federal district
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`pursuant to 28 U.S.C. §§ 1391(b)-(c) and 1400(b). LGEUSA also admits that it has done
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`business in this District. LGEUSA denies the remainder of the allegations of Paragraph 5 of the
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`Complaint.
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`INFRINGEMENT
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`6.
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`On December 12, 2006, United States Patent No. 7,149,511 (the “‘511 Patent”)
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`was issued for inventions titled “Wireless Intelligent Personal Server.” On January 10, 2012, an
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`Ex Parte Reexamination Certificate was issued regarding Claims 1 and 58 of the ’511 Patent.
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`Rosetta owns, and during all relevant times, has owned, all right, title and interest in the ’511
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`Patent, which is attached hereto as Exhibit A.
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`Answer: LGEUSA admits that United States Patent No. 7,149,511 (the “’511 Patent”)
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`was issued on December 12, 2006 and that the ’511 Patent states on its face that it is titled
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`“Wireless Intelligent Personal Server.” LGEUSA also admits that an Ex Parte Reexamination
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`Certificate was issued regarding Claims 1 and 58 of the ’511 Patent on January 10, 2012, and
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`LGEUSA admits that Rosetta attached a purported copy of the ’511 Patent as Exhibit A to the
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`Complaint. LGEUSA is without knowledge or information sufficient to form a belief as to the
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`truth of the remainder of the allegations of Paragraph 6 of the Complaint, and therefore denies
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`those allegations.
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`7.
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`Upon information and belief, Defendants have infringed directly and continue to
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`infringe directly the ’511 Patent. The infringing acts include, but are not limited to, the
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`manufacture, use, sale, or offer for sale within the United States, or the importation into the
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`United States of products that embody the patented invention, including the products listed for
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`each Defendant in the attached Exhibit B. Defendants are liable for infringement of the ’511
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`Patent pursuant to 35 U.S.C. § 271.
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`
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`3
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`ROSETTA-2013
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`0003
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`
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`Case: 1:15-cv-10608 Document #: 18 Filed: 12/23/15 Page 4 of 11 PageID #:106
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`Answer: Denied.
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`8.
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`The acts of infringement by Defendants have caused damage to Rosetta, and
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`Rosetta is entitled to recover from Defendants the damages sustained by Rosetta as a result of
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`Defendants’ wrongful acts in an amount subject to proof at trial. The infringement of Rosetta’s
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`exclusive rights under the ’511 Patent by Defendants has damaged and will continue to damage
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`Rosetta, causing irreparable harm, for which there is no adequate remedy at law, unless enjoined
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`by this Court.
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`Answer: Denied.
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`9.
`
`To the extent required, Rosetta has complied with 35 U.S.C. § 287(a). Rosetta
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`has never sold a product in the United States and is therefore not required itself to mark products,
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`nor has it licensed the ’511 Patent.
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`Answer: LGEUSA is without knowledge or information sufficient to form a belief as to
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`the truth of the allegations of Paragraph 9 of the Complaint, and therefore denies those
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`allegations.
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`10.
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`Upon information and belief, Defendants had knowledge of the ’511 Patent no
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`later than January 27, 2015, yet Defendants have continued to infringe said patent. The
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`infringement of the ’511 Patent by Defendants is willful, deliberate and unreasonable, and with
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`full knowledge of the patent, entitling Rosetta to increased damages under 35 U.S.C. § 284 and
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`to attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
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`Answer: LGEUSA admits that it had knowledge of the ’511 Patent on January 27, 2015.
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`LGEUSA denies the remainder of the allegations of Paragraph 10 of the Complaint.
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`JURY DEMAND
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`11.
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`Plaintiff hereby demands a trial by jury on all issues.
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`Answer: Paragraph 11 of the Complaint does not require a response.
`4
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`ROSETTA-2013
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`0004
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`Case: 1:15-cv-10608 Document #: 18 Filed: 12/23/15 Page 5 of 11 PageID #:107
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`PRAYER FOR RELIEF
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`12. Wherefore, Rosetta requests entry of judgment in its favor and against Defendants
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`as follows:
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`a) A declaration that Defendants, and each of them, have infringed and are infringing the
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`’511 Patent;
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`b) An injunction against Defendants’ continuing infringement;
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`c) An award of damages to Rosetta arising out of Defendants’ infringement of the ’511
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`Patent, including enhanced damages pursuant to 35 U.S.C. § 284, together with
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`prejudgment and post-judgment interest, in an amount according to proof;
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`d) An award of attorneys’ fees pursuant to 35 U.S.C. § 285 or as otherwise permitted by
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`law; and
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`e) Costs and other relief as the Court may deem just and proper.
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`Answer: LGEUSA denies that Rosetta is entitled to any relief whatsoever from
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`LGEUSA or the Court, either as requested in its Prayer for Relief or otherwise, including the
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`relief requested in Paragraphs (a) through (e).
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`
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`AFFIRMATIVE DEFENSES
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`In further answer to Plaintiff’s Complaint, LGEUSA alleges the following defenses.
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`LGEUSA asserts these defenses without admitting that it bears the burden of proof on any of
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`them.
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`FIRST DEFENSE
`(Non-Infringement of the ’511 Patent)
`
`LGEUSA does not infringe and has not infringed, willfully or otherwise, any valid and
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`enforceable claim of the ’511 Patent.
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`5
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`ROSETTA-2013
`
`0005
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`
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`Case: 1:15-cv-10608 Document #: 18 Filed: 12/23/15 Page 6 of 11 PageID #:108
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`SECOND DEFENSE
`(Invalidity of the ’511 Patent)
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`The claims of the ’511 Patent are invalid for failure to meet the conditions of
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`patentability and/or otherwise comply with one or more of 35 U.S.C. § 100 et seq., including
`
`without limitation §§ 101, 102, 103, 112 and/or 116.
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`THIRD DEFENSE
`(Failure to State a Claim)
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`Rosetta’s Complaint fails to state any claims upon which relief may be granted.
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`FOURTH DEFENSE
`(Waiver, Estoppel, Latches and Unclean Hands)
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`Rosetta’s claims are barred in whole or in part by one or more of the equitable doctrines
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`of waiver, estoppel, laches and/or unclean hands.
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`FIFTH DEFENSE
`(Limitations on Damages)
`
`To the extent Rosetta seeks damages for alleged infringement more than six years prior to
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`the filing date of this action, the relief sought by Rosetta is barred by 35 U.S.C. § 286. To the
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`extent Rosetta seeks damages for alleged infringement prior to its giving actual or constructive
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`notice of the ’511 Patent to LGEUSA, the relief sought by Rosetta is barred, in whole or in part,
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`by 35 U.S.C. § 287. Rosetta is barred by 35 U.S.C. § 288 from recovering costs associated with
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`this action. Further, Rosetta’s claims are barred, in whole or in part, because of Rosetta’s failure
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`to mitigate damages, if any exist.
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`SIXTH DEFENSE
`(Prosecution History Estoppel)
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`Rosetta is estopped from construing the claims of the ’511 Patent in such a way as may
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`cover any of LGEUSA’s products or processes by reason of statements, representations,
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`disclaimers and/or amendments made to and/or before the United States Patent and Trademark
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`
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`6
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`ROSETTA-2013
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`0006
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`
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`Case: 1:15-cv-10608 Document #: 18 Filed: 12/23/15 Page 7 of 11 PageID #:109
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`Office during the prosecution and/or reexamination of the applications that led to the issuance or
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`reissue of the ’511 Patent or any of its claims.
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`SEVENTH DEFENSE
`(No Injunctive Relief)
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`Rosetta is not entitled to any injunctive relief (whether preliminary or permanent)
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`because any alleged injury to Rosetta is not immediate or irreparable and because Rosetta has an
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`adequate remedy at law for any alleged injury, if such remedy is required.
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`ADDITIONAL DEFENSES
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`LGEUSA reserves the right to amend this Answer and to assert additional defenses,
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`cross-claims and third party claims in this action when and if they become appropriate.
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`7
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`ROSETTA-2013
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`0007
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`Case: 1:15-cv-10608 Document #: 18 Filed: 12/23/15 Page 8 of 11 PageID #:110
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`COUNTERCLAIMS
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`Counterclaim-Plaintiff LGEUSA counterclaims against Counterclaim-Defendant Rosetta
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`as follows:
`
`THE PARTIES
`
`1.
`
`Counterclaim-Plaintiff LG Electronics U.S.A., Inc. (“LGEUSA”) is a corporation
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`organized and existing under the laws of the State of Delaware with a principal place of business
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`at 1000 Sylvan Avenue, Englewood Cliffs, New Jersey 07632.
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`2.
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`Counterclaim-Defendant Rosetta-Wireless Corp. (“Rosetta”) has expressly
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`alleged that it is an Illinois corporation with its principal place of business at 15522 Hawkhaven
`
`Road, Homer Glen, IL 60441.
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`JURISDICTION AND VENUE
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`3.
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`These counterclaims arise under the patent laws of the United States, Title 35 of
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`the United States Code, and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.
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`4.
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`This Court has subject matter jurisdiction over these counterclaims pursuant to 28
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`U.S.C. §§ 1331, 1338(a), 2201 and 2202.
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`5.
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`Rosetta is subject to personal jurisdiction in this District arising out of its
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`purposeful acts and/or transactions directed toward this District, including but not limited to
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`Rosetta specifically availing itself of the jurisdiction of this Court by filing the Complaint.
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`6.
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`While LGEUSA does not concede that the Northern District of Illinois is
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`convenient for the parties and witnesses under 28 U.S.C. § 1404(a), venue on this counterclaim
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`is proper in this District pursuant to at least 28 U.S.C. §§ 1391(b) because Rosetta alleges that its
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`main offices are located in this District.
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`7.
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`An actual and justiciable controversy exists between LGEUSA and Rosetta.
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`Rosetta has asserted LGEUSA infringes one or more claims of the ’511 Patent. LGEUSA denies
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`
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`8
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`ROSETTA-2013
`
`0008
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`
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`Case: 1:15-cv-10608 Document #: 18 Filed: 12/23/15 Page 9 of 11 PageID #:111
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`that LGEUSA infringes any claim of the ’511 Patent, and LGEUSA further contends that any
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`relevant claim in the ’511 Patent is invalid.
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`FIRST COUNTERCLAIM
`(Non-Infringement of U.S. Patent No. 7,149,511)
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`8.
`
`LGEUSA repeats and incorporates by reference as if fully set forth herein its
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`allegations in Paragraphs 1-7 of its Counterclaims.
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`9.
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`10.
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`LGEUSA does not infringe any valid claim of the ’511 Patent.
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`LGEUSA is entitled to a declaratory judgment that it does not infringe any valid
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`claim of the ’511 Patent.
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`SECOND COUNTERCLAIM
`(Invalidity of U.S. Patent No. 7,149,511)
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`11.
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`LGEUSA incorporates by reference as if fully set forth herein its allegations in
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`Paragraphs 1-10 of its Counterclaims.
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`12.
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`The claims of the ’511 Patent are invalid for failure to meet the conditions of
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`patentability and/or otherwise comply with one or more of 35 U.S.C. § 100 et seq., including
`
`without limitation §§ 101, 102, 103, 112 and/or 116.
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`13.
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`LGEUSA is entitled to a declaratory judgment that the claims of the ’511 Patent
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`are invalid.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, LGEUSA demands a jury
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`trial for all issues so triable.
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`PRAYER FOR RELIEF
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`WHEREFORE, LGEUSA respectfully requests the following relief:
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`A.
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`Judgment denying each request for relief made by Rosetta against LGEUSA with
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`prejudice;
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`
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`9
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`ROSETTA-2013
`
`0009
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`
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`Case: 1:15-cv-10608 Document #: 18 Filed: 12/23/15 Page 10 of 11 PageID #:112
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`B.
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`C.
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`D.
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`Judgment granting each of LGEUSA’s Affirmative Defenses;
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`Judgment granting each of LGEUSA’s Declaratory Judgment Counterclaims;
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`Declaration that this is an exceptional case under 35 U.S.C. § 285 and requiring
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`Rosetta to pay LGEUSA’s attorneys’ fees and expenses in this action; and
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`E.
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`Award to LGEUSA of such other and further relief as the Court deems just and
`
`proper.
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`
`Dated: December 23, 2015
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`
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`
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`Respectfully submitted,
`
`
`
`By: /s/ Lisa M. Mazzone
`James R. Figliulo (Bar No. 6183947)
`Lisa M. Mazzone (Bar No. 6303922)
`Figliulo & Silverman, P.C.
`10 S. LaSalle Street, Suite 3600
`Chicago, IL 60603
`Telephone (312) 251-4600
`Facsimile (312) 251-4610
`jfigliulo@fslegal.com
`lmazzone@fslegal.com
`
`Steven Lieberman
`Brian A. Tollefson
`Jenny L. Colgate
`Rothwell, Figg, Ernst, & Manbeck, P.C.
`(pro hac vice applications pending)
`607 14TH Street, N.W., Suite 800
`Washington, DC 20005
`Telephone (202) 783-6040
`Facsimile (202) 783-6031
`slieberman@rfem.com
`jcolgate@rfem.com
`btollefson@rfem.com
`
`Counsel for Defendant LG Electronics U.S.A., Inc.
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`10
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`ROSETTA-2013
`
`0010
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`Case: 1:15-cv-10608 Document #: 18 Filed: 12/23/15 Page 11 of 11 PageID #:113
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`CERTIFICATE OF SERVICE
`
`The undersigned attorney hereby certifies that a true and correct copy of the attached:
`
`LG ELECTRONICS U.S.A., INC.’S ANSWER, DEFENSES AND COUNTERCLAIMS
`TO PLAINTIFF ROSETTA-WIRELESS CORP.’S COMPLAINT FOR PATENT
`INFRINGEMENT
`
`was caused to be filed with the United States District Court of the Northern District of Illinois
`via the Court’s ECF filing system on December 23, 2015. Counsel named below will be served
`a copy of same via this Court’s ECF notification system.
`
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`/s/ Lisa M. Mazzone
`
`• Jenny L Colgate
`jcolgate@rfem.com, mrawls@rfem.com, biddinn@rfem.com
`• James R. Figliulo
`jfigliulo@fslegal.com
`• Kyle L. Harvey
`harvey@stadheimgrear.com, rodriguez@stadheimgrear.com, ichou@stadheimgrear.com,
`kelleher@stadheimgrear.com
`• Joo mee Kim
`jkim@rfem.com
`• Steven Lieberman
`slieberman@rothwellfigg.com, nhage@rfem.com
`• Lisa Michelle Mazzone
`lmazzone@fslegal.com
`• Michael K Ng
`michael.ng@kobrekim.com, travis.anderson-hamilton@kobrekim.com,
`robert.lee@kobrekim.com, matthew.lightfoot@kobrekim.com
`• Brian A. Tollefson
`btollefson@rfem.com, biddinn@rfem.com
`• Daniel A. Zaheer
`daniel.zaheer@kobrekim.com
`
`
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`11
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`ROSETTA-2013
`
`0011