Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 1 of 46 PageID #: 640
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
` MARSHALL DIVISION
`
`
`JAWBONE INNOVATIONS, LLC,
`
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`
`Defendants.
`
`CASE NO. 2:21-cv-00186-JRG
`
`JURY TRIAL DEMANDED
`
`
`
`DEFENDANTS SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.’S FIRST AMENDED ANSWER, DEFENSES, AND
`COUNTERCLAIMS TO JAWBONE INNOVATIONS, LLC’S
`FIRST AMENDED COMPLAINT
`
`Defendants Samsung Electronics Co., Ltd. (“SEC”) and Samsung Electronics America,
`
`Inc. (“SEA”) (collectively, “Samsung”), through their counsel, hereby respond to the First
`
`Amended Complaint for Patent Infringement (“FAC”) of Plaintiff Jawbone Innovations, LLC
`
`(“Jawbone” or “Plaintiff”). Samsung denies the allegations and characterizations in the FAC
`
`unless expressly admitted in the following paragraphs. Samsung’s specific responses to the
`
`numbered allegations of the FAC are in the below numbered paragraphs.
`
`THE PARTIES
`
`1.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 1 of the FAC and therefore denies them.
`
`2.
`
`Samsung admits that SEC is a corporation organized and existing under the laws of
`
`the Republic of Korea with its headquarters at 129 Samsung-Ro, Yeongtong-Gu, Suwon,
`
`
`
`1
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`

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`Gyeonggi-Do, Korea. Except as expressly admitted, Samsung denies the allegations in paragraph
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`2 of the FAC.
`
`3.
`
`Samsung admits SEA is a New York corporation with a principal place of business
`
`at 85 Challenger Road, Ridgefield Park, New Jersey 07660. Samsung admits that the website
`
`https://news.samsung.com/us/samsung-electronics-america-open-flagship-north-texas-campus/
`
`states that SEA “will be relocating their North Texas-based teams from their Richardson and Plano
`
`facilities to Legacy Central in Plano” and that “Occupancy will begin in the first quarter of 2019.”
`
`Samsung admits that SEA may be served with process through its registered agent CT Corporation
`
`System, 1999 Bryan Street, Suite 900, Dallas, Texas 75201-3136. Except as expressly admitted,
`
`Samsung denies the allegations in paragraph 3 of the FAC.
`
`4.
`
`Samsung admits that certain Samsung products are sold at Best Buy, 422 West TX-
`
`281 Loop, Suite 100, Longview, Texas 75605; AT&T Store, 1712 East Grand Avenue, Marshall,
`
`Texas 75670; Sprint Store, 1806 East End Boulevard North, Suite 100, Marshall, Texas 75670; T-
`
`Mobile, 900 East End Boulevard North, Suite 100, Marshall, Texas 75670; Russell Cellular, 1111
`
`East Grand Avenue, Marshall, Texas 75670; Victra, 1006 East End Boulevard, Marshall, Texas
`
`75670; and Cricket Wireless retailer, 120 East End Boulevard South, Marshall, Texas 75670.
`
`Except as expressly admitted, Samsung denies the allegations in paragraph 4 of the FAC.
`
`JURISDICTION AND VENUE
`
`5.
`
`Samsung admits that this is an action for patent infringement arising under the
`
`patent laws of the United States, 35 U.S.C. §§ 1, et seq. Samsung admits that this Court has subject
`
`matter jurisdiction over the allegations as pleaded under 28 U.S.C. §§ 1331, 1332, 1338(a), and
`
`1367. Except as expressly admitted, Samsung denies the allegations in paragraph 5 of the FAC.
`
`
`
`2
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`

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`6.
`
`Samsung admits, for the purposes of this action only, that this Court may exercise
`
`personal jurisdiction over SEC and SEA. Except as expressly admitted, Samsung denies the
`
`allegations in paragraph 6 of the FAC.
`
`7.
`
`Samsung admits, for the purposes of this action only, that venue is proper for SEC
`
`and SEA. Samsung denies that this venue is convenient or in the interests of justice under 28
`
`U.S.C. § 1404(a). Except as expressly admitted, Samsung denies the allegations in paragraph 7 of
`
`the FAC.
`
`FACTUAL BACKGROUND
`
`8.
`
`Samsung admits that, according to the face of United States Patent No. 8,019,091
`
`(“’091 Patent”), the ’091 Patent issued on September 31, 2011 and is titled “Voice Activity
`
`Detector (VAD)-Based Multiple-Microphone Acoustic Noise Suppression.” Samsung admits that
`
`Exhibit A purports to be a copy of the ’091 Patent. Except as expressly admitted, Samsung denies
`
`the allegations in paragraph 8 of the FAC.
`
`9.
`
`Samsung admits that, according to the face of United States Patent No. 8,280,072
`
`(“’072 Patent”), the ’072 Patent issued on October 2, 2012 and is titled “Microphone Array with
`
`Rear Venting.” Samsung admits that Exhibit B purports to be a copy of the ’072 Patent. Except
`
`as expressly admitted, Samsung denies the allegations in paragraph 9 of the FAC.
`
`10.
`
`Samsung admits that, according to the face of United States Patent No. 7,246,058
`
`(the “’058 Patent”), the ’058 Patent issued on July 17, 2007 and is titled “Detecting Voiced and
`
`Unvoiced Speech Using Both Acoustic and Nonacoustic Sensors.” Samsung admits that Exhibit C
`
`purports to be a copy of the ’058 Patent. Except as expressly admitted, Samsung denies the
`
`allegations in paragraph 10 of the FAC.
`
`11.
`
`Samsung admits that, according to the face of United States Patent No. 10,779,080
`
`(the “’080 Patent”), the ’080 Patent issued on September 15, 2020 and is titled “Dual
`
`
`
`3
`
`

`

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`Omnidirectional Microphone Array.” Samsung admits that Exhibit D purports to be a copy of the
`
`’080 Patent. Except as expressly admitted, Samsung denies the allegations in paragraph 11 of the
`
`FAC.
`
`12.
`
`Samsung admits that, according to the face of United States Patent No. 11,122,357
`
`(the “’357 Patent”), the ’357 Patent issued on September 14, 2021 and is titled “Forming Virtual
`
`Microphone Arrays Using Dual Omnidirectional Microphone Array (DOMA).” Samsung admits
`
`that Exhibit E purports to be a copy of the ’357 Patent. Except as expressly admitted, Samsung
`
`denies the allegations in paragraph 12 of the FAC.
`
`13.
`
`Samsung admits that, according to the face of United States Patent No. 8,467,543
`
`(the “’543 Patent”), the ’543 Patent issued on June 18, 2013 and is titled “Microphone and Voice
`
`Activity Detection (VAD) Configurations For Use with Communications Systems.” Samsung
`
`admits that Exhibit F purports to be a copy of the ’543 Patent. Except as expressly admitted,
`
`Samsung denies the allegations in paragraph 13 of the FAC.
`
`14.
`
`Samsung admits that, according to the face of United States Patent No. 8,503,691
`
`(the “’691 Patent”), the ’691 Patent issued on August 6, 2013 and is titled “Virtual Microphone
`
`Arrays Using Dual Omnidirectional Microphone Array (DOMA).” Samsung admits that
`
`Exhibit G purports to be a copy of the ’691 Patent. Except as expressly admitted, Samsung denies
`
`the allegations in paragraph 14 of the FAC.
`
`15.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations contained in paragraph 15 of the FAC and, therefore, denies them.
`
`16.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations contained in paragraph 16 of the FAC and, therefore, denies them.
`
`
`
`4
`
`

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`17.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations contained in paragraph 17 of the FAC and, therefore, denies them.
`
`18.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations contained in paragraph 18 of the FAC and, therefore, denies them.
`
`19.
`
`Samsung admits that the websites https://www.glpi.com.br/en/apple-google-and-
`
`fitbit-touted-to-acquire-jawbone-patents/ and http://patentvue.com/2017/07/11/jawbone-patents-
`
`could-be-leveraged-by-a-competitor/ state, “A host of technology companies including Apple,
`
`Samsung, Google, LG and Fitbit have been identified as potential buyers of Jawbone’s US
`
`patents.” Samsung admits that the website http://patentvue.com/2017/07/11/jawbone-patents-
`
`could-be-leveraged-by-a-competitor/ states, “With respect to potential acquirers, the major
`
`wearable device and smartwatch manufacturers, Apple, Google, Samsung, LG, and of course
`
`FitBit may be natural candidates.” Samsung’s investigation is ongoing, and Samsung is without
`
`knowledge or information sufficient to form a belief as to the truth of any remaining allegations
`
`contained in paragraph 19 of the FAC and, therefore, denies them.
`
`INFRINGEMENT ALLEGATIONS
`
`20.
`
`Samsung admits that, according to the face of ’091 Patent, Gregory C. Burnett and
`
`Eric F. Breitfeller are the named inventors. Samsung admits that, according to the face of the ’058
`
`Patent, Gregory C Burnett is the named inventor. Except as expressly admitted, Samsung denies
`
`the allegations in paragraph 20 of the FAC.
`
`21.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations contained in paragraph 21 of the FAC and, therefore, denies them.
`
`22.
`
`Samsung
`
`admits
`
`that
`
`the website https://www.samsung.com/us/mobile
`
`/audio/galaxy-buds-pro/ states “Voice Detect instantly switches from ANC to Ambient sound.”
`
`Except as expressly admitted, Samsung denies the allegations in paragraph 22 of the FAC.
`
`
`
`5
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 6 of 46 PageID #: 645
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`23.
`
`Samsung admits that, according to the face of the ’072 Patent, Gregory C. Burnett
`
`is the named inventor. Except as expressly admitted, Samsung denies the allegations in paragraph
`
`23 of the FAC.
`
`24.
`
`Samsung
`
`admits
`
`that
`
`the
`
`website
`
`https://www.samsung.com/
`
`us/app/mobile/audio/galaxy-buds-pro/ states, “[t]he microphones use beamforming technology to
`
`pick up your voice—so you can confidently contribute in meetings without worrying about
`
`background noise.” Except as expressly admitted, Samsung denies the allegations in paragraph
`
`24 of the FAC.
`
`25.
`
`Samsung admits that, according to the face of the ’080 Patent, Gregory C. Burnett
`
`is the named inventor. Except as expressly admitted, Samsung denies the allegations in paragraph
`
`25 of the FAC.
`
`26.
`
`Denied
`
`27.
`
`Samsung admits that, according to the face of the ’357 Patent, Gregory C. Burnett
`
`is the named inventor, and, according to the face of the ’691 Patent, Gregory C. Burnett is the
`
`named inventor. Except as expressly admitted, Samsung denies the allegations in paragraph 27 of
`
`the FAC.
`
`28.
`
`Denied.
`
`29.
`
`Samsung admits that, according to the face of the ’543 Patent, Gregory C. Burnett,
`
`Nicholas Petit, Alexander M. Asseily, and Andrew E. Einaudi are the named inventors. Except as
`
`expressly admitted, Samsung denies the allegations in paragraph 29 of the FAC.
`
`30.
`
`Samsung
`
`admits
`
`that
`
`the
`
`website
`
`https://www.samsung.com/
`
`us/app/mobile/audio/galaxy-buds-pro/ states, “[t]he microphones use beamforming technology to
`
`pick up your voice—so you can confidently contribute in meetings without worrying about
`
`
`
`6
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 7 of 46 PageID #: 646
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`background noise.” Except as expressly admitted, Samsung denies the allegations in paragraph
`
`30 of the FAC.
`
`31.
`
`Denied
`
`32.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations contained in paragraph 32 of the FAC and, therefore, denies them.
`
`COUNT I
`(Infringement of the ’091 Patent)
`
`33.
`
` Samsung incorporates by reference its responses contained in the foregoing
`
`paragraphs, as if fully set forth herein.
`
`34.
`
`Samsung admits that Jawbone has not licensed Samsung to make, use, offer for
`
`sale, sell, or import any product that embodies the inventions of the ’091 Patent. Except as
`
`expressly admitted, Samsung denies the allegations in paragraph 34 of the FAC.
`
`35.
`
`Denied.
`
`36.
`
`Denied.
`
`37.
`
`Samsung
`
`admits
`
`that
`
`the
`
`website
`
`https://www.samsung.com/us
`
`/app/mobile/audio/galaxy-buds-pro/#popNoiseFreeCall states “use[s] beamforming technology to
`
`pick up your voice – so that you can contribute in meetings without worrying about background
`
`noise.” Except as expressly admitted, Samsung denies the allegations in paragraph 37 of the FAC.
`
`38.
`
`Denied.
`
`39.
`
`Denied.
`
`40.
`
`Samsung admits that the Samsung Galaxy Buds Pro includes a BCM 43015 chip.
`
`Except as expressly admitted, Samsung denies the allegations in paragraph 40 of the FAC.
`
`41.
`
`Denied.
`
`
`
`7
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 8 of 46 PageID #: 647
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`42.
`
`Samsung admits
`
`that
`
`the website https://www.samsung.com/us/app/mobile
`
`/audio/galaxy-buds-pro/ states “Voice Detect instantly switches from ANC to Ambient sound.”
`
`Except as expressly admitted, Samsung denies the allegations in paragraph 42 of the FAC.
`
`43.
`
`Denied.
`
`44.
`
`Denied.
`
`45.
`
`Denied.
`
`46.
`
`Denied.
`
`47.
`
`Denied.
`
`48.
`
`Denied.
`
`COUNT II
`(Infringement of the ’072 Patent)
`
`49.
`
` Samsung incorporates by reference its responses contained in the foregoing
`
`paragraphs, as if fully set forth herein.
`
`50.
`
`Samsung admits that Jawbone has not licensed Samsung to make, use, offer for
`
`sale, sell, or import any product that embodies the inventions of the ’072 Patent. Except as
`
`expressly admitted, Samsung denies the allegations in paragraph 50 of the FAC.
`
`51.
`
`Denied.
`
`52.
`
`Denied.
`
`53.
`
`Denied.
`
`54.
`
`Denied.
`
`55.
`
`Denied.
`
`56.
`
`Denied.
`
`57.
`
`Denied.
`
`58.
`
`Denied.
`
`
`
`8
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 9 of 46 PageID #: 648
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`59.
`
`Denied.
`
`60.
`
`Denied.
`
`61.
`
`Denied.
`
`COUNT III
`(Infringement of the ’058 Patent)
`
`62.
`
`Samsung incorporates by reference its responses contained in the foregoing
`
`paragraphs, as if fully set forth herein.
`
`63.
`
`Samsung admits that Jawbone has not licensed Samsung to make, use, offer for
`
`sale, sell, or import any product that embodies the inventions of the ’058 Patent. Except as
`
`expressly admitted, Samsung denies the allegations in paragraph 62 of the FAC.
`
`64.
`
`Denied.
`
`65.
`
`Denied.
`
`66.
`
`Denied.
`
`67.
`
`Denied.
`
`68.
`
`Samsung admits that the Galaxy Buds Pro includes a BCM 43015 chip and that the
`
`Galaxy S21 includes a Qualcomm Snapdragon 888 SoC chip. Except as expressly admitted,
`
`Samsung denies the allegations in paragraph 67 of the FAC.
`
`69.
`
`Denied.
`
`70.
`
`Denied.
`
`71.
`
`Denied.
`
`72.
`
`Denied.
`
`73.
`
`Denied.
`
`74.
`
`Denied.
`
`75.
`
`Denied.
`
`
`
`9
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 10 of 46 PageID #: 649
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`76.
`
`Denied.
`
`77.
`
`Denied.
`
`78.
`
`Denied.
`
`COUNT IV
`(Infringement of the ’080 Patent)
`
`79.
`
`Samsung incorporates by reference its responses contained in the foregoing
`
`paragraphs, as if fully set forth herein.
`
`80.
`
`Samsung admits that Jawbone has not licensed Samsung to make, use, offer for
`
`sale, sell, or import any product that embodies the inventions of the ’080 Patent. Except as
`
`expressly admitted, Samsung denies the allegations in paragraph 80 of the FAC.
`
`81.
`
`Denied.
`
`82.
`
`Denied.
`
`83.
`
`Denied.
`
`84.
`
`Samsung admits that the Galaxy Buds Pro includes a BCM 43015 chip and that the
`
`Galaxy S21 includes a Qualcomm Snapdragon 888 SoC chip. Except as expressly admitted,
`
`Samsung denies the allegations in paragraph 84 of the FAC.
`
`85.
`
`Denied.
`
`86.
`
`Denied.
`
`87.
`
`Denied.
`
`88.
`
`Denied.
`
`89.
`
`Denied.
`
`90.
`
`Denied.
`
`91.
`
`Denied.
`
`92.
`
`Denied.
`
`
`
`10
`
`

`

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`93.
`
`Denied.
`
`94.
`
`Denied.
`
`COUNT V
`(Infringement of the ’357 Patent)
`
`95.
`
`Samsung incorporates by reference its responses contained in the foregoing
`
`paragraphs, as if fully set forth herein.
`
`96.
`
`Samsung admits that Jawbone has not licensed Samsung to make, use, offer for
`
`sale, sell, or import any product that embodies the inventions of the ’357 Patent. Except as
`
`expressly admitted, Samsung denies the allegations in paragraph 96 of the FAC.
`
`97.
`
`Denied.
`
`98.
`
`Denied.
`
`99.
`
`Denied.
`
`100. Denied.
`
`101. Denied.
`
`102. Samsung admits that the Galaxy Buds Pro includes a BCM 43015 chip. Except as
`
`expressly admitted, Samsung denies the allegations in paragraph 102 of the FAC.
`
`103. Denied.
`
`104. Denied.
`
`105. Denied.
`
`106. Denied.
`
`107. Denied.
`
`108. Denied.
`
`
`
`11
`
`

`

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`COUNT VI
`(Infringement of the ’543 Patent)
`
`109. Samsung incorporates by reference its responses contained in the foregoing
`
`paragraphs, as if fully set forth herein.
`
`110. Samsung admits that Jawbone has not licensed Samsung to make, use, offer for
`
`sale, sell, or import any product that embodies the inventions of the ’543 Patent. Except as
`
`expressly admitted, Samsung denies the allegations in paragraph 110 of the FAC.
`
`111. Denied.
`
`112. Denied.
`
`113. Denied.
`
`114. Denied.
`
`115. Denied.
`
`116. Denied.
`
`117. Denied.
`
`118. Denied.
`
`119. Denied.
`
`120. Denied.
`
`121. Denied.
`
`122. Denied.
`
`123. Denied.
`
`124. Denied.
`
`125. Denied.
`
`
`
`12
`
`

`

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`COUNT VII
`(Infringement of the ’691 Patent)
`
`126. Samsung incorporates by reference its responses contained in the foregoing
`
`paragraphs, as if fully set forth herein.
`
`127. Samsung admits that Jawbone has not licensed Samsung to make, use, offer for
`
`sale, sell, or import any product that embodies the inventions of the ’691 Patent. Except as
`
`expressly admitted, Samsung denies the allegations in paragraph 127 of the FAC.
`
`128. Denied.
`
`129. Denied.
`
`130. Denied.
`
`131. Denied.
`
`132. Denied.
`
`133. Denied.
`
`134. Denied.
`
`135. Denied.
`
`136. Denied.
`
`137. Denied.
`
`138. Denied.
`
`139. Denied.
`
`140. Denied.
`
`141. Denied.
`
`RESPONSE TO JURY DEMAND
`
`Plaintiff’s demand for a jury trial does not require a response by Samsung. Samsung also
`
`requests a jury trial of all issues triable to a jury in this action.
`
`
`
`13
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`

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`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 14 of 46 PageID #: 653
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`PRAYER FOR RELIEF
`
`Samsung denies that Plaintiff is entitled to any of the requested relief and denies any and
`
`all allegations contained within the Prayer for Relief of the FAC.
`
`AFFIRMATIVE AND OTHER DEFENSES
`
`Subject to the responses above, Samsung contends and asserts the following affirmative
`
`and other defenses in response to the allegations in the FAC. By asserting these affirmative
`
`defenses, Samsung does not admit that it bears the burden of proof on any issue and does not accept
`
`any burden it would not otherwise bear. In addition to the affirmative and other defenses described
`
`below, and subject to the responses above, Samsung intends to conduct discovery and specifically
`
`reserves all rights to assert additional affirmative and other defenses, including inequitable
`
`conduct, consistent with the facts that become known through the course of discovery or otherwise.
`
`FIRST DEFENSE
`NON-INFRINGEMENT OF THE ’091 PATENT
`
`Samsung has not infringed and does not directly infringe (either literally or under the
`
`doctrine of equivalents) any valid and enforceable claim of the ’091 Patent under any theory of
`
`infringement.
`
`SECOND DEFENSE
`NON-INFRINGEMENT OF THE ’072 PATENT
`
`Samsung has not infringed and does not directly infringe (either literally or under the
`
`doctrine of equivalents) any valid and enforceable claim of the ’072 Patent under any theory of
`
`infringement.
`
`
`
`14
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 15 of 46 PageID #: 654
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`THIRD DEFENSE
`NON-INFRINGEMENT OF THE ’058 PATENT
`
`Samsung has not infringed and does not directly infringe (either literally or under the
`
`doctrine of equivalents) any valid and enforceable claim of the ’058 Patent under any theory of
`
`infringement.
`
`FOURTH DEFENSE
`NON-INFRINGEMENT OF THE ’080 PATENT
`
`Samsung has not infringed and does not directly infringe (either literally or under the
`
`doctrine of equivalents) any valid and enforceable claim of the ’080 Patent under any theory of
`
`infringement.
`
`FIFTH DEFENSE
`NON-INFRINGEMENT OF THE ’357 PATENT
`
`Samsung has not infringed and does not directly infringe (either literally or under the
`
`doctrine of equivalents) any valid and enforceable claim of the ’357 Patent under any theory of
`
`infringement.
`
`SIXTH DEFENSE
`NON-INFRINGEMENT OF THE ’543 PATENT
`
`Samsung has not infringed and does not directly infringe (either literally or under the
`
`doctrine of equivalents) any valid and enforceable claim of the ’543 Patent under any theory of
`
`infringement.
`
`SEVENTH DEFENSE
`NON-INFRINGEMENT OF THE ’691 PATENT
`
`Samsung has not infringed and does not directly infringe (either literally or under the
`
`doctrine of equivalents) any valid and enforceable claim of the ’691 Patent under any theory of
`
`infringement.
`
`
`
`15
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`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 16 of 46 PageID #: 655
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`EIGHTH DEFENSE
`INVALIDITY OF THE ‘091 PATENT
`
`The ’091 Patent is invalid because the alleged invention(s) therein fail to satisfy the
`
`conditions for patentability specified in one or more of 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`
`
`NINTH DEFENSE
`INVALIDITY OF THE ’072 PATENT
`
`The ’072 Patent is invalid because the alleged invention(s) therein fail to satisfy the
`
`conditions for patentability specified in one or more of 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`TENTH DEFENSE
`INVALIDITY OF THE ’058 PATENT
`
`The ’058 Patent is invalid because the alleged invention(s) therein fail to satisfy the
`
`conditions for patentability specified in one or more of 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`ELEVENTH DEFENSE
`INVALIDITY OF THE ’080 PATENT
`
`The ’080 Patent is invalid because the alleged invention(s) therein fail to satisfy the
`
`conditions for patentability specified in one or more of 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`TWELFTH DEFENSE
`INVALIDITY OF THE ’357 PATENT
`
`The ’357 Patent is invalid because the alleged invention(s) therein fail to satisfy the
`
`conditions for patentability specified in one or more of 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`THIRTEENTH DEFENSE
`INVALIDITY OF THE ’543 PATENT
`
`The ’543 Patent is invalid because the alleged invention(s) therein fail to satisfy the
`
`conditions for patentability specified in one or more of 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`FOURTEENTH DEFENSE
`INVALIDITY OF THE ’691 PATENT
`
`
`
`16
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`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 17 of 46 PageID #: 656
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`The ’691 Patent is invalid because the alleged invention(s) therein fail to satisfy the
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`conditions for patentability specified in one or more of 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`FIFTEENTH DEFENSE
`LIMITATION OF LIABILITY FOR INDIRECT INFRINGEMENT
`
`As noted in Samsung’s First through Seventh Affirmative Defenses, Samsung has not
`
`infringed and does not directly infringe any valid and enforceable claim of the ’091, ’072, ’058,
`
`’080, ’357, ’543, or ’691 Patents.
`
`Additionally, to the extent that Plaintiff asserts that Samsung indirectly infringes the ’091,
`
`’072, ’058, ’080, ’357, ’543, or ’691 Patents, either by contributory infringement or inducement
`
`of infringement, Samsung is not liable to Plaintiff for the acts alleged to have been performed
`
`before Samsung had knowledge of the claims of the ’091, ’072, ’058, ’080, ’357, ’543, or ’691
`
`Patents and/or could form the intent to cause infringement.
`
`SIXTEENTH DEFENSE
`PROSECUTION HISTORY ESTOPPEL
`
`By reason of the prior art and/or statements and representations made to the U.S. Patent
`
`and Trademark Office during prosecution of the applications that led to the issuance of the ’091,
`
`’072, ’058, ’080, ’357, ’543, or ’691 Patents, the claims are so limited that they cannot properly
`
`be construed as covering any activity or product of Samsung.
`
`SEVENTEENTH DEFENSE
`TIME LIMIT ON DAMAGES
`
`Plaintiff is barred in whole or in part from recovering damages under 35 U.S.C. § 286 for
`
`any allegedly infringing actions occurring more than six years prior to the date of the filing of its
`
`original complaint as there is affirmatively no law that otherwise provides for Plaintiff to recover
`
`damages prior to this date.
`
`
`
`17
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`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 18 of 46 PageID #: 657
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`EIGHTEENTH DEFENSE
`LIMITATIONS ON DAMAGES, MARKING, & NOTICE
`
`Plaintiff is barred in whole or in part from recovering damages under 35 U.S.C. §§ 286 and
`
`287.
`
`NINETEENTH DEFENSE
`NO INJUNCTIVE RELIEF
`
`Plaintiff’s claims for injunctive relief are barred because there exists an adequate remedy
`
`at law for Plaintiff’s allegations and Plaintiff’s claims otherwise fail to meet the requirements for
`
`such relief.
`
`TWENTIETH DEFENSE
`NOT AN EXCEPTIONAL CASE
`
`Plaintiff is not entitled to a finding that this case is exceptional or to attorneys’ fees under
`
`35 U.S.C. § 285, or pursuant to this Court’s inherent power.
`
`TWENTY-FIRST DEFENSE
`EQUITABLE DEFENSES
`
`Plaintiff’s claims for relief are barred or limited in whole or in part by equitable defenses,
`
`including waiver, estoppel, implied license, and/or unclean hands.
`
`TWENTY-SECOND DEFENSE
`UNENFORCEABILITY OF THE ’357 PATENT
`
`Plaintiff’s claims of the ’357 patent are unenforceable due to inequitable conduct. Samsung
`
`incorporates by reference the allegations contained in paragraphs 92-109 of its Counterclaims
`
`below, as if fully set forth herein.
`
`
`
`18
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`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 19 of 46 PageID #: 658
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`TWENTY-THIRD DEFENSE
`UNENFORCEABILITY OF THE ’080 PATENT
`
`Plaintiff’s claims of the ’080 patent are unenforceable due to inequitable conduct. Samsung
`
`incorporates by reference the allegations contained in paragraphs 110-123 of its Counterclaims
`
`below, as if fully set forth herein.
`
`TWENTY-FOURTH DEFENSE
`UNENFORCEABILITY OF THE ’091, ’072, ’058, ’080, ’357, ’543, AND ’691 PATENTS
`
`Plaintiff’s claims of ’091, ’072, ’058, ’080, ’357, ’543, and ’691 Patents are unenforceable
`
`due to inequitable conduct. Samsung incorporates by reference the allegations contained in
`
`paragraphs 124-171 of its Counterclaims below, as if fully set forth herein.
`
`
`
`COUNTERCLAIMS
`
`Samsung Electronics Co. Ltd. (“SEC”) and Samsung Electronics America, Inc. (“SEA”)
`
`(collectively, “Samsung”), through their counsel, hereby assert the following Counterclaims
`
`against Plaintiff and Counterclaim Defendant Jawbone LLC (“Jawbone”):
`
`PARTIES
`
`1.
`
`SEC is a South Korean entity with its principal place of business at 129,
`
`Samsung-Ro, Yeongtong-Gu, Suwon, Gyeonggi-Do, Korea.
`
`2.
`
`SEA is a New York entity with its principal place of business at 85 Challenger
`
`Road, Ridgefield Park, New Jersey 07660.
`
`3.
`
`On information and belief, Jawbone is a limited liability company established and
`
`existing under the laws of the State of Texas, with its principal place of business located at 100
`
`West Houston Street, Marshall, Texas 75671.
`
`
`
`19
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`JURISDICTION AND VENUE
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`4.
`
` This is a claim for declaratory judgment of noninfringement and invalidity of U.S.
`
`Patent Nos. 8,019,091 (“the ʼ091 Patent”), 8,280,072 (“the ʼ072 Patent”), 7,246,058 (the “’058
`
`Patent”), 10,779,080 (the “’080 Patent”), 11,122,357 (the “’357 Patent”), 8,467,543 (the “’543
`
`Patent”), and 8,503,691 (the “’691 Patent”).
`
`5.
`
`This Court has jurisdiction over Samsung’s Declaratory Judgment claims pursuant
`
`to 28 U.S.C. §§ 2201 and 2202 and subject matter jurisdiction over patent infringement and validity
`
`pursuant to 28 U.S.C. §§ 1331, 1367, and 1338(a). An actual, substantial, and continuing
`
`justiciable controversy exists between Samsung and Jawbone based on Jawbone having filed its
`
`FAC alleging that Samsung has infringed the ’091, ’072, ’058, ’080, ’357, ’543, and ’691 Patents,
`
`with respect to which Samsung requires a declaration of its rights by this Court. Specifically, the
`
`controversy concerns the invalidity and non-infringement of the ’091, ’072, ’058, ’080, ’357, ’543,
`
`and ’691 Patents and the right of Jawbone to maintain suit for alleged infringement of the ’091,
`
`’072, ’058, ’080, ’357, ’543, and ’691 Patents.
`
`6.
`
`The Court has personal jurisdiction over Jawbone because, inter alia, Jawbone has
`
`submitted to the personal jurisdiction of this Court by bringing the present action through filing its
`
`FAC.
`
`7.
`
`Venue is proper in this District as to these Counterclaims pursuant to 28 U.S.C.
`
`§§ 1391(b)-(c) and 1400(b) because, inter alia, Jawbone has submitted to the venue of this Court
`
`by filing its FAC here. However, Samsung reserves the right to move to transfer venue in the
`
`underlying action to a more convenient judicial district irrespective of the allegations in these
`
`Counterclaims.
`
`
`
`20
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`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 21 of 46 PageID #: 660
`
`COUNT I
`NON-INFRINGEMENT OF THE ’091 PATENT
`
`8.
`
`Samsung restates and incorporates by reference the allegations contained in the
`
`foregoing paragraphs, as if fully set forth herein.
`
`9.
`
`Samsung does not infringe and has not infringed (whether directly, contributorily,
`
`or by inducement) literally or under the doctrine of equivalents any valid claim of the ’091 Patent,
`
`under any theory of infringement.
`
`10.
`
`An actual case or controversy exists between Samsung and Jawbone based on
`
`Jawbone having filed its FAC against Samsung alleging infringement of the ’091 Patent.
`
`11.
`
`Samsung has been injured and damaged by Jawbone filing its FAC asserting a
`
`patent that Samsung does not infringe.
`
`12.
`
`Samsung, therefore, seeks a declaration that it does not infringe and has not
`
`infringed (whether directly, contributorily, or by inducement) literally or under the doctrine of
`
`equivalents any valid and enforceable claim of the ’091 Patent.
`
`13.
`
`This is an exceptional case entitling Samsung to an award of its attorneys’ fees
`
`incurred in connection with the present action pursuant to 35 U.S.C. § 285.
`
`COUNT II
`NON-INFRINGEMENT OF THE ’072 PATENT
`
`14.
`
`Samsung restates and incorporates by reference the allegations contained in the
`
`foregoing paragraphs, as if fully set forth herein.
`
`15.
`
`Samsung does not infringe and has not infringed (whether directly, contributorily,
`
`or by inducement) literally or under the doctrine of equivalents any valid claim of the ’072 Patent,
`
`under any theory of infringement.
`
`16.
`
`An actual case or controversy exists between Samsung and Jawbone based on
`
`Jawbone having filed its FAC against Samsung alleging infringement of the ’072 Patent.
`
`
`
`21
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`

`

`Case 2:21-cv-00186-JRG-RSP Document 52 Filed 05/17/22 Page 22 of 46 PageID #: 661
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`17.
`
`Samsung has been injured and damaged by Jawbone filing its FAC asserting a
`
`patent that Samsung does not infringe.
`
`18.
`
`Samsung, therefore, seeks a declaration that it does not infringe and has not
`
`infringed (whether directly, contributorily, or by inducement) literally or under the doctrine of
`
`equivalents any valid and enforceable claim of the ’072 Patent.
`
`19.
`
`This is an exceptional case entitling Samsung to an award of its attorneys’ fees
`
`incurred in connection with the present action pursuant to 35 U.S.C. § 285.
`
`COUNT III
`NON-INFRINGEMENT OF THE ’058 PATENT
`
`20.
`
`Samsung restates and incorporates by reference the allegations contained in the
`
`foregoing paragraphs, as if fully set forth herein.
`
`21.
`
`Samsung does not infringe and has not infringed (whether directly, contributorily,
`
`or by inducement) literally or under the doctrine of equivalents any valid claim of the ’058 Patent,
`
`under any theory of infringement.
`
`22.
`
`An actual case or controversy exists between Samsung and Jawbone based on
`
`Jawbone having filed its FAC against Samsung alleging infringement of the ’058 Patent.
`
`23.
`
`Samsung has been injured and damaged by Jawbone filing its FAC asserting a
`
`patent that Samsung does not infringe.
`
`24.
`
`Samsung, therefore, seeks a declaration tha