UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA 

Case No. 20-23179-Civ-COOKE/GOODMAN 

MOUNTECH IP LLC, 

Plaintiff, 

vs. 

HMD AMERICA, INC., 

Defendant. 

____________________________________/

DEFENDANT’S ANSWER 

Defendant HMD America, Inc. (“HMD”) hereby answers the Complaint for 

Infringement of Patent (Dkt. 1) (“Complaint”) filed by Plaintiff Mountech IP LLC 

(“Plaintiff”) as follows. 

NATURE OF THE ACTION 

With respect to the Complaint’s specific allegations, claims, and prayers for relief in 

each correspondingly numbered paragraph, HMD responds as follows, based on information 

currently available to it and after a reasonable inquiry, reserving the right to amend: 

1. HMD denies that it infringes either of U.S. Patent Nos. 7,991,784 (“the ’784 

Patent”) or 8,311,805 (“the ’805 Patent”) (together, the “Asserted Patents”). HMD admits 

that attached to the Complaint are Exhibits A and B, which purport to be the ’784 Patent and 

’805 Patent, respectively. To the extent this paragraph otherwise consists of conclusions of 

law, no response is required. 

2. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations regarding Plaintiff and, on that basis, denies them. 

3. HMD admits that it is a corporation organized and existing under the laws of 

Florida, with its principal place of business at 1200 Brickell Ave., Suite 510, Miami, Florida 

33131. Otherwise, denied. 

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4. HMD admits that it provides products and services throughout the United 

States, including in this judicial district. Otherwise, denied. 

5. To the extent this paragraph consists of conclusions of law, no response is 

required. Otherwise, denied. 

6. To the extent this paragraph consists of conclusions of law, no response is 

required. Otherwise, denied. 

7. For purposes of this action and Answer only, HMD does not dispute the 

Court’s personal jurisdiction over HMD. Otherwise, denied. 

8. HMD denies that it has infringed the Asserted Patents. For purposes of this 

action and Answer only, HMD does not dispute the Court’s personal jurisdiction over HMD. 

9. HMD denies that it has infringed the Asserted Patents. For purposes of this 

action and Answer only, HMD does not contest Plaintiff’s assertion of venue in the Southern 

District of Florida. 

PLAINTIFF’S FACTUAL ALLEGATIONS 

10. HMD admits that, on its face, the ’784 Patent is titled “Automatic dynamic 

contextual data entry completion system” and identifies its date of issuance by the United 

States Patent and Trademark Office (“USPTO”) as August 2, 2011. HMD admits that Exhibit 

A to the Complaint purports to be a copy of the ’784 Patent. HMD lacks knowledge or 

information sufficient to form a belief as to the truth of the remaining allegations and, on that 

basis, denies them. 

11. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

12. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

13. Denied. 

14. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

15. Denied. 

16. Denied. 

17. Denied. 

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18. HMD admits that, on its face, the ’805 Patent is titled “Automatic dynamic 

contextual data entry completion system” and identifies its date of issuance by the USPTO as 

November 13, 2012. HMD admits that Exhibit B to the Complaint purports to be a copy of 

the ’805 Patent. HMD lacks knowledge or information sufficient to form a belief as to the 

truth of the remaining allegations and, on that basis, denies them. 

19. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

20. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

21. Denied. 

22. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

23. Admitted. 

24. Admitted. 

25. Denied. 

26. Denied. 

27. Denied. 

28. Denied. 

29. HMD admits that Mountech attached a chart as Exhibit C to its Complaint but 

denies that the chart demonstrates infringement of any product. HMD lacks knowledge or 

information sufficient to form a belief as to the truth of the remaining allegations and, on that 

basis, denies them. 

30. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

31. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

32. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

33. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

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34. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

35. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

36. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

37. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

38. Denied. 

39. HMD admits that Mountech attached a chart as Exhibit D to its Complaint but 

denies that the chart demonstrates infringement of any product. HMD lacks knowledge or 

information sufficient to form a belief as to the truth of the remaining allegations and, on that 

basis, denies them. 

40. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

41. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

42. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

43. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

44. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

45. Denied. 

46. HMD incorporates by reference its responses in paragraphs 1–45 above. 

47. Denied. 

48. Denied. 

49. Denied. 

50. Denied. 

51. Denied. 

52. Denied. 

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53. Denied. 

54. Denied. 

55. HMD lacks knowledge or information sufficient to form a belief as to the truth 

of these allegations and, on that basis, denies them. 

RESPONSE TO JURY DEMAND 

56. No response is required to Plaintiff’s demand for a trial by jury, but pursuant 

to Fed. R. Civ. P. 38(b), HMD hereby demands a trial by jury on all issues raised by the 

Complaint which are properly triable to a jury, including without limitation HMD’s defenses. 

RESPONSE TO PLAINTIFF’S PRAYER FOR RELIEF 

Having responded to the allegations in the Complaint as set forth above, HMD denies 

that Plaintiff is entitled to any relief, including the relief specified in its Prayer for Relief. 

GENERAL DENIAL 

Unless specifically admitted, HMD denies each and every allegation contained in the 

Complaint. 

DEFENSES 

Subject to the responses above, HMD alleges and asserts the following defenses in 

response to the allegations, undertaking the burden of proof only as to those defenses deemed 

affirmative defenses by law, regardless of how such defenses are denominated herein. In 

addition to the defenses described below, HMD specifically reserves all rights to allege 

additional defenses that become known through the course of discovery. 

First Defense – Failure to State a Claim 

1. The Complaint fails to state a claim upon which relief can be granted. 

Second Defense – Noninfringement 

2. HMD does not infringe and has not infringed, either literally or under the 

doctrine of equivalents, by direct, contributory or induced infringement, any valid and 

enforceable claim of the ’784 Patent or the ’805 Patent. 

Third Defense – Invalidity 

3. Each asserted claim of the ’784 Patent and the ’805 Patent is invalid, 

unenforceable, and/or directed to unpatentable subject matter for failure to satisfy one or 

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more of the conditions of patentability, including without limitation those set forth in 35 

U.S.C. §§ 101, 102, 103, 112, and those associated with the judicially-created prohibition 

against obviousness-type double patenting. 

Fourth Defense – Estoppel and Equitable Relief 

4. Because of statements and/or representations made to and by the USPTO 

while prosecuting the patents identified in the complaint, Plaintiff’s claims for relief are barred 

by one or more of the doctrines of judicial estoppel, agency estoppel, prosecution history 

estoppel, waiver, acquiescence, and/or unclean hands. HMD will identify such statements 

under the contention schedule set forth in this District. 

Fifth Defense – Limitation on Patent Damages 

5. Plaintiff’s claims for damages against HMD are limited by 35 U.S.C. §§ 286, 

287 and/or 288. 

Sixth Defense – License 

6. Plaintiff’s accusations of infringement involve one or more third-party 

components which on information and belief may be licensed to one or more of the Asserted 

Patents. 

Seventh Defense - Exhaustion 

7. On information and belief, Plaintiff’s alleged patent rights in one or more 

products identified in the Complaint may have been exhausted prior to HMD’s accused acts. 

Eighth Defense – No Equitable Relief 

8. Plaintiff’s remedies, if any, are limited to remedies at law which are adequate 

because any alleged injuries are not immediate nor irreparable such as would be required to 

support an injunction or other equitable relief. 

Ninth Defense – Good Faith, No Exceptional Case 

9. HMD has engaged in all relevant activities in good faith, thereby precluding 

Plaintiff from recovering any attorneys’ fees under 35 U.S.C. § 285, even if Plaintiff prevails 

on the merits. 

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Tenth Defense – Lack of Exclusionary Right 

10. To the extent Plaintiff lacks an exclusionary right over at least some of the 

activities accused of infringement, Plaintiff lacks standing to bring its claims. 

Eleventh Defense – Lack of All Substantial Rights 

11. To the extent Plaintiff lacks all substantial rights in the ’784 Patent and/or the 

’805 Patent, Plaintiff lacks standing to bring its claims. 

HMD’S PRAYER FOR RELIEF 

WHEREFORE, HMD respectfully requests that the Court enter an Order and 

Judgment against Plaintiff as follows: 

A. A dismissal with prejudice of Plaintiff’s action against HMD; 

B. A denial of any and all relief sought by Plaintiff; 

C. A declaration that HMD does not infringe and has not infringed, either literally 

or under the doctrine of equivalents, by direct, contributory or induced 

infringement, each and every valid and enforceable claim of U.S. Patent Nos. 

7,991,784 and 8,311,805; 

D. A declaration that the claims of U.S. Patent Nos. 7,991,784 and 8,311,805 are 

invalid and/or unenforceable; 

E. A judgment limiting or barring Plaintiff’s ability to enforce in equity U.S. 

Patent Nos. 7,991,784 and 8,311,805; 

F. An award to HMD of its attorneys’ fees and costs incurred in connection with 

this action; 

G. An injunction barring Plaintiff, its agents, attorneys, affiliates, and all persons 

acting on behalf or in concert with Plaintiff from alleging that HMD infringes 

any claim of U.S. Patent Nos. 7,991,784 and 8,311,805; and 

H. Such other and further relief as the Court deems just and proper. 

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Dated: October 2, 2020 Respectfully submitted, 

/s/Joseph W. Bain 

JOSEPH W. BAIN, ESQ. 

Florida Bar No. 860360 

Email Address: jbain@shutts.com 

SHUTTS & BOWEN LLP 

1100 CityPlace Tower 

525 Okeechobee Boulevard 

West Palm Beach, Florida 33401 

Telephone: (561) 835-8500 

Facsimile: (561) 650-8530 

WILLIAM J. MCCABE, Esq. 

Admitted Pro hac vice

wmccabe@perkinscoie.com 

MATTHEW J. MOFFA, Esq. 

Admitted Pro hac vice

mmoffa@perkinscoie.com 

PERKINS COIE LLP 

1155 Avenue of the Americas, 22nd floor 

New York, NY 10036 

Telephone: (212) 262-6900 

Facsimile: (212) 977-1649 

Attorneys for Defendant HMD America, 

Inc. 

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CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on this 2nd day of October 2020, I electronically filed the 

foregoing with the Clerk of Court by using the CM/ECF system, which will automatically 

send email notification of such filing to all counsel of record. 

Howard L. Wernow 

Aegis Tower – Suite 1100 

4940 Munson Street NW 

Canton, OH 44718 

Phone: 330-244-1174 

Fax: 330-244-1173 

Email: howard.wernow@sswip.com

Email: litigation@sswip.com

Email: wernowlaw@gmail.com

Attorneys for Plaintiff, MOUNTECH IP LLC 

 

By: /s/ Joseph W. Bain

Joseph W. Bain 

Florida Bar No. 860360 

jbain@shutts.com 

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