throbber
Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 1 of 14
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`Plaintiff,
`
`Defendant.
`
`NO. 6:19–CV–428
`
`JURY TRIAL DEMANDED
`
`
`
`STC.UNM,
`
`
`
`vs.
`
`APPLE INC.,
`
`
`
`
`
`
`
`
`DEFENDANT APPLE INC.’S ANSWER AND DEFENSES TO
`PLAINTIFF’S COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendant Apple Inc. (“Defendant”) answers and replies to the Plaintiff’s Original
`
`Complaint for Patent Infringement and Jury Demand (the “Complaint”). Except as expressly
`
`admitted below, Apple denies each and every allegation set forth in the Complaint. Defendant
`
`responds to the correspondingly numbered paragraphs of Plaintiff’s Complaint as follows:
`
`I.
`
`1.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 1 of the Complaint, and therefore denies the allegations in that paragraph.
`
`2.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 2 of the Complaint, and therefore denies the allegations in that paragraph.
`
`3.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 3 of the Complaint, and therefore denies the allegations in that paragraph.
`
`4.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 4 of the Complaint, and therefore denies the allegations in that paragraph.
`
`– 1 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 2 of 14
`
`5.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 5 of the Complaint, and therefore denies the allegations in that paragraph.
`
`6.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 6 of the Complaint, and therefore denies the allegations in that paragraph.
`
`7.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 7 of the Complaint, and therefore denies the allegations in that paragraph.
`
`8.
`
`9.
`
`Defendant denies the allegations in paragraph 8 of the Complaint.
`
`Defendant admits the allegations in paragraph 9 of the Complaint.
`
`II.
`
`10.
`
`Responding to the allegations in paragraph 10 of the Complaint, Defendant admits
`
`that this action purports to arise under the patent laws of the United States, 35 U.S.C. §§ 101 et
`
`seq. and that the Court has subject-matter jurisdiction over the action. Defendant denies that it
`
`has infringed any of the asserted patents and denies the remaining allegations in paragraph 10.
`
`11.
`
`Responding to the allegations in paragraph 11 of the Complaint, Defendant does
`
`not contest personal jurisdiction in this case.
`
`12.
`
`Responding to the allegations in paragraph 12 of the Complaint, Defendant admits
`
`that it operates certain retail establishments and other facilities within the Western District of
`
`Texas, which is located within the State of Texas. Whether such facilities constitute “regular and
`
`established places of business” involves a question of statutory interpretation, and thus, Defendant
`
`denies that allegation and the remaining allegations in paragraph 12.
`
`13.
`
`14.
`
`Defendant denies the allegations in paragraph 13 of the Complaint.
`
`Defendant denies the allegations in paragraph 14 of the Complaint.
`
`– 2 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 3 of 14
`
`III.
`
`15.
`
`Responding to the allegations in paragraph 15 of the Complaint, for purposes of this
`
`case only, Defendant does not contest that venue would exist in this judicial district under 28
`
`U.S.C. § 1400(b).
`
`16.
`
`17.
`
`18.
`
`Defendant admits the allegations in paragraph 16 of the Complaint.
`
`Defendant admits the allegations in paragraph 17 of the Complaint.
`
`Responding to the allegations in paragraph 18 of the Complaint, Defendant admits
`
`that it maintains a corporate office at 5505 W. Parmer Lane, in Austin, Texas, which is located
`
`within the boundaries of the Western District of Texas. As of September 13, 2019, Austin has the
`
`second-largest Apple presence in terms of number of employees. Whether such a presence
`
`constitutes a “regular and established place of business” involves a question of statutory
`
`interpretation, and thus, Defendant denies that allegation and the remaining allegations in
`
`paragraph 18.
`
`19.
`
`Responding to the allegations in paragraph 19 of the Complaint, Defendant admits
`
`that it operates a number of “Apple Store” retail establishments within the boundaries of the
`
`Western District of Texas at the addresses listed in paragraph 19. Whether such facilities constitute
`
`“regular and established places of business” involves a question of statutory interpretation, and
`
`thus, Defendant denies that allegation and the remaining allegations in paragraph 19.
`
`20.
`
`Responding to the allegations in paragraph 20 of the Complaint, Defendant admits
`
`that the “Apple Store” locations listed in paragraph 19 of the Complaint are retail establishments
`
`where Defendant transacts business with its retail customers. Defendant denies the remaining
`
`allegations of paragraph 20 of the Complaint.
`
`– 3 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 4 of 14
`
`21.
`
`Paragraph 21 of the Complaint is vague in that the term “belong to” is undefined
`
`and not a legal term, and thus, Defendant is without sufficient information to form a belief as to
`
`the truth of the allegations in that paragraph 21. Accordingly, Defendant denies the allegations in
`
`that paragraph.
`
`22.
`
`Defendant denies the allegations in paragraph 22 of the Complaint.
`
`IV.
`
`23.
`
`Responding to the allegations in paragraph 23 of the Complaint, Defendant admits
`
`that U.S. Patent No. 8,249,204 bears a title “Apparatus and method for channel state information
`
`feedback” and that it issued on August 21, 2012. Defendant admits that the cover of the ’204
`
`Patent states that its application number is 12/339,000 filed on December 18, 2008, and that it is
`
`related to “[p]rovisional application No. 61/079,980.” Defendant is without sufficient information
`
`to form a belief as to the truth of the remaining allegations in paragraph 23 and therefore denies
`
`the remaining allegations in that paragraph. Defendant further denies that the ’204 Patent was
`
`properly issued.
`
`24.
`
`25.
`
`Defendant denies the allegations in paragraph 24 of the Complaint.
`
`Responding to the allegations in paragraph 25 of the Complaint, Defendant admits
`
`that the cover page of the ’204 Patent lists the following persons as alleged inventors: “Wen-Rong
`
`Wu, Hinschu (TW); Tzu-Han Hsu, Kaohsiung (TW); Jen-Yuan Hsu, Jincheng Township (TW);
`
`Pang-An Ting, Fongyuan (TW).” Defendant is without sufficient information to form a belief as
`
`to the truth of the remaining allegations in paragraph 25 and therefore denies the allegations in
`
`that paragraph.
`
`– 4 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 5 of 14
`
`26.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 26 of the Complaint, and therefore denies the allegations in that
`
`paragraph.
`
`27.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 27 of the Complaint, and therefore denies the allegations in that
`
`paragraph.
`
`28.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 28 of the Complaint, and therefore denies the allegations in that
`
`paragraph.
`
`29.
`
`Defendant’s products do not implement the alleged inventions of the ’204 Patent,
`
`and thus, Defendant does not require a license to that patent. Nevertheless, at the present time,
`
`Defendant is without knowledge as to all parties to which Plaintiff or its predecessors-in-interest
`
`have licensed the ’204 Patent, including whether any such license extends to Defendant’s suppliers,
`
`distributors, or customers. Thus, Defendant is without sufficient information to form a belief as to
`
`the truth of the allegations in paragraph 29 of the Complaint, and therefore denies the allegations
`
`in that paragraph.
`
`V.
`
`30.
`
`Responding to the allegations in paragraph 30 of the Complaint, Defendant admits
`
`that U.S. Patent No. 8,265,096 bears a title “Method for Constructing Frame Structures” and that
`
`it issued on September 11, 2012. Defendant admits that the cover of the ’096 Patent states that its
`
`application number is 12/168,855 filed on July 7, 2008, and that it is related to “[p]rovisional
`
`application No. 60/929,798” and “provisional application No. 60/973,157.” Defendant is without
`
`sufficient information to form a belief as to the truth of the remaining allegations in paragraph 30
`
`– 5 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 6 of 14
`
`and therefore denies the remaining allegations in that paragraph. Defendant further denies that
`
`the ’204 Patent was properly issued.
`
`31.
`
`32.
`
`Defendant denies the allegations in paragraph 31 of the Complaint.
`
`Responding to the allegations in paragraph 30 of the Complaint, Defendant admits
`
`that the cover page of the ’096 Patent lists the following persons as alleged inventors: “Yan-Xiu
`
`Zheng, Shulin (TW); Ren-Jr Chen, Hsinchu (TW); Chang-Lung Hsiao, Hsinchu (TW); Pang-An
`
`Ting, Fongyuan (TW).” Defendant is without sufficient information to form a belief as to the truth
`
`of the remaining allegations in paragraph 32 and therefore denies the allegations in that paragraph.
`
`33.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 33 of the Complaint, and therefore denies the allegations in that
`
`paragraph.
`
`34.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 34 of the Complaint, and therefore denies the allegations in that
`
`paragraph.
`
`35.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 35 of the Complaint, and therefore denies the allegations in that
`
`paragraph.
`
`36.
`
`Defendant’s products do not implement the alleged inventions of the ’096 Patent,
`
`and thus, Defendant does not require a license to that patent. Nevertheless, at the present time,
`
`Defendant is without knowledge as to all parties to which Plaintiff or its predecessors-in-interest
`
`have licensed the ’096 Patent, including whether any such license extends to Defendant’s suppliers,
`
`distributors, or customers. Thus, Defendant is without sufficient information to form a belief as to
`
`– 6 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 7 of 14
`
`the truth of the allegations in paragraph 36 of the Complaint, and therefore denies the allegations
`
`in that paragraph.
`
`VI.
`
`37.
`
`Responding to the allegations in paragraph 37 of the Complaint, Defendant admits
`
`that U.S. Patent No. 8,565,326 bears a title “System and Method for Bit Allocation and
`
`Interleaving” and that it issued on October 22, 2013. Defendant admits that the cover of the ’326
`
`Patent states that its application number is 12/425,004 filed on April 16, 2009, and that it is related
`
`to “[p]rovisional application No. 61/079,104.” Defendant is without sufficient information to form
`
`a belief as to the truth of the remaining allegations in paragraph 37 and therefore denies the
`
`remaining allegations in that paragraph. Defendant further denies that the ’204 Patent was properly
`
`issued.
`
`38.
`
`39.
`
`Defendant denies the allegations in paragraph 38 of the Complaint.
`
`Responding to the allegations in paragraph 39 of the Complaint, Defendant admits
`
`that the cover page of the ’326 Patent lists the following persons as alleged inventors: “Chien-Yu
`
`Kao, Sanchong (TW); Jen-Yuan Hsu, Jincheng Township (TW); Pang-An Ting, Fongyuan (TW);
`
`Chia-Lung Tsai, Hsinchu (TW).” Defendant is without sufficient information to form a belief as
`
`to the truth of the remaining allegations in paragraph 39 and therefore denies the allegations in
`
`that paragraph.
`
`40.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 40 of the Complaint, and therefore denies the allegations in that
`
`paragraph.
`
`– 7 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 8 of 14
`
`41.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 41 of the Complaint, and therefore denies the allegations in that
`
`paragraph.
`
`42.
`
`Defendant is without sufficient information to form a belief as to the truth of the
`
`allegations in paragraph 42 of the Complaint, and therefore denies the allegations in that
`
`paragraph.
`
`43.
`
`Defendant’s products do not implement the alleged inventions of the ’326 Patent,
`
`and thus, Defendant does not require a license to that patent. Nevertheless, at the present time,
`
`Defendant is without knowledge as to all parties to which Plaintiff or its predecessors-in-interest
`
`have licensed the ’326 Patent, including whether any such license extends to Defendant’s suppliers,
`
`distributors, or customers. Thus, Defendant is without sufficient information to form a belief as to
`
`the truth of the allegations in paragraph 43 of the Complaint, and therefore denies the allegations
`
`in that paragraph.
`
`VII.
`
`44.
`
`Responding to the allegations in paragraph 44 of the Complaint, Defendant admits
`
`that at certain times, it has designed, marketed, imported, offered for sale, and sold some products
`
`in the United States that correspond to at least portions of the listing of products in paragraph 44.
`
`Defendant denies the remaining allegations in that paragraph.
`
`45.
`
`Responding to the allegations in paragraph 45 of the Complaint, Defendant admits
`
`that some products listed in paragraph 44 of the Complaint the Accused Instrumentalities are
`
`configured to operate in wireless networks that support certain portions of the IEEE 802.11ac
`
`specification, in addition to other communications standards and protocols, but otherwise
`
`Defendant denies the remaining allegations in paragraph 45.
`
`– 8 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 9 of 14
`
`VIII.
`
`Defendant denies the allegations in paragraph 46 of the Complaint.
`
`Defendant denies the allegations in paragraph 47 of the Complaint.
`
`Defendant denies the allegations in paragraph 48 of the Complaint.
`
`Defendant denies the allegations in paragraph 49 of the Complaint.
`
`Defendant denies the allegations in paragraph 50 of the Complaint.
`
`Defendant admits the allegations in paragraph 51 of the Complaint.
`
`Defendant denies the allegations in paragraph 52 of the Complaint.
`
`Defendant denies the allegations in paragraph 53 of the Complaint.
`
`IX.
`
`Defendant denies the allegations in paragraph 54 of the Complaint.
`
`Defendant denies the allegations in paragraph 55 of the Complaint.
`
`Defendant denies the allegations in paragraph 56 of the Complaint.
`
`Defendant denies the allegations in paragraph 57 of the Complaint.
`
`Defendant denies the allegations in paragraph 58 of the Complaint.
`
`Defendant denies the allegations in paragraph 59 of the Complaint.
`
`Defendant denies the allegations in paragraph 60 of the Complaint.
`
`Defendant denies the allegations in paragraph 61 of the Complaint.
`
`X.
`
`Defendant denies the allegations in paragraph 62 of the Complaint.
`
`Defendant denies the allegations in paragraph 63 of the Complaint.
`
`Defendant denies the allegations in paragraph 64 of the Complaint.
`
`Defendant denies the allegations in paragraph 65 of the Complaint.
`
`46.
`
`47.
`
`48.
`
`49.
`
`50.
`
`51.
`
`52.
`
`53.
`
`54.
`
`55.
`
`56.
`
`57.
`
`58.
`
`59.
`
`60.
`
`61.
`
`62.
`
`63.
`
`64.
`
`65.
`
`– 9 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 10 of 14
`
`66.
`
`67.
`
`68.
`
`69.
`
`Defendant denies the allegations in paragraph 66 of the Complaint.
`
`Defendant denies the allegations in paragraph 67 of the Complaint.
`
`Defendant denies the allegations in paragraph 68 of the Complaint.
`
`Defendant denies the allegations in paragraph 69 of the Complaint.
`
`XI.
`
`70.
`
`Paragraph 70 of the Complaint is a statement to which no response is required.
`
`Nevertheless, Defendant likewise requests a jury trial on all issues triable as of right to a jury.
`
`71.
`
`Defendant denies that Plaintiff is entitled to any relief requested in paragraph 71 of
`
`XII.
`
`the Complaint.
`
`DEFENSES
`
`72.
`
`In accordance with Federal Rule of Civil Procedure 8(b) and (c), without assuming
`
`any burden that it would not otherwise bear, without reducing or removing Plaintiff’s burdens of
`
`proof on its affirmative claims against Defendant, and reserving its right to assert additional
`
`defenses, Defendant asserts the following defenses to Plaintiff’s Complaint:
`
`73.
`
`Defendant does not and has not infringed any valid and enforceable claim of U.S.
`
`Patent No. 8,245,204; 8,265,096; or 8,565,326 (collectively, the “patents-in-suit”) literally, under
`
`the doctrine of equivalents, directly, indirectly, contributorily, by way of inducement, and/or via
`
`any other theory of liability.
`
`74.
`
`Each of the claims of the patents-in-suit is invalid and/or unenforceable for failure
`
`to comply with one or more of the conditions of patentability set forth in Title 35 of the United
`
`States Code, including without limitation, Sections 101, 102, 103, and/or 112.
`
`– 10 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 11 of 14
`
`75.
`
`Plaintiff is barred in whole or in part under principles of equity, including without
`
`limitation, laches, waiver, estoppel, disclaimer, patent misuse, and/or unclean hands.
`
`76.
`
`Plaintiff’s claim for damages is limited under 35 U.S.C. §§ 286 or 287. Specifically,
`
`on information and belief, Plaintiff, its predecessors-in-interest, or their respective licensees have
`
`sold products that implement functionality accused of infringement without marking those
`
`products with the patent numbers of the patents-in-suit. Plaintiff is barred by 35 U.S.C. § 288 from
`
`recovering costs associated with its action.
`
`77.
`
`Plaintiff is not entitled to injunctive relief under any theory, at least because: (1)
`
`plaintiff has not suffered nor will it suffer irreparable harm because of Defendant’s conduct; (2) any
`
`harm to Plaintiff would be outweighed by the harm to Defendant if an injunction were entered;
`
`(3) Plaintiff has an adequate remedy at law even if it were to prevail in this action; and (4) the
`
`public interest would not be served by an injunction in favor of Plaintiff.
`
`78.
`
`79.
`
`Plaintiff has failed to state a claim upon which relief can be granted.
`
`This is an exceptional case under 35 U.S.C. 285, entitling Defendant to an award
`
`of its costs, expenses, and reasonable attorney fees in this action.
`
`RESERVATION OF RIGHTS
`
`80.
`
`Defendant reserves any and all rights to amend its answer, including its currently
`
`pled defenses, and/or to add additional defenses, as any basis for doing so becomes apparent.
`
`PRAYER FOR RELIEF
`
`For these reasons, Defendant Apple Inc. respectfully requests that this Court enter
`
`judgment in its favor, deny Plaintiff all relief requested in the Complaint, and grant the following
`
`relief:
`
`– 11 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 12 of 14
`
`A. That the Court enter an order declaring that Plaintiff take nothing by its Complaint in
`
`this action;
`
`B. That the Court enter judgment against Plaintiff and that the complaint be dismissed
`
`with prejudice;
`
`C. That the Court decree that Defendant does not infringe any claim of the ’204 patent;
`
`D. That the Court decree that Defendant does not infringe any claim of the ’096 patent;
`
`E. That the Court decree that Defendant does not infringe any claim of the ’326 patent;
`
`F. That the Court decree that the claims of the ’204 patent are invalid;
`
`G. That the Court decree that the claims of the ’096 patent are invalid;
`
`H. That the Court decree that the claims of the ’326 patent are invalid;
`
`I. That the Court enter an order awarding Defendant its costs, expenses and reasonable
`
`attorney fees in this action because this is an exceptional case under 35 U.S.C. § 285.
`
`
`
`
`
`– 12 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 13 of 14
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Richard L. Wynne, Jr.
`Bruce S. Sostek
` State Bar No. 18855700
` bruce.sostek@tklaw.com
`Richard L. Wynne, Jr.
` State Bar No. 24003214
` richard.wynne@tklaw.com
`Max Ciccarelli
` State Bar No. 00787242
` max.ciccarelli@tklaw.com
`Adrienne Dominguez
` State Bar No. 00793630
` adrienne.dominguez@tklaw.com
`THOMPSON & KNIGHT LLP
`1722 Routh Street, Suite 1500
`Dallas, Texas 75201
`214.969.1700 (telephone)
`214.969.1751 (facsimile)
`
`John M. Guaragna
` State Bar No. 24043308
` John.Guaragna@dlapiper.com
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, Texas 78701
`512.457.7125 (telephone)
`
`COUNSEL FOR DEFENDANT APPLE INC.
`
`
`– 13 –
`
`

`

`Case 6:19-cv-00428-ADA Document 12 Filed 09/13/19 Page 14 of 14
`
`
`CERTIFICATE OF SERVICE
`
`
`I certify that on September 13, 2019, the foregoing document was filed via the Court’s ECF
`
`system, which will send notification of such filing to the following counsel of record for Plaintiff:
`
`
`Michael W. Shore
`Alfonso G. Chan
`William D. Ellerman
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`
`
`
`
`
`
`Charles L. Ainsworth
`Robert Christopher Bunt
`PARKER, BUNT & AINSWORTH, P.C.
`1000 East Ferguson, Suite 418
`Tyler, Texas 75702
`
`/s/ Richard L. Wynne, Jr.
`Richard L. Wynne, Jr.
`
`
`
`– 14 –
`
`

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