Pacer:e.DIGITAL v.Hewlett-Packard- Denying any infringement ,wants jury trial
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Message: Pacer:e.DIGITAL v.Hewlett-Packard- Denying any infringement ,wants jury trial
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA
e.Digital Corporation,
Plaintiff,
v.
Hewlett-Packard Company,
Defendant.
CASE NO. 15-cv-0333-H-BGS
DEFENDANT HEWLETT-PACKARD COMPANY’S ANSWER TO COMPLAINT
e.Digital Corporation,
Plaintiff,
v.
Hewlett-Packard Company,
Defendant.
CASE NO. 15-cv-0333-H-BGS
DEFENDANT HEWLETT-PACKARD COMPANY’S ANSWER TO COMPLAINT
AFFIRMATIVE DEFENSES
Further answering Plaintiff’s Complaint, HP asserts the following defenses without assuming any burden that it would not otherwise have, including without admitting or acknowledging that it bears the burden of proof as to any of them. HP reserves the right to amend its answer with additional defenses as further information is obtained through discovery.
FIRST DEFENSE: Invalidity
One or more claims of the ʼ108 patent are invalid for failure to comply with one or more of the requirements of 35 U.S.C. §§101, 102, 103 and 112.
SECOND DEFENSE: Noninfringement
HP has not infringed, and does not infringe, any valid claim of the ʼ108 patent, either directly or indirectly, literally or under the doctrine of equivalents.
THIRD DEFENSE: License, Implied License and Patent Exhaustion
Plaintiff’s claim for patent infringement is precluded in whole or in part (i) because allegedly infringing HP products or components thereof are imported, sold by, offered for sale by, made by, or made for, entities having an express or implied license to the ’108 patent; and/or (ii) under the doctrine of patent exhaustion.
FOURTH DEFENSE: Collateral Estoppel
Plaintiff’s claim for patent infringement is barred in whole or in part by the doctrine of collateral estoppel. In a prior proceeding, e.Digital Corp v. Pentax of America, Inc., Case No. 09-cv-02578 (D. Colo., Jun. 28, 2011) (“the Colorado Case”), Plaintiff received an adverse claim construction ruling where the term “main memory” was held to exclude devices that use RAM for data handling procedures. Claim 1 of the ’108 patent is directed to a memory management method for “primary memory.” The adverse claim construction of “main memory” equally applies to “primary memory” of Claim 1 of the ’108 patent. The issue of construing the term “primary memory” is identical to the issue of construing the
term “main memory” in the Colorado Case. The issue was actually litigated in the Colorado Case. The determination of the issue was a critical and necessary part of the prior ruling. Plaintiff had a full and fair opportunity to litigate the construction in the Colorado case. Plaintiff is thus collaterally estopped at least from arguing a contrary construction of the term “primary memory.”
FIFTH DEFENSE: Prosecution History Estoppel
Prosecution history estoppel bars Plaintiff from proving infringement of claims of the ʼ108 patent under the doctrine of equivalents. Plaintiff is estopped from construing claims of the ʼ108 patent by reason of statements made to the United States Patent and Trademark Office during the prosecution of the application that issued as the ʼ108 patent. The ’108 patent claims priority as a continuation-in-part to U.S. Patent No. 5,787,445 (“the ’445 patent”). The ’445 patent and its file history unambiguously explain that the memory management method the patent contemplates is one in which flash memory serves as the primary or main memory in lieu of the RAM, including, without limitation: ’445 patent, Office Action (1 Jul 1997) at 6; ’445 patent at Title; ’445 patent at 2:5-7; ’445 patent at 14:30-38; and ’445 patent at 9:65-10:2. The ’108 patent contains similar statements. In addition, the patentee for the ʼ445 patent clearly articulated that its invention does not cover memory management methods that use file allocation tables (FATs) and memory maps in processes wherein data manipulation is performed outside of the flash memory (and a small cache), i.e., the patentee explained that the invention does not cover memory management methods that use FAT and manipulate data in a primary memory comprised of RAM. The patentee did this by disparaging and distinguishing prior art through statements such as, without limitation: ’445 patent at 2:50-59; ’445 patent at 7:20-25; and ’445 patent, Response to Office Action (10 Nov 1997) at 5-8. The ’108 patent contains similar statements.
SIXTH DEFENSE: Laches and Equitable Defenses
Plaintiff’s claims are barred, in whole or in part, by the doctrine of laches or other applicable equitable doctrines. Plaintiff asserted the ’108 patent against Vivitar Corporation in September 2007 in the patent infringement action e.Digital Corp. v. Vivitar Corp, No. 2:07-cv-00390 in the Eastern District of Texas. Plaintiff asserted the ’108 patent against several entities in March 2008 in the patent infringement action e.Digital Corp. v. Casio America, Inc., No. 2:08-cv-00093 in the Eastern District of Texas. Plaintiff asserted the ’108 patent again against several entities in this district in October 2012, November 2012, January 2013, February 2013, April 2013, December 2013, January 2014 and January 2015. The ’108 patent issued November 1998. Plaintiff delayed in filing suit against HP until February 2015, more than 16 years after the ’108 patent issued and more than seven years after first asserting the ʼ108 patent in litigation. On information and belief, Plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time it knew or reasonably should have known of its claim against HP, and the delay operated to the prejudice or injury of HP. Plaintiff’s delay in filing suit was unreasonable as it could have asserted the ’108 patent against HP much earlier than February 2015. Plaintiff’s unreasonable delay materially prejudices HP at least for evidentiary matters necessary for a proper defense in this action. The ’108 patent is unenforceable against HP due to the doctrine of laches or other applicable equitable doctrines.
SEVENTH DEFENSE: No Injunctive Relief
Neither preliminary nor permanent injunctive relief are available to Plaintiff under the legal standards for injunctions, and a compulsory license(s) would be legal error, because, among other things, Plaintiff cannot show irreparable harm, and the balance of hardships and public interest do not favor an injunction in this case. See eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (2006).
EIGHTH DEFENSE: Limitation on Damages
Damages based upon Plaintiff’s allegations of infringement are barred by 35 U.S.C. § 286 to the extent they seek any recovery for any alleged infringing acts that occurred more than six years before the filing of the Complaint. Furthermore, Plaintiff cannot seek damages for any activities prior to the filing of this action due to failure to provide notice to HP. Any claim for damages for patent infringement by Plaintiff is limited by 35 U.S.C. § 287 to those damages occurring only after the notice of infringement.
NINTH DEFENSE: Failure to State a Claim
Plaintiff fails to state a claim upon which relief can be granted.
TENTH DEFENSE: Government Sales and Use Exception
Plaintiff’s claims for infringement as they relate to any product manufactured by HP for use by the United States government or governmental agency are limited to the rights and remedies set forth in 28 U.S.C. § 1498. Plaintiff cannot seek damages against HP for any product made for and/or used by the United States government.
RESERVATION OF ADDITIONAL DEFENSES
HP reserves all affirmative defenses under Rule 8(c) of the Federal Rules of Civil Procedure, the Patent Laws of the United States, and any other defenses, at law and equity, that may now or in the future be available based on discovery or any other factual investigation concerning this case or any related action.
JURY DEMAND
HP demands a trial by jury of all issues so triable in this action.
REQUEST FOR RELIEF
WHEREFORE, HP requests that:
A. Plaintiff take nothing by its Complaint;
B. The Court enter judgment in favor of HP in this action, and against Plaintiff, thereby dismissing Plaintiff’s Complaint in its entirety, with prejudice,
C. The Court find that the claims of the ʼ108 patent are not infringed by HP;
D. The Court find that the claims of the ʼ108 patent are invalid and/or unenforceable;
E. The Court find that Plaintiff cannot recover any damages from HP for any alleged infringement of the ʼ108 patent;
F. The Court declare that HP’s defenses present an exceptional case entitling HP to its reasonable attorneys’ fees under 35 U.S.C. § 285;
G. The Court award HP its costs and reasonable attorneys’ fees; and
H. The Court grant HP all other and further relief that the Court deems appropriate.
Dated: April 27, 2015
DLA PIPER LLP (US)
By /s/ Sean C. Cunningham
SEAN C. CUNNINGHAM
BRENT K. YAMASHITA
ERIN P. GIBSON
JACOB D. ANDERSON
Attorneys for Defendant
Hewlett-Packard Company
Case 3:15-cv-00333-H-BGS Document 16 Filed 04/27/15
Further answering Plaintiff’s Complaint, HP asserts the following defenses without assuming any burden that it would not otherwise have, including without admitting or acknowledging that it bears the burden of proof as to any of them. HP reserves the right to amend its answer with additional defenses as further information is obtained through discovery.
FIRST DEFENSE: Invalidity
One or more claims of the ʼ108 patent are invalid for failure to comply with one or more of the requirements of 35 U.S.C. §§101, 102, 103 and 112.
SECOND DEFENSE: Noninfringement
HP has not infringed, and does not infringe, any valid claim of the ʼ108 patent, either directly or indirectly, literally or under the doctrine of equivalents.
THIRD DEFENSE: License, Implied License and Patent Exhaustion
Plaintiff’s claim for patent infringement is precluded in whole or in part (i) because allegedly infringing HP products or components thereof are imported, sold by, offered for sale by, made by, or made for, entities having an express or implied license to the ’108 patent; and/or (ii) under the doctrine of patent exhaustion.
FOURTH DEFENSE: Collateral Estoppel
Plaintiff’s claim for patent infringement is barred in whole or in part by the doctrine of collateral estoppel. In a prior proceeding, e.Digital Corp v. Pentax of America, Inc., Case No. 09-cv-02578 (D. Colo., Jun. 28, 2011) (“the Colorado Case”), Plaintiff received an adverse claim construction ruling where the term “main memory” was held to exclude devices that use RAM for data handling procedures. Claim 1 of the ’108 patent is directed to a memory management method for “primary memory.” The adverse claim construction of “main memory” equally applies to “primary memory” of Claim 1 of the ’108 patent. The issue of construing the term “primary memory” is identical to the issue of construing the
term “main memory” in the Colorado Case. The issue was actually litigated in the Colorado Case. The determination of the issue was a critical and necessary part of the prior ruling. Plaintiff had a full and fair opportunity to litigate the construction in the Colorado case. Plaintiff is thus collaterally estopped at least from arguing a contrary construction of the term “primary memory.”
FIFTH DEFENSE: Prosecution History Estoppel
Prosecution history estoppel bars Plaintiff from proving infringement of claims of the ʼ108 patent under the doctrine of equivalents. Plaintiff is estopped from construing claims of the ʼ108 patent by reason of statements made to the United States Patent and Trademark Office during the prosecution of the application that issued as the ʼ108 patent. The ’108 patent claims priority as a continuation-in-part to U.S. Patent No. 5,787,445 (“the ’445 patent”). The ’445 patent and its file history unambiguously explain that the memory management method the patent contemplates is one in which flash memory serves as the primary or main memory in lieu of the RAM, including, without limitation: ’445 patent, Office Action (1 Jul 1997) at 6; ’445 patent at Title; ’445 patent at 2:5-7; ’445 patent at 14:30-38; and ’445 patent at 9:65-10:2. The ’108 patent contains similar statements. In addition, the patentee for the ʼ445 patent clearly articulated that its invention does not cover memory management methods that use file allocation tables (FATs) and memory maps in processes wherein data manipulation is performed outside of the flash memory (and a small cache), i.e., the patentee explained that the invention does not cover memory management methods that use FAT and manipulate data in a primary memory comprised of RAM. The patentee did this by disparaging and distinguishing prior art through statements such as, without limitation: ’445 patent at 2:50-59; ’445 patent at 7:20-25; and ’445 patent, Response to Office Action (10 Nov 1997) at 5-8. The ’108 patent contains similar statements.
SIXTH DEFENSE: Laches and Equitable Defenses
Plaintiff’s claims are barred, in whole or in part, by the doctrine of laches or other applicable equitable doctrines. Plaintiff asserted the ’108 patent against Vivitar Corporation in September 2007 in the patent infringement action e.Digital Corp. v. Vivitar Corp, No. 2:07-cv-00390 in the Eastern District of Texas. Plaintiff asserted the ’108 patent against several entities in March 2008 in the patent infringement action e.Digital Corp. v. Casio America, Inc., No. 2:08-cv-00093 in the Eastern District of Texas. Plaintiff asserted the ’108 patent again against several entities in this district in October 2012, November 2012, January 2013, February 2013, April 2013, December 2013, January 2014 and January 2015. The ’108 patent issued November 1998. Plaintiff delayed in filing suit against HP until February 2015, more than 16 years after the ’108 patent issued and more than seven years after first asserting the ʼ108 patent in litigation. On information and belief, Plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time it knew or reasonably should have known of its claim against HP, and the delay operated to the prejudice or injury of HP. Plaintiff’s delay in filing suit was unreasonable as it could have asserted the ’108 patent against HP much earlier than February 2015. Plaintiff’s unreasonable delay materially prejudices HP at least for evidentiary matters necessary for a proper defense in this action. The ’108 patent is unenforceable against HP due to the doctrine of laches or other applicable equitable doctrines.
SEVENTH DEFENSE: No Injunctive Relief
Neither preliminary nor permanent injunctive relief are available to Plaintiff under the legal standards for injunctions, and a compulsory license(s) would be legal error, because, among other things, Plaintiff cannot show irreparable harm, and the balance of hardships and public interest do not favor an injunction in this case. See eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (2006).
EIGHTH DEFENSE: Limitation on Damages
Damages based upon Plaintiff’s allegations of infringement are barred by 35 U.S.C. § 286 to the extent they seek any recovery for any alleged infringing acts that occurred more than six years before the filing of the Complaint. Furthermore, Plaintiff cannot seek damages for any activities prior to the filing of this action due to failure to provide notice to HP. Any claim for damages for patent infringement by Plaintiff is limited by 35 U.S.C. § 287 to those damages occurring only after the notice of infringement.
NINTH DEFENSE: Failure to State a Claim
Plaintiff fails to state a claim upon which relief can be granted.
TENTH DEFENSE: Government Sales and Use Exception
Plaintiff’s claims for infringement as they relate to any product manufactured by HP for use by the United States government or governmental agency are limited to the rights and remedies set forth in 28 U.S.C. § 1498. Plaintiff cannot seek damages against HP for any product made for and/or used by the United States government.
RESERVATION OF ADDITIONAL DEFENSES
HP reserves all affirmative defenses under Rule 8(c) of the Federal Rules of Civil Procedure, the Patent Laws of the United States, and any other defenses, at law and equity, that may now or in the future be available based on discovery or any other factual investigation concerning this case or any related action.
JURY DEMAND
HP demands a trial by jury of all issues so triable in this action.
REQUEST FOR RELIEF
WHEREFORE, HP requests that:
A. Plaintiff take nothing by its Complaint;
B. The Court enter judgment in favor of HP in this action, and against Plaintiff, thereby dismissing Plaintiff’s Complaint in its entirety, with prejudice,
C. The Court find that the claims of the ʼ108 patent are not infringed by HP;
D. The Court find that the claims of the ʼ108 patent are invalid and/or unenforceable;
E. The Court find that Plaintiff cannot recover any damages from HP for any alleged infringement of the ʼ108 patent;
F. The Court declare that HP’s defenses present an exceptional case entitling HP to its reasonable attorneys’ fees under 35 U.S.C. § 285;
G. The Court award HP its costs and reasonable attorneys’ fees; and
H. The Court grant HP all other and further relief that the Court deems appropriate.
Dated: April 27, 2015
DLA PIPER LLP (US)
By /s/ Sean C. Cunningham
SEAN C. CUNNINGHAM
BRENT K. YAMASHITA
ERIN P. GIBSON
JACOB D. ANDERSON
Attorneys for Defendant
Hewlett-Packard Company
Case 3:15-cv-00333-H-BGS Document 16 Filed 04/27/15
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