Counter Claim
TRUSTWAVE’S COUNTERCLAIMS
Counterclaim Plaintiff Trustwave Holdings, Inc., (“Trustwave”), as and for its counterclaims against counterclaim defendant StrikeForce Technologies, Inc. (“StrikeForce”), states as follows:
Nature of Action
1. This is a Declaratory Judgment action for a declaration of non-infringement and invalidity of the claims of U.S. Patent No. 8,484,698 asserted against Trustwave by counterclaim defendant in its complaint (see, e.g., StrikeForce Complaint, ¶¶ 17-23, 25-34, 36-41).
Parties
2. Counterclaim Plaintiff Trustwave Holdings, Inc. is a corporation incorporated in the state of Delaware, having its principal place of business at 70 W. Madison Street, Suite 1050, Chicago, Illinois 60602.
3. On information and belief, as averred in its complaint, Counterclaim Defendant StrikeForce Technologies, Inc. is a corporation incorporated in the state of Wyoming, with its principal place of business located at 1090 King Georges Post Road, Edison, New Jersey 08837.
Jurisdiction and Venue
4. This Court has subject matter jurisdiction over these counterclaims under 28 U.S.C. §§ 2201 and 2202 as a declaratory judgment action; and, as averred in StrikeForce’s complaint, under 28 U.S.C. §§ 1331 and 1338 as an action arising under the Patent Laws, Title 35 of the United States Code.
5. By filing its complaint in this District, counterclaim defendant has affirmatively sought and consented to the personal jurisdiction of this Court for purposes of Trustwave’s counterclaims. Moreover, the Court has personal jurisdiction over counterclaim defendant because StrikeForce has a principal place of business in this District.
6. If and to the extent venue is (or would have been) proper over any of the claims in StrikeForce’s complaint, venue over all Trustwave’s counterclaims must be proper in this District under 28 U.S.C. §§ 1391 and 1400. Furthermore, by maintaining its complaint, counterclaim defendant StrikeForce has waived any objection it might have or make to venue over Trustwave’s counterclaims.
Counterclaim I Declaration of Non-Infringement of U.S. Patent No. 8,484,698
7. Trustwave refers and incorporates by reference its unnumbered preamble and paragraphs 1 through 6 of Trustwave’s Counterclaims as though fully set forth herein.
8. Counterclaim defendant avers in its complaint that it is “the owner by assignment of the ‘698 Patent.”
9. Counterclaim defendant avers in its complaint that Trustwave:
…has infringed claims 53 and 54 of the ‘698 Patent in this district and elsewhere by making, using, offering for sale, or selling systems and methods for out-of-band authentication…
…sold infringing products to consumers located in New Jersey.
…will continue to directly infringe claims 53 and 54 of the ’698 Patent, causing immediate and irreparable harm to Plaintiff unless this Court enjoins and restrains its activities, specifically the acts of making, using, selling, and offering for sale as previously outlined.
…has knowingly, willfully, and deliberately infringed claims 53 and 54 of the ’698 Patent in conscious disregard of Plaintiff StrikeForce’s rights…
…has…indirectly infringed, and continues to indirectly infringe the ’698 Patent by, inter alia, inducing others to make, use, sell, and/or offer for sale in the United States the above-mentioned products and services covered by the ’698 Patent, and distributing, marketing, and/or advertising those products and web services covered by the ’698 Patent in this judicial district and elsewhere in the United States.
…has knowingly, willfully, and deliberately induced infringement of the ’698 Patent in conscious disregard of Plaintiff StrikeForce’s rights…
…will continue to induce infringement of claims 53 and 54 of the ’698 Patent, causing immediate and irreparable harm to Plaintiff StrikeForce unless this Court enjoins and restrains its activities, specifically the acts of making, using, selling, and offering for sale, as outlined above.
…has…indirectly infringed, and continues to indirectly infringe the ’698 Patent by, inter alia, knowingly providing to its customers the Trustwave Managed Two Factor Authentication Service…
…has knowingly, willfully, and deliberately contributed to infringement of the ’698 Patent in conscious disregard of Plaintiff StrikeForce’s rights…
…will continue to contribute to infringement of the ’698 Patent, causing immediate and irreparable harm to Plaintiff unless this Court enjoins and restrains Defendant Trustwave’s activities, specifically the acts of making, using, selling, and offering for sale, as outlined above.
Thus, an actual, substantial controversy exists between Trustwave and StrikeForce concerning Trustwave’s non-inrignement of the ’698 patent.
10. Trustwave does not and has not infringed any claim of the ’698 patent that StrikeForce asserts in its complaint, including claims 53 and 54 (the “asserted claims”) (see, e.g., StrikeForce Complaint, ¶¶ 17-23, 25-34, 36-41), literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of inducement, and/or via any other mechanism of liability.
11. Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., Trustwave is entitled to a declaration that the asserted claims of the ’698 patent are not, and have not been, infringed by Trustwave or any affiliate (or, with respect to Trustwave products, customer) of Trustwave.
12. The requested declaratory relief would serve the useful purpose of clarifying the legal issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
Counterclaim II Declaration of Invalidity of U.S. Patent No. 8,484,698
13. Trustwave reavers and incorporates by reference its unnumbered preamble and paragraphs 1 through 12 of Trustwave’s Counterclaims as though fully set forth herein.
14. At least the asserted claims of the ’698 patent, including claims 53 and 54 that StrikeForce asserts in its complaint (see, e.g., StrikeForce Complaint, ¶¶ 17-23, 25-34, 36-41), are invalid or void for failing to satisfy one or more of the conditions of patentability set forth in
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Title 35 of the United States Code, including without limitation, for example, §§ 101, 102, 103 and/or 112.
15. Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., Trustwave is entitled to a declaration that at least the asserted claims of the ’698 patent are invalid.
16. The requested declaratory relief would serve the useful purpose of clarifying the legal issues and resolving the claims of infringement made by counterclaim defendant in its complaint.
Demand for Jury Trial
17. Trustwave demands a trial by jury on all issues so triable.
PRAYER FOR RELIEF
FOR THESE REASONS, Trustwave respectfully requests that this Court enter judgment in its favor and grant the following relief:
A. That the Court enter an order declaring that StrikeForce take nothing by its complaint in this action;
B. That the Court enter judgment against StrikeForce and in favor of Trustwave, and that the complaint be dismissed with prejudice;
C. That the Court enter a declaratory judgment that Trustwave does not infringe any asserted claim of the ’698 patent;
D. That the Court enter a declaratory judgment that the asserted claims of the ’698 patent are invalid; and E. That the Court enter an order awarding Trustwave its costs, expenses, and reasonable attorney fees in this action because this is an exceptional case under 35 U.S.C. § 285 as a result of, inter alia, the above-pleaded denials, defenses, and/or counterclaims
