Free Answer to Counterclaim - District Court of Delaware - Delaware

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 1 of 23

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

IN RE: REMBRANDT TECHNOLOGIES, LP PATENT LITIGATION MOTOROLA, INC., CISCO SYSTEMS, INC., SCIENTIFIC-ATLANTA, INC., ARRIS GROUP, INC., THOMSON, INC., AMBIT MICROSYSTEMS, INC., and NETGEAR, INC.,

MDL Docket No. 07-md-1848 (GMS)

C.A. No. 07-752-GMS Plaintiffs, v. REMBRANDT TECHNOLOGIES, LP, Defendant. REMBRANDT TECHNOLOGIES, LP, and REMBRANDT TECHNOLOGES, LLC d/b/a REMSTREAM, Counter-Plaintiffs, v. MOTOROLA, INC., CISCO SYSTEMS, INC., SCIENTIFIC-ATLANTA, INC., ARRIS GROUP, INC., THOMSON, INC., AMBIT MICROSYSTEMS, INC., NETGEAR, INC., TIME WARNER CABLE, INC., TIME WARNER CABLE LLC, TIME WARNER NEW YORK CABLE LLC, TIME WARNER ENTERTAINMENT COMPANY, LP, COMCAST CORPORATION, COMCAST CABLE COMMUNICATIONS, LLC, CHARTER COMMUNICATIONS OPERATING, LLC, COXCOM, INC., COX COMMUNICATIONS, INC., COX ENTERPRISES, INC., CSC HOLDINGS, INC., CABLEVISION SYSTEMS CORPORATION, ADELPHIA COMMUNICATIONS CORPORATION, CENTURY-TCI CALIFORNIA COMMUNICATIONS, LP, CENTURY-TCI HOLDINGS, LLC, COMCAST OF C.A. No. 07-752-GMS

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 2 of 23

FLORIDA/PENNSYLVANIA, L.P. (f/k/a PARNASSOS, LP), COMCAST OF PENNSYLVANIA II, L.P. (f/k/a CENTURY-TCI CALIFORNIA, L.P.), PARNASSOS COMMUNICATIONS, LP, ADELPHIA CONSOLIDATION, LLC, PARNASSOS HOLDINGS, LLC and WESTERN NY CABLEVISION, LP, Counter-Defendants.

REPLY OF COXCOM, INC. TO COUNTERCLAIMS OF REMBRANDT TECHNOLOGIES, LP AND REMBRANDT TECHNOLOGIES, LLC, d/b/a REMSTREAM, AND COUNTER-COUNTERCLAIMS OF COXCOM, INC. Counter-Defendant CoxCom, Inc. ("Cox") replies to the Counterclaims of Counter-Plaintiffs Rembrandt Technologies, LP ("Rembrandt") and Rembrandt Technologies, LLC, d/b/a Remstream ("Remstream") as follows: Except as expressly admitted herein, Cox denies each and every allegation in the Counterclaims of Rembrandt and Remstream. THE PARTIES 1. 2. Cox admits the allegations in this paragraph on information and belief. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 3. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 4. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 5. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 6. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations.

2

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 3 of 23

7.

Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 8. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 9. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 10. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 11. Cox admits that it, either directly, or indirectly through one or more

subsidiaries, purchases products from one or more Plaintiff/Counter-Defendants for use in the provision of high-speed internet and cable broadband services. Except as expressly so admitted, Cox denies the remaining allegations in this paragraph as directed to Cox. Further, Cox lacks sufficient information to form a belief as to the truth of the allegations in this paragraph as directed to the non-Cox MSO Counter-Defendants, and on that basis denies those allegations. 12. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 13. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 14. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 15. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 16. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations.

3

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 4 of 23

17.

Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 18. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 19. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 20. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 21. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 22. 23. 24. 25. Admitted. Admitted. Admitted. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 26. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 27. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 28. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 29. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 30. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations.

4

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 5 of 23

31.

Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 32. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 33. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 34. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 35. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 36. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. JURISDICTION AND VENUE 37. 38. This paragraph does not require a response. Cox admits that 28 U.S.C. §§ 1331 and 1338(a) provide subject matter

jurisdiction over patent disputes, but otherwise denies the allegations of this paragraph. 39. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 40. Cox admits that it has availed itself of this Court's jurisdiction, and that it

is a Delaware entity, and/or has property, offices, or personnel in Delaware. Except as expressly so admitted, Cox denies the remaining allegations in this paragraph. 41. Cox admits that 28 U.S.C. §§ 1391(b), (c), and 1400(b) identify where

venue is proper in a patent dispute, but otherwise denies the allegations of this paragraph.

5

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 6 of 23

COUNT I -- U.S. Patent No. 4,937,819 42. Cox restates and incorporates herein by reference the responses stated in

paragraphs 1-41 above. 43. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 44. Cox admits that the issue date listed on the `819 patent is June 26, 1990.

Except as expressly so admitted, Cox denies the remaining allegations in this paragraph. 45. Cox admits that it, either directly, or indirectly through one or more

subsidiaries, purchases equipment from one or more Plaintiff/Counter-Defendants for use in the operation of cable networks. Cox lacks sufficient information to form a belief as to the truth of the remaining allegations in this paragraph, and on that basis denies those allegations. 46. 47. 48. Denied. Denied. Denied. COUNT II -- U.S. Patent No. 5,008,903 49. Cox restates and incorporates herein by reference the responses stated in

paragraphs 1-48 above. 50. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 51. Cox admits that the issue date listed on the `903 patent is April 16, 1991.

Except as expressly so admitted, Cox denies the remaining allegations in this paragraph. 52. Cox admits that it, either directly, or indirectly through one or more

subsidiaries, purchases equipment from one or more Plaintiff/Counter-Defendants for use in the operation of cable networks. Cox lacks sufficient information to form a belief as to the truth of the remaining allegations in this paragraph, and on that basis denies those allegations.

6

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 7 of 23

53. 54. 55.

Denied. Denied. Denied. COUNT III -- U.S. Patent No. 5,701,761

56.

Cox restates and incorporates herein by reference the responses stated in

paragraphs 1-55 above. 57. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 58. Cox admits that the issue date listed on the `761 patent is January 20,

1998. Except as expressly so admitted, Cox denies the remaining allegations in this paragraph. 59. Cox admits that it, either directly, or indirectly through one or more

subsidiaries, purchases equipment from one or more Plaintiff/Counter-Defendants for use in the operation of cable networks. Cox lacks sufficient information to form a belief as to the truth of the remaining allegations in this paragraph, and on that basis denies those allegations. 60. 61. 62. 63. Denied. Denied. Denied. Denied. COUNT IV -- U.S. Patent No. 5,719,858 64. Cox restates and incorporates herein by reference the responses stated in

paragraphs 1-63 above. 65. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations.

7

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 8 of 23

66.

Cox admits that the issue date listed on the `858 patent is February 17,

1998. Except as expressly so admitted, Cox denies the remaining allegations in this paragraph. 67. Cox admits that it, either directly, or indirectly through one or more

subsidiaries, purchases equipment from one or more Plaintiff/Counter-Defendants for use in the operation of cable networks. Cox lacks sufficient information to form a belief as to the truth of the remaining allegations in this paragraph, and on that basis denies those allegations. 68. 69. 70. Denied. Denied. Denied. COUNT V -- U.S. Patent No. 5,778,234 71. Cox restates and incorporates herein by reference the responses stated in

paragraphs 1-70 above. 72. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 73. Cox admits that the issue date listed on the `234 patent is July 7, 1998.

Except as expressly so admitted, Cox denies the remaining allegations in this paragraph. 74. Cox admits that it, either directly, or indirectly through one or more

subsidiaries, purchases equipment from one or more Plaintiff/Counter-Defendants for use in the operation of cable networks. Cox lacks sufficient information to form a belief as to the truth of the remaining allegations in this paragraph, and on that basis denies those allegations. 75. 76. 77. 78. Denied. Denied. Denied. Denied.

8

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 9 of 23

COUNT VI -- U.S. Patent No. 5,852,631 79. Cox restates and incorporates herein by reference the responses stated in

paragraphs 1-78 above. 80. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 81. Cox admits that the issue date listed on the `631 patent is December 22,

1998. Except as expressly so admitted, Cox denies the remaining allegations in this paragraph. 82. Cox admits that it, either directly, or indirectly through one or more

subsidiaries, purchases equipment from one or more Plaintiff/Counter-Defendants for use in the operation of cable networks. Cox lacks sufficient information to form a belief as to the truth of the remaining allegations in this paragraph, and on that basis denies those allegations. 83. 84. 85. Denied. Denied. Denied. COUNT VII -- U.S. Patent No. 6,131,159 86. Cox restates and incorporates herein by reference the responses stated in

paragraphs 1-85 above. 87. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 88. Cox admits that the issue date listed on the `159 patent is October 10,

2000. Except as expressly so admitted, Cox denies the remaining allegations in this paragraph. 89. Cox admits that it, either directly, or indirectly through one or more

subsidiaries, purchases equipment from one or more Plaintiff/Counter-Defendants for use in the operation of cable networks. Cox lacks sufficient information to form a belief as to the truth of the remaining allegations in this paragraph, and on that basis denies those allegations.

9

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 10 of 23

90. 91. 92. 93.

Denied. Denied. Denied. Denied. COUNT VIII -- U.S. Patent No. 6,950,444

94.

Cox restates and incorporates herein by reference the responses stated in

paragraphs 1-93 above. 95. Cox lacks sufficient information to form a belief as to the truth of the

allegations in this paragraph, and on that basis denies those allegations. 96. Cox admits that the issue date listed on the `444 patent is September 27,

2005. Except as expressly so admitted, Cox denies the remaining allegations in this paragraph. 97. Cox admits that it, either directly, or indirectly through one or more

subsidiaries, purchases equipment from one or more Plaintiff/Counter-Defendants for use in the operation of cable networks. Cox lacks sufficient information to form a belief as to the truth of the remaining allegations in this paragraph, and on that basis denies those allegations. 98. 99. 100. 101. Denied. Denied. Denied. Denied. PRAYER FOR RELIEF This section contains no factual allegations and thus requires no response.

10

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 11 of 23

AFFIRMATIVE DEFENSES FIRST AFFIRMATIVE DEFENSE: Failure to State a Claim (Counts I-VIII) 1. Counts I-VIII of Rembrandt's and Remstream's Counterclaims fail to state

a claim upon which relief can be granted. 2. Cox has not infringed any claim of any of the `819, `903, `761, `858, `234,

`631, `159, and `444 patents ("the asserted patents"). 3. Cox has not caused, with knowledge, specific intent, or otherwise,

equipment suppliers, service providers, and/or any others to infringe any claim of the asserted patents. 4. Rembrandt and Remstream have not been damaged in any amount,

manner, or at all by reason of any act alleged against Cox, and therefore the relief Rembrandt and Remstream pray for cannot be granted. 5. Rembrandt and Remstream are not entitled to permanent injunctive relief. SECOND AFFIRMATIVE DEFENSE: Invalidity 6. On information and belief, each of the asserted patents is invalid at least

for failure to satisfy one or more of the conditions of Title 35 United States Code, including without limitation, Sections 101, 102, 103, and 112 thereof. THIRD AFFIRMATIVE DEFENSE: Laches 7. Rembrandt and Remstream have delayed in bringing this action and their

delay is unreasonable and inexcusable, and has caused Cox material evidentiary and/or economic prejudice. Rembrandt's and Remstream's claims are barred, in whole or in part, by the doctrine of laches.

11

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 12 of 23

COUNTER-COUNTERCLAIM Counter-Defendants/Counterclaimant CoxCom, Inc. ("Cox") asserts the following Counter-Counterclaims against Rembrandt Technologies LP ("Rembrandt") and Rembrandt Technologies, LLC d/b/a Remstream ("Remstream"). PARTIES 1. CoxCom, Inc. is a corporation organized under the laws of the State of

Delaware with its principal place of business at 1400 Lake Hearn Dr., Atlanta, GA 30319. 2. On information and belief, Rembrandt is a limited partnership organized

under the laws of the state of New Jersey with its principal place of business at 401 City Avenue, Suite 900, Bala Cynwyd, Pennsylvania. 3. On information and belief, Remstream is wholly owned by Rembrandt and

is headquartered at 401 City Avenue, Suite 900, Bala Cynwyd, PA 19004. JURISDICTION AND VENUE 4. This court has jurisdiction over Cox's Counter-Counterclaim under the

Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, and federal question jurisdiction under 28 U.S.C. §§ 1331 and 1338 and as arising under the Patent Laws in Title 35 of the United States Code. 5. This Court has personal jurisdiction over Rembrandt and Remstream

because they have submitted to the jurisdiction of this Court. In addition, on information and belief, the Court has personal jurisdiction over Rembrandt and Remstream because they regularly conduct business in Delaware, and have other sufficient contacts with Delaware. 6. Venue in this District is proper under 28 U.S.C. §§ 1391 and 1400.

12

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 13 of 23

FACTS 7. On information and belief, Rembrandt claims to own all rights, title, and

interest in and to United States Patent Nos. 5,243,627 ("the `627 patent"); 4,937,819 ("the `819 patent"); 5,008,903 ("the `903 patent"); 5,719,858 ("the `858 patent"); and 5,852,631 ("the `631 patent"). 8. `631 patents. 9. On information and belief, Rembrandt claims to own all rights, title, and Rembrandt has accused Cox of infringing the `627, `819, `903, `858, and

interest in and to United States Patent Nos. 5,710,761 ("the `761 patent"); 5,778,234 ("the `234 patent"); 6,131,159 ("the `159 patent"); and 6,950,444 ("the `444 patent"), and has granted exclusive rights under the `761, `234, `159, and `444 patents to Remstream. 10. Rembrandt and Remstream have accused Cox of infringing the `761, `234,

`159, and `444 patents. 11. An actual case or controversy exists between the parties as to the

infringement, validity, and enforceability of the `627, `819, `858, `631, `761, `159, `234, `903, and `444 patents. COUNT I DECLARATORY JUDGMENT OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE `627 PATENT 12. above. 13. 14. Cox has not infringed and is not now infringing the `627 patent. Cox has not caused others to infringe, and is not now causing others to Cox realleges and incorporates by reference Paragraphs 1 through 11

infringe, the `627 patent.

13

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 14 of 23

15. 103, 112. 16.

The `627 patent is invalid under, without limitation, 35 U.S.C. §§ 101-

Any attempt by Rembrandt to assert the claims of the `627 patent against

Cox is barred by the doctrine of laches at least because Rembrandt's delay in filing suit against Cox is unreasonable and inexcusable, and has caused Cox material evidentiary and/or economic prejudice. 17. Cox is entitled to a declaratory judgment that it has not infringed and is

not infringing the `627 patent, and that the `627 patent is invalid and unenforceable. 18. This Counter-Counterclaim is exceptional under 35 U.S.C. § 285, and Cox

is entitled to an award of its reasonable attorneys' fees. COUNT II DECLARATORY JUDGMENT OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE `858 PATENT 19. above. 20. 21. Cox has not infringed and is not now infringing the `858 patent. Cox has not caused others to infringe, and is not now causing others to Cox realleges and incorporates by reference Paragraphs 1 through 18

infringe, the `858 patent. 22. 103, 112. 23. Any attempt by Rembrandt to assert the claims of the `858 patent against The `858 patent is invalid under, without limitation, 35 U.S.C. §§ 101-

Cox is barred by the doctrine of laches at least because Rembrandt's delay in filing suit against Cox is unreasonable and inexcusable, and has caused Cox material evidentiary and/or economic prejudice.

14

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 15 of 23

24.

Cox is entitled to a declaratory judgment that it has not infringed and is

not infringing the `858 patent, and that the `858 patent is invalid and unenforceable. 25. This Counter-Counterclaim is exceptional under 35 U.S.C. § 285, and Cox

is entitled to an award of its reasonable attorneys' fees. COUNT III DECLARATORY JUDGMENT OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE `819 PATENT 26. above. 27. 28. Cox has not infringed and is not now infringing the `819 patent. Cox has not caused others to infringe, and is not now causing others to Cox realleges and incorporates by reference Paragraphs 1 through 25

infringe, the `819 patent. 29. 103, 112. 30. Any attempt by Rembrandt to assert the claims of the `819 patent against The `819 patent is invalid under, without limitation, 35 U.S.C. §§ 101-

Cox is barred by the doctrine of laches at least because Rembrandt's delay in filing suit against Cox is unreasonable and inexcusable, and has caused Cox material evidentiary and/or economic prejudice. 31. Cox is entitled to a declaratory judgment that it has not infringed and is

not infringing the `819 patent, and that the `819 patent is invalid and unenforceable. 32. This Counter-Counterclaim is exceptional under 35 U.S.C. § 285, and Cox

is entitled to an award of its reasonable attorneys' fees.

15

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 16 of 23

COUNT IV DECLARATORY JUDGMENT OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE `631 PATENT 33. above. 34. 35. Cox has not infringed and is not now infringing the `631 patent. Cox has not caused others to infringe, and is not now causing others to Cox realleges and incorporates by reference Paragraphs 1 through 32

infringe, the `631 patent. 36. 103, 112. 37. Any attempt by Rembrandt to assert the claims of the `631 patent against The `631 patent is invalid under, without limitation, 35 U.S.C. §§ 101-

Cox is barred by the doctrine of laches at least because Rembrandt's delay in filing suit against Cox is unreasonable and inexcusable, and has caused Cox material evidentiary and/or economic prejudice. 38. Cox is entitled to a declaratory judgment that it has not infringed and is

not infringing the `631 patent, and that the `631 patent is invalid and unenforceable. 39. This Counter-Counterclaim is exceptional under 35 U.S.C. § 285, and Cox

is entitled to an award of its reasonable attorneys' fees. COUNT V DECLARATORY JUDGMENT OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE `761 PATENT 40. above. 41. Cox has not infringed and is not now infringing the `761 patent. Cox realleges and incorporates by reference Paragraphs 1 through 39

16

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 17 of 23

42.

Cox has not caused others to infringe, and is not now causing others to

infringe, the `761 patent. 43. 103, 112. 44. Any attempt by Rembrandt or Remstream to assert the claims of the `761 The `761 patent is invalid under, without limitation, 35 U.S.C. §§ 101-

patent against Cox is barred by the doctrine of laches at least because Rembrandt's and Remstream's delay in filing suit against Cox is unreasonable and inexcusable, and has caused Cox material evidentiary and/or economic prejudice. 45. Cox is entitled to a declaratory judgment that it has not infringed and is

not infringing the `761 patent, and that the `761 patent is invalid and unenforceable. 46. This Counter-Counterclaim is exceptional under 35 U.S.C. § 285, and Cox

is entitled to an award of its reasonable attorneys' fees. COUNT VI DECLARATORY JUDGMENT OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE `444 PATENT 47. above. 48. 49. Cox has not infringed and is not now infringing the `444 patent. Cox has not caused others to infringe, and is not now causing others to Cox realleges and incorporates by reference Paragraphs 1 through 46

infringe, the `444 patent. 50. 103, 112. 51. Any attempt by Rembrandt or Remstream to assert the claims of the `444 The `444 patent is invalid under, without limitation, 35 U.S.C. §§ 101-

patent against Cox is barred by the doctrine of laches at least because Rembrandt's and

17

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 18 of 23

Remstream's delay in filing suit against Cox is unreasonable and inexcusable, and has caused Cox material evidentiary and/or economic prejudice. 52. Cox is entitled to a declaratory judgment that it has not infringed and is

not infringing the `444 patent, and that the `444 patent is invalid and unenforceable. 53. This Counter-Counterclaim is exceptional under 35 U.S.C. § 285, and Cox

is entitled to an award of its reasonable attorneys' fees. COUNT VII DECLARATORY JUDGMENT OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE `234 PATENT 54. above. 55. 56. Cox has not infringed and is not now infringing the `234 patent. Cox has not caused others to infringe, and is not now causing others to Cox realleges and incorporates by reference Paragraphs 1 through 53

infringe, the `234 patent. 57. 103, 112. 58. Any attempt by Rembrandt or Remstream to assert the claims of the `234 The `234 patent is invalid under, without limitation, 35 U.S.C. §§ 101-

patent against Cox is barred by the doctrine of laches at least because Rembrandt's and Remstream's delay in filing suit against Cox is unreasonable and inexcusable, and has caused Cox material evidentiary and/or economic prejudice. 59. Cox is entitled to a declaratory judgment that it has not infringed and is

not infringing the `234 patent, and that the `234 patent is invalid and unenforceable. 60. This Counter-Counterclaim is exceptional under 35 U.S.C. § 285, and Cox

is entitled to an award of its reasonable attorneys' fees.

18

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 19 of 23

COUNT VIII DECLARATORY JUDGMENT OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE `159 PATENT 61. above. 62. 63. Cox has not infringed and is not now infringing the `159 patent. Cox has not caused others to infringe, and is not now causing others to Cox realleges and incorporates by reference Paragraphs 1 through 60

infringe, the `159 patent. 64. 103, 112. 65. Any attempt by Rembrandt or Remstream to assert the claims of the `159 The `159 patent is invalid under, without limitation, 35 U.S.C. §§ 101-

patent against Cox is barred by the doctrine of laches at least because Rembrandt's and Remstream's delay in filing suit against Cox is unreasonable and inexcusable, and has caused Cox material evidentiary and/or economic prejudice. 66. Cox is entitled to a declaratory judgment that it has not infringed and is

not infringing the `159 patent, and that the `159 patent is invalid and unenforceable. 67. This Counter-Counterclaim is exceptional under 35 U.S.C. § 285, and Cox

is entitled to an award of its reasonable attorneys' fees. COUNT IX DECLARATORY JUDGMENT OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE `903 PATENT 68. above. 69. Cox has not infringed and is not now infringing the `903 patent. Cox realleges and incorporates by reference Paragraphs 1 through 67

19

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 20 of 23

70.

Cox has not caused others to infringe, and is not now causing others to

infringe, the `903 patent. 71. 103, 112. 72. Any attempt by Rembrandt to assert the claims of the `903 patent against The `903 patent is invalid under, without limitation, 35 U.S.C. §§ 101-

Cox is barred by the doctrine of laches at least because Rembrandt's delay in filing suit against Cox is unreasonable and inexcusable, and has caused Cox material evidentiary and/or economic prejudice. 73. Cox is entitled to a declaratory judgment that it has not infringed and is

not infringing the `903 patent, and that the `903 patent is invalid and unenforceable. This Counter-Counterclaim is exceptional under 35 U.S.C. § 285, and Cox is entitled to an award of its reasonable attorneys' fees. PRAYER FOR RELIEF WHEREFORE, the Cox prays for judgment against Rembrandt and Remstream as follows: A. For dismissal of Rembrandt's and Remstream's Counterclaims in their entirety, with prejudice, and that the relief requested be denied; B. For a judgment declaring that no claim of the `819, `903, `761, `858, `234, `631, `159, `444, or `627 patent (collectively "the patents-in-suit") has been infringed willfully, deliberately, or otherwise by Cox; C. For a judgment declaring that each and every claim of the patents-in-suit is invalid and unenforceable; D. For an award of Cox's reasonable attorneys' fees under 35 U.S.C. § 285; and E. For such other and further relief as the Court may deem just and fair.

20

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 21 of 23

DEMAND FOR JURY TRIAL Pursuant to Federal Rule of Civil Procedure 38(b), Cox demands a trial by jury of all issues so triable in this action, including, without limitation, those issues raised in the Counterclaims, Reply, Affirmative Defenses, and Counter-Counterclaims. MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Rodger D. Smith II (#3778) _________________________________________ Rodger D. Smith II (#3778) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 [email protected] Attorneys for CoxCom, Inc. OF COUNSEL: Mitchell G. Stockwell KILPATRICK & STOCKTON LLP 1100 Peachtree Street, N.E. Suite 2800 Atlanta, GA 30309 (404) 815-6500 February 7, 2008
1488250

21

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 22 of 23

CERTIFICATE OF SERVICE I, Rodger D. Smith II, hereby certify that on February 7, 2008, I caused the foregoing to be electronically filed with the Clerk of the Court using CM/ECF. I further certify that I caused copies of the foregoing document to be served on February 7, 2008, upon the following in the manner indicated: BY E-MAIL Collins J. Seitz, Jr., Esquire Francis DiGiovanni, Esquire Connolly Bove Lodge & Hutz LLP The Nemours Building 1007 North Orange Street Wilmington, DE 19801 [email protected] [email protected] John W. Shaw, Esquire Young Conaway Stargatt & Taylor LLP The Brandywine Building 1000 West Street, 17th Floor Wilmington, DE 19801 [email protected] Jack B. Blumenfeld, Esquire Karen Jacobs Louden, Esquire Morris, Nichols, Arsht & Tunnell LLP 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19803 [email protected] [email protected] David S. Benyacar, Esquire Kaye Scholer LLP 425 Park Avenue New York, NY 10022 [email protected]

Case 1:07-md-01848-GMS

Document 78

Filed 02/07/2008

Page 23 of 23

John M. Desmarais, Esquire Kirkland & Ellis LLP Citigroup Center 153 East 53rd Street New York, NY 10022-4611 [email protected] Eric R. Lamison, Esquire Kirkland & Ellis LLP 555 California Street San Francisco, CA 94104 [email protected] Matthew D. Powers, Esquire Edward R. Reines, Esquire Weil, Gotshal & Manges LLP 201 Redwood Shore Parkway Redwood Shores, CA 94065 [email protected] [email protected]

/s/ Rodger D. Smith II (#3778)
Rodger D. Smith II (#3778) MORRIS, NICHOLS, ARSHT & TUNNELL LLP (302) 658-9200 [email protected]

2