Free Reply Memorandum - District Court of California - California

Case 3:07-cv-03177-MMC

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M ANATT , P HELPS & P HILLIPS , LLP
ATTORNEYS AT LAW PALO ALTO

MANATT, PHELPS & PHILLIPS, LLP ROBERT D. BECKER (Bar No. CA 160648) E-mail: [email protected] EUGENE L. HAHM (Bar No. CA 167596) E-mail : [email protected] SHAWN G. HANSEN (Bar No. CA 197033) E-mail: [email protected] 1001 Page Mill Road, Building 2 Palo Alto, CA 94304-1006 Telephone: (650) 812-1300 Facsimile: (650) 213-0260 Attorneys for Defendant and Counterclaimant VISTO CORPORATION UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

RESEARCH IN MOTION LIMITED, Plaintiff, vs. VISTO CORPORATION, Defendant. VISTO CORPORATION, Counterclaimant, vs. RESEARCH IN MOTION LIMITED, and RESEARCH IN MOTION CORPORATION, Counterdefendants.

Case No. C-07- 3177 (MMC) VISTO CORPORATION'S REPLY TO RESEARCH IN MOTION LIMITED'S AND RESEARCH IN MOTION CORPORATION'S COUNTERCOUNTERCLAIM

REPLY TO RIM'S COUNTER-COUNTERCLAIM CASE NO. C-07-3177 (MMC)

Case 3:07-cv-03177-MMC

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M ANATT , P HELPS & P HILLIPS , LLP
ATTORNEYS AT LAW PALO ALTO

Defendant and Counterclaimant Visto Corporation ("Visto"), by its attorneys serves this Reply to the Counter-Counterclaims asserted in the Reply to First Amended Counterclaim; and Counter-Counterclaim of Plaintiff and Counterdefendants Research In Motion Limited ("RIM Ltd.") and Research in Motion Corp ("RIM Corp.") (collectively "RIM"). RIM'S COUNTER-COUNTERCLAIM PARTIES 1. Answering paragraph 1 of the Counter-Counterclaim, Visto admits that RIM Ltd.

is a Canadian corporation with its principal place of business at 295 Phillip Street, Waterloo, Ontario, Canada N2L 3W8. 2. Answering paragraph 2 of the Counter-Counterclaim, Visto admits that RIM Corp.

is a Delaware corporation with its principal place of business at 102 Decker Ct., Suite 180, Irving, Texas 75062. 3. Answering paragraph 3 of the Counter-Counterclaim, Visto admits that it is a

corporation organized and existing under the laws of the State of Delaware and that its principal place of business is at 101 Redwood Shores Parkway, Redwood City, California 94065. JURISDICTION 4. Answering paragraph 4 of the Counter-Counterclaim, Visto admits that this Court

has subject matter jurisdiction over claims arising under the Patent Laws of the United States, Title 35, United States Code pursuant to 28 U.S.C. §§ 1331 and 1338(a) and for claims arising under the Declaratory Judgment Act, 28 U.S.C. §2201. Except as expressly admitted, Visto denies the allegations of paragraph 4. VENUE 5. Answering paragraph 5 of the Counter-Counterclaim, Visto admits that Venue

properly lies in this District. INTRADISTRICT ASSIGNMENT 6. Answering paragraph 6 of the Counter-Counterclaim, Visto admits that this action

arises under the patent statutes and therefore, according to Civil Local Rule 3-2(c), it may be assigned on a district-wide basis. 2
REPLY TO RIM'S COUNTER-COUNTERCLAIM CASE NO. C-07-3177 (MMC)

Case 3:07-cv-03177-MMC

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M ANATT , P HELPS & P HILLIPS , LLP
ATTORNEYS AT LAW PALO ALTO

FACTUAL BACKGROUND 7. Answering paragraph 7 of the Counter-Counterclaim, Visto admits RIM is a

designer, manufacturer and marketer of wireless solutions for the mobile communications market. Except as expressly admitted, Visto denies the allegations of paragraph 7. 8. Answering paragraph 8 of the Counter-Counterclaim, Visto admits RIM's

products are used by organizations and includes the Blackberry® wireless platform, software development tools and software/hardware. Visto is without sufficient information to form a belief as to the truth of allegations regarding licensing and therefore denies the same. Except as expressly admitted, Visto denies the allegations of paragraph 8. 9. Answering paragraph 9 of the Counter-Counterclaim, Visto admits the allegations

of paragraph 9. COUNT I (Declaratory Judgment of Non-Infringement of the `231 Patent) 10. Answering paragraph 10 of the Counter-Counterclaim, Visto incorporates by

reference each and every allegation contained in Paragraphs 1 - 9 of this Reply as though fully set forth herein. 11. Answering paragraph 11 of the Counter-Counterclaim, Visto admits that an actual

controversy currently exists between the parties regarding RIM's liability for infringement of the `231 patent. Except as expressly admitted, Visto denies the allegations contained in paragraph 11. 12. Answering paragraph 12 of the Counter-Counterclaim, Visto denies the allegations

of paragraph 12. 13. Answering paragraph 13 of the Counter-Counterclaim, Visto denies the allegations

of paragraph 13. COUNT II (Declaratory Judgment of Invalidity `231 Patent) 14. Answering paragraph 14 of the Counter-Counterclaim, Visto incorporates by

reference each and every allegation contained in Paragraphs 1 - 13 of this Reply as though fully 3
REPLY TO RIM'S COUNTER-COUNTERCLAIM CASE NO. C-07-3177 (MMC)

Case 3:07-cv-03177-MMC

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M ANATT , P HELPS & P HILLIPS , LLP
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set forth herein. 15. Answering paragraph 15 of the Counter-Counterclaim, Visto admits that an actual

controversy currently exists between the parties regarding the validity of the `231 patent. Except as expressly admitted, Visto denies the allegations of paragraph 15. 16. Answering paragraph 16 of the Counter-Counterclaim, Visto denies the allegations

of paragraph 16. 17. Answering paragraph 17 of the Counter-Counterclaim, Visto denies the allegations

of paragraph 17. COUNT III (Declaratory Judgment of Non-Infringement of the `383 Patent) 18. Answering paragraph 18 of the Counter-Counterclaim, Visto incorporates by

reference each and every allegation contained in Paragraphs 1 - 17 of this Reply as though fully set forth herein. 19. Answering paragraph 19 of the Counter-Counterclaim, Visto admits that an actual

controversy currently exists between the parties regarding RIM's liability for infringement of the `383 patent. Except as expressly admitted, Visto denies the allegations of paragraph 19. 20. Answering paragraph 20 of the Counter-Counterclaim, Visto denies the allegations

of paragraph 20. 21. Answering paragraph 21 of the Counter-Counterclaim, Visto denies the allegations

of paragraph 21. COUNT IV (Declaratory Judgment of Invalidity of the `383 Patent) 22. Answering paragraph 22 of the Counter-Counterclaim, Visto incorporates by

reference each and every allegation contained in Paragraphs 1 - 21 of this Reply as though fully set forth herein. 23. Answering paragraph 23 of the Counter-Counterclaim, Visto admits that an actual

controversy currently exists between the parties regarding the validity of the `383 patent. Except as expressly admitted, Visto denies the allegations of paragraph 23. 4
REPLY TO RIM'S COUNTER-COUNTERCLAIM CASE NO. C-07-3177 (MMC)

Case 3:07-cv-03177-MMC

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24.

Answering paragraph 24 of the Counter-Counterclaim, Visto denies the allegations

of paragraph 24. 25. Answering paragraph 25 of the Counter-Counterclaim, Visto denies the allegations

of paragraph 25. RESPONSE TO RIM'S PRAYER FOR RELIEF 26. Visto denies that RIM is entitled to any relief whatsoever in connection with its

Counter-Counterclaim, including, but not limited to, all relief requested in RIM's Prayer for Relief, paragraphs A-F. 27. Except as expressly admitted herein, Visto denies all factual allegations set forth in

RIM's Counter-Counterclaim. PRAYER FOR RELIEF WHEREFORE, Visto respectfully prays: A. That this Court deny all relief sought in RIM's Counter-Counterclaims for

Declaratory Judgment; B. That this Court dismiss RIM's Counter-Counterclaims for Declaratory

Judgment with prejudice; C. That this Court find this case "exceptional" and that Visto is accordingly

entitled to an award against RIM of its reasonable attorneys fees pursuant to 35 U.S.C. § 285; D. E. and proper. DEMAND FOR JURY TRIAL Pursuant to Federal Rules of Civil Procedure 38, Visto demands a trial by jury on all issues in RIM's Counter-Counterclaims for Declaratory Judgment that are triable of right by a That this Court award Visto the costs and disbursements of this action; and That Visto be awarded such other and further relief as the Court deems just

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REPLY TO RIM'S COUNTER-COUNTERCLAIM CASE NO. C-07-3177 (MMC)

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Dated:

November 30, 2007

MANATT, PHELPS & PHILLIPS, LLP By: /s/ Robert D. Becker Robert D. Becker Eugene L. Hahm Shawn G. Hansen Attorneys for Defendant VISTO CORPORATION

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M ANATT , P HELPS & P HILLIPS , LLP
ATTORNEYS AT LAW PALO ALTO

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REPLY TO RIM'S COUNTER-COUNTERCLAIM CASE NO. C-07-3177 (MMC)