ALMONDNET, INC. and
`INTENT IQ, LLC,
`
`
`
`Plaintiffs,
`
`v.
`
`ROKU, INC.
`
`
`Defendant.
`
`§
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`§
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`§
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`§
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`C.A. No. 6:21-cv-00731-ADA
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`PATENT CASE
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`
`
`
`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 1 of 41
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`
`
`
`
`ROKU, INC.’S ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS IN
`RESPONSE TO ALMONDNET, INC. AND INTENT IQ, LLC’S COMPLAINT
`
`Defendant Roku, Inc. (“Roku”) files this, its Answer, Affirmative Defenses, and
`
`Counterclaims, to Plaintiffs AlmondNet, Inc. (“AlmondNet”) and Intent IQ, LLC’s (“Intent IQ”)
`
`Complaint for Patent Infringement (Dkt. 1, the “Complaint”). Roku denies the allegations and
`
`characterizations in the Complaint unless expressly admitted in the following numbered
`
`Paragraphs,1 which correspond to those in the Complaint:
`
`INTRODUCTION AND PARTIES
`
`1.
`
`Roku admits that the Complaint alleges infringement of U.S. Patent Nos.
`
`8,244,586; 10,026,100; 8,677,398; 10,715,878; 8,566,164; 10,321,198; 10,628,857; 7,822,639;
`
`and 8,595,069 (collectively, the “Asserted Patents”). Roku denies any remaining allegations in
`
`Paragraph 1 of the Complaint, including any allegations of infringement.
`
`2.
`
`On information and belief, Roku admits that AlmondNet is a corporation organized
`
`and existing under the laws of the state of Delaware, having its place of business at 37-18 Northern
`
`Blvd Suite 404, Long Island City, New York 11101. On information and belief, Roku admits that
`
`
`1 Headings reproduced from Complaint.
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`

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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 2 of 41
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`Intent IQ is a Delaware limited liability company, having its place of business at 37-18 Northern
`
`Blvd Suite 404, Long Island City, NY 11101. Roku further acknowledges that the Complaint refers
`
`to AlmondNet, Inc. and Intent IQ, LLC collectively as “AlmondNet.” Roku denies any remaining
`
`allegations in Paragraph 2 of the Complaint.
`
`3.
`
`Roku admits that it is a Delaware corporation and that it has an office at 9606 N.
`
`Mopac Expressway, Suite 400, Austin, Texas 78759. Roku admits that it may be served through
`
`its registered agent, Corporation Service Company d/b/a CSC—Lawyers Incorporating Service
`
`Company, located at 211 7th Street, Suite 620, Austin, Texas 78701. Roku denies any remaining
`
`allegations in Paragraph 3 of the Complaint, including any allegations of infringement or that there
`
`is not a more convenient venue based on the allegations in this action.
`
`JURISDICTION AND VENUE
`
`4.
`
`Roku admits that the Complaint purports to set forth an action for patent
`
`infringement under the Patent Laws of the United States, Title 35 of the United States Code. Roku
`
`admits that this Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a)
`
`at least in regard to issues pertaining to patent infringement under the Patent Laws of the United
`
`States. Roku denies any remaining allegations in Paragraph 4 of the Complaint, including any
`
`allegations of infringement.
`
`5.
`
`For purposes of this action, Roku does not contest whether personal jurisdiction
`
`over it properly lies in this District. Roku denies any remaining allegations in Paragraph 5 of the
`
`Complaint, including any allegations of infringement.
`
`6.
`
`Roku admits that it has a place of business located at 9606 N. Mopac Expressway,
`
`Suite 400, Austin, Texas 78759, and for purposes of this action, Roku does not contest whether
`
`venue is proper in this District. However, Roku denies that there is not a more convenient venue
`
`based on the allegations in this action. Specifically, Roku notes that this action should be dismissed
`2
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`

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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 3 of 41
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`or transferred to the U.S. District Court for the District of Delaware based on the first-to-file rule,
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`where Roku’s earlier-filed declaratory judgment action against AlmondNet and Intent IQ alleging
`
`non-infringement of the Patents-in-Suit is currently pending. See Dkt. 7 (alternatively seeking
`
`transfer to the U.S. District Court for the District of Delaware under 28 U.S.C. § 1404(a)). Roku
`
`denies any remaining allegations in Paragraph 6 of the Complaint, including any allegations of
`
`infringement in this District or elsewhere.
`
`COUNT I
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,244,586
`
`7.
`
`Roku re-avers and incorporates its above responses to the allegations in Paragraphs
`
`1 through 6 of the Complaint.
`
`8.
`
`Roku admits that U.S. Patent No. 8,244,586 (“the ’586 Patent”) is entitled
`
`“Computerized Systems for Added-Revenue Off-Site Targeted Internet Advertising,” was issued
`
`on August 14, 2012, and that a copy was attached to the Complaint as Exhibit 1 (Dkt. 1-2). Roku
`
`denies any remaining allegations in Paragraph 8 of the Complaint, including any allegations of
`
`infringement.
`
`9.
`
`10.
`
`11.
`
`Denied.
`
`Denied.
`
`Roku admits that, prior to the filing of the Complaint, AlmondNet sent
`
`correspondence to Roku regarding the ’586 Patent. Roku denies any remaining allegations in
`
`Paragraph 11 of the Complaint, including any allegations of infringement.
`
`12.
`
`13.
`
`14.
`
`Denied.
`
`Denied.
`
`Roku admits that a claim chart regarding the ’586 Patent was attached to the
`
`Complaint as Exhibit 2 (Dkt. 1-3) but denies any allegation that such claim chart charted all
`
`
`
`3
`
`

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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 4 of 41
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`independent claims of the ’586 Patent. Roku denies any remaining allegations in Paragraph 14 of
`
`the Complaint, including any allegations of infringement.
`
`15.
`
`16.
`
`17.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT II
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 10,026,100
`
`18.
`
`Roku re-avers and incorporates its above responses to the allegations in Paragraphs
`
`1 to 17 of the Complaint.
`
`19.
`
`Roku admits that U.S. Patent No. 10,026,100 (“the ’100 Patent”) is entitled
`
`“Methods and Apparatus for Facilitated Off-Site Targeted Internet Advertising,” was issued on
`
`July 17, 2018, and that a copy was attached to the Complaint as Exhibit 3 (Dkt. 1-4). Roku denies
`
`any remaining allegations in Paragraph 19 of the Complaint, including any allegations of
`
`infringement.
`
`20.
`
`21.
`
`22.
`
`Denied.
`
`Denied.
`
`Roku admits that, prior to the filing of the Complaint, AlmondNet sent
`
`correspondence to Roku regarding the ’100 Patent. Roku denies any allegations and/or
`
`implications in Paragraph 22 of the Complaint that the parties discussed the ’100 Patent in the
`
`2015 timeframe because the ’100 Patent was not issued until 2018. Roku further denies any
`
`remaining allegations in Paragraph 22 of the Complaint, including any allegations of infringement.
`
`23.
`
`24.
`
`25.
`
`
`
`Denied.
`
`Denied.
`
`Roku admits that a claim chart regarding the ’100 Patent was attached to the
`
`4
`
`

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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 5 of 41
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`Complaint as Exhibit 4 (Dkt. 1-5) but denies any allegation that such claim chart charted all
`
`independent claims of the ’100 Patent. Roku denies any remaining allegations in Paragraph 25 of
`
`the Complaint, including any allegations of infringement.
`
`26.
`
`27.
`
`28.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT III
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,677,398
`
`29.
`
`Roku re-avers and incorporates its above responses to the allegations in Paragraphs
`
`1 through 28 of the Complaint.
`
`30.
`
`Roku admits that U.S. Patent No. 8,677,398 (“the ’398 Patent”) is entitled “Systems
`
`and Methods for Taking Action With Respect to One Network-Connected Device Based on
`
`Activity on Another Device Connected to the Same Network,” issued on March 18, 2014, and that
`
`a copy was attached to the Complaint as Exhibit 5 (Dkt. 1-6). Roku denies any remaining
`
`allegations in Paragraph 30 of the Complaint, including any allegations of infringement.
`
`31.
`
`32.
`
`33.
`
`Denied.
`
`Denied.
`
`Roku admits that, prior to the filing of the Complaint, AlmondNet sent
`
`correspondence to Roku regarding the ’398 Patent. Roku denies any remaining allegations in
`
`Paragraph 33 of the Complaint, including allegations of infringement.
`
`34.
`
`35.
`
`36.
`
`Denied.
`
`Denied.
`
`Roku admits that a claim chart regarding the ’398 Patent was attached to the
`
`Complaint as Exhibit 6 (Dkt. 1-7) but denies any allegation that such claim chart charted all
`
`
`
`5
`
`

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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 6 of 41
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`independent claims of the ’398 Patent. Roku denies any remaining allegations in Paragraph 36 of
`
`the Complaint, including any allegations of infringement.
`
`37.
`
`38.
`
`39.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT IV
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 10,715,878
`
`40.
`
`Roku re-avers and incorporates its above responses to the allegations in Paragraphs
`
`1 through 39 of the Complaint.
`
`41.
`
`Roku admits that U.S. Patent No., 10,715,878 (“the ’878 Patent”) is entitled
`
`“Targeted Television Advertisements Based on Online Behavior,” issued on July 14, 2020, and
`
`that a copy was attached to the Complaint as Exhibit 7 (Dkt. 1-8). Roku denies any remaining
`
`allegations in Paragraph 41 of the Complaint, including any allegations of infringement.
`
`42.
`
`43.
`
`44.
`
`Denied.
`
`Denied.
`
`Roku admits that, prior to the filing of the Complaint, AlmondNet sent
`
`correspondence to Roku regarding the ’878 Patent. Roku denies any allegations and/or
`
`implications in Paragraph 44 of the Complaint that the parties discussed the ’878 Patent in the
`
`2015 timeframe because the ’878 Patent was not issued until 2020. Roku further denies any
`
`remaining allegations in Paragraph 44 of the Complaint, including any allegations of infringement.
`
`45.
`
`46.
`
`47.
`
`Denied.
`
`Denied.
`
`Roku admits that a claim chart regarding the ’878 Patent was attached to the
`
`Complaint as Exhibit 8 (Dkt. 1-9) but denies any allegation that such claim chart charted all
`
`
`
`6
`
`

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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 7 of 41
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`independent claims of the ’878 Patent. Roku denies any remaining allegations in Paragraph 47 of
`
`the Complaint, including any allegations of infringement.
`
`48.
`
`49.
`
`50.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT V
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,566,164
`
`51.
`
`Roku re-avers and incorporates its above responses to the allegations in Paragraphs
`
`1 through 50 of the Complaint.
`
`52.
`
`Roku admits that U.S. Patent No. 8,566,164 (“the ’164 Patent”) is entitled
`
`“Targeted Online Advertisements Based on Viewing or Interacting with Television
`
`Advertisements,” issued on October 22, 2013, and that a copy was attached to the Complaint as
`
`Exhibit 9 (Dkt. 1-10). Roku denies any remaining allegations in Paragraph 52 of the Complaint,
`
`including any allegations of infringement.
`
`53.
`
`54.
`
`55.
`
`Denied.
`
`Denied.
`
`Roku admits that, prior to the filing of the Complaint, AlmondNet sent
`
`correspondence to Roku regarding the ’164 Patent. Roku denies any remaining allegations in
`
`Paragraph 55 of the Complaint, including any allegations of infringement.
`
`56.
`
`57.
`
`58.
`
`Denied.
`
`Denied.
`
` Roku admits that a claim chart regarding the ’164 Patent was attached to the
`
`Complaint as Exhibit 10 (Dkt. 1-11) but denies any allegation that such claim chart charted all
`
`independent claims of the ’164 Patent. Roku denies any remaining allegations in Paragraph 58 of
`
`
`
`7
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`

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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 8 of 41
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`the Complaint, including any allegations of infringement.
`
`59.
`
`60.
`
`61.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT VI
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 10,321,198
`
`62.
`
`Roku re-avers and incorporates its above responses to the allegations in Paragraphs
`
`1 through 61 of the Complaint.
`
`63.
`
`Roku admits that U.S. Patent No. 10,321,198 (“the ’198 Patent”) is entitled
`
`“Systems and Methods for Dealing with Online Activity Based on Delivery of a Television
`
`Advertisement,” issued on June 11, 2019, and that a copy was attached to the Complaint as Exhibit
`
`11 (Dkt. 1-12). Roku denies any remaining allegations in Paragraph 63 of the Complaint, including
`
`any allegations of infringement.
`
`64.
`
`65.
`
`66.
`
`Denied.
`
`Denied.
`
`Roku admits that, prior to the filing of the Complaint, AlmondNet sent
`
`correspondence to Roku regarding the ’198 Patent. Roku denies the allegations and/or implications
`
`in Paragraph 66 of the Complaint that the parties discussed the ’198 Patent in the 2015 timeframe
`
`because the ’198 Patent was not issued until 2019. Roku further denies any remaining allegations
`
`in Paragraph 66 of the Complaint, including any allegations of infringement.
`
`67.
`
`68.
`
`69.
`
`Denied.
`
`Denied.
`
`Roku admits that a claim chart regarding the ’198 Patent was attached to the
`
`Complaint as Exhibit 12 (Dkt. 1-13) but denies any allegation that such claim chart charted all
`
`
`
`8
`
`

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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 9 of 41
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`independent claims of the ’198 Patent. Roku denies any remaining allegations in Paragraph 69 of
`
`the Complaint, including any allegations of infringement.
`
`70.
`
`71.
`
`72.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT VII
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 10,628,857
`
`73.
`
`Roku re-avers and incorporates its above responses to the allegations in Paragraphs
`
`1 through 72 of the Complaint.
`
`74.
`
`Roku admits that U.S. Patent No. 10,628,857 (“the ’857 Patent”) is entitled
`
`“Methods and Apparatus for Facilitates Off-Site Targeted Internet Advertising,” issued on April
`
`21, 2020, and that a copy was attached to the Complaint as Exhibit 13 (Dkt. 1-14). Roku denies
`
`any remaining allegations in Paragraph 74 of the Complaint, including any allegations of
`
`infringement.
`
`75.
`
`76.
`
`77.
`
`Denied.
`
`Denied.
`
`Roku admits that, prior to the filing of the Complaint, AlmondNet sent
`
`correspondence to Roku regarding the ’857 Patent. Roku denies any remaining allegations in
`
`Paragraph 77 of the Complaint, including any allegations of infringement.
`
`78.
`
`79.
`
`80.
`
`Denied.
`
`Denied.
`
`Roku admits that a claim chart regarding the ’857 Patent was attached to the
`
`Complaint as Exhibit 14 (Dkt. 1-15) but denies any allegation that such claim chart charted all
`
`independent claims of the ’857 Patent. Roku denies any remaining allegations in Paragraph 80 of
`
`
`
`9
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`

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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 10 of 41
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`the Complaint, including any allegations of infringement.
`
`81.
`
`82.
`
`83.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT VIII
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 7,822,639
`
`84.
`
`Roku re-avers and incorporates its above responses to the allegations in Paragraphs
`
`1 through 83 of the Complaint.
`
`85.
`
`Roku admits that U.S. Patent No. 7,822,639 (“the ’639 Patent”) is entitled “Added-
`
`Revenue Off-Site Targeted Internet Advertising,” issued on October 26, 2010, and that a copy was
`
`attached to the Complaint as Exhibit 15 (Dkt. 1-16). Roku denies any remaining allegations in
`
`Paragraph 85 of the Complaint, including any allegations of infringement.
`
`86.
`
`87.
`
`88.
`
`Denied.
`
`Denied.
`
`Roku admits that, prior to the filing of the Complaint, AlmondNet sent
`
`correspondence to Roku regarding the ’639 Patent. Roku denies any remaining allegations in
`
`Paragraph 88 of the Complaint, including any allegations of infringement.
`
`89.
`
`90.
`
`91.
`
`Denied.
`
`Denied.
`
`Roku admits that a claim chart regarding the ’639 Patent was attached to the
`
`Complaint as Exhibit 16 (Dkt. 1-17) but denies any allegation that such claim chart charted all
`
`independent claims of the ’639 Patent. Roku denies any remaining allegations in Paragraph 91 of
`
`the Complaint, including any allegations of infringement.
`
`92.
`
`Denied.
`
`
`
`10
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`

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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 11 of 41
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`93.
`
`94.
`
`Denied.
`
`Denied.
`
`COUNT IX
`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,595,069
`
`95.
`
`Roku re-avers and incorporates its above responses to the allegations in Paragraphs
`
`1 through 94 of the Complaint.
`
`96.
`
`Roku admits that United States Patent No. 8,595,069 (“the ’069 Patent”) is entitled
`
`“Systems and Methods for Dealing with Online Activity Based on Delivery of a Television
`
`Advertisement,” issued on November 26, 2013, and that a copy was attached to the Complaint as
`
`Exhibit 17 (Dkt. 1-18). Roku denies any remaining allegations in Paragraph 96 of the Complaint,
`
`including any allegations of infringement.
`
`97.
`
`98.
`
`99.
`
`Denied.
`
`Denied.
`
`Roku admits that, prior to filing of the Complaint, AlmondNet sent correspondence
`
`to Roku regarding the ’069 Patent. Roku further denies any remaining allegations in Paragraph 99
`
`of the Complaint, including any allegations of infringement.
`
`100. Denied.
`
`101. Denied.
`
`102. Roku admits that a claim chart regarding the ’069 Patent was attached to the
`
`Complaint as Exhibit 18 (Dkt. 1-19) but denies any allegation that such claim chart charted all
`
`independent claims of the ’069 Patent. Roku denies any remaining allegations in Paragraph 102 of
`
`the Complaint, including any allegations of infringement.
`
`103. Denied.
`
`104. Denied.
`
`
`
`11
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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 12 of 41
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`105. Denied.
`
`[ALMONDNET AND INTENT IQ’S] PRAYER FOR RELIEF
`
`
`
`To the extent that any response to the requested relief in the Complaint is required, Roku
`
`denies that AlmondNet and Intent IQ have any valid claim pursuant to 35 U.S.C. § 271 et seq.
`
`Roku further denies that it has violated any Patent Laws of the United States with respect to any
`
`of the Asserted Patents. Roku further denies that either AlmondNet or Intent IQ is entitled to any
`
`of its requested relief, including that specified in subparagraphs a–g of AlmondNet and Intent IQ’s
`
`Prayer for Relief, and Roku requests that the Court deny all such relief requested by AlmondNet
`
`and Intent IQ.
`
`[ALMONDNET AND INTENT IQ’S] DEMAND FOR JURY TRIAL
`
`
`
`Roku is not required to provide a response to AlmondNet and Intent IQ’s request for a trial
`
`by jury.
`
`[GENERAL DENIAL]
`
`
`
`Roku further denies any allegation in the Complaint that is not specifically admitted,
`
`denied, or otherwise responded to in this Answer.
`
`
`
`
`
`
`
`12
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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 13 of 41
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`AFFIRMATIVE DEFENSES
`
`
`
`Subject to its responses above, and upon information and belief, Roku alleges and asserts
`
`the following defenses in response to the allegations of the Complaint. Regardless of how and
`
`which such defenses are listed herein, Roku undertakes the burden of proof only as to those
`
`defenses that are deemed affirmative defenses requiring such burden as a matter of law. In addition
`
`to the affirmative defenses described below, Roku specifically reserves all rights to allege
`
`additional affirmative defenses, including but not limited to those that become known through the
`
`course of this action.
`
`FIRST AFFIRMATIVE DEFENSE
`NON-INFRINGEMENT
`
`
`
`Roku has not and does not infringe[d] directly or indirectly, either literally or under the
`
`doctrine of equivalents, any valid and enforceable claim of the Asserted Patents.
`
`SECOND AFFIRMATIVE DEFENSE
`INVALIDITY
`
`
`
`The Asserted Patents are invalid for failure to satisfy the conditions for patentability set
`
`forth in Title 35 of the United States Code, including without limitation 35 U.S.C. §§ 101, 102,
`
`103, and 112.
`
`THIRD AFFIRMATIVE DEFENSE
`PROSECUTION HISTORY ESTOPPEL
`
`
`
`The claims of the Asserted Patents are limited by the text of the Asserted Patents, the
`
`prosecution history, including that of related patents, and/or the prior art such that AlmondNet and
`
`Intent IQ are estopped, or otherwise precluded, from asserting that any claim of the Asserted
`
`Patents is infringed by Roku, either literally or by equivalents.
`
`FOURTH AFFIRMATIVE DEFENSE
`ENSNAREMENT
`
`AlmondNet and Intent IQ cannot argue that the claims of the Asserted Patents are broad
`
`13
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`

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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 14 of 41
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`enough that an accused product would be found to infringe under the doctrine of equivalents
`
`because such a construction would render the claims invalid in view of the prior art.
`
`FIFTH AFFIRMATIVE DEFENSE
`MARKING AND DAMAGES LIMITATIONS
`
`
`
`To the extent AlmondNet and Intent IQ or any licensees have failed to comply with the
`
`marking requirement of 35 U.S.C. § 287, AlmondNet and Intent IQ cannot recover any damages
`
`for Roku’s alleged infringement prior to the date the Complaint was filed. Further, AlmondNet
`
`and Intent IQ’s claims for damages are statutorily limited or barred by 35 U.S.C. § 286.
`
`SIXTH AFFIRMATIVE DEFENSE
`NO INJUNCTIVE RELIEF
`
`
`
`AlmondNet and Intent IQ’s claim for injunctive relief is barred because there exists an
`
`adequate remedy at law and AlmondNet and Intent IQ’s claims otherwise fail to meet the
`
`requirements for such relief.
`
`SEVENTH AFFIRMATIVE DEFENSE
`FAILURE TO STATE A CLAIM
`
`
`
`AlmondNet and Intent IQ’s Complaint fails to state a claim upon which relief can be
`
`granted.
`
`INCORPORATION OF ROKU’S FIRST-TO-FILE MOTION
`
`
`
`Roku hereby incorporates by reference its Motion to Dismiss or Transfer Based on First-
`
`to-File Rule, or in the Alternative, to Transfer Pursuant to 28 U.S.C. § 1404(a) (Dkt. 7) and any
`
`additional briefing submitted in support thereof. Specifically, Roku asserts that the U.S. District
`
`Court for the District of Delaware is the court of first jurisdiction and should decide the disputes
`
`between the parties. All of the parties are Delaware entities, Delaware is a clearly more convenient
`
`forum, and the disputes have no meaningful connection to the Western District of Texas.
`
`
`
`14
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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 15 of 41
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`ROKU’S COUNTERCLAIMS
`
`
`
`Pursuant to Federal Rule of Civil Procedure 13, Roku, Inc. (“Roku”) alleges the following
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`Counterclaims against AlmondNet, Inc. (“AlmondNet”) and Intent IQ, LLC (“Intent IQ”):
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`NATURE OF THE ACTION
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`1.
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`Roku seeks a declaratory judgment of non-infringement and invalidity of U.S.
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`Patent Nos. 8,677,398 (“the ’398 Patent”), 10,715,878 (“the ’878 Patent”), 7,822,639 (“the ’639
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`Patent”), 8,244,586 (“the ’586 Patent”), 10,026,100 (“the ’100 Patent”), 10,628,857 (“the ’857
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`Patent”), 8,566,164 (“the ’164 Patent”), 8,595,069 (“the ’069 Patent”), and 10,321,198 (“the ’198
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`Patent”) (collectively, “the Patents-in-Suit”) pursuant to the Patent Laws of the United States, 35
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`U.S.C. § 1 et seq., damages, and such other relief as the Court deems just and proper.
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`2.
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`Roku seeks this relief because AlmondNet and Intent IQ have accused Roku of
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`infringing the Patents-in-Suit, which has placed a cloud over Roku and its advertising business,
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`specifically as to Roku’s OneView Ad Platform. Roku believes AlmondNet and Intent IQ’s
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`allegations lack merit and thus asks this Court to declare the legal rights of Roku so that Roku is
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`afforded relief from the uncertainty and delay regarding its rights caused by AlmondNet and Intent
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`IQ’s allegations against Roku.
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`PARTIES
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`3.
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`Roku is a corporation organized and existing under the laws of the State of
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`Delaware, with its principal place of business at 1155 Coleman Ave., San Jose, California 95110.
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`4.
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`AlmondNet is a corporation organized and existing under the laws of the State of
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`Delaware, with its principal place of business at 37-18 Northern Boulevard, Suite 404, Long
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`Island, New York 11101.
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`5.
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`On information and belief, Roy Shkedi is AlmondNet’s Founder and Chief
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`Executive Officer and Ronen Shlomo is AlmondNet’s Vice President of Product Management.
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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 16 of 41
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`6.
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`Intent IQ is a limited liability company organized and existing under the laws of
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`the State of Delaware, with its principal place of business at 37-18 Northern Boulevard, Suite 404,
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`Long Island City, New York 11101.
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`7.
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`8.
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`9.
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`On information and belief, Roy Shkedi is Intent IQ’s Chairman.
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`On information and belief, Intent IQ is a majority-owned subsidiary of AlmondNet.
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`JURISDICTION AND VENUE
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`The allegations in Paragraphs 1 through 8 of Roku’s Counterclaims are
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`incorporated herein by reference as if fully set forth herein.
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`10.
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`This action arises under the Patent Laws of the United States, Title 35 of the United
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`States Code (35 U.S.C. § 1 et seq.) and under the Federal Declaratory Judgment Act (28 U.S.C.
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`§§ 2201 and 2202).
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`11.
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`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
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`§§ 1331 (federal question) and 1338(a) (action arising under an Act of Congress relating to
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`patents).
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`12.
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`This Court has personal jurisdiction over AlmondNet and Intent IQ because each
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`submitted itself to the jurisdiction of this Court by filing the Complaint.
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`13.
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`Venue is proper over AlmondNet and Intent IQ as both have conceded to venue in
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`this District by way of their Complaint (Dkt. 1). However, Roku alleges that the Complaint should
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`be dismissed or the entire case transferred to the U.S. District Court for the District of Delaware
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`based on the first-to-file rule, where Roku’s earlier-filed declaratory judgment action against
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`AlmondNet and Intent IQ alleging non-infringement of the Patents-in-Suit is currently pending.
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`See Dkt. 7 (alternatively seeking transfer to the U.S. District Court for the District of Delaware
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`under 28 U.S.C. § 1404(a)).
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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 17 of 41
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`THE PATENTS-IN-SUIT
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`14.
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` The allegations in Paragraphs 1 through 13 of Roku’s Counterclaims are
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`incorporated by reference as if fully set forth herein.
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`15.
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`The ’398 Patent lists Roy Shkedi as inventor, is entitled “Systems and Methods for
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`Taking Action with respect to One Network-Connected Device based on Activity on Another
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`Device Connected to the Same Network,” and issued on March 18, 2014. The application for the
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`’398 Patent was filed on June 23, 2011.
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`16.
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`17.
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`On information and belief, the ’398 Patent is assigned to Intent IQ.
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`The ’878 Patent lists Roy Shkedi as the inventor, is entitled “Targeted Television
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`Advertisements Based on Online Behavior,” and issued on July 14, 2020. The application for the
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`’878 Patent was filed on December 20, 2018.
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`18.
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`19.
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`On information and belief, the ’878 Patent is assigned to Intent IQ.
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`The ’639 Patent lists Roy Shkedi as inventor, is entitled “Added-Revenue Off-Site
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`Targeted Internet Advertising,” and issued on October 26, 2010. The application for the ’639
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`Patent was filed on November 24, 2004.
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`20.
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`21.
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`On information and belief, the ’639 Patent is assigned to AlmondNet.
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`The ’586 Patent lists Roy Shkedi as inventor, is entitled “Computerized Systems
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`for Added-Revenue Off-Site Targeted Internet Advertising,” and issued on August 14, 2012. The
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`application for the ’586 Patent was filed on February 8, 2012.
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`22.
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`23.
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`On information and belief, the ’586 Patent is assigned to AlmondNet.
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`The ’100 Patent lists Roy Shkedi as inventor, is entitled “Methods and Apparatus
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`for Facilitated Off-Site Targeted Internet Advertising,” and issued on July 17, 2018. The
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`application for the ’100 Patent was filed on November 26, 2013.
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`24.
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`On information and belief, the ’100 Patent is assigned to AlmondNet.
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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 18 of 41
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`25.
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`The ’857 Patent lists Roy Shkedi as inventor, is entitled “Methods and Apparatus
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`for Facilitated Off-Site Targeted Advertising,” and issued on April 21, 2020. The application for
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`the ’857 Patent was filed on July 11, 2018.
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`26.
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`27.
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`On information and belief, the ’857 Patent is assigned to AlmondNet.
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`The ’164 Patent lists Roy Shkedi and Ronen Shlomo as inventors, is entitled
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`“Targeted Online Advertisements Based on Viewing or Interacting with Television
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`Advertisements,” and issued on October 22, 2013. The application for the ’164 Patent was filed
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`on December 31, 2007.
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`28.
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`29.
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`On information and belief, the ’164 Patent is assigned to Intent IQ.
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`The ’069 Patent lists Roy Shkedi and Ronen Shlomo as inventors, is entitled
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`“Systems and Methods for Dealing with Online Activity Based on Delivery of a Television
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`Advertisement,” and issued on November 26, 2013. The application for the ’069 Patent was filed
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`on December 30, 2010.
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`30.
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`31.
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`On information and belief, the ’069 Patent is assigned to Intent IQ.
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`The ’198 Patent lists Roy Shkedi and Ronen Shlomo as inventors, is entitled
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`“Systems and Methods for Dealing with Online Activity Based on Delivery of a Television
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`Advertisement,” and issued on June 11, 2019. The application for the ’198 Patent was filed on
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`November 25, 2013.
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`32.
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`On information and belief, the ’198 Patent is assigned to Intent IQ.
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`PRESENCE OF AN ACTUAL CONTROVERSY
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`33.
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`The allegations in Paragraphs 1 through 32 of Roku’s Counterclaims are
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`incorporated by reference as if fully set forth herein.
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`34.
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`The presence of an actual controversy between the parties is at least in part shown
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`by the filing of the Complaint by AlmondNet and Intent IQ.
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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 19 of 41
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`35.
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`In addition, in August 2020, AlmondNet and Intent IQ, through counsel, sent
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`correspondence to Roku entitled “AlmondNet Group - Roku Infringement,” alleging that Roku
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`infringes the Patents-in-Suit.
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`36.
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`At least based on that August 2020 and related correspondence, AlmondNet and
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`Intent IQ specifically allege that Roku’s OneView Ad Platform technology infringes the Patents-
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`in-Suit as follows:
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`
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`
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`
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`
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`
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`
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`
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`
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`
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`the ’398 Patent: claims 13–17 and 19–26;
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`the ’878 Patent: claims 1–23;
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`the ’639 Patent: claims 1–8, 10, 13–14, 24, 27–29, 21–32, 36–37, 43–45, and 47;
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`the ’586 Patent: claims 1–4, 11–13, 16–17, and 20–22;
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`the ’100 Patent: claims 1–3, 5, 7, 9–11, 13–17, 19, 21, 23–25, 27–31, 33, 35, 37–
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`39, and 41–42;
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`the ’857 Patent: claims 1–3, 5, 7–9, and 11;
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`the ’164 Patent: claims 1–3 and 6–14;
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`the ’069 Patent: claims 1, 3–5, and 8–17; and
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`the ’198 Patent: claims 1, 3–5, and 8–17.
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`37.
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`AlmondNet and Intent IQ have shown a propensity to enforce their patent rights
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`through litigation, including by filing prior suits against Microsoft Corporation (Case No. 3:10-
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`cv-00298 (W.D. Wis. June 2, 2010)), Yahoo! Inc. (Case No. 16-cv-1557 (E.D.N.Y. March 30,
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`2016)), and Oath Holdings Inc. (Case No. 1:18-cv-00943 (D. Del. June 26, 2018); Case No. 1:19-
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`cv-00247 (D. Del. Feb. 6, 2019)). Those prior lawsuits contained infringement allegations as to at
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`least the ’398, ’639, ’586, and ’100 Patents.
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`38.
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`Although AlmondNet, Intent IQ, and Roku have had discussions in regard to
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`19
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`Case 6:21-cv-00731-ADA Document 11 Filed 09/02/21 Page 20 of 41
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`resolving their dispute over the Patents-in-Suit, those discussions did not progress to a state of
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`likely resolution and Roku does not expect them to. Accordingly, there is a substantial controversy
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`of sufficient immediacy and reality between Roku and AlmondNet and between Roku and Intent
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`IQ to warrant issuance of a declaratory judgment.
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`39.
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`Roku believes the infringement allegations as to the Patents-in-Suit lack merit, and
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`therefore, Roku seeks relief declaring the legal rights of Roku—namely, that Roku does not
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`infringe any valid and enforceable claim of the Patents-in-Suit. Without such declaration,
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`AlmondNet and Intent IQ’s infringement allegations will continue to negatively impact Roku’s
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`business at least with respect to its advertising products and services, including specifically Roku’s
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`OneView Ad Platform products and services. In general, Roku’s advertising business is a
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`significant component of Roku’s overall business, success, and market reputation. Accordingly,
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`there is a substantial controversy of sufficient immediacy and reality between Roku and
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`AlmondNet and between Roku and Intent IQ to warrant issuance of a declaratory judgment.
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`40.
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`Roku denies that it infringes any valid and enforceable claim of the Patents-in-Suit.
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`Roku now seeks a declaratory judgment that it does not infringe any valid and enforceable claim
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`of the Patents-in-Suit.
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`COUNT I
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’398 PATENT
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`41.
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`The allegations in Paragraphs 1 through 40 of Roku’s Counterclaims are
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`incorporated by reference as if fully set forth herein.
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`42.
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`Roku, through its systems, products, and processes, including as to its OneView Ad
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`Pl