Zerify Inc (ZRFY)

[absintheminded90210]

CENTRIFY CORPORATION (“Centrify”), through counsel, respectfully submits this Answer, Affirmative Defenses and Counterclaims to the Complaint of the Plaintiff, STRIKEFORCE TECHNOLOGIES, INC. (“StrikeForce”). To the extent not specifically admitted herein, all allegations of the Complaint are denied.
ANSWER TO COMPLAINT FOR PATENT INFRINGEMENT Response to “THE PARTIES” 1. Centrify is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 1, and therefore denies those allegations. 2. Centrify admits, on information and belief, the allegations of paragraph 2. Response to “JURISDICTION AND VENUE” 3. Centrify admits that the Complaint purports to be a civil action for patent infringement under the patent laws of the United States, including 35 U.S.C. § 1 et seq. 4. Paragraph 4 states a legal conclusion to which no response is required. To the extent a response is required, Centrify admits that 28 U.S.C. §§ 1331 and 1338(a) provides subject matter jurisdiction for patent infringement actions. Centrify denies any remaining allegations in paragraph 4. 5. Paragraph 5 states a legal conclusion to which no response is required. To the extent a response is required, Centrify admits that https://www.centrify.com/customers is on Centrify’s website. Centrify admits that Company logos of Celegene, Johnson & Johnson, Novartis, Sanofi are listed as Customers Worldwide in the Pharma & Health section on its website. Centrify admits that Company logos of BB&T, BNP Paribas, Citi, Credit Suisse, Deutsche Bank, Geico, HSBC, MetLife, Mizuho, New York Life, Royal Bank of Scotland, Socie´te´ Ge´ne´rale, Standard Chartered Bank, SunTrust, TD Ameritrade are listed as Customers Worldwide in the Banking & Finance section on its website. Centrify admits that Company logos of Boeing, Delta, General Dynamics, Hertz, Land Rover, North Grumman, Raytheon, Toyota, Volkswagon are listed as Customers Worldwide in the Automotive & Energy section onits website. Centrify admits that Company logos Bose, Verizon Wireless, Microsoft, Catalina, DirecTV, Fujitsu, Rosetta Stone of are listed as Customers Worldwide in the Technology & Telecom section on its website. Centrify admits that Company logos of Best Western, CBS, Harte-Hanks, ICC Lowe, Maritz, Quad Graphics, Walt Disney, Rosetta Stone are listed as Customers Worldwide in the Internet & Entertainment section on its website. Centrify admits that Company logos of NOAA, the US Army, and the US Air Force are listed as Customers Worldwide in the Defense & Government section on its website. Centrify denies any remaining allegations in paragraph 5. 6. Paragraph 6 contains legal conclusions to which no answer is required. To the extent a response is required, Centrify denies the allegations in paragraph 6. 7. Paragraph 7 contains legal conclusions to which no answer is required. To the extent a response is required, Centrify denies the allegations in paragraph 7. Response to “FACTUAL BACKGROUND” 8. Centrify denies that an Exhibit A is attached to the Complaint. Centrify is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 8, and therefore denies those allegations. 9. Centrify is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 9, and therefore denies those allegations. 10. Centrify is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 10, and therefore denies those allegations. 11. Centrify is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 11, and therefore denies those allegations. 12. Centrify admits operating a website at https://www.centrify.com in the United States. Centrify denies the remaining allegations of paragraph 12. 13. Centrify admits it owns, operates and/or directs the operating of its website at https://www.centrify.com in the United States. Centrify denies the remaining allegations of paragraph 13. 14. Centrify admits it provides access to its website at https://www.centrify.com in the United States. Centrify denies the remaining allegations of paragraph 14. 15. Centrify admits it offers Centrify Identity Service Product with multi-factor authentication function for Windows, Android, and iOS devices in the United States. Centrify denies the remaining allegations of paragraph 15. RESPONSE TO COUNT I (Direct Infringement of the ’698 Patent) 16. Centrify repeats and incorporates by reference its responses to the allegations in paragraphs 1 through 15 as if fully set forth herein. 17. Centrify denies the allegations of paragraph 17. 18. Centrify denies the allegations of paragraph 18. 19. Centrify denies the allegations of paragraph 19. 20. Centrify denies the allegations of paragraph 20. 21. Centrify denies the allegations of paragraph 21. 22. Centrify denies the allegations of paragraph 22. 23. Centrify denies the allegations of paragraph 23. RESPONSE TO COUNT II (Active Inducement of Infringement of the ’698 Patent) 24. Centrify repeats and incorporates by reference its responses to the allegations in paragraphs 1 through 23 as if fully set forth herein. 25. Centrify denies the allegations of paragraph 25. 26. Centrify denies the allegations of paragraph 26. 27. Centrify denies the allegations of paragraph 27. 28. Centrify denies the allegations of paragraph 28. 29. Centrify denies the allegations of paragraph 29. 30. Centrify denies the allegations of paragraph 30. 31. Centrify denies the allegations of paragraph 31. 32. Centrify denies the allegations of paragraph 32. 33. Centrify denies the allegations of paragraph 33. 34. Centrify denies the allegations of paragraph 34. RESPONSE TO COUNT III (Contributory Infringement of the ’698 Patent) 35. Centrify repeats and incorporates by reference its responses to the allegations in paragraphs 1 through 34 as if fully set forth herein. 36. Centrify denies the allegations of paragraph 36. 37. Centrify denies the allegations of paragraph 37. 38. Centrify denies the allegations of paragraph 38. 39. Centrify denies the allegations of paragraph 39. 40. Centrify denies the allegations of paragraph 40. 41. Centrify denies the allegations of paragraph 41. RESPONSE TO PRAYER FOR RELIEF Centrify denies all remaining allegations not specifically admitted herein and denies that StrikeForce is entitled to any of the relief it has requested or to any other relief at all. AFFIRMATIVE DEFENSES
Without assuming any burden other than that imposed by operation of law or admitting that it bears the burden of proof with respect to any of the following, Centrify asserts the following defenses and alleges as follows: FIRST DEFENSE (Non-Infringement) 42. Centrify does not infringe any valid and enforceable claim of the ’698 Patent. Centrify is not liable in any respect for any alleged infringement of the ’698 Patent by anyone else. Centrify has not infringed and does not infringe any claim of the ’698 Patent, directly, indirectly, contributorily, by inducement, literally, or under the doctrine of equivalents. SECOND DEFENSE (Invalidity) 43. One or more claims of the ’698 Patent are invalid for failure to comply with the conditions and requirements of patentability set forth in the United States Patent Laws, Title 35 U.S.C., including specifically and without limitation §§ 101, 102, 103, 112, 116, 121, and the rules, regulations, and laws pertaining thereto, and/or the judicially created doctrine of obviousness-type double patenting. THIRD DEFENSE (License, exhaustion, waiver, and estoppel) 44. StrikeForce’s claims are barred, in whole or in part, by the defenses of release, license, exhaustion, waiver, and estoppel (including, without limitation, defenses arising from implied licenses and/or the doctrine of patent exhaustion); and/or due to restrictions on double recovery. FOURTH DEFENSE (Equity)
45. StrikeForce is barred in whole or in part under principles of equity, including without limitations, laches, prosecution laches, prosecution history estoppel and disclaimer, waiver, estoppel, statute of limitations and/or unclean hands. FIFTH DEFENSE (Limited Damages) 46. Centrify has not engaged in any conduct that would make this an exceptional case or that would entitle StrikeForce to reasonable attorney’s fees pursuant to 35 U.S.C. § 285. Centrify has not engaged in any conduct which would entitle StrikeForce to an award of enhanced damages. Damages to StrikeForce, if any, are limited by 35 U.S.C. §§ 286 and 287. SIXTH DEFENSE (Lack of Ownership and Standing) 47. The publicly available United States Patent Office Assignment website shows H Group Partners, Inc. located at 35 Tucker Street, Danbury, Connecticut 06810 owns a security interest in the ’698 Patent. A true and correct copy of the assignment webpage is attached hereto as Exhibit A. On information and belief, StrikeForce has failed to provide adequate evidence showing ownership of the ’698 Patent. On information and belief, StrikeForce lacks standing to bring suit for the alleged infringement of the ’698 Patent. SEVENTH DEFENSE (Non-Availability of Injunction) 48. StrikeForce is not entitled to injunctive relief under any theory, at least because: (1) StrikeForce has not suffered nor will it suffer irreparable harm because of Centrify’s conduct; (2) any harm to StrikeForce would be outweighed by the harm to Centrify if an injunction were entered; (3) StrikeForce has an adequate remedy at law even if it were to prevail in this action; and (4) the public interest would not be served by an injunction in favor of StrikeForce. EIGHTH DEFENSE (Res Judicata or Issue Preclusion)
49. StrikeForce’s claims are barred in whole or in part under the principles of res judicata and/or issue preclusion. NINTH DEFENSE (Use/Manufacture By/For United States Government) 50. To the extent that the alleged invention has been used or manufactured by or for the United States, the claims for relief are barred by 28 U.S.C. § 1498. TENTH DEFENSE (Failure to State a Claim) 51. StrikeForce’s Complaint fails to state a claim upon which relief can be granted. RESERVATION OF ALL AFFIRMATIVE DEFENSES 52. Centrify reserves the right to offer any other and additional defense that is now or may become available or appear during, or as a result of, discovery proceedings in this action. CENTRIFY’S COUNTERCLAIMS Counterclaim Plaintiff Centrify Corporation (“Centrify”), 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 Centrify by Counterclaim Defendant StrikeForce in its Complaint. The Parties 2. Counterclaim Plaintiff Centrify is a corporation incorporated in the state of Delaware, having its principal place of business at 3300 Tannery Way, Santa Clara, CA 95054.
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’ 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 Centrify’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 Centrify’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 Centrify’s counterclaims. Counterclaim I (Declaration of Non-Infringement of U.S. Patent No. 8,484,698) 7. Centrify refers and incorporates by reference its unnumbered preamble and paragraphs 1 through 6 of Centrify’s counterclaims as though fully set forth herein. 8. An actual and substantial controversy exists between Centrify and StrikeForce concerning Centrify’s non-infringement of the U.S. Patent No. 8,484,698 (“the ’698 Patent”).
9. Centrify does not and has not infringed any claim of the ’698 Patent including claims 53 and 54 (“the asserted claims”) literally, under the doctrine of equivalents, directly, indirectly, contributorily, by way of inducement and/or any other theory of infringement liability. 10. Pursuant to Fed. R. Civ. P. 57 and 28 U.S.C. §§ 2201 et seq., Centrify is entitled to a declaration that the asserted claims of the ’698 Patent are not, and have not been, infringed by Centrify. Counterclaim II (Declaration of Invalidity of U.S. Patent No. 8,484,698) 11. Centrify refers and incorporates by reference its unnumbered preamble and paragraphs 1 through 10 of Centrify’s Counterclaims as though fully set forth herein. 12. An actual and substantial controversy exists between Centrify and StrikeForce concerning invalidity of the U.S. Patent No. 8,484,698 (“the ’698 Patent”). 13. The ’698 Patent is invalid including claims 53 and 54 (“the asserted claims”) for failure to comply with the conditions and requirements of patentability set forth in the United States Patent Laws, Title 35 U.S.C., including specifically and without limitation §§ 101, 102, 103, 112, 116, 121, and the rules, regulations, and laws pertaining thereto, and/or the judicially created doctrine of obviousness-type double patenting. 14. Pursuant to Fed. R. Civ. P. 57 and 28 U.S.C. §§ 2201 et seq., Centrify is entitled to a declaration that the asserted claims of the ’698 Patent are invalid. Demand for Jury Trial 15. Centrify demands a trial by jury on all issues so triable. PRAYER FOR RELIEF FOR THESE REASONS, Centrify 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. ThattheCourtenterjudgmentagainstStrikeForceandinfavorofCentrify,andthat the Complaint be dismissed with prejudice; C. ThattheCourtenteraDeclaratoryJudgmentthatCentrifydoesnotinfringeany 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 Centrify 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. Dated: New York, New York September 19, 2016 Respectfully submitted, SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP By: /s/ Tyler E. Baker