Case 5:16-cv-00349-NC Document 19 Filed 04/11/16 Page 1 of 32
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`Michael K. Plimack (Bar No. 133869)
`Winslow Taub (Bar No. 233456)
`Udit Sood (Bar No. 308476)
`COVINGTON & BURLING LLP
`One Front Street, 35th Floor
`San Francisco, California 94111-5356
`Telephone: + 1 (415) 591-6000
`Facsimile: + 1 (415) 591-6091
`Email: mplimack@cov.com; wtaub@cov.com; usood@cov.com
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`Robert T. Haslam (Bar No. 71134)
`Michelle L. Morin (Bar No. 284789)
`COVINGTON & BURLING LLP
`333 Twin Dolphin Dr., Suite 700
`Redwood Shores, CA 94065
`Telephone: + 1 (650) 632-4700
`Facsimile: + 1 (650) 632-4800
`Email: rhaslam@cov.com; mmorin@cov.com
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`Attorneys for Defendants
`KUDELSKI SA and OPENTV, INC.
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`
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`UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`YAHOO! INC.
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` Civil Case No.: 5:16-cv-00349
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`DEFENDANTS’ ANSWER AND
`COUNTERCLAIMS
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`Plaintiff,
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`v.
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`KUDELSKI SA, and OPENTV, INC.
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`Defendants.
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`Defendants Kudelski SA (“Kudelski”) and OpenTV, Inc. (“OpenTV”) (collectively,
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`“Defendants”) hereby answer Yahoo! Inc.’s Complaint for Declaratory Judgment and Demand for Jury
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`Trial (“Complaint”) filed by Plaintiff Yahoo! Inc. (“Yahoo”) and counterclaim as follows:
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`Case 5:16-cv-00349-NC Document 19 Filed 04/11/16 Page 2 of 32
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`Unless expressly admitted below, Defendants deny each and every allegation Yahoo has
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`GENERAL DENIAL
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`set forth in its Complaint.
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`NATURE OF THE ACTION
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`1.
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`Defendants admit that this action purports to be one for declaratory judgment brought
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`under the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq. and the Patent Laws of the United States,
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`35 U.S.C. § 1 et seq. Defendants admit that Plaintiff Yahoo seeks a declaration of non-infringement for
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`each of United States Patent Nos. 7,409,437 (the “’437 Patent”), 6,233,736 (the “’736 Patent”),
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`7,055,169 (the “’169 Patent”), 7,028,327 (the “’327 Patent”) 7,752,642 (the “’642 Patent”) and
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`6,758,754 (the “’754 Patent”). Defendants admit that Yahoo also seeks a declaration that United States
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`Patent No. 6,148,081 (the “’081 Patent”) is invalid for lacking patent-eligible subject matter. Defendants
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`deny that Yahoo is entitled to any relief.
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`PARTIES
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`2.
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`Defendants lack knowledge or information sufficient to form a belief about the truth of
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`the allegations contained in Paragraph 2 and on that basis deny them.
`3.
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`Kudelski admits that it is a Swiss company with a principal place of business at Route de
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`Genève 22, 1033 Cheseaux-sur-Lausanne, Switzerland.
`4.
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`OpenTV admits that it is a corporation organized and existing under the laws of Delaware
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`with its principal place of business at 275 Sacramento Street, San Francisco, California 94111. OpenTV
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`admits that it is a wholly-owned subsidiary of a company that is a wholly-owned subsidiary of Kudelski.
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`JURISDICTION AND VENUE
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`5.
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`Defendants admit that this action purports to arise under the patent law of the United
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`States and that this Court has subject matter jurisdiction over this action. Defendants admit that each of
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`the Patents-in-Suit are owned by OpenTV. Defendants deny that Kudelski is a proper party in this
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`litigation and deny that an actual controversy exists between Yahoo and Kudelski, as Kudelski is not the
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`owner of any patent discussed with Yahoo or asserted in Counterclaims herein. Defendants deny that
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`Yahoo is entitled to any relief.
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19 Filed 04/11/16 Page 3 of 32
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`6.
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`Defendants state that the allegations in Paragraph 6 contain legal conclusions that require
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`no answer. To the extent an answer is required, Defendants admit that OpenTV is subject to personal
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`jurisdiction for the purposes of this action only. OpenTV admits that it is the owner of each of the
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`Patents-in-Suit, and that it maintains its principle place of business at 275 Sacramento Street, San
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`Francisco, CA 94111. OpenTV admits it is registered to do business with the California Secretary of
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`State to do business in California. Defendants deny that this Court has personal jurisdiction over
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`Kudelski and deny that Kudelski is a proper party in this litigation, as Kudelski is not the owner of any
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`patent discussed with Yahoo or asserted in Counterclaims herein.
`7.
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`Defendants state that the allegations in Paragraph 7 contain legal conclusions that require
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`no answer. To the extent an answer is required, OpenTV admits that it is subject to personal jurisdiction
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`for the purposes of this action only. Defendants deny that this Court has personal jurisdiction over
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`Kudelski and deny that Kudelski is a proper party in this litigation, as Kudelski is not the owner of any
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`patent discussed with Yahoo or asserted in Counterclaims herein.
`8.
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`Defendants state that the allegations in Paragraph 8 contain legal conclusions that require
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`no answer. To the extent an answer is required, Defendants do not contest that venue is proper in this
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`Court for purposes of this action.
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`THE PATENTS IN SUIT
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`U.S. Patent No. 7,409,437
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`Defendants admit that attached to the Complaint as Exhibit B is what appears to be a
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`A.
`9.
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`copy of U.S. Patent No. 7,409,437, and that the attached copy states on its face that it was issued to
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`Craig Ullman, Jack D. Hidary, and Nova T. Spivack.
`10.
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`Defendants admit that Exhibit B states on its face that the application that issued as the
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`’437 Patent was filed on November 18, 2002, and the United States Patent and Trademark Office issued
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`the ’437 Patent on August 5, 2008.
`11.
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`Defendants admit that Kudelski, on behalf of OpenTV, the owner of the ’437 Patent, has
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`conveyed to Yahoo information regarding infringement of Claim 4 of the ’437 Patent, including
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`infringement by the interactive video advertising functionality in Yahoo’s streaming video delivery
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`services available through yahoo.com and Yahoo’s branded mobile applications available on Android or
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19 Filed 04/11/16 Page 4 of 32
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`iOS devices and Yahoo’s Connected TV platform. Accordingly, OpenTV herein asserts Counterclaims
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`against Yahoo for infringement of the ’437 Patent. Defendants deny that Kudelski is a proper party in
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`this litigation, as it is not the owner of the ’437 Patent or any patent discussed with Yahoo or asserted in
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`Counterclaims herein.
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`B.
`12.
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`U.S. Patent No. 6,233,736
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`Defendants admit that attached to the Complaint as Exhibit C is what appears to be a
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`copy of U.S. Patent No. 6,233,736, and that the attached copy states on its face that it was issued to
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`Thomas R. Wolzien.
`13.
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`Defendants admit that Exhibit C states on its face that the application that issued as the
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`’736 Patent was filed on April 3, 1998, and the United States Patent and Trademark Office issued the
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`’736 Patent on May 15, 2001.
`14.
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`Defendants admit that Kudelski, on behalf of OpenTV, the owner of the ’736 Patent, has
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`conveyed to Yahoo information regarding infringement of Claims 1-3, and 7-12 of the ’736 Patent,
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`including infringement by the interactive video advertising functionality in Yahoo’s streaming video
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`delivery services available through yahoo.com and Yahoo’s branded mobile applications available on
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`Android or iOS devices and Yahoo’s Connected TV platform. Accordingly, OpenTV herein asserts
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`Counterclaims against Yahoo for infringement of the ’736 Patent. Defendants deny that Kudelski is a
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`proper party in this litigation, as it is not the owner of the ’736 Patent or any patent discussed with
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`Yahoo or asserted in Counterclaims herein.
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`C.
`15.
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`U.S. Patent No. 7,055,169
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`Defendants admit that attached to the Complaint as Exhibit D is what appears to be a
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`copy of U.S. Patent No. 7,055,169, and that the attached copy states on its face that it was issued to
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`Alain Delpuch, James Whitledge, Jean-Rene Menand, Emmanuel Barbier, Kevin Hausman, Debra
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`Hensgen, and Dongmin Su.
`16.
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`Defendants admit that Exhibit D states on its face that the application that issued as the
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`’169 Patent was filed on April 21, 2003, and the United States Patent and Trademark Office issued the
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`’169 Patent on May 30, 2006.
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19 Filed 04/11/16 Page 5 of 32
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`17.
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`Defendants admit that Kudelski, on behalf of OpenTV, the owner of the ’169 Patent, has
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`conveyed to Yahoo information regarding infringement of Claims 1–2, and 22–23 of the ’169 Patent,
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`including infringement by the adaptive streaming and resource management functionality in Yahoo’s
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`Connected TV platform. Accordingly, OpenTV herein asserts Counterclaims against Yahoo for
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`infringement of the ’169 Patent. Defendants deny that Kudelski is a proper party in this litigation, as it is
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`not the owner of the ’169 Patent or any patent discussed with Yahoo or asserted in Counterclaims
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`herein.
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`D.
`18.
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`U.S. Patent No. 7,028,327
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`Defendants admit that attached to the Complaint as Exhibit E is what appears to be a
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`copy of U.S. Patent No. 7,028,327, and that the attached copy states on its face that it was issued to
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`Brian P. Dougherty and C. Leo Meier.
`19.
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`Defendants admit that Exhibit E states on its face that the application that issued as the
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`’327 Patent was filed on March 29, 2000, and the United States Patent and Trademark Office issued the
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`’327 Patent on April 11, 2006.
`20.
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`Defendants admit that Kudelski, on behalf of OpenTV, the owner of the ’327 Patent, has
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`conveyed to Yahoo information regarding infringement of Claims 13–15, 17–19, 22, 29–30, and 36 of
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`the ’327 Patent, including infringement by the interactive video advertising functionality in Yahoo’s
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`streaming video delivery services available through yahoo.com and Yahoo’s branded mobile
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`applications available on Android or iOS devices and Yahoo’s Connected TV platform. Accordingly,
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`OpenTV herein asserts Counterclaims against Yahoo for infringement of the ’327 Patent. Defendants
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`deny that Kudelski is a proper party in this litigation, as it is not the owner of the ’327 Patent or any
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`patent discussed with Yahoo or asserted in Counterclaims herein.
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`E.
`21.
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`U.S. Patent No. 7,752,642
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`Defendants admit that attached to the Complaint as Exhibit F is what appears to be a copy
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`of U.S. Patent No. 7,752,642, and that the attached copy states on its face that it was issued to Thomas
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`Lemmons.
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19 Filed 04/11/16 Page 6 of 32
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`22.
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`Defendants admit that Exhibit F states on its face that the application that issued as the
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`’642 Patent was filed on October 22, 2008, and the United States Patent and Trademark Office issued
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`the ’642 Patent on July 6, 2010.
`23.
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`Defendants admit that Kudelski, on behalf of OpenTV, the owner of the ’642 Patent, has
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`conveyed to Yahoo information regarding infringement of Claims 1, and 8–9 of the ’642 Patent,
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`including infringement by the interactive video advertising functionality in Yahoo’s streaming video
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`delivery services available through yahoo.com and Yahoo’s branded mobile applications available on
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`Android or iOS devices and Yahoo’s Connected TV platform. Accordingly, OpenTV herein asserts
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`Counterclaims against Yahoo for infringement of the ’642 Patent. Defendants deny that Kudelski is a
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`proper party in this litigation, as it is not the owner of the ’642 Patent or any patent discussed with
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`Yahoo or asserted in Counterclaims herein.
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`F.
`24.
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`U.S. Patent No. 6,758,754
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`Defendants admit that attached to the Complaint as Exhibit G is what appears to be a
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`copy of U.S. Patent No. 6,758,754, and that the attached copy states on its face that it was issued to Eric
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`Robert Lavanchy, Anthony Frank Zito, and Richard Edward Lamb.
`25.
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`Defendants admit that Exhibit G states on its face that the application that issued as the
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`’754 Patent was filed on August 13, 1999, and the United States Patent and Trademark Office issued the
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`’754 Patent on July 6, 2004.
`26.
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`Defendants admit that Kudelski, on behalf of OpenTV, the owner of the ’754 Patent, has
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`conveyed to Yahoo information regarding infringement of Claims 1–2, 4, 6–8, 11–15, 18–19, 22–24, 27,
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`29, and 31 of the ’754 Patent, including infringement by the fantasy gaming functionality in Yahoo’s
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`fantasy sports gaming services available through yahoo.com and Yahoo branded mobile applications
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`available on Android or iOS devices and Yahoo’s Connected TV platform. Accordingly, OpenTV herein
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`asserts Counterclaims against Yahoo for infringement of the ’754 Patent. Defendants deny that Kudelski
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`is a proper party in this litigation, as it is not the owner of the ’754 Patent or any patent discussed with
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`Yahoo or asserted in Counterclaims herein.
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19 Filed 04/11/16 Page 7 of 32
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`G.
`27.
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`U.S. Patent No. 6,148,081
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`Defendants admit that attached to the Complaint as Exhibit H is what appears to be a
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`copy of U.S. Patent No. 6,148,081, and that the attached copy states on its face that it was issued to
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`Steven Szymanski, Jean Rene Menand, Vincent Dureau, and Suresh N. Chari.
`28.
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`Defendants admit that Exhibit H states on its face that the application that issued as the
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`’081 Patent was filed on November 20, 1998, and the United States Patent and Trademark Office issued
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`the ’081 Patent on November 14, 2000.
`29.
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`Defendants admit that Kudelski, on behalf of OpenTV, the owner of the ’081 Patent, has
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`conveyed to Yahoo information regarding infringement of Claims 1 and 6 of the ’081 Patent, including
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`infringement by the security model in Yahoo Connected TV platform. Accordingly, OpenTV herein
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`asserts Counterclaims against Yahoo for infringement of the ’081 Patent. Defendants deny that Kudelski
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`is a proper party in this litigation, as it is not the owner of the ’081 Patent or any patent discussed with
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`Yahoo or asserted in Counterclaims herein.
`a.
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`In OpenTV, Inc., et al., v. Apple, Inc., N.D. Cal. Case No. 3:15-cv-02008, the district
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`court declared Claims 1-3, 23, and 24 of the ’081 Patent invalid under 35 U.S.C. § 101.
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`In the interest of efficiency, the Court should stay adjudication of the infringement and
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`validity disputes between OpenTV and Yahoo with respect to the claims of the ’081
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`Patent pending resolution of the appeal to be filed in the Apple case.
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`COUNT ONE
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’437 PATENT
`30.
`Defendants incorporate by reference their responses to paragraphs 1-29 of the complaint
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`as if fully set forth herein.
`31.
`32.
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`Defendants admit the allegations of paragraph 31.
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`The allegation in paragraph 32 that “an actual and justiciable controversy exists between
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`Yahoo and Defendants regarding infringement of Claim 4 of the ’437 Patent by the interactive video
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`advertising functionality employed by Yahoo’s streaming video delivery services available through
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`yahoo.com and Yahoo’s branded mobile applications available on Android or iOS devices and Yahoo’s
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`Connected TV platform” is a legal conclusion that does not require a response. To the extent that a
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19 Filed 04/11/16 Page 8 of 32
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`response is required, Defendants deny that there is an actual and justiciable controversy between Yahoo
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`and Kudelski, admit that there is an actual and justiciable controversy between Yahoo and OpenTV, and
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`deny that Yahoo is entitled to any relief.
`33.
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`The allegation in paragraph 33 that “the manufacture, use, offer for sale, sale, and/or
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`importation of the interactive video advertising functionality employed by Yahoo’s streaming video
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`delivery services available through yahoo.com and Yahoo’s branded mobile applications available on
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`Android or iOS devices and Yahoo’s Connected TV platform has not infringed and does not infringe,
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`directly or indirectly, Claim 4 of the ’437 Patent, either literally or under the doctrine of equivalents” is a
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`legal conclusion that does not require a response. To the extent that a response is required, Defendants
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`deny that Yahoo does not infringe Claim 4 of the ’437 Patent.
`34.
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`Defendants admit that the preamble of Claim 4 of the ’437 Patent recites “[a] system for
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`receiving a programming signal containing an embedded address.” The remaining allegations of
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`paragraph 34 express a legal conclusion to which no response is required. To the extent that a response
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`is required, Defendants deny that Yahoo does not infringe Claim 4 of the ’437 Patent. Defendants assert
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`and counterclaim, as set forth herein, that Yahoo meets the “embedded address” limitations at least
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`because Yahoo’s video programming signals contain URLs or links to online content, that would qualify
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`as embedded addresses, as the specification of the ’437 Patent indicates that “the video with URLs” can
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`be sent “over the same transmission line, the URLs can be sent down independently of the video
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`program on a data channel,” ’437 Patent, 5:12-14, and because nothing in the claim, which is directed at
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`“[a] system for receiving,” prohibits “an address [that] is decoupled from the programming signal and
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`sent to the end-user from a different server than the programming signal”, as alleged by Yahoo in
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`paragraph 34, lines 9-11.
`35.
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`The allegation in paragraph 35 that Yahoo is entitled to declaratory judgment is a legal
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`conclusion to which no response is required. To the extent that a response is required, Defendants deny
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`that Yahoo does not infringe and has not infringed Claim 4 of the ’437 Patent and deny that Yahoo is
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`entitled to any relief.
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19 Filed 04/11/16 Page 9 of 32
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`COUNT TWO
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’736 PATENT
`36.
`Defendants incorporate by reference their responses to paragraphs 1-35 of the complaint
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`as if fully set forth herein.
`37.
`38.
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`Defendants admit the allegations of paragraph 37.
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`The allegation in paragraph 38 that “an actual and justiciable controversy exists between
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`Yahoo and Defendants regarding infringement of Claims 1–3 and 7–12 of the ’736 Patent by the
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`interactive video advertising functionality employed by Yahoo’s streaming video delivery services
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`available through yahoo.com and Yahoo’s branded mobile applications available on Android or iOS
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`devices and Yahoo’s Connected TV platform” is a legal conclusion that does not require a response. To
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`the extent that a response is required, Defendants deny that there is an actual and justiciable controversy
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`between Yahoo and Kudelski, admit that there is an actual and justiciable controversy between Yahoo
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`and OpenTV, and deny that Yahoo is entitled to any relief.
`39.
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`The allegation in paragraph 39 that “the manufacture, use, offer for sale, sale, and/or
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`importation of the interactive video advertising functionality employed by Yahoo’s streaming video
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`delivery services available through yahoo.com and Yahoo’s branded mobile applications available on
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`Android or iOS devices and Yahoo’s Connected TV platform has not infringed and does not infringe,
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`directly or indirectly, Claims 1–3 and 7–12 of the ’736 Patent, either literally or under the doctrine of
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`equivalents” is a legal conclusion that does not require a response. To the extent that a response is
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`required, Defendants deny that Yahoo does not infringe Claims 1–3 and 7–12 of the ’736 Patent.
`40.
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`Defendants admit that Claim 1 of the ’736 Patent recites “an address associated with an
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`online information source provided with a video program.” Defendants admit that Claim 1 of the ’736
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`Patent recites “an address has been provided with said video program.” The remaining allegations of
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`Paragraph 40 express legal conclusions to which no response is required. To the extent that a response is
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`required, Defendants deny that Yahoo does not infringe Claims 1–3 of the ’736 Patent. Defendants
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`assert and counterclaim, as set forth herein, that Yahoo meets the “address . . . provided” limitations at
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`least because Yahoo provides video programming signals with addresses. The specification indicates
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`that the “address signal” may be provided generally “in conjunction with” a video program, as opposed
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`9
`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`to necessarily in the same signal as a video program. ’736 Patent, 6:3-4. Additionally, contrary to
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`Yahoo’s allegation, nothing in the claims prohibits “links [that] are decoupled from video programs and
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`sent to the end-user from a separate server.”
`41.
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`Defendants admit that Claims 7–8 of the ’736 Patent recite “a link provided in said video
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`program.” The remaining allegations of paragraph 41 express legal conclusions to which no response is
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`required. To the extent that a response is required, Defendants deny that Yahoo does not infringe Claims
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`7–12 of the ’736 Patent. Defendants assert and counterclaim, as set forth herein, that Yahoo meets the
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`“link provided in” limitations at least because Yahoo provides links in its video programming and
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`electronic signals. The specification indicates that the “address signal,” i.e., the “link,” may be provided
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`generally “in conjunction with” a video program, as opposed to necessarily in the same signal as a video
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`program. ’736 Patent at 6:3-4. Additionally, nothing in the claims prohibits “links [that] are decoupled
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`from video programs and sent to the end-user from a separate server” as alleged by Yahoo in paragraph
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`41, lines 12-13.
`42.
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`The allegation in paragraph 42 that Yahoo is entitled to declaratory judgment is a legal
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`conclusion to which no response is required. To the extent that a response is required, Defendants deny
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`that Yahoo does not infringe and has not infringed Claims 1-3 and 7-12 of the ’736 Patent.
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`COUNT THREE
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’169 PATENT
`43.
`Defendants incorporate by reference their responses to paragraphs 1-29 of the complaint
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`as if fully set forth herein.
`44.
`45.
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`Defendants admit the allegations of Paragraph 44.
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`The allegation in paragraph 45 that “an actual and justiciable controversy exists between
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`Yahoo and Defendants regarding infringement of Claims 1–2 and 22–23 of the ’169 Patent by the
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`adaptive streaming and resource management functionality employed by Yahoo’s Connected TV
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`platform” is a legal conclusion that does not require a response. To the extent that a response is required,
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`Defendants deny that there is an actual and justiciable controversy between Yahoo and Kudelski, admit
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`that there is an actual and justiciable controversy between Yahoo and OpenTV, and deny that Yahoo is
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`entitled to any relief.
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`10
`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`46.
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`The allegation in Paragraph 46 that “[t]he manufacture, use, offer for sale, sale, and/or
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`importation of the adaptive streaming and resource management functionality employed by Yahoo’s
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`Connected TV platform has not infringed and does not infringe, directly or indirectly, Claims 1–2 and
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`22–23 of the ’169 Patent, either literally or under the doctrine of equivalents” is a legal conclusion that
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`does not require a response. To the extent that a response is required, Defendants deny that Yahoo does
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`not infringe Claims 1–2 and 22–23 of the ’169 Patent and incorporate by reference OpenTV’s
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`Counterclaims of infringement as set forth herein.
`47.
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`In response to Paragraph 47, Defendants admit that claims in the ’169 Patent recite
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`“prohibit[ing] initiation/[the presenting] of said presentation until said subset of resources are acquired,
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`in response to determining the one or more directives include said prerequisite directive.” The remaining
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`allegations of Paragraph 47 express a legal conclusion to which no response is required. To the extent
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`that a response is required, Defendants deny that Yahoo’s adaptive streaming and resource management
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`functionality does not infringe Claims 1-2 and 22-23 of the ’169 Patent. Defendants assert and
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`counterclaim, as set forth herein, that Yahoo’s adaptive streaming and resource management
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`functionality meets these limitations at least because Yahoo’s KONtx Media Player, in response to a
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`developer prescribing a prerequisite connection bandwidth for playback of certain media, determines
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`whether a user meets that prerequisite by, for example, selecting “the fastest one supported,” as shown
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`in “Media Player API” at
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`https://developer.yahoo.com/connectedtv/kontxapiref/YCTV_KONTX_Media_Player_API.html:
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`Therefore, by permitting initiation of only “supported” streams in response to a developer including a
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`connection bandwidth directive, Yahoo’s KONtx Media Player “prohibits” initiation of (unsupported)
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`presentations “in response to determining” that the directives include a prerequisite directive (e.g.
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`prescribed connection bandwidth). Yahoo, through its direction and control of the KONtx Media Player
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`API, directly and/or indirectly infringes Claims 1-2 and 22-23 of the ’169 Patent because Yahoo
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`11
`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`performs or causes the system to perform all the elements of these claims, including prohibiting
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`initiation of a presentation in response to determining that the directives include a prerequisite directive.
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`Defendants deny that Claims 1-2 and 22-23 of the ’169 Patent require prohibiting the initiation of a
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`presentation “until specific amounts of bandwidth and CPU capacity are obtained.” To the contrary, the
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`prerequisite directive may require acquisition of any “subset of resources” including (as in Yahoo’s
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`case) those resources associated with the connection bandwidth.
`48.
`
`The allegation in Paragraph 48 that Yahoo is entitled to judgment declaring that the
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`manufacture, use, offer for sale, sale, and/or importation of the adaptive streaming and resource
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`management functionality employed by Yahoo’s Connected TV platform does not and will not infringe
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`Claims 1–2 and 22–23 the ’169 Patent is a legal conclusion to which no response is required. To the
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`extent that a response is required, Defendants deny that Yahoo does not infringe Claims 1–2 and 22–23
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`the ’169 Patent.
`
`COUNT FOUR
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’327 PATENT
`49.
`Defendants incorporate by reference their responses to paragraphs 1-29 of the complaint
`
`as if fully set forth herein.
`50.
`51.
`
`Defendants admit the allegations of Paragraph 44.
`
`The allegation in Paragraph 51 that “an actual and justiciable controversy exists between
`
`Yahoo and Defendants regarding infringement of Claims 13–15, 17–19, 22, 29–30, and 36 of the ’327
`
`Patent by the interactive video advertising functionality employed by Yahoo’s streaming video delivery
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`services available through yahoo.com and Yahoo’s branded mobile applications available on Android or
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`iOS devices and Yahoo’s Connected TV platform” is a legal conclusion that does not require a response.
`
`To the extent that a response is required, Defendants deny that there is an actual and justiciable
`
`controversy between Yahoo and Kudelski, admit that there is an actual and justiciable controversy
`
`between Yahoo and OpenTV, and deny that Yahoo is entitled to any relief.
`52.
`
`The allegation in Paragraph 52 that “[t]he manufacture, use, offer for sale, sale, and/or
`
`importation of the interactive video advertising functionality employed by Yahoo’s streaming video
`
`delivery services available through yahoo.com and Yahoo’s branded mobile applications available on
`
`Android or iOS devices and Yahoo’s Connected TV platform has not infringed and does not infringe,
`
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`12
`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`directly or indirectly, Claims 13–15, 17–19, 22, 29–30, and 36 of the ’327 Patent, either literally or
`
`under the doctrine of equivalents” is a legal conclusion that does not require a response. To the extent
`
`that a response is required, Defendants deny that Yahoo does not infringe Claims 13–15, 17–19, 22, 29–
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`30, and 36 of the ’327 Patent and incorporate by reference OpenTV’s Counterclaims of infringement as
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`set forth herein.
`53.
`
`In response to Paragraph 53, Defendants admit that Claims 13-15, 17-19, 22, 29-30, and
`
`36 of the ’327 Patent recite “determining, using an electronic program guide, an interactive application
`
`associated with a broadcast program.” The remaining allegations of Paragraph 53 express a legal
`
`conclusion to which no response is required. To the extent that a response is required, Defendants deny
`
`that Yahoo’s interactive video advertising functionality does not infringe Claims 13-15, 17-19, 22, 29-30
`
`and 36 of the ’327 Patent. Defendants assert and counterclaim, as set forth herein, that Yahoo’s
`
`interactive video advertising functionality meets this limitation at least because, contrary to Yahoo’s
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`position, Yahoo’s interactive video advertising functionality “is associated with” broadcast programs
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`that include, for instance, “television shows, commercials, public service announcements, pay-per-view
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`events, and the like.” ’327 Patent at 7:25-30; see, e.g., https://www.yahoo.com/tv/tagged/originals (the
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`interactive video advertising functionality in Yahoo TV (as shown in the screenshot below) is associated
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`with television shows like Community).
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`13
`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`54.
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`Defendants also deny that an internet broadcast platform is beyond the scope of the ’327
`
`Patent. To the contrary, the ’327 Patent defines “broadcasting” simply as “transmitting a program to one
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`or more viewers.” ’327 Patent at 7:14-27. The specification further cites “internet multicast signal” as an
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`example of a broadcast signal. Id. Further, Yahoo allows users to choose broadcast programs from
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`electronic program guides (EPG), and based on the user’s choice of program, an associated interactive
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`application is launched.