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FILED 


WILLIAM L. ANTHONY (State Bar No. 106908)) 
ERIC L. WESENBERG (State Bar No. 1 39696) 

MARK R. WEINSTEIN (State Bar No. 193043) > 2601 AUG 29 PM 3'- 59 
ORRICK, HERRINGTON & SUTCLIFFE LLP 

1000 Marsh Road r f« " uw^trIci court 

Menlo Park, CA 94025 morthehu limbic t uk California 
Telephone: (650)614-7400 
Facsimile: (650)614-7401 

JAMES E. GERINGER (admitted Pro Hoc Vice) 
JOHN D. VANDENBERG (admitted Pro Hac Vice) 
KLARQU1ST SPARKMAN, LLP 
One World Trade Center, Suite 1600 
121 S.W. Salmon Street 
Portland, OR 97204 
Telephone: (503)226-7391 
Facsimile: (503) 228-9446 

Attorneys for Defendant 
MICROSOFT CORPORATION 


ORIGINAL 


2/ 


UNITED STATES DISTRICT COURT 
NORTHERN DISTRICT OF CALIFORNIA 


INTERTRUST TECHNOLOGIES 
CORPORATION, a Delaware corporation, 

Plaintiff, 


MICROSOFT CORPORATION, a 
Washington Corporation, 

Defendant. 


CASE NO: C 01-1640 SBA 

MICROSOFT CORPORATION'S 
ANSWER TO THE SECOND 
AMENDED COMPLAINT 


Defendant Microsoft Corporation ("Microsoft") answers the Second Amended 
Complaint of InterTrust Technologies Corporation ("InterTrust") as follows: 

1 . Microsoft admits that the Second Amended Complaint purports to state a 
cause of action under the patent laws of the United States, 35 United States Code, §§ 271 and 
281 . Microsoft denies that it has infringed or now infringes the patents asserted against Microsoft 
in the Second Amended Complaint. Microsoft denies any and all remaining allegations of 
paragraph 1 of the Second Amended Complaint. 


DOCSSVl : 158-t33.1 


Microsoft's Corporation's Answer to Second 
Amended Complaint, Case No. C 01-1640 SBA 


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2. Microsoft admits that the Second Amended Complaint purports to state a 
ause of action over which this Court has subject matter jurisdiction under 28 U.S.C. §§1331 and 
338(a). 

3. Microsoft admits, for purposes of this action only, that venue is proper in 
his judicial district. Microsoft denies any and all remaining allegations of paragraph 3 of the 

Second Amended Complaint. 

4. Upon information and belief, Microsoft admits the allegations of paragraph 

\ of the Second Amended Complaint. 

5. Microsoft admits the allegations of paragraph 5 of the Second Amended 

Complaint. 

6. Microsoft admits, for purposes of this action only, that it transacts business 
n this judicial district. Microsoft denies any and all remaining allegations of paragraph 6 of the 

Second Amended Complaint. 

7. Microsoft admits that on its face the title page of U.S. Patent No. 6,1 85,683 
Bl ("the '683 Patent") states that it was issued February 6, 2001, is entitled "Trusted and secure 
techniques, systems and methods for item delivery and execution," and lists "InterTrust 
Technologies Corp." as the assignee. Microsoft admits that a copy of the '683 Patent was 
attached to the copy of the Second Amended Complaint delivered to counsel for Microsoft, but 
denies that such copy was full and complete insofar as it did not include any material purportedly 
incorporated by reference therein. Microsoft denies that the '683 Patent was duly and lawfully 
issued. Microsoft further denies any and all remaining allegations of paragraph 7 of the Second 

Amended Complaint. 

8. Microsoft admits that on its face the title page of U.S. Patent No. 6,253,193 
Bl ("the '193 Patent") states that it was issued June 26, 2001, is entitled "Systems and methods 
for the secure transaction management and electronic rights protection," and lists "InterTrust 
Technologies Corporation" as the assignee. Microsoft admits that a copy of text associated with 
the '193 Patent was attached to the copy of the Second Amended Complaint delivered to counsel 
for Microsoft, but denies that such copy was full and complete as it did not include, among other 

DOCSSVl:15M35.1 

Microsoft's Corporation's Answer to Second 
"2" ami-ndi-d Complaint, Case No. CO1-1640 SBA 


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OKKK'K 
IlliK KINGTON 

& Sinn.iiT!- LLP 


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things, any of the drawings or figures. Microsoft further denies such copy was full and complete 
insofar as it did not include any material purportedly incorporated by reference therein. Microsoft 
denies that the '193 Patent was duly and lawfully issued. Microsoft further denies any and all 
remaining allegations of paragraph 8 of the Second Amended Complaint. 

9. Microsoft admits that on its face the title page of U.S. Patent No. 5,940,504 
("the '504 Patent") states that it was issued August 17, 1999 and is entitled "Licensing 
management system and method in which datagrams including an addressee of a licensee and 
indicative of use of a licensed product are sent from the licensee's site." Microsoft admits that a 
copy of the '504 Patent was attached to the copy of the Second Amended Complaint delivered to 
counsel for Microsoft. Microsoft denies that the '504 Patent was duly and lawfully issued. 
Microsoft further denies any and all remaining allegations of paragraph 9 of the Second Amended 
Complaint. 

10. Microsoft admits that on its face the title page of U.S. Patent No. 5,920,861 
("the '861 Patent") states that it was issued July 6, 1999, is entitled "Techniques for defining, 
using and manipulating rights management data structures," and lists "InterTrust Technologies 
Corp." as the assignee. Microsoft admits that a copy of the '861 Patent was attached to the copy 
of the Second Amended Complaint delivered to counsel for Microsoft, but denies that such copy 
was full and complete insofar as it did not include any material purportedly incorporated by 
reference therein. Microsoft denies that the '861 Patent was duly and lawfully issued. Microsoft 
further denies any and all remaining allegations of paragraph 10 of the Second Amended 
Complaint. 

1 1 . Microsoft repeats and reasserts its responses to paragraphs 1-7 of the 
Second Amended Complaint, as if fully restated herein. 

12. Microsoft admits that the Second Amended Complaint purports to state a 
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now 
infringes the patents asserted against Microsoft in the Second Amended Complaint. Microsoft 
denies any and all remaining allegations of paragraph 12 of the Second Amended Complaint. 

13. Microsoft denies any and all allegations of paragraph 13 of the Second 


DOCSSV 1:158435. 1 


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Microsoft's Corporation's Answer to Second 
Amended Complaint, Case No. C0I-I640SBA 


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Amended Complaint. 

14. Microsoft denies any and all allegations of paragraph 14 of the Second 

Amended Complaint. 

15. Microsoft denies any and all allegations of paragraph 15 of the Second 

Amended Complaint. 

1 6. Microsoft denies any and all allegations of paragraph 16 of the Second 

Amended Complaint. 

1 7. Microsoft denies any and all allegations of paragraph 17 of the Second 

Amended Complaint. 

1 8. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 8 of the 

Second Amended Complaint, as if fully restated herein. 

1 9. Microsoft admits that the Second Amended Complaint purports to state a 
cause of action under 35 U.S.C. §§ 271 and 281.. Microsoft denies that it has infringed or now 
infringes the patents asserted against Microsoft in the Second Amended Complaint. Microsoft 
denies any and all remaining allegations of paragraph 19 of the Second Amended Complaint. 

20. Microsoft denies any and all allegations of paragraph 20 of the Second 

Amended Complaint. 

2 1 . Microsoft denies any and all allegations of paragraph 21 of the Second 

Amended Complaint. 

22. Microsoft denies any and all allegations of paragraph 22 of the Second 

Amended Complaint. 

23. Microsoft denies any and all allegations of paragraph 23 of the Second 

Amended Complaint. 

24. Microsoft denies any and all allegations of paragraph 24 of the Second 

Amended Complaint. 

25. Microsoft repeals and reasserts its responses to paragraphs 1-6 and 9 of the 

Second Amended Complaint, as if fully restated herein. 

/// 

DOCSSVl:l58435.1 

Microsoft's Corporation's Answer to Second 
Amended Complaint, Case No. C 01-1640 SBA 


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Orrick 
Hekrington 

& SUTfUFFli LLP 
in it ..s v inn 


26. Microsoft admits that the Second Amended Complaint purports to state a 
cause of action under 35 U.S.C. §§ 271 and 281 . Microsoft denies that it has infringed or now 
infringes the patents asserted against Microsoft in the Second Amended Complaint. Microsoft 
denies any and all remaining allegations of paragraph 26 of the Second Amended Complaint. 

27. Microsoft denies any and all allegations of paragraph 27 of the Second 
Amended Complaint. 

28. Microsoft denies any and all allegations of paragraph 28 of the Second 
Amended Complaint. 

29. Microsoft denies any and all allegations of paragraph 29 of the Second 
Amended Complaint. 

30. Microsoft denies any and all allegations of paragraph 30 of the Second 
Amended Complaint. 

3 1 . Microsoft denies any and all allegations of paragraph 3 1 of the Second 
Amended Complaint. 

32. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 10 of 
the Second Amended Complaint, as if fully restated herein. 

33. Microsoft admits that the Second Amended Complaint purports to state a 
cause of action under 35 U.S.C. §§ 271 and 281 . Microsoft denies that it has infringed or now 
infringes the patents asserted against Microsoft in the Second Amended Complaint. Microsoft 
denies any and all remaining allegations of paragraph 33 of the Second Amended Complaint. 

34. Microsoft denies any and all allegations of paragraph 34 of the Second 
Amended Complaint. 

35. Microsoft denies any and all allegations of paragraph 35 of the Second 
Amended Complaint. 

36. Microsoft denies any and all allegations of paragraph 36 of the Second 
Amended Complaint. 

37. Microsoft denies any and all allegations of paragraph 37 of the Second 


Amended Complaint. 

DOCSSVl:158435.1 


Microsoft's Corporation's Answer to Second 
Amended Complaint, Case No. C 01-1-640 SBA 


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38. Microsoft denies any and all allegations of paragraph 38 of the Second 
Amended Complaint. 

AFFIRMATIVE AND OTHER DEFENSES 

Further answering the Second Amended Complaint, Microsoft asserts the 
following defenses. Microsoft reserves the right to amend its answer with additional defenses as 
further information is obtained. 

First Defense: Noninfringement of the Asserted Patents 

1 . Microsoft has not infringed, contributed to the infringement of, or induced 
the infringement of U.S. Patent No. 6,1 85,683 Bl ("the '683 Patent"), U.S. Patent No. 6,253,193 
Bl ("the '193 Patent"), U.S. Patent No. 5,940,504 ("the '504 Patent") or U.S. Patent No. 
5,920,861 ("the '861 Patent"), and is not liable for infringement thereof. 

2. Any and all Microsoft products or actions that are accused of infringement 
have substantial uses that do not infringe and therefore cannot induce or contribute to the 
infringement of the '683 Patent, the '193 Patent, the '504 Patent or the '861 Patent. 

Second Defense; Invalidity of the Asserted Patents 

3. On information and belief, the '683 Patent, the '193 Patent, the '504 Patent 
and the '861 Patent are invalid for failing to comply with the provisions of the Patent Laws, Title 
35U.S.C, including without limitation one or more of 35 U.S.C. §§ 102, 103 and 112. 

Third Defense: Unavailability of Relief 

4. On information and belief, Plaintiff has failed to plead and meet the 
requirements of 35 U.S.C. § 271(b) and is not entitled to any alleged damages prior to providing 
any actual notice to Microsoft of the '683 Patent, the '193 Patent, the '504 Patent or the '861 
Patent. 

Fourth Defense: Unavailability of Relief 

5. On information and belief, Plaintiff has failed to plead and meet the 
requirements of 35 U.S.C. § 284 for enhanced damages and is not entitled to any damages prior to 
providing any actual notice to Microsoft of the '683 Patent, the '193 Patent, the '504 Patent, 
and/or the '861 Patent, and any alleged infringement thereof. 

DOCSSV 1:158435. 1 

Microsoft's Corporation's Answer toSecond 
Am ended Complaint, Case No. C 0 1 - 1 640 SBA 


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Fifth Defense: Unavailability of Relief 

6. On information and belief, Plaintiff has failed to plead and meet the 
requirements of 35 U.S.C. § 287, and has otherwise failed to show that it is entitled to any 
damages. 

Sixth Defense: Prosecution History Estoppel 

7. Plaintiffs alleged causes of action for patent infringement are barred under 
the doctrine of prosecution history estoppel, and Plaintiff is estopped from claiming that the '683 
Patent, the '193 Patent, the '504 Patent, and/or the '861 Patent covers or includes any accused 
Microsoft product or method. 

Seventh Defense: Dedication to the Puhlic 

8. Plaintiff has dedicated to the public all methods, apparatus, and products 
disclosed in the 4 683 Patent, the '193 Patent, the '504 Patent, and/or the '861 Patent, but not 
literally claimed therein, and is estopped from claiming infringement by any such public domain 
methods, apparatus, and products. 

Eighth Defense: Use/Manufacture By/For United States Government 

9. To the extent that any accused product has been used or manufactured by 
or for the United States, Plaintiffs claims and demands for relief are barred by 28 U.S.C. § 1498. 

Ninth Defense: License 

10. To the extent that any of Plaintiff s allegations of infringement are 
premised on the alleged use, sale, or offer for sale of products that were manufactured by or for a 
licensee of InterTrust and/or provided by or to Microsoft to or by a licensee of InterTrust, such 
allegations are barred pursuant to license. 

Tenth Defense: Acquiescence 

1 1 . Plaintiff has acquiesced in at least those acts of Microsoft that are alleged 
to infringe the '861 Patent, the '683 Patent, and the '193 Patent. 

Eleventh Defense: Laches 

1 2. Plaintiffs claims for relief are barred, in whole or in part, by the equitable 
doctrine of laches. 

DOCSSVI:158435.1 

Microsoft's Corporation's Answer to Second 
Amended Complaint, Case No. C 0 1 - 1 640 SB A 


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PRAYER FOR RELIEF 

WHEREFORE, Microsoft prays for the following relief: 

A. The Court enter judgment against InterTrust on, and dismiss with 
prejudice, any and all claims of the Second Amended Complaint; 

B. The Court award to Microsoft its reasonable costs and attorneys' fees; and 

C. The Court grant to Microsoft such other and further relief as may be 
deemed just and appropriate. 


DATED: August 29, 2001 


By: 




ERIC L. WESENBERG 
MARK R. WEINSTEIN _^ 
ORRICK HERRINGTON & SUTCLIFFETLLP 
1000 Marsh Road 
Menlo Park, CA 94025 
Telephone: 650-614-7400 

STEVEN ALEXANDER 
KRISTIN L. CLEVELAND 
JAMES E. GERINGER 
JOHN D. VANDENBERG 
KLARQUIST SPARKMAN, LLP 
One World Trade Center, Suite 1600 
121 S.W. Salmon Street 
Portland, OR 97204 
Telephone: (503) 226-7391 

Attorneys for Defendant 
Microsoft Corporation 


DOCSSVhl5S435.1 


Microsoft's Corporation's Answer to Second 
Amended Complaint, Case No. C 01-1 640 SBA