throbber
Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 1 of 11 PageID 112
`
`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`
`
`Civil Action No. 2:12-cv-2829 JPM tmp
`
`JURY TRIAL DEMANDED
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`
`
`
`
`
`v.
`
`MICROSOFT CORPORATION,
`
`
`
`Defendant.
`
`
`
`
`MICROSOFT CORPORATION’S ANSWER AND COUNTERCLAIMS TO B.E.
`TECHNOLOGY LLC’S COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendant Microsoft Corporation (“Microsoft”) responds to the Complaint of Plaintiff
`
`B.E. Technology LLC (“B.E. Technology”) as follows:
`
`THE PARTIES
`
`1.
`
`Microsoft admits that paragraph 1 of the complaint purports to state a claim for
`
`patent infringement arising under Title 35 of the United States Code, but Microsoft expressly
`
`denies any liability thereunder.
`
`2.
`
`Microsoft lacks sufficient information to admit or deny the allegations of
`
`paragraph 2 of the complaint, and, therefore, denies those allegations.
`
`3.
`
`Microsoft admits that it is a corporation organized under the laws of Washington.
`
`Microsoft admits that its principal place of business is located in Redmond, Washington.
`
`JURISDICTION
`
`4.
`
`Microsoft admits that the complaint purports to state a claim for patent
`
`infringement arising under the patent laws of the United Sates, including 35 U.S.C. §1 et seq. but
`
`Microsoft expressly denies any liability thereunder. Microsoft lacks sufficient information to
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 2 of 11 PageID 113
`
`admit or deny that this Court has subject matter jurisdiction over the asserted claims in the
`
`complaint. Microsoft denies the remaining allegations of paragraph 4 of the Complaint.
`
`VENUE
`
`5.
`
`For purposes of this action only, Microsoft does not deny venue is technically
`
`proper in this District. Microsoft, however, specifically denies any assertion or suggestion that
`
`this District is the most convenient to the parties and witnesses and, therefore, Microsoft reserves
`
`the right to assert that this action should be transferred to another district under the
`
`circumstances. Microsoft denies the remaining allegations of paragraph 5 of the Complaint.
`
`FACTUAL BACKGROUND
`
`6.
`
`Microsoft admits that United States Patent No. 6,628,314 (“the ’314 patent”) is
`
`entitled “Computer Interface Method And Apparatus With Targeted Advertising.” Microsoft
`
`also admits that a copy of the ’314 patent purports to be attached as Exhibit A to the complaint.
`
`7.
`
`Microsoft lacks sufficient information to admit or deny the allegations of
`
`paragraph 7 of the complaint, and, therefore, denies those allegations.
`
`8.
`
`Microsoft admits that on its face, the ’314 patent lists the date of patent as
`
`September 30, 2003. Microsoft denies that the ’314 patent was duly and legally issued.
`
`Microsoft lacks sufficient information to admit or deny all other allegations of paragraph 8 of the
`
`complaint, and, therefore, denies those allegations.
`
`9.
`
`Microsoft admits that United States Patent No. 6,771,290 (“the ’290 patent”), is
`
`entitled “Computer Interface Method And Apparatus With Portable Network Organization
`
`System And Targeted Advertising.” Microsoft also admits that a copy of the ’290 patent
`
`purports to be attached as Exhibit B to the complaint.
`
`
`
`2
`
`
`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 3 of 11 PageID 114
`
`10. Microsoft lacks sufficient information to admit or deny the allegations of
`
`paragraph 10 of the complaint, and, therefore, denies those allegations.
`
`11. Microsoft admits that on its face, the ’290 patent lists the date of patent as August
`
`3, 2004. Microsoft denies that the ’290 patent was duly and legally issued. Microsoft lacks
`
`sufficient information to admit or deny all other allegations of paragraph 11 of the complaint,
`
`and, therefore, denies those allegations.
`
`COUNT I
`ALLEGED INFRINGEMENT OF U.S. PATENT NO. 6,628,314
`
`12. Microsoft repeats and incorporates by reference the responses in paragraphs 1
`
`through 11 above as though fully set forth herein.
`
`13. Microsoft lacks sufficient information to admit or deny the allegations of
`
`paragraph 13 of the complaint, and, therefore, denies those allegations. Microsoft denies there
`
`has been any infringement by Microsoft of the ‘314 patent.
`
`14. Microsoft denies the allegations in paragraph 14 of the complaint.
`
`COUNT II
`ALLEGED INFRINGEMENT OF U.S. PATENT NO. 6,771,290
`
`15. Microsoft repeats and incorporates by reference the responses in paragraphs 1
`
`through 14 above as though fully set forth herein.
`
`16. Microsoft lacks sufficient information to admit or deny the allegations of
`
`paragraph 16 of the complaint, and, therefore, denies those allegations. Microsoft denies there
`
`has been any infringement by Microsoft of the ‘290 patent.
`
`17. Microsoft denies the allegations in paragraph 17 of the complaint.
`
`18. Microsoft denies all allegations of the complaint not specifically admitted.
`
`
`
`3
`
`
`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 4 of 11 PageID 115
`
`PLAINTIFF’S PRAYER FOR RELIEF
`
`Microsoft denies Plaintiff is entitled to any relief whatsoever from Microsoft, as prayed
`
`for in the Complaint or otherwise.
`
`AFFIRMATIVE DEFENSES
`
`FIRST AFFIRMATIVE DEFENSE
`
`19. Microsoft does not infringe and has not infringed any valid and enforceable claim
`
`of the’314 patent or the ’290 patent (collectively the “Patents-in-Suit”) either directly, indirectly,
`
`literally, or under the doctrine of equivalents.
`
`SECOND AFFIRMATIVE DEFENSE
`
`20.
`
`One or more asserted claims of the’314 patent and/or the ’290 patent are invalid
`
`because they fail to meet one or more conditions and requirements for patentability specified in
`
`Title 35, United States Code, including at least §§ 101, 102, 103 and 112 and/or invalid for
`
`statutory or nonstatutory double patenting.
`
`THIRD AFFIRMATIVE DEFENSE
`
`21.
`
`On Information and belief, Plaintiff lacks standing to assert its patent
`
`infringement claims, and Plaintiff has failed to join a required party under Federal Rule of Civil
`
`Procedure 19, as Plaintiff does not have sufficient rights in and to the’314 patent and/or the ’290
`
`patent to prosecute this litigation.
`
`FOURTH AFFIRMATIVE DEFENSE
`
`22.
`
`Plaintiff’s claims are barred in whole or in part by the statute of limitations,
`
`35 U.S.C. § 286.
`
`
`
`4
`
`
`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 5 of 11 PageID 116
`
`FIFTH AFFIRMATIVE DEFENSE
`
`23.
`
`Upon information and belief, 35 U.S.C. § 287 limits Plaintiff’s claims for
`
`damages for purported infringement of the’314 patent and/or the ’290 patent.
`
`SIXTH AFFIRMATIVE DEFENSE
`
`24.
`
`Plaintiff is barred by 35 U.S.C. § 288 from recovering costs associated with its
`
`action.
`
`SEVENTH AFFIRMATIVE DEFENSE
`
`25.
`
`By virtue of the proceedings in the United States Patent and Trademark Office
`
`during the prosecution of the application or applications that matured into the’314 patent and/or
`
`the ’290 patent, including the patent applications to which Plaintiff has claimed priority, Plaintiff
`
`is estopped from asserting that Microsoft has infringed, directly or indirectly, any claim of the
`
`’314 patent and/or the ’290 patent, either literally or under the doctrine of equivalents.
`
`EIGHTH AFFIRMATIVE DEFENSE
`
`26.
`
`Plaintiff is barred from obtaining any relief sought in the Complaint because of
`
`the doctrine of laches, equitable estoppel and/or waiver.
`
`NINTH AFFIRMATIVE DEFENSE
`
`27.
`
`Plaintiff is not entitled to injunctive relief because any injury to it is not
`
`immediate or irreparable and because plaintiff has an adequate remedy at law.
`
`TENTH AFFIRMATIVE DEFENSE
`
`28.
`
`B.E. Technology’s remedies are limited under 28 U.S.C. § 1498(a).
`
`
`
`
`
`5
`
`
`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 6 of 11 PageID 117
`
`MICROSOFT’S COUNTERCLAIM FOR DECLARATORY RELIEF
`
`Pursuant to Federal Rules of Civil Procedure 13(b), 13(h), and 20(a), for its
`
`counterclaims against Plaintiff and Counterclaim Defendant B.E. Technology LLC (“B.E.
`
`Technology”), Defendant and Counterclaim Plaintiff Microsoft Corporation (“Microsoft”)
`
`alleges as follows:
`
`NATURE OF THE COUNTERCLAIMS
`
`1.
`
`These are counterclaims for declaratory judgments of non-infringement and
`
`invalidity of United States Patent No. 6,628,314 (“the ’314 patent”) and United States Patent No.
`
`6,771,290 (“the ’290 patent”), asserted against Microsoft.
`
`PARTIES
`
`2.
`
`Microsoft is corporation organized under the laws of the state of Washington,
`
`with its principal place of business located at One Microsoft Way, Redmond, WA 98052.
`
`3.
`
`Based on the allegations of paragraph 2 of the Complaint, Plaintiff and
`
`Counterclaim Defendant B.E. Technology claims to be organized under the laws of Delaware
`
`with its principal place of business in either Memphis, Tennessee or Saginaw, Michigan.
`
`JURISDICTION AND VENUE
`
`4.
`
`These counterclaims arise under the Federal Declaratory Judgment Act, 28 U.S.C.
`
`§§ 2201 et seq., and the Patent Laws of the United States, 35 U.S.C. §§ 271 et seq.
`
`5.
`
`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1338(a),
`
`2201, and 2202.
`
`6.
`
`This Court has personal jurisdiction over B.E. Technology because, among other
`
`reasons, B.E. Technology submitted itself to the jurisdiction of this Court by bringing its
`
`complaint for infringement of the ’314 patent and the ’290 patent in this Court.
`
`
`
`6
`
`
`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 7 of 11 PageID 118
`
`7.
`
`Venue is technically proper in this District pursuant to 28 U.S.C. §§ 1391 and
`
`1400(b) because, among other reasons, Plaintiff and Counterclaim B.E. Technology voluntarily
`
`appears in this District and asserts its infringement claims against Defendant and Counterclaim
`
`Plaintiff Microsoft in this action. Microsoft reserves its rights to seek a transfer of this action to
`
`another district.
`
`COUNT I:
`DECLARATORY RELIEF OF NON-INFRINGEMENT
`REGARDING THE ’314 PATENT
`
`8.
`
`Microsoft repeats and re-alleges the allegations and averments set forth in
`
`paragraphs 1 through 7 of these Counterclaims.
`
`9.
`
`An actual and justiciable controversy exists between Microsoft and B.E.
`
`Technology as to the non-infringement of the ’314 patent, as evidenced by B.E. Technology’s
`
`Complaint and Microsoft’s Answer to that Complaint, set forth above. Absent a declaration of
`
`non-infringement, Plaintiff and Counterclaim Defendant B.E. Technology will continue to
`
`wrongfully allege infringement of the ’314 patent against Microsoft and thereby cause Microsoft
`
`injury and damage.
`
`10. Microsoft has not infringed, directly or indirectly, literally or under the doctrine of
`
`equivalents, any valid claim of the ’314 patent, and Microsoft is entitled to a declaration pursuant
`
`to 28 U.S.C. § 2201 stating it has not infringed and does not infringe, directly or indirectly,
`
`literally or under the doctrine of equivalents, any valid claim of the ’314 patent.
`
`COUNT II:
`DECLARATORY RELIEF OF NON-INFRINGEMENT
`REGARDING THE ’290 PATENT
`
`11. Microsoft repeats and re-alleges the allegations and averments set forth in
`
`paragraphs 1 through 7 of these Counterclaims.
`
`
`
`7
`
`
`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 8 of 11 PageID 119
`
`12.
`
`An actual and justiciable controversy exists between Microsoft and B.E.
`
`Technology as to the non-infringement of the ’290 patent, as evidenced by B.E. Technology’s
`
`Complaint and Microsoft’s Answer to that Complaint, set forth above. Absent a declaration of
`
`non-infringement, Plaintiff and Counterclaim Defendant B.E. Technology will continue to
`
`wrongfully allege infringement of the ’290 patent against Microsoft and thereby cause Microsoft
`
`injury and damage.
`
`13. Microsoft has not infringed, directly or indirectly, literally or under the doctrine of
`
`equivalents, any valid claim of the ’290 patent, and Microsoft is entitled to a declaration pursuant
`
`to 28 U.S.C. § 2201 stating it has not infringed and does not infringe, directly or indirectly,
`
`literally or under the doctrine of equivalents, any valid claim of the ’290 patent.
`
`COUNT III:
`DECLARATORY RELIEF OF INVALIDITY REGARDING THE ’314 PATENT
`
`14. Microsoft repeats and re-alleges the allegations and averments set forth in
`
`paragraphs 1 through 7 of these Counterclaims.
`
`15.
`
`An actual and justiciable controversy exists between Microsoft and B.E.
`
`Technology as to the invalidity of the ’314 patent, as evidenced by B.E. Technology’s Complaint
`
`and Microsoft’s Answer to that Complaint, set forth above. Absent a declaration of invalidity,
`
`Plaintiff and Counterclaim Defendant B.E. Technology will continue to wrongfully allege
`
`infringement of the ’314 patent against Microsoft and thereby cause Microsoft injury and
`
`damage.
`
`16.
`
`The ’314 patent is invalid for failure to comply with the requirements of 35
`
`U.S.C. § 101 et seq., including without limitation §§ 101, 102, 103, and/or 112, and Microsoft is
`
`entitled to a declaration pursuant to 28 U.S.C. § 2201 stating the claims of the ’314 patent are
`
`invalid.
`
`
`
`8
`
`
`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 9 of 11 PageID 120
`
`COUNT IV:
`DECLARATORY RELIEF OF INVALIDITY REGARDING THE ’290 PATENT
`
`17. Microsoft repeats and re-alleges the allegations and averments set forth in
`
`paragraphs 1 through 7 of these Counterclaims.
`
`18.
`
`An actual and justiciable controversy exists between Microsoft and B.E.
`
`Technology as to the invalidity of the ’290 patent, as evidenced by B.E. Technology’s Complaint
`
`and Microsoft’s Answer to that Complaint, set forth above. Absent a declaration of invalidity,
`
`Plaintiff and Counterclaim Defendant B.E. Technology will continue to wrongfully allege
`
`infringement of the ’290 patent against Microsoft and thereby cause Microsoft injury and
`
`damage.
`
`19.
`
`The ’290 patent is invalid for failure to comply with the requirements of 35
`
`U.S.C. § 101 et seq., including without limitation §§ 101, 102, 103, and/or 112, and Microsoft is
`
`entitled to a declaration pursuant to 28 U.S.C. § 2201 stating the claims of the ’290 patent are
`
`invalid.
`
`DEMAND FOR JURY TRIAL
`
`Microsoft hereby demands trial by jury for all issues so triable in connection with both
`
`Plaintiff and Counterclaim Defendant B.E. Technology’s Complaint and these Counterclaims
`
`against the B.E. Technology.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Microsoft prays for a declaration and judgment against the Plaintiff and
`
`Counterclaim Defendant B.E. Technology as follows:
`
`A.
`
`That the Court dismiss Plaintiff and Counterclaim Defendant B.E. Technology
`
`LLC’s Complaint with prejudice;
`
`
`
`9
`
`
`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 10 of 11 PageID 121
`
`B.
`
`that the Court deny Plaintiff and Counterclaim Defendant B.E. Technology LLC
`
`any and all relief it has requested in its Complaint;
`
`C.
`
`that the Court deny any preliminary or permanent injunctive relief sought by
`
`Plaintiff and Counterclaim Defendant B.E. Technology LLC;
`
`D.
`
`that Plaintiff and Counterclaim Defendant B.E. Technology LLC take nothing by
`
`way of its Complaint;
`
`E.
`
`that Microsoft has not infringed and is not infringing any valid claim of the ’314
`
`patent or the ’290 patent, directly or indirectly, either literally or under the doctrine of
`
`equivalents;
`
`F.
`
`that each and all of the claims of the ’314 patent and the ’290 patent are invalid;
`
`G.
`
`that this case be adjudged an exceptional case under 35 U.S.C. § 285 in favor of
`
`Microsoft, and Microsoft be awarded its costs, attorneys’ fees, and all other expenses incurred in
`
`this action; and
`
`H.
`
`that Microsoft be awarded such other relief as the Court deems just and proper.
`
`
`
`Respectfully submitted,
`
`
`
`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)
`
`10
`
`
`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp
`
`Dated: December 31, 2012
`
`
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 27 Filed 12/31/12 Page 11 of 11 PageID 122
`
`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
`
`Attorneys for Defendant
`MICROSOFT CORPORATION
`
`
`
`CERTIFICATE OF SERVICE
`
`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.
`
`s/ Adam S. Baldridge
`
`
`
`11
`
`
`MICROSOFT’S ANSWER AND COUNTERCLAIMS TO
`B.E. TECHNOLOGY’S COMPLAINT FOR PATENT INFRINGEMENT
`Civil Action No. 2:12-cv-2829 JPM tmp

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket