throbber
Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 1 of 21 PageID #: 1528
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`
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`
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`CIVIL ACTION NO. 6:14-cv-982-KNM
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`CONSOLIDATED LEAD CASE
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` CIVIL ACTION NO. 6:14-cv-983-KNM
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`
` JURY TRIAL DEMANDED
`
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
`
` Plaintiff,
`
`v.
`
`LG ELECTRONICS, INC., LG
`ELECTRONICS U.S.A., INC., AT&T
`MOBILITY LLC, VERIZON
`COMMUNICATIONS, INC.,
`CELLCO PARTNERSHIP D/B/A
`VERIZON WIRELESS, SPRINT NEXTEL
`CORPORATION, SPRINT SOLUTIONS,
`INC., SPRINT SPECTRUM L.P., BOOST
`MOBILE LLC, T-MOBILE USA, INC., and
`T-MOBILE US, INC.
`
` Defendants
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
`
` Plaintiff,
`v.
`
`SONY MOBILE COMMUNICATIONS
`INC., SONY MOBILE
`COMMUNICATIONS (USA) INC.,
`AT&T MOBILITY LLC, VERIZON
`COMMUNICATIONS, INC.,
`CELLCO PARTNERSHIP D/B/A
`VERIZON WIRELESS,
`T-MOBILE USA, INC., and
`T-MOBILE US, INC.
`
` Defendants.
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`
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`1
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`

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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 2 of 21 PageID #: 1529
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`ANSWER AND COUNTERCLAIMS OF DEFENDANT
`SONY MOBILE COMMUNICATIONS (USA) INC.
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`Defendant Sony Mobile Communications (USA) Inc. (“Sony Mobile”) answers the First
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`Amended Complaint for Patent Infringement (Dkt. No. 29) (“Complaint”) of Plaintiff Cellular
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`Communications Equipment LLC (“CCE”) as follows.
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`THE PARTIES
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`1.
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`Sony Mobile lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of this paragraph, and therefore denies them.
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`2.
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`Sony Mobile Communications Inc. was dismissed from the instant case on June
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`24, 2015. (Dkt. No. 88). Sony Mobile admits that Sony Mobile Communications Inc. is a
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`Japanese corporation with a place of business in Tokyo, Japan. Sony Mobile denies the
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`remainder of the allegations set forth in this paragraph.
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`3.
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`Sony Mobile admits that it is a Delaware corporation with a place of business in
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`San Mateo, California. Sony Mobile admits that it may be served process through its agent,
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`Capitol Services, Inc., 1576 S. State St. Suite B, Dover, Delaware, 19901. For the purpose of
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`this action and without waiving any defense of lack of personal jurisdiction in connection with
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`any other cause of action or claim, Sony Mobile does not contest whether jurisdiction over it
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`properly lies in this district but denies that Sony Mobile has committed any act that would give
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`rise to any cause of action asserted in the Complaint. Sony Mobile does not contest that at least
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`some Sony Mobile products have been sold or offered for sale in Texas, but denies that it did
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`substantial business in this forum with respect to the accused products identified in the
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`Complaint.
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`4.
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`Sony Mobile lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of this paragraph, and therefore denies them.
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`2
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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 3 of 21 PageID #: 1530
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`5.
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`Sony Mobile lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of this paragraph, and therefore denies them.
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`6.
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`Sony Mobile lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of this paragraph, and therefore denies them.
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`7.
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`Sony Mobile lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of this paragraph, and therefore denies them.
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`8.
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`Sony Mobile lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of this paragraph, and therefore denies them.
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`JURISDICTION AND VENUE
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`9.
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`Sony Mobile admits that the Complaint purports to describe an action for patent
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`infringement arising under “35 U.S.C. §§ 271, 281, and 284-285, among others,” but denies the
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`legal sufficiency of CCE’s claims and allegations.
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`10.
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`Sony Mobile admits that 28 U.S.C. §§ 1331, 1338(a), and 1367 authorize this
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`Court to hear claims of patent infringement, but denies that it has committed any acts of
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`infringement.
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`11.
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`Sony Mobile admits that 28 U.S.C. §§ 1391(b) and (c), and 1400(b) govern the
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`rules of venue in Federal courts, but denies that this judicial district is the most convenient forum
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`for parties and witnesses or is an appropriate venue for litigation of this action in the interests of
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`justice. Sony Mobile denies that it has committed acts of infringement within this judicial
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`district. Further, Sony Mobile denies that any other Defendant has committed acts of
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`infringement relating to Sony Mobile products or services within this judicial district. Sony
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`Mobile does not contest that at least some Sony Mobile products have been sold or offered for
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`sale in Texas and within this judicial district, but denies that it did substantial business in this
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`3
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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 4 of 21 PageID #: 1531
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`
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`forum with respect to the accused products identified in the Complaint Sony Mobile lacks
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`of this paragraph, and therefore denies them
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`12.
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`Sony Mobile does not contest that at least some Sony Mobile products have been
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`sold or offered for sale in Texas, but denies that it did substantial business in this forum with
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`respect to the accused products identified in the Complaint. For the purpose of this action only
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`and without waiving any defense of lack of personal jurisdiction in connection with any other
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`cause of action or claim, Sony Mobile does not contest whether jurisdiction properly lies in this
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`district. Sony Mobile denies the remaining allegations in this paragraph and in particular any
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`suggestion that Sony Mobile has committed any act of infringement.
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`13.
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`Sony Mobile admits that it has marketed and sold mobile devices within this
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`District while providing technical and customer support for such devices. Sony Mobile denies
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`the remaining allegations in this paragraph and in particular any suggestion that Sony Mobile has
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`committed any act of infringement.
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`COUNT I
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`(INFRINGEMENT OF U.S. PATENT NO. 8,385,966)
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`14.
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`Sony Mobile incorporates by reference its responses to the allegations of
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`paragraphs 1 through 13 above as if fully set forth herein.
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`15.
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`Sony Mobile admits that the ‘966 patent is titled “Method, Apparatus, and
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`Computer Program for Power Control Related to Random Access Procedures.” Sony Mobile
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`admits that on its face, Exhibit A appears to be a copy of the ‘966 patent. Sony Mobile lacks
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`of this paragraph, and therefore denies them.
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`4
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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 5 of 21 PageID #: 1532
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`
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`16.
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`17.
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`18.
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`19.
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`20.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`Sony Mobile admits that it is affiliated with a 3rd Generation Partnership Project
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`(“3GPP”) member organization. Sony Mobile denies that it received actual notice of the ‘966
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`patent prior to service of the Complaint. Sony Mobile lacks knowledge or information sufficient
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`to form a belief as to the truth of the remaining allegations of this paragraph, and therefore denies
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`them.
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`21.
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`22.
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`23.
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`24.
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`25.
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`26.
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`27.
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`28.
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`29.
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`30.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`COUNT II
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`(INFRINGEMENT OF U.S. PATENT NO. 8,848,556)
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`Sony Mobile incorporates by reference its responses to the allegations of
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`paragraphs 1 through 29 above as if fully set forth herein.
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`
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`5
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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 6 of 21 PageID #: 1533
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`
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`31.
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` Sony Mobile admits that the ‘556 patent is titled “Carrier Aggregation with
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`Power Headroom Report.” Sony Mobile admits that on its face, Exhibit B appears to be a copy
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`of the ‘556 patent. Sony Mobile lacks knowledge or information sufficient to form a belief as to
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`the truth of the remaining allegations of this paragraph, and therefore denies them.
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`32.
`
`33.
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`34.
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`35.
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`Denies.
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`Denies.
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`Denies.
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`Sony Mobile admits that it is affiliated with a 3rd Generation Partnership Project
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`(“3GPP”) member organization. Sony Mobile denies that it received actual notice of the ‘556
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`patent prior to service of the Complaint. Sony Mobile lacks knowledge or information sufficient
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`to form a belief as to the truth of the remaining allegations of this paragraph, and therefore denies
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`them.
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`36.
`
`37.
`
`38.
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`39.
`
`40.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`COUNT III
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`(INFRINGEMENT OF U.S. PATENT NO. 8,868,060)
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` Sony Mobile incorporates by reference its responses to the allegations of
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`paragraphs 1 through 39 above as if fully set forth herein.
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`41.
`
`Sony Mobile admits that the ‘060 patent is titled “Method, Network and Device
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`for Information Provision by Using Paging and Cell Broadcast Services.” Sony Mobile admits
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`that on its face, Exhibit C appears to be a copy of the ‘060 patent. Sony Mobile lacks knowledge
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`6
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`

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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 7 of 21 PageID #: 1534
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`or information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`42.
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`43.
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`44.
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`45.
`
`46.
`
`Denies.
`
`Denies.
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`Denies.
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`Denies.
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`Sony Mobile admits that it is affiliated with a 3rd Generation Partnership Project
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`member organization. Sony Mobile denies that it received actual notice of the ‘060 patent prior
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`to service of the Complaint. Sony Mobile lacks knowledge or information sufficient to form a
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`belief as to the truth of the remaining allegations of this paragraph, and therefore denies them.
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`47.
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`48.
`
`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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`54.
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`55.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`Denies.
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`JOINDER OF PARTIES
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`Sony Mobile incorporates by reference its responses to the allegations of
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`paragraphs 1 through 54 above as though fully set forth herein.
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`
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`7
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`

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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 8 of 21 PageID #: 1535
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`
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`56.
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` Sony Mobile admits that AT&T, T-Mobile, and Verizon have each purchased or
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`otherwise acquired from Sony Mobile certain mobile devices that are the subject of Counts I
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`through III. The remaining allegations of paragraph 56 of the Complaint are denied.
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`57.
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` Sony Mobile admits that the alleged infringements set forth in Counts I through
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`III arise out of the same transaction, occurrence, or series of transactions or occurrences relating
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`to the Sony Mobile mobile devices, but denies that it is appropriate under these particular facts
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`for the cases against AT&T, T-Mobile, and Verizon to be litigated at the same time as the case
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`against Sony Mobile.
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`58.
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` Sony Mobile admits that questions of fact common to all Defendants may arise in
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`this action, but denies that it is appropriate under these particular facts for the cases against
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`AT&T, T-Mobile, and Verizon to be litigated at the same time as the case against Sony Mobile.
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`59.
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`Sony Mobile admits that joinder is proper under 35 U.S.C. § 299(a), but denies
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`that it is appropriate under these particular facts for the cases against AT&T, T-Mobile, and
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`Verizon to be litigated at the same time as the case against Sony Mobile.
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`JURY DEMAND
`
`
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`Sony Mobile admits that CCE demands a trial by jury, but denies that right to a trial by
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`jury as to certain issues. Sony Mobile demands a trial by jury on all issues so triable.
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`PRAYER FOR RELIEF
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`
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`CCE is not entitled to any of the relief requested in the Prayer for Relief section of CCE’s
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`Complaint.
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`8
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`

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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 9 of 21 PageID #: 1536
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`AFFIRMATIVE DEFENSES
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`Sony Mobile asserts the following defenses to CCE’s Complaint and specifically reserves
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`the right to amend its answer with additional defenses in light of information obtained through
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`further investigation or discovery. Nothing herein shall be construed as an admission or
`
`acknowledgment that Sony Mobile bears the burden of proof as to any of the following defenses.
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`FIRST AFFIRMATIVE DEFENSE (NON-INFRINGEMENT)
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`Sony Mobile does not infringe and has not infringed the ‘966, ‘556, or ‘060 patents.
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`SECOND AFFIRMATIVE DEFENSE (INVALIDITY)
`
`The claims of the ‘966, ‘566, and ‘060 patents are invalid for failure to satisfy one or
`
`
`
`
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`more of the requirements of the patent laws of Title 35, United States Code, including but not
`
`limited to §§ 101, 102, 103, 112, 120, and 256. Sony Mobile incorporates by reference the
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`Invalidity Contentions (including the accompanying appendices) that it served on July 10, 2015.
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`In addition, Sony Mobile incorporates by reference the Motion for Summary Judgment of
`
`Invalidity (Dkt. No. 147) that it filed on November 9, 2015 concerning claims 5-7 and 14-17 of
`
`the ‘966 patent, claims 15 and 23 of the ‘556 patent, and claim 15 of the ‘060 patent. The claims
`
`of the ‘966, ‘566, and ‘060 patents are also invalid due to obviousness-type double patenting.
`
`THIRD AFFIRMATIVE DEFENSE (ESTOPPEL, LACHES, WAIVER/CONSENT
`AND/OR UNCLEAN HAND)
`
`CCE’s claims are barred in whole or in part under the doctrine of laches, estoppel,
`
`
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`waiver, or unclean hands. CCE and/or its predecessors have breached their commitment to offer
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`FRAND license terms for the patents asserted in the Complaint and have breached their
`
`disclosure requirements based on such FRAND license terms or based on other circumstances.
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`FOURTH AFFIRMATIVE DEFENSE (FAILURE TO MARK)
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`Any claim by CCE for damages is limited under 35 U.S.C. § 287.
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`9
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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 10 of 21 PageID #: 1537
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`FIFTH AFFIRMATIVE DEFENSE (FAILURE TO DISCLAIM INVALID CLAIMS)
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`Any claim by CCE for costs is precluded under 35 U.S.C. § 288.
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`SIXTH AFFIRMATIVE DEFENSE (UNCLEAN HANDS)
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`CCE’s claims are barred in whole or in part under the doctrine of unclean hands.
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`SEVENTH AFFIRMATIVE DEFENSE (FAILURE TO STATE A CLAIM)
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`CCE fails to state a claim upon which relief can be granted.
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`EIGHTH AFFIRMATIVE DEFENSE (GOVERNMENT SALES)
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`CCE’s remedies are limited by 28 U.S.C. § 1498(a).
`
`NINTH AFFIRMATIVE DEFENSE (LACK OF STANDING)
`
`CCE lacks standing to bring the claims asserted in the Complaint.
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`TENTH AFFIRMATIVE DEFENSE
`(EXPRESS LICENSE, IMPLIED LICENSE, AND/OR EXHAUSTION)
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`CCE’s claims are barred, in whole or in part, as a result of express or implied licenses
`
`and/or under the doctrine of patent exhaustion.
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`ELEVENTH AFFIRMATIVE DEFENSE
`(FAILURE TO JOIN INDISPENSABLE PARTIES)
`
`
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`CCE’s claims are barred, in whole or in part, as a result of CCE’s failure to join one or
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`more necessary and/or indispensable parties.
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`To the extent the patents in the Complaint are found to be essential to any ETSI standard
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`and to the extent any of the alleged inventions described in and allegedly covered by any of the
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`patents asserted in the Complaint are used, manufactured, or sold by or for Sony Mobile, its
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`suppliers, and/or its customers, Sony Mobile has the irrevocable right to be licensed on FRAND
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`terms under those patents.
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`
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`10
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`

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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 11 of 21 PageID #: 1538
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`RESERVATION OF RIGHTS
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`Sony Mobile reserves the right to raise additional affirmative defenses as they become
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`known through further investigation and discovery.
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`SONY MOBILE’S COUNTERCLAIMS
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`
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`Sony Mobile counterclaims against CCE as follows:
`
`THE PARTIES
`
`1.
`
`Sony Mobile Communications (USA) Inc. (“Sony Mobile”) is a corporation
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`organized and existing under the laws of Delaware, having a principal place of business in San
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`Mateo, California.
`
`2.
`
`Sony Mobile alleges on information and belief that CCE is a limited liability
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`company organized under the laws of Texas.
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`JURISDICTION AND VENUE
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`3.
`
` This is an action for, inter alia, a declaration of non-infringement and invalidity
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`of U.S. Patent No. 8,385,966 (“the ‘966 patent”), U.S. Patent No. 8,848,556 (“the ‘556 patent”),
`
`and U.S. Patent No. 8,868,060 (“the ‘060 patent”) arising under the Declaratory Judgment Act,
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`28 U.S.C. §§ 2201 and 2202 and the Patent Laws of the United States, 35 U.S.C. § 1 et seq.
`
`4.
`
`This Court has subject matter jurisdiction over these counterclaims pursuant to 28
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`U.S.C. §§ 1331, 1338(a), 2201, and 2202.
`
`5.
`
`this Court.
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`6.
`
`1400(b).
`
`
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`This Court has personal jurisdiction over CCE because CCE filed its Complaint in
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`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 and
`
`11
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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 12 of 21 PageID #: 1539
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`7.
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`Based on CCE’s Complaint against Sony Mobile and Sony Mobile’s Answer
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`thereto, there exists an actual, justiciable controversy between Sony Mobile and CCE concerning
`
`the ‘966 patent, the ‘556 patent, and the ‘060 patent.
`
`8.
`
`This is an exceptional case under 35 U.S.C. § 285, and Sony Mobile is entitled to
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`recover its attorneys’ fees in connection with this action.
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`FIRST COUNTERCLAIM
`(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘966 PATENT)
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`9.
`
`Sony Mobile repeats the allegations set forth in paragraphs 1 to 8 of its
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`Counterclaims as fully set forth herein.
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`10.
`
`CCE has initiated a civil action against Sony Mobile by filing the Complaint in
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`this Court alleging that Sony Mobile has infringed the ‘966 patent.
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`11.
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`12.
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`Sony Mobile has not infringed and does not infringe the ‘966 patent.
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`An actual and justiciable controversy exists between Sony Mobile and CCE as to
`
`whether Sony Mobile infringes the ‘966 patent.
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`13.
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`patent.
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`Sony Mobile is entitled to a declaratory judgment that it does not infringe the ‘966
`
`SECOND COUNTERCLAIM
`(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘556 PATENT)
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`14.
`
`Sony Mobile repeats the allegations set forth in paragraphs 1 to 13 of its
`
`Counterclaims as fully set forth herein.
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`15.
`
`CCE has initiated a civil action against Sony Mobile by filing the Complaint in
`
`this Court alleging that Sony Mobile has infringed the ‘556 patent.
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`16.
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`Sony Mobile has not infringed and does not infringe the ‘556 patent.
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`
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`12
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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 13 of 21 PageID #: 1540
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`17.
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`An actual and justiciable controversy exists between Sony Mobile and CCE as to
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`whether Sony Mobile infringes the ‘556 patent.
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`18.
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`patent.
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`Sony Mobile is entitled to a declaratory judgment that it does not infringe the ‘556
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`THIRD COUNTERCLAIM
`(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘060 PATENT)
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`19.
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`Sony Mobile repeats the allegations set forth in paragraphs 1 to 18 of its
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`Counterclaims as if fully set forth herein.
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`20.
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`CCE has initiated a civil action against Sony Mobile by filing the Complaint in
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`this Court alleging that Sony Mobile has infringed the ‘060 patent.
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`21.
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`22.
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`Sony Mobile has not infringed and does not infringe the ‘060 patent.
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`An actual and justiciable controversy exists between Sony Mobile and CCE as to
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`whether Sony Mobile infringes the ‘060 patent.
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`23.
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`patent.
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`Sony Mobile is entitled to a declaratory judgment that it does not infringe the ‘060
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`FOURTH COUNTERCLAIM
`(DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘966 PATENT)
`
`24.
`
` Sony Mobile repeats the allegations set forth in paragraphs 1 to 23 of its
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`Counterclaims as if fully set forth herein.
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`25.
`
`The claims of the ‘966 patent are invalid for failure to meet one or more of the
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`conditions of patentability of inventions set forth in Title 35 of the United States Code, including
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`Sections 101, 102, 103, 112, 120, and 256. Sony Mobile incorporates by reference the Invalidity
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`Contentions (including the accompanying appendix C) that it served on July 10, 2015. In
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`addition, Sony Mobile incorporates by reference the Motion for Summary Judgment of Invalidity
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`13
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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 14 of 21 PageID #: 1541
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`(Dkt No. 147) that it filed on November 9, 2015 concerning claims 5-7 and 14-17 of the ‘966
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`patent. The claims of the ‘966 patent are also invalid for obviousness-type double patenting.
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`26.
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`An actual and justiciable controversy exists between Sony Mobile and CCE as to
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`whether the claims of the ‘966 patent are invalid.
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`27.
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`Sony Mobile is entitled to a declaratory judgment that the claims of the ‘966
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`patent are invalid.
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`FIFTH COUNTERCLAIM
`(DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘556 PATENT)
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`28.
`
`Sony Mobile repeats the allegations set forth in paragraphs 1 to 27 of its
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`Counterclaims as if fully set forth herein.
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`29.
`
`The claims of the ‘556 patent are invalid for failure to meet one or more of the
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`conditions of patentability of inventions set forth in Title 35 of the United States Code, including
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`Sections 101, 102, 103, 112, 120, and 256. Sony Mobile incorporates by reference the Invalidity
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`Contentions (including the accompanying appendix A) that it served on July 10, 2015. In
`
`addition, Sony Mobile incorporates by reference the Motion for Summary Judgment of Invalidity
`
`(Dkt No. 147) that it filed on November 9, 2015 concerning claims 15 and 23 of the ‘556 patent.
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`The claims of the ‘556 patent are also invalid for obviousness-type double patenting.
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`30.
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`An actual and justiciable controversy exists between Sony Mobile and CCE as to
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`whether the claims of the ‘556 patent are invalid.
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`31.
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`Sony Mobile is entitled to a declaratory judgment that the claims of the ‘556
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`patent are invalid.
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`14
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`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 15 of 21 PageID #: 1542
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`SIXTH COUNTERCLAIM
`(DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘060 PATENT)
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`32.
`
`Sony Mobile repeats the allegations set forth in paragraphs 1 to 31 of its
`
`Counterclaims as if fully set forth herein.
`
`33.
`
`The claims of the ‘060 patent are invalid for failure to meet one or more of the
`
`conditions of patentability of inventions set forth in Title 35 of the United States Code, including
`
`Sections 101, 102, 103, 112, 120, and 256. Sony Mobile incorporates by reference the Invalidity
`
`Contentions (including the accompanying appendix B) that it served on July 10, 2015. In
`
`addition, Sony Mobile incorporates by reference the Motion for Summary Judgment of Invalidity
`
`(Dkt No. 147) that it filed on November 9, 2015 concerning claim 15 of the ‘060 patent. The
`
`claims of the ‘060 patent are also invalid for obviousness-type double patenting.
`
`34.
`
`An actual and justiciable controversy exists between Sony Mobile and CCE as to
`
`whether the claims of the ‘060 patent are invalid.
`
`35.
`
`Sony Mobile is entitled to a declaratory judgment that the claims of the ‘060
`
`patent are invalid.
`
`SEVENTH COUNTERCLAIM
`(BREACH OF CONTRACT)
`
`Sony Mobile repeats the allegations set forth in paragraphs 1 to 35 of its
`
`36.
`
`Counterclaims as if fully set forth herein.
`
`37.
`
`The European Telecommunications Standards Institute and other 2G, 3G, and 4G
`
`standards bodies in which CCE and/or its predecessors have been involved (collectively, ETSI)
`
`are standards-setting bodies responsible for standardization of information and communication
`
`technologies for the benefit of ETSI members and third parties.
`
`
`
`15
`
`

`

`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 16 of 21 PageID #: 1543
`
`
`
`38.
`
`As a member of ETSI, and to comply with ETSI’s Intellectual Property Rights
`
`(“IPR”) Policy, CCE and/or its predecessors represented to ETSI, ETSI members, and third
`
`parties that it would grant irrevocable licenses to the Alleged Standard Essential Patents on fair,
`
`reasonable, and non-discriminatory (“FRAND”) terms and conditions.
`
`39.
`
`CCE and/or its predecessors ETSI membership and activities, including the
`
`declarations it made to comply with ETSI’s IPR policy for the Alleged Standard Essential
`
`Patents, created an express and/or implied contract with ETSI and/or ETSI members including an
`
`agreement that CCE and/or its predecessors would license those patents on FRAND terms and
`
`conditions.
`
`40.
`
`Under ETSI’s IPR Policy, third parties that are not ETSI members also have the
`
`right to be granted licenses under those patents on FRAND terms and conditions.
`
`41. When a patent is declared as a Standard Essential Patent, the commitments made
`
`with regard to the declared patent are permanent, and cannot be revoked by sale of the patent.
`
`42.
`
`CCE did not make an offer to license the Alleged Standard Essential Patents on
`
`FRAND terms to Sony Mobile prior to filing its Complaint for patent infringement.
`
`43.
`
`44.
`
`CCE’s prayer for relief requests more than a FRAND royalty.
`
`CCE’s conduct in the preceding paragraphs constitutes a breach of its contractual
`
`obligations to ETSI and/or ETSI members and deprives third parties of their right to be granted
`
`licenses under the Alleged Standard Essential Patents.
`
`45.
`
`As a result of CCE’s breach, Sony Mobile has incurred damages and will be
`
`further damaged in the future. Sony Mobile has been forced to expend resources resolving this
`
`dispute, and is threatened by the loss of profits, loss of customers and potential customers, loss of
`
`
`
`16
`
`

`

`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 17 of 21 PageID #: 1544
`
`
`
`goodwill and product image, uncertainty in business planning, and uncertainty among customers
`
`and potential customers.
`
`46.
`
`For at least the reasons detailed in the prior paragraphs, if Sony Mobile is found to
`
`have infringed the Alleged Standard Essential Patents, Sony Mobile is entitled to an order
`
`compelling specific performance of CCE’s FRAND obligations.
`
`EIGHTH COUNTERCLAIM
`(DECLARATORY JUDGMENT THAT SONY MOBILE IS LICENSED
`TO PRACTICE THE ASSERTED PATENTS)
`
`Sony Mobile repeats the allegations set forth in paragraphs 1 to 46 of its
`
`47.
`
`Counterclaims as if fully set forth herein.
`
`48.
`
`On information and belief and by way of example only, Sony Mobile has rights
`
`arising from its use of Qualcomm Incorporated (“Qualcomm”) components in certain Sony
`
`Mobile products.
`
`49.
`
`50.
`
`51.
`
`On information and belief, CCE has licensed the patents in suit to third parties.
`
`On information and belief, some of those third parties are Sony Mobile suppliers.
`
`In particular, Sony Mobile uses Qualcomm Incorporated (“Qualcomm”)
`
`components in certain accused Sony Mobile products.
`
`52.
`
`On information and belief, Qualcomm entered into a license agreement with CCE
`
`and/or its predecessors by which Qualcomm received, among other things, certain rights related
`
`to the Asserted Patents and other CCE patents (collectively, “the Qualcomm Licensed Patents”).
`
`53.
`
`Sony Mobile has an express or implied license to manufacture, use, import, and
`
`sell electronic devices incorporating licensed Qualcomm components under the Qualcomm
`
`Licensed Patents.
`
`
`
`17
`
`

`

`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 18 of 21 PageID #: 1545
`
`
`
`54.
`
`Notwithstanding
`
`this
`
`license, CCE alleged
`
`infringement and
`
`is seeking
`
`compensation for products that are licensed under the Qualcomm license. Sony Mobile has been
`
`forced to expend resources resolving this dispute, and is threatened by the loss of profits, loss of
`
`customers and potential customers, loss of goodwill and product image, uncertainty in business
`
`planning, and uncertainty among customers and potential customers.
`
`RESERVATION OF RIGHTS
`
`55.
`
`Sony Mobile reserves the right to assert additional counterclaims as they become
`
`known through further investigation and discovery.
`
`PRAYER FOR RELIEF
`
`
`
`WHEREFORE, Sony Mobile requests that judgment be entered against CCE in
`
`connection with CCE’s Complaint, that CCE’s requests for relief be denied, and that judgment
`
`be entered in favor of Sony Mobile on Sony Mobile counterclaims in this matter, as follows:
`
`A.
`
`Enter judgment in favor of Sony Mobile and against CCE and dismiss CCE’s
`
`Complaint with prejudice;
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`Declare that Sony Mobile has not infringed the ‘966 patent;
`
`Declare that Sony Mobile has not infringed the ‘556 patent;
`
`Declare that Sony Mobile has not infringed the ‘060 patent;
`
`Declare the claims of the ‘966 patent invalid;
`
`Declare the claims of the ‘556 patent invalid;
`
`Declare the claims of the ‘060 patent invalid;
`
`Enjoin CCE from seeking any royalties in this Court or in any forum or otherwise
`
`for the Alleged Standard Essential Patents in excess of FRAND terms and conditions;
`
`
`
`18
`
`

`

`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 19 of 21 PageID #: 1546
`
`
`
`I.
`
`Enter judgment requiring CCE’s specific performance under its contract with
`
`ETSI and/or ETSI members to grant a license to Sony Mobile under the Alleged Standard
`
`Essential Patents asserted against Sony Mobile;
`
`J.
`
`Preliminarily and permanently enjoin CCE, its officers, agents, servants,
`
`employees, and attorneys, and those persons in active concert or participation with them who
`
`receive actual notice by personal service or otherwise, from asserting or threatening to assert
`
`against customers or potential customers of Sony Mobile, or users of Sony Mobile’s products
`
`and services, any charge of infringement of the ‘966 patent, the ‘556 patent, and/or the ‘060
`
`patent;
`
`K.
`
`Preliminarily and permanently enjoin CCE, its officers, agents, servants,
`
`employees, and attorneys, and those persons in active concert or participation with them who
`
`receive actual notice by personal service or otherwise, from filing or prosecuting any civil action
`
`or actions against Sony Mobile’s customers, or users of Sony Mobile’s products and services, for
`
`alleged infringement of the ‘966 patent, the ‘556 patent, and/or the ‘060 patent;
`
`L.
`
`Declare this case to be exceptional under 35 U.S.C. § 285 and award Sony Mobile
`
`its attorneys’ fees in this action;
`
`M.
`
`N.
`
`proper.
`
`Tax all costs against CCE; and
`
`Grant Sony Mobile such other and further relief as the Court may deem just and
`
`DEMAND FOR A JURY TRIAL
`
`Sony Mobile demands a jury trial on all issues that are so triable.
`
`
`
`19
`
`
`
`
`
`
`
`
`
`

`

`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 20 of 21 PageID #: 1547
`
`
`
`
`
`Dated: November 13, 2015
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`SONY MOBILE COMMUNICATIONS (USA)
`INC.
`
`By its counsel,
` /s/ Michael N. Rader
`Richard L. Wynne
`Texas State Bar No. 24003214
`richard.wynne@tklaw.com
`THOMPSON & KNIGHT LLP
`One Arts Plaza
`1722 Routh St., Suite 1500
`Dallas, TX 75201
`Telephone: (214) 969-1386
`Facsimile: (214) 880-3267
`
`Michael N. Rader (pro hac vice)
`Charles T. Steenburg (pro hac vice)
`Chelsea A. Loughran (pro hac vice)
`mrader@wolfgreenfield.com
`csteenburg@wolfgreenfield.com
`cloughran@wolfgreenfield.com
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`
`ATTORNEYS FOR DEFENDANT SONY
`MOBILE COMMUNICATIONS (USA) INC.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`20
`
`

`

`Case 6:14-cv-00982-KNM Document 149 Filed 11/13/15 Page 21 of 21 PageID #: 1548
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing document was filed
`electronically in compliance with Local Rule CV-5 on this 13th day of November, 2015. As of
`this date all counsel of record have consented to electronic service and are being served with a
`copy of this document through the Court’s CM/ECF system under Local Rule CV-5(a)(3)(A).
`
`
`
`/s Michael N. Rader
`Michael N. Rader
`
`
`
`
`
`
`
`21
`
`

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