throbber
Case 1:19-cv-01238-ADA Document 31 Filed 04/23/19 Page 1 of 9
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`FINTIV, INC.,
`
`v.
`
`APPLE, INC.,
`
`Plaintiff,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`
`C.A. No. 6:18-cv-372-ADA
`
`JURY TRIAL DEMANDED
`
`APPLE’S ANSWER AND DEFENSES TO FINTIV’S
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendant Apple, Inc. (“Apple”) hereby responds to Plaintiff Fintiv, Inc.’s (“Fintiv”)
`
`First Amended Complaint for Patent Infringement (the “First Amended Complaint”) as follows.
`
`Each of the paragraphs below corresponds to the same numbered paragraph in the First Amended
`
`Complaint. Unless specifically admitted below, Apple denies each and every allegation in the
`
`First Amended Complaint.
`
`RESPONSE TO “NATURE OF THE ACTION”
`
`1.
`
`Apple admits that Fintiv purports to bring an action for patent infringement
`
`against Apple. Apple denies the allegations of infringement. Apple denies the allegations of
`
`paragraph 1 of the First Amended Complaint.
`
`2.
`
`Apple admits that an uncertified copy of U.S. Patent No. 8,843,125 (the “’125
`
`patent”), entitled “System and Method for Managing Mobile Wallet and its Related Credentials”
`
`and purporting to have an issue date of September 23, 2014, was attached to the First Amended
`
`Complaint as Exhibit A. Apple is without knowledge or information sufficient to form a belief
`
`as to the truth of the remaining allegations of paragraph 2 of the First Amended Complaint, and
`
`therefore denies the same.
`
`3.
`
`Apple denies the allegations of paragraph 3 of the First Amended Complaint.
`
`1
`
`

`

`Case 1:19-cv-01238-ADA Document 31 Filed 04/23/19 Page 2 of 9
`
`4.
`
`Apple admits that Fintiv seeks monetary damages and prejudgment interest from
`
`Apple for alleged infringement of the ’125 patent. Apple denies that it has infringed or currently
`
`infringes the ’125 patent and denies that Fintiv is entitled to any monetary damages or
`
`prejudgment interest.
`
`RESPONSE TO “PARTIES”
`
`5.
`
`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of paragraph 5 of the First Amended Complaint, and therefore denies the
`
`same.
`
`6.
`
`Apple admits that it is a corporation organized and existing under the laws of
`
`California. Apple admits that it has offices at 12535 Riata Vista Circle and 5501 West Parmer
`
`Lane, Austin, Texas, but denies that those offices are “regular and established places of
`
`business” because this allegation calls for a legal conclusion. Apple admits that employees work
`
`at these two offices but denies that any of those employees work on the design, development,
`
`implementation, or marketing of the accused feature in the Apple iPhone or Apple Watch
`
`products. Apple admits that, to the extent its employees can remotely access electronic
`
`documents over the internet, they can do so from Apple’s Austin offices, but denies that fact is
`
`relevant to the venue inquiry under applicable Fifth Circuit and Western District precedent. To
`
`the extent a further response is required, Apple denies the remaining allegations of paragraph 6
`
`of the First Amended Complaint.
`
`7.
`
`Apple admits that it operates retail stores located at 2901 S. Capital of Texas
`
`Highway, Austin, TX 78746 (“Barton Creek”) and 3121 Palm Way, Austin, TX 78758 (“Domain
`
`Northside” where it sells certain Apple and third-party products. Apple admits that CT
`
`Corporation System, its registered agent, has a location at 1999 Bryant Street, Suite 900, Dallas,
`
`Texas 75201, which is not in this District. Apple objects to the remaining allegations of
`
`2
`
`

`

`Case 1:19-cv-01238-ADA Document 31 Filed 04/23/19 Page 3 of 9
`
`paragraph 7 of the First Amended Complaint as calling for a legal conclusion, and therefore
`
`denies the same.
`
`RESPONSE TO “JURISDICTION AND VENUE”
`
`8.
`
`Apple admits that the First Amended Complaint purports to set forth a claim for
`
`patent infringement arising under the patent laws of the United States, Title 35 of the United
`
`States Code, but denies that Fintiv’s claim has merit. Apple admits that this Court has subject
`
`matter jurisdiction over patent infringement suits under 28 U.S.C. §§ 1331 and 1338.
`
`9.
`
`Apple denies that it is subject to general jurisdiction in Texas. For purposes of
`
`this action only, Apple admits that this Court has specific jurisdiction over the specifically
`
`alleged acts of infringement that occurred in Texas. Apple denies that the Court has specific
`
`jurisdiction over alleged acts of infringement that occurred outside of Texas. Apple admits that
`
`its offices at 12535 Riata Vista Circle and 5501 West Parmer Lane, Austin, TX are in this
`
`District and that Apple has a Texas registered agent for service of process. Apple denies that it
`
`infringes any valid claim of the patent asserted in the First Amended Complaint. Apple
`
`otherwise denies the remaining allegations of Paragraph 9 of the First Amended Complaint.
`
`10.
`
`For purposes of this action only, Apple admits that venue is proper in this District,
`
`but denies that it is convenient. Apple denies that it has engaged in any infringing conduct.
`
`Apple denies the remaining allegations of paragraph 10 of the First Amended Complaint.
`
`RESPONSE TO “THE PATENT-IN-SUIT”
`
`11.
`
`Apple objects to the allegations of paragraph 11 of the First Amended Complaint
`
`as calling for a legal conclusion, and therefore denies the same.
`
`12.
`
`Apple admits that the quoted language is present in the specification of the ’125
`
`patent, but contains certain alterations as reflected in the First Amended Complaint. Apple is
`
`3
`
`

`

`Case 1:19-cv-01238-ADA Document 31 Filed 04/23/19 Page 4 of 9
`
`without knowledge or information sufficient to form a belief as to the truth of the factual
`
`allegations in paragraph 12 of the First Amended Complaint, and therefore denies the same.
`
`13.
`
`Apple is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of paragraph 13 of the First Amended Complaint, and therefore denies the
`
`same.
`
`14.
`
`Apple denies the allegations of paragraph 14 of the First Amended Complaint.
`
`RESPONSE TO “COUNT I: DIRECT INFRINGEMENT OF THE ’125 PATENT”
`
`15.
`
`Apple admits that Fintiv incorporates paragraphs 1 through 15 of the First
`
`Amended Complaint by reference. Apple repeats and incorporates its responses to paragraphs 1
`
`through 15 of the First Amended Complaint as if fully set forth herein.
`
`16.
`
`17.
`
`Apple denies the allegations of paragraph 16 of the First Amended Complaint.
`
`Apple admits that paragraph 17 of the First Amended Complaint correctly recites
`
`the language of claim 11 of the ’125 patent.
`
`18.
`
`Apple admits that https://www.apple.com/apple-pay/ is an Apple webpage and
`
`https://www.apple.com/business/site/docs/iOS_Security_Guide.pdf is a pdf hosted on an Apple-
`
`owned domain. Apple objects to the remaining allegations of paragraph 18 of the First Amended
`
`Complaint as calling for a legal conclusion, and therefore denies the same.
`
`19.
`
`Apple admits that https://www.apple.com/apple-pay/ is an Apple webpage and
`
`https://www.apple.com/business/site/docs/iOS_Security_Guide.pdf is a pdf hosted on an Apple-
`
`owned domain. Apple objects to the remaining allegations of paragraph 19 of the First Amended
`
`Complaint as calling for a legal conclusion, and therefore denies the same.
`
`20.
`
`Apple admits
`
`that https://support.apple.com/en-us/HT203027
`
`is an Apple
`
`webpage and https://www.apple.com/business/site/docs/iOS_Security_Guide.pdf is a pdf hosted
`
`4
`
`

`

`Case 1:19-cv-01238-ADA Document 31 Filed 04/23/19 Page 5 of 9
`
`on an Apple-owned domain. Apple objects to the remaining allegations of paragraph 20 of the
`
`First Amended Complaint as calling for a legal conclusion, and therefore denies the same.
`
`21.
`
`Apple admits
`
`that https://support.apple.com/en-us/HT203027
`
`is an Apple
`
`webpage and https://www.apple.com/business/site/docs/iOS_Security_Guide.pdf is a pdf hosted
`
`on an Apple-owned domain. Apple objects to the remaining allegations of paragraph 21 of the
`
`First Amended Complaint as calling for a legal conclusion, and therefore denies the same.
`
`22.
`
`Apple
`
`admits
`
`that https://www.apple.com/business/site/docs/iOS_Security_
`
`Guide.pdf is a pdf hosted on an Apple-owned domain. Apple objects to the remaining
`
`allegations of paragraph 22 of the First Amended Complaint as calling for a legal conclusion,
`
`and therefore denies the same.
`
`23.
`
`Apple admits
`
`that https://support.apple.com/en-us/HT203027
`
`is an Apple
`
`webpage and https://www.apple.com/business/site/docs/iOS_Security_Guide.pdf is a pdf hosted
`
`on an Apple-owned domain. Apple objects to the remaining allegations of paragraph 23 of the
`
`First Amended Complaint as calling for a legal conclusion, and therefore denies the same.
`
`24.
`
`Apple
`
`admits
`
`that
`
`https://www.apple.com/business/site/docs/iOS_
`
`Security_Guide.pdf is a pdf hosted on an Apple-owned domain. Apple objects to the remaining
`
`allegations of paragraph 24 of the First Amended Complaint as calling for a legal conclusion,
`
`and therefore denies the same.
`
`25.
`
`Apple
`
`admits
`
`that https://www.apple.com/business/site/docs/iOS_Security_
`
`Guide.pdf is a pdf hosted on an Apple-owned domain. Apple objects to the remaining
`
`allegations of paragraph 25 of the First Amended Complaint as calling for a legal conclusion,
`
`and therefore denies the same.
`
`5
`
`

`

`Case 1:19-cv-01238-ADA Document 31 Filed 04/23/19 Page 6 of 9
`
`RESPONSE TO “COUNT II: INDIRECT INFRINGEMENT OF THE ’125 PATENT”
`
`26.
`
`Apple admits that Fintiv incorporates paragraphs 1 through 25 of the First
`
`Amended Complaint by reference. Apple repeats and incorporates its responses to paragraphs 1
`
`through 25 of the First Amended Complaint as if fully set forth herein.
`
`27.
`
`Apple admits that the original Complaint (Dkt. 1) was filed on December 21,
`
`2018. Apple admits that https://support.apple.com/en-us/HT204916 is an Apple webpage.
`
`Apple denies the remaining allegations of paragraph 27 of the First Amended Complaint.
`
`28.
`
`Apple
`
`admits
`
`that
`
`https://support.apple.com/en-us/HT204506,
`
`https://support.apple.com/en-us/HT204003,
`
`https://developer.apple.com/wallet/,
`
`and
`
`https://developer.apple.com/library/archive/documentation/UserExperience/Conceptual/PassKit_
`
`PG/index.html#//apple_ref/doc/uid/TP40012195
`
`are
`
`Apple
`
`webpages
`
`and
`
`that
`
`https://www.apple.com/business/site/docs/iOS_Security_Guide.pdf is a pdf hosted on an Apple-
`
`owned domain. Apple denies the remaining allegations of paragraph 28 of the First Amended
`
`Complaint.
`
`29.
`
`Apple
`
`admits
`
`that
`
`https://developer.apple.com/videos/play/wwdc2018/
`
`720/?time=1347 and https://developer.apple.com/library/archive/documentation/UserExperience/
`
`Conceptual/PassKit_PG/YourFirst.html#//apple_ref/doc/uid/TP40012195-CH2-SW1 are Apple
`
`webpages. Apple denies the remaining allegations of paragraph 29 of the First Amended
`
`Complaint.
`
`30.
`
`31.
`
`Apple denies the allegations of paragraph 30 of the First Amended Complaint.
`
`Apple denies the allegations of paragraph 31 of the First Amended Complaint.
`
`6
`
`

`

`Case 1:19-cv-01238-ADA Document 31 Filed 04/23/19 Page 7 of 9
`
`RESPONSE TO “DEMAND FOR JURY TRIAL”
`Apple acknowledges that Fintiv has demanded a jury trial. Apple also demands a trial by
`jury on all issues triable by right.
`
`RESPONSE TO “PRAYER FOR RELIEF”
`Apple denies that Fintiv is entitled to any relief in this action, as requested or otherwise.
`
`APPLE’S DEFENSES
`As further answer and as additional defenses, but without assuming any burden that it
`would not otherwise have or admitting that it bears the burden of proof with respect to any of the
`following, Apple asserts the following defenses and alleges as follows. Apple reserves all rights
`to allege additional defenses that become known through the course of discovery.
`
`FIRST DEFENSE
`(Failure to State a Claim)
`The First Amended Complaint fails to state a claim on which relief can be
`
`1.
`granted.
`
`SECOND DEFENSE
`(Non-Infringement)
`Apple has not infringed and does not infringe, directly or indirectly, any claim of
`2.
`the U.S. Patent No. 8,843,125 (“the ’125 patent”), literally or under the doctrine of equivalents.
`
`THIRD DEFENSE
`(Invalidity)
`One or more of the claims of the ’125 patent are invalid for failure to satisfy the
`3.
`conditions of patentability set forth in 35 U.S.C. § 1 et seq., including 35 U.S.C. §§ 101, 102,
`103, and/or 112.
`
`FOURTH DEFENSE
`(Prosecution History Estoppel and Disclaimer)
`Based on proceedings before the United States Patent and Trademark Office
`4.
`(“PTO”) during the prosecution of the applications that issued as the ’125 patent and/or the
`application(s) to which the ’125 patent claims priority, Fintiv is precluded or otherwise estopped
`
`7
`
`

`

`Case 1:19-cv-01238-ADA Document 31 Filed 04/23/19 Page 8 of 9
`
`from asserting that any claim of the ’125 patent covers, either literally or under the doctrine of
`equivalents, any product or method made, performed, used, sold, offered for sale, or imported by
`Apple.
`
`For instance, in the July 24, 2014 amendment in the ’125 patent’s file history, the
`5.
`patent applicant stated that “disclosing an OTA trusted service manager (TSM) proxy which
`focuses on delivering capabilities” does not satisfy the claimed “feature of capturing mobile
`device information by using the OTA proxy wherein the mobile device information comprises
`secure element (SE) information.”
`
`FIFTH DEFENSE
`(Lack of Notice)
`Apple did not have notice of the ’125 patent prior to service of the original
`6.
`Complaint in this action. For at least this reason, Apple could not have, and did not, indirectly
`infringe the ’125 patent prior to service of the original Complaint. Apple reserves all rights to
`move for appropriate relief, including that Fintiv’s indirect infringement claims are not
`cognizable as a matter of law because Apple did not have the requisite notice of the ’125 patent.
`
`SIXTH DEFENSE
`(Waiver, Unclean Hands, Estoppel)
`Fintiv’s claims for relief are barred, in whole or in part, under the doctrines of
`7.
`waiver, unclean hands, estoppel, and/or other applicable equitable doctrines.
`
`SEVENTH DEFENSE
`(Limitation Of Damages)
`Fintiv’s claims and prayer for relief are barred in whole or in part by 35 U.S.C.
`8.
`§§ 286, 287, and/or 288.
`
`RESERVATION OF ALL DEFENSES
`Apple alleges that it may have other separate and additional defenses of which it
`9.
`is not presently aware and hereby reserves the right to raise such defenses by amendment of this
`Answer, including to conform to proof at trial. Apple therefore reserves all defenses under the
`
`8
`
`

`

`Case 1:19-cv-01238-ADA Document 31 Filed 04/23/19 Page 9 of 9
`
`Federal Rules of Civil Procedure, including Rule 8(c), the Patent Laws of the United States and
`any other and additional defenses, at law or in equity, that are now or may become available or
`appear during, or as a result of, discovery proceedings in this action or otherwise.
`
`Dated: April 23, 2019
`
`Respectfully submitted,
`/s/Claudia Wilson Frost
`Claudia Wilson Frost – Lead Counsel
`Texas Bar No. 21671300
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`609 Main, 40th Floor
`Houston, TX 77002
`Telephone: 713.658.6400
`Facsimile: 713.658.6401
`cfrost@orrick.com
`
`Travis Jensen
`California Bar No. 259925
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`1000 Marsh Rd.
`Menlo Park, CA 94025
`Telephone: 650.614.7400
`Facsimile: 650.614.7401
`tjenson@orrick.com
`
`ATTORNEYS FOR APPLE INC.
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on April 23, 2019, all counsel of record who are deemed to
`have consented to electronic service are being served with a copy of this document through the
`Court’s CM/ECF system under Local Rule CV-5. Any other counsel of record will be served by
`a facsimile transmission or first-class mail.
`
`/s/Claudia Wilson Frost
`Claudia Wilson Frost
`
`9
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket