IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

WILLOW INNOVATIONS, INC., 

Plaintiff, 

v. 

CHIARO TECHNOLOGY, LTD., 

Defendant. 

Case No. 2:23-cv-00229-JRG 

JURY TRIAL DEMANDED 

PLAINTIFF WILLOW INNOVATIONS, INC.’S ANSWER, 

AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO 

DEFENDANT CHIARO TECHNOLOGY, LTD.’S 

FIRST AMENDED COUNTERCLAIMS 

Plaintiff Willow Innovations, Inc. (“Willow”) hereby files this Answer to the First 

Amended Counterclaims (“Elvie’s Counterclaims”) contained in Defendant Chiaro Technology, 

Ltd.’s (“Chiaro” or “Elvie”) Answer to Willow’s First Amended Complaint for Patent 

Infringement (Dkt. 33). The numbered paragraphs in this Answer correspond to the likenumbered paragraphs of Elvie’s Counterclaims, to the extent applicable. Willow denies all 

allegations and characterizations except those expressly admitted. 

NATURE OF ELVIE’S COUNTERCLAIMS 

1. This counterclaim is for willful patent infringement of U.S. Patent Nos. 

11,260,151 (the “’151 patent”), 11,357,893 (the “’893 patent”), 11,413,380 (the “’380 patent”), 

and 11,730,867 (the “’867 patent”) (collectively, the “Elvie Asserted Patents”). In addition, this 

counterclaim is for declaratory judgment that United States Patent Nos. 10,398,816 (the “’816 

patent”), 10,434,228 (the “’228 patent”), 10,625,005 (the “’005 patent”), 10,722,624 (the “’624 

patent”), 11,185,619 (the “’619 patent”), and U.S. Design Patent Nos. D832,995 (the “’D995 

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patent”) and D977,625 (the “’D625”) (collectively, the “Willow Asserted Patents”) are invalid 

and not infringed by any Elvie product, including the Elvie Pump. 

ANSWER: Willow admits that Elvie’s Counterclaims purport to make claims under the 

patent laws of the United States, Title 35 of the United States Code. Willow specifically denies 

that it has committed or is committing any act of patent infringement. Except as expressly 

admitted, Willow denies each and every allegation in Paragraph 1. 

2. Elvie alleges that Willow’s Willow Go product (the “Willow Go”) infringes each 

of the Elvie Asserted Patents. 

ANSWER: Willow denies each and every allegation in Paragraph 2, and specifically 

denies that it has committed or is committing any act of patent infringement. 

THE PARTIES 

3. Elvie is a company incorporated under the laws of England and Wales and located 

at 63-66 Hatton Garden, Second Floor, London, EC1N 8LE, United Kingdom. 

ANSWER: Willow is without information sufficient to form a belief as to the truth of the 

allegations of Paragraph 3, and on that basis denies them. 

4. On information and belief, Willow is a corporation organized and existing under 

the laws of the State of Delaware, having a principal place of business at 1975 El Camino Real, 

Suite 306, Mountain View, CA 94040. 

ANSWER: Willow admits that Willow is a corporation organized and existing under the 

laws of the State of Delaware, having a principal place of business at 1975 El Camino Real, 

Suite 306, Mountain View, CA 94040. 

JURISDICTION AND VENUE 

5. This is an action for patent infringement under 35 U.S. § 271. 

ANSWER: To the extent a response is required, Willow admits that Elvie’s 

Counterclaims purport to make claims for patent infringement under 35 U.S. § 271. Willow 

specifically denies that it has committed or is committing any act of patent infringement. 

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6. This Court has subject matter jurisdiction pursuant to 35 U.S.C. § 271 for Elvie’s 

claims of patent infringement arising under federal law. This Court also has jurisdiction over the 

subject matter of these counterclaims under 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202, and 35 

U.S.C. § 1 et seq. 

ANSWER: Willow admits, for purposes of this action only, that this Court has subject 

matter jurisdiction pursuant to 35 U.S.C. § 271 for Elvie’s claims of patent infringement arising 

under federal law. Willow specifically denies that it has committed or is committing any act of 

patent infringement. 

7. Willow has availed itself of this forum in this action and is therefore subject to 

personal jurisdiction in this district. 

ANSWER: Willow admits, for purposes of this action only, that this Court has specific 

personal jurisdiction over Willow Innovations, Inc. Except as expressly admitted, Willow denies 

each and every allegation in Paragraph 7, and specifically denies that it has committed or is 

committing any act of patent infringement. 

8. Willow purposefully availed itself of the benefit of conducting business in Texas 

by offering for sale and selling its Willow Go product in the State, including this District, 

through at least the online market places Amazon.com and shop.onewillow.com. 

ANSWER: Willow admits that it transacts business in the State of Texas and in the 

Eastern District of Texas. Except as expressly admitted, Willow denies each and every allegation 

in Paragraph 8, and specifically denies that it has committed or is committing any act of patent 

infringement. 

9. Willow, directly and through subsidiaries or intermediaries (including distributors 

and/or retailers) has purposefully and voluntarily placed its infringing products into the stream of 

commerce with the intention and expectation that the infringing products will be purchased for 

use in Texas and this District. Willow has intentionally targeted Texas, and this District, for its 

business activities and has purposefully availed itself of the benefits of conducting business in 

Texas such that it should reasonably anticipate being subject to its law and the jurisdiction of its 

courts. Further, Elvie’s infringement allegations arise out of and relate to Willow’s commercial 

activities in Texas. 

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ANSWER: Willow admits that it transacts business in the State of Texas and in the 

Eastern District of Texas. Except as expressly admitted, Willow denies each and every allegation 

in Paragraph 9, and specifically denies that it has committed or is committing any act of patent 

infringement. 

10. Venue is proper in this judicial district under §§ 1391 and 1400, and as a result of 

Willow’s choice of forum in filing this action. 

ANSWER: Willow admits, for purposes of this action only, that venue is proper in the 

Eastern District of Texas under 28 U.S.C. § 1400(b). Except as expressly admitted, Willow 

denies each and every allegation set forth in Paragraph 10, and specifically denies that it has 

committed or is committing any act of patent infringement. 

BACKGROUND 

11. Elvie is an award-winning company that was founded in April 2013 by Tania 

Boler, an internationally recognized women’s health expert, with the mission to revolutionize 

women’s healthcare by developing smarter, “female first” technology that improves the health 

and lives of women. 

ANSWER: Willow is without information sufficient to form a belief as to the truth of the 

allegations of Paragraph 11, and on that basis denies them. 

12. Since 2013, Elvie has innovated, developed and sold products in women’s 

healthcare categories which have been overlooked for many years, including breast pumps and 

pelvic floor health. The first product to launch, Elvie Trainer, is an award-winning Kegel trainer 

and app that helps women strengthen the pelvic floor. Its second product, Elvie Pump, is the 

world’s first silent, wearable breast pump. Elvie Pump launched during the 2018 London 

Fashion Week when Valeria Garcia walked the runway while wearing the Elvie Pump. 

ANSWER: Willow denies that Elvie Pump is the world’s first silent, wearable breast 

pump. Willow is without information sufficient to form a belief as to the truth of the remaining 

allegations of Paragraph 12, and on that basis denies them. 

13. By 2017, Elvie was recognized as one of the UK’s top 33 startups by 

TechCityUK and named one of the 15 startups “To Watch” by The Sunday Times. See Exhibit 1, 

Paul Abbott, 33 of the UK’s Most Promising Tech Companies Join Upscale 2017, TechNation 

(Jan. 26, 2017), https://technation.io/news/upscale-2017/; Exhibit 2, Research Report 2017, The 

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Sunday Times Tech Track at 23 (accessible at https://www.m2lasers.com/images/2017-TechTrack-100-research-report.pdf). Elvie is committed to continue investing in its innovative 

products to improve the lives of women around the globe. 

ANSWER: Willow is without information sufficient to form a belief as to the truth of the 

allegations of Paragraph 13, and on that basis denies them. 

14. Despite the important function of breast pumps for nursing parents, the breast 

pump industry remained largely stagnant for decades. See Exhibit 3, Sarah Buhr, Kegel trainer 

startup Elvie is launching a smaller, smarter, hands-free breast pump, TechCrunch (Sept. 14, 

2018), https://techcrunch.com/2018/09/14/kegel-trainer-startup-elvie-is-launching-a-smallersmarter-breast-pump/. 

ANSWER: Willow has no basis to admit or deny the statements in the cited article. 

Willow admits that innovation in the breast pump industry was largely stagnant for decades, but 

denies all remaining allegations in paragraph 14. 

15. In 2015, Elvie recognized that there was great need for innovation in the breast 

pump space. At the time, breast pumps were bulky, loud, and often required an electrical outlet. 

New mothers were in need of a breast pump that could meet the demands of a busy life. Elvie 

began investing substantial time and resources to investigate the issues women faced when using 

existing breast pumps. 

ANSWER: Willow admits that there was a need for improved breast pumps in the early 

2010s. Willow is without information sufficient to form a belief as to the truth of the remaining 

allegations of Paragraph 15, and on that basis denies them. 

16. Elvie determined that women were largely unhappy with the current breast pumps 

on the market and felt that the available pumps were impractical, difficult to fit into their busy 

lives, and made them feel like cows. Women wanted a solution that was strong and efficient, 

while also being quiet and discreet. Women also sought breast pumps that were easy to 

assemble, use, and clean, while also being portable and comfortable. 

ANSWER: Willow admits that there was a need for improved breast pumps in the early 

2010s. Willow is without information sufficient to form a belief as to the truth of the remaining 

allegations of Paragraph 16, and on that basis denies them. 

17. Elvie sought to give women a better pumping experience than what the current 

market allowed for and in 2015 began developing a new breast pump that was more suitable to 

what mothers actually wanted. Elvie’s development efforts focused on developing a superior 

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pump that would be discreet and that could be used anywhere, at any time. To achieve these 

goals, Elvie’s design objectives included housing all physical and functional elements of the 

pump within a single unit that could fit inside a bra. Elvie’s numerous other design 

considerations included a pump that required minimal set-up and that was easy to keep clean. 

ANSWER: Willow is without information sufficient to form a belief as to the truth of the 

allegations of Paragraph 17, and on that basis denies them. 

18. Elvie’s development efforts ultimately culminated in the launch of the Elvie 

Pump in September 2018. 

ANSWER: Willow is without information sufficient to form a belief as to the truth of the 

allegations of Paragraph 18, and on that basis denies them. 

19. Taking years of market research and all the above issues into consideration, Elvie 

developed the Elvie Pump, the world’s first silent, wearable breast pump. The Elvie Pump was 

designed to be “virtually silent,” “small enough to fit a standard nursing bra,” and “selfcontained.” See Ex. 18, Elvie Pump Introduction. 

ANSWER: Willow denies that Elvie Pump is the world’s first silent, wearable breast 

pump. Willow is without information sufficient to form a belief as to the truth of the allegations 

of Paragraph 19, and on that basis denies them. 

20. Elvie unveiled the Elvie Pump, on September 15, 2018, which became available 

for sale in October 2018. An example of the Elvie Pump is shown below. 

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ANSWER: Willow is without information sufficient to form a belief as to the truth of the 

allegations of Paragraph 20, and on that basis denies them. 

21. The Elvie Pump was launched on Elvie’s own e-commerce website as well as 

third party websites, such as amazon.com. 

ANSWER: Willow admits that the Elvie Pump was sold on Elvie’s website and third 

party websites, such as amazon.com. 

22. Noted as one of “the biggest innovation[s] in pumping technology of the past 100 

years,” see Elvie, Core77 Design Awards 2019, https://designawards.core77.com/healthwellness/85273/Elvie (last accessed May 10, 2023), the Elvie Pump’s trailblazing technology 

includes a coin-sized pump, sleek design, and the ability to run quietly and discreetly. 

ANSWER: Willow is without information sufficient to form a belief as to the truth of the 

allegations of Paragraph 22, and on that basis denies them. 

23. The Elvie Pump has won over 25 awards for its innovation, including 

International Design Awards, Mumsnet Awards, Dezeen Awards, Baby Magazine Awards, The 

Red Dot Awards and Good Design Awards amongst others. See Ex. 4. 

ANSWER: Willow is without information sufficient to form a belief as to the truth of the 

allegations of Paragraph 23, and on that basis denies them. 

24. For example, in 2019, TIME named the Elvie Pump as one of the “Best 

Inventions of 2019” (Exhibit 5); the Core77 Design Awards named the Elvie Pump as a runner 

up in the category of Health & Wellness (Exhibit 6); and Dezeen named the Elvie Pump the 

“Wearable Design of the Year.” (Exhibit 7). In 2020, the European Centre awarded the Elvie 

Pump the ‘Good Design Award.” (Exhibit 8). Further, in 2022, Forbes named the Elvie Pump the 

“Best Wearable Breast Pump.” (Exhibit 9). 

ANSWER: Willow is without information sufficient to form a belief as to the truth of the 

allegations of Paragraph 24, and on that basis denies them. 

25. In addition, Elvie Pump allows mothers to control the pump through a phone 

application. This allows mothers to customize the pump to fit their needs while giving them the 

freedom to pump whenever and wherever they would like. 

ANSWER: Willow admits that Elvie Pump allows mothers to control the pump through 

a phone application and allows mothers to customize the pump. Willow is without information 

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sufficient to form a belief as to the truth of the remaining allegations of Paragraph 25, and on that 

basis denies them. 

26. In order to protect its pioneering technology, Elvie applied for and received 

numerous patents covering its innovative breast pump, including the Elvie Asserted Patents, 

which claim priority to a number of Great Britain patent applications filed in June 2017. 

ANSWER: Willow denies that Elvie’s alleged technology is either innovative or 

pioneering. Willow avers that Paragraph 26 purports to reference written material and purports to 

characterize that material. Willow admits that Elvie applied for and received patents, but denies 

all remaining allegations in paragraph 26. 

27. On March 1, 2022, the United States Patent and Trademark Office (“USPTO”) 

duly and lawfully issued U.S. Patent No. 11,260,151 (the “’151 patent”), entitled “Breast Pump 

System.” A true and correct copy of the ’151 patent is attached hereto as Exhibit 10. The ’151 

patent was exclusively licensed to Elvie, and Elvie possesses the exclusive right of recovery for 

any past, present, or future infringement of the ’893 patent, including equitable relief and 

damages. 

ANSWER: Willow avers that Paragraph 27 purports to reference written material and 

purports to characterize that material. Willow admits that the cover page of the ’151 patent states 

that its title is “Breast Pump System” and that its date of issuance is March 1, 2022, but 

specifically denies that the ’151 patent was duly and legally issued. Willow admits that Exhibit 

10 to the Elvie’s Counterclaims purports to be a copy of the ’151 patent. Willow denies that a 

purported license to the ’151 patent provides Elvie with the exclusive right of recovery for any 

past, present, or future infringement of the ’893 patent. Willow is without information sufficient 

to form a belief as to the truth of the remaining allegations of Paragraph 27, and on that basis 

denies them. 

28. The ’151 patent claims priority to a number of Great Britain patent applications 

with priority dates as early as June 15, 2017. The ’151 patent issued from U.S. Patent 

Application No. 17/203,109 (the “’109 application) which was filed on March 16, 2021. The 

’109 application is a continuation of U.S. Patent Application No. 17/181,057 (the “’057 

application”), which was filed on February 22, 2023. The ’057 application is a continuation of 

U.S. Patent No. 16/009,547 (the “’547 application”), which was filed on June 15, 2018 and later 

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issued as U.S. Patent No. 10,926,011. 

ANSWER: Willow avers that Paragraph 28 purports to reference written material and 

purports to characterize that material. Willow admits that the ’151 patent purports to claim 

priority to certain Great Britain patent applications with priority dates as early as June 15, 2017. 

Willow admits that the cover page of the ’151 patent states that it issued from U.S. Patent 

Application No. 17/203,109 (the “’109 application) which was filed on March 16, 2021. Willow 

admits that the cover page of the ’151 patent states that the 109 application is a continuation of 

U.S. Patent Application No. 17/181,057 (the “’057 application”). To the extent that Elvie alleges 

that the ’057 application was filed on February 22, 2023, Willow denies all allegations with 

respect to the ’057 application. Willow admits that the cover page of the ’151 patent states that 

the ’057 application is a continuation of U.S. Patent No. 16/009,547 (the “’547 application”), 

which was filed on June 15, 2018 and later issued as U.S. Patent No. 10,926,011. 

29. On June 14, 2022, the United States Patent and Trademark Office (“USPTO”) 

duly and lawfully issued U.S. Patent No. 11,357,893 (the “’893 patent”), entitled, “Breast Pump 

System.” A true and correct copy of the ’893 patent is attached hereto as Exhibit 11. The ’893 

patent was exclusively licensed to Elvie, and Elvie possess the exclusive right of recovery for 

any past, present, or future infringements of the ’893 patent, including equitable relief and 

damages. 

ANSWER: Willow avers that Paragraph 29 purports to reference written material and 

purports to characterize that material. Willow admits that the cover page of the ’893 patent states 

that its title is “Breast Pump System” and that its date of issuance is June 14, 2022, but 

specifically denies that the ’893 patent was duly and legally issued. Willow admits that Exhibit 

11 to the Elvie’s Counterclaims purports to be a copy of the ’893 patent. Willow is without 

information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 

29, and on that basis denies them. 

30. The ’893 patent claims priority to a number of Great Britain patent applications 

with priority dates as early as June 15, 2017. The ’893 patent issued from U.S. Patent 

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Application No. 17/203,050 (the “’050 application”) which was filed on March 16, 2021. The 

’050 application is a continuation of U.S. Patent Application No. 17/181,057 (the “’057 

application”), which was filed on February 22, 2021. The ’057 application is a continuation of 

U.S. Patent Application 16/009,547 (the “’547 application”) which was filed on June 15, 2018 

and issued as U.S. Patent No. 10,926,011. 

ANSWER: Willow avers that Paragraph 30 purports to reference written material and 

purports to characterize that material. Willow admits that the ’893 patent purports to claim 

priority to certain Great Britain patent applications with priority dates as early as June 15, 2017. 

Willow admits that the cover page of the ’893 patent states that it issued from U.S. Patent 

Application No. 17/203,050 (the “’050 application”) which was filed on March 16, 2021. Willow 

admits that the cover page of the ’893 patent states that the ’050 application is a continuation of 

U.S. Patent Application No. 17/181,057 (the “’057 application”), which was filed on February 

22, 2021. Willow admits that the cover page of the ’893 patent states that the ’057 application is 

a continuation of U.S. Patent Application 16/009,547 (the “’547 application”) which was filed on 

June 15, 2018 and issued as U.S. Patent No. 10,926,011. 

31. On August 16, 2022, the United States Patent and Trademark Office (“USPTO”) 

duly and lawfully issued U.S. Patent No. 11,413,380 (the “’380 patent”), entitled, “Breast Pump 

System.” A true and correct copy of the ’380 patent is attached hereto as Exhibit 12. The ’380 

patent was exclusively licensed to Elvie, and Elvie possess the exclusive right of recovery for 

any past, present, or future infringements of the ’380 patent, including equitable relief and 

damages. 

ANSWER: Willow avers that Paragraph 31 purports to reference written material and 

purports to characterize that material. Willow admits that the cover page of the ’380 patent states 

that its title is “Breast Pump System” and that its date of issuance is August 16, 2022, but 

specifically denies that the ’380 patent was duly and legally issued. Willow admits that Exhibit 

12 to the Elvie’s Counterclaims purports to be a copy of the ’380 patent. Willow is without 

information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 

31, and on that basis denies them. 

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32. The ’380 patent claims priority to a number of Great Britain patent applications 

with priority dates as early as June 15, 2017. The ’380 patent issued from U.S. Patent 

Application No. 17/203,327 (the “’327 application”), which was filed on March 16, 2021. The 

’327 application is a continuation of U.S. Patent Application No. 17/181,057 (the “’057 

application”), which was filed on February 22, 2021. The ’057 application is a continuation of 

U.S. Patent Application No. 16/009,547 (the “’547 application”), which was filed on June 15, 

2018 and issued as U.S. Patent No. 10,926,011. 

ANSWER: Willow avers that Paragraph 32 purports to reference written material and 

purports to characterize that material. Willow admits that the ’380 patent purports to claim 

priority to certain Great Britain patent applications with priority dates as early as June 15, 2017. 

Willow admits that the cover page of the ’380 patent states that it issued from U.S. Patent 

Application No. 17/203,327 (the “’327 application”), which was filed on March 16, 2021. 

Willow admits that the cover page of the ’380 patent states that the ’327 application is a 

continuation of U.S. Patent Application No. 17/181,057 (the “’057 application”), which was filed 

on February 22, 2021. Willow admits that the cover page of the ’380 patent states that the ’057 

application is a continuation of U.S. Patent Application No. 16/009,547 (the “’547 application”), 

which was filed on June 15, 2018 and issued as U.S. Patent No. 10,926,011. 

33. On August 22, 2023, the USPTO duly and lawfully issued U.S. Patent No. 

11,730,867 (the “’867 patent”), entitled, “Breast Pump System.” A true and correct copy of the 

’867 patent is attached hereto as Exhibit 25. The ’867 patent was exclusively licensed to Elvie, 

and Elvie possesses the exclusive right of recovery for any past, present, or future infringements 

of the ’867 patent, including equitable relief and damages. 

ANSWER: Willow avers that Paragraph 33 purports to reference written material and 

purports to characterize that material. Willow admits that the cover page of the ’867 patent states 

that its title is “Breast Pump System” and that its date of issuance is August 22, 2023, but 

specifically denies that the ’867 patent was duly and legally issued. Willow admits that Exhibit 

25 to the Elvie’s Counterclaims purports to be a copy of the ’867 patent. Willow is without 

information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 

33, and on that basis denies them. 

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34. The ’867 patent claims priority to U.S. Patent Application No. 17/181,057 (the 

“’057 application”), which was filed on February 22, 2021. The ’057 application is a 

continuation of the ’547 application, which was filed on June 15, 2018 and issued as U.S. Patent 

No. 10,926,011. 

ANSWER: Willow avers that Paragraph 34 purports to reference written material and 

purports to characterize that material. Willow admits that the ’867 patent purports claim priority 

to U.S. Patent Application No. 17/181,057 (the “’057 application”), which was filed on February 

22, 2021. Willow admits that the cover page of the ’867 patent states that the ’057 application is 

a continuation of the ’547 application, which was filed on June 15, 2018 and issued as U.S. 

Patent No. 10,926,011. 

35. During the Elvie Pump development process that began in 2015, competitor 

breast pumps continued to arrive on the market. One example was the Willow Wearable Breast 

Pump, which was Willow’s first breast pump that launched in January 2017. See Exhibit 13. A 

picture of the Willow Wearable Breast Pump is shown below. 

ANSWER: Willow admits that its Wearable Breast Pump was available for purchase by 

the public at least as early as January 2017. Except as expressly admitted, Willow denies all 

remaining allegations in Paragraph 35. 

36. On information and belief, Willow obtained a number of patents covering the 

Willow Wearable Breast Pump, including Willow’s Asserted Patents. See Exhibit 14, Willow’s 

Patents (https://onewillow.com/about-willow/patents/#). 

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ANSWER: Willow admits that it obtained a number of patents covering its wearable 

breast pumps, including Willow’s Asserted Patents. 

37. However, Willow’s Wearable Breast Pump had numerous drawbacks and still 

lacked critical features that nursing parents wanted. For example, it was loud, heavy, and 

required single-use plastic bags to collect the milk. See Exhibit 15, TechCrunch. 

(https://techcrunch.com/2018/09/14/kegel-trainer-startup-elvie-is-launching-a-smaller-smarterbreast-pump/). 

ANSWER: Willow denies each and every allegation in Paragraph 37. 

38. Through its research, Elvie had received substantial negative feedback regarding 

the use of milk bags. A pump design that required the use of milk collection bags would mean 

that women would need to continue to purchase milk bags for use with the breast pump. The use 

of milk bags was also inconvenient because it required the user to stop pumping to change out 

the milk bag once full. Thus, Elvie sought to design a breast pump that integrated the milk 

collection vessel within the bra itself and excluded the use of milk bags. 

ANSWER: Willow is without information sufficient to form a belief as to the truth of the 

allegations of Paragraph 38, and on that basis denies them. 

39. Willow’s Wearable Breast Pump utilized a pump architecture that generated 

negative pressure via compressing the milkflow path. Specifically, it used compression elements 

that cycled between moving away from the milkflow tube to increase vacuum and compressing 

the milkflow tube to decrease vacuum. But Elvie developed an improved pump architecture 

where the negative pressure was generated by the diaphragm above the nipple tunnel, and not 

directly in the milk flow pathway. This improvement allowed the negative pressure-generating 

elements to be isolated from how the milk is expressed. Moreover, Willow’s original pump 

design required the inefficient upward flow of the milk path, which the Elvie Pump does not 

require. 

ANSWER: Willow denies each and every allegation in Paragraph 39. 

40. Therefore, after years of development efforts, Elvie launched its Elvie Pump 

product, which was unprecedented in its ease of use, portability, and superior pump architecture. 

In comparison to the Willow Wearable Breast Pump, the Elvie Pump was more discreet and 

portable; it was quiet, did not require any bags, and was half the weight and size of the Willow 

breast pump. See Exhibit 24. With its in-bra, discreet, silent, and wireless design, the Elvie Pump 

system has changed the way that mothers are able to breastfeed. 

ANSWER: Willow denies each and every allegation in Paragraph 40. 

41. Willow, upon seeing the success of the Elvie Pump, began adopting Elvie 

technology into Willow products. Notably, Elvie’s smaller, more discreet architecture and 

several other features found in the Elvie Pump (and the Elvie Asserted Patents) are now found in 

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Willow’s next generation pump, the Willow Go, which was launched in 2022. 

ANSWER: Willow denies each and every allegation in Paragraph 41. 

42. Unsatisfied with merely copying Elvie’s technology and seeking to capitalize on 

the Elvie Pump’s success, Willow filed the instant suit against Elvie asserting patent 

infringement. Importantly, however, the Elvie Pump does not infringe any of Willow’s Asserted 

Patents, because Willow’s claims are narrowly tailored to cover Willow’s original, inferior 

architecture. In contrast, all of the features Willow has copied from Elvie’s products are 

memorialized and protected in Elvie’s intellectual property. Willow’s unfounded lawsuit 

asserting irrelevant patents necessitated these counterclaims asserting Elvie’s significant and 

growing patent portfolio. 

ANSWER: Willow denies each and every allegation in Paragraph 42. 

43. Willow announced the release of the Willow Go device on March 29, 2022. See

Ex. 19, Willow Go Press Release (https://onewillow.com/newsroom/willow-expands-productsuite-and-unveils-willow-go-its-fully-in-bra-wearable-breast-pump-for-only-329/). In its press 

release, the Willow Go noted that it was “ultra-quiet and discreet.” Id. A photo of the Willow Go 

is shown below. 

ANSWER: Willow admits that it announced the release of the Willow Go device on 

March 29, 2022, and that its press release noted Willow Go as “ultra-quiet and discreet.” Except 

as expressly admitted, Willow denies all remaining allegations in Paragraph 43. 

44. On information and belief, the Willow Go device is offered for sale and sold 

within the United States utilizing Elvie’s patented technology. 

ANSWER: Willow denies each and every allegation in Paragraph 44. 

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45. On information and belief, Willow has sold the Willow Go in the United States, 

including this District and throughout Texas through online marketplaces. For example, the 

Willow Go is available online at Willow’s own online store at https://shop.onewillow.com and 

Amazon.com. See Exhibit 16. 

ANSWER: Willow admits that it transacts business in the State of Texas and in the 

Eastern District of Texas. 

46. Willow describes the Willow Go as “[t]otally in-bra (even the motor)” and 

“unique because, unlike traditional breast pumps, everything works inside the pump, inside your 

bra—no external tubes, cords, wires, or dangling bottles.” See Exhibit 17 

(https://shop.onewillow.com/products/willow-go-pump-kit). But these allegedly “unique” 

features were disclosed several years prior in the Elvie Pump and Elvie’s Asserted Patents. 

ANSWER: Willow denies that the text quoted in Paragraph 46 appears in Exhibit 17. 

Willow denies each and every allegation in Paragraph 46, and specifically denies that it has 

committed or is committing any act of patent infringement. 

47. Notably, in its next-generation pump, Willow discarded its original, inferior 

method of generating negative pressure via compressing the milkflow path. Indeed, on 

information and belief, the Willow Go is not covered by any Willow U.S. Patents or Patent 

Applications. See Exhibit 18, Willow Patent Page (noting that only the “Willow Wearable Breast 

Pump” practices the Asserted Patents). Rather, the Willow Go copies the Elvie Pump’s improved 

pump architecture where the negative pressure is generated by the diaphragm. 

ANSWER: Willow denies each and every allegation in Paragraph 47, and specifically 

denies that it has committed or is committing any act of patent infringement. 

48. On information and belief, Willow has been knowledgeable about Elvie’s 

Asserted Patents since their issuance dates. 

ANSWER: Willow denies each and every allegation in Paragraph 48. 

49. On information and belief, as a competitor in the breast pump market, Willow 

monitors competitor patent applications and issued patents. 

ANSWER: Willow admits that Elvie is a competitor in the breast pump market. Willow 

denies that it monitors patent applications and issued patents of all its competitors. 

50. On information and belief, Willow monitors the patent applications, issued 

patents, and litigation activity of competitors including at least Elvie. 

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ANSWER: Willow denies each and every allegation in Paragraph 50. 

51. Elvie provides notice of its patents, including the Elvie Asserted Patents, for each 

of its products through its website in compliance with all statutory requirements, including the 

requirements of 35 U.S.C. § 287, to pursue and recover for any infringement of the Elvie 

Asserted Patents. See Ex. 20. Elvie’s website specifically notes that the Elvie Pump is covered by 

Elvie’s Asserted Patents. See id. 

ANSWER: Willow admits that Elvie’s website currently lists the Elvie Pump as covered 

by the ’151, ’893, and ’380 patents, but denies that the Elvie Pump is covered by any valid and 

enforceable claims of the ’151, ’893, and ’380 patents. Willow denies that Elvie lists the ’867 

patent on its website, and denies that the Elvie Pump is covered by any valid and enforceable 

claims of the ’867 patent. Except as expressly admitted, Willow denies all remaining allegations 

in Paragraph 51. 

52. As a policy, Elvie provides notice of its patents, including the Elvie Asserted 

Patents, through its website soon after grant. See, e.g., Ex. 20 (Elvie’s website specifically noting 

that, as of August 14, 2023, the Elvie Pump is covered by the ’893, ’380, and ’151 Patents). 

ANSWER: Willow is without information sufficient to form a belief as to the truth of the 

allegations of Paragraph 52, and on that basis denies them. 

53. In the alternative, Willow has had knowledge of Elvie’s Asserted Patents at least 

as of the filing date of this Counterclaim. 

ANSWER: Willow admits that it has had knowledge of Elvie’s Asserted Patents as of 

the filing date of Elvie’s Counterclaims. 

54. Therefore, at least as of the date of this Counterclaim, Willow has had knowledge 

that its products infringe Elvie’s Asserted Patents. 

ANSWER: Willow denies each and every allegation in Paragraph 54. 

55. Willow’s knowledge of Elvie’s Asserted Patents is sufficient to satisfy the 

knowledge element for induced, contributory, and willful infringement. 

ANSWER: Willow denies each and every allegation in Paragraph 55. 

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COUNT I: [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 11,357,8931

56. Elvie realleges and incorporates by reference paragraphs 1-55 of this counterclaim 

as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-55 above, as if fully set forth herein. 

57. The ’893 patent is directed towards a wearable breast pump system including a 

housing shaped at least in part to fit inside a bra and an air-pump. Exemplary claim 1 of the ’893 

patent recites: 

A breast pump device that is configured as a self-contained, in-bra wearable 

device, the breast pump device containing: 

a housing that includes: 

a battery, and 

a pump powered by the battery and generating negative air 

pressure; 

a breast shield made up of a breast flange and a nipple tunnel; 

a milk container that is configured to be attached to and removed from the 

housing; and 

a diaphragm configured to be seated against a diaphragm holder that forms 

a recess or cavity at least in part with an external surface of the 

housing, the diaphragm deforming in response to changes in air 

pressure caused by the pump to create negative air pressure in the 

nipple tunnel. 

ANSWER: Willow admits that the text quoted in Paragraph 57 appears in the ’893 

patent. Willow further states that the ’893 patent speaks for itself. Except as expressly admitted, 

Willow denies all remaining allegations in Paragraph 57. 

58. Willow has directly infringed and continues to directly infringe one or more 

claims of the ’893 patent in violation of 35 U.S.C. § 271(a) by making, using, offering to sell, 

selling, and/or importing into the United States products that include, but are not limited to, the 

Willow Go device. For example, the Willow Go includes or performs each and every limitation 

of at least claim 1 of the ’893 patent, either literally or under the doctrine of equivalents. 

ANSWER: Willow denies each and every allegation in Paragraph 58, and specifically 

denies that it has committed or is committing any act of patent infringement. 

1 Willow uses the headings in Elvie’s Counterclaims, as well as corresponding numbered paragraphs, for 

convenience. Willow does not admit any allegations contained in those headings.

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59. Elvie attaches hereto Exhibit 22 which provide an exemplary claim chart 

describing how the Willow Go meets the limitations described in claim 1 of the ’893 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 59, and specifically 

denies that it has committed or is committing any act of patent infringement. 

60. Plaintiff also indirectly infringes one or more claims of the ’893 patent in 

violation of 35 U.S.C. § 271(b) and/or (c) by actively inducing infringement of the Asserted 

Patent by offering to sell or selling within the United States a device covered by the claims of the 

Asserted Patent that is not a staple article or commodity of commerce suitable for substantial 

non-infringing uses. 

ANSWER: Willow denies each and every allegation in Paragraph 60, and specifically 

denies that it has committed or is committing any act of patent infringement. 

61. For example, Willow instructs customers of its Willow Go on how to use and 

operate the Accused Product. 

ANSWER: Willow admits that it provides, to customers of the Willow Go, product 

support and answers to frequently asked questions. Willow specifically denies that it has 

committed or is committing any act of patent infringement, and thus denies that it instructs 

customers of the Willow Go how to use or operate the product in an infringing manner. 

62. Willow’s direct and indirect infringement of the ’893 patent has been, and 

continues to be, willful. On information and belief, Plaintiff has been aware of the ’893 patent 

since before the filing of this Complaint and has infringed the ’893 patent willfully and 

deliberately and with knowledge that such conduct violates 35 U.S.C. § 271. 

ANSWER: Willow denies each and every allegation in Paragraph 62, and specifically 

denies that it has committed or is committing any act of patent infringement. 

63. Willow’s infringement of the ’893 patent has damaged, and continues to damage 

Elvie in an amount yet to be determined, of at least a reasonable royalty and/or lost profits that 

Elvie would have made but for Willow’s infringing acts as provided by 35 U.S.C. § 284. 

ANSWER: Willow denies each and every allegation in Paragraph 63, and specifically 

denies that it has committed or is committing any act of patent infringement. 

64. Elvie will suffer irreparable harm unless Willow is enjoined from infringing the 

’893 patent. 

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ANSWER: Willow denies each and every allegation in Paragraph 64, and specifically 

denies that it has committed or is committing any act of patent infringement. 

COUNT II: [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 11,413,380

65. Elvie realleges and incorporates by reference paragraphs 1-64 of this counterclaim 

as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-64 above, as if fully set forth herein. 

66. The ’380 patent is directed towards a wearable breast pump system including a 

housing shaped at least in part to fit inside a bra and an air-pump. Exemplary claim 29 of the 

’380 patent recites: 

A breast pump device that is configured as a self-contained, in-bra wearable 

device, the breast pump device comprising: 

a self-contained, in-bra wearable device comprising: 

a housing that includes: 

a rechargeable battery, 

a power charging circuit for controlling charging of the 

rechargeable battery, 

control electronics powered by the rechargeable battery, 

a pump powered by the rechargeable battery and configured to 

generate negative air pressure, and 

a Universal Serial Bus (USB) charging socket for transferring 

power to the power charging circuit and the rechargeable 

battery; 

a breast shield made up of a breast flange and a nipple tunnel; 

a milk container that is configured to be attached to and removed from the 

housing; and 

a membrane that is configured to define a pumping chamber at least in 

part with an external surface of the housing, the membrane configured to 

deform in response to changes in air pressure caused by the pump to create 

negative air pressure in the nipple tunnel. 

ANSWER: Willow admits that the text quoted in Paragraph 66 appears in the ’380 

patent. Willow further states that the ’380 patent speaks for itself. Except as expressly admitted, 

Willow denies all remaining allegations in Paragraph 66. 

67. Willow has directly infringed and continues to directly infringe one or more 

claims of the ’380 patent in violation of 35 U.S.C. § 271(a) by making, using, offering to sell, 

selling, and/or importing into the United States products that include, but are not limited to, the 

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Willow Go device. For example, the Willow Go includes or performs each and every limitation 

of at least, claim 29 of the ’380 patent, either literally or under the doctrine of equivalents. 

ANSWER: Willow denies each and every allegation in Paragraph 67, and specifically 

denies that it has committed or is committing any act of patent infringement. 

68. Elvie attaches hereto Exhibit 23 which provides an exemplary claim chart 

describing how the Willow Go meets the limitations described in claim 29 of the ’380 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 68, and specifically 

denies that it has committed or is committing any act of patent infringement. 

69. Plaintiff also indirectly infringes one or more claims of the ’380 patent in 

violation of 35 U.S.C. § 271(b) and/or (c) by actively inducing infringement of the Asserted 

Patent by offering to sell or selling within the United States a device covered by the claims of the 

Asserted Patent that is not a staple article or commodity of commerce suitable for substantial 

non-infringing uses. 

ANSWER: Willow denies each and every allegation in Paragraph 69, and specifically 

denies that it has committed or is committing any act of patent infringement. 

70. For example, Willow instructs customers of its Willow Go on how to use and 

operate the Accused Product. 

ANSWER: Willow admits that it provides, to customers of the Willow Go, product 

support and answers to frequently asked questions. Willow specifically denies that it has 

committed or is committing any act of patent infringement, and thus denies that it instructs 

customers of the Willow Go how to use or operate the product in an infringing manner. 

71. Willow’s direct and indirect infringement of the ’380 patent has been, and 

continues to be, willful. On information and belief, Plaintiff has been aware of the ’380 patent 

since before the filing of this Complaint and has infringed the ’380 patent willfully and 

deliberately and with knowledge that such conduct violates 35 U.S.C. § 271. 

ANSWER: Willow denies each and every allegation in Paragraph 71, and specifically 

denies that it has committed or is committing any act of patent infringement. 

72. Willow’s infringement of the ’380 patent has damaged, and continues to damage 

Elvie in an amount yet to be determined, of at least a reasonable royalty and/or lost profits that 

Elvie would have made but for Willow’s infringing acts as provided by 35 U.S.C. § 284. 

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ANSWER: Willow denies each and every allegation in Paragraph 72, and specifically 

denies that it has committed or is committing any act of patent infringement. 

73. Elvie will suffer irreparable harm unless Willow is enjoined from infringing the 

’380 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 73, and specifically 

denies that it has committed or is committing any act of patent infringement. 

COUNT III: [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 11,260,151

74. Elvie realleges and incorporates by reference paragraphs 1-73 of this counterclaim 

as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-63 above, as if fully set forth herein. 

75. The ’151 patent is directed towards a wearable breast pump system including a 

housing shaped at least in part to fit inside a bra and an air-pump. Exemplary claim 1 of the ’151 

patent recites: 

A breast pump device that is configured as a self-contained, in-bra wearable 

device, the breast pump device comprising: 

(i) a housing that includes (a) a battery, and (b) an air pump system 

powered by the battery and generating negative air pressure; 

(ii) a breast shield made up of a breast flange and a nipple tunnel; and 

(iii) a milk container that is configured to attach to the housing; 

and in which a location of the centre of gravity of the breast pump device 

is, when in use, below a centre of the nipple tunnel when the milk 

container is empty. 

ANSWER: Willow admits that the text quoted in Paragraph 75 appears in the ’151 

patent. Willow further states that the ’151 patent speaks for itself. Except as expressly admitted, 

Willow denies all remaining allegations in Paragraph 75. 

76. Willow has directly infringed and continues to directly infringe one or more 

claims of the ’151 patent in violation of 35 U.S.C. § 271(a) by making, using, offering to sell, 

selling, and/or importing into the United States products that include, but are not limited to, the 

Willow Go device. For example, the Willow Go includes or performs each and every limitation 

of at least, claim 1 of the ’151 patent, either literally or under the doctrine of equivalents. 

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ANSWER: Willow denies each and every allegation in Paragraph 76, and specifically 

denies that it has committed or is committing any act of patent infringement. 

77. Elvie attaches hereto Exhibit 21 which provides an exemplary claim chart 

describing how the Willow Go meets the limitations described in claim 1 of the ’151 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 77, and specifically 

denies that it has committed or is committing any act of patent infringement. 

78. Plaintiff also indirectly infringes one or more claims of the ’151 patent in 

violation of 35 U.S.C. § 271(b) and/or (c) by actively inducing infringement of the Asserted 

Patent by offering to sell or selling within the United States a device covered by the claims of the 

Asserted Patent that is not a staple article or commodity of commerce suitable for substantial 

non-infringing uses. 

ANSWER: Willow denies each and every allegation in Paragraph 78, and specifically 

denies that it has committed or is committing any act of patent infringement. 

79. For example, Willow instructs customers of its Willow Go on how to use and 

operate the Accused Product. 

ANSWER: Willow admits that it provides, to customers of the Willow Go, product 

support and answers to frequently asked questions. Willow specifically denies that it has 

committed or is committing any act of patent infringement, and thus denies that it instructs 

customers of the Willow Go how to use or operate the product in an infringing manner. 

80. Willow’s direct and indirect infringement of the ’151 patent has been, and 

continues to be, willful. On information and belief, Plaintiff has been aware of the ’151 patent 

since before the filing of this Complaint and has infringed the ’151 patent willfully and 

deliberately and with knowledge that such conduct violates 35 U.S.C. § 271. 

ANSWER: Willow denies each and every allegation in Paragraph 80, and specifically 

denies that it has committed or is committing any act of patent infringement. 

81. Willow’s infringement of the ’151 patent has damaged, and continues to damage 

Elvie in an amount yet to be determined, of at least a reasonable royalty and/or lost profits that 

Elvie would have made but for Willow’s infringing acts as provided by 35 U.S.C. § 284. 

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ANSWER: Willow denies each and every allegation in Paragraph 81, and specifically 

denies that it has committed or is committing any act of patent infringement. 

82. Elvie will suffer irreparable harm unless Willow is enjoined from infringing the 

’151 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 82, and specifically 

denies that it has committed or is committing any act of patent infringement. 

COUNT IV: [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 11,730,867

83. Elvie realleges and incorporates by reference paragraphs 1-82 of this counterclaim 

as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-82 above, as if fully set forth herein. 

84. The ’867 patent is directed towards a wearable breast pump system including a 

housing shaped at least in part to fit inside a bar [sic] and an air-pump. Exemplary claim 1 of the 

’867 patent recites: 

A breast pump device comprising: 

a self-contained, in-bra wearable device comprising: 

a housing, the housing comprising 

a battery, and 

a pump system configured to be powered by the battery and further 

configured to generate negative air pressure; 

a breast shield comprising a breast flange and a nipple tunnel; and 

a milk container configured to be attached to the housing, 

wherein, in use, the breast shield is configured to contact the milk 

container and a majority of an inner surface of the housing, the 

inner surface of the housing configured to face a wearer’s breast. 

ANSWER: Willow admits that the text quoted in Paragraph 84 appears in the ’867 

patent. Willow further states that the ’867 patent speaks for itself. Except as expressly admitted, 

Willow denies all remaining allegations in Paragraph 84. 

85. Willow has directly infringed and continues to directly infringe one or more 

claims of the ’867 patent in violation of 35 U.S.C. § 271(a) by making, using, offering to sell, 

selling, and/or importing into the United States products that include, but are not limited to, the 

Willow Go device. For example, the Willow Go includes or performs each and every limitation 

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24 

of at least, claim 1 of the ’867 patent, either literally or under the doctrine of equivalents. 

ANSWER: Willow denies each and every allegation in Paragraph 85, and specifically 

denies that it has committed or is committing any act of patent infringement. 

86. Elvie attaches hereto Exhibit 26 which provides an exemplary claim chart 

describing how the Willow Go meets the limitations described in claim 1 of the ’867 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 86, and specifically 

denies that it has committed or is committing any act of patent infringement. 

87. Plaintiff also indirectly infringes one or more claims of the ’867 patent in 

violation of 35 U.S.C. § 271(b) and/or (c) by actively inducing infringement of the Asserted 

Patent by offering to sell or selling within the United States a device covered by the claims of the 

Asserted Patent that is not a staple article or commodity of commerce suitable for substantial 

non-infringing uses. 

ANSWER: Willow denies each and every allegation in Paragraph 87, and specifically 

denies that it has committed or is committing any act of patent infringement. 

88. For example, Willow instructs customers of its Willow Go on how to use and 

operate the Accused Product. 

ANSWER: Willow admits that it provides, to customers of the Willow Go, product 

support and answers to frequently asked questions. Willow specifically denies that it has 

committed or is committing any act of patent infringement, and thus denies that it instructs 

customers of the Willow Go how to use or operate the product in an infringing manner. 

89. Willow’s direct and indirect infringement of the ’867 patent has been, and 

continues to be, willful. On information and belief, Plaintiff has been aware of the ’867 patent 

since before the filing of this Amended Complaint and has infringed the ’867 patent willfully and 

deliberately and with knowledge that such conduct violates 35 U.S.C. § 271. 

ANSWER: Willow denies each and every allegation in Paragraph 89, and specifically 

denies that it has committed or is committing any act of patent infringement. 

90. Willow’s infringement of the ’867 patent has damaged, and continues to damage 

Elvie in an amount yet to be determined, of at least a reasonable royalty and/or lost profits that 

Elvie would have made but for Willow’s infringing acts as provided by 35 U.S.C. § 284. 

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ANSWER: Willow denies each and every allegation in Paragraph 90, and specifically 

denies that it has committed or is committing any act of patent infringement. 

91. Elvie will suffer irreparable harm unless Willow is enjoined from infringing the 

’867 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 91, and specifically 

denies that it has committed or is committing any act of patent infringement. 

COUNT V: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. PATENT NO. 10,398,816 

92. Elvie realleges and incorporates by reference paragraphs 1-91 of this counterclaim 

as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-91 above, as if fully set forth herein. 

93. The ’816 patent is invalid for failure to comply with one or more requirements of 

35 U.S.C. §§ 101, 102, 103, and/or 112 and/or obviousness-type double patenting. 

ANSWER: Willow denies each and every allegation in Paragraph 93. 

94. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’816 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’816 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’816 patent. 

95. Elvie is entitled to a declaration by the Court that the ’816 patent is invalid. 

ANSWER: Willow denies each and every allegation in Paragraph 95. 

96. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 96. 

COUNT VI: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. PATENT NO. 10,398,816 

97. Elvie realleges and incorporates by reference paragraphs 1-96 of this counterclaim 

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26 

as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-96 above, as if fully set forth herein. 

98. Elvie has not infringed any valid and enforceable claim of the ’816 patent, either 

literally or under the doctrine of equivalents, willfully or otherwise. 

ANSWER: Willow denies each and every allegation in Paragraph 98. 

99. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’816 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’816 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’816 patent. 

100. Elvie is entitled to a declaration by the Court that Elvie does not infringe any 

valid and enforceable claim of the ’816 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 100. 

101. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 101. 

COUNT VII: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. PATENT NO. 10,434,228 

102. Elvie realleges and incorporates by reference paragraphs 1-101 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-101 above, as if fully set forth herein. 

103. The ’228 patent is invalid for failure to comply with one or more requirements of 

35 U.S.C. §§ 101, 102, 103, and/or 112 and/or obviousness-type double patenting. 

ANSWER: Willow denies each and every allegation in Paragraph 103. 

104. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’228 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’228 patent, as reflected in the Complaint. 

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ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’228 patent. 

105. Elvie is entitled to a declaration by the Court that the ’228 patent is invalid. 

ANSWER: Willow denies each and every allegation in Paragraph 105. 

106. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 106. 

COUNT VIII: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. PATENT NO. 10,398,228 

107. Elvie realleges and incorporates by reference paragraphs 1-106 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-106 above, as if fully set forth herein. 

108. Elvie has not infringed any valid and enforceable claim of the ’228 patent, either 

literally or under the doctrine of equivalents, willfully or otherwise. 

ANSWER: Willow denies each and every allegation in Paragraph 108. 

109. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’228 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’228 patent, as reflected in the Complaint. 

ANSWER: To the extent that Elvie alleges that Willow has brought suit against Elvie, 

alleging that Elvie infringes U.S. Patent No. 10,398,228, Willow denies all allegations with 

respect to U.S. Patent No. 10,398,228. Willow admits that it has brought suit against Elvie, 

alleging that Elvie infringes U.S. Patent No. 10,434,228. 

110. Elvie is entitled to a declaration by the Court that Elvie does not infringe any 

valid and enforceable claim of the ’228 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 110. 

111. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

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28 

ANSWER: Willow denies each and every allegation in Paragraph 111. 

COUNT IX: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. PATENT NO. 10,625,005 

112. Elvie realleges and incorporates by reference paragraphs 1-111 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-111 above, as if fully set forth herein. 

113. The ’005 patent is invalid for failure to comply with one or more requirements of 

35 U.S.C. §§ 101, 102, 103, and/or 112 and/or obviousness-type double patenting. 

ANSWER: Willow denies each and every allegation in Paragraph 113. 

114. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’005 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’005 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’005 patent. 

115. Elvie is entitled to a declaration by the Court that the ’005 patent is invalid. 

ANSWER: Willow denies each and every allegation in Paragraph 115. 

116. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 116. 

COUNT X: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. PATENT NO. 10,625,005 

117. Elvie realleges and incorporates by reference paragraphs 1-116 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-116 above, as if fully set forth herein. 

118. Elvie has not infringed any valid and enforceable claim of the ’005 patent, either 

literally or under the doctrine of equivalents, willfully or otherwise. 

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ANSWER: Willow denies each and every allegation in Paragraph 118. 

119. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’005 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’005 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’005 patent. 

120. Elvie is entitled to a declaration by the Court that Elvie does not infringe any 

valid and enforceable claim of the ’005 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 120. 

121. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 121. 

COUNT XI: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. PATENT NO. 10,722,624 

122. Elvie realleges and incorporates by reference paragraphs 1-121 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-121 above, as if fully set forth herein. 

123. The ’624 patent is invalid for failure to comply with one or more requirements of 

35 U.S.C. §§ 101, 102, 103, and/or 112 and/or obviousness-type double patenting. 

ANSWER: Willow denies each and every allegation in Paragraph 123. 

124. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’624 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’624 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’624 patent. 

125. Elvie is entitled to a declaration by the Court that the ’624 patent is invalid. 

ANSWER: Willow denies each and every allegation in Paragraph 125. 

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126. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 126. 

COUNT XII: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. PATENT NO. 10,722,624 

127. Elvie realleges and incorporates by reference paragraphs 1-126 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-126 above, as if fully set forth herein. 

128. Elvie has not infringed any valid and enforceable claim of the ’624 patent, either 

literally or under the doctrine of equivalents, willfully or otherwise. 

ANSWER: Willow denies each and every allegation in Paragraph 128. 

129. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’624 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’624 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’624 patent. 

130. Elvie is entitled to a declaration by the Court that Elvie does not infringe any 

valid and enforceable claim of the ’624 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 130. 

131. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 131. 

COUNT XIII: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. PATENT NO. 11,185,619 

132. Elvie realleges and incorporates by reference paragraphs 1-131 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-121 above, as if fully set forth herein. 

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133. The ’619 patent is invalid for failure to comply with one or more requirements of 

35 U.S.C. §§ 101, 102, 103, and/or 112 and/or obviousness-type double patenting. 

ANSWER: Willow denies each and every allegation in Paragraph 133. 

134. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’619 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’619 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’619 patent. 

135. Elvie is entitled to a declaration by the Court that the ’619 patent is invalid. 

ANSWER: Willow denies each and every allegation in Paragraph 135. 

136. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 136. 

COUNT XIV: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. PATENT NO. 11,185,619 

137. Elvie realleges and incorporates by reference paragraphs 1-136 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-136 above, as if fully set forth herein. 

138. Elvie has not infringed any valid and enforceable claim of the ’619 patent, either 

literally or under the doctrine of equivalents, willfully or otherwise. 

ANSWER: Willow denies each and every allegation in Paragraph 138. 

139. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’619 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’619 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’619 patent. 

140. Elvie is entitled to a declaration by the Court that Elvie does not infringe any 

valid and enforceable claim of the ’619 patent. 

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ANSWER: Willow denies each and every allegation in Paragraph 140. 

141. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 141. 

COUNT XV: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. DESIGN PATENT NO. D832,995 

142. Elvie realleges and incorporates by reference paragraphs 1-141 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-141 above, as if fully set forth herein. 

143. The ’D995 patent is invalid for failure to comply with one or more requirements 

of 35 U.S.C. §§ 102, 103, 112 and/or 171. 

ANSWER: Willow denies each and every allegation in Paragraph 143. 

144. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’D995 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’D995 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’D995 patent. 

145. Elvie is entitled to a declaration by the Court that the ’D995 patent is invalid. 

ANSWER: Willow denies each and every allegation in Paragraph 145. 

146. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 146. 

COUNT XVI: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. DESIGN PATENT NO. D832,995 

147. Elvie realleges and incorporates by reference paragraphs 1-146 of this 

counterclaim as if fully set forth herein. 

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ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-146 above, as if fully set forth herein. 

148. Elvie has not infringed any valid and enforceable claim of the ’D995 patent, either 

literally or under the doctrine of equivalents, willfully or otherwise. 

ANSWER: Willow denies each and every allegation in Paragraph 148. 

149. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’D995 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’D995 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’D995 patent. 

150. Elvie is entitled to a declaration by the Court that Elvie does not infringe any 

valid and enforceable claim of the ’D995 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 150. 

151. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 151. 

COUNT XVII: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. DESIGN PATENT NO. D977,625 

152. Elvie realleges and incorporates by reference paragraphs 1-151 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-151 above, as if fully set forth herein. 

153. The ’D625 patent is invalid for failure to comply with one or more requirements 

of 35 U.S.C. §§ 102, 103, 112 and/or 171. 

ANSWER: Willow denies each and every allegation in Paragraph 153. 

154. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’D625 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’D625 patent, as reflected in the Complaint. 

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ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’D625 patent. 

155. Elvie is entitled to a declaration by the Court that the ’D625 patent is invalid. 

ANSWER: Willow denies each and every allegation in Paragraph 155. 

156. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 156. 

COUNT XVIII: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. DESIGN PATENT NO. D977,625 

157. Elvie realleges and incorporates by reference paragraphs 1-156 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-156 above, as if fully set forth herein. 

158. Elvie has not infringed any valid and enforceable claim of the ’D625 patent, either 

literally or under the doctrine of equivalents, willfully or otherwise. 

ANSWER: Willow denies each and every allegation in Paragraph 158. 

159. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’D625 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’D625 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’D625 patent. 

160. Elvie is entitled to a declaration by the Court that Elvie does not infringe any 

valid and enforceable claim of the ’D625 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 160. 

161. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 161. 

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COUNT XIX: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. PATENT NO. 10,668,229 

162. Elvie realleges and incorporates by reference paragraphs 1-161 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-161 above, as if fully set forth herein. 

163. The ’229 patent is invalid for failure to comply with one or more requirements of 

35 U.S.C. §§ 101, 102, 103, and/or 112 and/or obviousness-type double patenting. 

ANSWER: Willow denies each and every allegation in Paragraph 163. 

164. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’229 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’229 patent, as reflected in the Complaint. 

ANSWER: To the extent that Elvie alleges that Willow has brought suit against Elvie, 

alleging that Elvie infringes U.S. Patent No. 10,668,229, Willow denies all allegations with 

respect to U.S. Patent No. 10,668,229. Willow admits that it has brought suit against Elvie, 

alleging that Elvie infringes U.S. Patent No. 10,688,229. 

165. Elvie is entitled to a declaration by the Court that the ’229 patent is invalid. 

ANSWER: Willow denies each and every allegation in Paragraph 165. 

166. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 166. 

COUNT XX: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. PATENT NO. 10,688,229 

167. Elvie realleges and incorporates by reference paragraphs 1-166 of this 

counterclaim as if fully set forth herein. 

ANSWER: Willow incorporates by reference each of its responses set forth in 

Paragraphs 1-166 above, as if fully set forth herein. 

168. Elvie has not infringed any valid and enforceable claim of the ’229 patent, either 

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literally or under the doctrine of equivalents, willfully or otherwise. 

ANSWER: Willow denies each and every allegation in Paragraph 168. 

169. This counterclaim arises from an actual and justiciable controversy between Elvie 

and Willow as to the alleged infringement of the ’229 patent. Willow has brought suit against 

Elvie, alleging that Elvie infringes the ’229 patent, as reflected in the Complaint. 

ANSWER: Willow admits that it has brought suit against Elvie, alleging that Elvie 

infringes the ’229 patent. 

170. Elvie is entitled to a declaration by the Court that Elvie does not infringe any 

valid and enforceable claim of the ’229 patent. 

ANSWER: Willow denies each and every allegation in Paragraph 170. 

171. Elvie is entitled to further necessary or proper relief based on the Court’s 

declaratory judgment or decree. 

ANSWER: Willow denies each and every allegation in Paragraph 171. 

DENIAL OF ANY REMAINING ALLEGATIONS 

Except as specifically admitted herein, Willow denies any remaining allegations in 

Elvie’s Counterclaims.

PRAYER FOR RELIEF 

To the extent a response is required, Willow denies that Elvie is entitled to any of its 

requested relief. Willow specifically denies that it, directly or indirectly, literally or under the 

doctrine of equivalents, has infringed or is infringing U.S. Patent Nos. 11,260,151, 11,357,893, 

11,413,380, and 11,730,867 willfully or otherwise; specifically denies that the claims of the 

Willow Asserted Patents are invalid; specifically denies that Elvie is entitled to any award of 

damages; specifically denies that Elvie is entitled to attorneys’ fees; and specifically denies that 

Elvie is entitled to costs, prejudgment or postjudgment interest, treble damages, or any other 

relief in this action. 

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AFFIRMATIVE DEFENSES 

Subject to the responses above, and upon information and belief, Willow alleges and 

asserts the following affirmative defenses in response to the allegations in Elvie’s Counterclaims, 

undertaking the burden of proof only as to those defenses deemed affirmative defenses by law, 

regardless of how such defenses are denominated herein. In addition to the defenses described 

below, subject to its responses above, Willow specifically reserves all rights to allege additional 

defenses that become known through the course of discovery or otherwise. 

FIRST DEFENSE – NO PATENT INFRINGEMENT 

1. Willow does not infringe and has not infringed, either literally or under the 

doctrine of equivalents, and is not liable for direct infringement of any valid and enforceable 

claim of the ’151, ’893, ’380, or ’867 Patent. 

2. Willow does not indirectly infringe and has not indirectly infringed, either 

literally or under the doctrine of equivalents, and is not liable for indirect infringement of any 

valid and enforceable claim of the ’151, ’893, ’380, or ’867 Patent, for at least the reasons that 

(1) there is no underlying direct infringement pursuant to 35 U.S.C. § 271(a); (2) Willow lacks 

and has lacked an intent to induce infringement of the ’151, ’893, ’380, or ’867 Patent under § 

271(b); and (3) Willow did not sell any product made especially for an infringing use or have 

knowledge of an infringing use under § 271(c). 

SECOND DEFENSE – NO WILLFUL PATENT INFRINGEMENT 

3. Willow does not willfully infringe and has not willfully infringed, directly or 

indirectly, either literally or under the doctrine of equivalents, and is not liable for willful 

infringement of any valid and enforceable claim of the ’151, ’893, ’380, or ’867 Patent. 

THIRD DEFENSE – PATENT INVALIDITY AND UNENFORCEABILITY 

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4. The claims of the ’151, ’893, ’380, and ’867 Patents are invalid and unenforceable 

under 35 U.S.C. § 102 because the claims lack novelty and are taught and suggested by the prior 

art. 

5. The claims of the ’151, ’893, ’380, and ’867 Patents are invalid and unenforceable 

under 35 U.S.C. § 103 because the claims are obvious in view of the prior art. 

6. The claims of the ’151, ’893, ’380, and ’867 Patents 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 indefiniteness. 

7. The claims of the ’867 Patent is invalid and unenforceable under 35 U.S.C. §§ 

101, 115, and/or 116 because of improper inventorship, as the patent fails to identify all of or the 

correct inventors. 

FOURTH DEFENSE – LIMITATION ON PATENT DAMAGES 

8. Elvie’s claim for damages, if any, against Willow for alleged infringement of the 

’151, ’893, ’380, and ’867 Patent is limited by 35 U.S.C. §§ 286, 287, and/or 288. 

9. With respect to the marking requirement of § 287, Elvie has failed to mark 

patented articles. 

10. With respect to the notice requirement of § 287, Elvie did not provide notice to 

Willow of the ’151, ’893, ’380, and ’867 Patents and/or notice of Willow’s alleged infringement 

of the ’151, ’893, ’380, and ’867 Patents before the filing of its Counterclaims on August 14, 

2023. 

FIFTH DEFENSE – FAILURE TO STATE A CLAIM 

11. Elvie’s Counterclaims fails to state a claim upon which relief can be granted, 

including, but not limited to, failure of Elvie’s Counterclaims to meet the standard for pleading 

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set by the Supreme Court in Ashcroft v. Iqbal, 556 U.S. 662 (2009) and Bell Atlantic Corp. v. 

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

SIXTH DEFENSE – PROSECUTION HISTORY ESTOPPEL 

12. Elvie is barred, under the doctrine of prosecution history estoppel, from 

construing the claims of the ’151, ’893, ’380, and ’867 Patents in such a way as may cover any 

accused products by reasons of statements made to the United States Patent and Trademark 

Office during the prosecution of the application that led to the issuance of the ’151, ’893, ’380, 

and ’867 Patents. 

SEVENTH DEFENSE – NOT AN EXCEPTIONAL CASE 

13. If Elvie is entitled to any remedy, Elvie is not entitled to a finding that this case is 

exceptional warranting attorneys’ fees under 35 U.S.C. § 285, or pursuant to the Court’s inherent 

power. 

RESERVATION OF ADDITIONAL DEFENSES 

14. Willow reserves the right to assert any additional defenses or counterclaims which 

may now exist or in the future may be available based on discovery and further factual 

investigation in this case. 

COUNTERCLAIMS FOR DECLARATORY JUDGMENT 

Willow incorporates herein by reference the admissions, allegations, denials, and 

Defenses contained in its Answer above as if fully set forth herein. For its Counterclaims against 

Elvie, and upon information and belief, Willow states as follows: 

THE PARTIES

1. Willow Innovations, Incorporated is a corporation organized and existing under 

the laws of the State of Delaware, having a principal place of business at 1975 El Camino Real, 

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Suite 306, Mountain View, CA 94040. On October 21, 2020, Willow changed its name from 

“Exploramed NC7, Inc.” to “Willow Innovations, Inc.” 

2. Chiaro Technology, Limited is a corporation organized and existing under the 

laws of the United Kingdom, with its principal place of business at 63-66 Hatton Garden, EC1N 

8LE, London, United Kingdom. On the information and belief, Elvie is the trading name of 

Chiaro Technology Limited and conducts business, either directly or through its agents, on an 

ongoing basis in this judicial district and elsewhere in the United States. 

JURISDICTION AND VENUE

3. This is an action for declaratory judgment under 28 U.S.C. §§ 2201 and 2202. 

This Court has subject matter jurisdiction over these Counterclaims under 28 U.S.C. §§ 1331 and 

1338(a). These Counterclaims arise under the patent laws of the United States. 

4. This Court has personal jurisdiction over Elvie, at least because Elvie has 

submitted to the jurisdiction of this District. 

5. Venue for these Counterclaims is proper in this District under 28 U.S.C. §§ 1391 

and 1400. 

FACTUAL BACKGROUND

6. In its Counterclaims, Elvie asserts that Willow has infringed U.S. Patent Nos. 

11,260,151 (the “’151 patent”), 11,357,893 (the “’893 patent”), 11,413,380 (the “’380 patent”), 

and 11,730,867 (the “’867 patent”) (collectively, the “Elvie Asserted Patents”). 

7. The Elvie Asserted Patents are invalid, are unenforceable by Elvie, and/or have 

not been and are not being infringed by Willow, either directly or indirectly, literally or under the 

doctrine of equivalents. 

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8. There is an actual case or controversy between the parties over the invalidity, 

unenforceability by Elvie, and noninfringement of the Elvie Asserted Patents. 

COUNT I: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. PATENT NO. 11,260,151 

9. Willow restates and incorporates by reference its allegations in Paragraphs 1 

through 8 of its Counterclaims. 

10. An actual case or controversy exists between Willow and Elvie as to whether the 

’151 Patent is not infringed by Willow. 

11. A judicial declaration is necessary and appropriate so that Willow may ascertain 

its rights regarding the ’151 Patent. 

12. Willow has not infringed and does not infringe, directly or indirectly, literally or 

under the doctrine of equivalents, any valid and enforceable claim of the ’151 Patent. 

COUNT II: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. PATENT NO. 11,260,151 

13. Willow restates and incorporates by reference its allegations in Paragraphs 1 

through 12 of its Counterclaims. 

14. An actual case or controversy exists between Willow and Elvie as to whether the 

’151 Patent is invalid. 

15. A judicial declaration is necessary and appropriate so that Willow may ascertain 

its rights as to whether the ’151 Patent is invalid. 

16. The ’151 Patent is invalid for failure to meet the conditions of patentability and/or 

otherwise comply with one or more of 35 U.S.C. §§ 100 et seq., 101, 102, 103, and 112. 

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COUNT III: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. PATENT NO. 11,357,893 

17. Willow restates and incorporates by reference its allegations in Paragraphs 1 

through 16 of its Counterclaims. 

18. An actual case or controversy exists between Willow and Elvie as to whether the 

’893 Patent is not infringed by Willow. 

19. A judicial declaration is necessary and appropriate so that Willow may ascertain 

its rights regarding the ’893 Patent. 

20. Willow has not infringed and does not infringe, directly or indirectly, literally or 

under the doctrine of equivalents, any valid and enforceable claim of the ’893 Patent. 

COUNT IV: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. PATENT NO. 11,357,893 

21. Willow restates and incorporates by reference its allegations in Paragraphs 1 

through 20 of its Counterclaims. 

22. An actual case or controversy exists between Willow and Elvie as to whether the 

’893 Patent is invalid. 

23. A judicial declaration is necessary and appropriate so that Willow may ascertain 

its rights as to whether the ’893 Patent is invalid. 

24. The ’893 Patent is invalid for failure to meet the conditions of patentability and/or 

otherwise comply with one or more of 35 U.S.C. §§ 100 et seq., 101, 102, 103, and 112. 

COUNT V: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. PATENT NO. 11,413,380 

25. Willow restates and incorporates by reference its allegations in Paragraphs 1 

through 24 of its Counterclaims. 

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26. An actual case or controversy exists between Willow and Elvie as to whether the 

’380 Patent is not infringed by Willow. 

27. A judicial declaration is necessary and appropriate so that Willow may ascertain 

its rights regarding the ’380 Patent. 

28. Willow has not infringed and does not infringe, directly or indirectly, literally or 

under the doctrine of equivalents, any valid and enforceable claim of the ’380 Patent. 

COUNT VI: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. PATENT NO. 11,413,380 

29. Willow restates and incorporates by reference its allegations in Paragraphs 1 

through 28 of its Counterclaims. 

30. An actual case or controversy exists between Willow and Elvie as to whether the 

’380 Patent is invalid. 

31. A judicial declaration is necessary and appropriate so that Willow may ascertain 

its rights as to whether the ’380 Patent is invalid. 

32. The ’380 Patent is invalid for failure to meet the conditions of patentability and/or 

otherwise comply with one or more of 35 U.S.C. §§ 100 et seq., 101, 102, 103, and 112. 

COUNT VII: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF 

U.S. PATENT NO. 11,730,867 

33. Willow restates and incorporates by reference its allegations in Paragraphs 1 

through 32 of its Counterclaims. 

34. An actual case or controversy exists between Willow and Elvie as to whether the 

’867 Patent is not infringed by Willow. 

35. A judicial declaration is necessary and appropriate so that Willow may ascertain 

its rights regarding the ’867 Patent. 

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36. Willow has not infringed and does not infringe, directly or indirectly, literally or 

under the doctrine of equivalents, any valid and enforceable claim of the ’867 Patent. 

COUNT VIII: DECLARATORY JUDGMENT OF INVALIDITY OF 

U.S. PATENT NO. 11,730,867 

37. Willow restates and incorporates by reference its allegations in Paragraphs 1 

through 36 of its Counterclaims. 

38. An actual case or controversy exists between Willow and Elvie as to whether the 

’867 Patent is invalid. 

39. A judicial declaration is necessary and appropriate so that Willow may ascertain 

its rights as to whether the ’867 Patent is invalid. 

40. The ’867 Patent is invalid for failure to meet the conditions of patentability and/or 

otherwise comply with one or more of 35 U.S.C. §§ 100 et seq., 101, 102, 103, and 112. 

PRAYER FOR RELIEF 

WHEREFORE, Willow prays for judgment as follows: 

A. A judgment dismissing Elvie’s Counterclaims against Willow with prejudice; 

B. A declaration that Willow has not infringed, directly or indirectly, any valid and 

enforceable claim of the’151, ’893, ’380, or ’867 Patent; 

C. A declaration that the’151, ’893, ’380, and ’867 Patents are invalid and/or 

unenforceable; 

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

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

E. A judgment limiting or barring Elvie’s ability to enforce the’151, ’893, ’380, and 

’867 Patents in equity; 

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

Case 2:23-cv-00229-JRG Document 40 Filed 10/18/23 Page 44 of 46 PageID #: 2703
45 

DEMAND FOR JURY TRIAL 

Willow demands a jury trial for all issues so triable. 

Dated: October 18, 2023 /s/ Timothy S. Durst 

O’MELVENY & MYERS LLP 

Timothy S. Durst (TX #00786924) 

tdurst@omm.com 

Cason Garrett Cole (TX #24109741) 

ccole@omm.com 

2501 North Harwood Street, Suite 1700 

Dallas, TX 75201 

Telephone: (972) 360-1900 

Facsimile: (972) 360-1901 

Robert F. Shaffer (admitted pro hac vice) 

rshaffer@omm.com 

Jason Fountain (admitted pro hac vice) 

jfountain@omm.com 

Miao Liu (admitted pro hac vice) 

mliu@omm.com 

1625 Eye St., NW 

Washington, DC 20006 

Telephone: (202) 383-5300 

Facsimile: (202) 383-5414 

Carolyn S. Wall (admitted pro hac vice) 

cwall@omm.com 

Times Square Tower 

7 Times Square 

New York, New York 10036 

Telephone: (212) 326-2000 

Facsimile: (212) 326-2061 

Laura Burson (TX # 24091995) 

lburson@omm.com 

400 South Hope St 

Los Angeles, CA 90071 

Telephone: (213) 430-6000 

Facsimile: (213) 430-6407 

Attorneys for Plaintiff 

WILLOW INNOVATIONS, INC. 

 

Case 2:23-cv-00229-JRG Document 40 Filed 10/18/23 Page 45 of 46 PageID #: 2704
46 

CERTIFICATE OF SERVICE 

The undersigned hereby certifies that all counsel of record who are deemed to have 

consented to electronic services are being served with a copy of this document via the Court’s 

CM/ECF system per Local Rule CV-5(a)(3) on October 18, 2023. Any other counsel of record 

will be served by facsimile transmission, e-mail and/or first class mail. 

_/s/ Timothy S. Durst 

Timothy S. Durst 

Case 2:23-cv-00229-JRG Document 40 Filed 10/18/23 Page 46 of 46 PageID #: 2705