IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

CONVERSANT WIRELESS LICENSING 

S.A.R.L., 

Plaintiff, 

v. 

TESLA, INC., 

Defendant. 

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Civil No. 6:20-cv-00323-ADA 

JURY TRIAL DEMANDED 

DEFENDANT’S ANSWER TO FIRST AMENDED COMPLAINT FOR PATENT 

INFRINGEMENT 

Defendant Tesla, Inc. (“Tesla” or “Defendant”) hereby files its Answer to Plaintiff 

Conversant Wireless Licensing S.A.R.L.’s (“Conversant” or “Plaintiff”) First Amended 

Complaint for Patent Infringement (“First Amended Complaint”) (D.I. 7). Tesla denies the 

allegations and characterizations in Plaintiff’s First Amended Complaint unless expressly 

admitted in the following Paragraphs. 

NATURE OF SUIT 

1. Tesla admits that actions for patent infringement arise under 35 U.S.C. § 1 et seq. 

Tesla denies there is any basis in law or fact for Conversant’s allegations of patent infringement. 

Tesla denies any remaining allegations set forth in Paragraph 1. 

PARTIES 

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

the allegations in Paragraph 2 and therefore denies them. 

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3. Tesla admits that it is headquartered and has its principal place of business at 

3500 Deer Creek Road, Palo Alto, California 94304. Tesla admits that it is a corporation formed 

under Delaware law. Tesla admits that CT Corporation is its registered agent in the state of 

Texas. Tesla denies the remaining allegations in Paragraph 3. 

JURISDICTION AND VENUE

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

extent a response is required, Tesla admits that this Court has subject matter jurisdiction for 

patent infringement disputes under 28 U.S.C. §§ 1331 and 1338(a). 

5. Paragraph 5 contains legal conclusions to which no response is required. To the 

extent a response is required, Tesla does not contest that it is subject to personal jurisdiction 

before this Court for purposes of this case only. Tesla denies the remaining allegations in 

Paragraph 5. 

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

extent a response is required, Tesla does not contest that it is subject to personal jurisdiction 

before this Court for purposes of this case only. Tesla denies the remaining allegations in 

Paragraph 6. 

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

extent a response is required, Tesla does not contest venue in the Western District of Texas for 

purposes of this case only. Tesla denies the remaining allegations in Paragraph 7. 

8. Tesla admits that it maintains galleries and service centers within the District, 

including some identified by address in this paragraph, that are staffed by Tesla employees to 

showcase or service Tesla products. Tesla denies the remaining allegations in Paragraph 8. 

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9. Tesla admits that it maintains charging stations within the District. Tesla denies 

the remaining allegations in Paragraph 9. 

10. Paragraph 10 contains legal conclusions to which no response is required. To the 

extent a response is required, Tesla does not contest venue in the Western District of Texas for 

purposes of this case only. Tesla denies the remaining allegations in Paragraph 10. 

11. Tesla admits that Texas State Technical College in Waco, Texas is one of the 

schools with which Tesla has partnered to administer the Tesla START student automotive 

technician program. Tesla denies the remaining allegations in Paragraph 11. 

FACTUAL ALLEGATIONS

I. PATENTS-IN-SUIT 

12. Tesla admits that the United States Patent and Trademark Office issued U.S. 

Patent No. 7,643,456 (the “’456 patent”) on January 5, 2010. Tesla admits that the ’456 patent 

states on its face that its title is “Transfer of Packet Data to Wireless Terminal” and that the 

inventors are Jarkko Jouppi and Janne Rinne. Tesla admits that the ’456 patent recites that it 

issued from an application filed October 4, 2004 and purports to claim priority to application No. 

PCT/FI03/00263, which the ’456 patent recites as being filed on April 8, 2003, and further 

purports to claim priority to Finnish patent application 20020677, which the ’456 patent recites 

as being filed on April 9, 2002. Tesla admits that a document that Conversant purports is a true 

and correct copy of the ’456 patent is attached as Exhibit A to the First Amended Complaint. 

Tesla denies the remaining allegations in Paragraph 12. 

13. Tesla admits that the United States Patent and Trademark Office issued U.S. 

Patent No. 9,930,697 (the “’697 patent”) on March 27, 2018. Tesla admits that the ’697 patent 

states on its face that its title is “Random Access Channel Response Handling With Aggegrated 

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[sic] Component Carriers” and that the inventors are Jianke Fan, Juha S Korhonen, Mikko J 

Rinne and Esa M Malkamaki. Tesla admits that the ’697 patent recites that it issued from an 

application filed December 21, 2015 and purports to claim priority to application No. 

13/248,579, which the ’697 patent recites as being filed on September 29, 2011, and further 

purports to claim priority to application No. 12/384,950, which the ’697 patent recites as being 

filed on April 10, 2009. Tesla admits that a document that Conversant purports is a true and 

correct copy of the ’697 patent is attached as Exhibit B to the First Amended Complaint. Tesla 

denies the remaining allegations in Paragraph 13. 

14. Tesla admits that the United States Patent and Trademark Office issued U.S. 

Patent No. 9,253,797 (the “’797 patent”) on February 2, 2016. Tesla admits that the ’797 patent 

states on its face that its title is “Random Access Channel Response Handling With Aggregated 

Component Carriers” and that the inventors are Jianke Fan, Juha S. Korhonen, Mikko J. Rinne 

and Esa M. Malkamaki. Tesla admits that the ’797 patent recites that it issued from an 

application filed September 29, 2011, and purports to claim priority to application No. 

12/384,950, which the ’797 patent recites as being filed on April 10, 2009. Tesla admits that a 

document that Conversant purports is a true and correct copy of the ’797 patent is attached as 

Exhibit C to the First Amended Complaint. Tesla denies the remaining allegations in Paragraph 

14. 

15. Tesla admits that Conversant uses the term “Patents-in-Suit” in the First Amended 

Complaint to refer to the ’456 patent, ’697 patent, and ’797 patent collectively. 

II. BACKGROUND 

16. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 16 and therefore denies them. 

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17. Tesla admits that Conversant and/or its predecessors-in-interest purport to have 

made binding commitments to license the Patents-in-Suit on fair, reasonable, and nondiscriminatory (“FRAND”) terms. Tesla lacks sufficient knowledge or information to form a 

belief as to the truth of the remaining allegations in Paragraph 17 and therefore denies them. 

III. LICENSING DISCUSSIONS 

18. Tesla admits that Conversant sent a letter to Tesla that was dated December 18, 

2018, and that the correspondence speaks for itself. Tesla lacks sufficient knowledge or 

information to form a belief as to the truth of the remaining allegations in Paragraph 18, and 

therefore denies them. 

19. Tesla admits that Conversant purports to be a member of the Avanci patent pool 

and admits that Tesla has corresponded with and/or had discussions with Avanci regarding 

patent licensing. Tesla denies the remaining allegations in Paragraph 19. 

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

the allegations in the first sentence of Paragraph 20 and therefore denies them. Tesla denies the 

remaining allegations in Paragraph 20. 

21. Tesla admits that Conversant sent an email to Tesla that was dated February 26, 

2019, and that the correspondence speaks for itself. Tesla denies the remaining allegations in 

Paragraph 21. 

22. Tesla admits that Tesla sent an email to Conversant’s purported representative 

that was dated April 4, 2019, and that the correspondence speaks for itself. Tesla denies the 

remaining allegations in Paragraph 22. 

23. Tesla admits that Conversant has filed patent infringement complaints against 

Tesla and its German subsidiary in Germany. Tesla lacks sufficient knowledge or information to 

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form a belief as to the truth of the remaining allegations in Paragraph 23 and therefore denies 

them. 

24. Tesla admits that Conversant sent an email to Tesla that was dated March 16, 

2020, and that the correspondence speaks for itself. Tesla denies the remaining allegations in 

Paragraph 24. 

25. Tesla admits that Tesla responded to Conversant on March 26, 2020, and that 

such correspondence speaks for itself. Tesla denies the remaining allegations in Paragraph 25. 

26. Tesla admits that Conversant sent an email to Tesla on April 6, 2020, and that 

such correspondence speaks for itself. Tesla further states that Tesla replied on May 28, 2020 

seeking important license-related information, and that Conversant has provided no response to 

Tesla since that date. Tesla denies the remaining allegations in Paragraph 26. 

27. Tesla admits that as of the filing date of the First Amended Complaint, Tesla had 

not taken a license to Conversant’s patent portfolio or any of the Patents-in-Suit. 

IV. TESLA PRODUCTS 

28. Denied. 

29. Tesla admits that it makes, sells, offers for sale, or provides Tesla Model S, Model 

3, Model X, and Model Y vehicles. Tesla has made prototypes of its Cybertruck and the new 

Roadster models, and permits reservations for Cybertruck and the new Roadster with fully 

refundable deposits. Tesla denies the remaining allegations in Paragraph 29. 

30. Tesla admits that Tesla vehicles typically have cellular connection capabilities. 

Tesla admits that Conversant attached what Conversant purports is a collection of webpages 

whose addresses are provided in Paragraph 30 as Exhibit D to the First Amended Complaint and 

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that such documents speak for themselves. Tesla denies the remaining allegations in Paragraph 

30. 

31. Tesla admits that Tesla vehicles sold in the U.S. typically have cellular connection 

capabilities. Tesla admits that it provides cellular connectivity packages of varying access to 

connectivity features. The premium connectivity package in vehicles sold in the U.S. is provided 

to customers free for one year with orders of its Model S, Model X, Model Y, and Model 3 with 

Premium Interior vehicles and free for 30 days with orders of its Model 3 Standard Range and 

Standard Range Plus vehicles. Tesla makes such premium connectivity package available 

thereafter in the U.S. for an ongoing subscription fee, which is currently set at $9.99 per month. 

Tesla admits that Conversant attached what Conversant purports is a webpage whose address is 

provided in Paragraph 31 as Exhibit E to the First Amended Complaint and that this document 

speaks for itself. Tesla denies the remaining allegations in Paragraph 31. 

32. Tesla admits that Tesla vehicles typically have cellular connection capabilities. 

Tesla admits that Conversant attached what Conversant purports is the Model S Owner’s Manual 

(v.2020.4, North America) as Exhibit F to the First Amended Complaint and that this document 

speaks for itself. Tesla denies the remaining allegations in Paragraph 32. 

COUNT 1 – Infringement of the ’456 Patent 

33. Tesla incorporates its responses to Paragraphs 1-32 as set forth above. 

34. Denied. 

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

the allegations in Paragraph 35 and therefore denies them. 

36. Denied. 

37. Denied. 

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38. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 38 and therefore denies them. 

39. Tesla admits that the ’456 patent contains a claim 7, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 39. 

40. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 40 and therefore denies them. 

41. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 41 and therefore denies them. 

42. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 42 and therefore denies them. 

43. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

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knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 43 and therefore denies them. 

44. Tesla admits that the ’456 patent contains a claim 7, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 44. 

45. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 45 and therefore denies them. 

46. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 46 and therefore denies them. 

47. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 47 and therefore denies them. 

48. Tesla admits that the ’456 patent contains a claim 7, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 48. 

49. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

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functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 49 and therefore denies them. 

50. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 50 and therefore denies them. 

51. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 51 and therefore denies them. 

52. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 52 and therefore denies them. 

53. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 53 and therefore denies them. 

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54. Tesla admits that the ’456 patent contains a claim 7, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 54. 

55. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 55 and therefore denies them. 

56. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 56 and therefore denies them. 

57. Tesla admits that the ’456 patent contains a claim 7, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 57. 

58. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 58 and therefore denies them. 

59. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

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knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 59 and therefore denies them. 

60. Tesla admits that the ’456 patent contains a claim 7, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 60. 

61. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 61 and therefore denies them. 

62. Denied. 

63. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 63 and therefore denies them. 

64. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 64 and therefore denies them. 

65. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 65 and therefore denies them. 

66. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 66 and therefore denies them. 

67. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 67 and therefore denies them. 

68. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 68 and therefore denies them. 

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69. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 69 and therefore denies them. 

70. Denied. 

71. Denied. 

72. Denied. 

73. Denied. 

74. Denied. 

75. Denied. 

76. Denied. 

77. Denied. 

78. Denied. 

79. Denied. 

COUNT 2 - Infringement of the ’697 patent 

80. Tesla incorporates its responses to Paragraphs 1-79 as set forth above. 

81. Denied. 

82. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 82 and therefore denies them. 

83. Denied. 

84. Denied. 

85. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 85 and therefore denies them. 

86. Tesla admits that the ’697 patent contains a claim 1, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 86. 

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87. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 87 and therefore denies them. 

88. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 88 and therefore denies them. 

89. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 89 and therefore denies them. 

90. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 90 and therefore denies them. 

91. Tesla admits that the ’697 patent contains a claim 1, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 86. 

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92. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 92 and therefore denies them. 

93. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 93 and therefore denies them. 

94. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 94 and therefore denies them. 

95. Tesla admits that the ’697 patent contains a claim 1, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 95. 

96. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 96 and therefore denies them. 

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97. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 97 and therefore denies them. 

98. Denied. 

99. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 99 and therefore denies them. 

100. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 100 and therefore denies them. 

101. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 101 and therefore denies them. 

102. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 102 and therefore denies them. 

103. Denied. 

104. Denied. 

105. Denied. 

106. Denied. 

107. Denied. 

108. Denied. 

109. Denied. 

110. Denied. 

111. Denied. 

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112. Denied. 

COUNT 3 - Infringement of the ’797 patent 

113. Tesla incorporates its responses to Paragraphs 1-112 as set forth above. 

114. Denied. 

115. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 115 and therefore denies them. 

116. Denied. 

117. Denied. 

118. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 118 and therefore denies them. 

119. Tesla admits that the ’797 patent contains a claim 3, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 

119. 

120. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 120 and therefore denies them. 

121. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 121 and therefore denies them. 

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122. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 122 and therefore denies them. 

123. Tesla admits that the ’797 patent contains a claim 3, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 

123. 

124. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 124 and therefore denies them. 

125. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 125 and therefore denies them. 

126. Tesla admits that the ’797 patent contains a claim 3, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 

126. 

127. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

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functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 127 and therefore denies them. 

128. Tesla admits that the ’797 patent contains a claim 3, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 

128. 

129. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 129 and therefore denies them. 

130. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 130 and therefore denies them. 

131. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 131 and therefore denies them. 

132. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

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functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 132 and therefore denies them. 

133. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 133 and therefore denies them. 

134. Tesla admits that the ’797 patent contains a claim 3, which contains a number of 

limitations, which speak for themselves. Tesla denies the remaining allegations in paragraph 

134. 

135. Tesla admits that in this Paragraph Conversant includes an excerpt of what 

Conversant purports is a technical standard concerning wireless cellular communication 

functionalities and that the content of this standard speaks for itself. Tesla lacks sufficient 

knowledge or information to form a belief as to the truth of the remaining allegations in 

Paragraph 135 and therefore denies them. 

136. Denied. 

137. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 137 and therefore denies them. 

138. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 138 and therefore denies them. 

139. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 139 and therefore denies them. 

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140. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 140 and therefore denies them. 

141. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 141 and therefore denies them. 

142. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 142 and therefore denies them. 

143. Tesla lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in Paragraph 143 and therefore denies them. 

144. Denied. 

145. Denied. 

146. Denied. 

147. Denied. 

148. Denied. 

149. Denied. 

150. Denied. 

151. Denied. 

152. Denied. 

153. Denied. 

DAMAGES 

154. Denied. 

155. Denied. 

ATTORNEYS’ FEES 

156. Denied. 

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DEMAND FOR JURY TRIAL 

Conversant’s demand for a trial does not require an admission or denial. 

RESPONSE TO CONVERSANT’S PRAYER FOR RELIEF 

Tesla denies that Conversant is entitled to any relief whatsoever, including but not limited 

to the relief sought in paragraphs (a) through (j) of Conversant’s Prayer for Relief. 

DEFENDANT’S AFFIRMATIVE DEFENSES 

Further answering the First Amended Complaint, and as additional defenses thereto, 

Tesla asserts the following Affirmative Defenses to Plaintiff’s First Amended Complaint without 

assuming any burden that it would not otherwise bear and without reducing or removing 

Plaintiff’s burdens of proof on its affirmative claims against Tesla. Tesla reserves the right to 

amend its Answer and Defenses as additional information becomes available and/or is otherwise 

discovered. 

FIRST DEFENSE 

157. Tesla has not infringed any claim of the Patents-in-Suit, under any asserted 

infringement theory, either literally or under the doctrine of equivalents. 

SECOND DEFENSE 

158. All asserted claims of each of the Patents-in-Suit are invalid for failure to meet 

one or more of the conditions of patentability under the patent laws of the United States, 35 

U.S.C. § 1 et seq., including, but not limited to, 35 U.S.C. §§ 101, 102, 103, and/or 112. 

THIRD DEFENSE 

159. On information and belief, the Patents-in-Suit cannot be enforced by Conversant 

under the doctrine of prosecution history estoppel. 

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FOURTH DEFENSE 

160. The Patents-in-Suit are unenforceable and Conversant is precluded from asserting 

the Patents-in-Suit against Tesla under the doctrines of estoppel, implied waiver, acquiescence, 

patent exhaustion, and/or implied license. For example, upon information and belief, Conversant 

and/or its predecessors-in-interest to the Patents-in-Suit failed to timely disclose one or more of 

the Patents-in-Suit (or patents or patent applications within the same families) in accordance with 

the requirements of the European Telecommunications Standards Institute (“ETSI”) standardsetting organization (“SSO”) Intellectual Property Rights (“IPR”) Policy. In addition, Conversant 

has failed to honor its obligations pursuant to its and its predecessors’-in-interest commitments 

made to ETSI to license the Patents-in-Suit in a manner that is, fair, reasonable, and nondiscriminatory (“FRAND”). 

FIFTH DEFENSE 

161. Upon information and belief, Conversant’s claim(s) for damages for alleged 

infringement of the Patents-in-Suit is statutorily limited, in whole or in part, by the provisions of 

35 U.S.C. § 1 et seq., including but not limited to 35 U.S.C. §§ 286, 287, and/or 288. 

SIXTH DEFENSE 

162. Conversant is not entitled to injunctive relief. Any injury to Conversant is neither 

immediate nor irreparable. Conversant has an adequate remedy at law for any claims it can 

prove. The balance of hardships does not warrant injunctive relief. The public interest would be 

disserved by an injunction. 

SEVENTH DEFENSE 

163. Tesla has engaged in all relevant activities in good faith, and Conversant cannot 

prove that this is an exceptional case, thereby precluding Conversant from recovering attorneys’ 

fees and/or costs under 35 U.S.C. § 285 even if Conversant prevails with respect to one or more 

Case 6:20-cv-00323-ADA Document 13 Filed 07/13/20 Page 23 of 28
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of the Patents-in-Suit. Tesla has not willfully infringed any of the asserted patents, precluding 

Conversant from recovering enhanced damages under 35 U.S.C. § 284 even if Conversant 

prevails with respect to one or more of the Patents-in-Suit. 

EIGHTH DEFENSE

164. Some or all of Conversant’s claims are barred by the doctrine of unclean hands, 

patent misuse, and/or other equitable doctrines due to Conversant’s misconduct, including 

without limitation, upon information and belief, Conversant improperly attempting to broaden 

the scope of the Patents-in-Suit by forcing potential licensees to take a license to a portfolio of 

patents and to compel licenses and potential licensees to pay for patents that Conversant knows 

to be non-essential as a condition for obtaining licenses to patents asserted to be standardsessential, and, upon information and belief, improperly offering licenses only for end products 

and not cellular modules that incorporate the technology set forth in 2G, 3G, and/or 4G LTE 

cellular standard in violation of Conversant’s FRAND obligations. Moreover, upon information 

and belief, Conversant and/or its predecessors-in-interest to the Patents-in-Suit failed to timely 

disclose one or more of the Patents-in-Suit (or patents or patent applications within the same 

families) in accordance with the requirements of the European Telecommunications Standards 

Institute (“ETSI”) standard-setting organization (“SSO”) Intellectual Property Rights (“IPR”) 

Policy. Conversant has failed to honor its obligations pursuant to its and its predecessors’-ininterest commitments made to ETSI to license the Patents-in-Suit in a manner that is, fair, 

reasonable, and non-discriminatory (“FRAND”). 

NINTH DEFENSE 

165. Conversant’s claims are barred, in whole or in part, by its breach of contractual 

obligations to at least the ETSI, and to its members and implementers of standard-compliant 

products, to license the Patents-in-Suit on FRAND terms. Conversant or their predecessors-inCase 6:20-cv-00323-ADA Document 13 Filed 07/13/20 Page 24 of 28
25 

interest have made binding and irrevocable declarations that they and any successors-in-interest 

would offer to grant licenses to each of the Patents-in-Suit on FRAND terms. Upon information 

and belief, Conversant has breached their obligations to offer licenses on FRAND terms to all 

willing licensees, i.e., at every level of the supply chain, by refusing to license upstream 

suppliers of cellular modules and instead demanding that all licenses be made at the end-product 

level. Conversant’s failure to comply with its FRAND obligations bars Conversant’s claims and 

estops Conversant from enforcing the Patents-in-Suit in this case. 

TENTH DEFENSE 

166. Conversant’s claims are barred, in whole or in part, by promissory estoppel 

arising from Conversant’s and Conversant’s predecessors-in-interest’s binding representations to 

ETSI, as well as to ETSI’s members and implementers of standard-compliant products, to license 

the Patents-in-Suit on FRAND terms, wherein Tesla and/or its suppliers have relied on such 

representations by Conversant and Conversant’s predecessors-in-interest and have been 

detrimentally harmed by Conversant’s failure to abide by their representations to license the 

Patents-in-Suit on FRAND terms. 

ADDITIONAL AFFIRMATIVE DEFENSES 

167. Tesla specifically reserves the right to assert such other and further affirmative 

defenses as are revealed in the course of discovery. 

RESERVATION OF RIGHTS 

168. Tesla expressly reserves the right to allege and assert additional defenses that may 

be accorded to it under Rule 8(c) of the Federal Rules of Civil Procedure, the Patent Laws of the 

United States, and any other defenses, at law or in equity that now exist or in the future may be 

available based on discovery and further factual investigation in this case. 

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DEMAND FOR JURY TRIAL 

169. Tesla respectfully requests a trial by jury on all issues so triable. 

 

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Dated: July 13, 2020 

 /s/ Deron R Dacus 

Deron R. Dacus 

Texas Bar No. 00790553 

THE DACUS FIRM, PC 

821 ESE Loop 323, Suite 430 

Tyler, TX 75701 

(903) 705-1117 

ddacus@dacusfirm.com 

Michael Rhodes (pro hac vice to be filed) 

Heidi L. Keefe (pro hac vice to be filed) 

COOLEY LLP 

3175 Hanover Street 

Palo Alto, CA 94304-1130 

(650) 843-5000 

hkeefe@cooley.com 

mrhodes@cooley.com 

Adam M. Pivovar (pro hac vice to be filed) 

Samuel Whitt (pro hac vice to be filed) 

COOLEY LLP 

1299 Pennsylvania Avenue, NW 

Suite 700 

Washington, DC 20004 

(202) 842-7800 

apivovar@cooley.com 

swhitt@cooley.com 

Joseph E. Van Tassel (pro hac vice to be filed) 

COOLEY LLP 

11951 Freedom Drive 

Reston, VA 20190-5656 

(703) 456-8000 

jvantassel@cooley.com 

Attorneys for Defendant 

Tesla, Inc. 

 

Case 6:20-cv-00323-ADA Document 13 Filed 07/13/20 Page 27 of 28
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CERTIFICATE OF SERVICE 

I hereby certify that a true and correct copy of the above and foregoing document has 

been served on all counsel of record via the Court’s ECF system on July 13, 2020. 

/s/ Deron R. Dacus__________ 

Deron R. Dacus 

Case 6:20-cv-00323-ADA Document 13 Filed 07/13/20 Page 28 of 28