throbber
Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 1 of 20
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`OCEAN SEMICONDUCTORS LLC,
`Plaintiff,
`
`v.
`NXP SEMICONDUCTORS N.V., et al.,
`Defendants.
`
`
`
`
`Civil Action No. 6:20-CV-1212-ADA
`JURY TRIAL DEMANDED
`
`NXP USA, INC.’S ANSWER AND AFFIRMATIVE DEFENSES
`
`
`
`
`
`
`
`
`
`Defendant NXP USA, Inc. (“NXP” or “Defendant”) answers Plaintiff’s Complaint for
`
`Patent Infringement (Dkt. No. 1) (the “Complaint”) and asserts its affirmative defenses as set forth
`
`below. NXP denies that it has infringed or does infringe any valid and enforceable claim of the
`
`patents-in-suit, and NXP denies all allegations of the Complaint that are not expressly admitted
`
`below. NXP denies that the NXP entities identified in the Complaint are properly treated
`
`collectively for any purpose other than convenience—specifically, it is improper to treat the
`
`entities collectively in making factual allegations or legal claims where Plaintiff does not have a
`
`good faith basis for making such allegations or claim against each such entity individually.
`
`NATURE OF THE ACTION
`
`1.
`
`NXP admits that the Complaint purports to plead an action for patent
`
`infringement. NXP denies that it is liable for patent infringement and denies any remaining
`
`allegations in paragraph 1 of the Complaint.
`
`
`NXP’S ANSWER TO PLAINTIFF’S
`COMPLAINT
`
`Page 1
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 2 of 20
`
`PARTIES
`
`2.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 2 and, therefore, denies them.
`
`3.
`
`NXP admits that NXP Semiconductors N.V. is a Dutch public company with
`
`limited liability (naamloze venootschap) organized under the laws of the Netherlands with a
`
`global headquarters at 60 High Tech Campus, Eindhoven, Netherlands, 5656 AG whose only
`
`material assets are the direct ownership of 100% of the shares of NXP B.V. NXP denies any
`
`remaining allegations.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Admit.
`
`Admit.
`
`Denied.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 7 and, therefore, denies them.
`
`8.
`
`NXP admits that Plaintiff purports to seek monetary damages and prejudgment
`
`interest. NXP denies all remaining allegations, including that Plaintiff is entitled to any relief
`
`whatsoever.
`
`9.
`
`10.
`
`11.
`
`Denied.
`
`Denied.
`
`NXP admits that AMAT is a supplier. NXP denies any other allegations to the
`
`extent they are made directly as to NXP. With respect to allegations made against third parties,
`
`NXP is without knowledge or information sufficient to form a belief as to the truth of such
`
`allegations and, therefore, denies them. NXP denies any remaining allegations.
`
`
`NXP’S ANSWER TO PLAINTIFF’S
`COMPLAINT
`
`Page 2
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 3 of 20
`
`12.
`
`NXP denies the allegations to the extent they are made directly as to NXP. With
`
`respect to allegations made against third parties, NXP is without knowledge or information
`
`sufficient to form a belief as to the truth of such allegations and, therefore, denies them. NXP
`
`denies any remaining allegations.
`
`13.
`
`NXP denies the allegations to the extent they are made directly as to NXP. With
`
`respect to allegations made against third parties, NXP is without knowledge or information
`
`sufficient to form a belief as to the truth of such allegations and, therefore, denies them. NXP
`
`denies any remaining allegations.
`
`14.
`
`NXP denies the allegations to the extent they are made directly as to NXP. With
`
`respect to allegations made against third parties, NXP is without knowledge or information
`
`sufficient to form a belief as to the truth of such allegations and, therefore, denies them. NXP
`
`denies any remaining allegations.
`
`15.
`
`NXP denies the allegations to the extent they are made directly as to NXP. With
`
`respect to allegations made against third parties, NXP is without knowledge or information
`
`sufficient to form a belief as to the truth of such allegations and, therefore, denies them. NXP
`
`denies any remaining allegations.
`
`16.
`
`17.
`
`Denied.
`
`NXP denies the allegations to the extent they are made directly as to NXP. With
`
`respect to allegations made against third parties, NXP is without knowledge or information
`
`sufficient to form a belief as to the truth of such allegations and, therefore, denies them. NXP
`
`denies any remaining allegations.
`
`18.
`
`NXP denies the allegations to the extent they are made directly as to NXP. With
`
`respect to allegations made against third parties, NXP is without knowledge or information
`
`
`NXP’S ANSWER TO PLAINTIFF’S
`COMPLAINT
`
`Page 3
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 4 of 20
`
`sufficient to form a belief as to the truth of such allegations and, therefore, denies them. NXP
`
`denies any remaining allegations.
`
`19.
`
`NXP denies the allegations to the extent they are made directly as to NXP. With
`
`respect to allegations made against third parties, NXP is without knowledge or information
`
`sufficient to form a belief as to the truth of such allegations and, therefore, denies them. NXP
`
`denies any remaining allegations.
`
`20.
`
`NXP denies the allegations to the extent they are made directly as to NXP. With
`
`respect to allegations made against third parties, NXP is without knowledge or information
`
`sufficient to form a belief as to the truth of such allegations and, therefore, denies them. NXP
`
`denies any remaining allegations.
`
`21.
`
`NXP denies the allegations to the extent they are made directly as to NXP. With
`
`respect to allegations made against third parties, NXP is without knowledge or information
`
`sufficient to form a belief as to the truth of such allegations and, therefore, denies them. NXP
`
`denies any remaining allegations.
`
`22.
`
`NXP denies the allegations to the extent they are made directly as to NXP. With
`
`respect to allegations made against third parties, NXP is without knowledge or information
`
`sufficient to form a belief as to the truth of such allegations and, therefore, denies them. NXP
`
`denies any remaining allegations.
`
`23.
`
`24.
`
`25.
`
`Denied.
`
`Denied.
`
`Denied.
`
`
`NXP’S ANSWER TO PLAINTIFF’S
`COMPLAINT
`
`Page 4
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 5 of 20
`
`JURISDICTION AND VENUE
`
`26.
`
`NXP admits that the Complaint purports to allege claims for patent infringement
`
`under United States law. NXP denies any liability to Plaintiff for patent infringement or under
`
`any other claim or theory.
`
`27.
`
`NXP admits that this Court has subject matter jurisdiction over claims arising
`
`under the patent laws of the United States.
`
`28.
`
`NXP does not deny that this Court possesses personal jurisdiction over NXP
`
`USA, Inc. in this action. NXP denies all remaining allegations.
`
`29.
`
`30.
`
`31.
`
`Denied.
`
`Denied.
`
`Denied.
`
`THE PATENTS-IN-SUIT
`
`32.
`
`NXP admits that Exhibit A purports to be the patent described in paragraph 32.
`
`NXP is without knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 32 and, therefore, denies them.
`
`33.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 33 and, therefore, denies them.
`
`34.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 34 and, therefore, denies them.
`
`35.
`
`36.
`
`37.
`
`Denied.
`
`Denied.
`
`Denied.
`
`
`NXP’S ANSWER TO PLAINTIFF’S
`COMPLAINT
`
`Page 5
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 6 of 20
`
`38.
`
`NXP admits that Exhibit B purports to be the patent described in paragraph 38.
`
`NXP is without knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 38 and, therefore, denies them.
`
`39.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 39 and, therefore, denies them.
`
`40.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 40 and, therefore, denies them.
`
`41.
`
`42.
`
`43.
`
`44.
`
`Denied.
`
`Denied.
`
`Denied.
`
`NXP admits that Exhibit C purports to be the patent described in paragraph 44.
`
`NXP is without knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 44 and, therefore, denies them.
`
`45.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 45 and, therefore, denies them.
`
`46.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 46 and, therefore, denies them.
`
`47.
`
`48.
`
`49.
`
`50.
`
`Denied.
`
`Denied.
`
`Denied.
`
`NXP admits that Exhibit D purports to be the patent described in paragraph 50.
`
`NXP is without knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 50 and, therefore, denies them.
`
`
`NXP’S ANSWER TO PLAINTIFF’S
`COMPLAINT
`
`Page 6
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 7 of 20
`
`51.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 51 and, therefore, denies them.
`
`52.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 52 and, therefore, denies them.
`
`53.
`
`54.
`
`55.
`
`56.
`
`Denied.
`
`Denied.
`
`Denied.
`
`NXP admits that Exhibit E purports to be the patent described in paragraph 56.
`
`NXP is without knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 56 and, therefore, denies them.
`
`57.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 57 and, therefore, denies them.
`
`58.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 58 and, therefore, denies them.
`
`59.
`
`60.
`
`61.
`
`62.
`
`Denied.
`
`Denied.
`
`Denied.
`
`NXP admits that Exhibit F purports to be the patent described in paragraph 62.
`
`NXP is without knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 62 and, therefore, denies them.
`
`63.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 63 and, therefore, denies them.
`
`
`NXP’S ANSWER TO PLAINTIFF’S
`COMPLAINT
`
`Page 7
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 8 of 20
`
`64.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 64 and, therefore, denies them.
`
`65.
`
`66.
`
`67.
`
`68.
`
`Denied.
`
`Denied.
`
`Denied.
`
`NXP admits that Exhibit G purports to be the patent described in paragraph 68.
`
`NXP is without knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 68 and, therefore, denies them.
`
`69.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 69 and, therefore, denies them.
`
`70.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 70 and, therefore, denies them.
`
`71.
`
`72.
`
`73.
`
`74.
`
`Denied.
`
`Denied.
`
`Denied.
`
`NXP admits that Exhibit H purports to be the patent described in paragraph 74.
`
`NXP is without knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 74 and, therefore, denies them.
`
`75.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 75 and, therefore, denies them.
`
`76.
`
`NXP is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 76 and, therefore, denies them.
`
`77.
`
`Denied.
`
`
`NXP’S ANSWER TO PLAINTIFF’S
`COMPLAINT
`
`Page 8
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 9 of 20
`
`78.
`
`79.
`
`Denied.
`
`Denied.
`
`COUNT I: THE ’651 PATENT
`
`80.
`
`NXP restates and incorporates by reference the answers to the foregoing
`
`paragraphs as if fully set forth herein.
`
`81.
`
`NXP admits Plaintiff sent a letter dated October 15, 2020. NXP denies that the
`
`letter constitutes sufficient notice, and NXP denies all remaining allegations.
`
`82.
`
`83.
`
`84.
`
`85.
`
`86.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`NXP admits that an Exhibit I is attached to the Complaint. NXP denies that
`
`Exhibit I shows how each element of at least claim 19 of the ’651 patent is met. NXP denies all
`
`remaining allegations.
`
`87.
`
`88.
`
`89.
`
`90.
`
`91.
`
`92.
`
`93.
`
`94.
`
`95.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`
`NXP’S ANSWER TO PLAINTIFF’S
`COMPLAINT
`
`Page 9
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 10 of 20
`
`96.
`
`97.
`
`98.
`
`99.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT II: THE ’402 PATENT
`
`100. NXP restates and incorporates by reference the answers to the foregoing
`
`paragraphs as if fully set forth herein.
`
`101. NXP admits Plaintiff sent a letter dated October 15, 2020. NXP denies that the
`
`letter constitutes sufficient notice, and NXP denies all remaining allegations.
`
`102. Denied.
`
`103. Denied.
`
`104. Denied.
`
`105. Denied.
`
`106. NXP admits that an Exhibit J and Exhibit K are attached to the Complaint. NXP
`
`denies that Exhibit J and Exhibit K show how each element of at least claim 1 of the ’402 patent
`
`is met. NXP denies all remaining allegations.
`
`107. Denied.
`
`108. Denied.
`
`109. Denied.
`
`110. Denied.
`
`111. Denied.
`
`112. Denied.
`
`113. Denied.
`
`
`NXP’S ANSWER TO PLAINTIFF’S Page 10
`COMPLAINT
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 11 of 20
`
`114. Denied.
`
`115. Denied.
`
`116. Denied.
`
`117. Denied.
`
`118. Denied.
`
`119. Denied.
`
`COUNT III: THE ’305 PATENT
`
`120. NXP restates and incorporates by reference the answers to the foregoing
`
`paragraphs as if fully set forth herein.
`
`121. NXP admits Plaintiff sent a letter dated October 15, 2020. NXP denies that the
`
`letter constitutes sufficient notice, and NXP denies all remaining allegations.
`
`122. Denied.
`
`123. Denied.
`
`124. Denied.
`
`125. Denied.
`
`126. NXP admits that an Exhibit L is attached to the Complaint. NXP denies that
`
`Exhibit L shows how each element of at least claim 1 of the ’305 patent is met. NXP denies all
`
`remaining allegations.
`
`127. Denied.
`
`128. Denied.
`
`129. Denied.
`
`130. Denied.
`
`131. Denied.
`
`
`NXP’S ANSWER TO PLAINTIFF’S Page 11
`COMPLAINT
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 12 of 20
`
`132. Denied.
`
`133. Denied.
`
`134. Denied.
`
`135. Denied.
`
`136. Denied.
`
`137. Denied.
`
`138. Denied.
`
`139. Denied.
`
`COUNT IV: THE ’248 PATENT
`
`140. NXP restates and incorporates by reference the answers to the foregoing
`
`paragraphs as if fully set forth herein.
`
`141. NXP admits Plaintiff sent a letter dated October 15, 2020. NXP denies that the
`
`letter constitutes sufficient notice, and NXP denies all remaining allegations.
`
`142. Denied.
`
`143. Denied.
`
`144. Denied.
`
`145. Denied.
`
`146. NXP admits that an Exhibit M is attached to the Complaint. NXP denies that
`
`Exhibit M shows how each element of at least claim 1 of the ’248 patent is met. NXP denies all
`
`remaining allegations.
`
`147. Denied.
`
`148. Denied.
`
`149. Denied.
`
`
`NXP’S ANSWER TO PLAINTIFF’S Page 12
`COMPLAINT
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 13 of 20
`
`150. Denied.
`
`151. Denied.
`
`152. Denied.
`
`153. Denied.
`
`154. Denied.
`
`155. Denied.
`
`156. Denied.
`
`157. Denied.
`
`158. Denied.
`
`159. Denied.
`
`COUNT V: THE ’097 PATENT
`
`160. NXP restates and incorporates by reference the answers to the foregoing
`
`paragraphs as if fully set forth herein.
`
`161. NXP admits Plaintiff sent NXP a letter. NXP denies that the letter constitutes
`
`sufficient notice, and NXP denies all remaining allegations.
`
`162. Denied.
`
`163. Denied.
`
`164. Denied.
`
`165. Denied.
`
`166. Denied.
`
`167. NXP admits that an Exhibit N is attached to the Complaint. NXP denies that
`
`Exhibit N shows how each element of at least claim 1 of the ’097 patent is met. NXP denies all
`
`remaining allegations.
`
`
`NXP’S ANSWER TO PLAINTIFF’S Page 13
`COMPLAINT
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 14 of 20
`
`168. Denied.
`
`169. Denied.
`
`170. Denied.
`
`171. Denied.
`
`172. Denied.
`
`173. Denied.
`
`174. Denied.
`
`175. Denied.
`
`176. Denied.
`
`177. Denied.
`
`178. Denied.
`
`179. Denied.
`
`180. Denied.
`
`COUNT VI: THE ’330 PATENT
`
`181. NXP restates and incorporates by reference the answers to the foregoing
`
`paragraphs as if fully set forth herein.
`
`182. NXP admits Plaintiff sent NXP a letter. NXP denies that the letter constitutes
`
`sufficient notice, and NXP denies all remaining allegations.
`
`183. Denied.
`
`184. Denied.
`
`185. Denied.
`
`186. Denied.
`
`187. Denied.
`
`
`NXP’S ANSWER TO PLAINTIFF’S Page 14
`COMPLAINT
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 15 of 20
`
`188. NXP admits that an Exhibit O is attached to the Complaint. NXP denies that
`
`Exhibit O shows how each element of at least claim 19 of the ’330 patent is met. NXP denies all
`
`remaining allegations.
`
`189. Denied.
`
`190. Denied.
`
`191. Denied.
`
`192. Denied.
`
`193. Denied.
`
`194. Denied.
`
`195. Denied.
`
`196. Denied.
`
`197. Denied.
`
`198. Denied.
`
`199. Denied.
`
`200. Denied.
`
`201. Denied.
`
`COUNT VII: THE ’691 PATENT
`
`202. NXP restates and incorporates by reference the answers to the foregoing
`
`paragraphs as if fully set forth herein.
`
`203. NXP admits Plaintiff sent NXP a letter. NXP denies that the letter constitutes
`
`sufficient notice, and NXP denies all remaining allegations.
`
`204. Denied.
`
`205. Denied.
`
`
`NXP’S ANSWER TO PLAINTIFF’S Page 15
`COMPLAINT
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 16 of 20
`
`206. Denied.
`
`207. Denied.
`
`208. NXP admits that an Exhibit P and Q are attached to the Complaint. NXP denies
`
`that either Exhibit P or Q shows how each element of at least claim 1 of the ’691 patent is met.
`
`NXP denies all remaining allegations.
`
`209. Denied.
`
`210. Denied.
`
`211. Denied.
`
`212. Denied.
`
`213. Denied.
`
`214. Denied.
`
`215. Denied.
`
`216. Denied.
`
`217. Denied.
`
`218. Denied.
`
`219. Denied.
`
`220. Denied.
`
`221. Denied.
`
`COUNT VIII: THE ’538 PATENT
`
`222. NXP restates and incorporates by reference the answers to the foregoing
`
`paragraphs as if fully set forth herein.
`
`223. NXP admits Plaintiff sent NXP a letter. NXP denies that the letter constitutes
`
`sufficient notice, and NXP denies all remaining allegations.
`
`
`NXP’S ANSWER TO PLAINTIFF’S Page 16
`COMPLAINT
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 17 of 20
`
`224. Denied.
`
`225. Denied.
`
`226. Denied.
`
`227. Denied.
`
`228. NXP admits that an Exhibit R and S are attached to the Complaint. NXP denies
`
`that either Exhibit R or S shows how each element of at least claim 1 of the ’538 patent is met.
`
`NXP denies all remaining allegations.
`
`229. Denied.
`
`230. Denied.
`
`231. Denied.
`
`232. Denied.
`
`233. Denied.
`
`234. Denied.
`
`235. Denied.
`
`236. Denied.
`
`237. Denied.
`
`238. Denied.
`
`239. Denied.
`
`240. Denied.
`
`241. Denied.
`
`PRAYER FOR RELIEF
`
`NXP denies that Plaintiff is entitled to any of the relief sought or any relief or remedy
`
`whatsoever. NXP denies that it has directly, indirectly, contributorily, or by inducement, literally,
`
`
`NXP’S ANSWER TO PLAINTIFF’S Page 17
`COMPLAINT
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 18 of 20
`
`or by the doctrine of equivalents, infringed, willfully or otherwise, the Asserted Patents. NXP
`
`denies that Plaintiff is entitled to any injunctive relief, damages, a declaration that this is an
`
`“exceptional” case, pre- or post-judgment interest, costs or attorneys’ fees, or any relief at law or
`
`in equity.
`
`AFFIRMATIVE DEFENSES
`
`NXP asserts, without assuming any burden of pleading or proof that would otherwise rest
`
`on Plaintiff, the following defenses and reserves the right to amend as additional information
`
`becomes known.
`
`FIRST DEFENSE
`
`NXP has not infringed, and does not infringe, any valid, enforceable claim of the
`
`Asserted Patents, literally, under the doctrine of equivalents, directly, contributorily, by
`
`inducement, willfully, or in any other manner.
`
`SECOND DEFENSE
`
`The asserted claims of the Asserted Patents are invalid and void for failure to comply
`
`with the requirements of 35 U.S.C. §§ 101 et seq.
`
`THIRD DEFENSE
`
`Plaintiff is estopped from construing any valid claim of the Asserted Patents to cover or
`
`include, either literally or by application of the doctrine of equivalents, any of the accused
`
`products in the event of any admissions and/or statements made to the USPTO in the
`
`specification of, and during the prosecution of, the applications leading to the issuance of the
`
`patents-in-suit.
`
`FOURTH DEFENSE
`
`Any recovery of damages by Plaintiff is limited in whole or in part by 35 U.S.C. §§ 41,
`
`
`NXP’S ANSWER TO PLAINTIFF’S Page 18
`COMPLAINT
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 19 of 20
`
`252, 286, 287, 288, 307, or 318.
`
`FIFTH DEFENSE
`
`Plaintiff’s claims for relief concerning the Asserted Patents are barred, in whole or in
`
`part, under the principles of equity, including waiver, estoppel, intervening rights, prosecution
`
`history estoppel and/or disclaimer, and/or unclean hands.
`
`SIXTH DEFENSE
`
`Plaintiff’s attempted enforcement of the Asserted Patents against NXP is barred in whole
`
`or in part by one or more of (1) express or implied license, (2) release, and/or (3) patent
`
`exhaustion.
`
`SEVENTH DEFENSE
`
`Plaintiff’s attempted enforcement of the Asserted Patents against NXP is barred in whole
`
`or part by 35 U.S.C. § 273.
`
`EIGHTH DEFENSE
`
`Plaintiff’s claim for patent infringement is precluded in whole or in part to the extent that
`
`any accused functionality or acts are located or performed outside of the United States.
`
`NINTH DEFENSE
`
`Plaintiff’s claims are subject to an exceptional case finding under 35 U.S.C. § 285 such
`
`that NXP is entitled to their costs and attorneys’ fees.
`
`JURY DEMAND
`
`NXP respectfully demands a trial by jury on all issues so triable in this action.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, NXP respectfully requests that the Court enter judgment in favor of NXP
`
`and award the following relief:
`
`
`NXP’S ANSWER TO PLAINTIFF’S Page 19
`COMPLAINT
`
`

`

`Case 6:20-cv-01212-ADA Document 16 Filed 03/12/21 Page 20 of 20
`
`A. Judgment that the claims of the Asserted Patents are invalid and unenforceable;
`
`B. Denial of each request for relief by Plaintiff;
`
`C. Judgment that Plaintiff recovers nothing from NXP;
`
`D. Dismissal with prejudice of all claims in the Complaint;
`
`E. A finding that this is an exceptional case under 35 U.S.C. § 285 and award NXP its costs
`
`and attorneys’ fees; and,
`
`F. Any further necessary and proper relief as this Court may deem just and proper.
`
`
`
`Dated: March 12, 2021
`
`Respectfully submitted,
`
`
`
` /s/ Bradley D. Coburn
`Barry K. Shelton
`Texas State Bar No. 24055029
`Bradley D. Coburn
`Texas State Bar No. 24036377
`SHELTON COBURN LLP
`311 RR 620, Suite 205
`Austin, TX 78734-4775
`bshelton@sheltoncoburn.com
`coburn@sheltoncoburn.com
`(512) 263-2165 (Telephone)
`(512) 263-2166 (Facsimile)
`
`Attorneys for NXP USA, Inc.
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a true and correct copy of the above and foregoing
`
`document has been served on all counsel of record via the Court’s ECF system.
`
` /s/ Bradley D. Coburn
`Bradley D. Coburn
`
`
`
`
`
`NXP’S ANSWER TO PLAINTIFF’S Page 20
`COMPLAINT
`
`

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