Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 1 of 15
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`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
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`
`No. 15-1307
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`Judge Victor J. Wolski
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`)))))))))))))))))))))
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`CELLCAST TECHNOLOGIES, LLC
`
`and
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`ENVISIONIT, LLC
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`
`Plaintiffs,
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`
`
`v.
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`THE UNITED STATES,
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`
`Defendant,
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`
`and
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`INTERNATIONAL BUSINESS MACHINES
`CORP.,
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`
`
`
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`Third-Party Defendant
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`ANSWER OF INTERNATIONAL BUSINESS MACHINES CORPORATION
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`
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`Pursuant to Rule 14(c) of the Rules of the United States Court of Federal Claims, and the
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`Court’s Notice to Interested Third Party dated April 5, 2016, International Business Machines
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`Corporation (“IBM”), by and through its attorneys, hereby answers Plaintiffs CellCast
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`Technologies, LLC’s (“CellCast’s”) and EnvisionIT, LLC’s (“EnvisionIT’s”) (collectively
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`“Plaintiffs’”) Complaint. IBM has an interest in this case for at least the reasons specified in the
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`United States’ Unopposed Motion to Notice Third Parties, filed March 4, 2016 [D.I. 10]. Except
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`as expressly admitted herein, IBM denies each allegation in the Complaint.
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`NATURE OF ACTION
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`1.
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`IBM admits that the Complaint alleges an action to recover reasonable and entire
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`compensation for the allegedly unlicensed use and manufacture by and for the United States of
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`alleged inventions described in and covered by U.S. Patent Nos. 7,693,938 (“the ’938 patent”),
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`ACTIVE/85734056.2
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`8,103,719 (“the ’719 patent”), 8,438,221 (“the ’221 patent”), 8,438,212 (“the ’212 patent”) and
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`9,136,954 (“the ’954 patent”) (collectively, “the patents-in-suit”), but otherwise denies the
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`allegations of Paragraph 1.
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`JURISDICTION
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`2.
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`IBM admits that this Court has subject matter jurisdiction over this action
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`pursuant to 28 U.S.C. § 1498(a). IBM denies that this Court has subject matter jurisdiction over
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`this action pursuant to 28 U.S.C. § 1491(a).
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`PARTIES
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`3.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 3 of the Complaint and therefore denies them.
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`4.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 4 of the Complaint and therefore denies them.
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`5.
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`IBM admits that the Complaint identifies the United States as the Defendant.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of the remaining
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`allegations in Paragraph 5 of the Complaint and therefore denies them.
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`ASSERTED PATENTS
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`6.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 6 of the Complaint and therefore denies them.
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`7.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 7 of the Complaint and therefore denies them.
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`8.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 8 of the Complaint and therefore denies them.
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`9.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 9 of the Complaint and therefore denies them.
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`10.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 10 of the Complaint and therefore denies them.
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`11.
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`IBM admits that EnvisionIT is listed on the face of the patents-in-suit as the
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`named assignee. Based on information and belief, IBM further admits that EnvisionIT is the
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`named assignee for additional pending U.S. patent applications related to the patents-in-suit.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of the remaining
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`allegations in Paragraph 11 of the Complaint and therefore denies them.
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`12.
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`IBM admits that the United States Patent and Trademark Office issued the ’938
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`patent on April 6, 2010, and that the ’938 patent is entitled “Message Broadcasting Admission
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`Control System and Method.” IBM admits that a copy of the ’938 patent is attached to the
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`Complaint as Exhibit A. To the extent that there are any remaining allegations, IBM denies the
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`same.
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`13.
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`IBM admits that the United States Patent and Trademark Office issued the ’719
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`patent on January 24, 2012, and that the ’719 patent is entitled “Message Broadcasting Control
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`System and Method.” IBM admits that a copy of the ’719 patent is attached to the Complaint as
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`Exhibit B. To the extent that there are any remaining allegations, IBM denies the same.
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`14.
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`IBM admits that the United States Patent and Trademark Office issued the ’221
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`patent on May 7, 2013, and that the ’221 patent is entitled “Broadcast Alerting Message
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`Aggregator/Gateway System and Method.” IBM admits that a copy of the ’221 patent is
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`attached to the Complaint as Exhibit C. To the extent that there are any remaining allegations,
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`IBM denies the same.
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`15.
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`IBM admits that the United States Patent and Trademark Office issued the ’212
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`patent on May 7, 2013, and that the ’212 patent is entitled “Message Broadcasting Control
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`System and Method.” IBM admits that a copy of the ’212 patent is attached to the Complaint as
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`Exhibit D. To the extent that there are any remaining allegations, IBM denies the same.
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`16.
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`IBM admits that the United States Patent and Trademark Office issued the ’954
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`patent on September 15, 2015, and that the ’954 patent is entitled “Broadcast Alerting Message
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`Aggregator/Gateway System and Method.” IBM admits that a copy of the ’954 patent is
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`attached to the Complaint as Exhibit E. To the extent that there are any remaining allegations,
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`IBM denies the same.
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`17.
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`18.
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`Denied.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 18 of the Complaint and therefore denies them.
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`19.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 19 of the Complaint and therefore denies them.
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`SUMMARY OF GROUNDS FOR RELIEF
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`20.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 20 of the Complaint and therefore denies them.
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`21.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 21 of the Complaint and therefore denies them.
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`22.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 22 of the Complaint and therefore denies them.
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`KNOWLEDGE OF THE PATENTS-IN-SUIT BY THE UNITED STATES
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`23.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 23 of the Complaint and therefore denies them.
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`FACTUAL ALLEGATIONS
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`24.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 24 of the Complaint and therefore denies them.
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`25.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 25 of the Complaint and therefore denies them.
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`26.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 26 of the Complaint and therefore denies them.
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`27.
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`IBM admits that it worked with FEMA to develop aspects of the Integrated Public
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`Alert Warning System (“IPAWS”). To the extent that there are any remaining allegations, IBM
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`denies the same.
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`28.
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`IBM admits that the Warning, Alert, and Response Network Act (“WARN Act”)
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`was enacted in 2006. IBM otherwise lacks knowledge or information sufficient to form a belief
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`about the truth of the remaining allegations in Paragraph 28 of the Complaint and therefore
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`denies them.
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`29.
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`IBM admits that President George W. Bush signed Executive Order 13407, which
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`states that “[i]t is the policy of the United States to have an effective, reliable, integrated,
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`flexible, and comprehensive system to alert and warn the American people in situations of war,
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`terrorist attack, natural disaster, or other hazards to public safety and well-being (public alert and
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`warning system) . . . .” IBM further admits that the Order States that the Secretary of Homeland
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`Security shall, inter alia:
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`(i) inventory, evaluate, and assess the capabilities and integration with the public alert
`and warning system of Federal, State, territorial, tribal, and local public alert and warning
`resources;
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`(ii) establish or adopt, as appropriate, common alerting and warning protocols, standards,
`terminology, and operating procedures for the public alert and warning system to enable
`interoperability and the secure delivery of coordinated messages to the American people
`through as many communication pathways as practicable, taking account of Federal
`Communications Commission rules as provided by law . . . .
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`To the extent that there are any remaining allegations, IBM denies the same.
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`30.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 30 of the Complaint and therefore denies them.
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`31.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 31 of the Complaint and therefore denies them.
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`32.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 32 of the Complaint and therefore denies them.
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`33.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 33 of the Complaint and therefore denies them.
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`34.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 34 of the Complaint and therefore denies them.
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`35.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 35 of the Complaint and therefore denies them.
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`36.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 36 of the Complaint and therefore denies them.
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`37.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 37 of the Complaint and therefore denies them.
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`38.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 38 of the Complaint and therefore denies them.
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`39.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 39 of the Complaint and therefore denies them.
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`40.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 40 of the Complaint and therefore denies them.
`
`41.
`
`42.
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`Denied.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 42 of the Complaint and therefore denies them.
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`43.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 43 of the Complaint and therefore denies them.
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`44.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 44 of the Complaint and therefore denies them.
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`45.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 45 of the Complaint and therefore denies them.
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`46.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 46 of the Complaint and therefore denies them.
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`ALLEGED UNLICENSED USE BY THE UNITED STATES
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`47.
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`The allegations in paragraph 47 are conclusions of law to which no response is
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`required. To the extent a response is deemed to be required, IBM denies the allegations of
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`Paragraph 47 and, further, incorporates by reference its responses to paragraphs 48–72, as set
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`forth below, regarding CellCast’s infringement contentions as to the patents-in-suit.
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`COUNT 1
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`48.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 48 of the Complaint and therefore denies them.
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`49.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 49 of the Complaint and therefore denies them.
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`50.
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`To the extent Paragraph 50 alleges that any IBM product, system or service, either
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`alone or in combination with any other product or system, infringes the ’938 patent, IBM denies
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`that any IBM product, system or service infringes any valid and enforceable claim of the ’938
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`patent. Otherwise, IBM lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 50 of the Complaint and therefore denies them.
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`51.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 51 of the Complaint and therefore denies them.
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`52.
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`The allegations in paragraph 52 are conclusions of law to which no response is
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`required. To the extent that they may be deemed allegations of fact, they are denied.
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`COUNT 2
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`53.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 53 of the Complaint and therefore denies them.
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`54.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 54 of the Complaint and therefore denies them.
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`55.
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`To the extent Paragraph 55 alleges that any IBM product, system or service, either
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`alone or in combination with any other product or system, infringes the ’719 patent, IBM denies
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`that any IBM product, system or service infringes any valid and enforceable claim of the ’719
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`patent. Otherwise, IBM lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 55 of the Complaint and therefore denies them.
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`56.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 56 of the Complaint and therefore denies them.
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`57.
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`The allegations in paragraph 57 are conclusions of law to which no response is
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`required. To the extent that they may be deemed allegations of fact, they are denied.
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`COUNT 3
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`58.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 58 of the Complaint and therefore denies them.
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`59.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 59 of the Complaint and therefore denies them.
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`60.
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`To the extent Paragraph 60 alleges that any IBM product, system or service, either
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`alone or in combination with any other product or system, infringes the ’221 patent, IBM denies
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`that any IBM product, system or service infringes any valid and enforceable claim of the ’221
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`patent. Otherwise, IBM lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 60 of the Complaint and therefore denies them.
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`61.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 61 of the Complaint and therefore denies them.
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`62.
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`The allegations in paragraph 62 are conclusions of law to which no response is
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`required. To the extent that they may be deemed allegations of fact, they are denied.
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`COUNT 4
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`63.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 63 of the Complaint and therefore denies them.
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`64.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 64 of the Complaint and therefore denies them.
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`65.
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`To the extent Paragraph 65 alleges that any IBM product, system or service, either
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`alone or in combination with any other product or system, infringes the ’212 patent, IBM denies
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`that any IBM product, system or service infringes any valid and enforceable claim of the ’212
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`patent. Otherwise, IBM lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 65 of the Complaint and therefore denies them.
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`66.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 66 of the Complaint and therefore denies them.
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`67.
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`The allegations in paragraph 67 are conclusions of law to which no response is
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`required. To the extent that they may be deemed allegations of fact, they are denied.
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`COUNT 5
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`68.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 68 of the Complaint and therefore denies them.
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`69.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 69 of the Complaint and therefore denies them.
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`70.
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`To the extent Paragraph 70 alleges that any IBM product, system or service, either
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`alone or in combination with any other product or system, infringes the ’954 patent, IBM denies
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`that any IBM product, system or service infringes any valid and enforceable claim of the ’954
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`patent. Otherwise, IBM lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 70 of the Complaint and therefore denies them.
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`71.
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`IBM lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations in Paragraph 71 of the Complaint and therefore denies them.
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`72.
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`The allegations in paragraph 72 are conclusions of law to which no response is
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`required. To the extent that they may be deemed allegations of fact, they are denied.
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`PRAYER FOR RELIEF
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`A–F. Paragraphs (A) through (F) of the Complaint state Plaintiffs’ prayer for relief, to
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`which no response is required. Nonetheless, to the extent Paragraphs (A) through (F) are
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`deemed to contain allegations, IBM denies each such allegation. IBM further denies that
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`Plaintiffs are entitled to any of the relief requested in Paragraphs (A) through (F).
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`DEFENSES
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`FIRST DEFENSE (NON-INFRINGEMENT)
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`1.
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`IBM has not infringed any valid and enforceable claim of the patents-in-suit,
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`either literally or under the doctrine of equivalents.
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`SECOND DEFENSE (INVALIDITY)
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`2.
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`The claims of the patents-in-suit are invalid because they do not comply with one
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`or more of the requirements for patentability, including those identified in 35 U.S.C. §§ 101,
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`102, 103, and 112.
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`THIRD DEFENSE (NO LIABILITY FOR ANY INFRINGING ACTIVITIES CAUSED BY THE UNITED
`STATES OR OTHERS)
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`3.
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`To the extent the alleged infringing acts were caused by, or performed pursuant to
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`acts by the United States, or others, IBM is not liable for those activities and has no obligation to
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`indemnify the United States.
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`FOURTH DEFENSE (WAIVER, LACHES, AND ESTOPPEL)
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`4.
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`Plaintiffs’ claims are barred by the doctrine of waiver, equitable estoppel, and
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`and/or laches.
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`FIFTH DEFENSE (LIMITATION OF DAMAGES)
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`5.
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`To the extent that Plaintiffs seek recovery for any of IBM’s alleged unauthorized
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`use occurring more than six years before the filing of the Complaint, Plaintiffs are precluded
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`from any such recovery, as set forth in 35 U.S.C. § 286 and/or 28 U.S.C. §§ 2401 and 2501.
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`SIXTH DEFENSE (LICENSE TO THE PATENTS-IN-SUIT)
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`6.
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`To the extent the alleged inventions claimed by the patents-in-suit were invented
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`in the performance of work under a funding agreement with the Government or using
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`Government resources, the United States is entitled to an express or implied license in the
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`alleged inventions.
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`SEVENTH DEFENSE (USE OR MANUFACTURE BY OR FOR THE UNITED STATES)
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`7.
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`Plaintiffs’ claims are barred by 28 U.S.C. §1498 to the extent they relate to use or
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`manufacture of the alleged inventions of the patents-in-suit by or for the United States.
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`However, should Plaintiffs be awarded compensation, such compensation may include delay
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`compensation, but shall not include pre-judgment or post-judgment interest or costs provided by
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`35 U.S.C. § 284 and 28 U.S.C. § 1961.
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`EIGHTH DEFENSE (CONTRACTUAL LIMITATION OF DAMAGES)
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`8.
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`To the extent Plaintiffs or the United States seek recovery from IBM, IBM is not
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`liable for any amount in excess of the aggregate amount payable by the United States to IBM
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`under the applicable work order.
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`NINTH DEFENSE (RECOVERY BARRED BY ANTI-ASSIGNMENT ACT)
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`9.
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`To the extent that Plaintiffs seek recovery for infringement that occurred prior to
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`the assignment of the patents-in-suit to EnvisionIT, such recovery is barred by the Anti-
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`Assignment Act, 31 U.S.C.A. § 3727.
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`TENTH AFFIRMATIVE DEFENSE (SOVEREIGN IMMUNITY AS APPLIED TO GOVERNMENT
`CONTRACTORS)
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`10.
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`To the extent that Plaintiffs seek recover for acts performed by the United States
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`based on a theory of indirect or joint infringement, Plaintiffs cannot recover because the United
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`States has not waived sovereign immunity as to infringement based on such a theory.
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`ELEVENTH AFFIRMATIVE DEFENSE (FAILURE TO STATE A CLAIM)
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`Plaintiffs fail to state a claim upon which relief can be granted as to the patents-
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`11.
`
`in-suit.
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`RELIEF REQUESTED BY THIRD-PARTY DEFENDANT
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`WHEREFORE, IBM respectfully requests that this Court:
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`(a)
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`Deny any and all relief requested by Plaintiffs, as set forth in the Complaint and
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`dismiss Plaintiffs’ Complaint with prejudice;
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`
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`(b)
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`(c)
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`(d)
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`(e)
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`Enter judgment that the patents-in-suit are invalid;
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`Enter judgment that the patents-in-suit have not been infringed;
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`Enter judgment that Plaintiffs are not entitled to any compensation;
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`Declare that this is an exceptional case in favor of IBM under 35 U.S.C. § 285,
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`award IBM its reasonable attorneys’ fees and expenses, and hold Plaintiffs jointly and severally
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`liable for this award;
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`(f)
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`Award IBM its costs of suit, and hold Plaintiffs jointly and severally liable for this
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`award; and
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`(g)
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`Award IBM such other and further relief as this Court deems just and appropriate.
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`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 14 of 15
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`Dated: May 18, 2016
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`Respectfully submitted,
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`Of Counsel:
`
`Calvin E. Wingfield Jr.
`Jonathan A. Auerbach
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Tel: (212) 813-8000
`Fax: (212) 355-3333
`cwingfield@goodwinprocter.com
`jauerbach@goodwinprocter.com
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`/s/Mark J. Abate
`Mark J. Abate
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Tel: (212) 813-8000
`Fax: (212) 355-3333
`mabate@goodwinprocter.com
`
`
`Attorneys for Third-Party Defendant
`International Business Machines Corp.
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`Page 14 of 15
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`EnvisionIT Ex. 2004, IBM v. EnvisionIT, IPR2017-01247
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`Case 1:15-cv-01307-VJW Document 21 Filed 05/18/16 Page 15 of 15
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`CERTIFICATE OF SERVICE
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`I hereby certify that this document, filed through the ECF system, will be sent
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`electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
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`and served electronically to those indicated as non-registered participants on May 18, 2016.
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`/s/Mark J. Abate
`Mark J. Abate
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Tel: (212) 813-8000
`Fax: (212) 355-3333
`mabate@goodwinprocter.com
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`ACTIVE/85734056.2
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`Page 15 of 15
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`EnvisionIT Ex. 2004, IBM v. EnvisionIT, IPR2017-01247
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