Case 6:21-cv-00121-ADA Document 14 Filed 03/29/21 Page 1 of 14
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`GESTURE TECHNOLOGY PARTNERS,
`LLC,
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`Case No. 6:21-cv-00121-ADA
`
`Jury Trial Demanded
`
`DEFENDANT APPLE INC.’S ANSWER TO ORIGINAL COMPLAINT
`FOR PATENT INFRINGEMENT
`
`Defendant Apple Inc. (“Apple”) answers Plaintiff Gesture Technology Partners, LLC’s
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`(“Plaintiff” or “Gesture”) Original Complaint for Patent Infringement (“Complaint”) as follows.
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`PARTIES
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`1.
`
`Apple is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 1 of the Complaint, and therefore denies them.
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`2.
`
`Apple admits the allegations in Paragraph 2 of the Complaint, but denies that venue
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`in this District is convenient. Apple reserves the right to seek transfer to a more appropriate or
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`convenient forum.
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`JURISDICTION AND VENUE
`
`3.
`
`Apple repeats and incorporates each and every response to the allegations in
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`Paragraphs 1-2 as if fully set forth herein.
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`4.
`
`Apple admits that Plaintiff’s Complaint purports to arise under the United States
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`patent laws. Apple admits that this Court has subject matter jurisdiction over patent law claims.
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`Apple denies infringement and any and all relief Plaintiff is seeking.
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`5.
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`Apple does not contest at this time, and solely for the purpose of the present
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`litigation, whether venue over it properly lies in this District, but Apple denies that venue in this
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`District is convenient and Apple reserves the right to seek transfer to a more appropriate or
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`convenient forum. The remaining allegations in Paragraph 5 constitute conclusions of law and no
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`response of Apple is required; to the extent an answer is required, Apple denies the allegations.
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`6.
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`Apple does not contest at this time, and solely for the purpose of the present
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`litigation, whether Apple is subject to this Court’s specific and general personal jurisdiction. The
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`remaining allegations in Paragraph 6 constitute conclusions of law and no response of Apple is
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`required; to the extent an answer is required, Apple denies the allegations.
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`7.
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`Apple admits that it sells and offers for sale its products and services, including
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`those accused in the Complaint, to customers and potential customers in Texas, including in this
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`District. The remaining allegations in Paragraph 7 constitute conclusions of law and no response
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`of Apple is required; to the extent an answer is required, Apple denies the allegations. Apple also
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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.
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`8.
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`Apple admits that it has a retail store at 2901 S. Capital of Texas Highway, Austin,
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`Texas 78746 and that Apple may be served with process through a registered agent for service in
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`Texas by way of CT Corporation System at 1999 Bryant Street, Suite 900, Dallas, Texas 75201.
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`Whether such facilities constitute a “regular and established place of business in this District”
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`involves a question of statutory interpretation, and thus, Apple denies that allegation and the
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`remaining allegations in Paragraph 8 of the Complaint.
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`9.
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`Apple denies the allegations of Paragraph 9 of the Complaint.
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`10.
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`Apple admits that the Apple press release dated December 13, 2018 states that the
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`company’s facilities in Austin at the time “accommodate[d] 6,200 staff,” but denies that witnesses
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`with relevant knowledge are located in this District. Apple denies the remaining allegations of
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`Paragraph 10. Apple further denies that venue in this District is convenient, and Apple reserves
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`the right to seek transfer to a more appropriate or convenient forum.
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`11.
`
`Apple admits that the Apple press release dated November 20, 2019 states that the
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`company’s Austin facility at the time employed approximately 7,000 individuals, but denies that
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`witnesses with relevant knowledge are located in this District. Apple denies the remaining
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`allegations of Paragraph 11 of the Complaint. Apple further denies that venue in this District is
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`convenient, and Apple reserves the right to seek transfer to a more appropriate or convenient
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`forum.
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`THE TECHNOLOGY
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`12.
`
`Apple repeats and incorporates each and every response to the allegations in
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`Paragraphs 1-11 as if fully set forth herein.
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`13.
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`Apple is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 13 of the Complaint, and therefore denies them.
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`14.
`
`Apple is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 14 of the Complaint, and therefore denies them.
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`15.
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`Apple is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 15 of the Complaint, and therefore denies them.
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`16.
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`Apple is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 16 of the Complaint, and therefore denies them.
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`17.
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`Apple denies the allegations of Paragraph 17 of the Complaint.
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`18.
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`Apple is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 18 of the Complaint, and therefore denies them.
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`DISCUSSIONS WITH APPLE
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`Apple denies the allegations of Paragraph 19 of the Complaint.
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`Apple admits that it purchased patents from Dr. Pryor in the past, but denies the
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`19.
`
`20.
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`remaining allegations of Paragraph 20 of the Complaint.
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`21.
`
`Apple is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 21 of the Complaint, and therefore denies them.
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`22.
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`23.
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`Apple denies the allegations of Paragraph 22 of the Complaint.
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`Apple admits that Apple sent a letter to Dr. Pryor’s counsel on December 5, 2016
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`but denies the remaining allegations of Paragraph 23 of the Complaint.
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`24.
`
`25.
`
`Apple denies the allegations of Paragraph 24 of the Complaint.
`
`Apple denies infringement and any and all relief Plaintiff is seeking, and on that
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`basis, denies the allegations of Paragraph 25 of the Complaint.
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`THE ACCUSED PRODUCTS
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`26.
`
`Apple repeats and incorporates each and every response to the allegations in
`
`Paragraphs 1-25 as if fully set forth herein.
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`27.
`
`Apple denies the allegations of Paragraph 27 of the Complaint.
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`EXAMPLES OF APPLE’S MARKETING OF THE ACCUSED FEATURES
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`28.
`
`Apple is unable to determine from the description in Paragraph 28 the precise
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`features to which Plaintiff is referring, and therefore denies the allegations in Paragraph 28 of the
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`Complaint.
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`29.
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`Apple denies the allegations of Paragraph 29 of the Complaint.
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`30.
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`Apple admits that it offers a Face ID feature, but denies that this feature infringes
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`any claim of the Asserted Patents or that Plaintiff is entitled to any of the relief it seeks. Apple
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`denies the remaining allegations of Paragraph 30 of the Complaint.
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`31.
`
`Apple admits that it offers a Face ID feature, but denies that this feature infringes
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`any claim of the Asserted Patents or that Plaintiff is entitled to any of the relief it seeks. Apple
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`denies the remaining allegations of Paragraph 31 of the Complaint.
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`32.
`
`Apple admits that it offers a Smart HDR feature, but denies that this feature
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`infringes any claim of the Asserted Patents or that Plaintiff is entitled to any of the relief it seeks.
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`Apple denies the remaining allegations of Paragraph 32 of the Complaint.
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`33.
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`Apple admits that it offers an Attention Aware feature, but denies that this feature
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`infringes any claim of the Asserted Patents or that Plaintiff is entitled to any of the relief it seeks.
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`Apple denies the remaining allegations of Paragraph 33 of the Complaint.
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`COUNT I
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,194,924
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`34.
`
`Apple repeats and incorporates each and every response to the allegations in
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`Paragraphs 1-33 as if fully set forth herein.
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`35.
`
`Apple admits that U.S. Patent No. 8,194,924 (the “’924 patent”) lists the issue date
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`on the face of the patent as June 5, 2012 and that what appears on its face to be a copy of the ’924
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`patent is attached to the Complaint as Exhibit A. Apple denies that the ’924 patent was properly
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`issued. 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 35 of the Complaint, and therefore denies them.
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`36.
`
`Apple admits that the ’924 patent is titled “Camera Based Sensing in Handheld,
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`Mobile, Gaming or Other Devices.” Apple denies the remaining allegations of Paragraph 36 of
`
`the Complaint.
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`37.
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`38.
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`39.
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`40.
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`41.
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`42.
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`43.
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`44.
`
`45.
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`46.
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`47.
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`Apple denies the allegations of Paragraph 37 of the Complaint.
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`Apple denies the allegations of Paragraph 38 of the Complaint.
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`Apple denies the allegations of Paragraph 39 of the Complaint.
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`Apple denies the allegations of Paragraph 40 of the Complaint.
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`Apple denies the allegations of Paragraph 41 of the Complaint.
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`Apple denies the allegations of Paragraph 42 of the Complaint.
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`Apple denies the allegations of Paragraph 43 of the Complaint.
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`Apple denies the allegations of Paragraph 44 of the Complaint.
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`Apple denies the allegations of Paragraph 45 of the Complaint.
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`Apple denies the allegations of Paragraph 46 of the Complaint.
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`Apple is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 47 of the Complaint, and therefore denies them.
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`48.
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`49.
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`Apple denies the allegations of Paragraph 48 of the Complaint.
`
`Apple denies the allegations of Paragraph 49 of the Complaint.
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`COUNT II
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 7,933,431
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`50.
`
`Apple repeats and incorporates each and every response to the allegations in
`
`Paragraphs 1-49 as if fully set forth herein.
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`51.
`
`Apple admits that U.S. Patent No. 7,933,431 (the “’431 patent”) lists the issue date
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`on the face of the patent as April 26, 2011 and that what appears on its face to be a copy of the
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`’431 patent is attached to the Complaint as Exhibit B. Apple denies that the ’431 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 51 of the Complaint, and therefore denies them.
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`52.
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`Apple admits that the ’431 patent is titled “Camera Based Sensing in Handheld,
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`Mobile, Gaming or Other Devices.” Apple denies the remaining allegations of Paragraph 52 of
`
`the Complaint.
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`53.
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`54.
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`55.
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`56.
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`57.
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`58.
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`59.
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`60.
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`61.
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`62.
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`Apple denies the allegations of Paragraph 53 of the Complaint.
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`Apple denies the allegations of Paragraph 54 of the Complaint.
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`Apple denies the allegations of Paragraph 55 of the Complaint.
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`Apple denies the allegations of Paragraph 56 of the Complaint.
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`Apple denies the allegations of Paragraph 57 of the Complaint.
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`Apple denies the allegations of Paragraph 58 of the Complaint.
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`Apple denies the allegations of Paragraph 59 of the Complaint.
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`Apple denies the allegations of Paragraph 60 of the Complaint.
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`Apple denies the allegations of Paragraph 61 of the Complaint.
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`Apple is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 62 of the Complaint, and therefore denies them.
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`63.
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`64.
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`Apple denies the allegations of Paragraph 63 of the Complaint.
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`Apple denies the allegations of Paragraph 64 of the Complaint.
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`COUNT III
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,878,949
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`65.
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`Apple repeats and incorporates each and every response to the allegations in
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`Paragraphs 1-64 as if fully set forth herein.
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`66.
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`Apple admits that U.S. Patent No. 8,878,949 (the “’949 patent”) lists the issue date
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`on the face of the patent as November 4, 2014 and that what appears on its face to be a copy of the
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`’949 patent is attached to the Complaint as Exhibit C. Apple denies that the ’949 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 66 of the Complaint, and therefore denies them.
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`67.
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`Apple admits that the ’949 patent is titled “Camera Based Interaction and
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`Instruction.” Apple denies the remaining allegations of Paragraph 67 of the Complaint.
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`68.
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`69.
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`70.
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`71.
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`72.
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`73.
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`74.
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`75.
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`76.
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`77.
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`Apple denies the allegations of Paragraph 68 of the Complaint.
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`Apple denies the allegations of Paragraph 69 of the Complaint.
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`Apple denies the allegations of Paragraph 70 of the Complaint.
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`Apple denies the allegations of Paragraph 71 of the Complaint.
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`Apple denies the allegations of Paragraph 72 of the Complaint.
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`Apple denies the allegations of Paragraph 73 of the Complaint.
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`Apple denies the allegations of Paragraph 74 of the Complaint.
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`Apple denies the allegations of Paragraph 75 of the Complaint.
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`Apple denies the allegations of Paragraph 76 of the Complaint.
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`Apple is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 77 of the Complaint, and therefore denies them.
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`78.
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`79.
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`Apple denies the allegations of Paragraph 78 of the Complaint.
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`Apple denies the allegations of Paragraph 79 of the Complaint.
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`COUNT IV
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,553,079
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`80.
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`Apple repeats and incorporates each and every response to the allegations in
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`Paragraphs 1-79 as if fully set forth herein.
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`81.
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`Apple admits that U.S. Patent No. 8,553,079 (the “’079 patent”) lists the issue date
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`on the face of the patent as October 8, 2013 and that what appears on its face to be a copy of the
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`’079 patent is attached to the Complaint as Exhibit D. Apple denies that the ’079 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 81 of the Complaint, and therefore denies them.
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`82.
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`Apple admits that the ’079 patent is titled “More Useful Man Machine Interfaces
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`and Applications.” Apple denies the remaining allegations of Paragraph 82 of the Complaint.
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`83.
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`84.
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`85.
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`86.
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`87.
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`88.
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`89.
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`90.
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`91.
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`Apple denies the allegations of Paragraph 83 of the Complaint.
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`Apple denies the allegations of Paragraph 84 of the Complaint.
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`Apple denies the allegations of Paragraph 85 of the Complaint.
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`Apple denies the allegations of Paragraph 86 of the Complaint.
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`Apple denies the allegations of Paragraph 87 of the Complaint.
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`Apple denies the allegations of Paragraph 88 of the Complaint.
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`Apple denies the allegations of Paragraph 89 of the Complaint.
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`Apple denies the allegations of Paragraph 90 of the Complaint.
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`Apple is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 91 of the Complaint, and therefore denies them.
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`92.
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`93.
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`94.
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`Apple denies the allegations of Paragraph 92 of the Complaint.
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`Apple denies the allegations of Paragraph 93 of the Complaint.
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`Apple denies the allegations of Paragraph 94 of the Complaint.
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`JURY DEMAND
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`The Jury Demand requires no response.
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`PRAYER FOR RELIEF
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`The Prayer for Relief requires no response. To the extent any response is required, Apple
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`denies that Plaintiff should be granted any of the relief requested.
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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
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`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 addition
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`to the defenses described below, subject to its responses above, Apple reserves the right to modify,
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`amend, and/or expand upon these defenses as discovery proceeds, and to allege additional defenses
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`that become known through the course of discovery.
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`FIRST AFFIRMATIVE DEFENSE
`(Failure to State a Claim)
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`Plaintiff’s Complaint fails to state a claim upon which relief can be granted.
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`SECOND AFFIRMATIVE DEFENSE
`(Invalidity)
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`The Asserted Patents 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
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`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 any of the Asserted Patents either
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`directly, by way of inducement, literally, willfully, and/or under the doctrine of equivalents.
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`FOURTH AFFIRMATIVE DEFENSE
`(Express/Implied License and/or Patent Exhaustion)
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`Apple and/or its customers cannot be held liable for infringement because Apple’s Accused
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`Products were made, used, sold, offered for sale, or imported into the United States under an
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`Case 6:21-cv-00121-ADA Document 14 Filed 03/29/21 Page 11 of 14
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`express and/or implied license from Plaintiff and/or its affiliates and/or another licensed third party
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`and/or its privies, or Plaintiff has exhausted its rights in the Asserted Patents as to the Apple
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`Accused Products.
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`FIFTH AFFIRMATIVE DEFENSE
`(Limitation on Damages)
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`Plaintiff’s claims for damages for infringement of the Asserted Patents are limited pursuant
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`to 35 U.S.C. § 286.
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`SIXTH AFFIRMATIVE DEFENSE
`(Patent Marking)
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`Plaintiff’s claims for damages for infringement of the Asserted Patents are limited by 35
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`U.S.C. § 287 to those damages occurring only after notice of infringement.
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`SEVENTH AFFIRMATIVE DEFENSE
`(Prosecution History Estoppel)
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`By reason of the proceedings in the U.S. Patent and Trademark Office during the
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`prosecution of the applications which resulted in the issuance of the Asserted Patents, Plaintiff is
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`estopped from claiming a construction of one or more claims of the Asserted Patents that would
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`cause any valid claim thereof to cover or include any product manufactured, used, sold, offered
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`for sale, or imported by Apple.
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`EQUITABLE DEFENSES
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`Plaintiff’s claims are barred in whole or in part under principles of equity, including
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`without limitation, unclean hands, patent misuse, waiver, estoppel, disclaimer, and inequitable
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`conduct.
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`PRAYER FOR RELIEF
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`WHEREFORE, Defendant Apple prays for relief as follows:
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`Case 6:21-cv-00121-ADA Document 14 Filed 03/29/21 Page 12 of 14
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`A.
`
`That Plaintiff’s Complaint against Apple be dismissed in its entirety with prejudice
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`and that a judgment be entered in favor of Apple and against Plaintiff;
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`B.
`
`C.
`
`That Plaintiff take nothing by reason of its Complaint;
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`That the Court enter an order under 35 U.S.C. § 285, awarding Apple its reasonable
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`attorney’s fees and costs of suit incurred in this litigation, as Plaintiff’s conduct as set forth above
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`renders this an exceptional case; and
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`E.
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`That Apple be granted all such other and further relief as the Court deems just and
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`proper.
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`JURY DEMAND
`
`Apple demands a trial by jury on all claims and defenses so triable.
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`Dated: March 29, 2021
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`Respectfully submitted,
`
`/s/ John M. Guaragna
`John M. Guaragna
`Texas Bar No 24043308
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Tel: 512.457.7125
`Fax: 512.457.7001
`john.guaragna@us.dlapiper.com
`
`Sean Cunningham (pro hac vice)
`Catherine Huang (pro hac vice)
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Tel: 619.699.2700
`Fax: 619.699.2701
`sean.cunningham@us.dlapiper.com
`catherine.huang@us.dlapiper.com
`
`Michael D. Jay (pro hac vice)
`DLA PIPER LLP (US)
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`Case 6:21-cv-00121-ADA Document 14 Filed 03/29/21 Page 13 of 14
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`2000 Avenue of the Stars
`Suite 400 North Tower
`Los Angeles, CA 90067
`Tel: 310.595.3000
`Fax: 310.595.3300
`michael.jay@us.dlapiper.com
`
`Christopher Deck (pro hac vice)
`DLA PIPER LLP (US)
`33 Arch Street, 26th Floor
`Boston, MA 02110-1447
`Tel: 617.406.6000
`Fax: 617.406.6100
`
`ATTORNEYS FOR DEFENDANT
`APPLE INC.
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 29th day of March 2021, I electronically filed the foregoing
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`with the Clerk of Court using the CM/ECF system, which will send notification of such filing via
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`electronic mail to all counsel of record. Any other counsel of record will be served by first class
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`U.S. mail.
`
`/s/ John M. Guaragna
`John M. Guaragna
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