UNITED STATES DISTRICT COURT FOR THE 

SOUTHERN DISTRICT OF FLORIDA 

MIAMI DIVISION 

DECURTIS LLC, 

Plaintiff, 

v. 

CARNIVAL CORPORATION, 

Defendant. 

Civil Action No. 1:20-22945-Civ-Scola

CARNIVAL CORPORATION

Plaintiff, 

v. 

DECURTIS CORPORATION and 

DECURTIS LLC, 

Defendant.

CARNIVAL CORPORATION’S ANSWER AND AFFIRMATIVE DEFENSES TO 

DECURTIS CORPORATION AND DECURTIS LLC’S COUNTERCLAIMS 

Plaintiff/Counterclaim Defendant Carnival Corporation (“Carnival”), by and through its 

undersigned counsel, hereby answers Defendant/Counterclaim Plaintiff DeCurtis Corporation 

and DeCurtis LLC’s (collectively “DeCurtis”) Counterclaims [DE 155] and states: 

THE PARTIES 

1. Carnival is without knowledge or information sufficient to form a belief as to the 

truth or validity of the allegations contained in the first sentence of Paragraph 1 of DeCurtis’ 

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Counterclaims and accordingly denies the same. Carnival does not dispute that DeCurtis 

provides technology relating to guest engagement systems, including for cruise ships. To the 

extent DeCurtis alleges that it or its employee(s) invented and/or own the technology relating to 

guest engagement systems that it provides, including for cruise ships, Carnival denies such 

allegations. 

2. Admitted. 

JURISDICTION AND VENUE 

3. Paragraph 3 states legal conclusions to which no response is required. To the 

extent a response is required, Carnival admits that the Counterclaims purport to assert claims 

arising under the Declaratory Judgment Act and the patent laws of the United States. Carnival 

further states that it does not contest that the Court has subject matter jurisdiction over the 

Counterclaims. Carnival denies all remaining allegations of this Paragraph. 

4. Paragraph 4 states legal conclusions to which no response is required. To the 

extent a response is required, Carnival states that it does not contest that venue is proper in this 

District for purposes of this action only. Carnival denies all remaining allegations of this 

Paragraph. 

5. Paragraph 5 states a legal conclusion to which no response is required. To the 

extent a response is required, Carnival admits that it has brought legal action against DeCurtis for 

DeCurtis’ infringement of the Asserted Patents as defined in Paragraph 5. Carnival further states 

that it does not contest that the Court has personal jurisdiction over Carnival for purposes of this 

action only. Carnival denies all remaining allegations of this Paragraph. 

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PATENTS AT ISSUE 

6. Paragraph 6 contains a legal description to which no response is required. To the 

extent a response is required, Carnival admits that DeCurtis has brought an action for declaratory 

judgment of noninfringement, invalidity, and/or unenforceability of three Carnival patents. 

Carnival denies that DeCurtis is entitled to any relief on these claims, and otherwise denies the 

allegations of this Paragraph. 

7. Paragraph 7 states legal conclusions to which no response is required. To the 

extent a response is required, Carnival denies same.

8. Admitted.

9. Admitted. 

10. Carnival admits that it has asserted claims for infringement against DeCurtis, as 

set forth in Carnival’s Second Amended Complaint, infringement contentions, expert reports, 

and other discovery responses. Carnival otherwise denies the allegations of this Paragraph.

11. Paragraph 7 states legal conclusions to which no response is required. To the 

extent a response is required, Carnival does not contest that the Court has subject matter 

jurisdiction over the Counterclaims. Carnival denies all remaining allegations of this Paragraph. 

GENERAL ALLEGATIONS PERTAINING TO INEQUITABLE CONDUCT COUNTS 

12. Denied. 

13. Paragraph 13 states legal conclusions to which no response is required. To the 

extent a response is required, Carnival states that the language of 37. C.F.R. § 1.56(a) speaks for 

itself and denies all remaining allegations of this Paragraph. 

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14. Paragraph 14 states legal conclusions to which no response is required. To the 

extent a response is required, Carnival states that the language of 37. C.F.R. § 1.56(a) speaks for 

itself and denies all remaining allegations of this Paragraph. 

15. Carnival admits the allegations in the first sentence of Paragraph 15. Carnival 

admits that the patents identified in Paragraph 15 do not name David DeCurtis as an inventor. 

Carnival denies all remaining allegations in Paragraph 15. 

16. Denied. 

17. Denied. 

18. Denied. 

19. Denied. 

20. Denied. 

21. Denied. 

22. The first sentence of Paragraph 22 states a legal conclusion to which no response 

is required. To the extent a response is required, Carnival denies these allegations. Carnival admits 

that the ’184 Patent, the ’514 Patent, and the ’516 Patent do not identify David DeCurtis as an 

inventor. Carnival admits that none of the ’184 Patent, the ’514 Patent, or the ’516 Patent have 

been amended to include David DeCurtis as an inventor. Carnival denies the remaining allegations 

of this Paragraph. 

23. As written, Carnival is without knowledge or information sufficient to form a belief 

as to the allegations in the first three sentences of Paragraph 23 and therefore denies same. Carnival 

denies all remaining allegations in Paragraph 23. 

24. Denied. 

25. Denied. 

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26. Carnival lacks knowledge or information sufficient to form a belief as to the truth 

of the allegations contained in the first two sentences of Paragraph 26, and on that basis denies 

them. Carnival denies all remaining allegations in Paragraph 26. 

27. Denied. 

28. Denied. 

29. Denied. 

30. Carnival is without knowledge or information sufficient to form a belief as to the 

allegations of the first sentence of Paragraph 30 and therefore denies the allegations in the first 

sentence of Paragraph 30. The remaining sentences of Paragraph 30 state legal conclusions to 

which no response is required. To the extent a response is required, Carnival denies these 

allegations. 

31. Denied. 

32. Denied. 

33. Denied. 

34. Denied. 

35. Carnival is without knowledge or information sufficient to form a belief as to the 

allegations of the first sentence of Paragraph 35 and therefore denies the allegations in the first 

sentence of Paragraph 35. The remaining sentences of Paragraph 35 state legal conclusions to 

which no response is required. To the extent a response is required, Carnival denies these 

allegations. 

36. Denied. 

37. Denied. 

38. Denied. 

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39. Denied. 

COUNT ONE 

(Declaratory Judgment of Invalidity of the ’184 Patent) 

40. Carnival hereby realleges and incorporates by reference Paragraphs 1 to 11 as if 

fully set forth herein. 

41. Admitted. 

42. Denied. 

43. Denied. 

44. Denied. 

45. Denied. 

46. Denied. 

47. Paragraph 47 states a legal conclusion to which no response is required. To the 

extent a response is required, Carnival does not contest that the Court has subject matter 

jurisdiction over the Counterclaims. Carnival denies all remaining allegations of this Paragraph 

48. Denied. 

COUNT TWO 

(Declaratory Judgment of Unenforceability of the ’184 Patent) 

49. Carnival hereby restates and incorporates by reference Paragraphs 1 to 39 as if fully 

set forth herein. 

50. Denied. 

51. Denied. 

52. Denied. 

53. Denied. 

54. Denied. 

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COUNT THREE 

(Declaratory Judgment of Invalidity of the ’514 Patent) 

55. Carnival hereby realleges and incorporates by reference Paragraphs 1 to 11 as if 

fully set forth herein. 

56. Admitted. 

57. Denied. 

58. Denied. 

59. Denied. 

60. Denied. 

61. Denied. 

62. Paragraph 62 states a legal conclusion to which no response is required. To the 

extent a response is required, Carnival does not contest that the Court has subject matter 

jurisdiction over the Counterclaims. Carnival denies all remaining allegations of this Paragraph. 

63. Denied. 

COUNT FOUR 

(Declaratory Judgment of Unenforceability of the ’514 Patent) 

64. Carnival hereby restates and incorporates by reference Paragraphs 1 to 39 as if fully 

set forth herein. 

65. Denied. 

66. Denied. 

67. Denied. 

68. Denied. 

69. As to the allegations in the first sentence of Paragraph 69, Carnival states that the 

specifications of the ’184 and ’514 Patents speak for themselves. As to the allegations in the 

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second sentence of Paragraph 69, Carnival states that Carnival admits that the inventions disclosed 

in the Carnival Patents are related to technology that pertains to guest engagement systems. 

Carnival further admits that the inventions disclosed in the ’184 and ’514 Patents are related to the 

development work on Project Trident. Carnival denies all remaining allegations in Paragraph 69. 

70. Denied. 

COUNT FIVE 

(Declaratory Judgment of Non-Infringement of the ’516 Patent) 

71. Carnival hereby realleges and incorporates by reference Paragraphs 1 to 11 as if 

fully set forth herein. 

72. Admitted. 

73. Admitted. 

74. Admitted. 

75. Paragraph 75 is a recitation of Claim 1 of the ’516 Patent to which no response is 

required as the Patent speaks for itself. 

76. Paragraph 76 is a recitation of Claim 13 of the ’516 Patent to which no response is 

required as the Patent speaks for itself. 

77. Denied. 

78. Denied. 

79. Paragraph 79 states a legal conclusion to which no response is required. To the 

extent a response is required, Carnival does not contest that the Court has subject matter 

jurisdiction over the Counterclaims. Carnival denies all remaining allegations of this Paragraph. 

80. Denied. 

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COUNT SIX 

(Declaratory Judgment of Invalidity of the ’516 Patent) 

81. Carnival hereby realleges and incorporates by reference Paragraphs 1 to 11 as if 

fully set forth herein. 

82. Admitted. 

83. Denied. 

84. Denied. 

85. Denied 

86. Denied. 

87. Denied. 

88. Paragraph 88 states a legal conclusion to which no response is required. To the 

extent a response is required, Carnival does not contest that the Court has subject matter 

jurisdiction over the Counterclaims. Carnival denies all remaining allegations of this Paragraph. 

89. Denied. 

COUNT SEVEN 

(Declaratory Judgment of Unenforceability of the ’516 Patent) 

90. Carnival hereby restates and incorporates by reference Paragraphs 1 to 39 as if 

fully set forth herein. 

91. Denied. 

92. Denied. 

93. Denied. 

94. Denied. 

95. As to the allegations in the first sentence of Paragraph 95, Carnival states that the 

specifications of the ’184 and ’516 Patents speak for themselves. As to the allegations in the 

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second sentence of Paragraph 95, Carnival states that Carnival admits that the inventions disclosed 

in the Carnival Patents are related to technology that pertains to guest engagement systems. 

Carnival further admits that the inventions disclosed in the ’184 and ’516 Patents are related to the 

development work on Project Trident. Carnival denies all remaining allegations in Paragraph 95. 

96. Denied. 

97. Carnival specifically denies each and every allegation of DeCurtis’ Counterclaims 

that has not been specifically admitted hereinabove. 

PRAYER FOR RELIEF 

The section of DeCurtis’ Counterclaims titled “Prayer for Relief,” including paragraphs 

A through G therein, set forth a prayer for relief requested by DeCurtis to which no response is 

required. However, to the extent a response is nonetheless deemed required, Carnival denies that 

DeCurtis is entitled to any relief whatsoever, including the relief requested in its Counterclaims. 

Further, to the extent DeCurtis’ Counterclaims’ Prayer for Relief is deemed to include any 

factual allegations, Carnival denies all such allegations. 

A. Carnival denies that DeCurtis is entitled to the relief as requested in this subparagraph. 

B. Carnival denies that DeCurtis is entitled to the relief as requested in this subparagraph. 

C. Carnival denies that DeCurtis is entitled to the relief as requested in this subparagraph. 

D. Carnival denies that DeCurtis is entitled to the relief as requested in this subparagraph. 

E. Carnival denies that DeCurtis is entitled to the relief as requested in this subparagraph. 

F. Carnival denies that DeCurtis is entitled to the relief as requested in this subparagraph. 

G. Carnival denies that DeCurtis is entitled to the relief as requested in this subparagraph.

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COUNTERCLAIM DEFENDANT CARNIVAL CORPORATION’S AFFIRMATIVE 

DEFENSES TO COUNTERCLAIM PLAINTIFF DECURTIS CORPORATION AND 

DECURTIS LLC’S COUNTERCLAIMS 

Counterclaim Defendant Carnival Corporation asserts the following affirmative defenses 

without assuming any legal or factual burden not otherwise assigned to it under the law and 

reserves the right to assert additional defenses if appropriate. 

First Affirmative Defense: Failure to State a Claim 

Each of DeCurtis’ Counts fails to state a claim upon which relief can be granted and 

therefore should be dismissed. Moreover, DeCurtis’ allegations of fraud on the U.S. Patent and 

Trademark Office, and all claims that rest upon that assertion, are barred because they fail to 

allege the circumstances of such fraud with requisite particularity under FED. R. CIV. P. 9(b), 

and fail to state a cognizable theory of fraud or inequitable conduct, and therefore fail to state a 

claim upon which relief can be granted. DeCurtis’ allegations rest on conclusory statements and 

recitations of elements that fail to state a plausible basis for its claims. 

Second Affirmative Defense: Estoppel 

DeCurtis’ claims, in whole or in part, are barred by its own conduct, actions, and inaction 

as alleged in Carnival’s Complaint, including its conduct in knowingly violating its contractual 

obligations to Carnival, knowingly and willfully infringing Carnival’s patents, and making false 

and unfounded accusations of fraudulent and tortious behavior, which amount to and constitute 

an estoppel as to all relief sought. 

Third Affirmative Defense: Unclean Hands 

DeCurtis’ claims, in whole or in part, are barred from recovery by the doctrine of unclean 

hands arising from its conduct, including its conduct in knowingly violating its contractual 

obligations to Carnival, knowingly and willfully infringing Carnival’s patents, knowingly 

misrepresenting Carnival’s technology as its own, and making false and unfounded accusations 

Case 1:20-cv-22945-RNS Document 264 Entered on FLSD Docket 03/11/2022 Page 11 of 14
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of fraudulent and tortious behavior. 

Fourth Affirmative Defense: No Enhanced Damages or Exceptional Case 

Carnival has not engaged in any conduct that would entitle DeCurtis to an award of 

enhanced damages, or that would make this case an exceptional case, or that would entitle 

DeCurtis to an award of attorneys’ fees. 

Fifth Affirmative Defense: Unjust Enrichment 

DeCurtis’ claims are barred, in whole or in part, because DeCurtis would be unjustly 

enriched if DeCurtis were allowed to recover all or any part of the damages alleged in DeCurtis’ 

Counterclaims. Any expenses or losses incurred by DeCurtis are based on constitutionally 

protected petitioning and/or DeCurtis’ own continued breach of its contractual obligations to 

Carnival and infringement of Carnival patents. 

Sixth Affirmative Defense: Preclusion 

DeCurtis’ claims are barred, in whole or in part, by the doctrines of law of the case, the 

mandate rule, collateral estoppel, and/or res judicata. This Court may have ruled upon issues in 

this litigation in the Court’s Order dismissing, with prejudice, certain claims by DeCurtis. Dkt. 

144. Any issue decided against DeCurtis in any of the Court’s prior orders cannot be relitigated. 

RESERVATION OF ADDITIONAL DEFENSES 

Carnival’s investigation of the claims and its defenses is continuing. Carnival reserves the 

right to assert additional defenses, such as through amendment of its Answer, that may develop 

through discovery in this action or otherwise. 

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WHEREFORE, Plaintiff/Counterclaim Defendant Carnival, having answered 

Defendant/Counterclaim Plaintiff DeCurtis’ Counterclaims, respectfully requests that this Court 

enter judgment for Carnival, and against DeCurtis, together with awarding Carnival its costs and 

reasonable attorney fees for defending against these Counterclaims, and such other and further 

relief as this Court deems just, equitable and proper. 

Respectfully submitted, 

/s/ Diana Marie Fassbender

Diana Marie Fassbender 

Florida Bar No. 0017095 

ORRICK, HERRINGTON & SUTCLIFFE LLP

 Columbia Center, 1152 15th Street, N.W. 

 Washington, D.C. 20005-1706 

 Tel: (202) 339-8533 

dszego@orrick.com 

Steven J. Routh (pro hac vice) 

T. Vann Pearce, Jr. (pro hac vice) 

Jay Jurata (pro hac vice) 

Emily Luken (pro hac vice) 

ORRICK, HERRINGTON & SUTCLIFFE LLP

 Columbia Center, 1152 15th Street, N.W. 

 Washington, D.C. 20005-1706 

 Tel: (202) 339-8533 

srouth@orrick.com

vpearce@orrick.com

jjurata@orrick.com

 eluken@orrick.com 

 Jorge Espinosa (Fla. Bar No. 779032) 

 Robert R. Jimenez (Fla. Bar. No. 72020) 

 GRAYROBINSON, P.A. 

 333 S.E. 2nd Avenue, Suite 3200 

 Miami, FL 33131 

 Tel: (305) 416-6880 

 Facsimile: (305) 416-6887 

 jorge.espinosa@gray-robinson.com 

 robert.jimenez@gray-robinson.com 

 Robert L. Uriarte (pro hac vice) 

 ORRICK, HERRINGTON & SUTCLIFFE LLP

 1000 Marsh Road 

 Menlo Park, CA 94025 

 Tel: (650) 289-7105 

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ruriarte@orrick.com 

 Olivia Clements (pro hac vice) 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

51 West 52nd Street 

New York, NY 10019-6142 

Tel: (212) 506-5000 

oclements@orrick.com 

Johannes Hsu (pro hac vice) 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

2050 Main Street 

Suite 1100 

Irvine, CA 92614-8255 

Tel: (949) 567-6700 

johanneshsu@orrick.com 

David R. Medina (pro hac vice) 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

777 South Figueroa Street 

Suite 3200 

Los Angeles. CA 90017-5855 

Tel: (213) 629-2020 

dmedina@orrick.com 

Sheryl Koval Garko (pro hac vice)

Laura Najemy (pro hac vice)

ORRICK, HERRINGTON & SUTCLIFFE LLP 

222 Berkeley Street 

Suite 2000 

Boston, MA 02116 

(617) 880-1800 

sgarko@orrick.com 

lnajemy@orrick.com 

Attorney for Plaintiff/Counterclaim Defendant 

Carnival Corporation 

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