Case 2:15-cv-00926-RWS-RSP Document 14 Filed 08/24/15 Page 1 of 8 PageID #: 51
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Civil Action No. 2:15-cv-00926
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`FASTVDO LLC,
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` Plaintiff,
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`v.
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`ZTE CORPORATION ET AL.,
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` Defendants.
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`§
`§
`§
`§
`§ JURY TRIAL DEMANDED
`§
`§
`§
`§
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`ANSWER AND COUNTERCLAIMS OF ZTE (USA) INC. TO
`PLAINTIFF’S COMPLAINT FOR PATENT INFRINGEMENT
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`To the extent any response is required to the unnumbered preamble of plaintiff’s Complaint for
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`Patent Infringement: Denied.
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`BACKGROUND
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`1.
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`To the extent any response is required: Denied, because ZTE (USA) Inc. (“ZTE”) is
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`without knowledge or information sufficient to form a belief as to the truth of the averments.
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`2.
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`To the extent any response is required: Denied, because ZTE is without knowledge or
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`information sufficient to form a belief as to the truth of the averments.
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`3.
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`To the extent any response is required: Denied, because ZTE is without knowledge or
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`information sufficient to form a belief as to the truth of the averments.
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`4.
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`To the extent any response is required: Denied, because ZTE is without knowledge or
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`information sufficient to form a belief as to the truth of the averments.
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`THE PARTIES
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`5.
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`Denied, because ZTE is without knowledge or information sufficient to form a belief as
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`to the truth of the averments.
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`1
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`

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`6.
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`Denied, except that ZTE Corporation is a corporation organized and existing under the
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`laws of the People’s Republic of China with a principal place of business ate ZTE Plaza, Keji Road
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`South, Hi-Tech Industrial Park, Nanshan District, Shenzhen, Guangdong Province, P.R. China 518057.
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`7.
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`Denied, except that ZTE (USA) Inc. is a subsidiary of ZTE Corporation, and is a New
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`Jersey corporation with its principal place of business at 2425 North Central Expressway, Suite 600,
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`Richardson, Texas 75080.
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`JURISDICTION AND VENUE
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`8.
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`To the extent any response is required: Denied, except that plaintiff has alleged an
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`action arising under certain provisions of Title 35 of the United States Code.
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`9.
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`Denied, except that for purposes of this Civil Action No. 2:15-cv-00926, ZTE does not
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`object to the exercise of jurisdiction by this Court.
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`10.
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`Denied.
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`11.
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`Denied.
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`COUNT I
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`INFRINGEMENT OF U.S. PATENT NO. 5,850,482
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`12.
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`To the extent any response is required: ZTE reavers and incorporates by reference its
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`unnumbered preamble and Paragraphs 1-11.
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`13.
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`Denied, because ZTE is without knowledge or information sufficient to form a belief as
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`to the truth of the averments.
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`14.
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`To the extent any response is required: Denied, because ZTE is without knowledge or
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`information sufficient to form a belief as to the truth of the averments.
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`15.
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`Denied.
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`16.
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`Denied.
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`17.
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`Denied.
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`18.
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`Denied.
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`2
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`

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`PRAYER FOR RELIEF
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`To the extent any response is required to any paragraph of plaintiff’s Prayer for Relief,
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`including without limitation its unnumbered paragraph and the paragraphs it has labeled A-E: Denied.
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`To the extent any response is required: Denied, except that ZTE below demands a trial by jury
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`DEMAND FOR JURY TRIAL
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`on all issues so triable.
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`19.
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`To the extent ZTE has not already addressed elsewhere any averments of Plaintiff’s
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`Original Complaint for Patent Infringement: Denied.
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`DEFENSES
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`20.
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`Pursuant to Federal Rule of Civil Procedure 8(b) and (c), without assuming any burden
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`that it would not otherwise bear, without reducing or removing plaintiff’s burdens of proof on its
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`affirmative claims against ZTE, reserving its right to assert additional defenses, and affirmatively
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`solely to the extent deemed necessary by the Court to maintain any or all of the following defenses,
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`ZTE asserts the following defenses to plaintiff’s Complaint for Patent Infringement:
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`FIRST DEFENSE
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`21.
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`ZTE does not and has not infringed any valid and enforceable claim of U.S. Patent No.
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`5,850,482 (the “patent-in-suit”) literally, under the doctrine of equivalents, directly, indirectly,
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`contributorily, by way of inducement, and/or via any other mechanism of liability.
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`SECOND DEFENSE
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`22.
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`Each of the claims of the patent-in-suit is invalid and/or unenforceable for failure to
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`comply with one or more of the conditions of patentability set forth in Title 35 of the United States
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`Code, including without limitation, for example, Sections 101, 102, 103, and 112.
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`THIRD DEFENSE
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`23.
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`Plaintiff’s claims for patent infringement are precluded in whole or in part (i) to the
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`extent that any allegedly infringing products or components thereof are supplied, directly or indirectly,
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`3
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`to ZTE by (or by ZTE to) any entity or entities having express or implied licenses to the patents-in-suit
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`and/or (ii) under the doctrine of patent exhaustion.
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`FOURTH DEFENSE
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`24.
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`Plaintiff is barred in whole or in part under principles of equity, including without
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`limitation, laches, prosecution laches, waiver, estoppel, and/or unclean hands.
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`FIFTH DEFENSE
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`25.
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`Any claim by Plaintiff for damages is limited under 35 U.S.C. §§ 286 or 287. Plaintiff
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`is barred under 35 U.S.C. § 287 from recovering damages prior to the date of the filing of the
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`Complaint. Plaintiff is barred by 35 U.S.C. § 288 from recovering costs associated with its action.
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`SIXTH DEFENSE
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`26.
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`Plaintiff has failed to provide adequate evidence of ownership of the patent-in-suit.
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`SEVENTH DEFENSE
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`27.
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`Plaintiff lacks standing to bring suit for alleged infringement of the patent-in-suit.
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`EIGHTH DEFENSE
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`28.
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`Plaintiff is not entitled to injunctive relief under any theory, at least because: (1)
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`plaintiff has not suffered nor will it suffer irreparable harm because of ZTE’s conduct; (2) any harm to
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`plaintiff would be outweighed by the harm to ZTE if an injunction were entered; (3) plaintiff has an
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`adequate remedy at law even if it were to prevail in this action; and (4) the public interest would not be
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`served by an injunction in favor of plaintiff.
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`NINTH DEFENSE
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`29.
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`Plaintiff has failed to state a claim upon which relief can be granted.
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`TENTH DEFENSE
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`30.
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`This is an exceptional case under 35 U.S.C. 285, entitling ZTE to an award of its costs,
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`expenses, and reasonable attorney fees in this action.
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`RESERVATION OF RIGHTS
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`4
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`

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`31.
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`ZTE reserves any and all rights to amend its answer, including its currently pled
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`defenses, and/or to add additional defenses, as any basis for doing so becomes apparent.
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`ZTE’S COUNTERCLAIMS
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`Counterclaim Plaintiff ZTE (USA) Inc. (“ZTE”), as and for its counterclaims against
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`counterclaim defendant FastVDO LLC, states as follows:
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`NATURE OF ACTION
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`1.
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`This is a Declaratory Judgment action for a declaration of non-infringement and
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`invalidity of the U.S. Patent asserted against ZTE by counterclaim defendant in its Complaint for
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`Patent Infringement (its “complaint”); U.S. Patent No. 5,850,482.
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`PARTIES
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`2.
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`ZTE is a New Jersey corporation with its principal place of business at 2425 North
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`Central Expressway, Suite 600, Richardson, Texas 75080.
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`3.
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`On information and belief, as averred in its complaint, counterclaim defendant is a
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`Florida limited liability company with its principal place of business in Melbourne, Florida.
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`JURISDICTION AND VENUE
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`4.
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`This Court has subject matter jurisdiction over the counterclaims under 28 U.S.C. §§
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`2201 and 2202 as a declaratory judgment action; and, as averred in the complaint, under 28 U.S.C. §§
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`1331 and 1338 as an action arising under the Patent Laws, Title 35 of the United States Code.
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`5.
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`By filing its complaint in this District, counterclaim defendant has affirmatively sought
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`and consented to the personal jurisdiction of this Court for purposes of ZTE’s counterclaims, and the
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`Court does have personal jurisdiction over the counterclaim defendant.
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`6.
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`If and to the extent venue is (or would have been) proper over any of the claims in the
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`complaint, venue over all counterclaims must be proper in this District under 28 U.S.C. §§ 1391 and
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`1400. Furthermore, by maintaining its complaint, counterclaim defendant has waived any objection it
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`might have or make to venue over ZTE’s counterclaims.
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`5
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`

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`COUNTERCLAIM I
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`(DECLARATION OF NON-INFRINGEMENT—’482 Patent)
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`7.
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`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
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`through 6 of ZTE’s Counterclaims as though fully set forth herein.
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`8.
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`Counterclaim defendant avers in its complaint that it is “the owner by assignment of the
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`’482 Patent….”
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`9.
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`Counterclaim defendant avers in its complaint that ZTE has
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`infringed and continue to directly infringe one or more claims of the ’482
`patent, in this District and elsewhere in the United States, by manufacturing,
`using, selling, offering for sale, and/or importing products…. Defendants
`have committed these acts of infringement without license or authorization.
`Defendants also
`indirectly
`infringe
`the ’482 patent by
`inducing
`infringement by others, such as manufacturers, resellers, and/or end-users
`of the Accused Devices, of one or more claims of the ’482 patent…. On
`information and belief, Defendants knew of the ’482 Patent and knew of
`their infringement, including by way of this lawsuit.
`…Defendants have injured FastVDO and are thus liable for infringement of
`one or more claims of the ’482 patent….
`As a result of Defendants’ infringement of the ’482 patent, FastVDO has
`been damaged and is entitled to a money judgement in an amount adequate
`to compensate for Defendants’ infringement….
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`Thus, an actual, substantial controversy exists between ZTE and counterclaim defendant concerning
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`ZTE’s non-infringement of the ’482 patent.
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`10.
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`ZTE does not infringe, and has not infringed, any valid and enforceable claim of the
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`’482 patent literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of
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`inducement, and/or via any other mechanism of liability under the Patent Act.
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`11.
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`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
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`entitled to a declaration that the claims of the ’482 patent are not, and have not been, infringed by ZTE
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`or any affiliate (or, with respect to ZTE products, customer) of ZTE.
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`12.
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`The requested declaratory relief would serve the useful purpose of clarifying the legal
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`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
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`6
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`COUNTERCLAIM II
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`(DECLARATION OF INVALIDITY—’482 Patent)
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`13.
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`ZTE reavers and incorporates by reference its unnumbered preamble and paragraphs 1
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`through 12 of ZTE’s Counterclaims as though fully set forth herein.
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`14.
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`One or more claims of the ’482 patent are invalid or void for failing to satisfy one or
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`more of the conditions of patentability set forth in Part II of Title 35 of the United States Code,
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`including without limitation, for example, sections 101, 102, 103, and/or 112.
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`15.
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`Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., ZTE is
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`entitled to a declaration that the claims of the ’482 patent are invalid.
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`16.
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`The requested declaratory relief would serve the useful purpose of clarifying the legal
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`issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
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`17.
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`ZTE demands a trial by jury on all issues so triable.
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`DEMAND FOR JURY TRIAL
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`PRAYER FOR RELIEF
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`FOR THESE REASONS, ZTE respectfully requests that this Court enter judgment in its favor
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`and grant the following relief:
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`A.
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`That the Court enter an order declaring that counterclaim defendant take nothing by its
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`complaint in this action;
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`B.
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`That the Court enter judgment against counterclaim defendant and in favor of ZTE, and
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`that the complaint be dismissed with prejudice;
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`C.
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`That the Court enter a declaratory judgment that ZTE does not infringe any claim of the
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`’482 patent;
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`D.
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`That the Court enter a declaratory judgment that the claims of the ’482 patent are
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`invalid; and
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`7
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`E.
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`That the Court enter an order awarding ZTE its costs, expenses and reasonable attorney
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`fees in this action because this is an exceptional case under 35 U.S.C. 285 as a result of, inter alia, the
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`above-pleaded denials, defenses, and/or counterclaims.
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`DATED: August 24, 2015
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`Respectfully submitted,
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` /s/ David A. Bailey
`Everett Upshaw
`State Bar of Texas No. 24025690
`everettupshaw@everettupshaw.com
`David A. Bailey, of Counsel
`State Bar of Texas No. 24078177
`davidbailey@everettupshaw.com
`UPSHAW PLLC
`811 S. Central Expressway, Suite 307
`Richardson, Texas 75080
`P: (972) 920-8000
`F: (972) 920-8001
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`ATTORNEYS FOR ZTE (USA) INC.
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of this document was filed electronically in compliance with Local
`Rule CV-5, and thereby served on all counsel who have consented to electronic service on this 24th day
`of August, 2015.
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`
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`
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` /s/ David A. Bailey
`David A. Bailey
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`
`8