Case 2:18-cv-01732-RSM Document 28 Filed 03/18/19 Page 1 of 10
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`The Honorable Ricardo S. Martinez
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
`UNILOC 2017 LLC,
`
`v.
`HTC AMERICA, INC.,
`
`Plaintiff,
`
`Defendant.
`
`Case No. 2:18-CV-01732-RSM
`HTC AMERICA, INC.’S ANSWER AND
`COUNTERCLAIMS TO PLAINTIFFS’
`COMPLAINT FOR PATENT
`INFRINGEMENT
`JURY TRIAL DEMANDED
`
`Defendant HTC America, Inc. (“HTCA” or “Defendant”), hereby answers Plaintiff Uniloc
`2017 LLC’s (“Uniloc”) Complaint filed on November 30, 2018 (the “Complaint”).
`THE PARTIES
`HTCA is without knowledge or information sufficient to form a belief as to the truth
`
`1.
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`of the allegations of paragraph 1 and therefore denies them.
`2.
`HTCA admits that it is a Washington corporation with an office in Seattle,
`Washington. HTCA admits that it may be served with process through its registered agent: Cogency
`Global Inc., 1780 Barnes Blvd. SW, Tumwater, Washington 98512. HTCA denies any remaining
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`allegations of paragraph 2.
`
`HTCA’S ANSWER TO PL.’S COMPL. FOR PATENT
`INFRINGEMENT (2:18-CV-01732-RSM)
`
`1
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`1420 Fifth Avenue, Suite 1400
`Seattle, Washington 98101
`phone 206.516.3800 fax 206.516.3888
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`Case 2:18-cv-01732-RSM Document 28 Filed 03/18/19 Page 2 of 10
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`HTCA admits that it imports, offers for sale, and sells consumer electronic products
`3.
`to customers in the United States. HTCA denies committing any acts of infringement and denies the
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`remaining allegations of paragraph 3.
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`JURISDICTION
`HTCA admits that the Complaint purports to state a claim for patent infringement
`4.
`under the patent laws of the United States, but denies committing any acts of infringement. HTCA
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`admits that this Court has subject matter jurisdiction over this case under 28 U.S.C. §§ 1331, 1338(a)
`provided that the requirements of standing are satisfied.
`COUNT I
`(INFRINGEMENT OF U.S. PATENT NO. 6,836,654)
`HTCA restates and incorporates by reference its answer to paragraphs 1-4 of the
`
`5.
`
`Complaint.
`HTCA admits that U.S. Patent No. 6,836,654 (“the ’654 patent”) is titled “ANTI-
`6.
`THEFT PROTECTION FOR A RADIOTELEPHONY DEVICE” and that the face of the ’654 patent
`states that it issued on December 28, 2004. HTCA admits that a copy of the ’654 patent appears to
`
`be attached as Exhibit A to the Complaint. HTCA is without knowledge or information sufficient to
`form a belief as to the truth of the remaining allegations of paragraph 6 and therefore denies them.
`7.
`HTCA is without knowledge or information sufficient to form a belief as to the truth
`of the allegations of paragraph 7 and therefore denies them.
`
`HTCA is without knowledge or information sufficient to form a belief as to the truth
`8.
`of the allegations of paragraph 8 and therefore denies them.
`9.
`HTCA is without knowledge or information sufficient to form a belief as to the truth
`of the allegations of paragraph 9 and therefore denies them.
`
`HTCA admits that it imports, offers for sale, and sells in the United States certain
`10.
`electronic devices, including one or more of the devices identified in Exhibit B to the Complaint.
`HTCA denies the remaining allegations of paragraph 10.
`
`HTCA’S ANSWER TO PL.’S COMPL. FOR PATENT
`INFRINGEMENT (2:18-CV-01732-RSM)
`
`2
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`1420 Fifth Avenue, Suite 1400
`Seattle, Washington 98101
`phone 206.516.3800 fax 206.516.3888
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`Case 2:18-cv-01732-RSM Document 28 Filed 03/18/19 Page 3 of 10
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`11.
`12.
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`13.
`14.
`15.
`16.
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`Denied.
`Denied.
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`Denied.
`Denied.
`Denied.
`Denied.
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`HTCA admits having notice of the ’654 patent since at least the service of the
`17.
`Complaint. HTCA denies the remaining allegations of paragraph 17.
`18.
`Denied.
`19.
`Denied.
`
`20.
`
`Denied.
`
`PRAYER FOR RELIEF
`This paragraph responds to the statement of relief requested by Uniloc to which no response
`is required. HTCA denies that Uniloc is entitled to any of the requested relief and denies all
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`allegations of infringement.
`
`DEMAND FOR JURY TRIAL
`This paragraph responds to the trial by jury demanded by Uniloc to which no response is
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`required.
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`DEFENSES
`Subject to the responses above, HTCA alleges and asserts the following defenses in response
`to the allegations, without assuming any burden other than that imposed by operation of law and
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`undertaking the burden of proof only as to those defenses deemed affirmative defenses by law,
`regardless of how such defenses are denominated herein.
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`HTCA’S ANSWER TO PL.’S COMPL. FOR PATENT
`INFRINGEMENT (2:18-CV-01732-RSM)
`
`3
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`1420 Fifth Avenue, Suite 1400
`Seattle, Washington 98101
`phone 206.516.3800 fax 206.516.3888
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`Case 2:18-cv-01732-RSM Document 28 Filed 03/18/19 Page 4 of 10
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`FIRST DEFENSE
`(Failure to State a Claim)
`Uniloc fails to state a claim upon which relief can be granted.
`SECOND DEFENSE
`(Non-infringement)
`HTCA does not infringe and has not infringed directly, indirectly, willfully or otherwise any
`
`valid, enforceable claim of the ’654 patent, either literally or under the doctrine of equivalents.
`THIRD DEFENSE
`(Invalidity)
`The claims of the ’654 patent are invalid under one or more of the provisions in Title 35 of
`
`the United States Code, including without limitation §§ 101, 102, 103, and 112 and/or judicial
`decisions and/or the applicable provisions of Title 37 of the Code of Federal Regulation.
`FOURTH DEFENSE
`(Prosecution History Estoppel)
`By reason of prior art and/or statements and representations made to the United States Patent
`and Trademark Office during the prosecution of the application that led to the issuance of the ’654
`patent, the ’654 patent is so limited that no claim can be construed as covering any HTCA product.
`Uniloc’s claims are barred by the doctrine of prosecution history estoppel based on statements,
`
`representations and admissions made during prosecution of the patent applications resulting in the
`’654 patent. Uniloc is estopped from construing the claims of the ’654 patent in any way to cover
`any product, method or service of HTCA under the doctrine of equivalents, based on statements,
`representations and admissions made during prosecution of the patent applications resulting in the
`
`’654 patent.
`
`FIFTH DEFENSE
`(Limitation on Damages)
`Some or all of Uniloc’s damages, if any, are limited under 35 U.S.C. §§ 286 and 287.
`
`HTCA’S ANSWER TO PL.’S COMPL. FOR PATENT
`INFRINGEMENT (2:18-CV-01732-RSM)
`
`4
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`1420 Fifth Avenue, Suite 1400
`Seattle, Washington 98101
`phone 206.516.3800 fax 206.516.3888
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`Case 2:18-cv-01732-RSM Document 28 Filed 03/18/19 Page 5 of 10
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`SIXTH DEFENSE
`(Limitation on Costs)
`Uniloc is barred from recovering any claim for costs according to 35 U.S.C. § 288.
`SEVENTH DEFENSE
`(License and Exhaustion)
`To the extent Uniloc has licensed or otherwise exhausted its rights and remedies as to products
`
`or services that are accused, HTCA is not liable to Uniloc for any alleged acts of infringement related
`to such products or services. Alternatively, Uniloc’s claims are barred under the doctrine of patent
`exhaustion.
`
`EIGHTH DEFENSE
`(No Double Recovery)
`Uniloc’s requests for relief are barred or otherwise limited by restrictions on double recovery.
`NINTH DEFENSE
`(Extraterritoriality)
`Uniloc’s claims for patent infringement are precluded in whole or in part to the extent any
`accused functionality or acts are located or performed outside of the United States.
`TENTH DEFENSE
`(Limitation for Sales Covered by 28 U.S.C. § 1498(a))
`To the extent Uniloc may accuse products or services that are provided by or for the
`government of the United States of America, in accordance with 28 U.S.C. § 1498(a), there is no
`jurisdiction over those claims outside of the United States Court of Federal Claims.
`ELEVENTH DEFENSE
`(Equitable Defenses)
`Uniloc’s claims for relief are barred in whole or in part by equitable doctrines, including, but
`not limited to, equitable estoppel, waiver, and unclean hands.
`
`HTCA’S ANSWER TO PL.’S COMPL. FOR PATENT
`INFRINGEMENT (2:18-CV-01732-RSM)
`
`5
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`1420 Fifth Avenue, Suite 1400
`Seattle, Washington 98101
`phone 206.516.3800 fax 206.516.3888
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`Case 2:18-cv-01732-RSM Document 28 Filed 03/18/19 Page 6 of 10
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`TWELFTH DEFENSE
`(No Exceptional Case)
`HTCA’s actions in defending this case do not give rise to an exceptional case under 35 U.S.C.
`
`§ 285.
`
`RESERVATION OF RIGHTS
`HTCA has insufficient knowledge or information to form a belief as to whether it may have
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`yet unstated separate and additional defenses available. HTCA reserves the right to amend this
`Answer to add, delete, or modify defenses based on legal theories which may or will be divulged
`through clarification of Uniloc’s claims, through discovery, or through further legal analysis of
`Uniloc’s claims and positions in this litigation.
`COUNTERCLAIMS
`HTCA, for its Counterclaims against Uniloc and upon information and belief, states as
`follows:
`
`THE PARTIES
`HTC America, Inc., (“HTCA”) is a Washington corporation with a place of business
`1.
`at 308 Occidental Avenue South, Suite 300, Seattle, Washington 98104.
`2.
`According to its Complaint, Uniloc 2017 LLC (“Uniloc”) is a Delaware limited
`liability company having addresses at 1209 Orange Street, Wilmington, Delaware 19801; 620
`
`Newport Center Drive, Newport Beach, California 92660; and 102 N. College Avenue, Suite 303,
`Tyler, Texas 75702.
`
`JURISDICTION AND VENUE
`Subject to HTCA’s affirmative defenses and denials, HTCA alleges that this Court has
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`3.
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`jurisdiction over the subject matter of these Counterclaims under, without limitation, 28 U.S.C.
`§§ 1331, 1338(a), 1367, 2201, and 2202, and venue for these Counterclaims is proper in this District
`to the extent venue is proper in this case. HTCA maintains that there are one or more alternative
`
`HTCA’S ANSWER TO PL.’S COMPL. FOR PATENT
`INFRINGEMENT (2:18-CV-01732-RSM)
`
`6
`
`1420 Fifth Avenue, Suite 1400
`Seattle, Washington 98101
`phone 206.516.3800 fax 206.516.3888
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`Case 2:18-cv-01732-RSM Document 28 Filed 03/18/19 Page 7 of 10
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`venues that are clearly more convenient to this case and reserves all rights to seek to transfer this case
`to a more convenient forum.
`
`4.
`
`This Court has personal jurisdiction over Uniloc.
`FACTUAL BACKGROUND
`In its Complaint, Uniloc purports to hold all substantial rights, title and interest in U.S.
`5.
`Patent No. 6,836,654 (“the ’654 patent”).
`
`In its Complaint, Uniloc asserts that HTCA has infringed the ’654 patent.
`6.
`HTCA does not and has not infringed directly, indirectly, or willfully any valid,
`7.
`enforceable claim of the ’654 patent, either literally or under the doctrine of equivalents.
`8.
`The claims of the ’654 patent are invalid for failure to meet the conditions of
`
`patentability and/or otherwise comply with one or more requirements of 35 U.S.C. §§ 100 et seq.,
`including §§ 101, 102, 103, and 112.
`9.
`Consequently, there is an actual case or controversy between the parties over the non-
`infringement and invalidity of the ’654 patent.
`COUNT ONE
`Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,836,654
`HTCA restates and incorporates by reference its allegations in paragraphs 1 through 9
`10.
`of its Counterclaims.
`
`An actual case or controversy exists between HTCA and Uniloc as to whether the ’654
`11.
`patent is not infringed by HTCA.
`12.
`A judicial declaration is necessary and appropriate so that HTCA may ascertain its
`rights regarding the ’654 patent.
`
`HTCA has not infringed and does not infringe, directly or indirectly, any valid and
`13.
`enforceable claim of the ’654 patent, either literally or under the doctrine of equivalents.
`14.
`This is an exceptional case under 35 U.S.C. § 285 including without limitation because
`Uniloc filed its Complaint with knowledge of the facts stated in this Counterclaim.
`
`HTCA’S ANSWER TO PL.’S COMPL. FOR PATENT
`INFRINGEMENT (2:18-CV-01732-RSM)
`
`7
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`1420 Fifth Avenue, Suite 1400
`Seattle, Washington 98101
`phone 206.516.3800 fax 206.516.3888
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`Case 2:18-cv-01732-RSM Document 28 Filed 03/18/19 Page 8 of 10
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`COUNT TWO
`Declaratory Judgment of Invalidity of U.S. Patent No. 6,836,654
`HTCA restates and incorporates by reference its allegations in paragraphs 1 through
`15.
`14 of its Counterclaims.
`16.
`An actual case or controversy exists between HTCA and Uniloc as to whether the ’654
`patent is invalid.
`
`A judicial declaration is necessary and appropriate so that HTCA may ascertain its
`17.
`rights as to whether the ’654 patent is invalid.
`18.
`The ’654 patent is invalid for failure to meet the conditions of patentability and/or
`otherwise comply with one or more of the requirements of 35 U.S.C. §§ 100 et seq., including §§ 101,
`
`102, 103, and 112.
`19.
`This is an exceptional case under 35 U.S.C. § 285 including without limitation because
`Uniloc filed its Complaint with knowledge of the facts stated in this Counterclaim.
`PRAYER FOR RELIEF
`WHEREFORE, HTCA prays for judgment as follows:
`A.
`A judgment dismissing Uniloc’s Complaint against HTCA with prejudice;
`B.
`A judgment in favor of HTCA on all of its Counterclaims;
`C.
`A declaration that HTCA has not infringed, contributed to the infringement of, or
`
`induced others to infringe, either directly or indirectly, any valid claim of the ’654 patent;
`D.
`A declaration that the claims of the ’654 patent are invalid;
`E.
`A declaration that this case is exceptional and an award to HTCA of its reasonable
`costs and expenses of litigation, including attorneys’ fees and expert witness fees;
`
`F.
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`A judgment limiting or barring Uniloc’s ability to enforce the ’654 patent in equity;
`
`and
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`G.
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`Such other and further relief as this Court may deem just and proper.
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`HTCA’S ANSWER TO PL.’S COMPL. FOR PATENT
`INFRINGEMENT (2:18-CV-01732-RSM)
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`8
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`1420 Fifth Avenue, Suite 1400
`Seattle, Washington 98101
`phone 206.516.3800 fax 206.516.3888
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`Case 2:18-cv-01732-RSM Document 28 Filed 03/18/19 Page 9 of 10
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`DEMAND FOR JURY TRIAL
`In accordance with Rule 38 of the Federal Rules of Civil Procedure, HTCA respectfully
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`demands a jury trial of all issues triable to a jury in this action.
`
`Dated: March 18, 2019
`
` Respectfully submitted,
`
`YARMUTH LLP
`
`By: /s/ Molly A. Terwilliger
`Molly A. Terwilliger, WSBA No. 28449
`1420 Fifth Avenue, Suite 1400
`Seattle, WA 98101
`Telephone: (206) 516-3800
`Fax: (206) 516-3888
`mterwilliger@yarmuth.com
`
`VINSON & ELKINS LLP
`
`By: /s/ Fred I. Williams
`Fred I. Williams (pro hac vice)
`Mario A. Apreotesi (pro hac vice)
`2801 Via Fortuna, Suite 100
`Austin, TX 78746-7568
`Telephone: (512) 542-8400
`Fax: (512) 542-8612
`mapreotesi@velaw.com
`fwilliams@velaw.com
`
`Todd E. Landis (pro hac vice)
`2001 Ross Avenue, Suite 3700
`Dallas, TX 75201
`Telephone: (214) 220-7700
`Fax: (214) 220-7716
`tlandis@velaw.com
`
` Attorneys for Defendant HTC America, Inc.
`
`HTCA’S ANSWER TO PL.’S COMPL. FOR PATENT
`INFRINGEMENT (2:18-CV-01732-RSM)
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`9
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`1420 Fifth Avenue, Suite 1400
`Seattle, Washington 98101
`phone 206.516.3800 fax 206.516.3888
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`Case 2:18-cv-01732-RSM Document 28 Filed 03/18/19 Page 10 of 10
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that all counsel of record who are deemed to have consented
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`to electronic service are being served on March 18, 2019, with a copy of the foregoing document via
`the Court’s CM/ECF system pursuant to Local Rules W.D. Wash. LCV-5.
`
`/s/ Fred I. Williams
`Fred I. Williams
`
`HTCA’S ANSWER TO PL.’S COMPL. FOR PATENT
`INFRINGEMENT (2:18-CV-01732-RSM)
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`1420 Fifth Avenue, Suite 1400
`Seattle, Washington 98101
`phone 206.516.3800 fax 206.516.3888
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