Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 1 of 15
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`ANCORA TECHNOLOGIES, INC.,
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`Plaintiff,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`)
`)
`)
`)
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`)
`)
`)
`)
`)
`)
`)
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`
`Defendants.
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`
`
`
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`Civil Action No. 6:19-cv-385
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`
`JURY TRIAL DEMANDED
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`DEFENDANTS SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.’S ANSWER AND COUNTERCLAIMS
`TO PLAINTIFF ANCORA TECHNOLOGIES, INC.’S
`COMPLAINT FOR PATENT INFRINGEMENT
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`Defendants Samsung Electronics Co., Ltd. (“SEC”) and Samsung Electronics America,
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`Inc. (“SEA”) (collectively, “Defendants” or “Samsung”), by and through their undersigned
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`counsel, hereby answer the Complaint for Patent Infringement filed by Plaintiff Ancora
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`Technologies, Inc. (“Plaintiff” or “Ancora”) (Dkt. 1). Samsung denies the allegations of the
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`Complaint to the extent such allegations are not expressly admitted in the following paragraphs.
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`RELATED CASE
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`1.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in Paragraph 1 and thus denies those allegations.
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`PARTIES
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`2.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in Paragraph 2 and thus denies those allegations.
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`3.
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`SEC admits that it is a Korean corporation and that SEC’s headquarters are
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 2 of 15
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`located at 129, Samsung-ro, Yeongtong-gu, Suwon-si, Gyeonggi-do, 443-742, Republic of
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`Korea. SEC denies any and all remaining allegations of paragraph 3 of the Complaint.
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`4.
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`SEA admits that it is a wholly-owned subsidiary of SEC organized and existing
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`under the laws of the State of New York, with its principal place of business at 85 Challenger
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`Road, Ridgefield Park, New Jersey 07660 and that it has offices in Plano, Texas. SEA denies
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`any and all remaining allegations in Paragraph 11.
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`5.
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`SEA admits that it merged with Samsung Telecommunications America LLC in
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`January 2015 and prior to such merger, Samsung Telecommunications America LLC was
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`involved in the sales and distribution of Samsung-branded consumer electronics products in the
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`United States.
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`6.
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`Samsung states that the allegations in Paragraph 6 contain legal conclusions that
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`require no answer. To the extent an answer is required, Samsung denies it is liable for patent
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`infringement as alleged by Ancora. Samsung denies any and all remaining allegations in
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`Paragraph 6.
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`JURISDICTION AND VENUE
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`7.
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`Samsung states that the allegations in Paragraph 7 contain legal conclusions that
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`require no answer. To the extent an answer is required, Samsung admits that the Complaint
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`purports to assert an action arising under Title 35 of the United States Code. Samsung denies
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`that it is liable for patent infringement as alleged by Ancora.
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`8.
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`Samsung does not contest that this Court has subject matter jurisdiction over
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`Ancora’s claim pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`9.
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`Samsung states that the allegations in Paragraph 9 contain legal conclusions that
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`require no answer. To the extent an answer is required, Samsung does not contest, for purposes
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`2
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 3 of 15
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`of this action only, that the Court has personal jurisdiction over Samsung. Samsung denies that it
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`has committed any acts of patent infringement in the State of Texas or this District. Samsung
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`denies any and all remaining allegations in Paragraph 9.
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`10.
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`SEA denies the allegations in paragraph 10 of the Complaint.
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`11.
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`Samsung states that the allegations in Paragraph 11 contain legal conclusions that
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`require no answer. To the extent an answer is required, Samsung denies the allegations in
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`paragraph 11 of the Complaint.
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`12.
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`SEC denies the allegations in paragraph 12 of the Complaint.
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`13.
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`Samsung states that the allegations in Paragraph 13 contain legal conclusions that
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`require no answer. Samsung denies that it is liable for patent infringement as alleged by Ancora.
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`Samsung denies any and all remaining allegations in Paragraph 13.
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`14.
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`Samsung states that the allegations in Paragraph 14 contain legal conclusions that
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`require no answer. Samsung denies that it is liable for patent infringement as alleged by Ancora.
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`Samsung denies any and all remaining allegations in Paragraph 14.
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`15.
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`Samsung states that the allegations in Paragraph 15 contain legal conclusions that
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`require no answer. To the extent an answer is required, SEC does not contest at this time, and
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`solely for the purpose of the present litigation, whether venue over it properly lies in this District.
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`SEC denies that venue in this District is convenient and reserves the right to seek transfer to a
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`more appropriate or convenient forum. SEA denies that venue properly lies in this District.
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`16.
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`Samsung states that the allegations in Paragraph 16 contain legal conclusions that
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`require no answer. To the extent an answer is required, Samsung denies the allegations in
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`Paragraph 16.
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`3
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 4 of 15
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`THE ASSERTED PATENT
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`17.
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`Samsung states that the allegations in Paragraph 17 contain legal conclusions that
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`require no answer. To the extent an answer is required, Samsung admits that U.S. Patent No.
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`6,411,941 (“the ’941 patent”) appears on its face to be entitled “Method of Restricting Software
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`Operation Within a License Limitation.” Samsung denies that it is liable for patent infringement
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`as alleged by Ancora and denies any and all remaining allegations in Paragraph 17.
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`18.
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`Samsung states that the allegations in Paragraph 18 contain legal conclusions that
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`require no answer. To the extent an answer is required, Samsung admits that the ’941 patent
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`appears on its face to have been issued on June 25, 2002.
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`19.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of Ancora’s ownership of the ’941 patent and thus denies those allegations. Samsung
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`denies any and all remaining allegations in Paragraph 19.
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`20.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 20 and thus denies those allegations.
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`21.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 21. Samsung admits that the reexamination certificate to the
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`’941 patent on its face appears to have been issued on June 1, 2010.
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`22.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 22. Samsung was not a party to the referenced matters.
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`23.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 23 and thus denies those allegations.
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`24.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 24. Samsung was not a party to the referenced matter.
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`4
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 5 of 15
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`25.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 25. Samsung was not a party to the referenced matter.
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`26.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 26. Samsung was not a party to the referenced matter.
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`27.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 27. Samsung was not a party to the referenced matter.
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`28.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 28. Samsung was not a party to the referenced matter.
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`29.
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`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 29. Samsung was not a party to the referenced matter.
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`COUNT 1 – INFRINGEMENT
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`30.
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`Samsung restates and incorporates by reference its answers to Paragraphs 1
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`through 29 as if fully set forth herein.
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`31. Denied.
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`32. Denied.
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`33. Denied.
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`34.
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`Denied.
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`35.
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`Samsung admits that Paragraph 35 reproduces the language of Claim 1 of the
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`’941 Patent.
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`36. Denied.
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`37.
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`Samsung states that the allegations in Paragraph 37 contain legal conclusions that
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`require no answer. Samsung denies that it is liable for patent infringement as alleged by Ancora.
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`5
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 6 of 15
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`Samsung admits that the Galaxy S7 contains ROM and RAM. Samsung denies any and all
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`remaining allegations set forth in Paragraph 37.
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`38. Denied.
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`39. Denied.
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`40. Denied.
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`41. Denied.
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`42. Denied.
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`43. Denied.
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`44. Denied.
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`45. Denied.
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`46. Denied.
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`47. Denied.
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`49. Denied.
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`50.
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`Denied.
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`51.
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`Samsung admits that Ancora provides images that appear to state, “Keep your
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`phone’s operating software up to date for the best experience.” Ancora failed to provide a link to
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`where these images were obtained. As such, Samsung cannot verify the authenticity of these
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`images. Samsung denies any and all remaining allegations in Paragraph 51.
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`52.
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`Samsung admits that the first image appears to have been obtained from SEC’s
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`website. Samsung denies any and all remaining allegations in Paragraph 52.
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`53. Denied.
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`54. Denied.
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`55. Denied.
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`6
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 7 of 15
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`56. Denied.
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`57.
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`Denied.
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`DEMAND FOR JURY TRIAL
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`58.
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`No response to Ancora’s demand of trial by jury is necessary.
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`PRAYER FOR RELIEF
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`No response to Ancora’s prayer for relief is necessary. To the extent a response is
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`required, Samsung denies any allegations contained in the prayer for relief, and denies that
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`Ancora is entitled to any of the requested relief.
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`AFFIRMATIVE AND OTHER DEFENSES
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`Without assuming any burden Samsung would otherwise not have, Samsung asserts the
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`following defenses:
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`FIRST DEFENSE
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`(Invalidity)
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`Each claim of the ’941 patent is invalid for failing to meet the requirements of
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`patentability, including, without limitation, one or more of Sections 101, 102, 103, and/or 112 of
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`Title 35 of the United States Code.
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`SECOND DEFENSE
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`(Non-infringement)
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`Samsung has not infringed any valid claim of the ’941 patent, either literally or under the
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`doctrine of equivalents.
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`7
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 8 of 15
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`THIRD DEFENSE
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`(Prosecution History Estoppel)
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`Ancora’s claims of patent infringement are barred, in whole or in part, by the doctrine of
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`prosecution history estoppel to the extent Ancora alleges infringement under the doctrine of
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`equivalents.
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`FOURTH DEFENSE
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`(Equitable Doctrines)
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`Ancora’s claims are barred, in whole or in part, by the equitable doctrines of waiver,
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`estoppel, acquiescence, laches, and/or unclean hands.
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`FIFTH DEFENSE
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`(License and Exhaustion)
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`Ancora’s claims of patent infringement are barred to the extent the alleged infringement
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`is licensed, either expressly or impliedly, or otherwise authorized. Ancora’s claims of patent
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`infringement are also barred to the extent that Ancora has exhausted its rights and remedies as to
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`the alleged infringement.
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`SIXTH DEFENSE
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`(Lack of Standing)
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`Ancora lacks standing to assert the ’941 patent.
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`SEVENTH DEFENSE
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`(Limitation for Sales Covered by 28 U.S.C. § 1498(a))
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`Ancora’s remedies are limited under 28 U.S.C. § 1498 to the extent that the alleged
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`infringement is based on any product or service made for, used by, or sold to the government.
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`8
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 9 of 15
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`EIGHTH DEFENSE
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`(Extraterritoriality)
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`Ancora’s claims for patent infringement are precluded in whole or in part to the extent
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`that any accused functionality of acts are located or performed outside the United States.
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`NINTH DEFENSE
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`(Limitation on Damages)
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`Ancora’s claims for damages are barred, in whole or in part, by reason of the fact that the
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`term of the ’941 patent expired on October 1, 2018.
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`TENTH DEFENSE
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`(No Enhanced Damages Pursuant to 35 U.S.C. § 284)
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`Ancora’s claims for enhanced damages pursuant to 35 U.S.C. § 284, if any, and an award
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`of fees and costs against Samsung have no basis in fact or law and should be denied.
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`ELEVENTH DEFENSE
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`(No Basis for Injunctive Relief)
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`Ancora cannot show that it is entitled to injunctive relief because there exists an adequate
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`remedy at law and Ancora’s claims otherwise fail to meet the requirements of such relief.
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`TWELFTH DEFENSE
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`(No Attorneys’ Fees)
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`Ancora cannot show that it is entitled to attorneys’ fees pursuant to 35 U.S.C. § 285.
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`THIRTEENTH DEFENSE
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`(Failure to State a Claim)
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`Ancora’s Complaint fails to state a claim upon which relief can be granted.
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`9
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 10 of 15
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`FOURTEENTH DEFENSE
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`(Ensnarement)
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`Ancora’s claims are barred or limited in whole or in part by the doctrine of
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`ensnarement.
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`RESERVATION OF RIGHT TO ASSERT ADDITIONAL DEFENSES
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`Samsung has not knowingly or intentionally waived any applicable defenses, and it reserves the
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`right to assert and rely upon other applicable defenses that may become available or apparent
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`throughout the course of this action. Samsung reserves the right to amend, or seek to amend, its
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`answer, including its affirmative and other defenses.
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`COUNTERCLAIMS
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`Pursuant to Federal Rule of Civil Procedure 13, Defendants and Counterclaim-Plaintiffs
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`Samsung Electronics Co., Ltd. (“SEC”) and Samsung Electronics America, Inc. (“SEA”)
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`(collectively, “Samsung”) bring these Counterclaims against Plaintiff and Counterclaim-
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`Defendant Ancora Technologies, Inc. (“Plaintiff” or “Ancora”) and allege the following:
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`PARTIES
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`1.
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`SEC is a corporation organized and existing under the laws of the Republic of
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`Korea, with its principal place of business at 129, Samsung-ro, Yeongtong-gu, Suwon-si,
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`Gyeonggi-do, 443-742, Republic of Korea.
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`2.
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`SEA is a corporation organized and existing under the laws of the State of New
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`York with its principal place of business at 85 Challenger Road, Ridgefield Park, New Jersey
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`07660.
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`10
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 11 of 15
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`3.
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`Upon information and belief, Ancora is a corporation organized and existing
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`under the laws of the State of Delaware with a place of business at 23977 S.E. 10th Street,
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`Sammamish, Washington 98075.
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`JURISDICTION AND VENUE
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`4.
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`This is an action for declaratory judgment of non-infringement and invalidity of
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`U.S. Patent No. 6,411,941 (“the ’941 patent”). This Court has subject matter jurisdiction over
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`these counterclaims pursuant to 28 U.S.C. §§ 1331, 1338(a), 1367(a), 2201, 2202.
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`5.
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`Venue is proper, though not necessarily convenient, as to SEC in the Western
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`District of Texas under 28 U.S.C. §§ 1391 and 1400, based solely on Ancora having filed this
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`action in this District. By filing its Complaint in this District, Ancora has consented to personal
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`jurisdiction and venue. SEC denies that venue in this District is convenient and reserves the
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`right to seek transfer to a more appropriate or convenient forum. SEA denies that venue properly
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`lies in this District.
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`BACKGROUND
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`6.
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`On June 21, 2019, Ancora filed suit against Samsung, alleging infringement of the
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`’941 patent. (Dkt. 1.)
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`7.
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`8.
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`In its Complaint, Ancora alleges that it is the owner of the ’941 patent.
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`An actual, substantial, and continuing justiciable controversy, within the meaning
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`of 28 U.S.C. §§ 2201 and 2202, exists between Ancora and Samsung concerning the
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`infringement and validity of the ’941 patent. This controversy is of sufficient immediacy and
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`reality to warrant the issue of a declaratory judgment.
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`11
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 12 of 15
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`FIRST COUNTERCLAIM
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`(NON-INFRINGEMENT OF ’941 PATENT)
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`9.
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`Samsung incorporates Paragraphs 1–8 of its Counterclaims as if fully set forth
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`herein.
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`10.
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`11.
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`The ’941 patent expired on or about October 1, 2018.
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`Samsung has not infringed and is not infringing, either directly or indirectly, any
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`valid and enforceable claims of the ’941 patent.
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`12.
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`Samsung is entitled to a declaratory judgment that it does not infringe any valid
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`and enforceable claims of the ’941 patent.
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`SECOND COUNTERCLAIM
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`(INVALIDITY OF ’941 PATENT)
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`13.
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`Samsung incorporates Paragraphs 1–12 of its Counterclaims as if fully set forth
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`herein.
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`14.
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`Each claim of the ’941 patent is invalid for failure to comply with the
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`requirements of patentability set forth in the patent statutes, including 35 U.S.C. §§ 101, 102,
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`103, and/or 112.
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`15.
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`Samsung is entitled to a declaratory judgment that the claims of the ’941 patent
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`are invalid.
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`DEMAND FOR JURY TRIAL
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`Samsung demands a jury trial on all issues that may be so tried.
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`PRAYER FOR RELIEF
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`WHEREFORE, Samsung respectfully prays for judgment and relief as follows:
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 13 of 15
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`A.
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`That Ancora take nothing by reason of its Complaint, that the Complaint be
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`B.
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`C.
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`D.
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`E.
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`F.
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`dismissed with prejudice, and that judgment be rendered in favor of Samsung and
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`against Ancora;
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`That Ancora be granted declaratory judgment that Samsung has not infringed and
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`is not infringing the ’941 patent;
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`That Samsung be granted declaratory judgment that the claims of the ’941 patent
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`are invalid;
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`That Samsung be awarded its costs and expenses incurred in this action;
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`That Samsung be awarded its attorneys’ fees in this action pursuant to 35 U.S.C. §
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`285; and
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`For all other and further relief as the Court deems proper.
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`Dated: October 1, 2019
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`Respectfully submitted,
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`/s/ Andrew Vaden
`Andrew Vaden (avaden@cov.com)
` *Admitted in Western District of Texas
`COVINGTON & BURLING LLP
`One CityCenter
`850 Tenth Street, NW
`Washington, DC 20001-4956
`Phone: (202) 662.5755
`Fax: (202) 662-6291
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`Motions for Admission Pro Hac Vice forthcoming:
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`Robert T. Haslam (rhaslam@cov.com)
`Anupam Sharma (asharma@cov.com)
`COVINGTON & BURLING LLP
`3000 El Camino Real
`5 Palo Alto Square, 10th Floor
`Palo Alto, CA 94306-2112
`Phone: (650) 632-4700
`Fax: (650) 632-4800
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`13
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 14 of 15
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`
`Richard L Rainey (rrainey@cov.com)
`Jared Frisch (jfrisch@cov.com)
`COVINGTON & BURLING LLP
`One CityCenter
`850 Tenth Street, NW
`Washington, DC 20001-4956
`Phone: (202) 662.6000
`Fax: (202) 662-6291
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`Attorneys for Defendants SAMSUNG
`ELECTRONICS CO., LTD., and SAMSUNG
`ELECTRONICS AMERICA, INC.,
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`14
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`Case 6:19-cv-00385-ADA Document 14 Filed 10/01/19 Page 15 of 15
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court’s
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`CM/ECF system per Local Rule CV-5(b)(1) on October 1, 2019. Any other counsel of record
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`will be served by a facsimile and/or first class mail.
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`/s/
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`Andrew Vaden
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`15
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