Case 1:11-cv-00797-RGA Document 67 Filed 11/17/11 Page 1 of 10 PageID #: 345
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C. A. No. 11-797 (PD)
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`JURY TRIAL DEMANDED
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`:::::::::::
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`FASTVDO LLC,
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`Plaintiff,
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`v.
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`APPLE INC., et al.,
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`Defendants.
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`EASTMAN KODAK COMPANY’S ANSWER
`TO PLAINTIFF FASTVDO LLC’S FIRST AMENDED COMPLAINT
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`Defendant Eastman Kodak Company (“Kodak”) responds to the First Amended
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`Complaint (“Complaint”) filed by Plaintiff FastVDO LLC (“Plaintiff”) with the following
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`Answer and Affirmative Defenses:
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`GENERAL DENIAL
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`Unless specifically admitted below, Kodak denies each and every allegation in the
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`Complaint.
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`RESPONSE TO SPECIFIC ALLEGATIONS
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`Kodak answers the numbered paragraphs of Plaintiff’s Complaint with the following
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`correspondingly numbered responses:
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`PARTIES
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`1.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 1 of the Complaint, and therefore denies them.
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`2.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 2 of the Complaint, and therefore denies them.
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`3.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 3 of the Complaint, and therefore denies them.
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`4.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 4 of the Complaint, and therefore denies them.
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`5.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 5 of the Complaint, and therefore denies them.
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`6.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 6 of the Complaint, and therefore denies them.
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`7.
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`8.
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`Kodak admits the allegations contained in paragraph 7 of the Complaint.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 8 of the Complaint, and therefore denies them.
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`9.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 9 of the Complaint, and therefore denies them.
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`10.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 10 of the Complaint, and therefore denies them.
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`11.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 11 of the Complaint, and therefore denies them.
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`12.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 12 of the Complaint, and therefore denies them.
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`13.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 13 of the Complaint, and therefore denies them.
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`14.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 14 of the Complaint, and therefore denies them.
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`15.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 15 of the Complaint, and therefore denies them.
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`16.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 16 of the Complaint, and therefore denies them.
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`17.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 17 of the Complaint, and therefore denies them.
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`18.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 18 of the Complaint, and therefore denies them.
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`19.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 19 of the Complaint, and therefore denies them.
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`20.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 20 of the Complaint, and therefore denies them.
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`JURISDICTION AND VENUE
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`21.
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`Kodak admits that the Complaint purports to assert claims arising under
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`35 U.S.C. § 271, et seq., but denies that those claims have any merit. Kodak admits that this
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`Court has subject matter jurisdiction over this lawsuit.
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`22.
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`Kodak admits that this Court has personal jurisdiction over it, but denies
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`that it has committed any acts of patent infringement in Delaware or elsewhere, and denies that it
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`has harmed FastVDO in any manner. Kodak lacks knowledge or information sufficient to form a
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`belief as to the truth of the remaining allegations contained in paragraph 22 as they relate to other
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`defendants, and therefore denies them.
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`23.
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`Kodak admits that venue in this district as this case pertains to Kodak is
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`permissible, but avers that this district is not the most convenient or most appropriate forum for
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`this action. Kodak denies that it has committed acts of patent infringement in this District.
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`Kodak lacks knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations contained in paragraph 23 as they relate to other defendants, and therefore denies
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`them.
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`COUNT ONE
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`(Infringement of U.S. Patent No. RE 40,081)
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`24.
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`Kodak admits that Exhibit A to Plaintiff’s Complaint appears to be a copy
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`of U.S. Patent No. RE 40,081 (“the ’081 patent”). Kodak lacks knowledge or information
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`sufficient to form a belief as to the truth of the remaining allegations contained in paragraph 24
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`of the Complaint, and therefore denies them.
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`25.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 25 of the Complaint, and therefore denies them.
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`26.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 26 of the Complaint, and therefore denies them.
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`27.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 27 of the Complaint, and therefore denies them.
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`28.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 28 of the Complaint, and therefore denies them.
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`29.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 29 of the Complaint, and therefore denies them.
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`30.
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`Kodak denies the allegations contained in the first two sentences of
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`paragraph 30 of the Complaint, and specifically denies that it infringes or has infringed, directly
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`or indirectly, any claims of the ’081 patent. In response to the third sentence of paragraph 30 of
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`the Complaint, Kodak admits that it received what purports to be a copy of the ’081 patent at the
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`time it was served with the Complaint in this matter, but denies that such receipt constitutes
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`proper notice for purposes of indirect infringement or for other purposes.
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`31.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 31 of the Complaint, and therefore denies them.
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`32.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 32 of the Complaint, and therefore denies them.
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`33.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 33 of the Complaint, and therefore denies them.
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`34.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 34 of the Complaint, and therefore denies them.
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`35.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 35 of the Complaint, and therefore denies them.
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`36.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 36 of the Complaint, and therefore denies them.
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`37.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 37 of the Complaint, and therefore denies them.
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`38.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 38 of the Complaint, and therefore denies them.
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`39.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 39 of the Complaint, and therefore denies them.
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`40.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 40 of the Complaint, and therefore denies them.
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`41.
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`Kodak lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in paragraph 41 of the Complaint, and therefore denies them.
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`PLAINTIFF’S PRAYER FOR RELIEF
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`Kodak denies that Plaintiff is entitled to any judgment, relief, or damages whatsoever
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`from or against Kodak, either as prayed for in its Complaint or otherwise. Kodak lacks
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`knowledge or information sufficient to form a belief as to whether Plaintiff is entitled to
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`judgment, relief, or damages from or against any of the other defendants, and therefore denies
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`the same.
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`* * *
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`KODAK’S AFFIRMATIVE DEFENSES
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`Kodak’s affirmative defenses are set forth below. Kodak reserves the right to amend its
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`Answer to add affirmative defenses, including inequitable conduct, consistent with the facts
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`discovered in the case.
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`First Defense: Failure to State a Claim
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`Plaintiff’s Complaint fails to state any claim against Kodak upon which relief may be
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`granted.
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`Second Defense: Noninfringement
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`Kodak has not infringed and is not infringing any claim of the ’081 patent, either literally
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`or under the doctrine of equivalents, nor is Kodak actively inducing or contributing to the
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`infringement of any claim of the ’081 patent.
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`Third Defense: Invalidity
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`Each claim of the ’081 patent is invalid for failure to meet one or more of the conditions
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`of patentability specified in 35 U.S.C. §§ 101, 102, 103, and/or 112, because one or more of the
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`claims lack definiteness, because the alleged invention thereof lacks utility and one or more of
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`the claims are not enabled, and because one or more of the claims are invalid inasmuch as they
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`are taught by, suggested by, anticipated by, and/or obvious in view of the prior art, and/or are
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`unsupported by the written description of the invention.
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`Fourth Defense: License, Implied License and/or Patent Exhaustion
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`Plaintiff’s claims for relief are barred in whole or in part pursuant to the doctrines of
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`express license, patent exhaustion and/or implied license.
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`Fifth Defense: Prosecution History Estoppel and Waiver
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`As a result of the proceedings before the United States Patent and Trademark Office
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`during the prosecution of the applications for the ’081 patent, specifically the admissions,
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`representations, and amendments made on behalf of the applicants for the ’081 patent, Plaintiff is
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`estopped from asserting any construction of the claims of the ’081 patent to cover any activity
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`engaged in or product sold by Kodak, and/or has waived any right to do so.
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`Sixth Defense: Lack of Standing
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`On information and belief, Plaintiff lacks standing to bring a patent infringement action
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`based on any alleged infringement of the ’081 patent by Kodak and/or has failed to join a
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`necessary party under Fed. R. Civ. P. 19.
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`Seventh Defense: Lack of Standing to Sue for Past Damages
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`On information and belief, Plaintiff lacks standing to sue for past damages arising from
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`any alleged infringement of the ’081 patent by Kodak.
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`Eighth Defense: Costs Barred
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`Plaintiff is barred from recovering costs in this action under 35 U.S.C. § 288.
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`Ninth Defense: Laches and Waiver
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`Plaintiff’s claims under the ’081 patent are barred by the doctrines of laches and waiver
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`because of the knowledge by Plaintiff (and/or its predecessors-in-interest) of Kodak’s allegedly
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`infringing actions, and its unjustified and unreasonable failure to pursue its infringement claims
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`diligently and timely from the time it became aware it had claims against Kodak. Kodak has
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`been economically and materially prejudiced and injured from Plaintiff’s inexcusable lack of
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`diligence, including without limitation the loss of third-party records pertaining to the prior art,
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`and the unreliability of the memories of witnesses who otherwise would have possessed
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`knowledge of the claims and defenses at issue.
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`Tenth Defense: Equitable Estoppel
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`Plaintiff’s claims under the ’081 patent are barred by the doctrine of equitable estoppel
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`because of the knowledge by Plaintiff (and/or its predecessors-in-interest) of Kodak’s allegedly
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`infringing actions and Plaintiff’s misleading conduct with respect to Kodak. Kodak has been
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`Case 1:11-cv-00797-RGA Document 67 Filed 11/17/11 Page 9 of 10 PageID #: 353
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`both economically and materially prejudiced and injured by its reliance on that misleading
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`conduct.
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`Eleventh Defense: Limitation on Damages
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`Plaintiff’s claims for damages are barred and/or limited by 35 U.S.C. §§ 286 and 287.
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`Twelfth Defense: Reservation of Additional Defenses
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`Kodak reserves all affirmative defenses under Rule 8(c) of the Federal Rules of Civil
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`Procedure, the Patent Laws of the United States and any other defenses, at law or in equity, that
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`may now or in the future be available based on discovery or any other factual investigation
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`concerning this case or any related action.
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`CONCLUSION AND PRAYER FOR RELIEF
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`WHEREFORE, Kodak requests that:
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`A.
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`B.
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`Plaintiff take nothing by its Complaint;
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`The Court enter judgment in favor of Kodak in this action and against Plaintiff,
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`thereby dismissing Plaintiff’s Complaint in its entirety, with prejudice, and deny Plaintiff all
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`requested relief;
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`C.
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`D.
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`E.
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`The Court find that the ’081 patent is not infringed by Kodak;
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`The Court find that the ’081 patent is invalid;
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`The Court find that Plaintiff does not have standing or any right to sue Kodak for
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`infringement of the ’081 patent;
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`F.
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`The Court find that Plaintiff cannot recover any damages from Kodak for any
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`infringement of the ’081 patent;
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`H.
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`The Court find that Plaintiff is equitably estopped from recovering any damages
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`from Kodak for any infringement of the ’081 patent;
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`I.
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`The Court declare that Kodak’s defenses present an exceptional case entitling it to
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`its reasonable attorneys’ fees under 35 U.S.C. § 285;
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`The Court award Kodak its costs and reasonable attorneys’ fees; and
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`The Court grant Kodak all other and further relief that the Court deems
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`J.
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`K.
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`appropriate.
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`DEMAND FOR JURY TRIAL
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`KODAK hereby demands a trial by jury for all issues so triable.
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`Dated: November 17, 2011
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`DLA PIPER (US) LLP
`
` /s/ Denise S. Kraft
`Denise S. Kraft (I.D. No. 2778)
`Aleine Porterfield (I.D. No. 5053)
`919 N. Market Street
`Suite 1500
`Wilmington, DE 19801
`Phone: 302-468-5700
`Fax:
`302-394-2341
`denise.kraft@dlapiper.com
`aleine.porterfield@dlapiper.com
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`Attorneys for Defendant Eastman Kodak Company
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`OF COUNSEL:
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`Sean C. Cunningham (admitted pro hac)
`John D. Kinton (admitted pro hac)
`David R. Knudson (admitted pro hac)
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Tel: (619) 699-2900
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