throbber
Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 1 of 25
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`BANDSPEED, LLC,
`
` Plaintiff,
`
`v.
`
`REALTEK SEMICONDUCTOR
`CORPORATION,
`
`
`
` Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
` §
`
`Case No. 1:20-cv-00765-LY
`
`REALTEK’S ANSWER AND AFFIRMATIVE DEFENSES TO PLAINTIFF’S FIRST
`AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendant Realtek Semiconductor Corp. (“Defendant” or “Realtek”), by and through its
`
`undersigned counsel, hereby submits its Answer and Affirmative Defenses to Plaintiff Bandspeed,
`
`LLC’s (“Plaintiff” or “Bandspeed”) First Amended Complaint for Patent Infringement (“FAC”)
`
`dated March 13, 2022. To the extent any allegations in the FAC are not specifically admitted,
`
`Realtek denies them. In responding to the FAC, Realtek uses the headings employed by
`
`Bandspeed strictly as a convenience to the Court, and does not admit any allegation made in, or
`
`inference suggested by, such headings. Realtek answers the numbered paragraphs of the FAC as
`
`follows:
`
`NATURE OF ACTION
`I.
`Realtek admits that this is a patent infringement action. Realtek denies the
`
`1.
`
`remaining allegations directed to Realtek in paragraph 1 of the FAC.
`
`
`1
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 2 of 25
`
`2.
`
`Realtek admits that United States Patent No. 7,027,418 (“the ’418 Patent”), on its
`
`face, purports to have an issue date of April 11, 2006. Realtek further admits that United States
`
`Patent No. 7,477,624 (“the ’624 Patent”), on its face, purports to have an issue date of January 13,
`
`2009. Realtek further admits that United States Patent No. 7,570,614 (“the ’614 patent”), on its
`
`face, purports to have an issue date of August 4, 2009. Realtek further admits that United States
`
`Patent No. 7,903,608 (“the ’608 Patent”), on its face, purports to have an issue date of March 8,
`
`2011. Realtek further admits that United States Patent No. 8,542,643 (“the ’643 Patent”), on its
`
`face, purports to have an issue date of September 24, 2013. Realtek further admits that United
`
`States Patent No. 8,873,500 (“the ’500 Patent”), on its face, purports to have an issue date of
`
`October 28, 2014. Realtek further admits that United States Patent No. 9,379,769 (“the ’769
`
`Patent”), on its face, purports to have an issue date of June 28, 2016. Realtek further admits that
`
`United States Patent No. 9,883,520 (“the ’520 Patent”) (collectively, the “Asserted Patents”), on
`
`its face, purports to have an issue date of January 30, 2018. Realtek lacks knowledge and
`
`information sufficient to form a belief as to the truth of the remaining allegations of paragraph 2
`
`of the FAC, and therefore denies them.
`
`3.
`
`4.
`
`Admitted.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 4 of the FAC, and therefore denies them.
`
`5.
`
`6.
`
`Denied.
`
`Denied.
`
`
`
`
`
`2
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 3 of 25
`
`II.
`
`THE PARTIES
`
`7.
`
`Realtek admits that Bandspeed purports to incorporate by reference the allegations
`
`of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 7 of the FAC.
`
`8.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 8 of the FAC, and therefore denies them.
`
`9.
`
`Realtek admits that it is a corporation organized and existing under the laws of
`
`Taiwan, with a place of business located at No. 2, Innovation Road II, Hsinchu Science Park,
`
`Hsinchu 300, Taiwan.
`
`10.
`
`The allegations of paragraph 10 state a legal contention to which no response is
`
`required. To the extent that a response is nonetheless deemed to be required, Realtek lacks
`
`knowledge and information sufficient to form a belief as to the truth of the remaining allegations
`
`of paragraph 10 of the FAC, and therefore denies them.
`
`
`III. JURISDICTION AND VENUE
`
`11.
`
`Realtek admits that Bandspeed purports to incorporate by reference the allegations
`
`of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 11 of the FAC.
`
`12.
`
`The allegations of paragraph 12 state legal contentions to which no response is
`
`required. To the extent that a response is nonetheless deemed to be required, Realtek admits that
`
`Bandspeed purports to bring a patent infringement action under Title 35 of the United States Code.
`
`Realtek further admits that 28 U.S.C. §§ 1331 and 1338(a) confer jurisdiction as to claims arising
`
`under the patent laws and claims arising under the laws of the United States upon this Court.
`
`Realtek expressly denies that it has committed any acts of infringement in this or any other state.
`
`3
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 4 of 25
`
`Except as explicitly admitted, Realtek denies any allegations contained in paragraph 12 of the
`
`FAC.
`
`13.
`
`The allegations of paragraph 13 state a legal contention to which no response is
`
`required. To the extent that a response is nonetheless deemed to be required, Realtek denies the
`
`remaining allegations in paragraph 13 of the FAC.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 21 of the FAC, and therefore denies them.
`
`22.
`
`Realtek admits that it has participated in the International Consumer Electronics
`
`Show (CES) one or more years. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 22 of the FAC. Realtek expressly denies that any Realtek product infringes
`
`any claim of the Asserted Patents.
`
`23.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 23 of the FAC, and therefore denies them. Realtek expressly denies
`
`that any Realtek product infringes any claim of the Asserted Patents.
`
`24.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 24 of the FAC, and therefore denies them.
`
`4
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 5 of 25
`
`25.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 25 of the FAC, and therefore denies them. Realtek expressly denies
`
`that any Realtek product infringes any claim of the Asserted Patents.
`
`26.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 26 of the FAC, and therefore denies them. Realtek expressly denies
`
`that any Realtek product infringes any claim of the Asserted Patents.
`
`27.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 27 of the FAC, and therefore denies them. Realtek expressly denies
`
`that any Realtek product infringes any claim of the Asserted Patents.
`
`28.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 28 of the FAC, and therefore denies them. Realtek expressly denies
`
`that any Realtek product infringes any claim of the Asserted Patents.
`
`29.
`
`30.
`
`Denied.
`
`Realtek admits that its 2019 Annual Report states, “Realtek will actively expand
`
`the high-end smart speaker 11ac market in Europe and America.” Except as explicitly admitted,
`
`Realtek denies any allegations contained in paragraph 30 of the FAC.
`
`31.
`
`Realtek admits that its 2020 Annual Report recites “actively and strategically
`
`expand in the smart speaker market in Europe and America.” Except as explicitly admitted,
`
`Realtek denies any allegations contained in paragraph 31 of the FAC.
`
`32.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 32 of the FAC that pertain to the WiFi Alliance, and therefore
`
`denies them. Except as explicitly admitted, Realtek denies any allegations contained in
`
`paragraph 32 of the FAC.
`
`5
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 6 of 25
`
`33.
`
`The allegations of paragraph 33 state a legal contention to which no response is
`
`required. To the extent that a response is nonetheless deemed to be required, Realtek admits that
`
`Bandspeed purports to bring a claim that arises under federal law. Except as explicitly admitted,
`
`Realtek denies any allegations contained in paragraph 33 of the FAC.
`
`34.
`
`The allegations of paragraph 33 state a legal contention to which no response is
`
`required. To the extent that a response is nonetheless deemed to be required, Realtek admits that
`
`Dkt. No. 17 contains the quoted language in paragraph 34 of the FAC. Realtek admits that it
`
`alleges that it does not have any place of business, operations, real or personal property, or assets
`
`anywhere in the United States. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 34 of the FAC.
`
`35.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 35 of the FAC that pertain to the Bluetooth SIG. Realtek admits
`
`that it is an “adopter” member of the Bluetooth SIG. Except as explicitly admitted, Realtek
`
`denies any allegations contained in paragraph 35 of the FAC.
`
`36.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 32 of the FAC that pertain to the WiFi Alliance, and therefore
`
`denies them. Except as explicitly admitted, Realtek denies any allegations contained in
`
`paragraph 36 of the FAC.
`
`37.
`
`Realtek admits that https://fccid.io/TX2-RTL8822CE contains the quoted
`
`language in paragraph 37 of the FAC. Except as explicitly admitted, Realtek denies any
`
`allegations contained in paragraph 37 of the FAC.
`
`38.
`
`Denied.
`
`6
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 7 of 25
`
`39.
`
`The allegations of paragraph 39 state a legal contention to which no response is
`
`required. To the extent that a response is nonetheless deemed to be required, Realtek admits that
`
`28 U.S.C. §§ 139l (c)(3) contains the quoted language in paragraph 39 of the FAC.
`
`40.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 40 of the FAC, and therefore denies them.
`
`IV. NOTICE
`
`41.
`
`Realtek admits that Bandspeed purports to incorporate by reference the
`
`allegations of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any
`
`allegations contained in paragraph 41 of the FAC.
`
`42.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 42 of the FAC, and therefore denies them. Realtek expressly
`
`denies that it has committed any acts of infringement.
`
`43.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 43 of the FAC, and therefore denies them. Realtek expressly
`
`denies that it has committed any acts of infringement.
`
`44.
`
`Denied.
`
`
`V.
`
`PLAINTIFF’S PATENTS
`
`45.
`
`Realtek admits that Bandspeed purports to incorporate by reference the
`
`allegations of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any
`
`allegations contained in paragraph 45 of the FAC.
`
`46.
`
`Realtek admits that the ’418 Patent contains the quoted language in paragraph 46
`
`of the FAC. Realtek denies the remaining allegations in paragraph 46 of the FAC.
`
`7
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 8 of 25
`
`47.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 47 of the FAC, and therefore denies them.
`
`48.
`
`Realtek admits that the ’608 Patent contains the quoted language in paragraph 48
`
`of the FAC. Realtek denies the remaining allegations in paragraph 48 of the FAC.
`
`49.
`
`Realtek admits that the ’500 Patent contains the quoted language in paragraph 49
`
`of the FAC. Realtek denies the remaining allegations in paragraph 49 of the FAC.
`
`VI. DEFENDANT’S ACTS
`
`Realtek admits that Bandspeed purports to incorporate by reference the allegations
`
`50.
`
`of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 50 of the FAC.
`
`51.
`
`Realtek admits that it provides, sells, uses, offers for sale, and/or distributes
`
`integrated circuits outside the United States. Except as explicitly admitted, Realtek denies any
`
`allegations contained in paragraph 51 of the FAC.
`
`52.
`
`Realtek admits that it manufactures and provides, sells, uses, offers for sale, and/or
`
`distributes integrated circuits outside the United States. Except as explicitly admitted, Realtek
`
`denies any allegations contained in paragraph 52 of the FAC.
`
`53.
`
`Realtek admits the FAC refers to “Bluetooth Classic Products” and “Bluetooth LE
`
`Products” as “Infringing Products.” Realtek expressly denies that any Realtek product infringes
`
`any claim of the Asserted Patents.
`
`54.
`
`55.
`
`56.
`
`57.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`8
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 9 of 25
`
`58.
`
`59.
`
`60.
`
`61.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 61 of the FAC that pertain to Roku and its activities, and therefore
`
`denies them. Except as explicitly admitted, Realtek denies any allegations contained in paragraph
`
`61 of the FAC.
`
`62.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 62 of the FAC, and therefore denies them.
`
`63.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 63 of the FAC, and therefore denies them. Realtek expressly
`
`denies that any Realtek product infringes any claim of the Asserted Patents.
`
`64.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 64 of the FAC, and therefore denies them.
`
`65.
`
`66.
`
`67.
`
`Denied.
`
`Denied.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 67 of the FAC that pertain to the FCC and its activities, and
`
`therefore denies them. Except as explicitly admitted, Realtek denies any allegations contained in
`
`paragraph 67 of the FAC.
`
`68.
`
`69.
`
`Denied.
`
`Denied.
`
`9
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 10 of 25
`
`70.
`
`Realtek admits that https://fccid.io/TX2-RTL8822CE contains the quoted
`
`language in paragraph 70 of the FAC. Realtek lacks knowledge and information sufficient to
`
`form a belief as to the truth of the remaining allegations of paragraph 70 of the FAC, and therefore
`
`denies them.
`
`71.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 71 of the FAC, and therefore denies them. Realtek expressly
`
`denies that any Realtek product infringes any claim of the Asserted Patents.
`
`72.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 72 of the FAC, and therefore denies them.
`
`73.
`
`74.
`
`75.
`
`Denied.
`
`Denied.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 75 of the FAC, and therefore denies them. Realtek expressly
`
`denies that any Realtek product infringes any claim of the Asserted Patents.
`
`76.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 76 of the FAC, and therefore denies them.
`
`77.
`
`78.
`
`Denied.
`
`Realtek admits that the quoted language is contained in the RTL8763B Series User
`
`Manual. Except as explicitly admitted, Realtek denies any allegations contained in paragraph 78
`
`of the FAC.
`
`79.
`
`80.
`
`Denied.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 80 of the FAC that pertain to the FCC and its activities, and
`
`10
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 11 of 25
`
`therefore denies them. Except as explicitly admitted, Realtek denies any allegations contained in
`
`paragraph 80 of the FAC.
`
`81.
`
`82.
`
`83.
`
`Denied.
`
`Denied.
`
`Realtek admits that https://fccid.io/TX2-RTL8763BA contains the quoted
`
`language in paragraph 83 of the FAC. Realtek lacks knowledge and information sufficient to
`
`form a belief as to the truth of the remaining allegations of paragraph 83 of the FAC, and therefore
`
`denies them.
`
`84.
`
`Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations of paragraph 84 of the FAC, and therefore denies them. Realtek expressly
`
`denies that any Realtek product infringes any claim of the Asserted Patents.
`
`85.
`
`86.
`
`87.
`
`Denied.
`
`Denied.
`
`Realtek lacks knowledge and information sufficient to form a belief as to alleged
`
`activities of its customers in paragraph 87 of the FAC, and therefore denies them. Except as
`
`explicitly admitted, Realtek denies any allegations contained in paragraph 87 of the FAC.
`
`88.
`
`89.
`
`90.
`
`91.
`
`92.
`
`93.
`
`94.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`11
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 12 of 25
`
`COUNT ONE
`
`PATENT INFRINGEMENT – U.S. PATENT NO. 7,027,418
`(AGAINST INFRINGING BLUETOOTH CLASSIC PRODUCTS)
`
`Realtek admits that Bandspeed purports to incorporate by reference the allegations
`
`95.
`
`of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 95 of the FAC.
`
`96.
`
`Realtek admits that the ’418 Patent contains the quoted language in paragraph 96
`
`of the FAC.
`
`A.
`97.
`
`98.
`
`99.
`
`Indirect Infringement (Inducement - 35 U.S.C. § 271(b))
`Denied.
`
`Denied.
`
`Denied.
`
`100. Denied.
`
`101. Denied.
`
`102. Denied.
`
`103. Denied
`
`Indirect Infringement (Contribution - 35 U.S.C. §§ 271(c) and/or 271(f))
`B.
`104. Denied.
`
`105. Denied.
`
`106. Denied.
`
`107. Denied.
`
`
`
`
`
`
`
`
`
`12
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 13 of 25
`
`COUNT TWO
`
`PATENT INFRINGEMENT – U.S. PATENT NO. 7,477,624
`(AGAINST INFRINGING BLUETOOTH CLASSIC PRODUCTS)
`
`108. Realtek admits that Bandspeed purports to incorporate by reference the allegations
`
`of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 108 of the FAC.
`
`109. Realtek admits that the ’624 Patent contains the quoted language in paragraph 109
`
`of the FAC.
`
`Indirect Infringement (Inducement - 35 U.S.C. § 271(b))
`A.
`110. Denied.
`
`111. Denied.
`
`112. Denied.
`
`113. Denied.
`
`114. Denied.
`
`115. Denied.
`
`116. Denied.
`
`Indirect Infringement (Contribution - 35 U.S.C. §§ 271(c) and/or 271(f))
`B.
`117. Denied.
`
`118. Denied.
`
`119. Denied.
`
`120. Denied.
`
`
`
`
`
`
`
`
`
`13
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 14 of 25
`
`COUNT THREE
`
`PATENT INFRINGEMENT – U.S. PATENT NO. 7,570,614
`(AGAINST INFRINGING BLUETOOTH CLASSIC PRODUCTS)
`
`121. Realtek admits that Bandspeed purports to incorporate by reference the allegations
`
`of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 121 of the FAC.
`
`122. Denied.
`
`Indirect Infringement (Inducement – 35 U.S.C. § 271(b))
`A.
`123. Denied.
`
`124. Denied.
`
`125. Denied.
`
`126. Denied.
`
`127. Denied.
`
`128. Denied.
`
`129. Denied.
`
`Indirect Infringement (Contribution – 35 U.S.C. §§ 271(c) and/or 271(f))
`B.
`130. Denied.
`
`131. Denied.
`
`132. Denied.
`
`133. Denied.
`
`
`
`
`
`
`
`
`
`
`
`14
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 15 of 25
`
`COUNT FOUR
`
`PATENT INFRINGEMENT – U.S. PATENT NO. 7,903,608
`(AGAINST INFRINGING BLUETOOTH CLASSIC PRODUCTS
`AND INFRINGING BLUETOOTH LE PRODUCTS)
`
`134. Realtek admits that Bandspeed purports to incorporate by reference the allegations
`
`of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 134 of the FAC.
`
`135. Realtek admits that the ’608 Patent contains the quoted language in paragraph 135
`
`of the FAC.
`
`Indirect Infringement (Inducement - 35 U.S.C. § 271(b))
`A.
`136. Denied.
`
`137. Denied.
`
`138. Denied.
`
`139. Denied.
`
`140. Denied.
`
`141. Denied.
`
`142. Denied.
`
`143. Denied.
`
`Indirect Infringement (Contribution - 35 U.S.C. §§ 271(c) and/or 271(f))
`B.
`144. Denied.
`
`145. Denied.
`
`146. Denied.
`
`147. Denied.
`
`148. Denied.
`
`
`
`
`15
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 16 of 25
`
`COUNT FIVE
`
`PATENT INFRINGEMENT – U.S. PATENT NO. 8,542,643
`(AGAINST INFRINGING BLUETOOTH CLASSIC PRODUCTS
`AND INFRINGING BLUETOOTH LE PRODUCTS)
`
`149. Realtek admits that Bandspeed purports to incorporate by reference the allegations
`
`of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 149 of the FAC.
`
`150. Realtek admits that the ’643 Patent contains the quoted language in paragraph 150
`
`of the FAC.
`
`Indirect Infringement (Inducement – 35 U.S.C. § 271(b))
`A.
`151. Denied.
`
`152. Denied.
`
`153. Denied.
`
`154. Denied.
`
`155. Denied.
`
`156. Denied.
`
`157. Denied.
`
`158. Denied.
`
`Indirect Infringement (Contribution – 35 U.S.C. §§ 271(c) and/or 271(f))
`B.
`159. Denied.
`
`160. Denied.
`
`161. Denied.
`
`162. Denied.
`
`163. Denied.
`
`
`
`
`16
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 17 of 25
`
`COUNT SIX
`
`PATENT INFRINGEMENT – U.S. PATENT NO. 8,873,500
`(AGAINST INFRINGING BLUETOOTH CLASSIC PRODUCTS
`AND INFRINGING BLUETOOTH LE PRODUCTS)
`
`164. Realtek admits that Bandspeed purports to incorporate by reference the allegations
`
`of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 164 of the FAC.
`
`165. Realtek admits that the ’500 Patent contains the quoted language in paragraph 165
`
`of the FAC.
`
`Indirect Infringement (Inducement - 35 U.S.C. § 271(b))
`A.
`166. Denied.
`
`167. Denied.
`
`168. Denied.
`
`169. Denied.
`
`170. Denied.
`
`171. Denied.
`
`172. Denied.
`
`173. Denied.
`
`Indirect Infringement (Contribution - 35 U.S.C. §§ 271(c) and/or 271(f))
`B.
`174. Denied.
`
`175. Denied.
`
`176. Denied.
`
`177. Denied.
`
`178. Denied.
`
`
`
`
`17
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 18 of 25
`
`COUNT SEVEN
`
`PATENT INFRINGEMENT – U.S. PATENT NO. 9,379,769
`(AGAINST INFRINGING BLUETOOTH CLASSIC PRODUCTS
`AND INFRINGING BLUETOOTH LE PRODUCTS)
`
`179. Realtek admits that Bandspeed purports to incorporate by reference the allegations
`
`of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 179 of the FAC.
`
`180. Realtek admits that the ’769 Patent contains the quoted language in paragraph 180
`
`of the FAC.
`
`A.
`
`Indirect Infringement (Inducement – 35 U.S.C. § 271(b))
`
`181. Denied.
`
`182. Denied.
`
`183. Denied.
`
`184. Denied.
`
`185. Denied.
`
`186. Denied.
`
`187. Denied.
`
`188. Denied.
`
`Indirect Infringement (Contribution – 35 U.S.C. §§ 271(c) and/or 271(f))
`B.
`189. Denied.
`
`190. Denied.
`
`191. Denied.
`
`192. Denied.
`
`193. Denied.
`
`
`
`
`18
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 19 of 25
`
`COUNT EIGHT
`
`PATENT INFRINGEMENT – U.S. PATENT NO. 9,883,520
`(AGAINST INFRINGING BLUETOOTH CLASSIC PRODUCTS
`AND INFRINGING BLUETOOTH LE PRODUCTS)
`
`194. Realtek admits that Bandspeed purports to incorporate by reference the allegations
`
`of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any allegations
`
`contained in paragraph 194 of the FAC.
`
`195. Realtek admits that the ’520 Patent contains the quoted language in paragraph 195
`
`of the FAC.
`
`Indirect Infringement (Inducement – 35 U.S.C. § 271(b))
`A.
`196. Denied.
`
`197. Denied.
`
`198. Denied.
`
`199. Denied.
`
`200. Denied.
`
`201. Denied.
`
`202. Denied.
`
`203. Denied.
`
`Indirect Infringement (Contribution – 35 U.S.C. §§ 271(c) and/or 271(f))
`B.
`204. Denied.
`
`205. Denied.
`
`206. Denied.
`
`207. Denied.
`
`208. Denied.
`
`
`
`
`19
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 20 of 25
`
`VII. WILLFULNESS
`
`209. Realtek admits that Bandspeed purports to incorporate by reference the
`
`allegations of all the foregoing paragraphs. Except as explicitly admitted, Realtek denies any
`
`allegations contained in paragraph 209 of the FAC.
`
`210. Realtek lacks knowledge and information sufficient to form a belief as to the truth
`
`of the allegations in the first sentence of paragraph 210 of the FAC, and therefore denies them.
`
`Realtek expressly denies any remaining allegations of paragraph 210 of the FAC.
`
`211. Denied.
`
`212. Denied.
`
`213. Denied.
`
`214. Realtek denies that Bandspeed is entitled to enhanced damages pursuant to 35
`
`U.S.C. § 284.
`
`C. JURY DEMAND
`
`215. This paragraph contains a demand for a jury trial to which no response is required.
`
` D. REQUEST FOR RELIEF
`
`
`
`Realtek denies that Bandspeed is entitled to any of the relief sought in paragraphs A-C of
`
`its prayer for relief against Realtek, or any other relief, and requests that the Court deny all such
`
`relief to Bandspeed in its entirety and with prejudice.
`
`AFFIRMATIVE DEFENSES
`
`
`
`Subject to the responses above, Realtek alleges and asserts the following defenses in
`
`response to the allegations, undertaking the burden of proof only as to those defenses deemed
`
`affirmative defenses by law, regardless of how such defenses are denominated herein. Realtek’s
`
`investigation of its defenses is continuing, and Realtek expressly reserves the right to allege and
`
`assert any additional defenses under Rule 8 of the Federal Rules of Civil Procedure, the Patent
`
`20
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 21 of 25
`
`Laws of the United States and any other defenses, at law in or in equity, that may now exist or in
`
`the future be available based upon discovery and further investigation in this case.
`
`FIRST AFFIRMATIVE DEFENSE
`
`(Non-infringement)
`
`
`
`Realtek has not and does not infringe, contribute to the infringement of, or actively induce
`
`others to infringe, either literally or by the application of the doctrine of equivalents, any valid and
`
`enforceable claim of the ’418 Patent, the ’624 Patent, the ’614 Patent, the ’608 Patent, the ’643
`
`Patent, the ’500 Patent, the ’769 Patent, and/or the ’520 Patent, and Bandspeed has failed to state
`
`a claim for infringement.
`
`SECOND AFFIRMATIVE DEFENSE
`
`(Invalidity and Patent Ineligibility)
`
`
`
`The asserted claims of the ’418 Patent, the ’624 Patent, the ’614 Patent, the ’608 Patent,
`
`the ’643 Patent, the ’500 Patent, the ’769 Patent, and the ’520 Patent are invalid, unenforceable,
`
`patent ineligible and/or void for failure to satisfy one or more of the requirements for patentability
`
`set forth in Title 35 of the United States Code, including without limitation, 35 U.S.C. §§ 101, 102,
`
`103, 112, 116, and/or 256.
`
`THIRD AFFIRMATIVE DEFENSE
`
`(Preclusion of Costs)
`
`
`
`To the extent that any claim of the ’418 Patent, the ’624 Patent, the ’614 Patent, the ’608
`
`Patent, the ’643 Patent, the ’500 Patent, the ’769 Patent, and the ’520 Patent is held to be invalid,
`
`Bandspeed must be precluded from recovering costs related to this action pursuant to 35 U.S.C. §
`
`288.
`
`
`
`21
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 22 of 25
`
`FOURTH AFFIRMATIVE DEFENSE
`
`(Limitations on Damages)
`
`
`
`Any claim for damages for infringement of the ’418 Patent, the ’624 Patent, the ’614 Patent,
`
`the ’608 Patent, the ’643 Patent, the ’500 Patent, the ’769 Patent, and the ’520 Patent is statutorily
`
`limited under 35 U.S.C. § 286 and is further limited by 35 U.S.C. § 287(a) due to noncompliance
`
`with the marking and actual notice requirements.
`
`FIFTH AFFIRMATIVE DEFENSE
`
`(License and Patent Exhaustion)
`
`
`
`Bandspeed’s claims are barred, in whole or in part, to the extent that any allegedly
`
`infringing products or components are supplied, directly or indirectly, to Realtek by an entity or
`
`entities having express or implied licenses or covenants not to sue under the ’418 Patent, the ’624
`
`Patent, the ’614 Patent, the ’608 Patent, the ’643 Patent, the ’500 Patent, the ’769 Patent, and the
`
`’520 Patent and/or under the doctrines of patent exhaustion, first sale and/or full compensation.
`
`SIXTH AFFIRMATIVE DEFENSE
`
`(Patent Misuse/Prosecution Laches/Waiver/Unclean Hands/Estoppel)
`
`
`
`The ’418 Patent, the ’624 Patent, the ’614 Patent, the ’608 Patent, the ’643 Patent, the ’500
`
`Patent, the ’769 Patent, and the ’520 Patent are unenforceable in whole or in part, and Bandspeed
`
`is barred, in whole or in part, from asserting the Asserted Patents against Realtek, by the doctrines
`
`of equivalents, patent misuse, prosecution laches, waiver, unclean hands, and/or estoppel
`
`(including equitable estoppel).
`
`
`
`
`
`
`
`22
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 23 of 25
`
`SEVENTH AFFIRMATIVE DEFENSE
`
`(No Exceptional Case)
`
`
`
`Bandspeed cannot prove that this is an exceptional case justifying an award of attorney
`
`fees against Realtek pursuant to 35 U.S.C. § 285.
`
`EIGHTH AFFIRMATIVE DEFENSE
`
`(No Injunctive Relief)
`
`
`
`Bandspeed is not entitled to injunctive relief because any alleged injury to Bandspeed is
`
`not immediate or irreparable and Bandspeed has an adequate remedy at law for any alleged injury.
`
`NINTH AFFIRMATIVE DEFENSE
`
`(Laches)
`
`
`
`Bandspeed’s claim for injunctive relief is barred by laches as Bandspeed unreasonably and
`
`inexcusably delayed in filing suit to the material prejudice of Realtek.
`
`TENTH AFFIRMATIVE DEFENSE
`
`(Lack of Personal Jurisdiction)
`
`
`
`Realtek Semiconductor Corp. is not subject to this Court’s personal jurisdiction. Realtek
`
`Semiconductor Corp. is a corporation duly organized and existing under the laws of Taiwan, with
`
`an office located at No. 2, Innovation Road II, Hsinchu Science Park, Hsinchu 300, Taiwan.
`
`Realtek Semiconductor Corp. does not reside in Texas, is not doing business in Texas, and has not
`
`purposefully directed its activities at residents of this forum.
`
`ELEVENTH AFFIRMATIVE DEFENSE
`
`(Prosecution History Estoppel)
`
`
`
`Bandspeed is estopped from construing a valid and enforceable claim, if any, of the
`
`Asserted Patents as infringed by Realtek due to admissions and/or statements made (a) to the
`
`23
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 24 of 25
`
`United States Patent and Trademark Office during prosecution of the Asserted Patents or related
`
`patent applications, and (b) in the specifications and claims of the Asserted Patents.
`
`RESERVATION OF AFFIRMATIVE DEFENSES
`
`
`
`Realtek may have other separate and additional defenses of which it is not presently aware
`
`and hereby reserves the right to raise such defenses by amendment of this Answer, including to
`
`conform to proof at trial. Realtek therefore reserves all defenses under the Federal Rules of Civil
`
`Procedure, including those listed in Rule 8(c), the Patent Laws of the United States and any other
`
`and additional defenses, at law or in equity, that are now or may become available or appear during,
`
`or as a result of, discovery proceedings in this action.
`
`Dated: November 4, 2022
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
` /s/ G. Blake Thompson
`G. Blake Thompson
`State Bar No. 24042033
`Blake@TheMannFirm.com
`J. Mark Mann
`State Bar No. 12926150
`Mark@TheMannFirm.com
`MANN | TINDEL | THOMPSON
`201 E. Howard St.
`Henderson, TX 75654
`Telephone: 903.657.8540
`Facsimile: 903.657.6003
`
`Jeffrey L. Johnson
`State Bar No. 24029638
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`609 Main, 40th Floor
`Houston, TX 77002
`Telephone: 713.658.6400
`Facsimile: 713.658.6401
`jj@orrick.com
`
`
`
`
`24
`
`

`

`Case 1:20-cv-00765-DAE Document 48 Filed 11/04/22 Page 25 of 25
`
`Robert J. Benson
`ORRICK, HERRINGTON & SUTCLIFFE LLP

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