Polaris Innovations Limited v. Dell Inc.

Motion to Dismiss for Failure to State a Claim Certain of Dell's and NVIDIA's Counterclaims

W.D. Tex.October 18, 2016

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TEXAS SAN ANTONIO DIVISION POLARIS INNOVATIONS LIMITED, an Irish limited company Plaintiff, v. DELL INC., a Delaware corporation NVIDIA CORPORATION, a Delaware corporation Defendants. Civil No. SA-16-CA-00451-XR JURY TRIAL DEMANDED POLARIS’S MOTION TO DISMISS CERTAIN OF DELL’S AND NVIDIA’S COUNTERCLAIMS Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 1 of 19 i TABLE OF CONTENTS I. INTRODUCTION ...................................................................................................1 II. BACKGROUND STATEMENT OF UNCONTESTED FACTS ...........................3 A. Polaris’s Complaint ......................................................................................3 B. NVIDIA’s Counterclaims ............................................................................5 C. Dell’s Counterclaims ...................................................................................7 III. LEGAL STANDARD ..............................................................................................8 IV. ARGUMENT .........................................................................................................10 A. NVIDIA’s and Dell’s Non-Infringement Counterclaims Plead No Facts and Should Be Dismissed ..........................................................................11 B. NVIDIA’s Seventh Counterclaim Pleads No Facts to Support NVIDIA’s Claims of Invalidity Under 35 U.S.C. §§ 102 and 103 and Should Be Dismissed ...................................................................................................13 C. NVIDIA’s Eighth Through Twelfth Counterclaims Plead No Facts to Support Claims of Invalidity Under 35 U.S.C. § 112 and Should Be Dismissed ...................................................................................................13 V. CONCLUSION ......................................................................................................14 Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 2 of 19 ii TABLE OF AUTHORITIES Cases Affinity Labs of Tex., LLC v. Amazon.com, Inc., Case No. 6:15-cv-00029-WSS, 2015 U.S. Dist. LEXIS 77411 (W.D. Tex. June 12, 2015) ...... 9 Ashcroft v. Iqbal, 556 U.S. 662 (2009) .............................................................................................................. 8, 11 Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) .................................................................................................................... 8 Cheetah Omni LLC v. Samsung Elecs. Am., Inc., Case No. 6:08 CV 279, Dkt. 62 (E.D. Tex. Jan. 29, 2009) ................................................. 10, 12 Doe v. Robertson, 751 F.3d 383 (5th Cir. 2014) ...................................................................................................... 8 e-Watch, Inc. v. ACTi Corp., Case No. SA-12-CA-695, Dkt. 30 (W.D. Tex. April 22, 2013) ..................................... 9, 10, 13 In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323 (Fed. Cir. 2012) .................................................................................................. 9 Med. Components, Inc. v. Osiris Med., Inc., Case No. EP-15-CV-305-PRM, Dkt. 90 (W.D. Tex. July 12, 2016) .............................. 9, 10, 13 Personal Audio, LLC v. Fox Entm’t, Inc., Case No. 2:13CV577-JRG-RSP, Dkt. 29 (E.D. Tex. Aug. 25, 2014) .................................. 9, 12 Tex. Mutual Ins. v. Integrated Claims Sys., LLC, Case No. A-13-CA-1070-LY, Dkt. 47 (W.D. Tex. Aug. 22, 2014) ................................... 10, 14 Rules FED. R. CIV. P. 12(b)(6) .................................................................................................................. 8 Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 3 of 19 1 I. INTRODUCTION NVIDIA and Dell1 responded to Polaris’s2 Complaint in this case by lodging their own counterclaims for declaratory judgment of non-infringement and invalidity. Many of these claims are procedurally insufficient on their face. Each non-infringement claim contains only a short, single-sentence legal conclusion without supporting facts. For example, NVIDIA’s entire pleading to support its claim for judgment that it is not infringing Polaris’s Patent 7,124,325 is: “NVIDIA is not infringing and has not infringed any valid claim of the ‘325 Patent, either literally or under the doctrine of equivalents.” Dkt. 19, ¶ 18. Neither NVIDIA nor Dell identify a single fact to support that conclusion-not a single difference between an accused product and a claim limitation, a factual dispute about NVIDIA’s or Dell’s conduct in making, selling, or promoting the accused prodcuts, or facts about their mental state in actively inducing infringement and willfully infringing Polaris’s patents.3 Similarly, NVIDIA’s entire pleading in asking this Court to take declaratory judgment jurisdiction over its invalidity claims on Polaris’s Patent 6,532,505 is: “One or more claims of the ‘505 Patent is invalid for failure to comply with one or more of the requirements of patentability stated in Title 35, United States Code, and particularly the requirements of one or more of 35 U.S.C. §§ 102, 103, and/or 112.” Dkt. 19, ¶ 38. As with non-infringement, NVIDIA pleads no fact to make that conclusion plausible. NVIDIA’s and Dell’s attempt to invoke this Court’s jurisdiction with boilerplate conclusions harkens back to the days of Form 18 patent pleading when patentees could base 1 NVIDIA Corporation (“NVIDIA”) and Dell Inc. (“Dell”) are collectively referred to herein as “Defendants.” 2 Polaris Innovations Limited (“Polaris”) 3 Polaris requests an oral hearing for this motion and proposes the Court hear this motion at the November 10, 2016, conference already on the Court’s calendar. Polaris acknowledges that this hearing date will not provide Polaris a full week to reply to Defendants’ Opposition. Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 4 of 19 2 complaints on nothing more than identification of accused products, patents, and notice to the defendant, and accused infringers could make mirror-image conclusory assertions of non- infringement and invalidity. But the abrogation of Form 18 on December 1, 2015, ushered in a new era of stringent pleading requirements in patent cases. Courts in this district apply these new requirements to both claims and counterclaims and they dismiss conclusory assertions like NVIDIA’s and Dell’s. Polaris complied with this Court’s standards and identified, in detail, not only the accused products, but pled a factual basis for how every limitation of the asserted claims could be found in NVIDIA’s and Dell’s products for each asserted patent. For example, Count One of the Complaint names an accused product-the NVIDIA Tegra K1 Processor-and provides forty-one citations to the NVIDIA K1 Technical Reference Manual (“Tegra K1 TRM”) explaining how each element of each asserted claim is met. All of the infringement claims were similarly detailed. NVIDIA and Dell had this information and had a full opportunity (including an extension of time on their Answers) to plead factual differences between their products and the claims, and to plead factual bases to support a case of invalidity. Instead, NVIDIA and Dell copied and pasted bare legal conclusions for each patent without any factual support. The Counterclaim Plaintiffs’ deficient pleadings highlight the problem that the abrogation of Form 18 was meant to address. Either NVIDIA and Dell have no plausible factual support for their claims and the claims should be dropped, or NVIDIA and Dell are attempting to conceal the issues they believe are factually supportable so that Polaris must start discovery in the dark. Counterclaim Plaintiffs’ pleadings are legally improper. Interestingly, NVIDIA and Dell are now taking different approaches in their invalidity counterclaim pleadings. Polaris conferred with both NVIDIA and Dell to identify the deficiencies Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 5 of 19 3 in their non-infringement and invalidity pleadings. Today, only hours before Polaris was to file this motion, Dell acknowledged several of the deficiencies in its invalidity counterclaims by promising to file an amended Answer with specific amendments to its Second, Fourth, and Sixth Counterclaims on October 18, 2016. See Smith Decl., Ex. A.4 Polaris is thus not moving to dismiss Dell’s invalidity counterclaims on the understanding that they will be amended promptly. However, NVIDIA declined to address the same deficiencies in its own invalidity counterclaims, and Dell’s proposed amendments highlight the deficiencies in NVIDIA’s existing pleading. Neither Dell nor NVIDIA agreed to amend their non-infringment counterclaims. Accordingly, Polaris respectfully requests this Court dismiss5: • NVIDIA’s First through Sixth Counterclaims (Non-infringement); • NVIDIA’s Seventh Counterclaim with regard to allegations of invalidity under 35 U.S.C. §§ 102, 103, and 112; • NVIDIA’s Eighth through Twelfth Counterclaims with regard to allegations of invalidity under 35 U.S.C. § 112; and • Dell’s First, Third, and Fifth Counterclaims (Non-infringement). II. BACKGROUND STATEMENT OF UNCONTESTED FACTS A. Polaris’s Complaint Polaris filed the Complaint initiating this Action on May 16, 2016. Dkt. 1 (“Complaint”). Polaris’s 81-page Complaint includes allegations of NVIDIA’s infringement of U.S. Patent Nos. 6,532,505 (the “505 Patent”); 7,124,325 (the “325 Patent”); 7,405,993 (the “993 Patent”); 4 The Declaration of Stefani C. Smith [“Smith Decl.”] and exhibits thereto are submitted herewith. 5 Counsel for Polaris and Defendants conferred in good faith to attempt to resolve this matter by agreement. While Dell has provided Polaris with proposed amendments to its invaldity counterclaims, NVIDIA has not offered to amend its invalidity pleadings and both Defendants believe they have adequately pleaded their non-infringement counterclaims and thus oppose this motion. Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 6 of 19 4 7,886,122 (the “122 Patent”); 8,161,344 (the “344 Patent”); and 8,207,976 (the “976 Patent”) (collectively, the “Asserted Patents”), and Dell’s infringement of the 122, 344, and 976 Patents. See id., ¶¶ 51-207. The Complaint describes how the limitations of each claim asserted by Polaris is met by a particular NVIDIA or Dell product. See id. For example, Count One of Polaris’s Complaint accusing NVIDIA’s Tegra K1 Processor of infringing the 505 Patent provides forty- one citations to NVIDIA’s Tegra K1 TRM. Id., ¶¶ 54-63. The Complaint also explains how and why Polaris believes those limitations are met. For example, Polaris’s allegations for Claim 1 of the 505 Patent are summarized in chart form below: U.S. Patent No. 6,532,505 Claim 1 Elements: Polaris’s TRM Specific References Polaris’s Citation(s) “a universal resource access controller” “the memory controller that sorts requests to the DRAM subsystem” Tegra K1 TRM at 643- 44 “coupled to a requesting system” “memory clients” Tegra K1 TRM at 13 “and a resource” “the DRAM subsystem and accompanying buffers” Tegra K1 TRM at 12, 643 “when the requesting system desires access to the resource, the requesting system generates a resource access request” “a memory client request” Tegra K1 TRM at 644 “which is passed to the universal resource controller, which, in turn, uses a specific characteristic operating parameter of the requested resource” “the device geometry or timing parameters of the device” Tegra K1 TRM at 644, 647 “a current state of the requested resource” “the bank queues” Tegra K1 TRM at 644 “and a requested state of the requested resource to generate a corresponding sequenced command suitable for accessing the resource as required by the requesting system” “the ordered commands generated by the row sorter” Tegra K1 TRM at 644 Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 7 of 19 5 Id. ¶ 54. Polaris’s allegations with respect to Dell are similarly detailed. See Complaint, ¶¶ 146- 207. The Complaint also includes allegations of NVIDIA’s and Dell’s acts of inducing and contributing to infringement by others. Complaint, ¶¶ 64-66, 73-75, 84-86, 98-100, 131-133, 141- 143, 157-158, 192-194, 204-205. Polaris served its Complaint on NVIDIA and Dell on July 25, 2016. Dkt. 7. B. NVIDIA’s Counterclaims NVIDIA and Dell each filed an Answer with counterclaims on September 14, 2016. Dkt. 19; 21. NVIDIA filed thirteen counterclaims. Dkt. 19. Its First through Sixth Counterclaims seek declaratory judgment of non-infringement for each of the six patents in suit, and its Seventh through Twelfth seek a finding of invalidity on each patent. Id., ¶¶ 12-64. NVIDIA’s final counterclaim alleges breach of contract. Dkt. 19, ¶¶ 12-77. NVIDIA’s First through Sixth Counterclaims for non-infringement allege no facts. See Dkt. 19, ¶¶ 12-15, 16-19, 20-23, 24-27, 28-31, 32-35. NVIDIA’s non-infringement counterclaims follow the template below: Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 8 of 19 6 Figure 1 - NVIDIA’s Second Counterclaim of Non-Infringement of the 325 Patent Id., ¶¶ 16-19. NVIDIA’s counterclaims for invalidity also allege no facts for many of NVIDIA’s allegations. As shown below, NVIDIA’s Seventh Counterclaim alleges that the 505 Patent is invalid for failure to comply with 35 U.S.C. §§ 102, 103, or 112, yet does not provide any prior art to support its allegations of lack of novelty or obviousness, and does not articulate or factually support a theory of invalidity under section 112: Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 9 of 19 7 Figure 2 - NVIDIA’s Seventh Counterclaim of Invalidity of the 505 Patent Id., ¶¶ 36-39. NVIDIA’s remaining Counterclaims for invalidity each provide a single prior art reference to support NVIDIA’s allegations under 35 U.S.C. §§ 102 and 103 for their respective patents; id., ¶¶ 43, 48, 53, 58, 63; but, like its Seventh Counterclaim, do not articulate a theory or provide factual support regarding its allegations under section 112. Id., ¶¶ 42, 47, 52, 57, 62. C. Dell’s Counterclaims Dell asserts six counterclaims against Polaris. Dkt. 21. Dell’s First, Third, and Fifth Counterclaims allege non-infringement of the 122, 344, and 976 Patents, respectively. Id., ¶¶ 7- 12, 18-23, 29-34. Dell’s Second, Fourth, and Sixth Counterclaims allege invalidity of the 122, 344, and 976 Patents. Id., ¶¶ 13-17, 24-28, 35-39. Like NVIDIA, Dell provides no facts in its non- infringement counterclaims. See id., ¶¶ 7-12, 18-23, 29-34. And, like NVIDIA’s Seventh Counterclaim, Dell’s invalidity counterclaims provide no prior art to support Dell’s contention that Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 10 of 19 8 any of the 122, 344, or 976 Patents are invalid under 35 U.S.C. §§ 102 and 103, and no theory or facts to support invalidity under 35 U.S.C. § 112. See id., ¶¶ 13-17, 24-28, 35-39. On October 18, 2016, Dell provided Polaris with a proposed amendment to its Second, Fourth, and Sixth Counterclaims of invalidity under 35 U.S.C. §§ 102, 103, and 112 for each of the 122, 344, and 976 Patents. See Smith Decl., Ex. A. Dell’s proposed amendment cites a prior art reference for each patent, and identifies claim limitations that it contends lack written description under 35 U.S.C. § 112. See id., ¶¶ 14-15, 26-28, 39-40. Dell has not proposed amendments to its non-infringement counterclaims. III. LEGAL STANDARD To survive a motion to dismiss under Rule 12(b)(6), a claim must state “sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). As the Supreme Court explained in Iqbal, plausibility requires “factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. A pleading that merely offers “labels and conclusions” or “a formulaic recitation of the elements of a cause of action” or a “‘naked assertion’ devoid of ‘further factual enhancement’” does not suffice. Id. Although all well-pleaded facts must be accepted as true and viewed in the light most favorable to the plaintiff, “[a] complaint must fail if it offers only naked assertions devoid of further factual enhancement.” Doe v. Robertson, 751 F.3d 383, 387 (5th Cir. 2014). When pleadings “are no more than conclusions” they “are not entitled to the assumption of truth.” Id. at 387 (quoting Iqbal, 556 U.S. at 679). “To avoid dismissal, the pleadings must show specific facts, not mere conclusory allegations.” Affinity Labs of Tex., LLC v. Amazon.com, Inc., Case No. 6:15-cv-00029- Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 11 of 19 9 WSS, 2015 U.S. Dist. LEXIS 77411, at *9-10 (W.D. Tex. June 12, 2015) (internal quotations and citations omitted). Before December 1, 2015, FRCP Form 18 controlled pleading standards for direct patent infringement and allowed patentees to file complaints devoid of factual specificity. See Med. Components, Inc. v. Osiris Med., Inc., Case No. EP-15-CV-305-PRM, Dkt. 90, at *7-9 (W.D. Tex. July 12, 2016); e-Watch, Inc. v. ACTi Corp., Case No. SA-12-CA-695, Dkt. 30, at *6 (W.D. Tex. April 22, 2013) (“Form 18 of the Federal Rules of Civil Procedures [sic] provides the pleading standard.”) (citing In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1332 (Fed. Cir. 2012)). Form 18 required a patentee to plead only: (1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent; (3) a statement that defendant has been infringing the patent by making, selling, and using the device embodying the patent; (4) a statement that the plaintiff has given the defendant notice of its infringement; and (5) a demand for an injunction and damages. Id. (internal quotations and citations omitted). Moreover, “Form 18 [did] not require a plaintiff to plead facts establishing that each element of an asserted claim is met,” Medical Components, Case No. EP-15-CV-305-PRM, Dkt. 90, at *8, and thus patent plaintiffs pleaded direct patent infringement without the factual specificity now required. Before the abrogation of Form 18, courts in this circuit pointed to factually devoid complaints when denying motions to dismiss counterclaims for non-infringement because it would be unfair to hold defendant-counterclaimants to a higher pleading standard than patent plaintiffs. See e.g., Smith Decl., Ex. B (Personal Audio, LLC v. Fox Entm’t, Inc., Case No. 2:13CV577- JRG-RSP, Dkt. 29, at *2 (E.D. Tex. Aug. 25, 2014) (“Personal Audio asks that the Court require FOX to spell out, at the time of filing its answer, in painstaking factual detail, its entire theory of non-infringement, before Personal Audio has set forth the substance of any theory of infringement. This would be unfair and unreasonable . . . .”) (emphasis in original)); Smith Decl., Ex. C (Cheetah Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 12 of 19 10 Omni LLC v. Samsung Elecs. Am., Inc., Case No. 6:08 CV 279, Dkt. 62, at *4 (E.D. Tex. Jan. 29, 2009) (denying motion to dismiss counterclaims for non-infringement because “[w]hile Samsung’s counterclaims are not factually intense, neither are Cheetah’s own claims of infringement”)). In the post-Form-18 era, patentees must plead direct patent infringement with factual specificity, and courts in this district hold counterclaim plaintiffs to those same heightened standards. See Med. Components, Case No. EP-15-CV-305-PRM, Dkt. 90, at *9 (dismissing declaratory judgment complaint for non-infringement because “[a]lthough Plaintiffs have complied with Form 18’s more lenient standard, this standard no longer controls after December 1, 2015”). Even before the abrogation of Form 18, courts in this district required more than barebones invalidity pleadings to survive a motion to dismiss. See e-Watch, Case No. SA-12-CA-695, Dkt. 30, at *7-8 (requiring defendant-counterclaimant to amend its pleadings because “[d]efendant’s allegations simply list the elements of the claim with providing the requisite guidance in identifying the factual basis for each claim of invalidity”). See also Tex. Mutual Ins. v. Integrated Claims Sys., LLC, Case No. A-13-CA-1070-LY, Dkt. 47, at *14-15 (W.D. Tex. Aug. 22, 2014) (“Merely citing to the sections of Title 35 that may or may not ultimately deem . . . patents valid or invalid fails to allege sufficient facts to state a claim for relief that is plausible on its face.”). IV. ARGUMENT Defendants’ non-infringement counterclaims should be dismissed for failing to state a claim. NVIDIA’s First through Sixth Counterclaims and Dell’s First, Third, and Fifth Counterclaims do not identify a single fact to make their conclusions plausible. Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 13 of 19 11 Likewise, all of NVIDIA’s invalidity counterclaims under 35 U.S.C. § 112 should be dismissed for failing to provide any factual support. NVIDIA’s anticipation and obviousness allegations against the 505 Patent are lacking in the same way and should be stricken. Although Dell’s original counterclaims lacked sufficient bases for its invalidity allegations under 35 U.S.C. §§ 102, 103, and 112, see Dkt. 21, Dell has provided Polaris with proposed amendments to its Second, Fourth, and Sixth counterclaims. See Smith Decl., Ex. A. Therefore, Polaris is not moving on Dell’s Second, Fourth, and Sixth Counterclaims at this time based on the parties’ understanding that Dell will amend its claims in accordance with its proposed amendments. A. NVIDIA’s and Dell’s Non-Infringement Counterclaims Plead No Facts and Should Be Dismissed NVIDIA’s First through Sixth Counterclaims, and Dell’s First, Third, and Fifth Counterclaims recite empty boilerplate conclusions of non-infringement without supporting facts. Each NVIDIA Counterclaim is supported solely by NVIDIA’s copied-and-pasted statement that “NVIDIA is not infringing and has not infringed any valid claim of [any Patent-in-Suit], either literally or under the doctrine of equivalents.” See Dkt. 19, ¶¶ 14, 18, 22, 26, 30, 34. These conclusory allegations are insufficient as a matter of law. Iqbal, 556 U.S. at 678 (“labels and conclusions,” “a formulaic recitation of the elements of a cause of action,” or “naked assertion devoid of further factual enhancement” are insufficient to state a claim). Similarly, Dell’s Counterclaims recite only boilerplate language and no facts: “Dell has not infringed any valid and enforceable claim of [any of the 122, 344, or 967 Patents] literally, directly, contributorily, by way of inducement, under the doctrine of equivalents, and/or via any other mechanisms of liability under the Patent Act.” See Dkt. 21, ¶¶ 10, 21, 32. NVIDIA’s and Dell’s Counterclaims provide no more factual detail than what the Medical Components court found inadequate: “MedComp does not now nor has it ever infringed any valid Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 14 of 19 12 claim of the ‘398 patent, directly or indirectly. MedComp has not contributed to nor induced infringement of the ‘398 patent. MedComp denies any and all claims of liability for alleged patent infringement.” See Med. Components, Case No. EP-15-CV-305-PRM (W.D. Tex. Apr. 8, 2016), Dkt. 63 [First Amended Complaint], ¶ 26. After the court dismissed Medical Components’s claims for non-infringement, Medical Components subsequently refiled its complaint, provided the required factual basis for its claim of non-infringement, addressed each asserted claim, noted what element or limitation was allegedly unmet in its products, and explained why that limitation was unmet. See Med. Components, Case No. EP-15-CV-305-PRM (W.D. Tex. July 22, 2016), Dkt. 95 [Second Amended Complaint], ¶¶ 38, 40, 41, 43, 45, 47. Dell and NVIDIA should likewise be held to this same standard and should match the level of factual support provided by Polaris’s complaint to make Defendants’ allegations of non-infringement plausible. Polaris’s Complaint provides ample factual support and citation to put Defendants on notice for how infringement will be met on each claim limitation. The Complaint details which products are accused of infringement. See Complaint, ¶¶ 52, 53, 70, 71, 79, 80, 90, 91, 104, 105, 137, 138. The Complaint further addresses every element of every asserted claim, and specifies Polaris’s contentions about both NVIDIA’s and Dell’s infringement, including, in many cases, citations to Defendants’ own documentation supporting Polaris’s claims of infringement. See Complaint, ¶¶ 54-63, 72, 81-83, 92-97, 106-130, 139, 140. Neither NVIDIA nor Dell identify facts to contest even a single claim limitation or assertion on indirect or willful infringement. See Dkt. 19, 21. When Form 18 controlled pleading standards, counterclaimants were allowed to mirror the bare-bones patent infringement pleadings in formulating bare-bones non-infringement pleadings. See e.g., Smith Decl., Ex. B (Personal Audio, Case No. 2:13CV577-JRG-RSP, Dkt. 29, at *2); Smith Decl., Ex. C (Cheetah Omni, Case No. 6:08 CV 279, Dkt. 62, at *4). Now, in the post- Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 15 of 19 13 Form-18 era, defendants must mirror the factually-specific pleading requirements when lodging non-infringement claims. See Med. Components, Case No. EP-15-CV-305-PRM, Dkt. 90, at *9. NVIDIA and Dell failed to do so and their non-infringement claims should be dismissed. B. NVIDIA’s Seventh Counterclaim Pleads No Facts to Support NVIDIA’s Claims of Invalidity Under 35 U.S.C. §§ 102 and 103 and Should Be Dismissed NVIDIA’s Seventh Counterclaim, shown in Figure 2 above, is a poster child for the type of invalidity claim that courts in this district have dismissed for failing to state a plausible claim. See e-Watch, Case No. SA-12-CA-695, Dkt. 30, at *7-8 (“simply list[ing] the elements of the claim without providing the requisite guidance in identifying the factual basis for each claim of invalidity” requires amendment). NVIDIA’s Seventh Counterclaim does not provide the requisite facts to state a claim under 35 U.S.C. §§ 102 and 103 because it does not provide even a single piece of prior art. Dkt. 19, ¶¶ 36-39. NVIDIA actually attempted to do more for each of the other five asserted patents, providing at least one prior art reference to support those claims. Compare Dkt. 19, ¶¶ 36-39, with ¶¶ 40-44, 45-49, 50-54, 55-59, 60-64. NVIDIA’s attempt to comply with pleading standards for five of the asserted patents underscores its legal deficiency for the 505 Patent and confirms its Seventh Counterclaim should be dismissed. NVIDIA’s Seventh Counterclaim for invalidity under 35 U.S.C. §§ 102 and 103 should be dismissed. C. NVIDIA’s Eighth Through Twelfth Counterclaims Plead No Facts to Support Claims of Invalidity Under 35 U.S.C. § 112 and Should Be Dismissed NVIDIA’s conclusory allegations of invalidity under 35 U.S.C. § 112 should also be dismissed because they fail to articulate a theory or provide even one fact to support a plausible claim. Again, NVIDIA merely asserts that “one or more claims of [an Asserted Patent] is invalid for failure to comply with” 35 U.S.C. § 112. See Dkt. 19, ¶¶ 38, 42, 47, 52, 57, 62. Like the accused Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 16 of 19 14 infringer in Texas Mutual, NVIDIA’s “allegations of invalidity based on . . . [Section] 112 are pleaded in an [sic] conclusory manner and lack any factual allegations that might state a claim to relief that is plausible on its face.” Tex. Mutual, Case No. A-13-CA-1070-LY, Dkt. 47, at *14. NVIDIA’s allegations of invaldity under 35 U.S.C. § 112 are identical to those in Texas Mutual, Case No. A-13-CA-1070-LY (W.D. Tex. Mar. 24, 2014), Dkt. 19 [First Amended Complaint], ¶¶ 53, 55, and similarly lack “facts supporting [NVIDIA’s] invalidity allegations based on . . . written description, enablement, best mode, and definiteness,” and should likewise be dismissed. See Tex. Mutual, Case No. A-13-CA-1070-LY, Dkt. 47, at *14. Therefore NVIDIA’s Seventh through Twelfth Counterclaims for invalidity under under 35 U.S.C. § 112 should be dismissed. V. CONCLUSION For the reasons given above, Polaris respectfully requests this Court dismiss: • NVIDIA’s First through Sixth Counterclaims (Non-infringement); • NVIDIA’s Seventh Counterclaim (Invalidity) with regard to allegations under 35 U.S.C. §§ 102, 103, and 112; • NVIDIA’s Eighth through Twelfth Counterclaims (Invalidity) with regard to allegations under 35 U.S.C. § 112; and • Dell’s First, Third, and Fifth Counterclaims (Non-infringment). Dated: October 18, 2016 Respectfully submitted by, GONZALEZ, CHISCANO, ANGULO & KASSON PC Henry B. Gonzalez III State Bar No. 00794952 GONZALEZ, CHISCANO, ANGULO & KASSON PC 613 N.W. Loop 410, Suite 800 San Antonio, TX 78216 Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 17 of 19 15 Tel: (210) 569-8500 Email: hbg@gcaklaw.com TENSEGRITY LAW GROUP LLP /s/ Stefani C. Smith Matthew D. Powers CA Bar No. 104795 Paul T. Ehrlich CA Bar No. 228543 Stefani C. Smith CA Bar No. 251305 TENSEGRITY LAW GROUP LLP 555 Twin Dolphin Drive, Suite 650 Redwood Shores, CA 94065 Phone: (650) 802-6000 Fax: (650) 802-6001 Email: matthew.powers@tensegritylawgroup.com paul.ehrlich@tensegritylawgroup.com stefani.smith@tensegritylawgroup.com Attorneys for Plaintiff, Polaris Innovations Limited Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 18 of 19 16 CERTIFICATE OF SERVICE The undersigned hereby certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a) on October 18, 2016, and was served via CM/ECF on all counsel who are deemed to have consented to electronic service. Local Rule CV-5(b)(1). /s/ Stefani C. Smith Stefani C. Smith Case 5:16-cv-00451-XR Document 41 Filed 10/18/16 Page 19 of 19 1 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TEXAS SAN ANTONIO DIVISION POLARIS INNOVATIONS LIMITED, an Irish limited company Plaintiff, v. DELL INC., a Delaware corporation NVIDIA CORPORATION, a Delaware corporation Defendants. Civil No. SA-16-CA-00451-XR JURY TRIAL DEMANDED DECLARATION OF STEFANI C. SMITH IN SUPPORT OF POLARIS’S MOTION TO DISMISS CERTAIN OF DELL’S AND NVIDIA’S COUNTERCLAIMS I, Stefani C. Smith, declare as follows: 1. I am an attorney at the law firm of Tensegrity Law Group LLP, counsel of record for Plaintiff Polaris Innovations Limited (“Polaris”) in the above-captioned matter. I am an attorney in good standing licensed to practice in the State of California and admitted to practice before this Court. I submit this declaration in support of Polaris’s Motion to Dismiss Certain of Dell’s and NVIDIA’s Counterclaims. I am personally familiar with the facts stated herein, and, if called as a witness, could testify competently hereto. 2. Attached hereto as Exhibit A is a true and correct copy of Dell Inc.’s proposed First Amended Answer and Defenses to Plaintiff Polaris Innovations Limited’s Complaint for Patent Infringement. It is my understanding from conferring with Mr. Brady Cox that this is a near final draft of the amended pleading that Dell Inc. intends to file today. 3. Attached hereto as Exhibit B for the Court’s convenience is a true and correct Case 5:16-cv-00451-XR Document 41-1 Filed 10/18/16 Page 1 of 2 2 copy of Docket Item 29 from Personal Audio, LLC v. Fox Entm’t, Inc., Case No. 2:13CV577- JRG-RSP (E.D. Tex. Aug. 25, 2014). 4. Attached hereto as Exhibit C for the Court’s convenience is a true and correct copy of Docket Item 62 from Cheetah Omni LLC v. Samsung Elecs. Am., Inc., Case No. 6:08 CV 279 (E.D. Tex. Jan. 29, 2009). I declare under penalty of perjury that the foregoing is true and correct to the best of my knowledge, and that this declaration is executed on October 18, 2016, in Redwood Shores, CA. /s/ Stefani C. Smith Stefani C. Smith Case 5:16-cv-00451-XR Document 41-1 Filed 10/18/16 Page 2 of 2 EXHIBIT A Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 1 of 39 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TEXAS SAN ANTONIO DIVISION POLARIS INNOVATIONS LIMITED, an Irish limited company Plaintiff, v. DELL INC, a Delaware corporation NVIDIA CORPORATION, a Delaware corporation Defendants. C.A. No. 5:16-cv-00451-XR JURY TRIAL DEMANDED DELL INC.’S FIRST AMENDED ANSWER AND DEFENSES TO PLAINTIFF POLARIS INNOVATIONS LIMITED’S COMPLAINT FOR PATENT INFRINGEMENT Defendant Dell Inc. (“Defendant” or “Dell”) answers the Counterclaims of Plaintiff Polaris Innovations Limited (“Plaintiff” or “Polaris”) as follows: THE PARTIES1 1. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 1 of the Complaint. Dell therefore denies the allegations in Paragraph 1. 2. Admitted. 3. Admitted. 4. Dell admits that it develops and designs personal computers, servers, and tablet computers incorporating and using graphics processors, accelerated processing units, or graphics 1 Dell reproduces the headings contained in Plaintiff’s Complaint for ease of reference only, and by so doing does not admit any allegation that may be contained in those headings. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 2 of 39 2 cards in this District. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 4. 5. Dell admits that it conducts business in Texas and in this District through online sales and advertisements to consumers and through product sales by Dell’s distributors and resellers. Except as expressly admitted, Dell denies each and every allegation in this paragraph. 6. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 6 of the Complaint. Dell therefore denies the allegations in Paragraph 6. 7. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 7 of the Complaint. Dell therefore denies the allegations in Paragraph 7. 8. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 8 of the Complaint. Dell therefore denies the allegations in Paragraph 8. 9. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 9 of the Complaint. Dell therefore denies the allegations in Paragraph 9. 10. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 10 of the Complaint. Dell therefore denies the allegations in Paragraph 10. 11. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 11 of the Complaint. Dell therefore denies the allegations in Paragraph 11. NATURE OF THE ACTION 12. Paragraph 12 contains legal conclusions to which no answer is required. To the extent an answer is required, Dell admits that Plaintiff purports to bring an action for patent infringement against Dell. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 3 of 39 3 13. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 13 of the Complaint. Dell therefore denies the allegations in Paragraph 13. 14. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 14 of the Complaint. Dell therefore denies the allegations in Paragraph 14. 15. Paragraph 15 contains legal conclusions to which no answer is required. To the extent an answer is required, Dell denies the allegation in Paragraph 15. JURISDICTION 16. Dell admits that Defendant’s Complaint purports to arise under the patent laws of the United States Code, Title 35 but denies that it has committed any acts of patent infringement. 17. Admitted. 18. Dell admits, for the purposes of the Complaint addressed herein only, that the Court has personal jurisdiction over the Complaint asserted against Dell. Dell denies the remaining allegations in Paragraph 18. 19. Paragraph 19 contains legal conclusions to which no answer is required. To the extent an answer is required, Dell denies the allegations in Paragraph 19. 20. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 20 of the Complaint. Dell therefore denies the allegations in Paragraph 20. VENUE 21. Dell incorporates paragraphs 1-20 of its First Amended Answer as if fully set forth herein. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 4 of 39 4 22. For the purposes of this action only, Dell does not contest that venue over this action is proper in this District, but denies that it is the most convenient venue and expressly reserves its right to move for transfer to a more convenient venue. Except as expressly admitted, Dell denies the allegation in Paragraph 22. 23. Dell admits it is headquartered in this District at 1 Dell Way, Round Rock, TX 78682, and that Dell has an operation facility in Round Rock, TX. Except as expressly admitted, Dell denies the allegation in this Paragraph 23. 24. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 24 of the Complaint. Dell therefore denies the allegations in Paragraph 24. 25. Dell admits, as stated in Paragraph 23, that it is headquartered in this District. Dell also admits that it is a customer of NVIDIA. The remaining allegations of Paragraph 25 of the Complaint are legal conclusions and/or Dell lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 25. JOINDER 26. Dell incorporates paragraphs 1-25 of its First Amended Answer as if fully set forth herein. 27. For the purposes of this action only, Dell does not contest that joinder is proper. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 27. 28. Dell denies each and every allegation contained in Paragraph 28 of the Complaint. 29. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 29 of the Complaint. Dell therefore denies the allegations in Paragraph 29. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 5 of 39 5 30. Dell denies each and every allegation contained in Paragraph 30 of the Complaint. 31. Dell admits that the page located at https://www.dell.com/learn/us/en/555/solutions/ws-partner-nvidia states, “Dell and NVIDIA,” and believes the page speaks for itself. The remaining allegations of Paragraph 31 of the Complaint are legal conclusions and/ or Dell lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 31. 32. Dell denies each and every allegation contained in Paragraph 32 of the Complaint. 33. As stated in Paragraph 27, for the purposes of this action only, Dell does not contest that joinder is proper. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 33. 34. As stated in paragraphs 27 and 33, for the purposes of this action only, Dell does not contest that joinder is proper. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 34. THE ASSERTED PATENTS 35. Dell admits that a purported copy of United States Patent No. 6,532,505 (“the ’505 Patent”), entitled “Universal Resource Access Controller” and listing March 11, 2003 as its issue date, was attached to the Complaint as Exhibit 1. 36. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 36 of the Complaint. Dell therefore denies the allegations in Paragraph 36. 37. Dell admits that a purported copy of United States Patent No. 7,124,325 (“the ’325 Patent”), entitled “Method and Apparatus for Internally Trimming Output Drivers and Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 6 of 39 6 Terminations in Semiconductor Devices” and listing October 17, 2006 as its issue date, was attached to the Complaint as Exhibit 2. 38. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 38 of the Complaint. Dell therefore denies the allegations in Paragraph 38. 39. Dell admits that a purported copy of United States Patent No. 7,405,993 (“the ’993 Patent”), entitled “Control Component for Controlling a Semiconductor Memory Component in a Semiconductor Memory Module” and listing July 29, 2008 as its issue date, was attached to the Complaint as Exhibit 3. 40. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 40 of the Complaint. Dell therefore denies the allegations in Paragraph 40. 41. Dell admits that a purported copy of United States Patent No. 7,886,122 (“the ’122 Patent”), entitled “Method and Circuit for Transmitting a Memory Clock Signal” and listing February 8, 2011 as its issue date, was attached to the Complaint as Exhibit 4. 42. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 42 of the Complaint. Dell therefore denies the allegations in Paragraph 42. 43. Dell admits that a purported copy of United States Patent No. 8,161,344 (“the ’344 Patent”), entitled “Circuits and Methods for Error Coding Data Blocks” and listing April 17, 2012 as its issue date, was attached to the Complaint as Exhibit 5. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 7 of 39 7 44. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 44 of the Complaint. Dell therefore denies the allegations in Paragraph 44. 45. Dell admits that a purported copy of United States Patent No. 8,207,976 (“the ’976 Patent”), entitled “Circuit” and listing June 26, 2012 as its issue date, was attached to the Complaint as Exhibit 6. 46. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 46 of the Complaint. Dell therefore denies the allegations in Paragraph 46. 47. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 47 of the Complaint. Dell therefore denies the allegations in Paragraph 47. 48. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 48 of the Complaint. Dell therefore denies the allegations in Paragraph 48. 49. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 49 of the Complaint. Dell therefore denies the allegations in Paragraph 49. 50. Dell admits that it received a letter from Plaintiff on or about March 22, 2016 and believes the letter speaks for itself. Dell also admits that Michele Connors responded by email to Polaris’s March 22, 2016 letter. Dell further admits Polaris responded to Dell’s email on April 20, 2016. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 50. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 8 of 39 8 COUNT I: NVIDIA’S [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 6,532,505 51. Dell incorporates paragraphs 1-50 of its First Amended Answer as fully set forth herein. 52. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 52 of the Complaint. Dell therefore denies the allegations in Paragraph 52. 53. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 53 of the Complaint. Dell therefore denies the allegations in Paragraph 53. 54. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 54 of the Complaint. Dell therefore denies the allegations in Paragraph 54. 55. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 55 of the Complaint. Dell therefore denies the allegations in Paragraph 55. 56. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 56 of the Complaint. Dell therefore denies the allegations in Paragraph 56. 57. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 57 of the Complaint. Dell therefore denies the allegations in Paragraph 57. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 9 of 39 9 58. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 58 of the Complaint. Dell therefore denies the allegations in Paragraph 58. 59. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 59 of the Complaint. Dell therefore denies the allegations in Paragraph 59. 60. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 60 of the Complaint. Dell therefore denies the allegations in Paragraph 60. 61. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 61 of the Complaint. Dell therefore denies the allegations in Paragraph 61. 62. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 62 of the Complaint. Dell therefore denies the allegations in Paragraph 62. 63. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 63 of the Complaint. Dell therefore denies the allegations in Paragraph 63. 64. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 64 of the Complaint. Dell therefore denies the allegations in Paragraph 64. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 10 of 39 10 65. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 65 of the Complaint. Dell therefore denies the allegations in Paragraph 65. 66. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 66 of the Complaint. Dell therefore denies the allegations in Paragraph 66. 67. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 67 of the Complaint. Dell therefore denies the allegations in Paragraph 67. 68. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 68 of the Complaint. Dell therefore denies the allegations in Paragraph 68. COUNT II: NVIDIA’S [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 7,124,325 69. Dell incorporates paragraphs 1-50 of its First Amended Answer as if fully set forth herein. 70. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 70 of the Complaint. Dell therefore denies the allegations in Paragraph 70. 71. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 71 of the Complaint. Dell therefore denies the allegations in Paragraph 71. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 11 of 39 11 72. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 72 of the Complaint. Dell therefore denies the allegations in Paragraph 72. 73. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 73 of the Complaint. Dell therefore denies the allegations in Paragraph 73. 74. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 74 of the Complaint. Dell therefore denies the allegations in Paragraph 74. 75. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 75 of the Complaint. Dell therefore denies the allegations in Paragraph 75. 76. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 76 of the Complaint. Dell therefore denies the allegations in Paragraph 76. 77. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 77 of the Complaint. Dell therefore denies the allegations in Paragraph 77. COUNT III: NVIDIA’S [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 7,405,993 78. Dell incorporates paragraphs 1-50 of its First Amended Answer as if fully set forth herein. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 12 of 39 12 79. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 79 of the Complaint. Dell therefore denies the allegations in Paragraph 79. 80. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 80 of the Complaint. Dell therefore denies the allegations in Paragraph 80. 81. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 81 of the Complaint. Dell therefore denies the allegations in Paragraph 81. 82. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 82 of the Complaint. Dell therefore denies the allegations in Paragraph 82. 83. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 83 of the Complaint. Dell therefore denies the allegations in Paragraph 83. 84. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 84 of the Complaint. Dell therefore denies the allegations in Paragraph 84. 85. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 85 of the Complaint. Dell therefore denies the allegations in Paragraph 85. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 13 of 39 13 86. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 86 of the Complaint. Dell therefore denies the allegations in Paragraph 86. 87. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 87 of the Complaint. Dell therefore denies the allegations in Paragraph 87. 88. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 88 of the Complaint. Dell therefore denies the allegations in Paragraph 88. COUNT IV: NVIDIA’S [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 7,886,122 89. Dell incorporates paragraphs 1-50 of its First Amended Answer as fully set forth herein. 90. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 90 of the Complaint. Dell therefore denies the allegations in Paragraph 90. 91. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 91 of the Complaint. Dell therefore denies the allegations in Paragraph 91. 92. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 92 of the Complaint. Dell therefore denies the allegations in Paragraph 92. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 14 of 39 14 93. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 93 of the Complaint. Dell therefore denies the allegations in Paragraph 93. 94. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 94 of the Complaint. Dell therefore denies the allegations in Paragraph 94. 95. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 95 of the Complaint. Dell therefore denies the allegations in Paragraph 95. 96. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 96 of the Complaint. Dell therefore denies the allegations in Paragraph 96. 97. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 97 of the Complaint. Dell therefore denies the allegations in Paragraph 97. 98. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 98 of the Complaint. Dell therefore denies the allegations in Paragraph 98. 99. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 99 of the Complaint. Dell therefore denies the allegations in Paragraph 99. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 15 of 39 15 100. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 100 of the Complaint. Dell therefore denies the allegations in Paragraph 100. 101. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 101 of the Complaint. Dell therefore denies the allegations in Paragraph 101. 102. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 102 of the Complaint. Dell therefore denies the allegations in Paragraph 102. COUNT V: NVIDIA’S [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,161,344 103. Dell incorporates paragraphs 1-50 of its First Amended Answer as if fully set forth herein. 104. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 104 of the Complaint. Dell therefore denies the allegations in Paragraph 104. 105. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 105 of the Complaint. Dell therefore denies the allegations in Paragraph 105. 106. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 106 of the Complaint. Dell therefore denies the allegations in Paragraph 106. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 16 of 39 16 107. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 107 of the Complaint. Dell therefore denies the allegations in Paragraph 107. 108. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 108 of the Complaint. Dell therefore denies the allegations in Paragraph 108. 109. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 109 of the Complaint. Dell therefore denies the allegations in Paragraph 109. 110. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 110 of the Complaint. Dell therefore denies the allegations in Paragraph 110. 111. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 111 of the Complaint. Dell therefore denies the allegations in Paragraph 111. 112. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 112 of the Complaint. Dell therefore denies the allegations in Paragraph 112. 113. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 113 of the Complaint. Dell therefore denies the allegations in Paragraph 113. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 17 of 39 17 114. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 114 of the Complaint. Dell therefore denies the allegations in Paragraph 114. 115. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 115 of the Complaint. Dell therefore denies the allegations in Paragraph 115. 116. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 116 of the Complaint. Dell therefore denies the allegations in Paragraph 116. 117. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 117 of the Complaint. Dell therefore denies the allegations in Paragraph 117. 118. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 118 of the Complaint. Dell therefore denies the allegations in Paragraph 118. 119. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 119 of the Complaint. Dell therefore denies the allegations in Paragraph 119. 120. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 120 of the Complaint. Dell therefore denies the allegations in Paragraph 120. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 18 of 39 18 121. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 121 of the Complaint. Dell therefore denies the allegations in Paragraph 121. 122. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 122 of the Complaint. Dell therefore denies the allegations in Paragraph 122. 123. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 123 of the Complaint. Dell therefore denies the allegations in Paragraph 123. 124. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 124 of the Complaint. Dell therefore denies the allegations in Paragraph 124. 125. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 125 of the Complaint. Dell therefore denies the allegations in Paragraph 125. 126. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 126 of the Complaint. Dell therefore denies the allegations in Paragraph 126. 127. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 127 of the Complaint. Dell therefore denies the allegations in Paragraph 127. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 19 of 39 19 128. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 128 of the Complaint. Dell therefore denies the allegations in Paragraph 128. 129. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 129 of the Complaint. Dell therefore denies the allegations in Paragraph 129. 130. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 130 of the Complaint. Dell therefore denies the allegations in Paragraph 130. 131. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 131 of the Complaint. Dell therefore denies the allegations in Paragraph 131. 132. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 132 of the Complaint. Dell therefore denies the allegations in Paragraph 132. 133. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 133 of the Complaint. Dell therefore denies the allegations in Paragraph 133. 134. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 134 of the Complaint. Dell therefore denies the allegations in Paragraph 134. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 20 of 39 20 135. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 135 of the Complaint. Dell therefore denies the allegations in Paragraph 135. COUNT VI: NVIDIA’S [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,207,976 136. Dell incorporates paragraphs 1-50 in its First Amended Answer as if fully set forth herein. 137. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 137 of the Complaint. Dell therefore denies the allegations in Paragraph 137. 138. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 138 of the Complaint. Dell therefore denies the allegations in Paragraph 138. 139. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 139 of the Complaint. Dell therefore denies the allegations in Paragraph 139. 140. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 140 of the Complaint. Dell therefore denies the allegations in Paragraph 140. 141. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 141 of the Complaint. Dell therefore denies the allegations in Paragraph 141. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 21 of 39 21 142. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 142 of the Complaint. Dell therefore denies the allegations in Paragraph 142. 143. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 143 of the Complaint. Dell therefore denies the allegations in Paragraph 143. 144. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 144 of the Complaint. Dell therefore denies the allegations in Paragraph 144. 145. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 145 of the Complaint. Dell therefore denies the allegations in Paragraph 145. COUNT VII: DELL’S [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 7,886,122 146. Dell incorporates paragraphs 1-50 and 89-100 in its First Amended Answer as if fully set forth herein. 147. Dell denies each and every allegation contained in Paragraph 147 of the Complaint. 148. Dell admits the image in Paragraph 148 of the Complaint can be found at http://www.dell.com/us/p/alienware-13-r2/pd?ref=PF_OC and that Dell sells the Alienware 13 Gaming Laptop. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 148. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 22 of 39 22 149. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegation in Paragraph 149 of the Complaint. Dell therefore denies the allegations in Paragraph 149. 150. Dell denies each and every allegation contained in Paragraph 150 of the Complaint. 151. Dell denies each and every allegation contained in Paragraph 151 of the Complaint. 152. Dell denies each and every allegation contained in Paragraph 152 of the Complaint. 153. Dell denies each and every allegation contained in Paragraph 153 of the Complaint. 154. Dell denies each and every allegation contained in Paragraph 154 of the Complaint. 155. Dell denies each and every allegation contained in Paragraph 155 of the Complaint. 156. Dell admits the webpage provided in Paragraph 156 of the Complaint, http://accessories.us.dell.com/sna/productdetail.aspx?c=us&1=en&s=gen&sku=490-BCGD, lists the Dell 4 GB NVIDIA Quadro K2200 Graphics Card. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 156. 157. Dell denies each and every allegation contained in Paragraph 157 of the Complaint. 158. Dell denies each and every allegation contained in Paragraph 158 of the Complaint. 159. Dell denies each and every allegation contained in Paragraph 159 of the Complaint. 160. Dell denies each and every allegation contained in Paragraph 160 of the Complaint. 161. Dell denies each and every allegation contained in Paragraph 161 of the Complaint. COUNT VIII: DELL’S [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,161,344 162. Dell incorporates paragraphs 1-50 and 103-135 above as if fully set forth herein. 163. Dell denies each and every allegation contained in Paragraph 163 of the Complaint. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 23 of 39 23 164. Dell admits the image in Paragraph 164 of the Complaint can be found at http://www.dell.com/us/p/alienware-13-r2/pd?ref=PF_OC and that Dell sells the Alienware 13 Gaming Laptop. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 164. 165. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegation in Paragraph 165 of the Complaint. Dell therefore denies the allegations in Paragraph 165. 166. Dell denies each and every allegation contained in Paragraph 166 of the Complaint. 167. Dell denies each and every allegation contained in Paragraph 167 of the Complaint. 168. Dell denies each and every allegation contained in Paragraph 168 of the Complaint. 169. Dell denies each and every allegation contained in Paragraph 169 of the Complaint. 170. Dell denies each and every allegation contained in Paragraph 170 of the Complaint. 171. Dell denies each and every allegation contained in Paragraph 171 of the Complaint. 172. Dell denies each and every allegation contained in Paragraph 172 of the Complaint. 173. Dell denies each and every allegation contained in Paragraph 173 of the Complaint. 174. Dell denies each and every allegation contained in Paragraph 174 of the Complaint. 175. Dell denies each and every allegation contained in Paragraph 175 of the Complaint. 176. Dell denies each and every allegation contained in Paragraph 176 of the Complaint. 177. Dell denies each and every allegation contained in Paragraph 177 of the Complaint. 178. Dell denies each and every allegation contained in Paragraph 178 of the Complaint. 179. Dell denies each and every allegation contained in Paragraph 179 of the Complaint. 180. Dell denies each and every allegation contained in Paragraph 180 of the Complaint. 181. Dell denies each and every allegation contained in Paragraph 181 of the Complaint. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 24 of 39 24 182. Dell denies each and every allegation contained in Paragraph 182 of the Complaint. 183. Dell denies each and every allegation contained in Paragraph 183 of the Complaint. 184. Dell denies each and every allegation contained in Paragraph 184 of the Complaint. 185. Dell denies each and every allegation contained in Paragraph 185 of the Complaint. 186. Dell denies each and every allegation contained in Paragraph 186 of the Complaint. 187. Dell denies each and every allegation contained in Paragraph 187 of the Complaint. 188. Dell denies each and every allegation contained in Paragraph 188 of the Complaint. 189. Dell denies each and every allegation contained in Paragraph 189 of the Complaint. 190. Dell denies each and every allegation contained in Paragraph 190 of the Complaint. 191. Dell admits the webpage provided in Paragraph 191 of the Complaint, http://accessories.us.dell.com/sna/productdetail.aspx?c=us&1=en&s=gen&sku=490-BCGD, lists the Dell 4 GB NVIDIA Quadro K2200 Graphics Card and believes the webpage speaks for itself. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 191. 192. Dell denies each and every allegation contained in Paragraph 192 of the Complaint. 193. Dell denies each and every allegation contained in Paragraph 193 of the Complaint. 194. Dell denies each and every allegation contained in Paragraph 194 of the Complaint. 195. Dell denies each and every allegation contained in Paragraph 195 of the Complaint. 196. Dell denies each and every allegation contained in Paragraph 196 of the Complaint. COUNT IX: DELL’S [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,207,976 197. Dell incorporates Paragraphs 1-50 and 136-145 of its First Amended Answer as if fully set forth herein. 198. Dell denies each and every allegation contained in Paragraph 198 of the Complaint. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 25 of 39 25 199. Dell admits the image in Paragraph 199 of the Complaint can be found at http://www.dell.com/us/p/alienware-13-r2/pd?ref=PF_OC and that Dell sells the Alienware 13 Gaming Laptop. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 199. 200. Dell lacks knowledge or information sufficient to form a belief as to the truth of the allegation in Paragraph 200 of the Complaint. Dell therefore denies the allegations in Paragraph 200. 201. Dell denies each and every allegation contained in Paragraph 201 of the Complaint. 202. Dell denies each and every allegation contained in Paragraph 202 of the Complaint. 203. Dell admits the webpage provided in Paragraph 203 of the Complaint, http://accessories.us.dell.com/sna/productdetail.aspx?c=us&1=en&s=gen&sku=490-BCGD, lists the Dell 4 GB NVIDIA Quadro K2200 Graphics Card and believes that the webpage speaks for itself. Except as expressly admitted, Dell denies the remaining allegations in Paragraph 203. 204. Dell denies each and every allegation contained in Paragraph 204 of the Complaint. 205. Dell denies each and every allegation contained in Paragraph 205 of the Complaint. 206. Dell denies each and every allegation contained in Paragraph 206 of the Complaint. 207. Dell denies each and every allegation contained in Paragraph 207 of the Complaint. PRAYER FOR RELIEF To the extent any response is required to any paragraph of Polaris’ “Prayer for Relief,” including without limitation the paragraphs it has labeled (a) through (h), Dell denies that Polaris is entitled to any of the relief sought in its “Prayer for Relief” and denies any allegations contained therein. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 26 of 39 26 DELL’S AFFIRMATIVE DEFENSES Dell asserts the following affirmative defenses. By pleading these defenses, Dell does not in any way agree or concede that Dell has the burden of proof or persuasion on any of these issues. Dell also reserves the right to amend its answer as additional information becomes available and additional defenses become apparent. FIRST AFFIRMATIVE DEFENSE (No Infringement) 208. Dell has not infringed, and does not infringe, under 35 U.S.C. § 271 or any other theory, any valid and enforceable claim of the ’122 patent, the ’344 patent, or the ’976 patent (“the asserted patents”). SECOND AFFIRMATIVE DEFENSE (Invalidity) 209. The claims of the asserted patents are invalid for failing to satisfy one or more of the conditions for patentability set forth in Title 35, United States Code, including without limitation §§ 101, 102, 103, and/or 112. THIRD AFFIRMATIVE DEFENSE (Prosecution History Estoppel) 210. Polaris is estopped from construing or interpreting any valid and enforceable claim of the asserted patents to cover any device manufactured, used, imported, or sold or offered for sale by Dell or any methods used by Dell because of the language in the specification or claims of the patent and/or the proceedings, statements, admissions and representations made before the USPTO by or on behalf of the applicant during the prosecution of the applications upon which the asserted patents issued and/or to which those patents claim priority. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 27 of 39 27 FOURTH AFFIRMATIVE DEFENSE (Waiver, Laches, Estoppel) 211. Polaris claims for relief are barred by the doctrines of waiver, laches, and/or equitable estoppel, including without limitation, to the extent that Polaris delayed filing suit for an unreasonable and inexcusable length of time after it knew or reasonably should have known of its potential claim against Dell and that delay prejudiced Dell. FIFTH AFFIRMATIVE DEFENSE (Failure to Mark) 212. To the extent that Polaris or its licensees failed to mark properly or give notice to Dell under 35 U.S.C. § 287, Polaris is precluded, or limited, from collecting damages from Dell. SIXTH AFFIRMATIVE DEFENSE (Limitation on Damages) 213. Polaris’ recovery for alleged infringement of the asserted patents, if any, is limited pursuant to 35 U.S.C. § 286. SEVENTH AFFIRMATIVE DEFENSE (Prosecution Laches) 214. Polaris’ claims are barred under the doctrine of prosecution laches. EIGHTH AFFIRMATIVE DEFENSE (Standing) 215. Polaris has failed to provide adequate evidence of ownership of the ’122 patent, the ’344 patent, or the ’976 patent, and therefore lacks standing. NINTH AFFIRMATIVE DEFENSE (Failure to State a Claim) 216. Polaris has failed to state a claim upon which relief can be granted. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 28 of 39 28 TENTH AFFIRMATIVE DEFENSE (No Inducement) 217. Polaris has failed to show Dell was aware of the existence of the ’122 patent, the ’344 patent, or the ’976 patent and knew or should have known that their activities would induce infringement, and thus Dell is not liable under Polaris’ inducement claims. ELEVENTH AFFIRMATIVE DEFENSE (No Willfulness) 218. Polaris has failed to show Dell has engaged in egregious and willful misconduct that would support a claim of willful patent infringement. TWELFTH AFFIRMATIVE DEFENSE (Other Defenses Reserved) 219. Dell reserves the right to assert any other legal or equitable defenses that may now or in the future be available to Dell based on discovery, applicable law, or any other factual or legal matter. RESERVATION OF RIGHTS Dell reserves any and all rights to amend its answer, to amend its currently pled defenses, and/or add additional defenses as they become apparent. DELL’S COUNTERCLAIMS Defendant/ Counterclaim Plaintiff Dell Inc. (“Dell”), as and for its counterclaims against Plaintiffs/ Counterclaim Defendants, Polaris Innovations Limited (“Polaris”) states as follows: NATURE OF ACTION 1. This is a Declaratory Judgment action for a declaration of non-infringement, invalidity and unenforceability of U.S. Patent Nos. 7,886,122; 8,161,344; and 8,207,976. 2. Dell is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 1 Dell Way, Round Rock, TX 78682. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 29 of 39 29 3. Polaris asserts in its Complaint that it has its principal place of business at 29 Earlsfort Terrace, Dublin 2, Republic of Ireland. JURISDICTION AND VENUE 4. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338 as an action arising under the Patent Laws, Title 35 of the United States Code, and also under 28 U.S.C. §§ 2201 and 2202 as a declaratory judgment action. 5. By filing its Complaint, Polaris has consented to the personal jurisdiction of this Court. 6. Venue is proper in this district under 28 U.S.C. §§ 1391(b) and 1400. COUNTERCLAIM I (DECLARATION OF NON-INFRINGEMENT OF THE ’122 PATENT) 7. Dell hereby realleges and incorporates by reference paragraphs 1 through 6 above as though fully set forth herein. 8. United States Patent No. 7,886,122 (“the ’122 patent”), states on its face that it was issued by the United States Patent and Trademark Office on February 8, 2011. Polaris claims to own all rights in and to the ’122 patent. 9. Polaris has asserted that Dell infringes the ’122 patent. Thus, an actual, substantial controversy exists between Dell and Polaris concerning Dell’s non-infringement of the ’122 patent. 10. Dell has not infringed any valid and enforceable claim of the ’122 patent literally, directly, contributorily, by way of inducement, under the doctrine of equivalents, and/or via any other mechanisms of liability under the Patent Act. 11. Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. §§ 2201 et seq., Dell is entitled to a declaration that the claims of the ’122 patent are not, and have not been, infringed by Dell. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 30 of 39 30 12. The requested declaratory relief would serve the useful purpose of clarifying the legal issues and resolving Polaris’ claims of infringement. COUNTERCLAIM II (DECLARATION OF INVALIDITY OF THE ’122 PATENT) 13. Dell hereby realleges and incorporates by reference paragraphs 1 through 12 above as though fully set forth herein. 14. One or more claims of the ’122 patent are invalid or void for failing to satisfy the conditions of patentability set forth in Part II of Title 35 of the United States Code, including without limitation, for example, sections 101, 102, 103, and/or 112. For example, U.S. Pat. No. 6,496,445 to Lee, titled “Semiconductor memory device having altered clock frequency for address and/or command signals, and memory modules and system having the same,” issued on December 17, 2002 (“Lee Patent”), and is therefore prior art under at least 35 U.S.C. § 102(a)-(b). The Lee Patent anticipates and/or renders obvious each and every claim of the ’122 Patent. 15. As a further example, the claims of the ’122 Patent do not contain a written description of the invention in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, including without limitation the following claim limitations of the alleged invention: “a frequency of the first clock signal is less than a frequency of the second clock signal,” “separate read data are read,” “separate write data are written,” and “is twice the frequency of the first clock signal.” 16. Polaris has asserted that Dell infringes the ’122 patent. Thus, an actual, substantial controversy exists between Dell and Polaris concerning the invalidity of the ’122 patent. 17. Pursuant to Federal Rules of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., Dell is entitled to a declaration that the claims of the ’122 patent are invalid. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 31 of 39 31 18. The requested declaratory relief would serve the useful purpose of clarifying the legal issues and resolving Polaris’ claims of infringement. COUNTERCLAIM III (DECLARATION OF NON-INFRINGEMENT OF THE ’344 PATENT) 19. Dell hereby realleges and incorporates by reference paragraphs 1 through 6 above as though fully set forth herein. 20. U.S. Patent No. 8,161,344 (“the ’344 patent”), states on its face that it was issued by the United States Patent and Trademark Office on April 17, 2012. Polaris claims to own all rights in and to the ’344 patent. 21. Polaris has asserted that Dell infringes the ’344 patent. Thus, an actual, substantial controversy exists between Dell and Polaris concerning Dell’s non-infringement of the ’344 patent. 22. Dell has not infringed any valid and enforceable claim of the ’344 patent literally, directly, contributorily, by way of inducement, under the doctrine of equivalents, and/or via any other mechanism of liability under the Patent Act. 23. Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., Dell is entitled to a declaration that the claims of the ’344 patent are not, and have not been, infringed by Dell. 24. The requested declaratory relief would serve the useful purpose of clarifying the legal issues and resolving Polaris’ claims of infringement. COUNTERCLAIM IV (DECLARATION OF INVALIDITY OF THE ’344 PATENT) 25. Dell hereby realleges and incorporates by reference paragraphs 1 through 6 and 18 through 23 above as though fully set forth herein. 26. One or more claims of the ’344 patent are invalid or void for failing to satisfy the conditions of patentability set forth in Part II of Title 35 of the United States Code, including Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 32 of 39 32 without limitation, for example, sections 101, 102, 103, and/or 112. For example, U.S. Pat. No. 8,015,473 to Eilert et al., titled “Method, System, and Apparatus for ECC Protection of Small Data Structures,” was filed on December 19, 2006, and issued on September 6, 2011 (“Eilert Patent”), and is therefore prior art under at least 35 U.S.C. § 102(e). The Eilert Patent anticipates and/or renders obvious each and every claim of the ’344 Patent. 27. As a further example, the claims of the ’344 Patent do not contain a written description of the invention in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, including without limitation the following claim limitations of the alleged invention: “a first error coding path adapted to selectively create a first error coding data block in accordance with a first error coding,” “a second error coding path adapted to selectively create a second error coding data block in accordance with a second error coding,” “data arrangement alteration device,” “a parallel input which may receive several data at the same time,” “a means for performing an error coding algorithm,” “a first error coding path adapted to selectively create a first error coding data block in accordance with a first error coding,” “a second error coding path adapted to selectively create a second error coding data block in accordance with a second error coding,” “first means for selectively performing a first error coding so as to create a first error coding data block,” “second means for selectively performing a second error coding so as to create a second error coding data block,” “a means, shared by the two means for performing an error coding algorithm,” “a means for performing a data arrangement alteration algorithm,” “selectively performing a first error coding via a first path so as to create a first error coding data block,” “selectively performing a second error coding via a second path so as to create a second error coding data block,” and “receiving several data at the same time.” Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 33 of 39 33 28. As a further example, the following claim elements may be means-plus-function elements under 35 U.S.C. § 112 ¶ 6 which lack sufficient corresponding structure in the patent specification: “first means for selectively performing a first error coding so as to create a first error coding data block,” “second means for selectively performing a second error coding so as to create a second error coding data block,” “means for performing a data arrangement alteration algorithm,” “a means,” and “a means for performing a data arrangement alteration algorithm.” 29. Polaris has asserted that Dell infringes the ’344 patent. Thus, an actual, substantial controversy exists between Dell and Polaris concerning the invalidity of the ’344 patent. 30. Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., Dell is entitled to a declaration that the claims of the ’344 patent are invalid. 31. The requested declaratory relief would serve the useful purpose of clarifying the legal issues and resolving Polaris’ claims of infringement. COUNTERCLAIM V (DECLARATION OF NON-INFRINGEMENT OF THE ’976 PATENT) 32. Dell hereby realleges and incorporates by reference paragraphs 1 through 6 above as though fully set forth herein. 33. U.S. Patent No. 8,207,976 (“the ’976 patent”) states on its face that it was issued by the United States and Trademark Office on June 26, 2012. Polaris claims to own all rights in and to the ’976 patent. 34. Polaris has asserted that Dell infringes the ’976 patent. Thus, an actual, substantial controversy exists between Dell and Polaris concerning Dell’s non-infringement of the ’976 patent. 35. Dell has not infringed any valid and enforceable claim of the ’976 patent literally, directly, contributorily, by way of inducement, under the doctrine of equivalents, and/or via any other mechanism of liability under the Patent Act. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 34 of 39 34 36. Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., Dell is entitled to a declaration that the claims of the ’976 patent are not, and have not been, infringed by Dell. 37. The requested declaratory relief would serve the useful purpose of clarifying the legal issues and resolving Polaris’ claims of infringement. COUNTERCLAIM VI (DECLARATION OF INVALIDITY OF THE ’976 PATENT) 38. Dell hereby realleges and incorporates by reference paragraphs 1 through 6 and 24 through 34 as though fully set forth herein. 39. One or more claims of the ’976 patent are invalid or void for failing to satisfy the conditions of patentability set forth in Part II of Title 35 of the United States Code, including without limitation, for example, sections 101, 102, 103, and/or 112. For example, U.S. Pat. No. 7,562,285 to Yang et al., titled “Unidirectional Error Code Transfer for a Bidirectional Data Link,” was filed on January 11, 2006, and issued on July 14, 2009 (“Yang Patent”), and is therefore prior art under at least 35 U.S.C. § 102(e). The Yang Patent anticipates and/or renders obvious each and every claim of the ’976 Patent. 40. As a further example, the claims of the ’976 Patent do not contain a written description of the invention in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, including the following claim limitations of the alleged invention: “a controller circuit adapted to cause data stored within the output buffer to be output to the data interface upon reception of a signal, further adapted to cause data stored within the memory core to be output to the input of the output buffer upon reception of a second signal so that the data is stored within the output buffer, and further adapted to cause provision of data received at the command/address Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 35 of 39 35 interface via an address portion thereof to the input of the output buffer upon reception of a third signal so that the data is stored within the output buffer, further adapted to cause data which is stored within the second output buffer to be output to the data interface or the further output pin, further being adapted to cause data which is provided by the EDC circuit to be stored within the second output buffer, and further being adapted to cause data which is received at the command/address interface to be stored within the second output buffer,” and “a synchronization circuit coupled to the command/address interface and to the data interface, and adapted to output a transmit data pattern as the synchronization data on the command/address interface via an address portion thereof, further adapted to receive a receive data pattern from the data interface, and further adapted to perform a training operation on the data interface on the basis of the transmit data pattern and the receive data pattern, the transmit data pattern selected to perform one of a symbol training operation and a frame synchronization operation.” 41. Polaris has asserted that Dell infringes the ’976 patent. Thus, an actual, substantial controversy exists between Dell and Polaris concerning the invalidity of the ’976 patent. 42. Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., Dell is entitled to a declaration that the claims of the ’976 patent are invalid. 43. The requested declaratory relief would serve the useful purpose of clarifying the legal issues and resolving Polaris’ claims of infringement. RESERVATION OF RIGHTS Dell reserves any and all rights to amend its answer, to amend its currently pled defenses, and/or add additional defenses as they become apparent. PRAYER FOR RELIEF WHEREFORE, Dell prays for judgment and seeks relief against Polaris from the Court: Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 36 of 39 36 (a) entering judgment in favor of Dell and against Polaris; (b) dismissing Polaris’ claims with prejudice; (c) finding that Dell does not infringe any claims of the ’122 patent; (d) finding that the claims of the ’122 patent are invalid; (e) finding that Dell does not infringe any claims of the ’344 patent; (f) finding that the claims of the ’344 patent are invalid; (g) finding that Dell does not infringe any claims of the ’976 patent; (h) finding that the claims of the ’976 patent are invalid; (i) finding that this case is exceptional under 35 U.S.C. § 285, and that Dell be awarded its reasonable attorneys’ fees and costs, (j) and such further relief as the Court may deem just and proper. PRAYER FOR RELIEF Dell, under Rule 38 of the Federal Rules of Civil Procedure, requests a trial by jury of any issues so triable by right. Dated: October 18, 2016 Respectfully submitted, /s/ Michael J. Newton Michael J. Newton Texas State Bar No. 24003844 Brady Cox Texas State Bar No. 24074084 ALSTON & BIRD LLP 2828 N. Harwood, Suite 1800 Dallas, TX 75201-2708 Phone: 214-922-3400 Fax: 214-922-3899 mike.newton@alston.com brady.cox@alston.com Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 37 of 39 37 Brianna Kadjo ALSTON & BIRD LLP 1950 University Avenue, 5th Floor East Palo Alto, CA 94303 Phone: 650-838-2000 Fax: 650-838-2001 Brianna.kadjo@alston.com Attorneys for Defendant Dell Inc. Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 38 of 39 38 CERTIFICATE OF SERVICE I hereby certify that on October 18, 2016, I electronically filed the above document with the Clerk of Court using CM/ECF which will send electronic notification of such filing to all registered counsel. /s/ Michael J. Newton Michael J. Newton Case 5:16-cv-00451-XR Document 41-2 Filed 10/18/16 Page 39 of 39 EXHIBIT B Case 5:16-cv-00451-XR Document 41-3 Filed 10/18/16 Page 1 of 4 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION PERSONAL AUDIO, LLC v. FOX ENTERTAINMENT, INC. § § § § § Case No. 2:13CV577-JRG-RSP Lead Case ORDER ON MOTION TO STRIKE Before the Court is Plaintiff Personal Audio’s Motion to Strike Defendant Fox Entertainment, Inc.’s (“FOX”) affirmative defenses pursuant to Federal Rule of Civil Procedure 12(f) (Dkt. 12, referred to herein as the “Motion”). “Federal Rule of Civil Procedure 8(a)(2) requires only ‘a short and plain statement of the claim showing that the pleader is entitled to relief,’ in order to ‘give the defendant fair notice of what the . . . claim is and the grounds upon which it rests.’” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (U.S. 2007) (citing Conley v. Gibson, 355 U.S. 41, 47, 78 S. Ct. 99, 2 L. Ed. 2d 80 (1957)). Personal Audio challenges FOX’s affirmative defenses and counterclaims as being insufficient, and asks this Court to strike FOX’s defenses and counterclaims under Rule 12(f) of the Federal Rules of Civil Procedure. Specifically, Personal Audio challenges FOX’s first affirmative defense, which reads “[t]he ’504 Patent is invalid under 35 U.S.C. §§ 101, 102, 103, and/or 112.” Personal Audio further challenges FOX’s second affirmative defense, which states that “FOX does not infringe any valid claim of the ‘504 Patent either literally or under the doctrine of equivalents.” Personal Audio also challenges generally FOX’s third and fourth affirmative defenses, which in Personal Audio’s own words “deal with supposed deficiencies in Plaintiff’s case,” FOX’s fifth affirmative defense, which states “Plaintiff’s claims for damages Case 2:13-cv-00577-JRG-RSP Document 29 Filed 08/25/14 Page 1 of 3 PageID #: 228Case 5:16 cv-00451-XR Document 41-3 Filed 10/18/16 Page 2 of 4 - 2 - and costs are statutorily limited, at least, by 35 U.S.C. §§ 286, 287, and/or 288.”and FOX’s sixth affirmative defense, for which “[n]o facts are pleaded.” (Mot. at 3-4.) The Court finds no merit to Personal Audio’s argument with regard to FOX’s first, third, fourth, and sixth affirmative defenses, as Personal Audio is clearly on notice as to the substance of those contentions - as evidenced by its own characterization of the defenses recited therein. (See generally id.) Adopting the standard Personal Audio suggests would lead to absurd results by implementing a double standard which imposes a heightened pleading requirement on only one side (Defendant) in a patent case. As an example, Personal Audio asks that the Court require FOX to spell out, at the time of filing its answer, in painstaking factual detail, its entire theory of noninfringement, before Personal Audio has set forth the substance of any theory of infringement. This would be unfair and unreasonable, and the Court finds it highly doubtful that such a result was the Supreme Court’s goal when deciding the seminal cases regarding pleading requirements. See Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 1949-50 (2009) (quoting Twombly, 550 U.S. at 555). With regard to FOX’s second affirmative defense, the Court observes that a reasonable person would likely read it as setting forth a standard noninfringement affirmative defense. The Court observes, however, that FOX bears the responsibility for any potential vagueness or dual interpretation present in its answer. Similarly, the Court is also not convinced that FOX’s fourth affirmative defense should be struck under Rule 12. Similarly, FOX’s fifth affirmative defense appears, on this record, to give reasonable notice to Personal Audio of FOX’s contentions. Notably, Personal Audio does not contend that it is not on notice as to the substance of FOX’s defense, but instead appears to argue that FOX’s position is without legal merit. (Mot. at 3.) This is not properly addressed in the context of a Case 2:13-cv-00577-JRG-RSP Document 29 Filed 08/25/14 Page 2 of 3 PageID #: 229Case 5:16 cv-00451-XR Document 41-3 Filed 10/18/16 Page 3 of 4 - 3 - motion to strike. The Court notes that the pleading standards detailed above do not excuse a party from complying with the requirements of Federal Rule of Civil Procedure 11. Thus, a party is not simply permitted to throw every defense imaginable into an answer and ‘see what sticks.’ There is no evidence before the Court at this time that any party here has made a statement in a pleading that violates Rule 11. If newly developed facts lead a party to believe that they no longer have a good faith basis for a previously pled claim, counterclaim, or defense is reasonable, the party should promptly remove it from the case. For the reasons set forth above, the Court DENIES Personal Audio’s Motion to Strike FOX’s Affirmative Defenses (Dkt. 12). Case 2:13-cv-00577-JRG-RSP Document 29 Filed 08/25/14 Page 3 of 3 PageID #: 230Case 5:16 cv-00451-XR Document 41-3 Filed 10/18/16 Page 4 of 4 EXHIBIT C Case 5:16-cv-00451-XR Document 41-4 Filed 10/18/16 Page 1 of 6 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION CHEETAH OMNI LLC Plaintiff, vs. SAMSUNG ELECTRONICS AMERICA, INC., and MITSUBISHI DIGITAL ELECTRONICS AMERICA, INC., Defendants. § § § § § § § CASE NO. 6:08 CV 279 § § § § MEMORANDUM OPINION AND ORDER Before the Court is Cheetah Omni’s Motion to Dismiss Counterclaims and Affirmative Defenses of Samsung and Mitsubishi Pursuant to Federal Rules of Civil Procedure 8(a)(2), 9(b), and 12(b)(6) (Docket No. 29). Having considered the parties’ written submissions, the Court GRANTS IN PART AND DENIES IN PART the motion. BACKGROUND Cheetah accuses Samsung and Mitsubishi of infringing U.S. Patent Nos. 7,116,862 and 7,339,714. Specifically, Cheetah claims Samsung’s and Mitsubishi’s “light engines” used in certain rear-projection televisions infringe the patents in suit. Cheetah moves to dismiss Defendants’ inequitable conduct, invalidity, and non-infringement counterclaims and defenses claiming they are insufficiently pled and fail to state grounds for relief. ANALYSIS Cheetah argues Defendants’ inequitable conduct claims and defenses fail to state a claim under Rule 12(b)(6) because there was no duty to disclose the prior art at issue. Patent applicants Case 5:16-cv-00451-XR Document 41-4 Filed 10/18/16 Page 2 of 6 2 owe a “duty of candor and good faith” to the PTO. Bruno Indep. Living Aids, Inc. v. Acorn Mobility Srvs., Ltd., 394 F.3d 1348, 1351 (Fed. Cir. 2005). Inequitable conduct is a breach of this duty and occurs when the applicant fails to disclose material information with an intent to deceive or mislead the PTO. Id. As to the inequitable conduct claims regarding the ‘714 patent, Cheetah contends that one piece of prior art that was allegedly withheld-the ‘862 patent (the other patent-in-suit)-was considered by the examiner as indicated on page 2 of the ‘714 patent. Cheetah argues that since the ‘862 patent was considered by the examiner, it cannot form the basis of an inequitable conduct claim. Defendants do not specifically respond to this argument. “When a reference was before the examiner, whether through the examiner’s search or the applicant’s disclosure, it cannot be deemed to have been withheld from the examiner.” Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1564, 1582 (Fed. Cir. 1991). The ‘862 patent is cited on page 2 of the ‘714 patent as having been considered by the examiner. Accordingly, the Court grants the motion as to Defendants’ claims that failure to disclose the ‘862 patent to the examiner was inequitable conduct. As to the remaining inequitable conduct claims, the parties dispute whether there was a duty to disclose the art at issue. Cheetah contends there was no duty to disclose some of the prior art because it was cumulative to art that was considered by the examiner. As to the remaining prior art, Cheetah argues there is no legal duty to cite Office Actions, responses, or prior art from other pending applications before the PTO. There was a duty to disclose the art if the art was material. See Bruno Indep. Living Aids, 394 F.3d at 1351. Whether the art at issue was material can be argued at summary judgment or trial, after the Court has become familiar with the patent and the technology at issue. Attempting to determine materiality at this early stage would be premature. The Court will not pre-try Defendants’ inequitable conduct case in a motion to dismiss. Accordingly, Cheetah’s Case 5:16-cv-00451-XR Document 41-4 Filed 10/18/16 Page 3 of 6 3 motion to dismiss on this ground is denied. Cheetah argues the inequitable conduct claims and defenses should be dismissed since they are not sufficiently pled under Rule 9(b) as Defendants either have not shown materiality or intent to deceive. Federal Circuit law governs the adequacy of inequitable conduct allegations. Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Solutions, 482 F.3d 1347, 1356 (Fed. Cir. 2007); MacLean-Fogg Co. v. Eaton Corp., 2:07cv-472 (Docket No. 45 at 2), 2008 WL 941967 at *1(E.D. Tex. April 7, 2008) (Davis, J.). Inequitable conduct allegations must be pled with particularity as required under Federal Rule of Civil Procedure 9(b). See id. (citing Ferguson Beauregard/Logic Controls, Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1344 (Fed. Cir. 2003)); see also FED. R. CIV. P. 9(b). “The degree of particularity required is that which will give the opposing party sufficient notice to prepare an appropriate response.” Stowe Woodward, L.L.C. v. Sensor Prods., Inc., 230 F.R.D. 463, 470 (W.D. Va. 2005). Defendants pled facts that include who committed the inequitable conduct, what prior art was withheld, that the prior art was material, that it was known to those who withheld it, and that it was intentionally withheld during prosecution. This is sufficient under Rule 9(b) to give Cheetah sufficient notice to prepare an appropriate response. The Court denies the motion as to this ground. Cheetah argues counts 1-4 of Samsung’s counterclaims, which allege non-infringement and invalidity, should be dismissed under Rule 8(a)(2) because they do not meet the Rule’s pleading requirements. Federal Rule of Civil Procedure 8(a)(2) requires “a short and plain statement of the claim showing that the pleader is entitled to relief.” Cheetah contends that Samsung’s counterclaims do not meet Rule 8's requirements under Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007). However, Bell Atlantic did not change Rule 8's pleading requirement. McZeal v. Sprint Nextel Case 5:16-cv-00451-XR Document 41-4 Filed 10/18/16 Page 4 of 6 4 Corp., 501 F.3d 1353, 1357 n.4 (Fed. Cir. 2008); PA Advisors, LLC v. Google Inc., 2:07-cv-480, Docket No. 170 at 11, 2008 WL 4136426 at *6 (E.D. Tex. Aug. 8, 2008) (Folsom, J.). Similar to its Rule 8 argument, Cheetah argues counts 1-4 of Samsung’s counterclaims should also be dismissed under Rule 12(b)(6) because Cheetah contends that it cannot defend these claims since Cheetah does not know the factual basis for them. While Samsung’s counterclaims are not factually intense, neither are Cheetah’s own claims of infringement: “11. [14] Defendants have infringed and are infringing the ‘862 [‘714] patent, either directly, by inducing others to infringe, and/or contributorily, by making, using, offering for sale, selling, and/or importing in the United States certain rear projection DLP televisions.” Amended Complaint (Docket No. 7) at 3, 4. Cheetah does not identify which claims are infringed, which products infringe, or how. Nor has this Court required a plaintiff to plead infringement that specifically. Yet, Cheetah argues Samsung should be held to a different pleading standard than Cheetah. The Court will not do so. Samsung’s pleadings are sufficient under both Rule 8 and Rule 12. Just as Samsung will learn the details of Cheetah’s infringement theories through Cheetah’s Patent Rule 3-1 and 3-2 disclosures, Cheetah will learn the details of Samsung’s invalidity theories through Samsung’s Patent Rule 3-3 and 3-4 disclosures, which were served January 13, 2009. As Cheetah already alleges that Samsung infringes the patents- in-suit, there is no merit to Cheetah’s argument that it cannot form a defense to Samsung’s non- infringement counterclaims. Accordingly, Cheetah’s motion to dismiss on this ground is denied. Finally, Cheetah argues that any affirmative defenses of unenforceability, non-infringement, and invalidity should be held to the same standards as counterclaims on the same issues. When determining the sufficiency of affirmative defenses, courts will apply the same pleading requirements as applied to complaints. Woodfield v. Bowman, 193 F.3d 354, 362 (5th Cir. 1999). The Court’s Case 5:16-cv-00451-XR Document 41-4 Filed 10/18/16 Page 5 of 6 5 rulings on Defendants’ counterclaims applies equally to Defendants’ affirmative defenses. CONCLUSION The Court GRANTS IN PART AND DENIES IN PART Cheetah’s motion to dismiss. Case 5:16-cv-00451-XR Document 41-4 Filed 10/18/16 Page 6 of 6 1 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TEXAS SAN ANTONIO DIVISION POLARIS INNOVATIONS LIMITED, an Irish limited company Plaintiff, v. DELL INC., a Delaware corporation NVIDIA CORPORATION, a Delaware corporation Defendants. Civil No. SA-16-CA-00451-XR JURY TRIAL DEMANDED ORDER GRANTING PLAINTIFF’S MOTION TO DISMISS CERTAIN OF DEFENDANTS’ COUNTERCLAIMS The Court, having considered Plaintiff Polaris Innovations Limited’s (“Polaris”) Motion to Dismiss Certain of Defendant Dell Inc.’s (“Dell”) and Defendant NVIDIA Corporation’s (“NVIDIA”) Counterclaims, finds that the motion should be GRANTED. Accordingly, it is hereby ORDERED that: Defendant NVIDIA’s First through Sixth Counterclaims for non-infringment are dismissed; NVIDIA’s Seventh Counterclaim for invalidity under 35 U.S.C. §§ 102, 103, and 112 is dismissed; NVIDIA’s Eighth through Twelfth Counterclaims for invalidity under 35 U.S.C. § 112 are dismissed; and Defendant Dell’s First, Third, and Fifth Counterclaims for non-infringement are dismissed. SO ORDERED. Case 5:16-cv-00451-XR Document 41-5 Filed 10/18/16 Page 1 of 2 2 Dated: THE HONORABLE XAVIER RODRIGUEZ UNITED STATES DISTRICT COURT Case 5:16-cv-00451-XR Document 41-5 Filed 10/18/16 Page 2 of 2