Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 1 of 15
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case. No. 6:22-CV-0466-ADA-DTG
`
`ADVANCED SILICON
`TECHNOLOGIES LLC,
`
`
`
`v.
`
`NXP SEMICONDUCTORS N.V.,
`NXP B.V., and
`NXP USA, INC.,
`
`
`
`Plaintiff,
`
`Defendants.
`
`
`
`DEFENDANT NXP USA, INC.’S ORIGINAL ANSWER
`
`Defendant NXP USA, Inc. (“NXP USA”)1 responds to Plaintiff Advanced Silicon
`
`Technologies LLC’s (“AST”) Complaint for Patent Infringement (“Complaint”) as follows:
`
`NXP USA denies infringement of any asserted claim of U.S. Patent Nos. 7,804,435 (the
`
`“’435 patent”); and 8,933,945 (the “’945 patent”) (collectively, “the Asserted Patents”). NXP
`
`USA also denies that AST is entitled to its requested relief or any other relief related to its
`
`allegations in the Complaint. NXP USA further denies each and every allegation contained in the
`
`Complaint unless expressly admitted in the following paragraphs. Any admitted factual allegation
`
`in the Complaint is admitted only as to the specific admitted fact(s), and not as to any purported
`
`conclusion, characterization, implication, or speculation that may follow from the fact(s) as
`
`admitted.
`
`
`1 The parties have filed a Stipulation of Dismissal Without Prejudice of Defendants NXP
`Semiconductors N.V. and NXP B.V. Dkt. 34. Thus, the remaining defendant is NXP USA, Inc.
`
`- 1 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 2 of 15
`
`
`
`NATURE OF THE ACTION
`
`1.
`AST sues to stop, and to recover damages caused by, NXP’s infringement of
`AST’s patents.
`
`ANSWER: NXP USA admits that AST purports to state a claim for patent infringement,
`
`but NXP USA denies that it infringed any patents and denies that AST is entitled to
`
`damages. NXP USA denies any remaining allegations in Paragraph 1.
`
`2.
`This action involves patents that stem from the research and design of
`innovative and proprietary technology developed by AST’s licensee, Advanced Micro
`Devices, Inc. (“AMD”). AMD is an American multi-national company and pioneer of cutting-
`edge graphics processor and microprocessor technology. The asserted patents cover
`inventions relating to important aspects of AMD’s integrated circuit and microfabrication
`technology.
`
`ANSWER: NXP USA is without knowledge or information sufficient to form a belief as
`
`to the allegations of Paragraph 2, and therefore denies the allegations in Paragraph 2.
`
`3.
`Tracing its history back to Philips and Motorola Semiconductors, NXP in its
`present form took shape in 2015 through a merger with Freescale Semiconductor. See, e.g.,
`https://www.nxp.com/company/about-nxp/history:NXP-HISTORY.
`
`ANSWER: NXP USA denies the allegations in Paragraph 3.
`
`PARTIES
`
`4.
`Plaintiff Advanced Silicon Technologies LLC is a Delaware limited liability
`company with a principal place of business in Portland, Maine, and a mailing address of 533
`Congress Street, Portland, Maine 04101.
`
`ANSWER: NXP USA is without knowledge or information sufficient to form a belief as
`
`to the allegations of Paragraph 4, and therefore denies the allegations in Paragraph 4.
`
`5.
`Defendant NXP Semiconductors N.V. is a Dutch corporation with a principal
`place of business at High Tech Campus 60, 5656 AG Eindhoven, Netherlands.
`
`ANSWER: The parties have filed a Stipulation of Dismissal Without Prejudice of
`
`Defendants NXP Semiconductors N.V. and NXP B.V. Dkt. 34 To the extent an answer
`
`is required, NXP USA admits that NXP Semiconductors N.V. is a Dutch public company
`
`- 2 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 3 of 15
`
`
`
`with its principal place of business located at 60 High Tech Campus, Eindhoven,
`
`Netherlands, 5656 AG.
`
`6.
`Defendant NXP B.V. is a Dutch company with a principal place of business at
`High Tech Campus 60, 5656 AG Eindhoven, Netherlands.
`
`ANSWER: The parties have filed a Stipulation of Dismissal Without Prejudice of
`
`Defendants NXP Semiconductors N.V. and NXP B.V. Dkt. 34 To the extent an answer
`
`is required, NXP USA admits that NXP B.V. is a Dutch company with its principal place
`
`of business located at 60 High Tech Campus, Eindhoven, Netherlands, 5656 AG
`
`7.
`Defendant NXP USA, Inc. is a Delaware corporation with a principal place of
`business at 6501 W. William Cannon Drive, Austin, Texas 78735.
`
`ANSWER: NXP USA admits that NXP USA, Inc. is a Delaware corporation with its
`
`principal place of business located at 6501 W. William Cannon Drive, Austin, TX 78735.
`
`NXP USA denies any remaining allegations in Paragraph 7.
`
`8.
`On information and belief, NXP Semiconductors N.V. is a publicly traded
`company that owns and controls NXP B.V., which in turn owns and controls NXP USA, Inc.
`See, e.g., https://investors.nxp.com/sec-filings/sec-filing/10-k/0001413447-21-000011. NXP
`Semiconductors N.V. trades on the NASDAQ stock exchange under the symbol NXPI.
`
`ANSWER: The parties have filed a Stipulation of Dismissal Without Prejudice of
`
`Defendants NXP Semiconductors N.V. and NXP B.V. Dkt. 34 To the extent an answer
`
`is required, NXP USA admits that NXP Semiconductors N.V. trades on the NASDAQ
`
`stock exchange under the symbol NXPI. NXP USA denies any remaining allegations in
`
`Paragraph 8.
`
`JURISDICTION AND VENUE
`
`9.
`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and
`1338(a) because this action presents a federal question under the patent laws of the United
`States, including 35 U.S.C. §§ 271, 281, 284, and 285.
`
`ANSWER: NXP USA admits the allegations in Paragraph 9.
`
`- 3 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 4 of 15
`
`
`
`10.
`This Court has specific or, alternatively, general personal jurisdiction over
`Defendant NXP Semiconductors N.V. On information and belief, NXP Semiconductors N.V.
`is not subject to the jurisdiction of any state’s court of general jurisdiction. Shares of NXP
`Semiconductors N.V. stock are routinely traded by investors, including investors in the
`United States, on NASDAQ and other stock exchanges under the symbol NXPI. On
`information and belief, investors in the United States own shares of NXP Semiconductors
`N.V. stock.
`
`ANSWER: The parties have filed a Stipulation of Dismissal Without Prejudice of
`
`Defendants NXP Semiconductors N.V. and NXP B.V. Dkt. 34. To the extent an answer
`
`is required, NXP USA admits that NXP Semiconductors N.V. trades on the NASDAQ
`
`stock exchange under the symbol NXPI. NXP USA denies any remaining allegations in
`
`Paragraph 10.
`
`11.
`This Court also has personal jurisdiction over NXP Semiconductors N.V.
`because it is the sole owner of NXP B.V. and owns, directly or indirectly, NXP USA, Inc. On
`information and belief, NXP Semiconductors N.V. through NXP B.V. and NXP USA, Inc.
`directly or indirectly owns, operates, or controls facilities that include offices and fabrication
`facilities in Austin, Texas where infringing products are designed, developed, manufactured,
`tested, used, marketed, imported, exported, offered for sale, or sold into a stream of
`commerce
`that
`includes
`this District. See https://www.nxp.com/company/about-
`nxp/worldwide-locations/united-states:USA.
`
`ANSWER: The parties have filed a Stipulation of Dismissal Without Prejudice of
`
`Defendants NXP Semiconductors N.V. and NXP B.V. Dkt. 34. To the extent an answer
`
`is required, NXP USA admits that NXP Semiconductors N.V. owns NXP B.V. NXP
`
`USA denies any remaining allegations in Paragraph 11.
`
`12.
`This Court has specific or, alternatively, general jurisdiction over Defendant
`NXP B.V. because NXP B.V. has engaged and continues to engage in substantial activities in
`this District that include causing the infringement of AST’s patents. On information and
`belief, NXP B.V. is the parent company of NXP USA, Inc. and directly or indirectly owns,
`operates, or controls facilities that include offices and fabrication facilities in Austin, Texas
`where infringing products are designed, developed, manufactured, tested, used, marketed,
`imported, exported, offered for sale, or sold into a stream of commerce that includes this
`District. See id. As one example, NXP B.V. published the i.MX 8QuadMax Applications
`Processor Reference Manual cited in AST’s Counts I and II as detailing how NXP’s products
`infringe the exemplary asserted claims of AST’s patents at issue in this action. See generally
`Exs. A, B.
`
`- 4 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 5 of 15
`
`
`
`ANSWER: The parties have filed a Stipulation of Dismissal Without Prejudice of
`
`Defendants NXP Semiconductors N.V. and NXP B.V. Dkt. 34. To the extent an answer
`
`is required, NXP USA denies the allegations in Paragraph 12.
`
`13.
`This Court specific or, alternatively, general jurisdiction over NXP USA, Inc.
`because it is registered to do business in the State of Texas and operates its headquarters
`office
`and
`a
`manufacturing
`facility
`in
`Austin,
`Texas.
`See
`https://www.nxp.com/company/about-nxp/worldwide-locations/united-states:USA.
`NXP
`USA, Inc. has caused acts of infringement to occur in this District in violation of 35 U.S.C. §
`271. For example, on information and belief, at its Austin, Texas facilities NXP USA, Inc.
`designs, develops, tests, uses, markets, imports, exports, offers to sell, and sells infringing
`products.
`
`ANSWER: Without admitting personal jurisdiction is proper here, NXP USA does not
`
`contest personal jurisdiction for purposes of this litigation only. NXP USA denies that it
`
`“has caused acts of infringement to occur” and furthermore denies that it “designs,
`
`develops, tests, uses, markets, imports, exports, offers to sell, and sells infringing
`
`products.” NXP USA denies any remaining allegations in Paragraph 13.
`
`14.
`In addition, NXP Semiconductors N.V., NXP B.V., and NXP USA, Inc. have
`acted together as a joint enterprise to design, develop, test, use, market, import, export, offer
`to sell, and sell infringing products in the United States, including in this District. On
`information and belief, NXP Semiconductors N.V. controls, dictates, or encourages the
`activities of NXP B.V. and NXP USA, Inc., and in turn NXP B.V. controls, dictates, or
`encourages the activities of NXP USA, Inc., which constitute infringement of one or more
`claims of AST’s patents.
`
`ANSWER: The parties have filed a Stipulation of Dismissal Without Prejudice of
`
`Defendants NXP Semiconductors N.V. and NXP B.V. Dkt. 34 To the extent an answer
`
`is required, NXP USA denies the allegations in Paragraph 14.
`
`15.
`Because NXP maintains more than minimum contacts with this District, the
`Court’s exercise of jurisdiction aligns with constitutional standards of fair play and
`substantial justice and arises directly from NXP’s purposeful contacts with this District. This
`Court also has jurisdiction over NXP Semiconductors N.V. and NXP B.V. upon service of
`the Complaint.
`
`- 5 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 6 of 15
`
`
`
`ANSWER: Without admitting personal jurisdiction is proper here, NXP USA does not
`
`contest personal jurisdiction for purposes of this litigation only. The parties have filed a
`
`Stipulation of Dismissal Without Prejudice of Defendants NXP Semiconductors N.V. and
`
`NXP B.V. Dkt. 34 To the extent an answer is required, NXP USA denies any remaining
`
`allegations in Paragraph 15.
`
`16.
`Venue is proper in this District as to Defendants NXP Semiconductors N.V.
`and NXP B.V. because foreign companies may be sued in any district under 28 U.S.C. §
`1391(c)(3).
`
`ANSWER: The parties have filed a Stipulation of Dismissal Without Prejudice of
`
`Defendants NXP Semiconductors N.V. and NXP B.V. Dkt. 34 To the extent an answer
`
`is required, NXP USA denies the allegations in Paragraph 16.
`
`17.
`Venue is proper in this District as to Defendant NXP USA, Inc. under 28 U.S.C.
`§ 1400(b) because it has a regular and established place of business and has committed acts
`of infringement in this District. NXP USA, Inc. maintains two offices, including its
`headquarters office, in this District. NXP advertises, for example, that semiconductor design
`and manufacturing activities take place at both of its Austin, Texas facilities. See, e.g.,
`https://www.nxp.com/company/about-nxp/worldwide-locations/united-states:USA.
`NXP
`further advertises that “NXP owns and operates four wafer fabrication facilities in the US,
`two of which are in Austin, Texas . . . ,” and that “representative products of these fabs
`include microcontrollers (MCUs) and microprocessors (MPUs), power management devices,
`RF transceivers, amplifiers, and sensors.” Id.
`
`ANSWER: The allegations regarding venue in Paragraph 17 are conclusions of law,
`
`rather than statements of fact, to which no response is required. Without admitting venue
`
`is proper here, NXP USA does not contest venue for purposes of this litigation in the
`
`Western District of Texas only. NXP USA denies that this Division is convenient, and
`
`reserves its rights to move for transfer under 28 U.S.C. § 1404. NXP USA denies that it
`
`“committed acts of infringement.” NXP USA denies any remaining allegations of
`
`Paragraph 17.
`
`- 6 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 7 of 15
`
`
`
`THE ASSERTED PATENTS
`
`18.
`U.S. Patent No. 7,804,435, titled “Video decoder with reduced power
`consumption and method thereof,” issued September 28, 2010 (“’435 patent”). The
`application leading to the ’435 patent was filed August 31, 2006.
`
`ANSWER: NXP USA admits that United States Patent No. 7,804,435 (“the ’435 patent”)
`
`states on its face that it is entitled “Video decoder with reduced power consumption and
`
`method thereof,” issued on September 28, 2010, and was filed on August 31, 2006. NXP
`
`USA denies any remaining allegations in Paragraph 18.
`
`19.
`U.S. Patent No. 8,933,945, titled “Dividing work among multiple graphics
`pipelines using a super-tiling technique,” issued January 13, 2015 (“’945 patent”). The
`application leading to the ’945 patent was filed June 12, 2003, and claims priority to U.S.
`Provisional Appl. No. 60/429,641, filed November 27, 2002.
`
`ANSWER: NXP USA admits that United States Patent No. 8,933,945 (“’945 patent”)
`
`states on its face that it is entitled “Dividing work among multiple graphics pipelines
`
`using a super-tiling technique,” issued on January 13, 2015, was filed on June 12, 2003,
`
`and claims priority to U.S. Provisional Appl. No. 60/429,641, filed November 27, 2002.
`
`NXP USA denies any remaining allegations in Paragraph 19.
`
`20.
`The ’435 and ’945 patents (collectively, the “Asserted Patents”) are presumed
`valid and enforceable under 35 U.S.C. § 282.
`
`ANSWER: Paragraph 20 contains conclusions of law, rather than statements of fact, to
`
`which no response is required. To the extent a response is required, NXP USA denies the
`
`allegations in Paragraph 20.
`
`21.
`AST owns all right, title, and interest in the Asserted Patents, including the
`right to assert all causes of action involving the asserted patents and the right to any remedies
`for infringement, including for past damages. The assignment records for the ’435 patent
`appear in the public prosecution history at Reel/Frames 018534/0233, 019774/0115,
`024880/0593, and 036703/0421. The assignment records for the ’945 patents appear in the
`public prosecution history at Reel/Frames 014176/0613, 025573/0443, and 036703/0421.
`
`- 7 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 8 of 15
`
`
`
`ANSWER: NXP USA is without knowledge or information sufficient to form a belief as
`
`to the allegations in Paragraph 21, and therefore denies the allegations in Paragraph 21.
`
`COUNT I: INFRINGEMENT OF THE ’435 PATENT
`
`22.
`
`AST incorporates the preceding paragraphs as if it repeated them all here.
`
`ANSWER: NXP USA incorporates by reference the contents in the preceding Paragraphs
`
`1-21 as if restated fully herein.
`
`23.
`25, and 26.
`
`The ’435 patent recites 26 claims, including independent claims 1, 9, 14, 19, 22,
`
`ANSWER: NXP USA admits that the ’435 patent recites 26 claims and claims 1, 9, 14,
`
`19, 22, 25, and 26 are independent claims. NXP USA denies any remaining allegations
`
`in Paragraph 23.
`
`24.
`
`Claim 1 of the ’435 patent reads:
`
`An apparatus comprising:
`
`a power management controller operatively couplable to a video
`decoder that decodes at least one encoded digital video stream and in
`response to a determination of encoding description data that describes
`a scheme used to encode the input stream, varies power consumption
`of at least one operational portion of the video decoder.
`
`ANSWER: To the extent that an answer is required, NXP USA admits that Paragraph 24
`
`recites claim 1 of the ’435 patent. NXP USA denies any remaining allegations in
`
`Paragraph 24.
`
`25.
`NXP has infringed and continues to infringe, literally or by the doctrine of
`equivalents, at least claims 1, 9, 14, 19, 22, 25, and 26 of the ’435 patent by making, using,
`selling, offering for sale, or importing products that infringe the ’435 patent in the United
`States.
`
`ANSWER: NXP USA denies the allegations in Paragraph 25.
`
`26.
`NXP’s products that infringe the ’435 patent include, for example, its i.MX
`family of applications processors—such as the i.MX 8 QuadMax Applications Processor—
`
`- 8 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 9 of 15
`
`
`
`and other products with the same or similar features and functionality. Exhibit A contains
`an exemplary claim chart showing one way NXP infringes the ’435 patent.
`
`ANSWER: NXP USA denies the allegations in Paragraph 26.
`
`27.
`NXP has known about the ’435 patent at least as early as its receipt of AST’s
`letter of May 3, 2022, which notified NXP that at least its i.MX family of applications
`processors infringed at least claims 1, 9, 14, 19, 22, 25, and 26 of the ’435 patent.
`
`ANSWER: NXP USA denies the allegations in Paragraph 27.
`
`28.
`At least as early as NXP’s knowledge of the ’435 patent, NXP indirectly
`infringes the ’435 patent by inducement under 35 U.S.C. § 271(c). NXP knowingly induces
`infringement of the ’435 patent by intending others to make, use, offer for sale, or sell in the
`United States products covered by the ’435 patent. NXP provides these products and, on
`information and belief, provides instructions on their use to others—e.g., customers and end
`customers—who provision for use, incorporate into, offer for sale, or sell in the United States
`products or services that directly infringe at least claims 1, 9, 14, 19, 22, 25, and 26 of the
`’435 patent.
`
`ANSWER: NXP USA denies the allegations in Paragraph 28.
`
`29.
`NXP also contributes to infringement of the ’435 patent by others by
`knowingly providing products that, when configured and combined with hardware and
`software supplied by partners or downstream customers, result in a system that directly
`infringes at least claims 1, 9, 14, 19, 22, 25, and 26 of the ’435 patent. These products have no
`substantial non-infringing uses and constitute a material part of the invention claimed by the
`’435 patent.
`
`ANSWER: NXP USA denies the allegations in Paragraph 29.
`
`30.
`NXP is liable for infringement of the ’435 patent due to its actions in this
`District and throughout the United States. NXP’s infringing conduct has caused AST to
`suffer damages and irreparable harm.
`
`ANSWER: NXP USA denies the allegations in Paragraph 30.
`
`COUNT II: INFRINGEMENT OF THE ’945 PATENT
`
`31.
`
`AST incorporates the preceding paragraphs as if it repeated them all here.
`
`ANSWER: NXP USA incorporates by reference the contents in the preceding Paragraphs
`
`1-30 as if restated fully herein.
`
`32.
`
`The ’945 patent recites 21 claims, including independent claims 1, 18, and 21.
`
`- 9 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 10 of 15
`
`
`
`ANSWER: NXP USA admits that the ’945 recites 21 claims and that claims 1, 18, and 21
`
`are independent claims. NXP USA denies any remaining allegations in Paragraph 32.
`
`33.
`
`Claim 1 of the ’945 patent reads:
`
`A graphics processing circuit, comprising:
`
`at least two graphics pipelines on a same chip operative to process data
`in a corresponding set of tiles of a repeating tile pattern corresponding
`to screen locations, a respective one of the at least two graphics
`pipelines operative to process data in a dedicated tile; and
`
`a memory controller on the chip in communication with the at least two
`graphics pipelines, operative to transfer pixel data between each of a
`first pipeline and a second pipeline and a memory shared among the at
`least two graphics pipelines;
`
`wherein the repeating tile pattern includes a horizontally and vertically
`repeating pattern of square regions.
`
`ANSWER: To the extent that an answer is required, NXP USA admits that Paragraph 33
`
`recites claim 1 of the ’945 patent. NXP USA denies any remaining allegations in
`
`Paragraph 33.
`
`34.
`NXP has infringed and continues to infringe, literally or by the doctrine of
`equivalents, at least claims 1, 18, and 21 of the ’945 patent by making, using, selling, offering
`for sale, or importing products that infringe the ’945 patent in the United States.
`
`ANSWER: NXP USA denies the allegations in Paragraph 34.
`
`35.
`NXP’s products that infringe the ’945 patent include, for example, its i.MX
`family of applications processors—such as the i.MX 8 QuadMax Applications Processor—
`and other products with the same or similar features and functionality. Exhibit B contains
`an exemplary claim chart showing one way NXP infringes the ’945 patent.
`
`ANSWER: NXP USA denies the allegations in Paragraph 35.
`
`36.
`NXP has known about the ’945 patent at least as early as April 25, 2016, when
`AST issued a subpoena to non-party NXP seeking discovery of matters including NXP’s
`potential infringement of the ’945 patent in Certain Computing or Graphics Systems,
`Components Thereof, and Vehicles Containing Same, Inv. No. 337-TA-984 (U.S.I.T.C. 2016).
`NXP has also known about the ’945 patent at least as early as its receipt of AST’s letter of
`May 3, 2022, which notified NXP that at least its i.MX family of applications processors
`infringed at least claims 1, 18, and 21 of the ’945 patent.
`
`- 10 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 11 of 15
`
`
`
`ANSWER: NXP USA denies the allegations in Paragraph 36.
`
`37.
`At least as early as NXP’s knowledge of the ’945 patent, NXP indirectly
`infringes the ’945 patent by inducement under 35 U.S.C. § 271(c). NXP knowingly induces
`infringement of the ’945 patent by intending others to make, use, offer for sale, or sell in the
`United States products covered by the ’945 patent. NXP provides these products and, on
`information and belief, provides instructions on their use to others—e.g., customers and end
`customers—who provision for use, incorporate into, offer for sale, or sell in the United States
`products or services that directly infringe at least claims 1, 18, and 21 of the ’945 patent.
`
`ANSWER: NXP USA denies the allegations in Paragraph 37.
`
`38.
`NXP also contributes to infringement of the ’945 patent by others by
`knowingly providing products that, when configured and combined with hardware and
`software supplied by partners or downstream customers, result in a system that directly
`infringes at least claims 1, 18, and 21 of the ’945 patent. These products have no substantial
`non-infringing uses and constitute a material part of the invention claimed by the ’945
`patent.
`
`ANSWER: NXP USA denies the allegations in Paragraph 38.
`
`39.
`NXP is liable for infringement of the ’945 patent due to its actions in this
`District and throughout the United States. NXP’s infringing conduct has caused AST to
`suffer damages and irreparable harm.
`
`ANSWER: NXP USA denies the allegations in Paragraph 39.
`
`RESPONSE TO AST’S PRAYER FOR RELIEF
`
`NXP USA denies that AST is entitled to any relief from NXP USA, including but not
`
`limited to the relief sought in Paragraphs A through G in AST’s Prayer for Relief.
`
`RESPONSE TO AST’S DEMAND FOR JURY TRIAL
`
`AST’s demand for a trial by jury does not require a response by NXP USA. To the extent
`
`that a response is required, NXP USA admits that AST has requested a trial by jury.
`
`AFFIRMATIVE DEFENSES
`
`NXP USA incorporates by reference as if fully set forth herein its responses to Paragraphs
`
`1–39 of the Complaint. Without assuming any burden other than that imposed by operation of law
`
`and without reducing or removing AST’s burden of proof on its affirmative claims, NXP USA
`
`- 11 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 12 of 15
`
`
`
`alleges and asserts the following defenses in response to the Complaint and AST’s assertion that
`
`NXP USA infringes the Asserted Patents, undertaking the burden of proof only as to those defenses
`
`deemed affirmative defenses by law, regardless of how such defenses are denominated herein. In
`
`addition, NXP USA specifically reserves the right to further amend its Original Answer to add
`
`Separate Defenses and Counterclaims that become known through the course of discovery.
`
`First Affirmative Defense: (Non-Infringement)
`
`1.
`
`NXP USA has not infringed, either literally or under the doctrine of equivalents,
`
`any claims of the Asserted Patents; therefore, NXP USA is not liable for any infringement thereof.
`
`Second Affirmative Defense: (Invalidity)
`
`2.
`
`The claims of the Asserted Patents are invalid because they fail to satisfy one or
`
`more requirements of patentability under Title 35 of the United States Code.
`
`Third Affirmative Defense: (Failure to State a Claim)
`
`3.
`
`The Complaint fails to plead a plausible claim upon which relief may be granted
`
`and/or fails to plead factual allegations with sufficiency and particularity required to state a
`
`plausible claim.
`
`Fourth Affirmative Defense: (Prosecution History Estoppel/Disclaimer)
`
`4.
`
`AST is estopped from construing any valid claim of the Asserted Patents to be
`
`infringed literally or under the doctrine of equivalents due to admissions or statements made in
`
`prior litigation and/or to the U.S. Patent and Trademark Office, including (a) during prosecution
`
`of the Asserted Patents, (b) in the specifications and claims of the Asserted Patents, (c) in the
`
`provisional applications from which the Asserted Patents purport to claim priority, (d) during
`
`prosecution of patent applications related to the Asserted Patents, and (e) during prior proceedings
`
`related to one or more of the Asserted Patents.
`
`- 12 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 13 of 15
`
`
`
`Fifth Affirmative Defense: (Marking and No Pre-Suit Damages)
`
`5.
`
`AST does not allege that it, its predecessors-in-interest, or parties that it has granted
`
`a license or covenant not to sue complied with 35 U.S.C. § 287. This failure precludes any
`
`recovery by AST for damages alleged to have accrued prior to the initiation of this suit.
`
`Sixth Affirmative Defense: (Express or Implied License)
`
`6.
`
`AST’s claims of infringement of the Asserted Patents are barred, in whole or in
`
`part, based on express or implied licenses.
`
`Seventh Affirmative Defense: (Patent Exhaustion)
`
`7.
`
`AST’s claims of infringement of the Asserted Patents are barred, in whole or in
`
`part, by the doctrine of patent exhaustion.
`
`Eighth Affirmative Defense: (No Costs)
`
`8.
`
`AST failed to disclaim the claims of the Asserted Patents that are invalid before
`
`commencement of suit and therefore may recover no costs.
`
`Ninth Affirmative Defense: (28 U.S.C. § 1498(a))
`
`9.
`
`To the extent that AST may accuse products or services that are provided by or for
`
`the government of the United States of America, there is no jurisdiction over such claims, pursuant
`
`to 28 U.S.C. § 1498(a), outside of the U.S. Court of Federal Claims.
`
`Tenth Affirmative Defense: (Statute of Limitations)
`
`10.
`
`AST’s claims for relief are barred at least in part by 35 U.S.C. § 286.
`
`Eleventh Affirmative Defense: (Equitable Defenses)
`
`11.
`
`AST’s claims for relief are barred, in part or in whole, in equity, including by the
`
`doctrine of equitable estoppel.
`
`- 13 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 14 of 15
`
`
`
`Twelfth Affirmative Defense: (No Injunctive Relief)
`
`12.
`
`AST is not entitled to injunctive relief for any of the Asserted Patents under eBay v
`
`MercExchange, LLC, 126 S. Ct. 1837, 547 U.S. 388 (2006) because, inter alia, any alleged injury
`
`to AST is not immediate or irreparable, AST has an adequate remedy at law, and the balance of
`
`hardships does not warrant injunctive relief.
`
`NXP USA’S PRAYER FOR RELIEF
`
`NXP USA, reserving its right to amend its pleadings to add additional defenses,
`
`affirmative defenses, and counterclaims if warranted by discovery, prays for the following relief:
`
`a.
`
`A judgment that NXP USA has not infringed any claim of the ’435 patent nor
`
`infringed any claim of the ’945 patent.
`
`b.
`
`c.
`
`A judgment that both the ’435 patent and the ’945 patent are invalid.
`
`A judgment that AST’s Complaint be dismissed with prejudice, and that AST take
`
`nothing by its Complaint.
`
`d.
`
`A judgment that 35 U.S.C. §§ 271 and 287 bar AST from recovering any pre-suit
`
`damages.
`
`e.
`
`A judgment that this is an exceptional case pursuant to 35 U.S.C. § 285 and an
`
`award to NXP USA of its reasonable attorneys’ fees and costs of suit pursuant to 35 U.S.C. §§ 284,
`
`285, and all other applicable statutes, rules, and common law.
`
`f.
`
`An award to NXP USA of such other and further relief as the Court may deem just
`
`and proper.
`
`- 14 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 42 Filed 08/15/22 Page 15 of 15
`
`August 15, 2022
`
`
`
`
`
`Respectfully submitted,
`
`
`By: /s/ Richard S. Zembek
`
`
`
`
`Richard S. Zembek (SBN 00797726)
`richard.zembek@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`Fulbright Tower
`1301 McKinney, Suite 5100
`Houston, Texas 77010-3095
`Tel: (713) 651-5151
`Fax: (713) 651-5246
`
`Eric C. Green (SBN 24069824)
`eric.green@nortonrosefulbright.com
`Catherine Garza (SBN 24073318)
`Cat.garza@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, Texas 78701
`Tel: (512) 474-5201
`Fax: (512) 536-4598
`
`Counsel for Defendant NXP USA, Inc.
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on August 15, 2022, all counsel of record who are
`
`deemed to have consented to electronic service are being served with a copy of this document via
`
`the Court’s CM/ECF system.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Catherine Garza
`
`Catherine Garza
`
`
`
`
`- 15 -
`
`