Wednesday, March 03, 2010 8:52:59 AM
UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
CALYPSO WIRELESS, INC., Plaintiff-Counterclaim Defendant, and DRAGODAIC, Plaintiff-Counterclaim and Crossclaim Defendant,
v. T -MOBILE USA, INC.,
Defendant-Counterclaim Plaintiff, and JIMMY WILLIAMSON, PC and KELLY D.
STEPHENS, Third-Party Defendants.
Case No. 2:08-CV-441-TJW-CE Jury Trial Demanded
T-MOBILE USA, INC.'S ANSWER AND COUNTERCLAIMS TO CALYPSO WIRELESS, INC.'S SECOND AMENDED AND SUPPLEMENTAL COMPLAINT
Defendant T-Mobile USA, Inc. ("T-Mobile"), by its attorneys, answers the Second Amended and Supplemental Complaint ("Second Amended Complaint") ofPlaintiff Calypso Wireless, Inc. ("Calypso") as follows.
T-Mobile further states that anything in Calypso's Second Amended Complaint that is not expressly admitted is hereby denied.
I. NATURE OF THE ACTION
T -Mobile admits that the Second Amended Complaint purports to bring an action for patent infringement, but denies that Calypso has stated a legally sufficient claim for patent infringement.
T -Mobile admits that the Second Amended Complaint purports to bring an action for a declaration ofrights, for breach ofcontract, and for tortious interference. T-Mobile otherwise lacks knowledge or information sufficient to form a belief as to the truth of the allegations ofParagraph 2 ofthe Second Amended Complaint, and therefore denies these allegations.
II. THE PARTIES
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 3 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile admits the allegations in Paragraph 4 of the Second Amended Complaint except denies that it is a Washington Corporation. T-Mobile is a Delaware Corporation with its principal place ofbusiness located at 12920 S.E. 38th Street, Bellevue, Washington 98006-1350.
T -Mobile lacks know ledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 5 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 6 ofthe Second Amended Complaint, and therefore denies these allegations.
7. T-Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 7 ofthe Second Amended Complaint, and therefore denies these allegations.
III. JURISDICTION
T -Mobile denies that this Court has jurisdiction over this claim for patent infringement pursuant to 35 U.S.C. § 1, et seq., on the basis that Calypso lacks standing to assert this claim. To the extent that all ofthe ownership interests in the patent-in-suit reside with Calypso, T-Mobile admits that jurisdiction is proper pursuant to 28 U.S.C. § 1338, but otherwise denies the allegations in Paragraph 8 ofthe Second Amended Complaint and specifically denies that Calypso has stated a legally sufficient claim for patent infringement.
Denied.
Denied.
Denied.
Denied.
For the purposes ofthis action, T-Mobile consents to personal jurisdiction but denies the allegations in Paragraph 13 ofthe Second Amended Complaint.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 14 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 15 of the Second Amended Complaint, and therefore denies these allegations.
16. T-Mobile admits that venue is proper in this judicial district pursuant to 28 U.S.C.
§ 1391(c), but denies that there is not a venue that is clearly more convenient. T-Mobile denies the remaining allegations in Paragraph 16 of the Second Amended Complaint.
17. Denied.
IV. GENERAL ALLEGATIONS
18. T-Mobile admits that Exhibit 1 ofthe Second Amended Complaint appears to be
a copy ofU.S. Patent No. 6,680,923 ("the '923 patent"), entitled "Communication System and Method," and bears an issue date ofJanuary 20,2004. T-Mobile otherwise lacks information or knowledge sufficient to form a belief as to the truth ofthe remaining allegations in Paragraph 18 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 19 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 20 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 21 ofthe Second Amended Complaint, and therefore denies these allegations.
22. Denied.
23. T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 23 ofthe Second Amended Complaint, and therefore denies these allegations.
24. T -Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 24 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 25 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 26 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 27 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 28 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 29 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 30 ofthe Second Amended Complaint, and therefore denies these allegations.
31. T -Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 31 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 32 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 33 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 34 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 35 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 36 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 37 ofthe Second Amended Complaint, and therefore denies these allegations.
38. T-Mobile lacks knowledge or information sufficient to form a belief as to the
truth of the allegations in Paragraph 38 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 39 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 40 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 41 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 42 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 43 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 44 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 45 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 46 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 47 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 48 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 49 ofthe Second Amended Complaint, and therefore denies these allegations.
v. CAUSES OF ACTION
A. Claim for Patent Infringement
50. No response is required to Calypso's incorporation by reference ofthe foregoing paragraphs ofits Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-49 of this Answer and incorporates such responses by reference herein.
Denied.
Denied.
53. Denied.
B. Declaratory Judgment as to the 2009 Duress Agreement
No response is required to Calypso's incorporation by reference of the foregoing paragraphs ofits Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-53 ofthis Answer and incorporates such responses by reference herein.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 55 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 56 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 57 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 58 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 59 of the Second Amended Complaint, and therefore denies these allegations.
60. T -Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 60 ofthe Second Amended Complaint, and therefore denies these allegations.
61. T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 61 ofthe Second Amended Complaint, and therefore denies these allegations.
C. Declaratory Judgment as to the '923 Patent
No response is required to Calypso's incorporation by reference ofthe foregoing paragraphs ofits Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-61 ofthis Answer and incorporates such responses by reference herein.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 63 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 64 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 65 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 66 ofthe Second Amended Complaint, and therefore denies these allegations.
67. T -Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 67 ofthe Second Amended Complaint, and therefore denies these allegations.
68. T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 68 of the Second Amended Complaint, and therefore denies these allegations.
D. Breach of Contract of the 2008 Agreement
No response is required to Calypso's incorporation by reference ofthe foregoing paragraphs of its Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-68 ofthis Answer and incorporates such responses by reference herein.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 70 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 71 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 72 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 73 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 74 ofthe Second Amended Complaint, and therefore denies these allegations.
E. Tortious Interference with Prospective Contracts
No response is required to Calypso's incorporation by reference ofthe foregoing paragraphs ofits Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-74 of this Answer and incorporates such responses by reference herein.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 76 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 77 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 78 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 79 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 80 ofthe Second Amended Complaint, and therefore denies these allegations.
81. T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the
truth ofthe allegations in Paragraph 81 ofthe Second Amended Complaint, and therefore denies these allegations.
F. Conversion of Calypso's Intellectual Property
No response is required to Calypso's incorporation by reference ofthe foregoing paragraphs of its Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-81 of this Answer and incorporates such responses by reference herein.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 83 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 84 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 85 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 86 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 87 ofthe Second Amended Complaint, and therefore denies these allegations.
88. T -Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 88 of the Second Amended Complaint, and therefore denies these allegations.
VI. CONDITIONS PRECEDENT
89. T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 89 ofthe Second Amended Complaint, and therefore denies these allegations.
VII. JURY DEMAND
90. A response is not required to Calypso's demand for a jury trial in Paragraph 90 of the Second Amended Complaint. To the extent that a response is deemed required, T-Mobile requests a jury trial for all issues so triable pursuant to Rule 38 of the Federal Rules ofCivil Procedure.
VIII. ATTORNEY'S FEES
91. T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 91 of the Second Amended Complaint, and therefore denies these allegations.
IX. RESPONSE TO CALYPSO'S PRAYER FOR RELIEF
92. A response is not required to Calypso'S prayer for relief in Paragraph 92 of the Second Amended Complaint. To the extent that a response is deemed required, T -Mobile denies that Calypso is entitled to be awarded any relief whatsoever from T-Mobile. T-Mobile has not infringed, directly or indirectly, any valid and enforceable claim of the '923 patent, and Calypso is not entitled to any remedy or recovery relating to its claim for patent infringement. Calypso's prayer should therefore be denied and with prejudice, and Calypso should take nothing therefor.
AFFIRMATIVE DEFENSES
93. Further answering the Second Amended Complaint and as additional answers thereto, T -Mobile asserts the following affirmative defenses:
FIRST AFFIRMATIVE DEFENSE (Non-Infringement)
94. T -Mobile has not infringed and does not infringe any valid and enforceable claim ofthe '923 patent directly or indirectly, literally or by the doctrine of equivalents. T-Mobile does not infringe any of the asserted claims at least because none of the accused services switch between wireless networks depending on "predetermined parameters" including a "preestablished vicinity range," as required by one or more of the asserted claims.
SECOND AFFIRMATIVE DEFENSE (Invalidity)
95. One or more claims of the '923 patent are invalid for failure to satisfy one or more ofthe requirements ofthe Patent Act, 35 U.S.C. § 1, et seq., including, but not limited to, the conditions ofpatentability set forth in 35 U.S.C. §§ 101, 102, 103, and 112. For example, all of the asserted claims ofthe patent-in-suit are invalid pursuant to 35 U.S.C. §§ 102 and 103 at least in view of one or more of the prior art references discussed in paragraphs 104-118 of T -Mobile's Third Affirmative Defense for inequitable conduct.
THIRD AFFIRMATIVE DEFENSE (Inequitable Conduct in Prosecuting the '923 Application)
96. Calypso's allegation of infringement ofthe '923 patent is barred because the '923 patent is unenforceable due to inequitable conduct in its procurement, including, but not limited to, failure to disclose to the United States Patent and Trademark Office ("PTO") material prior art and information ofwhich Calypso, the patent agent or attorneys, named inventor and/or other individuals substantively involved in the preparation and prosecution ofCalypso's patent
applications including at least Peter Matos, Esq. (collectively, "Applicants"), were aware. On
infonnation and belief, Applicants failed to disclose material prior art and infonnation to the PTa ofwhich they were aware with an intent to deceive the PTa during prosecution of Application No. 09/577,812, the application that led to the '923 patent ("the '923 application").
Title 37 ofthe Code of Federal Regulations ("CFR") § 1.56 and the Manual of Patent Examination Procedure ("MPEP") § 2000.01, et seq., impose a duty ofcandor and good faith on each individual associated with the filing and prosecution of a patent application before the PTa, which requires he or she to disclose to the PTa all infonnation that is material to the patentability of the application under examination. Breach ofthis duty ofcandor, good faith, and honesty with intent to deceive the PTa constitutes inequitable conduct so as to render the '923 patent unenforceable.
On infonnation and belief, the '923 application was filed on May 23, 2000, and issued as the '923 patent on January 20,2004. On infonnation and belief, Peter Matos, Esq., of the law finn ofMalloy & Malloy, P.A., was the prosecuting attorney for the '923 application. The primary examiner was Examiner Kwang Bin Yao.
On infonnation and belief, on March 9,2001, Applicants filed a co-pending Patent Cooperation Treaty ("PCT") application, application number PCTlUS01/07528 ("the PCT application"). Mr. Matos ofMalloy & Malloy, P.A. was also listed as the agent for the PCT application. Applicants' PCT application was examined by a different examiner than the '923 application.
On infonnation and belief, Applicants' PCT application was published as WO 01/90853 A2 on or about November 29,2001.
On its face, the PCT application claims priority to the '923 application.
On information and belief, during prosecution ofthe '923 application and the
peT application, the claims of the peT application and the '923 application were identical, nearly identical, or substantially similar. The claims Applicants initially sought during prosecution ofthe '923 application were identical or nearly identical to the claims sought in the peT application. The claims ofthe '923 application remained unchanged from the original application until an amendment was filed on September 15, 2003. The claims as amended remained substantially similar or identical to the claims in the peT application and the original '923 application.
Failure to Disclose the International Search Report and Material Prior Art from the International Search Report
An International Search Report ("the ISR") was performed in connection with Applicants' peT application. On information and belief, the ISR was mailed to Applicants on July 3,2001, and on information and belief, Applicants, including at least Peter Matos, Esq., received it. The ISR was published on April 11, 2002 as WO 01190853 A3.
The ISR lists ten references: U.S. Patent No. 4,456,793 ("the '793 patent"); U.S. Patent No. 4,910,794 ("the '794 patent"); U.S. Patent No. 5,070,536 ("the '536 patent"); U.S. Patent No. 5,483,676 ("the '676 patent"); U.S. Patent No. 5,657,345 ("the '345 patent"); U.S. Patent No. 5,819,184 ("the 184 patent"); U.S. Patent No. 5,943,692 ("the '692 patent"); U.S. Patent No. 5,974,312 ("the '312 patent"); U.S. Patent No. 6,167,258 ("the '258 patent"), and
U.S. Patent No. 6,202,060 ("the '060 patent").
105. The ISR categorizes the references according to their relevance to the claims in the application. Among the categories are "X" and "Y." A reference categorized with an "X" is a reference that has been identified as a "document ofparticular relevance; the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the
document is taken alone." A reference categorized with a "Y" is a reference that has been
identified as a "document ofparticular relevance; the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Among the ten references identified in the ISR, eight were identified as either X or Y references, or both, and of those eight, seven had priority dates before the priority date claimed in the PCT application: the '793 patent, the '794 patent, the '536 patent, the '676 patent, the '345 patent, the '184 patent, and the'692 patent (collectively, "the ISR prior art references").
106. The examiner identified the '793 patent, and specifically Figures 1-6 and coL 2:28 -coL 4:2, as a "document ofparticular relevance" to claims 1-8 and 10 of the PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-8 and 10 of the PCT application are identical to claims 1-8 and 10 of the claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 of the PCT application are nearly identical to the claims that ultimately issued as claims 1,2,3,4, and 5 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
107. The examiner also identified the '793 patent, and specifically Figures 1-6 and coL
2:28 -coL 4:2, as a "document ofparticular relevance" to claims 9 and 11-39 ofthe PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 9 and 11-39 ofthe PCT application are identical to claims 9 and 11-39 ofthe claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-39 ofthe PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-15 ofthe '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued. Further, claims 14-20 and 23-24 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 ofthe '923 patent, respectively.
108. The examiner identified the '794 patent, and specifically Figures 1-6 and col. 2:10 -col. 3:16, as a "document ofparticular relevance" to claims 1-8 and 10 of the PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-8 and 10 ofthe PCT application are identical to claims 1-8 and 10 of the claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 1,2,3,4, and 5 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
109. The examiner also identified the '794 patent, and specifically Figures 1-6 and col.
2:10 -col. 3:16, as a "document ofparticular relevance" to claims 9 and 11-35 of the PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 9 and 11-35 ofthe PCT application are identical to claims 9 and 11-35 ofthe claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-35 ofthe PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-11 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
Further, claims 14-20 and 23-24 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 ofthe '923 patent, respectively.
110. The examiner identified the '536 patent, and specifically Figures 1-6 and col. 2: 29-35, as a "document ofparticular relevance" to claims 1-8 and 10 of the PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-8 and 10 ofthe PCT application are identical to claims 1-8 and 10 ofthe claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 1,2,3,4, and 5 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
Ill. The examiner also identified the '536 patent, and specifically Figures 1-6 and col.
2: 29-35, as a "document ofparticular relevance" to claims 9 and 11-39 ofthe PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 9 and 11-39 of the PCT application are identical to claims 9 and 11-39 ofthe claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-39 of the PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-15 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued. Further, claims 14-20 and 23-24 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 of the '923 patent, respectively.
112. The examiner identified the '676 patent, and specifically Figures 1-6 and col. 2:35
-col. 3:35, as a "document ofparticular relevance" to claims 1-8 and 10 of the PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-8 and 10 of the PCT application are identical to claims 1-8 and 10 of the claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 1,2,3,4, and 5 ofthe '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
113. The examiner also identified the '676 patent, and specifically Figures 1-6 and col.
2:35 -col. 3:35, as a "document ofparticular relevance" to claims 9 and 11-39 of the PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 9 and 11-39 ofthe PCT application are identical to claims 9 and 11-39 ofthe claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-39 ofthe PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-15 ofthe '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued. Further, claims 14-20 and 23-24 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 ofthe '923 patent, respectively.
114. The examiner identified the '345 patent, and specifically Figures 1-2 and col. 2:55 -col. 4:6, as a "document ofparticular relevance" to claims 1-8 and 10 ofthe PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-8 and 10 of the PCT application are identical to claims 1-8 and 10 ofthe claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 1,2,3,4, and 5 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
115. The examiner also identified the '345 patent, and specifically Figures 1-2 and col.
2:55 -col. 4:6, as a "document ofparticular relevance" to claims 9 and 11-39 of the PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 9 and 11-39 of the PCT application are identical to claims 9 and 11-39 ofthe claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-39 ofthe PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-15 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued. Further, claims 14-20 and 23-24 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 of the '923 patent, respectively.
116. The examiner identified the' 184 patent, and specifically Figures 1-3 and col. 6:41 -col. 8:62, as a "document ofparticular relevance" to claims 1-10 of the PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-10 ofthe PCT application are identical to claims 1-10 ofthe claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 of the PCT application are nearly identical to the claims that
ultimately issued as claims 1,2,3,4, and 5 ofthe '923 patent, respectively, which correspond to
the claims after they were amended in September 2003, after the search report was issued.
117. The examiner also identified the' 184 patent, and specifically Figures 1-3 and col.
6:41 -col. 8:62, as a "document ofparticular relevance" to claims 11-39 ofthe PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 11-39 of the PCT application are identical to claims 11-39 of the claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-39 of the PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-15 ofthe '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued. Further, claims 14-20 and 23-24 of the PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 ofthe '923 patent, respectively.
118. The examiner identified the '692 patent, and specifically Figures 1-5 and col. 2: 54-58, as a "document ofparticular relevance" to claims 11-20 ofthe PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 11-20 of the PCT application are identical to claims 11-20 of the claims originally sought in the application that led to the '923 patent. Claims 14-20 of the PCT application are nearly identical to the claims that ultimately issued as claims 17-23 of the '923 patent, which correspond to the claims after they were amended in September 2003, after the search report was issued.
119. Therefore, on infonnation and belief, Applicants knew or should have known that
the ISR and ISR prior art references were material to the patentability ofthe claims prosecuted in the '923 application. On infonnation and belief, Applicants never disclosed the ISR or the ISR prior art references to the PTO during prosecution ofthe '923 application. On information and belief, failure to disclose the ISR and the ISR prior art references to the PTO during prosecution ofthe '923 application was done with an intent to deceive the PTO and constituted a breach of the duty of candor owed to the PTO.
Failure to Disclose the International Preliminary Examination Report and Material Prior Art from the International Preliminary Examination Report
An International Preliminary Examination Report ("IPER") was also issued in connection with the PCT application on January 23,2003. On information and belief, the IPER was transmitted to Applicants and Applicants received it.
In the IPER, the PCT examiner stated: "Claims 1-8 and 10 lack novelty under PCT Article 33(2) as being anticipated by Baker, et al."; "Claim 9 lacks an inventive step under PCT Article 33(3) as being obvious over Baker, et al."; and "Claims 11-39 lack an inventive step under PCT Article 33(3) as being obvious over Baker, et al in view ofMarberg, et al." (Baker et al. and Marberg et al. shall be collectively referred to as "the IPER prior art references").
On information and belief, the "Baker" reference referred to in the IPER corresponds to the '793 patent disclosed in the ISR, whose first named inventor is "Baker," while the "Marberg" reference referred to in the IPER corresponds to the '692 patent disclosed in the ISR, whose first named inventor is "Marberg."
On information and belief, Applicants knew or should have known that the IPER and IPER prior art references were material to the patentability ofthe claims prosecuted in the '923 application. On information and belief, Applicants never disclosed the IPER or IPER prior
art references to the PTO during prosecution ofthe '923 patent. On infonnation and belief,
failure to disclose the IPER and IPER prior art references to the PTO during prosecution ofthe '923 application was done with an intent to deceive the PTO and constituted a breach ofthe duty ofcandor owed to the PTO.
FOURTH AFFIRMATIVE DEFENSE (Laches, Equitable Estoppel, Consent and Waiver)
124. Calypso's claims are barred in whole or in part by the doctrine oflaches, the doctrine ofequitable estoppel, Calypso's consent, and waiver at least because Calypso and T-Mobile's predecessor, Voicestream Wireless Corporation, engaged in prior interactions, including entering into a non-disclosure agreement on January 15, 2002, for the purposes of "discuss[ ing] certain business transactions and to exchange infonnation for the purpose of exploring a potential business relationship for the benefit of the Parties." (D.1. 19-11). This agreement did not result in T-Mobile licensing the patent-in-suit or in any other business relationship between the parties. Calypso did not file this suit until November 13, 2008, more than six years after the non-disclosure agreement was signed.
FIFTH AFFIRMATIVE DEFENSE (Implied License and Patent Exhaustion)
125. Calypso's claims are barred in whole or in part by express or implied license and/or the doctrine ofpatent exhaustion at least for the reasons stated in paragraph 124 ofTMobile's Fourth Affinnative Defense.
SIXTH AFFIRMATIVE DEFENSE (Notice -35 U.S.c. § 287)
126. To the extent Calypso seeks damages for any alleged infringement prior to its giving actual notice ofthe '923 patent to T -Mobile, its claims are barred pursuant to 35 U.S.C. § 287(a).
SEVENTH AFFIRMATIVE DEFENSE (Lack of Standing)
127. To the extent Calypso does not own all rights to the '923 patent, Calypso's Second Amended Complaint must be dismissed pursuant to Rule 12(b)(1) of the Federal Rules of Civil Procedure for lack of standing.
EIGHTH AFFIRMATIVE DEFENSE (Failure to State a Claim)
128. Calypso fails to state a claim upon which relief can be granted pursuant to Rule 12(b)(6) ofthe Federal Rules ofCivil Procedure.
COUNTERCLAIMS
For its Counterclaims in the above-captioned action, T-Mobile USA, Inc. ("T-Mobile") hereby alleges as follows:
THE PARTIES
T -Mobile is a Delaware corporation whose principal place ofbusiness is located at 12920 S.B. 38th Street, Bellevue, WA 98006-1350.
On information and belief, Calypso Wireless, Inc. ("Calypso") is a Delaware corporation with its principal place of business located at 5100 Westheimer, Suite 200, Houston, TX 77056.
JURISDICTION AND VENUE
3. These counterclaims arise under federal law , and this Court has jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338, and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, and the Patent Laws ofthe United States, 35 U.S.C. § 1, et seq.
Venue is proper under at least 28 U.S.C. §§ 1391 and 1400(b).
Calypso has asserted that T-Mobile infringes U.S. Patent No. 6,680,923 ("the
'923 patent"). An actual controversy exists between T -Mobile and Calypso over the alleged infringement and invalidity ofthe '923 patent.
FIRST COUNTERCLAIM
(Non-Infringement)
6. T -Mobile realleges counterclaim paragraphs 1 through 5 as though fully set forth
herein.
7. T-Mobile has not infringed, and does not directly or indirectly infringe any valid,
enforceable claim of the '923 patent, either literally or under the doctrine of equivalents. T-Mobile does not infringe any ofthe asserted claims at least because none ofthe accused services switch between wireless networks depending on "predetermined parameters" including a "preestablished vicinity range," as required by one or more ofthe asserted claims.
8. Accordingly, T -Mobile is entitled to a declaratory judgment that it does not infringe any valid, enforceable claim ofthe '923 patent.
SECOND COUNTERCLAIM (Invalidity)
T-Mobile realleges counterclaim paragraphs 1 through 8 as though fully set forth herein.
The '923 patent is invalid for failing to satisfy one or more ofthe requirements of the Patent Act, 35 U.S.C. § 1, et seq., including, but not limited to, the conditions ofpatentability set forth in 35 U.S.c. §§ 101, 102, 103 and 112. For example, all ofthe asserted claims ofthe patent-in-suit are invalid pursuant to 35 U.S.C. §§ 102 and 103 at least in view ofone or more of the prior art references discussed in paragraphs 104-118 ofT-Mobi1e's Third Affirmative Defense for inequitable conduct.
27
11. Accordingly, T-Mobile is entitled to a declaratory judgment that the '923 patent is
invalid.
THIRD COUNTERCLAIM
(Un enforceability)
T -Mobile repeats and realleges counterclaim paragraphs 1 through 11 as though fully set forth herein.
For the reasons set forth above in T-Mobile's Third Affirmative Defense (affirmative defense paragraphs 96-123), the '923 patent is unenforceable as a result of inequitable conduct in its procurement, including, but not limited to, failure to disclose relevant material prior art and information ofwhich Calypso was aware to the U.S. Patent and Trademark Office during prosecution ofthe application that led to the '923 Patent. On information and belief, such acts were performed with intent to deceive the PTO.
DEMAND FOR A JURY TRIAL
14. T-Mobile demands a trial by jury on all issues so triable.
PRAYER FOR RELIEF
FOR THESE REASONS, T -Mobile respectfully requests that this Court enter judgment in its favor and grant the following relief:
a.
An order declaring that Calypso take nothing from T-Mobile on the claims asserted in the Second Amended Complaint;
b.
A declaration that T -Mobile does not infringe any valid and enforceable claim of the '923 patent;
c.
A declaration that the '923 patent is invalid and/or unenforceable;
d.
Judgment against Calypso in favor ofT-Mobile;
e.
Dismissal ofthe Second Amended Complaint with prejudice;
f.
An order declaring that this is an exceptional case under 35 U.S.C. § 285;
g.
An award to T-Mobile ofits costs, expenses, and reasonable attorney fees
order under 35 U.S.C. § 285 and all other applicable statutes, rules, and common law; and
h. Any such other relief as the Court may deem appropriate and just under
the circumstances.
Dated: March 2, 2010 Respectfully submitted,
/s/ Benjamin Hershkowitz Josh A. Krevitt, New York Bar No. 2568228 Lead Attorney Benjamin Hershkowitz, N.Y. Bar No. 2600559 Richard Koehl, N.Y. Bar No. 4193694 GillSON, DUNN & CRUTCHER LLP 200 Park Avenue New York, New York 10166 Telephone: (212) 351-4000 Facsimile: (212) 351-4035 jkrevitt@gibsondunn.com bhershkowitz@gibsondunn.com rkoehl@gibsondunn.com
Attorneysfor Defendant-Counterclaim Plaintiff T-Mobile USA, Inc.
CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). As such, this document was served on all counsel who have consented to electronic service on March 2,2010.
/s/ Benjamin Hershkowitz
CALYPSO WIRELESS, INC., Plaintiff-Counterclaim Defendant, and DRAGODAIC, Plaintiff-Counterclaim and Crossclaim Defendant,
v. T -MOBILE USA, INC.,
Defendant-Counterclaim Plaintiff, and JIMMY WILLIAMSON, PC and KELLY D.
STEPHENS, Third-Party Defendants.
Case No. 2:08-CV-441-TJW-CE Jury Trial Demanded
T-MOBILE USA, INC.'S ANSWER AND COUNTERCLAIMS TO CALYPSO WIRELESS, INC.'S SECOND AMENDED AND SUPPLEMENTAL COMPLAINT
Defendant T-Mobile USA, Inc. ("T-Mobile"), by its attorneys, answers the Second Amended and Supplemental Complaint ("Second Amended Complaint") ofPlaintiff Calypso Wireless, Inc. ("Calypso") as follows.
T-Mobile further states that anything in Calypso's Second Amended Complaint that is not expressly admitted is hereby denied.
I. NATURE OF THE ACTION
T -Mobile admits that the Second Amended Complaint purports to bring an action for patent infringement, but denies that Calypso has stated a legally sufficient claim for patent infringement.
T -Mobile admits that the Second Amended Complaint purports to bring an action for a declaration ofrights, for breach ofcontract, and for tortious interference. T-Mobile otherwise lacks knowledge or information sufficient to form a belief as to the truth of the allegations ofParagraph 2 ofthe Second Amended Complaint, and therefore denies these allegations.
II. THE PARTIES
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 3 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile admits the allegations in Paragraph 4 of the Second Amended Complaint except denies that it is a Washington Corporation. T-Mobile is a Delaware Corporation with its principal place ofbusiness located at 12920 S.E. 38th Street, Bellevue, Washington 98006-1350.
T -Mobile lacks know ledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 5 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 6 ofthe Second Amended Complaint, and therefore denies these allegations.
7. T-Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 7 ofthe Second Amended Complaint, and therefore denies these allegations.
III. JURISDICTION
T -Mobile denies that this Court has jurisdiction over this claim for patent infringement pursuant to 35 U.S.C. § 1, et seq., on the basis that Calypso lacks standing to assert this claim. To the extent that all ofthe ownership interests in the patent-in-suit reside with Calypso, T-Mobile admits that jurisdiction is proper pursuant to 28 U.S.C. § 1338, but otherwise denies the allegations in Paragraph 8 ofthe Second Amended Complaint and specifically denies that Calypso has stated a legally sufficient claim for patent infringement.
Denied.
Denied.
Denied.
Denied.
For the purposes ofthis action, T-Mobile consents to personal jurisdiction but denies the allegations in Paragraph 13 ofthe Second Amended Complaint.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 14 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 15 of the Second Amended Complaint, and therefore denies these allegations.
16. T-Mobile admits that venue is proper in this judicial district pursuant to 28 U.S.C.
§ 1391(c), but denies that there is not a venue that is clearly more convenient. T-Mobile denies the remaining allegations in Paragraph 16 of the Second Amended Complaint.
17. Denied.
IV. GENERAL ALLEGATIONS
18. T-Mobile admits that Exhibit 1 ofthe Second Amended Complaint appears to be
a copy ofU.S. Patent No. 6,680,923 ("the '923 patent"), entitled "Communication System and Method," and bears an issue date ofJanuary 20,2004. T-Mobile otherwise lacks information or knowledge sufficient to form a belief as to the truth ofthe remaining allegations in Paragraph 18 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 19 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 20 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 21 ofthe Second Amended Complaint, and therefore denies these allegations.
22. Denied.
23. T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 23 ofthe Second Amended Complaint, and therefore denies these allegations.
24. T -Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 24 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 25 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 26 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 27 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 28 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 29 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 30 ofthe Second Amended Complaint, and therefore denies these allegations.
31. T -Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 31 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 32 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 33 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 34 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 35 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 36 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 37 ofthe Second Amended Complaint, and therefore denies these allegations.
38. T-Mobile lacks knowledge or information sufficient to form a belief as to the
truth of the allegations in Paragraph 38 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 39 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 40 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 41 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 42 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 43 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 44 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 45 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 46 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 47 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 48 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 49 ofthe Second Amended Complaint, and therefore denies these allegations.
v. CAUSES OF ACTION
A. Claim for Patent Infringement
50. No response is required to Calypso's incorporation by reference ofthe foregoing paragraphs ofits Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-49 of this Answer and incorporates such responses by reference herein.
Denied.
Denied.
53. Denied.
B. Declaratory Judgment as to the 2009 Duress Agreement
No response is required to Calypso's incorporation by reference of the foregoing paragraphs ofits Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-53 ofthis Answer and incorporates such responses by reference herein.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 55 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 56 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 57 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 58 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 59 of the Second Amended Complaint, and therefore denies these allegations.
60. T -Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 60 ofthe Second Amended Complaint, and therefore denies these allegations.
61. T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 61 ofthe Second Amended Complaint, and therefore denies these allegations.
C. Declaratory Judgment as to the '923 Patent
No response is required to Calypso's incorporation by reference ofthe foregoing paragraphs ofits Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-61 ofthis Answer and incorporates such responses by reference herein.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 63 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 64 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 65 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 66 ofthe Second Amended Complaint, and therefore denies these allegations.
67. T -Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 67 ofthe Second Amended Complaint, and therefore denies these allegations.
68. T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 68 of the Second Amended Complaint, and therefore denies these allegations.
D. Breach of Contract of the 2008 Agreement
No response is required to Calypso's incorporation by reference ofthe foregoing paragraphs of its Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-68 ofthis Answer and incorporates such responses by reference herein.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 70 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 71 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth ofthe allegations in Paragraph 72 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 73 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 74 ofthe Second Amended Complaint, and therefore denies these allegations.
E. Tortious Interference with Prospective Contracts
No response is required to Calypso's incorporation by reference ofthe foregoing paragraphs ofits Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-74 of this Answer and incorporates such responses by reference herein.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 76 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 77 ofthe Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 78 of the Second Amended Complaint, and therefore denies these allegations.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 79 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 80 ofthe Second Amended Complaint, and therefore denies these allegations.
81. T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the
truth ofthe allegations in Paragraph 81 ofthe Second Amended Complaint, and therefore denies these allegations.
F. Conversion of Calypso's Intellectual Property
No response is required to Calypso's incorporation by reference ofthe foregoing paragraphs of its Second Amended Complaint. To the extent that a response is deemed required, T-Mobile restates the above responses to Paragraphs 1-81 of this Answer and incorporates such responses by reference herein.
T-Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 83 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 84 of the Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth ofthe allegations in Paragraph 85 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 86 ofthe Second Amended Complaint, and therefore denies these allegations.
T -Mobile lacks knowledge or infonnation sufficient to fonn a belief as to the truth of the allegations in Paragraph 87 ofthe Second Amended Complaint, and therefore denies these allegations.
88. T -Mobile lacks knowledge or information sufficient to form a belief as to the
truth ofthe allegations in Paragraph 88 of the Second Amended Complaint, and therefore denies these allegations.
VI. CONDITIONS PRECEDENT
89. T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 89 ofthe Second Amended Complaint, and therefore denies these allegations.
VII. JURY DEMAND
90. A response is not required to Calypso's demand for a jury trial in Paragraph 90 of the Second Amended Complaint. To the extent that a response is deemed required, T-Mobile requests a jury trial for all issues so triable pursuant to Rule 38 of the Federal Rules ofCivil Procedure.
VIII. ATTORNEY'S FEES
91. T-Mobile lacks knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 91 of the Second Amended Complaint, and therefore denies these allegations.
IX. RESPONSE TO CALYPSO'S PRAYER FOR RELIEF
92. A response is not required to Calypso'S prayer for relief in Paragraph 92 of the Second Amended Complaint. To the extent that a response is deemed required, T -Mobile denies that Calypso is entitled to be awarded any relief whatsoever from T-Mobile. T-Mobile has not infringed, directly or indirectly, any valid and enforceable claim of the '923 patent, and Calypso is not entitled to any remedy or recovery relating to its claim for patent infringement. Calypso's prayer should therefore be denied and with prejudice, and Calypso should take nothing therefor.
AFFIRMATIVE DEFENSES
93. Further answering the Second Amended Complaint and as additional answers thereto, T -Mobile asserts the following affirmative defenses:
FIRST AFFIRMATIVE DEFENSE (Non-Infringement)
94. T -Mobile has not infringed and does not infringe any valid and enforceable claim ofthe '923 patent directly or indirectly, literally or by the doctrine of equivalents. T-Mobile does not infringe any of the asserted claims at least because none of the accused services switch between wireless networks depending on "predetermined parameters" including a "preestablished vicinity range," as required by one or more of the asserted claims.
SECOND AFFIRMATIVE DEFENSE (Invalidity)
95. One or more claims of the '923 patent are invalid for failure to satisfy one or more ofthe requirements ofthe Patent Act, 35 U.S.C. § 1, et seq., including, but not limited to, the conditions ofpatentability set forth in 35 U.S.C. §§ 101, 102, 103, and 112. For example, all of the asserted claims ofthe patent-in-suit are invalid pursuant to 35 U.S.C. §§ 102 and 103 at least in view of one or more of the prior art references discussed in paragraphs 104-118 of T -Mobile's Third Affirmative Defense for inequitable conduct.
THIRD AFFIRMATIVE DEFENSE (Inequitable Conduct in Prosecuting the '923 Application)
96. Calypso's allegation of infringement ofthe '923 patent is barred because the '923 patent is unenforceable due to inequitable conduct in its procurement, including, but not limited to, failure to disclose to the United States Patent and Trademark Office ("PTO") material prior art and information ofwhich Calypso, the patent agent or attorneys, named inventor and/or other individuals substantively involved in the preparation and prosecution ofCalypso's patent
applications including at least Peter Matos, Esq. (collectively, "Applicants"), were aware. On
infonnation and belief, Applicants failed to disclose material prior art and infonnation to the PTa ofwhich they were aware with an intent to deceive the PTa during prosecution of Application No. 09/577,812, the application that led to the '923 patent ("the '923 application").
Title 37 ofthe Code of Federal Regulations ("CFR") § 1.56 and the Manual of Patent Examination Procedure ("MPEP") § 2000.01, et seq., impose a duty ofcandor and good faith on each individual associated with the filing and prosecution of a patent application before the PTa, which requires he or she to disclose to the PTa all infonnation that is material to the patentability of the application under examination. Breach ofthis duty ofcandor, good faith, and honesty with intent to deceive the PTa constitutes inequitable conduct so as to render the '923 patent unenforceable.
On infonnation and belief, the '923 application was filed on May 23, 2000, and issued as the '923 patent on January 20,2004. On infonnation and belief, Peter Matos, Esq., of the law finn ofMalloy & Malloy, P.A., was the prosecuting attorney for the '923 application. The primary examiner was Examiner Kwang Bin Yao.
On infonnation and belief, on March 9,2001, Applicants filed a co-pending Patent Cooperation Treaty ("PCT") application, application number PCTlUS01/07528 ("the PCT application"). Mr. Matos ofMalloy & Malloy, P.A. was also listed as the agent for the PCT application. Applicants' PCT application was examined by a different examiner than the '923 application.
On infonnation and belief, Applicants' PCT application was published as WO 01/90853 A2 on or about November 29,2001.
On its face, the PCT application claims priority to the '923 application.
On information and belief, during prosecution ofthe '923 application and the
peT application, the claims of the peT application and the '923 application were identical, nearly identical, or substantially similar. The claims Applicants initially sought during prosecution ofthe '923 application were identical or nearly identical to the claims sought in the peT application. The claims ofthe '923 application remained unchanged from the original application until an amendment was filed on September 15, 2003. The claims as amended remained substantially similar or identical to the claims in the peT application and the original '923 application.
Failure to Disclose the International Search Report and Material Prior Art from the International Search Report
An International Search Report ("the ISR") was performed in connection with Applicants' peT application. On information and belief, the ISR was mailed to Applicants on July 3,2001, and on information and belief, Applicants, including at least Peter Matos, Esq., received it. The ISR was published on April 11, 2002 as WO 01190853 A3.
The ISR lists ten references: U.S. Patent No. 4,456,793 ("the '793 patent"); U.S. Patent No. 4,910,794 ("the '794 patent"); U.S. Patent No. 5,070,536 ("the '536 patent"); U.S. Patent No. 5,483,676 ("the '676 patent"); U.S. Patent No. 5,657,345 ("the '345 patent"); U.S. Patent No. 5,819,184 ("the 184 patent"); U.S. Patent No. 5,943,692 ("the '692 patent"); U.S. Patent No. 5,974,312 ("the '312 patent"); U.S. Patent No. 6,167,258 ("the '258 patent"), and
U.S. Patent No. 6,202,060 ("the '060 patent").
105. The ISR categorizes the references according to their relevance to the claims in the application. Among the categories are "X" and "Y." A reference categorized with an "X" is a reference that has been identified as a "document ofparticular relevance; the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the
document is taken alone." A reference categorized with a "Y" is a reference that has been
identified as a "document ofparticular relevance; the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Among the ten references identified in the ISR, eight were identified as either X or Y references, or both, and of those eight, seven had priority dates before the priority date claimed in the PCT application: the '793 patent, the '794 patent, the '536 patent, the '676 patent, the '345 patent, the '184 patent, and the'692 patent (collectively, "the ISR prior art references").
106. The examiner identified the '793 patent, and specifically Figures 1-6 and coL 2:28 -coL 4:2, as a "document ofparticular relevance" to claims 1-8 and 10 of the PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-8 and 10 of the PCT application are identical to claims 1-8 and 10 of the claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 of the PCT application are nearly identical to the claims that ultimately issued as claims 1,2,3,4, and 5 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
107. The examiner also identified the '793 patent, and specifically Figures 1-6 and coL
2:28 -coL 4:2, as a "document ofparticular relevance" to claims 9 and 11-39 ofthe PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 9 and 11-39 ofthe PCT application are identical to claims 9 and 11-39 ofthe claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-39 ofthe PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-15 ofthe '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued. Further, claims 14-20 and 23-24 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 ofthe '923 patent, respectively.
108. The examiner identified the '794 patent, and specifically Figures 1-6 and col. 2:10 -col. 3:16, as a "document ofparticular relevance" to claims 1-8 and 10 of the PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-8 and 10 ofthe PCT application are identical to claims 1-8 and 10 of the claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 1,2,3,4, and 5 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
109. The examiner also identified the '794 patent, and specifically Figures 1-6 and col.
2:10 -col. 3:16, as a "document ofparticular relevance" to claims 9 and 11-35 of the PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 9 and 11-35 ofthe PCT application are identical to claims 9 and 11-35 ofthe claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-35 ofthe PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-11 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
Further, claims 14-20 and 23-24 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 ofthe '923 patent, respectively.
110. The examiner identified the '536 patent, and specifically Figures 1-6 and col. 2: 29-35, as a "document ofparticular relevance" to claims 1-8 and 10 of the PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-8 and 10 ofthe PCT application are identical to claims 1-8 and 10 ofthe claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 1,2,3,4, and 5 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
Ill. The examiner also identified the '536 patent, and specifically Figures 1-6 and col.
2: 29-35, as a "document ofparticular relevance" to claims 9 and 11-39 ofthe PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 9 and 11-39 of the PCT application are identical to claims 9 and 11-39 ofthe claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-39 of the PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-15 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued. Further, claims 14-20 and 23-24 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 of the '923 patent, respectively.
112. The examiner identified the '676 patent, and specifically Figures 1-6 and col. 2:35
-col. 3:35, as a "document ofparticular relevance" to claims 1-8 and 10 of the PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-8 and 10 of the PCT application are identical to claims 1-8 and 10 of the claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 1,2,3,4, and 5 ofthe '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
113. The examiner also identified the '676 patent, and specifically Figures 1-6 and col.
2:35 -col. 3:35, as a "document ofparticular relevance" to claims 9 and 11-39 of the PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 9 and 11-39 ofthe PCT application are identical to claims 9 and 11-39 ofthe claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-39 ofthe PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-15 ofthe '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued. Further, claims 14-20 and 23-24 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 ofthe '923 patent, respectively.
114. The examiner identified the '345 patent, and specifically Figures 1-2 and col. 2:55 -col. 4:6, as a "document ofparticular relevance" to claims 1-8 and 10 ofthe PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-8 and 10 of the PCT application are identical to claims 1-8 and 10 ofthe claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 1,2,3,4, and 5 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued.
115. The examiner also identified the '345 patent, and specifically Figures 1-2 and col.
2:55 -col. 4:6, as a "document ofparticular relevance" to claims 9 and 11-39 of the PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 9 and 11-39 of the PCT application are identical to claims 9 and 11-39 ofthe claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-39 ofthe PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-15 of the '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued. Further, claims 14-20 and 23-24 ofthe PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 of the '923 patent, respectively.
116. The examiner identified the' 184 patent, and specifically Figures 1-3 and col. 6:41 -col. 8:62, as a "document ofparticular relevance" to claims 1-10 of the PCT application, such that "the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone." Claims 1-10 ofthe PCT application are identical to claims 1-10 ofthe claims originally sought in the application that led to the '923 patent, and claims 1,2,6, 7, and 8 of the PCT application are nearly identical to the claims that
ultimately issued as claims 1,2,3,4, and 5 ofthe '923 patent, respectively, which correspond to
the claims after they were amended in September 2003, after the search report was issued.
117. The examiner also identified the' 184 patent, and specifically Figures 1-3 and col.
6:41 -col. 8:62, as a "document ofparticular relevance" to claims 11-39 ofthe PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 11-39 of the PCT application are identical to claims 11-39 of the claims originally sought in the application that led to the '923 patent. Claims 27-29 and 30-39 of the PCT application are identical to the claims that ultimately issued as claims 28-30 and 6-15 ofthe '923 patent, respectively, which correspond to the claims after they were amended in September 2003, after the search report was issued. Further, claims 14-20 and 23-24 of the PCT application are nearly identical to the claims that ultimately issued as claims 17-23 and 25-26 ofthe '923 patent, respectively.
118. The examiner identified the '692 patent, and specifically Figures 1-5 and col. 2: 54-58, as a "document ofparticular relevance" to claims 11-20 ofthe PCT application, such that "the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art." Claims 11-20 of the PCT application are identical to claims 11-20 of the claims originally sought in the application that led to the '923 patent. Claims 14-20 of the PCT application are nearly identical to the claims that ultimately issued as claims 17-23 of the '923 patent, which correspond to the claims after they were amended in September 2003, after the search report was issued.
119. Therefore, on infonnation and belief, Applicants knew or should have known that
the ISR and ISR prior art references were material to the patentability ofthe claims prosecuted in the '923 application. On infonnation and belief, Applicants never disclosed the ISR or the ISR prior art references to the PTO during prosecution ofthe '923 application. On information and belief, failure to disclose the ISR and the ISR prior art references to the PTO during prosecution ofthe '923 application was done with an intent to deceive the PTO and constituted a breach of the duty of candor owed to the PTO.
Failure to Disclose the International Preliminary Examination Report and Material Prior Art from the International Preliminary Examination Report
An International Preliminary Examination Report ("IPER") was also issued in connection with the PCT application on January 23,2003. On information and belief, the IPER was transmitted to Applicants and Applicants received it.
In the IPER, the PCT examiner stated: "Claims 1-8 and 10 lack novelty under PCT Article 33(2) as being anticipated by Baker, et al."; "Claim 9 lacks an inventive step under PCT Article 33(3) as being obvious over Baker, et al."; and "Claims 11-39 lack an inventive step under PCT Article 33(3) as being obvious over Baker, et al in view ofMarberg, et al." (Baker et al. and Marberg et al. shall be collectively referred to as "the IPER prior art references").
On information and belief, the "Baker" reference referred to in the IPER corresponds to the '793 patent disclosed in the ISR, whose first named inventor is "Baker," while the "Marberg" reference referred to in the IPER corresponds to the '692 patent disclosed in the ISR, whose first named inventor is "Marberg."
On information and belief, Applicants knew or should have known that the IPER and IPER prior art references were material to the patentability ofthe claims prosecuted in the '923 application. On information and belief, Applicants never disclosed the IPER or IPER prior
art references to the PTO during prosecution ofthe '923 patent. On infonnation and belief,
failure to disclose the IPER and IPER prior art references to the PTO during prosecution ofthe '923 application was done with an intent to deceive the PTO and constituted a breach ofthe duty ofcandor owed to the PTO.
FOURTH AFFIRMATIVE DEFENSE (Laches, Equitable Estoppel, Consent and Waiver)
124. Calypso's claims are barred in whole or in part by the doctrine oflaches, the doctrine ofequitable estoppel, Calypso's consent, and waiver at least because Calypso and T-Mobile's predecessor, Voicestream Wireless Corporation, engaged in prior interactions, including entering into a non-disclosure agreement on January 15, 2002, for the purposes of "discuss[ ing] certain business transactions and to exchange infonnation for the purpose of exploring a potential business relationship for the benefit of the Parties." (D.1. 19-11). This agreement did not result in T-Mobile licensing the patent-in-suit or in any other business relationship between the parties. Calypso did not file this suit until November 13, 2008, more than six years after the non-disclosure agreement was signed.
FIFTH AFFIRMATIVE DEFENSE (Implied License and Patent Exhaustion)
125. Calypso's claims are barred in whole or in part by express or implied license and/or the doctrine ofpatent exhaustion at least for the reasons stated in paragraph 124 ofTMobile's Fourth Affinnative Defense.
SIXTH AFFIRMATIVE DEFENSE (Notice -35 U.S.c. § 287)
126. To the extent Calypso seeks damages for any alleged infringement prior to its giving actual notice ofthe '923 patent to T -Mobile, its claims are barred pursuant to 35 U.S.C. § 287(a).
SEVENTH AFFIRMATIVE DEFENSE (Lack of Standing)
127. To the extent Calypso does not own all rights to the '923 patent, Calypso's Second Amended Complaint must be dismissed pursuant to Rule 12(b)(1) of the Federal Rules of Civil Procedure for lack of standing.
EIGHTH AFFIRMATIVE DEFENSE (Failure to State a Claim)
128. Calypso fails to state a claim upon which relief can be granted pursuant to Rule 12(b)(6) ofthe Federal Rules ofCivil Procedure.
COUNTERCLAIMS
For its Counterclaims in the above-captioned action, T-Mobile USA, Inc. ("T-Mobile") hereby alleges as follows:
THE PARTIES
T -Mobile is a Delaware corporation whose principal place ofbusiness is located at 12920 S.B. 38th Street, Bellevue, WA 98006-1350.
On information and belief, Calypso Wireless, Inc. ("Calypso") is a Delaware corporation with its principal place of business located at 5100 Westheimer, Suite 200, Houston, TX 77056.
JURISDICTION AND VENUE
3. These counterclaims arise under federal law , and this Court has jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338, and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, and the Patent Laws ofthe United States, 35 U.S.C. § 1, et seq.
Venue is proper under at least 28 U.S.C. §§ 1391 and 1400(b).
Calypso has asserted that T-Mobile infringes U.S. Patent No. 6,680,923 ("the
'923 patent"). An actual controversy exists between T -Mobile and Calypso over the alleged infringement and invalidity ofthe '923 patent.
FIRST COUNTERCLAIM
(Non-Infringement)
6. T -Mobile realleges counterclaim paragraphs 1 through 5 as though fully set forth
herein.
7. T-Mobile has not infringed, and does not directly or indirectly infringe any valid,
enforceable claim of the '923 patent, either literally or under the doctrine of equivalents. T-Mobile does not infringe any ofthe asserted claims at least because none ofthe accused services switch between wireless networks depending on "predetermined parameters" including a "preestablished vicinity range," as required by one or more ofthe asserted claims.
8. Accordingly, T -Mobile is entitled to a declaratory judgment that it does not infringe any valid, enforceable claim ofthe '923 patent.
SECOND COUNTERCLAIM (Invalidity)
T-Mobile realleges counterclaim paragraphs 1 through 8 as though fully set forth herein.
The '923 patent is invalid for failing to satisfy one or more ofthe requirements of the Patent Act, 35 U.S.C. § 1, et seq., including, but not limited to, the conditions ofpatentability set forth in 35 U.S.c. §§ 101, 102, 103 and 112. For example, all ofthe asserted claims ofthe patent-in-suit are invalid pursuant to 35 U.S.C. §§ 102 and 103 at least in view ofone or more of the prior art references discussed in paragraphs 104-118 ofT-Mobi1e's Third Affirmative Defense for inequitable conduct.
27
11. Accordingly, T-Mobile is entitled to a declaratory judgment that the '923 patent is
invalid.
THIRD COUNTERCLAIM
(Un enforceability)
T -Mobile repeats and realleges counterclaim paragraphs 1 through 11 as though fully set forth herein.
For the reasons set forth above in T-Mobile's Third Affirmative Defense (affirmative defense paragraphs 96-123), the '923 patent is unenforceable as a result of inequitable conduct in its procurement, including, but not limited to, failure to disclose relevant material prior art and information ofwhich Calypso was aware to the U.S. Patent and Trademark Office during prosecution ofthe application that led to the '923 Patent. On information and belief, such acts were performed with intent to deceive the PTO.
DEMAND FOR A JURY TRIAL
14. T-Mobile demands a trial by jury on all issues so triable.
PRAYER FOR RELIEF
FOR THESE REASONS, T -Mobile respectfully requests that this Court enter judgment in its favor and grant the following relief:
a.
An order declaring that Calypso take nothing from T-Mobile on the claims asserted in the Second Amended Complaint;
b.
A declaration that T -Mobile does not infringe any valid and enforceable claim of the '923 patent;
c.
A declaration that the '923 patent is invalid and/or unenforceable;
d.
Judgment against Calypso in favor ofT-Mobile;
e.
Dismissal ofthe Second Amended Complaint with prejudice;
f.
An order declaring that this is an exceptional case under 35 U.S.C. § 285;
g.
An award to T-Mobile ofits costs, expenses, and reasonable attorney fees
order under 35 U.S.C. § 285 and all other applicable statutes, rules, and common law; and
h. Any such other relief as the Court may deem appropriate and just under
the circumstances.
Dated: March 2, 2010 Respectfully submitted,
/s/ Benjamin Hershkowitz Josh A. Krevitt, New York Bar No. 2568228 Lead Attorney Benjamin Hershkowitz, N.Y. Bar No. 2600559 Richard Koehl, N.Y. Bar No. 4193694 GillSON, DUNN & CRUTCHER LLP 200 Park Avenue New York, New York 10166 Telephone: (212) 351-4000 Facsimile: (212) 351-4035 jkrevitt@gibsondunn.com bhershkowitz@gibsondunn.com rkoehl@gibsondunn.com
Attorneysfor Defendant-Counterclaim Plaintiff T-Mobile USA, Inc.
CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). As such, this document was served on all counsel who have consented to electronic service on March 2,2010.
/s/ Benjamin Hershkowitz
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