-1- 

UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

ECOFACTOR, INC., 

Plaintiff, 

v. 

GOOGLE LLC, 

Defendant. 

Case No. 6:20-cv-00075-ADA 

JURY TRIAL DEMANDED 

GOOGLE LLC’S ANSWER TO ECOFACTOR, INC.’S COMPLAINT 

Defendant Google LLC (“Google”) hereby states the following as its Answer to the 

Complaint of Plaintiff EcoFactor, Inc. (“Plaintiff” or “EcoFactor”). Except as otherwise 

expressly admitted below, Google denies each allegation of the Complaint. 

INTRODUCTION 

1. Google admits that this is a patent infringement action. Google denies the 

remaining allegations of paragraph 1. Google specifically denies that it has committed any act of 

patent infringement. 

PARTIES 

2. Google lacks knowledge or information to form a belief about the truth of the 

allegations of paragraph 2 and, therefore, denies them. 

3. Google lacks knowledge or information to form a belief about the truth of the 

allegations of paragraph 3 and, therefore, denies them. 

4. Google lacks knowledge or information to form a belief about the truth of the 

allegations of paragraph 4 and, therefore, denies them. 

Case 6:20-cv-00075-ADA Document 16 Filed 05/27/20 Page 1 of 20
5. Google admits that Google LLC is a wholly owned subsidiary of Alphabet, Inc. 

and a Delaware limited liability company with a principal place of business located at 1600 

Amphitheatre Parkway, Mountain View, California 94043. Google admits that it operates a 

division named Google Nest (“Nest”), which designs smart thermostats. Google admits that its 

registered agent is the Corporation Service Company, located at 211 East 7th Street, Suite 620, 

Austin, Texas 78701. Google admits it has been registered to do business in the State of Texas 

since November 17, 2006. Google denies the remaining allegations of paragraph 5. 

JURISDICTION AND VENUE 

6. Google admits that the Complaint purports to arise under the patent laws of the 

United States, Title 35 of the United States Code. Google admits that this Court has subject 

matter jurisdiction over patent law claims arising under 28 U.S.C. §§ 1331 and 1338(a). Google 

denies the remaining allegations of paragraph 6. 

7. Google admits that it has conducted and does conduct business in the State of 

Texas and within the Western District of Texas. Google denies the remaining allegations of 

paragraph 7. Google specifically denies that it has committed and continues to commit acts of 

infringement in the Western District of Texas or any other District. 

8. Google admits that it maintains a corporate office at 500 West 2nd Street, Austin, 

Texas 78701. Google denies the remaining allegations of paragraph 8. Google specifically 

denies that it has committed acts of direct or indirect infringement in the Western District of 

Texas or any other District. Google denies that venue over Plaintiff’s patent claims is proper 

under 28 U.S.C. §§ 1391(c) and 1400(b) under the proper statutory interpretation. See generally, 

TC Heartland LLC v. Kraft Foods Group Brands, LLC, 581 U.S. 1517 (2017). Google further 

denies that this district is the most convenient venue for adjudicating Plaintiff’s claims against 

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Google. The Northern District of California is the most convenient venue for adjudicating 

Plaintiff’s claims against Google. 

COUNT I – INFRINGEMENT OF U.S. PATENT NO. 8,180,492 

9. Google reasserts and incorporates its responses to paragraphs 1 through 8 of the 

Complaint. 

10. Google admits that what appears to be a copy of United States Patent No. 

8,180,492 (“the ’492 Patent”) is attached as Exhibit 1 to the Complaint. Google admits that 

Exhibit 1 to the Complaint is titled “System and method for using a networked electronic device 

as an occupancy sensor for an energy management system” and bears an issue date of May 15, 

2012. Google denies that the ’492 Patent was duly and legally issued. Google lacks knowledge 

or information to form a belief about the truth of the remaining allegations of paragraph 10 

and, therefore, denies them. 

11. Google admits that it offers for sale and sells the 3rd Generation Google Nest 

Learning Thermostat. Google denies the remaining allegations of paragraph 11. Google 

specifically denies that it directly infringes any claims of the ’492 Patent, either literally or under 

the doctrine of equivalents. 

12. Google admits that it became aware of the Complaint and EcoFactor’s allegations 

contained therein when it was served with the Complaint. Google denies the remaining 

allegations of paragraph 12. 

13. Denied. 

14. Denied. 

15. Denied. 

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16. Google admits that claim 10 of the ’492 Patent recites: “A system for altering the 

setpoint on a thermostat for space conditioning of a structure comprising: at least one thermostat 

having at least a first temperature setpoint associated with a non-occupied structure, and at least a 

second temperature setpoint associated with the existence of occupants in said structure.” 

Google admits that paragraph 16 of the Complaint includes an excerpt from the web page located 

at https://support.google.com/googlenest/answer/9249866?hl=en&ref_topic=9361968 as 

available on or around the filing date of the Complaint. Google denies the remaining allegations 

of paragraph 16. 

17. Google admits that claim 10 of the ’492 Patent recites: “one or more electronic 

devices having at least a graphic user interface comprising a display wherein said electronic 

devices receive input from one or more users and wherein use of said electronic devices 

comprises at least one of cursor movement, keystrokes or other user interface actions intended to 

alter a state of one or more of said electronic devices by one or more users wherein activity of 

one or more networked electronic devices indicates whether said thermostat should be changed 

from said first temperature setpoint to said second temperature setpoint.” Google admits that 

paragraph 17 of the Complaint includes excerpts from the web pages located at 

https://support.google.com/googlenest/answer/9249866?hl=en&ref_topic=9361968, 

https://support.google.com/googlenest/answer/9244728, and 

https://support.google.com/googlenest/answer/9246532 as available on or around the filing date 

of the Complaint. Google denies the remaining allegations of paragraph 17. 

18. Google admits that claim 10 of the ’492 Patent recites: “wherein said electronic 

devices and said thermostat are connected to a network; an application comprising one or more 

computer processors in communication with said network, wherein said application determines 

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whether said one or more electronic devices are in use and in response, whether said thermostat 

is set to said first temperature setpoint that indicates said structure is not occupied.” Google 

admits that paragraph 18 of the Complaint includes excerpts from the web pages located at 

https://support.google.com/googlenest/answer/9249866?hl=en&ref_topic=9361968, 

https://support.google.com/googlenest/answer/9244728, and 

https://support.google.com/googlenest/answer/9261489 as available on or around the filing date 

of the Complaint. Google denies the remaining allegations of paragraph 18. 

19. Google admits that claim 10 of the ’492 Patent recites: “said application 

determining that said one or more users has previously indicated a preference that said user’s 

input be obtained before automatically changing said first HVAC temperature setpoint to said 

second HVAC temperature setpoint indicating that said structure is deemed to be occupied; said 

application prompting said one or more users based on said determining that said one or more of 

said user's input should be obtained, wherein said application provides electronic notice to one or 

more of said users of said electronic devices that said thermostat is set for a non-occupied 

structure and whether to keep said first temperature setpoint or change to said second 

temperature setpoint; and wherein said application in response to said prompting, receives input 

from said one or more users to keep said first HVAC temperature setpoint; and wherein said 

thermostat is kept at said first temperature setpoint based upon said input from said one or more 

users.” Google admits that paragraph 19 of the Complaint includes excerpts from the webpages 

located at https://support.google.com/googlenest/answer/9249866?hl=en&ref_topic=9361968, 

https://support.google.com/googlenest/answer/9244728, 

https://support.google.com/googlenest/answer/9261489, 

https://support.google.com/googlenest/answer/9243487, 

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https://support.google.com/googlenest/answer/9246532, and 

https://support.google.com/googlenest/answer/9257400 as available on or around the filing date 

of the Complaint. Google denies the remaining allegations of paragraph 19. 

20. Google admits that it offers for sale and sells the 3rd Generation Google Nest 

thermostats. Google denies the remaining allegation of paragraph 20. Google specifically 

denies that it has injured Plaintiff and denies that it is liable for infringement of the ’492 Patent 

pursuant to 35 U.S.C. § 271. 

21. Denied. Google specifically denies that it infringes or has infringed the ’492 

Patent and denies that Plaintiff is entitled to any damages, interests, or costs. 

22. Denied. Google specifically denies that it infringes or has infringed the ’492 

Patent and denies that it has injured and will continue to injure Plaintiff. 

COUNT II – INFRINGEMENT OF U.S. PATENT NO. 8,412,488 

23. Google reasserts and incorporates its responses to paragraphs 1 through 22 of the 

Complaint. 

24. Google admits that what appears to be a copy of United States Patent No. 

8,412,488 (“the ’488 Patent”) is attached as Exhibit 2 to the Complaint. Google admits that 

Exhibit 2 to the Complaint is titled “System and method for using a network of thermostats as 

tool to verify peak demand reduction” and bears an issue date of April 2, 2013. Google denies 

that the ’488 Patent was duly and legally issued. Google lacks knowledge or information to 

form a belief about the truth of the remaining allegations of paragraph 24 and, therefore, 

denies them. 

25. Google admits that it offers for sale and sells the 3rd Generation Google Nest 

Learning Thermostat. Google denies the remaining allegations of paragraph 25. Google 

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specifically denies that it directly infringes any claims of the ’488 Patent, either literally or under 

the doctrine of equivalents. 

26. Google admits that it became aware of the Complaint and EcoFactor’s allegations 

contained therein when it was served with the Complaint. Google denies the remaining 

allegations of paragraph 26. 

27. Denied. 

28. Denied. 

29. Denied. 

30. Google admits that claim 1 of the ’488 Patent recites: “A system for monitoring 

the operational status of an HVAC system comprising: at least one HVAC control system 

associated with a first structure that receives temperature measurements from at least a first 

structure conditioned by at least one HVAC system.” Google admits that paragraph 30 of the 

Complaint includes an excerpt from the web page located at 

https://support.google.com/googlenest/answer/9246532?hl=en as available on or around the 

filing date of the Complaint. Google denies the remaining allegations of paragraph 30. 

31. Google admits that claim 1 of the ’488 Patent recites: “one or more processors 

that receive measurements of outside temperatures from at least one source other than said 

HVAC system.” Google admits that paragraph 31 of the Complaint includes excerpts from the 

web pages located at https://support.google.com/googlenest/answer/9246532, 

https://store.google.com/product/nest_learning_thermostat_3rd_gen, and 

https://support.google.com/googlenest/answer/9249796 as available on or around the filing date 

of the Complaint. Google denies the remaining allegations of paragraph 31. 

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32. Google admits that claim 1 of the ’488 Patent recites: “wherein said one or more 

processors compares the inside temperature of said first structure and the outside temperature 

over time to derive an estimation for the rate of change in inside temperature of said first 

structure in response to outside temperature.” Google admits that paragraph 32 of the Complaint 

includes excerpts from the web pages located at 

https://support.google.com/googlenest/answer/9249796 and 

https://support.google.com/googlenest/answer/9246532 as available on or around the filing date 

of the Complaint. Google denies the remaining allegations of paragraph 32. 

33. Google admits that it offers for sale and sells the 3rd Generation Google Nest 

thermostats. Google denies the remaining allegations of paragraph 33. Google specifically 

denies that it has injured Plaintiff and denies that it is liable for infringement of the ’488 Patent 

pursuant to 35 U.S.C. § 271. 

34. Denied. Google specifically denies that it infringes or has infringed the ’488 

Patent and denies that Plaintiff is entitled to any damages, interests, or costs. 

35. Denied. Google specifically denies that it infringes or has infringed the ’488 

Patent and denies that it has injured and will continue to injure Plaintiff. 

COUNT III – INFRINGEMENT OF U.S. PATENT NO. 8,738,327 

36. Google reasserts and incorporates its responses to paragraphs 1 through 35 of the 

Complaint. 

37. Google admits that what appears to be a copy of United States Patent No. 

8,738,327 (“the ’327 Patent”) is attached as Exhibit 3 to the Complaint. Google admits that 

Exhibit 3 to the Complaint is titled “System and method for using a network of thermostats as 

tool to verify peak demand reduction” and bears an issue date of May 27, 2014. Google denies 

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that the ’327 Patent was duly and legally issued. Google lacks knowledge or information to 

form a belief about the truth of the remaining allegations of paragraph 37 and, therefore, 

denies them. 

38. Google admits that it offers for sale and sells the 3rd Generation Google Nest 

Learning Thermostat. Google denies the remaining allegations of paragraph 38. Google 

specifically denies that it directly infringes any claims of the ’327 Patent, either literally or under 

the doctrine of equivalents. 

39. Google admits that it became aware of the Complaint and EcoFactor’s allegations 

contained therein when it was served with the Complaint. Google denies the remaining 

allegations of paragraph 39. 

40. Denied. 

41. Denied. 

42. Google admits that claim 1 of the ’327 Patent recites: “A system for controlling 

the operational status of an HVAC system comprising: at least one thermostat associated with a 

structure that receives temperature measurements from inside the structure, the structure 

conditioned by at least one HVAC system, the thermostat having at least a first setting stored 

therein.” Google admits that paragraph 42 of the Complaint includes excerpts from the web 

pages located at https://support.google.com/googlenest/answer/9246532?hl=en and 

https://support.google.com/googlenest/answer/9249866?hl=en&ref_topic=9361968 as available 

on or around the filing date of the Complaint. Google denies the remaining allegations of 

paragraph 42. 

43. Google admits that claim 1 of the ’327 Patent recites: “one or more servers 

located remotely from the structure, the one or more servers configured to receive measurements 

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of outside temperatures from at least one source other than the HVAC system.” Google admits 

that paragraph 43 of the Complaint includes excerpts from the web pages located at 

https://support.google.com/googlenest/answer/9246532, 

https://store.google.com/product/nest_learning_thermostat_3rd_gen, and 

https://support.google.com/googlenest/answer/9249796 as available on or around the filing date 

of the Complaint. Google denies the remaining allegations of paragraph 43. 

44. Google admits that claim 1 of the ’327 Patent recites: “the one or more servers are 

further configured to communicate with the thermostat via a network, wherein the one or more 

servers receive inside temperatures from the thermostat and compares the inside temperatures of 

the structure and the outside temperatures over time to derive an estimation for the rate of change 

in inside temperature of the structure in response to outside temperature.” Google admits that 

paragraph 44 of the Complaint includes excerpts from the web pages located at 

https://support.google.com/googlenest/answer/9246532, 

https://store.google.com/product/nest_learning_thermostat_3rd_gen, and 

https://support.google.com/googlenest/answer/9249796 as available on or around the filing date 

of the Complaint. Google denies the remaining allegations of paragraph 44. 

45. Google admits that claim 1 of the ’327 Patent recites: “the one or more servers are 

further configured to receive a demand reduction request and determine whether the structure is 

associated with demand rejection request, and based on the determination that the structure is 

associated with the demand reduction request, the one or more servers are further configured to 

send a signal to the thermostat to change the setting to a second setting to reduce electricity 

demand by the HVAC system.” Google denies the remaining allegations of paragraph 45. 

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46. Google admits that it offers for sale and sells the 3rd Generation Google Nest 

thermostats. Google denies the remaining allegation of paragraph 46. Google specifically 

denies that it has injured Plaintiff and denies that it is liable for infringement of the ’327 Patent 

pursuant to 35 U.S.C. § 271. 

47. Denied. Google specifically denies that it infringes or has infringed the ’327 

Patent. Google denies that Plaintiff is entitled to any damages, interests, or costs. 

48. Denied. Google specifically denies that it infringes or has infringed the ’327 

Patent. Google denies that it has injured and will continue to injure Plaintiff. 

COUNT IV – INFRINGEMENT OF U.S. PATENT NO. 10,534,382 

49. Google reasserts and incorporates its responses to paragraphs 1 through 48 of the 

Complaint. 

50. Google admits that what appears to be a copy of United States Patent No. 

10,534,382 (“the ’382 Patent”) is attached as Exhibit 4 to the Complaint. Google admits that 

Exhibit 4 to the Complaint is titled “System and method for using a wireless device as a sensor 

for an energy management system” and bears an issue date of January 14, 2020. Google denies 

that the ’382 Patent was duly and legally issued. Google lacks knowledge or information to 

form a belief about the truth of the remaining allegations of paragraph 50 and, therefore, 

denies them. 

51. Google admits that it offers for sale and sells the 3rd Generation Google Nest 

Learning Thermostat. Google denies the remaining allegations of paragraph 51. Google 

specifically denies that it directly infringes any claims of the ’382 Patent, either literally or under 

the doctrine of equivalents. 

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52. Google admits that it became aware of the Complaint and EcoFactor’s allegations 

contained therein when it was served with the Complaint. Google denies the remaining 

allegations of paragraph 52. 

53. Denied. 

54. Denied. 

55. Denied. 

56. Google admits that claim 1 of the ’382 Patent recites: “A system for controlling 

an HVAC system at a user’s building, the system comprising: a memory; and one or more 

processors with circuitry and code designed to execute instructions.” Google admits that 

paragraph 56 of the Complaint includes excerpts from the web pages located at 

https://support.google.com/googlenest/answer/9249866?hl=en&ref_topic=9361968, 

https://support.google.com/googlenest/answer/9244728, 

https://support.google.com/googlenest/answer/9246532, and 

https://support.google.com/googlenest/answer/9261489 as available on or around the filing date 

of the Complaint. Google denies the remaining allegations of paragraph 56. 

57. Google admits that claim 1 of the ’382 Patent recites: “the one or more processors 

with circuitry and code designed to execute instructions to receive a first data from at least one 

sensor, wherein the first data from the at least one sensor includes a measurement of at least one 

characteristic of the building.” Google admits that paragraph 57 of the Complaint includes 

excerpts from the web pages located at 

https://support.google.com/googlenest/answer/9249866?hl=en&ref_topic=9361968, 

https://support.google.com/googlenest/answer/9244728, and 

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https://support.google.com/googlenest/answer/9246532 as available on or around the filing date 

of the Complaint. Google denies the remaining allegations of paragraph 57. 

58. Google admits that claim 1 of the ’382 Patent recites: “the one or more processors 

with circuitry and code designed to execute instructions to receive a second data from a network 

connection, wherein the second data from the network connection is collected from a source 

external to the building, wherein the second data from the network connection is received via the 

Internet.” Google denies the remaining allegations of paragraph 58. 

59. Google admits that claim 1 of the ’382 Patent recites: “the one or more processors 

with circuitry and code designed to execute instructions to receive a first temperature setpoint for 

the building corresponding to a desired temperature setting when the building is occupied, and a 

second temperature setpoint for the building corresponding to a desired temperature setting when 

the building is unoccupied.” Google denies the remaining allegations of paragraph 59. 

60. Google admits that claim 1 of the ’382 Patent recites: “the one or more processors 

with circuitry and code designed to execute instructions to receive commands through the 

Internet by way of a remote interface on a mobile, wireless device running software application 

code; wherein the interface is configured to allow the user to adjust temperature setpoints for the 

HVAC system; the one or more processors with circuitry and code designed to execute 

instructions to send user-specific data through the Internet, wherein user-specific information 

about the building and HVAC system is generated based at least in part on the user-specific data, 

wherein the user-specific information is configured to be presented on a user interface on a 

mobile, wireless device running software application code via the Internet.” Google denies the 

remaining allegations of paragraph 60. 

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61. Google admits that claim 1 of the ’382 Patent recites: “the one or more processors 

with circuitry and code designed to execute instructions to determine whether the building is 

occupied or unoccupied, and based on that determination, to control the HVAC system to 

provide heating or cooling to the building at an operational temperature.” Google denies the 

remaining allegations of paragraph 61. 

62. Google admits that claim 1 of the ’382 Patent recites: “wherein the one or more 

processors comprises a first processor with circuitry and code designed to execute instructions, 

which is located remotely from the memory and is not electrically connected to the memory; the 

first processor with circuitry and code designed to execute instructions to communicate with the 

memory.” Google denies the remaining allegations of paragraph 62. 

63. Google admits that claim 1 of the ’382 Patent recites: “wherein the memory is 

configured to store historical values of the first data and second data.” Google admits that 

paragraph 63 of the Complaint includes excerpts from the web pages located at 

https://support.google.com/googlenest/answer/9249866?hl=en&ref_topic=9361968, 

https://support.google.com/googlenest/answer/9247300, 

https://support.google.com/googlenest/answer/9247510, and 

https://support.google.com/googlenest/answer/9246532 as available on or around the filing date 

of the Complaint. Google denies the remaining allegations of paragraph 63. 

64. Google admits that it offers for sale and sells the 3rd Generation Google Nest 

thermostats. Google denies the remaining allegations of paragraph 64. Google specifically 

denies that it has injured Plaintiff and denies that it is liable for infringement of the ’382 Patent 

pursuant to 35 U.S.C. § 271. 

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65. Denied. Google specifically denies that it infringes or has infringed the ’382 

Patent and that Plaintiff is entitled to any damages, interests, or costs. 

66. Denied. Google specifically denies that it infringes or has infringed the ’382 

Patent and denies that it has injured and will continue to injure Plaintiff. 

PRAYER FOR RELIEF 

67. No response is required for the paragraphs setting forth the statement of relief 

requested by Plaintiff. Google denies that Plaintiff is entitled to any of the requested relief and 

denies any allegations. 

AFFIRMATIVE DEFENSES 

Subject to the responses above, Google 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 affirmative defenses described below, subject to its responses above, Google 

specifically reserves all rights to allege additional affirmative defenses that become known 

through the course of discovery. 

FIRST DEFENSE – NON-INFRINGEMENT 

68. Google has not infringed and does not infringe any valid and enforceable claim of 

the ’492 Patent, the ’488 Patent, the ’327 Patent, or the ’382 Patent, either directly or indirectly, 

and either literally or under the doctrine of equivalents. Google is not liable for infringement of 

any valid and enforceable claim of the ’492 Patent, the ’488 Patent, the ’327 Patent, or the ’382 

Patent. Google also has not willfully infringed the ’492 Patent, the ’488 Patent, the ’327 Patent, 

or the ’382 Patent. 

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SECOND DEFENSE – PATENT INVALIDITY 

69. The claims of the ’492 Patent, the ’488 Patent, the ’327 Patent, and the ’382 

Patent are invalid and unenforceable under 35 U.S.C. § 101 because the claims are directed to 

abstract ideas or other non-statutory subject matter. 

70. The claims of the ’492 Patent, the ’488 Patent, the ’327 Patent, and the ’382 

Patent are invalid and unenforceable under 35 U.S.C. § 102 because the claims lack novelty and 

are taught and suggested by the prior art. 

71. The claims of the ’492 Patent, the ’488 Patent, the ’327 Patent, and the ’382 

Patent are invalid and unenforceable under 35 U.S.C. § 103 because the claims are obvious in 

view of the prior art. 

72. The claims of the ’492 Patent, the ’488 Patent, the ’327 Patent, and the ’382 

Patent are invalid due to obviousness-type double patenting. 

73. The claims of the ’492 Patent, the ’488 Patent, the ’327 Patent, and the ’382 

Patent are invalid and unenforceable for failure to satisfy the conditions set forth in 35 U.S.C. 

§ 112, including failure of written description, lack of enablement, and claim indefiniteness. 

74. The claims of the ’492 Patent, the ’488 Patent, the ’327 Patent, and the ’382 

Patent are invalid and unenforceable for failure to satisfy the conditions set forth in 35 U.S.C. 

§ 116. 

THIRD DEFENSE – PROSECUTION HISTORY ESTOPPEL 

75. By reason of statements, representations, concessions, admissions, arguments, 

and/or amendments, whether explicit or implicit, made by or on behalf of the applicants during 

the prosecution of the patent applications that led to the issuance of the ’492 Patent, the ’488 

Patent, the ’327 Patent, and/or the ’382 Patent, Plaintiff’s claims against Google are barred in 

whole or in part by the doctrine of prosecution history estoppel. 

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FOURTH DEFENSE – ESTOPPEL 

76. Upon information and belief, Plaintiff’s claims against Google are barred, in 

whole or in part, by the doctrine of unclean hands, the doctrine of estoppel, prosecution laches, 

disclaimer, patent misuse, and/or waiver. 

FIFTH DEFENSE – COLLATERAL ESTOPPEL 

77. Upon information and belief, Plaintiff’s claims against Google are barred, in 

whole or in part, by the doctrine of collateral estoppel, the Kessler doctrine, or the doctrine of res 

judicata. 

SIXTH DEFENSE – IMPROPER VENUE 

78. Venue for this case is not proper in this district. Plaintiff is barred from pursuing 

its claims in the Western District of Texas because venue is improper under the proper statutory 

interpretation of 28 U.S.C. §§ 1391(c) and 1400(b). 

SEVENTH DEFENSE – LIMITATION ON PATENT DAMAGES 

79. Plaintiff’s claims for damages, if any, against Google for alleged infringement of 

the asserted patents are limited by 35 U.S.C. §§ 286, 287, and/or 288. 

EIGHTH DEFENSE – SUBSTANTIAL NON-INFRINGING USES 

80. Any and all products or actions accused of infringement have substantial uses that 

do not infringe and do not induce or contribute to the alleged infringement of the claims of the 

asserted patents. 

NINTH DEFENSE – FAILURE TO STATE A CLAIM 

81. Plaintiff’s Complaint fails to state a claim upon which relief may be granted, 

including, but not limited to, failure of Plaintiff’s Complaint to meet the standard for pleading set 

by the Supreme Court in Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009) and Bell Atlantic Corp. v. 

Twombly, 550 U.S. 544 (2007). 

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DEMAND FOR JURY TRIAL 

In accordance with Fed. R. Civ. P. 38(b), Google demands a trial by jury on all issues so 

triable. 

PRAYER FOR RELIEF 

WHEREFORE, Google prays for judgment as follows: 

A. A judgment dismissing Plaintiff’s Complaint against Google with prejudice; 

B. A declaration that Google has not infringed, contributed to the infringement of, or 

induced others to infringe, either directly or indirectly, and either literally or under the doctrine 

of equivalents, any valid and enforceable claim of the asserted patents; 

C. A declaration that the asserted patents are invalid and unenforceable; 

D. A declaration that this case is exceptional and an award to Google of its 

reasonable costs and expenses of litigation, including attorneys’ fees and expert witness fees; 

E. A judgment limiting or barring Plaintiff’s ability to enforce the asserted patents in 

equity; and 

F. Such other and further relief as this Court may deem just and proper. 

Date: May 27, 2020 Respectfully submitted, 

By: /s/ Bijal V. Vakil with permission, 

by Michael E. Jones 

Michael E. Jones 

Potter Minton PC 

110 N College, Suite 500 

Tyler, TX 75702 

Telephone: (903) 597-8311 

Email: mikejones@potterminton.com 

Bijal V. Vakil (CA Bar No. 192878) 

(admitted to the Western District of Texas) 

Eric Lancaster (Pro Hac Vice) 

White & Case LLP 

Case 6:20-cv-00075-ADA Document 16 Filed 05/27/20 Page 18 of 20
3000 El Camino Real 

Two Palo Alto Square, Suite 900 

Palo Alto, CA 94306 

Telephone: (650) 213-0324 

Email: WCGoogleEcofactorWDTex@whitecase.com 

Shamita Etienne Cummings (CA Bar No. 202090) 

(admitted to the Western District of Texas) 

Michael J. Songer (Pro Hac Vice) 

White & Case LLP 

701 Thirteenth Street NW 

Washington, DC 20005 

Telephone: (202) 626-6496 

Email: WCGoogleEcofactorWDTex@whitecase.com 

Counsel For Google LLC 

 

 

Case 6:20-cv-00075-ADA Document 16 Filed 05/27/20 Page 19 of 20
CERTIFICATE OF SERVICE 

The undersigned hereby certifies that on May 27, 2020, I electronically filed this 

document with the Clerk of Court via the Court’s CM/ECF system which will send notification 

of such filing to all counsel of record, all of whom have consented to electronic service in this 

action. 

/s/ Michael E. Jones 

Michael E. Jones 

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