ANSWER TO PRAYER FOR RELIEF
Top Image denies any and all allegations contained in the remainder of the Complaint
and denies that Plaintiff is entitled to any of the relief requested in Paragraphs a – g of the
Top Image admits that Plaintiff has requested and demands a trial by jury of this action.
Without waiving the foregoing, Top Image asserts the following separate defenses. Top
Image alleges the following defenses in response to the allegations set forth in the Complaint.
Top Image hereby incorporates by reference its answers to the allegations contained in
Paragraphs 1 to 52 of its Answer to the Complaint as if fully set forth herein.
1. The Complaint fails to state a claim on which relief can be based. Plaintiff fails to
identify any products made, used, imported, sold or offered for sale by Top Image.
2. Top Image does not infringe and has not infringed the claims of the U.S. Patent
Nos.7,778,457; 7,949,176; 7,953,268; 7,978,900; and 8,000,514 (the “Asserted Patents”) either
individually or jointly, either directly, contributorily, or by inducement, either literally or under
the doctrine of equivalents.
3. The Asserted Patents are invalid, void and/or unenforceable for failing to comply
with one or more of the conditions and requirements of the patent laws of the United States,
including, but not limited to, 35 U.S.C. §§ 101, 102, 103, and 112, engaging in patent misuse,
Case 1:12-cv-01208-RGA Document 14 Filed 01/07/13 Page 6 of 10 PageID #: 231
and/or failing to satisfy other statutory or judicially created requirements for patentability and
4. Plaintiff lacks standing to assert the causes alleged in the Complaint.
5. Plaintiff’s Complaint and each cause of action asserted therein are barred in whole
or in part for failure to join an indispensable party.
6. Plaintiff’s claim and Prayer are limited by 35 U.S.C. §§ 286-287.
7. Plaintiff’s complaint and requested relief are barred by the doctrine of patent
8. Plaintiff’s complaint and requested relief are barred by the doctrines of unclean
hands, waiver, and acquiescence.
9. Plaintiff lacks standing to assert claims of infringement on the asserted patent
because, on information and belief, it does not possess all substantial rights in the Asserted
10. Plaintiff’s claims are barred by estoppel, including, without limitation prosecution
history estoppel, unclean hands, and laches.
11. To the extent that any remedy is justified, Plaintiff will not and has not suffered
any irreparable harm or injury; Plaintiff’s claims for injunctive relief are barred in light of the
availability of an adequate remedy at law, to the extent any remedy is justified and to the extent
it is not and will not suffer irreparable harm or injury.
12. Top Image has not engaged in any conduct that entitles Plaintiff to an award of
damages, costs, expenses, and/or pre-judgment and post-judgment interests.
13. Top Image has not engaged in any conduct which would entitle Plaintiff to an
award of enhanced damages.
Case 1:12-cv-01208-RGA Document 14 Filed 01/07/13 Page 7 of 10 PageID #: 232
14. Top Image has not engaged in any conduct which would make this an exceptional
case or that entitles Plaintiff to an award of its reasonable attorneys’ fees.
15. Top Image reserves the right to offer any other and additional defense that is now
or may become available or appear during, or as a result of, discovery proceedings in this action.
RESERVATION OF ADDITIONAL DEFENSES
Top Image reserves additional affirmative or other defenses in the event that discovery or
other investigation and/or analysis indicates that additional defenses lie or are appropriate.
PRAYER FOR RELIEF
WHEREFORE, Top Image respectfully requests that the Court:
A. Dismiss each of Plaintiff’s causes of action against Top Image with prejudice and
that Plaintiff take nothing;
B. Deem this to be an exceptional case and award Top Image its costs and attorneys’
fees pursuant to 35 U.S.C. § 285;
C. Award Top Image any such other and further relief as the Court deems just and
Try again. In Federal Court, causes of action arising out of the same facts require a compulsory filing of a counter complaint...you are barred from filing an independent lawsuit in the future when the lawsuit arises out of the transaction or occurrence. See Federal Rules of Civil Procedure 13. Of course, all the YMB attorneys already new that...
No prayer needed the onus is now squarely on Mitek to prove patent infringement which they can't. The suit is an old ploy called out in the response so Mitek better be able to prove their claims or TISA will own them.