Free Answer to to CounterClaim - District Court of California - California

Case 3:07-cv-03177-MMC

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Robert G. Krupka, P.C. (Bar No. 196625) E-mail: [email protected] Marc H. Cohen (Bar No. 168773) E-mail: [email protected] Philip T. Chen (Bar No. 211777) E-mail: [email protected] KIRKLAND & ELLIS LLP 777 South Figueroa Street Los Angeles, California 90017 Telephone: (213) 680-8400 Facsimile: (213) 680-8500 Attorneys for RESEARCH IN MOTION LIMITED and RESEARCH IN MOTION CORPORATION UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

RESEARCH IN MOTION LIMITED, Plaintiff, v. VISTO CORPORATION,

Case No. C-07-3177 (MMC) RESEARCH IN MOTION LIMITED'S REPLY TO FIRST AMENDED COUNTERCLAIM; AND COUNTERCOUNTERCLAIM

17 Defendant. 18 19 20 21 22 23 24 25 26 27 28
RIM's Reply to First Amended Counterclaim and Counter-Counterclaim Case No. C-07-3177 (MMC)

AND RELATED COUNTERCLAIM

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Plaintiff Research In Motion Limited ("RIM Ltd.") and Counterdefendant Research In

2 Motion Corporation ("RIM Corp.") (collectively "RIM"), by their attorneys, reply to the First 3 Amended Counterclaim of Defendant Visto Corporation ("Visto") against RIM: 4 5 6 7 1. 2. 3. Admitted. Admitted. Admitted that RIM Corp. is a corporation organized and existing under the laws of PARTIES

8 the State of Delaware and registered to do business in the State of Texas. Admitted that RIM Corp. 9 is doing business in the Eastern District of Texas and elsewhere in the United States. Admitted that 10 RIM Corp. is the United States distributor of RIM Ltd. products and services. Denied in all other 11 respects. 12 13 14 15 4. 5. 6. JURISDICTION, VENUE & INTRADISTRICT ASSIGNMENT Admitted. Admitted. Admitted that RIM has sufficient contacts with the Northern District of California to

16 subject it to the person jurisdiction of this Court for purposes of Visto's First Amended 17 Counterclaim. Admitted that RIM Ltd. has a pending civil action against Visto in this district. 18 Denied in all other respects. 19 20 21 22 9. 7. 8. Admitted. Admitted. GENERAL ALLEGATIONS On information and belief, Visto was established in 1996 and currently offers

23 personal and corporate wireless messaging solutions to mobile operators for personal and corporate 24 use. Denied in all other respects. 25 10. RIM lacks information sufficient to admit or deny that Visto holds all right, title, and

26 interest in and to United States Patent No. 7,225,231, and on that basis denies it. Admitted that the 27 `231 patent, entitled "System and Method for Transmitting Workspace Elements Across a Network," 28 was issued by the USPTO on May 29, 2007 in the name of Daniel J. Mendez et al. Denied that the
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RIM's Reply to First Amended Counterclaim and Counter-Counterclaim Case No. C-07-3177 (MMC)

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1 `231 patent was duly and properly issued. Admitted that a document purporting to be the '231 2 patent is attached as Exhibit 1 to the First Amended Answer and Counterclaim. Denied in all other 3 respects. 4 11. RIM lacks information sufficient to admit or deny that Visto holds all right, title, and

5 interest in and to United States Patent No. 7,228,383, and on that basis denies it. Admitted that the 6 `383 patent, entitled "System and Method for Progressive and Hierarchical Caching," was issued by 7 the USPTO on June 5, 2007 in the name of Gregory S. Friedman et al. Denied that the `383 patent 8 was duly and properly issued. Admitted that a document purporting to be the '383 patent is attached 9 as Exhibit 2 to the First Amended Answer and Counterclaim. Denied in all other respects. 10 12. Admitted that RIM provides products under the Blackberry® mark. Denied that

11 doing so infringes the `231 patent or the `383 patent, either directly or indirectly, literally or under 12 the doctrine of equivalents, willfully or otherwise. Denied in all other requests. 13 14 15 16 17 18 19 20 21 22 18. 15. set forth herein. 16. 17. Admitted. Denied. COUNT II (Declaratory Judgment of Invalidity) RIM incorporates the admissions and denials set forth in Paragraphs 1-17 as if fully 13. 14. Denied. Denied. COUNT I (Declaratory Judgment of Non-Infringement) RIM incorporates the admissions and denials set forth in Paragraphs 1-14 as if fully

23 set forth herein. 24 25 26 27 28
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RIM's Reply to First Amended Counterclaim and Counter-Counterclaim Case No. C-07-3177 (MMC)

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Admitted. Denied.

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COUNT III (U.S. Patent No. 7,225,231) RIM incorporates the admissions and denials set forth in Paragraphs 1-20 as if fully

3 set forth herein. 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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RIM's Reply to First Amended Counterclaim and Counter-Counterclaim Case No. C-07-3177 (MMC)

22. 23. 24. 25.

Denied. Denied. Denied. Denied. COUNT IV (U.S. Patent No. 7,228,383)

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RIM incorporates the admissions and denials set forth in Paragraphs 1-25 as if fully

set forth herein. 27. 28. 29. 30. Denied. Denied. Denied. Denied. PRAYER FOR RELIEF ON FIRST AMENDED COUNTERCLAIM The remainder of Visto's First Amended Counterclaim comprises Visto's prayer for relief to which no response is required. To the extent that any response may be required, RIM (1) denies that Visto does not infringe the `839 patent; (2) denies that the claims of the `839 patent are invalid; (3) denies that RIM directly or indirectly infringes the `231 patent; (4) denies that RIM directly or indirectly infringes the `383 patent; and (5) denies that Visto is entitled to any damages. Denied that Visto is entitled to attorneys' fees and costs. Further, denied that Visto is entitled to any relief whatsoever against RIM. Except as expressly admitted, RIM denies each and every allegation set forth in Visto's First Amended Counterclaim. AFFIRMATIVE AND OTHER DEFENSES 31. RIM asserts the following affirmative and other defenses, and reserves the right to

amend its reply to assert any other basis for invalidity, unenforceability, or any other defense.

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1 2 3 32. FIRST DEFENSE (Failure to State a Claim) The First Amended Counterclaim fails to state a claim upon which relief can be

4 granted against RIM. 5 6 7 33. SECOND DEFENSE (Non-Infringement) RIM does not infringe and has not infringed, either directly or indirectly,

8 contributorily, or by inducement, any claim of the `231 patent or the `383 patent, either literally or 9 under the doctrine of equivalents, willfully or otherwise. 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 § 287. 28
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RIM's Reply to First Amended Counterclaim and Counter-Counterclaim Case No. C-07-3177 (MMC)

THIRD DEFENSE (Invalidity) 34. The `231 patent and the `383 patent are invalid for failure to comply with the

requirements of 35 U.S.C. § 101, 102, 103 and/or 112. FOURTH DEFENSE (Laches) 35. Visto's claims for relief are barred in whole or in part by the doctrine of laches. FIFTH DEFENSE (Estoppel) 36. Visto's claims for relief are barred in whole or in part by the doctrine of estoppel. SIXTH DEFENSE (Prosecution History Estoppel) 37. Visto is estopped from construing any claim of the `231 patent or `383 patent to cover

or include, either literally or by application of the doctrine of equivalents, any system, process or method made, used, imported, sold, or offered for sale by RIM as a result of admissions and statements made during prosecution of the asserted patents. SEVENTH DEFENSE (Limitation of Damages) 38. Visto's claims for damages against RIM are limited by the provisions of 35 U.S.C.

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1 2 3 4 5 6 7 8 9 10 11 12 13 hands. 14 15 16 42. 41. 40. 39.

EIGHTH DEFENSE (Waiver) Visto's claims for relief are barred in whole or in part by the doctrine of waiver. NINTH DEFENSE (Adequate Remedy at Law) Visto's claims for injunctive relief are barred in light of the fact that Visto has

adequate remedies at law. TENTH DEFENSE (No Attorneys' Fees) Visto has alleged no facts, and RIM has not engaged in any conduct, that entitles

Visto to an award of attorneys' fees. ELEVENTH DEFENSE (Unclean Hands) Visto's claims for relief are barred in whole or in part by the doctrine of unclean

RIM'S COUNTER-COUNTERCLAIM Research In Motion Limited ("RIM Ltd.") and Research In Motion Corporation ("RIM

17 Corp.") (collectively "RIM"), by their attorneys, allege as follows for their Counter-Counterclaim 18 against Visto Corporation ("Visto"): 19 20 1. PARTIES RIM Ltd. is a Canadian corporation with its principal place of business at 295 Phillip

21 Street, Waterloo, Ontario, Canada N2L 3W8. 22 2. RIM Corp. is a Delaware corporation with its principal place of business at 102

23 Decker Ct., Suite 180, Irving, Texas 75062. 24 3. Defendant Visto is a Delaware corporation with its principal place of business at 101

25 Redwood Shores Parkway, Redwood City, California 94065. 26 27 4. JURISDICTION The Court has subject matter jurisdiction over this Counter-Counterclaim pursuant to
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28 28 U.S.C. §§ 1331, 1338(a), and 2201.
RIM's Reply to First Amended Counterclaim and Counter-Counterclaim Case No. C-07-3177 (MMC)

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VENUE Venue properly lies in this District under 28 U.S.C. §§ 1391 and 1400(b) because the

asserted claims arose in this district, and Visto has an established place of business within this District at 101 Redwood Shores Parkway in Redwood City, California. 4 5 6. 6 according to Civil L. R. 3-2(c). 7 8 7. 9 solutions for the worldwide mobile communications market. 10 8. 11 around the world and includes the BlackBerry® wireless platform, software development tools, and 12 software/hardware intellectual property that is licensed. 13 9. 14 operators for personal and corporate use. 15 16 17 10. COUNT I (Declaratory Judgment of Non-Infringement of the `231 Patent) RIM re-alleges and incorporates by reference the foregoing paragraphs 1-9 as though Visto is a provider of personal and corporate wireless messaging solutions to mobile RIM's portfolio of award-winning products are used by thousands of organizations FACTUAL BACKGROUND RIM is a leading designer, manufacturer and marketer of innovative wireless INTRADISTRICT ASSIGNMENT This action for patent infringement shall be assigned on a district-wide basis

18 fully set forth herein. 19 11. An actual controversy has arisen and now exists between the parties regarding non-

20 infringement of United States Patent No. 7,225,231 ("the `231 patent") because Visto has asserted in 21 its First Amended Counterclaim that RIM infringes this patent. 22 12. RIM has not infringed, and does not infringe, directly, contributorily, or by

23 inducement, any valid, enforceable and properly-construed claim of the `231 patent, either literally 24 or under the doctrine of equivalents. 25 13. RIM is entitled to a declaratory judgment that it has not infringed, and is not

26 infringing, any valid or enforceable claim of the `231 patent. 27 28
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COUNT II (Declaratory Judgment of Invalidity of the `231 Patent) RIM re-alleges and incorporates by reference the foregoing paragraphs 1-13 as

3 though fully set forth herein. 4 15. An actual controversy has arisen and now exists between the parties regarding

5 invalidity of the `231 patent because Visto has asserted in its First Amended Counterclaim that RIM 6 infringes this patent, and that the patent was duly and legally issued. 7 16. The asserted claims of the `231 patent, as properly construed, are invalid for failure to

8 comply with the requirements of the patent laws of the United States as set forth in Title 35 of the 9 United States Code, including without limitation 35 U.S.C. §§ 101, 102, 103, and/or 112. 10 17. RIM is entitled to a declaratory judgment that the asserted claims of the `231 patent

11 are invalid. 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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RIM's Reply to First Amended Counterclaim and Counter-Counterclaim Case No. C-07-3177 (MMC)

COUNT III (Declaratory Judgment of Non-Infringement of the `383 Patent) 18. RIM re-alleges and incorporates by reference the foregoing paragraphs 1-17 as

though fully set forth herein. 19. An actual controversy has arisen and now exists between the parties regarding non-

infringement of United States Patent No. 7,228,383 ("the `383 patent") because Visto has asserted in its First Amended Counterclaim that RIM infringes this patent. 20. RIM has not infringed, and does not infringe, directly, contributorily, or by

inducement, any valid, enforceable and properly-construed claim of the `383 patent, either literally or under the doctrine of equivalents. 21. RIM is entitled to a declaratory judgment that it has not infringed, and is not

infringing, any valid or enforceable claim of the `383 patent. COUNT IV (Declaratory Judgment of Invalidity of the `383 Patent) 22. RIM re-alleges and incorporates by reference the foregoing paragraphs 1-21 as

though fully set forth herein.

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23.

An actual controversy has arisen and now exists between the parties regarding

2 invalidity of the `383 patent because Visto has asserted in its First Amended Counterclaim that RIM 3 infringes this patent, and that the patent was duly and legally issued. 4 24. The asserted claims of the `383 patent, as properly construed, are invalid for failure to

5 comply with the requirements of the patent laws of the United States as set forth in Title 35 of the 6 United States Code, including without limitation 35 U.S.C. §§ 101, 102, 103, and/or 112. 7 25. RIM is entitled to a declaratory judgment that the asserted claims of the `383 patent

8 are invalid. 9 10 11 PRAYER FOR RELIEF WHEREFORE, RIM prays for entry of judgment as follows: A. Under the First Claim for Relief, that the Court determine and declare that RIM has

12 not infringed, and is not infringing, any valid and enforceable claim of the `231 patent, either 13 directly or indirectly, and either literally or under the doctrine of equivalents, and further that RIM 14 has not actively induced or contributed to infringement of the `231 patent; 15 B. Under the Second Claim for Relief, that the Court determine and declare that the

16 asserted claims of the `231 patent are invalid and void; 17 C. Under the Third Claim for Relief, that the Court determine and declare that RIM has

18 not infringed, and is not infringing, any valid and enforceable claim of the `383 patent, either 19 directly or indirectly, and either literally or under the doctrine of equivalents, and further that RIM 20 has not actively induced or contributed to infringement of the `383 patent; 21 D. Under the Fourth Claim for Relief, that the Court determine and declare that the

22 asserted claims of the `383 patent are invalid and void; 23 E. That the Court award RIM its attorney's fees and costs of suit pursuant to 35 U.S.C.

24 § 285 and/or other applicable laws; and 25 26 27 28
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RIM's Reply to First Amended Counterclaim and Counter-Counterclaim Case No. C-07-3177 (MMC)

F.

That RIM receives such other and further relief as the Court deems just and proper.

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1 2 3 4 DATED: November 7, 2007 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

JURY DEMAND RIM hereby demands a trial by jury on all issues and claims so triable.

KIRKLAND & ELLIS LLP

By: /s/ Robert G. Krupka, P.C. Marc H. Cohen Philip T. Chen Attorneys for Plaintiff RESEARCH IN MOTION LIMITED

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RIM's Reply to First Amended Counterclaim and Counter-Counterclaim Case No. C-07-3177 (MMC)