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`Case 6:20-cv-00777-ADA Document 12 Filed 10/19/20 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`ESTECH SYSTEMS, INC.,
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`
`
`
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`HOWARD MIDSTREAM ENERGY
`PARTNERS d/b/a HOWARD ENERGY
`PARTNERS,
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`
`
`
`Plaintiff,
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`
`
`v.
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`Civil Action No. 6:20-cv-00777
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`
`
`
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`Defendant.
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`HOWARD ENERGY PARTNERS’ ANSWER, DEFENSES, AND COUNTERCLAIMS
`IN RESPONSE TO PLAINTIFF’S COMPLAINT FOR PATENT INFRINGEMENT
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`Pursuant to Federal Rules of Civil Procedure 7 and 12, Defendant Howard Midstream Energy
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`Partners, LLC, d/b/a Howard Energy Partners (“HEP”), by and through its undersigned counsel,
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`hereby files this Answer, Defenses, and Counterclaims to Plaintiff Estech Systems, Inc.’s (“Estech”)
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`Original Complaint for Patent Infringement (Dkt. No. 1) (“Complaint”). HEP denies all allegations in
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`the Complaint unless expressly admitted in the following numbered paragraphs, which correspond to
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`the headings and numbered paragraphs in the Complaint:
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`PARTIES
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`1.
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`HEP is without sufficient knowledge or information to admit or deny the allegations
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`in paragraph 1 of the Complaint and therefore denies them.
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`2.
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`Admitted except that HEP is a Delaware limited liability company, not a company
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`incorporated in Delaware.
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`JURISDICTION AND VENUE
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`3.
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`HEP admits that the Complaint purports to state a claim for patent infringement of
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`United States patents arising under 35 U.S.C. §§ 271, 281, and 284–85, but denies any such alleged
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`1
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`Ex. 2005
`RingCentral, Inc. v. Estech Systems, Inc.
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`Case 6:20-cv-00777-ADA Document 12 Filed 10/19/20 Page 2 of 11
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`patent infringement. HEP admits that this Court has subject matter jurisdiction of the action under 28
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`U.S.C. § 1331 and § 1338(a).
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`4.
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`5.
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`For purposes of this case only, HEP does not object to venue in this district.
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`For purposes of this case only, HEP does not contest personal jurisdiction. HEP
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`otherwise denies the allegations in paragraph 5 of the Complaint.
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`6.
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`HEP admits that it has transacted business in Texas. HEP otherwise denies the
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`allegations in paragraph 6 of the Complaint.
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`7.
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`Admitted.
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`THE TECHNOLOGY [AS ALLEGED BY ESTECH]
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`8-15. HEP lacks knowledge or information sufficient to form a belief about the truth of the
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`allegations in paragraphs 8-15 of the Complaint and therefore denies those allegations.
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`COUNT I
`[ALLEGED] DIRECT INFRINGEMENT OF U.S. PATENT NO. 8,391,298
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`16.
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`HEP admits that Exhibit A to the Complaint appears, on its face, to be a copy of U.S.
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`Patent No. 8,391,298 (“the ’298 Patent”). HEP denies that the ’298 Patent was duly issued. HEP lacks
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`knowledge or information sufficient to form a belief about the truth of the remaining allegations in
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`paragraph 16 of the Complaint and therefore denies those allegations.
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`17-33. Denied.
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`COUNT II
`[ALLEGED] DIRECT INFRINGEMENT OF U.S. PATENT NO. 7,068,684
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`34.
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`HEP admits that Exhibit B to the Complaint appears, on its face, to be a copy of U.S.
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`Patent No. 7,068,684 (“the ’684 Patent”). HEP denies that the ’684 Patent was duly issued. HEP lacks
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`knowledge or information sufficient to form a belief about the truth of the remaining allegations in
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`paragraph 34 of the Complaint and therefore denies those allegations.
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`35-51. Denied.
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`2
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`Ex. 2005
`RingCentral, Inc. v. Estech Systems, Inc.
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`

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`Case 6:20-cv-00777-ADA Document 12 Filed 10/19/20 Page 3 of 11
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`COUNT III
`[ALLEGED] DIRECT INFRINGEMENT OF U.S. PATENT NO. 6,067,349
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`52.
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`HEP admits that Exhibit C to the Complaint appears, on its face, to be a copy of U.S.
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`Patent No. 6,067,349 (“the ’349 Patent”). HEP denies that the ’349 Patent was duly issued. HEP
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`lacks knowledge or information sufficient to form a belief about the truth of the remaining
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`allegations in paragraph 52 of the Complaint and therefore denies those allegations.
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`53-62. Denied.
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`COUNT IV
`[ALLEGED] DIRECT INFRINGEMENT OF U.S. PATENT NO. 7,123,699
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`63.
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`HEP admits that Exhibit D to the Complaint appears, on its face, to be a copy of U.S.
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`Patent No. 7,123,699 (“the ’699 Patent”). HEP denies that the ’699 Patent was duly issued. HEP
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`lacks knowledge or information sufficient to form a belief about the truth of the remaining
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`allegations in paragraph 63 of the Complaint and therefore denies those allegations.
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`64-80. Denied.
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` [ESTECH’S] JURY DEMAND
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`Because Estech’s demand for jury trial does not state any allegation, no response by HEP is
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`required.
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`[ESTECH’S] PRAYER FOR RELIEF
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`HEP denies that Estech is entitled to any relief whatsoever, including any relief requested in
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`the Prayer for Relief portion of the Complaint including sub-paragraphs (a)-(g). Any allegations
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`therein are denied.
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`
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`To the extent that any allegations in the Complaint have not been previously specifically
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`admitted or denied, HEP denies them.
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`3
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`Ex. 2005
`RingCentral, Inc. v. Estech Systems, Inc.
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`

`

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`Case 6:20-cv-00777-ADA Document 12 Filed 10/19/20 Page 4 of 11
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`AFFIRMATIVE DEFENSES
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`Without prejudice to the denials hereinabove set forth in the Answer, without admitting any
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`of Estech’s allegations not otherwise admitted, and without undertaking any of the burdens imposed
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`by law on Estech, HEP asserts the following defenses to the Complaint and expressly reserves the
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`right to allege additional Affirmative Defenses as they become known during this litigation:
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`The Complaint fails to state a claim upon which relief can be granted and/or fails to plead the
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`FIRST DEFENSE
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`allegations with sufficient particularity.
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`SECOND DEFENSE
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`HEP has not infringed, willfully or otherwise, directly or indirectly, contributed to the
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`infringement of, or induced the infringement of any valid claim of the ’298, ’684, ’349, and ’699
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`Patents (collectively, “the Asserted Patents”), literally or under the doctrine of equivalents.
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`THIRD DEFENSE
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`At least the claims of the Asserted Patents alleged to be infringed in the Complaint are
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`invalid because they are anticipated and/or rendered obvious by the prior art or otherwise fail to
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`comply with the requirements of 35 U.S.C. §§ 100 et seq., including, without limitation, one or
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`more of the following: 35 U.S.C. §§ 101, 102, 103, and 112.
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`FOURTH DEFENSE
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`To the extent that Estech or Estech’s licensees have failed to properly mark any of its
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`relevant products as required by 35 U.S. C. § 287 or otherwise give proper notice that HEP’s
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`actions allegedly infringe any of the Asserted Patents, HEP is not liable to Estech for any acts
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`alleged to have been performed before HEP received actual notice that it was alleged to have
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`infringed any of the Asserted Patents.
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`4
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`
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`Ex. 2005
`RingCentral, Inc. v. Estech Systems, Inc.
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`

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`Case 6:20-cv-00777-ADA Document 12 Filed 10/19/20 Page 5 of 11
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`FIFTH DEFENSE
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`Estech is not entitled to injunctive relief against HEP because any alleged injury to Estech
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`as a result of HEP’s alleged activities is not immediate or irreparable, and Estech has an adequate
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`remedy at law.
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`SIXTH DEFENSE
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`To the extent Estech seeks damages for alleged infringement more than six years before the
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`filing of the present litigation, Estech’s claims are barred, in whole or in part, by the statute of
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`limitations set forth in 35 U.S.C. § 286.
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`SEVENTH DEFENSE
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`HEP has engaged in all relevant activities in good faith, thereby precluding Estech, even if
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`it prevails, from proving that this is an exceptional case justifying a recovery of its reasonable
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`attorneys’ fees and/or costs under 35 U.S.C. § 285.
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`EIGHTH DEFENSE
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`By reason of the prior art and/or statements and representations made to and by the U.S.
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`Patent and Trademark Office during the prosecution of the application that led to issuance of the
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`Asserted Patents, these patents are so limited that none of their claims can be properly construed as
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`covering any activity of HEP. In other words, the claims of the Asserted Patents are limited by the
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`text of the Asserted Patents, the prosecution history, including that of related patents, and/or the
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`prior art such that Estech is estopped, or otherwise precluded, from asserting that any claim of the
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`Asserted Patents is infringed by HEP, either literally or by equivalents.
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`NINTH DEFENSE
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`Estech’s claims are barred in whole or in part by the equitable doctrines of unclean hands,
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`estoppel, implied license, waiver, acquiescence, prosecution history estoppel, disclaimer, and/or
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`other equitable doctrines.
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`5
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`Ex. 2005
`RingCentral, Inc. v. Estech Systems, Inc.
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`

`

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`Case 6:20-cv-00777-ADA Document 12 Filed 10/19/20 Page 6 of 11
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`TENTH DEFENSE
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`Estech’s infringement claims are barred in whole or in part to the extent they have been
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`exhausted and/or released by licenses or releases, implied or express, granted to other parties.
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`ELEVENTH DEFENSE
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`Estech cannot argue that the claims of the Asserted Patents are broad enough that an
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`accused product would be found to infringe under the doctrine of equivalents because such a
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`construction would render the claims invalid in view of the prior art.
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`OTHER DEFENSES RESERVED
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`HEP reserves all defenses available under Rule 8(c) of the Federal Rules of Civil
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`Procedure, and any other defenses, at law or in equity, that may be available now or in the future
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`based on discovery or any other factual investigation in this case.
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`6
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`Ex. 2005
`RingCentral, Inc. v. Estech Systems, Inc.
`
`

`

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`Case 6:20-cv-00777-ADA Document 12 Filed 10/19/20 Page 7 of 11
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`HOWARD MIDSTREAM ENERGY PARTNERS’ COUNTERCLAIMS
`AGAINST ESTECH SYSTEMS, INC.
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`Pursuant to Federal Rule of Civil Procedure 13, Howard Midstream Energy Partners, LLC,
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`d/b/a Howard Energy Partners (“HEP”) hereby asserts the following Counterclaims against Estech
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`Systems, Inc. (“Estech”) and avers as follows:
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`PARTIES
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`1.
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`HEP is a Delaware limited liability company with its headquarters at 16211 La
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`Cantera Parkway, Suite 202, San Antonio, TX 78256.
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`2.
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`As alleged by Estech in paragraph 1 of the Complaint, Estech is a Texas corporation
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`with its principal place of business at 3701 East Plano Parkway, Suite 100, Plano, TX 75074.
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`JURISDICTION AND VENUE
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`3.
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`By these Counterclaims, HEP seeks declarations of invalidity with respect to U.S.
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`Patent Nos. 8,391,298 (“the ’298 Patent”), 7,068,684 (“the ’684 Patent”), 6,067,349 (“the ’349
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`Patent”), and 7,123,699 (“the ’699 Patent”) (collectively, “Asserted Patents”).
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`4.
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`Jurisdiction is proper pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§
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`2201 and 2202; as the Counterclaims arise under the Patent Code, 35 U.S.C. § 1 et seq., this Court
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`also has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`5.
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`This Court has personal jurisdiction over Estech because Estech has consented to
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`jurisdiction by having filed its Complaint in this district.
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`6.
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`Estech has consented to venue in this jurisdiction through filing of its Complaint. To
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`the extent venue is proper for Estech’s lawsuit, venue is proper for the Counterclaims.
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`GENERAL ALLEGATIONS
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`7.
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`On August 25, 2020, Estech filed suit against HEP asserting infringement of the
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`Asserted Patents.
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`8.
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`HEP denies that it infringes, contributes to the infringement, or actively induces others
`7
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`Ex. 2005
`RingCentral, Inc. v. Estech Systems, Inc.
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`

`

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`Case 6:20-cv-00777-ADA Document 12 Filed 10/19/20 Page 8 of 11
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`to infringe any valid and unenforceable claims of the Asserted Patents. In addition, HEP alleges that
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`the Asserted Patents are invalid under one or more of 35 U.S.C. §§ 101, 102, 103, and 112.
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`FIRST COUNTERCLAIM
`(Declaration of Invalidity of U.S. Patent No. 8,391,298)
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`9.
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`HEP hereby restates and re-avers its allegations set forth in the preceding paragraphs
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`
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`of its Counterclaims.
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`10.
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`As a result of Estech’s allegations of infringement against HEP, an actual, immediate,
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`and justiciable controversy exists between the parties as to validity of the ’298 Patent.
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`11.
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`At least the asserted claim of the ’298 Patent identified in the Complaint is invalid
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`because it is anticipated and/or rendered obvious by the prior art or otherwise fails to comply with
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`the requirements of 35 U.S.C. §§ 100 et seq., including, without limitation, one or more of the
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`following: 35 U.S.C. §§ 101, 102, 103, and 112. For example, the ’298 Patent is invalid under at least
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`35 U.S.C. §§ 102 and/or 103 as anticipated by and/or obvious in view of U.S. Patent No. 6,131,120.
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`SECOND COUNTERCLAIM
`(Declaration of Invalidity of U.S. Patent No. 7,068,684)
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`12.
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`HEP hereby restates and re-avers its allegations set forth in the preceding paragraphs
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`
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`of its Counterclaims.
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`13.
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`As a result of Estech’s allegations of infringement against HEP, an actual, immediate,
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`and justiciable controversy exists between the parties as to validity of the ’684 Patent.
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`14.
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`At least the asserted claim of the ’684 Patent identified in the Complaint is invalid
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`because it is anticipated and/or rendered obvious by the prior art or otherwise fails to comply with
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`the requirements of 35 U.S.C. §§ 100 et seq., including, without limitation, one or more of the
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`following: 35 U.S.C. §§ 101, 102, 103, and 112. For example, the ’684 Patent is invalid under at least
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`35 U.S.C. §§ 102 and/or 103 as anticipated by and/or obvious in view of PCT Patent Publication No.
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`8
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`Ex. 2005
`RingCentral, Inc. v. Estech Systems, Inc.
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`

`

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`Case 6:20-cv-00777-ADA Document 12 Filed 10/19/20 Page 9 of 11
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`WO 1999/0651696 and/or U.S. Patent No. 6,856,613.
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`THIRD COUNTERCLAIM
`(Declaration of Invalidity of U.S. Patent No. 6,067,349)
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`15.
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`HEP hereby restates and re-avers its allegations set forth in the preceding paragraphs
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`
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`of its Counterclaims.
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`16.
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`As a result of Estech’s allegations of infringement against HEP, an actual, immediate,
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`and justiciable controversy exists between the parties as to validity of the ’349 Patent.
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`17.
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`At least the asserted claim of the ’349 Patent identified in the Complaint is invalid
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`because it is anticipated and/or rendered obvious by the prior art or otherwise fails to comply with
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`the requirements of 35 U.S.C. §§ 100 et seq., including, without limitation, one or more of the
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`following: 35 U.S.C. §§ 101, 102, 103, and 112. For example, the ’349 Patent is invalid under at least
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`35 U.S.C. §§ 102 and/or 103 as anticipated by and/or obvious in view of U.S. Patent Nos. 5,394,445
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`and 6,311,057.
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`FOURTH COUNTERCLAIM
`(Declaration of Invalidity of U.S. Patent No. 7,123,699)
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`18.
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`HEP hereby restates and re-avers its allegations set forth in the preceding paragraphs
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`
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`of its Counterclaims.
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`19.
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`As a result of Estech’s allegations of infringement against HEP, an actual, immediate,
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`and justiciable controversy exists between the parties as to validity of the ’699 Patent.
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`20.
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`At least the asserted claim of the ’699 Patent identified in the Complaint is invalid
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`because it is anticipated and/or rendered obvious by the prior art or otherwise fails to comply with
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`the requirements of 35 U.S.C. §§ 100 et seq., including, without limitation, one or more of the
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`following: 35 U.S.C. §§ 101, 102, 103, and 112. For example, the ’699 Patent is invalid under at least
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`35 U.S.C. §§ 102 and/or 103 as anticipated by and/or obvious in view of U.S. Patent No. 6,445,694.
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`9
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`Ex. 2005
`RingCentral, Inc. v. Estech Systems, Inc.
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`

`

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`Case 6:20-cv-00777-ADA Document 12 Filed 10/19/20 Page 10 of 11
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`PRAYER FOR RELIEF
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`HEP respectfully requests that this Court:
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`A. Dismiss all counts of Estech’s Complaint against HEP for patent infringement with
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`prejudice and award Estech nothing by way of its Complaint;
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`B. Enter a declaratory judgment in favor of HEP and against Estech, declaring each of
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`U.S. Patent Nos. 8,391,298, 7,068,684, 6,067,349, and 7,123,699 to be invalid and/or unenforceable;
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`C. Declare this case to be exceptional under 35 U.S.C. § 285 and enter a judgment
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`awarding HEP its costs, reasonable attorneys’ fees, and expert witness fees in this action; and
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`D. Award HEP such further relief as the Court may deem just and proper.
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`DEMAND FOR JURY TRIAL
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`HEP requests a trial by jury on all issues so triable.
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`Dated: October 19, 2020
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`Respectfully submitted,
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`By: /s/ Wasif H. Qureshi d
` Wasif H. Qureshi
`
`Texas State Bar No. 24048155
` wqureshi@jw.com
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`JACKSON WALKER LLP
`
`1401 McKinney, Suite 1900
` Houston, Texas 77010
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`Telephone: (713) 752-4521
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`COUNSEL FOR HOWARD MIDSTREAM
`ENERGY PARTNERS, LLC, D/B/A
`HOWARD ENERGY PARTNERS
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`10
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`Ex. 2005
`RingCentral, Inc. v. Estech Systems, Inc.
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`

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`Case 6:20-cv-00777-ADA Document 12 Filed 10/19/20 Page 11 of 11
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 19, 2020, I electronically filed the foregoing document with
`the clerk of the court for the U.S. District Court, Western District of Texas, using the Court’s
`electronic case filing system, and thus the foregoing document has been electronically served on
`counsel of record.
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`/s/ Wasif H. Qureshi
`Wasif H. Qureshi
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`11
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`Ex. 2005
`RingCentral, Inc. v. Estech Systems, Inc.
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