Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 1 of 26 Page ID #:2499
`
`
`Michael R. Matthias, SBN57728
`Matthew D. Pearson, SBN 294302
`BAKER & HOSTETLER LLP
`11601 Wilshire Boulevard, Suite 1400
`Los Angeles, CA 90025-0509
`Telephone:
`310.820.8800
`Facsimile:
`310.820.8859
`Email:
`mmatthias@bakerlaw.com
`mpearson@bakerlaw.com
`
`Steven J. Rocci (Admitted Pro Hac Vice)
`Kevin M. Bovard, SBN 247521
`BAKER & HOSTETLER LLP
`2929 Arch Street, 12th Floor
`Philadelphia, PA 19104-2891
`Telephone:
`215.568.3100
`Facsimile:
`215.568.3439
`Email:
`srocci@bakerlaw.com
`kbovard@bakerlaw.com
`
`Attorneys for Defendant/Counter-Claimant
`GUEST-TEK INTERATIVE
`ENTERTAINMENT LTD.
`
`(additional counsel listed on following page)
`
`IN THE UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`WESTERN DIVISION
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`LOS ANGELES
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`ATTORNEYS AT LAW
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`BAKER & HOSTETLER LLP
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`NOMADIX, INC.,
`
` Case No.: 2:16-CV-08033-AB-FFM
`
`Plaintiff,
`
`[Honorable André Birotte Jr.]
`
`GUEST-TEK’S ANSWER AND
`COUNTERCLAIMS TO
`NOMADIX’S AMENDED
`COMPLAINT FOR BREACH OF
`CONTRACT
`
`[DEMAND FOR JURY TRIAL]
`
`Action Filed: 10/28/16
`Amended Complaint Filed: 03/23/17
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`v.
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`GUEST-TEK INTERACTIVE
`ENTERTAINMENT LTD.,
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`Defendant/Counter-
`Claimant,
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` v.
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`24
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`NOMADIX, INC.,
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` Counter-Defendant.
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`1
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 2 of 26 Page ID #:2500
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`
`Michael J. Swope (Admitted Pro Hac Vice)
`BAKER & HOSTETLER LLP
`999 Third Avenue, Suite 3500
`Seattle, WA 98104-4040
`Telephone:
`206.332.1379
`Facsimile:
`206.624.7317
`Email:
`mswope@bakerlaw.com
`
`Attorneys for Defendant/Counter-Claimant
`GUEST-TEK INTERATIVE
`ENTERTAINMENT LTD.
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`LOS ANGELES
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`ATTORNEYS AT LAW
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`BAKER & HOSTETLER LLP
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`2
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 3 of 26 Page ID #:2501
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`Defendant/Counter-Claimant GUEST-TEK INTERACTIVE
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`ENTERTAINMENT LTD. (“Guest-Tek”) hereby answers the Amended
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`Complaint of Plaintiff/Counter-Defendant NOMADIX, INC. (“Nomadix”) and
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`alleges its counterclaims thereto, as follows. To the extent not specifically
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`admitted, Guest-Tek denies the allegations of the Amended Complaint.
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`ANSWER TO SPECIFIC ALLEGATIONS OF AMENDED COMPLAINT
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`JURISDICTION, PARTIES, AND VENUE
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`1. With respect to Paragraph 1 of the Amended Complaint: Admitted
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`only that the parties entered in the License Agreement on December 30, 2010, and
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`that the Amended Complaint purports to state a cause of action for breach of the
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`License Agreement. Guest-Tek denies that the Court has subject matter
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`jurisdiction over this dispute. Otherwise denied.
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`2. With respect to Paragraph 2 of the Amended Complaint: Admitted
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`only that the Amended Complaint purports to state that Nomadix is a Delaware
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`corporation with a principal place of business at 30851 Agoura Road, Suite 102,
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`Agoura Hills, California 91301. Guest-Tek is otherwise without knowledge or
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`information sufficient to form a belief about the truth of the allegations of
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`Paragraph 2 of the Amended Complaint and therefore denies the same.
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`3. With respect to Paragraph 3 of the Amended Complaint: Admitted.
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`4. With respect to Paragraph 4 of the Amended Complaint: Admitted
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`only that Paragraph 4 of the Amended Complaint purports to state that Nomadix’s
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`damages exceed $11,000,000, and that $11,000,000 is greater than $75,000.
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`Otherwise denied.
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`5. With respect to Paragraph 5 of the Amended Complaint: Admitted
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`only that the License Agreement contains a Dispute Resolution provision under
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`which, after certain requirements for mediation and arbitration have been satisfied,
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`disputes may be brought in the United States District Court for the Central District
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`of California, and that, after the mediation and arbitration requirements have been
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`1
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`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`LOS ANGELES
`
`ATTORNEYS AT LAW
`
`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 4 of 26 Page ID #:2502
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`satisfied, Guest-Tek consents to personal jurisdiction and venue in that Court.
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`Otherwise denied.
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`6. With respect to Paragraph 6 of the Amended Complaint: Admitted.
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`7. With respect to Paragraph 7 of the Amended Complaint: Admitted.
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`8. With respect to Paragraph 8 of the Amended Complaint: Admitted.
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`9. With respect to Paragraph 9 of the Amended Complaint: Admitted.
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`10. With respect to Paragraph 10 of the Amended Complaint: Admitted
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`only that Guest-Tek has provided its OneView Internet solution within this judicial
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`district including to the hotels identified in Paragraph 10 of the Amended
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`Complaint, and elsewhere. Otherwise denied.
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`11. With respect to Paragraph 11 of the Amended Complaint: Admitted
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`only that Guest-Tek has sent royalty reports to Nomadix and that Guest-Tek has
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`made royalty payments to Nomadix. Otherwise denied.
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`FIRST CLAIM FOR RELIEF:
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`BREACH OF CONTRACT
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`12. With respect to Paragraph 12 of the Amended Complaint: Admitted.
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`13. With respect to Paragraph 13 of the Amended Complaint: Admitted
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`only that the parties settled the 2009 Litigation in December, 2010, that the License
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`Agreement was entered into between them as part of the settlement, and that
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`Exhibit 1 to the Amended Complaint purports to be a copy of the License
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`Agreement without Schedule B. Otherwise denied.
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`14. With respect to Paragraph 14 of the Amended Complaint: Admitted
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`only that the License Agreement was the result of an arm’s length negotiation,
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`represented the parties’ intent, and was duly effected on December 30,
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`2010. Otherwise the allegations in Paragraph 14 call for a legal conclusion to
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`which no response is required, and on that basis, they are denied.
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`15. With respect to Paragraph 15 of the Amended Complaint:
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`2
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`LOS ANGELES
`
`ATTORNEYS AT LAW
`
`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 5 of 26 Page ID #:2503
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` Otherwise denied.
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`16. With respect to Paragraph 16 of the Amended Complaint: Denied.
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`17. With respect to Paragraph 17 of the Amended Complaint: Admitted
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`only that, since 2011, the OneView Internet solutions have been deployed in over
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`2500 hotels in the U.S. Otherwise denied.
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`18. With respect to Paragraph 18 of the Amended Complaint: Admitted
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`only that, since the third quarter of 2012, the OneView Internet solution has been
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`deployed in U.S. properties. Otherwise denied.
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`19. With respect to Paragraph 19 of the Amended Complaint: Admitted
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`only that, since the third quarter of 2012, certain deployed OneView Internet
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`solutions may have enabled a functionality specified in the License Agreement for
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`which Guest-Tek paid a royalty, and that the Amended Complaint purports to
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`identify these functionalities as relating to “captive portals, authentication,
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`integration with property management systems and bandwidth management.”
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`Otherwise denied.
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`20. With respect to Paragraph 20 of the Amended Complaint: Admitted.
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`21. With respect to Paragraph 21 of the Amended Complaint: Admitted
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`only that Guest-Tek has stated to one or more customers of its OneView Internet
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`solution that it has a license under the Nomadix patents. Otherwise denied.
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`22. With respect to Paragraph 22 of the Amended Complaint: Admitted
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`only that Nomadix filed court papers in which it purported to sue iBahn
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`Corporation for infringement of certain Nomadix patents, and that certain of those
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`patents purport to be the same patents that Nomadix had asserted against Guest-
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`Tek. Guest-Tek is without personal knowledge or information sufficient to form a
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`3
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
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`LOS ANGELES
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`ATTORNEYS AT LAW
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`BAKER & HOSTETLER LLP
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`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 6 of 26 Page ID #:2504
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`belief as to the truth of the remainder of Paragraph 22 of the Amended Complaint
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`and therefore denies the same.
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`23. With respect to Paragraph 23 of the Amended Complaint: Admitted
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`only that documents exist that purport to indicate that iBahn Corporation and
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`iBahn General Holdings Corporation initiated bankruptcy proceedings in the
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`United States Bankruptcy Court for the District of Delaware. Guest-Tek is without
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`personal knowledge or information sufficient to form a belief as to the truth of the
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`remainder of Paragraph 23 of the Amended Complaint and therefore denies the
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`same.
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`24. With respect to Paragraph 24 of the Amended Complaint: Admitted
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`only that Nomadix filed papers in connection with the iBahn bankruptcy
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`proceedings in which it asserted that it was a creditor of the debtors due to alleged
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`patent infringement by iBahn, and that Nomadix filed court papers in 2014 which
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`it purported to sue iBahn General Holdings Corporation and in which it sought
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`damages for alleged patent infringement by iBahn during the bankruptcy
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`proceedings. Guest-Tek is without personal knowledge or information sufficient to
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`form a belief as to the truth of the remainder of Paragraph 24 of the Amended
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`Complaint and therefore denies the same.
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`25. With respect to Paragraph 25 of the Amended Complaint: Admitted
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`only that an auction or bidding process was conducted for the sale of certain iBahn
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`assets, that Guest-Tek submitted a bid for those assets, and that, to the extent that
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`the License Agreement covered or was otherwise applicable to any features or
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`functionalities of any of the assets, the License Agreement would preclude
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`Nomadix from instituting suit for patent infringement by such iBahn products.
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`Guest-Tek is otherwise without personal knowledge or information sufficient to
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`form a belief about the truth of the allegations of Paragraph 25 of the Amended
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`Complaint and therefore denies the same.
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`26. With respect to Paragraph 26 of the Amended Complaint: Admitted
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`4
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`LOS ANGELES
`
`ATTORNEYS AT LAW
`
`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 7 of 26 Page ID #:2505
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`only that in March 2014, the bankruptcy court approved Guest-Tek’s bid and that
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`Guest-Tek purchased the iBahn assets referenced in Paragraph 25 hereof. Guest-
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`Tek is otherwise without personal knowledge or information sufficient to form a
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`belief about the truth of the allegations of Paragraph 26 of the Amended Complaint
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`and therefore denies the same.
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`27. With respect to Paragraph 27 of the Amended Complaint: Admitted.
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`28. With respect to Paragraph 28 of the Amended Complaint: Admitted.
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`29. With respect to Paragraph 29 of the Amended Complaint: Admitted
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`only that iBahn sold systems that enabled hotels to provide Internet access service
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`to their customers, and that the iBahn assets that were up for sale in bankruptcy
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`included the potential to assume contracts between iBahn and its hotel customers.
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`Guest-Tek is otherwise without personal knowledge or information sufficient to
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`form a belief about the truth of the allegations of Paragraph 29 of the Amended
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`Complaint and therefore denies the same.
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`30. With respect to Paragraph 30 of the Amended Complaint: Admitted
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`only that a number of U.S. hotel properties employed iBahn systems prior to
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`iBahn’s bankruptcy, that Guest-Tek acquired certain iBahn assets, and that some of
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`the U.S. hotel properties that employed those iBahn systems did business with
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`Guest-Tek after it acquired the certain iBahn assets. Otherwise denied.
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`31. With respect to Paragraph 31 of the Amended Complaint: Denied.
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`32. With respect to Paragraph 32 of the Amended Complaint:
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`. Otherwise denied.
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`33. With respect to Paragraph 33 of the Amended Complaint: Denied.
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`34. With respect to Paragraph 34 of the Amended Complaint:
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`5
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`LOS ANGELES
`
`ATTORNEYS AT LAW
`
`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 8 of 26 Page ID #:2506
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`Otherwise denied.
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`35. With respect to Paragraph 35 of the Amended Complaint: Admitted
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`only that Exhibit 2 to the Amended Complaint purports to be a compilation of
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`quarterly reports submitted by Guest-Tek to Nomadix. Otherwise denied.
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`36. With respect to Paragraph 36 of the Amended Complaint: Admitted
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`only that, since the third quarter of 2012, the OneView Internet solution has been
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`deployed in U.S. properties. Otherwise denied.
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`37. With respect to Paragraph 37 of the Amended Complaint: Denied.
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`38. With respect to Paragraph 38 of the Amended Complaint: Admitted
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`only that Guest-Tek has stated to one or more customers that it has a license under
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`the Nomadix patents. Otherwise denied.
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`39. With respect to Paragraph 39 of the Amended Complaint: Admitted
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`only that there are properties in which either OneView Internet solutions or iBahn
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`Head-End Processors had been deployed. Otherwise denied.
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`40. With respect to Paragraph 40 of the Amended Complaint: Denied.
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`41. With respect to Paragraph 41 of the Amended Complaint: Admitted
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`only that Nomadix periodically sent letters to Guest-Tek in which Nomadix alleged
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`breach of the License Agreement for allegedly failing to perform its reporting and
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`payment obligations and that Guest-Tek’s counsel sent a report for the third quarter
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`of 2012 to Nomadix’s counsel on October 30, 2012.
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`42. With respect to Paragraph 42 of the Amended Complaint:
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`43. With respect to Paragraph 43 of the Amended Complaint: Denied.
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`44. With respect to Paragraph 44 of the Amended Complaint: Denied.
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`45. With respect to Paragraph 45 of the Amended Complaint: Denied.
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` Otherwise denied.
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`/ / /
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`6
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`LOS ANGELES
`
`ATTORNEYS AT LAW
`
`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 9 of 26 Page ID #:2507
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`ALTERNATIVE DISPUTE RESOLUTION
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`46. With respect to Paragraph 46 of the Amended Complaint: Admitted.
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`47. With respect to Paragraph 47 of the Amended Complaint: Admitted
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`only that in January, 2013, Nomadix sent a letter requesting mediation, but
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`Nomadix subsequently expressed a desire to avoid mediation, as evidenced by an
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`e-mail dated March 4, 2013 from Nomadix’s counsel, William Shreve; Mr.
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`Shreve’s March 4, 2013 e-mail stated Nomadix’s desire to resolve the dispute
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`informally; Nomadix merely pointed Guest-Tek to a few sample claims and
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`showed Guest-Tek a claim chart but never provided that claim chart to Guest-Tek;
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`and, by letter dated March 10, 2014, Guest-Tek indicated that since the parties
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`were unable to reach an agreement, the parties should mediate their dispute; and
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`Guest-Tek requested a list of mediators from Nomadix and Guest-Tek stated that
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`it would also provide its own list of mediators. Otherwise denied.
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`48. With respect to Paragraph 48 of the Amended Complaint: Admitted
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`only that Nomadix had refused to mediate its dispute, that Nomadix agreed to
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`mediate its dispute after Guest-Tek advised Nomadix
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` Nomadix is
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`without knowledge or information sufficient to form a belief about Nomadix’s
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`intentions and therefore denies the allegations relating to Nomadix’s purported
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`“good faith.” Otherwise denied.
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`49. With respect to Paragraph 49 of the Amended Complaint: Admitted
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`only that the parties appeared before Mr. Piazza in San Francisco, California on
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`April 16, 2014 for the purpose of mediating the dispute,
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`7
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
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`LOS ANGELES
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`ATTORNEYS AT LAW
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`BAKER & HOSTETLER LLP
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`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 10 of 26 Page ID #:2508
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`50. With respect to Paragraph 50 of the Amended Complaint: Admitted
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`only that late in the day on April 16, 2014, at Mr. Piazza’s instruction, a Guest-Tek
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`representative transcribed on a sheet of lined notebook paper words that Mr. Piazza
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`had dictated to the Guest-Tek representative based on his communications with
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`both parties separately, that Mr. Piazza instructed the Guest-Tek representative to
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`title the sheet of paper “Guest-Tek –Nomadix Confidential MOU,” that the
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`mediation terms and mediation agreement provide that the mediation proceedings
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`were to be kept confidential and statements made in the course thereof were not
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`used for any other purpose, and that Exhibit 3 to the Amended Complaint purports
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`to be a copy of the MOU. Otherwise denied.
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`51. With respect to Paragraph 51 of the Amended Complaint:
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`52. With respect to Paragraph 52 of the Amended Complaint:
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` Otherwise denied.
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` Otherwise the
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`allegations in Paragraph 52 call for a legal conclusion to which no response is
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`8
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
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`LOS ANGELES
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`ATTORNEYS AT LAW
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`BAKER & HOSTETLER LLP
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`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 11 of 26 Page ID #:2509
`
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`required, and on that basis, they are denied.
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`53. With respect to Paragraph 53 of the Amended Complaint:
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`, that, within the twelve month period, Guest-Tek attempted to work with
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`Nomadix to retain an expert, that Nomadix did not work with Guest-Tek to retain
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`an expert and never retained, or even attempted to retain an expert for purposes of
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`facilitating settlement, and that, as a result, Guest-Tek has asserted that Nomadix
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`waived any claims it may have had at least up to April 2014. Otherwise denied.
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`54. With respect to Paragraph 54 of the Amended Complaint:
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`, that while Exhibits 4-6 to the Amended
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`Complaint purport to be correspondence between counsel for Nomadix and Guest-
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`Tek relating to, among other things, retention of an expert, Exhibits 4-6 are
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`incomplete and misleading and omit earlier correspondence between the parties
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`that belie Nomadix’s allegations. Otherwise denied.
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`55. With respect to Paragraph 55 of the Amended Complaint: Denied.
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`PRAYER FOR RELIEF
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`56. With respect to the Prayers for Relief: Guest-Tek denies that Nomadix
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`is entitled to the requested relief or any other relief. Nomadix denies all allegations
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`of the Amended Complaint not specifically denied above.
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`9
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
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`LOS ANGELES
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`ATTORNEYS AT LAW
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`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 12 of 26 Page ID #:2510
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`57. With respect to the demand for a jury trial: Guest-Tek admits that
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`Nomadix has demanded a jury trial but denies that Nomadix has raised any valid or
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`meritorious claim in its Amended Complaint.
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`
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`AFFIRMATIVE DEFENSES
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`By alleging the following separate and affirmative defenses set forth below,
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`Guest-Tek does not agree or concede that it bears the burden of proof or the burden
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`of persuasion on any of these issues, whether in whole or in part. For its separate
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`and affirmative defenses to the Amended Complaint, Guest-Tek alleges as follows.
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`FIRST AFFIRMATIVE DEFENSE
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`(Failure to State a Claim)
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`The Amended Complaint, and each purported claim therein, fail to state any
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`claim against Guest-Tek upon which any of the requested relief may be granted.
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`SECOND AFFIRMATIVE DEFENSE
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`(Lack of Standing)
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`Nomadix lacks standing to bring or maintain this action.
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`THIRD AFFIRMATIVE DEFENSE
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`(Lack of Subject Matter Jurisdiction)
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`The Court lacks subject matter jurisdiction to entertain this action.
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`FOURTH AFFIRMATIVE DEFENSE
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`(Waiver)
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`Nomadix waived any right that it may have had to bring this action for
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`failure to follow the Dispute Resolution provisions of the License Agreement.
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`FIFTH AFFIRMATIVE DEFENSE
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`(Waiver)
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`Nomadix waived any rights or remedies that it may have had under the
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`License Agreement after December 31, 2015 by failing to properly renew the
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`License Agreement in accordance with the terms for renewal.
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`
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`10
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`LOS ANGELES
`
`ATTORNEYS AT LAW
`
`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 13 of 26 Page ID #:2511
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`SIXTH AFFIRMATIVE DEFENSE
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`(Waiver)
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`Nomadix waived any remedies to which it may have been entitled for any
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`alleged breach of the License Agreement by virtue of its actions and inactions after
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`the April 16, 2014 mediation.
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`SEVENTH AFFIRMATIVE DEFENSE
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`Nomadix’s claims are barred by laches.
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`(Laches)
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`EIGHTH AFFIRMATIVE DEFENSE
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`(Equitable Estoppel)
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`Nomadix’s claims are barred by equitable estoppel.
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`NINTH AFFIRMATIVE DEFENSE
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`(Unclean Hands)
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`Nomadix’s request for equitable relief is barred by unclean hands.
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`TENTH AFFIRMATIVE DEFENSE
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`(Breach of Contract)
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`Nomadix has breached the License Agreement by at least: (i) bringing this
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`action in violation of Section 7.2 (Dispute Resolution) of the License Agreement;
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`(ii) failing to comply with Section 3 (Security Provisions) of Exhibit 1 to the
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`Confidential Amendment to License Agreement (“CALA”)
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`of the License Agreement (License Renewal)
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`t; and (iii) failing to comply with Section 4
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`ELEVENTH AFFIRMATIVE DEFENSE
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`(No Patent Coverage)
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`No royalties are due to Nomadix because no Guest-Tek product or service,
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`
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`11
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`LOS ANGELES
`
`ATTORNEYS AT LAW
`
`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 14 of 26 Page ID #:2512
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`or any feature or functionality thereof, is encompassed by any claim of any of the
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`patents licensed under the License Agreement for which a license fee has not been
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`paid.
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`TWELFTH AFFIRMATIVE DEFENSE
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`(Patent Invalidity)
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`No royalties are due to Nomadix because any claim of any patent licensed
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`under the License Agreement, that Nomadix contends encompasses a Guest-Tek
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`product or service, or any feature or functionality thereof, is invalid for failure to
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`comply with the conditions of patentability, including, but not limited to 35 U.S.C.
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`§§ 102, 103 and/or 112.
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`THIRTEENTH AFFIRMATIVE DEFENSE
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`(Statute of Limitations)
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`Nomadix’s claims are barred by the statute of limitations.
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`FOURTEENTH AFFIRMATIVE DEFENSE
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`(Waiver of Royalties)
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`Nomadix neglected to negotiate, or to negotiate in good faith, the amount of
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`royalty rates and license fees for the period following the December 31, 2015
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`expiration of the Initial Term of the License Agreement. As a result, Nomadix has
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`waived any royalty rates and license fees beyond those proposed to Nomadix by
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`Guest-Tek in January 2016.
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`FIFTEENTH AFFIRMATIVE DEFENSE
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`(Release and Exhaustion)
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`Nomadix’s claims are barred by reasons of release and exhaustion.
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`SIXTEENTH AFFIRMATIVE DEFENSE
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`(Patent Misuse)
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`Nomadix’s claims are barred by reason of patent misuse.
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`/ / /
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`/ / /
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`12
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`LOS ANGELES
`
`ATTORNEYS AT LAW
`
`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 15 of 26 Page ID #:2513
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`SEVENTEENTH AFFIRMATIVE DEFENSE
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`(Reservation of Additional Defenses)
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`Guest-Tek reserves any and all additional defenses available under 35
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`U.S.C. United States Code, the rules, regulations or laws related thereto, the
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`Federal Rules of Civil Procedure, the Rules of this Court, and/or otherwise in law
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`or equity, whether existing or later arising, as may be discovered.
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`COUNTERCLAIMS
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`Defendant/Counter-Claimant GUEST-TEK INTERACTIVE
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`ENTERTAINMENT LTD. (“Guest-Tek”), by and through its counsel of record,
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`hereby alleges as follows.
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`NATURE OF CASE
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`1.
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`This is an action for: (i) breach of contract, specifically breach of the
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`Confidential License Agreement dated December 31, 2010 between Guest-Tek and
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`Nomadix, Inc. (“Nomadix”) (“License Agreement”); (ii) a declaration of no patent
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`coverage by Guest-Tek systems; (iii) unjust enrichment; and (iv) violation of
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`California Business & Professions Code § 17200, et seq. The License Agreement
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`is attached to the Amended Complaint as Exhibit 1.
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`PARTIES
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`2.
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` Guest-Tek is an Alberta corporation having its principal place of
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`business at Suite 600, 778 8 Ave SW, Calgary, Alberta T2P 3R5, Canada.
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`3.
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`Nomadix has alleged that it is a Delaware corporation having its
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`principal place of business at 30851 Agoura Road, Suite 102, Agoura Hills,
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`California 91301.
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`JURISDICTION AND VENUE
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`4.
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`The License Agreement specifies a dispute resolution process
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`(“DRP”) for all disputes between the parties “arising out of or in connection with”
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`the License Agreement. Under the DRP, Nomadix was first required to seek
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`
`
`13
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`LOS ANGELES
`
`ATTORNEYS AT LAW
`
`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 16 of 26 Page ID #:2514
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`arbitration of the dispute described in the Amended Complaint before filing this
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`action, and to first seek mediation of the dispute to the extent that the Amended
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`Complaint purports to extend to post-April 16, 2014 royalty payments. Guest-Tek
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`has alleged that this action was improvidently initiated and is not properly before
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`this Court because Nomadix neglected to follow the DRP. To the extent that
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`Guest-Tek’s counterclaims herein “aris[e] out of or in connection with” the
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`License Agreement, or are asserted or deemed to so arise, Guest-Tek asserts such
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`counterclaims without waiver of its defenses and positions relating to the propriety
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`of this action. Accordingly, Guest-Tek’s following allegations relating to
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`jurisdiction and venue are made solely for the purpose of preserving its rights and
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`do not constitute an admission that the Court has jurisdiction over this action or
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`that Nomadix’s action was properly brought or is properly before this Court.
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`5.
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`6.
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`The amount in controversy exceeds $75,000.
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`This Court has subject matter jurisdiction over Nomadix under 28
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`U.S.C. §§ 1331, 1332, 1338 and 1367.
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`7.
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`This Court has personal jurisdiction over Nomadix at least because: (i)
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`Nomadix is already a party to this action; (ii) the License Agreement specifies that
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`disputes arising under the License Agreement shall (subject to the DRP) be
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`brought in this Court and, with respect thereto, Nomadix has consented to the
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`exercise of personal jurisdiction in this Court; (iii) Nomadix has alleged that it is
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`incorporated in California; and (iv) Nomadix has alleged that its principal place of
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`business is in this district.
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`8.
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`Venue is proper in this district at least because: (i) Nomadix is already
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`a party to this action; (ii) Nomadix has waived any objections to venue in this
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`district; (iii) Nomadix has alleged that it is incorporated in California; and (iv)
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`Nomadix has alleged that its principal place of business is in this district.
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`/ / /
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`14
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
`
`LOS ANGELES
`
`ATTORNEYS AT LAW
`
`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 17 of 26 Page ID #:2515
`
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`FIRST COUNTERCLAIM
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`Breach of Contract
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`(Against Nomadix)
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`9.
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`Guest-Tek hereby realleges and incorporates by reference the
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`allegations of Paragraphs 1 through 8 above as if fully set forth herein.
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`10.
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`11.
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`12.
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`13.
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`14.
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`15.
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`”
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`15
`GUEST-TEK’S ANSWER AND COUNTERCLAIMS TO NOMADIX’S AMENDED COMPLAINT FOR BREACH OF CONTRACT
`CASE NO. 2:16-CV-08033-AB-FFM
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`LOS ANGELES
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`ATTORNEYS AT LAW
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`BAKER & HOSTETLER LLP
`
`NOMADIX 2002
`Guest Tek v. Nomadix
`IPR2019-01191
`
`

`

`Case 2:16-cv-08033-AB-FFM Document 70 Filed 09/20/17 Page 18 of 26 Page ID #:2516
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`16. Nomadix never responded to Guest-Tek’s January 22, 2016 request
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`for documentation, even though Guest-Tek reminded Nomadix of Guest-Tek’s
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`request on February 1, 2016.
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`17. As an indication of good faith, and while it waited for Nomadix to
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`provide the requested information and resume discussions, Guest-Tek has, since
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`January 1, 2016, continued to pay royalty and/or license fees in accordance with
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`the provisions of the Initial Term.
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`18. Guest-Tek has offered to negotiate royalty and/or license fees for the
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`Renewal Term, but Nomadix has refused.
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`19. Nomadix d