Case: 1:16-cv-04826 Document #: 29 Filed: 09/19/16 Page 1 of 11 PageID #:1227
`
`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`T-REX PROPERTY AB,
`
`Plaintiff/Counter-Defendant,
`
`v.
`
`CONTEXTMEDIA INC., and
`CONTEXTMEDIA HEALTH, LLC,
`
`
`Defendants/Counter-Plaintiffs.
`
`Case No.: 16-cv-04826
`Honorable Joan H. Lefkow
`
`
`
`
`PLAINTIFF’S ANSWER TO DEFENDANTS’ COUNTERCLAIMS
`
`
`
`Plaintiff and Counterclaim-Defendant T-Rex Property AB (“T-Rex”) for its answer to
`
`Counterclaims of Defendants and Counterclaim-Plaintiffs ContextMedia Inc. and ContextMedia
`
`Health, LLC (“ContextMedia”) hereby states as follows:
`1.  
`
`Defendants and Counterclaim-Plaintiffs ContextMedia, Inc. and ContextMedia Health,
`LLC (“ContextMedia”) counterclaim against Plaintiff and Counterclaim-Defendant T- Rex
`Property AB (“T-Rex”) as follows:
`
`Answer: Admitted that ContextMedia has asserted counterclaims against T-Rex, otherwise
`denied.
`
`
`PARTIES
`
`2.  
`
`
`
`3.  
`
`
`
`
`4.  
`
`
`
`
`ContextMedia, Inc. is an Illinois corporation with its principal place of business at 330 N.
`Wabash Ave., Suite 2500, Chicago, Illinois.
`
`Answer: Admitted.
`
`ContextMedia Health, LLC is a Delaware limited liability corporation with its principal
`place of business at 330 N. Wabash Ave., Suite 2500, Chicago, Illinois.
`
`Answer: Admitted.
`
`By its Complaint, T-Rex is a company organized and existing under the laws of Sweden
`with its principal place of business at Vårvägen 6, 18274 Stocksund, Sweden.
`
`Answer: Admitted.
`
`1
`
`
`

`

`Case: 1:16-cv-04826 Document #: 29 Filed: 09/19/16 Page 2 of 11 PageID #:1228
`
`5.  
`
`JURISDICTION AND VENUE
`
`These Counterclaims seek a declaratory judgment of non-infringement, patent invalidity,
`and unenforceability arising under the Patent Laws of the United States, Title 35 of the
`United States Code.
`
`Answer: Admitted that ContextMedia has asserted counterclaims against T-Rex, otherwise
`denied.
`
`6.  
`
`This Court has jurisdiction over the subject matter of these Counterclaims pursuant to 28
`U.S.C. §§ 1331, 1338, 2201, and 2202.
`
`Answer: Admitted.
`
`The venue requirements of 28 U.S.C. §§ 1391 and 1400(b) are satisfied.
`
`Answer: Admitted.
`
`
`
`FIRST COUNTERCLAIM
`(DECLARATION OF NON-INFRINGEMENT OF THE ‘470 PATENT)
`
`ContextMedia realleges and incorporates by reference each of the allegations set forth
`above in paragraphs 1-7.
`
`Answer: T-Rex restates and incorporates by reference its responses to the proceeding
`allegations of paragraphs 1-7 above as though stated herein.
`
`T-Rex, by its Complaint, alleges that it is the owner of U.S. Patent No. RE39,470 (“the
`‘470 patent”) and that ContextMedia is directly infringing the ‘470 patent.
`
`Answer: Admitted.
`
`
`
`No accused product or method, made, used, sold, offered for sale, or imported by
`ContextMedia constitutes an infringement, either literal or under the doctrine of
`equivalents, of any valid and enforceable claim of the ‘470 patent.
`
`Answer: Denied.
`
`An actual, justiciable controversy exists between the parties by virtue of T-Rex’s Amended
`Complaint and ContextMedia’s Answer as to the non-infringement of the ‘470 patent.
`
`
`
`
`7.  
`
`
`
`
`
`8.  
`
`
`
`
`9.  
`
`
`
`
`10.  
`
`
`
`
`11.  
`
`
`
`Answer: Denied that an actual, justifiable controversy exists between the parties by virtue
`of ContextMedia’s Answer as to non-infringement of the ‘470 patent. Otherwise, admitted.
`
`12.  
`
`The baseless allegations of patent infringement made by T-Rex against ContextMedia are
`causing irreparable damage to ContextMedia.
`
`2
`
`
`

`

`Case: 1:16-cv-04826 Document #: 29 Filed: 09/19/16 Page 3 of 11 PageID #:1229
`
`
`13.  
`
`
`
`
`14.  
`
`15.  
`
`
`
`
`16.  
`
`
`
`
`17.  
`
`
`
`
`18.  
`
`
`
`
`20.  
`
`Answer: Denied that an actual, justifiable controversy exists between the parties by virtue
`of ContextMedia’s Answer as to non-infringement of the ‘334 patent. Otherwise, admitted.
`
`19.  
`
`
`Answer: Denied.
`
`
`
`ContextMedia is entitled to judgment by this Court declaring all claims of the ‘470 patent
`not infringed by ContextMedia.
`
`Answer: Denied.
`
`Because the conduct of T-Rex renders this case to be “exceptional” under 35 U.S.C. § 285,
`ContextMedia is entitled to recover its reasonable costs, expenses and attorneys’ fees.
`
`Answer: Denied.
`
`
`SECOND COUNTERCLAIM
`(DECLARATION OF NON-INFRINGEMENT OF THE ‘334 PATENT)
`
`ContextMedia realleges and incorporates by reference each of the allegations set forth
`above in paragraphs 1-7.
`
`Answer: T-Rex restates and incorporates by reference its responses to the proceeding
`allegations of paragraphs 1-7 above as though stated herein.
`
`T-Rex, by its Complaint, alleges that it is the owner of U.S. Patent No. 7,382,334 (“the
`‘334 patent”) and that ContextMedia is directly infringing the ‘334 patent.
`
`Answer: Admitted.
`
`No accused product or method, made, used, sold, offered for sale, or imported by
`ContextMedia constitutes an infringement, either literal or under the doctrine of
`equivalents, of any valid and enforceable claim of the ‘334 patent.
`
`Answer: Denied.
`
`An actual, justiciable controversy exists between the parties by virtue of T-Rex’s Amended
`Complaint and ContextMedia’s Answer as to the non-infringement of the ‘334 patent.
`
`The baseless allegations of patent infringement made by T-Rex against ContextMedia are
`causing irreparable damage to ContextMedia.
`
`Answer: Denied.
`
`ContextMedia is entitled to judgment by this Court declaring all claims of the ‘334 patent
`not infringed by ContextMedia.
`
`3
`
`
`

`

`Case: 1:16-cv-04826 Document #: 29 Filed: 09/19/16 Page 4 of 11 PageID #:1230
`
`
`
`
`21.  
`
`22.  
`
`
`
`
`23.  
`
`
`
`
`24.  
`
`
`
`
`25.  
`
`
`
`
`27.  
`
`
`
`
`28.  
`
`Answer: Denied that an actual, justifiable controversy exists between the parties by virtue
`of ContextMedia’s Answer as to non-infringement of the ‘603 patent. Otherwise, admitted.
`
`26.  
`
`Answer: Denied.
`
`Because the conduct of T-Rex renders this case to be “exceptional” under 35 U.S.C. § 285,
`ContextMedia is entitled to recover its reasonable costs, expenses and attorneys’ fees.
`
`Answer: Denied.
`
`
`THIRD COUNTERCLAIM
`(DECLARATION OF NON-INFRINGEMENT OF THE ‘603 PATENT)
`
`ContextMedia realleges and incorporates by reference each of the allegations set forth
`above in paragraphs 1-7.
`
`Answer: T-Rex restates and incorporates by reference its responses to the proceeding
`allegations of paragraphs 1-7 above as though stated herein.
`
`T-Rex, by its Complaint, alleges that it is the owner of U.S. Patent No. 6,430,603 (“the
`‘603 patent”) and that ContextMedia is directly infringing the ‘603 patent.
`
`Answer: Admitted.
`
`No accused product or method, made, used, sold, offered for sale, or imported by
`ContextMedia constitutes an infringement, either literal or under the doctrine of
`equivalents, of any valid and enforceable claim of the ‘603 patent.
`
`Answer: Denied.
`
`An actual, justiciable controversy exists between the parties by virtue of T-Rex’s Amended
`Complaint and ContextMedia’s Answer as to the non-infringement of the ‘603 patent.
`
`The baseless allegations of patent infringement made by T-Rex against ContextMedia are
`causing irreparable damage to ContextMedia.
`
`Answer: Denied.
`
`ContextMedia is entitled to judgment by this Court declaring all claims of the ‘603 patent
`not infringed by ContextMedia.
`
`Answer: Denied.
`
`Because the conduct of T-Rex renders this case to be “exceptional” under 35 U.S.C. § 285,
`ContextMedia is entitled to recover its reasonable costs, expenses and attorneys’ fees.
`
`4
`
`
`

`

`Case: 1:16-cv-04826 Document #: 29 Filed: 09/19/16 Page 5 of 11 PageID #:1231
`
`
`Answer: Denied.
`
`
`FOURTH COUNTERCLAIM
`(DECLARATION OF INVALIDITY OF THE ’470 PATENT)
`
`ContextMedia realleges and incorporates by reference each of the allegations set forth
`above in paragraphs 1-7.
`
`Answer: T-Rex restates and incorporates by reference its responses to the proceeding
`allegations of paragraphs 1-7 above as though stated herein.
`
`T-Rex, by its Complaint, alleges that it is the owner of U.S. Patent No. RE39,470 (“the
`‘470 patent”) and that ContextMedia is directly infringing the ‘470 patent.
`
`Answer: Admitted.
`
`The ‘470 patent is invalid for failure to meet one or more conditions of patentability as
`specified in the Patent Laws (Title 35 of the U.S. Code), including, but not limited to, 35
`U.S.C. §§ 101, 102, 103, and/or 112 et seq.
`
`Answer: Denied.
`
`The claims of the ‘470 patent are invalid under 35 U.S.C. § 101 as directed to ineligible
`subject matter, e.g., the patents-in-suit claim merely abstract ideas. See, e.g., ‘470 Patent,
`asserted claim 25 (“A method of selectively displaying digital information . . . comprising:
`receiving control instructions . . . using said control instructions to generate an exposure
`list . . . specifying . . . i) what information content is to be displayed; ii) at which . . .
`locations [it] is to be displayed; iii) when [it] is to be displayed . . . and iv) how long [it] is
`to be displayed . . . displaying images . . . and permitting said exposure list to be
`dynamically updated.”). Furthermore, the claims of the ‘470 patent directed to ineligible
`subject matter lack an inventive concept in the application of the abstract idea as the claims
`merely recite conventional, generic computer, network, and display technology. See, e.g.,
`‘470 Patent, drawing (illustrating that the claimed method and system are composed of
`generic computers, servers, modem, databases, and electronic displays connected by well-
`known and readily available networks).
`
`Answer: Denied.
`
`At least the asserted claims of the ‘470 patent are also invalid under 35 U.S.C. §§ 102
`and/or 103 in view of the prior art. For example, at least claims 25 and 26 of the ‘470 patent
`are invalid as anticipated by and/or obvious in view of at least U.S. Patent No. 5,572,653
`and U.S. Patent No. 7,287,001, which disclose every element either alone or in combination
`of claims 25 and 26. A person of ordinary skill in the art would have been readily motivated
`to combine U.S. Patent No. 5,572,653 and U.S. Patent No. 7,287,001.
`
`29.  
`
`
`
`
`30.  
`
`
`
`
`31.  
`
`
`
`
`32.  
`
`
`
`
`33.  
`
`
`
`5
`
`
`

`

`Case: 1:16-cv-04826 Document #: 29 Filed: 09/19/16 Page 6 of 11 PageID #:1232
`
`Answer: Denied.
`
`At least the asserted claims of the ‘470 patent are also invalid for being indefinite, lacking
`written description support, and/or lacking enablement under 35 U.S.C. § 112. For
`example, the ‘470 patent is at least invalid for lack of enablement because the patent
`requires “specifically developed software” in order to “achiev[e] a purposeful digital
`information system according to the present invention.” See ‘470 Patent col. 13 ll. 8-11.
`The patent fails to, however, identify the required software or explain how to “write [the]
`specific software,” despite going into detail about why the “programs” “available at
`present” “will not function effectively for three reasons.” See ‘470 Patent col. 13 ll. 8-36
`(the “specifically developed software . . . will not be described in more detail here”).
`
`Answer: Denied.
`
`An actual, justiciable controversy exists between the parties by virtue of T-Rex’s Amended
`Complaint and ContextMedia’s Answer as to the invalidity of the ‘470 patent.
`
`
`34.  
`
`
`
`
`35.  
`
`
`
`Answer: Denied that an actual, justifiable controversy exists between the parties by virtue
`of ContextMedia’s Answer as to the invalidity of the ‘470 patent. Otherwise, admitted.
`
`36.  
`
`The baseless allegations of patent infringement made by T-Rex against ContextMedia are
`causing irreparable damage to ContextMedia.
`
`
`Answer: Denied.
`
`ContextMedia is entitled to judgment by this Court declaring all claims of the ‘470 patent
`invalid.
`
`Answer: Denied.
`
`Because the conduct of T-Rex renders this case to be “exceptional” under 35 U.S.C. § 285,
`ContextMedia is entitled to recover its reasonable costs, expenses and attorneys’ fees.
`
`Answer: Denied.
`
`
`
`
`37.  
`
`
`
`
`38.  
`
`
`
`
`
`39.  
`
`FIFTH COUNTERCLAIM
`(DECLARATION OF INVALIDITY OF THE ’334 PATENT)
`
`ContextMedia realleges and incorporates by reference each of the allegations set forth
`above in paragraphs 1-7.
`
`Answer: T-Rex restates and incorporates by reference its responses to the proceeding
`allegations of paragraphs 1-7 above as though stated herein.
`
`40.  
`
`T-Rex, by its Complaint, alleges that it is the owner of U.S. Patent No. 7,382,334 (“the
`‘334 patent”) and that ContextMedia is directly infringing the ‘334 patent.
`
`6
`
`
`

`

`Case: 1:16-cv-04826 Document #: 29 Filed: 09/19/16 Page 7 of 11 PageID #:1233
`
`
`
`
`41.  
`
`
`42.  
`
`
`
`
`43.  
`
`
`
`
`44.  
`
`
`
`Answer: Admitted.
`
`The ‘334 patent is invalid for failure to meet one or more conditions of patentability as
`specified in the Patent Laws (Title 35 of the U.S. Code), including, but not limited to, 35
`U.S.C. §§ 101, 102, 103, and/or 112 et seq.
`
`Answer: Denied.
`
`The claims of the ‘334 patent are invalid under 35 U.S.C. § 101 as directed to ineligible
`subject matter, e.g., the patents-in-suit claim merely abstract ideas. See, e.g., ‘334 Patent,
`asserted claim 22 (“A method for coordinating and controlling electronic displays . . . for
`exposing information . . . compris[ing] . . . generating an exposure list comprising control
`instructions for coordinating and controlling electronic displays with regard to what shall
`be exposed, when it shall be exposed, where it shall be exposed and for how long it shall
`be exposed; using a control center for coordinating and controlling electronic displays . . .
`and wherein the exposure list enables each electronic display to be controlled . . . .”).
`Furthermore, the claims of the ‘334 patent directed to ineligible subject matter lack an
`inventive concept in the application of the abstract idea as the claims merely recite
`conventional, generic computer, network, and display technology. See, e.g., ‘334 Patent,
`drawing (illustrating that the claimed method and arrangement are composed of generic
`computers, servers, modem, databases, and electronic displays connected by well-known
`and readily available networks).
`
`Answer: Denied.
`
`At least the asserted claims of the ‘334 patent are also invalid under 35 U.S.C. §§ 102
`and/or 103 in view of the prior art. For example, at least claims 22 and 32 of the ‘334 patent
`are invalid as anticipated by and/or obvious in view of at least U.S. Patent No. 5,572,653
`and U.S. Patent No. 7,287,001, which disclose every element either alone or in combination
`of claims 22 and 32. A person of ordinary skill in the art would have been readily motivated
`to combine U.S. Patent No. 5,572,653 and U.S. Patent No. 7,287,001.
`
`Answer: Denied.
`
`At least the asserted claims of the ‘334 patent are also invalid for being indefinite, lacking
`written description support, and/or lacking enablement under 35 U.S.C. § 112. For
`example, the ‘334 patent is at least invalid for lack of enablement because the patent
`requires “specifically developed software” in order to “achiev[e] a purposeful digital
`information system according to the present invention.” See ‘334 Patent col. 14 ll. 1-4. The
`patent fails to, however, identify the required software or explain how to “write [the]
`specific software,” despite going into detail about why the “programs” “available at
`present” “will not function effectively for three reasons.” See ‘334 Patent col. 14 ll. 1-30
`(the “specifically developed software . . . will not be described in more detail here”).
`
`Answer: Denied.
`
`7
`
`
`

`

`Case: 1:16-cv-04826 Document #: 29 Filed: 09/19/16 Page 8 of 11 PageID #:1234
`
`
`45.  
`
`
`
`An actual, justiciable controversy exists between the parties by virtue of T-Rex’s Amended
`Complaint and ContextMedia’s Answer as to the invalidity of the ‘334 patent.
`
`Answer: Denied that an actual, justifiable controversy exists between the parties by virtue
`of ContextMedia’s Answer as to the invalidity of the ‘334 patent. Otherwise, admitted.
`
`46.  
`
`The baseless allegations of patent infringement made by T-Rex against ContextMedia are
`causing irreparable damage to ContextMedia.
`
`Answer: Denied.
`
`ContextMedia is entitled to judgment by this Court declaring all claims of the ‘334 patent
`invalid.
`
`Answer: Denied.
`
`Because the conduct of T-Rex renders this case to be “exceptional” under 35 U.S.C. § 285,
`ContextMedia is entitled to recover its reasonable costs, expenses and attorneys’ fees.
`
`Answer: Denied.
`
`
`SIXTH COUNTERCLAIM
`(DECLARATION OF INVALIDITY OF THE ‘603 PATENT)
`
`
`
`
`47.  
`
`
`
`
`48.  
`
`
`49.  
`
`
`
`
`51.  
`
`
`
`
`52.  
`
`ContextMedia realleges and incorporates by reference each of the allegations set forth
`above in paragraphs 1-7.
`
`Answer: T-Rex restates and incorporates by reference its responses to the proceeding
`allegations of paragraphs 1-7 above as though stated herein.
`
`50.  
`
`T-Rex, by its Complaint, alleges that it is the owner of U.S. Patent No. 6,430,603 (“the
`‘603 patent”) and that ContextMedia is directly infringing the ‘603 patent.
`
`Answer: Admitted.
`
`The ‘603 patent is invalid for failure to meet one or more conditions of patentability as
`specified in the Patent Laws (Title 35 of the U.S. Code), including, but not limited to, 35
`U.S.C. §§ 101, 102, 103, and/or 112 et seq.
`
`Answer: Denied.
`
`The claims of the ‘603 patent are invalid under 35 U.S.C. § 101 as directed to ineligible
`subject matter, e.g., the patents-in-suit claim merely abstract ideas. See, e.g., ‘603 Patent,
`claim 13 (upon which the asserted claims are dependent) (“A system for presenting video
`or still-image content . . . comprising: a network interconnecting a plurality of electronic
`
`8
`
`
`

`

`Case: 1:16-cv-04826 Document #: 29 Filed: 09/19/16 Page 9 of 11 PageID #:1235
`
`displays . . . means for scheduling the presentation of video or still-image content . . . [and]
`transmission means in communication with said receiving means for communicating
`scheduled content to respective server devices . . . initiating display of said video or still-
`image content . . . .”). Furthermore, the claims of the ‘603 patent directed to ineligible
`subject matter lack an inventive concept in the application of the abstract idea as the claims
`merely recite conventional, generic computer, network, and display technology. See, e.g.,
`‘603 Patent, claim 13 and specification (referring to a conventional network, receiving and
`transmission means which “may take a number of forms,” and electronic displays, means
`for scheduling, and servers, all of which were readily available on the market or well-
`known).
`
`Answer: Denied.
`
`At least the asserted claims of the ‘603 patent are also invalid under 35 U.S.C. §§ 102
`and/or 103 in view of the prior art. For example, at least claims 42 and 43 of ‘603 patent
`are invalid as anticipated by and/or obvious in view of at least U.S. Application Publication
`No. 2006/0050012 and U.S. Patent No. 7,051,351, which disclose every element either
`alone or in combination of claims 42 and 43. A person of ordinary skill in the art would
`have been readily motivated to combine U.S. Application Publication No. 2006/0050012
`and U.S. Patent No. 7,051,351.
`
`Answer: Denied.
`
`At least the asserted claims of the ‘603 patent are also invalid for being indefinite, lacking
`written description support, and/or lacking enablement under 35 U.S.C. § 112.
`
`Answer: Denied.
`
`An actual, justiciable controversy exists between the parties by virtue of T-Rex’s Amended
`Complaint and ContextMedia’s Answer as to the invalidity of the ‘603 patent.
`
`The baseless allegations of patent infringement made by T-Rex against ContextMedia are
`causing irreparable damage to ContextMedia.
`
`Answer: Denied.
`
`ContextMedia is entitled to judgment by this Court declaring all claims of the ‘603 patent
`invalid.
`
`Answer: Denied.
`
`Because the conduct of T-Rex renders this case to be “exceptional” under 35 U.S.C. § 285,
`ContextMedia is entitled to recover its reasonable costs, expenses and attorneys’ fees.
`
`9
`
`
`
`
`
`53.  
`
`
`
`
`54.  
`
`
`
`
`55.  
`
`
`
`
`
`
`57.  
`
`
`
`
`58.  
`
`Answer: Denied that an actual, justifiable controversy exists between the parties by virtue
`of ContextMedia’s Answer as to the invalidity of the ‘603 patent. Otherwise, admitted.
`
`56.  
`
`

`

`Case: 1:16-cv-04826 Document #: 29 Filed: 09/19/16 Page 10 of 11 PageID #:1236
`
`
`Answer: Denied.
`
`
`
`Dated: September 19, 2016
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/s/ William Cory Spence_
`William Cory Spence
`Jacob Robert Graham
`SPENCE, P.C.
`405 N. Wabash Ave., Suite P2E
`Chicago, Illinois 60611
`312-704-8882
`William.Spence@spencepc.com
`Jacob.Graham@spencepc.com
`Counsel for Plaintiff
`T-Rex Property AB
`
`
`
`
`
`10
`
`
`

`

`Case: 1:16-cv-04826 Document #: 29 Filed: 09/19/16 Page 11 of 11 PageID #:1237
`
`CERTIFICATE OF SERVICE
`
`I, William Cory Spence, an attorney, certify that on September 19, 2016, I caused a copy
`of the Plaintiff’s Answer to Defendants’ Counterclaims to be served on counsel of record by
`electronic means.
`
`
`/s/ William Cory Spence_
`
`
`
`
`
`11
`
`
`