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`JAWBONE INNOVATIONS, LLC,
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`
`Plaintiff,
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`
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`v.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`§
`Case No. 2:21-cv-00186-JRG
`§
`
`§
`JURY TRIAL DEMANDED
`§
`§
`
`§
`§
`§
`§
`§
`§
`§
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`
`
`
`SAMSUNG ELECTRONICS CO. LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`
`Defendants.
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`
`
`
`PLAINTIFF JAWBONE INNOVATIONS, LLC’S ANSWER TO
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.’S COUNTERCLAIMS
`
`Plaintiff/Counterclaim-Defendant Jawbone Innovations, LLC (“Jawbone”), by and
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`through its undersigned counsel, hereby responds to the counterclaims in Samsung Electronics
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`Co., Ltd. and Samsung Electronics America, Inc.’s (collectively, “Samsung”) Answer to Jawbone
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`Innovations, LLC’s First Amended Complaint, and Counterclaims (Dkt. No. 27) (the
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`“Counterclaims”) as follows:
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`PARTIES
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`1.
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`2.
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`3.
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`Jawbone admits the allegations contained in paragraph 1 of the Counterclaims.
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`Jawbone admits the allegations contained in paragraph 2 of the Counterclaims.
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`Jawbone admits that it is a limited liability company established and existing under
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`the laws of the State of Texas, with its principal place of business at 100 West Houston Street,
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`Marshall, Texas 75670. Furthermore, Jawbone maintains a principal place of business at 104 East
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`Case 2:21-cv-00186-JRG-RSP Document 31 Filed 12/30/21 Page 2 of 13 PageID #: 474
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`Houston Street, Suite 165, Marshall, Texas 75670. Jawbone denies any remaining allegations
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`contained in paragraph 3 of the Counterclaims.
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`JURISDICTION AND VENUE
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`4.
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`Jawbone admits that Samsung states in paragraph 4 of the Counterclaims that this
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`is an action for declaratory judgment of noninfringement and invalidity of U.S. Patent Nos.
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`8,019,091 (“the ʼ091 Patent”), 8,280,072 (“the ʼ072 Patent”), 7,246,058 (the “’058 Patent”),
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`10,779,080 (the “’080 Patent”), 11,122,357 (the “’357 Patent”), 8,467,543 (the “’543 Patent”), and
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`8,503,691 (the “’691 Patent”).
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`5.
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`Jawbone admits that this Court has subject matter jurisdiction under the Federal
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`Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, and under 28 U.S.C. §§ 1331, 1367, and
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`1338(a). Jawbone denies that Samsung is entitled to any relief. Furthermore, Jawbone admits that
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`an actual, substantial, and continuing justiciable controversy exists between Samsung and Jawbone
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`concerning the ’091, ’072, ’058, ’080, ’357, ’543, and ’691 Patents in that Jawbone has filed a
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`Complaint in this Court alleging that Samsung infringes the ’091, ’072, ’058, ’080, ’357, ’543, and
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`’691 Patents. Jawbone denies any remaining allegations contained in paragraph 5 of the
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`Counterclaims.
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`6.
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`Jawbone admits that this Court has personal jurisdiction over Jawbone. Jawbone
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`denies any remaining allegations contained in paragraph 6 of the Counterclaims.
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`7.
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`Jawbone admits venue is proper in this Judicial District. Jawbone denies any
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`remaining allegations contained in paragraph 7 of the Counterclaims.
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`COUNT I
`NON-INFRINGEMENT OF THE ’091 PATENT
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`Jawbone incorporates paragraphs 1-7, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 9 of the Counterclaims.
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`8.
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`9.
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`2
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`10.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`Samsung based on Samsung’s infringement of the ’091 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 10 of the
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`Counterclaims.
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`11.
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`12.
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`Jawbone denies the allegations contained in paragraph 11 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that it does not infringe and has
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`not infringed (whether directly, contributorily, or by inducement) literally or under the doctrine of
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`equivalents any valid and enforceable claim of the ’091 Patent. Jawbone denies that Samsung is
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`entitled to such a declaratory judgment.
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`13.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 13 of the Counterclaims.
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`COUNT II
`NON-INFRINGEMENT OF THE ’072 PATENT
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`Jawbone incorporates paragraphs 1-13, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 15 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`14.
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`15.
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`16.
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`Samsung based on Samsung’s infringement of the ’072 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 16 of the
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`Counterclaims.
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`17.
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`18.
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`Jawbone denies the allegations contained in paragraph 17 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that it does not infringe and has
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`not infringed (whether directly, contributorily, or by inducement) literally or under the doctrine of
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`equivalents any valid and enforceable claim of the ’072 Patent. Jawbone denies that Samsung is
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`entitled to such a declaratory judgment.
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`3
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`Case 2:21-cv-00186-JRG-RSP Document 31 Filed 12/30/21 Page 4 of 13 PageID #: 476
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`19.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 19 of the Counterclaims.
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`COUNT III
`NON-INFRINGEMENT OF THE ’058 PATENT
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`Jawbone incorporates paragraphs 1-19, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 21 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`20.
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`21.
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`22.
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`Samsung based on Samsung’s infringement of the ’058 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 22 of the
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`Counterclaims.
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`23.
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`24.
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`Jawbone denies the allegations contained in paragraph 23 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that it does not infringe and has
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`not infringed (whether directly, contributorily, or by inducement) literally or under the doctrine of
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`equivalents any valid and enforceable claim of the ’058 Patent. Jawbone denies that Samsung is
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`entitled to such a declaratory judgment.
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`25.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 25 of the Counterclaims.
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`COUNT IV
`NON-INFRINGEMENT OF THE ’080 PATENT
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`Jawbone incorporates paragraphs 1-25, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 27 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`26.
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`27.
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`28.
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`Samsung based on Samsung’s infringement of the ’080 Patent. Jawbone denies that Samsung is
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`4
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`entitled to any relief and denies any remaining allegations contained in paragraph 28 of the
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`Counterclaims.
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`29.
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`30.
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`Jawbone denies the allegations contained in paragraph 29 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that it does not infringe and has
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`not infringed (whether directly, contributorily, or by inducement) literally or under the doctrine of
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`equivalents any valid and enforceable claim of the ’080 Patent. Jawbone denies that Samsung is
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`entitled to such a declaratory judgment.
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`31.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 31 of the Counterclaims.
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`COUNT V
`NON-INFRINGEMENT OF THE ’357 PATENT
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`Jawbone incorporates paragraphs 1-31, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 33 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`32.
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`33.
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`34.
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`Samsung based on Samsung’s infringement of the ’357 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 34 of the
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`Counterclaims.
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`35.
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`36.
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`Jawbone denies the allegations contained in paragraph 35 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that it does not infringe and has
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`not infringed (whether directly, contributorily, or by inducement) literally or under the doctrine of
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`equivalents any valid and enforceable claim of the ’357 Patent. Jawbone denies that Samsung is
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`entitled to such a declaratory judgment.
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`37.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 37 of the Counterclaims.
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`5
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`38.
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`39.
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`40.
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`COUNT VI
`NON-INFRINGEMENT OF THE ’543 PATENT
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`Jawbone incorporates paragraphs 1-37, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 39 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`Samsung based on Samsung’s infringement of the ’543 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 40 of the
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`Counterclaims.
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`41.
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`42.
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`Jawbone denies the allegations contained in paragraph 41 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that it does not infringe and has
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`not infringed (whether directly, contributorily, or by inducement) literally or under the doctrine of
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`equivalents any valid and enforceable claim of the ’543 Patent. Jawbone denies that Samsung is
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`entitled to such a declaratory judgment.
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`43.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 43 of the Counterclaims.
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`COUNT VII
`NON-INFRINGEMENT OF THE ’691 PATENT
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`Jawbone incorporates paragraphs 1-43, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 45 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`44.
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`45.
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`46.
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`Samsung based on Samsung’s infringement of the ’691 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 46 of the
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`Counterclaims.
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`47.
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`Jawbone denies the allegations contained in paragraph 47 of the Counterclaims.
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`6
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`Case 2:21-cv-00186-JRG-RSP Document 31 Filed 12/30/21 Page 7 of 13 PageID #: 479
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`48.
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`Jawbone admits that Samsung seeks a declaration that it does not infringe and has
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`not infringed (whether directly, contributorily, or by inducement) literally or under the doctrine of
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`equivalents any valid and enforceable claim of the ’691 Patent. Jawbone denies that Samsung is
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`entitled to such a declaratory judgment.
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`49.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 49 of the Counterclaims.
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`COUNT VIII
`INVALIDITY OF THE ’091 PATENT
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`50.
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`51.
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`52.
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`Jawbone incorporates paragraphs 1-49, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 51 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`Samsung based on Samsung’s infringement of the ’091 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 52 of the
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`Counterclaims.
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`53.
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`54.
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`Jawbone denies the allegations contained in paragraph 53 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that the ’091 Patent is invalid for
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`failing to comply with one or more of the requirements set forth under United States law, including,
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`inter alia, 35 U.S.C. §§ 101, 102, 103, and/or 112. Jawbone denies that Samsung is entitled to such
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`a declaratory judgment.
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`55.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 55 of the Counterclaims.
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`COUNT IX
`INVALIDITY OF THE ’072 PATENT
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`56.
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`Jawbone incorporates paragraphs 1-55, as if fully set forth herein.
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`7
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`57.
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`58.
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`Jawbone denies the allegations contained in paragraph 57 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`Samsung based on Samsung’s infringement of the ’072 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 58 of the
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`Counterclaims.
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`59.
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`60.
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`Jawbone denies the allegations contained in paragraph 59 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that the ’072 Patent is invalid for
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`failing to comply with one or more of the requirements set forth under United States law, including,
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`inter alia, 35 U.S.C. §§ 101, 102, 103, and/or 112. Jawbone denies that Samsung is entitled to such
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`a declaratory judgment.
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`61.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 61 of the Counterclaims.
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`COUNT X
`INVALIDITY OF THE ’058 PATENT
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`62.
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`63.
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`64.
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`Jawbone incorporates paragraphs 1-61, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 63 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`Samsung based on Samsung’s infringement of the ’058 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 64 of the
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`Counterclaims.
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`65.
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`66.
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`Jawbone denies the allegations contained in paragraph 65 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that the ’058 Patent is invalid for
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`failing to comply with one or more of the requirements set forth under United States law, including,
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`8
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`Case 2:21-cv-00186-JRG-RSP Document 31 Filed 12/30/21 Page 9 of 13 PageID #: 481
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`
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`inter alia, 35 U.S.C. §§ 101, 102, 103, and/or 112. Jawbone denies that Samsung is entitled to such
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`a declaratory judgment.
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`67.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 67 of the Counterclaims.
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`COUNT XI
`INVALIDITY OF THE ’080 PATENT
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`68.
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`69.
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`70.
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`Jawbone incorporates paragraphs 1-67, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 69 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`Samsung based on Samsung’s infringement of the ’080 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 70 of the
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`Counterclaims.
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`71.
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`72.
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`Jawbone denies the allegations contained in paragraph 71 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that the ’080 Patent is invalid for
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`failing to comply with one or more of the requirements set forth under United States law, including,
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`inter alia, 35 U.S.C. §§ 101, 102, 103, and/or 112. Jawbone denies that Samsung is entitled to such
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`a declaratory judgment.
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`73.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 73 of the Counterclaims.
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`COUNT XII
`INVALIDITY OF THE ’357 PATENT
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`74.
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`75.
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`Jawbone incorporates paragraphs 1-73, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 75 of the Counterclaims.
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`9
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`Case 2:21-cv-00186-JRG-RSP Document 31 Filed 12/30/21 Page 10 of 13 PageID #: 482
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`76.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`Samsung based on Samsung’s infringement of the ’357 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 76 of the
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`Counterclaims.
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`77.
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`78.
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`Jawbone denies the allegations contained in paragraph 77 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that the ’357 Patent is invalid for
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`failing to comply with one or more of the requirements set forth under United States law, including,
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`inter alia, 35 U.S.C. §§ 101, 102, 103, and/or 112. Jawbone denies that Samsung is entitled to such
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`a declaratory judgment.
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`79.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 79 of the Counterclaims.
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`COUNT XIII
`INVALIDITY OF THE ’543 PATENT
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`80.
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`81.
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`82.
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`Jawbone incorporates paragraphs 1-79, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 81 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`Samsung based on Samsung’s infringement of the ’543 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 82 of the
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`Counterclaims.
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`83.
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`84.
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`Jawbone denies the allegations contained in paragraph 83 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that the ’543 Patent is invalid for
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`failing to comply with one or more of the requirements set forth under United States law, including,
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`inter alia, 35 U.S.C. §§ 101, 102, 103, and/or 112. Jawbone denies that Samsung is entitled to such
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`a declaratory judgment.
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`10
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`Case 2:21-cv-00186-JRG-RSP Document 31 Filed 12/30/21 Page 11 of 13 PageID #: 483
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`85.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 85 of the Counterclaims.
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`COUNT XIV
`INVALIDITY OF THE ’691 PATENT
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`86.
`
`87.
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`88.
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`Jawbone incorporates paragraphs 1-85, as if fully set forth herein.
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`Jawbone denies the allegations contained in paragraph 87 of the Counterclaims.
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`Jawbone admits that there is an actual case and controversy between Jawbone and
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`Samsung based on Samsung’s infringement of the ’691 Patent. Jawbone denies that Samsung is
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`entitled to any relief and denies any remaining allegations contained in paragraph 88 of the
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`Counterclaims.
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`89.
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`90.
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`Jawbone denies the allegations contained in paragraph 89 of the Counterclaims.
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`Jawbone admits that Samsung seeks a declaration that the ’691 Patent is invalid for
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`failing to comply with one or more of the requirements set forth under United States law, including,
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`inter alia, 35 U.S.C. §§ 101, 102, 103, and/or 112. Jawbone denies that Samsung is entitled to such
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`a declaratory judgment.
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`91.
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`Jawbone denies that Samsung is entitled to any relief and denies any remaining
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`allegations contained in paragraph 91 of the Counterclaims.
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`DEMAND FOR JURY TRIAL
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`Jawbone demands a trial by jury for issues so triable.
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`PRAYER FOR RELIEF
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`Jawbone respectfully asks the Court to grant the following relief:
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`A.
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`B.
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`Dismissing the Counterclaims in their entirety;
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`Entry of judgment declaring the ’091, ’072, ’058, ’080, ’357, ’543, and ’691 Patents
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`to be valid, enforceable, and infringed by Defendant;
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`11
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`C.
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`Awarding Jawbone its reasonable attorney fees and costs in defending this action;
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`and
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`D.
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`Granting Jawbone such other and further relief as the Court deems just and proper.
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`Dated: December 30, 2021
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`Respectfully submitted,
`
` /s/ Alfred R. Fabricant
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Samuel F. Baxter
`Texas State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
`
`ATTORNEYS FOR PLAINTIFF
`JAWBONE INNOVATIONS, LLC
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`12
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`Case 2:21-cv-00186-JRG-RSP Document 31 Filed 12/30/21 Page 13 of 13 PageID #: 485
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on December 30, 2021, all counsel of record who
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`are deemed to have consented to electronic service are being served with a copy of this document
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`via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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