`EASTERN DISTRICT OF TENNESSEE
`AT KNOXVILLE
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`PROCON ANALYTICS, LLC,
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` Plaintiff / Counter-Defendant,
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`v. ) Case No. 3:19-cv-00201-PLR-HBG
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`JURY DEMAND
`SPIREON, INC.
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` Defendant / Counter-Claimant.
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`Honorable Judge Reeves
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`SPIREON, INC.’S ANSWER TO
`PROCON ANALYTICS, LLC’S FIRST AMENDED COMPLAINT
`Spireon, Inc. (“Spireon”), by and through counsel, answers the allegations of
`Plaintiff Procon Analytics, LLC’s (“Procon”) First Amended Complaint as follows:
`Upon information and belief, admitted.
`1.
`2.
`Spireon admits that it is a Tennessee corporation and that it has offices
`in Irvine, California and in Knoxville, Tennessee.
`Admitted.
`3.
`4.
`It is admitted that Spireon, through counsel in Tennessee, sent Procon
`a letter on April 2, 2019, expressing Spireon’s concerns that Procon and its affiliated
`entities were or had been making, selling, and/or offering products and services that
`infringe at least one claim of the ’598 Patent. Additionally, it is admitted that a copy
`if that letter is attached in Exhibit 1 to the Complaint. Spireon lacks knowledge or
`information sufficient to form a belief about the truth of any remaining allegations in
`Paragraph 4.
`It is admitted that Spireon, through counsel in Tennessee, sent a letter
`5.
`to Procon Analytics on April 25, 2019, following up on Spireon’s letter dated April 2,
`2019, regarding the ’598 Patent. It is further admitted that a copy of that letter is
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`Case 3:19-cv-00201-JPM-HBG Document 10 Filed 08/26/19 Page 1 of 14 PageID #: 191
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`attached in Exhibit 2 to the Complaint. Spireon lacks knowledge or information
`sufficient to form a belief about the truth of any remaining allegations in Paragraph
`5.
`
`Admitted.
`6.
`Spireon admits that Procon purports to bring an action for declaratory
`7.
`judgment under the Declaratory Judgment Act. Spireon otherwise denies the
`allegations of Paragraph 7 and specifically denies that Procon is entitled to
`declaratory or any further relief.
`Spireon admits that this Court has jurisdiction over this action. Spireon
`8.
`otherwise denies the allegations of Paragraph 8.
`It is admitted that the Court has personal jurisdiction over Spireon in
`9.
`this matter.
`10.
`
`It is admitted that venue is proper in this Court.
`U.S. PATENT NO. 10,089,598
`
`11. Admitted.
`It is admitted that the application for the ’598 Patent was filed on April
`12.
`21, 2015, and that its serial number is 14/692,598. It is further admitted that said
`application was a continuation-in-part application of application No. 12/505,325, filed
`on July 17, 2009. Any remaining allegations in Paragraph 12 are denied.
`It is admitted that the ’598 patent includes one independent claim and
`13.
`fourteen total claims.
`14. Paragraph 14 is a legal conclusion to which no response is required. To
`the extent a response is required, Spireon admits that the ’598 Patent was filed on
`April 21, 2015 and otherwise denies the allegations of Paragraph 14.
`15. Denied.
`16. Paragraph 16 is a legal conclusion to which no response is required. To
`the extent a response is required, Spireon denies the allegations of Paragraph 16.
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`17. Denied.
`It is admitted that the list of “References Cited” on the ’598 Patent
`18.
`contains patent documents filed or published after July 17, 2009. All other allegations
`in Paragraph 18 are denied.
`19. Paragraph 19 is a legal conclusion to which no response is required. To
`the extent a response is required, Spireon denies the allegations of Paragraph 19.
`20. Paragraph 20 is a legal conclusion to which no response is required. To
`the extent a response is required, Spireon denies the allegations of Paragraph 20.
`21. Paragraph 21 is a legal conclusion to which no response is required. To
`the extent a response is required, Spireon denies the allegations of Paragraph 21.
`PROCON’S ACTIVITIES
`22. As set forth in its Counterclaims, Spireon believes that Procon makes,
`sells, and offers for sale products and services for managing vehicle inventory for
`dealerships that infringements on certain claims of the ’598 Patent. Spireon lacks
`knowledge or information sufficient to form a belief about the truth of the remaining
`allegations in Paragraph 22.
`23. As set forth in its Counterclaims, Spireon believes that Procon makes,
`sells, and offers for sale products and services for managing vehicle inventory for
`dealerships that infringements on certain claims of the ’598 Patent. Spireon lacks
`knowledge or information sufficient to form a belief about the truth of the remaining
`allegations in Paragraph 23.
`24. As set forth in its Counterclaims, Spireon believes that Procon makes,
`sells, and offers for sale products and services for managing vehicle inventory for
`dealerships that infringements on certain claims of the ’598 Patent. Spireon lacks
`knowledge or information sufficient to form a belief about the truth of the remaining
`allegations in Paragraph 24.
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`25. As set forth in its Counterclaims, Spireon believes that Procon makes,
`sells, and offers for sale products and services for managing vehicle inventory for
`dealerships that infringements on certain claims of the ’598 Patent. Spireon lacks
`knowledge or information sufficient to form a belief about the truth of the remaining
`allegations in Paragraph 25.
`26. As set forth in its Counterclaims, Spireon believes that Procon makes,
`sells, and offers for sale products and services for managing vehicle inventory for
`dealerships that infringements on certain claims of the ’598 Patent. Spireon lacks
`knowledge or information sufficient to form a belief about the truth of the remaining
`allegations in Paragraph 26.
`EXISTENCE OF AN ACTUAL CONTROVERSY
`27. Exhibits 1 and 2 speak for themselves. To the extent Paragraph 27
`attempts to restate or characterize those Exhibits, such restatement or
`characterization is denied.
`Spireon is without information belief as to which “dealers and
`28.
`customers” Paragraph 28 is referencing and therefore lacks knowledge or information
`sufficient to form a belief about the truth of the allegations in Paragraph 28. To the
`extent Spireon sent letters to such “dealers or customers,” such letters speak for
`themselves. To the extent Paragraph 28 attempts to restate or characterize those
`letters, such restatement or characterization is denied.
`29. Paragraph 29 is a legal conclusion to which no response is required. To
`the extent a response is required, Spireon admits there is a justiciable controversy.
`30. Denied.
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`Case 3:19-cv-00201-JPM-HBG Document 10 Filed 08/26/19 Page 4 of 14 PageID #: 194
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`COUNT 1: DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`Spireon incorporates by reference its responses to the preceding
`31.
`allegations.
`32. Paragraph 32 is a legal conclusion to which no response is required. To
`the extent a response is required, Spireon admits there is a justiciable controversy.
`Except as admitted, Spireon denies the remaining allegations of Paragraph 32 and
`specifically denies that Procon is entitled to declaratory relief or other further relief.
`33. Paragraph 33 is a legal conclusion to which no response is required. To
`the extent a response is required, Spireon admits there is a justiciable controversy.
`Except as admitted, Spireon denies the remaining allegations of Paragraph 33.
`34. As set forth in its Counterclaims below, Spireon believes that Procon
`makes, sells, and offers for sale products and services for managing vehicle inventory
`for dealerships that infringe on certain claims of the ’598 Patent. Spireon lacks
`knowledge or information sufficient to form a belief about the truth of the remaining
`allegations in Paragraph 34.
`Spireon admits that claim 1 of the ’598 Patent includes the language “in
`35.
`response to the location device becoming communicatively coupled with the vehicle,
`the location device transmitting a connection notice over a network, the connection
`notice comprising a vehicle identifier and a location device identifier.” To the extent
`Paragraph 35 attempts to restate or characterize the ’598 Patent, such restatement
`or characterization is denied.
`36. As set forth in its Counterclaims, Spireon believes that Procon makes,
`sells, and offers for sale products and services for managing vehicle inventory for
`dealerships that infringe on certain claims of the ’598 Patent. Spireon lacks
`knowledge or information sufficient to form a belief about the truth of the remaining
`allegations in Paragraph 36.
`37. Denied.
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`Spireon admits that claims 2 through 14 depend on independent claim
`38.
`1. Spireon denies the remaining allegations of Paragraph 38, and specifically denies
`that Procon does not infringe any valid and enforceable claim of the ’598 Patent.
`39. Denied.
`COUNT 2: DECLARATORY JUDGMENT OF INVALIDITY
`Spireon incorporates by reference its responses to the preceding
`
`40.
`allegations.
`41. Paragraph 41 is a legal conclusion to which no response is required. To
`the extent a response is required, Spireon admits there is a justiciable controversy.
`Except as admitted, Spireon denies the remaining allegations of Paragraph 41.
`42. Paragraph 42 is a legal conclusion to which no response is required. To
`the extent a response is required, Spireon admits there is a justiciable controversy.
`Except as admitted, Spireon denies the remaining allegations of Paragraph 42.
`43. Paragraph 43 is a legal conclusion to which no response is required. To
`the extent a response is required, Spireon admits there is a justiciable controversy.
`Except as admitted, Spireon denies the remaining allegations of Paragraph 43 and
`specifically denies that Procon is entitled to declaratory relief or other further relief.
`Spireon admits that U.S. Patent No. 8,452,673 is attached as Exhibit 4
`44.
`and that the document speaks for itself. Except as admitted, the remaining
`allegations in Paragraph 44 are denied.
`Spireon admits that U.S. Patent App. Pub. No. 2013/0033386 is attached
`45.
`as Exhibit 5 and that the document speaks for itself. Except as admitted, the
`remaining allegations in Paragraph 45 are denied.
`Spireon admits that U.S. Patent No. 8,768,565 is attached as Exhibit 6
`46.
`and that the document speaks for itself. Except as admitted, the remaining
`allegations in Paragraph 46 are denied.
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`Spireon admits that U.S. Patent No. 9,635,518 is attached as Exhibit 7
`47.
`and that the document speaks for itself. Except as admitted, the remaining
`allegations in Paragraph 47 are denied.
`Spireon lacks knowledge or information sufficient to form a belief about
`48.
`the truth of the allegations in Paragraph 48.
`49. Denied.
`50. Denied.
`51. Denied.
`52. Denied.
`53. Denied.
`54. Denied.
`55. Denied.
`56. Denied.
`Spireon denies that Procon is entitled to any of the relief requested in
`57.
`the Paragraph beginning with “WHEREFORE.”
`58. Any allegation not previous admitted or denied is hereby denied.
`AFFIRMATIVE DEFENSES
`Procon has failed to plead sufficient factual matter to state plausible
`1.
`claims for non-infringement or invalidity of the ’598 Patent.
`COUNTERCLAIM
`By way of counterclaim against Plaintiff, Spireon would respectfully show the
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`Court as follows:
`Spireon is a leader in the field of connected vehicle intelligence. Its suite
`1.
`of products facilitates the tracking, management, and protection of vehicles in various
`commercial applications and industries. In particular, Spireon offers GPS lot
`management solutions to the automotive dealer industry.
`
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`Like Spireon, Plaintiff Procon Analytics, LLC (“Procon”) has been
`2.
`providing products and services for dealership vehicle inventory management. In
`particular, Procon’s Connected Dealer Services (“CDS”) product is a GPS cloud-based
`management system for dealer vehicle inventory. Procon also offers similar products
`to dealerships through various resellers.
`Spireon is the owner of U.S. Patent No. 10,089,598 (“the ’598 Patent”)
`3.
`for “Methods and Apparatus for Monitoring and Control of Electronic Devices.”
`The ’598 Patent was issued on October 2, 2018, based upon application
`4.
`number 14/692,598 filed on April 21, 2015. The application was a continuation-in-
`part of application number 12/505,325, which was filed on July 17, 2009, and is now
`U.S. Patent No. 9,516,394.
`On information and belief, Procon learned of the ’598 Patent prior to the
`5.
`filing of the present Complaint. For example, Procon alleges that it became aware of
`the ’598 Patent at least as early as April 2, 2019, through correspondence received by
`Procon from Spireon.
`Despite knowing of the ’598 Patent and that its products and services
`6.
`infringe the ’598 Patent, Procon has and continues to infringe the ’598 Patent through
`making, selling, and offering for sale products and services for managing vehicle
`inventory for dealerships that infringe on certain claims of the ’598 Patent, an/or
`through inducing or contributing to infringement by Procon’s customers.
`Claims for Relief
`The allegations in the following Count I have evidentiary support or are
`7.
`likely to have evidentiary support after Spireon has a reasonable opportunity for
`further investigation or discovery.
`
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`Upon information and belief, Procon has been making, selling, offering
`8.
`for sale, and/or importing, without license or authority from Spireon, CDS products
`that embody every limitation of claim 1 of the ‘598 patent.
`
`Products and services identified herein are representative of Procon’s
`9.
`infringing products and are not intended to be exhaustive. Additional products and
`services may be identified through discovery. Further, claim 1 of the ’598 Patent
`identified below is merely representative and is not intended to reflect an exhaustive
`list of claims infringed by Procon’s products and services.
`
`Count I: Infringement of the ’598 Patent
`Spireon repeats, realleges, and
`incorporates the allegations
`10.
`Paragraphs 1–9 as if fully restated forth herein.
`
`in
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`11. Procon has infringed and continues to infringe claims of the ’598 Patent
`in violation of 35 U.S.C. § 271(a), either literally or under the Doctrine of Equivalents.
`
`12. The ’598 patent is valid and enforceable.
`
`13. Procon’s infringement includes, but is not limited to, the manufacture,
`use, sale, offer for sale, and/or importation of CDS products.
`
`14. For example, Procon makes, sells, and offers for sale products and
`services for managing vehicle inventory for dealerships that infringe claim 1 of the
`’598 Patent. Claim 1 of the ’598 Patent recites:
`
`A method for managing a vehicle inventory for a dealer implemented by
`a computer having a processor and a memory, the method comprising:
`[a] while a location device is not communicatively coupled with a vehicle,
`associating the location device with a dealer’s group of available
`location devices in the memory, wherein the dealer’s group of
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`available location devices comprises location devices owned by the
`dealer that are not coupled with any vehicle;
`[b] communicatively coupling the location device with a vehicle;
`[c] in response to the location device becoming communicatively coupled
`with the vehicle, the location device transmitting a connection notice
`over a network, the connection notice comprising a vehicle identifier
`and a location device identifier;
`[d] receiving, by the computer, the connection notice from the location
`device over the network;
`[e] in response to the connection notice received by the computer, the
`processor:
`[1] associating the location device identifier with the vehicle
`identifier in the memory; and
`[2] disassociating the location device from the dealer’s group of
`available location devices in the memory; and
`[f] receiving, by the computer, current location information from the
`location device.
`
`[Doc. 1-1, Page ID #40.]
`15. By way of example, Procon’s website describes CDS as a cloud-based
`GPS technology company that provides GPS-based systems to help auto dealers
`manage inventory. Upon information and belief, as well as Procon’s website and
`publicly available marketing materials:
`
`(a) When a dealer places an order, CDS devices are assigned to the dealer’s
`account and then shipped to the dealer. Each device has an electronic
`serial number that is associated with the dealer’s account.
`The CDS devices are installed in vehicles.
`(b)
`(c) When a CDS device is installed and the vehicle is started, the CDS
`device read the vehicle’s VIN and transmits the information.
`(d) More specifically, the information is transmitted to the dealer portal.
`
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`(e)
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`(f)
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`In response, the vehicle’s VIN is assigned to the device’s electronic serial
`number in the dealer’s account. The device is associated with the vehicle
`identifier and thus is no longer part of the dealer’s group of available
`devices.
`The device subsequently transmits location information to facilitate
`vehicle tracking.
`
`16. The infringing CDS products provide a method for dealer vehicle
`inventory management. When a dealer places an order, CDS devices are associated
`with the particular dealer’s account and become part of the dealer’s group of available
`devices. CDS devices are communicatively coupled with vehicles via the installation
`process, which results in the transmission of vehicle and device identifiers. In
`response, the device identifier is associated with the vehicle identifier and is no longer
`part of the dealer’s group of available devices. CDS devices subsequently transmit
`location information.
`17. Each of the steps in Paragraph 14, above, is completed by or at the
`direction of Procon.
`18. Procon will continue to directly infringe the ’598 patent unless enjoined
`by the Court.
`19. Procon’s continued infringement of the ’598 patent has harmed Spireon
`in the form of lost profits, loss of business opportunities, loss of goodwill, price erosion,
`and direct and indirect competition. Spireon has suffered and will continue to suffer
`monetary damages as a result of Procon’s infringement of the ’598 patent.
`20. Procon has actual knowledge of the full contents of the ’598 patent. Its
`prior and continuing infringement has been willful, wanton, and deliberate, justifying
`an award to Spireon of increased damages, attorneys’ fees, and costs pursuant to 35
`U.S.C. §§ 284–85.
`
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`PRAYER FOR RELIEF
`WHEREFORE, Spireon respectfully prays for the following relief:
`
`A.
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
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`Entry of judgment holding that Procon has infringed the ’598 patent;
`A preliminary and permanent injunction enjoining Procon, its officers,
`employees, agents, servants, attorneys, instrumentalities, and/or those
`in privity or acting in concert or participation with them from infringing
`the ’598 patent;
`An award of damages caused by Procon’s infringement of the ’598
`patent, in an amount to be proven at trial, but not less than a reasonable
`royalty, plus costs and interest;
`A determination that Procon’s infringement has been willful, wanton,
`and deliberate and that the award of damages for Procon’s infringement
`of the ’598 patent be trebled in accordance with the law;
`An award of Spireon’s costs and reasonable attorneys’ fees incurred in
`prosecuting this exceptional case, as provided in 35 U.S.C. § 285;
`An accounting of all infringing sales and revenues, together with post-
`judgment and prejudgment interest from the first date of infringement
`of the ’598 patent; and
`Such further and other relief as the Court may deem proper and just.
`
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`Date: August 26, 2019
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`Respectfully submitted,
`
`
`PAINE, TARWATER and BICKERS LLP
`
`
`/s/ Taylor A. Williams
`Taylor A. Williams (BPR #028172)
`Email: taw@painetarwater.com
`900 South Gay Street, Suite 2200
`Knoxville, TN 37902
`Telephone: (865) 525-0880
`Facsimile:
`(865) 521-7441
`
`ROBINSON IP LAW, PLLC
`Mathew M. Googe (BPR #030164)
`Email: mgooge@robinsoniplaw.com
`9724 Kingston Pike, Suite 1102
`Knoxville, TN 37922
`Telephone: (865) 978-6480
`Facsimile:
`(865) 978-6493
`
`Counsel for Defendant/Counter-claimant
`Spireon, Inc.
`
`
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`Case 3:19-cv-00201-JPM-HBG Document 10 Filed 08/26/19 Page 13 of 14 PageID #: 203
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`CERTIFICATE OF SERVICE
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`I hereby certify that August 26, 2019, a copy of the foregoing was filed
`
`electronically. Notice of this filing will be sent by operation of the Court’s electronic
`filing system to all parties indicated on the electronic filing receipt. Parties may
`access this filing through the Court’s electronic filing system.
`
`
`
`PAINE, TARWATER and BICKERS LLP
`
`
`/s/ Taylor A. Williams
`Taylor A. Williams (BPR #028172)
`
`
`
`
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`Case 3:19-cv-00201-JPM-HBG Document 10 Filed 08/26/19 Page 14 of 14 PageID #: 204
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