Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 1 of 25 PageID #: 1549
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`
`
`
`
`CIVIL ACTION NO. 6:14-cv-982-KNM
`
`CONSOLIDATED LEAD CASE
`
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
`
` Plaintiff,
`
`v.
`
`LG ELECTRONICS, INC., ET AL.,
`
` Defendants.
`
`
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
`
` Plaintiff,
`
`v.
`
`KYOCERA COMMUNICATIONS, 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.
`
`
`
`
`
`
`
`
`
`
`
`
`
`CIVIL ACTION NO. 6:15-cv-49
`
`JURY TRIAL DEMANDED
`
`
`
`ANSWER, AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS OF KYOCERA COMMUNICATIONS, INC.
`TO PLAINTIFF’S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`
`
`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 2 of 25 PageID #: 1550
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`Kyocera Communications, Inc. (“KCI”) by and through its undersigned attorneys, hereby
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`answers the First Amended Complaint (the “FAC”) asserting infringement of U.S. Patent No.
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`8,385,966 (“the ’966 patent”) and U.S. Patent No. 8,868,060 (“the ’060 patent”) (collectively,
`
`the “Patents-In-Suit”) filed by Cellular Communications Equipment LLC (“CCE”) as follows:
`
`THE PARTIES
`
`1.
`
`KCI is without knowledge or information sufficient to form a belief regarding the
`
`allegations of Paragraph 1 of the FAC, and on that basis KCI denies those allegations.
`
`2.
`
`KCI admits only that it is a Delaware corporation with its principal place of
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`business located at 9520 Towne Centre Drive, San Diego, California 92121, and that it can be
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`served through Corporation Services Company, 2711 Centerville Road, Suite 400, Wilmington,
`
`Delaware 19808. KCI denies the remaining allegations of Paragraph 2 of the FAC.
`
`3.
`
`No response is required by KCI to Paragraph 3 of the FAC because it is directed
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`to a different defendant.
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`4.
`
`No response is required by KCI to Paragraph 4 of the FAC because it is directed
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`to a different defendant.
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`5.
`
`No response is required by KCI to Paragraph 5 of the FAC because it is directed
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`to a different defendant.
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`6.
`
`No response is required by KCI to Paragraph 6 of the FAC because it is directed
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`to a different defendant.
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`7.
`
`No response is required by KCI to Paragraph 7 of the FAC because it is directed
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`to a different defendant.
`
`8.
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`No response is required by KCI to Paragraph 8 of the FAC because it is directed
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`to a different defendant.
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`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 3 of 25 PageID #: 1551
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`9.
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`No response is required by KCI to Paragraph 9 of the FAC because it is directed
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`to a different defendant.
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`10.
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`No response is required by KCI to Paragraph 10 of the FAC because it is directed
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`to a different defendant.
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`11.
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`No response is required by KCI to Paragraph 11 of the FAC because it is directed
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`to a different defendant.
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`JURISDICTION AND VENUE
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`12.
`
`KCI admits that CCE contends in Paragraph 12 of the FAC that this action arises
`
`under the patent laws of the United States Code, 35 U.S.C. § 271 et seq., but KCI denies that
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`CCE’s infringement claims have merit.
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`13.
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`KCI admits that, because CCE alleges that this action arises under the patent laws
`
`of the United States, this Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
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`1338(a), and 1367.
`
`14.
`
`KCI admits that CCE contends that venue is proper in this Court under Title 28
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`United States Code §§ 1391 and 1400. KCI denies that venue is convenient in this district, and
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`KCI reserves the right to seek a transfer of venue. KCI also denies that it has committed acts of
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`infringement in this district or anywhere else.
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`15.
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`KCI denies the allegations of Paragraph 15 of the FAC that are directed to KCI.
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`No response is required to the remaining allegations of Paragraph 15 of the FAC because they
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`are not directed to KCI.
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`16.
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`KCI denies the allegations of Paragraph 16 of the FAC that are directed to KCI.
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`No response is required to the remaining allegations of Paragraph 16 of the FAC because they
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`are not directed to KCI.
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`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 4 of 25 PageID #: 1552
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`COUNT I
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`(INFRINGEMENT OF U.S. PATENT NO. 8,385,966)
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`17.
`
`KCI incorporates by reference its responses to the allegations of Paragraphs 1
`
`through 16 of the FAC.
`
`18.
`
`KCI admits only that a document purporting to be a copy of Patent No. 8,385,966
`
`(“the ‘966 patent”) is attached as Exhibit A to the FAC, the face of which shows the title
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`“Method, Apparatus and Computer Program for Power Control Related to Random Access
`
`Procedures.” KCI lacks knowledge sufficient to form a belief as to the truth of the remaining
`
`allegations of Paragraph 18 of the FAC, and therefore denies such allegations.
`
`19.
`
`20.
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`KCI denies the allegations of Paragraph 19 of the FAC.
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`KCI denies any infringement of the ‘966 patent, and denies the allegations of
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`Paragraph 20 of the FAC.
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`21.
`
`KCI denies any infringement of the ‘966 patent, and denies the allegations of
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`Paragraph 21 of the FAC.
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`22.
`
`KCI denies any infringement of the ‘966 patent, and denies the allegations of
`
`Paragraph 22 of the FAC.
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`23.
`
`KCI denies that it is a 3rd Generation Partnership Project (or “3GPP”) member
`
`organization, or is affiliated with a 3GPP member organization. KCI lacks knowledge sufficient
`
`to form a belief as to whether the other Defendants are 3rd Generation Partnership Project (or
`
`“3GPP”) member organizations, or are affiliated with a 3GPP member organization, and
`
`therefore denies such allegations. KCI denies the remaining allegations of Paragraph 23 of the
`
`FAC.
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`24.
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`25.
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`4833-4870-6090.2
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`KCI denies the allegations of Paragraph 24 of the FAC.
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`KCI denies the allegations of Paragraph 25 of the FAC.
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 5 of 25 PageID #: 1553
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`26.
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`27.
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`28.
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`KCI denies the allegations of Paragraph 26 of the FAC.
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`KCI denies the allegations of Paragraph 27 of the FAC.
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`KCI denies any infringement of the ‘966 patent, and denies the allegations of
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`Paragraph 28 of the FAC.
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`29.
`
`30.
`
`KCI denies the allegations of Paragraph 29 of the FAC.
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`KCI denies any infringement of the ‘966 patent, and denies the allegations of
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`Paragraph 30 of the FAC.
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`31.
`
`KCI denies any infringement of the ‘966 patent, and denies the allegations of
`
`Paragraph 31 of the FAC.
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`32.
`
`KCI denies any infringement of the ‘966 patent, and denies the allegations of
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`Paragraph 32 of the FAC.
`
`33.
`
`KCI denies the allegations of Paragraph 33 of the FAC.
`
`COUNT II
`
`(INFRINGEMENT OF U.S. PATENT NO. 8,868,060)
`
`34.
`
`KCI incorporates by reference its responses to the allegations of Paragraphs 1
`
`through 16 of the FAC.
`
`35.
`
`KCI admits only that a document purporting to be a copy of Patent No. 8,868,060
`
`(“the ‘060 patent”) is attached as Exhibit B to the FAC, the face of which shows the title
`
`“Method, Network and Device for Information Provision by Using Paging and Cell Broadcast
`
`Services.” KCI lacks knowledge sufficient to form a belief as to the truth of the remaining
`
`allegations of Paragraph 35 of the FAC, and therefore denies such allegations.
`
`36.
`
`37.
`
`KCI denies the allegations of Paragraph 36 of the FAC.
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`KCI denies any infringement of the ‘060 patent, and denies the allegations of
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`Paragraph 37 of the FAC.
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`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 6 of 25 PageID #: 1554
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`38.
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`KCI denies any infringement of the ‘060 patent, and denies the allegations of
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`Paragraph 38 of the FAC.
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`39.
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`KCI denies any infringement of the ‘060 patent, and denies the allegations of
`
`Paragraph 39 of the FAC.
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`40.
`
`KCI denies that it is a 3rd Generation Partnership Project (or “3GPP”) member
`
`organization, or is affiliated with a 3GPP member organization. KCI lacks knowledge sufficient
`
`to form a belief as to whether the other Defendants are 3rd Generation Partnership Project (or
`
`“3GPP”) member organizations, or are affiliated with a 3GPP member organization, and
`
`therefore denies such allegations. KCI denies the remaining allegations of Paragraph 40 of the
`
`FAC.
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`41.
`
`42.
`
`43.
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`44.
`
`45.
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`KCI denies the allegations of Paragraph 41 of the FAC.
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`KCI denies the allegations of Paragraph 42 of the FAC.
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`KCI denies the allegations of Paragraph 43 of the FAC.
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`KCI denies the allegations of Paragraph 44 of the FAC.
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`KCI denies any infringement of the ‘060 patent, and denies the allegations of
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`Paragraph 45 of the FAC.
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`46.
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`47.
`
`48.
`
`49.
`
`50.
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`KCI denies the allegations of Paragraph 46 of the FAC.
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`KCI denies the allegations of Paragraph 47 of the FAC.
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`KCI denies the allegations of Paragraph 48 of the FAC.
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`KCI denies the allegations of Paragraph 49 of the FAC.
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`KCI denies the allegations of Paragraph 50 of the FAC.
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`JOINDER OF PARTIES
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`51.
`
`KCI incorporates by reference its responses to the allegations of Paragraphs 1
`
`through 50 of the FAC.
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`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 7 of 25 PageID #: 1555
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`52.
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`KCI admits that AT&T, Sprint, T-Mobile, and Verizon have each purchased or
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`otherwise acquired from KCI certain mobile devices that are the subject of Counts I and II. The
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`remaining allegations of Paragraph 52 of the FAC are denied.
`
`53.
`
`KCI admits that the alleged infringement set forth in Counts I and II arise out of
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`the same transaction, occurrence, or series of transactions or occurrences relating to the KCI
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`mobile devices, but denies that it is appropriate under these particular facts for the cases against
`
`AT&T, Sprint, T-Mobile, and Verizon to be litigated at the same time as the case against KCI.
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`54.
`
`KCI admits that questions of fact common to all Defendants may arise in this
`
`action, but denies that it is appropriate under these particular facts for the cases against AT&T,
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`Sprint, T-Mobile, and Verizon to be litigated at the same time as the case against KCI.
`
`55.
`
`KCI admits that joinder is proper under 35 U.S.C. § 299(a), but denies that it is
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`appropriate under these particular facts for the cases against AT&T, Sprint, T-Mobile, and
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`Verizon to be litigated at the same time as the case against KCI.
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`JURY DEMAND
`
`KCI joins CCE in its request for a trial by jury pursuant to Rule 38 of the Federal Rules
`
`of Civil Procedure of all issues so triable.
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`PRAYER FOR RELIEF
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`KCI denies that CCE is entitled to any of the relief it has requested in its Prayer for Relief
`
`or any relief whatsoever, including:
`
`a.
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`Judgment that one or more claims of the ’966 and ’060 patents have been
`
`infringed, either literally and/or under the doctrine of equivalents, by Defendants and/or by
`
`others whose infringements have been induced by Defendants and/or by others to whose
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`infringements Defendants have contributed, because KCI has not infringed one or more valid or
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`enforceable claims of the ’966 or ’060 patent;
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`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 8 of 25 PageID #: 1556
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`b.
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`Judgment that Defendants account for and pay to CCE all damages to and costs
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`incurred by CCE based on Defendants’ infringing activities and other conduct complained of
`
`herein, because Defendants have not infringed the ’966 or ’060 patent, and CCE has suffered no
`
`damages.
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`c.
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`Judgment that Defendants account for and pay to CCE a reasonable, ongoing, post-
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`judgment royalty because of Defendants’ infringing activities and other conduct complained of
`
`herein, because Defendants have not infringed the ’966 or ’060 patent, and CCE is not entitled to
`
`a reasonable, ongoing, post-judgment royalty.
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`d.
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`Judgment that Defendants’ infringements relative to the ’966 and ’060 patents be
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`found willful from the time that Defendants became aware of the infringing nature of their products,
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`and that the Court award treble damages for the period of such willful infringement pursuant to 35
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`U.S.C. § 284, because Defendants have not infringed one or more valid or enforceable claims of
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`the ’966 or ’060 patent, let alone willful infringement.
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`e.
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`Judgment that CCE be granted pre-judgment and post-judgment interest on the
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`damages caused by Defendants’ infringing activities and other conduct complained of herein,
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`because Defendants have not infringed the ’966 or ’060 patent, and CCE is not entitled to any
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`damages whatsoever; and
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`f.
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`Judgment that CCE be granted such other and further relief as the Court may deem
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`just and proper under the circumstances, because CCE is entitled to no relief of any kind.
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`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 9 of 25 PageID #: 1557
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`AFFIRMATIVE DEFENSES
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`FIRST AFFIRMATIVE DEFENSE
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`(Non-Infringement)
`
`1.
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`KCI has not infringed, and does not infringe, any valid and enforceable claim of
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`the Patents-In-Suit literally, under the doctrine of equivalents, directly, indirectly, contributorily,
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`by way of inducement, and/or in any other manner.
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`SECOND AFFIRMATIVE DEFENSE
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`(Invalidity)
`
`2.
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`All claims of the Patents-In-Suit are invalid for failure to satisfy the conditions of
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`patentability set forth in United States Code, Title 35, including without limitation, 35 U.S.C. §§
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`101, 102, 103, 112, 116 and/or 251, and the rules, regulations, and laws pertaining thereto.
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`THIRD AFFIRMATIVE DEFENSE
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`(Equitable Defenses)
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`3.
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`CCE’s claims are barred, in whole or in part, under principles of equity, including
`
`without limitation, acquiescence, laches, estoppel, waiver, misconduct, patent misuse, unfair
`
`competition, unclean hands and/or other equitable doctrines.
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`FOURTH AFFIRMATIVE DEFENSE
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`(Limitation on Damages)
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`4.
`
`Any claim by CCE for damages or recovery of costs is limited by the Patent Act,
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`including without limitation, 35 U.S.C. §§ 252, 286, 287, 288, and 307.
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`FIFTH AFFIRMATIVE DEFENSE
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`(No Willful Infringement)
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`5.
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`KCI has not willfully infringed the Patents-In-Suit.
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`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 10 of 25 PageID #: 1558
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`SIXTH AFFIRMATIVE DEFENSE
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`(Failure to Comply with FRAND/RAND Obligations)
`
`6.
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`CCE’s claims for damages are limited or barred in whole or in part, for failure to
`
`comply with CCE’s FRAND/RAND obligations.
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`SEVENTH AFFIRMATIVE DEFENSE
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`(Prosecution History Estoppel)
`
`7.
`
`CCE is estopped from construing any valid claim of the Patents-In-Suit to cover
`
`or include, either literally or by application of the doctrine of equivalents, any product made,
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`used, imported, sold, or offered for sale by KCI because of admissions and/or statements made to
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`the United States Patent and Trademark Office in the specifications of, and during prosecution
`
`of, the applications leading to the issuance of the Patents-In-Suit.
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`EIGHTH AFFIRMATIVE DEFENSE
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`(License and/or Exhaustion)
`
`8.
`
`To the extent that CCE’s accusations of infringement relate to products or
`
`services that were provided by or for any licensee of the Patents-In-Suit, and/or provided to KCI
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`by or through a licensee of the Patents-In-Suit or under a covenant not to sue, and/or are
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`otherwise subject to the doctrine of patent exhaustion, CCE’s claims are barred.
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`NINTH AFFIRMATIVE DEFENSE
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`(Failure to Mark)
`
`9.
`
`CCE’s pre-lawsuit claims for damages are barred, in whole or in part, for failure
`
`to comply with the marking and notice requirements of 35 U.S.C. § 287.
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`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 11 of 25 PageID #: 1559
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`TENTH AFFIRMATIVE DEFENSE
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`(Failure to State a Claim)
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`10.
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`CCE’s Complaint fails to state any claims against KCI upon which relief can be
`
`granted against KCI.
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`ELEVENTH AFFIRMATIVE DEFENSE
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`(Failure to Join Indispensable Parties)
`
`11.
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`CCE’s claims are barred, in whole or in part, as a result of CCE’s failure to join
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`one or more necessary and/or indispensable parties.
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`TWELFTH AFFIRMATIVE DEFENSE
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`(Failure to Conduct a Reasonable Pre-Suit Investigation)
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`12.
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`CCE’s claims for relief are barred, and its causes of action against KCI are subject
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`to dismissal and other sanctions, because CCE failed to conduct a reasonable investigation of
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`KCI’s products prior to filing suit.
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`THIRTEENTH AFFIRMATIVE DEFENSE
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`(FRAND/RAND Limitation on Relief)
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`13.
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`KCI is informed and believes that the ‘966 and ‘060 patents have been declared
`
`relevant to Standards Setting Organizations (“SSOs”), including Third Generation Partnership
`
`Project (“3GPP”), and Institute of Electronics Engineers Standards Association (“IEEE-SA”), as
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`essential to at least the GSM, UMTS, LTE, WCDMA Standards. 3GPP consists of six
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`Organizational Partners—including the European Telecommunications Standards Institute
`
`(“ETSI”).
`
`14.
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`KCI is informed and believes that CCE and/or its predecessors have undertaken,
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`in accordance with the applicable rules and intellectual property rights policies of the applicable
`
`SSOs, to grant licenses to some entities under each of the Patents-In-Suit on fair, reasonable, and
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`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 12 of 25 PageID #: 1560
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`nondiscriminatory (“FRAND”) terms and conditions (in some cases alternatively referred to as
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`“reasonable and non-discriminatory,” or “RAND,” terms). These FRAND obligations are found
`
`in Intellectual Property Policies adopted by ETSI and TTA (“the ETSI IPR Policy” and “the
`
`TTA IPR Policy,” respectively), and the bylaws adopted by IEEE-SA (the “IEEE-SA IPR
`
`Policy”) including but not limited to Clause 6.1 of the ETSI IPR Policy, Article 5, Paragraph 1 of
`
`the TTA IPR Policy, and Clause 6.2 of the IEEE-SA IPR Policy. CCE has not, however, offered
`
`to KCI reasonable and nondiscriminatory royalty terms and rates that are proportionate to royalty
`
`terms and rates offered to similarly situated companies. As a third party beneficiary of the rules
`
`and intellectual property rights policies of the relevant SSOs, KCI has the right to be granted
`
`license(s) to the Patents-In-Suit on FRAND terms and conditions that are substantially similar to
`
`the license terms CCE has already entered with other parties.
`
`15.
`
`CCE has failed to comply with its FRAND obligations under the relevant rules
`
`and intellectual property rights policies of the relevant SSOs with respect to KCI (which is
`
`claiming the benefit thereof) by refusing to offer a license on FRAND terms that is substantially
`
`similar to the license terms offered to third parties, and CCE has instead demanded royalties that
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`are unfair, unreasonably excessive, and discriminatory in favor of existing licensees. CCE’s
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`FRAND obligations limit or bar the damages, if any, available to CCE in this action.
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`FOURTEENTH AFFIRMATIVE DEFENSE
`
`(Standing)
`
`16.
`
`CCE lacks standing to bring this suit because, as shown on the face of the
`
`Patents-In-Suit, CCE is not the assignee of the Patents-In-Suit. CCE also lacks standing to bring
`
`this suit to the extent that CCE and/or its predecessors-in-interest lacked ownership of the
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`Patents-In-Suit at any relevant time. In addition, CCE lacks standing to bring this suit to the
`
`extent that CCE lacks all substantial rights to the Patents-In-Suit.
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`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 13 of 25 PageID #: 1561
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`FIFTEENTH AFFIRMATIVE DEFENSE
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`(Miscellaneous)
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`17.
`
`KCI reserves all affirmative defenses under Rule 8(c) of the Federal Rules of
`
`Civil Procedure, the Patent Laws of the United States, and any other defenses, at law or in
`
`equity, that may now exist or in the future be available based on discovery and further factual
`
`investigation in this case.
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`COUNTERCLAIMS
`
`Without admitting any of the allegations of the FAC other than those expressly admitted
`
`herein, and without prejudice to KCI’s right to plead additional counterclaims as the facts of the
`
`matter warrant, KCI Communications, Inc. (“KCI” or “Counter-Plaintiff”) hereby counterclaims
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`against Cellular Communications Equipment LLC (“CCE” or “Counter-Defendant”) as follows:
`
`THE PARTIES
`
`1.
`
`KCI is a corporation incorporated under the laws of Delaware with its principal
`
`place of business at 9520 Towne Centre Drive, San Diego, California 92121.
`
`2.
`
`CCE has asserted in this action that it is a Texas limited liability company with its
`
`principal place of business at 2400 Dallas Parkway, Suite 200, Plano, Texas 75093.
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`JURISDICTION AND VENUE
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`3.
`
`This Court has subject matter jurisdiction over these counterclaims pursuant to 28
`
`U.S.C. §§ 1331, 1338, 2201, and 2202.
`
`4.
`
`This Court has personal jurisdiction over CCE by virtue of, among other things, it
`
`having consented to the jurisdiction of this Court by filing its Complaint.
`
`5.
`
`Venue is proper in this district over CCE under 28 U.S.C. § 1391(b), (c) and (d).
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`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 14 of 25 PageID #: 1562
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`FACTUAL BACKGROUND
`
`6.
`
`U.S. Patent No. 8,385,966 (“the ‘966 patent”) is entitled “Method, Apparatus and
`
`Computer Program for Power Control Related to Random Access Procedures,” and issued on
`
`February 26, 2013.
`
`7.
`
`U.S. Patent No. 8,868,060 (“the ‘060 patent”) is entitled “Method, Network and
`
`Device for Information Provision by Using Paging and Cell Broadcast Services,” and issued on
`
`October 21, 2014.
`
`8.
`
`CCE claims that it is the assignee of the ‘966 and ‘060 patents (collectively, the
`
`“Patents-In-Suit”), with ownership of all substantial rights in the ‘966 and ’060 patents,
`
`including the right to exclude others and to enforce, sue, and recover damages for past and future
`
`infringements.
`
`FIRST COUNTERCLAIM
`
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,385,966)
`
`9.
`
`KCI incorporates and realleges Paragraphs 1 – 33 and 51 – 55 of its Answer and
`
`each of its Affirmative Defenses, and Paragraphs 1 – 8 of its Counterclaims.
`
`10.
`
`11.
`
`By its Complaint, CCE asserts that KCI has infringed the ‘966 patent.
`
`KCI has denied CCE’s claim of infringement of the ‘966 patent and contends that
`
`it does not infringe the ‘966 patent or any valid or enforceable asserted claim thereof.
`
`12.
`
`KCI’s accused products do not directly infringe, either literally and/or under the
`
`doctrine of equivalents, because they do not practice every element of at least one valid claim of
`
`the ‘966 patent.
`
`13.
`
`KCI’s accused products do not indirectly infringe the ‘966 patent. Among other
`
`things, there is no direct infringer practicing every element of at least one valid claim of the ‘966
`
`patent.
`
`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 15 of 25 PageID #: 1563
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`14.
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`An actual and justiciable controversy has thus arisen between CCE and KCI
`
`concerning the alleged infringement of the ‘966 patent.
`
`15.
`
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201, et seq., KCI
`
`is entitled to judgment from this Court finding that the ‘966 patent is not infringed, directly or
`
`indirectly, by KCI.
`
`SECOND COUNTERCLAIM
`
`(Declaratory Judgment of Invalidity of U.S. Patent No. 8,385,966)
`
`16.
`
`KCI incorporates and realleges Paragraphs 1 – 33 and 51 – 55 of its Answer and
`
`each of its Affirmative Defenses, and Paragraphs 1 – 15 of its Counterclaims.
`
`17.
`
`By its Complaint, CCE asserts that the ‘966 patent is valid. KCI has denied this
`
`allegation and contends that the ‘966 patent is invalid under 35 U.S.C. §§ 101, 102, 103 and/or
`
`112.
`
`18.
`
`The ‘966 patent is invalid under the Patent Act. The claimed subject matter was
`
`known in the art before May 5, 2008.
`
`19.
`
`An actual and justiciable controversy has thus arisen between CCE and KCI
`
`concerning the validity of the ‘966 patent.
`
`20.
`
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201, et seq., KCI
`
`is entitled to judgment from this Court finding that the ‘966 patent is invalid pursuant to 35
`
`U.S.C. §§ 101, 102, 103 and/or 112.
`
`THIRD COUNTERCLAIM
`
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,868,060)
`
`21.
`
`KCI incorporates and realleges Paragraphs 1 – 16 and 34 – 55 of its Answer and
`
`each of its Affirmative Defenses, and Paragraphs 1 – 20 of its Counterclaims.
`
`22.
`
`By its Complaint, CCE asserts that KCI has infringed the ‘060 patent.
`
`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 16 of 25 PageID #: 1564
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`23.
`
`KCI has denied CCE’s claim of infringement of the ‘060 patent and contends that
`
`it does not infringe the ‘060 patent or any valid or enforceable asserted claim thereof.
`
`24.
`
`KCI’s accused products do not directly infringe, either literally and/or under the
`
`doctrine of equivalents, because they do not practice every element of at least one valid claim of
`
`the ‘060 patent.
`
`25.
`
`KCI’s accused products do not indirectly infringe the ‘060 patent. Among other
`
`things, there is no direct infringer practicing every element of at least one valid claim of the ‘060
`
`patent.
`
`26.
`
`An actual and justiciable controversy has thus arisen between CCE and KCI
`
`concerning the alleged infringement of the ‘060 patent.
`
`27.
`
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201, et seq., KCI
`
`is entitled to judgment from this Court finding that the ‘060 patent is not infringed, directly or
`
`indirectly, by KCI.
`
`FOURTH COUNTERCLAIM
`
`(Declaratory Judgment of Invalidity of U.S. Patent No. 8,868,060)
`
`28.
`
`KCI incorporates and realleges Paragraphs 1 – 16 and 34 – 55 of its Answer and
`
`each of its Affirmative Defenses, and Paragraphs 1 – 27 of its Counterclaims.
`
`29.
`
`By its Complaint, CCE asserts that the ‘060 patent is valid. KCI has denied this
`
`allegation and contends that the ‘060 patent is invalid under 35 U.S.C. §§ 101, 102, 103 and/or
`
`112.
`
`30.
`
`The ‘060 patent is invalid under the Patent Act. The claimed subject matter was
`
`known in the art before April 2, 2007.
`
`31.
`
`An actual and justiciable controversy has thus arisen between CCE and KCI
`
`concerning the validity of the ‘060 patent.
`
`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 17 of 25 PageID #: 1565
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`32.
`
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201, et seq., KCI
`
`is entitled to judgment from this Court finding that the ‘060 patent is invalid pursuant to 35
`
`U.S.C. §§ 101, 102, 103 and/or 112.
`
`FIFTH COUNTERCLAIM
`
`(Breach of Contract)
`
`33.
`
`KCI incorporates and realleges Paragraphs 1 – 55 of its Answer and each of its
`
`Affirmative Defenses, and Paragraphs 1 – 32 of its Counterclaims.
`
`34.
`
`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.
`
`35.
`
`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.
`
`36.
`
`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. 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.
`
`37. 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.
`
`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 18 of 25 PageID #: 1566
`
`38.
`
`KCI is informed and believes that the ‘966 and ‘060 patents have been declared to
`
`relevant Standards Setting Organizations (“SSOs”), including Third Generation Partnership
`
`Project (“3GPP”), as essential to at least the GSM, UMTS, LTE, WCDMA Standards. 3GPP
`
`consists of six Organizational Partners—including the European Telecommunications Standards
`
`Institute (“ETSI”).
`
`39.
`
`CCE did not make an offer to license the Alleged Standard Essential Patents on
`
`FRAND terms to KCI prior to filing its Complaint for patent infringement.
`
`40.
`
`41.
`
`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.
`
`42.
`
`As a result of CCE’s breach, KCI has incurred damages and will be further
`
`damaged in the future. KCI 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.
`
`43.
`
`For at least the reasons detailed in the prior paragraphs, if KCI is found to have
`
`infringed the Patents-In-Suit, KCI is entitled to an order compelling specific performance of
`
`CCE’s FRAND obligations.
`
`SIXTH COUNTERCLAIM
`
`(Declaratory Judgment that KCI Is Licensed to Practice the Asserted Patents)
`
`44.
`
`KCI incorporates and realleges Paragraphs 1 – 55 of its Answer and each of its
`
`Affirmative Defenses, and Paragraphs 1 – 43 of its Counterclaims.
`
`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 19 of 25 PageID #: 1567
`
`45.
`
`On information and belief and by way of example without limitation, KCI has
`
`rights arising from its use of Qualcomm Incorporated (“Qualcomm”) components in certain KCI
`
`products.
`
`46.
`
`47.
`
`48.
`
`On information and belief, CCE has licensed the patents in suit to third parties.
`
`On information and belief, some of those third parties are KCI suppliers.
`
`In particular, KCI uses Qualcomm Incorporated (“Qualcomm”) components in
`
`certain accused KCI products.
`
`49.
`
`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”).
`
`50.
`
`KCI has an express or implied license to manufacture, use, import, and sell
`
`electronic devices incorporating licensed Qualcomm components under the Qualcomm Licensed
`
`Patents.
`
`51.
`
`Notwithstanding this license, CCE alleged infringement and is seeking
`
`compensation for products that are licensed under the Qualcomm license. KCI 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.
`
`SEVENTH COUNTERCLAIM
`
`(Promissory Estoppel)
`
`52.
`
`KCI incorporates and realleges Paragraphs 1 – 55 of its Answer and each of its
`
`Affirmative Defenses, and Paragraphs 1 – 51 of its Counterclaims.
`
`53.
`
`KCI is informed and believes that the ‘966 and ‘060 patents have been declared
`
`relevant to Standards Setting Organizations (“SSOs”), including Third Generation Partnership
`
`4833-4870-6090.2
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`Case 6:14-cv-00982-KNM Document 150 Filed 11/13/15 Page 20 of 25 PageID #: 1568
`
`Project (“3GPP”), as essential to at least the GSM, UMTS, LTE, WCDMA Standards. 3GPP
`
`consists of six Organizational Partners—including the European Telecommunications Standards
`
`Institute (“ETSI”).
`
`54.
`
`CCE’s and/or its predecessor’s declarati