Free Answer to Amended Complaint - District Court of Delaware - Delaware

Case 1:06-cv-00737-SLR 2:06-cv-00239-RHC

Document 79 Document 54

12/05/2006 Filed 09/13/2006

Page 1 of 8

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION USA VIDEO TECHNOLOGY CORPORATION v. TIME WARNER CABLE INC.; COX COMMUNICATIONS, INC.; CHARTER COMMUNICATIONS, INC.; COMCAST CABLE COMMUNICATIONS, LLC; COMCAST OF RICHARDSON, LP; COMCAST OF PLANO, LP; COMCAST OF DALLAS, LP § § § § § § § § § § § §

C.A. NO. 2:06-CV-239 JUDGE RON CLARK JURY TRIAL DEMANDED

DEFENDANT TIME WARNER CABLE INC.'S ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT Defendant Time Warner Cable Inc. ("TWC") hereby responds to the First Amended Complaint (DOC. 34) filed by Plaintiff, USA Video Technology Corporation ("USVO"), with the following Answer and Affirmative Defenses. TWC responds to the allegations in the numbered paragraphs of the First Amended Complaint as follows: ANSWER 1. Answering paragraph 1 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 2. Answering paragraph 2 of the First Amended Complaint, TWC denies that its

name is "Time Warner Cable, Inc." Its correct corporate name is "Time Warner Cable Inc." TWC otherwise admits the allegations of this paragraph.

LA1 829955v.1

Case 1:06-cv-00737-SLR 2:06-cv-00239-RHC

Document 79 Document 54

12/05/2006 Filed 09/13/2006

Page 2 of 8

3.

Answering paragraph 3 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 4. Answering paragraph 4 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 5. Answering paragraph 5 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 6. Answering paragraph 6 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 7. Answering paragraph 7 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 8. Answering paragraph 8 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 9. Answering paragraph 9 of the First Amended Complaint, TWC admits that USVO

purports that this is an action for infringement of a United States patent and that there is subject matter jurisdiction over this action pursuant to 35 U.S.C. § 271 and 28 U.S.C. § 1338(a), but otherwise denies the allegations therein.

LA1 829955v.1

Case 1:06-cv-00737-SLR 2:06-cv-00239-RHC

Document 79 Document 54

12/05/2006 Filed 09/13/2006

Page 3 of 8

10.

Answering paragraph 10 of the First Amended Complaint, TWC denies the

allegations therein. 11. Answering paragraph 11 of the First Amended Complaint, TWC admits that a

patent bearing the number 5,130,792, a copy of which is attached as Exhibit A to the First Amended Complaint, was issued by the United States Patent Office on July 14, 1992, and denies the remaining allegations therein. 12. Answering paragraph 12 of the First Amended Complaint, paragraph 12 of the

First Amended Complaint sets forth legal conclusions for which no response is required. To the extent paragraph 12 contains factual allegations to which a response is required, those allegations are denied. 13. Answering paragraph 13 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 14. Answering paragraph 14 of the First Amended Complaint, TWC admits that it

operates cable systems in various locations throughout the United States and that it offers content on demand to its cable subscribers. TWC denies the remaining allegations of this paragraph. 15. Answering paragraph 15 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 16. Answering paragraph 16 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them.

LA1 829955v.1

Case 1:06-cv-00737-SLR 2:06-cv-00239-RHC

Document 79 Document 54

12/05/2006 Filed 09/13/2006

Page 4 of 8

17.

Answering paragraph 17 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 18. Answering paragraph 18 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 19. Answering paragraph 19 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 20. Answering paragraph 20 of the First Amended Complaint, TWC is without

information sufficient to admit or deny the allegations of this paragraph, and on this basis, denies them. 21. Answering paragraph 21 of the First Amended Complaint, TWC denies the

allegations therein.

AFFIRMATIVE DEFENSES FIRST AFFIRMATIVE DEFENSE (Non-Infringement) 22. On information and belief, TWC has not directly infringed, contributed to the

infringement, and/or actively induced the infringement of any claim of United States Patent 5,130,792 ("the `792 Patent"), nor has it otherwise committed any acts of infringement on any rights of USVO.

LA1 829955v.1

Case 1:06-cv-00737-SLR 2:06-cv-00239-RHC

Document 79 Document 54

12/05/2006 Filed 09/13/2006

Page 5 of 8

SECOND AFFIRMATIVE DEFENSE (Invalidity) 23. On information and belief, the `792 Patent is invalid by reason of having been

issued in violation of the U.S. patent laws, Title 35 United States Code, including violation of Sections 102, 103, 112, 115, and 116 thereof, and the Rules and Regulations of the Patent & Trademark Office relating thereto.

THIRD AFFIRMATIVE DEFENSE (Inequitable Conduct Before The USPTO) 24. On information and belief, the `792 Patent is unenforceable by reason of

inequitable conduct by the patentee and/or its representatives, successors, or assignees before the U.S. Patent and Trademark Office ("USPTO").

FOURTH AFFIRMATIVE DEFENSE (Waiver, Laches, Acquiescence And Estoppel) 25. On information and belief, the relief sought by USVO is barred by waiver, laches,

acquiescence and/or estoppel.

FIFTH AFFIRMATIVE DEFENSE (Improper Venue) 26. Venue does not properly reside with this Court, but rather properly resides in the

United States District Court for the District of Delaware. This case should be dismissed in favor of the first-filed action in that district, captioned Time Warner Cable Inc. v. USA Video Technology Corp., Case No. 06-387-KAJ and/or transferred to that district.

LA1 829955v.1

Case 1:06-cv-00737-SLR 2:06-cv-00239-RHC

Document 79 Document 54

12/05/2006 Filed 09/13/2006

Page 6 of 8

PRAYER FOR RELIEF

WHEREFORE, TWC prays for the following: 1. A judgment that TWC has not infringed and does not infringe in any manner any

claim of the `792 patent, directly, contributorily or by inducement, and has not otherwise infringed or violated any rights of USVO. 2. A judgment that each claim contained in the `792 patent is invalid and

unenforceable and therefore without any force or effect. 3. An injunction against USVO and its affiliates, subsidiaries, assigns, employees,

agents or anyone acting in privity or concert with USVO from charging infringement or instituting any legal action for infringement of the `792 patent against TWC or anyone acting in privity with TWC, including the divisions, successors, assigns, agents, suppliers, manufacturers, contractors and customers of TWC. 4. A judgment that this is an exceptional case within the meaning of 35 U.S.C. §

285, entitling TWC to an award of its reasonable attorneys' fees, expenses and costs in this action. 5. A judgment for such other and further relief in law or in equity as this Court

deems just or proper.

LA1 829955v.1

Case 1:06-cv-00737-SLR 2:06-cv-00239-RHC

Document 79 Document 54

12/05/2006 Filed 09/13/2006

Page 7 of 8

JURY DEMAND TWC hereby respectfully demands trial by jury of all issues so triable.

Dated: September 13, 2006

Respectfully submitted,

/s/ J. Thad Heartfield____________ J. Thad Heartfield Texas Bar No. 09346800 E-mail: [email protected] Law Offices of J. Thad Heartfield 2195 Dowlen Road Beaumont, Texas 77706 Telephone: (409) 866-3318 Fax: (409) 866-5789 Jeffrey M. Olson (pro hac vice app pending) Sidley Austin LLP 555 West 5th Street Los Angeles, California 90013 Telephone: (213) 896-6000 Fax: (213) 896-6600 ATTORNEYS FOR DEFENDANT TIME WARNER CABLE INC.

By:

LA1 829955v.1

Case 1:06-cv-00737-SLR 2:06-cv-00239-RHC

Document 79 Document 54

12/05/2006 Filed 09/13/2006

Page 8 of 8

CERTIFICATE OF SERVICE The undersigned certifies that all counsel of record who have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) on this the 13th day of September, 2006. Any other counsel of record will be served by first class mail.

__/s/ J. Thad Heartfield_______________ J. Thad Heartfield

LA1 829955v.1