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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

TESLA, INC., )

)

Plaintiff, ) CASE NO. 2:23-cv-00334

)

CAP-XX, LTD., ) DEMAND FOR JURY TRIAL

)

Defendant. )

______________________________

CAP-XX, LTD.’S ANSWER, AFFIRMATIVE DEFENSES, 

AND COUNTERCLIAMS 

 

CAP-XX, Ltd. (“CAP-XX”), by counsel, for its Answer, Affirmative Defenses, and 

Counterclaims against Tesla, Inc. (“Tesla”) states:

ANSWER 

NATURE OF ACTION 

1. This is an action for infringement of United States Patent Nos. 

8,279,580 (the “’580 patent”) and 8,591,601 (the “’601 patent”) 

(collectively, the “Asserted Patents”) under the Patent Laws of the 

United States, 35 U.S.C. § 271, et seq. A true and accurate copy of the 

՚580 patent is attached as Exhibit A and a true and accurate copy of the 

’601 patent is attached as Exhibit B.

RESPONSE: CAP-XX admits the Complaint purports to allege 

infringement of the ‘580 patent and ‘601 patent and that copies of the same are 

attached as Exhibits A and B. CAP-XX denies it infringes either patent.

2. CAP-XX previously filed suit against Maxwell Technologies, Inc. 

(“Maxwell”), which is a subsidiary of Tesla, alleging that Maxwell 

infringed U.S. Pat. Nos. 6,920,580 and 7,382,600. Maxwell has a history 

of innovation that has resulted in its own patents, now assigned to Tesla, 

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and thus Tesla brings this suit against CAP-XX to protect its intellectual 

property rights.

 RESPONSE: CAP-XX admits it filed suit against Maxwell 

Technologies, Inc., a subsidiary of Tesla, alleging Maxwell infringes U.S. Pat. Nos. 

6,920,580 and 7,382,600. CAP-XX lacks sufficient information with which to admit 

or deny the remaining allegations of paragraph 2; therefore, it denies them.

PARTIES 

3. Plaintiff Tesla is a multinational automotive and clean energy 

company, having a principal address at 13101 Tesla Road, Austin, Texas 

78725.

 RESPONSE: CAP-XX lacks sufficient information with which to admit 

or deny the allegations of paragraph 3; therefore, it denies them.

4. Defendant CAP-XX is an Australian company with a principal 

place of business at Unit 9, 12 Mars Road, Lane Cove, NSW, 2066, 

Australia.

 RESPONSE: CAP-XX admits it is an Australian company but denies 

the remaining allegations of paragraph 4.

JURISDICTION AND VENUE 

5. This is an action for patent infringement arising under the patent 

laws of the United States, 35 U.S.C. § 271, et seq. This Court has subject 

matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338.

 RESPONSE: CAP-XX admits the allegations of paragraph 5.

6. This Court has personal jurisdiction over CAP-XX pursuant to the 

laws of the State of Texas, including Texas Civil Practice and Remedies 

Code § 17.042.10, because CAP-XX is engaged in substantial and not 

isolated activity within the State of Texas. This Court has specific 

jurisdiction over CAP-XX because CAP-XX (a) has committed acts of 

infringement in the State of Texas giving rise to this action; and (b) has 

established more than minimum contacts within the State of Texas, 

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such that exercise of jurisdiction over CAP-XX in this Court would not 

offend traditional notions of fair play and substantial justice.

 RESPONSE: CAP-XX denies the allegations of paragraph 6.

7. CAP-XX markets and distributes its infringing supercapacitor 

products throughout the world, including all fifty states of the United 

States, and throughout Texas, and has established distribution 

channels for its supercapacitor products in Texas.

 RESPONSE: CAP-XX denies the allegations of paragraph 7.

8. For example, CAP-XX’s website describes that its distributors are 

in the United States, including in Texas:

 RESPONSE: CAP-XX admits it has unaffiliated distributors located in 

Dallas, Texas and San Diego, California. CAP-XX denies the remaining allegations 

of paragraph 8.

9. Venue is proper in this judicial district pursuant to pursuant to 

28 U.S.C. § 1391(c)(3) because CAP-XX is a foreign corporation and may 

be sued in any judicial district.

 RESPONSE: CAP-XX states the allegations of paragraph 9 are legal 

and do not require a response. To the extent they are factual, CAP-XX denies them.

THE ASSERTED PATENTS 

10. On October 2, 2012, the ’580 patent, entitled “Electrode for 

Energy Storage Device with Microporous and Mesoporous Activated 

Carbon Particles,” was duly and legally issued by the United States 

Patent and Trademark Office. The ’580 patent names Linda Zhong and 

Xiaomei Xi as inventors.

 RESPONSE: CAP-XX admits the ‘580 patent names Zhong and Xi as 

inventors. CAP-XX lacks sufficient information to admit or deny the remaining 

allegations of paragraph 10; therefore, it denies them.

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11. On November 26, 2013, the ’601 patent, entitled “Electrode for 

Energy Storage Device with Microporous and Mesoporous Activated 

Carbon Particles,” was duly and legally issued by the United States 

Patent and Trademark Office. The ’601 patent names Linda Zhong and 

Xiaomei Xi as inventors.

 RESPONSE: CAP-XX admits the ‘601 patent names Zhong and Xi as 

inventors. CAP-XX lacks sufficient information to admit or deny the remaining 

allegations of paragraph 11; therefore, it denies them.

12. Drs. Zhong and Xi assigned their rights as inventors to the 

Asserted Patents to Maxwell Technologies, Inc. Maxwell Technologies 

Inc. later assigned its rights to the Asserted Patents to Tesla, Inc. 

Plaintiff is currently the owner of the entire right, title, and interest of 

the Asserted Patents.

 RESPONSE: CAP-XX lacks sufficient information to admit or deny the 

allegations of paragraph 12; therefore, it denies them.

13. The Asserted Patents are generally directed to an electrode for 

use in electrochemical double layer capacitors (EDLCs) (commonly 

known as “supercapacitors”), hybrid capacitors, and battery devices. A 

supercapacitor’s electrodes are the primary source of the device’s power 

capabilities – double layers of charges are formed at the interface 

between the electrodes and the electrolyte in which they are immersed.

 RESPONSE: CAP-XX lacks sufficient information to admit or deny the 

allegations of paragraph 13; therefore, it denies them.

14. Electrodes are often made from porous carbon materials whereby 

the pores help provide large effective surface areas for interaction with 

the electrolyte. The size of the pores impacts the overall effective surface 

area of the electrode. The electrodes according to the invention of the 

Asserted Patents use a combination of micropores and mesopores. 

 RESPONSE: CAP-XX lacks sufficient information to admit or deny the 

allegations of paragraph 14; therefore, it denies them.

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15. Claim 1 of the ’580 patent is exemplary and recites: 1. An 

electrode for an energy storage device comprising: a current collector; 

and a film of active electrode material attached to the current collector, 

wherein the total amount of activated carbon having between about 70 

and 98 percent microporous activated carbon particles of the total 

amount of activated carbon by weight and between about 2 and 30 

percent mesoporous activated carbon parties (sic) of the total amount of 

activated carbon by weight. (Ex. A (’580 patent), cl. 1.)

 RESPONSE: CAP-XX admits the ‘580 patent claims state what they 

state. CAP-XX denies all remaining allegations of paragraph 15.

16. Claim 1 of the ’601 patent is also exemplary and recites: 1. A 

method of making an active electrode material, the method comprising: 

providing activated carbon having between about 70 and 98 percent 

microporous activated carbon particles of a total amount of activated 

carbon by weight and between about 2 and 30 percent mesoporous 

activated carbon particles of the total amount of activated carbon by 

weight; providing binder; and mixing the activated carbon and the 

binder to form an active electrode material mixture. (Ex. B (’601 patent), 

cl. 1.)

 RESPONSE: CAP-XX admits the ‘601 patent claims state what they 

state. CAP-XX denies all remaining allegations of paragraph 16.

17. CAP-XX is a manufacturer and distributor of supercapacitor 

products.

 RESPONSE: CAP-XX admits the allegations of paragraph 17.

18. CAP-XX’s supercapacitor products use electrodes. For example, 

patents assigned to CAP-XX show that CAP-XX’s products are “charge 

storage device[s]” that include electrodes. (See, e.g., Ex. C (U.S. Patent 

No. 7,382,600), cl. 1 (describing a “charge storage device comprising: a 

first electrode; [and] a second electrode being spaced apart from the first 

electrode”).) 

 RESPONSE: CAP-XX denies that its supercapacitor products use 

electrodes that infringe any claims in the Asserted Patents, denies that it uses a 

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method of making an active electrode material that infringes any claims of the 

Asserted Patents, and admits the remaining allegations of paragraph 18.

19. Other of CAP-XX’s public documents similarly describe the use of 

electrodes in CAP-XX supercapacitor products. (See Ex. D (Product 

Guide) at 14 (describing “failure modes” including from “misalignment 

of the separator between electrodes.”).)

 RESPONSE: CAP-XX admits Exhibit D states what it states and 

denies all contradictory allegations of paragraph 18.

20. The electrodes of CAP-XX’s supercapacitors include current 

collectors. Among other functions, the current collectors collect energy 

generated by the electrodes and conduct that energy to the device 

terminals, which transfer energy to applications external to the 

supercapacitor.

 RESPONSE: CAP-XX denies that its supercapacitor products include 

current collectors or electrodes that infringe any claims in the Asserted Patents, 

denies that it uses a method of making an active electrode material that infringes 

any claims of the Asserted Patents, and admits the remaining allegations of 

paragraph 20.

21. Patents assigned to CAP-XX inform that CAP-XX’s 

supercapacitor products have current collectors. For example, U.S. 

Patent Application 2014/0098466, assigned to CAP-XX, describes: 

“These supercapacitors developed by the Applicant ... include two 

opposed electrodes maintained in a predetermined spaced apart 

electrically isolated configuration by an intermediate electronically 

insulating separator. The electrodes consist of metal current collectors 

and a coating material typically formed from particulate carbon and a 

binder used for adhering the carbon to itself and to the associate current 

collector.” (Ex. E at [0021] (emphasis added).)

 RESPONSE: CAP-XX admits Exhibit E states what it states and denies 

all contradictory allegations of paragraph 21.

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22. Publicly available research on current collectors also confirms 

that CAP-XX’s supercapacitor products use current collectors. (See Ex. 

F (“Recent Advances and Challenges of Current Collectors for 

Supercapacitors”) at 2 (describing that most companies, including CAPXX, “produce supercapacitors based on carbon electrodes with organic 

electrolytes and aluminum current collectors”).) 

 RESPONSE: CAP-XX admits Exhibit F states what it states and denies 

all contradictory allegations of paragraph 22.

23. Electrodes in CAP-XX’s supercapacitor products contain a film of 

active electrode material, wherein the active electrode material 

comprises a total amount of activated carbon having between about 70% 

and 98% microporous activated carbon particles by weight and between 

about 2% and 30% mesoporous activated carbon particles by weight.

 RESPONSE: CAP-XX denies the allegations of paragraph 23. CAP-XX 

informed Tesla that the active electrode material in its products does not meet the 

alleged porosity ranges in the Asserted Patents. CAP-XX provided documents to 

Tesla showing conclusively that CAP-XX’s Accused Products do not infringe the 

Asserted Patents.

24. Testing of CAP-XX’s DMF3, GS206F, HS230F products 

demonstrate that CAPXX’s supercapacitor products use an active 

electrode material made with a combination of microporous and 

mesoporous activated carbon particles within the ranges claimed by the 

Asserted Patents.

 RESPONSE: CAP-XX lacks sufficient information to admit or deny the 

allegations of paragraph 24; therefore, it denies them. After receiving the 

Complaint, CAP-XX asked Tesla to produce the test results but received no 

substantive response from Tesla.

25. Other of CAP-XX’s products include similar ratios of microporous 

and mesoporous activated carbon particles that fall within the ranges 

claimed by the Asserted Patents.

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RESPONSE: CAP-XX denies the allegations of paragraph 25.

26. CAP-XX has been selling, offering for sale, and/or importing 

products into the United States that infringe the Asserted Patents. On 

or about December 5, 2022, Tesla provided CAP-XX actual notice of its 

infringement of the Asserted Patents, explained that the claims of the 

Asserted Patents cover at least the supercapacitor products detailed in 

Appendix A accompanying Tesla’s December 5 letter, and offered to 

license the Asserted Patents to CAP-XX. CAP-XX refused to take a 

license to the Asserted Patents and willfully continued with its 

infringing activities.

RESPONSE: CAP-XX denies the allegations of paragraph 26.

27. At all relevant times since December 5, 2022, CAP-XX had actual 

knowledge of the Asserted Patents; it had knowledge that it uses, sells, 

offers for sale, and/or imports products that infringe the Asserted 

Patents; and it encouraged others to infringe those patents through its 

activities.

RESPONSE: CAP-XX denies the allegations of paragraph 27.

28. CAP-XX’s actions, alone and in conjunction with others, 

constitute a willful infringement of the Asserted Patents and 

exceptional circumstances pursuant to 35 U.S.C. §§ 284 and 285.

 

RESPONSE: CAP-XX denies the allegations of paragraph 25.

COUNT I Infringement of the ’580 Patent 

29. Plaintiff restates and realleges the preceding paragraphs of this 

Complaint.

RESPONSE: CAP-XX incorporates by reference its answers to 

paragraphs 1-28 as if set forth verbatim herein. 

30. In violation of 35 U.S.C. § 271, CAP-XX has infringed and/or 

induced others to infringe of one or more claims of the ’580 patent, 

including but not limited to claim 1, literally and/or under the doctrine 

of equivalents, by among other things, making, using, offering for sale, 

selling, and/or importing into the United States unlicensed products in 

a manner that infringes the ’580 patent. These products include the 

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DMF3, GS206F, and HS230F supercapacitor products, as well as all of 

CAP-XX’s prismatic supercapacitors, cylindrical supercapacitors, large 

supercapacitors, coin cell supercapacitors, lithium-ion/hybrid 

supercapacitors, and module product supercapacitors, as identified to 

CAP-XX in Tesla’s December 5, 2022, letter.

RESPONSE: CAP-XX denies the allegations of paragraph 30.

31. CAP-XX’s supercapacitors infringe at least exemplary claim 1 of 

the ’580 patent.

RESPONSE: CAP-XX denies the allegations of paragraph 31.

32. CAP-XX’s supercapacitor products are energy storage devices 

that contain electrodes.

RESPONSE: CAP-XX denies that its supercapacitor products contain 

electrodes that infringe any claims in the Asserted Patents, denies that it uses a 

method of making any electrode material that infringes any claims of the Asserted 

Patents, and admits the remaining the allegations of paragraph 32.

33. The electrodes of CAP-XX’s supercapacitor products comprise, in 

part, a current collector. 

RESPONSE: CAP-XX denies that its supercapacitor products include 

current collectors or electrodes that infringe any claims in the Asserted Patents, 

denies that it uses a method of making any electrode material that infringes any 

claims of the Asserted Patents, and admits the remaining allegations of paragraph 

33.

34. The electrodes of CAP-XX’s supercapacitor products comprise a 

film of active electrode material attached to the current collector.

RESPONSE: CAP-XX denies that its supercapacitor products include a 

film of active electrode material attached to the current collectors or electrodes that 

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infringe any claims in the Asserted Patents, denies that it uses a method of making 

an active electrode material that infringes any claims of the Asserted Patents, and 

admits the remaining allegations of paragraph 34.

35. The active electrode material comprises a total amount of 

activated carbon having between about 70 and 98 percent microporous 

activated carbon particles of the total amount of activated carbon by 

weight and between about 2 and 30 percent mesoporous activated 

carbon particles of the total amount of activated carbon by weight.

RESPONSE: CAP-XX denies the allegations of paragraph 35.

36. In view of the foregoing, CAP-XX has infringed and continues to 

infringe the ’580 patent in violation of 35 U.S.C. § 271.

RESPONSE: CAP-XX denies the allegations of paragraph 36.

37. CAP-XX has had knowledge of the ’580 patent and that its 

activities infringe the ’580 patent long before the filing of this action. For 

example, CAP-XX has had knowledge of the ’580 patent and its 

infringement thereof due to its research into Maxwell’s technology and 

patent filings. CAP-XX received further notice of its infringement when 

Tesla sent CAP-XX a letter on December 5, 2022.

RESPONSE: CAP-XX denies the allegations of paragraph 37.

38. CAP-XX takes active steps to knowingly induce infringement of 

the ’580 patent by directing, encouraging, promoting, and instructing 

others to make, use, offer for sale, sell, and/or import the infringing 

products in the United States.

RESPONSE: CAP-XX denies the allegations of paragraph 38.

39. Plaintiff is entitled to the relief provided by 35 U.S.C. § 284, 

including, inter alia, damages adequate to compensate Plaintiff for the 

infringement, but not less than a reasonable royalty and/or lost profits 

for the use made of the invention of the ’580 patent by CAP-XX, together 

with interest and costs.

RESPONSE: CAP-XX denies the allegations of paragraph 39.

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40. Despite having actual notice of the ’580 patent, CAP-XX 

continued to actively infringe the ’580 patent in disregard of Plaintiff’s 

rights, making this case exceptional and entitling Plaintiff to reasonable 

attorney’s fees pursuant to 35 U.S.C. § 285.

RESPONSE: CAP-XX denies the allegations of paragraph 40.

COUNT II Infringement of the ’601 Patent 

41. Plaintiff restates and realleges the preceding paragraphs of this 

Complaint.

RESPONSE: CAP-XX incorporates by reference its answers to 

paragraphs 1-40 as if set forth verbatim herein. 

42. In violation of 35 U.S.C. § 271, CAP-XX has infringed and/or 

induced others to infringe of one or more claims of the ’601 patent, 

including but not limited to claim 1, literally and/or under the doctrine 

of equivalents, by among other things, making, using, offering for sale, 

selling, and/or importing into the United States unlicensed products 

made by the claimed method in a manner that infringes the ’601 patent. 

These products include the DMF3, GS206F, and HS230F supercapacitor 

products, as well as all of CAP-XX’s prismatic supercapacitors, 

cylindrical supercapacitors, large supercapacitors, coin cell 

supercapacitors, lithium-ion/hybrid supercapacitors, and module 

product supercapacitors, as identified to CAP-XX in Tesla’s December 5, 

2022, letter.

RESPONSE: CAP-XX denies the allegations of paragraph 42.

43. CAP-XX’s supercapacitors have electrodes that are made by a 

method that infringes at least exemplary claim 1 of the ’601 patent.

RESPONSE: CAP-XX denies the allegations of paragraph 43.

44. CAP-XX makes the active electrode material used in its 

supercapacitor products by mixing activated carbon and a binder to form 

an active electrode material mixture.

RESPONSE: CAP-XX denies the allegations of paragraph 44.

45. The active electrode material comprises a total amount of 

activated carbon having between about 70 and 98 percent microporous 

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activated carbon particles of the total amount of activated carbon by 

weight and between about 2 and 30 percent mesoporous activated 

carbon particles of the total amount of activated carbon by weight.

RESPONSE: CAP-XX denies the allegations of paragraph 45.

46. In view of the foregoing, CAP-XX has infringed and continues to 

infringe the ’601 patent in violation of 35 U.S.C. § 271.

RESPONSE: CAP-XX denies the allegations of paragraph 46.

47. CAP-XX has had knowledge of the ’601 patent and that its 

activities infringe the ’601 patent long before the filing of this action. For 

example, CAP-XX has had knowledge of the ’601 patent and its 

infringement thereof due to research into Maxwell’s technology and 

patent filings. CAP-XX received further notice of its infringement when 

Tesla sent CAP-XX a letter on December 5, 2022.

RESPONSE: CAP-XX denies the allegations of paragraph 47.

48. CAP-XX takes active steps to knowingly induce infringement of 

the ’601 patent by directing, encouraging, promoting, and instructing 

others to make, use, offer for sale, sell, and/or import the products made 

by the infringing method in the United States.

RESPONSE: CAP-XX denies the allegations of paragraph 48.

49. Plaintiff is entitled to the relief provided by 35 U.S.C. § 284, 

including, inter alia, damages adequate to compensate Plaintiff for the 

infringement, but not less than a reasonable royalty and/or lost profits 

for the use made of the invention of the ’601 patent by CAP-XX, together 

with interest and costs.

RESPONSE: CAP-XX denies the allegations of paragraph 49.

50. Despite having actual notice of the ’601 patent, CAP-XX 

continued to actively infringe the ’601 patent in disregard of Plaintiff’s 

rights, making this case exceptional and entitling Plaintiff to reasonable 

attorney’s fees pursuant to 35 U.S.C. § 285.

RESPONSE: CAP-XX denies the allegations of paragraph 50.

RESPONSE TO PRAYER FOR RELIEF 

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To the extent any response is required, CAP-XX- denies Tesla is entitled to any 

relief, including that requested in its Prayer for Relief.

AFFIRMATIVE DEFENSES 

Without prejudice to the denials set forth in its responses to Paragraphs 1 

through 50 of the Complaint, and without undertaking any burdens imposed by law 

on Tesla, CAP-XX asserts the following affirmative defenses to the Complaint. CAPXX reserves the right to allege additional defenses as they become known through 

the course of discovery.

FIRST AFFIRMATIVE DEFENSE 

NON-INFRINGEMENT 

CAP-XX does not infringe either literally or under the doctrine of equivalents,

directly or indirectly either by inducement or contributorily, any valid, enforceable 

claim of the Asserted Patents.

SECOND AFFIRMATIVE DEFENSE 

INVALIDITY 

 

One or more claims of the Asserted Patents are invalid for failure to comply 

with one or more of the conditions set forth in the Patent Act, including without 

limitation, 35 U.S.C. §§ 101, 102, 103, 112 and any other judicially created 

requirements for patentability and enforceability of patents and the defenses

recognized in 35 U.S.C. § 282.

THIRD AFFIRMATIVE DEFENSE 

FAILURE TO STATE A CLAIM 

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

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FOURTH AFFIRMATIVE DEFENSE 

FAILURE TO STATE AN EXCEPTIONAL CASE 

 

The Complaint fails to state a claim for an exceptional case under 35 U.S.C. § 

285.

FIFTH AFFIRMATIVE DEFENSE 

NOTICE, DAMAGES AND COST 

 

Tesla’s claims for damages are statutorily limited under 35 U.S.C. § 286 and

287. Tesla is barred from recovering costs in connection with this action under 35 

U.S.C. § 288.

SIXTH AFFIRMATIVE DEFENSE 

NO RIGHT TO INJUNCTIVE RELIEF 

Tesla is not entitled to injunctive relief, inter alia, because any injury to

Tesla is not immediate or irreparable, and Tesla has an adequate money remedy for 

any claim that it can prove.

SEVENTH AFFIRMATIVE DEFENSE 

NO PRE-SUIT DAMAGES, FAILURE TO MARK 

Tesla’s claims for pre-suit damages are limited by its noncompliance with

marking and actual notice requirements under 35 U.S.C. § 287(a).

EIGHTH AFFIRMATIVE DEFENSE 

UNCLEAN HANDS

Tesla’s Amended Complaint is barred in whole or in part by the doctrine of

unclean hands.

NINTH AFFIRMATIVE DEFENSE 

ADDITIONAL DEFENSES 

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CAP-XX reserves the right to present any additional defenses or 

counterclaims that discovery may reveal.

COUNTERCLAIMS 

CAP-XX, by counsel, for its Counterclaims against Tesla alleges:

PARTIES 

1) CAP-XX is an Australian corporation having its principal place of 

business at 13A Stanton Road, Seven Hills, NSW 2147, Australia.

2) Tesla is a multinational automotive and clean energy company, having 

a principal address at 13101 Tesla Road, Austin, Texas 78725

JURISDICTION AND VENUE

3) CAP-XX seeks a declaratory judgment pursuant to 28 U.S.C. §§ 2201 

and 2202.

4) The Court has jurisdiction over these counterclaims pursuant to 28 

U.S.C. §§ 1331, 1338(a), 2201, 2202, and 35 U.S.C. § 100, et seq.

5) Venue is proper under 28 U.S.C. § 1391, and by Tesla’s choice of forum.

6) Tesla has filed in this Court an action to enforce United States Patent 

Nos. 8,279,580 (the “’580 patent”) and 8,591,601 (the “’601 patent”) (collectively, the 

“Asserted Patents”) against CAP-XX.

7) Based on Tesla’s allegations, Tesla owns the Asserted Patents.

8) CAP-XX denies it has, continues to, or will infringe, induce 

infringement of, or contribute to the infringement of, any valid and enforceable 

claim of the Asserted Patent.

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9) The Asserted Patents are invalid for failure to satisfy one or more of 

the provisions of the Patent Act, including 35 U.S.C. §§ 101, 102, 103, 112, and the 

defenses recognized in 35 U.S.C. § 282(b).

10) A conflict of asserted rights has arisen between the CAP-XX and Tesla 

with respect to the noninfringement and invalidity of the claims of the Asserted 

Patent. An actual controversy exists between Tesla and CAP-XX.

11) On August 22, 2023, CAP-XX notified Tesla that its accused products 

do not infringe any claim of the Asserted Patents and provided documentary proof 

of the same.

FIRST COUNTERCLAIM 

DECLARATION OF NONINFRINGEMENT OF THE ’580 PATENT

12) CAP-XX realleges Paragraphs 1-11 as if set forth fully herein.

13) CAP-XX does not infringe and has not infringed, either directly or 

indirectly, any valid and enforceable claim of the ’580 Patent, either literally or 

under the doctrine of equivalents.

14) CAP-XX is entitled to a declaratory judgment that the sale, offer for 

sale, manufacture, importation, or use of its products does not infringe, and has not 

infringed, any valid and enforceable claim of the ’580 Patent.

SECOND COUNTERCLAIM 

DECLARATION OF INVALIDITY OF THE ’580 PATENT

15) CAP-XX realleges Paragraphs 1-14 as if set forth fully herein.

16) One or more claims of the ’580 Patent are invalid for failure to satisfy 

one or more of the provisions set forth in 35 U.S.C. §§ 101 et seq., including, without 

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limitation, the requirements of 35 U.S.C. §§ 101, 102, 103, 112 and/or in view of the 

defenses recognized in 35 U.S.C. § 282(b), and/or one or more of the judicially 

created requirements for patentability.

17) CAP-XX is entitled to a judicial declaration that one or more claims of 

the ’580 Patent are invalid.

THIRD COUNTERCLAIM 

DECLARATION OF NONINFRINGEMENT OF THE ’601 PATENT

18) CAP-XX realleges Paragraphs 1-17 as if set forth fully herein.

19) CAP-XX does not infringe and has not infringed, either directly or 

indirectly, any valid and enforceable claim of the ’601 Patent, either literally or 

under the doctrine of equivalents.

20) CAP-XX is entitled to a declaratory judgment that the sale, offer for 

sale, manufacture, importation, or use of its products does not infringe, and has not 

infringed, any valid and enforceable claim of the ’601 Patent.

FOURTH COUNTERCLAIM 

DECLARATION OF PATENT INVALIDITY OF THE ’601 PATENT

21) CAP-XX realleges Paragraphs 1-20 as if set forth fully herein.

22) One or more claims of the ’601 Patent are invalid for failure to satisfy 

one or more of the provisions set forth in 35 U.S.C. §§ 101 et seq., including, without 

limitation, the requirements of 35 U.S.C. §§ 101, 102, 103, 112 and/or in view of the 

defenses recognized in 35 U.S.C. § 282(b), and/or one or more of the judicially 

created requirements for patentability.

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23) CAP-XX is entitled to a judicial declaration that one or more claims of 

the ’601 Patent are invalid.

PRAYER FOR RELIEF 

WHEREFORE, CAP-XX requests the following relief:

A. That the Court order the Complaint dismissed with prejudice and judgment 

be entered in favor of CAP-XX;

B. That a judgment be entered declaring that the manufacture, import, use, 

sale, and/or offer to sell CAP-XX’s products has not infringed, does not and 

will not infringe (either literally or under the doctrine of equivalents), directly 

or indirectly (either by inducement or contributorily) any valid, enforceable 

claim of the Asserted Patents.

C. That judgment be entered declaring the claims of the Asserted Patents 

invalid;

D. That a judgment be entered declaring that this action is an exceptional case 

within the meaning of 35 U.S.C. § 285, and that CAP-XX is entitled to recover 

its reasonable attorneys’ fees;

E. That CAP-XX be awarded costs, attorneys’ fees, and other relief, both legal 

and equitable, to which it may be justly entitled; and

F. That CAP-XX be awarded such other and further relief as is just and proper.

DEMAND FOR JURY TRIAL 

Pursuant to Fed. R. Civ. P. 38, CAP-XX demands a trial by jury on all issues 

so triable.

Case 2:23-cv-00334-JRG Document 11 Filed 09/26/23 Page 18 of 20 PageID #: 160
19

Dated: September 26, 2023 Respectfully submitted,

FISHERBROYLES, LLP

/s/ Ryan Beard

Ryan Beard (TX Bar # 24012264)

501 Congress Avenue, Suite 150

Austin, TX 78702

Ryan.beard@fisherbroyles.com

Tel.: 512.577.2673

 

Alastair J. Warr (Ind. Bar #15873-49)

203 North LaSalle Street, Suite 2100

Chicago, IL 60601

Alastair.warr@fisherbroyles.com

Tel.: 317.407.5260 

Attorneys for CAP-XX, Ltd.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Case 2:23-cv-00334-JRG Document 11 Filed 09/26/23 Page 19 of 20 PageID #: 161
20

CERTIFICATE OF SERVICE 

I hereby certify that on the above date I served the foregoing documents on 

the following counsel by filing the same with the Court’s ECF/CM system.

Ruffin B. Cordell

cordell@fr.com

Daniel R. Gopenko

gopenko@fr.com

FISH & RICHARDSON P.C.

1000 Maine Avenue, SW, Suite 1000

Washington, DC 20024

Telephone: (202) 783-5070

Matthew Colvin

colvin@fr.com

FISH & RICHARDSON P.C.

1717 Main Street, Suite 5000

Dallas, Texas 75201

Telephone: (214) 747-5070

Aamir A. Kazi (pro hac vice to be filed)

kazi@fr.com

FISH & RICHARDSON P.C.

1180 Peachtree Street NE, 21st Floor

Atlanta, GA 30309

Telephone: (404) 892-5005

Melissa Smith

melissa@gillamsmith.com

GILLAM & SMITH, LLP

303 South Washington Ave.

Marshall, Texas 75670

Telephone:(903) 934-8450

Facsimile: (903) 934-9257

Case 2:23-cv-00334-JRG Document 11 Filed 09/26/23 Page 20 of 20 PageID #: 162