`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
`
`FastVDO LLC,
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`
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`C.A. No. 11-cv-00797 (PD)
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`
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`JURY TRIAL DEMANDED
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`
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`Plaintiff,
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`
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`v.
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`
`
`
`Apple Inc.; Canon U.S.A., Inc.;
`Casio America, Inc.; Cisco Systems, Inc.;
`DXG Technology (U.S.A.) Inc.;
`Eastman Kodak Company;
`Fujifilm North America Corporation;
`Hewlett Packard Company;
`JVC Americas Corporation;
`Lite-On Sales and Distribution, Inc.;
`Nikon Americas, Inc.;
`Nikon, Inc.; Olympus America Inc.;
`Panasonic Corporation of North America;
`Samsung Electronics America;
`Sanyo North America Corporation;
`Sony Corporation of America, Inc.;
`Sony Electronics, Inc.; and
`Toshiba America, Inc.;
`
`
`
`
`
`
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`Defendants.
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`APPLE INC.’S ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO
`PLAINTIFF FASTVDO LLC’S FIRST AMENDED COMPLAINT
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`Defendant Apple Inc. (“Apple”) hereby sets forth its Answer, Affirmative Defenses and
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`
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`Counterclaims to Plaintiff FastVDO LLC’s (“FastVDO”) First Amended Complaint, filed
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`October 31, 2011, as follows:
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`ANSWER TO FIRST AMENDED COMPLAINT
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`Responding to the individually enumerated paragraphs of the First Amended Complaint,
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`Apple states as follows:
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 2 of 13 PageID #: 360
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`PARTIES
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`1.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 1 of the First Amended Complaint, and therefore denies
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`them.
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`2.
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`Apple admits that it is incorporated under the laws of the state of California and has
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`a place of business at 1 Infinite Loop, Cupertino, California 95014.
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`3.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 3 of the First Amended Complaint, and therefore denies
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`them.
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`4.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 4 of the First Amended Complaint, and therefore denies
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`them.
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`5.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 5 of the First Amended Complaint, and therefore denies
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`them.
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`6.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 6 of the First Amended Complaint, and therefore denies
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`them.
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`7.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 7 of the First Amended Complaint, and therefore denies
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`them.
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`8.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 8 of the First Amended Complaint, and therefore denies
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`them.
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`2
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 3 of 13 PageID #: 361
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`9.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 9 of the First Amended Complaint, and therefore denies
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`them.
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`10.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 10 of the First Amended Complaint, and therefore denies
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`them.
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`11.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 11 of the First Amended Complaint, and therefore denies
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`them.
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`12.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 12 of the First Amended Complaint, and therefore denies
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`them.
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`13.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 13 of the First Amended Complaint, and therefore denies
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`them.
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`14.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 14 of the First Amended Complaint, and therefore denies
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`them.
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`15.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 15 of the First Amended Complaint, and therefore denies
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`them.
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`16.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 16 of the First Amended Complaint, and therefore denies
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`them.
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`3
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 4 of 13 PageID #: 362
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`17.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 17 of the First Amended Complaint, and therefore denies
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`them.
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`18.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 18 of the First Amended Complaint, and therefore denies
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`them.
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`19.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 19 of the First Amended Complaint, and therefore denies
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`them.
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`20.
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`Apple lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations contained in Paragraph 20 of the First Amended Complaint, and therefore denies
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`them.
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`JURISDICTION AND VENUE
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`21.
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`Apple admits that FastVDO has made a claim of patent infringement under Title 35
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`and that this Court has jurisdiction over the subject matter of this action under 28 U.S.C. §§ 1331
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`and 1338(a). Except as expressly admitted, Apple denies the remaining allegations in
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`Paragraph 21 of the First Amended Complaint.
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`22.
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`Apple admits that it is subject to the personal jurisdiction of this Court. Apple
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`denies that it has committed any act of infringement. To the extent the allegations of Paragraph 22
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`relate to other defendants, Apple lacks knowledge sufficient to admit or deny the allegations and
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`on that basis denies them. Except as expressly admitted, Apple denies the remaining allegations
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`contained in Paragraph 22 of the First Amended Complaint.
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`23.
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`Apple admits that venue in this District is proper under 28 U.S.C. §§ 1391(c) and
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`1400(b) and that it is subject to the personal jurisdiction of this Court, but denies that this judicial
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`4
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 5 of 13 PageID #: 363
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`district is the most convenient forum for the parties and witnesses or in the interests of justice.
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`Apple further denies that it has committed any act of infringement. To the extent the allegations
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`of Paragraph 23 relate to other defendants, Apple lacks knowledge sufficient to admit or deny the
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`allegations and on that basis denies them. Except as expressly admitted, Apple denies the
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`remaining allegations contained in Paragraph 23 of the First Amended Complaint.
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`COUNT I
`(Infringement of U.S. Patent No. RE40,081)
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`24.
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`Apple admits that a copy of U.S. Reissued Patent No. RE40,081 (“the ’081 Patent”)
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`is attached as Exhibit A to the First Amended Complaint. Apple further admits that U.S. Reissued
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`Patent No. RE40,081 states on its face that: (a) it is entitled “Fast Signal Transforms With Lifting
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`Steps” and (b) it was reissued on February 19, 2008. Except as expressly admitted, and to the
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`extent any response is required, the remaining factual allegations contained in Paragraph 24 of the
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`First Amended Complaint are denied.
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`25.
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`26.
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`Denied.
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`Paragraph 26 does not require a response by Apple. To the extent that
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`Paragraph 26 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 26, and therefore denies them.
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`27.
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`Paragraph 27 does not require a response by Apple. To the extent that
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`Paragraph 27 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 27, and therefore denies them.
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`28.
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`Paragraph 28 does not require a response by Apple. To the extent that
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`Paragraph 28 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 28, and therefore denies them.
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`5
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 6 of 13 PageID #: 364
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`29.
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`Paragraph 29 does not require a response by Apple. To the extent that
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`Paragraph 29 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 29, and therefore denies them.
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`30.
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`Paragraph 30 does not require a response by Apple. To the extent that
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`Paragraph 30 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 30, and therefore denies them.
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`31.
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`Paragraph 31 does not require a response by Apple. To the extent that
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`Paragraph 31 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 31, and therefore denies them.
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`32.
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`Paragraph 32 does not require a response by Apple. To the extent that
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`Paragraph 32 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 32, and therefore denies them.
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`33.
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`Paragraph 33 does not require a response by Apple. To the extent that
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`Paragraph 33 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 33, and therefore denies them.
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`34.
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`Paragraph 34 does not require a response by Apple. To the extent that
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`Paragraph 34 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 34, and therefore denies them.
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`35.
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`Paragraph 35 does not require a response by Apple. To the extent that
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`Paragraph 35 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 35, and therefore denies them.
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`36.
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`Paragraph 36 does not require a response by Apple. To the extent that
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`Paragraph 36 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 36, and therefore denies them.
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`6
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 7 of 13 PageID #: 365
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`37.
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`Paragraph 37 does not require a response by Apple. To the extent that
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`Paragraph 37 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 37, and therefore denies them.
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`38.
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`Paragraph 38 does not require a response by Apple. To the extent that
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`Paragraph 38 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 38, and therefore denies them.
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`39.
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`Paragraph 39 does not require a response by Apple. To the extent that
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`Paragraph 39 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 39, and therefore denies them.
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`40.
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`Paragraph 40 does not require a response by Apple. To the extent that
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`Paragraph 40 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 40, and therefore denies them.
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`41.
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`Paragraph 41 does not require a response by Apple. To the extent that
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`Paragraph 41 is deemed to require a response, Apple lacks knowledge sufficient to confirm or
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`deny the allegations of Paragraph 41, and therefore denies them.
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`GENERAL DENIAL
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`Except as specifically admitted, Apple denies each and every allegation contained in
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`Paragraphs 1-41 of the First Amended Complaint and denies FastVDO is entitled to any of the
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`relief requested in its Prayer for Relief, to the extent such relief relates in any manner to Apple.
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`RESPONSE TO PRAYER FOR RELIEF
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`Apple denies that FastVDO is entitled to any of the relief sought in its prayer for relief
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`against Apple on account of any action or omission of Apple. FastVDO’s prayer should,
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`therefore, be denied in its entirety and with prejudice. Apple asks that judgment be entered for
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`Apple and that this action be found to be an exceptional case under 35 U.S.C. § 285 entitling
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`7
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 8 of 13 PageID #: 366
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`Apple to be awarded attorneys’ fees in defending against FastVDO’s First Amended Complaint,
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`together with such other and further relief that the Court deems appropriate.
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`AFFIRMATIVE DEFENSES
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`By asserting the following defenses, Apple does not assume any burden of proof for any
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`stated defense on which FastVDO bears the burden, including without limitation infringement.
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`Pursuant to Federal Rule of Civil Procedure 8(c), Apple asserts the following additional defenses
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`to FastVDO’s First Amended Complaint:
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`FIRST AFFIRMATIVE DEFENSE
`(Noninfringement)
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`Apple does not infringe and has not infringed, either directly or by inducing infringement
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`of others, by contributing to the infringement of others, or at all, any claim of the ’081 Patent.
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`SECOND AFFIRMATIVE DEFENSE
`(Invalidity)
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`Each claim of the ’081 Patent is invalid for failure to meet one or more conditions and
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`requirements for patentability specified in Title 35, United States Code, including without
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`limitation, 35 U.S.C. §§ 101, 102, 103, and/or 112.
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`THIRD AFFIRMATIVE DEFENSE
`(Willfulness - Failure to State a Claim)
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`FastVDO has failed to plead its claim of willful infringement with sufficient specificity or
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`factual support to place Apple on notice of the claims Plaintiff is asserting against it, such that
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`Plaintiff has failed to state a claim upon which relief can be granted.
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`FOURTH AFFIRMATIVE DEFENSE
`(Prosecution History Estoppel)
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`On information and belief, FastVDO is barred, under the doctrine of Prosecution History
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`Estoppel, from construing the claims of the’081 Patent in such a way as may cover any of Apple’s
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`products or processes by reasons of amendments and/or statements made to the United States
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`8
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 9 of 13 PageID #: 367
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`Patent and Trademark Office (“USPTO”) during the prosecution of the applications that led to the
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`issuance of the respective patents.
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`FIFTH AFFIRMATIVE DEFENSE
`(Limitation on Damages/Failure to Mark)
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`On information and belief, FastVDO’s claims for damages for purported patent
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`infringement are limited by 35 U.S.C. §§ 286 and/or 287. On information and belief, FastVDO’s
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`purported claims for relief concerning the ’081 Patent are limited by failure to comply with the
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`marking and notice requirements of 35 U.S.C. § 287(a).
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`SIXTH AFFIRMATIVE DEFENSE
`(Laches/Waiver/Estoppel/Unclean Hands)
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`On information and belief, FastVDO’s claims are barred, in whole or in part, by the
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`equitable doctrines of laches, waiver, estoppel and/or unclean hands.
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`SEVENTH AFFIRMATIVE DEFENSE
`(Limitation on Recovery of Costs)
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`FastVDO is barred by 35 U.S.C. § 288 from recovering any costs associated with this
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`action.
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`EIGHTH AFFIRMATIVE DEFENSE
`(Violation of Reasonable and Non-Discriminatory Licensing Agreement)
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`On information and belief, FastVDO has subscribed to subclause 2.2 of the Patent Policy
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`of the standards setting organization responsible for establishing the H.264/MPEG-4 Part
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`10/Audio Video Coding standard and conditionally agreed to license its technology. Accordingly,
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`FastVDO’s damages are limited by that agreement.
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`NINTH AFFIRMATIVE DEFENSE
`(Intervening Rights)
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`FastVDO’s claims of infringement of the ’081 Patent are bared in whole or in part by the
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`doctrine of intervening rights, pursuant to 35 U.S.C. § 252.
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`9
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 10 of 13 PageID #: 368
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`TENTH AFFIRMATIVE DEFENSE
`(Patent Misuse)
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`On information and belief, the claims of the ’081 Patent are unenforceable due to patent
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`misuse.
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`ELEVENTH AFFIRMATIVE DEFENSE
`(Failure to State a Claim)
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`FastVDO has failed to plead its claims with sufficient specificity or factual support to
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`place Apple on notice of the claims Plaintiff is asserting against it, such that Plaintiff has failed to
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`state a claim upon which relief can be granted.
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`TWELFTH AFFIRMATIVE DEFENSE
`(No Right to Injunctive Relief)
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`FastVDO’s claim for injunctive relief is barred because there exists an adequate remedy at
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`law and FastVDO’s claims otherwise fail to meet the requirements for such relief.
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`THIRTEENTH AFFIRMATIVE DEFENSE
`(Improper Joinder)
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`Apple is not a party permitted to be joined to this action under Fed. R. Civ. P. 20, as no
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`right to relief against Apple is alleged to or does arise out of the same transactions, occurrences or
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`series of transactions or occurrences as any claim for relief alleged against any other defendant.
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`ADDITIONAL AFFIRMATIVE DEFENSES
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`Apple expressly reserves the right to assert additional affirmative and other defenses to
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`which it is entitled, and further reserves the right to amend or supplement its affirmative defenses
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`as the case progresses or as Apple obtains further information.
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`COUNTERCLAIMS OF APPLE AGAINST FASTVDO
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`Apple Inc. (“Apple”) hereby alleges the following Counterclaims against FastVDO, LLC
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`(“FastVDO”). The following are counterclaims for a declaratory judgment of non-infringement
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`10
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 11 of 13 PageID #: 369
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`and/or invalidity of the Asserted Patent U.S. Reissued Patent No. RE40,081 (“the ’081 Patent”).
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`Apple, for its counterclaims herein, alleges as follows:
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`PARTIES
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`1.
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`Counter-claimant Apple is a California corporation with its principal place of
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`business at 1 Infinite Loop, Cupertino, California 95014.
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`2.
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`On information and belief, FastVDO is a Florida limited liability corporation with a
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`place of business at 750 N. Atlantic Ave., Cocoa Beach, FL 32931.
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`JURISDICTION AND VENUE
`These counterclaims seek declaratory and injunctive relief under the Declaratory
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`3.
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`Judgment Act, 28 U.S.C. §§ 2201 & 2202. The Court thus has subject matter jurisdiction of such
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`claims pursuant to 28 U.S.C. § 1331 and 1338 as these counterclaims arise under the Patent Laws
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`of the United States, set forth at 38 U.S.C. § 101 et seq.
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`4.
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`This Court has personal jurisdiction over Counter-defendant FastVDO because
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`FastVDO submitted to the jurisdiction of this Court by filing its First Amended Complaint against
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`Apple.
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`5.
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`Venue is proper in this judicial district because these claims are being brought as
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`compulsory counterclaims pursuant to Fed. R. Civ. P. 13(a), and under 28 U.S.C. §§ 1391(b)
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`and (c) and 1400(b) because the claims set forth herein involve federal questions of United States
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`Patent Law.
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`NATURE OF THE ACTION
`On October 31, 2011, FastVDO filed a First Amended Complaint against Apple,
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`6.
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`designated as Civil Action No. 11-cv-00797, alleging that by making, using, selling, offering to
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`sell and/or importing within the United States devices and/or software, Apple has infringed,
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`directly and/or indirectly, the ’081 Patent. An actual case or controversy between the parties
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`11
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 12 of 13 PageID #: 370
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`exists because FastVDO has alleged and is alleging infringement of the ’081 Patent by Apple and
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`because Apple denies those assertions.
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`FIRST COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement)
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`7.
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`An actual, continuing and justiciable controversy exists between Apple and
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`FastVDO as to the non-infringement of the ’081 Patent, as evidenced by FastVDO’s First
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`Amended Complaint and Apple’s Answer to that First Amended Complaint, as set forth above.
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`8.
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`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., Apple
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`requests a judicial determination and declaration that Apple does not infringe and has not
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`infringed, either directly or indirectly, any claim of the ’081 Patent.
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`SECOND COUNTERCLAIM
`(Declaratory Judgment of Invalidity)
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`9.
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`An actual, continuing and justiciable controversy exists between Apple and
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`FastVDO as to the invalidity of the ’081 Patent, as evidenced by FastVDO’s First Amended
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`Complaint and Apple’s Answer to that First Amended Complaint, as set forth above.
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`10.
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`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., Apple
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`requests a judicial determination and declaration the ’081 Patent is invalid for failure to meet one
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`or more conditions and requirements for patentability specified in Title 35, United States Code,
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`including without limitation, 35 U.S.C. §§ 101, 102, 103, and/or 112.
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`DEMAND FOR A JURY TRIAL
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`
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`Apple hereby demands trial by jury for all issues so triable.
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`PRAYER FOR RELIEF
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`WHEREFORE, Apple prays for a declaration and judgment against Plaintiff and Counter-
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`defendant FastVDO, LLC as follows:
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`A.
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`that FastVDO’s First Amended Complaint be dismissed with prejudice;
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`12
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`Case 1:11-cv-00797-RGA Document 69 Filed 11/17/11 Page 13 of 13 PageID #: 371
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`B.
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`that FastVDO be denied any and all relief it has requested in its First Amended
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`Complaint;
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`C.
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`that the Court deny any preliminary or permanent injunctive relief in favor of
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`FastVDO and against Apple;
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`D.
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`E.
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`that FastVDO shall take nothing by way of its First Amended Complaint;
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`that Apple has not infringed and is not infringing any valid claim of the ’081 Patent,
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`directly or indirectly, literally or under the doctrine of equivalents;
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`F.
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`G.
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`that each and all of the claims of the ’081 Patent are invalid;
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`that the Court finds that this case is an exceptional case under 35 U.S.C. § 285, and
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`that FastVDO be required to pay costs of suit that Apple has incurred, including attorneys’ fees and
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`costs, pursuant to 35 U.S.C. § 285 and all other applicable statutes, rules and common law; and
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`
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`H.
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`that Apple be granted such other and further relief as this Court deems just and
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`equitable.
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`Respectfully submitted this 17th day of November, 2011.
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`Dated: November 17, 2011
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`FISH & RICHARDSON P.C.
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`
`
`/s/ Thomas L. Halkowski
`Thomas L. Halkowski (#4099)
`222 Delaware Avenue, 17th Floor
`P.O. Box 1114
`Wilmington, DE 19899-1114
`(302) 652-5070
`halkowski@fr.com
`
`Attorney for Defendant and
`Counter-claimant Apple Inc.
`
`By:
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`13