Case 2:12-cv-02831-JPM-tmp Document 26 Filed 12/31/12 Page 1 of 9 PageID 176
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`
`
`
`
`v.
`
`Plaintiff,
`
`Civil Action No. 2:12-cv-02831-JPM-tmp
`
`DEMAND FOR JURY TRIAL
`
`
`
`APPLE INC.,
`
`
`
`
`
`Defendant.
`
`
`
`
`
`APPLE INC.’S ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
`
`Defendant Apple Inc. (“Apple”) hereby files its Answer to Plaintiff B.E. Technology,
`
`L.L.C.’s (“B.E.”) Complaint as follows. Except as expressly admitted below, Apple denies each
`
`and every allegation in B.E.’s Complaint.
`
`NATURE OF THE ACTION AND PARTIES
`
`1.
`
`Apple admits that B.E. is alleging patent infringement under the patent laws of the
`
`United States, Title 35 of the United States Code. Apple denies that it has infringed any valid
`
`claims of the patents-in-suit.
`
`2.
`
`Apple lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations contained in Paragraph 2 of B.E.’s Complaint and, therefore, denies them.
`
`3.
`
`Apple admits that it is a California corporation with a principal place of business
`
`at 1 Infinite Loop, Cupertino, California 95014.
`
`JURISDICTION
`
`4.
`
`Apple admits that this Court has subject matter jurisdiction for purposes of this
`
`litigation under 28 U.S.C. §§ 1331 and 1338(a).
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`
`
`
`
`v.
`
`Plaintiff,
`
`Civil Action No. 2:12-cv-02831-JPM-tmp
`
`DEMAND FOR JURY TRIAL
`
`
`
`APPLE INC.,
`
`
`
`
`
`Defendant.
`
`
`
`
`
`APPLE INC.’S ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
`
`Defendant Apple Inc. (“Apple”) hereby files its Answer to Plaintiff B.E. Technology,
`
`L.L.C.’s (“B.E.”) Complaint as follows. Except as expressly admitted below, Apple denies each
`
`and every allegation in B.E.’s Complaint.
`
`NATURE OF THE ACTION AND PARTIES
`
`1.
`
`Apple admits that B.E. is alleging patent infringement under the patent laws of the
`
`United States, Title 35 of the United States Code. Apple denies that it has infringed any valid
`
`claims of the patents-in-suit.
`
`2.
`
`Apple lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations contained in Paragraph 2 of B.E.’s Complaint and, therefore, denies them.
`
`3.
`
`Apple admits that it is a California corporation with a principal place of business
`
`at 1 Infinite Loop, Cupertino, California 95014.
`
`JURISDICTION
`
`4.
`
`Apple admits that this Court has subject matter jurisdiction for purposes of this
`
`litigation under 28 U.S.C. §§ 1331 and 1338(a).
`
`
`
`
`
`
`
`
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`Case 2:12-cv-02831-JPM-tmp Document 26 Filed 12/31/12 Page 2 of 9 PageID 177
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`
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`5.
`
`Paragraph 5 of B.E.’s Complaint states a legal conclusion with respect to venue,
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`VENUE
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`to which no response is required.
`
`FACTUAL BACKGROUND
`
`6.
`
`Apple admits that U.S. Patent No. 6,628,314 (the “’314 patent”) is entitled
`
`“Computer Interface Method and Apparatus With Targeted Advertising.” Apple admits that
`
`Exhibit A to the Complaint is a copy of the ‘314 patent.
`
`7.
`
`Apple admits that the ‘314 patent purports to generally relate to computer user
`
`interfaces for providing advertising and access to information over a network. Apple lacks
`
`knowledge and information sufficient to form a belief as to the truth of the allegations contained
`
`in Paragraph 7 of B.E.’s Complaint and, therefore, denies them.
`
`8.
`
`Apple admits that the application that issued as the ‘314 patent was filed on
`
`October 30, 2000, and that the ‘314 patent issued on September 30, 2003. Apple admits that the
`
`‘314 patent, on its face, purports to claim priority to U.S. Patent Application No. 09/118,351,
`
`which was filed on July 17, 1998. Apple denies the remaining allegations of Paragraph 8 of
`
`B.E.’s Complaint.
`
`9.
`
`Apple admits that U.S. Patent No. 6,771,290 (the “’290 patent”) is entitled
`
`“Computer Interface Method and Apparatus With Portable Network Organization System and
`
`Target Advertising.” Apple admits that Exhibit B to the Complaint is a copy of the ‘290 patent.
`
`10.
`
`Apple admits that the ‘290 patent purports to generally relate to computer user
`
`interfaces for providing advertising and access to information over a network. Apple lacks
`
`knowledge and information sufficient to form a belief as to the truth of the remaining allegations
`
`and characterizations contained in Paragraph 10 of B.E.’s Complaint and, therefore, denies them.
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`Case 2:12-cv-02831-JPM-tmp Document 26 Filed 12/31/12 Page 3 of 9 PageID 178
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`
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`11.
`
`Apple admits that the application that issued as the ‘290 patent was filed
`
`originally filed as a Patent Cooperation Treaty application on July 16, 1999, and that the ‘290
`
`patent issued on August 3, 2004. Apple admits that the ‘290 patent, on its face, purports to claim
`
`priority to U.S. Patent Application No. 09/118,351, which was filed on July 17, 1998. Apple
`
`denies the remaining allegations of Paragraph 11 of B.E.’s Complaint.
`
`COUNT I: INFRINGEMENT OF U.S. PATENT NO. 6,628,314
`
`12.
`
`Apple restates and incorporates by reference its responses to Paragraphs 1-11 of
`
`B.E.’s Complaint.
`
`13.
`
`Apple lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations and characterizations contained in Paragraph 13 of B.E.’s Complaint and,
`
`therefore, denies them.
`
`14.
`
`Apple denies the allegations contained in Paragraph 14 of B.E.’s Complaint.
`
`COUNT II: INFRINGEMENT OF U.S. PATENT NO. 6,771,290
`
`15.
`
`Apple restates and incorporates by reference its responses to Paragraphs 1-14 of
`
`B.E.’s Complaint.
`
`16.
`
`Apple lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations and characterizations contained in Paragraph 16 of B.E.’s Complaint and,
`
`therefore, denies them.
`
`17.
`
`Apple denies the allegations contained in Paragraph 17 of B.E.’s Complaint.
`
`RESPONSE TO B.E.’S JURY DEMAND
`
`18.
`
`B.E.’s demand for a jury trial contains no factual allegations that require a
`
`response.
`
`RESPONSE TO B.E.’S PRAYER FOR RELIEF
`
`19.
`
`Apple denies that B.E. is entitled to any relief in this action, as prayed for or
`
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`- 3 -
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`Case 2:12-cv-02831-JPM-tmp Document 26 Filed 12/31/12 Page 4 of 9 PageID 179
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`
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`otherwise.
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`APPLE’S AFFIRMATIVE DEFENSES
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`Apple reserves the right to assert any additional defenses to B.E.’s claim as they become
`
`known or apparent through the course of discovery. Subject to that limitation, Apple asserts the
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`following affirmative defenses, without assuming the burden of proof when such burden would
`
`otherwise be on B.E.:
`
`FIRST AFFIRMATIVE DEFENSE
`
`B.E’s Complaint fails to state a claim upon which relief can be granted.
`
`SECOND AFFIRMATIVE DEFENSE
`
`Apple has not and does not infringe any valid and enforceable claim of the ‘314 or ‘290
`
`patents.
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`THIRD AFFIRMATIVE DEFENSE
`
`One or more claims of the ‘314 and ‘290 patents are invalid for failing to satisfy one or
`
`more of the conditions for patentability specified in 35 U.S.C. § 101 et seq., including §§ 101,
`
`102, 103, and/or 112.
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`FOURTH AFFIRMATIVE DEFENSE
`
`B.E.’s claims are barred in whole or in part by prosecution history estoppel.
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`FIFTH AFFIRMATIVE DEFENSE
`
`B.E.’s claim for damages for alleged infringement is limited by 35 U.S.C. §§ 286 and
`
`287.
`
`SIXTH AFFIRMATIVE DEFENSE
`
`B.E.’s claims for relief are barred by the equitable doctrine of laches, waiver, estoppel,
`
`patent exhaustion, implied license, and/or by any other equitable doctrine.
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`Case 2:12-cv-02831-JPM-tmp Document 26 Filed 12/31/12 Page 5 of 9 PageID 180
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`
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`SEVENTH AFFIRMATIVE DEFENSE
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`B.E. is not entitled to injunctive relief because any injury to B.E. is not immediate or
`
`irreparable, and B.E. has an adequate remedy at law for any claims it can prove.
`
`APPLE’S COUNTERCLAIMS
`
`Defendant Apple incorporates by reference the admissions, allegations, denials, and
`
`affirmative defenses contained in the answer above as if fully set forth herein. Pursuant to Rule
`
`13 of the Federal Rules of Civil Procedure, Defendant Apple, for its counterclaims against
`
`Plaintiff B.E., states and alleges as follows:
`
`1.
`
`Apple is a California corporation with a principal place of business at 1 Infinite
`
`Loop, Cupertino, California 95014.
`
`2.
`
`Based on the assertions in Paragraph 2 of B.E.’s Complaint, B.E. is a company
`
`organized and existing under the laws of the State of Delaware, with its principal place of
`
`business in Memphis, Tennessee.
`
`3.
`
`To the extent that this Court has subject matter jurisdiction over B.E.’s claims
`
`against Apple, this Court has subject matter jurisdiction over these Counterclaims pursuant to 28
`
`U.S.C. §§ 1331, 1338, 2201 and 2202, and the patent laws of the United States, 35 U.S.C. § 1, et
`
`seq.
`
`4.
`
`5.
`
`This Court has personal jurisdiction over B.E.
`
`Provided that this Court finds that this District is the most convenient venue for
`
`B.E.’s Complaint, this District is also proper venue for these Counterclaims pursuant to under 28
`
`U.S.C. §§ 1391 and 1400(b).
`
`COUNTERCLAIM ONE
`
`DECLARATORY JUDGMENT OF NONINFRINGEMENT OF THE ‘314 PATENT
`
`6.
`
`Apple incorporates by reference paragraphs 1-2 above.
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`- 5 -
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`Case 2:12-cv-02831-JPM-tmp Document 26 Filed 12/31/12 Page 6 of 9 PageID 181
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`
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`7.
`
`Apple has not infringed and does not infringe (literally, under the doctrine of
`
`equivalents, contributorily, by inducement, or in any other manner) any valid and enforceable
`
`claim of the ‘314 patent.
`
`8.
`
`An actual controversy exists between B.E. and Apple as to whether the ‘314
`
`patent is not infringed by Apple.
`
`9.
`
`A judicial declaration is necessary and appropriate so that Apple may ascertain its
`
`rights with respect to the ‘314 patent.
`
`COUNTERCLAIM TWO
`
`DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘314 PATENT
`
`10.
`
`11.
`
`Apple incorporates by reference paragraphs 1-6 above.
`
`In accusing Apple of infringing the ‘314 patent, B.E. has taken the position that
`
`one or more claims of the ‘314 patent are valid and enforceable.
`
`12.
`
`None of the claims of the ‘314 patent is valid and enforceable for failure to meet
`
`the conditions of patentability and/or otherwise company with one or more of Title 35 U.S.C. §
`
`101 et seq., including §§ 101, 102, 103, and/or 112.
`
`13.
`
`An actual controversy exists between B.E. and Apple as to whether the ‘314
`
`patent is invalid.
`
`14.
`
`A judicial declaration is necessary and appropriate so that Apple may ascertain its
`
`rights as to whether the ‘314 patent is invalid.
`
`COUNTERCLAIM THREE
`
`DECLARATORY JUDGMENT OF NONINFRINGEMENT OF THE ‘290 PATENT
`
`15.
`
`16.
`
`Apple incorporates by reference paragraphs 1-10 above.
`
`Apple has not infringed and does not infringe (literally, under the doctrine of
`
`equivalents, contributorily, by inducement, or in any other manner) any valid and enforceable
`
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`- 6 -
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`Case 2:12-cv-02831-JPM-tmp Document 26 Filed 12/31/12 Page 7 of 9 PageID 182
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`
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`claim of the ‘290 patent.
`
`17.
`
`An actual controversy exists between B.E. and Apple as to whether the ‘290
`
`patent is not infringed by Apple.
`
`18.
`
`A judicial declaration is necessary and appropriate so that Apple may ascertain its
`
`rights with respect to the ‘290 patent.
`
`COUNTERCLAIM FOUR
`
`DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘290 PATENT
`
`19.
`
`20.
`
`Apple incorporates by reference paragraphs 1-14 above.
`
`In accusing Apple of infringing the ‘290 patent, B.E. has taken the position that
`
`one or more claims of the ‘290 patent are valid and enforceable.
`
`21.
`
`None of the claims of the ‘290 patent is valid for failure to meet the conditions of
`
`patentability and/or otherwise comply with one or more of Title 35 U.S.C. § 101 et seq.,
`
`including §§ 101, 102, 103, and/or 112.
`
`22.
`
`An actual controversy exists between B.E. and Apple as to whether the ‘290
`
`patent is invalid.
`
`23.
`
`A judicial declaration is necessary and appropriate so that Apple may ascertain its
`
`rights as to whether the ‘290 patent is invalid.
`
`EXCEPTIONAL CASE
`
`24.
`
`This case is exceptional against B.E. under 35 U.S.C. § 285.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Apple asks this Court to enter judgment in its favor against B.E. by
`
`granting the following relief:
`
`A.
`
`Judgment against B.E. and in favor of Apple and dismissal of B.E.’s Complaint
`
`with prejudice;
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`Case 2:12-cv-02831-JPM-tmp Document 26 Filed 12/31/12 Page 8 of 9 PageID 183
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`
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`B.
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`C.
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`Denial of all remedies and relief sought by B.E. in its Complaint;
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`A declaration that Apple has not and does not infringe, either directly, indirectly,
`
`or otherwise, any valid and enforceable claim of the ‘314 or ‘290 patents;
`
`D.
`
`A declaration that each and every claim of the ‘314 and ‘290 patents is invalid
`
`under 35 U.S.C. §§ 101, 102, 103, and/or 112;
`
`E.
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`A permanent injunction preventing B.E., including its officers, agents, employees,
`
`and all persons acting in concert or participation with B.E., from charging that the ‘314 or ‘290
`
`patents are infringed by Apple or its customers;
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`F.
`
`G.
`
`H.
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`A declaration that B.E. take nothing by its Complaint;
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`Denial of B.E.’s request for injunctive relief;
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`A declaration that this case is exceptional against B.E. and an award to Apple of
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`its costs, expenses, and reasonable attorneys’ fees incurred in this action;
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`I.
`
`An award to Apple of all pre- and post-judgment interest to which Apple is
`
`entitled, at the highest rate allowed by law; and
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`J.
`
`Further relief as the court finds just and proper.
`
`
`
`Respectfully submitted,
`
`
`s/Glen G. Reid, Jr.
`Glen G. Reid, Jr. (#8184)
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Dr., Suite 800
`Memphis, TN 38120
`Telephone: (901) 537-1069
`Facsimile: (901) 537-1010
`greid@wyattfirm.com
`
`
`s/Mark Vorder-Bruegge, Jr.
`Mark Vorder-Bruegge, Jr. (#06389)
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Dr., Suite 800
`Memphis, TN 38120
`
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`Case 2:12-cv-02831-JPM-tmp Document 26 Filed 12/31/12 Page 9 of 9 PageID 184
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`
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`Telephone: (901) 537-1069
`Facsimile: (901) 537-1010
`mvorder-bruegge@wyattfirm.com
`
`Clay C. James
`Srecko (Lucky) Vidmar
`C. Matthew Rozier
`HOGAN LOVELLS US LLP
`One Tabor Center, Suite 1500
`1200 Seventeenth Street
`Denver, CO 80202
`Telephone: (303) 899-7300
`Facsimile: (303) 899-7333
`clay.james@hoganlovells.com
`lucky.vidmar@hoganlovells.com
`matt.rozier@hoganlovells.com
`
`Counsel for Defendant
`APPLE INC.
`
`
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`CERTIFICATE OF SERVICE
`
`The foregoing document was filed under the Court’s CM/ECF system, automatically
`
`effecting service on counsel of record for all other parties who have appeared in this action on
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`the date of such service.
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`60305314.1
`
`s/Mark Vorder-Bruegge, Jr.
`Mark Vorder-Bruegge, Jr.
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`
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`- 9 -
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