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`PNC BANK, N.A.
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`
`v.
`
`Defendant
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`Civil Action No.: 2:20-cv-00319 JRG
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`JURY TRIAL DEMANDED
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`
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`Case 2:20-cv-00319-JRG-RSP Document 60 Filed 02/24/21 Page 1 of 54 PageID #: 1742Case 2:22-cv-00193-JRG Document 3 Filed 06/07/22 Page 1 of 137 PageID #: 160
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`UNITED SERVICES AUTOMOBILE
`ASSOCIATION
`
`
`Plaintiff
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`
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`ANSWER TO FIRST AMENDED COMPLAINT WITH COUNTERCLAIMS
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`Defendant PNC Bank, N.A. (“PNC”) hereby answers the allegations of plaintiffs United
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`Services Automobile Association (“USAA”) contained in its First Amended Complaint
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`(“Complaint”) and asserts counterclaims, as follows. PNC files this answer with counterclaims at
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`this time to preserve its ability to assert its counterclaims in the event that the Court denies both
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`PNC’s pending motion to transfer the case to the Western District of Pennsylvania (ECF No. 31)
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`and PNC’s motion to dismiss for failure to state a claim upon which relief may be granted (ECF
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`No. 24). Should the court transfer USAA’s claims to W.D. Pa., PNC assumes the entire case will
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`be transferred to W.D. Pa., or if only USAA’s claims are transferred, then PNC will voluntarily
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`dismiss its counterclaims without prejudice and file them in W.D. Pa.
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`1.
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`PNC does not interpret this prefatory paragraph to call for any response. To the
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`extent a response is required, PNC admits that USAA has brought a lawsuit purporting to address
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`PNC’s use of USAA’s patented technologies that relate to remote check deposit and purporting
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`to seek remedies therefor; PNC denies that it uses USAA’s patented technologies that relate to
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`remote check deposit; PNC denies that it uses those patented technologies without permission;
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`PNC denies that it has engaged in misconduct; and as to the remaining statements, PNC lacks
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`knowledge or information sufficient to form a belief and, on that basis, denies such allegations.
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`II.
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`THE PARTIES
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`2.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 2, and on that basis denies them.
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`3.
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`PNC admits that it is a national banking association organized under the laws of
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`the United States of America. PNC admits that it does business in many states within the United
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`States of America, including in this judicial district. PNC denies the remainder of the allegations
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`in this paragraph.
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`III.
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`JURISDICTION AND VENUE
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`4.
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`The allegations in Paragraph 4 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC admits that the Court has subject matter
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`jurisdiction over this lawsuit as currently alleged.
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`5.
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`The allegations in Paragraph 5 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC admits that it conducts business in the State
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`of Texas and in the Eastern District of Texas, and that this Court has personal jurisdiction over
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`PNC, and otherwise denies the allegations in Paragraph 5.
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`6.
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`The allegations in Paragraph 6 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC admits that venue is proper in the Eastern
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`District of Texas and otherwise denies the allegations in Paragraph 6.
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`7.
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`PNC admits that it does business at the Allen Solution Center, the Denton
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`Solution Center, and the Plano Solutions Center, which are physical locations in Allen, Denton,
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`and Plano (respectively). PNC admits that customers may receive banking services from PNC at
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`these locations. PNC admits that it maintains ATM locations in the Eastern District of Texas.
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`PNC otherwise denies the allegations of Paragraph 7.
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`IV.
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`BACKGROUND ALLEGATIONS
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`8.
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`PNC does not interpret this prefatory paragraph to call for any response. To the
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`extent a response is required, PNC admits that USAA has brought an action alleging
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`infringement of patents it purports to have been assigned, and as to the remaining statements,
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`PNC lacks knowledge or information sufficient to form a belief and, on that basis, denies such
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`allegations.
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`9.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 9, and on that basis denies them.
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`10.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 10, and on that basis denies them.
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`11.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 11, and on that basis denies them.
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`12.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 12, and on that basis denies them.
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`13.
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`PNC does not interpret this prefatory paragraph to call for any response. To the
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`extent a response is required, PNC admits that USAA has brought an action purporting to assert
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`infringement of U.S. Patent Nos. 10,482,432 (the “’432 Patent”), 10,621,559 (the “’559 Patent”),
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`8,977,571 (the “’571 Patent”), and 8,699,779 (the “’779 Patent”), and as to the remaining
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`statements, PNC lacks knowledge or information sufficient to form a belief and, on that basis,
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`denies such allegations.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`14.
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`PNC admits that the ’432 and ’559 Patents are entitled “Systems and methods for
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`remote deposit of checks,” and that the issued patents list as their inventors Charles Lee Oakes
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`III, Randy Ray Morlen, Bharat Prasad, and Troy Bartlette Huth. PNC admits that the ’432 and
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`’559 Patents claim priority to Application No. 11/591,247, filed on October 31, 2006. PNC
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`otherwise denies the allegations of Paragraph 14.
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`15.
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`PNC lacks knowledge or information sufficient to form a belief as to what USAA
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`allowed users to do or what effect that had on USAA or its members, and, on that basis, denies
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`such allegations. PNC otherwise denies the allegations in Paragraph 15.
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`16.
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`The allegations in Paragraph 16 are characterizations of the ’432 and ’559
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`Patents, which speak for themselves, and PNC denies these characterizations. PNC admits that
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`the ’432 and ’559 Patents recite the elements set forth in the claims of those patents, and purport
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`to describe an invention as set forth in the specification and claims of those patents. PNC
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`otherwise denies the allegations of Paragraph 16.
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`17.
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`PNC admits that the ’571 Patent is entitled “Systems and methods for image
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`monitoring of check during mobile deposit,” and that the issued patent lists as inventors Michael
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`Patrick Bueche Jr., Bharat Prasad, Minya Liang, Reynaldo Medina, and Charles Lee Oaks, III.
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`PNC admits that the application for the ’571 Patent, Application No. 12/545,127, was filed on
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`August 21, 2009. The remaining allegations in Paragraph 17 are characterizations of the ’571
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`Patent, which speaks for itself, and PNC denies these characterizations. PNC admits that the ’571
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`Patent recites the elements set forth in the claims of that patent, and purports to describe an
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`invention as set forth in the specification and claims of that patent. PNC otherwise denies the
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`allegations of Paragraph 17.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`18.
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`PNC admits that the ’779 Patent is entitled “Systems and methods for alignment
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`of check during mobile deposit,” and that the issued patent lists as inventors Bharat Prasad,
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`Minya Liang, and Reynaldo Medina. PNC admits that the application for the ’779 Patent,
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`Application No. 12/549,443, was filed on August 28, 2009. The remaining allegations in
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`Paragraph 18 are characterizations of the ’779 Patent, which speaks for itself, and PNC denies
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`these characterizations. PNC admits that the ’779 Patent recites the elements set forth in the
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`claims of that patent, and purports to describe an invention as set forth in the specification and
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`claims of that patent. PNC otherwise denies the allegations of Paragraph 18.
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`19.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 19, and on that basis denies them.
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`20.
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`PNC admits that the PTAB denied institution of CBM2019-00004 and CBM2019-
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`00005 for the reasons stated by the PTAB in its decisions, which speak for themselves. PNC
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`admits that the PTAB issued final written decisions in IPR2019-01082 and IPR2019-01083,
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`which are set forth in those written decisions and which speak for themselves. PNC admits that
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`the PTAB denied institution of IPR petitions brought by Mitek Systems, Inc. relating to the ’571
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`and ’779 Patents for the reasons stated by the PTAB in its decisions, which speak for themselves.
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`To the extent the allegations in Paragraph 20 are characterizations of the PTAB’s decisions, PNC
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`denies these characterizations. PNC lacks knowledge or information sufficient to form a belief as
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`to the truth of the remaining allegations in Paragraph 20, and on that basis denies them.
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`21.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 21, and on that basis denies them.
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`22.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 22, and on that basis denies them.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`23.
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`PNC admits that the Accredited Standards Committee X9, Inc. is an organization
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`accredited by the American National Standards Institute to develop standards for the U.S.
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`financial services industry, including DSTU X9.27-2003, which relates to electronic check
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`exchange. To the extent the allegations in Paragraph 23 are characterizations of DSTU X9.37-
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`2003, which speaks for itself, PNC denies these characterizations. PNC otherwise denies the
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`allegations of paragraph 23.
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`24.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 24, and on that basis denies them.
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`25.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 25, and on that basis denies them.
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`26.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations concerning the NCR white paper, and on that basis denies them. PNC otherwise
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`denies the allegations in Paragraph 26.
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`27.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 27, and on that basis denies them.
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`28.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 28, and on that basis denies them.
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`29.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 29, and on that basis denies them.
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`30.
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`PNC admits that it is a consumer and commercial bank in the United States. PNC
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`admits that its website states that PNC customers deposit on average over 2 million checks per
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`month using their mobile devices, based on average monthly usage determined as of November
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`1, 2019. PNC otherwise denies the allegations in Paragraph 30.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`31.
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`PNC does not interpret USAA’s definition of “PNC Mobile Deposit” to call for
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`any response. To the extent a response is required, PNC denies that “PNC Mobile Deposit” is a
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`real or well-defined instrumentality. PNC admits that its website states: “See how easily you can
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`deposit a check right from your smartphone — quickly, conveniently, and securely with mobile
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`deposit and our mobile banking apps.” PNC otherwise denies the allegations in Paragraph 31.
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`32.
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`PNC admits that it has referred to mobile check deposit in video advertisements.
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`PNC otherwise denies the allegations in Paragraph 32.
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`33.
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`PNC admits that some of its customers download the PNC Mobile Banking app
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`for iPhone or Android devices, and that some of those customers use mobile check deposit
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`functionality. PNC otherwise denies the allegations of Paragraph 33.
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`34.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 34, and on that basis denies them.
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`35.
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`36.
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`PNC denies the allegations of Paragraph 35.
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`PNC admits that in 2018 USAA filed two complaints against Wells Fargo for
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`infringement of certain mobile deposit patents, that the first complaint (which speaks for itself)
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`was filed in June 2018 and included claims for infringement of the ’571 and ’779 Patents, that
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`the second complaint (which speaks for itself) was filed in August 2018 and included claims for
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`infringement of U.S. Patent No. 10,013,681, and that the ’432 and ’559 Patents claim priority to
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`the application for U.S. Patent No. 10,013,681. PNC otherwise denies the allegations in
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`Paragraph 36.
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`37.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 37, and on that basis denies them.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`38.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 38, and on that basis denies them.
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`39.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 39, and on that basis denies them.
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`40.
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`PNC admits that its website, at times, has referred to some information from
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`American Banker, Bloomberg, Business Insider, and S&P Global. PNC otherwise denies the
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`allegations in Paragraph 40.
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`41.
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`PNC admits that its website, at times, has referred to some information from the
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`Washington Post. PNC denies its awareness of the coverage of USAA’s Deposit@Mobile
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`technology cited in paragraph 41. PNC lacks knowledge or information sufficient to form a
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`belief as to the truth of the remaining allegations in Paragraph 41, and on that basis denies them.
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`42.
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`PNC lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations concerning USAA’s patent marking in Paragraph 42, including as to the
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`timeframe, and on that basis denies them. The remaining allegations in Paragraph 42 are legal
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`conclusions to which no response is required, but to the extent a response is required, PNC
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`denies those allegations.
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`43.
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`44.
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`45.
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`PNC denies the allegations in Paragraph 43.
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`PNC denies the allegations in Paragraph 44.
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`PNC admits that its counsel sent a letter dated October 2, 2020 to counsel for
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`USAA, which speaks for itself. PNC otherwise denies the allegations of Paragraph 45.
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`46.
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`47.
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`PNC denies the allegations in Paragraph 46.
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`PNC denies the allegations in Paragraph 47.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`V.
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`FIRST CLAIM FOR RELIEF – ’432 PATENT
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`48.
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`PNC repeats and incorporates by reference each and every response stated herein
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`to each allegation in USAA’s Complaint, as if fully restated here.
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`49.
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`PNC admits that the ’432 Patent is entitled “Systems and methods for remote
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`deposit of checks” and was issued on November 19, 2019. PNC lacks knowledge or information
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`sufficient to form a belief as to the remaining allegations and, on that basis, denies such
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`allegations.
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`50.
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`PNC lacks knowledge or information sufficient to form a belief as to the
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`allegations in Paragraph 50 and, on that basis, denies such allegations.
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`51.
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`The allegations in Paragraph 51 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 51.
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`52.
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`The allegations in Paragraph 52 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 52.
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`53.
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`The allegations in Paragraph 53 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 53.
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`54.
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`The allegations in Paragraph 54 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 54.
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`55.
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`The allegations in Paragraph 55 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC admits the current PNC Mobile Banking app
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`will display a message if the amount entered by the user does not appear to match the amount
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`recognized on the check image, and otherwise denies the allegations in Paragraph 55.
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`56.
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`The allegations in Paragraph 56 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 56.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`57.
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`The allegations in Paragraph 57 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 57.
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`58.
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`The allegations in Paragraph 58 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC lacks knowledge or information sufficient to
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`form a belief as to USAA’s harm and, on that basis, denies such allegations, and otherwise
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`denies the allegations in Paragraph 58.
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`59.
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`The allegations in Paragraph 59 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 59.
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`VI.
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`SECOND CLAIM FOR RELIEF – ’559 PATENT
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`60.
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`PNC repeats and incorporates by reference each and every response stated herein
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`to each allegation in USAA’s Complaint, as if fully restated here.
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`61.
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`PNC admits that the ’559 Patent is entitled “Systems and methods for remote
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`deposit of checks” and was issued on April 14, 2020. PNC lacks knowledge or information
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`sufficient to form a belief as to the remaining allegations and, on that basis, denies such
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`allegations.
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`62.
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`PNC lacks knowledge or information sufficient to form a belief as to the
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`allegations in Paragraph 62 and, on that basis, denies such allegations.
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`63.
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`The allegations in Paragraph 63 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 63.
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`64.
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`The allegations in Paragraph 64 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 64.
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`65.
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`The allegations in Paragraph 65 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 65.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`66.
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`The allegations in Paragraph 66 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC admits the current PNC Mobile Banking app
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`will display a message if the amount entered by the user does not appear to match the amount
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`recognized on the check image, and otherwise denies the allegations in Paragraph 66.
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`67.
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`The allegations in Paragraph 67 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC admits the current PNC Mobile Banking app
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`will display a message if the photograph taken is not clear enough to deposit the check, and
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`otherwise denies the allegations in Paragraph 67.
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`68.
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`The allegations in Paragraph 68 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC admits that the website
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`https://www.cleveland.com/moneymatters/2019/08/citizens-bank-customer-gives-someone-a-
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`100-check-and-it-clears-twice-money-matters.html speaks for itself, and otherwise denies the
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`allegations in Paragraph 68.
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`69.
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`The allegations in Paragraph 69 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 69.
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`70.
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`The allegations in Paragraph 70 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC admits the current PNC Mobile Banking app
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`will display a message if the deposit has been accepted, which includes an instruction for the
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`user to retain the check for a period of time to ensure the deposit is credited to the user’s account
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`before destroying the check, and otherwise denies the allegations in Paragraph 70.
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`71.
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`The allegations in Paragraph 71 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 71.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`72.
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`The allegations in Paragraph 72 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 72.
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`73.
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`The allegations in Paragraph 73 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC lacks knowledge or information sufficient to
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`form a belief as to USAA’s harm and, on that basis, denies such allegations, and otherwise
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`denies the allegations in Paragraph 73.
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`74.
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`The allegations in Paragraph 74 are legal conclusions to which no response is
`
`required. To the extent a response is required, PNC denies the allegations in Paragraph 74.
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`VII. THIRD CLAIM FOR RELIEF – ’571 PATENT
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`75.
`
`PNC repeats and incorporates by reference each and every response stated herein
`
`to each allegation in USAA’s Complaint, as if fully restated here.
`
`76.
`
`PNC admits that the ’571 Patent is entitled “Systems and methods for image
`
`monitoring of check during mobile deposit” and was issued on March 10, 2015. PNC lacks
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`knowledge or information sufficient to form a belief as to the remaining allegations and, on that
`
`basis, denies such allegations.
`
`77.
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`PNC lacks knowledge or information sufficient to form a belief as to the
`
`allegations in Paragraph 77 and, on that basis, denies such allegations.
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`78.
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`The allegations in Paragraph 78 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 78.
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`79.
`
`The allegations in Paragraph 79 are legal conclusions to which no response is
`
`required. To the extent a response is required, PNC denies the allegations in Paragraph 79.
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`80.
`
`The allegations in Paragraph 80 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC admits the current PNC Mobile Banking app
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`Case 2:20-cv-00319-JRG-RSP Document 60 Filed 02/24/21 Page 13 of 54 PageID #: 1754Case 2:22-cv-00193-JRG Document 3 Filed 06/07/22 Page 13 of 137 PageID #: 172
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`will display a message if the deposit has been accepted, which includes an instruction for the
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`user to retain the check for a period of time to ensure the deposit is credited to the user’s account
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`before destroying the check, and otherwise denies the allegations in Paragraph 80.
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`81.
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`The allegations in Paragraph 81 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 81.
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`82.
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`The allegations in Paragraph 82 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 82.
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`83.
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`The allegations in Paragraph 83 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC lacks knowledge or information sufficient to
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`form a belief as to USAA’s harm and, on that basis, denies such allegations, and otherwise
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`denies the allegations in Paragraph 83.
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`84.
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`The allegations in Paragraph 84 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 74.
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`VIII. FOURTH CLAIM FOR RELIEF – ’779 PATENT
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`85.
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`PNC repeats and incorporates by reference each and every response stated herein
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`to each allegation in USAA’s Complaint, as if fully restated here.
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`86.
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`PNC admits that the ’779 Patent is entitled “Systems and methods for alignment
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`of check during mobile deposit”” and was issued on April 15, 2014. PNC lacks knowledge or
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`information sufficient to form a belief as to the remaining allegations and, on that basis, denies
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`such allegations.
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`87.
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`PNC lacks knowledge or information sufficient to form a belief as to the
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`allegations in Paragraph 87 and, on that basis, denies such allegations.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`Page | 13
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`88.
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`The allegations in Paragraph 88 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 88.
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`89.
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`The allegations in Paragraph 89 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 89.
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`90.
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`The allegations in Paragraph 90 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC admits the current PNC Mobile Banking app
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`displays messages such as “Use check front,” “Center check,” and “Move closer,” and otherwise
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`denies the allegations in Paragraph 90.
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`91.
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`The allegations in Paragraph 91 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 91.
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`92.
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`The allegations in Paragraph 92 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC admits the current PNC Mobile Banking app
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`will display a message if the deposit has been accepted, which includes an instruction for the
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`user to retain the check for a period of time to ensure the deposit is credited to the user’s account
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`before destroying the check, and otherwise denies the allegations in Paragraph 92.
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`93.
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`The allegations in Paragraph 93 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 93.
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`94.
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`The allegations in Paragraph 94 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 94.
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`95.
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`The allegations in Paragraph 95 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC lacks knowledge or information sufficient to
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`form a belief as to USAA’s harm and, on that basis, denies such allegations, and otherwise
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`denies the allegations in Paragraph 95.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`Page | 14
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`Case 2:20-cv-00319-JRG-RSP Document 60 Filed 02/24/21 Page 15 of 54 PageID #: 1756Case 2:22-cv-00193-JRG Document 3 Filed 06/07/22 Page 15 of 137 PageID #: 174
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`96.
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`The allegations in Paragraph 96 are legal conclusions to which no response is
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`required. To the extent a response is required, PNC denies the allegations in Paragraph 96.
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`IX.
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`PRAYER FOR RELIEF
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`PNC denies that USAA is entitled to any of the relief it seeks.
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`DEFENDANT PNC’S AFFIRMATIVE DEFENSES
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`Without assuming any burden of proof that it otherwise would not bear, PNC asserts the
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`following separate and additional affirmative defenses, all of which are pleaded in the
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`alternative.
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`First Defense: Failure to State a Claim
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`The Complaint fails to state a claim against PNC upon which relief can be granted.
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`Second Defense: Noninfringement
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`PNC does not infringe and has not infringed, either directly, contributorily, or by
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`inducement, any claim of the ’432, ’559, ’571, or ’779 Patents (collectively, the “USAA
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`Patents”), either literally or under the doctrine of equivalents. PNC does not make, use, offer for
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`sale, sell, or import any product, method, or service in which all of the elements of an asserted
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`claim are practiced, either literally or by the doctrine of equivalents. PNC does not offer to sell or
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`sell a component of any product constituting a material part of any invention claimed in the
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`USAA Patents knowing the component to be especially made or adapted for infringing those
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`claims; and any such components are staples or commodities suitable for substantial
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`noninfringing use. PNC does not actively induce and does not have knowledge of any induced
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`acts that constitute infringement of any product or service in which all of the elements of an
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`asserted claim are practiced, either literally or by the doctrine of equivalents.
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`ANSWER TO COMPLAINT AND COUNTERCLAIM
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`Page | 15
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`Third Defense: Ineligible Subject Matter
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`All of the asserted claims of the USAA Patents are directed to ineligible subject matter
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`pursuant to 35 U.S.C. § 101, including because they are directed to abstract ideas and do not
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`recite additional elements amounting to an inventive concept.
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`Fourth Defense: Invalidity
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`All of the asserted claims of the USAA Patents are invalid pursuant to one or more
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`provisions of the patent laws, including, but not limited to, 35 U.S.C. §§ 102, 103 and 112. The
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`asserted claims are invalid under §§ 102 and 103 including because they are anticipated and/or
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`rendered obvious by multiple items of prior art, such as prior art patents, publications, and
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`systems. The asserted claims are invalid under §112 including because they are not adequately
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`supported or enabled by the written description, because they are indefinite, and because they do
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`not claim the subject matter which the inventors regard as their invention.
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`Fifth Defense: Lack of Knowledge
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`To the extent that USAA asserts that PNC indirectly infringes, either by contributory
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`infringement or inducement of infringement, PNC is not liable to USAA for the acts alleged to
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`have been performed because PNC did not know that any acts that it induced would infringe the
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`USAA Patents or that any components were specially designed for infringement and that their
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`combination with other components would infringe the USAA Patents.
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`Sixth Defense: Prosecution History Estoppel and Disclaimer
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`USAA is estopped from asserting infringement of any claim of the USAA Patents by
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`reason of the admissions, representations,