Case 6:20-cv-00212-ADA Document 20 Filed 05/18/20 Page 1 of 19
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`NEODRON, LTD.,
`
`Plaintiff,
`
`v.
`
`APPLE, INC.
`
`Defendant.
`
`Case No. 6:20-cv-00212
`
`JURY TRIAL DEMANDED
`
`APPLE, INC.’S ANSWER TO COMPLAINT FOR
`PATENT INFRINGEMENT AGAINST APPLE, INC.
`
`Defendant Apple Inc. (“Defendant” or “Apple”), hereby submits its Answer, and
`
`Defenses to Plaintiff Neodron Ltd.’s (“Plaintiff” or “Neodron”) Complaint for Patent
`
`Infringement. Unless specifically admitted, Defendant denies each and every allegation made by
`
`Plaintiff in the Complaint and states as follows:
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`INTRODUCTION
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`Complaint No. 1: This complaint arises from Defendant’s unlawful infringement of the
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`following United States patents owned by Neodron, each of which generally relate to
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`touchscreen technology: United States Patent Nos. 9,823,784 (“’784 Patent”); 7,821,502 (“’502
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`Patent”); and 10,146,351 (“’351 Patent”) (collectively, the “Asserted Patents”).
`
`Answer to Complaint No. 1: Defendant admits that Plaintiff purports to bring a patent
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`infringement action, but Defendant specifically denies that is commits or has committed any acts
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`of infringement. Defendant is without knowledge or information sufficient to form a belief as to
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`the truth of the remaining allegations set forth in paragraph 1, and therefore denies them.
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`Complaint No. 2: Touchscreen technology plays a ubiquitous and important role in
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`countless electronic devices today. Beyond just providing greater usability to smartphones,
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`tablets and notebooks, touchscreens now fill our lives in public and private spaces, from our
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`homes and cars to the restaurants and stores we visit.
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`Answer to Complaint No. 2: Paragraph 2 does not contain any allegations that call for a
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`response. To the extent that paragraph 2 alleges any fact to which a response is required,
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`Defendant is without knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in paragraph 2, and therefore denies them.
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`Complaint No. 3: But just a few decades ago, touchscreen technology could only be
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`found in science fiction books and film. Although the underlying science behind touch technology
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`can be traced back to the 1940s, working touchscreens were not conceived and feasible until the
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`mid-1960s, when the first finger-driven touchscreen was invented by E.A. Johnson in 1965 at the
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`Royal Radar Establishment in Malvern, United Kingdom. Since then, it took several generations
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`and major technological advancements for touchscreens to achieve the level of complexity—and
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`convenience—we see and enjoy today.
`
`Answer to Complaint No. 3: Paragraph 3 does not contain any allegations that call for a
`
`response. To the extent that paragraph 3 alleges any fact to which a response is required,
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`Defendant is without knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in paragraph 3, and therefore denies them.
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`Complaint No. 4: Built on the fundamental breakthrough that our hands and fingers can
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`form changes in the capacitance of electrodes and electrode-connections when they are in close
`
`proximity to them, touch technology has developed rapidly over the years. Along the way,
`
`engineers have worked tirelessly to try to overcome the limitations and roadblocks touch
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`technology presents. From conceiving various ways to detect (and correctly ignore)
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`unintentional touches, to minimizing signal “noise,” to reducing the latency and power
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`consumption that comes with any complex, multi-part electrical process, there have been many
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`advances to various aspects of the technology—each building a little on a related advancement
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`before it—to get us to the highly advanced state we enjoy today.
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`Answer to Complaint No. 4: Paragraph 4 does not contain any allegations that call for a
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`response. To the extent that paragraph 4 alleges any fact to which a response is required,
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`Defendant is without knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in paragraph 4, and therefore denies them.
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`Complaint No. 5: These advancements range from fundamental ones, which make basic
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`touch technology work, to optional improvements, which typically represent one technological
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`option that improves aspects of the user experience and functionality of a touchscreen. This
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`infringement action is about the latter: several patented improvements—which took years of
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`research and millions of dollars in U.S. investments to develop, and which are infringed by
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`Defendant’s accused products.
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`Answer to Complaint No. 5: Paragraph 5 does not contain any allegations that call for a
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`response. To the extent that paragraph 5 alleges any fact to which a response is required,
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`Defendant is without knowledge or information sufficient to form a belief as to the truth of the
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`allegations set forth in paragraph 5, and therefore denies them.
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`PARTIES
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`Complaint No. 6: Plaintiff Neodron, Ltd. is an Irish company, having its principal place
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`of business at Unit 4-5, Burton Hall Road, Sandyford, Dublin 18, D18a094. Neodron is the sole
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`owner by assignment of all right, title, and interest in each Asserted Patent.
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`Answer to Complaint No. 6: Defendant is without knowledge or information sufficient
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`to form a belief as to the truth of the allegations set forth in paragraph 6, and therefore denies
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`them.
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`Complaint No. 7: On information and belief, Defendant Apple Inc. is a publicly traded
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`corporation organized under the laws of the State of California, with its principal place of
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`business at One Apple Park Way, Cupertino, CA 95014.
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`Answer to Complaint No. 7: Admitted.
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`JURISDICATION AND VENUE
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`Complaint No. 8: This action arises under the patent laws of the United States, Title 35
`
`of the United States Code. This Court has original subject matter jurisdiction pursuant to 28
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`U.S.C. §§ 1331 and 1338 (a).
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`Answer to Complaint No. 8: Defendant admits that Plaintiff purports to bring a patent
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`infringement action under Title 35 of the United States Code and that jurisdiction is proper in
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`this Court, but Defendant denies any liability thereunder.
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`Complaint No. 9: This Court has personal jurisdiction over Defendant in this action
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`because Defendant has committed acts within this District giving rise to this action, and has
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`established minimum contacts with this forum such that the exercise of jurisdiction over
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`Defendant would not offend traditional notions of fair play and substantial justice. Defendant,
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`directly and through subsidiaries or intermediaries, has committed and continues to commit acts
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`of infringement in this District by, among other things, importing, offering to sell, and selling
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`products that infringe the asserted patents.
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`Answer to Complaint No. 9: Defendant admits that it has conducted business in this
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`federal judicial district. Defendant denies all remaining allegations in paragraph 9 of the
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`Complaint and specifically denies that it commits or has committed any acts of infringement
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`within this District or elsewhere.
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`Complaint No. 10: Venue is proper in this District under 28 U.S.C. §1400 (b).
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`Defendant is registered to do business in Texas, and upon information and belief, Defendant has
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`transacted business in this District and has committed acts of direct and indirect infringement in
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`this District by, among other things, importing, offering to sell, and selling products that infringe
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`the asserted patents. Defendant has regular and established places of businesses in this District,
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`including at 12545 Riata Vista Cir., Austin, Texas 78727; 12801 Delcour Dr., Austin, Texas
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`78727; and 3121 Palm Way, Austin, Texas 78758.1
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`Answer to Complaint No. 10: Apple does not contest at this time, and solely for the
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`purpose of the present litigation, whether venue over it properly lies in this District, but Apple
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`denies that venue in this District is convenient and Apple reserves the right to seek transfer to a
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`more appropriate or convenient forum. Defendant denies that it commits or has committed any
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`acts of infringement within this District or elsewhere. The remaining allegations in Paragraph 10
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`constitute conclusions of law and no response of Apple is required; to the extent an answer is
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`required, Apple denies the allegations.
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`COUNT I
`INFRINGEMENT OF U.S. PATENT NO. 9,823,784
`
`Complaint No. 11: Neodron realleges and incorporates by reference the foregoing
`
`paragraphs as if fully set forth herein.
`
`Answer to Complaint No. 11: Apple repeats and incorporates each and every response
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`to the allegations in the foregoing paragraphs as if set forth herein.
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`Complaint No. 12: Neodron owns by assignment all rights, title, and interest in U.S.
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`Patent No. 9,823,784, entitled “Capacitive Touch Screen with Noise Suppression.” The ’784
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`1 See, e.g., https://www.apple.com/newsroom/2019/11/apple-expands-in-austin/;
`https://goo.gl/maps/8Cr3zaxvwpePsWwL6; https://goo.gl/maps/UWFYdgUfZVFr8FG26;
`https://www.apple.com/retail/domainnorthside/.
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`Patent was duly and legally issued by the United States Patent and Trademark Office on
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`November 21, 2017. A true and correct copy of the ’784 Patent is attached as Exhibit 1.
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`Answer to Complaint No. 12: Apple admits that U.S. Patent No. 9,823,784 is titled
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`“Capacitive Touch Screen with Noise Suppression” and lists the issue date on the face of the
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`patent as November 21, 2017. Apple admits that what appears on its face to be a copy of the
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`’784 patent is attached to the Complaint as Exhibit 1. Apple denies that the ’784 patent was
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`properly issued. Apple is without knowledge or information sufficient to form a belief as to the
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`truth of the remaining allegations of paragraph 12 of the Complaint, and therefore denies them
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`Complaint No. 13: On information and belief, Defendant makes, uses, offers for sale,
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`sells, and/or imports certain products (“Accused Products”), including smartphones and tablets
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`such as the Apple iPhone 11 Pro Max and Apple iPad Pro 3rd Gen 12.9, that directly infringe,
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`literally and/or under the doctrine of equivalents, claims 1-3 of the ’784 Patent.
`
`Answer to Complaint No. 13: Apple admits that it offers for sale and sells the Apple
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`iPhone 11 Pro Max and Apple iPad Pro 3rd Gen 12.9. Apple denies the remaining allegations of
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`paragraph 13 of the Complaint.
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`Complaint No. 14: Defendant also knowingly and intentionally induces infringement of
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`claims 1-3 of the ’784 Patent in violation of 35 U.S.C. §271 (b). Through the filing and service of
`
`this Complaint, Defendant has had knowledge of the ’784 Patent and the infringing nature of the
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`Accused Products. Despite this knowledge of the ’784 Patent, Defendant continues to actively
`
`encourage and instruct its customers and end users (for example, through user manuals and online
`
`instruction materials on its website) to use the Accused Products in ways that directly infringe the
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`’784 Patent. Defendant does so knowing and intending that its customers and end users will
`
`commit these infringing acts. Defendant also continues to make, use, offer for sale, sell, and/or
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`import the Accused Products, despite its knowledge of the ’784 Patent, thereby specifically
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`intending for and inducing its customers to infringe the ’784 Patent through the customers’
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`normal and customary use of the Accused Products.
`
`Answer to Complaint No. 14: Apple admits that it has been served with the Complaint
`
`in Case No. 6:20-cv-00212 asserting infringement of the ’784 patent. Apple denies the
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`remaining allegations of paragraph 14 of the Complaint.
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`Complaint No. 15: The Accused Products satisfy all claim limitations of claims 1-3 of
`
`the ’784 Patent. Claim charts comparing independent claim 1 of the ’784 Patent to representative
`
`Accused Products, the Apple iPhone 11 Pro Max and Apple iPad Pro 3rd Gen 12.9, are attached
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`as Exhibits 2 and 3.
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`Answer to Complaint No. 15: Apple admits that charts relating to the ’784 patent are
`
`attached as Exhibit 2-3 to the Complaint. Apple denies the remaining allegations of paragraph
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`15 of the Complaint. Apple also denies any allegations contained in Exhibits 2-3 to the
`
`Complaint.
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`Complaint No. 16: By making, using, offering for sale, selling and/or importing into the
`
`United States the Accused Products, Defendant has injured Neodron and is liable for
`
`infringement of the ’784 Patent pursuant to 35 U.S.C. §271.
`
`Answer to Complaint No. 16: Apple denies the allegations of paragraph 16 of the
`
`Complaint.
`
`Complaint No. 17: As a result of Defendant’s infringement of the ’784 Patent, Neodron
`
`is entitled to monetary damages in an amount adequate to compensate for Defendant’s
`
`infringement, but in no event less than a reasonable royalty for the use made of the invention by
`
`Defendant, together with interest and costs as fixed by the Court.
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`Answer to Complaint No. 17: Apple denies the allegations of paragraph 17 of the
`
`Complaint.
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`Complaint No. 18: Defendant’s infringing activities have injured and will continue to
`
`injure Neodron, unless and until this Court enters an injunction prohibiting further infringement
`
`of the ’784 Patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or
`
`offers for sale that come within the scope of the patent claims.
`
`Answer to Complaint No. 18: Apple denies the allegations of paragraph 18 of the
`
`Complaint.
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`COUNT II
`INFRINGEMENT OF U.S. PATENT NO. 7,821,502
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`Complaint No. 19: Neodron realleges and incorporates by reference the foregoing
`
`paragraphs as if fully set forth herein.
`
`Answer to Complaint No. 19: Apple repeats and incorporates each and every response
`
`to the allegations in the foregoing paragraphs as if set forth herein.
`
`Complaint No. 20: Neodron owns by assignment all rights, title, and interest in U.S.
`
`Patent No. 7,821,502 (the “’502 Patent”), entitled “Two-Dimensional Position Sensor.” The ’502
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`Patent was duly and legally issued by the United States Patent and Trademark Office on October
`
`26, 2010. A true and correct copy of the ’502 Patent is attached as Exhibit 4.
`
`Answer to Complaint No. 20: Apple admits that U.S. Patent No. 7,821,502 is titled
`
`“Two-Dimensional Position Sensor” and lists the issue date on the face of the patent as October
`
`26, 2010. Apple admits that what appears on its face to be a copy of the ’502 patent is attached
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`to the Complaint as Exhibit 4. Apple denies that the ’502 patent was properly issued. Apple is
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`without knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations of paragraph 20 of the Complaint, and therefore denies them
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`Complaint No. 21: On information and belief, Defendant makes, uses, offers for sale,
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`sells, and/or imports certain products (“Accused Products”), including smartphones and tablets
`
`such as the Apple iPad Pro 3rd Gen 12.9, that directly infringe, literally and/or under the doctrine
`
`of equivalents, claims 1-24 of the ’502 Patent.
`
`Answer to Complaint No. 21: Apple admits that it offers for sale and sells the Apple
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`iPad Pro 3rd Gen 12.9. Apple denies the remaining allegations of paragraph 21 of the
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`Complaint.
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`Complaint No. 22: Defendant also knowingly and intentionally induces infringement of
`
`claims 1-24 of the ’502 Patent in violation of 35 U.S.C. §271 (b). Through the filing and service
`
`of this Complaint, Defendant has had knowledge of the ’502 Patent and the infringing nature of
`
`the Accused Products. Despite this knowledge of the ’502 Patent, Defendant continues to actively
`
`encourage and instruct its customers and end users (for example, through user manuals and online
`
`instruction materials on its website) to use the Accused Products in ways that directly infringe the
`
`’502 Patent. Defendant does so knowing and intending that its customers and end users will
`
`commit these infringing acts. Defendant also continues to make, use, offer for sale, sell, and/or
`
`import the Accused Products, despite its knowledge of the ’502 Patent, thereby specifically
`
`intending for and inducing its customers to infringe the ’502 Patent through the customers’
`
`normal and customary use of the Accused Products.
`
`Answer to Complaint No. 22: Apple admits that it has been served with the Complaint
`
`in Case No. 6:20-cv-00212 asserting infringement of the ’502 patent. Apple denies the
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`remaining allegations of paragraph 22 of the Complaint.
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`Complaint No. 23: The Accused Products satisfy all claim limitations of claims 1-24 of
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`the ’502 Patent. A claim chart comparing independent claim 1 of the ’502 Patent to
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`representative Accused Product, the Apple iPad Pro 3rd Gen 12.9, is attached as Exhibit 5.
`
`Answer to Complaint No. 23: Apple admits that a chart regarding the ’502 patent is
`
`attached as Exhibit 5 to the Complaint. Apple denies the remaining allegations of paragraph 23
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`of the Complaint. Apple also denies any allegations contained in Exhibit 5 to the Complaint.
`
`Complaint No. 24: By making, using, offering for sale, selling and/or importing into the
`
`United States the Accused Products, Defendant has injured Neodron and is liable for
`
`infringement of the ’502 Patent pursuant to 35 U.S.C. §271.
`
`Answer to Complaint No. 24: Apple denies the allegations of paragraph 24 of the
`
`Complaint.
`
`Complaint No. 25: As a result of Defendant’s infringement of the ’502 Patent, Neodron
`
`is entitled to monetary damages in an amount adequate to compensate for Defendant’s
`
`infringement, but in no event less than a reasonable royalty for the use made of the invention by
`
`Defendant, together with interest and costs as fixed by the Court.
`
`Answer to Complaint No. 25: Apple denies the allegations of paragraph 25 of the
`
`Complaint.
`
`Complaint No. 26: Defendant’s infringing activities have injured and will continue to
`
`injure Neodron, unless and until this Court enters an injunction prohibiting further infringement
`
`of the ’502 Patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or
`
`offers for sale that come within the scope of the patent claims.
`
`Answer to Complaint No. 26: Apple denies the allegations of paragraph 26 of the
`
`Complaint.
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`COUNT III
`INFRINGEMENT OF U.S. PATENT NO. 10,146,351
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`Complaint No. 27: Neodron realleges and incorporates by reference the foregoing
`
`paragraphs as if fully set forth herein.
`
`Answer to Complaint No. 27: Apple repeats and incorporates each and every response
`
`to the allegations in the foregoing paragraphs as if set forth herein.
`
`Complaint No. 28: Neodron owns by assignment all rights, title, and interest in U.S.
`
`Patent No. 10,146,351 (the “’351 Patent”), entitled “Position-Sensing and Force Detection
`
`Panel.” The ’351 Patent was duly and legally issued by the United States Patent and Trademark
`
`Office on December 4, 2018. A true and correct copy of the ’351 Patent is attached as Exhibit 6.
`
`Answer to Complaint No. 28: Apple admits that U.S. Patent No. 10,146,351 is titled
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`“Position-Sensing and Force Detection Panel” and lists the issue date on the face of the patent as
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`December 4, 2018. Apple admits that what appears on its face to be a copy of the ’351 patent is
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`attached to the Complaint as Exhibit 6. Apple denies that the ’351 patent was properly issued.
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`Apple is without knowledge or information sufficient to form a belief as to the truth of the
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`remaining allegations of paragraph 28 of the Complaint, and therefore denies them.
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`Complaint No. 29: On information and belief, Defendant makes, uses, offers for sale,
`
`sells, and/or imports certain products (“Accused Products”), including smartphones and laptops
`
`such as the Apple iPhone Xs and Apple Macbook Pro 13, that directly infringe, literally and/or
`
`under the doctrine of equivalents, claims 1-10 of the ’351 Patent.
`
`Answer to Complaint No. 29: Apple admits that it offers for sale and sells the Apple
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`iPhone Xs and Apple Macbook Pro 13. Apple denies the remaining allegations of paragraph 29
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`of the Complaint.
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`Complaint No. 30: Defendant also knowingly and intentionally induces infringement of
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`claims 1-10 of the ’351 Patent in violation of 35 U.S.C. §271 (b). Through the filing and service
`
`of this Complaint, Defendant has had knowledge of the ’351 Patent and the infringing nature of
`
`the Accused Products. Despite this knowledge of the ’351 Patent, Defendant continues to actively
`
`encourage and instruct its customers and end users (for example, through user manuals and online
`
`instruction materials on its website) to use the Accused Products in ways that directly infringe the
`
`’351 Patent. Defendant does so knowing and intending that its customers and end users will
`
`commit these infringing acts. Defendant also continues to make, use, offer for sale, sell, and/or
`
`import the Accused Products, despite its knowledge of the ’351 Patent, thereby specifically
`
`intending for and inducing its customers to infringe the ’351 Patent through the customers’
`
`normal and customary use of the Accused Products.
`
`Answer to Complaint No. 30: Apple admits that it has been served with the Complaint
`
`in Case No. 6:20-cv-00212 asserting infringement of the ’351 patent. Apple denies the
`
`remaining allegations of paragraph 30 of the Complaint.
`
`Complaint No. 31: The Accused Products satisfy all claim limitations of claims 1-10 of
`
`the ’351 Patent. Claim charts comparing independent claim 1 of the ’351 Patent to representative
`
`Accused Products, the Apple iPhone Xs and Apple Macbook Pro 13, are attached as Exhibits 7-8.
`
`Answer to Complaint No. 31: Apple admits that charts relating to the ’251 patent are
`
`attached as Exhibits 7-8 to the Complaint. Apple denies the remaining allegations of paragraph
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`31 of the Complaint. Apple also denies any allegations contained in Exhibits 7-8 to the
`
`Complaint.
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`Complaint No. 32: By making, using, offering for sale, selling and/or importing into the
`
`United States the Accused Products, Defendant has injured Neodron and is liable for
`
`infringement of the ’351 Patent pursuant to 35 U.S.C. §271.
`
`Answer to Complaint No. 32: Apple denies the allegations of paragraph 32 of the
`
`Complaint.
`
`Complaint No. 33: As a result of Defendant’s infringement of the ’351 Patent, Neodron
`
`is entitled to monetary damages in an amount adequate to compensate for Defendant’s
`
`infringement, but in no event less than a reasonable royalty for the use made of the invention by
`
`Defendant, together with interest and costs as fixed by the Court.
`
`Answer to Complaint No. 33: Apple denies the allegations of paragraph 33 of the
`
`Complaint.
`
`Complaint No. 34: Defendant’s infringing activities have injured and will continue to
`
`injure Neodron, unless and until this Court enters an injunction prohibiting further infringement of
`
`the ’351 Patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or
`
`offers for sale that come within the scope of the patent claims.
`
`Answer to Complaint No. 34: Apple denies the allegations of paragraph 34 of the
`
`Complaint.
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`PRAYER FOR RELIEF
`
`The Prayer for Relief requires no response. To the extent any response is required, Apple
`
`denies that Plaintiff should be granted any of the relief requested.
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`DEMAND FOR JURY TRIAL
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`The Jury Demand requires no response.
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`GENERAL DENIAL
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`To the extent any allegations in the Complaint are not specifically admitted, Apple denies
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`them.
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`AFFIRMATIVE DEFENSES
`
`Subject to the responses above, Apple alleges and asserts the following defenses in
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`response to the allegations, undertaking the burden of proof only as to those defenses deemed
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`affirmative defenses by law, regardless of how such defenses are denominated herein. In
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`addition to the defenses described below, subject to its responses above, Apple reserves the right
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`to modify, amend, and/or expand upon these defenses as discovery proceeds, and to allege
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`additional defenses that become known through the course of discovery.
`
`FIRST AFFIRMATIVE DEFENSE
`(Failure to State a Claim)
`
`The Complaint fails to state a claim upon which relief can be granted.
`
`SECOND AFFIRMATIVE DEFENSE
`(Invalidity)
`
`The patents-in-suit are invalid for failure to satisfy the conditions of patentability as
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`specified under one or more sections of Title 35 of the United States Code, including, without
`
`limitation, 35 U.S.C. §§ 101, 102, 103, and 112.
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`THIRD AFFIRMATIVE DEFENSE
`(Non-Infringement)
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`Apple does not and has not infringed any valid claim of the patents-in-suit either directly,
`
`contributorily, by way of inducement, literally, and/or under the doctrine of equivalents.
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`FOURTH AFFIRMATIVE DEFENSE
`(Limitation on Damages)
`
`Neodron’s claims for damages for infringement of the patents-in-suit are limited pursuant
`
`to 35 U.S.C. § 286.
`
`FIFTH AFFIRMATIVE DEFENSE
`(Patent Marking)
`
`Neodron’s claims for damages for infringement of the patents-in-suit are limited by 35
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`U.S.C. § 287 to those damages occurring only after notice of infringement.
`
`SIXTH AFFIRMATIVE DEFENSE
`(Prosecution History Estoppel)
`
`By reason of the proceedings in the U.S. Patent and Trademark Office during the
`
`prosecution of the application which resulted in the issuance of the patents-in-suit, Neodron is
`
`estopped from claiming a construction of one or more claims of the patents-in-suit that would
`
`cause any valid claim thereof to cover or include any product manufactured, used, sold, offered
`
`for sale, or imported by Apple.
`
`SEVENTH AFFIRMATIVE DEFENSE
`(Express/Implied License and/or Patent Exhaustion)
`
`On information and belief, Apple and/or its customers cannot be held liable for
`
`infringement because Apple’s accused products were made, used, offered for sale, or sold within
`
`the United States or imported into the United States under an express and/or implied license from
`
`Neodron and/or its affiliates and/or another licensed third party and/or its privies, or Neodron has
`
`exhausted its rights in the asserted patents as to the Apple accused product.
`
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`Case 6:20-cv-00212-ADA Document 20 Filed 05/18/20 Page 16 of 19
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`EIGHTH AFFIRMATIVE DEFENSE
`(Ensnarement)
`
`On information and belief, Neodron’s infringement claims are barred by the doctrine of
`
`ensnarement. Neodron is foreclosed from asserting infringement under the doctrine of equivalents
`
`to the extent the scope of such equivalent would ensnare prior art.
`
`NINTH AFFIRMATIVE DEFENSE
`(Waiver/Unclean Hands)
`
`On information and belief, Neodron’s claims are barred by the equitable doctrines of
`
`waiver and/or unclean hands based at least upon Neodron bringing this lawsuit when Neodron
`
`knows or should know that Apple and/or its customers cannot be held liable for infringement
`
`because Apple’s accused products were made, used, offered for sale, or sold within the United
`
`States or imported into the United States under an express and/or implied license from Neodron
`
`and/or its affiliates and/or another licensed third party and/or its privies, or Neodron has exhausted
`
`its rights in the Asserted Patents as to the Apple accused products. Thus, on information and belief,
`
`Neodron’s actions in bringing this lawsuit violate conscience and equitable principles.
`
`TENTH AFFIRMATIVE DEFENSE
`(Standing)
`
`On information and belief, Neodron lacks all substantial rights to the asserted patents and
`
`does not have standing to bring this lawsuit by itself. Additionally, on information and belief,
`
`because Neodron lacks standing to sue on the Asserted Patents, Neodron has failed to state a claim
`
`on which relief can be granted.
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`Case 6:20-cv-00212-ADA Document 20 Filed 05/18/20 Page 17 of 19
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`ELEVENTH AFFIRMATIVE DEFENSE
`(Adequate Remedy Other Than Injunctive Relief)
`
`Neodron is not entitled to injunctive relief because any alleged injury to Neodron is not
`
`immediate and irreparable, Neodron cannot show likelihood of success on the merits, or Neodron
`
`has an adequate remedy at law.
`
`RESERVATION OF ADDITIONAL DEFENSES
`
`Apple reserves the right to assert additional defenses which become apparent during
`
`discovery, including, but not limited to, the defenses of unclean hands, patent misuse, waiver,
`
`equitable estoppel, and inequitable conduct.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Defendant Apple prays for relief as follows:
`
`A.
`
`That Plaintiff’s Complaint against Apple be dismissed in its entirety with
`
`prejudice and that a judgment be entered in favor of Apple and against Plaintiff;
`
`B.
`
`C.
`
`That Plaintiff take nothing by reason of its Complaint;
`
`That the Court enter an order denying any and all of Plaintiff’s request for
`
`injunctive relief against Apple;
`
`D.
`
`That the Court enter an order under 35 U.S.C. § 285, awarding Apple its
`
`reasonable attorney’s fees and costs of suit incurred in this litigation, as Plaintiff’s conduct as set
`
`forth above renders this an exceptional case; and
`
`E.
`
`That Apple be granted all such other and further relief as the Court deems just and
`
`proper.
`
`JURY DEMAND
`
`Apple demands a trial by jury on all claims and defenses so triable.
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`Case 6:20-cv-00212-ADA Document 20 Filed 05/18/20 Page 18 of 19
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`Dated: May 18, 2020
`
`Respectfully submitted,
`
`/s/ John M. Guaragna
`John M. Guaragna
`Texas Bar No 24043308
`Brian K. Erickson
`Texas Bar No. 24012594
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Tel: 512.457.7125
`Fax: 512.457.7001
`john.guaragna@dlapiper.com
`brian.erickson@dlapiper.com
`
`Mark Fowler (pro hac vice)
`Robert Buergi (pro hac vice)
`DLA Piper LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303
`Tel: 650-833-2000
`Fax: 650-833-2100
`
`Erin Gibson (pro hac vice)
`DLA Piper LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101
`Tel: 619-699-2700
`Fax: 619-699-2701
`
`James M. Heintz (pro hac vice)
`DLA Piper LLP (US)
`One Fountain Square
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Tel: 703-773-4000
`Fax: 703-773-5000
`
`Nandan Padmanabhan (pro hac vice)
`DLA Piper LLP (US)
`2000 Avenue of the Stars, Suite 400
`North Tower
`Los Angeles, CA 90067
`Tel: 310-595-3000
`Fax: 310-595-3300
`
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`Case 6:20-cv-00212-ADA Document 20 Filed 05/18/20 Page 19 of 19
`
`Erin McLaughlin (pro hac vice)
`DLA Piper LLP (US)
`1251 Avenue of the Americas, 27th
`Floor
`New York, NY 10020
`Tel: 212-335-4500
`Fax: 212-335-4501
`
`ATTORNEYS FOR DEFENDANT APPLE, INC.
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on this 18th day of May 2020, all counsel of record who are
`
`deemed to have consented to electronic service are being served with a copy of this document
`
`through the Court’s CM/ECF system under Local Rule CV-5(b)(1). Any other counsel of record
`
`will be served by a facsimile transmission and/or first class mail.
`
`/s/ John M. Guaragna
`John M. Guaragna
`
`WEST\290188308.5
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`