Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 1 of 22 PageID #: 68
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`PARTHENON UNIFIED MEMORY
`ARCHITECTURE LLC,
`
`
`
`v.
`
`ZTE CORPORATION ET AL.
`
`
`
`Plaintiff,
`
`Defendants.
`
`Civil Action No. 2:15-cv-00225
`
`PATENT CASE
`
`JURY TRIAL DEMANDED
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`ANSWER AND COUNTERCLAIMS OF ZTE (USA) INC. AND ZTE (TX) INC.
`TO PARTHENON UNIFIED MEMORY ARCHITECTURE LLC’S
`COMPLAINT FOR PATENT INFRINGEMENT
`
`To the extent any response is required to the unnumbered preamble of plaintiff’s Complaint for
`
`Patent Infringement: Denied.
`
`THE PARTIES
`
`1.
`
`Denied, because ZTE (USA) Inc. and ZTE (TX) Inc. (collectively “ZTE”) are without
`
`knowledge or information sufficient to form a belief as to the truth of the averments.
`
`2.
`
`Denied, except that ZTE Corporation is a corporation organized and existing under the
`
`laws of the People’s Republic of China, having a principal place of business at ZTE Plaza, Keji Road
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`South, Hi-Tech Industrial Park, Nanshan District, Shenzhen, Guangdong Province, People’s Republic
`
`of China 518057.
`
`3.
`
`Denied, except that ZTE (USA) Inc. is a corporation organized and existing under the
`
`laws of New Jersey, having a principal place of business at 2425 North Central Expressway, Suite 600,
`
`Richardson, Texas 75080.
`
`4.
`
`Denied, except that ZTE (TX) Inc. is a corporation organized and existing under the
`
`laws of Texas, having a principal place of business at 2500 Dallas Parkway, Plano, Texas 75093.
`
`
`
`1
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`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 2 of 22 PageID #: 69
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`JURISDICTION AND VENUE
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`5.
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`Denied, except that for purposes of this Civil Action No. 2:15-cv-00225, ZTE does not
`
`object to the exercise of jurisdiction by this Court.
`
`6.
`
`Denied, except that for purposes of this Civil Action No. 2:15-cv-00225, ZTE does not
`
`object to the propriety (as opposed to the convenience) of venue in this District and Division.
`
`COUNT I: INFRINGEMENT OF U.S. PATENT NO. 5,812,789
`
`7.
`
`8.
`
`9.
`
`Denied.
`
`Denied.
`
`Denied.
`
`10.
`
`Denied.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`COUNT II: INFRINGEMENT OF U.S. PATENT NO. 5,960,464
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT III: INFRINGEMENT OF U.S. PATENT NO. 6,058,459
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT IV: INFRINGEMENT OF U.S. PATENT NO. 6,427,194
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`2
`
`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 3 of 22 PageID #: 70
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`COUNT V: INFRINGEMENT OF U.S. PATENT NO. 7,321,368
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`23.
`
`24.
`
`25.
`
`26.
`
`27.
`
`28.
`
`29.
`
`30.
`
`31.
`
`32.
`
`33.
`
`34.
`
`35.
`
`36.
`
`37.
`
`38.
`
`39.
`
`40.
`
`41.
`
`42.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT VI: INFRINGEMENT OF U.S. PATENT NO. 7,542,045
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT VII: INFRINGEMENT OF U.S. PATENT NO. 7,777,753
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT VIII: INFRINGEMENT OF U.S. PATENT NO. 8,054,315
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT IX: INFRINGEMENT OF U.S. PATENT NO. 8,681,164
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`3
`
`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 4 of 22 PageID #: 71
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`43.
`
`To the extent any response is required: Denied, except that ZTE below demands a trial
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`JURY DEMAND
`
`by jury on all issues so triable.
`
`PRAYER FOR RELIEF
`
`To the extent any response is required to any paragraph of plaintiff’s Prayer for Relief,
`
`including without limitation its unnumbered paragraph and the paragraphs it has labeled a-e: Denied.
`
`44.
`
`To the extent ZTE has not already addressed elsewhere any averments of Plaintiff’s
`
`Original Complaint for Patent Infringement: Denied.
`
`DEFENSES
`
`45.
`
`Pursuant to Federal Rule of Civil Procedure 8(b) and (c), without assuming any burden
`
`that it would not otherwise bear, without reducing or removing plaintiff’s burdens of proof on its
`
`affirmative claims against ZTE, reserving its right to assert additional defenses, and affirmatively
`
`solely to the extent deemed necessary by the Court to maintain any or all of the following defenses,
`
`ZTE asserts the following defenses to plaintiff’s Complaint for Patent Infringement:
`
`FIRST DEFENSE
`
`46.
`
`ZTE does not and has not infringed any valid and enforceable claim of U.S. Patent Nos.
`
`5,812,789; 5,960,464; 6,058,459; 6,427,194; 7,321,368; 7,542,045; 7,777,753; 8,054,315; or 8,681,164
`
`(collectively, the “patents-in-suit”) literally, under the doctrine of equivalents, directly, indirectly,
`
`contributorily, by way of inducement, and/or via any other mechanism of liability.
`
`SECOND DEFENSE
`
`47.
`
`Each of the claims of the patents-in-suit is invalid and/or unenforceable for failure to
`
`comply with one or more of the conditions of patentability set forth in Title 35 of the United States
`
`Code, including without limitation, for example, Sections 101, 102, 103, and 112.
`
`4
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`
`
`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 5 of 22 PageID #: 72
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`THIRD DEFENSE
`
`48.
`
`Plaintiff’s claims for patent infringement are precluded in whole or in part (i) to the
`
`extent that any allegedly infringing products or components thereof are supplied, directly or indirectly,
`
`to ZTE by (or by ZTE to) any entity or entities having express or implied licenses to the patents-in-suit
`
`and/or (ii) under the doctrine of patent exhaustion.
`
`FOURTH DEFENSE
`
`49.
`
`Plaintiff is barred in whole or in part under principles of equity, including without
`
`limitation, laches, prosecution laches, waiver, estoppel, and/or unclean hands.
`
`FIFTH DEFENSE
`
`50.
`
`Any claim by Plaintiff for damages is limited under 35 U.S.C. §§ 286 or 287. Plaintiff
`
`is barred under 35 U.S.C. § 287 from recovering damages prior to the date of the filing of the
`
`Complaint. Plaintiff is barred by 35 U.S.C. § 288 from recovering costs associated with its action.
`
`SIXTH DEFENSE
`
`51.
`
`Plaintiff has failed to provide adequate evidence of ownership of the patents-in-suit.
`
`SEVENTH DEFENSE
`
`52.
`
`Plaintiff lacks standing to bring suit for alleged infringement of the patents-in-suit.
`
`EIGHTH DEFENSE
`
`53.
`
`Plaintiff is not entitled to injunctive relief under any theory, at least because: (1)
`
`plaintiff has not suffered nor will it suffer irreparable harm because of ZTE’s conduct; (2) any harm to
`
`plaintiff would be outweighed by the harm to ZTE if an injunction were entered; (3) plaintiff has an
`
`adequate remedy at law even if it were to prevail in this action; and (4) the public interest would not be
`
`served by an injunction in favor of plaintiff.
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`NINTH DEFENSE
`
`54.
`
`Plaintiff has failed to state a claim upon which relief can be granted.
`
`
`
`5
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`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 6 of 22 PageID #: 73
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`TENTH DEFENSE
`
`55.
`
`This is an exceptional case under 35 U.S.C. 285, entitling ZTE to an award of its costs,
`
`expenses, and reasonable attorney fees in this action.
`
`RESERVATION OF RIGHTS
`
`56.
`
`ZTE reserves any and all rights to amend its answer, including its currently pled
`
`defenses, and/or to add additional defenses, as any basis for doing so becomes apparent.
`
`ZTE’S COUNTERCLAIMS
`
`Counterclaim Plaintiffs ZTE (USA) Inc. and ZTE (TX) Inc. (collectively “ZTE”), as and for
`
`their counterclaims against counterclaim defendant Parthenon Unified Memory Architecture LLC,
`
`states as follows:
`
`NATURE OF ACTION
`
`1.
`
`This is a Declaratory Judgment action for a declaration of non-infringement and
`
`invalidity of the U.S. Patents asserted against ZTE by counterclaim defendant in its Complaint for
`
`Patent Infringement (its “complaint”); U.S. Patent Nos. 5,812,789; 5,960,464; 6,058,459; 6,427,194;
`
`7,321,368; 7,542,045; 7,777,753; 8,054,315; and 8,681,164 .
`
`PARTIES
`
`2.
`
`ZTE (USA) Inc. is a New Jersey corporation with its principal place of business at 2425
`
`North Central Expressway, Suite 600, Richardson, Texas 75080.
`
`3.
`
`ZTE (TX) Inc. is a Texas corporation with its principal place of business at 2500 Dallas
`
`Parkway, Plano, Texas 75093.
`
`4.
`
`On information and belief, as averred in its complaint, counterclaim defendant is a
`
`Texas limited liability company with its principal place of business in Plano, Texas.
`
`6
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`
`
`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 7 of 22 PageID #: 74
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`JURISDICTION AND VENUE
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`5.
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`This Court has subject matter jurisdiction over the counterclaims under 28 U.S.C. §§
`
`2201 and 2202 as a declaratory judgment action; and, as averred in the complaint, under 28 U.S.C. §§
`
`1331 and 1338 as an action arising under the Patent Laws, Title 35 of the United States Code.
`
`6.
`
`By filing its complaint in this District, counterclaim defendant has affirmatively sought
`
`and consented to the personal jurisdiction of this Court for purposes of ZTE’s counterclaims, and the
`
`Court does have personal jurisdiction over the counterclaim defendant.
`
`7.
`
`If and to the extent venue is (or would have been) proper over any of the claims in the
`
`complaint, venue over all counterclaims must be proper in this District under 28 U.S.C. §§ 1391 and
`
`1400. Furthermore, by maintaining its complaint, counterclaim defendant has waived any objection it
`
`might have or make to venue over ZTE’s counterclaims.
`
`COUNTERCLAIM I
`
`(DECLARATION OF NON-INFRINGEMENT—’789 Patent)
`
`8.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 7 of ZTE’s Counterclaims as though fully set forth herein.
`
`9.
`
`Counterclaim defendant avers in its complaint that it “hold all rights, title, interest in
`
`and to the ’789 Patent.”
`
`10.
`
`Counterclaim defendant avers in its complaint that ZTE has “infringed
`
`directly and continues to infringe directly the ’789 Patent. The infringing acts include, but
`
`are not limited to, the manufacture, use, sale, importation, and/or offer for sale of products
`
`and/or methods encompassed by the claims of the ’789 Patent.” Thus, an actual, substantial
`
`controversy exists between ZTE and counterclaim defendant concerning ZTE’s non-
`
`infringement of the ’789 patent.
`
`7
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`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 8 of 22 PageID #: 75
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`11.
`
`ZTE does not infringe, and has not infringed, any valid and enforceable claim of the
`
`’789 patent literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of
`
`inducement, and/or via any other mechanism of liability under the Patent Act.
`
`12.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’789 patent are not, and have not been, infringed by ZTE
`
`or any affiliate (or, with respect to ZTE products, customer) of ZTE.
`
`13.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM II
`
`(DECLARATION OF INVALIDITY—’789 Patent)
`
`14.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 13 of ZTE’s Counterclaims as though fully set forth herein.
`
`15.
`
`One or more claims of the ’789 patent are invalid or void for failing to satisfy one or
`
`more of the conditions of patentability set forth in Part II of Title 35 of the United States Code,
`
`including without limitation, for example, sections 101, 102, 103, and/or 112.
`
`16.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’789 patent are invalid.
`
`17.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM III
`
`(DECLARATION OF NON-INFRINGEMENT—’464 Patent)
`
`18.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 17 of ZTE’s Counterclaims as though fully set forth herein.
`
`19.
`
`Counterclaim defendant avers in its complaint that it “holds all rights, title, and interest
`
`in and to the ’464 Patent.”
`
`8
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`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 9 of 22 PageID #: 76
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`20.
`
`Counterclaim defendant avers in its complaint that ZTE has “infringed directly and
`
`continues to infringe directly the ’464 Patent. The infringing acts include, but are not limited to, the
`
`manufacture, use, sale, importation, and/or offer for sale of products and/or methods encompassed by
`
`the claims of the ’464 Patent.” Thus, an actual, substantial controversy exists between ZTE and
`
`counterclaim defendant concerning ZTE’s non-infringement of the ’464 patent.
`
`21.
`
`ZTE does not infringe, and has not infringed, any valid and enforceable claim of the
`
`’464 patent literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of
`
`inducement, and/or via any other mechanism of liability under the Patent Act.
`
`22.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’464 patent are not, and have not been, infringed by ZTE
`
`or any affiliate (or, with respect to ZTE products, customer) of ZTE.
`
`23.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM IV
`
`(DECLARATION OF INVALIDITY—’464 Patent)
`
`24.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 23 of ZTE’s Counterclaims as though fully set forth herein.
`
`25.
`
`One or more claims of the ’464 patent are invalid or void for failing to satisfy one or
`
`more of the conditions of patentability set forth in Part II of Title 35 of the United States Code,
`
`including without limitation, for example, sections 101, 102, 103, and/or 112.
`
`26.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’464 patent are invalid.
`
`27.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`
`
`9
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`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 10 of 22 PageID #: 77
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`COUNTERCLAIM V
`
`(DECLARATION OF NON-INFRINGEMENT—’459 Patent)
`
`28.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 27 of ZTE’s Counterclaims as though fully set forth herein.
`
`29.
`
`Counterclaim defendant avers in its complaint that it “holds all rights, title, and interest
`
`in and to the ’459 Patent.”
`
`30.
`
`Counterclaim defendant avers in its complaint that ZTE has “infringed directly and
`
`continues to infringe directly the ’459 Patent. The infringing acts include, but are not limited to, the
`
`manufacture, use, sale, importation, and/or offer for sale of products and/or methods encompassed by
`
`the claims of the ’459 Patent.” Thus, an actual, substantial controversy exists between ZTE and
`
`counterclaim defendant concerning ZTE’s non-infringement of the ’459 patent.
`
`31.
`
`ZTE does not infringe, and has not infringed, any valid and enforceable claim of the
`
`’459 patent literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of
`
`inducement, and/or via any other mechanism of liability under the Patent Act.
`
`32.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’459 patent are not, and have not been, infringed by ZTE
`
`or any affiliate (or, with respect to ZTE products, customer) of ZTE.
`
`33.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM VI
`
`(DECLARATION OF INVALIDITY—’459 Patent)
`
`34.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 33 of ZTE’s Counterclaims as though fully set forth herein.
`
`10
`
`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 11 of 22 PageID #: 78
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`35.
`
`One or more claims of the ’459 patent are invalid or void for failing to satisfy one or
`
`more of the conditions of patentability set forth in Part II of Title 35 of the United States Code,
`
`including without limitation, for example, sections 101, 102, 103, and/or 112.
`
`36.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’459 patent are invalid.
`
`37.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM VII
`
`(DECLARATION OF NON-INFRINGEMENT—’194 Patent)
`
`38.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 37 of ZTE’s Counterclaims as though fully set forth herein.
`
`39.
`
`Counterclaim defendant avers in its complaint that it “holds all rights, title, and interest
`
`in and to the ’194 Patent.”
`
`40.
`
`Counterclaim defendant avers in its complaint that ZTE has “infringed directly and
`
`continues to infringe directly the ’194 Patent. The infringing acts include, but are not limited to the
`
`manufacture, use, sale, importation, and/or offer for sale of products and/or methods encompassed by
`
`the claims of the ’194 Patent.” Thus, an actual, substantial controversy exists between ZTE and
`
`counterclaim defendant concerning ZTE’s non-infringement of the ’194 patent.
`
`41.
`
`ZTE does not infringe, and has not infringed, any valid and enforceable claim of the
`
`’194 patent literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of
`
`inducement, and/or via any other mechanism of liability under the Patent Act.
`
`42.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’194 patent are not, and have not been, infringed by ZTE
`
`or any affiliate (or, with respect to ZTE products, customer) of ZTE.
`
`11
`
`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 12 of 22 PageID #: 79
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`43.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM VIII
`
`(DECLARATION OF INVALIDITY—’194 Patent)
`
`44.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 43 of ZTE’s Counterclaims as though fully set forth herein.
`
`45.
`
`One or more claims of the ’194 patent are invalid or void for failing to satisfy one or
`
`more of the conditions of patentability set forth in Part II of Title 35 of the United States Code,
`
`including without limitation, for example, sections 101, 102, 103, and/or 112.
`
`46.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’194 patent are invalid.
`
`47.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM IX
`
`(DECLARATION OF NON-INFRINGEMENT—’368 Patent)
`
`48.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 47 of ZTE’s Counterclaims as though fully set forth herein.
`
`49.
`
`Counterclaim defendant avers in its complaint that it “holds all rights, title, an interest in
`
`and to the ’368 Patent”
`
`50.
`
`Counterclaim defendant avers in its complaint that ZTE has “infringed directly and
`
`continues to infringe directly the ’368 Patent. The infringing acts include, but are not limited to, the
`
`manufacture, use, sale, importation, and/or offer for sale of products and/or methods encompassed by
`
`the claims of the ’368 Patent.” Thus, an actual, substantial controversy exists between ZTE and
`
`counterclaim defendant concerning ZTE’s non-infringement of the ’368 patent.
`
`12
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`

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`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 13 of 22 PageID #: 80
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`51.
`
`ZTE does not infringe, and has not infringed, any valid and enforceable claim of the
`
`’368 patent literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of
`
`inducement, and/or via any other mechanism of liability under the Patent Act.
`
`52.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’368 patent are not, and have not been, infringed by ZTE
`
`or any affiliate (or, with respect to ZTE products, customer) of ZTE.
`
`53.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM X
`
`(DECLARATION OF INVALIDITY—’368 Patent)
`
`54.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 53 of ZTE’s Counterclaims as though fully set forth herein.
`
`55.
`
`One or more claims of the ’368 patent are invalid or void for failing to satisfy one or
`
`more of the conditions of patentability set forth in Part II of Title 35 of the United States Code,
`
`including without limitation, for example, sections 101, 102, 103, and/or 112.
`
`56.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’368 patent are invalid.
`
`57.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM XI
`
`(DECLARATION OF NON-INFRINGEMENT—’045 Patent)
`
`58.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 57 of ZTE’s Counterclaims as though fully set forth herein.
`
`59.
`
`Counterclaim defendant avers in its complaint that it “holds all rights, title, and interest
`
`in and to the ’045 Patent.”
`
`13
`
`

`
`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 14 of 22 PageID #: 81
`
`60.
`
`Counterclaim defendant avers in its complaint that ZTE has “infringed directly and
`
`continues to infringe directly the ’045 Patent. The infringing acts include, but are not limited to, the
`
`manufacture, use, sale, importation, and/or offer for sale of products and/or methods encompassed by
`
`the claims of the ’045 Patent.” Thus, an actual, substantial controversy exists between ZTE and
`
`counterclaim defendant concerning ZTE’s non-infringement of the ’045 patent.
`
`61.
`
`ZTE does not infringe, and has not infringed, any valid and enforceable claim of the
`
`’045 patent literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of
`
`inducement, and/or via any other mechanism of liability under the Patent Act.
`
`62.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’045 patent are not, and have not been, infringed by ZTE
`
`or any affiliate (or, with respect to ZTE products, customer) of ZTE.
`
`63.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM XII
`
`(DECLARATION OF INVALIDITY—’045 Patent)
`
`64.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 63 of ZTE’s Counterclaims as though fully set forth herein.
`
`65.
`
`One or more claims of the ’045 patent are invalid or void for failing to satisfy one or
`
`more of the conditions of patentability set forth in Part II of Title 35 of the United States Code,
`
`including without limitation, for example, sections 101, 102, 103, and/or 112.
`
`66.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’045 patent are invalid.
`
`67.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM XIII
`14
`
`

`
`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 15 of 22 PageID #: 82
`
`
`(DECLARATION OF NON-INFRINGEMENT—’753 Patent)
`
`68.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 67 of ZTE’s Counterclaims as though fully set forth herein.
`
`69.
`
`Counterclaim defendant avers in its complaint that it “holds all rights, title, and interest
`
`in and to the ’753 Patent.”
`
`70.
`
`Counterclaim defendant avers in its complaint that ZTE has “infringed directly and
`
`continues to infringe directly the ’753 Patent. The infringing acts include, but are not limited to, the
`
`manufacture, use, sale, importation, and/or offer for sale of products and/or methods encompassed by
`
`the claims of the ’753 Patent.” Thus, an actual, substantial controversy exists between ZTE and
`
`counterclaim defendant concerning ZTE’s non-infringement of the ’753 patent.
`
`71.
`
`ZTE does not infringe, and has not infringed, any valid and enforceable claim of the
`
`’753 patent literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of
`
`inducement, and/or via any other mechanism of liability under the Patent Act.
`
`72.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’753 patent are not, and have not been, infringed by ZTE
`
`or any affiliate (or, with respect to ZTE products, customer) of ZTE.
`
`73.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM XIV
`
`(DECLARATION OF INVALIDITY—’753 Patent)
`
`74.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 73 of ZTE’s Counterclaims as though fully set forth herein.
`
`15
`
`

`
`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 16 of 22 PageID #: 83
`
`75.
`
`One or more claims of the ’753 patent are invalid or void for failing to satisfy one or
`
`more of the conditions of patentability set forth in Part II of Title 35 of the United States Code,
`
`including without limitation, for example, sections 101, 102, 103, and/or 112.
`
`76.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’753 patent are invalid.
`
`77.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM XV
`
`(DECLARATION OF NON-INFRINGEMENT—’315 Patent)
`
`78.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 77 of ZTE’s Counterclaims as though fully set forth herein.
`
`79.
`
`Counterclaim defendant avers in its complaint that it “holds all rights, title, and interest
`
`in and to the ’315 Patent.”
`
`80.
`
`Counterclaim defendant avers in its complaint that ZTE has “infringed directly and
`
`continues to infringe directly the ’315 Patent. The infringing acts include, but are not limited to, the
`
`manufacture, use, sale, importation, and/or offer for sale of products and/or methods encompassed by
`
`the claims of the ’315 Patent.” Thus, an actual, substantial controversy exists between ZTE and
`
`counterclaim defendant concerning ZTE’s non-infringement of the ’315 patent.
`
`81.
`
`ZTE does not infringe, and has not infringed, any valid and enforceable claim of the
`
`’315 patent literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of
`
`inducement, and/or via any other mechanism of liability under the Patent Act.
`
`82.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’315 patent are not, and have not been, infringed by ZTE
`
`or any affiliate (or, with respect to ZTE products, customer) of ZTE.
`
`16
`
`

`
`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 17 of 22 PageID #: 84
`
`83.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM XVI
`
`(DECLARATION OF INVALIDITY—’315 Patent)
`
`84.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 83 of ZTE’s Counterclaims as though fully set forth herein.
`
`85.
`
`One or more claims of the ’315 patent are invalid or void for failing to satisfy one or
`
`more of the conditions of patentability set forth in Part II of Title 35 of the United States Code,
`
`including without limitation, for example, sections 101, 102, 103, and/or 112.
`
`86.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’315 patent are invalid.
`
`87.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM XVII
`
`(DECLARATION OF NON-INFRINGEMENT—’164 Patent)
`
`88.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 87 of ZTE’s Counterclaims as though fully set forth herein.
`
`89.
`
`Counterclaim defendant avers in its complaint that it “holds all rights, title, and interest
`
`in and to the ’164 Patent.”
`
`90.
`
`Counterclaim defendant avers in its complaint that ZTE has “infringed directly and
`
`continues to infringe directly the ’164 Patent. The infringing acts include, but are not limited to, the
`
`manufacture, use, sale, importation, and/or offer for sale of products and/or methods encompassed by
`
`the claims of the ’164 Patent.” Thus, an actual, substantial controversy exists between ZTE and
`
`counterclaim defendant concerning ZTE’s non-infringement of the ’164 patent.
`
`17
`
`

`
`Case 2:15-cv-00225-JRG-RSP Document 22 Filed 05/26/15 Page 18 of 22 PageID #: 85
`
`91.
`
`ZTE does not infringe, and has not infringed, any valid and enforceable claim of the
`
`’164 patent literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of
`
`inducement, and/or via any other mechanism of liability under the Patent Act.
`
`92.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’164 patent are not, and have not been, infringed by ZTE
`
`or any affiliate (or, with respect to ZTE products, customer) of ZTE.
`
`93.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`COUNTERCLAIM XVIII
`
`(DECLARATION OF INVALIDITY—’164 Patent)
`
`94.
`
`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
`
`through 93 of ZTE’s Counterclaims as though fully set forth herein.
`
`95.
`
`One or more claims of the ’164 patent are invalid or void for failing to satisfy one or
`
`more of the conditions of patentability set forth in Part II of Title 35 of the United States Code,
`
`including without limitation, for example, sections 101, 102, 103, and/or 112.
`
`96.
`
`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
`
`entitled to a declaration that the claims of the ’164 patent are invalid.
`
`97.
`
`The requested declaratory relief would serve the useful purpose of clarifying the legal
`
`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
`
`DEMAND FOR JURY TRIAL
`
`98.
`
`ZTE demands a trial by jury on all issues so triable.
`
`PRAYER FOR RELIEF
`
`FOR THESE REASONS, ZTE respectfully requests that this Court enter judgment in its favor
`
`and grant the following relief: