Sie sind auf Seite 1von 81

Case 5:15-cv-05836-EJD Document 115 Filed 11/09/16 Page 1 of 5

1 BLANK ROME LLP BLANK ROME LLP


Keith A. Rutherford Naki Margolis
2 (TX Bar No. 17452000; Admitted to NDCA) (CA Bar No. 94120)
J. David Cabello 555 California Street, Suite 4925
3
(TX Bar No. 03574500; Admitted to NDCA) San Francisco, CA 94104
4 Stephen E. Edwards Telephone: 415.986.2144
(TX Bar No. 00784008; Admitted to NDCA) Facsimile: 415.659.1950
5 Domingo M. LLagostera nmargolis@blankrome.com
(TX Bar No. 24070157; Admitted Pro Hac Vice)
6 717 Texas Avenue, Suite 1400
Houston, TX 77002
7
Telephone: 713.228.6601
8 Facsimile: 713.228.6605
krutherford@blankrome.com
9 dcabello@blankrome.com
sedwards@blankrome.com
10 dllagostera@blankrome.com
11
Attorneys for Defendants Corel Corporation and Corel Inc.
12
UNITED STATES DISTRICT COURT
13 NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
14 MICROSOFT CORPORATION, Case No. 5:15-cv-05836-EJD
15
Plaintiff and
16 Counterclaim Defendant, DEFENDANTS COREL
vs. CORPORATION AND COREL,
17
INC.’S RE-NOTICE OF MOTION
18 AND MOTION FOR LEAVE
COREL INC, TO AMEND THEIR ANSWER TO
19 ADMIT INFRINGEMENT, AND
Defendant and MOTION TO DISMISS CERTAIN
20 AFFIRMATIVE DEFENSES AND
COUNTERCLAIMS
Counterclaim Plaintiff
21
and Hearing Date: January 12, 2017
22
Time: 9:00 a.m.
COREL CORPORATION Crtrm: 4, 5th Floor
23
Judge: Hon. Edward J. Davila
Defendant.
24

25

26

27

28
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

6 to Dismiss Certain Affirmative Defenses and Counterclaims.

7 Memorandum of Points and Authorities


8 Corel respectfully hereby moves this Court for leave to amend Corel’s Answer to admit

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

17 damages under the “Ribbon Patents.”

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.

27 LLagostera Decl., ¶ 3. In response, Corel produced hundreds of thousands of pages of responsive

28
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

9 infringement can be determined from the product itself. Dkt. 106.

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

17 by Microsoft in this lawsuit infringe the asserted patents.

18 Second, Corel moves the Court to dismiss the following Affirmative Defenses and
19 Counterclaims:

20 • Second Affirmative Defense of non-infringement of the asserted patents;


21 • Third Affirmative Defense of invalidity of the asserted patents;
22 • Fourth Affirmative Defense of estoppel regarding claim interpretation;
23 • Tenth Affirmative Defense under the doctrine of design functionality or indefiniteness;
24 • Eleventh Affirmative Defense of unenforceability of the D’140 Patent;
25 • Twelfth Affirmative Defense of unenforceability of the D’865 Patent; and
26 • Counterclaims I-IX for declaratory judgment of invalidity of the asserted patents;
27

28
2
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

1 • Counterclaims X-XIII for declaratory judgment of non-infringement of the asserted


2 patents;

3 • Counterclaim XV-XVIII for declaratory judgment of non-infringement of the asserted


4 patents;

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

9 readily see what issues remain in this case.

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);

14 2) whether Microsoft is entitled to pre-suit damages for the Ribbon Patents;

15 3) how much damages should be awarded; and

16 4) whether there was willful infringement of the ’980 or Ribbon Patents.

17 See generally, Id., Ex. A.

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

22 parties and this Court.

23 For the foregoing reasons, Corel asks this Court to grant this motion for leave amend its Answer

24 and motion to dismiss certain affirmative defenses and counterclaims.

25

26

27

28
3
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

1
DATED: November 9, 2016 BLANK ROME LLP
2

3 By: /s/ Keith A. Rutherford


Keith A. Rutherford
4 Attorneys for Defendants
COREL INC. AND CORPORATION
5 AND FOR COUNTERCLAIM PLAINTIFF, COREL,
INC.
6

10

11

12

13

14

15

16

17

18
19

20

21

22

23

24

25

26

27

28
4
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

1 BLANK ROME LLP BLANK ROME LLP


Keith A. Rutherford Naki Margolis
2 (TX Bar No. 17452000; Admitted to NDCA) (CA Bar No. 94120)
J. David Cabello 555 California Street, Suite 4925
3
(TX Bar No. 03574500; Admitted to NDCA) San Francisco, CA 94104
4 Stephen E. Edwards Telephone: 415.986.2144
(TX Bar No. 00784008; Admitted to NDCA) Facsimile: 415.659.1950
5 Domingo M. LLagostera nmargolis@blankrome.com
(TX Bar No. 24070157, Admitted Pro Hac Vice)
6 717 Texas Avenue, Suite 1400
Houston, TX 77002
7
Telephone: 713.228.6601
8 Facsimile: 713.228.6605
krutherford@blankrome.com
9 dcabello@blankrome.com
sedwards@blankrome.com
10 dllagostera@blankrome.com
11
Attorneys for Defendants Corel Corporation and Corel Inc.
12
UNITED STATES DISTRICT COURT
13
NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
14
MICROSOFT CORPORATION, Case No. 5:15-cv-05836-EJD
15
Plaintiff and Counterclaim (Assigned to Judge Edward J. Davila)
16 Defendant,
DECLARATION OF DOMINGO M.
17 LLAGOSTERA IN SUPPORT OF
vs. DEFENDANTS COREL CORP. AND
18 COREL INC.’S MOTION FOR LEAVE TO
19 COREL INC, AMEND THEIR ANSWER TO ADMIT
INFRINGEMENT, AND MOTION TO
20 Defendant and DISMISS CERTAIN AFFIRMATIVE
Counterclaim Plaintiff DEFENSES AND COUNTERCLAIMS
21 and _________
22

23 COREL CORPORATION Hearing Date: January 12, 2017


24 Time: 9:00 a.m.
Defendant. Crtrm: 4, 5th Floor
25 Judge: Hon. Edward J. Davila

26

27
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

1 DECLARATION OF DOMINGO M. LLAGOSTERA, ESQ:


2 I, Domingo M. LLagostera, declare as follows:

3 1. I am an attorney of record in the above-captioned matter for defendants Corel

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.

6 2. I am submitting this declaration in support of Corel’s Motion for Leave to Amend

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.

10 4. In response to Microsoft’s production requests, Corel has produced over 500,000

11 pages worth of documents.

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.

21 7. To date, Corel has expended in excess of $800,000 defending this case.

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

27
312990.01000/103032733v.1 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 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

4 vacate the claim construction hearing.

5 9. On November 4, Microsoft’s in-house sent Corel a response letter. Microsoft’s letter

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.

12

13 I declare under penalty of perjury that the foregoing is true and correct.

14 Executed on November 8, 2016 in Houston, Texas.

15
/s/ Domingo M. LLagostera
16 Domingo M. LLagostera

17

18
19

20

21

22

23

24

25

26

27
312990.01000/103032733v.1 2
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 115-2 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

1 BLANK ROME LLP BLANK ROME LLP


2
Keith A. Rutherford Naki Margolis
(TX Bar No. 17452000; Admitted to NDCA) (CA Bar No. 94120)
3 J. David Cabello 555 California Street, Suite 4925
4
(TX Bar No. 03574500; Admitted to NDCA) San Francisco, CA 94104
Stephen E. Edwards Telephone: 415.986.2144
5 (TX Bar No. 00784008; Admitted to NDCA) Facsimile: 415.659.1950
6 Domingo M. LLagostera nmargolis@blankrome.com
(TX Bar No. 24070157; Admitted Pro Hac Vice)
7 717 Texas Avenue, Suite 1400
8 Houston, TX 77002
Telephone: 713.228.6601
9 Facsimile: 713.228.6605
10 krutherford@blankrome.com
dcabello@blankrome.com
11 sedwards@blankrome.com
12 dllagostera@blankrome.com

13 Attorneys for Defendants Corel Corporation and Corel Inc.


14

15 UNITED STATES DISTRICT COURT


16 NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION

17 MICROSOFT CORPORATION, Case No. 5:15-cv-05836-EJD


18 Honorable Edward J. Davila
Plaintiff and
19 Counterclaim Defendant, DEFENDANTS COREL
vs. CORPORATION AND COREL,
20 INC.'S FIRST SECOND
AMENDED
21 COREL INC, ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-
22 Defendant and CLAIMS IN RESPONSE TO
Counterclaim Plaintiff MICROSOFT CORPORATION'S
23 COMPLAINT FOR PATENT
and INFRINGEMENT
24
COREL CORPORATION Complaint filed: Dec. 18, 2015
25 Trial Date: Not set yet
Defendant.
26

27

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 3 of 43

1 Defendants Corel Corporation and Corel Inc. hereby respond to Plaintiff


2 Microsoft Corporation’s Complaint for Patent Infringement as follows:
3 Microsoft’s complaint asserts patents of dubious validity and questionable
4 coverage -- all in an effort to retaliate for a separate action filed in Utah against
5 Microsoft by a separate entity – Corel Software, LLC (Case 2:15-cv-00528-EJF),
6 hereafter the “Utah Action”. (N.B. Although the companies are separate, they do have
7 substantial overlapping shareholders.) Microsoft’s actions should be seen for what they
8 are – a futile effort to assert influence in the unrelated Utah Action. Microsoft would
9 have the defendants in this case interject themselves in the Utah Action. Microsoft fails
10 to acknowledge that Corel Corporation and Corel, Inc. simply have no influence in the
11 Utah Action. Although the defendants have explained that they have no pecuniary
12 interest in the Utah Action, Microsoft appears to still want to inflict some form of
13 punishment on Corel Corporation and Corel Inc.
14 Corel Inc. and Corel Corporation have already admonished Microsoft and
15 provided its counsel with a detailed explanation of the problems Microsoft faces in
16 continuing to assert the design patents enumerated in the complaint.
17 Microsoft’s actions are a common refrain to the actions of a company trying to
18 exploit the cooperative environment between a company utilizing industry standards,
19 while at the same time wishing to hold back rights to selectively assert against those
20 that displease it. Microsoft cannot put the proverbial genie back in the bottle. The fact
21 that Microsoft’s motivation is not actual harm, but instead a desire to retaliate or punish
22 is evident by the fact that many of the asserted utility patents have either expired or will
23 soon expire
24 1. Corel Inc. and Corel Corporation deny any acts of copying and further
25 deny any acts of patent infringement. The remaining allegations in Paragraph 1, require
26 no response of admission or denial. To the extent a response is required, the remaining
27 allegations of Paragraph 1 are denied.
28
2
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 4 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
28
3
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
27

28
4
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.
27

28
5
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
28
6
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 longer employed by the Defendants. Accordingly Corel Corporation and Corel,


2 Inc. are without sufficient knowledge or information to admit the allegations in
3 Paragraph 33 of the Complaint and therefore denies the same.
4 34. Corel Corporation and Corel, Inc. deny that they were put on notice of any
5 alleged infringement prior to the institution of the present litigation. With respect
6 to the remaining allegations, the managers mentioned in Paragraph 34 are no
7 longer employed by the Defendants. Accordingly Corel Corporation and Corel,
8 Inc. are without sufficient knowledge or information to admit the allegations in
9 Paragraph 34 of the Complaint and therefore denies the same.
10 35. The allegations of Paragraph 35 are denied. Moreover, Corel Corporation
11 and Corel, Inc. deny that there was any duty to review any potential infringement
12 inasmuch as Microsoft, prior to the institution of the present litigation, never took
13 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
14 infringement nor did Microsoft, prior to the institution of the present litigation,
15 provide reference to any specific enumerated patents or provide Corel, Inc. or
16 Corel Corporation with a claim analysis. Additionally, on information and belief,
17 Microsoft does not mark its own products with the asserted patent numbers.
18 36. The allegations of Paragraph 36 are denied.
19 37. The allegations of Paragraph 37 are denied.
20 2. No Knowledge of Microsoft’s Patent Portfolio
21 38. Corel is without sufficient knowledge or information to admit the
22 allegations in Paragraph 38 of the Complaint and therefore denies the same.
23 Corel admits that it markets and sells programs, and further admits that Microsoft
24 competes aggressively with Defendants to diminish their market share
25 39. The statements in Paragraph 39 are not factual in nature and, hence, require
26 no response of admission or denial. To the extent a response is deemed required,
27 the allegations of Paragraph 39 are denied. Moreover, Corel Corporation and
28
7
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 9 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.
27

28
8
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 43. The allegations of Paragraph 43 are denied. Moreover, Corel Corporation


2 and Corel, Inc. deny that there was any duty to review any potential infringement
3 inasmuch as Microsoft, prior to the institution of the present litigation, never took
4 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
5 infringement nor did Microsoft, prior to the institution of the present litigation,
6 provide reference to any specific enumerated patents or provide Corel, Inc. or
7 Corel Corporation with a claim analysis. Additionally, on information and belief,
8 Microsoft does not mark its own products with patent numbers. Admitted that
9 the defendants became aware of Microsoft’s assertion of the ‘828 patent when
10 they received service of the summons and complaint but otherwise denied.
11 4. No Knowledge of the ’036 patent
12 44. Admitted that Microsoft has accurately set forth the information printed on
13 the face of the patent but otherwise denied.
14 45. The allegations of Paragraph 45 are denied. Moreover, Corel Corporation
15 and Corel, Inc. deny that there was any duty to review any potential infringement
16 inasmuch as Microsoft, prior to the institution of the present litigation, never took
17 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
18 infringement nor did Microsoft, prior to the institution of the present litigation,
19 provide reference to any specific enumerated patents or provide Corel, Inc. or
20 Corel Corporation with a claim analysis. Additionally, on information and belief,
21 Microsoft does not mark its own products with patent numbers. Admitted that
22 the defendants became aware of Microsoft’s assertion of the ‘036 patent when
23 they received service of the summons and complaint but otherwise denied.
24 5. No Knowledge of the ’501 patent
25 46. Admitted that the defendants became aware of Microsoft’s assertion of the
26 ‘501 patent when they received service of the summons and complaint but
27 otherwise denied.
28
9
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 11 of 43

1 6. No Knowledge of the ’415 patent


2 47. Admitted that the defendants became aware of Microsoft’s assertion of the
3 ‘415 patent when they received service of the summons and complaint but
4 otherwise denied.
5 7. Knowledge of the ’980 patent
6 48. Admitted that Microsoft accurately reports the issue date reflected on the
7 face of the patent, however all other allegations of Paragraph 48 are denied.
8 Moreover, Corel Corporation and Corel, Inc. deny that there was any duty to
9 review any potential infringement inasmuch as Corel was authorized to make,
10 use and sell products that allegedly infringe the ‘980 Patent. Admitted that the
11 defendants became aware of Microsoft’s assertion of the ‘980 patent when they
12 received service of the summons and complaint but except as admitted herein,
13 otherwise denied.
14 8. No Knowledge of the D’237 patent
15 49. Admitted that Microsoft accurately reports the issue date reflected on the
16 face of the patent, however all other allegations of Paragraph 49 are denied.
17 50. Corel Corporation and Corel, Inc. deny that there was any duty to review
18 any potential infringement inasmuch as Microsoft, prior to the institution of the
19 present litigation, never took the necessary steps to put Corel, Inc. or Corel
20 Corporation on notice of alleged infringement nor did Microsoft, prior to the
21 institution of the present litigation, provide reference to any specific enumerated
22 patents or provide Corel, Inc. or Corel Corporation with a claim analysis.
23 Additionally, on information and belief, Microsoft does not mark its own
24 products with patent numbers. Admitted that the defendants became aware of
25 Microsoft’s assertion of the D’237 patent when they received service of the
26 summons and complaint but otherwise denied.
27 9. No Knowledge of the D’140 patent
28
10
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 12 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
27

28
11
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.
28
12
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 CLAIMS FOR RELIEF


2 FIRST CLAIM FOR RELIEF
3 Alleged Infringement of the ’828 Patent
4 59. To the extent that this paragraph requires an answer, the Defendants
5 incorporate the foregoing paragraphs in their entirety as though fully set forth
6 herein.
7 60. The Defendants admit that the document attached to Microsoft’s
8 Complaint filed on December 18, 2015 (the “Original Complaint”) as Exhibit A
9 appears to be a copy of United States Patent No. 8,255,828, which is entitled
10 “Command User Interface for Displaying Selectable Software Functionality
11 Controls.”
12 61. Corel Corp. and Corel, Inc. responds as follows:
13 • Admitted that Corel CAD 2014, Corel CAD 2015, and Corel CAD 2016,
14 products that Corel licenses from a third party, Graebert, directly infringe
15 claims 1-3, 6-7, 11, and 33 of the ’828 Patent.
16 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
17 Write version 5, each part of Corel Home Office version 5 and a product
18 that Corel licensed from a third party Ability,, directly infringe claims 1-
19 3, 6-11 and 33 of the ’828 Patent.
20 The allegations of Paragraph 61 are deniedAll remaining allegations in Paragraph
21 61 are denied..
22 61.62. The allegations of Paragraph 62 are denied.
23 62.63. The allegations of Paragraph 63 are denied.
24 63.64. The allegations of Paragraph 64 are denied.
25 64.65. The allegations of Paragraph 65 are denied.
26 65.66. The allegations of Paragraph 66 are denied.
27 SECOND CLAIM FOR RELIEF
28
13
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 15 of 43

1 Alleged Infringement of the ’036 Patent


2 66.67. To the extent that this paragraph requires an answer, the Defendants
3 incorporate the foregoing paragraphs in their entirety as though fully set forth
4 herein.
5 67.68. The Defendants admit that the document attached to Microsoft’s Original
6 Complaint as Exhibit B appears to be a copy of United States Patent No.
7 7,703,036, which is entitled “User Interface for Displaying Selectable Software
8 Functionality Controls that Are Relevant to a Selected Object.”
9 69. Corel Corp. and Corel, Inc. responds as follows:
10 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
11 Write version 5, each part of Corel Home Office version 5 and a product
12 that Corel licensed from a third party Ability, directly infringe claims 1-7,
13 10-12, 23, 25-27 and 29 of the ’036 Patent.
14 The remaining allegations in Paragraph 69 are deniedThe allegations of
15 Paragraph 69 are denied.
16 68.70. The allegations of Paragraph 70 are denied.
17 69.71. The allegations of Paragraph 71 are denied.
18 70.72. The allegations of Paragraph 72 are denied.
19 71.73. The allegations of Paragraph 73 are denied.
20 72.74. The allegations of Paragraph 74 are denied.
21 THIRD CLAIM FOR RELIEF
22 Alleged Infringement of the ’501 Patent
23 75. To the extent that this paragraph requires an answer, the Defendants
24 incorporate the foregoing paragraphs in their entirety as though fully set forth
25 herein.
26 76. The Defendants admit that the document attached to Microsoft’s Original
27 Complaint filed on December 18, 2015 as Exhibit C appears to be a copy of
28
14
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 16 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

4 77. Corel Corp. and Corel, Inc. respond as follows:


5 • Admitted that Corel Draw (versions X5, X6, X7, and X8) directly infringe
6 claims 9-13 and 15 of the ’501 Patent.
7 • Admitted that Corel Write version 5, Corel Show version 5 and Corel
8 Calculate version 5, each part of Home Office Version 5 and a product that
9 Corel licensed from a third party Ability, directly infringe claims 9-11 of
10 the ’501 Patent.
11 • Admitted that Corel PaintShop Pro (versions X3, X4, X5, X6, X7, X8, and
12 X9), as well as Corel Presentations (versions X6, X6, X7, and X8), Corel
13 QuattroPro (versions X5, X6, X7, and X8), and Corel WordPerfect
14 (versions X5, X6, X7, and X8), which are applications in the WordPerfect
15 Suite, directly infringe claims 9-11 of the ’501 Patent.
16 The remaining allegations in Paragraph 69 are denied.
17 The Defendants admit that the document attached to Microsoft’s Original
18 Complaint filed on December 18, 2015 as Exhibit C appears to be a copy of
19 United States Patent No. 7,047,501, which is entitled “Method for Displaying
20 Controls in a System Using a Graphical User Interface.”
21 73. The allegations of Paragraph 77 are denied.
22 74.78. The allegations of Paragraph 78 are denied.
23 75.79. The allegations of Paragraph 79 are denied.
24 76.80. The allegations of Paragraph 80 are denied.
25 77.81. The allegations of Paragraph 81 are denied.
26 FOURTH CLAIM FOR RELIEF
27 Alleged Infringement of the ’415 Patent
28
15
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 17 of 43

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
1
“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.
16
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 85.90. The allegations of Paragraph 90 are denied.


2 86.91. The allegations of Paragraph 91 are denied.
3 FIFTH CLAIM FOR RELIEF
4 Alleged Infringement of the ’980 Patent
5 87.92. To the extent that this paragraph requires an answer, the Defendants
6 incorporate the foregoing paragraphs in their entirety as though fully set forth
7 herein.
8 88.93. The Defendants admit that the document attached to Microsoft’s Original
9 Complaint filed on December 18, 2015 as Exhibit E appears to be a copy of
10 United States Patent No. 5,510,980, which is entitled “Method and System for
11 Selecting and Executing Arithmetic Functions and the Like.”
12 94. If Corel Corp. and Corel, Inc. are found not licensed to the ’980 Patent as
13 set forth in Corel Corp. and Corel, Inc.’s pending motion for summary judgment
14 of express license to the ’980 Patent (Dkts. ___48-49), without waiver to Corel’s
15 defense of express license, Corel Corp. and Corel, Inc. respond as follows:
16 • Admitted that Corel Corel QuattroPro (versions X5 and X6) and Corel
17 Calculate version 5 directly infringe claims 1-4, 6-7, 16-19 and 21-13 of
18 the ’980 Patent.
19 The remaining allegations in Paragraph 94 are denied.
20 89. The allegations of Paragraph 94 are denied.
21 90.95. The allegations of Paragraph 95 are denied.
22 91.96. The allegations of Paragraph 96 are denied.
23 92.97. The allegations of Paragraph 97 are denied.
24 93.98. The allegations of Paragraph 98 are denied.
25 94.99. The allegations of Paragraph 99 are denied.
26 SIXTH CLAIM FOR RELIEF
27 Alleged Infringement of the D’237 Patent
28
17
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 19 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.
28
18
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

1 102.108. The Defendants admit that the document attached to Microsoft’s


2 Original Complaint filed on December 18, 2015 as Exhibit G appears to be a copy
3 of United States Patent No. D554,140, which is entitled “User Interface for a
4 Portion of a Display Screen.”
5 109. Corel Corp. and Corel, Inc. respond as follows:
6 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
7 Write version 5, each part of Corel Home Office version 5 and a product
8 that Corel licensed from a third party Ability, directly infringe the D’140
9 Patent.
10 The remaining allegations in Paragraph 109 are denied.
11 103. The allegations of Paragraph 109 are denied.
12 104.110. The allegations of Paragraph 110 are denied.
13 105.111. The allegations of Paragraph 111 are denied.
14 106.112. The allegations of Paragraph 112 are denied.
15 113. The allegations of Paragraph 113 are denied.
16 EIGHTH CLAIM FOR RELIEF
17 Alleged Infringement of the D’532 Patent
18 107.114. 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.
21 108.115. The Defendants admit that the document attached to Microsoft’s
22 Original Complaint filed on December 18, 2015 as Exhibit H appears to be a copy
23 of United States Patent No. D564,532, which is entitled “User Interface for a
24 Portion of a Display Screen.”
25 116. Corel Corp. and Corel, Inc. respond as follows:
26 • Admitted that Corel CAD 2014, 2015, and 2016, products Corel licenses
27 from third party Graebert, directly infringe the D’532 Patent.
28
19
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 21 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

1 118.125. The allegations of Paragraph 125 are denied.


2 119.126. The allegations of Paragraph 126 are denied.
3 120.127. The allegations of Paragraph 127 are denied.
4 E. Corel’s Infringement Has Not Caused and Will Not Continue to Cause
5
Injury to Microsoft

6 121.128. The allegations of Paragraph 128 are denied.


7 122.129. The allegations of Paragraph 129 are denied.
8 RESPONSE TO PRAYER FOR RELIEF
9 The Defendants deny that Microsoft is entitled to any of the relief requested in
10 the Original Complaint or any other relief against the Defendants.
11

12 DEMAND FOR JURY TRIAL


13 The Defendants hereby demand a jury for all issues so triable.
14 AFFIRMATIVE DEFENSES
15 Incorporating by reference the foregoing paragraphs in their entirety and without
16 assuming any burden it would otherwise not have, the Defendants assert the following
17 affirmative defenses to Microsoft’s claim of patent infringement. The Defendants
18 further reserve the right to assert other affirmative and additional defenses and/or
19 otherwise to supplement this Answer upon discovery of facts or evidence rendering
20 such action appropriate. Subject to the foregoing, the Defendants affirmatively plead
21 the following:
22 FIRST AFFIRMATIVE DEFENSE
23 1. To the extent Plaintiff’s Complaint fails to state a cause of action as to the
24 ’980 patent upon which relief may be granted, it should be dismissed and denied
25 in its entirety.
26 SECOND AFFIRMATIVE DEFENSE
27

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

1 8.5. To the extent that Plaintiff’s allegations of infringement are premised on


2 the alleged use, sale or offer for sale of methods, systems, apparatuses and/or
3 products that were practiced or implemented by or for a licensee of Plaintiff or
4 its/their predecessors-in-interest, and/or provided to Defendants by a licensee of
5 Plaintiff or its predecessors-in-interest, such allegations are barred pursuant to
6 said license agreements and/or by the doctrine of patent exhaustion.
7 NINTH AFFIRMATIVE DEFENSE
8 9.6. Plaintiff’s claims are barred, in whole or in part, by the doctrine of implied
9 license.
10 TENTH AFFIRMATIVE DEFENSE
11

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

1 THIRTEENTH AFFIRMATIVE DEFENSE


2 24.7. Plaintiff’s claims may be barred, in whole or in part, by the doctrine of
3 implied and express license specifically, Microsoft’s licensing program for
4 Microsoft Office User Interface.
5 FOURTEENTH AFFIRMATIVE DEFENSE
6 25.8. Plaintiff’s claims are barred, in whole or in part, by an express license that
7 remained in effect for the life of patents.
8 FIFTEENTH AFFIRMATIVE DEFENSE
9 26.9. Plaintiff’s claims are barred, in whole or in part, by the doctrine of patent
10 exhaustion. Corel’s actions and sales were authorized. Corel’s authorization to
11 make, use and sell products remained in effect for the life of patents and as a
12 consequence the patents are exhausted. Microsoft is barred from asserting
13 expired patents whose rights were exhausted.
14 RESERVATION OF DEFENSES
15 27.10. Defendants reserve all affirmative defenses under rule 8(c) of the Federal
16 Rules of Civil Procedure, the patent laws of the United States, and any other
17 defenses, at law or in equity, that may now exist or in the future may be available
18 based on discovery and further factual investigation in this case.
19

20 COREL, INC.’s COUNTERCLAIMS


21
The Defendant Corel, Inc. asserts the following counterclaims against
22
Plaintiff:
23
1. Corel, Inc. repeats and incorporates by reference all allegations in its
24
Answer and in its Affirmative Defenses in Paragraphs 1 through 21 10 above as
25
if fully set forth here.
26
PARTIES
27

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

1 2. Counterclaim Plaintiff Corel, Inc. is a Delaware corporation that has a


2 principal place of business at 385 Ravendale Drive, Mountain View, California
3 94043.
4 3. On information and belief, Counterclaim Defendant, Microsoft
5 Corporation is a Washington corporation with a principal place of business at
6 One Microsoft Way, Redmond, Washington 98052.
7

8
JURISDICTION AND VENUE
9

10 4. These counterclaims for declaratory judgment arise under U.S. patent

11 laws, 35 U.S.C. et seq., and the Federal Declaratory Judgment Act, 28 U.S.C. §§

12 2201 and 2202.

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.

15 6. Venue is proper in this District pursuant to at least 28 U.S.C. §§ 1391 and

16 1400(b).

17 7. This Court has personal jurisdiction over Microsoft, which has requested

18 relief from this Court.

19 8. As evidenced by Plaintiff’s Complaint and this Answer and Counterclaim,

20 there exists a real and actual controversy between Plaintiff/Counterclaim

21 Defendant Microsoft Corporation and the Defendant/Counterclaim Plaintiff,

22 Corel, Inc. concerning the validity, enforceability, and alleged infringement of

23 the Patents-in-Suit.

24 9. COUNT I – Declaratory Judgment of Patent Invalidity of the ‘828

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.

5 12. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28


6
U.S.C. §§ 2201-2202 that the ‘828 patent is invalid.
7

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

10 Counterclaim as if fully set forth here.


11
14. Each of the claims of the ‘036 patent is invalid for failing to comply with
12

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

17 U.S.C. §§ 2201-2202 that the ‘036 patent is invalid.

18 COUNT III – Declaratory Judgment of Patent Invalidity of the ‘501 Patent


19 16. Corel, Inc. repeats and incorporates by reference Paragraphs 1-14 of its
20
Counterclaim as if fully set forth here.
21

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

26 18. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28


27 U.S.C. §§ 2201-2202 that the ‘501 patent is invalid.
28
29
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 31 of 43

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

10 22. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28

11 U.S.C. §§ 2201-2202 that the ‘415 patent is invalid.


12
COUNT V – Declaratory Judgment of Patent Invalidity of the ‘980 Patent
13
23. Corel, Inc. repeats and incorporates by reference Paragraphs 1-20 of its
14

15 Counterclaim as if fully set forth here.

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.

20 25. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28


21
U.S.C. §§ 2201-2202 that the ‘980 patent is invalid.
22

23 COUNT VI – Declaratory Judgment of Patent Invalidity of the D‘237


Patent
24
26. Corel, Inc. repeats and incorporates by reference Paragraphs 1-23 of its
25
Counterclaim as if fully set forth here.
26

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.

5 28. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28


6
U.S.C. §§ 2201-2202 that the D‘237 patent is invalid.
7

10 COUNT VII – Declaratory Judgment of Patent Invalidity of the D‘140


11
Patent

12 29. Corel, Inc. repeats and incorporates by reference Paragraphs 1-26 of its

13 Counterclaim as if fully set forth here.


14
30. Each of the claims of the D‘140 patent is invalid for failing to comply with
15

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

20 U.S.C. §§ 2201-2202 that the D‘140 patent is invalid.

21 COUNT VIII – Declaratory Judgment of Patent Invalidity of the D‘532


Patent
22
32. Corel, Inc. repeats and incorporates by reference Paragraphs 1-29 of its
23

24 Counterclaim as if fully set forth here.


25
33. Each of the claims of the D‘532 patent is invalid for failing to comply with
26
the conditions and requirements for patentability as set forth in 35 U.S.C. §§ 102,
27

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

1 34. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28


2
U.S.C. §§ 2201-2202 that the D‘532 patent is invalid.
3

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

12 37. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28


13
U.S.C. §§ 2201-2202 that the D‘865 patent is invalid.
14
COUNT X – Declaratory Judgment of Non-Infringement of the ‘828 Patent
15
38. Corel, Inc. repeats and incorporates by reference Paragraphs 1-35 of its
16

17 Counterclaim as if fully set forth here.


18
39. Corel, Inc. has not and does not infringe any of the claims of the ‘828
19
patent under any theory (including directly (whether individually or jointly) or
20

21 indirectly (whether contributorily or by inducement).


22
40. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28
23
U.S.C. §§ 2201-2202 that it has not infringed (and does not infringe) any claims of
24

25 the ‘828 patent.


26
COUNT XI – Declaratory Judgment of Non-Infringement of the ‘036
27 Patent
28
32
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 34 of 43

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

5 patent under any theory (including directly (whether individually or jointly) or


6
indirectly (whether contributorily or by inducement).
7

8 43. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28

9 U.S.C. §§ 2201-2202 that it has not infringed (and does not infringe) any claims of
10
the ‘036 patent.
11

12 COUNT XII – Declaratory Judgment of Non-Infringement of the ‘501


Patent
13
44. Corel, Inc. repeats and incorporates by reference Paragraphs 1-41 of its
14
Counterclaim as if fully set forth here.
15

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

20 46. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28


21
U.S.C. §§ 2201-2202 that it has not infringed (and does not infringe) any claims of
22
the ‘501 patent.
23

24 COUNT XIII – Declaratory Judgment of Non-Infringement of the ‘415


Patent
25
47. Corel, Inc. repeats and incorporates by reference Paragraphs 1-44 of its
26

27 Counterclaim as if fully set forth here.


28
33
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 35 of 43

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).

5 49. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28


6
U.S.C. §§ 2201-2202 that it has not infringed (and does not infringe) any claims of
7

8 the ‘415 patent.

9 COUNT XIV – Declaratory Judgment of Non-Infringement of the ‘980


Patent
10
50.9. Corel, Inc. repeats and incorporates by
11
reference Paragraphs 1-47 8 of its Counterclaim as if fully set forth here.
12
51. Corel, Inc. has not and does not infringe any of the claims of the ‘980
13
patent under any theory (including directly (whether individually or jointly) or
14
indirectly (whether contributorily or by inducement).
15
52.10. Corel cannot have infringed the ‘980 Patent
16
as its actions inasmuch as Corel was authorized to make, use and sell products
17
that allegedly infringed the ‘980 Patent.
18
53.11. Accordingly, Corel, Inc. seeks a declaratory
19
judgment pursuant to 28 U.S.C. §§ 2201-2202 that it has not infringed (and does
20
not infringe) any claims of the ‘980 patent.
21
COUNT XV – Declaratory Judgment of Non-Infringement of the D‘237
22 Patent
23 54. Corel, Inc. repeats and incorporates by reference Paragraphs 1-50 of its
24
Counterclaim as if fully set forth here.
25

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).

5 56. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28


6
U.S.C. §§ 2201-2202 that it has not infringed (and does not infringe) any claims of
7

8 the D‘237 patent.

9 COUNT XVI – Declaratory Judgment of Non-Infringement of the D‘140


Patent
10
57. Corel, Inc. repeats and incorporates by reference Paragraphs 1-53 of its
11

12 Counterclaim as if fully set forth here.


13
58. Corel, Inc. has not and does not infringe any of the claims of the D‘140
14
patent under any theory (including directly (whether individually or jointly) or
15

16 indirectly (whether contributorily or by inducement).


17
59. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28
18
U.S.C. §§ 2201-2202 that it has not infringed (and does not infringe) any claims of
19

20 the D‘140 patent.


21
COUNT XVII – Declaratory Judgment of Non-Infringement of the D‘532
22 Patent

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).

5 62. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28


6
U.S.C. §§ 2201-2202 that it has not infringed (and does not infringe) any claims of
7

8 the D‘532 patent.

9 COUNT XVIII – Declaratory Judgment of Non-Infringement of the D‘865


Patent
10
63. Corel, Inc. repeats and incorporates by reference Paragraphs 1-59 of its
11

12 Counterclaim as if fully set forth here.


13
64. Corel, Inc. has not and does not infringe any of the claims of the D‘865
14
patent under any theory (including directly (whether individually or jointly) or
15

16 indirectly (whether contributorily or by inducement).


17
65. Accordingly, Corel, Inc. seeks a declaratory judgment pursuant to 28
18
U.S.C. §§ 2201-2202 that it has not infringed (and does not infringe) any claims of
19

20 the D‘865 patent.


21
COUNT XIX – Handgards Anti-Trust Claim under § 2 of the Sherman Act
22
66. Corel, Inc. repeats and incorporates by reference Paragraphs 1-62 of its
23
Counterclaim as if fully set forth here.
24

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,

9 Inc. wrote to Microsoft’s litigation counsel to expressly provide Microsoft with


10
notice which showed where each and every element of the asserted D’140 and D’865
11

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

16 D’865 were invalid and procured through inequitable conduct. Moreover, in

17 Microsoft’s assertion of the utility patent applications referenced in paragraph 11 (of


18
the Affirmative Defenses above) in this litigation, Microsoft is aware that features
19

20 claimed in D‘140 patent application were disclosed in Microsoft products described


21 in the utility patent applications referenced in paragraph 11 (of the Affirmative
22
Defense Section above) and were on sale more than a year before the May 22, 2006
23

24 filing date of the D‘140.


25 68. Microsoft’s attempts to enforce the invalid D’140 and D’865 patents with
26
the specific intent to monopolize and/or attempted to monopolize the relevant
27

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

12 would allow them to further monopolize the market.

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

25 73.14. Corel’s authorization to make, use and sell


26 products that allegedly infringed the ‘980 Patent remained in effect for the life
27 of the ‘980 Patent.
28
38
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 40 of 43

1 74.15. Microsoft’s attempted resurrection and


2 assertion of an expired, exhausted patent is an improper assertion of its expired
3 patent and a misuse of its patents.
4
75.16. Microsoft’s attempted resurrection and
5
assertion of an expired patent is an attempt to restrain trade in violation of
6
Section 2 of the Sherman Antitrust Act.
7
COUNT XXI – Patent Unenforceability/Inequitable Conduct
8
76. Corel, Inc. repeats and incorporates by reference Paragraphs 11-25 of its
9

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

10 DATED: November 48, 2016 BLANK ROME LLP


11

12
By: /s/ Keith A. Rutherford
13 Keith A. Rutherford

14 Attorneys for Defendants


COREL INC. AND CORPORATION
15 AND FOR COUNTERCLAIM PLAINTIFF,
COREL, INC.
16

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

1 BLANK ROME LLP BLANK ROME LLP


2
Keith A. Rutherford Naki Margolis
(TX Bar No. 17452000; Admitted to NDCA) (CA Bar No. 94120)
3 J. David Cabello 555 California Street, Suite 4925
4
(TX Bar No. 03574500; Admitted to NDCA) San Francisco, CA 94104
Stephen E. Edwards Telephone: 415.986.2144
5 (TX Bar No. 00784008; Admitted to NDCA) Facsimile: 415.659.1950
6 Domingo M. LLagostera nmargolis@blankrome.com
(TX Bar No. 24070157; Admitted Pro Hac Vice)
7 717 Texas Avenue, Suite 1400
8 Houston, TX 77002
Telephone: 713.228.6601
9 Facsimile: 713.228.6605
10 krutherford@blankrome.com
dcabello@blankrome.com
11 sedwards@blankrome.com
12 dllagostera@blankrome.com

13 Attorneys for Defendants Corel Corporation and Corel Inc.


14
UNITED STATES DISTRICT COURT
15 NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
16
MICROSOFT CORPORATION, Case No. 5:15-cv-05836-EJD
17
Honorable Edward J. Davila
18 Plaintiff and
Counterclaim Defendant, DEFENDANTS COREL
19 vs. CORPORATION AND COREL,
INC.'S SECOND AMENDED
20 COREL INC, ANSWER, AFFIRMATIVE
DEFENSES AND COUNTER-
21 Defendant and CLAIMS IN RESPONSE TO
Counterclaim Plaintiff MICROSOFT CORPORATION'S
22 COMPLAINT FOR PATENT
and INFRINGEMENT
23
COREL CORPORATION Complaint filed: Dec. 18, 2015
24 Trial Date: Not set yet
Defendant.
25

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

1 Defendants Corel Corporation and Corel Inc. hereby respond to Plaintiff


2 Microsoft Corporation’s Complaint for Patent Infringement as follows:
3 Microsoft’s complaint asserts patents of dubious validity and questionable
4 coverage -- all in an effort to retaliate for a separate action filed in Utah against
5 Microsoft by a separate entity – Corel Software, LLC (Case 2:15-cv-00528-EJF),
6 hereafter the “Utah Action”. (N.B. Although the companies are separate, they do have
7 substantial overlapping shareholders.) Microsoft’s actions should be seen for what they
8 are – a futile effort to assert influence in the unrelated Utah Action. Microsoft would
9 have the defendants in this case interject themselves in the Utah Action. Microsoft fails
10 to acknowledge that Corel Corporation and Corel, Inc. simply have no influence in the
11 Utah Action. Although the defendants have explained that they have no pecuniary
12 interest in the Utah Action, Microsoft appears to still want to inflict some form of
13 punishment on Corel Corporation and Corel Inc.
14 Corel Inc. and Corel Corporation have already admonished Microsoft and
15 provided its counsel with a detailed explanation of the problems Microsoft faces in
16 continuing to assert the design patents enumerated in the complaint.
17 Microsoft’s actions are a common refrain to the actions of a company trying to
18 exploit the cooperative environment between a company utilizing industry standards,
19 while at the same time wishing to hold back rights to selectively assert against those
20 that displease it. Microsoft cannot put the proverbial genie back in the bottle. The fact
21 that Microsoft’s motivation is not actual harm, but instead a desire to retaliate or punish
22 is evident by the fact that many of the asserted utility patents have either expired or will
23 soon expire
24 1. Corel Inc. and Corel Corporation deny any acts of copying. The remaining
25 allegations in Paragraph 1, require no response of admission or denial. To the extent a
26 response is required, the remaining allegations of Paragraph 1 are denied.
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 C. Corel’s Lack of Knowledge of the Microsoft Asserted Patents


2 1. No Knowledge of the Microsoft Ribbon patents
3 30. Corel Corporation and Corel, Inc. are without sufficient knowledge or
4 information to admit the allegations in Paragraph 30 of the Complaint and
5 therefore denies the same.
6 31. Corel Corporation and Corel, Inc. deny that they were put on notice of any
7 alleged infringement prior to the institution of the present litigation. With respect
8 to the remaining allegations, the managers mentioned in Paragraph 31 are no
9 longer employed by the Defendants. Accordingly Corel Corporation and Corel,
10 Inc. are without sufficient knowledge or information to admit the allegations in
11 Paragraph 31 of the Complaint and therefore denies the same.
12 32. Corel Corporation and Corel, Inc. deny that they were put on notice of any
13 alleged infringement prior to the institution of the present litigation. With respect
14 to the remaining allegations, the managers mentioned in Paragraph 32 are no
15 longer employed by the Defendants. Accordingly Corel Corporation and Corel,
16 Inc. are without sufficient knowledge or information to admit the allegations in
17 Paragraph 32 of the Complaint and therefore denies the same.
18 33. Corel Corporation and Corel, Inc. deny that they were put on notice of any
19 alleged infringement prior to the institution of the present litigation. With respect
20 to the remaining allegations, the managers mentioned in Paragraph 33 are no
21 longer employed by the Defendants. Accordingly Corel Corporation and Corel,
22 Inc. are without sufficient knowledge or information to admit the allegations in
23 Paragraph 33 of the Complaint and therefore denies the same.
24 34. Corel Corporation and Corel, Inc. deny that they were put on notice of any
25 alleged infringement prior to the institution of the present litigation. With respect
26 to the remaining allegations, the managers mentioned in Paragraph 34 are no
27 longer employed by the Defendants. Accordingly Corel Corporation and Corel,
28 5
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 8 of 27

1 Inc. are without sufficient knowledge or information to admit the allegations in


2 Paragraph 34 of the Complaint and therefore denies the same.
3 35. The allegations of Paragraph 35 are denied. Moreover, Corel Corporation
4 and Corel, Inc. deny that there was any duty to review any potential infringement
5 inasmuch as Microsoft, prior to the institution of the present litigation, never took
6 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
7 infringement nor did Microsoft, prior to the institution of the present litigation,
8 provide reference to any specific enumerated patents or provide Corel, Inc. or
9 Corel Corporation with a claim analysis. Additionally, on information and belief,
10 Microsoft does not mark its own products with the asserted patent numbers.
11 36. The allegations of Paragraph 36 are denied.
12 37. The allegations of Paragraph 37 are denied.
13 2. No Knowledge of Microsoft’s Patent Portfolio
14 38. Corel is without sufficient knowledge or information to admit the
15 allegations in Paragraph 38 of the Complaint and therefore denies the same.
16 Corel admits that it markets and sells programs, and further admits that Microsoft
17 competes aggressively with Defendants to diminish their market share
18 39. The statements in Paragraph 39 are not factual in nature and, hence, require
19 no response of admission or denial. To the extent a response is deemed required,
20 the allegations of Paragraph 39 are denied. Moreover, Corel Corporation and
21 Corel, Inc. deny that there was any duty to review any potential infringement
22 inasmuch as Microsoft, prior to the institution of the present litigation, never took
23 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
24 infringement nor did Microsoft, prior to the institution of the present litigation,
25 provide reference to any specific enumerated patents or provide Corel, Inc. or
26 Corel Corporation with a claim analysis. Additionally, on information and belief,
27 Microsoft does not mark its own products with patent numbers.
28 6
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 9 of 27

1 40. The allegations of Paragraph 40 are denied. Moreover, Corel Corporation


2 and Corel, Inc. deny that there was any duty to review any potential infringement
3 inasmuch as Microsoft, prior to the institution of the present litigation, never took
4 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
5 infringement nor did Microsoft, prior to the institution of the present litigation,
6 provide reference to any specific enumerated patents or provide Corel, Inc. or
7 Corel Corporation with a claim analysis. Additionally, on information and belief,
8 Microsoft does not mark its own products with patent numbers.
9 41. The allegations of Paragraph 41 are denied. Moreover, Corel Corporation
10 and Corel, Inc. deny that there was any duty to review any potential infringement
11 inasmuch as Microsoft, prior to the institution of the present litigation, never took
12 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
13 infringement nor did Microsoft, prior to the institution of the present litigation,
14 provide reference to any specific enumerated patents or provide Corel, Inc. or
15 Corel Corporation with a claim analysis. Additionally, on information and belief,
16 Microsoft does not mark its own products with patent numbers.
17 3. No Knowledge of the ’828 patent
18 42. Admitted that Microsoft has accurately set forth the information printed on
19 the face of the patent but otherwise denied.
20 43. The allegations of Paragraph 43 are denied. Moreover, Corel Corporation
21 and Corel, Inc. deny that there was any duty to review any potential infringement
22 inasmuch as Microsoft, prior to the institution of the present litigation, never took
23 the necessary steps to put Corel, Inc. or Corel Corporation on notice of alleged
24 infringement nor did Microsoft, prior to the institution of the present litigation,
25 provide reference to any specific enumerated patents or provide Corel, Inc. or
26 Corel Corporation with a claim analysis. Additionally, on information and belief,
27 Microsoft does not mark its own products with patent numbers. Admitted that
28 7
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 10 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 review any potential infringement inasmuch as Corel was authorized to make,


2 use and sell products that allegedly infringe the ‘980 Patent. Admitted that the
3 defendants became aware of Microsoft’s assertion of the ‘980 patent when they
4 received service of the summons and complaint but except as admitted herein,
5 otherwise denied.
6 8. No Knowledge of the D’237 patent
7 49. Admitted that Microsoft accurately reports the issue date reflected on the
8 face of the patent, however all other allegations of Paragraph 49 are denied.
9 50. Corel Corporation and Corel, Inc. deny that there was any duty to review
10 any potential infringement inasmuch as Microsoft, prior to the institution of the
11 present litigation, never took the necessary steps to put Corel, Inc. or Corel
12 Corporation on notice of alleged infringement nor did Microsoft, prior to the
13 institution of the present litigation, provide reference to any specific enumerated
14 patents or provide Corel, Inc. or Corel Corporation with a claim analysis.
15 Additionally, on information and belief, Microsoft does not mark its own
16 products with patent numbers. Admitted that the defendants became aware of
17 Microsoft’s assertion of the D’237 patent when they received service of the
18 summons and complaint but otherwise denied.
19 9. No Knowledge of the D’140 patent
20 51. Admitted that Microsoft accurately reports the issue date reflected on the
21 face of the patent, however all other allegations of Paragraph 51 are denied.
22 52. Corel Corporation and Corel, Inc. deny that there was any duty to review
23 any potential infringement inasmuch as Microsoft, prior to the institution of the
24 present litigation, never took the necessary steps to put Corel, Inc. or Corel
25 Corporation on notice of alleged infringement nor did Microsoft, prior to the
26 institution of the present litigation, provide reference to any specific enumerated
27 patents or provide Corel, Inc. or Corel Corporation with a claim analysis.
28 9
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 12 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

1 “Command User Interface for Displaying Selectable Software Functionality


2 Controls.”
3 61. Corel Corp. and Corel, Inc. responds as follows:
4 • Admitted that Corel CAD 2014, Corel CAD 2015, and Corel CAD 2016,
5 products that Corel licenses from a third party, Graebert, directly infringe
6 claims 1-3, 6-7, 11, and 33 of the ’828 Patent.
7 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
8 Write version 5, each part of Corel Home Office version 5 and a product
9 that Corel licensed from a third party Ability, directly infringe claims 1-3,
10 6-11 and 33 of the ’828 Patent.
11 All remaining allegations in Paragraph 61 are denied.
12 62. The allegations of Paragraph 62 are denied.
13 63. The allegations of Paragraph 63 are denied.
14 64. The allegations of Paragraph 64 are denied.
15 65. The allegations of Paragraph 65 are denied.
16 66. The allegations of Paragraph 66 are denied.
17 SECOND CLAIM FOR RELIEF
18 Alleged Infringement of the ’036 Patent
19 67. To the extent that this paragraph requires an answer, the Defendants
20 incorporate the foregoing paragraphs in their entirety as though fully set forth
21 herein.
22 68. The Defendants admit that the document attached to Microsoft’s Original
23 Complaint as Exhibit B appears to be a copy of United States Patent No.
24 7,703,036, which is entitled “User Interface for Displaying Selectable Software
25 Functionality Controls that Are Relevant to a Selected Object.”
26 69. Corel Corp. and Corel, Inc. responds as follows:
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 Alleged Infringement of the D’532 Patent


2 114. To the extent that this paragraph requires an answer, the Defendants
3 incorporate the foregoing paragraphs in their entirety as though fully set forth
4 herein.
5 115. The Defendants admit that the document attached to Microsoft’s Original
6 Complaint filed on December 18, 2015 as Exhibit H appears to be a copy of
7 United States Patent No. D564,532, which is entitled “User Interface for a Portion
8 of a Display Screen.”
9 116. Corel Corp. and Corel, Inc. respond as follows:
10 • Admitted that Corel CAD 2014, 2015, and 2016, products Corel licenses
11 from third party Graebert, directly infringe the D’532 Patent.
12 • Admitted that Corel Calculate version 5, Corel Show version 5, and Corel
13 Write version 5, each part of Corel Home Office version 5 and a product
14 that Corel licensed from a third party Ability, directly infringe the D’532
15 Patent.
16 The remaining allegations in Paragraph 116 are denied.
17 117. The allegations of Paragraph 117 are denied.
18 118. The allegations of Paragraph 118 are denied.
19 119. The allegations of Paragraph 119 are denied.
20 120. The allegations of Paragraph 120 are denied.
21 NINTH CLAIM FOR RELIEF
22 Alleged Infringement of the D’865 Patent
23 121. To the extent that this paragraph requires an answer, the Defendants
24 incorporate the foregoing paragraphs in their entirety as though fully set forth
25 herein.
26 122. The Defendants admit that the document attached to Microsoft’s Original
27 Complaint filed on December 18, 2015 as Exhibit I appears to be a copy of United
28 18
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 21 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

15 128. The allegations of Paragraph 128 are denied.


16 129. The allegations of Paragraph 129 are denied.
17 RESPONSE TO PRAYER FOR RELIEF
18 The Defendants deny that Microsoft is entitled to any of the relief requested in
19 the Original Complaint or any other relief against the Defendants.
20

21 DEMAND FOR JURY TRIAL


22 The Defendants hereby demand a jury for all issues so triable.
23 AFFIRMATIVE DEFENSES
24 Incorporating by reference the foregoing paragraphs in their entirety and without
25 assuming any burden it would otherwise not have, the Defendants assert the following
26 affirmative defenses to Microsoft’s claim of patent infringement. The Defendants
27 further reserve the right to assert other affirmative and additional defenses and/or
28 19
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 22 of 27

1 otherwise to supplement this Answer upon discovery of facts or evidence rendering


2 such action appropriate. Subject to the foregoing, the Defendants affirmatively plead
3 the following:
4 FIRST AFFIRMATIVE DEFENSE
5 1. To the extent Plaintiff’s Complaint fails to state a cause of action as to the
6 ’980 patent upon which relief may be granted, it should be dismissed and denied
7 in its entirety.
8 FIFTH AFFIRMATIVE DEFENSE
9 2. Plaintiff’s claims are barred, in whole or in part, by the doctrine of waiver.
10 SIXTH AFFIRMATIVE DEFENSE
11 3. Plaintiff’s claims are barred, in whole or in part, by the doctrine of
12 acquiescence.
13 SEVENTH AFFIRMATIVE DEFENSE
14 4. Plaintiff’s ability to recover for any alleged infringement is limited by the
15 failure of Plaintiff and/or its licensees to meet the requirements of 35 U.S.C. §
16 287.
17 EIGHTH AFFIRMATIVE DEFENSE
18 5. To the extent that Plaintiff’s allegations of infringement are premised on
19 the alleged use, sale or offer for sale of methods, systems, apparatuses and/or
20 products that were practiced or implemented by or for a licensee of Plaintiff or
21 its/their predecessors-in-interest, and/or provided to Defendants by a licensee of
22 Plaintiff or its predecessors-in-interest, such allegations are barred pursuant to
23 said license agreements and/or by the doctrine of patent exhaustion.
24 NINTH AFFIRMATIVE DEFENSE
25 6. Plaintiff’s claims are barred, in whole or in part, by the doctrine of implied
26 license.
27

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

1 THIRTEENTH AFFIRMATIVE DEFENSE


2 7. Plaintiff’s claims may be barred, in whole or in part, by the doctrine of
3 implied and express license specifically, Microsoft’s licensing program for
4 Microsoft Office User Interface.
5 FOURTEENTH AFFIRMATIVE DEFENSE
6 8. Plaintiff’s claims are barred, in whole or in part, by an express license that
7 remained in effect for the life of patents.
8 FIFTEENTH AFFIRMATIVE DEFENSE
9 9. Plaintiff’s claims are barred, in whole or in part, by the doctrine of patent
10 exhaustion. Corel’s actions and sales were authorized. Corel’s authorization to
11 make, use and sell products remained in effect for the life of patents and as a
12 consequence the patents are exhausted. Microsoft is barred from asserting
13 expired patents whose rights were exhausted.
14 RESERVATION OF DEFENSES
15 10. Defendants reserve all affirmative defenses under rule 8(c) of the Federal
16 Rules of Civil Procedure, the patent laws of the United States, and any other
17 defenses, at law or in equity, that may now exist or in the future may be available
18 based on discovery and further factual investigation in this case.
19

20 COREL, INC.’s COUNTERCLAIMS


21
The Defendant Corel, Inc. asserts the following counterclaims against
22
Plaintiff:
23
1. Corel, Inc. repeats and incorporates by reference all allegations in its
24
Answer and in its Affirmative Defenses in Paragraphs 1 through 10 above as if
25
fully set forth here.
26
PARTIES
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

1 2. Counterclaim Plaintiff Corel, Inc. is a Delaware corporation that has a


2 principal place of business at 385 Ravendale Drive, Mountain View, California
3 94043.
4 3. On information and belief, Counterclaim Defendant, Microsoft
5 Corporation is a Washington corporation with a principal place of business at
6 One Microsoft Way, Redmond, Washington 98052.
7

8
JURISDICTION AND VENUE
9

10 4. These counterclaims for declaratory judgment arise under U.S. patent

11 laws, 35 U.S.C. et seq., and the Federal Declaratory Judgment Act, 28 U.S.C. §§

12 2201 and 2202.

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.

15 6. Venue is proper in this District pursuant to at least 28 U.S.C. §§ 1391 and

16 1400(b).

17 7. This Court has personal jurisdiction over Microsoft, which has requested

18 relief from this Court.

19 8. As evidenced by Plaintiff’s Complaint and this Answer and Counterclaim,

20 there exists a real and actual controversy between Plaintiff/Counterclaim

21 Defendant Microsoft Corporation and the Defendant/Counterclaim Plaintiff,

22 Corel, Inc. concerning the validity, enforceability, and alleged infringement of

23 the Patents-in-Suit.

24 COUNT XIV – Declaratory Judgment of Non-Infringement of the ‘980


25
Patent

26 9. Corel, Inc. repeats and incorporates by reference Paragraphs 1-8 of its

27 Counterclaim as if fully set forth here.

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

16 15. Microsoft’s attempted resurrection and assertion of an expired, exhausted


17 patent is an improper assertion of its expired patent and a misuse of its patents.
18
16. Microsoft’s attempted resurrection and assertion of an expired, exhausted
19
patent is an improper assertion of its expired patent and a misuse of its patents.
20

21 17. Microsoft’s attempted resurrection and assertion of an expired patent is an


22 attempt to restrain trade in violation of Section 2 of the Sherman Antitrust Act.
23 COUNT XXIII Patent Exhaustion
24 18. Corel, Inc. repeats and incorporates by reference its Fourteenth
25 Affirmative Defense as if fully set forth here. Corel seeks a declaratory
26 judgement that Corel was authorized to make, use and sell products under the
27 ‘980 Patent, that such authorization remained in effect for the life of the ‘980
28 23
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 26 of 27

1 Patent and that as a consequence of such authorization Microsoft’s patent rights


2 under the ‘980 are exhausted.
3 COUNT XXIV – Exceptional Case under § 285
4 19. Corel, Inc. repeats and incorporates by reference Paragraphs 1–17 of its
5 Counterclaim as if fully set forth here.
6 20. Microsoft’s assertion of the ‘980 patent against Corel, Inc. and its parent,
7 Corel, Corporation after such rights were exhausted gives rise to deeming this case
8 an exceptional case pursuant to 35 U.S.C. § 285. Microsoft brought the suit asserting
9 the ‘980 patent in bad faith, and the suit was objectively unreasonable. This case
10 stands out from others with respect to Microsoft’s litigation position and Microsoft
11 has been beyond unreasonable in maintaining this litigation
12 DEMAND FOR JURY TRIAL
13
1. Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure and the
14
Local Rules of this Court, Corel, Inc. demands a trial by jury on all issues triable to
15
a jury.
16
PRAYER FOR RELIEF
17

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

1 E. An award to Corel, Inc. of all damages sustained as a result of Microsoft’s


2 vexatious and frivolous activities, as well as treble attorneys’ fees and costs
3 (including expert fees);
4 F. An award of treble damages as a consequence of Microsoft’s anticompetitve
5 activities;
6 G. An award to the Corel, Inc. of its costs incurred in bringing these
7 counterclaims, and prejudgment and postjudgment interest as allowed by law;
8 H. An award to Corel, Inc. of its reasonable attorneys’ fees under 35 U.S.C. §
9 285; and
10 I. An award to the Corel, Inc. of such other and further relief as this Court deems
11 just and proper.
12

13

14

15 DATED: November 8, 2016 BLANK ROME LLP


16
By: /s/ Keith A. Rutherford
17 Keith A. Rutherford
Attorneys for Defendants
18 COREL INC. AND CORPORATION
AND FOR COUNTERCLAIM PLAINTIFF,
19 COREL, INC.
20

21

22

23

24

25

26

27

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

1 BLANK ROME LLP BLANK ROME LLP


Keith A. Rutherford Naki Margolis
2 (TX Bar No. 17452000; Admitted to NDCA) (CA Bar No. 94120)
J. David Cabello 555 California Street, Suite 4925 San
3
(TX Bar No. 03574500; Admitted to NDCA) Francisco, CA 94104
4 Stephen E. Edwards Telephone: 415.986.2144
(TX Bar No. 00784008; Admitted to NDCA) Facsimile: 415.659.1950
5 Domingo M. LLagostera nmargolis@blankrome.com
(TX Bar No. 24052877; Admitted Pro Hac Vice)
6 717 Texas Avenue, Suite 1400
Houston, TX 77002
7
Telephone: 713.228.6601
8 Facsimile: 713.228.6605
krutherford@blankrome.com
9 dcabello@blankrome.com
sedwards@blankrome.com
10 dllagostera@blankrome.com
11
Attorneys for Defendants Corel Corporation and Corel Inc.
12
UNITED STATES DISTRICT COURT
13
NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
14
MICROSOFT CORPORATION, Case No. 5:15-cv-05836-EJD
15
Plaintiff and Counterclaim (Assigned to Judge Edward J. Davila)
16 Defendant,
[PROPOSED] ORDER ON DEFENDANTS
17 COREL CORP. AND COREL INC.’S
vs. MOTION FOR LEAVE TO AMEND
18 ANSWER TO ADMIT INFRINGEMENT
19 COREL INC, AND MOTION TO DISMISS CERTAIN
AFFIRMATIVE DEFENSES AND
20 Defendant and COUNTERCLAIMS
Counterclaim Plaintiff _________
21 and
Hearing Date: January 12, 2017
22 Time: 9:00 a.m.
COREL CORPORATION
Ctrm: 4, 5th Floor
23
Defendant. Judge: Hon. Edward J. Davila
24

25

26

27

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

5 to Amend and Dismiss should be GRANTED.


6 IS HEREBY ORDERED that:

7 1. Corel’s Second Amended Answer is entered into the record.

8 2. The following of Corel’s affirmative defenses and counterclaims are dismissed from suit:

9 • Second Affirmative Defense of non-infringement of the asserted patents;


10 • Third Affirmative Defense of invalidity of the asserted patents;
11 • Fourth Affirmative Defense of estoppel regarding claim interpretation;
12 • Tenth Affirmative Defense under the doctrine of design functionality or
13 indefiniteness;

14 • Eleventh Affirmative Defense of unenforceability of the D’140 Patent;


15 • Twelfth Affirmative Defense of unenforceability of the D’865 Patent; and
16 • Counterclaims I-IX for declaratory judgment of invalidity of the asserted patents;
17 • Counterclaims X-XIII for declaratory judgment of non-infringement of the asserted
18 patents;

19 • Counterclaim XV-XVIII for declaratory judgment of non-infringement of the asserted


20 patents;

21 • Counterclaim XIX for Handgards Anti-Trust under the Sherman Act; and
22 • Counterclaim XXI-XXII for inequitable conduct.
23 IT IS SO ORDERED.

24 Dated: _________________, 2016

25

26

27 The Honorable Edward J. Davila


UNITED STATES DISTRICT COURT JUDGE
28
312990.01000/103032733v.1 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 3 of 3

10

11

12

13

14

15

16

17

18
19

20

21

22

23

24

25

26

27

28
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

Das könnte Ihnen auch gefallen