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`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`Civil Action No. 2:12-cv-2829 JPM tmp
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`JURY TRIAL DEMANDED
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`B.E. TECHNOLOGY, L.L.C.,
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`Plaintiff,
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`v.
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`MICROSOFT CORPORATION,
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`
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`Defendant.
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`
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`MICROSOFT CORPORATION’S ANSWER AND COUNTERCLAIMS TO B.E.
`TECHNOLOGY LLC’S COMPLAINT FOR PATENT INFRINGEMENT
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`Defendant Microsoft Corporation (“Microsoft”) responds to the Complaint of Plaintiff
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`B.E. Technology LLC (“B.E. Technology”) as follows:
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`THE PARTIES
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`1.
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`Microsoft admits that paragraph 1 of the complaint purports to state a claim for
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`patent infringement arising under Title 35 of the United States Code, but Microsoft expressly
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`denies any liability thereunder.
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`2.
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`Microsoft lacks sufficient information to admit or deny the allegations of
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`paragraph 2 of the complaint, and, therefore, denies those allegations.
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`3.
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`Microsoft admits that it is a corporation organized under the laws of Washington.
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`Microsoft admits that its principal place of business is located in Redmond, Washington.
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`JURISDICTION
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`4.
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`Microsoft admits that the complaint purports to state a claim for patent
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`infringement arising under the patent laws of the United Sates, including 35 U.S.C. §1 et seq. but
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`Microsoft expressly denies any liability thereunder. Microsoft lacks sufficient information to
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`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 2 of 11 PageID 113
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`admit or deny that this Court has subject matter jurisdiction over the asserted claims in the
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`complaint. Microsoft denies the remaining allegations of paragraph 4 of the Complaint.
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`VENUE
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`5.
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`For purposes of this action only, Microsoft does not deny venue is technically
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`proper in this District. Microsoft, however, specifically denies any assertion or suggestion that
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`this District is the most convenient to the parties and witnesses and, therefore, Microsoft reserves
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`the right to assert that this action should be transferred to another district under the
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`circumstances. Microsoft denies the remaining allegations of paragraph 5 of the Complaint.
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`FACTUAL BACKGROUND
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`6.
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`Microsoft admits that United States Patent No. 6,628,314 (“the ’314 patent”) is
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`entitled “Computer Interface Method And Apparatus With Targeted Advertising.” Microsoft
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`also admits that a copy of the ’314 patent purports to be attached as Exhibit A to the complaint.
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`7.
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`Microsoft lacks sufficient information to admit or deny the allegations of
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`paragraph 7 of the complaint, and, therefore, denies those allegations.
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`8.
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`Microsoft admits that on its face, the ’314 patent lists the date of patent as
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`September 30, 2003. Microsoft denies that the ’314 patent was duly and legally issued.
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`Microsoft lacks sufficient information to admit or deny all other allegations of paragraph 8 of the
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`complaint, and, therefore, denies those allegations.
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`9.
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`Microsoft admits that United States Patent No. 6,771,290 (“the ’290 patent”), is
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`entitled “Computer Interface Method And Apparatus With Portable Network Organization
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`System And Targeted Advertising.” Microsoft also admits that a copy of the ’290 patent
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`purports to be attached as Exhibit B to the complaint.
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`2
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`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
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`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 3 of 11 PageID 114
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`10. Microsoft lacks sufficient information to admit or deny the allegations of
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`paragraph 10 of the complaint, and, therefore, denies those allegations.
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`11. Microsoft admits that on its face, the ’290 patent lists the date of patent as August
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`3, 2004. Microsoft denies that the ’290 patent was duly and legally issued. Microsoft lacks
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`sufficient information to admit or deny all other allegations of paragraph 11 of the complaint,
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`and, therefore, denies those allegations.
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`COUNT I
`ALLEGED INFRINGEMENT OF U.S. PATENT NO. 6,628,314
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`12. Microsoft repeats and incorporates by reference the responses in paragraphs 1
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`through 11 above as though fully set forth herein.
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`13. Microsoft lacks sufficient information to admit or deny the allegations of
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`paragraph 13 of the complaint, and, therefore, denies those allegations. Microsoft denies there
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`has been any infringement by Microsoft of the ‘314 patent.
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`14. Microsoft denies the allegations in paragraph 14 of the complaint.
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`COUNT II
`ALLEGED INFRINGEMENT OF U.S. PATENT NO. 6,771,290
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`15. Microsoft repeats and incorporates by reference the responses in paragraphs 1
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`through 14 above as though fully set forth herein.
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`16. Microsoft lacks sufficient information to admit or deny the allegations of
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`paragraph 16 of the complaint, and, therefore, denies those allegations. Microsoft denies there
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`has been any infringement by Microsoft of the ‘290 patent.
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`17. Microsoft denies the allegations in paragraph 17 of the complaint.
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`18. Microsoft denies all allegations of the complaint not specifically admitted.
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`3
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`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
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`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 4 of 11 PageID 115
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`PLAINTIFF’S PRAYER FOR RELIEF
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`Microsoft denies Plaintiff is entitled to any relief whatsoever from Microsoft, as prayed
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`for in the Complaint or otherwise.
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`AFFIRMATIVE DEFENSES
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`FIRST AFFIRMATIVE DEFENSE
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`19. Microsoft does not infringe and has not infringed any valid and enforceable claim
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`of the’314 patent or the ’290 patent (collectively the “Patents-in-Suit”) either directly, indirectly,
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`literally, or under the doctrine of equivalents.
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`SECOND AFFIRMATIVE DEFENSE
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`20.
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`One or more asserted claims of the’314 patent and/or the ’290 patent are invalid
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`because they fail to meet one or more conditions and requirements for patentability specified in
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`Title 35, United States Code, including at least §§ 101, 102, 103 and 112 and/or invalid for
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`statutory or nonstatutory double patenting.
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`THIRD AFFIRMATIVE DEFENSE
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`21.
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`On Information and belief, Plaintiff lacks standing to assert its patent
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`infringement claims, and Plaintiff has failed to join a required party under Federal Rule of Civil
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`Procedure 19, as Plaintiff does not have sufficient rights in and to the’314 patent and/or the ’290
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`patent to prosecute this litigation.
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`FOURTH AFFIRMATIVE DEFENSE
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`22.
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`Plaintiff’s claims are barred in whole or in part by the statute of limitations,
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`35 U.S.C. § 286.
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`4
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`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
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`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 5 of 11 PageID 116
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`FIFTH AFFIRMATIVE DEFENSE
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`23.
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`Upon information and belief, 35 U.S.C. § 287 limits Plaintiff’s claims for
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`damages for purported infringement of the’314 patent and/or the ’290 patent.
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`SIXTH AFFIRMATIVE DEFENSE
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`24.
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`Plaintiff is barred by 35 U.S.C. § 288 from recovering costs associated with its
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`action.
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`SEVENTH AFFIRMATIVE DEFENSE
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`25.
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`By virtue of the proceedings in the United States Patent and Trademark Office
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`during the prosecution of the application or applications that matured into the’314 patent and/or
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`the ’290 patent, including the patent applications to which Plaintiff has claimed priority, Plaintiff
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`is estopped from asserting that Microsoft has infringed, directly or indirectly, any claim of the
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`’314 patent and/or the ’290 patent, either literally or under the doctrine of equivalents.
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`EIGHTH AFFIRMATIVE DEFENSE
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`26.
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`Plaintiff is barred from obtaining any relief sought in the Complaint because of
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`the doctrine of laches, equitable estoppel and/or waiver.
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`NINTH AFFIRMATIVE DEFENSE
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`27.
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`Plaintiff is not entitled to injunctive relief because any injury to it is not
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`immediate or irreparable and because plaintiff has an adequate remedy at law.
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`TENTH AFFIRMATIVE DEFENSE
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`28.
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`B.E. Technology’s remedies are limited under 28 U.S.C. § 1498(a).
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`5
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`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
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`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 6 of 11 PageID 117
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`MICROSOFT’S COUNTERCLAIM FOR DECLARATORY RELIEF
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`Pursuant to Federal Rules of Civil Procedure 13(b), 13(h), and 20(a), for its
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`counterclaims against Plaintiff and Counterclaim Defendant B.E. Technology LLC (“B.E.
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`Technology”), Defendant and Counterclaim Plaintiff Microsoft Corporation (“Microsoft”)
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`alleges as follows:
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`NATURE OF THE COUNTERCLAIMS
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`1.
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`These are counterclaims for declaratory judgments of non-infringement and
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`invalidity of United States Patent No. 6,628,314 (“the ’314 patent”) and United States Patent No.
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`6,771,290 (“the ’290 patent”), asserted against Microsoft.
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`PARTIES
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`2.
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`Microsoft is corporation organized under the laws of the state of Washington,
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`with its principal place of business located at One Microsoft Way, Redmond, WA 98052.
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`3.
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`Based on the allegations of paragraph 2 of the Complaint, Plaintiff and
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`Counterclaim Defendant B.E. Technology claims to be organized under the laws of Delaware
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`with its principal place of business in either Memphis, Tennessee or Saginaw, Michigan.
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`JURISDICTION AND VENUE
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`4.
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`These counterclaims arise under the Federal Declaratory Judgment Act, 28 U.S.C.
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`§§ 2201 et seq., and the Patent Laws of the United States, 35 U.S.C. §§ 271 et seq.
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`5.
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`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1338(a),
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`2201, and 2202.
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`6.
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`This Court has personal jurisdiction over B.E. Technology because, among other
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`reasons, B.E. Technology submitted itself to the jurisdiction of this Court by bringing its
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`complaint for infringement of the ’314 patent and the ’290 patent in this Court.
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`6
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`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
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`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 7 of 11 PageID 118
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`7.
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`Venue is technically proper in this District pursuant to 28 U.S.C. §§ 1391 and
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`1400(b) because, among other reasons, Plaintiff and Counterclaim B.E. Technology voluntarily
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`appears in this District and asserts its infringement claims against Defendant and Counterclaim
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`Plaintiff Microsoft in this action. Microsoft reserves its rights to seek a transfer of this action to
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`another district.
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`COUNT I:
`DECLARATORY RELIEF OF NON-INFRINGEMENT
`REGARDING THE ’314 PATENT
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`8.
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`Microsoft repeats and re-alleges the allegations and averments set forth in
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`paragraphs 1 through 7 of these Counterclaims.
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`9.
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`An actual and justiciable controversy exists between Microsoft and B.E.
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`Technology as to the non-infringement of the ’314 patent, as evidenced by B.E. Technology’s
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`Complaint and Microsoft’s Answer to that Complaint, set forth above. Absent a declaration of
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`non-infringement, Plaintiff and Counterclaim Defendant B.E. Technology will continue to
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`wrongfully allege infringement of the ’314 patent against Microsoft and thereby cause Microsoft
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`injury and damage.
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`10. Microsoft has not infringed, directly or indirectly, literally or under the doctrine of
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`equivalents, any valid claim of the ’314 patent, and Microsoft is entitled to a declaration pursuant
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`to 28 U.S.C. § 2201 stating it has not infringed and does not infringe, directly or indirectly,
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`literally or under the doctrine of equivalents, any valid claim of the ’314 patent.
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`COUNT II:
`DECLARATORY RELIEF OF NON-INFRINGEMENT
`REGARDING THE ’290 PATENT
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`11. Microsoft repeats and re-alleges the allegations and averments set forth in
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`paragraphs 1 through 7 of these Counterclaims.
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`7
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`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
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`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 8 of 11 PageID 119
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`12.
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`An actual and justiciable controversy exists between Microsoft and B.E.
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`Technology as to the non-infringement of the ’290 patent, as evidenced by B.E. Technology’s
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`Complaint and Microsoft’s Answer to that Complaint, set forth above. Absent a declaration of
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`non-infringement, Plaintiff and Counterclaim Defendant B.E. Technology will continue to
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`wrongfully allege infringement of the ’290 patent against Microsoft and thereby cause Microsoft
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`injury and damage.
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`13. Microsoft has not infringed, directly or indirectly, literally or under the doctrine of
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`equivalents, any valid claim of the ’290 patent, and Microsoft is entitled to a declaration pursuant
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`to 28 U.S.C. § 2201 stating it has not infringed and does not infringe, directly or indirectly,
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`literally or under the doctrine of equivalents, any valid claim of the ’290 patent.
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`COUNT III:
`DECLARATORY RELIEF OF INVALIDITY REGARDING THE ’314 PATENT
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`14. Microsoft repeats and re-alleges the allegations and averments set forth in
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`paragraphs 1 through 7 of these Counterclaims.
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`15.
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`An actual and justiciable controversy exists between Microsoft and B.E.
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`Technology as to the invalidity of the ’314 patent, as evidenced by B.E. Technology’s Complaint
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`and Microsoft’s Answer to that Complaint, set forth above. Absent a declaration of invalidity,
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`Plaintiff and Counterclaim Defendant B.E. Technology will continue to wrongfully allege
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`infringement of the ’314 patent against Microsoft and thereby cause Microsoft injury and
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`damage.
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`16.
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`The ’314 patent is invalid for failure to comply with the requirements of 35
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`U.S.C. § 101 et seq., including without limitation §§ 101, 102, 103, and/or 112, and Microsoft is
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`entitled to a declaration pursuant to 28 U.S.C. § 2201 stating the claims of the ’314 patent are
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`invalid.
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`8
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`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
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`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 9 of 11 PageID 120
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`COUNT IV:
`DECLARATORY RELIEF OF INVALIDITY REGARDING THE ’290 PATENT
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`17. Microsoft repeats and re-alleges the allegations and averments set forth in
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`paragraphs 1 through 7 of these Counterclaims.
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`18.
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`An actual and justiciable controversy exists between Microsoft and B.E.
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`Technology as to the invalidity of the ’290 patent, as evidenced by B.E. Technology’s Complaint
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`and Microsoft’s Answer to that Complaint, set forth above. Absent a declaration of invalidity,
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`Plaintiff and Counterclaim Defendant B.E. Technology will continue to wrongfully allege
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`infringement of the ’290 patent against Microsoft and thereby cause Microsoft injury and
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`damage.
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`19.
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`The ’290 patent is invalid for failure to comply with the requirements of 35
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`U.S.C. § 101 et seq., including without limitation §§ 101, 102, 103, and/or 112, and Microsoft is
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`entitled to a declaration pursuant to 28 U.S.C. § 2201 stating the claims of the ’290 patent are
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`invalid.
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`DEMAND FOR JURY TRIAL
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`Microsoft hereby demands trial by jury for all issues so triable in connection with both
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`Plaintiff and Counterclaim Defendant B.E. Technology’s Complaint and these Counterclaims
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`against the B.E. Technology.
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`PRAYER FOR RELIEF
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`WHEREFORE, Microsoft prays for a declaration and judgment against the Plaintiff and
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`Counterclaim Defendant B.E. Technology as follows:
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`A.
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`That the Court dismiss Plaintiff and Counterclaim Defendant B.E. Technology
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`LLC’s Complaint with prejudice;
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`9
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`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
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`
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`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 10 of 11 PageID 121
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`B.
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`that the Court deny Plaintiff and Counterclaim Defendant B.E. Technology LLC
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`any and all relief it has requested in its Complaint;
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`C.
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`that the Court deny any preliminary or permanent injunctive relief sought by
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`Plaintiff and Counterclaim Defendant B.E. Technology LLC;
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`D.
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`that Plaintiff and Counterclaim Defendant B.E. Technology LLC take nothing by
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`way of its Complaint;
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`E.
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`that Microsoft has not infringed and is not infringing any valid claim of the ’314
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`patent or the ’290 patent, directly or indirectly, either literally or under the doctrine of
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`equivalents;
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`F.
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`that each and all of the claims of the ’314 patent and the ’290 patent are invalid;
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`G.
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`that this case be adjudged an exceptional case under 35 U.S.C. § 285 in favor of
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`Microsoft, and Microsoft be awarded its costs, attorneys’ fees, and all other expenses incurred in
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`this action; and
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`H.
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`that Microsoft be awarded such other relief as the Court deems just and proper.
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`
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`Respectfully submitted,
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`
`
`s/ Adam S. Baldridge
`Bradley E. Trammell (TN #13980)
`Adam S. Baldridge (TN #23488)
`Baker, Donelson, Bearman, Caldwell &
`Berkowitz, P.C.
`165 Madison Avenue, Suite 2000
`Memphis, TN 38103
`Telephone: 901.577.2102
`Facsimile: 901.577.0838
`Email: btrammell@bakerdonelson.com
`Email: abaldridge@bakerdonelson.com
`
`
`
`Kelly C. Hunsaker (CA Bar No. 168307)
`Admitted Pro Hac Vice
`Leeron G. Kalay (CA Bar No. 23359)
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`10
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`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
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`Dated: December 31, 2012
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`
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`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 11 of 11 PageID 122
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`Admitted Pro Hac Vice
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Telephone: (650) 839-5070
`hunsaker@fr.com
`kalay@fr.com
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`Attorneys for Defendant
`MICROSOFT CORPORATION
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on December 31, 2012, a true and correct copy of the foregoing
`document was electronically filed with the United States District Court for the Western District
`of Tennessee, and was served on all counsel by the Court’s electronic filing notification or via
`email.
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`s/ Adam S. Baldridge
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`11
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`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp