Case 6:16-cv-01245-RWS Document 13 Filed 03/17/17 Page 1 of 13 PageID #: 76
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`No. 6:16-cv-01245-RWS
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`LEAD CASE
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`No. 6:16-cv-01246-RWS
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`JURY TRIAL DEMANDED
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`CYPRESS LAKE SOFTWARE, INC.
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`Plaintiff,
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`v.
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`DELL INC.
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`Defendant.
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`CYPRESS LAKE SOFTWARE, INC.
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`Plaintiff,
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`v.
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`ACER AMERICA CORPORATION,
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`Defendant.
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`DEFENDANT ACER AMERICA CORPORATION’S
`ANSWER, AFFIRMATIVE DEFENSES, AND JURY DEMAND
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`In response to Plaintiff Cypress Lake Software, Inc.’s (“Cypress Lake’s”) Complaint for
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`Patent Infringement, filed October 28, 2016 (“Complaint”), Acer America Corporation (“Acer”)
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`submits this Answer. Acer’s use of the titles and headings found in the Complaint is for the
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`convenience of the parties and Court only and should not be construed to admit any allegations
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`contained therein. Acer hereby expressly denies all allegations contained in the titles and
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`headings of the Amended Complaint.
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`1
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`Case 6:16-cv-01245-RWS Document 13 Filed 03/17/17 Page 2 of 13 PageID #: 77
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`ANSWER
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`Acer admits that Plaintiff filed its Complaint against Acer alleging infringement of U.S.
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`Patents Nos. 8,781,299 (“the ’299 Patent”), 8,661,361 (“the ’361 Patent”), 8,983,264 (“the ’264
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`Patent”), 9,423,923 (“the ’923 Patent”), 9,423,938 (“the ’938 Patent”), and 9,423,954 (“the ’954
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`Patent”) (collectively, “Asserted Patents”) and that:
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`1.
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`The ’299 Patent is entitled “Methods, systems, and computer program products for
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`coordinating playing of media streams.”
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`2.
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`The ’361 Patent is entitled “Methods, systems, and computer program products for
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`navigating between visual components.”
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`3.
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`The ’264 Patent is entitled “Methods, systems, and computer program products for
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`coordinating playing of media streams.”
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`4.
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`The ’923 Patent is entitled “Navigation methods, systems, and computer program
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`products.”
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`5.
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`The ’938 Patent is entitled “Methods, systems, and computer program products for
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`navigating between visual components.”
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`6.
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`The ’954 Patent is entitled “Graphical user interface methods, systems, and computer
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`program products.”
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`Acer denies that any of the Asserted Patents were validly or duly issued because the
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`Asserted Patents are invalid under one or more of 35 U.S.C. §§ 101, 102, 103, and/or 112. Acer
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`lacks knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations in this Section of the Complaint, and therefore denies the same.
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`NATURE OF THE SUIT
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`2
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`Case 6:16-cv-01245-RWS Document 13 Filed 03/17/17 Page 3 of 13 PageID #: 78
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`1.
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`Acer admits that Cypress Lake’s Complaint purports to assert claims of patent
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`infringement arising under the patent law of the United States, Title 35 of the United States
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`Code, but Acer denies that it has infringed any claim of any of the Asserted Patents, directly,
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`indirectly, or jointly. Acer is without knowledge or information sufficient to form a belief about
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`the truth of any remaining allegations of Paragraph 1, and therefore denies them.
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`2.
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`Acer lacks knowledge or information sufficient to form a belief as to the truth of
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`PARTIES
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`Paragraph 2 of the Complaint, and therefore denies the same.
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`3.
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`Admitted.
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`JURISDICTION AND VENUE
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`4.
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`The allegations of Paragraph 4 contain legal conclusions to which no response is
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`required. To the extent a response is required, Acer admits that Cypress Lake’s Complaint
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`purports to set forth an action for patent infringement arising under the Patent Laws of the United
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`States, 35 U.S.C. § 101 et seq. Acer admits that this Court has subject matter jurisdiction
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`pursuant to 28 U.S.C. §§ 1331 and 1338(a) over actions arising under the patent laws of the
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`United States. Except as explicitly admitted, Acer denies the allegations contained in Paragraph
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`4.
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`5.
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`The allegations of Paragraph 5 contain legal conclusions to which no response is
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`required. To the extent a response is required, Acer does not contest that this Court has personal
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`jurisdiction over Acer with respect to this action. Acer admits that it is engaged in business
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`activities in the United States, including in this district, but denies that any of those activities
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`constitutes acts of patent infringement in this district or elsewhere as alleged in the Complaint.
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`Except as explicitly admitted, Acer denies the allegations contained in Paragraph 5.
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`3
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`Case 6:16-cv-01245-RWS Document 13 Filed 03/17/17 Page 4 of 13 PageID #: 79
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`6.
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`Paragraph 6 contains legal conclusions to which no response is required. To the
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`extent a response is required, Acer admits that the Court has personal jurisdiction over Acer with
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`respect to this action. Acer admits that Acer-branded products are sold in retail stores and online
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`in the United States, including in this district, and that it manages, in part, a website to facilitate
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`certain business activities with respect to those products, with Acer America’s involvement
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`limited to marketing, product content, and pricing. Except as explicitly admitted, Acer denies
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`the allegations contained in Paragraph 6.
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`7.
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`Acer denies that venue is proper in this judicial district for Cypress Lake’s patent
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`infringement claims against Acer under 28 U.S.C. §§ 1391(b)-(c) and 1400(b), as properly
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`construed. Acer recognizes that these provisions have been construed by the Federal Circuit in
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`In re TC Heartland LLC, 821 F.3d 1338 (Fed. Cir. 2016), cert. granted, TC Heartland LLC v.
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`Kraft Food Brands Grp. LLC, --- S. Ct. ---, 2016 WL 4944616 (Dec. 14, 2016) in a manner that
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`would provide for venue where a corporate defendant is subject to personal jurisdiction.
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`Notwithstanding the foregoing, Acer believes that decision misconstrues § 1400(b) and that
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`under the correct interpretation, the Eastern District of Texas is not a proper venue in which Acer
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`can be sued for patent infringement. Acer reserves its rights to object to venue as improper
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`should the Supreme Court provide a new interpretation of the scope of venue under § 1400(b) in
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`its pending review of the Federal Circuit’s decision. Acer denies that it has committed any acts
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`of infringement in this district or elsewhere. Acer further denies that this district is convenient
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`and reserves its rights to assert that this action should be transferred to a more convenient district
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`pursuant to 28 U.S.C. § 1404 or otherwise. Acer denies all of the remaining allegations
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`contained in Paragraph 7.
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`THE ACCUSED PRODUCTS
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`4
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`Case 6:16-cv-01245-RWS Document 13 Filed 03/17/17 Page 5 of 13 PageID #: 80
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`8.
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`9.
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`Denied.
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`Acer admits that Windows 10 has features known as Snap Assist and Miracast.
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`Acer denies that any Accused Product, Miracast, Snap Assist, or any other Windows 10 feature
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`infringes any claim of any of the Asserted Patents. Acer denies the remaining allegations of
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`Paragraph 9.
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`10.
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`Acer admits that Miracast is a feature in Microsoft Windows 10 that allows a user
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`to wirelessly project his or her computer screen to a second device. Acer denies that any
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`Accused Product, Miracast, or any other Windows 10 feature infringes any claim of any of the
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`Asserted Patents. Acer denies the remaining allegations of Paragraph 10.
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`11.
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`Acer admits that Snap Assist is a Windows 10 feature that allows a user to resize
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`an open window by moving it to certain positions on the screen. Acer denies that any Accused
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`Product, or Snap Assist, or any other Windows 10 feature infringes any claim of any of the
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`Asserted Patents. Acer denies the remaining allegations of Paragraph 11.
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`12.
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`Acer admits that it has never sought or obtained a license from Cypress Lake, but
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`denies the remaining allegations of Paragraph 12.
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`COUNT 1: ALLEGED INFRINGEMENT OF U.S. PATENT NO. 8,781,299
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`13.
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`Acer restates and incorporates by reference Paragraphs 1 through 12 of its Answer
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`as if fully set forth herein.
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`14.
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`Acer denies that the ’299 Patent is valid or enforceable, or that it was “duly and
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`legally” issued, because the ’299 Patent claims are invalid under one or more of 35 U.S.C. §§
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`101, 102, 103, and/or 112. Acer admits that the ’299 Patent lists an issue date of July 15, 2014
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`on its face.
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`15.
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`Denied.
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`5
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`16.
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`17.
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`Denied.
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`Acer admits that it gained knowledge of the ’299 Patent as a result of the service
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`of the Complaint in this action. Acer denies the remaining allegations in Paragraph 17.
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`18.
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`19.
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`Denied.
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`Acer admits that it gained knowledge of the ’299 Patent as a result of the service
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`of the Complaint in this action. To the extent Paragraph 19 contains further allegations, Acer
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`denies them.
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`20.
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`Paragraph 20 contains no factual allegations to which Acer can respond. To the
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`extent it contains factual allegations, Acer is without information sufficient to form a belief as to
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`the truth thereof, and therefore denies them.
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`COUNT 2: ALLEGED INFRINGEMENT OF U.S. PATENT NO. 8,661,361
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`21.
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`Acer restates and incorporates by reference Paragraphs 1 through 20 of its Answer
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`as if fully stated herein.
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`22.
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`Acer denies that the ’361 Patent is valid or enforceable, or that it was “duly and
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`legally” issued, because the ’361 Patent claims are invalid under one or more of 35 U.S.C. §§
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`101, 102, 103, and/or 112. Acer admits that the ’361 Patent lists an issue date of February 25,
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`2014 on its face.
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`23.
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`24.
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`25.
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`Denied.
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`Denied.
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`Acer admits that it gained knowledge of the ’361 Patent as a result of the service
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`of the Complaint in this action. Acer denies the remaining allegations in Paragraph 25.
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`26.
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`27.
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`Denied.
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`Acer admits that it gained knowledge of the ’361 Patent as a result of the service
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`6
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`Case 6:16-cv-01245-RWS Document 13 Filed 03/17/17 Page 7 of 13 PageID #: 82
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`of the Complaint in this action. Acer denies the remaining allegations in Paragraph 27.
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`28.
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`Paragraph 28 contains no factual allegations to which Acer can respond. To the
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`extent it contains factual allegations, Acer is without information sufficient to form a belief as to
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`the truth thereof, and therefore denies them.
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`COUNT 3: ALLEGED INFRINGEMENT OF U.S. PATENT NO. 8,983,264
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`29.
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`Acer restates and incorporates by reference Paragraphs 1 through 28 of its Answer
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`as if fully set forth herein.
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`30.
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`Acer denies that the ’264 Patent is valid or enforceable, or that it was “duly and
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`legally” issued, because the ’264 Patent claims are invalid under one or more of 35 U.S.C. §§
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`101, 102, 103, and/or 112. Acer admits that the ’264 Patent lists an issue date of March 17, 2015
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`on its face.
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`31.
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`32.
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`33.
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`Denied.
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`Denied.
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`Acer admits that it gained knowledge of the ’264 Patent as a result of the service
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`of the Complaint in this action. Acer denies the remaining allegations in Paragraph 33.
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`34.
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`35.
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`Denied.
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`Acer admits that it gained knowledge of the ’264 Patent as a result of the service
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`of the Complaint in this action. Acer denies the remaining allegations in Paragraph 35.
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`36.
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`Paragraph 36 contains no factual allegations to which Acer can respond. To the
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`extent it contains factual allegations, Acer is without information sufficient to form a belief as to
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`the truth thereof, and therefore denies them.
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`COUNT 4: ALLEGED INFRINGEMENT OF U.S. PATENT NO. 9,423,923
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`37.
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`Acer restates and incorporates by reference Paragraphs 1 through 36 of its Answer
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`7
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`Case 6:16-cv-01245-RWS Document 13 Filed 03/17/17 Page 8 of 13 PageID #: 83
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`as if fully set forth herein.
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`38.
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`Acer denies that the ’923 Patent is valid or enforceable, or that it was “duly and
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`legally” issued, because the ’923 Patent claims are invalid under one or more of 35 U.S.C. §§
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`101, 102, 103, and/or 112. Acer admits that the ’923 Patent lists an issue date of August 23,2016
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`on its face.
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`39.
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`40.
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`41.
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`Denied.
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`Denied.
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`Acer admits that it gained knowledge of the ’923 Patent as a result of the service
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`of the Complaint in this action. Acer denies the remaining allegations in Paragraph 41.
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`42.
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`43.
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`Denied.
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`Acer admits that it gained knowledge of the ’923 Patent as a result of the service
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`of the Complaint in this action. Acer denies the remaining allegations in Paragraph 43.
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`44.
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`Paragraph 44 contains no factual allegations to which Acer can respond. To the
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`extent it contains factual allegations, Acer is without information sufficient to form a belief as to
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`the truth thereof, and therefore denies them.
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`COUNT 5: ALLEGED INFRINGEMENT OF U.S. PATENT NO. 9,423,938
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`45.
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`Acer restates and incorporates by reference Paragraphs 1 through 44 of its Answer
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`as if fully set forth herein.
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`46.
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`Acer denies that the ’938 Patent is valid or enforceable, or that it was “duly and
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`legally” issued, because the ’938 Patent claims are invalid under one or more of 35 U.S.C. §§
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`101, 102, 103, and/or 112. Acer admits that the ’938 Patent lists an issue date of August 23,
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`2016 on its face.
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`47.
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`Denied.
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`8
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`48.
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`49.
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`Denied.
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`Acer admits that it gained knowledge of the ’938 Patent as a result of the service
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`of the Complaint in this action. Acer denies the remaining allegations in Paragraph 49.
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`50.
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`51.
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`Denied.
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`Acer admits that it gained knowledge of the ’938 Patent as a result of the service
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`of the Complaint in this action. Acer denies the remaining allegations in Paragraph 51.
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`52.
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`Paragraph 52 contains no factual allegations to which Acer can respond. To the
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`extent it contains factual allegations, Acer is without information sufficient to form a belief as to
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`the truth thereof, and therefore denies them.
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`COUNT 6: ALLEGED INFRINGEMENT OF U.S. PATENT NO. 9,423,954
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`53.
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`Acer restates and incorporates by reference Paragraphs 1 through 52 of its Answer
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`as if fully set forth herein.
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`54.
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`Acer denies that the ’954 Patent is valid or enforceable, or that it was “duly and
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`legally” issued, because the ’954 Patent claims are invalid under one or more of 35 U.S.C. §§
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`101, 102, 103, and/or 112. Acer admits that the ’954 Patent lists an issue date of August 23,
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`2016 on its face.
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`55.
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`56.
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`57.
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`Denied.
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`Denied.
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`Acer admits that it gained knowledge of the ’954 Patent as a result of the service
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`of the Complaint in this action. Acer denies the remaining allegations in Paragraph 57.
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`58.
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`59.
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`Denied.
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`Acer admits that it gained knowledge of the ’954 Patent as a result of the service
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`of the Complaint in this action. Acer denies the remaining allegations in Paragraph 59.
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`9
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`Case 6:16-cv-01245-RWS Document 13 Filed 03/17/17 Page 10 of 13 PageID #: 85
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`60.
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`Paragraph 60 contains no factual allegations to which Acer can respond. To the
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`extent it contains factual allegations, Acer is without information sufficient to form a belief as to
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`the truth thereof, and therefore denies them
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`REQUEST FOR RELIEF
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`Acer denies that Cypress Lake is entitled any relief in this action as requested in the
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`Complaint or otherwise.
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`DEMAND FOR JURY TRIAL
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`To the extent not addressed above, Acer denies the factual allegations contained in the
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`Complaint. Acer admits that Cypress Lake demands a trial by jury.
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`ACER AMERICA CORPORATION’S AFFIRMATIVE DEFENSES
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`Acer asserts the following defenses, without assuming the burden of proof when such
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`burden would otherwise by on Cypress Lake. Acer reserves the right to amend its Answer and
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`Defenses as additional information becomes available.
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`First Affirmative Defense
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`The Complaint fails to state a claim upon which relief may be granted.
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`Second Affirmative Defense
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`Acer has not infringed and is not infringing, literally or under the doctrine of equivalents,
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`and either directly or indirectly, contributorily, or by inducement, any valid and enforceable
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`claim of the ’299, ’361, ’264, ’923, ’938, or ’954 Patents.
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`Third Affirmative Defense
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`One or more of the claims of each of the ’299, ’361, ’264, ’923, ’938, and ’954 Patents
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`are invalid for failing to meet one or more of the statutory requirements and/or conditions for
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`patentability under 35 U.S.C. §§ 101, 102, 103, and/or 112.
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`10
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`Case 6:16-cv-01245-RWS Document 13 Filed 03/17/17 Page 11 of 13 PageID #: 86
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`Fourth Affirmative Defense
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`The relief sought by Cypress Lake is limited by 35 U.S.C. § 286.
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`Fifth Affirmative Defense
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`The relief sought by Cypress Lake may be limited by 35 U.S.C. § 287.
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`Sixth Affirmative Defense
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`Cypress Lake is estopped from claiming that the Asserted Patents cover the accused
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`technologies or their use under the doctrine of prosecution history estoppel.
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`Seventh Affirmative Defense
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`Cypress Lake is barred from recovering costs pursuant to 35 U.S.C. § 288.
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`Eighth Affirmative Defense
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`Acer has engaged in all relevant activities in good faith, thereby precluding Cypress
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`Lake, even if it prevails, from recovering its reasonable attorneys and/or costs under 35 U.S.C. §
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`285 or enhanced damages under 35 U.S.C. § 284.
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`Ninth Affirmative Defense
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`Cypress Lake is not entitled to an injunction because Cypress Lake has an adequate
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`remedy at law and no basis exists for the grant of equitable relief.
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`Tenth Affirmative Defense
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`Venue is improper in the Eastern District of Texas under 28 U.S.C. § 1400(b) as properly
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`construed.
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`RESERVATION OF ADDITIONAL DEFENSES
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`Discovery in this action has not yet commenced, and Acer continues to investigate the
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`allegations set forth in the Complaint. Acer specifically gives notice that it intends to rely upon
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`such other defenses as may become available by law, or pursuant to statute, or discovery
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`11
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`Case 6:16-cv-01245-RWS Document 13 Filed 03/17/17 Page 12 of 13 PageID #: 87
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`proceedings in this case, and hereby reserves the right to assert such additional defenses as the
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`appropriate time.
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`JURY DEMAND
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`Acer demands a trial by jury on all issues so triable.
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` Dated: March 17, 2017
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`Respectfully submitted,
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`/s/ Melissa R. Smith
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`Melissa R. Smith
`melissa@gillamsmithlaw.com
`Gillam & Smith
`303 South Washington Avenue
`Marshall, TX 75670
`Tel:
`903.934.8450
`Fax: 903.934.9257
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`Attorneys for Defendant
`Acer America Corporation
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`12
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`Case 6:16-cv-01245-RWS Document 13 Filed 03/17/17 Page 13 of 13 PageID #: 88
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`CERTIFICATE OF SERVICE
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`I certify that all counsel of record who are deemed to have consented to electronic service
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`are being served this March 17, 2017 with a copy of this document via the Court’s CM/ECF
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`system pursuant to Local Rule CV-5(a)(3). Any other counsel of record will be served by
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`facsimile transmission and/or first class mail.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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