Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 1 of 14 Page ID #:2691
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`JACK W. LONDEN (CA SBN 85776)
`JLonden@mofo.com
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`Telephone: 415.268.7000
`Facsimile: 415.268.7522
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`HECTOR G. GALLEGOS (CA SBN 175137)
`HGallegos@mofo.com
`ROSE S. LEE (CA SBN 294658)
`RoseLee@mofo.com
`MORRISON & FOERSTER LLP
`707 Wilshire Boulevard
`Los Angeles, California 90017-3543
`Telephone: 213.892.5200
`Facsimile: 213.892.5454
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`YUKA TERAGUCHI (CA SBN 260541)
`YTeraguchi@mofo.com
`MORRISON & FOERSTER LLP
`Shin-Marunouchi Building, 29th Floor
`1-5-1 Marunouchi
`Tokyo, Chiyoda-ku 100-6529, Japan
`Telephone: +81 3.3214.6522
`Facsimile: +81 3.3214.6512
`Attorneys for Defendants
`NIKON CORPORATION and NIKON INC.
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`
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`RED.COM, LLC, a Nevada limited liability
`company,
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`Plaintiff,
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`v.
`NIKON CORPORATION, a Japanese
`corporation and NIKON INC., a New York
`corporation,
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`Defendants.
`
`Case No. 8:22-cv-01048-FWS-
`JDE
`NIKON CORPORATION
`AND NIKON INC.’S
`ANSWER TO RED.COM,
`LLC’S COMPLAINT FOR
`PATENT INFRINGEMENT
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`Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 2 of 14 Page ID #:2692
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`ANSWER
`Defendants Nikon Corporation and Nikon Inc. (collectively, “Nikon”) hereby
`respond to RED.com, LLC’s (“RED”) Complaint for Patent Infringement (ECF No.
`1). Except as expressly admitted below, Nikon denies each and every allegation of
`the Complaint. Nikon adopts the headings used in the Complaint for ease of
`reference. To the extent the headings contain factual and legal characterizations,
`Nikon denies such characterizations.
`PARTIES
`1.
`Nikon lacks knowledge or information sufficient to form a belief about
`the truth of the allegations in Paragraph 1, and on that basis denies them.
`2.
`Nikon admits that Nikon Corporation is a corporation organized and
`existing under the laws of Japan, with its principal place of business at 2-15-3,
`Konan, Minato-ku, Tokyo 108-6290, Japan. Nikon admits that Nikon Inc. is a
`corporation organized and existing under the laws of New York, with its principal
`place of business at 1300 Walt Whitman Rd, Melville, NY 11747. Nikon admits
`that Nikon Inc. is wholly-owned by a non-party Nikon entity, which in turn is
`wholly-owned by Nikon Corporation. Nikon denies the remaining allegations of
`Paragraph 2.
`3.
`Nikon admits that Nikon Inc. has transacted and continues to transact
`business in this judicial district, including advertising, marketing, selling,
`distributing, and servicing cameras in this judicial district by itself or through
`affiliates or entities based in California. Nikon denies the remaining allegations of
`Paragraph 3.
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`JURISDICTION AND VENUE
`4.
`Nikon admits that this Court has subject matter jurisdiction over this
`patent infringement action under 28 U.S.C. §§1331 and 1338.
`5.
`Nikon admits that venue is proper for the purpose of this lawsuit only.
`Nikon further admits that Nikon Inc. has a service and repair center located at 1907
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`Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 3 of 14 Page ID #:2693
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`East 29th Street, Signal Hill, CA 90755. Nikon further admits that, in Carl Zeiss
`AG et al. v. Nikon Corporation et al., No. 2:17-cv-7083-RGK (ECF No. 35), Nikon
`stated that “Nikon Corporation sells cameras to Nikon Inc. in Japan, which Nikon
`Inc. then imports into the United States”; “Nikon Inc. has conducted and continues
`to conduct business in the Central District of California”; and “Nikon Inc. imports,
`services and sells digital camera products in the Central District of California.”
`Nikon denies the remaining allegations in Paragraph 5.
`GENERAL ALLEGATIONS
`6.
`Nikon lacks knowledge or information sufficient to form a belief about
`the truth of the allegations in Paragraph 6, and on that basis denies them.
`7.
`Nikon lacks knowledge or information sufficient to form a belief about
`the truth of the remaining allegations in Paragraph 7, and on that basis denies them.
`RED’s Inventions Disclosed in U.S. Patent No. 7,830,967
`8.
`Nikon admits that on its face, U.S. Patent No. 7,830,967 (the “’967
`patent”) is entitled “Video Camera” and issued on November 9, 2010. Nikon lacks
`knowledge or information sufficient to form a belief about the truth of the
`remaining allegations in Paragraph 8, and on that basis denies them.
`9.
`Nikon admits that Exhibit RED-PAT-1 purports to be a copy of the
`’967 patent.
`10. The allegations in Paragraph 10 selectively characterize contents of the
`’967 patent, which speaks for itself. To the extent this paragraph otherwise requires
`a response, Nikon denies the allegations of Paragraph 10.
`RED’s Inventions Disclosed in U.S. Patent No. 8,174,560
`11. Nikon admits that on its face, U.S. Patent No. 8,174,560 (the “’560
`Patent”) is entitled “Video Camera” and issued on May 8, 2012. Nikon further
`admits that on its face, Ex Parte Reexamination Certification U.S. 8,174,560 C1
`issued on May 16, 2014. Nikon lacks knowledge or information sufficient to form
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`Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 4 of 14 Page ID #:2694
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`a belief about the truth of the remaining allegations in Paragraph 11, and on that
`basis denies them.
`12. Nikon admits that Exhibit RED-PAT-2 purports to be a copy of the
`’560 patent and the Ex Parte Reexamination Certificate.
`13. The allegations in Paragraph 13 selectively characterize contents of the
`’560 patent, which speaks for itself. To the extent this paragraph otherwise requires
`a response, Nikon denies the allegations of Paragraph 13.
`RED’s Inventions Disclosed in U.S. Patent No. 9,245,314
`14. Nikon admits that on its face, U.S. Patent No. 9,245,314 (the “’314
`patent”) is entitled “Video Camera” and issued on January 26, 2016. Nikon lacks
`knowledge or information sufficient to form a belief about the truth of the
`remaining allegations in Paragraph 14, and on that basis denies them.
`15. Nikon admits that Exhibit RED-PAT-3 purports to be a copy of the
`’314 patent.
`16. The allegations in Paragraph 16 selectively characterize contents of the
`’314 patent, which speaks for itself. To the extent this paragraph otherwise requires
`a response, Nikon denies the allegations of Paragraph 16.
`RED’s Inventions Disclosed in U.S. Patent No. 9,436,976
`17. Nikon admits that on its face, U.S. Patent No. 9,436,976 (the “’976
`Patent”) is entitled “Video Camera” and issued on September 16, 2016. Nikon
`lacks knowledge or information sufficient to form a belief about the truth of the
`remaining allegations in Paragraph 17, and on that basis denies them.
`18. Nikon admits that Exhibit RED-PAT-4 purports to be a copy of the
`’976 patent.
`19. The allegations in Paragraph 19 selectively characterize contents of the
`’976 patent, which speaks for itself. To the extent this paragraph otherwise requires
`a response, Nikon denies the allegations of Paragraph 19.
`RED’s Inventions Disclosed in U.S. Patent No. 9,521,384
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`Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 5 of 14 Page ID #:2695
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`20. Nikon admits that on its face, U.S. Patent No. 9,521,384 (the “’384
`Patent”) is entitled “Green Average Subtraction in Image Data” and issued on
`December 13, 2016. Nikon lacks knowledge or information sufficient to form a
`belief about the truth of the remaining allegations in Paragraph 20, and on that basis
`denies them.
`21. Nikon admits that Exhibit RED-PAT-5 purports to be a copy of the
`’384 patent.
`22. The allegations in Paragraph 22 selectively characterize contents of the
`’384 patent, which speaks for itself. To the extent this paragraph otherwise requires
`a response, Nikon denies the allegations of Paragraph 22.
`RED’s Inventions Disclosed in U.S. Patent No. 9,716,866
`23. Nikon admits that on its face, U.S. Patent No. 9,716,866 (the “’866
`Patent”) is entitled “Green Image Data Processing” and issued on July 25, 2017.
`Nikon lacks knowledge or information sufficient to form a belief about the truth of
`the remaining allegations in Paragraph 23, and on that basis denies them.
`24. Nikon admits that Exhibit RED-PAT-6 purports to be a copy of the
`’866 patent.
`25. The allegations in Paragraph 25 selectively characterize contents of the
`’866 Patent, which speaks for itself. To the extent this paragraph otherwise requires
`a response, Nikon denies the allegations of Paragraph 25.
`RED’s Inventions Disclosed in U.S. Patent No. 10,582,168
`26. Nikon admits that on its face, U.S. Patent No. 10,582,168 (the “’168
`Patent”) is entitled “Green Image Data Processing” and issued on March 3, 2020.
`Nikon lacks knowledge or information sufficient to form a belief about the truth of
`the remaining allegations in Paragraph 26, and on that basis denies them.
`27. Nikon admits that Exhibit RED-PAT-7 purports to be a copy of the
`’168 patent.
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`Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 6 of 14 Page ID #:2696
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`28. The allegations in Paragraph 28 selectively characterize contents of the
`’168 Patent, which speaks for itself. To the extent this paragraph otherwise requires
`a response, Nikon denies the allegations of Paragraph 28.
`Nikon’s Products That Practice and/or Embody Those Inventions
`29. Nikon denies the allegations of Paragraph 29.
`30. Nikon denies the allegations of Paragraph 30.
`Nikon Knew About RED’s Inventions
`31. Nikon denies the allegations of Paragraph 31.
`32. Nikon admits that it knew about RED’s prior lawsuits involving one or
`more of the Asserted Patents, including: Red.com, LLC v. Kinefinity, Inc., 8-21-cv-
`00041 (C.D. Cal.); Red.com, Inc. v. Sony Corporation of America et al., 2-16-cv-
`00937 (E.D. Tex.); Red.com, Inc. v. Nokia USA Inc. et al., 8-16-cv-00594 (C.D.
`Cal.); and Red.com, Inc. v. Sony Corporation of America et al., 3-13-cv-00334
`(S.D. Cal.). Nikon further admits that it has known of the Asserted Patents at least
`as of the date of the service of the Complaint. Nikon denies the remaining
`allegations of Paragraph 32.
`33. Nikon admits that it provides manuals and reference guides for the Z9
`cameras in its Download Center and that these manuals and reference guides
`contain information on the features of the Z9 cameras including the N-RAW
`recording mode. Nikon denies the remaining allegations of this paragraph.
`COUNT 1: PATENT INFRINGEMENT UNDER 35 U.S.C. § 271
`Nikon Infringes Claims of the ’967 Patent
`34. Nikon incorporates its responses to paragraphs 1-33.
`35. Nikon denies the allegations of Paragraph 35.
`36. Nikon admits that Nikon Inc. offers to sell and sells the Z9 cameras
`within the United States and imports these cameras into the United States. Nikon
`denies the remaining allegations of Paragraph 36.
`37. Nikon denies the allegations of Paragraph 37.
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`Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 7 of 14 Page ID #:2697
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`38. Nikon denies the allegations of Paragraph 38.
`39. Nikon denies the allegations of Paragraph 39.
`40. Nikon denies the allegations of Paragraph 40.
`COUNT 2: PATENT INFRINGEMENT UNDER 35 U.S.C. § 271
`Nikon Infringes Claims of the ’560 Patent
`41. Nikon incorporates its responses to Paragraphs 1-32.
`42. Nikon denies the allegations of Paragraph 42.
`43. Nikon admits that Nikon Inc. offers to sell and sells the Z9 cameras
`within the United States and imports these cameras into the United States. Nikon
`denies the remaining allegations of Paragraph 43.
`44. Nikon denies the allegations of Paragraph 44.
`45. Nikon denies the allegations of Paragraph 45.
`46. Nikon denies the allegations of Paragraph 46.
`47. Nikon denies the allegations of Paragraph 47.
`COUNT 3: PATENT INFRINGEMENT UNDER 35 U.S.C. § 271
`Nikon Infringes Claims of the ’314 Patent
`48. Nikon incorporates its responses to Paragraphs 1-32.
`49. Nikon denies the allegations of Paragraph 49.
`50. Nikon admits that Nikon Inc. offers to sell and sells the Z9 cameras
`within the United States and imports these cameras into the United States. Nikon
`denies the remaining allegations of Paragraph 50.
`51. Nikon denies the allegations of Paragraph 51.
`52. Nikon denies the allegations of Paragraph 52.
`53. Nikon denies the allegations of Paragraph 53.
`54. Nikon denies the allegations of Paragraph 54.
`COUNT 4: PATENT INFRINGEMENT UNDER 35 U.S.C. § 271
`Nikon Infringes Claims of the ’976 Patent
`55. Nikon incorporates its responses to Paragraphs 1-32.
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`Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 8 of 14 Page ID #:2698
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`56. Nikon denies the allegations of Paragraph 56.
`57. Nikon admits that Nikon Inc. offers to sell and sells the Z9 cameras
`within the United States and imports these cameras into the United States. Nikon
`denies the remaining allegations of Paragraph 57.
`58. Nikon denies the allegations of Paragraph 58.
`59. Nikon denies the allegations of Paragraph 59.
`60. Nikon denies the allegations of Paragraph 60.
`61. Nikon denies the allegations of Paragraph 61.
`COUNT 5: PATENT INFRINGEMENT UNDER 35 U.S.C. § 271
`Nikon Infringes Claims of the ’384 Patent
`62. Nikon incorporates its responses to Paragraphs 1-32.
`63. Nikon denies the allegations of Paragraph 63.
`64. Nikon admits that Nikon Inc. offers to sell and sells the Z9 cameras
`within the United States and imports these cameras into the United States. Nikon
`denies the remaining allegations of Paragraph 64.
`65. Nikon denies the allegations of Paragraph 65.
`66. Nikon denies the allegations of Paragraph 66.
`67. Nikon denies the allegations of Paragraph 67.
`68. Nikon denies the allegations of Paragraph 68.
`COUNT 6: PATENT INFRINGEMENT UNDER 35 U.S.C. § 271
`Nikon Infringes Claims of the ’866 Patent
`69. Nikon incorporates its responses to Paragraphs 1-32.
`70. Nikon denies the allegations of Paragraph 70.
`71. Nikon admits that Nikon Inc. offers to sell and sells the Z9 cameras
`within the United States and imports these cameras into the United States. Nikon
`denies the remaining allegations of Paragraph 71.
`72. Nikon denies the allegations of Paragraph 72.
`73. Nikon denies the allegations of Paragraph 73.
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`Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 9 of 14 Page ID #:2699
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`74. Nikon denies the allegations of Paragraph 74.
`75. Nikon denies the allegations of Paragraph 75.
`COUNT 7: PATENT INFRINGEMENT UNDER 35 U.S.C. § 271
`Nikon Infringes Claims of the ’168 Patent
`76. Nikon incorporates its responses to Paragraphs 1-32.
`77. Nikon denies the allegations of Paragraph 77.
`78. Nikon admits that Nikon Inc. offers to sell and sells the Z9 cameras
`within the United States and imports these cameras into the United States. Nikon
`denies the remaining allegations of Paragraph 78.
`79. Nikon denies the allegations of Paragraph 79.
`80. Nikon denies the allegations of Paragraph 80.
`81. Nikon denies the allegations of Paragraph 81.
`82. Nikon denies the allegations of Paragraph 82.
`RESPONSE TO RED’S PRAYER FOR RELIEF
`Nikon denies that RED is entitled to any relief in this action and asks the
`Court to deny any and all of the relief requested by RED in its Complaint.
`ADDITIONAL DEFENSES
`Nikon asserts the following additional defenses without admitting that it
`bears the burden of proof as to any of them.
`First Additional Defense – Failure to State a Claim
`RED’s claims for alleged patent infringement fail to state a claim upon which
`relief can be granted.
`Second Additional Defense – Noninfringement
`Nikon does not infringe and has not infringed any valid and enforceable
`claim of the ’967 patent, ’560 patent, ’314 patent, ’976 patent, 384 patent, ’866
`patent, or ’168 patent (collectively, the “Patents-in-Suit”)), whether directly or
`indirectly, literally or under the doctrine of equivalents.
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`Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 10 of 14 Page ID #:2700
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`Third Additional Defense – Invalidity
`One or more claims of each of the Patents-in-Suit are invalid for failure to
`satisfy the conditions for patentability set forth in 35 U.S.C., including without
`limitation §§ 101, 102, 103 and/or 112.
`Fourth Additional Defense – Estoppel
`RED’s requested relief is barred, in whole or in part, by the doctrine of
`estoppel, including, but not limited to, the doctrine of prosecution history estoppel
`arising from the patentee’s actions, representations, and/or conduct before the
`United States Patent and Trademark Office (“PTO”) during prosecution of the
`Patents-in-Suit.
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`Fifth Additional Defense – Inequitable Conduct
`The ’967 patent, ’560 patent, ’314 patent, and ’976 patent are unenforceable
`under the doctrine of inequitable conduct.
`On information and belief, RED offered for sale and publicly used a RED
`camera that incorporates the claimed invention of at least independent claims 1, 6,
`and 12 of the ’560 patent more than a year before the effective filing date of the
`’560 patent. RED’s failure to disclose the offer for sale and public use of the RED
`camera to the PTO during prosecution of the ’560 patent bars enforcement of the
`’560 patent and its related patents, including the ’967 patent, ’314 patent, and ’976
`patent.
`The ’560 patent issued from U.S. Patent Application No. 12/101,882 (“the
`’882 application”). The ’882 application claims priority to Provisional Application
`No. 60/911,196 (“the ’196 application”) filed on April 11, 2007, and Provisional
`Application No. 61/017,406 (“the ’406 application”) filed on December 28, 2007.
`The ’196 application does not provide written description support as required
`pursuant to 35 U.S.C. section 112 for at least independent claims 1, 6, and 12 of the
`’560 patent. For example, the ’196 application lacks written description support for
`at least the limitations “convert the focused light into raw mosaiced image data with
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`Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 11 of 14 Page ID #:2701
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`a resolution of at least 2 k at a frame rate of at least about twenty-three frames per
`second” (claim 1); “converting the light received by the light sensitive device into
`raw digital mosaiced image data having a horizontal resolution of at least 2 k at a
`rate of at least greater than twenty three frames per second” (claim 6); and “convert
`the focused light into raw mosaiced image data with a horizontal resolution of at
`least 2 k and at a frame rate of at least about twenty three frames per second” (claim
`12). In addition, the ’196 application lacks written description support for at least
`the limitation “compress[ing] . . . the raw mosaiced image data at a compression
`ratio of at least six to one” (claims 1 and 12). Therefore, the ’560 patent is not
`entitled to receive the benefit of the ’196 application’s April 11, 2007 filing date.
`The earliest effective filing date for the ’560 patent would be no earlier than the
`’406 application’s December 28, 2007 filing date.
`On information and belief, in April 2006, RED offered a RED camera
`incorporating the claimed invention of the ’560 patent for sale at the National
`Association of Broadcasters show in Las Vegas, Nevada. On information and
`belief, many attendees paid a $1,000 deposit to reserve the RED camera, which was
`scheduled to be delivered by the end of 2006 at the time of the show.
`Moreover, on information and belief, in November 2006, RED participated
`in a public demonstration of the RED camera at the Nuart Theatre in Los Angeles,
`California. On information and belief, RED exhibited the RED camera and videos
`taken by the RED camera at this demonstration. The public use of the RED camera
`showed that RED sufficiently reduced the claimed invention to practice at least by
`November 2006.
`Both RED’s offer for sale and public use of the RED camera occurred more
`than a year before December 28, 2007, the earliest possible effective filing date of
`the ’560 patent.
`However, RED, James Jannard and Thomas Graeme Nattress (the named
`inventors of the ’560 patent), and their representatives did not disclose the RED
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`Case 8:22-cv-01048-FWS-JDE Document 19 Filed 09/06/22 Page 12 of 14 Page ID #:2702
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`camera’s April 2006 offer for sale or November 2006 public use during the
`prosecution of the ’560 patent. The offer for sale and public use of the RED camera
`are material, because the PTO would not have allowed the ’560 patent had it been
`aware of these undisclosed events. Also, on information and belief, RED, the
`named inventors of the ’560 patent, and their representatives acted with a specific
`intent to deceive the PTO by withholding information about these events, because
`they knew that disclosure of either of these events to the PTO would prevent the
`issuance of the ’560 patent.
`Accordingly, the ’560 patent and its related patents are unenforceable under
`the doctrine of inequitable conduct.
`Sixth Additional Defense – Unclean Hands
`RED’s claims for relief are barred, in whole or in part, by the doctrine of
`unclean hands.
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`Seventh Additional Defense – Dedication to the Public
`RED’s claims for alleged infringement of the Patents-in-Suit are barred to the
`extent that the patentee has dedicated to the public the systems, methods, and
`products disclosed in the Patents-in-Suit but not claimed therein.
`Eighth Additional Defense – Ensnarement of Prior Art
`To the extent that RED alleges that Nikon infringes the Patents-in-Suit by
`equivalents, RED’s claims for relief are barred, in whole or in part, by ensnaring the
`prior art.
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`Ninth Additional Defense – Limitation on Recovery
`Any recovery of damages by RED is limited by 35 U.S.C. § 286.
`Tenth Additional Defense – Marking
`Upon information and belief, RED’s claims for relief and prayer for damages
`are limited or barred under 35 U.S.C. § 287.
`Eleventh Additional Defense – Limitation on Recovery of Costs
`RED is precluded from seeking recovery of costs by 35 U.S.C. § 288.
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`Twelfth Additional Defense – No Entitlement to Injunctive Relief
`RED is not entitled to injunctive relief because it has, at a minimum, no
`irreparable injury and an adequate remedy at law for Nikon’s alleged infringement
`of the Patents-in-Suit. RED will be unable to establish that (1) it has suffered any
`injury, let alone an irreparable injury; (2) remedies available at law, such as
`monetary damages, would be inadequate to compensate for any injury; (3)
`considering the balance of hardships between RED and Nikon, a remedy in equity
`is warranted; and (4) the public interest would be served by an injunction.
`Thirteenth Additional Defense – No Enhanced Damages
`RED has not shown that it is entitled to enhanced damages under 35 U.S.C.
`§ 284 at least because it has not shown that any alleged infringement is willful.
`RED has also failed to show this is an exceptional case in favor of RED under 35
`U.S.C. § 285.
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`Reservation of Defenses
`Nikon reserves the right to seek leave to amend its Answer to plead
`additional defenses and/or to plead counterclaims and/or to supplement its existing
`defenses if information developed through discovery, trial, or otherwise merits such
`additional defenses, counterclaims, or supplementation.
`PRAYER FOR RELIEF
`WHEREFORE, Nikon prays that the Court enter judgment in its favor and
`against RED as follows:
`1.
`That RED takes nothing and is denied any relief whatsoever;
`2.
`That RED’s claims against Nikon be dismissed in their entirety and
`with prejudice;
`3.
`That Nikon be awarded the costs incurred in connection with this
`action;
`4.
`That this action be deemed exceptional under 35 U.S.C. § 285, such
`that Nikon is awarded its fees in this action, including attorneys’ fees; and
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`5.
`and proper.
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`That Nikon be awarded such further relief as the Court may deem just
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`DEMAND FOR JURY TRIAL
`Nikon hereby demands a trial by jury.
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`Dated: September 6, 2022
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`By: Jack Londen
`Jack W. Londen
`Attorneys for Defendants
`NIKON CORPORATION and
`NIKON INC.
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