Case 1:24-cv-00733-MN Document 18 Filed 10/04/24 Page 1 of 37 PageID #: 935
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
`
`C.A. No. 24-733-MN
`
`JURY TRIAL DEMANDED
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`
`
`)))))))))
`
`
`
`Defendant/Counterclaimant
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`
`
`
`DEFENDANT PAYRANGE INC.’S AMENDED ANSWER TO COMPLAINT
`AND COUNTERCLAIMS
`
`Defendant PayRange Inc. (“PayRange”), by and through the undersigned attorneys,
`
`hereby answers the Complaint of Plaintiff Alliance Laundry Systems LLC (“Alliance”).
`
`INTRODUCTION
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`1.
`
`PayRange admits that Alliance manufactures, distributes, and sells commercial
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`laundry equipment. PayRange lacks knowledge or information sufficient to admit or deny the
`
`remaining allegations of Paragraph 1 of the Complaint and, on that basis, denies them.
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`2.
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`PayRange lacks knowledge or information sufficient to admit or deny the
`
`allegations of Paragraph 2 of the Complaint and, on that basis, denies them.
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`3.
`
`PayRange lacks knowledge or information sufficient to admit or deny the
`
`allegations of Paragraph 3 of the Complaint and, on that basis, denies them.
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`4.
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`PayRange admits that it is the assignee of U.S. Patent Nos. 11,972,423 (“’423
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`Patent”); 11,966,920 (“’920 Patent”); and 11,481,772 (“’772 Patent”). PayRange admits that the
`
`Complaint purports to refer to these patents as the “DJ Patents.”
`
`
`
`Plaintiff/Counterdefendant,
`
`v.
`
`ALLIANCE LAUNDRY SYSTEMS LLC,
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`
`
`
`
`
`PAYRANGE INC.,
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`
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`
`

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`5.
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`PayRange admits that it sent two letters alleging that Alliance infringes certain
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`claims of the DJ Patents in connection with the installation and use of its “Speed Queen” and
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`“Huebsch” mobile applications and payment systems.
`
`6.
`
`PayRange admits that Paragraph 6 purports to state Alliance’s reason for bringing
`
`this action. PayRange is without knowledge or information sufficient to form a belief as to the
`
`truth of those allegations, and therefore denies them.
`
`THE PARTIES
`
`7.
`
`On information and belief, PayRange admits Alliance is a limited liability
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`company organized in Delaware with a principal place of business at 221 Shepard Street, Ripon,
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`Wisconsin, 54971. On information and belief, PayRange admits that Alliance manufactures,
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`distributes, and sells commercial laundry equipment, including payment mechanisms for such
`
`equipment. PayRange lacks knowledge or information sufficient to admit or deny the remaining
`
`allegations of Paragraph 7 of the Complaint and, on that basis, denies them.
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`8.
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`PayRange admits that it is a Tennessee corporation with its principal place of
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`business at 9600 NE Cascades Parkway, Suite 280, Portland, OR 97220.
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`JURISDICTION AND VENUE
`
`9.
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`PayRange admits that this Court has subject matter jurisdiction over this action
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`and that this action involves claims arising under the patent laws of the United States, 35 U.S.C.
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`§ 1, et seq., and under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202.
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`10.
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`PayRange does not contest that an actual and justiciable controversy exists
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`between Alliance and PayRange regarding Alliance’s infringement of the DJ Patents. PayRange
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`specifically denies that Alliance is entitled to any relief.
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`2
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`

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`11.
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`PayRange does not contest that this Court has personal jurisdiction solely for the
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`purposes of this particular action. PayRange admits that it distributes certain products and
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`services in Delaware. PayRange admits that it filed a complaint in this District against CSC
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`ServiceWorks, Inc. (“CSC”), on March 15, 2023, asserting the ’772 Patent. PayRange admits
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`that it filed two other complaints in this District against CSC asserting other patents. On
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`information and belief, PayRange admits that Alliance is incorporated and conducts business in
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`Delaware. PayRange denies the remaining allegations of Paragraph 11.
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`12.
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`PayRange does not contest that venue is proper in this Court solely for the
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`purposes of this particular action. PayRange admits that it filed a complaint in this District
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`against CSC on March 15, 2023, asserting the ’772 Patent. PayRange denies the remaining
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`allegations of Paragraph 12.
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`13.
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`PayRange does not contest that this Court has personal jurisdiction over PayRange
`
`and that venue is proper in this Court for the purposes of this case only.
`
`i.
`
`PayRange admits that it previously initiated a lawsuit in this Court against CSC
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`for infringement of the ’772 Patent. PayRange further admits that it has alleged
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`that Alliance has infringed and continues to infringe the ’772 Patent. PayRange
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`further admits that Alliance purports to make the ’772 Patent a subject of this
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`Action (Count I).
`
`ii.
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`PayRange admits that it previously initiated a lawsuit in this Court against CSC
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`to enforce the ’772 Patent. PayRange does not contest that the infringement of
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`the ’772 Patent by Alliance should be litigated in this District.
`
`iii.
`
`PayRange admits that it identified the lawsuits against CSC in letters to Alliance
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`alleging infringement of the ’772 Patent.
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`3
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`

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`iv. On information and belief, PayRange admits that Alliance is incorporated in
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`Delaware. PayRange denies the remaining allegations in Paragraph 13(iv).
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`v.
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`PayRange lacks knowledge or information sufficient to admit or deny the
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`allegations of Paragraph 13(v) of the Complaint and, on that basis, denies them.
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`THE DECLARATORY JUDGMENT PATENTS
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`14.
`
`PayRange admits that the Complaint purports to refer to the patents at issue as the
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`DJ Patents.
`
`15.
`
`PayRange admits that on October 25, 2022, the U.S. Patent and Trademark Office
`
`(“Patent Office”) issued the ’772 Patent, entitled “Method and System for Presenting
`
`Representations of Payment Accepting Unit Events” to Paresh K. Patel. PayRange admits that
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`Alliance purports to have attached a true and correct copy of the ’772 Patent as Exhibit 1 to the
`
`Complaint. PayRange admits that it is the current assignee of the ’772 Patent.
`
`16.
`
`PayRange admits that on April 23, 2024, the Patent Office issued the ’920 Patent,
`
`entitled “Method and System for Presenting Representations of Payment Accepting Unit Events”
`
`to Paresh K. Patel. PayRange admits that Alliance purports to have attached a true and correct
`
`copy of the ’920 Patent as Exhibit 2 to the Complaint. PayRange admits that it is the current
`
`assignee of the ’920 Patent.
`
`17.
`
`PayRange admits that the ’920 Patent is a continuation of U.S. Patent Application
`
`No. 17/973,507, filed on October 25, 2022, which is a continuation of U.S. Patent Application
`
`No. 17/654,732, filed on March 14, 2022, and issued as the ’772 Patent on October 25, 2022.
`
`18.
`
`PayRange admits that on April 30, 2024, the Patent Office issued the ’423 Patent,
`
`entitled “Method and System for Presenting Representations of Payment Accepting Unit Events”
`
`to Paresh K. Patel. PayRange admits that Alliance purports to have attached a true and correct
`
`4
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`

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`Case 1:24-cv-00733-MN Document 18 Filed 10/04/24 Page 5 of 37 PageID #: 939
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`copy of the ’423 Patent as Exhibit 3 to the Complaint. PayRange admits that it is the current
`
`assignee of the ’423 Patent.
`
`19.
`
`PayRange admits that the ’423 Patent is a continuation of U.S. Patent Application
`
`No. 17/973,507, filed October 25, 2022, which is a continuation of U.S. Patent Application No.
`
`17/654,732, filed March 14, 2022, and issued as the ’772 Patent on October 25, 2022.
`
`FACTUAL BACKGROUND
`
`20.
`
`PayRange admits that on March 3, 2020, it filed an action in the U.S. District
`
`Court for the Southern District of Florida against KioSoft Technologies, LLC (“KioSoft”),
`
`alleging infringement of other patents owned by PayRange. PayRange Inc. v. KioSoft
`
`Technologies, LLC et al, Case No. 20-cv-20970. The remainder of Paragraph 20 of the Complaint
`
`contains statements of opinion and legal conclusions to which no response is required. To the
`
`extent a response is required, PayRange denies the remaining allegations in that paragraph.
`
`21.
`
`PayRange admits that on October 21, 2020, it filed another action in the U.S.
`
`District Court for the Southern District of Florida against KioSoft. PayRange Inc. v. KioSoft
`
`Technologies, LLC et al, Case No. 20-cv-24342. PayRange also admits that on July 25, 2023,
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`KioSoft filed a petition for post grant review of the ’772 Patent, one of the DJ Patents, at the
`
`Patent Trial and Appeal Board (“PTAB”). The remainder of Paragraph 21 of the Complaint
`
`contains statements of opinion and legal conclusions to which no response is required. To the
`
`extent a response is required, PayRange denies the remaining allegations in that paragraph.
`
`22.
`
`PayRange admits that a list of patent cases between PayRange and KioSoft is
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`provided in Paragraph 22.
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`5
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`

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`23.
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`PayRange admits that on December 14, 2022, the PTAB issued a final written
`
`decision in PGR2021-00093 finding claims 1-6, 8-10, 14, 15, 18-25 of U.S. Patent No.
`
`10,891,614 (“’614 Patent”) unpatentable under 35 U.S.C. §101.
`
`24.
`
`PayRange admits that it did not appeal the PTAB’s final written decision in
`
`PGR2021-00093.
`
`25.
`
`PayRange admits that the ’772 Patent is a continuation of U.S. Patent Application
`
`No. 17/147,305, filed January 12, 2021, which is a continuation of U.S. Patent Application No.
`
`15/603,400, filed May 23, 2017, and issued as the ’614 Patent on January 12, 2021.
`
`26.
`
`PayRange admits that KioSoft filed a petition for post-grant review of claims 1-
`
`20 of the ’772 Patent under 35 U.S.C. §§101 and 103. See KioSoft Technologies, LLC et al v.
`
`PayRange Inc., PTAB-PGR2023-00042. That document speaks for itself.
`
`27.
`
`PayRange admits that Paragraph 27 purports to show claims 1 of the ’772 Patent
`
`and ’614 Patent. The issued ’772 Patent and ’614 Patent are each a matter of public record, and
`
`they speak for themselves. PayRange denies the remaining allegations of Paragraph 27.
`
`28.
`
`PayRange admits that on November 22, 2023, PayRange disclaimed claims 1-6,
`
`8-10, and 12-20 of the ’772 Patent.
`
`29.
`
`PayRange admits that claim 11 of the ’772 Patent remained at issue in PGR2023-
`
`00042 following PayRange’s statutory disclaimer of certain other claims.
`
`30.
`
`PayRange admits that on February 5, 2024, KioSoft and PayRange filed a joint
`
`motion to dismiss PGR2023-00042.
`
`31.
`
`PayRange admits that in January 2024, PayRange and KioSoft resolved their
`
`dispute with a settlement.
`
`6
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`

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`32.
`
`PayRange admits that it issued a press release following its settlement with
`
`KioSoft. That document speaks for itself. PayRange admits that Alliance purports to have
`
`attached a true and correct copy of the press release as Exhibit 6 to the Complaint. PayRange
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`admits that it is the current assignee of the ’772 Patent.
`
`33.
`
`PayRange admits Paragraph 33 purports to quote the press release. The document
`
`speaks for itself.
`
`34.
`
`PayRange admits that on April 19, 2022, PayRange filed an action against CSC
`
`in this Court. PayRange Inc. v. CSC ServiceWorks, Inc. et al, C.A. No. 22-cv-00502-VAC.
`
`PayRange admits that the Complaint purports to refer to this case as the First Delaware CSC
`
`Action. The remainder of Paragraph 34 of the Complaint contains statements of opinion and
`
`legal conclusions to which no response is required. To the extent a response is required,
`
`PayRange denies the remaining allegations in that paragraph.
`
`35.
`
`PayRange admits that the First Delaware CSC Action alleged infringement of
`
`U.S. Patent Nos. 8,856,045; 10,438,208; and 10,891,608. PayRange admits that the DJ Patents
`
`are related to U.S. Patent No. 8,856,045.
`
`36.
`
`PayRange admits that it filed a second patent infringement action against CSC in
`
`this Court on March 15, 2023, and asserted the ’772 Patent against CSC. PayRange Inc. v. CSC
`
`ServiceWorks, Inc. et al, C.A. No. 23-cv-00278-MN. PayRange admits that the Complaint
`
`purports to refer to this case as the Second Delaware CSC Action.
`
`37.
`
`PayRange admits that in addition to the ’772 Patent, PayRange asserted U.S.
`
`Patent Nos. 8,856,045; 10,438,208; and 10,891,608 in the Second Delaware CSC Action.
`
`PayRange Inc. v. CSC ServiceWorks, Inc. et al, C.A. No. 23-cv-00278-MN, D.I. 73. PayRange
`
`admits that the DJ Patents are continuations and/or continuations-in-part of multiple patent
`
`7
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`

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`applications, including U.S. Patent Application No. 14/214,644, filed March 14, 2014, which
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`issued as U.S. Patent No. 8,856,045 on October 7, 2014.
`
`38.
`
`PayRange admits that it filed a third patent infringement action against CSC in
`
`this Court on March 4, 2024. PayRange Inc. v. CSC ServiceWorks, Inc. et al, C.A. No. 24-cv-
`
`00279-MN, D.I. 1. PayRange admits that the Complaint purports to refer to this action as the
`
`Third Delaware CSC Action.
`
`39.
`
`PayRange admits that it asserted U.S. Patent Nos. 10,719,833; 10,891,614; and
`
`11,488,174. PayRange Inc. v. CSC ServiceWorks, Inc. et al, C.A. No. 24-cv-00279-MN, D.I. 1.
`
`PayRange admits that the DJ Patents are continuations of multiple patent applications, including
`
`U.S. Patent Application No. 15/603,400, filed on May 23, 2017, which issued as U.S. Patent No.
`
`10,891,614.
`
`40.
`
`PayRange admits that both the KioSoft and CSC disputes involved multiple
`
`district court and PTAB proceedings. PayRange admits that a list of cases between PayRange
`
`and CSC is provided in Paragraph 40.
`
`41.
`
`PayRange admits that on October 9, 2023, CSC filed a petition for inter partes
`
`review of the ’772 Patent. CSC Serviceworks, Inc. v. PayRange Inc., IPR2023-01449, PTAB,
`
`Paper 1. That document speaks for itself.
`
`42.
`
`PayRange admits that on November 22, 2023, PayRange disclaimed claims 1-6,
`
`8-10, and 12-20 of the ’772 Patent.
`
`43.
`
`PayRange admits that claim 11 of the ’772 Patent remained at issue in IPR2023-
`
`01449 following PayRange’s statutory disclaimer of certain other claims.
`
`8
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`

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`44.
`
`PayRange admits that on April 12, 2024, the PTAB issued a decision granting
`
`institution of inter partes review of claim 11 of the ’772 Patent. CSC ServiceWorks, Inc. v.
`
`PayRange Inc., IPR2023-01449, PTAB, Paper 14. That document speaks for itself.
`
`45.
`
`PayRange admits that on April 17, 2024, CSC filed a motion to dismiss in the
`
`Second Delaware CSC Action. PayRange Inc. v. CSC ServiceWorks, Inc., 23-cv-00278-MN,
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`D.I. 79. That document speaks for itself.
`
`46.
`
`PayRange admits that on April 24, 2024, PayRange filed a notice of voluntary
`
`dismissal with prejudice of the Second Delaware CSC Action. PayRange Inc. v. CSC
`
`ServiceWorks, Inc., 23-cv-00278-MN, D.I. 82.
`
`47.
`
`PayRange admits that on April 24, 2024, PayRange also filed a notice of voluntary
`
`dismiss with prejudice of the Third Delaware CSC Action. PayRange Inc. v. CSC ServiceWorks,
`
`Inc., 23-cv-00279-MN, D.I. 8.
`
`48.
`
`PayRange admits that on April 25, 2024, PayRange and CSC jointly moved to
`
`terminate IPR2023-01449. CSC ServiceWorks, Inc. v. PayRange Inc., IPR2023-01449, Paper
`
`16.
`
`49.
`
`PayRange admits that the patentability of claim 11 of the ’772 Patent was never
`
`decided in the proceedings before this Court or the PTAB.
`
`50.
`
`PayRange admits that on March 14, 2024, PayRange sent a letter to Alliance
`
`alleging infringement of the ’772 Patent and allowed claims from the applications that
`
`subsequently issued as the ’920 and ’423 Patents.
`
`51.
`
`PayRange admits that on March 14, 2024, PayRange sent a letter to Alliance
`
`alleging infringement of the ’772 Patent and allowed claims from the applications that
`
`subsequently issued as the ’920 and ’423 Patents. That document speaks for itself. PayRange
`
`9
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`

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`Case 1:24-cv-00733-MN Document 18 Filed 10/04/24 Page 10 of 37 PageID #: 944
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`further admits that the Complaint purports to refer to claim 11 of the ’772 Patent, allowed claims
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`1-6, 8, 9, and 12-20 of U.S. Patent Application 18/197,070 (issued as the ’423 Patent), and claims
`
`1-6, 8, 9, and 12-20 of U.S. Patent Application 18/197,071 (issued as the ’920 Patent) collectively
`
`as the “DJ Claims.”
`
`52.
`
`Denied. PayRange’s March 14, 2024 Letter stated, “Alliance makes, uses, sells,
`
`and offers for sale both the ‘Speed Queen’ and the ‘Huebsch’ applications on the Google Play
`
`Store and the Apple App store […] By itself using those apps on mobile devices to carry out the
`
`method recited in claim 11, Alliance directly infringes claim 11 of the ‘772 Patent under 35
`
`U.S.C. § 271(a). Alliance also induces infringement of the ’772 Patent under 35 U.S.C. § 271(b)
`
`by actively encouraging infringement by its business partners and customers.” See Exhibit A, at
`
`3-4. PayRange further states that the remainder of the March 14, 2024 Letter speaks for itself.
`
`PayRange further admits that the Complaint purports to refer to the Speed Queen and Huebsch
`
`applications as the “Accused Instrumentalities.”
`
`53.
`
`PayRange admits that it provided infringement charts with its March 14, 2024
`
`Letter demonstrating Alliance’s infringement.
`
`54.
`
`PayRange admits that Alliance responded to PayRange’s letter. That document
`
`speaks for itself.
`
`55.
`
`PayRange admits that Alliance responded to PayRange’s March 14, 2024 Letter.
`
`That document speaks for itself. The remainder of Paragraph 55 of the Complaint contains
`
`statements of opinion and legal conclusions to which no response is required. To the extent a
`
`response is required, PayRange denies each and every remaining allegation in that paragraph.
`
`56.
`
`PayRange admits that it responded to Alliance’s April 25, 2024 Letter on May 17,
`
`2024.
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`10
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`57.
`
`PayRange admits that it sent Alliance a letter on May 17, 2024. That document
`
`speaks for itself.
`
`58.
`
`PayRange admits that it sent Alliance a letter on May 17, 2024. That document
`
`speaks for itself.
`
`59.
`
`On information and belief, PayRange admits that Alliance distributes equipment
`
`to operators in Delaware. PayRange lacks knowledge or information sufficient to admit or deny
`
`the remaining allegations of Paragraph 59 of the Complaint and, on that basis, denies them.
`
`60.
`
`PayRange admits that on May 31, 2024, counsel for Alliance sent a response email
`
`to PayRange. That document speaks for itself.
`
`61.
`
`PayRange admits that on June 12, 2024, PayRange sent an additional letter to
`
`Alliance. That document speaks for itself.
`
`62.
`
`PayRange admits that PayRange sent letters to Alliance on March 14, 2024, May
`
`17, 2024 and June 12, 2024. PayRange admits that the Complaint purports to refer to the March
`
`14, 2024, May 17, 2024, and June 12, 2024 Letters to Alliance collectively as the “PayRange
`
`Letters.”
`
`63.
`
`PayRange admits that Alliance sent an email to PayRange on June 14, 2024. That
`
`document speaks for itself.
`
`64.
`
`PayRange admits that on June 19, 2024, PayRange sent an email to Alliance. That
`
`document speaks for itself.
`
`65.
`
`PayRange admits that PayRange sent an email to Alliance on June 19, 2024.
`
`PayRange admits that Paragraph 65 purports to quote from the June 19, 2024 Letter. The
`
`document speaks for itself.
`
`11
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`66.
`
`PayRange does not contest that an actual controversy exists between Alliance and
`
`PayRange with respect to infringement of the DJ Patents. PayRange specifically denies that
`
`Alliance is entitled to any relief. The remaining allegations of Paragraph 66 of the Complaint
`
`contains statements of opinion and legal conclusions to which no response is required. To the
`
`extent a response is required, PayRange is without knowledge or information sufficient to form
`
`a belief as to the truth of those allegations, and therefore denies each and every remaining
`
`allegation in that paragraph.
`
`COUNT I: NON-INFRINGEMENT OF THE ’772 PATENT
`
`67.
`
`68.
`
`PayRange incorporates by reference the preceding responses to the Complaint.
`
`PayRange admits that the PayRange Letters asserted that Alliance infringes,
`
`directly or indirectly, one or more claims of the ’772 Patent.
`
`69.
`
`PayRange admits that the ’772 Patent discloses, among other things, methods and
`
`payments for presenting representations of payment accepting unit events. PayRange further
`
`admits that Paragraph 69 purports to show claim 1 of the ’772 Patent. The ’772 Patent speaks
`
`for itself.
`
`70.
`
`PayRange admits that Paragraph 70 purports to show claim 11 of the ’772 Patent.
`
`The ’772 Patent speaks for itself.
`
`71.
`
`72.
`
`73.
`
`74.
`
`75.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`12
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`76.
`
`PayRange does not contest that an actual controversy exists between Alliance and
`
`PayRange with respect to infringement of claim 11 of the ’772 Patent. PayRange specifically
`
`denies that Alliance is entitled to any relief.
`
`77.
`
`Denied.
`
`COUNT II: NON-INFRINGEMENT OF THE ’920 PATENT
`
`78.
`
`79.
`
`PayRange incorporates by reference the preceding responses to the Complaint.
`
`PayRange admits that the PayRange Letters asserted that Alliance infringes,
`
`directly or indirectly, one or more claims of the ’920 Patent.
`
`80.
`
`PayRange admits that the ’920 Patent discloses, among other things, methods and
`
`payments for presenting representations of payment accepting unit events. PayRange further
`
`admits that Paragraph 80 purports to show claim 1 of the ’920 Patent. The ’920 Patent speaks
`
`for itself.
`
`81.
`
`PayRange admits that Paragraph 81 purports to show claim 13 of the ’920 Patent.
`
`The ’920 Patent speaks for itself.
`
`82.
`
`PayRange admits that Paragraph 82 purports to show claim 15 of the ’920 Patent.
`
`The ’920 Patent speaks for itself.
`
`83.
`
`84.
`
`85.
`
`86.
`
`87.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`PayRange does not contest that an actual controversy exists between Alliance and
`
`PayRange with respect to infringement of the ’920 Patent. PayRange specifically denies that
`
`Alliance is entitled to any relief.
`
`13
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`88.
`
`Denied.
`
`COUNT III: NON-INFRINGEMENT OF THE ’423 PATENT
`
`89.
`
`90.
`
`PayRange incorporates by reference the preceding responses to the Complaint.
`
`PayRange admits that the PayRange Letters asserted that Alliance infringes,
`
`directly or indirectly, one or more claims of the ’423 Patent.
`
`91.
`
`PayRange admits that the ’423 Patent discloses, among other things, methods and
`
`payments for presenting representations of payment accepting unit events. PayRange further
`
`admits that Paragraph 91 purports to show claim 1 of the ’423 Patent. The ’423 Patent speaks
`
`for itself.
`
`92.
`
`PayRange admits that Paragraph 92 purports to show claim 13 of the ’423 Patent.
`
`The ’423 Patent speaks for itself.
`
`93.
`
`PayRange admits that Paragraph 93 purports to show claim 15 of the ’423 Patent.
`
`The ’423 Patent speaks for itself.
`
`94.
`
`95.
`
`96.
`
`97.
`
`98.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`PayRange does not contest that an actual controversy exists between Alliance and
`
`PayRange with respect to infringement of claim 11 of the ’423 Patent. PayRange specifically
`
`denies that Alliance is entitled to any relief.
`
`99.
`
`Denied.
`
`14
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`

`

`Case 1:24-cv-00733-MN Document 18 Filed 10/04/24 Page 15 of 37 PageID #: 949
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`PRAYER FOR RELIEF
`
`PayRange denies that Plaintiff is entitled to any relief. Plaintiff’s prayer for relief should
`
`be denied in its entirety.
`
`JURY DEMAND
`
`PayRange demands a trial by jury on all issues and claims so triable.
`
`PAYRANGE’S DEFENSES
`
`
`
`PayRange sets forth defenses to the Plaintiff’s Complaint by its undersigned counsel, for
`
`its counterclaims against Alliance, allege as follows:
`
`
`
`FIRST DEFENSE – FAILURE TO STATE A CLAIM
`
`100. The Complaint fails to state a claim upon which a declaratory judgment of non-
`
`infringement can be granted.
`
`RESERVATION OF RIGHT TO ASSERT OTHER DEFENSES
`
`101. PayRange expressly reserves the right to later assert and pursue further defenses in
`
`this action. PayRange reserves all defenses under Rule 8(c) of the Federal Rules of Civil Procedure,
`
`the patent laws of the United States, and any other defenses at law or in equity that may exist now
`
`or that may be available in the future, as may be determined through discovery and further factual
`
`investigation in this action.
`
`PAYRANGE’S COUNTERCLAIMS
`
`PayRange, by its undersigned counsel, for its counterclaims against Alliance, allege as
`
`follows:
`
`NATURE OF THE COUNTERCLAIMS
`
`1.
`
`PayRange brings these counterclaims against Alliance based on Alliance’s
`
`infringement of PayRange’s mobile payment solution technology. PayRange’s acclaimed
`
`15
`
`

`

`Case 1:24-cv-00733-MN Document 18 Filed 10/04/24 Page 16 of 37 PageID #: 950
`
`technology enables its customers to upgrade a coin-operated unattended retail machine into a state-
`
`of-the-art mobile payment solution with a small module, called “BluKey.” PayRange’s mobile
`
`app communicates with BluKey to enable mobile transactions. The United States Patent &
`
`Trademark Office (“USPTO”) awarded PayRange a portfolio of patents for its innovations.
`
`PayRange’s patent portfolio is prominently identified on its website pursuant to PayRange’s virtual
`
`patent marking practices: https://payrange.com/patents/. Alliance has used and continues to use
`
`PayRange’s patented mobile payment solutions in its mobile application and payment systems
`
`such as Speed Queen and Huebsch products.
`
`THE PARTIES
`
`2.
`
`PayRange is a Tennessee corporation with its principal place of business at 9600
`
`NE Cascades Pkwy, Suite 280, Portland, OR 97220.
`
`3.
`
`On information and belief, Alliance is a limited liability company organized in
`
`Delaware with a principal place of business at 221 Shepard Street, Ripon, Wisconsin, 54971.
`
`4.
`
`PayRange found success in the laundry and vending industries, attracting
`
`significant customers including WASH. Unfortunately, competitors took notice and improperly
`
`copied PayRange’s technology. As a result, PayRange initiated litigation against a major
`
`competitor (KioSoft) and subsequently against KioSoft’s major customer (CSC). In response,
`
`KioSoft challenged the validity of PayRange’s patents before the USPTO. PayRange prevailed
`
`with confirmed claims in every USPTO challenge that proceeded to a Final Written Decision.
`
`5.
`
`On January 31, 2024, PayRange and KioSoft issued a press release announcing a
`
`settlement. KioSoft’s President, Charles Lee, is quoted:
`
`“While we had challenged the PayRange patents vigorously, the Patent Trial and
`Appeal Board (PTAB) upheld the PayRange patents and, although we disagreed
`with the result, we must now accept that PayRange has valid claims,” stated
`Charles Lee, President of KioSoft. “We respect the technologies that have helped
`
`16
`
`

`

`Case 1:24-cv-00733-MN Document 18 Filed 10/04/24 Page 17 of 37 PageID #: 951
`
`the self-service industry thrive; and we look forward to continuing to lead
`innovation and development by providing best-in-class service to our customers
`with this fully-licensed technology, without any further legal distractions.”
`
`6.
`
`KioSoft agreed to license PayRange’s technology for an amount that could exceed
`
`$62 million over a ten-year period, dependent on outcomes with a base license of $40 million.
`
`7.
`
`In April 2024, on the heels of its settlement with KioSoft, PayRange also resolved
`
`its patent infringement dispute with KioSoft’s customer CSC.
`
`8.
`
`In May 2024, PayRange reached a patent licensing deal with WASH, one of the
`
`largest providers of laundry facilities in the United States. The agreement licenses PayRange’s
`
`patents for use with the WASH-Connect Mobile Payment App and will continue for the term of
`
`PayRange’s patents. In the press release, WASH’s CEO, Jim Gimeson stated:
`
`“We’re a privately held company founded in 1947 and we hold dear our reputation
`for integrity and ethical practices,” says WASH CEO Jim Gimeson. “As operators,
`we hold a deep respect for the innovations PayRange has brought to elevate the
`laundry industry.”
`
`9.
`
`After reaching agreements with KioSoft, CSC and WASH Multifamily Laundry
`
`Systems, LLC, PayRange hoped that the remaining companies in the industry would cease and
`
`desist their infringement of PayRange’s patents and negotiate a resolution for their past
`
`infringement.
`
`10.
`
`On March 14, 2024, PayRange sent Alliance a letter providing notice of its potential
`
`infringement and inviting licensing discussions. A true and correct copy of the March 14, 2024
`
`letter is attached hereto as Exhibit A. PayRange provided detailed claim charts showing that
`
`Alliance infringes at least:
`
`
`
`’772 Patent;
`
` Allowed claims of U.S. Patent Application No. 18/197,071, which issued as the ’423
`
`Patent; and
`
`17
`
`

`

`Case 1:24-cv-00733-MN Document 18 Filed 10/04/24 Page 18 of 37 PageID #: 952
`
` Allowed claims of U.S. Patent Application No. 18/197,071, which issued as the ’920
`
`Patent.
`
`11.
`
`On April 25, 2024, Alliance sent a response with purported defenses, but those
`
`purported defenses were meritless. Moreover, Alliance provided no indication that it would cease
`
`infringement, take a license, or even accept PayRange’s invitation to meet to discuss the matter.
`
`A true and correct copy of the April 25, 2024 letter is attached hereto as Exhibit B.
`
`12.
`
`On May 17, 2024, PayRange responded to Alliance’s April 25, 2024 letter. A true
`
`and correct copy of the May 17, 2024 letter is attached hereto as Exhibit C. PayRange’s May 17,
`
`2024 letter clarified PayRange’s position and expressed the intent to seek amicable resolution of
`
`the matter. Receiving no response, on June 12, 2024, PayRange sent another letter to Alliance
`
`confirming PayRange’s intention to engage in further discussion with Alliance. A true and correct
`
`copy of the June 12, 2024 letter is attached hereto as Exhibit D.
`
`13.
`
`On June 20, 2024, Alliance filed the instant action against PayRange. See D.I. 1.
`
`PayRange was compelled to protect its innovations and stop Alliance’s patent infringement
`
`through litigation.
`
`JURISDICTION AND VENUE
`
`14.
`
`This is a civil action for patent infringement arising under the patent laws of the
`
`United States, 35 U.S.C. §§ 1 et seq.
`
`15.
`
`This Court has subject matter jurisdiction over this patent infringement action
`
`pursuant to 28 U.S.C. §§ 1331 and 1338(a).
`
`16.
`
`Upon information and belief, Alliance has infringed PayRange’s patents-in-suit in
`
`this District by, among other things, engaging in infringing conduct within and directed at, or from,
`
`this District. Alliance has purposefully and voluntarily placed one or more of its infringing
`
`18
`
`

`

`Case 1:24-cv-00733-MN Document 18 Filed 10/04/24 Page 19 of 37 PageID #: 953
`
`products, as described below, into the stream of commerce with the expectation that these
`
`infringing products will be used in this District. Alliance’s infringing products have been and
`
`continue to be used in this District.
`
`17.
`
`Venue is proper in this District pursuant to 28 U.S.C. §§ 1400. Alliance is a
`
`Delaware limited liability company that resides in this District.
`
`PAYRANGE’S PATENTS-IN-SUIT
`
`18.
`
`To protect its unique and innovative technologies, PayRange filed a provisional
`
`patent application (No. 61/917,936) on December 18, 2013. Several patents issued based on this
`
`original application, including the patents-in-suit, as summarized below.
`
`19.
`
`On October 25, 2022, the USPTO issued the ’772 Patent, titled “Method and
`
`System for Presenting Representations of Payment Accepting Unit Events.” A true and correct
`
`copy of the ’772 Patent is attached hereto as Exhibit E. On November 22, 2023, PayRange filed a
`
`disclaimer in the ’772 Patent, which disclaims Claims 1-6, 8-10 and 12-20 of the ’772 Patent. A
`
`true and correct copy of the disclaimer is attached hereto as Exhibit F.
`
`20.
`
`On April 23, 2024, the USPTO