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DEFENDANTS COREL CORPORATION AND COREL INC.’S RE-NOTICE OF MOTION AND MOTION FOR LEAVE
TO AMEND THEIR ANSWER TO ADMIT INFRINGEMENT AND MOTION TO DISMISS DEFENDANTS’
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS – 5:15-CV-05836
Case 5:15-cv-05836-EJD Document 115 Filed 11/09/16 Page 2 of 5
1 PLEASE TAKE NOTICE that on January 12, 2017, at 9:00 a.m. or as soon thereafter as the
2 matter can be heard, in the courtroom of the Honorable Edward J. Davila, located in Courtroom 4,
3 5th Floor, San Jose Courthouse, 280 South 1st Street, San Jose, California 95113, Defendants Corel
4 Corp. and Corel Inc. (collectively “Corel”) will, and hereby move for an order granting the relief
5 requested in Corel’s Motion for Leave to Amend Their Answer to Admit Infringement and Motion
9 infringement, and moves to dismiss most of Corel’s affirmative defenses and counterclaims. While
10 Corel believes strongly in its defenses of non-infringement and invalidity, to properly develop and
11 prove out those defenses will simply cost more than the damages could rationally be in this case,
12 even assuming all of Microsoft’s assertions are accurate; which they are not. Accordingly, Corel has
13 no choice at this point but to admit infringement, cease fighting validity, and withdraw its
14 counterclaims, except those directly related to Corel’s defense of license. Corel continues to
15 maintain that it is licensed under the ’980 patent and intends to defend against any and all
16 unreasonable claims for damages Microsoft makes, like Microsoft’s baseless claim to pre-suit
18 In December 2015, Microsoft filed this lawsuit against Corel, purely in retaliation to a
19 separate lawsuit filed by Corel Software LLC (a third party) against Microsoft in Utah (“the Utah
20 case”). It has been abundantly clear since the beginning of this lawsuit that Microsoft’s sole mission
21 in this case is to drive up Corel’s costs in an effort to put settlement pressure on the Utah case. Early
22 on, Corel volunteered its revenue information for the accused products to Microsoft as a gesture of
23 good faith, and requested that Microsoft come forward with a demand so that Corel could be spared
24 unnecessary expense. See Dkt. 77-6. Microsoft ignored this invitation, and the underlying economic
25 realities of this case, and instead has pursued a scorched earth approach to discovery.
26 Microsoft served Corel with countless overbroad and burdensome document requests.
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DEFENDANTS COREL CORPORATION AND COREL INC.’S RE-NOTICE OF MOTION AND MOTION FOR LEAVE
TO AMEND THEIR ANSWER TO ADMIT INFRINGEMENT AND MOTION TO DISMISS DEFENDANTS’
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS – 5:15-CV-05836
Case 5:15-cv-05836-EJD Document 115 Filed 11/09/16 Page 3 of 5
1 documents. Id., ¶ 4. Notwithstanding those efforts, Microsoft continued to put pressure on Corel
2 with unreasonable time demands (even though fact discovery does not close until mid-February
3 2017), and recently was threatening to file four separate motions to compel. Id., ¶ 5. Microsoft also
4 dumped on Corel hundreds of thousands of pages of documents that Microsoft had previously
5 produced in the Utah case, documents that Corel did not ask for and that have no demonstrated
6 relevance to the present case, but put Corel at “peril” if it does not invest tremendous resources to
7 review those documents. Id., ¶ 6. Microsoft also recently asked permission to subpoena a third
8 party for a technical deposition in Europe and the production of source code, ignoring the fact that
10 To date, Corel has already spent over $800K defending this case. LLagostera Decl., ¶ 7. If this
11 case were to continue to march towards trial with infringement and validity still at issue, Corel will
12 spend an amount of money that is an order of magnitude larger than the potential damages at stake.
13 Accordingly, Corel must cease many of its defenses and counterclaims, and moves as follows:
14 First, Corel moves the Court for leave to amend its Answer. Corel’s proposed Second Amended
15 Answer, attached hereto in redline form as Exhibit A to the LLagostera Decl., and clean form as
16 Exhibit B to the LLagostera Decl., admits that all of the products that have been specifically accused
18 Second, Corel moves the Court to dismiss the following Affirmative Defenses and
19 Counterclaims:
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DEFENDANTS COREL CORPORATION AND COREL INC.’S MOTION FOR LEAVE TO AMEND THEIR ANSWER
TO ADMIT INFRINGEMENT AND MOTION TO DISMISS DEFENDANTS’ AFFIRMATIVE DEFENSES AND
COUNTERCLAIMS – 5:15-CV-05836
Case 5:15-cv-05836-EJD Document 115 Filed 11/09/16 Page 4 of 5
5 • Counterclaim XIX for Handgards Anti-Trust under the Sherman Act; and
6 • Counterclaim XXI-XXII for inequitable conduct.
7 For the Court’s convenience, Corel’s proposed Second Amended Answer (attached as
8 Exhibits A and B) strikes the above affirmative defenses and counterclaims so that the Court can
10 There is substantial good cause to grant Corel’s motions. In view of Corel’s amended
11 Answer and dismissal of numerous affirmative defenses and counterclaims, the only issues that will
12 remain are:
13 1) whether Corel is licensed to the ’980 patent (set for hearing January 12);
18 Corel asked Microsoft to drop its willfulness claim in light of Corel moving to drop its
19 counterclaims, but Microsoft declined to participate in the narrowing of issues in this litigation. Id.,
20 ¶¶ 8-9. The Second Amended Answer and Counterclaims proffered here by Corel drastically
21 streamline the issues in dispute and reduce the amount of resources this lawsuit will cost both the
23 For the foregoing reasons, Corel asks this Court to grant this motion for leave amend its Answer
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DEFENDANTS COREL CORPORATION AND COREL INC.’S MOTION FOR LEAVE TO AMEND THEIR ANSWER
TO ADMIT INFRINGEMENT AND MOTION TO DISMISS DEFENDANTS’ AFFIRMATIVE DEFENSES AND
COUNTERCLAIMS – 5:15-CV-05836
Case 5:15-cv-05836-EJD Document 115 Filed 11/09/16 Page 5 of 5
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DEFENDANTS COREL CORPORATION AND COREL INC.’S MOTION FOR LEAVE TO AMEND THEIR ANSWER
TO ADMIT INFRINGEMENT AND MOTION TO DISMISS DEFENDANTS’ AFFIRMATIVE DEFENSES AND
COUNTERCLAIMS – 5:15-CV-05836
Case 5:15-cv-05836-EJD Document 115-1 Filed 11/09/16 Page 1 of 3
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312990.01000/103032733v.1
28 DECLARATION OF DOMINGO M. LLAGOSTERA IN SUPPORT OF DEFENDANTS COREL CORP. AND
COREL INC.’S NOTICE OF MOTION AND MOTION FOR LEAVE TO AMEND THEIR ANSWER TO
ADMIT INFRINGEMENT AND MOTION TO DISMISS DEFENDANTS’ AFFIRMATIVE DEFENSES AND
COUNTERCLAIMS - 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-1 Filed 11/09/16 Page 2 of 3
4 Corporation and Corel Inc. (collectively “Corel”). I am licensed to practice in the State of Texas
5 and admitted to practice pro hac vice in the Northern District of California.
7 Their Answer to Admit Infringement and Motion to Dismiss Certain Affirmative Defenses and
8 Counterclaims.
9 3. In this lawsuit, Microsoft has served Corel with over 100 requests for production.
12 5. On October 12, 2016, Microsoft began threatening to file four separate motions to
13 compel relating to Corel’s document production, source code production, and scheduling of
14 depositions.
15 6. In this case, Microsoft has produced two sets of independently Bates labeled
16 document productions. The first set is identified as “NDCA,” presumably because the production
17 includes documents specifically requested in this action. The second set, however, which now totals
18 over 12,000 documents, does not include the “NDCA” identifier. Corel’s counsel discovered that
19 the second set of documents were simply documents that Microsoft had produced in a parallel action
20 in Utah, a case in which Corel is not a party and that involves different patents.
22 8. On October 31, 2016, Corel’s counsel sent Microsoft’s in-house counsel a notice
23 letter, informing him that in view of the economics of this lawsuit, Corel had no choice but to move
24 the Court for leave to amend its Answer, whereby Corel would admit that it infringes the asserted
25 patents in this action, and to move the Court to dismiss its affirmative defenses of invalidity and
26 unenforceability. The letter also informed Microsoft’s counsel that Corel would be willing to
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312990.01000/103032733v.1 1
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DECLARATION OF DOMINGO M. LLAGOSTERA IN SUPPORT OF DEFENDANTS COREL CORP. AND
COREL INC.’S NOTICE OF MOTION AND MOTION FOR LEAVE TO AMEND THEIR ANSWER TO
ADMIT INFRINGEMENT AND MOTION TO DISMISS DEFENDANTS’ AFFIRMATIVE DEFENSES AND
COUNTERCLAIMS - 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-1 Filed 11/09/16 Page 3 of 3
1 withdraw certain counterclaims if Microsoft would be willing to dismiss its claims of willful
2 infringement and agree to a more focused discovery scope. The letter also informed Microsoft that
3 the claim construction issues would be mooted by Corel’s motions, and so Corel would be seeking to
6 stated that Microsoft would not agree to withdraw its willful infringement claim unless Corel made
7 concessions in the parallel Utah action, and that Microsoft would also not stipulate to vacating the
8 claim construction hearing unless Corel agreed to (1) not challenge that Microsoft’s products
9 embody the claims, and to (2) not pursue non-infringing alternatives for damages.
10 10. Corel’s proposed Second Amended Answer (redlined) is attached hereto as Exhibit A.
11 11. Corel’s proposed Second Amended Answer (clean) is attached hereto as Exhibit B.
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13 I declare under penalty of perjury that the foregoing is true and correct.
15
/s/ Domingo M. LLagostera
16 Domingo M. LLagostera
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312990.01000/103032733v.1 2
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DECLARATION OF DOMINGO M. LLAGOSTERA IN SUPPORT OF DEFENDANTS COREL CORP. AND
COREL INC.’S NOTICE OF MOTION AND MOTION FOR LEAVE TO AMEND THEIR ANSWER TO
ADMIT INFRINGEMENT AND MOTION TO DISMISS DEFENDANTS’ AFFIRMATIVE DEFENSES AND
COUNTERCLAIMS - 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 1 of 43
Exhibit A
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 2 of 43
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DEFENDANTS COREL CORPORATION AND COREL, INC.'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 3 of 43
1 2. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 2 and
2 without limiting the generality of the foregoing denial, further deny that Microsoft’s
3 products have a distinctive look and feel or that such look and feel is protectable.
4 3. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 3.
5 4. Corel, Inc. and Corel Corporation admit that WordPerfect X7 offers a
6 Microsoft Word Mode option but deny that the Word mode is protectable.
7 5. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 5 and
8 without limiting the generality of the foregoing denial, further deny that such look and
9 feel is protectable.
10 6. Corel, Inc. and Corel Corporation admit that Quattro Pro X7 permits a user
11 to simulate an Excel spreadsheet but deny that such features are protectable.
12 7. Corel, Inc. and Corel Corporation admit that Quattro Pro X7 offers a
13 Microsoft Excel Mode option but deny that such simulation and features are protectable.
14 8. Corel, Inc. and Corel Corporation admit that Quattro Pro X7 offers a
15 Microsoft Excel Mode option but deny that such simulation and features are protectable.
16 9. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 9.
17 10. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 10.
18 11. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 11.
19 PARTIES
20 12. Corel, Inc. and Corel Corporation are without sufficient knowledge or
21 information to admit the allegations in Paragraph 12 of the Complaint and
22 therefore deny the same.
23 13. Admitted.
24 14. Admitted.
25 JURISDICTION AND VENUE
26 15. Corel, Inc. and Corel Corporation admit that Microsoft purports to allege
27 an action for patent infringement. Corel, Inc. and Corel Corporation admit that
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DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 5 of 43
1 this Court has subject matter jurisdiction over Microsoft’s purported claims for
2 patent infringement pursuant to 28 U.S.C. §§ 1331 and 1338(a). All other
3 allegations in paragraph 15 are expressly denied.
4 16. Corel Corporation denies that it has committed acts of patent infringement
5 and/or contributed to or induced acts of patent infringement by others in this
6 District, including any ongoing acts. Corel Corporation denies the remaining
7 allegationsthe allegations in Paragraph 16 of the Complaint.
8 17. Corel, Inc. denies that it has committed acts of patent infringement and/or
9 contributed to or induced acts of patent infringement by others in this District,
10 including any ongoing acts. Corel Inc. admits that the court has personal
11 jurisdiction over it, and admits the allegations in subparagraph (ii) but denies that
12 it derives substantial revenue from products and/or services provided to
13 individuals in this District and in this State and admits the allegations in
14 subparagraphs (iii) and (iv). Corel denies the remaining allegations in Paragraph
15 17 of the Complaint.
16 18. Corel, Inc. admits that venue is proper in this District pursuant to U.S.C.
17 §§ 1391 (b)-(c) and 1400(b). However, Corel, Inc. denies that it has committed
18 any acts of infringement in this State and in this District. Corel, Corporation
19 denies that venue is proper in this District pursuant to U.S.C. §§ 1391 (b)-(c) and
20 1400(b). Corel Corporation further denies that it has committed any acts of
21 infringement in this State and in this District. Unless expressly admitted, all other
22 remaining allegations are denied by both Corel, Inc. and Corel Corporation.
23 INTRADISTRICT ASSIGNMENT
24 19. Admitted.
25 FACTUAL BACKGROUND
26 A. Microsoft and Corel
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DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 6 of 43
1 20. Corel Corporation and Corel, Inc. are without sufficient knowledge or
2 information to admit the allegations in Paragraph 20 of the Complaint and
3 therefore denies the same.
4 21. Admitted.
5 B. Microsoft’s Contentions with respect to the Asserted Patents
6 22. Corel Corporation and Corel, Inc. are without sufficient knowledge or
7 information to admit the allegations in Paragraph 22 of the Complaint and
8 therefore denies the same.
9 23. Corel Corporation and Corel, Inc. are without sufficient knowledge or
10 information to admit the allegations in Paragraph 23 of the Complaint and
11 therefore denies the same.
12 24. Corel Corporation and Corel, Inc. are without sufficient knowledge or
13 information to admit the allegations in Paragraph 24 of the Complaint and
14 therefore denies the same.
15 25. Corel Corporation and Corel, Inc. are without sufficient knowledge or
16 information to admit the allegations in Paragraph 25 of the Complaint and
17 therefore denies the same.
18 26. Corel Corporation and Corel, Inc. are without sufficient knowledge or
19 information to admit the allegations in Paragraph 26 of the Complaint and
20 therefore denies the same.
21 27. Corel Corporation and Corel, Inc. deny that there are any protectable
22 ornamental elements in Microsoft Ribbon and further deny that any alleged
23 elements are “distinctive.” As to any other allegations in Paragraph 27, Corel
24 Corporation and Corel, Inc. are without sufficient knowledge or information to
25 admit the allegations in Paragraph 27 of the Complaint and therefore denies the
26 same.
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DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 7 of 43
1 28. Corel Corporation and Corel, Inc. are without sufficient knowledge or
2 information to admit the allegations in Paragraph 28 of the Complaint and
3 therefore denies the same.
4 29. The allegations of Paragraph 29 are deniedCorel Corporation and Corel
5 Inc. will not attempt to demonstrate that the aAsserted pPatents are not subject to
6 the presumption of validity, nor will they try to demonstrate that any of those
7 patents are not enforceable.
8 C. Corel’s Lack of Knowledge of the Microsoft Asserted Patents
9 1. No Knowledge of the Microsoft Ribbon patents
10 30. Corel Corporation and Corel, Inc. are without sufficient knowledge or
11 information to admit the allegations in Paragraph 30 of the Complaint and
12 therefore denies the same.
13 31. Corel Corporation and Corel, Inc. deny that they were put on notice of any
14 alleged infringement prior to the institution of the present litigation. With respect
15 to the remaining allegations, the managers mentioned in Paragraph 31 are no
16 longer employed by the Defendants. Accordingly Corel Corporation and Corel,
17 Inc. are without sufficient knowledge or information to admit the allegations in
18 Paragraph 31 of the Complaint and therefore denies the same.
19 32. Corel Corporation and Corel, Inc. deny that they were put on notice of any
20 alleged infringement prior to the institution of the present litigation. With respect
21 to the remaining allegations, the managers mentioned in Paragraph 32 are no
22 longer employed by the Defendants. Accordingly Corel Corporation and Corel,
23 Inc. are without sufficient knowledge or information to admit the allegations in
24 Paragraph 32 of the Complaint and therefore denies the same.
25 33. Corel Corporation and Corel, Inc. deny that they were put on notice of any
26 alleged infringement prior to the institution of the present litigation. With respect
27 to the remaining allegations, the managers mentioned in Paragraph 33 are no
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DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 8 of 43
1 Corel, Inc. deny that there was any duty to review any potential infringement
2 inasmuch as Microsoft, prior to the institution of the present litigation, never took
3 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
4 infringement nor did Microsoft, prior to the institution of the present litigation,
5 provide reference to any specific enumerated patents or provide Corel, Inc. or
6 Corel Corporation with a claim analysis. Additionally, on information and belief,
7 Microsoft does not mark its own products with patent numbers.
8 40. The allegations of Paragraph 40 are denied. Moreover, Corel Corporation
9 and Corel, Inc. deny that there was any duty to review any potential infringement
10 inasmuch as Microsoft, prior to the institution of the present litigation, never took
11 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
12 infringement nor did Microsoft, prior to the institution of the present litigation,
13 provide reference to any specific enumerated patents or provide Corel, Inc. or
14 Corel Corporation with a claim analysis. Additionally, on information and belief,
15 Microsoft does not mark its own products with patent numbers.
16 41. The allegations of Paragraph 41 are denied. Moreover, Corel Corporation
17 and Corel, Inc. deny that there was any duty to review any potential infringement
18 inasmuch as Microsoft, prior to the institution of the present litigation, never took
19 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
20 infringement nor did Microsoft, prior to the institution of the present litigation,
21 provide reference to any specific enumerated patents or provide Corel, Inc. or
22 Corel Corporation with a claim analysis. Additionally, on information and belief,
23 Microsoft does not mark its own products with patent numbers.
24 3. No Knowledge of the ’828 patent
25 42. Admitted that Microsoft has accurately set forth the information printed on
26 the face of the patent but otherwise denied.
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DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 10 of 43
1 51. Admitted that Microsoft accurately reports the issue date reflected on the
2 face of the patent, however all other allegations of Paragraph 51 are denied.
3 52. Corel Corporation and Corel, Inc. deny that there was any duty to review
4 any potential infringement inasmuch as Microsoft, prior to the institution of the
5 present litigation, never took the necessary steps to put Corel, Inc. or Corel
6 Corporation on notice of alleged infringement nor did Microsoft, prior to the
7 institution of the present litigation, provide reference to any specific enumerated
8 patents or provide Corel, Inc. or Corel Corporation with a claim analysis.
9 Additionally, on information and belief, Microsoft does not mark its own
10 products with patent numbers. Admitted that the defendants became aware of
11 Microsoft’s assertion of the D’140 patent when they received service of the
12 summons and complaint but otherwise denied.
13 10. No Knowledge of the D’532 patent
14 53. Admitted that Microsoft accurately reports the issue date reflected on the
15 face of the patent, however all other allegations of Paragraph 53 are denied.
16 54. Corel Corporation and Corel, Inc. deny that there was any duty to review
17 any potential infringement inasmuch as Microsoft, prior to the institution of the
18 present litigation, never took the necessary steps to put Corel, Inc. or Corel
19 Corporation on notice of alleged infringement nor did Microsoft, prior to the
20 institution of the present litigation, provide reference to any specific enumerated
21 patents or provide Corel, Inc. or Corel Corporation with a claim analysis.
22 Additionally, on information and belief, Microsoft does not mark its own
23 products with patent numbers. Admitted that the defendants became aware of
24 Microsoft’s assertion of the D’532 patent when they received service of the
25 summons and complaint but otherwise denied.
26 11. No Knowledge of the D’865 patent
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DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 13 of 43
1 55. Admitted that Microsoft accurately reports the issue date reflected on the
2 face of the patent, however all other allegations of Paragraph 55 are denied.
3 56. Corel Corporation and Corel, Inc. deny that there was any duty to review
4 any potential infringement inasmuch as Microsoft, prior to the institution of the
5 present litigation, never took the necessary steps to put Corel, Inc. or Corel
6 Corporation on notice of alleged infringement nor did Microsoft, prior to the
7 institution of the present litigation, provide reference to any specific enumerated
8 patents or provide Corel, Inc. or Corel Corporation with a claim analysis.
9 Additionally, on information and belief, Microsoft does not mark its own
10 products with patent numbers. Admitted that the defendants became aware of
11 Microsoft’s assertion of the D’865 patent when they received service of the
12 summons and complaint but otherwise denied.
13 D. Defendants DenyAllegations that Corel Infringed and Continues to
14 Infringe Each of the Microsoft Asserted Patents
15 57. The Defendants license many of its software products from third parties.
16 The Defendants are without present knowledge as to whether such third parties
17 have either an express or implied license to Microsoft’s patent portfolio. On
18 information and belief many of Microsoft’s patents have been impliedly and/or
19 expressly licensed to the industry either through Microsoft’s marketing practices
20 and announcements or through concessions that Microsoft has made to
21 governmental entities in order to settle anticompetiton and antitrust allegations.
22 58. The Defendants admit that discovery has not yet begun. As to the
23 remaining allegations in Paragraph 58, those are not factual in nature and, hence,
24 require no response of admission or denial. To the extent a response is deemed
25 required, the remaining allegations of Paragraph 58 are denied. To the extent that
26 the Defendants are alleged to have knowledge of what Microsoft may do in the
27 future, those allegations are similarly denied.
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DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 14 of 43
1 United States Patent No. 7,047,501, which is entitled “Method for Displaying
2 Controls in a System Using a Graphical User Interface.”
3
1 78.82. To the extent that this paragraph requires an answer, the Defendants
2 incorporate the foregoing paragraphs in their entirety as though fully set forth
3 herein.
4 79.83. The Defendants admit that the document attached to Microsoft’s Original
5 Complaint filed on December 18, 2015 as Exhibit D appears to be a copy of
6 United States Patent No. 5,715,415, which is entitled “Computer Application
7 With Help Pane Integrated Into Workspace.”
8 84. Corel Corp. and Corel, Inc. respond as follows: 1
9 • Admitted that Corel Draw (versions X5, X6, X7, and X8) and Corel
10 Presentations (versions X5, X6, X7, and X8), a WordPerfect Suit
11 application, directly infringe claims 3, 6-7, 12, 15-16, 20-21, and 24-27 of
12 the ’415 Patent.
13 • Admitted that Corel PaintShop Pro (versions X3, X4, X5, X6, X7, X8, and
14 X9), as well as Corel Corel QuattroPro (versions X5, X6, X7, and X8) and
15 Corel WordPerfect (versions X5, X6, X7, and X8), both of which are
16 products in the WordPerfect Suite, directly infringe claims 6-7, 15-16, 20-
17 21, and 24-27 of the ’415 Patent.
18 The remaining allegations in Paragraph 84 are denied.
19 The allegations of Paragraph 84 are denied.
20 80.85. The allegations of Paragraph 85 are denied.
21 81.86. The allegations of Paragraph 86 are denied.
22 82.87. The statements in Paragraph 87 are not factual in nature and, hence, require
23 no response of admission or denial. To the extent a response is deemed required,
24 the allegations of Paragraph 87 are denied.
25 83.88. The allegations of Paragraph 88 are denied.
26 84.89. The allegations of Paragraph 89 are denied.
27
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“Microsoft has agreed to voluntarily dismiss claims 1, 2, 5, 8-11, 14, and 17-19 of the ’415 patent.” Dkt.
28 No. 86 at 1. Accordingly, Corel will not stipulate to infringement of these claims.
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DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 18 of 43
1 95.100. To the extent that this paragraph requires an answer, the Defendants
2 incorporate the foregoing paragraphs in their entirety as though fully set forth
3 herein.
4 96.101. The Defendants admit that the document attached to Microsoft’s
5 Original Complaint filed on December 18, 2015 as Exhibit F appears to be a copy
6 of United States Patent No. D550,237, which is entitled “User Interface for a
7 Portion of a Display Screen.” Defendants deny that what is shown in the D‘237
8 patent attached to the Complaint is a true and accurate representation of what is
9 claimed in the patent inasmuch as the published patent does not reflect what
10 Microsoft claimed in its patent application filed with the United States Patent
11 Office.
12 102. Corel Corp. and Corel, Inc. respond as follows:
13 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
14 Write version 5, each part of Corel Home Office version 5 and a product
15 that Corel licensed from a third party Ability, directly infringe the D’237
16 Patent.
17 The remaining allegations in Paragraph 102 are denied.
18 97. The allegations of Paragraph 102 are denied.
19 98.103. The allegations of Paragraph 103 are denied.
20 99.104. The allegations of Paragraph 104 are denied.
21 100.105. The allegations of Paragraph 105 are denied.
22 106. The allegations of Paragraph 106 are denied.
23 SEVENTH CLAIM FOR RELIEF
24 Alleged Infringement of the D’140 Patent
25 101.107. To the extent that this paragraph requires an answer, the Defendants
26 incorporate the foregoing paragraphs in their entirety as though fully set forth
27 herein.
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DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 20 of 43
1 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
2 Write version 5, each part of Corel Home Office version 5 and a product
3 that Corel licensed from a third party Ability, directly infringe the D’532
4 Patent.
5 The remaining allegations in Paragraph 116 are denied.
6 109. The allegations of Paragraph 116 are denied.
7 110.117. The allegations of Paragraph 117 are denied.
8 111.118. The allegations of Paragraph 118 are denied.
9 112.119. The allegations of Paragraph 119 are denied.
10 113.120. The allegations of Paragraph 120 are denied.
11 NINTH CLAIM FOR RELIEF
12 Alleged Infringement of the D’865 Patent
13 114.121. To the extent that this paragraph requires an answer, the Defendants
14 incorporate the foregoing paragraphs in their entirety as though fully set forth
15 herein.
16 115.122. The Defendants admit that the document attached to Microsoft’s
17 Original Complaint filed on December 18, 2015 as Exhibit I appears to be a copy
18 of United States Patent No. D570,865, which is entitled “User Interface for a
19 Portion of a Display Screen.”
20 123. Corel Corp. and Corel, Inc. respond as follows:
21 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
22 Write version 5, each part of Corel Home Office version 5 and a product
23 that Corel licensed from a third party Ability, directly infringe the D’865
24 Patent.
25 The remaining allegations in Paragraph 123 are denied.
26 116. The allegations of Paragraph 123 are denied.
27 117.124. The allegations of Paragraph 124 are denied.
28
20
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 22 of 43
28
21
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 23 of 43
1 2. The Defendants do not and have not infringed any valid and enforceable
2 claim of U.S. Patent Nos. 8,255,828, 7,703,036, 7,047,501, 5,715,415, 5,510,980,
3 D550,237, D554,140, D564,532, and D570,865 (collectively, the “Patents-in-
4 Suit”) literally, under the doctrine of equivalents, directly, indirectly,
5 contributorily, by way of inducement, and/or via any other mechanism of
6 liability.
7 THIRD AFFIRMATIVE DEFENSE
8 3. The Patents in Suit are invalid under 35 U.S.C. §§ 101, 102, 103 and/or
9 112.
10 FOURTH AFFIRMATIVE DEFENSE
11 4. Plaintiff is estopped from construing or interpreting the claims of the
12 Patents in Suit to cover any acts or products by Defendants by reason of
13 proceedings in the U.S. Patent and Trademark Office (“PTO”) during prosecution
14 and/or review of the applications upon which the patent issued, and the
15 admissions and representations made therein to the PTO on behalf of the
16 applicants.
17 FIFTH AFFIRMATIVE DEFENSE
18 5.2. Plaintiff’s claims are barred, in whole or in part, by the doctrine of waiver.
19 SIXTH AFFIRMATIVE DEFENSE
20 6.3. Plaintiff’s claims are barred, in whole or in part, by the doctrine of
21 acquiescence.
22 SEVENTH AFFIRMATIVE DEFENSE
23 7.4. Plaintiff’s ability to recover for any alleged infringement is limited by the
24 failure of Plaintiff and/or its licensees to meet the requirements of 35 U.S.C. §
25 287.
26 EIGHTH AFFIRMATIVE DEFENSE
27
28
22
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 24 of 43
12 10. Plaintiff’s design patent claims are barred, in whole or in part, by the doctrine
13 of design patent functionality and/or indefinite, 35 U.S.C. §112.
14 ELEVENTH AFFIRMATIVE DEFENSE
15
16
11. The D‘140 Patent is unenforceable and was procured by Microsoft through
17
inequitable conduct and fraud of its attorneys and agents inasmuch as Plaintiff’s
18
employees and agents that were substantially involved with the prosecution of the
19
D‘140 patent failed to disclose information material to the examination of the D‘140
20
patent application. Microsoft’s agents and attorneys failed to disclose material “but-
21
for” prior art to the United States Patent and Trademark office during prosecution of
22
the D‘140 patent. Specifically Microsoft’s agents and attorneys failed to disclose the
23
existence of Microsoft’s commercial product, Microsoft’s MapPoint North America
24
2002 during prosecution of the D’140 patent.
25
26
27
28
23
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 25 of 43
6
12. Additionally, Microsoft’s agents and attorneys failed to disclose the existence
7
of its utility patent applications serial number 10/955,967 and 10/955,941 and its
8
provisional patent application No. 60/601,815 filed August 16, 2004 which contains
9
the following disclosure in Figures 5, 6, 7, 8 and others (see US Patent 7,703,036):
10
11
12
13. Microsoft’s failure to disclose this
13 invalidating prior art reference to the United State Patent Office subjects Microsoft’s
14 inventors and attorneys to a claim of inequitable conduct and fraud. A comparison of
15 the claimed slider bar to Microsoft’s MapPoint North America 2002 renders the
16 D‘140 patent (filing date of 5/22/2006) invalid as obvious under 35 U.S.C. §103. A
17 comparison of the claimed slider bar to Microsoft’s own patent applications
18 referenced in paragraph 11 above renders the D‘140 invalid as obvious under 35
19 U.S.C. §103.
20 14. As can be seen from the above, there is a marked similarity between
21 Microsoft’s prior art product and the ornamental design disclosed and claimed in the
22 D‘140 patent. Any differences simply are not patentably distinct.
23 15. It was incumbent on Microsoft’s inventors and attorneys to disclose the prior art
24 in their possession – which they did not. Microsoft’s prior art product was introduced
25 more than 3 years before the priority date of the D‘140 patent and clearly calls into
26 question the extent to which Microsoft’s prior art product was known by the inventors
27 of the D‘140 patent and Microsoft’s attorneys. Microsoft’s utility patent applications
28
24
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 26 of 43
1 referenced in paragraph 11 above were filed on September 30, 2004 well before the
2 May 22, 2006 filing date of the D‘140 patent. Moreover, on information and belief
3 the Microsoft products disclosed and described in the utility patent applications
4 referenced in paragraph 11 above were on sale more than a year before the May 22,
5 2006 filing date of the D‘140 patent application.
6 16. The only reasonable inference to be drawn from the failure to disclose the
7 existence of Microsoft’s MapPoint North America 2002 and the Microsoft products
8 disclosed and described in the utility patent applications referenced in paragraph 11
9 above, was the intent to mislead the United States Patent and Trademark Office to
10 secure allowance of the D’140 patent.
11 17. The Defendants will identify the attorneys and agents that perpetuated the fraud
12 on the USPTO through discovery and will thereafter amend their pleadings to
13 specifically name the persons and agents.
14 TWELFTH AFFIRMATIVE DEFENSE
15
16 18. The D’865 Patent is unenforceable and was procured by Microsoft through
17 inequitable conduct and fraud of its attorneys and agents inasmuch as Plaintiff’s
18 employees and agents that were substantially involved with the prosecution of the
19 D’865 patent failed to disclose information material to the examination of the D’865
20 patent application. Microsoft’s agents and attorneys failed to disclose material “but-
21 for” prior art to the United States Patent and Trademark office during prosecution of
22 the D’865 patent. Specifically Microsoft’s agents and attorneys failed to disclose
23 material “but-for” prior art to the United States Patent and Trademark office during
24 prosecution of the D’865 patent. Specifically Microsoft’s agents and attorneys failed
25 to disclose the existence of Microsoft’s commercial product, Microsoft’s Word 97
26 during prosecution of the D’865 patent.
27
28
25
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 27 of 43
1 19. Microsoft’s failure to disclose this invalidating prior art reference to the United
2 States Patent Office subjects Microsoft’s inventors and attorneys to a claim of
3 inequitable conduct and fraud. A comparison of the claimed tabs in Microsoft’s Word
4 97 renders the D‘865 patent (filing date of 5/23/2006) invalid under 35 U.S.C. §102
5 and 103.
6
10
11
12
13
14 20. As can be seen from the above, there is a substantial similarity between
15 Microsoft’s prior art product and the design disclosed and claimed in the D‘865
16 patent. Any differences simply are not patentably distinct.
17 21. It was incumbent on Microsoft’s inventors and attorneys to disclose the prior art
18 in Microsoft’s possession – which they did not. Microsoft’s Word 97 prior art product
19 was introduced in 1996, almost 10 years before the priority date of the D‘865 patent
20 and clearly calls into question the extent to which Microsoft’s prior art product was
21 known by the inventors of the D‘865 patent and Microsoft’s attorneys.
22 22. The only reasonable inference to be drawn from the failure to disclose the
23 existence of the Microsoft Word 97 is the intent to mislead the United States Patent
24 and Trademark Office to secure allowance of the D’865 patent.
25 23. The Defendants will identify the attorneys and agents that perpetuated the fraud
26 on the USPTO through discovery and will thereafter amend their pleadings to
27 specifically name the persons and agents.
28
26
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 28 of 43
28
27
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 29 of 43
8
JURISDICTION AND VENUE
9
11 laws, 35 U.S.C. et seq., and the Federal Declaratory Judgment Act, 28 U.S.C. §§
13 5. This Court has jurisdiction over the subject matter of these claims pursuant
14 to 35 U.S.C. § 271 et. seq. and 28 U.S.C. §§ 1331, 1338, 2201, and 2202.
16 1400(b).
17 7. This Court has personal jurisdiction over Microsoft, which has requested
23 the Patents-in-Suit.
25 Patent
26 10. Corel, Inc. repeats and incorporates by reference Paragraphs 1-8 of its
27
Counterclaim as if fully set forth here.
28
28
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 30 of 43
1 11. Each of the claims of the ‘828 patent is invalid for failing to comply with
2
the conditions and requirements for patentability as set forth in 35 U.S.C. §§ 101, 102,
3
4
103 and/or 112 and the rules, regulations and laws pertaining thereto.
8
COUNT II – Declaratory Judgment of Patent Invalidity of the ‘036 Patent
9 13. Corel, Inc. repeats and incorporates by reference Paragraphs 1-11 of its
13 the conditions and requirements for patentability as set forth in 35 U.S.C. §§ 101,102,
14 103 and/or 112 and the rules, regulations and laws pertaining thereto.
15
15. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28
16
22 17. Each of the claims of the ‘501 patent is invalid for failing to comply with
23 the conditions and requirements for patentability as set forth in 35 U.S.C. §§ 101, 102,
24
103 and/or 112 and the rules, regulations and laws pertaining thereto.
25
1 19.8.
2 COUNT IV – Declaratory Judgment of Patent Invalidity of the ‘415 Patent
3 20. Corel, Inc. repeats and incorporates by reference Paragraphs 1-17 of its
4
Counterclaim as if fully set forth here.
5
6
21. Each of the claims of the ‘415 patent is invalid for failing to comply with
7 the conditions and requirements for patentability as set forth in 35 U.S.C. §§ 101,
8
102, 103 and/or 112 and the rules, regulations and laws pertaining thereto.
9
16 24. Each of the claims of the ‘980 patent is invalid for failing to comply with
17
the conditions and requirements for patentability as set forth in 35 U.S.C. §§ 101,
18
19 102, 103 and/or 112 and the rules, regulations and laws pertaining thereto.
27
28
30
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 32 of 43
1 27. Each of the claims of the D‘237 patent is invalid for failing to comply with
2
the conditions and requirements for patentability as set forth in 35 U.S.C. §§ 102,
3
4
103 and/or 112 and the rules, regulations and laws pertaining thereto.
12 29. Corel, Inc. repeats and incorporates by reference Paragraphs 1-26 of its
16 the conditions and requirements for patentability as set forth in 35 U.S.C. §§ 102,
17 103 and/or 112 and the rules, regulations and laws pertaining thereto.
18
31. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28
19
28 103 and/or 112 and the rules, regulations and laws pertaining thereto.
31
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 33 of 43
4
COUNT IX – Declaratory Judgment of Patent Invalidity of the D‘865
Patent
5 35. Corel, Inc. repeats and incorporates by reference Paragraphs 1-32 of its
6
Counterclaim as if fully set forth here.
7
8 36. Each of the claims of the D‘865 patent is invalid for failing to comply with
9
the conditions and requirements for patentability as set forth in 35 U.S.C. §§ 102,
10
103 and/or 112 and the rules, regulations and laws pertaining thereto.
11
1 41. Corel, Inc. repeats and incorporates by reference Paragraphs 1-38 of its
2
Counterclaim as if fully set forth here.
3
4
42. Corel, Inc. has not and does not infringe any of the claims of the ‘036
9 U.S.C. §§ 2201-2202 that it has not infringed (and does not infringe) any claims of
10
the ‘036 patent.
11
16 45. Corel, Inc. has not and does not infringe any of the claims of the ‘501
17
patent under any theory (including directly (whether individually or jointly) or
18
indirectly (whether contributorily or by inducement).
19
1 48. Corel, Inc. has not and does not infringe any of the claims of the ‘415
2
patent under any theory (including directly (whether individually or jointly) or
3
4
indirectly (whether contributorily or by inducement).
26
27
28
34
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 36 of 43
1 55. Corel, Inc. has not and does not infringe any of the claims of the D‘237
2
patent under any theory (including directly (whether individually or jointly) or
3
4
indirectly (whether contributorily or by inducement).
23 60. Corel, Inc. repeats and incorporates by reference Paragraphs 1-56 of its
24 Counterclaim as if fully set forth here.
25
26
27
28
35
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 37 of 43
1 61. Corel, Inc. has not and does not infringe any of the claims of the D‘532
2
patent under any theory (including directly (whether individually or jointly) or
3
4
indirectly (whether contributorily or by inducement).
25 67. Microsoft had knowledge that the asserted claims of the D’140 and D’865
26
patents are invalid based at least upon Plaintiffs own prior art. Microsoft at least had
27
28
constructive knowledge of the D’140 and D’865 patents invalidity since the date
36
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 38 of 43
1 Plaintiff’s Original Complaint (Dkt. No. 1) was filed by virtue of the fact the fact
2
that Microsoft MapPoint North America 2002, the Microsoft products disclosed and
3
4
described in the utility patent applications referenced in paragraph 11 (of the
5 Affirmative Defense Section above) on sale more than a year before the May 22,
6
2006 filing date of the D‘140 patent application, and Microsoft Word 97 are
7
8 Microsoft’s own prior art. Microsoft had actual knowledge from at least when Corel,
12 is found in Microsoft’s prior art. Notwithstanding that knowledge, this suit has been
13 maintained against Corel, Inc and its parent, Corel Corporation. Therefore,
14
Counterclaim Defendants either knew or should have known that the D’140 and
15
28 software market, affecting the ability of the Corel, Inc. to compete in this market as
37
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 39 of 43
1 a result of the infringement allegations. Microsoft admits in its Complaint that while
2
it generally licenses the asserted patents for free it withholds the right to selectively
3
4
assert such patents. Specifically, Microsoft has attempted to enforce its patent in
5 light of the letter to Microsoft’s counsel expressly noting the applicable prior art.
6
69. If Microsoft succeeds in its enforcement attempts of the invalid D’140 and
7
8 D’865 patents against Corel, Inc., it will further enhance its monopoly power. Upon
9 information and belief, Microsoft already maintains at least a fifty (50) percent share
10
of the relevant market, and enforcement of the invalid D’140 and D’865 patents
11
13 70. Corel, Inc.’s business and its ability to compete with Microsoft and others
14
has been damaged by Microsoft’s bad faith enforcement of the invalid D’140 and
15
16 D’865 patents.
17
COUNT XX –Anti-Trust Claim under § 2 of the Sherman Act and Patent
18 Misuse
19 71.12. Corel, Inc. repeats and incorporates by
20 reference Paragraphs 1-68 11 of its Counterclaim as if fully set forth here.
21
72.13. This suit is barred because Corel was
22
authorized to make, use and sell products that allegedly infringed the ‘980
23
Patent.
24
10 Affirmative Defenses as if fully set forth here, which clearly demonstrates Microsoft
11 committed inequitable conduct during the prosecution of the D’140 patent.
12
COUNT XXII Patent Unenforceability/Inequitable Conduct
13
77. Corel, Inc. repeats and incorporates by reference Paragraphs 11-25 of its
14
15 Affirmative Defenses as if fully set forth here, which clearly demonstrates Microsoft
16
committed inequitable conduct during the prosecution of the D’865 patent.
17
COUNT XXIII Patent Exhaustion
18
78.17. Corel, Inc. repeats and incorporates by
19
reference its Fourteenth and Fifteenth Affirmative Defenses as if fully set forth
20
here. Corel seeks a declaratory judgement that Corel was authorized to make,
21
use and sell products under the ‘980 Patent, that such authorization remained in
22
effect for the life of the ‘980 Patent and that as a consequence of such
23
authorization Microsoft’s patent rights under the ‘980 are exhausted.
24
COUNT XXIV – Exceptional Case under § 285
25
79.18. Corel, Inc. repeats and incorporates by reference Paragraphs 1–75 17 of its
26
Counterclaim as if fully set forth here.
27
28
39
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 41 of 43
1 80. Microsoft’s assertion of the D’140 and D’865 patents against Corel, Inc.
2 and its parent, Corel, Corporation gives rise to deeming this case an exceptional case
3 pursuant to 35 U.S.C. § 285 because Microsoft had knowledge that D’140 and D’865
4 patents were invalid when it filed suit. Despite this knowledge Microsoft filed suit.
5 Microsoft brought the suit in bad faith, and the suit was objectively unreasonable in
6 light of the known prior art. This case stands out from others with respect to the
7 Microsoft’s litigation position and Microsoft has been beyond unreasonable in
8 maintaining this litigation.
9 81.19. Microsoft’s assertion of the ‘980 patent against Corel, Inc. and its parent,
10 Corel, Corporation after such rights were exhausted gives rise to deeming this case
11 an exceptional case pursuant to 35 U.S.C. § 285. Microsoft brought the suit asserting
12 the ‘980 patent in bad faith, and the suit was objectively unreasonable. This case
13 stands out from others with respect to Microsoft’s litigation position and Microsoft
14 has been beyond unreasonable in maintaining this litigation
15 DEMAND FOR JURY TRIAL
16
1. Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure and the
17
Local Rules of this Court, Corel, Inc. demands a trial by jury on all issues triable to
18
a jury.
19
PRAYER FOR RELIEF
20
21
WHEREFORE, Corel, Inc. respectfully requests a judgment against Microsoft as
22 follows:
23
A. Dismissal of Microsoft’s Complaint, with prejudice;
24
B. A declaration that the Defendants, Corel, Inc. and Corel Corporation have not
25
infringed and are not infringing, under any theory, any claim of the Patents-
26
in-Suit;
27
C. A declaration that the asserted claims of the Patents-in-Suit are invalid;
28
40
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 42 of 43
1 D. A judgment that the D’140 and D’865 patents are unenforceable because
2 Microsoft failed to cite material “but-for” prior art to the patent office and that
3 such failure was done with the specific intent to deceive the United States
4 Patent Office to secure allowance of the D’140 and D’865 patents;
5 E. A judgment that Microsoft has attempted to monopolize the software market,
6 affecting the ability of Corel, Inc. to compete in violation of the Sherman Act;
7 F. A judgment that Microsoft’s suit constitutes a Handgards Antitrust violation
8 in light of the invalid D’140 and D’865 patents;
9 G. A judgment that Microsoft has misused its patents and rendered its patent
10 unenforceable as against the Defendants;
11 H.B. A judgment that Microsoft’s rights under the ‘980 Patent were exhausted
12 prior to the institution of this suit;
13 I.C. A judgment that Microsoft has misused its patents because it attempted to
14 assert expired patents whose rights were exhausted.
15 J.D. A declaration that Microsoft take nothing;
16 K.E. Permanently enjoin Microsoft any parent, agent, employee, successor,
17 assign, or anyone acting for or on behalf of Microsoft, from attempting to
18 enforce D’140 and D’865 patents and any related patents against the Corel,
19 Inc. or any successor, assign, parent company, business unit, subsidiary, or
20 affiliate of the Corel, Inc. or any of their respective officers, former officers,
21 directors, agents, employees, attorneys, shareholders, and all those in privity
22 with them;An award to Corel, Inc. of all damages sustained as a result of
23 Microsoft’s vexatious and frivolous activities, as well as treble attorneys’ fees
24 and costs (including expert fees);
25 L.F. An award of treble damages as a consequence of Microsoft’s
26 anticompetitve activities;
27
28
41
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-2 Filed 11/09/16 Page 43 of 43
1 M.G. An award to the Corel, Inc. of its costs incurred in bringing these
2 counterclaims, and prejudgment and postjudgment interest as allowed by law;
3 N.H. An award to Corel, Inc. of its reasonable attorneys’ fees under 35 U.S.C. §
4 285; and
5 O.I. An award to the Corel, Inc. of such other and further relief as this Court
6 deems just and proper.
7
12
By: /s/ Keith A. Rutherford
13 Keith A. Rutherford
17
18
19
20
21
22
23
24
25
26
27
28
42
DEFENDANTS COREL CORPORATION AND COREL, INC'S FIRST SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS - 5:15-cv-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 1 of 27
Exhibit B
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 2 of 27
26
27
28
1
DEFENDANTS COREL CORPORATION AND COREL, INC.'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 3 of 27
28
1
DEFENDANTS COREL CORPORATION AND COREL, INC.'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 4 of 27
1 2. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 2 and
2 without limiting the generality of the foregoing denial, further deny that Microsoft’s
3 products have a distinctive look and feel or that such look and feel is protectable.
4 3. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 3.
5 4. Corel, Inc. and Corel Corporation admit that WordPerfect X7 offers a
6 Microsoft Word Mode option but deny that the Word mode is protectable.
7 5. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 5 and
8 without limiting the generality of the foregoing denial, further deny that such look and
9 feel is protectable.
10 6. Corel, Inc. and Corel Corporation admit that Quattro Pro X7 permits a user
11 to simulate an Excel spreadsheet but deny that such features are protectable.
12 7. Corel, Inc. and Corel Corporation admit that Quattro Pro X7 offers a
13 Microsoft Excel Mode option but deny that such simulation and features are protectable.
14 8. Corel, Inc. and Corel Corporation admit that Quattro Pro X7 offers a
15 Microsoft Excel Mode option but deny that such simulation and features are protectable.
16 9. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 9.
17 10. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 10.
18 11. Corel, Inc. and Corel Corporation deny the allegations in Paragraph 11.
19 PARTIES
20 12. Corel, Inc. and Corel Corporation are without sufficient knowledge or
21 information to admit the allegations in Paragraph 12 of the Complaint and
22 therefore deny the same.
23 13. Admitted.
24 14. Admitted.
25 JURISDICTION AND VENUE
26 15. Corel, Inc. and Corel Corporation admit that Microsoft purports to allege
27 an action for patent infringement. Corel, Inc. and Corel Corporation admit that
28 2
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 5 of 27
1 this Court has subject matter jurisdiction over Microsoft’s purported claims for
2 patent infringement pursuant to 28 U.S.C. §§ 1331 and 1338(a). All other
3 allegations in paragraph 15 are expressly denied.
4 16. Corel Corporation denies the allegations in Paragraph 16 of the Complaint.
5 17. Corel Inc. admits that the court has personal jurisdiction over it, and admits
6 the allegations in subparagraph (ii) but denies that it derives substantial revenue
7 from products and/or services provided to individuals in this District and in this
8 State and admits the allegations in subparagraphs (iii) and (iv). Corel denies the
9 remaining allegations in Paragraph 17 of the Complaint.
10 18. Corel, Inc. admits that venue is proper in this District pursuant to U.S.C.
11 §§ 1391 (b)-(c) and 1400(b). Corel, Corporation denies that venue is proper in
12 this District pursuant to U.S.C. §§ 1391 (b)-(c) and 1400(b). Unless expressly
13 admitted, all other remaining allegations are denied by both Corel, Inc. and Corel
14 Corporation.
15 INTRADISTRICT ASSIGNMENT
16 19. Admitted.
17 FACTUAL BACKGROUND
18 A. Microsoft and Corel
19 20. Corel Corporation and Corel, Inc. are without sufficient knowledge or
20 information to admit the allegations in Paragraph 20 of the Complaint and
21 therefore denies the same.
22 21. Admitted.
23 B. Microsoft’s Contentions with respect to the Asserted Patents
24 22. Corel Corporation and Corel, Inc. are without sufficient knowledge or
25 information to admit the allegations in Paragraph 22 of the Complaint and
26 therefore denies the same.
27
28 3
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 6 of 27
1 23. Corel Corporation and Corel, Inc. are without sufficient knowledge or
2 information to admit the allegations in Paragraph 23 of the Complaint and
3 therefore denies the same.
4 24. Corel Corporation and Corel, Inc. are without sufficient knowledge or
5 information to admit the allegations in Paragraph 24 of the Complaint and
6 therefore denies the same.
7 25. Corel Corporation and Corel, Inc. are without sufficient knowledge or
8 information to admit the allegations in Paragraph 25 of the Complaint and
9 therefore denies the same.
10 26. Corel Corporation and Corel, Inc. are without sufficient knowledge or
11 information to admit the allegations in Paragraph 26 of the Complaint and
12 therefore denies the same.
13 27. Corel Corporation and Corel, Inc. deny that there are any protectable
14 ornamental elements in Microsoft Ribbon and further deny that any alleged
15 elements are “distinctive.” As to any other allegations in Paragraph 27, Corel
16 Corporation and Corel, Inc. are without sufficient knowledge or information to
17 admit the allegations in Paragraph 27 of the Complaint and therefore denies the
18 same.
19 28. Corel Corporation and Corel, Inc. are without sufficient knowledge or
20 information to admit the allegations in Paragraph 28 of the Complaint and
21 therefore denies the same.
22 29. Corel Corporation and Corel Inc. will not attempt to demonstrate that the
23 Asserted Patents are not subject to the presumption of validity, nor will they try
24 to demonstrate that any of those patents are not enforceable.
25
26
27
28 4
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 7 of 27
1 the defendants became aware of Microsoft’s assertion of the ‘828 patent when
2 they received service of the summons and complaint but otherwise denied.
3 4. No Knowledge of the ’036 patent
4 44. Admitted that Microsoft has accurately set forth the information printed on
5 the face of the patent but otherwise denied.
6 45. The allegations of Paragraph 45 are denied. Moreover, Corel Corporation
7 and Corel, Inc. deny that there was any duty to review any potential infringement
8 inasmuch as Microsoft, prior to the institution of the present litigation, never took
9 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
10 infringement nor did Microsoft, prior to the institution of the present litigation,
11 provide reference to any specific enumerated patents or provide Corel, Inc. or
12 Corel Corporation with a claim analysis. Additionally, on information and belief,
13 Microsoft does not mark its own products with patent numbers. Admitted that
14 the defendants became aware of Microsoft’s assertion of the ‘036 patent when
15 they received service of the summons and complaint but otherwise denied.
16 5. No Knowledge of the ’501 patent
17 46. Admitted that the defendants became aware of Microsoft’s assertion of the
18 ‘501 patent when they received service of the summons and complaint but
19 otherwise denied.
20 6. No Knowledge of the ’415 patent
21 47. Admitted that the defendants became aware of Microsoft’s assertion of the
22 ‘415 patent when they received service of the summons and complaint but
23 otherwise denied.
24 7. Knowledge of the ’980 patent
25 48. Admitted that Microsoft accurately reports the issue date reflected on the
26 face of the patent, however all other allegations of Paragraph 48 are denied.
27 Moreover, Corel Corporation and Corel, Inc. deny that there was any duty to
28 8
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 11 of 27
1 Additionally, on information and belief, Microsoft does not mark its own
2 products with patent numbers. Admitted that the defendants became aware of
3 Microsoft’s assertion of the D’140 patent when they received service of the
4 summons and complaint but otherwise denied.
5 10. No Knowledge of the D’532 patent
6 53. Admitted that Microsoft accurately reports the issue date reflected on the
7 face of the patent, however all other allegations of Paragraph 53 are denied.
8 54. Corel Corporation and Corel, Inc. deny that there was any duty to review
9 any potential infringement inasmuch as Microsoft, prior to the institution of the
10 present litigation, never took the necessary steps to put Corel, Inc. or Corel
11 Corporation on notice of alleged infringement nor did Microsoft, prior to the
12 institution of the present litigation, provide reference to any specific enumerated
13 patents or provide Corel, Inc. or Corel Corporation with a claim analysis.
14 Additionally, on information and belief, Microsoft does not mark its own
15 products with patent numbers. Admitted that the defendants became aware of
16 Microsoft’s assertion of the D’532 patent when they received service of the
17 summons and complaint but otherwise denied.
18 11. No Knowledge of the D’865 patent
19 55. Admitted that Microsoft accurately reports the issue date reflected on the
20 face of the patent, however all other allegations of Paragraph 55 are denied.
21 56. Corel Corporation and Corel, Inc. deny that there was any duty to review
22 any potential infringement inasmuch as Microsoft, prior to the institution of the
23 present litigation, never took the necessary steps to put Corel, Inc. or Corel
24 Corporation on notice of alleged infringement nor did Microsoft, prior to the
25 institution of the present litigation, provide reference to any specific enumerated
26 patents or provide Corel, Inc. or Corel Corporation with a claim analysis.
27 Additionally, on information and belief, Microsoft does not mark its own
28 10
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 13 of 27
1 products with patent numbers. Admitted that the defendants became aware of
2 Microsoft’s assertion of the D’865 patent when they received service of the
3 summons and complaint but otherwise denied.
4 D. Allegations that Corel Infringed and Continues to Infringe Each of the
5 Microsoft Asserted Patents
6 57. The Defendants license many of its software products from third parties.
7 The Defendants are without present knowledge as to whether such third parties
8 have either an express or implied license to Microsoft’s patent portfolio. On
9 information and belief many of Microsoft’s patents have been impliedly and/or
10 expressly licensed to the industry either through Microsoft’s marketing practices
11 and announcements or through concessions that Microsoft has made to
12 governmental entities in order to settle anticompetiton and antitrust allegations.
13 58. The Defendants admit that discovery has not yet begun. As to the
14 remaining allegations in Paragraph 58, those are not factual in nature and, hence,
15 require no response of admission or denial. To the extent a response is deemed
16 required, the remaining allegations of Paragraph 58 are denied. To the extent that
17 the Defendants are alleged to have knowledge of what Microsoft may do in the
18 future, those allegations are similarly denied.
19 CLAIMS FOR RELIEF
20 FIRST CLAIM FOR RELIEF
21 Alleged Infringement of the ’828 Patent
22 59. To the extent that this paragraph requires an answer, the Defendants
23 incorporate the foregoing paragraphs in their entirety as though fully set forth
24 herein.
25 60. The Defendants admit that the document attached to Microsoft’s
26 Complaint filed on December 18, 2015 (the “Original Complaint”) as Exhibit A
27 appears to be a copy of United States Patent No. 8,255,828, which is entitled
28 11
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 14 of 27
28 12
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 15 of 27
1 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
2 Write version 5, each part of Corel Home Office version 5 and a product
3 that Corel licensed from a third party Ability, directly infringe claims 1-7,
4 10-12, 23, 25-27 and 29 of the ’036 Patent.
5 The remaining allegations in Paragraph 69 are denied.
6 70. The allegations of Paragraph 70 are denied.
7 71. The allegations of Paragraph 71 are denied.
8 72. The allegations of Paragraph 72 are denied.
9 73. The allegations of Paragraph 73 are denied.
10 74. The allegations of Paragraph 74 are denied.
11 THIRD CLAIM FOR RELIEF
12 Alleged Infringement of the ’501 Patent
13 75. To the extent that this paragraph requires an answer, the Defendants
14 incorporate the foregoing paragraphs in their entirety as though fully set forth
15 herein.
16 76. The Defendants admit that the document attached to Microsoft’s Original
17 Complaint filed on December 18, 2015 as Exhibit C appears to be a copy of
18 United States Patent No. 7,047,501, which is entitled “Method for Displaying
19 Controls in a System Using a Graphical User Interface.”
20 77. Corel Corp. and Corel, Inc. respond as follows:
21 • Admitted that Corel Draw (versions X5, X6, X7, and X8) directly infringe
22 claims 9-13 and 15 of the ’501 Patent.
23 • Admitted that Corel Write version 5, Corel Show version 5 and Corel
24 Calculate version 5, each part of Home Office Version 5 and a product that
25 Corel licensed from a third party Ability, directly infringe claims 9-11 of
26 the ’501 Patent.
27
28 13
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 16 of 27
1 • Admitted that Corel PaintShop Pro (versions X3, X4, X5, X6, X7, X8, and
2 X9), as well as Corel Presentations (versions X6, X6, X7, and X8), Corel
3 QuattroPro (versions X5, X6, X7, and X8), and Corel WordPerfect
4 (versions X5, X6, X7, and X8), which are applications in the WordPerfect
5 Suite, directly infringe claims 9-11 of the ’501 Patent.
6 The remaining allegations in Paragraph 69 are denied.
7 78. The allegations of Paragraph 78 are denied.
8 79. The allegations of Paragraph 79 are denied.
9 80. The allegations of Paragraph 80 are denied.
10 81. The allegations of Paragraph 81 are denied.
11 FOURTH CLAIM FOR RELIEF
12 Alleged Infringement of the ’415 Patent
13 82. To the extent that this paragraph requires an answer, the Defendants
14 incorporate the foregoing paragraphs in their entirety as though fully set forth
15 herein.
16 83. The Defendants admit that the document attached to Microsoft’s Original
17 Complaint filed on December 18, 2015 as Exhibit D appears to be a copy of
18 United States Patent No. 5,715,415, which is entitled “Computer Application
19 With Help Pane Integrated Into Workspace.”
20 84. Corel Corp. and Corel, Inc. respond as follows: 1
21 • Admitted that Corel Draw (versions X5, X6, X7, and X8) and Corel
22 Presentations (versions X5, X6, X7, and X8), a WordPerfect Suit
23 application, directly infringe claims 3, 6-7, 12, 15-16, 20-21, and 24-27 of
24 the ’415 Patent.
25
26
27 1
“Microsoft has agreed to voluntarily dismiss claims 1, 2, 5, 8-11, 14, and 17-19 of the ’415 patent.” Dkt.
No. 86 at 1. Accordingly, Corel will not stipulate to infringement of these claims.
28 14
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 17 of 27
1 • Admitted that Corel PaintShop Pro (versions X3, X4, X5, X6, X7, X8, and
2 X9), as well as Corel Corel QuattroPro (versions X5, X6, X7, and X8) and
3 Corel WordPerfect (versions X5, X6, X7, and X8), both of which are
4 products in the WordPerfect Suite, directly infringe claims 6-7, 15-16, 20-
5 21, and 24-27 of the ’415 Patent.
6 The remaining allegations in Paragraph 84 are denied.
7 85. The allegations of Paragraph 85 are denied.
8 86. The allegations of Paragraph 86 are denied.
9 87. The statements in Paragraph 87 are not factual in nature and, hence, require
10 no response of admission or denial. To the extent a response is deemed required,
11 the allegations of Paragraph 87 are denied.
12 88. The allegations of Paragraph 88 are denied.
13 89. The allegations of Paragraph 89 are denied.
14 90. The allegations of Paragraph 90 are denied.
15 91. The allegations of Paragraph 91 are denied.
16 FIFTH CLAIM FOR RELIEF
17 Alleged Infringement of the ’980 Patent
18 92. To the extent that this paragraph requires an answer, the Defendants
19 incorporate the foregoing paragraphs in their entirety as though fully set forth
20 herein.
21 93. The Defendants admit that the document attached to Microsoft’s Original
22 Complaint filed on December 18, 2015 as Exhibit E appears to be a copy of
23 United States Patent No. 5,510,980, which is entitled “Method and System for
24 Selecting and Executing Arithmetic Functions and the Like.”
25 94. If Corel Corp. and Corel, Inc. are found not licensed to the ’980 Patent as
26 set forth in Corel Corp. and Corel, Inc.’s pending motion for summary judgment
27
28 15
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 18 of 27
1 of express license to the ’980 Patent (Dkts. 48-49), without waiver to Corel’s
2 defense of express license, Corel Corp. and Corel, Inc. respond as follows:
3 • Admitted that Corel Corel QuattroPro (versions X5 and X6) and Corel
4 Calculate version 5 directly infringe claims 1-4, 6-7, 16-19 and 21-13 of
5 the ’980 Patent.
6 The remaining allegations in Paragraph 94 are denied.
7 95. The allegations of Paragraph 95 are denied.
8 96. The allegations of Paragraph 96 are denied.
9 97. The allegations of Paragraph 97 are denied.
10 98. The allegations of Paragraph 98 are denied.
11 99. The allegations of Paragraph 99 are denied.
12 SIXTH CLAIM FOR RELIEF
13 Alleged Infringement of the D’237 Patent
14 100. To the extent that this paragraph requires an answer, the Defendants
15 incorporate the foregoing paragraphs in their entirety as though fully set forth
16 herein.
17 101. The Defendants admit that the document attached to Microsoft’s Original
18 Complaint filed on December 18, 2015 as Exhibit F appears to be a copy of
19 United States Patent No. D550,237, which is entitled “User Interface for a Portion
20 of a Display Screen.” Defendants deny that what is shown in the D‘237 patent
21 attached to the Complaint is a true and accurate representation of what is claimed
22 in the patent inasmuch as the published patent does not reflect what Microsoft
23 claimed in its patent application filed with the United States Patent Office.
24 102. Corel Corp. and Corel, Inc. respond as follows:
25 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
26 Write version 5, each part of Corel Home Office version 5 and a product
27
28 16
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 19 of 27
1 that Corel licensed from a third party Ability, directly infringe the D’237
2 Patent.
3 The remaining allegations in Paragraph 102 are denied.
4 103. The allegations of Paragraph 103 are denied.
5 104. The allegations of Paragraph 104 are denied.
6 105. The allegations of Paragraph 105 are denied.
7 106. The allegations of Paragraph 106 are denied.
8 SEVENTH CLAIM FOR RELIEF
9 Alleged Infringement of the D’140 Patent
10 107. To the extent that this paragraph requires an answer, the Defendants
11 incorporate the foregoing paragraphs in their entirety as though fully set forth
12 herein.
13 108. The Defendants admit that the document attached to Microsoft’s Original
14 Complaint filed on December 18, 2015 as Exhibit G appears to be a copy of
15 United States Patent No. D554,140, which is entitled “User Interface for a Portion
16 of a Display Screen.”
17 109. Corel Corp. and Corel, Inc. respond as follows:
18 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
19 Write version 5, each part of Corel Home Office version 5 and a product
20 that Corel licensed from a third party Ability, directly infringe the D’140
21 Patent.
22 The remaining allegations in Paragraph 109 are denied.
23 110. The allegations of Paragraph 110 are denied.
24 111. The allegations of Paragraph 111 are denied.
25 112. The allegations of Paragraph 112 are denied.
26 113. The allegations of Paragraph 113 are denied.
27 EIGHTH CLAIM FOR RELIEF
28 17
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 20 of 27
1 States Patent No. D570,865, which is entitled “User Interface for a Portion of a
2 Display Screen.”
3 123. Corel Corp. and Corel, Inc. respond as follows:
4 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
5 Write version 5, each part of Corel Home Office version 5 and a product
6 that Corel licensed from a third party Ability, directly infringe the D’865
7 Patent.
8 The remaining allegations in Paragraph 123 are denied.
9 124. The allegations of Paragraph 124 are denied.
10 125. The allegations of Paragraph 125 are denied.
11 126. The allegations of Paragraph 126 are denied.
12 127. The allegations of Paragraph 127 are denied.
13 E. Corel’s Infringement Has Not Caused and Will Not Continue to Cause
14
Injury to Microsoft
28 20
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 23 of 27
28 21
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 24 of 27
8
JURISDICTION AND VENUE
9
11 laws, 35 U.S.C. et seq., and the Federal Declaratory Judgment Act, 28 U.S.C. §§
13 5. This Court has jurisdiction over the subject matter of these claims pursuant
14 to 35 U.S.C. § 271 et. seq. and 28 U.S.C. §§ 1331, 1338, 2201, and 2202.
16 1400(b).
17 7. This Court has personal jurisdiction over Microsoft, which has requested
23 the Patents-in-Suit.
28 22
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 25 of 27
1 10. Corel cannot have infringed the ‘980 Patent as its actions inasmuch as
2 Corel was authorized to make, use and sell products that allegedly infringed the
3 ‘980 Patent.
4 11. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28
5 U.S.C. §§ 2201-2202 that it has not infringed (and does not infringe) any claims
6 of the ‘980 patent.
7 COUNT XX –Anti-Trust Claim under § 2 of the Sherman Act and Patent
Misuse
8
12. Corel, Inc. repeats and incorporates by reference Paragraphs 1-11 of its
9
Counterclaim as if fully set forth here.
10
11 13. This suit is barred because Corel was authorized to make, use and sell
12 products that allegedly infringed the ‘980 Patent.
13
14. Corel’s authorization to make, use and sell products that allegedly
14
infringed the ‘980 Patent remained in effect for the life of the ‘980 Patent.
15
18
WHEREFORE, Corel, Inc. respectfully requests a judgment against Microsoft as
19 follows:
20
A. Dismissal of Microsoft’s Complaint, with prejudice;
21
B. A judgment that Microsoft’s rights under the ‘980 Patent were exhausted prior
22
to the institution of this suit;
23
C. A judgment that Microsoft has misused its patents because it attempted to
24
assert expired patents whose rights were exhausted.
25
D. A declaration that Microsoft take nothing;
26
27
28 24
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-3 Filed 11/09/16 Page 27 of 27
13
14
21
22
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28 25
DEFENDANTS COREL CORPORATION A ND COREL, INC'S SECOND AMENDED ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-CLAIMS – 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-4 Filed 11/09/16 Page 1 of 3
25
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28 312990.01000/103032733v.1
[PROPOSED] ORDER ON DEFENDANTS MOTION FOR LEAVE TO AMEND ANSWER TO ADMIT
INFRINGEMENT AND MOTION TO DISMISS CERTAIN AFFIRMATIVE DEFENSES AND
COUNTERCLAIMS - 5:15-CV-05836-EJD
Case 5:15-cv-05836-EJD Document 115-4 Filed 11/09/16 Page 2 of 3
1 Before this Court is Defendants Corel Corp. and Corel Inc.’s (collectively “Corel”) Motion to
2 for Leave to Amend Their Answer to Admit Infringement, and Motion to Dismiss Certain
3 Affirmative Defenses and Counterclaims (“Motion to Amend and Dismiss). Having considered
4 Corel’s Motion to Amend and Dismiss and the arguments of the parties, the Court finds the Motion
8 2. The following of Corel’s affirmative defenses and counterclaims are dismissed from suit:
21 • Counterclaim XIX for Handgards Anti-Trust under the Sherman Act; and
22 • Counterclaim XXI-XXII for inequitable conduct.
23 IT IS SO ORDERED.
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312990.01000/103032733v.1 2
[PROPOSED] ORDER ON DEFENDANTS MOTION FOR LEAVE TO AMEND ANSWER TO ADMIT
INFRINGEMENT AND MOTION TO DISMISS CERTAIN AFFIRMATIVE DEFENSES AND
COUNTERCLAIMS - 5:15-CV-05836-EJD