`
`
`
`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
`
`
`No. 15-1307
`
`Judge Victor J. Wolski
`
`)))))))))))))))))))))
`
`
`CELLCAST TECHNOLOGIES, LLC
`
`and
`
`ENVISIONIT, LLC
`
`
`Plaintiffs,
`
`
`
`v.
`
`
`THE UNITED STATES,
`
`
`Defendant,
`
`
`and
`
`INTERNATIONAL BUSINESS MACHINES
`CORP.,
`
`
`
`Third-Party Defendant
`
`
`
`ANSWER OF INTERNATIONAL BUSINESS MACHINES CORPORATION
`
`
`
`Pursuant to Rule 14(c) of the Rules of the United States Court of Federal Claims, and the
`
`Court’s Notice to Interested Third Party dated April 5, 2016, International Business Machines
`
`Corporation (“IBM”), by and through its attorneys, hereby answers Plaintiffs CellCast
`
`Technologies, LLC’s (“CellCast’s”) and EnvisionIT, LLC’s (“EnvisionIT’s”) (collectively
`
`“Plaintiffs’”) Complaint. IBM has an interest in this case for at least the reasons specified in the
`
`United States’ Unopposed Motion to Notice Third Parties, filed March 4, 2016 [D.I. 10]. Except
`
`as expressly admitted herein, IBM denies each allegation in the Complaint.
`
`NATURE OF ACTION
`
`1.
`
`IBM admits that the Complaint alleges an action to recover reasonable and entire
`
`compensation for the allegedly unlicensed use and manufacture by and for the United States of
`
`alleged inventions described in and covered by U.S. Patent Nos. 7,693,938 (“the ’938 patent”),
`
`ACTIVE/85734056.2
`
`Page 1
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 2 of 15
`
`
`
`8,103,719 (“the ’719 patent”), 8,438,221 (“the ’221 patent”), 8,438,212 (“the ’212 patent”) and
`
`9,136,954 (“the ’954 patent”) (collectively, “the patents-in-suit”), but otherwise denies the
`
`allegations of Paragraph 1.
`
`JURISDICTION
`
`2.
`
`IBM admits that this Court has subject matter jurisdiction over this action
`
`pursuant to 28 U.S.C. § 1498(a). IBM denies that this Court has subject matter jurisdiction over
`
`this action pursuant to 28 U.S.C. § 1491(a).
`
`PARTIES
`
`3.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 3 of the Complaint and therefore denies them.
`
`4.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 4 of the Complaint and therefore denies them.
`
`5.
`
`IBM admits that the Complaint identifies the United States as the Defendant.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of the remaining
`
`allegations in Paragraph 5 of the Complaint and therefore denies them.
`
`ASSERTED PATENTS
`
`6.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 6 of the Complaint and therefore denies them.
`
`7.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 7 of the Complaint and therefore denies them.
`
`8.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 8 of the Complaint and therefore denies them.
`
`
`
`2
`
`Page 2
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 3 of 15
`
`
`
`9.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 9 of the Complaint and therefore denies them.
`
`10.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 10 of the Complaint and therefore denies them.
`
`11.
`
`IBM admits that EnvisionIT is listed on the face of the patents-in-suit as the
`
`named assignee. Based on information and belief, IBM further admits that EnvisionIT is the
`
`named assignee for additional pending U.S. patent applications related to the patents-in-suit.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of the remaining
`
`allegations in Paragraph 11 of the Complaint and therefore denies them.
`
`12.
`
`IBM admits that the United States Patent and Trademark Office issued the ’938
`
`patent on April 6, 2010, and that the ’938 patent is entitled “Message Broadcasting Admission
`
`Control System and Method.” IBM admits that a copy of the ’938 patent is attached to the
`
`Complaint as Exhibit A. To the extent that there are any remaining allegations, IBM denies the
`
`same.
`
`13.
`
`IBM admits that the United States Patent and Trademark Office issued the ’719
`
`patent on January 24, 2012, and that the ’719 patent is entitled “Message Broadcasting Control
`
`System and Method.” IBM admits that a copy of the ’719 patent is attached to the Complaint as
`
`Exhibit B. To the extent that there are any remaining allegations, IBM denies the same.
`
`14.
`
`IBM admits that the United States Patent and Trademark Office issued the ’221
`
`patent on May 7, 2013, and that the ’221 patent is entitled “Broadcast Alerting Message
`
`Aggregator/Gateway System and Method.” IBM admits that a copy of the ’221 patent is
`
`attached to the Complaint as Exhibit C. To the extent that there are any remaining allegations,
`
`IBM denies the same.
`
`
`
`3
`
`Page 3
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 4 of 15
`
`
`
`15.
`
`IBM admits that the United States Patent and Trademark Office issued the ’212
`
`patent on May 7, 2013, and that the ’212 patent is entitled “Message Broadcasting Control
`
`System and Method.” IBM admits that a copy of the ’212 patent is attached to the Complaint as
`
`Exhibit D. To the extent that there are any remaining allegations, IBM denies the same.
`
`16.
`
`IBM admits that the United States Patent and Trademark Office issued the ’954
`
`patent on September 15, 2015, and that the ’954 patent is entitled “Broadcast Alerting Message
`
`Aggregator/Gateway System and Method.” IBM admits that a copy of the ’954 patent is
`
`attached to the Complaint as Exhibit E. To the extent that there are any remaining allegations,
`
`IBM denies the same.
`
`17.
`
`18.
`
`Denied.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 18 of the Complaint and therefore denies them.
`
`19.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 19 of the Complaint and therefore denies them.
`
`SUMMARY OF GROUNDS FOR RELIEF
`
`20.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 20 of the Complaint and therefore denies them.
`
`21.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 21 of the Complaint and therefore denies them.
`
`22.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 22 of the Complaint and therefore denies them.
`
`
`
`4
`
`Page 4
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 5 of 15
`
`
`
`KNOWLEDGE OF THE PATENTS-IN-SUIT BY THE UNITED STATES
`
`23.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 23 of the Complaint and therefore denies them.
`
`FACTUAL ALLEGATIONS
`
`24.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 24 of the Complaint and therefore denies them.
`
`25.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 25 of the Complaint and therefore denies them.
`
`26.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 26 of the Complaint and therefore denies them.
`
`27.
`
`IBM admits that it worked with FEMA to develop aspects of the Integrated Public
`
`Alert Warning System (“IPAWS”). To the extent that there are any remaining allegations, IBM
`
`denies the same.
`
`28.
`
`IBM admits that the Warning, Alert, and Response Network Act (“WARN Act”)
`
`was enacted in 2006. IBM otherwise lacks knowledge or information sufficient to form a belief
`
`about the truth of the remaining allegations in Paragraph 28 of the Complaint and therefore
`
`denies them.
`
`29.
`
`IBM admits that President George W. Bush signed Executive Order 13407, which
`
`states that “[i]t is the policy of the United States to have an effective, reliable, integrated,
`
`flexible, and comprehensive system to alert and warn the American people in situations of war,
`
`terrorist attack, natural disaster, or other hazards to public safety and well-being (public alert and
`
`warning system) . . . .” IBM further admits that the Order States that the Secretary of Homeland
`
`Security shall, inter alia:
`
`
`
`5
`
`Page 5
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 6 of 15
`
`
`
`(i) inventory, evaluate, and assess the capabilities and integration with the public alert
`and warning system of Federal, State, territorial, tribal, and local public alert and warning
`resources;
`
`(ii) establish or adopt, as appropriate, common alerting and warning protocols, standards,
`terminology, and operating procedures for the public alert and warning system to enable
`interoperability and the secure delivery of coordinated messages to the American people
`through as many communication pathways as practicable, taking account of Federal
`Communications Commission rules as provided by law . . . .
`
`To the extent that there are any remaining allegations, IBM denies the same.
`
`30.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 30 of the Complaint and therefore denies them.
`
`31.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 31 of the Complaint and therefore denies them.
`
`32.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 32 of the Complaint and therefore denies them.
`
`33.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 33 of the Complaint and therefore denies them.
`
`34.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 34 of the Complaint and therefore denies them.
`
`35.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 35 of the Complaint and therefore denies them.
`
`36.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 36 of the Complaint and therefore denies them.
`
`37.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 37 of the Complaint and therefore denies them.
`
`38.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 38 of the Complaint and therefore denies them.
`
`
`
`6
`
`Page 6
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 7 of 15
`
`
`
`39.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 39 of the Complaint and therefore denies them.
`
`40.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 40 of the Complaint and therefore denies them.
`
`41.
`
`42.
`
`Denied.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 42 of the Complaint and therefore denies them.
`
`43.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 43 of the Complaint and therefore denies them.
`
`44.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 44 of the Complaint and therefore denies them.
`
`45.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 45 of the Complaint and therefore denies them.
`
`46.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 46 of the Complaint and therefore denies them.
`
`ALLEGED UNLICENSED USE BY THE UNITED STATES
`
`47.
`
`The allegations in paragraph 47 are conclusions of law to which no response is
`
`required. To the extent a response is deemed to be required, IBM denies the allegations of
`
`Paragraph 47 and, further, incorporates by reference its responses to paragraphs 48–72, as set
`
`forth below, regarding CellCast’s infringement contentions as to the patents-in-suit.
`
`COUNT 1
`
`48.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 48 of the Complaint and therefore denies them.
`
`
`
`7
`
`Page 7
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 8 of 15
`
`
`
`49.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 49 of the Complaint and therefore denies them.
`
`50.
`
`To the extent Paragraph 50 alleges that any IBM product, system or service, either
`
`alone or in combination with any other product or system, infringes the ’938 patent, IBM denies
`
`that any IBM product, system or service infringes any valid and enforceable claim of the ’938
`
`patent. Otherwise, IBM lacks knowledge or information sufficient to form a belief about the
`
`truth of the allegations in Paragraph 50 of the Complaint and therefore denies them.
`
`51.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 51 of the Complaint and therefore denies them.
`
`52.
`
`The allegations in paragraph 52 are conclusions of law to which no response is
`
`required. To the extent that they may be deemed allegations of fact, they are denied.
`
`COUNT 2
`
`53.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 53 of the Complaint and therefore denies them.
`
`54.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 54 of the Complaint and therefore denies them.
`
`55.
`
`To the extent Paragraph 55 alleges that any IBM product, system or service, either
`
`alone or in combination with any other product or system, infringes the ’719 patent, IBM denies
`
`that any IBM product, system or service infringes any valid and enforceable claim of the ’719
`
`patent. Otherwise, IBM lacks knowledge or information sufficient to form a belief about the
`
`truth of the allegations in Paragraph 55 of the Complaint and therefore denies them.
`
`56.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 56 of the Complaint and therefore denies them.
`
`
`
`8
`
`Page 8
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 9 of 15
`
`
`
`57.
`
`The allegations in paragraph 57 are conclusions of law to which no response is
`
`required. To the extent that they may be deemed allegations of fact, they are denied.
`
`COUNT 3
`
`58.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 58 of the Complaint and therefore denies them.
`
`59.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 59 of the Complaint and therefore denies them.
`
`60.
`
`To the extent Paragraph 60 alleges that any IBM product, system or service, either
`
`alone or in combination with any other product or system, infringes the ’221 patent, IBM denies
`
`that any IBM product, system or service infringes any valid and enforceable claim of the ’221
`
`patent. Otherwise, IBM lacks knowledge or information sufficient to form a belief about the
`
`truth of the allegations in Paragraph 60 of the Complaint and therefore denies them.
`
`61.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 61 of the Complaint and therefore denies them.
`
`62.
`
`The allegations in paragraph 62 are conclusions of law to which no response is
`
`required. To the extent that they may be deemed allegations of fact, they are denied.
`
`COUNT 4
`
`63.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 63 of the Complaint and therefore denies them.
`
`64.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 64 of the Complaint and therefore denies them.
`
`65.
`
`To the extent Paragraph 65 alleges that any IBM product, system or service, either
`
`alone or in combination with any other product or system, infringes the ’212 patent, IBM denies
`
`
`
`9
`
`Page 9
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 10 of 15
`
`
`
`that any IBM product, system or service infringes any valid and enforceable claim of the ’212
`
`patent. Otherwise, IBM lacks knowledge or information sufficient to form a belief about the
`
`truth of the allegations in Paragraph 65 of the Complaint and therefore denies them.
`
`66.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 66 of the Complaint and therefore denies them.
`
`67.
`
`The allegations in paragraph 67 are conclusions of law to which no response is
`
`required. To the extent that they may be deemed allegations of fact, they are denied.
`
`COUNT 5
`
`68.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 68 of the Complaint and therefore denies them.
`
`69.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 69 of the Complaint and therefore denies them.
`
`70.
`
`To the extent Paragraph 70 alleges that any IBM product, system or service, either
`
`alone or in combination with any other product or system, infringes the ’954 patent, IBM denies
`
`that any IBM product, system or service infringes any valid and enforceable claim of the ’954
`
`patent. Otherwise, IBM lacks knowledge or information sufficient to form a belief about the
`
`truth of the allegations in Paragraph 70 of the Complaint and therefore denies them.
`
`71.
`
`IBM lacks knowledge or information sufficient to form a belief about the truth of
`
`the allegations in Paragraph 71 of the Complaint and therefore denies them.
`
`72.
`
`The allegations in paragraph 72 are conclusions of law to which no response is
`
`required. To the extent that they may be deemed allegations of fact, they are denied.
`
`
`
`10
`
`Page 10
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 11 of 15
`
`
`
`
`
`PRAYER FOR RELIEF
`
`A–F. Paragraphs (A) through (F) of the Complaint state Plaintiffs’ prayer for relief, to
`
`which no response is required. Nonetheless, to the extent Paragraphs (A) through (F) are
`
`deemed to contain allegations, IBM denies each such allegation. IBM further denies that
`
`Plaintiffs are entitled to any of the relief requested in Paragraphs (A) through (F).
`
`DEFENSES
`
`FIRST DEFENSE (NON-INFRINGEMENT)
`
`1.
`
`IBM has not infringed any valid and enforceable claim of the patents-in-suit,
`
`either literally or under the doctrine of equivalents.
`
`SECOND DEFENSE (INVALIDITY)
`
`2.
`
`The claims of the patents-in-suit are invalid because they do not comply with one
`
`or more of the requirements for patentability, including those identified in 35 U.S.C. §§ 101,
`
`102, 103, and 112.
`
`THIRD DEFENSE (NO LIABILITY FOR ANY INFRINGING ACTIVITIES CAUSED BY THE UNITED
`STATES OR OTHERS)
`
`3.
`
`To the extent the alleged infringing acts were caused by, or performed pursuant to
`
`acts by the United States, or others, IBM is not liable for those activities and has no obligation to
`
`indemnify the United States.
`
`FOURTH DEFENSE (WAIVER, LACHES, AND ESTOPPEL)
`
`4.
`
`Plaintiffs’ claims are barred by the doctrine of waiver, equitable estoppel, and
`
`and/or laches.
`
`
`
`11
`
`Page 11
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 12 of 15
`
`
`
`FIFTH DEFENSE (LIMITATION OF DAMAGES)
`
`5.
`
`To the extent that Plaintiffs seek recovery for any of IBM’s alleged unauthorized
`
`use occurring more than six years before the filing of the Complaint, Plaintiffs are precluded
`
`from any such recovery, as set forth in 35 U.S.C. § 286 and/or 28 U.S.C. §§ 2401 and 2501.
`
`SIXTH DEFENSE (LICENSE TO THE PATENTS-IN-SUIT)
`
`6.
`
`To the extent the alleged inventions claimed by the patents-in-suit were invented
`
`in the performance of work under a funding agreement with the Government or using
`
`Government resources, the United States is entitled to an express or implied license in the
`
`alleged inventions.
`
`SEVENTH DEFENSE (USE OR MANUFACTURE BY OR FOR THE UNITED STATES)
`
`7.
`
`Plaintiffs’ claims are barred by 28 U.S.C. §1498 to the extent they relate to use or
`
`manufacture of the alleged inventions of the patents-in-suit by or for the United States.
`
`However, should Plaintiffs be awarded compensation, such compensation may include delay
`
`compensation, but shall not include pre-judgment or post-judgment interest or costs provided by
`
`35 U.S.C. § 284 and 28 U.S.C. § 1961.
`
`EIGHTH DEFENSE (CONTRACTUAL LIMITATION OF DAMAGES)
`
`8.
`
`To the extent Plaintiffs or the United States seek recovery from IBM, IBM is not
`
`liable for any amount in excess of the aggregate amount payable by the United States to IBM
`
`under the applicable work order.
`
`NINTH DEFENSE (RECOVERY BARRED BY ANTI-ASSIGNMENT ACT)
`
`9.
`
`To the extent that Plaintiffs seek recovery for infringement that occurred prior to
`
`the assignment of the patents-in-suit to EnvisionIT, such recovery is barred by the Anti-
`
`Assignment Act, 31 U.S.C.A. § 3727.
`
`
`
`12
`
`Page 12
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 13 of 15
`
`
`
`TENTH AFFIRMATIVE DEFENSE (SOVEREIGN IMMUNITY AS APPLIED TO GOVERNMENT
`CONTRACTORS)
`
`10.
`
`To the extent that Plaintiffs seek recover for acts performed by the United States
`
`based on a theory of indirect or joint infringement, Plaintiffs cannot recover because the United
`
`States has not waived sovereign immunity as to infringement based on such a theory.
`
`ELEVENTH AFFIRMATIVE DEFENSE (FAILURE TO STATE A CLAIM)
`
`Plaintiffs fail to state a claim upon which relief can be granted as to the patents-
`
`11.
`
`in-suit.
`
`RELIEF REQUESTED BY THIRD-PARTY DEFENDANT
`
`WHEREFORE, IBM respectfully requests that this Court:
`
`(a)
`
`Deny any and all relief requested by Plaintiffs, as set forth in the Complaint and
`
`
`
`
`
`dismiss Plaintiffs’ Complaint with prejudice;
`
`
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`Enter judgment that the patents-in-suit are invalid;
`
`Enter judgment that the patents-in-suit have not been infringed;
`
`Enter judgment that Plaintiffs are not entitled to any compensation;
`
`Declare that this is an exceptional case in favor of IBM under 35 U.S.C. § 285,
`
`award IBM its reasonable attorneys’ fees and expenses, and hold Plaintiffs jointly and severally
`
`liable for this award;
`
`
`
`(f)
`
`Award IBM its costs of suit, and hold Plaintiffs jointly and severally liable for this
`
`award; and
`
`
`
`
`
`
`
`(g)
`
`Award IBM such other and further relief as this Court deems just and appropriate.
`
`
`
`13
`
`Page 13
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 14 of 15
`
`
`
`Dated: May 18, 2016
`
`Respectfully submitted,
`
`
`
`
`
`
`
`Attorneys for Third-Party Defendant
`International Business Machines Corp.
`
`
`
`
`
`/s/Mark J. Abate
`Mark J. Abate
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Tel: (212) 813-8000
`Fax: (212) 355-3333
`mabate@goodwinprocter.com
`
`Of Counsel:
`
`Calvin E. Wingfield Jr.
`Jonathan A. Auerbach
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Tel: (212) 813-8000
`Fax: (212) 355-3333
`cwingfield@goodwinprocter.com
`jauerbach@goodwinprocter.com
`
`
`
`14
`
`Page 14
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`
`
`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 15 of 15
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that this document, filed through the ECF system, will be sent
`
`electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
`
`and served electronically to those indicated as non-registered participants on May 18, 2016.
`
`
`
`
`
`/s/Mark J. Abate
`Mark J. Abate
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Tel: (212) 813-8000
`Fax: (212) 355-3333
`mabate@goodwinprocter.com
`
`
`
`ACTIVE/85734056.2
`
`Page 15
`
`EnvisionIT Ex. 2003, DOJ v. EnvisionIT, LLC, IPR2017-00160
`
`