Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 1 of 32
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`MEDIA CHAIN, LLC,
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`
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`Plaintiff,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`DEFENDANT’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIMS TO PLAINTIFF’S COMPLAINT
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`v.
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`ROKU, INC.,
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`
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`Defendant.
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`Case No. 1:21-cv-00027
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`DEMAND FOR JURY TRIAL
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`Defendant Roku, Inc. (“Roku” or “Defendant”), by and through its undersigned counsel,
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`hereby responds to the allegations set forth in Plaintiff Media Chain, LLC’s (“Media Chain” or
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`“Plaintiff”) Complaint for Patent Infringement (“Complaint”). Roku denies all allegations in the
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`Complaint, whether express or implied, that are not specifically admitted below. Any factual
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`allegation below is admitted only as to the specific admitted facts and not as to any purported
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`conclusions, characterizations, implications, or speculations that arguably follow from the
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`admitted facts. Roku further denies that Plaintiff is entitled to the relief requested or any other
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`relief. At this early stage of the case, investigation remains ongoing, and no claim terms have been
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`construed. Roku has no obligation to respond to infringement allegations that incorporate
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`conclusions of law on claim construction. Each allegation that includes or paraphrases claim
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`language is also denied because Roku lacks sufficient knowledge or information about how the
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`Court will rule on claim construction, and therefore cannot form a belief regarding such
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`allegations, and denies on that basis.
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`THE NATURE OF THE ACTION
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`1.
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`Roku lacks sufficient knowledge or information to form a belief as to the truth of
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`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 2 of 32
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`the allegations in paragraph 1, as to whether Plaintiff owns United States Patent Nos. 9,715,581
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`B1 (the “’581 Patent”), 9,898,590 B2 (the “’590 Patent”), 10,489,560 B2 (the “’560 Patent”),
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`10,515,191 B2 (the “’191 Patent”), 10,860,691 B2 (the “’691 Patent”), and 10,885,154 B2 (the
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`“’154 Patent”) (collectively, the “Patents-in-Suit”) by assignment, and on that basis, denies all
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`such allegations.
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`2.
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`Roku admits that, according to the face of the patents, the Abstracts contain the
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`language stated in paragraph 2.
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`3.
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`Roku lacks sufficient knowledge or information to form a belief as to the truth of
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`the allegations in paragraph 3 and, on that basis, denies all such allegations.
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`4.
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`Roku admits that Plaintiff’s Complaint purports to state claims for patent
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`infringement under the patent laws of the United States, Title 35 of the United States Code, but
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`denies that it has committed, contributed to, or induced any past or ongoing acts of patent
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`infringement.
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`PARTIES
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`5.
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`Roku lacks sufficient knowledge or information to form a belief as to the truth of
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`the allegations in paragraph 5 and, on that basis, denies all such allegations.
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`6.
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`Roku admits that Roku, Inc. is a Delaware corporation and maintains its corporate
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`headquarters at 1155 Coleman Ave., San Jose, California 95110.
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`7.
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`Roku admits to maintaining offices across the United States and to having an office
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`located at 9606 N. Mopac Expressway, Suite 400, Austin, Texas 78759.
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`8.
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`Roku admits that it has a place of business at 9606 N. Mopac Expressway, Suite
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`400, Austin, Texas 78759 in the Western District of Texas, and employs over 100 individuals at
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`its Austin office. Roku denies that the Western District of Texas is the district most convenient to
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`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 3 of 32
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`hear this case.
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`9.
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`Roku admits that it has been registered as a foreign for-profit corporation with the
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`Texas Secretary of State since 2014.
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`JURISDICTION AND VENUE
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`10.
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`Roku admits that the Complaint purports to initiate an action for patent
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`infringement arising under the patent laws of the United States, contained in Title 35 of the United
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`States Code. Roku admits that this Court has subject matter jurisdiction pursuant to 28 U.S.C. §
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`1338(a) over actions arising under the patent laws of the United States. Roku denies it has
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`committed any act that would give rise to any claim in the Complaint.
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`11.
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`This paragraph sets forth legal conclusions to which no response is required. To
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`the extent a response is required, Roku does not contest that this Court has personal jurisdiction
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`over it for purposes of this action only. Except as expressly admitted, Roku denies the remaining
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`allegations in paragraph 11.
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`12.
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`Roku denies that it has committed, contributed to, or induced any past or ongoing
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`acts of patent infringement.
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`13.
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`This paragraph sets forth legal conclusions to which no response is required. To
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`the extent a response is required, Roku admits that Plaintiff purports to base venue in this district
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`under 28 U.S.C. § 1400(b) and otherwise denies the remaining allegations in paragraph 13 of the
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`Complaint. Roku further denies that the Western District of Texas is the district most convenient
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`to hear this case.
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`GENERAL ALLEGATIONS
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`14.
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`Roku lacks sufficient knowledge or information to form a belief as to the truth of
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`the allegations in paragraph 14 and, on that basis, denies all such allegations.
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`-3-
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`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 4 of 32
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`15.
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`Roku denies that it has committed, contributed to, or induced any past or ongoing
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`acts of patent infringement.
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`16.
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`Roku admits that Exhibit C purports to be preliminary claim charts but denies it has
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`infringed any of the claims. Except as expressly admitted, Roku denies the remaining allegations
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`in paragraph 16.
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`17.
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`Roku admits that Exhibit C purports to be preliminary claim charts but denies it has
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`infringed any of the claims. Except as expressly admitted, Roku denies the remaining allegations
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`in paragraph 17.
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`18.
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`19.
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`20.
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`Roku denies the allegations in paragraph 18.
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`Roku denies the allegations in paragraph 19.
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`Roku lacks sufficient knowledge or information to form a belief as to the truth of
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`the allegations in paragraph 20 and, on that basis, denies all such allegations.
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`21.
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`Roku admits that Plaintiff has appeared to retain counsel in this matter. Except as
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`expressly admitted, Roku denies the remaining allegations in paragraph 21.
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`COUNT I: [ALLEGED] DIRECT INFRINGEMENT OF THE ’581 PATENT
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`Roku repeats and incorporates by reference its responses to the allegations of
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`22.
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`paragraphs 1-21 of the Complaint.
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`23.
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`24.
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`Roku denies the allegations in paragraph 23.
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`Roku denies the allegations in paragraph 24. Roku further denies that Plaintiff is
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`entitled to any of the relief requested in paragraphs (A)–(E) or any other relief of any kind.
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`COUNT II: [ALLEGED] DIRECT INFRINGEMENT OF THE ’590 PATENT
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`Roku repeats and incorporates by reference its responses to the allegations of
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`25.
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`paragraphs 1-21 of the Complaint.
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`-4-
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`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 5 of 32
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`26.
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`27.
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`Roku denies the allegations in paragraph 26.
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`Roku denies the allegations in paragraph 27. Roku further denies that Plaintiff is
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`entitled to any of the relief requested in paragraphs (A)–(E) or any other relief of any kind.
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`COUNT III: [ALLEGED] DIRECT INFRINGEMENT OF THE ’560 PATENT
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`Roku repeats and incorporates by reference its responses to the allegations of
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`28.
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`paragraphs 1-21 of the Complaint.
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`29.
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`30.
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`Roku denies the allegations in paragraph 29.
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`Roku denies the allegations in paragraph 30. Roku further denies that Plaintiff is
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`entitled to any of the relief requested in paragraphs (A)–(E) or any other relief of any kind.
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`COUNT IV: [ALLEGED] DIRECT INFRINGEMENT OF THE ’191 PATENT
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`31.
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`Roku repeats and incorporates by reference its responses to the allegations of
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`paragraphs 1-21 of the Complaint.
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`32.
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`33.
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`Roku denies the allegations in paragraph 32.
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`Roku denies the allegations in paragraph 33. Roku further denies that Plaintiff is
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`entitled to any of the relief requested in paragraphs (A)–(E) or any other relief of any kind.
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`COUNT V: [ALLEGED] DIRECT INFRINGEMENT OF THE ’691 PATENT
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`34.
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`Roku repeats and incorporates by reference its responses to the allegations of
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`paragraphs 1-21 of the Complaint.
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`35.
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`36.
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`Roku denies the allegations in paragraph 35.
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`Roku denies the allegations in paragraph 36. Roku further denies that Plaintiff is
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`entitled to any of the relief requested in paragraphs (A)–(E) or any other relief of any kind.
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`COUNT VI: [ALLEGED] DIRECT INFRINGEMENT OF THE ’154 PATENT
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`37.
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`Roku repeats and incorporates by reference its responses to the allegations of
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`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 6 of 32
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`paragraphs 1-21 of the Complaint.
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`38.
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`39.
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`Roku denies the allegations in paragraph 38.
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`Roku denies the allegations in paragraph 39. Roku further denies that Plaintiff is
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`entitled to any of the relief requested in paragraphs (A)–(E) or any other relief of any kind.
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`JURY DEMAND
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`No response is necessary to Plaintiff’s request for trial by jury; however, to the extent that
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`a response is necessary, Roku admits that the Complaint sets forth a request for trial by jury.
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`ROKU’S DEFENSES, INCLUDING AFFIRMATIVE DEFENSES
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`Subject to its responses above, and upon information and belief, Roku alleges and asserts
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`the following defenses in response to the allegations in the Complaint, undertaking the burden of
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`proof only as to those defenses deemed affirmative defenses by law, regardless of how such
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`defenses are denominated herein. In addition to the defenses described below, subject to the
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`responses above, Roku specifically reserves all rights to allege additional defenses pursuant to any
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`scheduling order that become known through the course of discovery or otherwise.
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`FIRST DEFENSE – FAILURE TO STATE A CLAIM
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`Plaintiff has failed to plead its claims of direct patent infringement with sufficient
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`specificity or factual support to place Roku on notice of the claims Plaintiff is asserting against it,
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`such that Plaintiff has failed to state a claim upon which relief can be granted.
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`SECOND DEFENSE – NON-INFRINGEMENT
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`Roku does not infringe and has not infringed, either literally or under the doctrine of
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`equivalents, directly, contributorily, by inducement, or jointly, any valid and enforceable claim of
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`any of the Patents-in-Suit, willfully or otherwise.
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`-6-
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`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 7 of 32
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`THIRD DEFENSE – INVALIDITY
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`One or more claims of the Patents-in-Suit are invalid for failure to satisfy one or more
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`conditions for patentability set forth in 35 U.S.C. § 101 et seq., including but not limited to sections
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`101, 102, 103, and 112; the applicable provisions of Title 37 of the Code of Federal Regulations;
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`and judicially created bases for invalidation, such as double patenting.
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`One or more claims of the Patents-in-Suit are invalid under 35 U.S.C. § 101 because they
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`claim non-statutory subject matter and/or are directed to abstract ideas and fail to recite an
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`inventive concept that could transform the unpatentable abstract ideas to which they are directed.
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`One or more claims of the Patents-in-Suit are invalid under 35 U.S.C. §§ 102 and 103
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`because one or more prior art references, including those references listed on the face of the
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`Patents-in-Suit, either alone or in combination, disclose one or more claims of the Patents-in-Suit
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`and/or the alleged invention(s) claimed therein that would have been obvious to one having
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`ordinary skill in the art in view of the prior art, including but not limited to the prior art listed on
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`the face of the Patents-in-Suit. Additional prior art that invalidates the asserted claims will be set
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`forth in Roku’s invalidity contentions, amendments, and proposed amendments thereto.
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`One or more claims of the Patents-in-Suit are invalid under 35 U.S.C. § 112 because they
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`lack an adequate written description, are not enabled, and/or are indefinite.
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`FOURTH DEFENSE – PROSECUTION HISTORY ESTOPPEL
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`
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`To the extent that Plaintiff alleges infringement under the doctrine of equivalents,
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`Plaintiff’s alleged claim is barred, including, without limitation, by way of example, under the
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`doctrine of prosecution history estoppel, disclaimer, disavowal, claim vitiation, and/or recapture.
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`By virtue of statements made, amendments made, and/or positions taken during the prosecution of
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`the applications for the Patents-in-Suit, Plaintiff is estopped from asserting that the Patents-in-Suit
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`-7-
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`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 8 of 32
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`cover or include any of Roku’s products.
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`FIFTH DEFENSE – EQUITABLE DEFENSES
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`Plaintiff’s claims for relief, in whole or in part, are barred by the equitable doctrines of
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`laches, prosecution laches, waiver, equitable estoppel, disclaimer, acquiescence, patent misuse,
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`and/or unclean hands.
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`SIXTH DEFENSE – 35 U.S.C. § 286
`STATUTE OF LIMITATIONS ON DAMAGES
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`Plaintiff’s recovery for any infringement of the Patents-in-Suit that it might establish is
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`limited to any established infringement occurring no more than six years prior to the filing of this
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`lawsuit, pursuant to 35 U.S.C. § 286.
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`SEVENTH DEFENSE – 35 U.S.C. § 287
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`Plaintiff’s recovery for alleged infringement of the Patents-in-Suit, if any, is limited to
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`alleged infringement committed after Plaintiff provided actual or constructive notice of
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`infringement under 35 U.S.C. § 287. Plaintiff has failed to comply with the requirements of 35
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`U.S.C. § 287 and failed to mark its allegedly patented products or provide notice of patenting.
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`EIGHTH DEFENSE – NO EXCEPTIONAL CASE
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`Plaintiff fails to state a claim for relief against Roku for an exceptional case under 35 U.S.C.
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`§ 285.
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`NINTH DEFENSE – NO COSTS
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`Plaintiff is barred by 35 U.S.C. § 288 from recovering any costs associated with this suit.
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`TENTH DEFENSE – ENSNAREMENT
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`Plaintiff cannot assert the claims of the Patents-in-Suit under the doctrine of equivalents
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`because the asserted claim scope would encompass or ensnare the prior art.
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`ELEVENTH DEFENSE – DEDICATION TO THE PUBLIC
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`-8-
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`Plaintiff cannot assert the claims of the Patents-in-Suit under the doctrine of equivalents
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`because the asserted claim scope is dedicated to the public by the disclosure-dedication rule.
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`ADDITIONAL DEFENSES
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`Roku reserves all defenses, including affirmative defenses, under Rule 8(c) of the Federal
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`Rules of Civil Procedure, the Patent Laws of the United States, and any other defenses at law or
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`in equity that may exist now or that may be available in the future based on discovery and further
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`factual investigation in this action.
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`ROKU’S COUNTERCLAIMS
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`Roku counterclaims against Plaintiff as follows:
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`PARTIES
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`1.
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`Roku, Inc. is a Delaware corporation that maintains its corporate headquarters at
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`1155 Coleman Ave., San Jose, California 95110.
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`2.
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`Upon information and belief, Media Chain is a Delaware limited liability company
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`and maintains its principal place of business at 3109 Grand Ave. Miami, Florida 33133.
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`JURISDICTION AND VENUE
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`3.
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`These counterclaims arise under the Patent Laws of the United States, 35 U.S.C.
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`§§ 101 et seq., and the Final Declaratory Judgment Act. The Court therefore has subject matter
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`jurisdiction over these counterclaims pursuant to 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202.
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`4.
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`The Court has personal jurisdiction over Plaintiff by virtue of Plaintiff’s filing and
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`pursuit of the Complaint in this District.
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`5.
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`6.
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`These counterclaims arise under the patent laws of the United States.
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`Roku maintains its right to seek a transfer of venue, including on forum non
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`conveniens grounds or pursuant to 28 U.S.C. § 1404. In the event of such transfer, Roku consents
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`to the transfer of its counterclaims set forth herein to the transferee forum. To the extent that this
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`action remains in this District, venue is appropriate for Roku’s counterclaims because Plaintiff has
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`consented to the propriety of this venue by filing its claims for patent infringement in this Court,
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`in response to which these counterclaims are asserted.
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`FIRST COUNTERCLAIM – DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT OF U.S. PATENT NO. 9,715,581
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`7.
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`Roku realleges and reincorporates by reference Paragraphs 1-6 of the
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`
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`Counterclaims as though set forth fully herein.
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`8.
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`Plaintiff has filed this action for patent infringement, alleging that Roku has
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`infringed one or more claims of U.S. Patent No. 9,715,581 (the “ʼ581 Patent”), and that this patent
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`is valid.
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`9.
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`The ’581 Patent covers a digital media production and licensing technique. Claim
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`1, for example, recites: “after the evaluation of the license transaction, extracting from the license
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`transaction user data that is specific to the user that is attempting to reproduce the media content
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`item when the user acquires the license and when the user declines the license, wherein the user
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`data includes demographic data associated with the user that enables a copyright owner of the
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`media content item to gauge a demographic that acquired the license for the media content item of
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`the copyright owner and a demographic that declined the license for is the media content item of
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`the copyright owner; aggregating the user data into a statistics record for the license request when
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`the user acquires the license and when the user declines the license, wherein the statistics record
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`summarizes the user data associated with the license request; storing in the license database the
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`statistics record so that the user data is accessible to the copyright owner of the media content item;
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`and analyzing a plurality of statistics records aggregated from each license request for the media
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`content item owned by the copyright owner to provide the copyright owner with the aggregated
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`-10-
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`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 11 of 32
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`user data from each license request of the media content item when the license is acquired by the
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`user and when the license is declined by the user.”
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`10.
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`Neither Roku nor its technology, including the Accused Products and Services,
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`infringes the ’581 Patent, either directly, indirectly, literally, or under the doctrine of equivalents
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`for at least the following reasons. For example, the Accused Roku Products and Services do not
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`perform the claimed extracting step, the claimed aggregating step, the claimed storing step, and
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`the claimed analyzing step. The Accused Roku Products and Services, therefore, do not meet at
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`least the aforementioned claim elements of claim 1 and similar claim limitations in the other claims
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`of the ’581 Patent.
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`11.
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`There accordingly is an actual, immediate, and justiciable controversy between
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`the parties with respect to the alleged infringement of the ’581 Patent.
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`12.
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`A judicial declaration concerning these matters is necessary and appropriate at this
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`time so that Roku can ascertain its rights and duties with regard to the parties and with regard to
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`designing, developing, manufacturing, marketing, and selling its products.
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`SECOND COUNTERCLAIM – DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT OF U.S. PATENT NO. 9,898,590
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`13.
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`Roku realleges and reincorporates by reference Paragraphs 1-12 of the
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`
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`Counterclaims as though set forth fully herein.
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`14.
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`Plaintiff has filed this action for patent infringement, alleging that Roku has
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`infringed one or more claims of U.S. Patent No. 9,898,590 (the “ʼ590 Patent”), and that this patent
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`is valid.
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`15.
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`The ’590 Patent covers a digital media production and licensing technique. Claim
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`1, for example, recites: “after the evaluation of the license transaction, extracting from the license
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`transaction user data that is specific to the user that is attempting to reproduce the media content
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`-11-
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`item when the user acquires the license and when the user declines the license, wherein the user
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`data includes demographic data associated with the user that enables a copyright owner of the
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`media content item to gauge a demographic that acquired the license for the media content item of
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`the copyright owner and a demographic that declined the license for the media content item of the
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`copyright owner; aggregating the user data into a statistics record for the license request when the
`
`user acquires the license and when the user declines the license, wherein the statistics record
`
`summarizes the user data associated with the license request; storing in a license database the
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`statistics record so that the user data is accessible to the copyright owner of the media content item;
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`and analyzing a plurality of statistics records aggregated from each license request for the media
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`content item owned by the copyright owner to provide the copyright owner with the aggregated
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`user data from each license request of the media content item.”
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`16.
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`Neither Roku nor its technology, including the Accused Products and Services,
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`infringes the ’590 Patent either directly, indirectly, literally, or under the doctrine of equivalents
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`for at least the following reasons. For example, the Accused Roku Products and Services do not
`
`perform the claimed extracting step, the claimed aggregating step, the claimed storing step, and
`
`the claimed analyzing step. The Accused Roku Products and Services, therefore, do not meet at
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`least the aforementioned claim elements of claim 1 and similar claim limitations in the other claims
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`of the ’590 Patent.
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`17.
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`There accordingly is an actual, immediate, and justiciable controversy between
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`the parties with respect to the alleged infringement of the ’590 Patent.
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`18.
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`A judicial declaration concerning these matters is necessary and appropriate at this
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`time so that Roku can ascertain its rights and duties with regard to the parties and with regard to
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`designing, developing, manufacturing, marketing, and selling its products.
`
`-12-
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`THIRD COUNTERCLAIM – DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT OF U.S. PATENT NO. 10,489,560
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`19.
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`Roku realleges and reincorporates by reference Paragraphs 1-18 of the
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`
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`Counterclaims as though set forth fully herein.
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`20.
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`Plaintiff has filed this action for patent infringement, alleging that Roku has
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`infringed one or more claims of U.S. Patent No. 10,489,560 (the “ʼ560 Patent”), and that this patent
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`is valid.
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`21.
`
`The ’560 Patent covers a digital media production and licensing technique. Claim
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`1, for example, recites: “after the evaluation of the request to stream, extracting user data that is
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`specific to the user that is attempting to stream the media content item when the user at least one
`
`of streams and declines to stream the media content item, wherein the user data includes
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`demographic data associated with the user that enables a third party online retailer that is providing
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`the media content item to be streamed by the user to gauge at least one of a demographic that
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`streamed the media content item of a copyright owner and a demographic that declined to stream
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`the media content item of the copyright owner and the user data includes each media content item
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`that the user streamed and each media content item that the user declined to stream that enables
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`the third party online retailer to target marketing of different media content items to the user based
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`on the demographic of the user and based on a history of media content items that the user has
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`streamed and media content items that the user has declined to stream to determine a trend of
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`interest in media content items by the user and to thereby target the marketing of the different
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`media content items to the user based on the determined trend of interest associated with the user;
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`aggregating the user data into a statistics record for the request to stream the media content item
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`when the user streams or declines to stream the media content item, wherein the statistics, record
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`summarizes the user data associated with the request to steam the media content item; storing in a
`
`-13-
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`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 14 of 32
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`license database the statistics record so that the user data is accessible to the third party online
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`retailer that is providing the media content item to be streamed; and analyzing a plurality of
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`statistics records aggregated from each request to stream the media content item as provided by
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`the third party online retailer to be streamed to provide the third party online retailer with the
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`aggregated user data from each request to stream the media content item.”
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`22.
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`Neither Roku nor its technology, including the Accused Roku Products and
`
`Services, infringes the ’560 Patent, either directly, indirectly, literally, or under the doctrine of
`
`equivalents for at least the following reasons. For example, the Accused Roku Products and
`
`Services do not perform the claimed extracting step, the claimed aggregating step, the claimed
`
`storing step, and the claimed analyzing step. The Accused Roku Products and Services, therefore,
`
`do not meet at least the aforementioned claim elements of claim 1 and similar claim limitations of
`
`the ’560 Patent.
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`23.
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`There accordingly is an actual, immediate, and justiciable controversy between
`
`the parties with respect to the alleged infringement of the ’560 Patent.
`
`24.
`
`A judicial declaration concerning these matters is necessary and appropriate at this
`
`time so that Roku can ascertain its rights and duties with regard to the parties and with regard to
`
`designing, developing, manufacturing, marketing, and selling its products.
`
`FOURTH COUNTERCLAIM – DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT OF U.S. PATENT NO. 10,515,191
`
`25.
`
`Roku realleges and reincorporates by reference Paragraphs 1-24 of the
`
`
`
`Counterclaims as though set forth fully herein.
`
`26.
`
`Plaintiff has filed this action for patent infringement, alleging that Roku has
`
`infringed one or more claims of U.S. Patent No. 10,515,191 (the “ʼ191 Patent”), and that this patent
`
`is valid.
`
`-14-
`
`

`

`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 15 of 32
`
`27.
`
`The ’191 Patent covers a digital media production and licensing technique. Claim
`
`1, for example, recites: “after the evaluation of the first request, extracting first user data specific
`
`to first user when the first user accepts the offer and acquires the license; after the evaluation of
`
`the second request, extracting second user data specific to the second user when the second user
`
`declines the offer to acquire the license; aggregating the extracted first and second user data into a
`
`statistics record, wherein the statistics record summarizes the first user data and second user data;
`
`storing in a license database the statistics record so that the summarized first and second user data
`
`is accessible to a third party; analyzing by the third party, the statistics record, to determine the
`
`target demographic based on a first demographic corresponding to the first user data and a second
`
`demographic corresponding to the second user data; and marketing, by the third party, the media
`
`content item to a plurality of other users corresponding to the determined target demographic.”
`
`28.
`
`Neither Roku nor its technology, including the Accused Roku Products and
`
`Services, infringes the ’191 Patent, either directly, indirectly, literally, or under the doctrine of
`
`equivalents for at least the following reasons. For example, the Accused Roku Products and
`
`Services do not perform the claimed extracting first user data step, the claimed extracting second
`
`user data step, the claimed aggregating step, the claimed storing step, the claimed analyzing step,
`
`and the claimed marketing step. The Accused Products, therefore, do not meet at least the
`
`aforementioned claim elements of claim 1 and similar claim limitations in the other claims of the
`
`’191 Patent. In addition, the claim requires a third party to perform the “analyzing” and
`
`“marketing” steps. Roku does not direct or control the alleged performance of these steps and is
`
`not alleged to be in a “joint enterprise” with the third party alleged to perform these steps. Thus,
`
`there can be no infringement because Roku is not alleged to perform each step and there is no basis
`
`for a finding of joint infringement.
`
`-15-
`
`

`

`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 16 of 32
`
`29.
`
`There accordingly is an actual, immediate, and justiciable controversy between
`
`the parties with respect to the alleged infringement of the ’191 Patent.
`
`30.
`
`A judicial declaration concerning these matters is necessary and appropriate at this
`
`time so that Roku can ascertain its rights and duties with regard to the parties and with regard to
`
`designing, developing, manufacturing, marketing, and selling its products.
`
`FIFTH COUNTERCLAIM – DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT OF U.S. PATENT NO. 10,860,691
`
`31.
`
`Roku realleges and reincorporates by reference Paragraphs 1-30 of the
`
`
`
`Counterclaims as though set forth fully herein.
`
`32.
`
`Plaintiff has filed this action for patent infringement, alleging that Roku has
`
`infringed one or more claims of U.S. Patent No. 10,860,691 (the “ʼ691 Patent”), and that this patent
`
`is valid.
`
`33.
`
`The ’691 Patent covers a digital media reproduction and licensing technique.
`
`Claim 1, for example, recites: “identifying the media content item by determining a media
`
`fingerprint that identifies a unique characteristic inherently present in the media content item
`
`captured during recorded creation of the media content item, and excluding information introduced
`
`to the media content item extraneous to the recorded creation; extracting first user data specific to
`
`the first user when the first user accepts to stream the media content item; extracting second user
`
`data specific to the second user when the second user declines to stream the media content item;
`
`aggregating the extracted first user data into a first statistics record and the extracted second user
`
`data into a second statistics record, wherein the first statistics record summarizes the first user data
`
`and the second statistics record summarizes the second user data; storing in a database the first
`
`statistics record and the second statistics record so that the summarized first user data and second
`
`user data is accessible to a third party online retailer; retrieving the first statistics record and the
`
`-16-
`
`

`

`Case 1:21-cv-00027-LY Document 23 Filed 03/22/21 Page 17 of 32
`
`second statistics record with the identity of the media content item determined by the media
`
`fingerprint; analyzing the retrieved first statistics record and the retrieved second statistics record
`
`to determine a target demographic of the media content item based on a first demographic
`
`corresponding to the first user data that accepted to stream the media content item and a second
`
`demographic corresponding to the second user data that declined to stream the media content item;
`
`and providing the third party online retailer the target demographic to market the media content
`
`item to a plurality of other users corresponding to the target demographic of the media content
`
`item.”
`
`34.
`
`Neither Roku nor its technology, including the Accused Roku Products and
`
`Services, infringes the ’691 Patent, either directly, indirectly, literally, or under the doctrine of
`
`equivalents for at least the following reasons. For example, the Accused Roku Products and
`
`Services do not perform the claimed identifying step, the claimed extracting first user data step,
`
`the extracting second user step, the claimed aggregating step, the claimed storing step, the claimed
`
`retrieving step, the claimed analyzing step, and the claimed providing step. The Accused Roku
`
`Products and Services, therefore, do not meet at least the aforementioned claim elements of claim
`
`1 and similar claim limitations in the other claims of the ’691 Patent.
`
`35.
`
`There accordingly is an actual, immediate, and justiciable controversy between