`JCDECAUX NORTH AMERICA, INC. AND
`JCDECAUX NORTH AMERICA HOLDINGS INC.,
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`v.
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`Defendants.
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`Case 4:16-cv-00303-ALM Document 13 Filed 07/18/16 Page 1 of 10 PageID #: 239
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
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`T-REX PROPERTY AB,
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`Plaintiff,
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`CASE NO. 4:16-cv-303-ALM
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`JURY TRIAL DEMANDED
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`DEFENDANT JCDECAUX NORTH AMERICA, INC.’S
`ANSWER AND AFFIRMATIVE DEFENSES TO PLAINTIFF’S COMPLAINT
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`Defendant JCDecaux North America, Inc. (“JCDecaux”), by its attorneys of record,
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`responds to the allegations of the Complaint for Patent Infringement (“Complaint”) filed in this
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`action by Plaintiff T-Rex Property AB (“T-Rex” or “Plaintiff”) on May 9, 2016, as follows:
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`NATURE OF THE ACTION
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`1.
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`JCDecaux admits that the Complaint purports to state a claim for patent
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`infringement under the laws of the United States, and in particular 35 U.S.C. §§ 271, et seq.
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`JCDecaux denies all of the remaining allegations in Paragraph 1, including any allegation that
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`JCDecaux has infringed any asserted patent.
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`2.
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`JCDecaux lacks knowledge or information to form a belief as to the truth of the
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`allegations in Paragraph 2 and therefore denies the same.
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`3.
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`JCDecaux admits that JCDecaux North America, Inc. is a Delaware corporation
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`with an office located at 3 Park Avenue, 33 Floor, New York, NY 10016. JCDecaux also admits
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`that The Corporation Trust Company is a registered agent for JCDecaux North America, Inc.
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`NY 245948788v4
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`Case 4:16-cv-00303-ALM Document 13 Filed 07/18/16 Page 2 of 10 PageID #: 240
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`JCDecaux lacks knowledge or information to form a belief as to the truth of the remaining
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`allegations in Paragraph 3 and therefore denies the same.
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`4.
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`JCDecaux denies the allegations in Paragraph 4.
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`JURISDICTION AND VENUE
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`5.
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`At this time, JCDecaux does not contest this Court’s subject matter jurisdiction
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`over T-Rex’s claims.
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`6.
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`JCDecaux does not contest that the Court has personal jurisdiction over it.
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`JCDecaux denies the remaining allegations in Paragraph 6.
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`7.
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`JCDecaux does not contest that the Court has personal jurisdiction over it.
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`JCDecaux denies the remaining allegations in Paragraph 7.
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`8.
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`JCDecaux denies the allegations in Paragraph 8. JCDecaux incorporates by
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`reference its Motion to Transfer Venue filed contemporaneously with this Answer.
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`THE PATENTS-IN-SUIT
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`9.
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`JCDecaux incorporates by reference its responses to Paragraphs 1-8 as if fully
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`stated herein.
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`10.
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`JCDecaux admits that a copy of the ‘470 Patent, entitled “Digital Information
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`System,” appears to have been attached to the Complaint as Exhibit A. JCDecaux admits that
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`the face of the ‘470 Patent indicates that the United States Patent and Trademark Office issued
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`the ‘470 Patent on January 16, 2007. JCDecaux denies the remainder of the allegations in
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`Paragraph 10, including that the ‘470 Patent was duly and legally issued.
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`11.
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`JCDecaux admits that the face of the ‘470 Patent indicates that it is a reissue of
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`U.S. Patent No. 6,005,534. JCDecaux also admits that the face of the U.S. Patent No. 6,005,534
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`indicates that it claims priority to U.S. Provisional App. No. 60/017,403 and Swedish
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`NY 245948788v4
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`Case 4:16-cv-00303-ALM Document 13 Filed 07/18/16 Page 3 of 10 PageID #: 241
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`Application No. 9601603. JCDecaux lacks knowledge or information to form a belief as to the
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`truth of the remaining allegations in Paragraph 11 and therefore denies the same.
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`12.
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`JCDecaux admits that the quoted portions appear in the ’470 Patent but denies the
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`remainder of the allegations in Paragraph 12.
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`13.
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`14.
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`15.
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`16.
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`JCDecaux denies the allegations in Paragraph 13.
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`JCDecaux denies the allegations in Paragraph 14.
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`JCDecaux denies the allegations in Paragraph 15.
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`JCDecaux admits that a copy of the ‘334 Patent, entitled “Digital Information
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`System,” appears to have been attached to the Complaint as Exhibit B. JCDecaux admits that the
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`face of the ‘334 Patent indicates that the United States Patent and Trademark Office issued the
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`‘334 Patent on June 3, 2008. JCDecaux denies the remainder of the allegations in Paragraph 16,
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`including that the ‘334 Patent was duly and legally issued.
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`17.
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`JCDecaux admits that the quoted portions appear in the ’334 Patent but denies the
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`remainder of the allegations in Paragraph 17.
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`18.
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`19.
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`20.
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`21.
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`JCDecaux denies the allegations in Paragraph 18.
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`JCDecaux denies the allegations in Paragraph 19.
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`JCDecaux denies the allegations in Paragraph 20.
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`JCDecaux admits that a copy of the ‘603 Patent, entitled “System for Direct
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`Placement of Commercial Advertising, Public Service Announcements and Other Content on
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`Electronic Billboard Displays,” appears to have been attached to the Complaint as Exhibit C.
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`JCDecaux admits that the face of the ‘603 Patent indicates that the United States Patent and
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`Trademark Office issued the ‘603 Patent on August 6, 2002. JCDecaux denies the remainder of
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`the allegations of Paragraph 21, including that the ‘603 Patent was duly and legally issued.
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`NY 245948788v4
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`Case 4:16-cv-00303-ALM Document 13 Filed 07/18/16 Page 4 of 10 PageID #: 242
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`22.
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`JCDecaux admits that the quoted portions appear in the ’603 Patent but denies the
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`remainder of the allegations in Paragraph 22.
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`23.
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`JCDecaux admits that the quoted portions appear in the ’603 Patent but denies the
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`remainder of the allegations in Paragraph 23.
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`24.
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`JCDecaux admits that the quoted portions appear in the ’603 Patent but denies the
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`remainder of the allegations in Paragraph 24.
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`25.
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`JCDecaux admits that the quoted portions appear in the ’603 Patent but denies the
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`remainder of the allegations in Paragraph 25.
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`26.
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`JCDecaux lacks knowledge or information to form a belief as to the truth of the
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`allegations in Paragraph 26 and therefore denies the same.
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`COUNT I – ALLEGED INFRINGEMENT OF U.S. PATENT NO. RE39,470
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`27.
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`JCDecaux incorporates by reference its responses to Paragraphs 1-26 as if fully
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`stated herein.
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`28.
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`29.
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`30.
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`31.
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`32.
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`JCDecaux denies the allegations in Paragraph 28.
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`JCDecaux denies the allegations in Paragraph 29.
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`JCDecaux denies the allegations in Paragraph 30.
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`JCDecaux denies the allegations in Paragraph 31.
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`JCDecaux lacks knowledge or information to form a belief as to the truth of the
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`allegations in Paragraph 32 and therefore denies the same.
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`33.
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`34.
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`35.
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`JCDecaux denies the allegations in Paragraph 33.
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`JCDecaux denies the allegations in Paragraph 34.
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`JCDecaux denies the allegations in Paragraph 35.
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`NY 245948788v4
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`Case 4:16-cv-00303-ALM Document 13 Filed 07/18/16 Page 5 of 10 PageID #: 243
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`36.
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`JCDecaux admits that claim 25 of the ’470 Patent is worded differently than other
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`claims, including claim 26. JCDecaux denies the remainder of the allegations in Paragraph 36.
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`37.
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`38.
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`39.
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`40.
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`41.
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`JCDecaux denies the allegations in Paragraph 37.
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`JCDecaux denies the allegations in Paragraph 38.
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`JCDecaux denies the allegations in Paragraph 39.
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`JCDecaux denies the allegations in Paragraph 40.
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`JCDecaux lacks knowledge or information to form a belief as to the truth of the
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`allegations in Paragraph 41 and therefore denies those allegations.
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`42.
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`43.
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`44.
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`JCDecaux denies the allegations in Paragraph 42.
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`JCDecaux denies the allegations in Paragraph 43.
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`JCDecaux denies the allegations in Paragraph 44.
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`COUNT II – ALLEGED INFRINGEMENT OF U.S. PATENT NO. 7,382,334
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`45.
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`JCDecaux incorporates by reference its responses to Paragraphs 1-44 as if fully
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`stated herein.
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`46.
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`47.
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`48.
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`49.
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`50.
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`51.
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`52.
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`53.
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`JCDecaux denies the allegations in Paragraph 46.
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`JCDecaux denies the allegations in Paragraph 47.
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`JCDecaux denies the allegations in Paragraph 48.
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`JCDecaux denies the allegations in Paragraph 49.
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`JCDecaux denies the allegations in Paragraph 50.
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`JCDecaux denies the allegations in Paragraph 51.
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`JCDecaux denies the allegations in Paragraph 52.
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`JCDecaux admits that claim 22 of the ’334 Patent is worded differently than other
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`claims, including claim 32. JCDecaux denies the remainder of the allegations in Paragraph 53.
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`NY 245948788v4
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`Case 4:16-cv-00303-ALM Document 13 Filed 07/18/16 Page 6 of 10 PageID #: 244
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`54.
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`55.
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`56.
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`57.
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`JCDecaux denies the allegations in Paragraph 54.
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`JCDecaux denies the allegations in Paragraph 55.
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`JCDecaux denies the allegations in Paragraph 56.
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`JCDecaux admits that claim 32 of the ’334 Patent is worded differently than the
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`claims of the ’470 Patent. JCDecaux denies the allegations in Paragraph 57.
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`58.
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`JCDecaux lacks knowledge or information to form a belief as to the truth of the
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`allegations in Paragraph 58 and therefore denies the same.
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`59.
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`60.
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`61.
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`JCDecaux denies the allegations in Paragraph 59.
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`JCDecaux denies the allegations in Paragraph 60.
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`JCDecaux denies the allegations in Paragraph 61.
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`COUNT III – ALLEGED INFRINGEMENT OF U.S. PATENT NO. 6,430,603
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`62.
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`JCDecaux incorporates by reference its responses to Paragraphs 1-61 as if fully
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`stated herein.
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`63.
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`64.
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`65.
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`66.
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`67.
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`68.
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`JCDecaux denies the allegations in Paragraph 63.
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`JCDecaux denies the allegations in Paragraph 64.
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`JCDecaux denies the allegations in Paragraph 65.
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`JCDecaux denies the allegations in Paragraph 66.
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`JCDecaux denies the allegations in Paragraph 67.
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`JCDecaux admits that claim 42 of the ’603 Patent is worded differently than the
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`claims of the ’334 Patent and the ’470 Patent. JCDecaux denies the allegations in Paragraph 68.
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`69.
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`70.
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`71.
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`JCDecaux denies the allegations in Paragraph 69.
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`JCDecaux denies the allegations in Paragraph 70.
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`JCDecaux denies the allegations in Paragraph 71.
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`NY 245948788v4
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`Case 4:16-cv-00303-ALM Document 13 Filed 07/18/16 Page 7 of 10 PageID #: 245
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`72.
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`JCDecaux denies the allegations in Paragraph 72.
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`JURY DEMAND
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`JCDecaux admits that T-Rex has requested a trial by jury.
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`ANSWER TO PRAYER FOR RELIEF
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`JCDecaux incorporates by reference its responses to Paragraphs 1-72 of the Complaint
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`and denies that T-Rex is entitled to any relief requested in Paragraphs (A)-(E) of T-Rex’s Prayer
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`for Relief.
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`DEFENSES
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`Pursuant to Federal Rule of Civil Procedure 8(c), JCDecaux asserts the following
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`defenses to the causes of action asserted in the Complaint, undertaking to prove only those
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`defenses on which it bears the burden of proof under the applicable law:
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`FIRST DEFENSE
`(No Infringement)
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`1.
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`JCDecaux has not and does not infringe, willfully or otherwise, any valid and
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`enforceable claim of the ‘470, ‘334 or ‘603 Patents, either literally or under the doctrine of
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`equivalents.
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`SECOND DEFENSE
`(Invalidity, Unenforceability)
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`2.
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`The ‘470, ‘334 and ‘603 Patents, and each claim thereof, are invalid and/or
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`unenforceable for failing to comply with one or more of the requirements of the Patent Act, 35
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`U.S.C. § 1, et seq., including, but not limited to, 35 U.S.C. §§ 101, 102, 103, 112, and/or 282.
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`For example, and without limitation, the claims of the patents are drawn to patent ineligible
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`subject matter and are therefore invalid under 35 U.S.C. § 101.
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`NY 245948788v4
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`Case 4:16-cv-00303-ALM Document 13 Filed 07/18/16 Page 8 of 10 PageID #: 246
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`3.
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`The ‘470, ‘334 and ‘603 Patents are unenforceable because T-Rex has misused
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`these patents by attempting to enforce them despite knowing that they are invalid and/or not
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`infringed.
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`THIRD DEFENSE
`(Notice, Damages, and Costs)
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`4.
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`Pursuant to 35 U.S.C. § 286, any recovery by T-Rex is limited to any alleged
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`infringement that occurred no more than six years prior to the filing of its Complaint against
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`JCDecaux.
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`5.
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`To the extent T-Rex failed to comply with the notice provisions of 35 U.S.C. §
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`287, T-Rex may not recover damages for alleged infringement of the ‘470, ‘334 and ‘603 Patents
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`committed prior to the filing of its Complaint against JCDecaux.
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`6.
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`T-Rex is barred from recovering costs in connection with this action under 35
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`U.S.C. § 288.
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`FOURTH DEFENSE
`(Failure to State a Claim)
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`7.
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`The Complaint fails to state a claim against JCDecaux upon which relief can be
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`granted, including without limitation because all of the claims in the ‘470, ‘334 and ‘603 Patents
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`are invalid under 35 U.S.C. § 101 for being drawn to unpatentable subject matter.
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`FIFTH DEFENSE
`(Not an Exceptional Case)
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`8.
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`T-Rex cannot prove that this is an exceptional case justifying an award of attorney
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`fees against JCDecaux pursuant to 35 U.S.C. § 285.
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`NY 245948788v4
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`Case 4:16-cv-00303-ALM Document 13 Filed 07/18/16 Page 9 of 10 PageID #: 247
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`SIXTH DEFENSE
`(No Injunctive Relief)
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`9.
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`T-Rex is not entitled to injunctive relief because, among other reasons, any
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`alleged injury to T-Rex is not immediate or irreparable, and T-Rex has an adequate remedy at
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`law.
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`SEVENTH DEFENSE
`(Equitable Defenses)
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`10.
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`T-Rex’s claims are barred in whole or in part by waiver, laches, and equitable
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`estoppel.
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`11.
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`T-Rex’s claims and/or the relief sought in the Complaint are barred by the
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`doctrine of unclean hands.
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`Dated: July 18, 2016
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`Respectfully submitted,
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`GREENBERG TRAURIG, LLP
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`/s/ Amit M. Mahtani
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`Scott J. Bornstein
`Joshua L. Raskin
`Amit M. Mahtani
`MetLife Building
`200 Park Avenue
`New York, NY 10166
`Telephone: 212.801.9200
`Facsimile: 212.801.6400
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`Mary-Olga Lovett
`1000 Louisiana Street Suite 1700
`Houston, TX 77002
`Telephone: 713.374.3500
`Facsimile: 713.374.3505
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`COUNSEL FOR DEFENDANT
`JCDECAUX NORTH AMERICA,
`INC.
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`NY 245948788v4
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`Case 4:16-cv-00303-ALM Document 13 Filed 07/18/16 Page 10 of 10 PageID #: 248
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who are deemed to have consented to electronic
`service are being served with a copy of this document via the Court’s CM/ECF system per Local
`Rule CV-5(a) on this 18th day of July, 2016. Any other counsel of record will be served by
`facsimile transmission and/or electronic mail.
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`/s/ Amit M. Mahtani
` Amit M. Mahtani
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`NY 245948788v4
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