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					                            Case3:12-cv-01212-JSW Document28 Filed04/27/12 Page1 of 37



                   1     Charles K. Verhoeven (Bar No. 170151)
                        charlesverhoeven@quinnemanuel.com
                   2     Jennifer A. Kash (Bar No. 203679)
                        jenniferkash@quinnemanuel.com
                   3     Kevin A. Smith (Bar No. 250814)
                        kevinsmith@quinnemanuel.com
                   4    QUINN EMANUEL URQUHART &
                        SULLIVAN, LLP
                   5    50 California Street, 22nd Floor
                        San Francisco, California 94111
                   6    Telephone: (415) 875-6600
                        Facsimile: (415) 875-6700
                   7
                        Attorneys for Plaintiff Yahoo! Inc.
                   8
                                                      UNITED STATES DISTRICT COURT
                   9
                                                    NORTHERN DISTRICT OF CALIFORNIA
                 10                                      SAN FRANCISCO DIVISION
                 11
                        YAHOO! INC., a Delaware corporation,                CASE NO. CV-12-01212-JSW
                 12
                                      Plaintiff,
                 13                                                         PLAINTIFF YAHOO! INC.’s REPLY
                               vs.                                          AND COUNTER COUNTERCLAIMS TO
                 14                                                         DEFENDANT FACEBOOK, INC.’S
                        FACEBOOK, INC, a Delaware corporation,              ANSWER; COUNTERCLAIM AGAINST
                 15                                                         FACEBOOK, INC FOR DECLARATORY
                                      Defendant.                            JUDGMENT OF NON-INFRINGEMENT
                 16
                                                                            JURY TRIAL DEMANDED
                 17
                               Plaintiff Yahoo! Inc. (“Yahoo!”) hereby submits this Reply (“Reply”) in response to the
                 18
                        Counterclaim for Patent Infringement (“Counterclaim”) filed in this action by Facebook, Inc.
                 19
                        (“Facebook”). Yahoo!’s Counterclaims are set forth below the following Reply. For its Reply,
                 20
                        Yahoo! states as follows:
                 21
                                 1.     In retaliation for Yahoo!’s good faith allegations of patent infringement,
                 22
                         Facebook alleges infringement of ten patents as counterclaims. However, on information and
                 23
                         belief, Facebook lacks a good faith basis for most, if not all, of its counterclaims, particularly
                 24
                         those patents that it purchased from others.
                 25
                                 2.     Facebook purchased eight patents from non-practicing entities: two patents were
                 26
                         purchased from "IPG Electronics 503 Limited," a San Diego-based patent aggregator; two
                 27
                         patents were purchased from "Cheah Intellectual Property Licensing," a California-based patent
                 28

02917.51778/4712943.7
                        PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                   CV-12-01212-JSW
        Case3:12-cv-01212-JSW Document28 Filed04/27/12 Page2 of 37



 1    holding company; one patent was purchased from "Right Point LLC," a Texas-based patent

 2    aggregator; and three patents were purchased from New York University's intellectual property

 3    licensing department. All eight of these patents were purchased by Facebook in the past five

 4    months, and several of these patents were purchased (independent of any separate technology

 5    acquisition or merger) after Yahoo! filed its complaint in this action. On information and belief,

 6    many, if not all, of these patents were acquired by Facebook for purposes of retaliation against

 7    Yahoo! in this case.

 8           3.      No employee or officer of Facebook or any affiliated company conceived of,

 9    reduced to practice, or developed the alleged inventions claimed in the eight patents acquired

10    from non-practicing entities. In fact, the applications for many of these patents predate

11    Facebook itself.

12           4.      Contrary to an agreement between in-house counsel for Facebook and in-house

13    counsel for Yahoo! to raise intellectual property issues with each other in the first instance,

14    Facebook provided no notice to Yahoo! of any alleged infringement, and Facebook never

15    attempted to resolve any alleged infringement of any of its patents by Yahoo! prior to asserting

16    them in litigation. Indeed, the PTO did not even issue U.S. Patent No. 8,150,913 until April 3,

17    2012—the day Facebook asserted it.

18           5.      On information and belief, Facebook failed to perform a good faith investigation

19    into its counterclaims prior to asserting them in retaliation against Yahoo! For example, as

20    described more fully below, Facebook purchased and asserted patents tainted by inequitable

21    conduct. Furthermore, Facebook asserted its newly-acquired patents against aspects of Yahoo!'s

22    products for which there is little to no publicly-available information. Unless Facebook has

23    unlawfully acquired Yahoo! confidential business information, Facebook could not have

24    developed a good-faith basis for many of the infringement allegations in its counterclaims.

25    Because Facebook’s infringement assertions appear to be based on nothing more than

26    conjecture, assumptions, and unsupported inferences about how Yahoo!’s products may possibly

27    operate and because Facebook’s allegations are the result of an insufficient pre-filing

28

                                                      -2-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                  CV-12-01212-JSW
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 1    investigation, Yahoo! reserves its right to seek attorneys fees, sanctions, and such other relief as

 2    the court may deem proper pursuant to Rule 11 of the Federal Rules of Civil Procedure.

 3                                             THE PARTIES
 4           1.      Admitted.
 5           2.      Admitted.
 6                                    JURISDICTION AND VENUE
 7           3.      Yahoo! admits that this is a civil action for alleged patent infringement arising
 8    under the patent laws of the United States, Title 35 of the United States Code. Yahoo! admits
 9    that this Court has exclusive subject matter jurisdiction over this counterclaim pursuant to 28

10    U.S.C. §1338(a).
11           4.      Yahoo! admits that this Court has personal jurisdiction over Yahoo! because
12    Yahoo! maintains its principal place of business in this District, does business in this District,
13    and filed the Complaint in this action. Yahoo! denies having committed acts of infringement in
14    this District or elsewhere.
15                       FACEBOOK’S ALLEGATIONS OF INFRINGEMENT
16           5.      Yahoo! denies that it infringes any of the Facebook patents-in-suit. Yahoo!

17    specifically denies that it has committed any acts of infringement through the Yahoo! Home

18    Page, Yahoo!’s Content Optimization and Relevance Engine (“C.O.R.E.”), the Yahoo! Flickr

19    photo sharing service, and advertisements displayed throughout Yahoo! including on My

20    Yahoo!, Yahoo! Finance, Yahoo! Sports, Yahoo! News, Yahoo! Games, Yahoo! Movies,

21    Yahoo! Shopping, Yahoo! Travel, Yahoo! Autos, and Flickr. Yahoo! admits that it has been

22    reported that advertisements contributed 80% of Yahoo!’s revenue in 2011, accounting for more

23    than $4 billion dollars. Yahoo! admits that Flickr has at least 51 million registered users and 80

24    million unique visitors worldwide per month. Yahoo! admits that Yahoo! News and Yahoo!

25    Sports are the news and sports sites with the largest audiences in the United States. Yahoo!

26    lacks knowledge or information sufficient to form a belief regarding the remaining allegations of

27    paragraph 5 of the Counterclaim and on that basis denies them.

28

                                                      -3-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                   CV-12-01212-JSW
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 1                                              COUNT ONE
 2                      (ALLEGED INFRINGEMENT OF THE ‘208 PATENT)
 3           6.      Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of
 4    the Counterclaim as if fully set forth therein.
 5           7.      Yahoo! admits that what appears to be a copy of the ‘208 patent is attached as an

 6    exhibit to Facebook’s Counterclaim and that, on its face, the ‘208 patent is entitled “Generating

 7    a Feed of Stories Personalized for Members of a Social Network” and issued on November 2,

 8    2010. Yahoo! lacks knowledge or information sufficient to form a belief as to the truth of the

 9    remaining allegations of paragraph 7 of the Counterclaim and therefore denies them.

10           8.      Yahoo! denies the allegation in paragraph 8 of the Counterclaim and specifically
11    denies that it has committed any acts of infringement, induced others to infringe, or contributed
12    to infringement of the ‘208 patent.
13           9.      Yahoo! denies the allegation in paragraph 9 of the Counterclaim and specifically
14    denies that it has committed any acts of infringement, denies that it has caused or will cause
15    damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies
16    that Facebook has been irreparably harmed and denies that there is no remedy at law.
17                                             COUNT TWO
18                      (ALLEGED INFRINGEMENT OF THE ‘653 PATENT)
19           10.     Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

20    the Counterclaim as if fully set forth therein.

21           11.     Yahoo! admits that what appears to be a copy of the ‘653 patent is attached as an

22    exhibit to Facebook’s Counterclaim and that, on its face, the ‘653 patent is entitled “Tagging

23    Digital Media” and issued on May 17, 2011. Yahoo! lacks knowledge or information sufficient

24    to form a belief as to the truth of the remaining allegations of paragraph 11 of the Counterclaim

25    and therefore denies them.

26           12.     Yahoo! denies the allegation in paragraph 12 of the Counterclaim and specifically

27    denies that it has committed any acts of infringement, induced others to infringe, or contributed

28    to infringement of the ‘653 patent.

                                                        -4-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                 CV-12-01212-JSW
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 1           13.     Yahoo! denies the allegation in paragraph 13 of the Counterclaim and specifically

 2    denies that it has committed any acts of infringement, denies that it has caused or will cause

 3    damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

 4    that Facebook has been irreparably harmed and denies that there is no remedy at law.

 5                                            COUNT THREE
 6                      (ALLEGED INFRINGEMENT OF THE ‘717 PATENT)
 7           14.     Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of
 8    the Counterclaim as if fully set forth therein.
 9           15.     Yahoo! admits that what appears to be a copy of the ‘717 patent is attached as an

10    exhibit to Facebook’s Counterclaim and that, on its face, the ‘717 patent is entitled “Headline
11    Posting Algorithm” and issued on September 11, 2001. Yahoo! lacks knowledge or information
12    sufficient to form a belief as to the truth of the remaining allegations of paragraph 15 of the
13    Counterclaim and therefore denies them.
14           16.     Yahoo! denies the allegation in paragraph 16 of the Counterclaim and specifically
15    denies that it has committed any acts of infringement, induced others to infringe, or contributed
16    to infringement of the ‘717 patent.
17           17.     Yahoo! denies the allegation in paragraph 17 of the Counterclaim and specifically
18    denies that it has committed any acts of infringement, denies that it has caused or will cause
19    damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

20    that Facebook has been irreparably harmed, and denies that there is no remedy at law.

21                                             COUNT FOUR
22                      (ALLEGED INFRINGEMENT OF THE ‘133 PATENT)
23           18.     Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

24    the Counterclaim as if fully set forth therein.

25           19.     Yahoo! admits that what appears to be a copy of the ‘133 patent is attached as an

26    exhibit to Facebook’s Counterclaim and that, on its face, the ‘133 patent is entitled “Method for

27    Enabling a User to Fetch a Specific Information Item from a Set of Information Items and a

28    System for Carrying Out Such a Method” and issued on April 10, 2001. Yahoo! lacks

                                                        -5-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                  CV-12-01212-JSW
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 1    knowledge or information sufficient to form a belief as to the truth of the remaining allegations

 2    of paragraph 19 of the Counterclaim and therefore denies them.

 3           20.     Yahoo! denies the allegation in paragraph 20 of the Counterclaim and specifically

 4    denies that it has committed any acts of infringement, induced others to infringe, or contributed

 5    to infringement of the ‘133 patent.

 6           21.     Yahoo! denies the allegation in paragraph 21 of the Counterclaim and specifically

 7    denies that it has committed any acts of infringement, denies that it has caused or will cause

 8    damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

 9    that Facebook has been irreparably harmed, and denies that there is no remedy at law.

10                                             COUNT FIVE
11                      (ALLEGED INFRINGEMENT OF THE ‘949 PATENT)
12           22.     Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

13    the Counterclaim as if fully set forth therein.

14           23.     Yahoo! admits that what appears to be a copy of the ‘949 patent is attached as an

15    exhibit to Facebook’s Counterclaim and that, on its face, the ‘949 patent is entitled

16    “Customizing Database Information for Presentation with Media Selections” and issued on June

17    25, 2002. Yahoo! lacks knowledge or information sufficient to form a belief as to the truth of the

18    remaining allegations of paragraph 23 of the Counterclaim and therefore denies them.

19           24.     Yahoo! denies the allegation in paragraph 24 of the Counterclaim and specifically

20    denies that it has committed any acts of infringement, induced others to infringe, or contributed

21    to infringement of the ‘949 patent.

22           25.     Yahoo! denies the allegation in paragraph 25 of the Counterclaim and specifically

23    denies that it has committed any acts of infringement, denies that it has caused or will cause

24    damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

25    that Facebook has been irreparably harmed, and denies that there is no remedy at law.

26

27

28

                                                        -6-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                 CV-12-01212-JSW
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 1                                              COUNT SIX
 2                      (ALLEGED INFRINGEMENT OF THE ‘978 PATENT)
 3           26.     Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of
 4    the Counterclaim as if fully set forth therein.
 5           27.     Yahoo! admits that what appears to be a copy of the ‘978 patent is attached as an

 6    exhibit to Facebook’s Counterclaim and that, on its face, the ‘978 patent is entitled “System and

 7    Method for Dynamic Profiling of Users in One-to-One Applications” and issued on May 22,

 8    2001. Yahoo! lacks knowledge or information sufficient to form a belief as to the truth of the

 9    remaining allegations of paragraph 27 of the Counterclaim and therefore denies them.

10           28.     Yahoo! denies the allegation in paragraph 28 of the Counterclaim and specifically
11    denies that it has committed any acts of infringement, induced others to infringe, or contributed
12    to infringement of the ‘978 patent.
13           29.     Yahoo! denies the allegation in paragraph 29 of the Counterclaim and specifically
14    denies that it has committed any acts of infringement, denies that it has caused or will cause
15    damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies
16    that Facebook has been irreparably harmed, and denies that there is no remedy at law.
17                                            COUNT SEVEN
18                      (ALLEGED INFRINGEMENT OF THE ‘331 PATENT)
19           30.     Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

20    the Counterclaim as if fully set forth therein.

21           31.     Yahoo! admits that what appears to be a copy of the ‘331 patent is attached as an

22    exhibit to Facebook’s Counterclaim and that, on its face, the ‘331 patent is entitled “System and

23    Method for Dynamic Profiling of Users in One-to-One Applications and for Validating User

24    Rules” and issued on October 13, 2009. Yahoo! lacks knowledge or information sufficient to

25    form a belief as to the truth of the remaining allegations of paragraph 31 of the Counterclaim and

26    therefore denies them.

27

28

                                                        -7-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                 CV-12-01212-JSW
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 1            32.    Yahoo! denies the allegation in paragraph 32 of the Counterclaim and specifically

 2    denies that it has committed any acts of infringement, induced others to infringe, or contributed

 3    to infringement of the ‘331 patent.

 4            33.    Yahoo! denies the allegation in paragraph 33 of the Counterclaim and specifically

 5    denies that it has committed any acts of infringement, denies that it has caused or will cause

 6    damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

 7    that Facebook has been irreparably harmed, and denies that there is no remedy at law.

 8                                            COUNT EIGHT
 9                      (ALLEGED INFRINGEMENT OF THE ‘611 PATENT)
10            34.    Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of
11    the Counterclaim as if fully set forth therein.
12            35.    Yahoo! admits that what appears to be a copy of the ‘611 patent is attached as an
13    exhibit to Facebook’s Counterclaim and that, on its face, the ‘611 patent is entitled
14    “Architectures, Systems, Apparatus, Methods, and Computer-Readable Medium for Providing
15    Recommendations to Users and Applications Using Multidimensional Data” and issued on
16    January 24, 2012. Yahoo! lacks knowledge or information sufficient to form a belief as to the
17    truth of the remaining allegations of paragraph 35 of the Counterclaim and therefore denies
18    them.
19            36.    Yahoo! denies the allegation in paragraph 36 of the Counterclaim and specifically

20    denies that it has committed any acts of infringement, induced others to infringe, or contributed

21    to infringement of the ‘611 patent.

22            37.    Yahoo! denies the allegation in paragraph 37 of the Counterclaim and specifically

23    denies that it has committed any acts of infringement, denies that it has caused or will cause

24    damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

25    that Facebook has been irreparably harmed, and denies that there is no remedy at law.

26

27

28

                                                        -8-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                 CV-12-01212-JSW
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 1                                             COUNT NINE
 2                      (ALLEGED INFRINGEMENT OF THE ‘896 PATENT)
 3           38.     Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of
 4    the Counterclaim as if fully set forth therein.
 5           39.     Yahoo! admits that what appears to be a copy of the ‘896 patent is attached as an

 6    exhibit to Facebook’s Counterclaim and that, on its face, the ‘896 patent is entitled “System for

 7    Controlled Distribution of User Profiles Over a Network” and issued on August 23, 2011.

 8    Yahoo! lacks knowledge or information sufficient to form a belief as to the truth of the

 9    remaining allegations of paragraph 39 of the Counterclaim and therefore denies them.

10           40.     Yahoo! denies the allegation in paragraph 40 of the Counterclaim and specifically
11    denies that it has committed any acts of infringement, induced others to infringe, or contributed
12    to infringement of the ‘896 patent.
13           41.     Yahoo! denies the allegation in paragraph 41 of the Counterclaim and specifically
14    denies that it has committed any acts of infringement, denies that it has caused or will cause
15    damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies
16    that Facebook has been irreparably harmed, and denies that there is no remedy at law.
17                                              COUNT TEN
18                      (ALLEGED INFRINGEMENT OF THE ‘913 PATENT)
19           42.     Yahoo! admits that Facebook incorporates by reference paragraphs 1 through 4 of

20    the Counterclaim as if fully set forth therein.

21           43.     Yahoo! admits that what appears to be a copy of the ‘913 patent is attached as an

22    exhibit to Facebook’s Counterclaim and that, on its face, the ‘913 patent is entitled “System for

23    Controlled Distribution of User Profiles Over a Network” and issued on April 3, 2012. Yahoo!

24    lacks knowledge or information sufficient to form a belief as to the truth of the remaining

25    allegations of paragraph 43 of the Counterclaim and therefore denies them.

26           44.     Yahoo! denies the allegation in paragraph 44 of the Counterclaim and specifically

27    denies that it has committed any acts of infringement, induced others to infringe, or contributed

28    to infringement of the ‘913 patent.

                                                        -9-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                 CV-12-01212-JSW
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 1           45.     Yahoo! denies the allegation in paragraph 45 of the Counterclaim and specifically

 2    denies that it has committed any acts of infringement, denies that it has caused or will cause

 3    damage to Facebook for which Facebook is entitled to recovery under 35 U.S.C. § 284, denies

 4    that Facebook has been irreparably harmed, and denies that there is no remedy at law.

 5                                         GENERAL DENIAL
 6           46.     Except as explicitly admitted herein, Yahoo! denies each and every allegation
 7    contained in the Counterclaim.
 8                              FACEBOOK’S REQUEST FOR RELIEF
 9           47.     Yahoo! incorporates by reference all preceding paragraphs of this Reply and
10    Counterclaim as if fully set forth herein. Yahoo! denies that Facebook is entitled to any relief
11    sought in its Request for Relief. Yahoo! further denies that any conduct on its part subjects
12    Yahoo! to liability for damages, or attorney’s fees under 35 U.S.C. § 285.
13                                       AFFIRMATIVE DEFENSES
14           48.     Further answering the Counterclaim and as additional defenses thereto, Yahoo!

15    asserts the following affirmative defenses, without admitting any allegation of the Counterclaim

16    not otherwise admitted and without altering any applicable burdens of proof. Yahoo! reserves

17    the right to assert any other defenses that its ongoing fact investigation or discovery may reveal.

18                  FIRST AFFIRMATIVE DEFENSE – NON-INFRINGEMENT
19           49.     Yahoo! does not and has not infringed directly, indirectly, literally, or under the

20    doctrine of equivalents, any valid and enforceable claim of the ‘208 patent, the ‘653 patent, the

21    ‘717 patent, the ‘133 patent, the ‘949 patent, the ‘978 patent, the ‘331 patent, the ‘611 patent, the

22    ‘896 patent, or the ‘913 patent.

23                      SECOND AFFIRMATIVE DEFENSE – INVALIDITY
24           50.     Each and every claim of the ‘208 patent, the ‘653 patent, the ‘717 patent, the ‘133

25    patent, the ‘949 patent, the ‘978 patent, the ‘331 patent, the ‘611 patent, the ‘896 patent, and the

26    ‘913 patent are invalid, unenforceable, and/or void due to the failure to meet the requirements of

27    the Unites States patent laws, 35 U.S.C. §§ 100 et seq., including but not limited to 35 U.S.C. §§

28    101, 102, 103, 112, 116, and for double patenting.

                                                     -10-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                  CV-12-01212-JSW
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 1              THIRD AFFIRMATIVE DEFENSE – LIMITATION OF DAMAGES
 2           51.     Facebook’s recovery for damages for at least the ‘717 patent, the ‘133 patent, the
 3    ‘949 patent, the ‘978 patent, the ‘331 patent, the ‘611 patent, the ‘896 patent, and the ‘913 patent
 4    is limited pursuant to 35 U.S.C. § 286.

 5    FOURTH AFFIRMATIVE DEFENSE – LACHES, EQUITABLE ESTOPPEL, WAIVER
 6           52.     Facebook’s claims are barred, in whole or in part, by the doctrine of laches and/or
 7    equitable estoppel and/or waiver.
 8        FIFTH AFFIRMATIVE DEFENSE – PROSECUTION HISTORY ESTOPPEL,
 9                                   PROSECUTION DISCLAIMER
10           53.     Facebook’s claims are barred, in whole or in part, by the doctrine of prosecution
11    history estoppel and/or prosecution disclaimer.
12                   SIXTH AFFIRMATIVE DEFENSE – FAILURE TO MARK
13           54.     Facebook’s pre-lawsuit claims for damages are barred, in whole or in part, for

14    failure to comply with 35 U.S.C. § 287.

15     SEVENTH AFFIRMATIVE DEFENSE – INEQUITABLE CONDUCT(‘896 AND ‘913
16                                              PATENTS)
17                           Intentional Failure to Name a Known Inventor
18           55.     On October 13, 1998, attorney C. Douglass Thomas filed U.S. Provisional Patent

19    Application No. 60/104311 (“the ‘311 provisional”). The ‘311 provisional contained eighty-

20    seven claims and named two inventors—Chris Cheah and Joseph Liauw. Both Mr. Cheah and

21    Mr. Liauw signed a verified statement in connection with the ‘311 provisional swearing, among

22    other things, that each qualified “as an independent inventor” of the subject matter in the ‘311

23    provisional.

24           56.     On October 13, 1999, Mr. Thomas filed U.S. Patent Application No. 09/417,456

25    (“the ‘456 application”). The ‘456 application contained nine new paragraphs in the “Summary

26    of the Invention” section. All other material in the ‘456 application was repeated, effectively

27    word-for-word, from the ‘311 provisional, and the claims of the ‘456 application were virtually

28    identical to those in the ‘311 provisional. No substantive material from the ‘311 provisional was

                                                     -11-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                  CV-12-01212-JSW
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 1    deleted prior to filing of the ‘456 application. The ‘456 application claimed priority to the ‘311

 2    provisional. However, unlike the ‘311 provisional, the ‘456 application did not name Mr. Liauw

 3    as an inventor.

 4           57.        PTO regulations require that “[i]f multiple inventors are named in a provisional

 5    application, each named inventor must have made a contribution, individually or jointly, to the

 6    subject matter disclosed in the provisional application. ” 37 C.F.R. § 1.45(c). These regulations

 7    further require that “deleting the name or names of the inventor or inventors” in a provisional

 8    application requires, among other things “[a] statement by the person or persons whose name or

 9    names are being deleted that the inventorship error occurred without deceptive intention on the

10    part of such person or persons.” 37 C.F.R. § 1.48(e). No such statement was provided by Mr.

11    Liauw in prosecution of the ‘311 provisional or the ‘456 application. In fact, even though the

12    ‘456 application was filed by the same attorney, contained all the subject matter disclosed in the

13    ‘311 provisional and claims virtually identical to those in the ‘311 provisional, and claimed

14    priority to the ‘311 provisional, the PTO was never informed by Mr. Thomas, by Mr. Cheah, or

15    by anyone else with a duty of candor toward the PTO that the subject matter of the ‘456

16    application was invented at least in part by Mr. Liauw.

17           58.        On information and belief, Mr. Thomas and/or Mr. Cheah’s failure to disclose

18    Mr. Liauw’s inventive contribution to the PTO was intentional. Both Mr. Thomas and/or Mr.

19    Cheah filed the ‘311 provisional just one year prior to the filing of the ‘456 application. On

20    information and belief, Mr. Thomas and/or Mr. Cheah intentionally failed to disclose to the PTO

21    Mr. Liauw’s contribution to inventorship of the subject matter of the ‘456 application in order to

22    deceive the PTO into granting the ‘456 application, because without an affidavit from Mr.

23    Liauw, the ‘456 application could not have issued as a United States Patent. However, due to

24    Mr. Thomas and/or Mr. Cheah’s inequitable conduct, the ‘456 application issued as U.S. Patent

25    7,003,546 (“the ‘546 patent”), to which the ‘896 and ‘913 patents claim priority as purported

26    continuations.

27           59.        The ‘896 and ‘913 patents contain all the substantive disclosures of the ‘311

28    provisional and claim priority to that provisional application. Yet Mr. Liauw was never named

                                                      -12-
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 1    as an inventor on either of these patents, and Mr. Liauw never submitted a declaration regarding

 2    an error in inventorship in connection with prosecution of either of these patents or in

 3    prosecution of the applications to which these patents claim priority. On information and belief,

 4    to deceive the PTO regarding the fact that Mr. Liauw never submitted a “Deletion of Inventor”

 5    declaration as required by PTO regulations, Mr. Thomas and/or Mr. Cheah submitted, in

 6    connection with each of the ‘896 and ‘913 patents, a Transmittal Form stating that a

 7    “DELETION OF INVENTOR(S)” Oath or Declaration was submitted in “[a] copy from a prior

 8    application (37 CFR 1.63(d)).” This was false and deceptive, because no Oath or Declaration by

 9    Mr. Liauw was ever submitted.

10           60.     Upon information and belief, but for this intentional deception by Mr. Thomas

11    and/or Mr. Cheah, both of whom had a duty of candor towards the PTO in connection with

12    prosecution of the ‘896 and ‘913 patents, the PTO would not have issued the ‘896 and ‘913

13    patents due to the failure to name all inventors.

14 Intentional Deception of the PTO Regarding the Addition of New Material to the ‘913 Patent

15           61.     The ‘913 and ‘896 patents are unenforceable due to inequitable conduct for a
16    separate reason: On information and belief, Mr. Thomas and/or Mr. Cheah intentionally
17    deceived the PTO regarding the addition of new matter highly material to the patentability of the
18    claims of the ‘913 patent in order to gain allowance of those claims. But for this intentional
19    deception, none of the claims of the ‘913 patent would have been granted.
20           62.     The ‘913 patent claims priority as a purported continuation of five non-
21    provisional applications, the first of which was the ‘456 application. In particular, the ‘913
22    patent claims priority as a purported continuation of:
23                 (1)     U.S. Patent Application No. 12/818,092, filed on June 17,
                           2010, now the ‘896 patent;
24                 (2)     U.S. Patent Application No. 12/258,291, filed on October 24,
                           2008, now U.S. Patent No. 7,743,100 (“the ‘100 patent”);
25                 (3)     U.S. Patent Application No. 11/840,968 (“the ‘968
                           application”), filed on August 19, 2007, which is pending;
26                 (4)     U.S. Patent Application No. 11/170,370, filed on June 28,
                           2005, now U.S. Patent No. 7,277,911 (“the ‘911 patent”);
27                         and
                   (5)     U.S. Patent Application No. 09/417,456, filed on October 13,
28                         1999, Now U.S. Patent No. 7,003,546 (“the ‘546 patent”).

                                                     -13-
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 1
             63.     All of the issued patents listed above—the ‘546 patent, the ‘911 patent, the ‘100
 2
      patent, the ‘896 patent, and the ‘913 patent—were prosecuted by the same attorney (Mr.
 3
      Thomas) and examined by the same PTO examiner, Bharat N. Barot. In fact, Mr. Thomas and
 4
      Mr. Barot had corresponded regarding prosecution of purported continuations of the ‘456
 5
      application for nearly a decade, and Mr. Barot has examined six separate purported
 6
      continuations of the ‘456 application (not including the ‘456 application itself, which Mr. Barot
 7
      also examined).
 8
             64.     On August 22, 2011, Mr. Thomas filed U.S. Patent Application No. 13/215,103
 9
      (“the ‘103 application”), the application that issued as the ‘913 patent. Every claim of the ‘103
10
      application included, among others, the following limitations:
11
                   (1)     “allow a first registered user to identify other registered users
12                         via a user interface and to indicate a desire to establish an
                           access relationship with the other registered users, wherein
13                         each access relationship allows the first registered user to
                           access a user profile of an identified other registered user via
14                         the user interface and image content items of the identified
                           other registered user via the user interface”;
15                 (2)     “establish access relationships between the first registered user
                           and the other registered users without requiring the other
16                         registered users to individually approve the access
                           relationships”;
17                 (3)     “allow the first registered user to select from the user interface
                           the user profile of another registered user with respect to which
18                         an access relationship has been established with the first
                           registered user, in response to which the networked server
19                         system provides to the selected user profile for display to the
                           first registered [sic] in the user interface, wherein the selected
20                         user profile includes representations of at least some of the
                           image content items associated with the selected user profile;”
21                 (4)     “allow the first registered user to select and view one of the
                           image content items in the user interface”; and
22                 (5)     “allow the first registered user to interact with the selected
                           image content item via the user interface.”
23
             65.     Neither the ‘311 provisional, nor the ‘546 patent, nor the ‘911 patent, nor the
24
      ‘968 application, nor the ‘100 patent, nor the ‘896 patent disclose at least the above limitations.
25
      In fact, none of these patents or their applications disclose anything resembling these and other
26
      limitations in the claims of the ‘103 application. In short, the claims of the ‘103 application
27

28

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 1    were very different than anything that had previously appeared in any of the applications and

 2    patents to which the ‘103 application claimed priority.

 3            66.     On information and belief, Mr. Thomas and Mr. Cheah, who had been

 4    continually prosecuting related patent applications that did not disclose any of the above

 5    limitations for nearly a decade, were well aware that the claims they had drafted for the ‘103

 6    application were not supported by the disclosure of the applications to which the ‘103

 7    application claimed priority as a continuation.

 8            67.     On information and belief, Mr. Thomas and Mr. Cheah sought to remedy this

 9    deficiency by adding new material to the ‘103 application that had never appeared in any of the

10    applications to which the ‘103 application claimed priority as a continuation. In particular, Mr.

11    Thomas and/or Mr. Cheah added the following new matter to the ‘103 application that had never

12    before appeared in the ‘311 provisional, the ‘546 patent, the ‘911 patent, the ‘968 application,

13    the ‘100 patent, or the ‘896 patent:1

14                  As a computer system that provides a service for controlled access over
                    a network to user profiles having associated image content provided by
15                  registered users of the service, one embodiment of can, for example,
                    include a networked server system accessible by remote user devices
16                  via the network, and at least one database accessible by the networked
                    server system and configured to store the user profiles of the registered
17                  users, image content items associated with the user profiles, and
                    relationship data that specifies access relationships established between
18                  the registered users. The networked server system comprising at least
                    one processor and at least one memory. The networked server system
19                  can be programmed, via executable program instructions, to: (i) allow
                    users to register with the service and the registered users to each create
20                  a user profile comprising profile information about the respective
                    registered user and a plurality of image content items of data types
21                  corresponding to one or more of photo data or video data; (ii) allow a
                    first registered user to identify other registered users via a user
22                  interface and to indicate a desire to establish an access relationship
                    with the other registered users, wherein each access relationship allows
23                  the first registered user to access a user profile of an identified other
                    registered user via the user interface and image content items of the
24                  identified other registered user via the user interface; (iii) establish
                    access relationships between the first registered user and the other
25                  registered users without requiring the other registered users to
                    individually approve the access relationships; (iv) allow the first
26                  registered user to select from the user interface the user profile of
        1
27         Redlined comparisons of the disclosure of the ‘913 patent and each of the six applications to
     which it claims priority are attached to this Answer as Exhibits A-1 through A-6.
28

                                                      -15-
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 1                 another registered user with respect to which an access relationship has
                   been established with the first registered user, in response to which the
 2                 networked server system provides the selected user profile for display
                   to the first registered in the user interface, wherein the selected user
 3                 profile includes representations of at least some of the image content
                   items associated with the selected user profile; (v) allow the first
 4                 registered user to select and view one of the image content items in the
                   user interface; and (vi) allow the first registered user to interact with
 5                 the selected image content item via interactive controls of the user
                   interface.
 6
                   As a method of providing a service for controlled access over a
 7                 network to user profiles having associated image content provided by
                   registered users of the service, the service provided using a networked
 8                 server system comprising at least one processor and at least one
                   memory and accessible by remote user devices via the network, one
 9                 embodiment of the method can, for example, include at least: (a)
                   allowing users to register with the service and the registered users to
10                 each create a user profile comprising profile information about the
                   respective registered user and a plurality of image content items of data
11                 types corresponding to one or more of photo data or video data; (b)
                   allowing a first registered user to identify other registered users via a
12                 user interface and to indicate a desire to establish an access relationship
                   with the other registered users, wherein each access relationship allows
13                 the first registered user to access a user profile of an identified other
                   registered user via the user interface and image content items of the
14                 identified other registered user via the user interface; (c) establishing
                   access relationships between the first registered user and the other
15                 registered users without requiring the other registered users to
                   individually approve the access relationships; (d) storing in at least one
16                 database accessible by the networked server system (i) user profiles of
                   registered users, (ii) image content items provided by the registered
17                 users and (iii) relationship data that specifies access relationships
                   established between the registered users; (e) allowing the first
18                 registered user to select from the user interface the user profile of
                   another registered user with respect to which an access relationship has
19                 been established with the first registered user, in response to which the
                   networked server system provides the selected user profile for display
20                 to the first registered in the user interface, wherein the selected user
                   profile includes representations of at least some of the image content
21                 items associated with the selected user profile; (f) allowing the first
                   registered user to select and view one of the image content items in the
22                 user interface; and (g) allowing the first registered user to interact with
                   the selected image content item via interactive controls of the user
23                 interface.

24           68.     Had the above new matter not been added to the specification of the ‘103

25    application by Mr. Thomas and/or Mr. Cheah, the PTO would have rejected each every claim of

26    the ‘103 application as invalid under 35 U.S.C. § 112. Moreover, had Mr. Thomas and/or Mr.

27    Cheah notified the PTO of the addition of new matter—as was their obligation under PTO

28    regulations and their duty of candor to the PTO—the PTO would have rejected each every claim

                                                      -16-
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 1    of the ‘103 application as invalid under 35 U.S.C. §§ 112, 132, and/or 251. See, e.g., MPEP §

 2    2136.06. Alternatively (or additionally), the PTO would have assigned each and every claim a

 3    priority date of August 22, 2011 (instead of October 13, 1998) and rejected these claims as

 4    anticipated under 35 U.S.C. § 102 by numerous prior art references and systems.

 5           69.     On information and belief, Mr. Thomas and/or Mr. Cheah knew all of the above

 6    to be true. However, on information and belief, at the time the ‘103 application was filed, Mr.

 7    Thomas and/or Mr. Cheah also knew that the claims of the ‘546, ‘911, ‘100, and ‘896 patents

 8    did not cover any popular social networking sites (such as, for example, Facebook) and wished

 9    to remedy this deficiency in the ‘103 application. Moreover, on information and belief, at the

10    time of the filing of the ‘103 patent, Mr. Thomas and/or Mr. Cheah knew that the disclosure of

11    the applications to which the ‘913 patent claims priority did not support or enable the claim

12    scope Mr. Thomas and/or Mr. Cheah sought.

13           70.     On information and belief, in an attempt to remedy both these deficiencies—

14    deficiencies in the claims of previously-issued patents and deficiencies in the disclosure of the

15    applications in the Cheah patent family—Mr. Thomas and Mr. Cheah drafted claims for the ‘103

16    application that did not resemble anything disclosed in previous applications and added the new

17    matter quoted above as purported support for these new claims. However, Mr. Thomas and Mr.

18    Cheah, despite knowing that new matter had been added to the ‘103 application and despite

19    knowing that this new matter was highly material to patentability of the claims of that

20    application, never disclosed the presence of any new matter to the PTO. To the contrary, Mr.

21    Thomas and/or Mr. Cheah filed documents with the PTO stating that the ‘103 application was a

22    “continuation” of the above-referenced applications—a representation that was false. See, e.g.,

23    MPEP 201.07 (“The disclosure presented in the continuation must be the same as that of the

24    original application, i.e., the continuation should not include anything which would constitute

25    new matter if inserted in the original application.”).

26           71.     As a result of Mr. Thomas and Mr. Cheah’s intentional deception, the ‘913 patent

27    issued without any rejection by the PTO based on 35 U.S.C. § 112, and the PTO never

28    considered any prior art from the time period between October 13, 1998 and August 22, 2011.

                                                     -17-
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 1    Absent Mr. Thomas and Mr. Cheah’s inequitable conduct, none of the claims of the ‘913 patent

 2    would have issued in their present form.

 3            72.     Every claim of the ‘913 patent is unenforceable due to inequitable conduct and

 4    every claim of the ‘896 patent is unenforceable under the doctrine of infectious unenforceability.

 5                                  COUNTER-COUNTERCLAIMS
 6          Without admitting any of the allegations of the Complaint other than those expressly
 7 admitted herein, and without prejudice to Yahoo!’s right to plead additional counterclaims as the

 8 facts of the matter warrant, Yahoo! hereby asserts the following counter-counterclaims against

 9 Facebook:

10                                               PARTIES
11            1.      Counter-counterclaimant Yahoo! is a corporation organized under the laws of

12    Delaware, with its principal place of business at 701 1st Avenue, Sunnyvale, California, 94089.

13            2.      Counter-counterclaim Defendant Facebook is a corporation organized under the
14    laws of Delaware, with its principal place of business at 1601 Willow Road, Menlo Park,
15    California, 94025.
16                                   JURISDICTION AND VENUE
17            3.      By filing its Answer and Counterclaim, Facebook has consented to the personal

18    jurisdiction of this Court.

19            4.      In view of the filing by Facebook of its Counterclaim and Yahoo!’s defenses,

20    there exists an actual and justiciable controversy between the parties regarding the validity,

21    enforceability, and alleged infringement of U.S. Patent No. 7,827,208 (the “‘208 patent”), U.S.

22    Patent No. 7,945,653 (the “‘653 patent”), U.S. Patent No. 6,288,717 (the “‘717 patent”), U.S.

23    Patent No. 6,216,133 (the “‘133 patent”), U.S. Patent No. 6,411,949 (the “‘949 patent), U.S.

24    Patent No. 6,236,978 (the “‘978 patent”), U.S. Patent No. 7,603,331 (the “‘331 patent”), U.S.

25    Patent No. 8,103,611 (the “‘611 patent”), U.S. Patent No. 8,005,896 (the “‘896 patent”), and

26    U.S. Patent No. 8,150,913 (the “‘913 patent”).

27

28

                                                    -18-
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 1              5.      Subject matter jurisdiction is proper under the Federal Declaratory Judgment Act,

 2    28 U.S.C. §§ 2201 and 2202, the patent laws of the United States, 35 U.S.C. §§ 100 et seq.,

 3    concerning actions related to patents, and 28 U.S.C. §§ 1331 and 1338.

 4              6.      Venue is proper in this Court under 28 U.S.C. § 1391(b) and (c) and § 1400(b)

 5    because Facebook does business in the State of California, has committed acts of infringement

 6    in this State and in this District, has a regular and established place of business in this District, is

 7    subject to personal jurisdiction in this District, and filed counterclaims for patent infringement in

 8    this District..

 9                                               COUNT ONE
10               Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,827,208
11              7.      Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

12    its Counter-Counterclaims, as set forth above.

13              8.      Facebook has asserted claims against Yahoo! for alleged infringement of the ‘208

14    patent.

15              9.      Yahoo! denies Facebook’s allegations of infringement.

16              10.     An actual case or controversy exists between Yahoo! and Facebook as to whether

17    the ‘208 patent is infringed by Yahoo!.

18              11.     A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

19    its rights regarding the ‘208 patent.

20              12.     Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

21    Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

22    indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

23    the ‘208 Patent.

24                                              COUNT TWO
25               Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,945,653
26              13.     Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

27    its Counter-Counterclaims, as set forth above.

28

                                                       -19-
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 1              14.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘653

 2    patent.

 3              15.   Yahoo! denies Facebook’s allegations of infringement.

 4              16.   An actual case or controversy exists between Yahoo! and Facebook as to whether

 5    the ‘653 patent is infringed by Yahoo!.

 6              17.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

 7    its rights regarding the ‘653 patent.

 8              18.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

 9    Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

10    indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

11    the ‘653 Patent.

12                                            COUNT THREE
13               Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,288,717
14              19.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

15    its Counter-Counterclaims, as set forth above.

16              20.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘717

17    patent.

18              21.   Yahoo! denies Facebook’s allegations of infringement.

19              22.   An actual case or controversy exists between Yahoo! and Facebook as to whether

20    the ‘717 patent is infringed by Yahoo!.

21              23.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

22    its rights regarding the ‘717 patent.

23              24.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

24    Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

25    indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

26    the ‘717 Patent.

27

28

                                                     -20-
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 1                                              COUNT FOUR
 2               Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,216,133
 3              25.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of
 4    its Counter-Counterclaims, as set forth above.
 5              26.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘133

 6    patent.

 7              27.   Yahoo! denies Facebook’s allegations of infringement.

 8              28.   An actual case or controversy exists between Yahoo! and Facebook as to whether

 9    the ‘133 patent is infringed by Yahoo!.

10              29.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain
11    its rights regarding the ‘133 patent.
12              30.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,
13    Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or
14    indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of
15    the ‘133 Patent.
16                                              COUNT FIVE
17               Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,411,949
18              31.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

19    its Counter-Counterclaims, as set forth above.

20              32.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘949

21    patent.

22              33.   Yahoo! denies Facebook’s allegations of infringement.

23              34.   An actual case or controversy exists between Yahoo! and Facebook as to whether

24    the ‘949 patent is infringed by Yahoo!.

25              35.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

26    its rights regarding the ‘949 patent.

27              36.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

28    Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

                                                     -21-
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 1    indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

 2    the ‘949 Patent.

 3                                              COUNT SIX
 4               Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,236,978
 5              37.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of
 6    its Counter-Counterclaims, as set forth above.
 7              38.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘978

 8    patent.

 9              39.   Yahoo! denies Facebook’s allegations of infringement.

10              40.   An actual case or controversy exists between Yahoo! and Facebook as to whether
11    the ‘978 patent is infringed by Yahoo!.
12              41.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain
13    its rights regarding the ‘978 patent.
14              42.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,
15    Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or
16    indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of
17    the ‘978 Patent.
18                                            COUNT SEVEN
19               Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,603,331
20              43.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

21    its Counter-Counterclaims, as set forth above.

22              44.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘331

23    patent.

24              45.   Yahoo! denies Facebook’s allegations of infringement.

25              46.   An actual case or controversy exists between Yahoo! and Facebook as to whether

26    the ‘331 patent is infringed by Yahoo!.

27              47.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

28    its rights regarding the ‘331 patent.

                                                     -22-
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 1              48.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

 2    Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

 3    indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

 4    the ‘331 Patent.

 5                                            COUNT EIGHT
 6               Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,103,611
 7              49.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of
 8    its Counter-Counterclaims, as set forth above.
 9              50.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘611

10    patent.
11              51.   Yahoo! denies Facebook’s allegations of infringement.
12              52.   An actual case or controversy exists between Yahoo! and Facebook as to whether
13    the ‘611 patent is infringed by Yahoo!.
14              53.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain
15    its rights regarding the ‘611 patent.
16              54.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,
17    Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or
18    indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of
19    the ‘611 Patent.

20                                              COUNT NINE
21               Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,005,896
22              55.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

23    its Counter-Counterclaims, as set forth above.

24              56.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘896

25    patent.

26              57.   Yahoo! denies Facebook’s allegations of infringement.

27              58.   An actual case or controversy exists between Yahoo! and Facebook as to whether

28    the ‘896 patent is infringed by Yahoo!.

                                                     -23-
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 1              59.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

 2    its rights regarding the ‘896 patent.

 3              60.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

 4    Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

 5    indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

 6    the ‘896 Patent.

 7                                              COUNT TEN
 8               Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,150,913
 9              61.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of
10    its Counter-Counterclaims, as set forth above.
11              62.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘913
12    patent.
13              63.   Yahoo! denies Facebook’s allegations of infringement.
14              64.   An actual case or controversy exists between Yahoo! and Facebook as to whether
15    the ‘913 patent is infringed by Yahoo!.
16              65.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain
17    its rights regarding the ‘913 patent.
18              66.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,
19    Yahoo! is entitled to a judgment finding that Yahoo! has not and does not infringe, directly or

20    indirectly, either literally or under the doctrine of equivalents, any valid and enforceable claim of

21    the ‘913 Patent.

22                                            COUNT ELEVEN
23      Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 7,827,208
24              67.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

25    its Counter-Counterclaims, as set forth above.

26              68.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘208

27    patent.

28

                                                     -24-
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 1              69.    Yahoo! denies Facebook’s allegations of infringement and asserts that the '208

 2    patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

 3    incorporated herein by reference.

 4              70.    An actual case or controversy exists between Yahoo! and Facebook as to whether

 5    the claims of the ‘208 patent are invalid and unenforceable.

 6              71.    A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

 7    its rights as to whether the claims of the ‘208 patent are invalid and unenforceable.

 8              72.    Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

 9    Yahoo! is entitled to a judgment finding that the claims of the ‘208 patent are invalid and

10    unenforceable.

11                                           COUNT TWELVE
12      Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 7,945,653
13              73.    Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

14    its Counter-Counterclaims, as set forth above.

15              74.    Facebook has asserted claims against Yahoo! for alleged infringement of the ‘653

16    patent.

17              75.    Yahoo! denies Facebook’s allegations of infringement and asserts that the '653

18    patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

19    incorporated herein by reference.

20              76.    An actual case or controversy exists between Yahoo! and Facebook as to whether

21    the claims of the ‘653 patent are invalid and unenforceable.

22              77.    A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

23    its rights as to whether the claims of the ‘653 patent are invalid and unenforceable.

24              78.    Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

25    Yahoo! is entitled to a judgment finding that the claims of the ‘653 patent are invalid and

26    unenforceable.

27

28

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 1                                          COUNT THIRTEEN
 2      Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 6,288,717
 3              79.    Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of
 4    its Counter-Counterclaims, as set forth above.
 5              80.    Facebook has asserted claims against Yahoo! for alleged infringement of the ‘717

 6    patent.

 7              81.    Yahoo! denies Facebook’s allegations of infringement and asserts that the '717

 8    patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

 9    incorporated herein by reference.

10              82.    An actual case or controversy exists between Yahoo! and Facebook as to whether
11    the claims of the ‘717 patent are invalid and unenforceable.
12              83.    A judicial declaration is necessary and appropriate so that Yahoo! may ascertain
13    its rights as to whether the claims of the ‘717 patent are invalid and unenforceable.
14              84.    Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,
15    Yahoo! is entitled to a judgment finding that the claims of the ‘717 patent are invalid and
16    unenforceable.
17                                          COUNT FOURTEEN
18      Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 6,216,133
19              85.    Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

20    its Counter-Counterclaims, as set forth above.

21              86.    Facebook has asserted claims against Yahoo! for alleged infringement of the ‘133

22    patent.

23              87.    Yahoo! denies Facebook’s allegations of infringement and asserts that the '133

24    patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

25    incorporated herein by reference.

26              88.    An actual case or controversy exists between Yahoo! and Facebook as to whether

27    the claims of the ‘133 patent are invalid and unenforceable.

28

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 1              89.    A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

 2    its rights as to whether the claims of the ‘133 patent are invalid and unenforceable.

 3              90.    Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

 4    Yahoo! is entitled to a judgment finding that the claims of the ‘133 patent are invalid and

 5    unenforceable.

 6                                           COUNT FIFTEEN
 7      Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 6,411,949
 8              91.    Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of
 9    its Counter-Counterclaims, as set forth above.
10              92.    Facebook has asserted claims against Yahoo! for alleged infringement of the ‘949
11    patent.
12              93.    Yahoo! denies Facebook’s allegations of infringement and asserts that the '949
13    patent is invalid and unenforceable for the reasons stated in its affirmative defenses,
14    incorporated herein by reference.
15              94.    An actual case or controversy exists between Yahoo! and Facebook as to whether
16    the claims of the ‘949 patent are invalid and unenforceable.
17              95.    A judicial declaration is necessary and appropriate so that Yahoo! may ascertain
18    its rights as to whether the claims of the ‘949 patent are invalid and unenforceable.
19              96.    Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

20    Yahoo! is entitled to a judgment finding that the claims of the ‘949 patent are invalid and

21    unenforceable.

22                                           COUNT SIXTEEN
23      Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 6,236,978
24              97.    Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

25    its Counter-Counterclaims, as set forth above.

26              98.    Facebook has asserted claims against Yahoo! for alleged infringement of the ‘978

27    patent.

28

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 1              99.    Yahoo! denies Facebook’s allegations of infringement and asserts that the '978

 2    patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

 3    incorporated herein by reference.

 4              100.   An actual case or controversy exists between Yahoo! and Facebook as to whether

 5    the claims of the ‘913 patent are invalid and unenforceable.

 6              101.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

 7    its rights as to whether the claims of the ‘913 patent are invalid and unenforceable.

 8              102.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

 9    Yahoo! is entitled to a judgment finding that the claims of the ‘913 patent are invalid and

10    unenforceable.

11                                         COUNT SEVENTEEN
12      Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 7,603,331
13              103.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

14    its Counter-Counterclaims, as set forth above.

15              104.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘331

16    patent.

17              105.   Yahoo! denies Facebook’s allegations of infringement and asserts that the '331

18    patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

19    incorporated herein by reference.

20              106.   An actual case or controversy exists between Yahoo! and Facebook as to whether

21    the claims of the ‘331 patent are invalid and unenforceable.

22              107.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

23    its rights as to whether the claims of the ‘331 patent are invalid and unenforceable.

24              108.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

25    Yahoo! is entitled to a judgment finding that the claims of the ‘331 patent are invalid and

26    unenforceable.

27

28

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 1                                          COUNT EIGHTEEN
 2      Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 8,103,611
 3              109.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of
 4    its Counter-Counterclaims, as set forth above.
 5              110.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘611

 6    patent.

 7              111.   Yahoo! denies Facebook’s allegations of infringement and asserts that the '611

 8    patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

 9    incorporated herein by reference.

10              112.   An actual case or controversy exists between Yahoo! and Facebook as to whether
11    the claims of the ‘611 patent are invalid and unenforceable.
12              113.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain
13    its rights as to whether the claims of the ‘611 patent are invalid and unenforceable.
14              114.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,
15    Yahoo! is entitled to a judgment finding that the claims of the ‘611 patent are invalid and
16    unenforceable.
17                                          COUNT NINETEEN
18      Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 8,005,896
19              115.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of

20    its Counter-Counterclaims and paragraphs 55-72 of its defenses, as set forth above.

21              116.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘896

22    patent.

23              117.   Yahoo! denies Facebook’s allegations of infringement and asserts that the '896

24    patent is invalid and unenforceable for the reasons stated in its affirmative defenses,

25    incorporated herein by reference.

26              118.   An actual case or controversy exists between Yahoo! and Facebook as to whether

27    the claims of the ‘896 patent are invalid and unenforceable.

28

                                                     -29-
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 1              119.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain

 2    its rights as to whether the claims of the ‘896 patent are invalid and unenforceable.

 3              120.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

 4    Yahoo! is entitled to a judgment finding that the claims of the ‘896 patent are invalid and

 5    unenforceable.

 6                                            COUNT TWENTY
 7      Declaratory Judgment of Invalidity and Unenforceability of U.S. Patent No. 8,150,913
 8              121.   Yahoo! restates and incorporates by reference its allegations in paragraphs 1-6 of
 9    its Counter-Counterclaims and paragraphs 55-72 of its defenses, as set forth above.
10              122.   Facebook has asserted claims against Yahoo! for alleged infringement of the ‘913
11    patent.
12              123.   Yahoo! denies Facebook’s allegations of infringement and asserts that the '913
13    patent is invalid and unenforceable for the reasons stated in its affirmative defenses,
14    incorporated herein by reference.
15              124.   An actual case or controversy exists between Yahoo! and Facebook as to whether
16    the claims of the ‘913 patent are invalid and unenforceable.
17              125.   A judicial declaration is necessary and appropriate so that Yahoo! may ascertain
18    its rights as to whether the claims of the ‘913 patent are invalid and unenforceable.
19              126.   Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,

20    Yahoo! is entitled to a judgment finding that the claims of the ‘913 patent are invalid and

21    unenforceable.

22                                         COUNT TWENTY-ONE
23                                     Infringement of the '903 Patent
24              127.   Yahoo! realleges and incorporates by reference the allegations of Paragraphs 1-31

25    of its March 12, 2012 Complaint as though fully set forth herein.

26              128.   Yahoo! is the owner of all rights, title, and interest in United States Patent No.

27    7,933,903 (“the ‘903 patent”), entitled “System and Method to Determine the Validity of and

28

                                                       -30-
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 1    Interaction on a Network,” which was duly and properly issued by the USPTO on April 26,

 2    2011. A copy of the ‘903 patent is attached as Exhibit 1.

 3           129.    Upon information and belief, in violation of 35 U.S.C. § 271, Facebook is and

 4    has been directly infringing the ‘903 patent by making, using, selling, and/or offering to sell in

 5    the United States, or importing into the United States, products or processes that practice the

 6    inventions claimed in the ‘903 patent, including without limitation, Facebook Ads. Facebook

 7    has had knowledge of the ‘903 patent from at least February 27, 2012, when Yahoo! notified

 8    Facebook of its infringement, and its infringement since at least that date has been willful.

 9           130.    As a result of Facebook’s unlawful infringement of the ‘903 patent, Yahoo! has

10    suffered and will continue to suffer damage. Yahoo! is entitled to recover from Facebook the

11    damages suffered by Yahoo! as a result of its unlawful acts.

12           131.    On information and belief, Facebook intends to continue its unlawful infringing

13    activity, and Yahoo! continues to and will continue to suffer irreparable harm — for which there

14    is no adequate remedy at law — from such unlawful infringing activities unless this Court

15    enjoins Facebook from further infringing activities.

16                                      COUNT TWENTY-TWO
17                                    Infringement of the '315 Patent
18           132.    Yahoo! realleges and incorporates by reference the allegations of Paragraphs 1-31

19    of its March 12, 2012 Complaint as though fully set forth herein.

20           133.    Yahoo! is the owner of all rights, title, and interest in United States Patent No.

21    7,698,315 (“the ‘315 patent”), entitled “System and Method Allowing Advertisers to Manage

22    Search Listings in Pay for Placement Search System Using Grouping,” which was duly and

23    properly issued by the USPTO on April 13, 2010. A copy of the ‘315 patent is attached as

24    Exhibit 2.

25           134.    Upon information and belief, in violation of 35 U.S.C. § 271, Facebook is and

26    has been directly infringing the ‘315 patent by making, using, selling, and/or offering to sell in

27    the United States, or importing into the United States, products or processes that practice the

28    inventions claimed in the ‘315 patent, including without limitation, Facebook Ads.

                                                     -31-
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 1            135.    As a result of Facebook’s unlawful infringement of the ‘315 patent, Yahoo! has

 2    suffered and will continue to suffer damage. Yahoo! is entitled to recover from Facebook the

 3    damages suffered by Yahoo! as a result of its unlawful acts.

 4            136.    On information and belief, Facebook intends to continue its unlawful infringing

 5    activity, and Yahoo! continues to and will continue to suffer irreparable harm — for which there

 6    is no adequate remedy at law — from such unlawful infringing activities unless this Court

 7    enjoins Facebook from further infringing activities.

 8                                        EXCEPTIONAL CASE
 9            137.    On information and belief, and in addition to the reasons set forth in Yahoo!’s
10    complaint, this is an exceptional case entitling Yahoo! to an award of its attorneys’ fees incurred
11    in connection with defending and prosecuting this action pursuant to 35 U.S.C. § 285, as a result
12    of, inter alia, Facebook’s assertion of the ‘208 patent, the ‘653 patent, the ‘717 patent, the ‘133
13    patent, the ‘949 patent, the ‘978 patent, the ‘331 patent, the ‘611 patent, the ‘896 patent, and the
14    ‘913 patent against Yahoo! without a reasonable belief that Yahoo! infringes any valid or
15    enforceable claim. Further, Facebook’s infringement of the ‘903 patent is willful and in
16    knowing disregard of Yahoo!’s patent rights, rendering this case exceptional.
17                                        PRAYER FOR RELIEF
18          WHEREFORE, Yahoo! prays for the following relief:

19                   A.    A judgment in favor of Yahoo! on all of its Counter- Counterclaims;

20                   B.    That Facebook be declared to have willfully infringed, induced others to

21 infringe and/or committed acts of contributory infringement with respect to the claims of the

22 patents-in-suit as alleged above;

23                   C.    That Facebook and its officers, agents, servants, employees, and all those

24 persons acting or attempting to act in active concert or in participation with them or acting on their

25 behalf be immediately, preliminarily and permanently enjoined from further infringement of the

26 patents-in-suit;

27                   D.    That Facebook be ordered to account for and pay to Yahoo! all damages

28 caused to Yahoo! by reason of Facebook's infringement of the patents-in-suit pursuant to 35

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 1 U.S.C. § 284 and that such damages be trebled in view of the willful and deliberate nature of the

 2 infringement;

 3                  E.     A judgment dismissing Facebook’s Counterclaim against Yahoo! with

 4 prejudice and costs, with Facebook taking nothing;

 5                  F.     A declaration that Yahoo! has not and does not infringe, contribute to the

 6 infringement of, or induce others to infringe, either directly or indirectly, any valid and

 7 enforceable claim of the ‘208 patent.

 8                  G.     A declaration that Yahoo! has not and does not infringe, contribute to the

 9 infringement of, or induce others to infringe, either directly or indirectly, any valid and

10 enforceable claim of the ‘653 patent.

11                  H.     A declaration that Yahoo! has not and does not infringe, contribute to the

12 infringement of, or induce others to infringe, either directly or indirectly, any valid and

13 enforceable claim of the ‘717 patent.

14                  I.     A declaration that Yahoo! has not and does not infringe, contribute to the

15 infringement of, or induce others to infringe, either directly or indirectly, any valid and

16 enforceable claim of the ‘133 patent.

17                  J.     A declaration that Yahoo! has not and does not infringe, contribute to the

18 infringement of, or induce others to infringe, either directly or indirectly, any valid and

19 enforceable claim of the ‘949 patent.

20                  K.     A declaration that Yahoo! has not and does not infringe, contribute to the

21 infringement of, or induce others to infringe, either directly or indirectly, any valid and

22 enforceable claim of the ‘978 patent.

23                  L.     A declaration that Yahoo! has not and does not infringe, contribute to the

24 infringement of, or induce others to infringe, either directly or indirectly, any valid and

25 enforceable claim of the ‘331 patent.

26                  M.     A declaration that Yahoo! has not and does not infringe, contribute to the

27 infringement of, or induce others to infringe, either directly or indirectly, any valid and

28 enforceable claim of the ‘611 patent.

                                                     -33-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                  CV-12-01212-JSW
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 1                  N.     A declaration that Yahoo! has not and does not infringe, contribute to the

 2 infringement of, or induce others to infringe, either directly or indirectly, any valid and

 3 enforceable claim of the ‘896 patent.

 4                  O.     A declaration that Yahoo! has not and does not infringe, contribute to the

 5 infringement of, or induce others to infringe, either directly or indirectly, any valid and

 6 enforceable claim of the ‘913 patent.

 7                  P.     A declaration that every claim of the ‘208 patent is invalid and/or

 8 unenforceable;

 9                  Q.     A declaration that every claim of the ‘653 patent is invalid and/or

10 unenforceable;

11                  R.     A declaration that every claim of the ‘717 patent is invalid and/or

12 unenforceable;

13                  S.     A declaration that every claim of the ‘133 patent is invalid and/or

14 unenforceable;

15                  T.     A declaration that every claim of the ‘949 patent is invalid and/or

16 unenforceable;

17                  U.     A declaration that every claim of the ‘978 patent is invalid and/or

18 unenforceable;

19                  V.     A declaration that every claim of the ‘331 patent is invalid and/or

20 unenforceable;

21                  W.     A declaration that every claim of the ‘611 patent is invalid and/or

22 unenforceable;

23                  X.     A declaration that every claim of the ‘896 patent is invalid and/or

24 unenforceable;

25                  Y.     A declaration that every claim of the ‘913 patent is invalid and/or

26 unenforceable;

27                  Z.     A declaration that this case is exceptional and an award to Yahoo! of its

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

                                                     -34-
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 1                AA.   That Yahoo! be granted such other and additional relief as the Court deems

 2 just and proper.

 3

 4 DATED: April 27, 2012                  Respectfully submitted,

 5

 6                                          By: /s/ Kevin A. Smith
                                              Charles K. Verhoeven
 7                                            Jennifer A. Kash
                                              Kevin A. Smith
 8                                            Quinn Emanuel Urquhart & Sullivan LLP
                                              50 California Street, 22nd Floor
 9                                            San Francisco, CA 94111
                                              Telephone: 415-875-6600
10
                                               Attorneys for Plaintiff Yahoo! Inc.
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 1                                    DEMAND FOR JURY TRIAL
 2          Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff Yahoo! hereby
 3 demands a trial by jury as to all issues so triable.

 4

 5 DATED: April 27, 2012                       Respectfully submitted,

 6

 7                                               By /s/ Kevin A. Smith
                                                   Charles K. Verhoeven
 8                                                 Jennifer A. Kash
                                                   Kevin A. Smith
 9                                                 Quinn Emanuel Urquhart & Sullivan LLP
                                                   50 California Street, 22nd Floor
10                                                 San Francisco, CA 94111
                                                   Telephone: 415-875-6600
11
                                                    Attorneys for Plaintiff Yahoo! Inc.
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                                                     -36-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                   CV-12-01212-JSW
        Case3:12-cv-01212-JSW Document28 Filed04/27/12 Page37 of 37



 1                                   CERTIFICATE OF SERVICE
 2          I, Kevin A. Smith, declare under penalty of perjury under the laws of the State of
 3 California and the United States that the following is true and correct:

 4          On April 27, 2012, I caused to be served the following document(s):
 5          PLAINTIFF YAHOO! INC.’s REPLY AND COUNTER COUNTERCLAIMS TO
            DEFENDANT FACEBOOK, INC.’S ANSWER; COUNTERCLAIM AGAINST
 6          FACEBOOK, INC FOR DECLARATORY JUDGMENT OF NON-
 7          INFRINGEMENT

 8 via electronic mail to the following parties:

 9 Michael Graham Rhodes (rhoedsmg@cooley.com)
   Heidi Keefe (hkeefe@cooley.com)
10 Joseph Haag (joseph.haag@wilmerhale.com)
   Mark Selwyn (mark.selwyn@wilmerhale.com)
11 Mark Weinstein (mweinstein@cooley.com)

12 Stephen Neal (nealsc@cooley.com)

13 via U.S. Mail to the following parties:

14 Cynthia D. Vreeland
   Lee F. William
15
   Wilmer Cutler Pickering Hale and Dorr LLP
16 60 State Street
   Boston, MA 02109
17
   Dated: April 27, 2012                                                /s/ Kevin A. Smith
18

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                                                    -37-
     PLAINTIFF YAHOO!'S REPLY AND COUNTER-COUNTERCLAIMS                                CV-12-01212-JSW

				
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