Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 1 of 34
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`JENAM TECH, LLC,
`
`
`Plaintiff,
`v.
`GOOGLE LLC,
`
`
`Defendant.
`
`
`
`CIVIL ACTION No. 6:20-cv-00453-ADA
`JURY TRIAL DEMANDED
`
`
`
`§
`§
`§
`§
`§
`§
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`§
`§
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`DEFENDANT GOOGLE LLC’S ANSWER AND COUNTERCLAIMS TO PLAINTIFF
`JENAM TECH, LLC’S FIRST AMENDED COMPLAINT FOR PATENT
`INFRINGEMENT
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`1389981
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`JENAM TECH, LLC,
`
`
`Plaintiff,
`v.
`GOOGLE LLC,
`
`
`Defendant.
`
`
`
`CIVIL ACTION No. 6:20-cv-00453-ADA
`JURY TRIAL DEMANDED
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`DEFENDANT GOOGLE LLC’S ANSWER AND COUNTERCLAIMS TO PLAINTIFF
`JENAM TECH, LLC’S FIRST AMENDED COMPLAINT FOR PATENT
`INFRINGEMENT
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`
`
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`1389981
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`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 2 of 34
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`Defendant Google LLC, by and through counsel, submits its Answer to Plaintiff Jenam
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`Tech, LLC’s First Amended Complaint, as follows:
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`PARTIES
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`1.
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`Google is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations of this paragraph, and therefore denies them.
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`2.
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`Google admits that Google LLC is a Delaware limited liability company with a
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`physical address at 500 West 2nd Street, Austin, Texas 78701. Google admits that its registered
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`agent in Texas is Corporation Service Company, 211 East 7th Street, Suite 620, Austin, Texas
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`78701. Google admits that it is registered to do business in the State of Texas and has been since
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`at least November 17, 2006. Any remaining allegations in this paragraph consist of argument
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`and legal conclusions, to which no response is required, but to the extent a response is required,
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`Google denies the allegations.
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`3.
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`Solely for the purpose of this action, Google does not contest personal jurisdiction
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`in this District. Google specifically denies that it has committed any acts of infringement within
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`the Western District of Texas, or any other District. Google denies any remaining allegations of
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`this paragraph.
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`4.
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`Google admits that it conducts business in the State of Texas, throughout the
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`United States, and within this District. Google denies that it has committed any acts of patent
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`infringement within or outside the State of Texas or within this District. Google denies any
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`remaining allegations of this paragraph.
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`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 3 of 34
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`JURISDICTION AND VENUE
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`5.
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`Google admits that this action invokes the United States patent laws, and that this
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`Court has subject matter jurisdiction over patent law claims. Google denies any remaining
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`allegations of this paragraph.
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`6.
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`Google admits that venue is proper in this District for purposes of this particular
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`action but not convenient or in the interests of justice under 28 U.S.C. § 1404(a). Google admits
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`that it has an office at 500 West 2nd Street, Austin, Texas 78701. Google denies any remaining
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`allegations of this paragraph.
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`7.
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`This paragraph sets forth argument and legal conclusions to which no response is
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`required. To the extent this paragraph includes any allegations to which a response is required,
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`Google denies them.
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`THE PATENTS-IN-SUIT
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`8.
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`Google admits that United States Patent No. 10,069,945 (“the ’945 patent”), on its
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`face, bears the title quoted in this paragraph and an issuance date of September 4, 2018. Google
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`denies that the ’945 patent was duly and legally issued. Google is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`9.
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`Google denies the allegations in this paragraph as they relate to Google, and
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`specifically denies that it has committed any acts of infringement. Google is without knowledge
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`or information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`10.
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`Google admits that what appears to be a copy of the ’945 patent is attached to the
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`Complaint as Exhibit A. Google denies any remaining allegations of this paragraph.
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`11.
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`Google admits that United States Patent No. 10,075,564 (“the ’564 patent”), on its
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`face, bears the title quoted in this paragraph and an issuance date of September 11, 2018. Google
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`denies that the ’564 patent was duly and legally issued. Google is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`12.
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`Google denies the allegations in this paragraph as they relate to Google, and
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`specifically denies that it has committed any acts of infringement. Google is without knowledge
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`or information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`13.
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`Google admits that what appears to be a copy of the ’564 patent is attached to the
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`Complaint as Exhibit B. Google denies any remaining allegations of this paragraph.
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`14.
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`Google admits that United States Patent No. 10,075,565 (“the ’565 patent”), on its
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`face, bears the title quoted in this paragraph and an issuance date of September 11, 2018. Google
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`denies that the ’565 patent was duly and legally issued. Google is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`15.
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`Google denies the allegations in this paragraph as they relate to Google, and
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`specifically denies that it has committed any acts of infringement. Google is without knowledge
`
`or information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`16.
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`Google admits that what appears to be a copy of the ’565 patent is attached to the
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`Complaint as Exhibit C. Google denies any remaining allegations of this paragraph.
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`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 5 of 34
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`17.
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`Google admits that United States Patent No. 10,375,215 (“the ’215 patent”), on its
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`face, bears the title quoted in this paragraph and an issuance date of August 6, 2019. Google
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`denies that the ’215 patent was duly and legally issued. Google is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`18.
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`Google denies the allegations in this paragraph as they relate to Google, and
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`specifically denies that it has committed any acts of infringement. Google is without knowledge
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`or information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`19.
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`Google admits that what appears to be a copy of the ’215 patent is attached to the
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`Complaint as Exhibit D. Google denies any remaining allegations of this paragraph.
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`20.
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`Google admits that United States Patent No. 10,306,026 (“the ’026 patent”), on its
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`face, bears the title quoted in this paragraph and an issuance date of May 28, 2019. Google
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`denies that the ’026 patent was duly and legally issued. Google is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`21.
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`Google denies the allegations in this paragraph as they relate to Google, and
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`specifically denies that it has committed any acts of infringement. Google is without knowledge
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`or information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`22.
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`Google admits that what appears to be a copy of the ’026 patent is attached to the
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`Complaint as Exhibit E. Google denies any remaining allegations of this paragraph.
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`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 6 of 34
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`23.
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`Google admits that United States Patent No. 9,923,995 (“the ’995 patent”), on its
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`face, bears the title quoted in this paragraph and an issuance date of March 20, 2018. Google
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`denies that the ’995 patent was duly and legally issued. Google is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`24.
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`Google denies the allegations in this paragraph as they relate to Google, and
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`specifically denies that it has committed any acts of infringement. Google is without knowledge
`
`or information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`25.
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`Google admits that what appears to be a copy of the ’995 patent is attached to the
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`Complaint as Exhibit F. Google denies any remaining allegations of this paragraph.
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`26.
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`Google admits that United States Patent No. 9,923,996 (“the ’996 patent”), on its
`
`face, bears the title quoted in this paragraph and an issuance date of March 20, 2018. Google
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`denies that the ’996 patent was duly and legally issued. Google is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`27.
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`Google denies the allegations in this paragraph as they relate to Google, and
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`specifically denies that it has committed any acts of infringement. Google is without knowledge
`
`or information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`28.
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`Google admits that what appears to be a copy of the ’996 patent is attached to the
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`Complaint as Exhibit G. Google denies any remaining allegations of this paragraph.
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`29.
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`Google admits that United States Patent No. 10,742,774 (“the ’774 patent”), on its
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`face, bears the title quoted in this paragraph and an issuance date of August 11, 2020. Google
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`denies that the ’774 patent was duly and legally issued. Google is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`30.
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`Google denies the allegations in this paragraph as they relate to Google, and
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`specifically denies that it has committed any acts of infringement. Google is without knowledge
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`or information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
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`31.
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`Google admits that what appears to be a copy of the ’774 patent is attached to the
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`Complaint as Exhibit O. Google denies any remaining allegations of this paragraph.
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`32.
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`Google admits that Plaintiff refers to the ʼ945, ʼ564, ʼ565, ʼ215, ʼ026, ʼ995, ʼ996,
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`and ’774 patents, collectively, as the “patents” or the “patents in suit.”
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`33.
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`Google is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations of this paragraph, and therefore denies them.
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`34.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`COUNT I: INFRINGEMENT OF THE ʼ945 PATENT
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`35.
`
`Google incorporates by reference its responses to the allegations of
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`paragraphs 1-34 above as its response to this paragraph.
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`36.
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`Google admits that the ’945 patent, on its face, includes 144 claims. Google
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`denies that the ’945 claims were validly and duly issued.
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`37.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`38.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`39.
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`Google admits that it became aware of the ’945 patent at least as early as the date
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`of service of this Complaint. Any remaining allegations in this paragraph consist of argument
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`and legal conclusions, to which no response is required, but to the extent a response is required,
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`Google denies the allegations.
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`40.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`COUNT II: INFRINGEMENT OF THE ʼ564 PATENT
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`41.
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`Google incorporates by reference its responses to the allegations of
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`paragraphs 1-40 above as its response to this paragraph.
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`42.
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`Google admits that the ’564 patent, on its face, includes 30 claims. Google denies
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`that the ’564 claims were validly and duly issued.
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`43.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`44.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`45.
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`Google admits that it became aware of the ’564 patent at least as early as the date
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`of service of this Complaint. Any remaining allegations in this paragraph consist of argument
`
`and legal conclusions, to which no response is required, but to the extent a response is required,
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`Google denies the allegations.
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`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 9 of 34
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`46.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`COUNT III: INFRINGEMENT OF THE ʼ565 PATENT
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`47.
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`Google incorporates by reference its responses to the allegations of
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`paragraphs 1-46 above as its response to this paragraph.
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`48.
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`Google admits that the ’565 patent, on its face, includes 30 claims. Google denies
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`that the ’565 claims were validly and duly issued.
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`49.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`50.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`51.
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`Google admits that it became aware of the ’565 patent at least as early as the date
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`of service of this Complaint. Any remaining allegations in this paragraph consist of argument
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`and legal conclusions, to which no response is required, but to the extent a response is required,
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`Google denies the allegations.
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`52.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`COUNT IV: INFRINGEMENT OF THE ʼ215 PATENT
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`53.
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`Google incorporates by reference its responses to the allegations of
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`paragraphs 1-52 above as its response to this paragraph.
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`54.
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`Google admits that the ’215 patent, on its face, includes 39 claims. Google denies
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`that the ’215 claims were validly and duly issued.
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`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 10 of 34
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`55.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`56.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`57.
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`Google admits that it became aware of the ’215 patent at least as early as the date
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`of service of this Complaint. Any remaining allegations in this paragraph consist of argument
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`and legal conclusions, to which no response is required, but to the extent a response is required,
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`Google denies the allegations.
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`58.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`COUNT V: INFRINGEMENT OF THE ʼ026 PATENT
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`59.
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`Google incorporates by reference its responses to the allegations of
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`paragraphs 1-58 above as its response to this paragraph.
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`60.
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`Google admits that the ’026 patent, on its face, includes 98 claims. Google denies
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`that the ’026 claims were validly and duly issued.
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`61.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`62.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`63.
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`Google admits that it became aware of the ’026 patent at least as early as the date
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`of service of this Complaint. Any remaining allegations in this paragraph consist of argument
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`and legal conclusions, to which no response is required, but to the extent a response is required,
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`Google denies the allegations.
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`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 11 of 34
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`64.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`COUNT VI: INFRINGEMENT OF THE ’995 PATENT
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`65.
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`Google incorporates by reference its responses to the allegations of
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`paragraphs 1-64 above as its response to this paragraph.
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`66.
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`Google admits that the ’995 patent, on its face, includes 30 claims. Google denies
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`that the ’995 claims were validly and duly issued.
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`67.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`68.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`69.
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`Google admits that it became aware of the ’995 patent at least as early as the date
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`of service of this Complaint. Any remaining allegations in this paragraph consist of argument
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`and legal conclusions, to which no response is required, but to the extent a response is required,
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`Google denies the allegations.
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`70.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`COUNT VII: INFRINGEMENT OF THE ’996 PATENT
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`71.
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`Google incorporates by reference its responses to the allegations of
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`paragraphs 1-70 above as its response to this paragraph.
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`72.
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`Google admits that the ’996 patent, on its face, includes 30 claims. Google denies
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`that the ’996 claims were validly and duly issued.
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`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 12 of 34
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`73.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`74.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`75.
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`Google admits that it became aware of the ’996 patent at least as early as the date
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`of service of this Complaint. Any remaining allegations in this paragraph consist of argument
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`and legal conclusions, to which no response is required, but to the extent a response is required,
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`Google denies the allegations.
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`76.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`COUNT VIII: INFRINGEMENT OF THE ’774 PATENT
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`77.
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`Google incorporates by reference its responses to the allegations of
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`paragraphs 1-76 above as its response to this paragraph.
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`78.
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`Google admits that the ’774 patent, on its face, includes 83 claims. Google denies
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`that the ’774 claims were validly and duly issued.
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`79.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`80.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`81.
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`Google admits that it became aware of the ’774 patent at least as early as the date
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`of service of this Complaint. Any remaining allegations in this paragraph consist of argument
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`and legal conclusions, to which no response is required, but to the extent a response is required,
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`Google denies the allegations.
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`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 13 of 34
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`82.
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`Google denies the allegations of this paragraph, and specifically denies that it has
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`committed any acts of infringement.
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`RELIEF REQUESTED
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`These paragraphs set forth the statement of relief requested by Plaintiff to which no
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`response is required. Google denies that Plaintiff is entitled to any of the requested relief and
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`denies any allegations.
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`JURY DEMAND
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`Plaintiff’s demand for a trial by jury for all issues triable to a jury does not state any
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`allegation, and Google is not required to respond. To the extent that any allegations are included
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`in the demand, Google denies these allegations.
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`Google denies each and every allegation of Plaintiff’s Complaint not specifically
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`admitted or otherwise responded to above. Google specifically denies that it has infringed or is
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`liable for infringement of any valid and enforceable patent claims of Plaintiff. Google further
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`specifically denies that Plaintiff is entitled to any relief whatsoever of any kind against Google as
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`a result of any act of Google or any person or entity acting on behalf of Google.
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`GOOGLE’S AFFIRMATIVE DEFENSES
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`Google asserts the following affirmative defenses. To the extent any of the defenses, in
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`whole or in part, relates to or negates an element of Plaintiff’s claims, Google in no way seeks to
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`relieve Plaintiff of its burden of proof or persuasion on that element. All defenses are pled in the
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`alternative and do not constitute an admission of liability or that Plaintiff is entitled to any relief
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`whatsoever. Google reserves any and all rights it has under the Federal Rules of Civil Procedure
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`to assert additional defenses and/or counterclaims as additional facts are learned or present
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`themselves during discovery or otherwise during the course of these proceedings.
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`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 14 of 34
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`First Defense – No Patent Infringement (All Counts)
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`1.
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`Google does not infringe and has not infringed (not directly, contributorily, or by
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`inducement), either literally or under the doctrine of equivalents, and is not liable for
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`infringement of any valid and enforceable claim of the ’945, ’564, ’565, ’215, ’026, ’995, ’996,
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`and ’774 patents (the “Patents-in-Suit”).
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`2.
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`Google also does not infringe any valid and enforceable claim of the Patents-in-
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`Suit based on the reverse doctrine of equivalents.
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`Second Defense – Patent Invalidity (All Counts)
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`3.
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`The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.
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`§ 101 because the claims are directed to abstract ideas or other non-statutory subject matter.
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`4.
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`The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.
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`§ 102 because the claims lack novelty, and are taught and suggested by the prior art.
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`5.
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` The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.
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`§ 103 because the claims are obvious in view of the prior art.
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`6.
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`The claims of the Patents-in-Suit are invalid and unenforceable for failure satisfy
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`the conditions set forth in 35 U.S.C. § 112, including failure of written description, lack of
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`enablement, and claim indefiniteness.
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`Third Defense – Limitation on Patent Damages (All Counts)
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`7.
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`Plaintiff’s claims for damages, if any, against Google for alleged infringement of
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`the Patents-in-Suit are limited by 35 U.S.C. §§ 286, 287 and/or 288.
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`Fourth Defense – Prosecution History Estoppel / Prosecution Disclaimer (All Counts)
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`8.
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`Plaintiff’s claims are barred by the doctrines of prosecution history estoppel
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`and/or prosecution disclaimer.
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`Fifth Defense – Inequitable Conduct / Fraud on the Patent Office (All Counts)
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`9.
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`Plaintiff’s claims are barred, in whole or in part, due to inequitable and fraudulent
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`conduct on the United States Patent & Trademark Office (“USPTO”).
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`10.
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`Google incorporates by reference its allegations in its Seventeenth Counterclaim
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`for Declaratory Judgment of Unenforceability of the Patents-in-Suit, paragraphs 72-126 of
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`Google’s Counterclaims, set forth below.
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`Sixth Defense – Waiver and Estoppel (All Counts)
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`11.
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`Plaintiff’s claims are barred, in whole or in part, by the equitable doctrines of
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`waiver and estoppel.
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`Seventh Defense – Damages Speculative, Uncertain, and Contingent (All Counts)
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`Plaintiff’s alleged damages are speculative, uncertain and/or contingent, have not
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`12.
`
`accrued, and are not recoverable.
`
`Eighth Defense – No Injury (All Counts)
`
`13.
`
`Plaintiff’s claims are barred, in whole or in part, because Plaintiff has not suffered
`
`any injury in fact from the conduct alleged in the Complaint.
`
`Ninth Defense – No Causation (All Counts)
`
`14.
`
`Google’s conduct was and is neither the cause in fact nor the proximate cause of
`
`any injury, loss, or damage alleged by Plaintiff.
`
`Tenth Defense – Licensing (All Counts)
`
`15.
`
`To the extent any accused products are subject to a license for any of the Patents-
`
`in-Suit, Plaintiff's claims are barred, in whole or in part.
`
`1389981
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`
`
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`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 16 of 34
`
`
`
`COUNTERCLAIMS
`
`As and for its Counterclaims against Jenam Tech, Google respectfully states as follows:
`
`THE PARTIES
`
`1.
`
`Google is a corporation organized and existing under the laws of the State of
`
`Delaware, with its principal place of business at 1600 Amphitheatre Parkway, Mountain View,
`
`California 94043.
`
`2.
`
`On information and belief, Jenam Tech, LLC is a corporation organized and
`
`existing under the laws of the State of Texas, with a principal place of business at 211 West
`
`Tyler Street, Suite C, Longview, Texas, 75601.
`
`3.
`
`On information and belief, Jenam Tech was created solely for the purpose of
`
`holding and litigating patents, including the Patents-in-Suit, in Texas.
`
`4.
`
`On information and belief, George A. Gordon, also known as Andrew Gordon,
`
`(“Gordon”) is the managing member and registered agent of Jenam Tech.
`
`5.
`
`On information and belief, Gordon and Kevin Zilka (“Zilka”) constitute the
`
`management of Jenam Tech.
`
`JURISDICTION AND VENUE
`
`6.
`
`Subject to Google’s defenses and denials, Google alleges that this Court has
`
`jurisdiction over the subject matter of these Counterclaims under, without limitation, 28 U.S.C.
`
`§§ 1331, 1338(a), 1367, 2201, and 2202. Based solely on Jenam Tech’s filing of this action in
`
`this District, and solely if Jenam Tech’s action is not transferred to another district or division,
`
`venue is proper for Google’s Counterclaims.
`
`7.
`
`This Court has personal jurisdiction over Jenam Tech.
`
`1389981
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`
`
`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 17 of 34
`
`
`
`COUNT ONE - Declaratory Judgment of Non-Infringement of U.S. Patent No. 10,069,945
`
`8.
`
`Google restates and incorporates by reference its allegations in paragraphs 1-7 of
`
`its Counterclaims.
`
`9.
`
`An actual case or controversy exists between Google and Jenam Tech as to
`
`whether the ’945 patent is infringed by Google.
`
`10.
`
`A judicial declaration is necessary and appropriate so that Google may ascertain
`
`its rights regarding the ’945 patent.
`
`11.
`
`Google has not infringed and does not infringe, directly or indirectly, any valid
`
`and enforceable claim of the ’945 patent.
`
`COUNT TWO - Declaratory Judgment of Non-Infringement of U.S. Patent No. 10,075,564
`
`12.
`
`Google restates and incorporates by reference its allegations in paragraphs 1-7 of
`
`its Counterclaims.
`
`13.
`
`An actual case or controversy exists between Google and Jenam Tech as to
`
`whether the ’564 patent is infringed by Google.
`
`14.
`
`A judicial declaration is necessary and appropriate so that Google may ascertain
`
`its rights regarding the ’564 patent.
`
`15.
`
`Google has not infringed and does not infringe, directly or indirectly, any valid
`
`and enforceable claim of the ’564 patent.
`
`COUNT THREE - Declaratory Judgment of Non-Infringement of
`U.S. Patent No. 10,075,565
`
`Google restates and incorporates by reference its allegations in paragraphs 1-7 of
`
`16.
`
`its Counterclaims.
`
`17.
`
`An actual case or controversy exists between Google and Jenam Tech as to
`
`whether the ’565 patent is infringed by Google.
`
`1389981
`
`16
`
`
`
`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 18 of 34
`
`
`
`18.
`
`A judicial declaration is necessary and appropriate so that Google may ascertain
`
`its rights regarding the ’565 patent.
`
`19.
`
`Google has not infringed and does not infringe, directly or indirectly, any valid
`
`and enforceable claim of the ’565 patent.
`
`COUNT FOUR - Declaratory Judgment of Non-Infringement of U.S. Patent No. 10,375,215
`
`20.
`
`Google restates and incorporates by reference its allegations in paragraphs 1-7 of
`
`its Counterclaims.
`
`21.
`
`An actual case or controversy exists between Google and Jenam Tech as to
`
`whether the ’215 patent is infringed by Google.
`
`22.
`
`A judicial declaration is necessary and appropriate so that Google may ascertain
`
`its rights regarding the ’215 patent.
`
`23.
`
`Google has not infringed and does not infringe, directly or indirectly, any valid
`
`and enforceable claim of the ’215 patent.
`
`COUNT FIVE - Declaratory Judgment of Non-Infringement of U.S. Patent No. 10,306,026
`
`24.
`
`Google restates and incorporates by reference its allegations in paragraphs 1-7 of
`
`its Counterclaims.
`
`25.
`
`An actual case or controversy exists between Google and Jenam Tech as to
`
`whether the ’026 patent is infringed by Google.
`
`26.
`
`A judicial declaration is necessary and appropriate so that Google may ascertain
`
`its rights regarding the ’026 patent.
`
`27.
`
`Google has not infringed and does not infringe, directly or indirectly, any valid
`
`and enforceable claim of the ’026 patent.
`
`1389981
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`17
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`
`
`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 19 of 34
`
`
`
`COUNT SIX - Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,923,995
`
`28.
`
`Google restates and incorporates by reference its allegations in paragraphs 1-7 of
`
`its Counterclaims.
`
`29.
`
`An actual case or controversy exists between Google and Jenam Tech as to
`
`whether the ’995 patent is infringed by Google.
`
`30.
`
`A judicial declaration is necessary and appropriate so that Google may ascertain
`
`its rights regarding the ’995 patent.
`
`31.
`
`Google has not infringed and does not infringe, directly or indirectly, any valid
`
`and enforceable claim of the ’995 patent.
`
`COUNT SEVEN - Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,923,996
`
`32.
`
`Google restates and incorporates by reference its allegations in paragraphs 1-7 of
`
`its Counterclaims.
`
`33.
`
`An actual case or controversy exists between Google and Jenam Tech as to
`
`whether the ’996 patent is infringed by Google.
`
`34.
`
`A judicial declaration is necessary and appropriate so that Google may ascertain
`
`its rights regarding the ’996 patent.
`
`35.
`
`Google has not infringed and does not infringe, directly or indirectly, any valid
`
`and enforceable claim of the ’996 patent.
`
`COUNT EIGHT - Declaratory Judgment of Non-Infringement of
`U.S. Patent No. 10,742,774
`
`36.
`
`Google restates and incorporates by reference its allegations in paragraphs 1-7 of
`
`its Counterclaims.
`
`37.
`
`An actual case or controversy exists between Google and Jenam Tech as to
`
`whether the ’774 patent is infringed by Google.
`
`1389981
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`18
`
`
`
`Case 6:20-cv-00453-ADA Document 32 Filed 08/25/20 Page 20 of 34
`
`
`
`38.
`
`A judicial declaration is necessary and appropriate so that Google may ascertain
`
`its rights regarding the ’774 patent.
`
`39.
`
`Google has not infringed and does not infringe, directly or indirectly, any valid
`
`and enforceable claim of the ’774 patent.
`
`COUNT NINE - Declaratory Judgment of Invalidity of U.S. Patent No. 10,069,945
`
`40.
`
`Google restates and incorporates by reference its allegations in paragraphs 1-7 of
`
`its Counterclaims.
`
`41.
`
`An actual case or controversy exists between Google and Jenam Tech as to
`
`whether the ’945 patent is invalid.
`
`42.
`
`A judicial declaration is necessary and appropriate so that Google may ascertain
`
`its rights as to whether the ’945 patent is invalid.
`
`43.
`
`The ’945 patent is invalid because it fails to meet the “conditions for
`
`patentability” of 35 USC §§ 101, 102, 103, and/or 112 because the alleged invention thereof
`
`lacks utility; is taught by, suggested by, and/or, obvious in view of, the prior art; and/or is not
`
`adequately supported by the written description of the patented invention, and no claim of the
`
`’945 patent can be properly construed to cover any of Google’s products.
`
`COUNT TEN - Declaratory Judgment of Invalidity of U.S. Patent No. 1
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