Roland Corporation v. Inmusicbrands, Inc.

NOTICE OF MOTION AND MOTION to Dismiss Amended Counterclaims and Strike Invalidity Affirmative Defense

C.D. Cal.February 17, 2017

4831-1129-6835.1 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Victor de Gyarfas (State Bar No. 171950) email: vdegyarfas@foley.com Sandeep Deol (State Bar No. 285545) email: sdeol@foley.com FOLEY & LARDNER LLP 555 South Flower Street, Suite 3500 Los Angeles, CA 90071-2411 Telephone: 213-972-4500 Facsimile: 213-486-0065 Attorneys for Plaintiff ROLAND CORPORATION UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION ROLAND CORPORATION, a Japanese corporation Plaintiff, v. INMUSICBRANDS, INC., a Florida Corporation, Defendant. Case No: 2:16-cv-6256 CBM (AJWx) PLAINTIFF’S NOTICE OF MOTION AND MOTION TO DISMISS AMENDED COUNTERCLAIMS AND STRIKE INVALIDITY AFFIRMATIVE DEFENSE; MEMORANDUM OF POINTS AND AUTHORITIES Date: March 21, 2017 Time: 10:00 a.m. Judge: Hon. Consuelo B. Marshall Ctrm: 2 Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 1 of 19 Page ID #:628 i 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Table of Contents I. INTRODUCTION ........................................................................................... 1 II. FACTUAL BACKGROUND ......................................................................... 1 A. Dismissal Of Defendant’s Original Counterclaims And Affirmative Defenses ................................................................................................ 1 B. Defendant’s Amended Counterclaims .................................................. 2 C. Defendant’s Invalidity Affirmative Defense ........................................ 3 III. APPLICABLE LEGAL STANDARDS ......................................................... 3 A. Motions To Dismiss And Rule 8(a)(2) Pleading Of Claims For Relief3 B. Motions To Strike ................................................................................. 4 C. Pleading Rule 8(c) Affirmative Defenses ............................................. 5 D. Patent Invalidity .................................................................................... 7 (1) Anticipation ............................................................................... 7 (2) Obviousness ............................................................................... 7 (3) 35 U.S.C. § 112 ......................................................................... 8 IV. DEFENDANT’S COUNTERCLAIMS LACK AN ADEQUATE FACTUAL BASIS TO SATISFY THE APPLICABLE PLEADING STANDARDS AND SHOULD BE DISMISSED .......................................... 8 V. DEFENDANT’S INVALIDITY AFFIRMATIVE DEFENSE IS PLEADED INADEQUATELY AND SHOULD BE STRICKEN .................................. 11 VI. DEFENDANT’S INVALIDITY COUNTERCLAIMS AND AFFIRMATIVE DEFENSE SHOULD BE STRICKEN WITH PREJUDICE ...................................................................................... 11 VII. CONCLUSION ............................................................................................. 12 Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 2 of 19 Page ID #:629 i 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES Page(s) Federal Cases Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313 (Fed Cir. 2015) ............................................................................. 9 Asghari-Kamrani v. United Services Automobile Association, No. 2:15cv478, 2016 WL 1253533 (E.D. Va. Mar. 22, 2016) ...................... 9, 10 Ashcroft v. Iqbal, 556 U.S. 662 (2009) ............................................................................... 4, 5, 6, 10 Atlas IP, LLC v. Exelon Corp., 189 F. Supp. 3d 768, 775 (N.D. Ill. 2016) ....................................................... 3, 9 Atlas IP LLC v. Pac. Gas & Elec. Co., No. 15-5469, 2016 WL 1719545 (N.D. Cal. Mar. 9, 2016) ................................. 9 Audionics System, Inc. v. AAMP of Florida, Inc., No. CV 12-10763 MMM, 2013 WL 12129652 (C.D. Cal. Nov. 19, 2013) ..................................................................................................................... 5 Barnes v. AT & T Pension Benefit Plan-Nonbargained Program, 718 F. Supp. 2d 1167 (N.D. Cal. 2010) ............................................................... 5 BlackBerry Ltd. v. Typo Products LLC, Case No. 3:14-cv-00023-WHO, 2014 WL 1867009 (N.D. Cal. May 8, 2014)......................................................................................................... 5 Circ-Cell Skincare, LLC v. Simon, No. 2:15-cv-6061-CBM, 2016 WL 5922671 (C.D. Cal. Apr. 6, 2016) (Marshall, J.) ........................................................................................ 3, 11 CTF Dev., Inc. v. Penta Hospitality, LLC, Case No. 3:09-cv-02429-WHA, 2009 WL 3517617 (N.D. Cal. Oct. 26, 2009) ....................................................................................................... 6 Daniels-Hall v. Nat’l Educ. Ass’n, 629 F.3d 992 (9th Cir. 2010) ................................................................................ 4 DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006) ............................................................................ 8 Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 3 of 19 Page ID #:630 ii 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 e.Digital Corp. v. iBaby Labs, Inc., No. 15-5790, 2016 WL 4427209 (N.D. Cal. Aug. 22, 2016) ............................ 10 Gibson Brands, Inc. v. John Hornby Skewes & Co., No. CV 14-00609 DDP SSX, 2014 WL 4187979 (C.D. Cal. Aug. 22, 2014) ............................................................................................................... 6 Graham v. John Deere Co., 383 U.S. 1 (1966) ........................................................................................... 7, 10 J & J Sports Prod., Inc. v. Ramirez Bernal, 2014 WL 2042120 (E.D. Cal. May 16, 2014) ...................................................... 7 Jacobson v. Persolve, LLC, Case No. 5:14-cv-00735-LHK, 2014 WL 4090809 (N.D. Cal. Aug. 19, 2014) ...................................................................................................... 5 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ............................................................................................. 8 Miller v. Ghirardelli Chocolate Co., No. C 12-04936 LB, 2013 WL 3153388 (N.D. Cal. June 19, 2013) ................... 6 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) ......................................................................................... 8 Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ............................................................................ 7 Newcal Indus. v. Ikon Office Solution, 513 F.3d 1038 (9th Cir. 2008) .............................................................................. 4 PageMelding, Inc. v. ESPN, Inc., No. C 11-06263 WHA, 2012 WL 3877686 (N.D. Cal. Sept. 6, 2012) ..................................................................................................................... 6 Powertech Tech., Inc. v. Tessera, Inc., No. C 10-945 CW, 2012 WL 1746848 (N.D. Cal. May 16, 2012) ...................... 6 Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345 (Fed. Cir. 2016) ............................................................................ 7 Qarbon.com Inc. v. eHelp Corp., 315 F. Supp. 2d 1046 (N.D. Cal. 2004) ............................................................... 8 Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 4 of 19 Page ID #:631 iii 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Raindance Techs. Inc. v. 10x Genomics, Inc., No. 15-152, 2016 WL 927143 (D. Del. Mar. 4, 2016) ........................................ 9 Ramirez v. Ghilotti Bros. Inc., 941 F. Supp. 2d 1197 (N.D. Cal. 2013) ............................................................... 5 Roland Corp. v. Inmusicbrands, Inc., No.: 2:16-cv-06256-CBM-AJWx, 2017 U.S. Dist. LEXIS 17571 (C.D. Cal. Jan. 26, 2017) ...................................................................................... 2 Scripps Research Institute v. Illumina, Inc., No. 16-661, 2016 WL 6834024 (S.D. Cal. Nov. 21, 2016) ............................... 10 Shroyer v. New Cingular Wireless Servs., Inc., 622 F.3d 1035 (9th Cir. 2010) .............................................................................. 4 Simmons v. Navajo Cty., Ariz., 609 F.3d 1011 (9th Cir. 2010) .............................................................................. 7 Sliding Door Co. v. KLS Doors, LLC, No. EDCV 13-00196 JGB, 2013 WL 2090298 (C.D. Cal. May 1, 2013) ..................................................................................................................... 8 Starr v. Baca, 652 F.3d 1202 (9th Cir. 2011) .............................................................................. 4 State of Cal. Dep’t of Toxic Substances Control v. Alco Pac., Inc., 217 F. Supp. 2d 1028 (9th Cir. 2002) ................................................................... 5 Stillman v. Novartis Consumer Health, Inc., No. CV11-05603 RGK, 2012 WL 10906608 (C.D. Cal. Feb. 6, 2012) ................................................................................................................... 11 TeleSign Corp. v. Twilio, Inc., No. 16-2106, 2016 WL 4703873 (C.D. Cal. Aug. 3, 2016) ............................... 10 U Haul Int’l, Inc. v. Lumbermens Mut. Cas. Co., 348 F. App’x 208 (9th Cir. 2009) ......................................................................... 7 Ujhelyi v. Vilsack, Case No. 4:12-cv-04282-JSW, 2013 WL 6174491 (N.D. Cal. Nov. 25, 2013) ...................................................................................................... 5 Whittlestone, Inc. v. Handi-Craft Co., 618 F.3d 970 (9th Cir. 2010) ................................................................................ 4 Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 5 of 19 Page ID #:632 iv 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Wilson v. Hewlett-Packard Co., 668 F.3d 1136 (9th Cir. 2012) .............................................................................. 4 Wright’s Well Control Services, LLC v. Oceaneering International, Inc., No. 15-1720, 2017 WL 568781 (E.D. La. Feb. 13, 2017) ................................. 10 Other State Cases Dion v. Fulton Friedman & Gullace LLP, Case No. 3:11-2727-SC, 2012 WL 160221 (N.D. Cal. Jan. 17, 2012) ..................................................................................................................... 7 Figueroa v. Stater Bros. Markets, No. CV 13-3364 FMO .......................................................................................... 5 Federal Statutes 35 U.S.C. § 102 ...................................................................................................... 7, 8 35 U.S.C. §§ 102, 103 ............................................................................................... 3 35 U.S.C. § 103 .......................................................................................................... 8 35 U.S.C. § 103(a) ..................................................................................................... 7 35 U.S.C. § 112 ................................................................................................ 3, 8, 11 Fed. R. Civ. P. 8(a) .................................................................................................... 3 Fed. R. Civ. P. 8(a)(2)................................................................................................ 3 Fed. R. Civ. P. 8(c) ................................................................................................ 5, 6 Fed. R. Civ. P. 8(c)(1)................................................................................................ 5 Fed. R. Civ. P. 12(b)(6) ............................................................................................. 3 Fed. R. Civ. P. 12(f) ................................................................................................... 4 Fed. R. Civ. P. 12(b)(6) ............................................................................................. 3 Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 6 of 19 Page ID #:633 4831-1129-6835.1 i 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TO DEFENDANT AND ITS ATTORNEYS OF RECORD: PLEASE TAKE NOTICE that, on March 21, 2017 at 10:00 a.m. or as soon thereafter as the matter may be heard in the above-identified Court, located at 350 W. 1st Street, Courtroom # 8B, 8th Floor, Plaintiff will and hereby does move this Court to dismiss Defendant’s Amended counterclaims pursuant to Fed. R. Civ. P. 12(b)(6) and strike Defendant’s invalidity affirmative defense pursuant to Fed. R. Civ. P. 12(f). The basis for this motion is that Defendant’s pleading of its counterclaims and affirmative defense fails to meet the pleading standards articulated by the Supreme Court in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662, 129 S. Ct. 1937 (2009) because Defendant’s allegations do not allege a sufficient factual basis. This motion is made following the conference of counsel, pursuant to Local Rule 7-3, which was held on February 8, 2017.1 This Motion is based on this Notice, the Memorandum of Points and Authorities herein, the pleadings on file in this action, and such further argument and evidence as the Court may entertain. Respectfully submitted, Dated: February 17, 2017 /s/ Victor de Gyarfas Victor de Gyarfas FOLEY & LARDNER LLP Attorneys for Plaintiff ROLAND CORPORATION 1 During the meet and confer, Plaintiff’s counsel asked Defendant’s counsel whether Defendant would agree to amend in order to avoid motion practice. Defendant’s counsel stated that it would check with Defendant, but Defendant’s counsel has not further responded and has not attempted to amend. Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 7 of 19 Page ID #:634 1 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MEMORANDUM OF POINTS AND AUTHORITIES I. INTRODUCTION This Court dismissed Defendant’s original Counterclaims and most of its affirmative defenses because they did not provide fair notice. Defendant’s Amended Counterclaims for invalidity and invalidity affirmative defenses do not fix the problem. Defendant has still not stated a plausible claim for invalidity. Defendant’s insufficient allegations prevent Roland from being able to respond adequately to Defendant’s invalidity claims and defenses. Defendant’s counterclaims should therefore be dismissed. This is now the second time Defendant has attempted to allege invalidity counterclaims and affirmative defenses. Consistent with other decisions of the Central District of California, Defendant’s amended invalidity counterclaims should be dismissed, and the affirmative defense should be stricken, with prejudice. II. FACTUAL BACKGROUND A. Dismissal Of Defendant’s Original Counterclaims And Affirmative Defenses On August 19, 2016 Plaintiff filed a detailed complaint alleging infringement of eight U.S. patents (Doc. 1). Defendant InMusic Brands, Inc. (“Defendant” or “InMusic”) did not challenge the sufficiency of the complaint, and two months later, on October 24, 2016, filed its Answer and Counterclaims (Doc. 22). Defendant’s Counterclaims were each of the form: Upon information and belief, the patent fails to meet statutory requirements and/or all of the limitations of the purported invention claimed in the [Asserted Patents] are present in prior art references that were available sufficiently prior so as to render each asserted claim of the [Asserted Patents] invalid for failure to Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 8 of 19 Page ID #:635 2 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 comply with the patent laws, including, but not limited to, 35 U.S.C. §§ 102, 103 and/or 112. This Court dismissed all of Defendant’s Counterclaims and most of its affirmative defenses were stricken, with leave to amend. Roland Corp. v. Inmusicbrands, Inc., No.: 2:16-cv-06256-CBM-AJWx, 2017 U.S. Dist. LEXIS 17571, at *6 (C.D. Cal. Jan. 26, 2017). The invalidity counterclaims were “conclusory allegations” which “fail to give Plaintiff fair notice of the basis of Defendant's Counterclaim.” Id. at *4. Similarly, the Court found: “Defendant fails to provide Plaintiff with fair notice of the basis of its Third Affirmative Defense re: invalidity . . . Defendant's Third and Seventh Affirmative Defenses are each based on a single conclusory allegation made ‘upon information and belief,’ and not supported by any other alleged facts specific to this case.” Id. at *5. B. Defendant’s Amended Counterclaims In its Amended Answer and Counterclaims (Doc. 44, Ex. 1), Defendant again attempted to plead invalidity counterclaims against each of the asserted patents, but again merely made conclusory allegations which fail to give Plaintiff fair notice of Defendant’s Counterclaim. Specifically, for each of the asserted patents, Defendant merely pleads: The [Asserted] Patent fails to meet statutory requirements for patentability and all of the limitations of the purported invention claimed in the [Asserted] Patent are present in prior art references, including, without limitation, [Reference 1] alone or in combination with [Reference 2], that were available sufficiently prior so as to render each asserted claim of the [Asserted] Patent invalid [sic] anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. See Amended Counterclaims ¶¶ 9, 11, 13, 15, 17, 19, 21, 23. Defendant’s pleading is similar in format to its initial pleading, with the exception that it Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 9 of 19 Page ID #:636 3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 identifies two references for each asserted patent. Defendant did not identify any specific claim that the alleged prior art references invalidate or even a single claim limitation allegedly disclosed anywhere in the references. Additionally, Defendant does not identify any basis to combine the two references. C. Defendant’s Invalidity Affirmative Defense Similar to its inadequate pleading of its counterclaims, Defendant’s first Amended Affirmative Defense pleads invalidity based on the same alleged prior art identified in the Amended Counterclaims. See “First Defense” pp. 8-9, Doc. 44. Defendant actually pleads slightly more in its affirmative defense than it does in its counterclaims, in that the affirmative defenses identify asserted claims. Defendant also alleges the asserted patents “are invalid for failure to comply with the conditions and requirements for patentability specified in 35 U.S.C. §§ 102, 103 and/or 112.” Defendant, however, pleads no facts at all regarding invalidity under 35 U.S.C. § 112. III. APPLICABLE LEGAL STANDARDS A. Motions To Dismiss And Rule 8(a)(2) Pleading Of Claims For Relief Federal Rule of Civil Procedure 8(a)(2) requires counterclaims to include “a short and plain statement of the claim showing that the pleader is entitled to relief.” See Circ-Cell Skincare, LLC v. Simon, No. 2:15-cv-6061-CBM (MRWx), 2016 WL 5922671, at *1 (C.D. Cal. Apr. 6, 2016) (Marshall, J.). A counterclaim that fails to meet that standard is subject to dismissal under Federal Rule of Civil Procedure 12(b)(6), which allows a court to dismiss for “failure to state a claim upon which relief can be granted.” Id. All patent complaints filed after December 1, 2015 are subject to the normal pleading standards of Federal Rule of Civil Procedure 8(a). Atlas IP, LLC v. Exelon Corp., 189 F. Supp. 3d 768, 775 (N.D. Ill. 2016). Under Rule 12(b)(6) of the Federal Rules of Civil Procedure, a motion to Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 10 of 19 Page ID #:637 4 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 dismiss for failure to state a claim may be granted only when there is no cognizable legal theory to support the claim or when the complaint lacks sufficient factual allegations to state a facially plausible claim for relief. Shroyer v. New Cingular Wireless Servs., Inc., 622 F.3d 1035, 1041 (9th Cir. 2010). In evaluating the sufficiency of a complaint's factual allegations, the court must accept as true all well-pleaded material facts alleged in the complaint and construe them in the light most favorable to the non-moving party. Wilson v. Hewlett-Packard Co., 668 F.3d 1136, 1140 (9th Cir. 2012); Daniels-Hall v. Nat'l Educ. Ass'n, 629 F.3d 992, 998 (9th Cir. 2010). To be entitled to a presumption of truth, allegations in a complaint “may not simply recite the elements of a cause of action, but must contain sufficient allegations of underlying facts to give fair notice and to enable the opposing party to defend itself effectively.” Starr v. Baca, 652 F.3d 1202, 1216 (9th Cir. 2011). All reasonable inferences from the factual allegations must be drawn in favor of the pleading party. Newcal Indus. v. Ikon Office Solution, 513 F.3d 1038, 1043 n.2 (9th Cir. 2008). The court need not, however, credit the pleading party’s legal conclusions that are couched as factual allegations. Ashcroft v. Iqbal, 556 U.S. 662, 678-79 (2009). The “[f]actual allegations must be enough to raise a right to relief above the speculative level.” Id. at 663. “Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Id. at 678. “While legal conclusions can provide the framework of a complaint, they must be supported by factual allegations.” Id. B. Motions To Strike Federal Rule of Civil Procedure 12(f) provides that a court “may strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” Fed. R. Civ. P. 12(f). The role of a Rule 12(f) motion to strike is to avoid the expense of time and money that results from litigating “spurious issues” by discarding those issues in advance of trial. Whittlestone, Inc. v. Handi- Craft Co., 618 F.3d 970, 973 (9th Cir. 2010) (quoting Fantasy, Inc. v. Fogerty, 984 Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 11 of 19 Page ID #:638 5 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 F.2d 1524, 1527 (9th Cir. 1993), rev'd on other grounds, 510 U.S. 517 (1994)). “A defense is insufficiently pled if it fails to give the plaintiff fair notice of the nature of the defense.” Barnes v. AT & T Pension Benefit Plan-Nonbargained Program, 718 F. Supp. 2d 1167, 1170 (N.D. Cal. 2010); see also Roe, 289 F.R.D. at 608(“The defendant must articulate the affirmative defense clearly enough that the plaintiff is not a victim of unfair surprise.”) In determining whether to grant a motion to strike, a district court views the pleadings in a light most favorable to the non-moving party, and "resolves any doubt as to the relevance of the challenged allegations" in that party's favor. State of Cal. Dep't of Toxic Substances Control v. Alco Pac., Inc., 217 F. Supp. 2d 1028, 1033 (9th Cir. 2002). C. Pleading Rule 8(c) Affirmative Defenses Rule 8(c) addresses affirmative defenses and requires that a party “affirmatively state any avoidance or affirmative defense” in the responsive pleading. Fed. R. Civ. P. 8(c)(1). Neither the United States Supreme Court nor the Ninth Circuit has determined what standard should be used to determine the sufficiency of a defendant's affirmatives defenses, and there is a split among district courts, but “most district courts in this circuit agree that the heightened pleading standard of Twombly and Iqbal . . . is now the correct standard to apply to affirmative defenses.” Ramirez v. Ghilotti Bros. Inc., 941 F. Supp. 2d 1197, 1204 (N.D. Cal. 2013); see also Figueroa v. Stater Bros. Markets, No. CV 13-3364 FMO JEMX, 2013 WL 4758231, at *3 (C.D. Cal. Sept. 3, 2013); Jacobson v. Persolve, LLC, Case No. 5:14-cv-00735-LHK, 2014 WL 4090809, at *5-6 (N.D. Cal. Aug. 19, 2014); BlackBerry Ltd. v. Typo Products LLC, Case No. 3:14-cv- 00023-WHO, 2014 WL 1867009, at *5 (N.D. Cal. May 8, 2014); Ujhelyi v. Vilsack, Case No. 4:12-cv-04282-JSW, 2013 WL 6174491, at *2 (N.D. Cal. Nov. 25, 2013). This court should adopt the heightened pleading standard of Twombly and Iqbal for affirmative defenses. The Central District decision in Audionics System, Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 12 of 19 Page ID #:639 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Inc. v. AAMP of Florida, Inc., No. CV 12-10763 MMM (JEMx), 2013 WL 12129652, at * 5 (C.D. Cal. Nov. 19, 2013) recently provided a thorough discussion of the appropriate pleading standards to apply to affirmative defenses and concluded that applying the heightened pleading standard to affirmative defenses is consistent with the language of Rule 8(c) and promotes fairness and efficiency. See also PageMelding, Inc. v. ESPN, Inc., No. C 11-06263 WHA, 2012 WL 3877686, at *3 (N.D. Cal. Sept. 6, 2012) (applying the Iqbal-Twombly standard in a patent case and striking affirmative defenses); Powertech Tech., Inc. v. Tessera, Inc., No. C 10-945 CW, 2012 WL 1746848, at *4-5 (N.D. Cal. May 16, 2012) (same). Under the Twombly and Iqbal standard, “the simple listing of a series of conclusory statements asserting the existence of an affirmative defense without stating a reason why that affirmative defense might exist is not sufficient.” Miller v. Ghirardelli Chocolate Co., No. C 12-04936 LB, 2013 WL 3153388, at *3 (N.D. Cal. June 19, 2013) (internal quotation marks omitted). The courts that have applied this standard require the defendant to allege enough facts in its answer to make the affirmative defense viable on its face. See Gibson Brands, Inc. v. John Hornby Skewes & Co., No. CV 14-00609 DDP SSX, 2014 WL 4187979, at *4 (C.D. Cal. Aug. 22, 2014). This heightened standard “serves to weed out the boilerplate listing of affirmative defenses which is commonplace in most defendant's pleadings.” Id. After Iqbal, “the burden is on the defendant to proffer sufficient facts and law to support an affirmative defense, and not on the plaintiff to gamble on interpreting an insufficient defense in the manner defendant intended.” CTF Dev., Inc. v. Penta Hospitality, LLC, Case No. 3:09-cv-02429-WHA, 2009 WL 3517617, at *7-8 (N.D. Cal. Oct. 26, 2009). “Just as a plaintiff's complaint must allege enough supporting facts to nudge a legal claim across the line separating plausibility from mere possibility, a defendant's pleading of affirmative defenses Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 13 of 19 Page ID #:640 7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 must put a plaintiff on notice of the underlying factual bases of the defense.” Dion v. Fulton Friedman & Gullace LLP, Case No. 3:11-2727-SC, 2012 WL 160221, at *2 (N.D. Cal. Jan. 17, 2012). The Ninth Circuit has stated that "[t]he key to determining the sufficiency of pleading an affirmative defense is whether it gives plaintiff fair notice of the defense." Simmons v. Navajo Cty., Ariz., 609 F.3d 1011, 1023 (9th Cir. 2010) (citation omitted); see also U Haul Int'l, Inc. v. Lumbermens Mut. Cas. Co., 348 F. App'x 208, 210 (9th Cir. 2009). “Merely reciting a legal doctrine, without alleging facts supporting the doctrine's application in the case, fails to provide fair notice of the affirmative defense.” See J & J Sports Prod., Inc. v. Ramirez Bernal, 2014 WL 2042120, at *6 (E.D. Cal. May 16, 2014). D. Patent Invalidity The only counterclaims and affirmative defenses challenged in this motion are Defendant’s counterclaims and affirmative defenses asserting invalidity. (1) Anticipation “A patent is invalid for anticipation under 35 U.S.C. § 102 if a single prior art reference discloses each and every limitation of the claimed invention.” Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345 (Fed. Cir. 2016). Anticipation requires “that the reference describe not only the elements of the claimed invention, but also that it describe those elements ‘arranged as in the claim[.]’ ” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir .2008)). (2) Obviousness A patent is invalid for obviousness “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). Obviousness is a legal conclusion based on underlying facts. Graham v. Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 14 of 19 Page ID #:641 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 John Deere Co., 383 U.S. 1, 17 (1966). Underlying factual inquiries include: (i) the scope and content of the prior art; (ii) the differences between the prior art and the claims at issue; (iii) the level of ordinary skill in the field of the invention; and (iv) relevant secondary considerations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). As part of the obviousness inquiry, there must be a showing as to whether a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and whether there would have been a reasonable expectation of success in doing so. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006). (3) 35 U.S.C. § 112 35 U.S.C. § 112 specifies multiple requirements for patentability, including written description, enablement, and definiteness. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2128 (2014). IV. DEFENDANT’S COUNTERCLAIMS LACK AN ADEQUATE FACTUAL BASIS TO SATISFY THE APPLICABLE PLEADING STANDARDS AND SHOULD BE DISMISSED As noted in Roland’s first motion to dismiss, numerous cases have dismissed counterclaims almost identical to Defendant’s initial pleading. See e.g., Sliding Door Co. v. KLS Doors, LLC, No. EDCV 13-00196 JGB, 2013 WL 2090298, at *4 (C.D. Cal. May 1, 2013); Qarbon.com Inc. v. eHelp Corp., 315 F. Supp. 2d 1046, 1050-1051 (N.D. Cal. 2004). In its amended pleading Defendant has done just slightly more than its initial pleading by identifying two references and alleging the legal conclusion that “all of the limitations of the purported invention claimed in the [Asserted] Patent are present in prior art references, including, without limitation, [Reference 1] alone or in combination with [Reference 2], that were available sufficiently prior so as to render each asserted claim of the [Asserted] Patent invalid [sic] anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103.” Defendant, however, fails to Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 15 of 19 Page ID #:642 9 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 identify a factual basis for why any limitation of any claim is found in any reference. Roland is unaware of a case addressing Defendant’s exact conclusory pleading, but cases in the analogous context of pleading patent infringement are instructive. Just as anticipation requires a showing that every claim element is found in a prior art reference, patent infringement requires a showing that every claim element is found in an accused product. See Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1319 (Fed Cir. 2015). Accordingly, the required showings for patent invalidity and patent infringement are symmetrical. After the abrogation of Form 18, effective December 1, 2015, a patentee must plead a factual basis sufficient to “permit a court to infer that the accused product infringes each element of at least one claim.” Atlas IP, LLC v. Exelon Corp., 189 F. Supp. 3d 768, 775 (N.D. Ill. 2016). For example, in Asghari-Kamrani v. United Services Automobile Association, No. 2:15cv478, 2016 WL 1253533, at *1 (E.D. Va. Mar. 22, 2016), Plaintiff pleaded infringement by identifying specific claims and alleging Defendant infringed those claims through its website, http://www.usaa.com, and “four specific features.” Plaintiff, however, did not identify a factual basis for the presence of every claim limitation in the website. The court found that the complaint was deficient because it failed to specify which features of the accused website correspond to specific claim limitations. Id. at *3. The Court went on to state: “Without knowing what features of their website correspond to these entities, [Defendant] cannot adequately respond to Plaintiffs’ allegations of infringement.” Id. Numerous other cases after December 1, 2015 also hold similarly.2 Failure 2 See Raindance Techs. Inc. v. 10x Genomics, Inc., No. 15-152, 2016 WL 927143, at *2 (D. Del. Mar. 4, 2016) (dismissing patent claim because complaint did not make allegations comparing limitations of patent with elements of defendant's product); Atlas IP LLC v. Pac. Gas & Elec. Co., No. 15-5469, 2016 WL 1719545, Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 16 of 19 Page ID #:643 10 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 to plead a factual basis for each claim limitation subjects a claim to dismissal. Here, Defendant’s identification of alleged prior art references is analogous to Plaintiff’s identification of a website in Asghari-Kamrani. Just as the Plaintiff in Asghari-Kamrani did not identify specific claim elements, Defendant does not even identify a single claim element of any claim of any asserted patent, let alone identify a factual basis for how each claim element is disclosed in the prior art. Just as in Asghari-Kamrani, Defendant’s inadequate pleading leaves Roland in a situation where it cannot adequately respond to Defendant’s invalidity allegations. Defendant has not put Roland on fair notice of the basis of its Counterclaims. After Iqbal and Twombly, and the legion of cases dismissing patent infringement claims that do not plead a factual basis for the existence of every element, Defendant’s pleading of invalidity is inadequate and should be dismissed. Additionally, with respect to obviousness, Defendant fails to plead any factual basis regarding the motivation to combine the references and Defendant fails to plead any factual basis concerning any of the Graham factors. The counterclaims should be dismissed on this basis also. at *5 (N.D. Cal. Mar. 9, 2016) (dismissing direct infringement claim because complaint made no allegations relating to a necessary element and a necessary limitation of the claim); TeleSign Corp. v. Twilio, Inc., No. 16-2106, 2016 WL 4703873, at *4 (C.D. Cal. Aug. 3, 2016) (noting that under Twombly and Iqbal a “plaintiff must still plausibly allege that a defendant's product or products practice all elements of at least one patent claim”) (citations omitted); e.Digital Corp. v. iBaby Labs, Inc., No. 15-5790, 2016 WL 4427209, at *3-4 (N.D. Cal. Aug. 22, 2016) (applying “each of the limitations” standard); Scripps Research Institute v. Illumina, Inc., No. 16-661, 2016 WL 6834024, at *5 (S.D. Cal. Nov. 21, 2016) (“[T]he Court joins several other courts in holding that in order to properly plead direct infringement under Twombly and Iqbal, a plaintiff must plausibly allege that a defendant directly infringes each limitation in at least one asserted claim.”) (citations omitted); Wright’s Well Control Services, LLC v. Oceaneering International, Inc., No. 15-1720, 2017 WL 568781, at *4 (E.D. La. Feb. 13, 2017) (“simply putting defendants on notice that their product allegedly infringes at least one of the claims within [Plaintiff’s] patents, without more, does not satisfy the plausibility standard.”). Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 17 of 19 Page ID #:644 11 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V. DEFENDANT’S INVALIDITY AFFIRMATIVE DEFENSE IS PLEADED INADEQUATELY AND SHOULD BE STRICKEN As discussed above, with respect to anticipation and obviousness, Defendant fails to plead any facts showing how the claim elements are disclosed in the alleged prior art references and has not put Roland on fair notice of its invalidity affirmative defense. Further, with respect to alleged invalidity under 35 U.S.C. § 112, Defendant does no more than recite the statute. Defendant does not identify any factual basis for why any claim is invalid under any of the multiple provisions of § 112. Defendant already knew from the Court’s January 26, 2017 Order that such a formulaic recitation of a statute was inadequate, but made the same allegation again anyway. Defendant’s invalidity affirmative defense should be stricken again. VI. DEFENDANT’S INVALIDITY COUNTERCLAIMS AND AFFIRMATIVE DEFENSE SHOULD BE STRICKEN WITH PREJUDICE Judges in the Central District of California have repeatedly dismissed claims with prejudice after an inadequate amended pleading was filed. See Circ-Cell Skincare, 2016 WL 5922671, at *6 (“The Court GRANTS Circ-Cell’s Motion to Dismiss Count I of Melanie Simon’s Second Amended Counterclaims. This is Ms. Simon’s second attempt to allege a violation of the tort of intentional interference with prospective economic advantage. Therefore, the Court grants Circ-Cell’s Motion with prejudice.”); Stillman v. Novartis Consumer Health, Inc., No. CV11- 05603 RGK (CWx), 2012 WL 10906608, at *4 (C.D. Cal. Feb. 6, 2012) (dismissing indirect infringement claims with prejudice). Here, Defendant had more than ample opportunity to plead invalidity properly and has put the Court and Roland through two motions to dismiss. Defendant’s invalidity counterclaims and affirmative defenses should be dismissed with prejudice. Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 18 of 19 Page ID #:645 12 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 VII. CONCLUSION Defendant has not pleaded facts sufficient to put Roland on fair notice with respect to its invalidity counterclaims and affirmative defenses. The Court should dismiss all of the counterclaims and strike the invalidity affirmative defenses with prejudice. Dated: February 17, 2017 /s/ Victor de Gyarfas Victor de Gyarfas FOLEY & LARDNER LLP Attorneys for Plaintiff ROLAND CORPORATION Case 2:16-cv-06256-CBM-AJW Document 46 Filed 02/17/17 Page 19 of 19 Page ID #:646 EXHIBIT 1 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 1 of 21 Page ID #:647 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 DOLL AMIR & ELEY LLP GREGORY L. DOLL (SBN 193205) gdoll@dollamir.com PAUL M. TORRES (SBN 240590) ptorres@dollamir.com 1888 Century Park East, Suite 1850 Los Angeles, California 90067 Tel: 310.557.9100 Fax: 310.557.9101 HINCKLEY, ALLEN & SNYDER, LLP CRAIG M. SCOTT (admitted pro hac vice) cscott@hinckleyalllen.com CHRISTINE K. BUSH (admitted pro hac vice) cbush@hinckleyalllen.com REBECCA F. BRIGGS (admitted pro hac vice) rbriggs@hinckleyalllen.com 100 Westminster Street, Suite 1500 Providence, Rhode Island 02903 Tel: 401.274.2000 Fax: 401.277.9600 UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA ROLAND CORPORATION, A JAPANESE CORPORATION, PLAINTIFF, V. INMUSIC BRANDS, INC., A FLORIDA CORPORATION, DEFENDANT. Case No. 2:16-CV-06256-CBM-AJW The Hon. Consuelo B. Marshall AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF Complaint served: 9/2/16 Current response date: 9/23/16 NEW RESPONSE DATE: 02/03/17 Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 1 of 20 Page ID #:602 EXHIBIT 1 Page 13 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 2 of 21 Page ID #:648 2 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendant inMusic Brands, Inc. (“inMusic”) responds to Plaintiff Roland Corporation’s (“Roland”) Complaint as follows: JURISDICTION AND VENUE 1. This paragraph contains conclusions of law for which no response is required. To the extent a response is required, denied. 2. This paragraph contains conclusions of law for which no response is required. To the extent a response is required, denied and Defendant specifically denies committing acts of infringement in this jurisdiction. 3. This paragraph contains conclusions of law for which no response is required. To the extent a response is required, denied. THE PARTIES 4. InMusic lacks knowledge or information sufficient to form a belief as to the truth of the allegations and, therefore, denies the same. 5. Admitted that inMusic is a Florida corporation with a principal place of business in Cumberland, Rhode Island and is the last registered owner of the U.S. trademark “Alesis,” but otherwise denies the remaining allegations contained in paragraph 5 of the Complaint. 6. Denied. GENERAL ALLEGATIONS 7. InMusic lacks knowledge or information sufficient to form a belief as to the truth of the allegations and, therefore, denies the same. 8. InMusic lacks knowledge or information sufficient to form a belief as to the truth of the allegations and, therefore, denies the same. 9. InMusic admits that U.S. Patent No. 7,385,135 (the “’135 Patent”) is entitled “Electronic percussion instrumental system and percussion detecting apparatus Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 2 of 20 Page ID #:603 EXHIBIT 1 Page 14 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 3 of 21 Page ID #:649 3 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 therein,” but lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations and, therefore, denies the same. 10. InMusic admits that U.S. Patent No. 6,921,857 (the “’857 Patent”) is entitled “Electronic percussion instrumental system and percussion detecting apparatus therein,” but lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations and, therefore, denies the same. 11. InMusic admits that U.S. Patent No. 6,756,535 (the “’535 Patent”) is entitled “Electronic percussion instrumental system and percussion detecting apparatus therein,” but lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations and, therefore, denies the same. 12. InMusic admits that U.S. Patent No. 6,271,458 (the “’458 Patent”) is entitled “Electronic percussion instrumental system and percussion detecting apparatus therein,” but lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations and, therefore, denies the same. 13. InMusic admits that U.S. Patent No. 6,121,538 (the “’538 Patent”) is entitled “Electronic percussion instrumental system and percussion detecting apparatus therein,” but lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations and, therefore, denies the same. 14. InMusic acknowledges that U.S. Patent No. 6,881,885 (the “’885 Patent”) is entitled “Electronic pad with vibration isolation features,” but lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations and, therefore, denies the same. 15. InMusic acknowledges that U.S. Patent No. 6,632,989 (the “’989 Patent”) is entitled “Electronic pad with vibration isolation features,” but lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations and, therefore, denies the same. Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 3 of 20 Page ID #:604 EXHIBIT 1 Page 15 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 4 of 21 Page ID #:650 4 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 16. InMusic acknowledges that U.S. Patent No. 7,459,626 (the “’626 Patent”) is entitled “Apparatus and method for detecting displacement of a movable member of an electronic musical instrument,” but lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations and, therefore, denies the same. 17. Denied. 18. InMusic admits that it received a letter from Roland’s counsel on or about March 11, 2011, the contents of which speaks for itself, and further admits that inMusic responded to that correspondence and denied all substantive allegations. To the extent the allegations of this paragraph differ from the terms of the letter referenced in paragraph 18, they are denied, and inMusic denies the allegations of infringement. 19. InMusic admits that it received a letter from Roland’s counsel on or about February 3, 2015, the contents of which speaks for itself, and further admits that inMusic responded to that correspondence and denied all substantive allegations. To the extent the allegations of this paragraph differ from the terms of the letter referenced in paragraph 19, they are denied, and inMusic denies the allegations of infringement. 20. Denied. FIRST CAUSE OF ACTION PATENT INFRINGEMENT, 35 U.S.C. § 271 21. InMusic incorporates by reference its responses to the allegations contained in Paragraphs 1-20 of the Complaint as though fully set forth herein. 22. InMusic admits that Roland purports to assert a claim for patent infringement, but otherwise denies the remaining allegations of paragraph 22 of the Complaint. Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 4 of 20 Page ID #:605 EXHIBIT 1 Page 16 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 5 of 21 Page ID #:6 1 5 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 The ‘135 Patent 23. Claim 1 of the ‘135 Patent speaks for itself. To the extent the allegations of this paragraph differ from the language of claim 1 of the ‘135 Patent, they are denied. 24. Denied. 25. Denied. 26. Denied. 27. Denied. The ‘857 Patent 28. Claim 1 of the ‘857 Patent speaks for itself. To the extent the allegations of this paragraph differ from the language of claim 1 of the ‘857 Patent, they are denied. 29. Denied. 30. Denied. 31. Denied. 32. Denied. The ‘535 Patent 33. Claim 1 of the ‘535 Patent speaks for itself. To the extent the allegations of this paragraph differ from the language of claim 1 of the ‘535 Patent, they are denied. 34. Denied. 35. Denied. 36. Denied. 37. Denied. Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 5 of 20 Page ID #:606 EXHIBIT 1 Page 17 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 6 of 21 Page ID #:652 6 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 The ‘458 Patent 38. Claim 6 of the ‘458 Patent speaks for itself. To the extent the allegations of this paragraph differ from the language of claim 6 of the ‘458 Patent, they are denied. 39. Denied. 40. Denied. 41. Denied. 42. Denied. The ‘538 Patent 43. Claim 1 of the ‘538 Patent speaks for itself. To the extent the allegations of this paragraph differ from the language of claim 1 of the ‘538 Patent, they are denied. 44. Denied. 45. Denied. 46. Denied. 47. Denied. The ‘885 Patent 48. Claim 30 of the ‘885 Patent speaks for itself. To the extent the allegations of this paragraph differ from the language of claim 30 of the ‘885 Patent, they are denied. 49. Denied. 50. Denied. 51. Denied. 52. Denied. Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 6 of 20 Page ID #:607 EXHIBIT 1 Page 18 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 7 of 21 Page ID #:653 7 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 The ‘989 Patent 53. Claim 1 of the ‘989 Patent speaks for itself. To the extent the allegations of this paragraph differ from the language of claim 1 of the ‘989 Patent, they are denied. 54. Denied. 55. Denied. 56. Denied. 57. Denied. The ‘626 Patent 58. Claim 3 of the ‘626 Patent speaks for itself. To the extent the allegations of this paragraph differ from the language of claim 3 of the ‘626 Patent, they are denied. 59. Denied. 60. Denied. 61. Denied. 62. This paragraph contains conclusions of law for which no response is required. To the extent a response is required, inMusic lacks knowledge or information sufficient to form a belief as to the truth of the allegations and, therefore, denies the same. 63. Denied. 64. Denied. 65. Denied. 66. Denied. 67. Denied. Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 7 of 20 Page ID #:608 EXHIBIT 1 Page 19 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 8 of 21 Page ID #:654 8 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PRAYER FOR RELIEF InMusic denies that Roland is entitled to the relief requested in its Complaint, and specifically denies each and all of the allegations and prayers for relief contained in paragraphs A-I of Roland’s Complaint. AFFIRMATIVE DEFENSES AND OTHER DEFENSES Further answering Roland’s Complaint, and as additional defenses thereto, inMusic asserts the following additional defenses, without assuming the burden of proof when the burden of proof on any issue would otherwise rest with the Roland. inMusic expressly reserves the right to amend its answer and defenses as additional information becomes available and/or is otherwise discovered. FIRST DEFENSE One or more claims of the Asserted Patents including, without limitation, claim 1 of the ‘135 Patent, claim 1 of the ‘857 Patent, claim 1 of the ‘535 Patent, claim 6 of the ‘458 Patent, claim 1 of the ‘538 Patent, claim 30 of the ‘885 Patent, claim 1 of the ‘989 Patent, and claim 3 of the ‘626 Patent are invalid for failure to comply with the conditions and requirements for patentability specified in 35 U.S.C. §§ 102, 103 and/or 112. Without limitation, and as alleged in inMusic’s Counterclaim, the claims Roland asserts against inMusic from the ‘135 Patent, the ‘857 Patent, the ‘535 Patent, and the ‘458 Patent all fail to meet statutory requirements for patentability and all of the limitations of the purported invention in the asserted claims in the patents are present in prior art references, including, without limitation, U.S. Patent No. 5,986,196 to Behrenfeld alone or in combination with U.S. Patent No. 4,828,907 to Hayashi, that were available sufficiently prior so as to render each asserted claim invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. The claim Roland asserts against inMusic from the ‘538 Patent, i.e. claim 1, fails to meet statutory requirements for patentability and all of the limitations of the purported invention in the asserted Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 8 of 20 Page ID #:609 EXHIBIT 1 Page 20 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 9 of 21 Page ID #:655 9 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 claim are present in prior art references, including, without limitation, U.S. Patent No. 5,986,196 to Behrenfeld alone or in combination with U.S. Patent No. 5,140,889 to Segan, that were available sufficiently prior so as to render each asserted claim of the ‘538 Patent invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. The claims Roland asserts against inMusic from the ‘885 Patent and the ‘989 Patent all fail to meet statutory requirements for patentability and all of the limitations of the purported invention in the asserted claims in the patents are present in prior art references, including, without limitation, U.S. Patent No. 5,965,834 to Suenaga alone or in combination with U.S. Patent No. 5,969,281 to Suenaga, that were available sufficiently prior so as to render each asserted claim invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. The claim that Roland asserts against inMusic from the ‘626 Patent, i.e. claim 3, fails to meet statutory requirements for patentability and all of the limitations of the purported invention in the asserted claim are present in prior art references, including, without limitation, Japanese Application No. 08-183588 (published April 8, 1997) to Roland Corp. alone or in combination with Japanese Application No. 08-146797 (published December 2, 1997) to Roland Corp., that were available sufficiently prior so as to render each asserted claim of the ‘626 Patent invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. SECOND DEFENSE Roland is estopped from construing any claim of any of the Asserted Patents to be infringed or to have been infringed, either literally or by application of the doctrine of equivalents, because of admissions, representations, and/or statements made to the United States Patent and Trademark Office during prosecution of any application leading to the issuance of any Asserted Patent, because of disclosure of language in the specifications of the Asserted Patents, and/or because of limitations in the claims of the Asserted Patents. For example, and without limitation, as part of the prosecution of the Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 9 of 20 Page ID #:610 EXHIBIT 1 Page 21 Case 2:16-cv-06256-CBM-AJW Document 6-1 Filed 2/ /17 Page 10 of 21 Page ID #:656 10 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 application that matured into the ‘857 Patent and as part of the reexamination proceedings involving the ‘135 Patent, Roland, through its attorneys, successfully overcame rejections by arguing that drumheads composed of “one or more thicknesses of woven fabric” that are “gummed together and treated on their outer faces with a stiffening composition composed of shellac, mercury, oxalic acid and salt” and/or drumheads composed of “laminated layers of fabric materials and synthetic resin film” do not meet the limitations of the Asserted Patents. For the purposes of this litigation, Roland is estopped from taking a contrary position for the purposes of claim construction relating to that family of patents. Similarly, and without limitation, as part of the prosecution of the application that matured into the ‘989 Patent, Roland, through its attorneys, successfully overcame a rejection of claim 1 by adding the limitation “a rotation stopper member coupled to the second frame for preventing said first frame from circumferentially rotating about a pole of a stand…” so the doctrine of prosecution history estoppel limits the infringement and claim construction arguments Roland can advance. THIRD DEFENSE To the extent Roland seeks to recover damages for any alleged infringement that occurred more than six years prior to the filing of the Complaint, such recovery is barred under 35 U.S.C. § 286. FOURTH DEFENSE Roland’s claims are barred, and the claims of the Asserted Patents are unenforceable, in whole or in part, by the doctrines of laches, unclean hands, waiver, and/or estoppel including, but not limited to, Roland’s unreasonable delay in alleging infringement of the Asserted Patents with respect to the Accused Products even after seeking expedited prosecution of at least two of the Asserted Patents. Specifically, in 1999, during the prosecution of the applications for the ‘538 and Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 10 of 20 Page ID #:611 EXHIBIT 1 Page 22 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 11 of 21 Page ID #:657 11 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ‘458 Patents, and more than 17 years before filing this Complaint, Roland’s counsel from Foley & Lardner, Ted R. Rittmaster, represented to the United States Patent and Trademark Office (“USPTO”) and filed supporting sworn declarations in the context of Petitions to Make Special that the Acusnare® Electracoustic® Dual Trigger Snare Drum, manufactured by Hart Dynamics, was on the market, being sold, and allegedly infringed certain claims of Roland’s pending patent applications that matured into the ‘538 Patent and the ‘458 Patent. Roland, through its counsel, represented under oath that “on information and belief, Hart Dynamics is assembling drum sets for the company Alesis which appears to infringe the claims of the patent application.” At the same time, in connection with the prosecution of the ‘458 Patent, Roland further provided a “copy of a brochure distributed by Alesis Corporation which shows electronic drums having, what appears to be, mesh or net-like drum heads.” Roland alleges a connection between Alesis and inMusic (see Complaint, e.g., ¶¶ 5, 47, 49, 52, 54), yet despite those representations concerning Alesis, and Roland’s successful urging of the USPTO to expedite prosecution of the applications for the ‘538 Patent and the ‘458 Patent, Roland took no affirmative steps to sue for the alleged infringement. Roland waited another eight years and then in November of 2007, Roland, though its counsel at Foley & Lardner, sent a letter to the President and CEO of Alesis alleging infringement of the ‘538, ‘458, ‘535, and ‘857 Patents. Nevertheless, Roland took no action to sue for infringement and, instead, on or about January 23, 2008, Roland affirmatively represented that Roland “will continue to monitor Alesis’ products with respect to Roland’s patents, including those cited above.” As a result, until Roland sued for infringement in late 2016, inMusic reasonably understood that Roland had concluded - as part of Roland’s ongoing “monitoring - that the product lines at issue did not infringe. Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 11 of 20 Page ID #:612 EXHIBIT 1 Page 23 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 1 of 21 Page ID #:658 12 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 In 2011, Roland sent a letter threatening infringement of the ‘885 and ‘989 patents. Yet, Roland took no action to sue for infringement, and it was reasonably understood that Roland had concluded - again, as part of that “monitoring - that the product lines at issue did not infringe. In February 2015, Roland again sent a letter to counsel for Alesis, threatening claims of infringement involving the ‘135, ‘857, ‘535, ‘458, ‘538, ‘989, and ‘885 Patents. Despite almost a decade during which Roland was “monitor[ing]” for patent infringement, Roland waited until August 2016 to file the instant Complaint. Roland’s unreasonable delay has prejudiced inMusic; that prejudice includes without limitation, the fact that Roland now seeks damages for the same period of time during which it delayed filing suit while it was allegedly monitoring for infringement. Even though Roland affirmatively represented to the USPTO and to inMusic that it believed it had infringement claims and rights allegedly superior to Alesis-branded products, Roland failed to pursue those alleged claims and relinquished those alleged rights and claims as a result. Further, inMusic reasonably relied to its detriment on Roland’s silence, inactivity and acquiescence to the products on the market to indicate that Roland did not have and would not pursue claims of patent infringement. WHEREFORE, inMusic requests the following relief: A. That Roland’s Complaint be dismissed with prejudice; B. That judgment enter in favor of inMusic on each count of Roland’s Complaint; C. That the Court declare this case to be exceptional pursuant to 35 U.S.C. § 285 and award inMusic its attorneys’ fees and costs to defend this action; and D. Such other relief as this Court deems necessary and just. Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 12 of 20 Page ID #:613 EXHIBIT 1 Page 24 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 13 of 21 Page ID #:659 13 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COUNTERCLAIM FOR DECLARATORY RELIEF Counterclaim Plaintiff inMusic Brands, Inc. (“inMusic”) for its Counterclaim against Counterclaim Defendant Roland Corporation (“Roland”), avers as follows: Nature of the Case inMusic brings this Counterclaim under the patent laws of the United States, 35 U.S.C. § 1 et seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, to obtain a declaratory judgment that asserted claims of U.S. Patent Nos. 7,385,135 (the “’135 Patent”); 6,921,857 (the “’857 Patent”); 6,756,535 (the “’535 Patent”); 6,271,458 (the “’458 Patent”); 6,121,538 (the “’538 Patent”); 6,881,885 (the “’885 Patent”); 6,632,989 (the “’989 Patent”); and/or 7,459,626 (the “’626 Patent”) is invalid. The Parties 1. InMusic is a Florida corporation with its principal place of business in Cumberland, Rhode Island. 2. Roland is a Japanese corporation with its principal place of business in Hamamatsu, Japan and has offices in Los Angeles, California. Jurisdiction 3. This Counterclaim arises under the patent laws of the United States, 35 U.S.C. § 1 et seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202. This Court has subject matter jurisdiction over this Counterclaim pursuant to 28 U.S.C. §§ 1331 and 1338. 4. This Court has personal jurisdiction over Roland because it has consented to personal jurisdiction for this action in this District by filing the Complaint for Patent Infringement on August 19, 2016 (the “Complaint”). 5. Venue is proper in this district for this counterclaim pursuant to 28 U.S.C. § 1391(b)-(c). Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 13 of 20 Page ID #:614 EXHIBIT 1 Page 25 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 14 of 21 Page ID #:660 14 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Facts 6. In its Complaint, Roland alleges, among other things, that it is the owner of the ‘135 Patent, the ‘857 Patent, the ‘535 Patent, the ‘458 Patent, the ‘538 Patent, the ‘885 Patent, the ‘989 Patent, and the ‘626 Patent. In its Complaint, Roland also alleges that inMusic infringes one or more claims of each of the above-referenced patents. inMusic denies that it infringes any valid and/or enforceable claim of any of the patents in suit. 7. As a result, there is an actual justiciable controversy between inMusic and Roland concerning the validity and enforceability of the ‘135 Patent, the ‘857 Patent, the ‘535 Patent, the ‘458 Patent, the ‘538 Patent, the ’885 Patent, the ‘989 Patent, and the ‘626 Patent. COUNT I Declaration of Invalidity of U.S. Patent 7,385,135 8. Counterclaim Plaintiff inMusic repeats and incorporates by reference, as though set forth in full, all of the allegations set forth in paragraphs 1 through 7 of this Counterclaim. 9. The ‘135 Patent fails to meet statutory requirements for patentability and all of the limitations of the purported invention claimed in the ‘135 Patent are present in prior art references, including, without limitation, U.S. Patent No. 5,986,196 to Behrenfeld alone or in combination with U.S. Patent No. 4,828,907 to Hayashi, that were available sufficiently prior so as to render each asserted claim of the ‘135 Patent invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. COUNT II Declaration of Invalidity of U.S. Patent 6,921,857 10. Counterclaim Plaintiff inMusic repeats and incorporates by reference, as though set forth in full, all of the allegations set forth in paragraphs 1 through 9 of this Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 14 of 20 Page ID #:615 EXHIBIT 1 Page 26 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 15 of 21 Page ID #:661 15 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Counterclaim. 11. The ‘857 Patent fails to meet statutory requirements for patentability and all of the limitations of the purported invention claimed in the ‘857 Patent are present in prior art references, including, without limitation, U.S. Patent No. 5,986,196 to Behrenfeld alone or in combination with U.S. Patent No. 4,828,907 to Hayashi, that were available sufficiently prior so as to render each asserted claim of the ‘857 Patent invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. COUNT III Declaration of Invalidity of U.S. Patent 6,756,535 12. Counterclaim Plaintiff inMusic repeats and incorporates by reference, as though set forth in full, all of the allegations set forth in paragraphs 1 through 11 of this Counterclaim. 13. The ‘535 Patent fails to meet statutory requirements for patentability and all of the limitations of the purported invention claimed in the ‘535 Patent are present in prior art references, including, without limitation, U.S. Patent No. 5,986,196 to Behrenfeld alone or in combination with U.S. Patent No. 4,828,907 to Hayashi, that were available sufficiently prior so as to render each asserted claim of the ‘535 Patent invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. COUNT IV Declaration of Invalidity of U.S. Patent 6,271,458 14. Counterclaim Plaintiff inMusic repeats and incorporates by reference, as though set forth in full, all of the allegations set forth in paragraphs 1 through 13 of this Counterclaim. 15. The ‘458 Patent fails to meet statutory requirements for patentability and all of the limitations of the purported invention claimed in the ‘458 Patent are present in prior art references, including, without limitation, U.S. Patent No. 5,986,196 to Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 15 of 20 Page ID #:616 EXHIBIT 1 Page 27 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 16 of 21 Page ID #:662 16 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Behrenfeld alone or in combination with U.S. Patent No. 4,828,907 to Hayashi, that were available sufficiently prior so as to render each asserted claim of the ‘458 Patent invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. COUNT V Declaration of Invalidity of U.S. Patent 6,121,538 16. Counterclaim Plaintiff inMusic repeats and incorporates by reference, as though set forth in full, all of the allegations set forth in paragraphs 1 through 15 of this Counterclaim. 17. The ‘538 Patent fails to meet statutory requirements for patentability and all of the limitations of the purported invention claimed in the ‘538 Patent are present in prior art references, including, without limitation, U.S. Patent No. 5,986,196 to Behrenfeld alone or in combination with U.S. Patent No. 5,140,889 to Segan, that were available sufficiently prior so as to render each asserted claim of the ‘538 Patent invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. COUNT VI Declaration of Invalidity of U.S. Patent 6,881,885 18. Counterclaim Plaintiff inMusic repeats and incorporates by reference, as though set forth in full, all of the allegations set forth in paragraphs 1 through 17 of this Counterclaim. 19. The ‘885 Patent fails to meet statutory requirements for patentability and all of the limitations of the purported invention claimed in the ‘885 Patent are present in prior art references, including, without limitation, U.S. Patent No. 5,965,834 to Suenaga alone or in combination with U.S. Patent No. 5,969,281 to Suenaga, that were available sufficiently prior so as to render each asserted claim of the ‘885 Patent invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 16 of 20 Page ID #:617 EXHIBIT 1 Page 28 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 17 of 21 Page ID #:663 17 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COUNT VII Declaration of Invalidity of U.S. Patent 6,632,989 20. Counterclaim Plaintiff inMusic repeats and incorporates by reference, as though set forth in full, all of the allegations set forth in paragraphs 1 through 19 of this Counterclaim. 21. The ‘989 Patent fails to meet statutory requirements for patentability and all of the limitations of the purported invention claimed in the ‘989 Patent are present in prior art references, including, without limitation, U.S. Patent No. 5,965,834 to Suenaga alone or in combination with U.S. Patent No. 5,969,281 to Suenaga, that were available sufficiently prior so as to render each asserted claim of the ‘989 Patent invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. COUNT VIII Declaration of Invalidity of U.S. Patent 7,459,626 22. Counterclaim Plaintiff inMusic repeats and incorporates by reference, as though set forth in full, all of the allegations set forth in paragraphs 1 through 21 of this Counterclaim. 23. The ‘626 Patent fails to meet statutory requirements for patentability and all of the limitations of the purported invention claimed in the ‘626 Patent are present in prior art references, including, without limitation, Japanese Application No. 08- 183588 (published April 8, 1997) to Roland alone or in combination with Japanese Application No. 08-146797 (published December 2, 1997) to Roland that were available sufficiently prior so as to render each asserted claim of the ‘626 Patent invalid anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. PRAYER FOR RELIEF WHEREFORE, inMusic Brands, Inc., prays that this Court grant the following relief: Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 17 of 20 Page ID #:618 EXHIBIT 1 Page 29 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 18 of 21 Page ID #:664 18 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 A. Dismissal with prejudice of Roland’s Complaint and all claims for relief therein and entry of an order denying Roland any relief in this action; B. Entry of declaratory judgment in favor of inMusic that each claim that Roland asserts against inMusic of U.S. Patent No. 7,385,135; U.S. Patent No. 6,921,857; U.S. Patent No. 6,756,535; U.S. Patent No. 6,271,458; U.S. Patent No. 6,121,538; U.S. Patent No. 6,881,885; U.S. Patent No. 6,632,989; and U.S. Patent No. 7,459,626 is invalid; C. An injunction permanently enjoining and restraining Roland and its officers, agents, subsidiaries, partners, servants, employees, and attorneys, and those persons in active concert or participation with them from asserting, enforcing, or threatening or attempting to enforce U.S. Patent No. 7,385,135; U.S. Patent No. 6,921,857; U.S. Patent No. 6,756,535; U.S. Patent No. 6,271,458; U.S. Patent No. 6,121,; U.S. Patent No. 6,881,885; U.S. Patent No. 6,632,989; and U.S. Patent No. 7,459,626 against inMusic, and its affiliates, distributors, customers, suppliers and end- users of the accused products; D. A declaration that this action is an exceptional case and an award to inMusic of its attorney’s fees and expenses pursuant to 35 U.S.C. §285; E. An award to inMusic of its cost of suit; and F. A grant to inMusic of such other relief as the Court may deem just and proper. DEMAND FOR JURY TRIAL Defendant/Counterclaim Plaintiff inMusic hereby demands a trial by jury on all issues so triable in this action. Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 18 of 20 Page ID #:619 EXHIBIT 1 Page 30 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 19 of 21 Page ID #:665 19 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Respectfully Submitted, Dated: February 3, 2017 Attorneys for Defendant inMusic Brands, Inc. HINCKLEY, ALLEN & SNYDER LLP By: /s/ Christine K. Bush CRAIG M. SCOTT (pro hac vice) cscott@hinckleyalllen.com CHRISTINE K. BUSH (pro hac vice) cbush@hinckleyalllen.com REBECCA F. BRIGGS (pro hac vice) rbriggs@hinckleyalllen.com 100 Westminster Street, Suite 1500 Providence, Rhode Island 02903 Tel: 401.274.2000 Fax: 401.277.9600 DOLL AMIR & ELEY LLP GREGORY L. DOLL (SBN 193205) gdoll@dollamir.com PAUL TORRES (SBN 240590) ptorres@dollamir.com 1888 Century Park East, Suite 1850 Los Angeles, California 90067 Tel: 310.557.9100 Fax: 310.557.9101 Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 19 of 20 Page ID #:620 EXHIBIT 1 Page 31 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 20 of 21 Page ID #:666 INMUSIC BRANDS, INC.’S AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIM FOR DECLARATORY RELIEF CASE NO. 2:16-CV-06256-CBM-AJW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court’s CM/ECF system per Local Rule CV-5-3.2.2 on February 3, 2017. Paul M. Torres, Esq. Case 2:16-cv-06256-CBM-AJW Document 44 Filed 02/03/17 Page 20 of 20 Page ID #:621 EXHIBIT 1 Page 32 Case 2:16-cv-06256-CBM-AJW Document 46-1 Filed 02/17/17 Page 21 of 21 Page ID #:667 4832-5390-2908.1 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Victor de Gyarfas (State Bar No. 171950) email: vdegyarfas@foley.com Sandeep Deol (State Bar No. 285545) email: sdeol@foley.com FOLEY & LARDNER LLP 555 South Flower Street, Suite 3500 Los Angeles, CA 90071-2411 Telephone: 213-972-4500 Facsimile: 213-486-0065 Attorneys for Plaintiff ROLAND CORPORATION UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION ROLAND CORPORATION, a Japanese corporation Plaintiff, v. INMUSICBRANDS, INC., a Florida Corporation, Defendant. Case No: 2:16-cv-6256 CBM (AJWx) [PROPOSED] ORDER GRANTING PLAINTIFF’S MOTION TO DISMISS COUNTERCLAIMS AND STRIKE INVALIDITY AFFIRMATIVE DEFENSE Case 2:16-cv-06256-CBM-AJW Document 46-2 Filed 02/17/17 Page 1 of 2 Page ID #:668 4832-5390-2908.1 1 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Before the Court is Plaintiff Roland Corporation’s (“Roland”) motion to dismiss Defendant InMusic Brand’s (“InMusic”) invalidity counterclaims and strike InMusic’s invalidity affirmative defenses. Upon consideration of the motion, InMusic’s arguments in opposition, Roland’s reply, and argument of counsel, the Court grant’s Roland’s motion. All of the counterclaims are dismissed with prejudice and the invalidity affirmative defense is stricken with prejudice. IT IS SO ORDERED. Dated: ________________________________ UNITED STATES DISTRICT JUDGE Case 2:16-cv-06256-CBM-AJW Document 46-2 Filed 02/17/17 Page 2 of 2 Page ID #:669