Case: 3:15-cv-00621-wmc Document #: 14 Filed: 12/18/15 Page 1 of 11
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WISCONSIN
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`WISCONSIN ALUMNI RESEARCH
`FOUNDATION,
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`
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`Case No. 3:15-cv-000621-WMC
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`Plaintiff,
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`Defendant.
`
`v.
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`APPLE INC.,
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`
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`APPLE INC.’S ANSWER TO COMPLAINT AND COUNTERCLAIMS
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`Defendant Apple Inc. (“Apple”) responds to the Complaint filed by Plaintiff Wisconsin
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`Alumni Research Foundation (“WARF” or “Plaintiff”) as set forth below. To the extent not
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`specifically admitted, Apple denies the allegations of the Complaint.
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`RESPONSES TO SPECIFIC ALLEGATIONS OF COMPLAINT
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`I.
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`INTRODUCTION1
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`1.
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`Apple admits that this is an action for patent infringement. Apple lacks
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`knowledge or information sufficient to admit or deny the remaining allegations contained in
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`Paragraph 1, and therefore denies the same.
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`2.
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`Apple admits that the patent-in-suit is United States Patent No. 5,781,752 (“’752
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`patent”), that it is entitled “Table Based Data Speculation Circuit for Parallel Processing
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`Computer,” and that it lists Andreas Moshovos, Scott Breach, Terani Vijaykumar, and Gurindar
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`Sohi as named inventors. Apple denies that the ’752 patent “significantly improved the
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`
`1
`For convenience and clarity, Apple’s Answer uses the same headings as in WARF’s Complaint. Apple
`does not admit any of the allegations contained in WARF’s headings.
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`Case: 3:15-cv-00621-wmc Document #: 14 Filed: 12/18/15 Page 2 of 11
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`efficiency and performance of contemporary computer processors,” or that it is “recognized as a
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`major milestone in the field of computer microprocessor architecture/design.” Apple admits that
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`Dr. Sohi received the Eckert-Mauchly Award in 2011 and that Dr. Moshovos received the
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`Maurice Wilkes award from the Association for Computing Machinery. Apple lacks knowledge
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`or information sufficient to admit or deny the remaining allegations contained in Paragraph 2,
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`and therefore denies the same.
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`3.
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`4.
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`Apple admits the allegations contained in Paragraph 3.
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`Apple admits that its iPhone 6s and iPhone 6s Plus products each contain Apple’s
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`A9 processor; and that its iPad Pro product contains Apple’s A9X processor. Apple denies the
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`remaining allegations in paragraph 4.
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`5.
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`Apple denies the allegations contained in Paragraph 5.
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`II.
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`PARTIES
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`6.
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`Apple admits that WARF claims it is a “not-for-profit” corporation. Apple lacks
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`knowledge or information sufficient to admit or deny the remaining allegations contained in
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`Paragraph 6, and therefore denies the same.
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`7.
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`Apple admits the allegations contained in Paragraph 7.
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`III.
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`JURISDICTION AND VENUE
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`8.
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`No answer is required to the allegations in Paragraph 8, which consist of
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`conclusions of law.
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`9.
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`No answer is required to the allegations in Paragraph 9, which consist of
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`conclusions of law. To the extent an answer is required, Apple admits that it maintains a retail
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`store with employees in Wisconsin, that it has sold products in Wisconsin, and that the Court has
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`personal jurisdiction over Apple. Apple denies the remaining allegations in Paragraph 9.
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`-2-
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`Case: 3:15-cv-00621-wmc Document #: 14 Filed: 12/18/15 Page 3 of 11
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`10.
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`No answer is required to the allegations in Paragraph 10, which consist of
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`conclusions of law. To the extent an answer is required, Apple admits, for purposes of this
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`action only, that venue is proper in this District, but denies that it has committed any acts of
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`infringement in this or any other District.2 Apple lacks knowledge or information sufficient to
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`admit or deny the remaining allegations contained in Paragraph 10, and therefore denies the
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`same.
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`IV.
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`FACTUAL ALLEGATIONS
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`11.
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`Apple admits that an uncertified copy of what purports to be the ’752 patent is
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`attached to the Complaint as Exhibit A, that it is entitled “Table Based Data Speculation Circuit
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`for Parallel Processing Computer,” and that it lists Andreas Moshovos, Scott Breach, Terani
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`Vijaykumar, and Gurindar Sohi as named inventors. Apple denies that the ’752 patent was duly
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`and legally issued.
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`12.
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`Apple lacks knowledge or information sufficient to admit or deny the allegations
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`contained in Paragraph 12, and therefore denies the same.
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`13.
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`Apple admits that the ’752 patent includes the statement quoted in paragraph 13,
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`and otherwise denies the allegations contained in Paragraph 13.
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`14.
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`Apple lacks knowledge or information sufficient to admit or deny the allegations
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`contained in Paragraph 14, and therefore denies the same.
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`15.
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`16.
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`Apple denies the allegations contained in Paragraph 15.
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`Apple admits that WARF has asserted the ’752 patent against Apple in another
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`lawsuit in this district captioned Wisconsin Alumni Research Foundation v. Apple Inc., Case No.
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`
`2
`Apple recognizes that WARF has asserted the ’752 patent against Apple in another lawsuit in this district,
`Wisconsin Alumni Research Foundation v. Apple Inc., Case No. 14-cv-00062-WMC, in which a jury found that
`Apple infringed the ’752 patent. Apple has filed post-trial motions challenging that verdict, and intends to appeal
`the verdict in the event its post-trial motions for judgment notwithstanding the verdict or a new trial are denied.
`Accordingly, Apple answers and pleads as follows.
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`-3-
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`14-cv-00062-WMC (“WARF I”). Apple further admits that WARF I “involved WARF’s
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`allegations that Apple processors with the LSD Predictor and iPhones and iPads that include
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`those processors infringe the ’752 patent”; but Apple denies that its processors with the LSD
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`Predictor, and iPhones and iPads that include those processors, infringe the ’752 patent. Apple
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`further admits that only Apple’s A7, A8 and A8X processors were the subject of “discovery and
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`trial” in WARF I; but states that WARF has also sought compensation for alleged infringement
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`by Apple products containing Apple’s A9 and A9X processors in its post-verdict motions in
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`WARF I. Apple further admits that it “filed a request that the United States Patent Trial and
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`Appeal Board (‘Board’) institute an Inter Partes Review of the ’752 patent” and that the Board
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`denied institution of the IPR. Apple further admits that the Board denied Apple’s petition for
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`rehearing. Apple denies the remaining allegations in Paragraph 16.
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`17.
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`Apple denies the allegations contained in Paragraph 17.
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`V.
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`COUNT ONE: INFRINGEMENT OF U.S. PATENT NO. 5,781,752
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`in full.
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`18.
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`19.
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`20.
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`Apple incorporates its responses to Paragraphs 1 through 17 as if set forth herein
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`Apple denies the allegations contained in Paragraph 19.
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`Apple admits that it designs and exclusively sells the A9 and A9X processors in
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`certain Apple products. Apple denies the remaining allegations contained in Paragraph 20.
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`21.
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`22.
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`23.
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`24.
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`25.
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`Apple denies the allegations contained in Paragraph 21.
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`Apple denies the allegations contained in Paragraph 22.
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`Apple denies the allegations contained in Paragraph 23.
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`Apple denies the allegations contained in Paragraph 24.
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`Apple denies the allegations contained in Paragraph 25.
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`-4-
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`26.
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`27.
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`Apple denies the allegations contained in Paragraph 26.
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`Apple denies the allegations contained in Paragraph 27.
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`VI.
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`PRAYER FOR RELIEF
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`WARF’s prayer for relief contains no allegation to which a response is required, but to
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`the extent any answer is required, Apple denies that WARF is entitled to the requested relief or
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`to any relief whatsoever.
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`VII. DEMAND FOR JURY TRIAL
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`28.
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`Apple admits that WARF has requested a jury trial. Apple denies that WARF has
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`raised any valid claims in its Complaint.
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`AFFIRMATIVE DEFENSES
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`By alleging the Affirmative Defenses set forth below, Apple does not agree or concede
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`that it bears the burden of proof or the burden of persuasion on any of these issues, whether in
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`whole or in part. For its Affirmative Defenses to the Complaint, Apple alleges as follows:
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`FIRST AFFIRMATIVE DEFENSE
`(Non-Infringement)
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`1.
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`Apple has not infringed and is not infringing, either directly, contributorily, or by
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`inducement, any valid or enforceable claim of U.S. Patent No. 5,781,752 (the “’752 patent”),
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`either literally or under the doctrine of equivalents, willfully or otherwise.
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`SECOND AFFIRMATIVE DEFENSE
`(Invalidity)
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`2.
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`Each claim of the ’752 patent is invalid and/or unenforceable for failing to meet
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`one or more of the requisite conditions for patentability under Title 35 of the United States Code,
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`Case: 3:15-cv-00621-wmc Document #: 14 Filed: 12/18/15 Page 6 of 11
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`including without limitation §§ 102, 103, and/or 112.3
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`3.
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`For example, one or more claims of the ’752 patent are rendered invalid under 35
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`U.S.C. §§ 102 (a), (b), (e), (g), and/or 103 by at least the prior art, or combinations thereof, listed
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`in Apple’s 35 U.S.C. § 282 list in WARF I as invalidating prior art, see Wisconsin Alumni
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`Research Foundation v. Apple Inc., Case. No. 14-cv-00062, Dkt. 386 (Apple Inc.’s Identification
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`of Prior Art Pursuant to 35 U.S.C. § 282), which Apple expressly incorporates by reference
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`herein.
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`THIRD AFFIRMATIVE DEFENSE
`(Prosecution History Estoppel)
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`By reason of proceedings in the United States Patent and Trademark Office
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`4.
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`during pre-issuance prosecution of the patent-in-suit, as well as post-grant proceedings before the
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`United States Patent Trial and Appeal Board, and specifically statements, arguments,
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`amendments, assertions, and/or representations made by or on behalf of the applicant(s) and/or
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`assignee(s) for the ’752 patent, WARF is estopped to construe the claims of the ’752 patent in
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`any way to cover any product, method, or service of Apple under the Doctrine of Equivalents.
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`FOURTH AFFIRMATIVE DEFENSE
`(No Exceptional Case)
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`This is not an “exceptional” case within the meaning of 35 U.S.C. § 285.
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`FIFTH AFFIRMATIVE DEFENSE
`(No Injunctive Relief)
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`WARF is not entitled to injunctive relief because any alleged injury to WARF is
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`5.
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`6.
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`neither immediate nor irreparable, and WARF has an adequate remedy at law.
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`3
`The jury in WARF I found that claims 1, 2, 3, 5, 6, and 9 of the ’752 patent were not invalid. Apple has
`filed post-trial motions challenging that verdict, and intends to appeal the verdict in the event its post-trial motions
`for judgment notwithstanding the verdict or a new trial are denied. See also supra n. 2.
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`-6-
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`Case: 3:15-cv-00621-wmc Document #: 14 Filed: 12/18/15 Page 7 of 11
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`SIXTH AFFIRMATIVE DEFENSE
`(Preclusion of Costs)
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`To the extent that any claim of the ’752 patent is held to be invalid, WARF must
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`7.
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`be precluded from recovering costs related to this action pursuant to 35 U.S.C. § 288.
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`SEVENTH AFFIRMATIVE DEFENSE
`(Government Sales)
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`To the extent that any accused product has been used or manufactured by or for
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`8.
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`the United States Government, WARF’s purported claims for damages are limited by 28 U.S.C.
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`§ 1498.
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`RESERVATION OF ADDITIONAL DEFENSES
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`Apple reserves any and all additional defenses available under Section 35 of the
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`9.
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`United States Code, the rules, regulations, or laws related thereto, the Federal Rules of Civil
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`Procedure, the Rules of this Court, and/or otherwise in law or equity, now existing, or later
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`arising, as may be discovered.
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`APPLE INC.’S COUNTERCLAIMS
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`Counterclaim-Plaintiff Apple Inc. (“Apple”), on personal knowledge as to its own acts,
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`and on information and belief as to all others based on its own and its attorneys’ own
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`investigation, alleges Counterclaims against Counterclaim-Defendant Wisconsin Alumni
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`Research Foundation (“WARF”) as follows:
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`NATURE OF THE ACTION
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`On information and belief, according to the allegations set forth in the Complaint,
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`1.
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`WARF is the owner and assignee of all rights, title, and interest in and to U.S. Patent No.
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`5,781,752 (the “’752 patent”).
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`2.
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`WARF has accused Apple of infringing the ’752 patent. Apple denies that any of
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`its products infringe any valid or enforceable claim of the ’752 patent.
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`3.
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`An actual case and controversy exists between the parties concerning the
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`infringement of one or more claims of the ’752 patent, and that controversy is ripe for
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`adjudication by this Court.
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`PARTIES
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`Counterclaim-Plaintiff Apple is a corporation organized under the laws of the
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`4.
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`State of California, and its principal place of business is in Cupertino, California.
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`5.
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`On information and belief, according to the allegations in Paragraph 6 of the
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`Complaint, Counterclaim-Defendant WARF claims to be a non-profit Wisconsin corporation
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`having its principal place of business at 614 Walnut Street, Madison, Wisconsin 53726.
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`JURISDICTION AND VENUE
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`These are Counterclaims for a declaration of non-infringement and invalidity of
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`6.
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`each claim of the ’752 patent. This Court has subject matter jurisdiction over these
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`Counterclaims pursuant to 28 U.S.C. §§ 1331, 1338, 2201, and 2202.
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`7.
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`This Court has personal jurisdiction over WARF because WARF has already
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`submitted to the jurisdiction of this Court by initiating the instant lawsuit.
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`8.
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`Venue for these Counterclaims is legally proper in this District pursuant to 28
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`U.S.C. §§ 1367 and 1391 and because WARF chose to bring its action in this forum.
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`FIRST COUNTERCLAIM
`(Declaration of Non-Infringement of the ’752 Patent)
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`Apple repeats and realleges the allegations of the preceding Answer Paragraphs 1-
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`9.
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`28, Defenses Paragraphs 1-9, and Counterclaims Paragraphs 1-8 as if fully set forth herein.
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`10.
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`Apple has not infringed and is not infringing, either directly, contributorily, or by
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`-8-
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`Case: 3:15-cv-00621-wmc Document #: 14 Filed: 12/18/15 Page 9 of 11
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`inducement, any valid or enforceable claim of the ’752 patent, either literally or under the
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`doctrine of equivalents, willfully or otherwise.
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`11.
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`To resolve the legal and factual questions raised by WARF and to afford relief
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`from the uncertainty and controversy that WARF’s accusations have precipitated, Apple is
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`entitled to declaratory judgment that it has not infringed and is not infringing, directly or
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`indirectly, any valid or enforceable claim of the ’752 patent, either literally or under the doctrine
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`of equivalents, willfully or otherwise.
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`SECOND COUNTERCLAIM
`(Declaration of Invalidity of the ’752 Patent)
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`Apple repeats and realleges the allegations of the preceding Answer Paragraphs 1-
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`12.
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`28, Defenses Paragraphs 1-9, and Counterclaims Paragraphs 1-11 as if fully set forth herein.
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`13.
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`Each claim of the ’752 patent is invalid for failing to meet one or more of the
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`requisite statutory and decisional requirements and/or conditions for patentability under one or
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`more of 35 U.S.C. §§ 102, 103, and/or 112.
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`14.
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`For example, one or more claims of the ’752 patent are rendered invalid under 35
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`U.S.C. §§ 102 (a), (b), (e), (g), and/or 103 by at least the prior art, or combinations thereof, listed
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`in Apple’s 35 U.S.C. § 282 list in WARF I as invalidating prior art, see Wisconsin Alumni
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`Research Foundation v. Apple Inc., Case. No. 14-cv-00062, Dkt. 386 (Apple Inc.’s Identification
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`of Prior Art Pursuant to 35 U.S.C. § 282), which Apple expressly incorporates by reference
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`herein.
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`15.
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`To resolve the legal and factual questions raised by WARF and to afford relief
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`from the uncertainty and controversy from which WARF’s accusations have precipitated, Apple
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`is entitled to a declaratory judgment that the claims of the ’752 patent are invalid.
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`-9-
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`Case: 3:15-cv-00621-wmc Document #: 14 Filed: 12/18/15 Page 10 of 11
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`PRAYER FOR RELIEF
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`WHEREFORE, Apple requests entry of judgment in its favor and against WARF as follows:
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`a.
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`b.
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`c.
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`d.
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`e.
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`f.
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`Dismiss WARF’s Complaint in its entirety, with prejudice;
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`Enter judgment in favor of Apple and against WARF;
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`Enter a judgment and declaration that the ’752 patent and each and every claim
`thereof are not infringed by Apple;
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`Enter a judgment and declaration that the ’752 patent and each and every claim
`thereof are invalid and/or unenforceable;
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`Award to Apple its costs, expenses, and reasonable attorneys’ fees, pursuant to 35
`U.S.C. § 285; and
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`Grant to Apple any such other relief that this Court deems proper.
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`JURY DEMAND
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`Pursuant to Fed. R. Civ. P. 38(b), Apple requests a trial by jury on all issues so
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`16.
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`triable.
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`Dated: December 18, 2015
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`Respectfully submitted,
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`/s/ David C. Marcus
`David C. Marcus (pro hac vice)
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`350 South Grand Avenue, Suite 2100
`Los Angeles, CA 90071
`Tel: (213) 443-5300
`david.marcus@wilmerhale.com
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`William F. Lee (pro hac vice)
`Felicia H. Ellsworth (pro hac vice)
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`Tel: (617) 526-6000
`william.lee@wilmerhale.com
`felicia.ellsworth@wilmerhale.com
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`-10-
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`Case: 3:15-cv-00621-wmc Document #: 14 Filed: 12/18/15 Page 11 of 11
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`
`Catherine Cetrangolo
`CETRA LAW FIRM LLC
`20 North Carroll Street, 2d Floor
`Madison, WI 53703
`Tel: 608-535-9220
`Email: cetrangolo@cetralaw.com
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`Attorneys for Defendant Apple Inc.
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`-11-
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