Case 1:20-cv-00007-RGA Document 33 Filed 09/21/20 Page 1 of 22 PageID #: 842
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`MICROSOFT CORPORATION,
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`Plaintiff,
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`v.
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`SYNKLOUD TECHNOLOGIES, INC.,
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`Defendant.
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`C.A. No: 1:20-cv-00007-RGA
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`SYNKLOUD TECHNOLOGIES, LLC’S ANSWER AND COUNTERCLAIMS TO
`MICROSOFT CORPORATION’S COMPLAINT FOR DECLARATORY JUDGMENT
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`Defendant SynKloud Technologies, LLC (“SynKloud”) hereby files its Answer to Plaintiff
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`Microsoft Corporation’s (“Microsoft”) Complaint for Declaratory Judgment and asserts
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`Counterclaims against Microsoft, as follows:
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`The Complaint (D.I. 1) has been partially dismissed. (D.I. 31-32, Sept. 8, 2020).
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`SynKloud’s response herein is applicable only with respect to the claims that remain in this action.
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`SynKloud has no response for the claims and allegations that have already been dismissed in this
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`action.
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`I. ANSWER TO COMPLAINT FOR DECLARATORY JUDGMENT
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`Response to “NATURE OF THE ACTION”
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`This Court has dismissed any claims asserted from United States Patent Nos. 8,606,880
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`(“the ’6880 Patent”), 8,856,195 (“the ’195 Patent”), 8,868,690 (“the ’690 Patent”), 9,219,780 (“the
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`’780 Patent”), 9,239,686 (“the ’686 Patent”), 7,792,923 (“the ’923 Patent”), 7,849,153 (“the ’153
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`Patent”) and 7,457,880 (“the ’7880 Patent”) (collectively, “dismissed Patents-in-Suit”) against
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`Microsoft’s products and services. (D.I. 31-32.) The patents that remain in this action are the
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`United States Patent Nos. 9,098,526 (“the ’526 Patent”), 10,015,254 (“the ’254 Patent”), and
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`7,870,225 (“the ’225 Patent”), (collectively, “the Patents-in-Suit”) against Microsoft’s OneDrive,
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`cloud storage technology. SynKloud’s response herein is applicable only with respect to the claims
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`that remain in this action.
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`1.
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`SynKloud admits that Plaintiff purports to bring an action for declaratory judgment
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`as described in Paragraph 1.
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`2.
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`3.
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`SynKloud denies the allegations in Paragraph 2.
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`SynKloud admits that SynKloud has alleged in this district that HP Inc. infringes
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`the ’225, ’526 and ’254 Patents in accused HP products. SynKloud Techs., LLC v. HP Inc., 1:19-
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`cv-1360-RGA, First Amended Complaint, D.I. 15 (D. Del. Nov. 12, 2019.). SynKloud denies the
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`remaining allegations in Paragraph 3.
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`4.
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`SynKloud denies the allegations in Paragraph 4.
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`Response to “PARTIES”
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`5.
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`On information and belief, SynKloud admits that Plaintiff Microsoft is a
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`corporation with its principal place of business located at One Microsoft Way, Redmond,
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`Washington 98052.
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`6.
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`SynKloud admits it is a Delaware limited liability company with its principal place
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`of business at 124 Broadkill Road, Suite 415, Milton, DE 19968.
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`Response to “JURISDICTION AND VENUE”
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`7.
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`SynKloud admits that Plaintiff alleges that this action arises under the United States
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`patent laws and includes a request for declaratory relief under 28 U.S.C. §§ 2201 and 2202.
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`SynKloud denies that Plaintiff has demonstrated the presence of jurisdiction under the Act.
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`8.
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`SynKloud denies that this Court has subject matter jurisdiction under 28 U.S.C. §§
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`1331, 1338, and 2201, and 35 U.S.C. § 1, et seq.
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`9.
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`SynKloud admits that this Court has personal jurisdiction over it because SynKloud
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`is a limited liability company under the laws of the State of Delaware. SynKloud denies the
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`remaining allegations of Paragraph 9.
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`10.
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`SynKloud admits that venue is proper.
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`Response to “EXISTENCE OF AN ACTUAL CONTROVERY
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`SynKloud incorporates herein by reference its response to Paragraphs 1 through 10.
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`SynKloud denies the allegations of Paragraph 12.
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`SynKloud admits that it is the current owner of the ’526 Patent, entitled “System
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`11.
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`12.
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`13.
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`and Method for Wireless Device Access to External Storage.” SynKloud admits that the ’526
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`Patent has been asserted by SynKloud against HP. SynKloud admits that a true copy of the ’526
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`Patent appears to be attached to the Complaint as Exhibit A.
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`14.
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`SynKloud admits that it is the current owner of the ’254 Patent, entitled “System
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`and Method for Wireless Device Access to External Storage.” SynKloud admits that the ’254
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`Patent is in the same family as the ’526 Patent and has been asserted by SynKloud against HP.
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`SynKloud admits that a true copy of the ’254 Patent appears to be attached to the Complaint as
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`Exhibit B.
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`15.
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`The allegation in paragraph 15 has been dismissed and as such no response is
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`required.
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`16.
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`The allegation in paragraph 16 has been dismissed and as such no response is
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`required.
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`17.
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`The allegation in paragraph 17 has been dismissed and as such no response is
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`required.
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`18.
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`The allegation in paragraph 18 has been dismissed and as such no response is
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`required.
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`19.
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`The allegation in paragraph 19 has been dismissed and as such no response is
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`required.
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`20.
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`SynKloud admits that it is the current owner of the ’225 Patent, entitled “Disk
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`System Adapted to be Directly Attached to network.” SynKloud admits that a true copy of the
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`’225 Patent appears to be attached to the Complaint as Exhibit H.
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`21.
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`The allegation in paragraph 21 has been dismissed and as such no response is
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`required.
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`22.
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`The allegation in paragraph 22 has been dismissed and as such no response is
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`required.
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`23.
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`The allegation in paragraph 23 has been dismissed and as such no response is
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`required.
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`24.
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`SynKloud has insufficient information to confirm or deny the allegations in
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`paragraph 24 and on that basis denies them.
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`25.
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`SynKloud admits that on July 22, 2019, SynKloud filed an action against HP in the
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`District of Delaware alleging infringement of the ’526 and ’254 Patents. See SynKloud Techs.,
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`LLC v. HP Inc., No. 1:19-cv-01360-RGA (D. Del.). SynKloud admits that on November 12, 2019,
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`SynKloud amended its Complaint to also include allegations regarding the ’225 Patent as well as
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`a fourth patent not asserted in this action. SynKloud admits that SynKloud’s Amended Complaint
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`further identified the ’923 Patent as issued patent of the parent application to the ’225, identified
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`the ’6880 Patent as issued patent of the parent application to the ’526 and ’254 Patents, identified
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`the ’690 Patent as issued patent of the parent application to the ’526 Patent and identified the ’686
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`Patent as issued patent of the parent application of the ’254 Patent respectively.
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`26.
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`SynKloud admits that in its Amended Complaint against HP, SynKloud included
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`claim charts to support its infringement theories. SynKloud admits that these claim charts for the
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`’225, ’526 and ’254 Patents include citations to Microsoft OneDrive. SynKloud admits that copies
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`of these claim charts appear to be attached as Exhibits L, M, and N to the Complaint in this action.
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`27.
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`The allegation in paragraph 23 has been dismissed and as such no response is
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`required.
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`28.
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`The allegation in paragraph 23 has been dismissed and as such no response is
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`required.
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`29.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. SynKloud denies that Microsoft OneDrive does not indirectly infringe the claims of the
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`Patents-in-Suit. SynKloud denies the remaining allegations in paragraph 29.
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`30.
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`SynKloud denies the allegations in paragraph 30.
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`Response to “COUNT I”
`NONINFRINGEMENT OF U.S. PATENT NO. 9,098,526
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`31.
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`SynKloud incorporates herein by reference its responses to Paragraphs 1 through
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`30.
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`32.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. SynKloud denies that Microsoft does not indirectly infringe any claim of the ’526 Patent.
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`SynKloud denies that Microsoft OneDrive does not contain a “storage space of a predefined
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`capacity assigned exclusively to a user of the wireless device by a storage server.” which is
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`required by all the claims of the ’526 Patent.
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`33.
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`34.
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`SynKloud denies the allegations in paragraph 33.
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`SynKloud denies the allegations in paragraph 34.
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`Response to “COUNT II”
`NONINFRINGEMENT OF U.S. PATENT NO. 10,015,254
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`35.
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`SynKloud incorporates herein by reference its responses to Paragraphs 1 through
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`34.
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`36.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. SynKloud denies that Microsoft does not indirectly infringe any claim of the ’254 Patent.
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`SynKloud denies that Microsoft OneDrive does not “carry out a requested operation for accessing
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`[a] remote storage space in response to a user, through the remote storage space displayed on [a]
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`wireless device, performing [an] operation,” which is required by all the claims of the ’254 Patent.
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`37.
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`38.
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`SynKloud denies the allegations in paragraph 37.
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`SynKloud denies the allegations in paragraph 38.
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`Response to “COUNT III”
`NONINFRINGEMENT OF U.S. PATENT NO. 8,606,880
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`39.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count III has been dismissed by the Court in its entirety.
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`40.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count III has been dismissed by the Court in its entirety.
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`41.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count III has been dismissed by the Court in its entirety.
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`42.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count III has been dismissed by the Court in its entirety.
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`Response to “COUNT IV”
`NONINFRINGEMENT OF U.S. PATENT NO. 8,856,195
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`43.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count IV has been dismissed by the Court in its entirety.
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`44.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count IV has been dismissed by the Court in its entirety.
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`45.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count IV has been dismissed by the Court in its entirety.
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`Case 1:20-cv-00007-RGA Document 33 Filed 09/21/20 Page 7 of 22 PageID #: 848
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`46.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count IV has been dismissed by the Court in its entirety.
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`Response to “COUNT V”
`NONINFRINGEMENT OF U.S. PATENT NO. 8,868,690
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`47.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count V has been dismissed by the Court in its entirety.
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`48.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count V has been dismissed by the Court in its entirety.
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`49.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count V has been dismissed by the Court in its entirety.
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`50.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count V has been dismissed by the Court in its entirety.
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`Response to “COUNT VI”
`NONINFRINGEMENT OF U.S. PATENT NO. 9,219,780
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`51.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count VI has been dismissed by the Court in its entirety.
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`52.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count VI has been dismissed by the Court in its entirety.
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`53.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count VI has been dismissed by the Court in its entirety.
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`54.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count VI has been dismissed by the Court in its entirety.
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`Response to “COUNT VII”
`NONINFRINGEMENT OF U.S. PATENT NO. 9,239,686
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`55.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count VII has been dismissed by the Court in its entirety.
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`56.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count VII has been dismissed by the Court in its entirety.
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`57.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count VII has been dismissed by the Court in its entirety.
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`58.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count VII has been dismissed by the Court in its entirety.
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`Response to “COUNT VIII”
`NONINFRINGEMENT OF U.S. PATENT NO. 7,870,225
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`59.
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`60.
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`SynKloud incorporates herein by reference its response to Paragraphs 1 through 58.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. SynKloud denies that Microsoft does not indirectly infringe any claim of the ’225 Patent.
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`SynKloud denies that Microsoft OneDrive does not contain a “virtual host bus adapter controlling
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`[a network-attached device] in a way indistinguishable from the way as a physical host bus adapter
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`device[s] so that the host recognizes the [network-attached device] as if it is a local device
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`connected directly to the system bus of the host,” which is required by all the claims of the ’225
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`Patent.
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`61.
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`62.
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`SynKloud denies the allegations of paragraph 61.
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`SynKloud denies the allegations of paragraph 62.
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`Response to “COUNT IX”
`NONINFRINGEMENT OF U.S. PATENT NO. 7,792,923
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`63.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count IX has been dismissed by the Court in its entirety.
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`64.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count IX has been dismissed by the Court in its entirety.
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`65.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count IX has been dismissed by the Court in its entirety.
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`66.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count IX has been dismissed by the Court in its entirety.
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`Response to “COUNT X”
`NONINFRINGEMENT OF U.S. PATENT NO. 7,849,153
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`67.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count X has been dismissed by the Court in its entirety.
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`68.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count X has been dismissed by the Court in its entirety.
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`69.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count X has been dismissed by the Court in its entirety.
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`70.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count X has been dismissed by the Court in its entirety.
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`Response to “COUNT XI”
`NONINFRINGEMENT OF U.S. PATENT NO. 7,457,880
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`71.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count XI has been dismissed by the Court in its entirety.
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`72.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count XI has been dismissed by the Court in its entirety.
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`73.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count XI has been dismissed by the Court in its entirety.
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`74.
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`SynKloud has no response for the allegations that have been dismissed in this
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`action. Count XI has been dismissed by the Court in its entirety.
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`Response to “PRAYER FOR RELIEF”
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`SynKloud denies all remaining allegations not specifically admitted herein and denies that
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`Microsoft is entitled to any of the relief it has requested or to any other relief at all.
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`SYNKLOUD’S AFFIRMATIVE DEFENSES
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`Without assuming any burden other than that imposed by operation of law or admitting
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`that it bears the burden of proof with respect to any of the following, SynKloud asserts the
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`following defenses and alleges as follows:
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`FIRST AFFIRMATIVE DEFENSE (FAILURE TO STATE A CLAIM)
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`75.
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`The Complaint for Declaratory Judgment, and each of the alleged claims not
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`dismissed by the Court, fails to state claim upon which relief can be granted.
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`SECOND AFFIRMATIVE DEFENSE (INFRINGEMENT)
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`76. Microsoft has contributed to the infringement of one or more valid and enforceable
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`claims of the ’526 and ’254 Patents. Microsoft has contributed to the infringement of, and/or has
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`induced the infringement of one or more valid and enforceable claims of the ’225 Patent.
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`RESERVATION OF ALL AFFIRMATIVE DEFENSE
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`77.
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`SynKloud reserves the right to offer any other and additional defense that is now
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`or may become available or appear during, or as a result of, discovery proceedings in this action.
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`WHEREFORE, SynKloud seeks judgment in its favor against Plaintiff as follows: Entry
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`of an order dismissing the Declaratory Judgment Complaint with prejudice; an award of reasonable
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`attorneys’ fees and costs; and such further relief as the Court deems just and appropriate.
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`II.
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`SYNKLOUD’S COUNTERCLAIMS
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`Counterclaimant SynKloud for its Counterclaims against Counterclaim Defendant
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`Microsoft alleges as follows:
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`NATURE OF THE ACTION
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`Case 1:20-cv-00007-RGA Document 33 Filed 09/21/20 Page 11 of 22 PageID #: 852
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`1.
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`This is a patent infringement action arising under the Patent Laws of the United
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`States, 35 U.S.C. §§ 1, et seq. including without limitation, 35 U.S.C. §§ 271, 281.
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`2.
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`This action asserts direct and indirect infringement of the United States Patent Nos.
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`9,098,526 (“the ’526 Patent”), 10,015,254 (“the ’254 Patent”), and 7,870,225 (“the ’225 Patent”),
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`(collectively, “the Patents-in-Suit”) against Microsoft.
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`PARTIES
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`3.
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`SynKloud is a Delaware Limited Liability Company with its principal place of
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`business at 124 Broadkill Road, Suite 415, Milton, DE 19968.
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`4.
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`SynKloud is informed and believes, and on that basis alleges, that Counterclaim
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`Defendant Microsoft is a Washington state corporation with its principal place of business located
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`at One Microsoft Way, Redmond, Washington 98052.
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`JURISDICTION AND VENUE
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`5.
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`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
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`1338(a).
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`6.
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`This Court has personal jurisdiction over Microsoft because, among other reasons,
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`Microsoft instituted this action against SynKloud on the Patents-in-Suit at issue here. By
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`instituting this action, Microsoft has submitted itself to personal jurisdiction in this District.
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`Microsoft has harmed and continues to harm SynKloud in this District by, among other things,
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`using, selling, offering for sale, and importing infringing products and services in this District.
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`7.
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`Venue is proper in this federal district pursuant to 28 U.S.C. §§ 1391(b)-(c) and
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`1400(b) in that Microsoft has done business in this district, committed acts of infringement in this
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`district, and continues to commit acts of infringement in this district, entitling SynKloud to relief.
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`PATENT OWNERSHIP AND EXCLUSIVE RIGHT TO SUE
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`8.
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`SynKloud is the owner of the Patents-in-Suit asserted in this action and has the
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`exclusive right to sue and collect remedies for past, present, and future infringement of the
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`Patents-in-Suit.
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`ACCUSED PRODUCTS AND/OR SERVICES
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`9.
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`Microsoft manufactures, provides, uses, sells, offers for sale, imports, and/or
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`distributes infringing services for storage, including, for example, OneDrive using infringing
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`Microsoft servers that operate with client-side software on various client-side devices. Microsoft
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`also manufactures, provides, uses, sells, offers for sale, imports, and/or distributes infringing
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`wireless devices including, for example, laptops, tablets and smartphones branded Surface and
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`Lumia. Both storage services and wireless client devices are herein collectively, “Accused
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`Products and/or Services”.
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`ACTUAL NOTICE AND KNOWLEDGE OF THE PATENTS-IN-SUIT
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`10. Microsoft had actual notice and/or knowledge of the ’526 Patent and its family
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`since at least October 11, 2015 when the predecessor owner of the Patents-in-Suit sent a letter to
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`Microsoft listing an opportunity to license or purchase the Patents-in-Suit, copy of the original
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`attached as Exhibit 1-C that explicitly listed the ’526 Patent.
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`11.
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`On information and belief, pre-suit, Microsoft was monitoring the patent portfolio
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`and activity of the predecessor owner of the Patents-in-Suit and had actual knowledge of the
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`Patents-in-Suit.
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`12.
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`On information and belief, pre-suit, Microsoft was monitoring the patent portfolio
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`and activity of SynKloud and had actual knowledge of the Patents-in-Suit. The list of patents
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`owned by SynKloud is publicly available at https://www.synkloud.com/portfolio.
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`13. Microsoft had actual notice and/or knowledge of the Patents-in-Suit since at least
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`July 22, 2019 when SynKloud filed its litigation against HP, Inc.
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`14. Microsoft has had knowledge of the Patents-in-Suit and its infringement since at
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`Case 1:20-cv-00007-RGA Document 33 Filed 09/21/20 Page 13 of 22 PageID #: 854
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`least the filing of the Original Complaint in this action, or shortly thereafter, including by way of
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`this lawsuit.
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`FIRST COUNTERCLAIM (INFRINGEMENT OF U.S. PATENT NO. 9,098,526)
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`15.
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`SynKloud incorporates and re-alleges every allegation set forth above, as though
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`fully set forth herein.
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`16.
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`On August 4, 2015, the ’526 Patent, entitled “Method and System for Wireless
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`Device Access to External Storage,” was duly and legally issued by the United States Patent and
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`Trademark Office. A true and correct copy of the ’526 Patent is attached as Exhibit 1-A.
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`17. Microsoft has directly infringed, contributed to the infringement of, and/or have
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`induced the infringement of one or more claims of the ’526 Patent in violation of 35 U.S.C. § 271
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`by, at least, making, using, supplying, distributing, importing, exporting, selling and/or offering
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`for sale in the United States or by intending that others make, use, supply, distribute, import,
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`export, sell, and/or offer for sale in the United States wireless devices that practice and/or are
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`covered by one or more claims of the ’526 Patent.
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`18.
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`As just one non-limiting example, set forth in the claim chart, attached as Exhibit
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`1-B, is a description of exemplary claim 1 of the ’526 Patent. SynKloud reserves the right to
`
`modify this description, including on the basis of information it obtains during discovery.
`
`19. Microsoft has committed acts of infringement without license or authorization.
`
`Microsoft knew or should have known that its actions would cause direct and indirect infringement
`
`of the ’526 Patent. On information and belief, Microsoft acted with objective recklessness by
`
`proceeding despite an objective high likelihood that its actions constituted infringement of a valid
`
`patent.
`
`20. Microsoft is also liable under 35 U.S.C. § 271(b) for actively inducing infringement
`
`and continuing to actively induce infringement. Microsoft actively induces and continues to
`
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`Case 1:20-cv-00007-RGA Document 33 Filed 09/21/20 Page 14 of 22 PageID #: 855
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`induce its customers, distributors, end-users, vendors including customer-support and/or
`
`manufacturers to infringe the ’526 Patent. On information and belief, Microsoft possessed a
`
`specific intent to induce infringement, and in fact did induce infringement, by engaging in
`
`affirmative acts such as by selling and causing the Accused Products and/or Services to be
`
`manufactured, by providing user guides, installation or instruction manuals, and other training
`
`materials, by advertising and solicitation and otherwise providing sales-related materials, and by
`
`instructing and/or demonstrating to customers, distributers, end-users, vendors including
`
`customer-support and/or manufacturers the normal operation of the Accused Products and/or
`
`Services that infringe the ’526 Patent. Microsoft is aware and/or willfully blind that these
`
`affirmative acts infringe and/or would induce infringement of the ’526 Patent, of which it had
`
`knowledge.
`
`21. Microsoft is also liable under 35 U.S.C. § 271(c) for contributing to and continuing
`
`to contribute to the infringement of the ’526 Patent by, among other things, providing seamless
`
`external storage capability that operates as internal storage in its Accused Products and/or Services
`
`and by encouraging, at a minimum, customers, distributors, end-users, vendors including
`
`customer-support and/or manufacturers in this District and elsewhere, to infringe the ’526 Patent.
`
`By importing, exporting, manufacturing, distributing, selling, and/or providing the Accused
`
`Products and/or Services for their intended use to customers, distributors, end-users, vendors
`
`including customer-support and/or manufacturers, Microsoft has, in the past and continues to
`
`contribute to the infringement of one or more claims of the ’526 Patent. The Accused Products
`
`and/or Services are material to the inventions claimed in the ’526 Patent, have no substantial non-
`
`infringing uses, and are known by Microsoft (on information and belief) to be especially made or
`
`especially adapted for use in infringing the ’526 Patent, and which are otherwise not staple articles
`
`of commerce suitable for substantial non-infringing use. Microsoft is aware and/or willfully blind
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`Case 1:20-cv-00007-RGA Document 33 Filed 09/21/20 Page 15 of 22 PageID #: 856
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`that these affirmative acts infringe and/or constitute contributory infringement of the ’526 Patent,
`
`of which it had knowledge.
`
`22. Microsoft is liable for indirect infringement, i.e., both inducement and contributory
`
`infringement, based on the direct infringement that is the result of activities performed by
`
`customers, distributors, end-users, vendors including customer-support and/or manufacturers who
`
`use all elements or perform all steps of one or more claims of the ’526 Patent. For example, end
`
`users of Microsoft’s Accused Products and/or Services infringe, either directly or under the
`
`doctrine of equivalents, one or more claims of the ’526 Patent (e.g., claims 1-20) by using wireless
`
`devices to store and/or retrieve content on remote storage servers. At a minimum, Microsoft is
`
`liable for the indirect infringement of claims 1-20 of the ’526 Patent.
`
`23. Microsoft’s conduct as alleged herein constitutes egregious behavior, and the
`
`infringement has been and continues to be willful. As a result of Microsoft’s willful infringement
`
`of the ’526 Patent, SynKloud has suffered damages and will continue to suffer damages.
`
`24. Microsoft will continue to infringe unless this Court enjoins Microsoft and its
`
`agents, servants, employees, representatives and all others acting in active concert with it from
`
`infringing the ’526 Patent.
`
`25.
`
`SynKloud has been damaged as a result of Microsoft’s infringing conduct.
`
`Microsoft is, thus, liable to SynKloud in an amount that adequately compensates SynKloud for
`
`Microsoft’s infringement, which, by law, cannot be less than a reasonable royalty, together with
`
`interest and costs as fixed by this Court under 35 U.S.C. § 284.
`
`SECOND COUNTERCLAIM (INFRINGEMENT OF U.S. PATENT NO. 10,015,254)
`
`26.
`
`SynKloud incorporates and re-alleges every allegation set forth above, as though
`
`fully set forth herein.
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`Case 1:20-cv-00007-RGA Document 33 Filed 09/21/20 Page 16 of 22 PageID #: 857
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`27.
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`On August 3, 2018, the ’254 Patent, entitled “Method and System for Wireless
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`Device Access to External Storage,” was duly and legally issued by the United States Patent and
`
`Trademark Office. A true and correct copy of the ’254 Patent is attached as Exhibit 2-A.
`
`28. Microsoft has directly infringed, contributed to the infringement of, and/or have
`
`induced the infringement of one or more claims of the ’254 Patent in violation of 35 U.S.C. § 271
`
`by, at least, making, using, supplying, distributing, importing, exporting, selling and/or offering
`
`for sale in the United States or by intending that others make, use, supply, distribute, import,
`
`export, sell, and/or offer for sale in the United States products and/or services that practice and/or
`
`are covered by one or more claims of the ’254 Patent.
`
`29.
`
`As just one non-limiting example, set forth in the claim chart, attached as Exhibit
`
`2-B, is a description of exemplary claims 1, 9 and 16 of the ’254 Patent. SynKloud reserves the
`
`right to modify this description, including on the basis of information it obtains during discovery.
`
`30. Microsoft has committed acts of infringement without license or authorization.
`
`Microsoft knew or should have known that its actions would cause direct and indirect infringement
`
`of the ’254 Patent. On information and belief, Microsoft acted with objective recklessness by
`
`proceeding despite an objective high likelihood that its actions constituted infringement of a valid
`
`patent.
`
`31. Microsoft is also liable under 35 U.S.C. § 271(b) for actively inducing infringement
`
`and continuing to actively induce infringement. Microsoft actively induces and continues to
`
`induce its customers, distributors, end-users, vendors including customer-support and/or
`
`manufacturers to infringe the ’254 Patent. On information and belief, Microsoft possessed a
`
`specific intent to induce infringement, and in fact did induce infringement, by engaging in
`
`affirmative acts such as by selling and causing the Accused Products and/or Services to be
`
`manufactured, by providing user guides, installation or instruction manuals, and other training
`
`
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`Case 1:20-cv-00007-RGA Document 33 Filed 09/21/20 Page 17 of 22 PageID #: 858
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`
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`materials, by advertising and solicitation and otherwise providing sales-related materials, and by
`
`instructing and/or demonstrating to customers, distributers, end-users, vendors including
`
`customer-support and/or manufacturers the normal operation of the Accused Products and/or
`
`Services that infringe the ’254 Patent. Microsoft is aware and/or willfully blind that these
`
`affirmative acts infringe and/or would induce infringement of the ’254 Patent, of which it had
`
`knowledge.
`
`32. Microsoft is also liable under 35 U.S.C. § 271(c) for contributing to and continuing
`
`to contribute to the infringement of the ’254 Patent by, among other things, providing seamless
`
`external storage capability that operates as internal storage in its Accused Products and/or Services
`
`and by encouraging, at a minimum, customers, distributors, end-users, vendors including
`
`customer-support and/or manufacturers in this District and elsewhere, to infringe the ’254 Patent.
`
`By importing, exporting, manufacturing, distributing, selling, and/or providing the Accused
`
`Products and/or Services for their intended use to customers, distributors, end-users, vendors
`
`including customer-support and/or manufacturers, Microsoft has, in the past and continues to
`
`contribute to the infringement of one or more claims of the ’254 Patent. The Accused Products
`
`and/or Services are material to the inventions claimed in the ’254 Patent, have no substantial non-
`
`infringing uses, and are known by Microsoft (on information and belief) to be especially made or
`
`especially adapted for use in infringing the ’254 Patent, and which are otherwise not staple articles
`
`of commerce suitable for substantial non-infringing use. Microsoft is aware and/or willfully blind
`
`that these affirmative acts infringe and/or constitute contributory infringement of the ’254 Patent,
`
`of which it had knowledge.
`
`33. Microsoft is liable for indirect infrin