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WILLIAM L. ANTHONY (State Bar No. 106908) 
ERIC L. WESENBERG (State Bar No. 139696) 
MARK R. WEINSTEIN (State Bar No. 193043) 
ORRICK, HERRINGTON & SUTCLFFE, LLP 
1000 Marsh Road 
MenloPark,CA 94025 
Telephone: (650) 614-7400 
Facsimile: (650)614-7401 

STEVEN ALEXANDER (admitted Pro Hac Vice) 

KRISTIN L. CLEVELAND (admitted Pro Hac Vice) 

JAMES E. GERINGER (admitted Pro Hac Vice) 

JOHN D. VANDENBERG 

KLARQUIST 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 and Counterclaimant, 
MICROSOFT CORPORATION 


CO 

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UNITED STATES DISTRICT COURT 
NORTHERN DISTRICT OF CALIFORNIA 
OAKLAND DIVISION 


INTERTRUST TECHNOLOGIES 
CORPORATION, a Delaware corporation, 

Plaintiff, 


v. 


MICROSOFT CORPORATION, a 
Washington corporation, 

Defendant 


MICROSOFT CORPORATION, a 
Washington corporation, 

Counterclaimant, 

v. 

INTERTRUST TECHNOLOGIES 
CORPORATION, a Delaware corporation, 

Counter Claim-Defendant. 


CASENO.C01-1640SBA 

MICROSOFT CORPORATION'S 
"CORRECTED " AMENDED ANSWER 
AND COUNTERCLAIMS TO 
INTERTRUST'S THIRD AMENDED 
COMPLAINT 


DOCSSVl:! 6621 3.1 


Microsoft Corporation's "Corrected" Amended 
Answer and Counterclaims to intertrust's third 
amended complaint: CaseNo. C 01-1640 SBA 


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Defendant Microsoft Corporation ("Microsoft") answers the Third Amended 
:omplaint of InterTrust Technologies Corporation ('ThterTrust") as follows: 

1 . Microsoft admits that the Third Amended Complaint purports to state a 
:ause of action under the patent laws of the United States, 35 United States Code, §§ 271 and 

>81 . Microsoft denies that it has infringed or now infringes the patents asserted against Microsoft 
n the Third Amended Complaint. Microsoft denies any and all remaining allegations of 
paragraph 1 of the Third Amended Complaint 

2. Microsoft admits that the Third Amended Complaint purports to state a 
sause of action over which this Court has subject matter jurisdiction under 28 U.S.C. §§ 1 33 1 and 
1338(a). 

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

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

of the Third Amended Complaint 

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

Complaint. 

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

1. Microsoft admits that on its face the title page of U.S. Patent No. 6,185,683 
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 denies that the '683 Patent was duly and lawfully 
issued. Microsoft further denies any and all remaining allegations of paragraph 7 of the Third 
Amended Complaint 


DOCSSV 1:1 662 13.1 MICROSOFT CORPORATION'S "CORRECTED " AMENDED 

ANSWER AND COUNTERCLAIMS TO INTERTRUST *S THIRD 
"1" amended complaint: CaseNo. C 01-1640 SB A 


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sued. Microsoft farther denies any and all remaining allegations of paragraph 12 of the Third 
jnended Complaint. 

13. Microsoft admits that on its face the title page of U.S. Patent No. 5,917,912 
the '912 Patent") states that it was issued June 29, 1999, is entitled "System and methods for 
scute transaction management and electronic rights protection," and lists "InterTrust 
echnologies Corp." as the assignee. Microsoft denies that the *912 Patent was duly and lawfully 
ssued. Microsoft farther denies any and all remaining allegations of paragraph 13 of the Third 

amended Complaint. 

14. Microsoft repeats and reasserts its responses to paragraphs 1-7 of the Third 

amended Complaint, as if fully restated herein. 

1 5. Microsoft admits that the Third Amended Complaint purports to state a 
ause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now 
nftinges the patents asserted against Microsoft in the Third Amended Complaint. Microsoft 
lenies any and all remaining allegations of paragraph 15 of the Third Amended Complaint. 

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

Amended Complaint. 

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

Amended Complaint. 

18. Microsoft denies any and all allegations of paragraph 18 of the Third 

Amended Complaint. 

19. Microsoft denies any and all allegations of paragraph 19 of the Third 

<\mended Complaint. 

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

Amended Complaint 

2 1 . Microsoft repeats and reasserts its responses to paragraphs 1 -6 and 8 of the 

Third Amended Complaint, as if fully restated herein. 

22. Microsoft admits that the Third Amended Complaint purp orts to state a 
cause of action under 35 U.S.C. §§ 271 and 281 . Microsoft denies that it has infringed or now 

DOCSSV1 .166213.1 MICROSOFT CORPORATION'S "CORRECTED" AMENDED 

Answer and Counterclaims to intertrust's third 
"3" amended complaint: Case No. C01-I640SBA 


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nfiinges the patents asserted against Microsoft in the Third Amended Complaint. Microsoft 
ienies any and all remaining allegations of paragraph 22 of the Third Amended Complaint. 

23. Microsoft denies any and all allegations of paragraph 23 of the Third 
\mended Complaint. 

24. Microsoft denies any and all allegations of paragraph 24 of the Third 
Amended Complaint. 

25. Microsoft denies any and all allegations of paragraph 25 of the Third 

Amended Complaint. 

26. Microsoft denies any and all allegations of paragraph 26 of the Third 

Amended Complaint. 

27. Microsoft denies any and all allegations of paragraph 27 of the Third 

Amended Complaint. 

28. Microsoft repeats and reasserts its responses to paragraphs 1*6 and 9 of the 
Third Amended Complaint, as if folly restated herein. 

29. Microsoft admits that the Third 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 Third Amended Complaint. Microsoft 
denies any and all remaining allegations of paragraph 29 of the Third Amended Complaint. 

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

3 1 . Microsoft denies any and all allegations of paragraph 3 1 of the Third 

Amended Complaint. 

32. Microsoft denies any and all allegations of paragraph 32 of the Third 

Amended Complaint. 

33. Microsoft denies any and all allegations of paragraph 33 of the Third 

Amended Complaint. 

34. Microsoft denies any and all allegations of paragraph 34 of the Third 

Amended Complaint. 

d0cssv1:166213.1 microsoft corporation's "corrected " amended 

Answer and Counterclaims to intertrust's third 

AMENDED COMPLAINT: CaSENO. C 01-1 640 SBA 


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35. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 10 of 
he Third Amended Complaint, as if fully restated herein. 

36. Microsoft admits that the Third Amended Complaint purports to state a 
jause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now 
nfringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft 
ienies any and all remaining allegations of paragraph 36 of the Third Amended Complaint 

37. Microsoft denies any and all allegations of paragraph 37 of the Third 
\mended Complaint. 

38. Microsoft denies any and all allegations of paragraph 38 of the Third 

Amended Complaint. 

39. Microsoft denies any and all allegations of paragraph 39 of the Third 

Amended Complaint. 

40. Microsoft denies any and all allegations of paragraph 40 of the Third 

Amended Complaint. 

41. Microsoft denies any and all allegations of paragraph 41 of the Third 

Amended Complaint. 

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

43. Microsoft admits that the Third Amended Complaint purports to stale 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 Third Amended Complaint- Microsoft 
denies any and all remaining allegations of paragraph 43 of the Third Amended Complaint 

44. Microsoft denies any and all allegations of paragraph 44 of the Third 

Amended Complaint. 

45. Microsoft denies any and all allegations of paragraph 45 of the Third 

Amended Complaint. 

46. Microsoft denies any and all allegations of paragraph 46 of the Third 

Amended Complaint. 

D0CSSV1:166213.1 MICROSOFT CORPORATION'S "CORRECTED" AMENDED 

Answer and Counterclaims to intertrust's third 
amended complaint: Case No. C 01-1640 SBA 


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47. Microsoft denies any and all allegations of paragraph 47 of the Third 
Amended Complaint. 

48. Microsoft denies any and all allegations of paragraph 48 of the Third 
Amended Complaint. 

49. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 12 of 
the Third Amended Complaint, as if folly restated herein. 

50. Microsoft admits that the Third 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 Third Amended Complaint Microsoft 
denies any and all remaining allegations of paragraph 50 of the Third Amended Complaint. 

51. Microsoft denies any and all allegations of paragraph 5 1 of the Third 
Amended Complaint. 

52. Microsoft denies any and all allegations of paragraph 52 of the Third 
Amended Complaint. 

53. Microsoft denies any and all allegations of paragraph 53 of the Third 

Amended Complaint. 

54. Microsoft denies any and all allegations of paragraph 54 of the Third 
Amended Complaint. 

55. Microsoft denies any and all allegations of paragraph 55 of the Third 
Amended Complaint. 

56. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 13 of 
the Third Amended Complaint, as if folly restated herein. 

57. Microsoft admits that the Third 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 Third Amended Complaint. Microsoft 
denies any and all remaining allegations of paragraph 57 of the Third Amended Complaint. 

58. Microsoft denies any and all allegations of paragraph 58 of the Third 
Amended Complaint. 

D0CSSV1:166213.1 MICROSOFT CORPORATION'S "Co/tRECTED " AMENDED 

ANSWER AND COUNTERCLAIM S TO INTERTRUST'S THIRD 
AMENDED COMPLAINT. CASE NO. C 01-1640 SBA 


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59. Microsoft denies any and all allegations of paragraph 59 of the Third 
Amended Complaint. 

60. Microsoft denies any and all allegations of paragraph 60 of the Third 

Amended Complaint 

61 . Microsoft denies any and all allegations of paragraph 61 of the Third 

Amended Complaint. 

62. Microsoft denies any and all allegations of paragraph 62 of the Third 
Amended Complaint 

AFFIRMATIVE AND OTHER DEFENSES 
Further answering the Third 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 

63 . Microsoft has not infringed, contributed to the infringement of, or induced 
the infringement of U.S. Patent No. 6,185,683 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"), U.S. Patent No. 5,920,861 
("the '861 Patent* % U.S. Patent No. 5,892,900 ("the '900 Patent"), U.S. Patent No. 5,982,891 
('the '891 Patent"), or U.S. Patent No. 5,917,912 ("the *912 Patent"), and is not liable for 
infringement thereof. 

64. Any and all Microsoft products or methods 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, the '861 Patent, the '900 
Patent, the *891 Patent, or the '912 Patent 

Second Defense: Invalidity of the Asserted Patents 

65. On information and belief, the '683 Patent, the '193 Patent, the '504 Patent 

the '861 Patent, the '900 Patent, the '891 Patent, and the '912 Patent are invalid for failing to 

comply with the provisions of the Patent Laws, Title 35 U.S.C., including without limitation one 

ormoreof 35 U.S.C. §§ 102, 103 and 112. 
d0cssv1:166213.1 microsoft corporation's "corrected " amended 

Answer and Counterclaims to intertrust's third 
amended complaint: Case No. C 0 1 - 1 640 SBA 


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Third Defense: Unavailability of Relief 

66. On information and belief, Plaintiff has failed to plead and meet the 
equirements of 35 U.S.C. § 271(b) and (c) and is not entitled to any alleged damages prior to 
troviding any actual notice to Microsoft of the '683 Patent, the 4 193 Patent, the '504 Patent, the 
861 Patent, the '900 Patent, the '891 Patent, or the '912 Patent. 

Fourth Defense; Unavailability of Relief 

67. On information and belief, Plaintiff has failed to plead and meet the 
equirements of 35 U.S.C. § 284 for enhanced damages and is not entitled to any damages prior to 
iroviding any actual notice to Microsoft of the '683 Patent, the '193 Patent, the '504 Patent, the 
861 Patent, the '900 Patent, the '891 Patent, and/or the '912 Patent and any alleged infringement 
hereof. 

Fifth Defense; Unavailability of Relief 

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

Shrth Defense; Prosecution History Estoppel 

69. 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, the '861 Patent, the '900 Patent, the '891 Patent, and/or 
Ihe *9 1 2 Patent covers or includes any accused Microsoft product or method. 

Seventh Defense: Dedication to the Public 

70. Plaintiff has dedicated to the public all methods, apparatus, and products : 
disclosed in the '683 Patent, the '193 Patent, the '504 Patent, the '861 Patent, the '900 Patent, the 
'891 Patent, and/or the '912 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 Bv/For United States Government 

71. 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. 

D0CSSV1:166213.1 MICROSOFT CORPORATION'S "CORSECTED " AMENDED 

ANSWER AND COUNTERCLAIMS TO INTERTRUST'S THIRD 
~°~ AMENDED COMPLAINT: CASE NO. C 01*1640 SBA 


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Ninth Defense; License 

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

Tenth Defense: Acquiescence 

73 . Plaintiff has acquiesced in at least a substantial part of the Microsoft 
conduct alleged to infringe. 

Eleventh Defense: Laches 

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

Twelfth Defense: Inequitable Conduct 

75. The '861 Patent claims are unenforceable due to inequitable conduct, 
including those acts and failures to act set forth in Microsoft's Counterclaim for Declaratory 
Judgment of Unenforceability of the '861 Patent, set forth below. 

Thirteenth Defense: Inequitable Conduct 

76. The '900 Patent claims are unenforceable due to inequitable conduct, 
including those acts and failures to act set forth in Microsoft's Counterclaim for Declaratory 
Judgment of Unenforceability of the *900 Patent, set form below. 

Fourteenth Defense: Unenforceability 

77. The claims of the '891 Patent, the '912 Patent, the '861 Patent, the '683 
Patent, the ' 1 93 Patent and the '900 Patent are unenforceable due to unclean hands, inequitable 
conduct and misuse and illegal extension of the patent right, including those acts and failures to 
act set forth in Count XI of Microsoft's Counterclaims, set forth below. 

/// 
/// 
/// 
/// 

docssvl:166213.1 microsoft corporation's "corrected " amended 

Answer and Counterclaims to intertrust's third 
amended complaint: Case No. COl-1640 SBA 


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COUNTERCLAIMS 

COUNT I - DECLARATORY 
JUDGMENT OF NONINFRINGEMENT 

1 . This action arises under the patent laws of the United States, Title 35 
LJ.S.C. §§ 1, et seq. This Court has subject matter jurisdiction over this counterclaim under 28 
U.S.C. §§ 1338, 2201, and 2202. 

2. Microsoft Corporation ("Microsoft") is a Washington corporation with its 
principal place of business in Redmond, Washington. 

3. On information and belief, Plaintiff /Counterclaim Defendant InterTrust 
Technologies Corporation ("InterTrust") is a Delaware corporation with its principal place of 
business in Santa Clara, California. 

4. InterTrust purports to be the owner of U.S. Patent Nos. 6, 1 85 ,683 Bl ("the 
•683 Patent"), 6,253,193 Bl ("the '193 Patent* "), 5,940,504 ("the '504 Patent"), 5,920,861 ("the 
♦861 Patent"), U.S. Patent No. 5,892,900 ("the '900 Patent"), U.S. Patent No. 5,982,891 ("the 
•891 Patent"), and U.S. Patent No. 5,917,912 ("the '912 Patent"). 

5. InterTrust alleges that Microsoft has infringed the '683 Patent, the '193 
Patent, the '504 Patent, the '861 Patent, the '900 Patent, the '891 Patent, and the '912 Patent 

6. No Microsoft product has infringed, either directly or indirectly, any claim 
of the '683 Patent, the '193 Patent, the '504 Patent, the '861 Patent, the '900 Patent, the '891 
Patent, or the ' 9 1 2 Patent, and Microsoft is not liable for infringement thereof. 

7. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to the 

infringement or ncmnfringement of the '683 Patent, the '193 Patent, the '504 Patent, the '861 

Patent, the '900 Patent, the '891 Patent, and/or the '912 Patent 

COUNT H - DECLARATORY 
JUDGMENT OF INVALIDITY OF THE «683 PATENT 

8. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims, as if 
fully restated herein. 

docssvl:166213.1 microsoft corporation's "corrected " amended 

Answer and Counterclaims to intertrust's third 
"10" amended complaint: CaseNo. C 01-1640 SBA 


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9. The '683 Patent, and each claim thereof, is invalid for failing to comply 
with the provisions ofthe Patent Laws, including one or more of 35 U.S.C. §§ 102, 103andll2. 

10. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to 

whether the claims ofthe '683 Patent are valid or invalid. 

COUNT HI - DECLARATORY 
JUDGMENT OF INVALIDITY OF THE '193 PATENT 

1 1 . Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if 
fully restated herein. 

12. The * 193 Patent, and each claim thereof, is invalid for failing to comply 
with the provisions ofthe Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 1 12. 

13. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to 
whether the claims of the * 1 93 Patent are valid or invalid. 

COUNT IV - DECLARATORY 
JUDGMENT OF INVALIDITY OF THE '504 PATENT 

14. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if 
fully restated herein. 

1 5. The * 504 Patent, and each claim thereof, is invalid for failing to comply 
with the provisions ofthe Patent Laws, including one or more of 35 U.S.C. §§102, 103 and 112. 

16. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to 

whether the claims of the '504 Patent are valid or invalid. 

COUNT V - DECLARATORY 
JUDGMENT OF INVALIDITY OF THE '861 PATENT 

17. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if 
fully restated herein. 


D0CSSV1:166213.I 


-11- 


Microsoft Corporation's "Corrected " Amended 
Answer and Counterclaims to tntertrust's third 
amended complaint: case no. c 01-1 640 sba 


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1 8 . The ' 86 1 Patent, and each claim thereof, is invalid for failing to comply 
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 112. 

19. An actual controversy, within the meaning of 28 U.S.G. §§ 2201 and 2202, 

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to 

whether the claims of the '861 Patent are valid or invalid. 

COUNT VI - DECLARATORY 
JUDGMENT OF INVALIDITY OF THE ( 900 PATENT 

20. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if 
fully restated herein. 

2 1 . The '900 Patent, and each claim thereof, is invalid for failing to comply 
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 112. 

22. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to 

whether the claims of the '900 Patent are valid or invalid. 

COUNT VH - DECLARATORY 
JUDGMENT OF INVALIDITY OF THE '891 PATENT 

23. Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims as if 
fully restated herein. 

24. The '891 Patent, and each claim thereof, is invalid for failing to comply 
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 112. 

25. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to 

whether the claims of the '891 Patent are valid or invalid. 

COUNT VHI - DECLARATORY 
JUDGMENT OF INVALIDITY OF THE '912 PATENT 

26. Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims as if 
fully restated herein. 

27. The '912 Patent, and each claim thereof, is invalid for failing to comply 
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 112. 

DOCSSVM66213.1 MICROSOFT CORPORATION'S "CORRECTED " AMENDED 

Answer and Counterclaims to intertrust' s third 
" * amended complaint: case no. c 01 - 1 640 sb a 


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28. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to 

whether the claims of the '912 Patent are valid or invalid. 

COUNT IX - DECLARATO RY JU DGMENT 
OF UNENFORCEABILITY OF THE '861 PATENT 

29. Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims, as if 
fully restated herein. 

30. Claims 1-129 of the '861 Patent application (SN 08/805,804), and claims 
1-101 of the '861 Patent, were not and are not entitled to the benefit of any application filing date 
prior to February 25, 1997, under 35 U.S.C. § 120 or otherwise. 

3 1. "Exhibit A" refers to the document attached as Exhibit A to Microsoft's 
counterclaims filed in response to InterTrust's Second Amended Complaint (namely, a reprint of 
an article entitled "DigiBox: A Self-Protecting Container for Information Commerce"). 

32. On information and belief, the content of pages 2-14 of Exhibit A was 
presented at a public conference in the United States in July 1995. 

33. "Exhibit B" refers to the document attached as Exhibit B to Microsoft's 
counterclaims filed in response to InterTrust's Second Amended Complaint (namely, a copy of a 
page from an International Application published under the Patent Cooperation Treaty (PCT), 
bearing International Publication Number WO 96/27155).' 

34. C>n mformation and belief, International Application WO 96/27155 has, at 
all times since its filing date, been owned and controlled by InterTrust or its predecessors in 
interest. 

35. International Application WO 96/27155 (hereafter "the WO 96/27155 
(PCT) publication") was published on September 6, 1996. 

36. United States Patent No. 5,9 1 0,987 ("the '987 Patent") issued on June 8, 
1999, from a continuation of an application filed on February 1 3, 1 995 . 

37. The Sibert article is prior art to claims 1-129 of the '861 Patent application 
(SN 08/805,804). 

DOCSSVl.166213.1 MICROSOFT CORPORATION'S "CORRECTED "AMENDED 

Answer and Counterclaims to mtertrust's third 
"13* amended complaint: caseno. c 01-1640 sb a 


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38. The Sibert article is prior art to claims 1-101 of the '861 Patent under 35 
U.S.C. § 102(b). 

39. The WO 96/27155 (PCT) publication is prior art to claims 1-129 of the 
'861 Patent application (SN 08/805,804). 

40. The WO 96/27155 (PCT) publication is prior art to claims 1-101 of the 
*861 Patent under 35 U.S.C. § 102(a). 

41 . The '987 Patent is prior art to claims 29-129 of the '861 Patent application 
(SN 08/805,804). 

42. The '987 Patent is prior art to claims 1-101 of the '861 Patent, under 35 
U.S.C. § 102(e). 

43. The Sibert article was material to the patentability of claim 1 of the 4 861 
Patent application (SN 08/805,804). 

44. The Sibert article was material to the patentability of claims 2-129 of the 
'861 Patent application (SN 08/805,804). 

45. The WO 96/271 55 (PCT) publication was material to the patentability of 
claim 1 of the '861 Patent application (SN 08/805,804). 

46. The WO 96/271 55 (PCT) publication was material to the patentability of 
claims 2-129 of the '861 Patent application (SN 08/805,804). 

47. The '987 Patent was material to the patentability of claims 29-129 of the 
'861 Patent application (SN 08/805,804). 

48. One or more of the '861 Patent applicants knew, while the '861 Patent 
application (SN 08/805,804) was pending, of the July 1995 publication of the Sibert article. 

49. On information and belief; one or more of the '861 Patent applicants knew, 
while the '861 Patent application (SN 08/805,804) was pending, of the September 1996 
publication of the WO 96/27155 (PCT) publication. 

50. On information and belief, one or more of the '861 Patent applicants knew, 
while the '861 Patent application (SN 08/805,804) was pending, of the June 8, 1999 issuance of 
the '987 Patent. 

DOCSSVl :I66213.1 MICROSOFT CORPORATION * S "CORRECTED " AMENDED 

Answer and Counterclaims to intertrust's third 

AMENDED COMPLAINT: CASENO. C 01-1640 SBA 


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51. On information and belief, one or more of the attorneys who prosecuted or 
ssisted in prosecuting the '861 Patent application (SN 08/805,804) knew, while that application 
vas pending, of the July 1 995 publication of the Sibert article. 

52. One or more of the attorneys who prosecuted or assisted in prosecuting the 
861 Patent application (SN 08/805,804) knew, while that application was pending, of the 
September 1996 publication of the WO 96/27155 (PCT) publication. 

53. One or more of the attorneys who prosecuted or assisted in prosecuting the 
861 Patent application (SN 08/805,804) knew, while that application was pending, of the June 8, 
L999 issuance of the '987 Patent. 

54. The applicants for the ' 861 Patent did not cite the Sibert article to the 
Patent Office as prior art to any of claims 1-129 of the '861 Patent application (SN 08/805,804). 

55. The applicants for the '861 Patent did not cite the WO 96/27155 (PCT) 
publication to the Patent Office as prior art to any of claims 1-129 of the '861 Patent application 
[SN 08/805,804). 

56. The applicants for the '861 Patent did not cite the '987 Patent to the Patent 
Dffice as prior art to any of claims 1-129 of the '861 Patent application (SN 08/805,804). 

57. The applicants for the '861 Patent did not cite to the Patent Office as prior 
art to any of claims 1-129 of the '861 Patent application (SN 08/805,804) any reference having 
the same or substantially the same disclosure as the Sibert article. 

58. The applicants for the '861 Patent did not cite to the Patent Office as prior 
art to any of claims 1-129 of the '861 Patent application (SN 08/805,804) any reference having 
the same or substantially the same disclosure as the WO 96/27155 (PCT) publication. 

59. The applicants for the '861 Patent did not cite to the Patent Office as prior 
art to any of claims 1-129 of the '861 Patent application (SN 08/805,804) any reference having 
the same or substantially the same disclosure as the '987 Patent 

60. The Sibert article is not merely cumulative over any reference cited as prior 
art during the prosecution of the '861 Patent application (SN 08/805,804). 


D0CSSV1:166213.1 


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Microsoft Corporation's "Corrected " Amended 
answer and counterclaims to intertrust's third 
amended complaint: CaseNo. C 01-1640 SBA 


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61. The WO 96/27155 (PCT) publication is not merely cumulative over any 
reference cited as prior art during the prosecution of the '861 Patent application (SN 08/805,804). 

62. The '987 Patent is not merely cumulative over any reference cited as prior 
art during the prosecution of the '861 Patent application (SN 08/805,804). 

63. On information and belief, one or more of the '861 Patent applicants 
believed, during pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the 
Sibert article disclosed an embodiment of claim 1 of the '861 Patent application (SN 08/805,804). 

64. InterTrust contends that none of the '861 Patent applicants believed, during 
pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the Sibert article 
discloses an embodiment of claim 1 of the '861 Patent application (SN 08/805,804). 

65. On information and belief, one or more of the '861 Patent applicants 
believed, during pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the 
WO 96/27155 (PCT) publication disclosed an embodiment of claim 1 of the '861 Patent 
application (SN 08/805,804). 

66. InterTrust contends that none of the '861 Patent applicants believed, during 
pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the WO 96/27155 
(PCT) publication discloses an embodiment of claim 1 of the '861 Patent application (SN 
08/805,804). 

67. On information and belief, one or more of the '861 Patent applicants 
believed, while the '861 Patent application (SN 08/805,804) was pending, that the Sibert article 
was material to the patentability of claims 1-129 of the '861 Patent application (SN 08/805,804), 
but, with deceptive intent, failed to disclose that reference as prior art to the Patent Office. 

68. On information and belief, one or more of the '861 Patent applicants 
believed, while the '861 Patent application (SN 08/805,804) was pending, that the WO 96727155 
(PCT) publication was material to the patentability of claims 1-129 of the '861 Patent application 
(SN 08/805,804), but, with deceptive intent, failed to disclose that reference as prior art to the 
Patent Office. 

d0cssv1:166213.1 microsoft corporation's "corrected " amended 

Answer and Counterclaims to intertrust's third 
"1"" amended complaint: Case No. C 01-1640 SBA 


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69. On information and belief, one or more of the '86 1 Patent applicants 
believed, while the '861 Patent application (SN 08/805,804) was pending, that the *987 Patent 
was material to the patentability of claims 29-129 of the '861 Patent application (SN 08/805,804), 
but, with deceptive intent, failed to disclose that reference as prior art to the Patent Office. 

70. The '861 Patent is unenforceable due to the inequitable conduct of the '861 
Patent applicants and/or agents before the Patent and Trademark Office in connection with the 

' 86 1 Patent application (SN 08/805,804). 

71. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

exists between Microsoft, on the one hand, and IhterTrust, on the other hand, with respect to 

whether the claims of the ' 86 1 Patent are enforceable. 

COUNT X - DECLARATORY JUDGMENT 
OF UNENFORCEABILITY OF THE '900 PATENT 

72. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims, as if 
fully restated herein. 

73. The application and issued claims of the '900 Patent were not and are not 
entitled to the benefit of any application filing date prior to August 30, 1996, under 35 U.S.C. § 
120 or otherwise. 

74. Microsoft repeats and realleges paragraphs 3 1 -32 of its Counterclaims, as if 
fully restated herein. 

75. The Sibert article is prior art to the application and issued claims of the 
'900 Patent under 35 U.S.C. § 102(b). 

76. The Sibert article was material to the patentability of application and issued 
claims of the * 900 Patent, including, for example, issued claims 86 and 1 82 . 

77. One or more of the '900 Patent applicants knew of the July 1995 
publication of the Sibert article while the '900 Patent application (SN 08/706,206) was pending. 

78. On information and belief, one or more of the attorneys who prosecuted or 

assisted in the prosecution of the '900 Patent application (SN 08/706,206) knew of the July 1995 

publication of the Sibert article while the '900 Patent application was pending. 
d0cssv1:166213.i microsoft corporation's "corrected "amended 

Answer and Counterclaims to djtertrust's third 

AMENDED COMPLAINT: CaSENO. C 01-1640 SBA 


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79. The applicants for the '900 Patent did not cite the Sibert article to the 
Patent Office as prior art to any claims of the '900 Patent application (SN 08/706,206). 

80. The applicants for the '900 Patent did not cite to the Patent Office as prior 
art to any claims of the '900 Patent application (SN 08/706,206) any reference having the same or 
substantially the same disclosure as the Sibert article. 

8 1 . The Sibert article is not merely cumulative over any reference cited as prior 
art during the prosecution of the '900 Patent application (SN 08/706,206). 

82. On information and belief, one or more of the '900 Patent applicants 
believed, during pendency of claim 1 of the *900 Patent application (SN 08/706,206), that the 
Sibert article disclosed an embodiment of claim 1 of the '900 Patent application (SN 08/706,206). 

83 . On information and belief, one or more of the '900 Patent applicants 
believed, while the '900 Patent application (SN 08/706,206) was pending, that the Sibert article 
was material to the patentability of various claims of the '900 Patent application (SN 08/706,206), 
but, with deceptive intent, failed to disclose that reference as prior art to the Patent Office. 

84. The '900 Patent is unenforceable due to the inequitable conduct of the '900 
Patent applicants before the Patent and Trademark Office in connection with the '900 Patent 
application (SN 08/706,206). 

85. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to 
whether the claims of the '900 Patent are enforceable. 

COUNT XI - DECLARATORY JUDGMENT OF UNENFORCEABILITY 

86. Microsoft repeats and realleges paragraphs 1-5 and 30-85 of its 
Counterclaims, as if fully restated herein. 

87. The '891 Patent, the '912 Patent, the '683 Patent, the '193 Patent, the '861 
Patent, and the 4 900 Patent are referred to as the Count XI Patents. 

88. In prosecuting, marketing, and enforcing the Count XI Patents, InterTrust 
has engaged in a pattern of obfuscation as to the scope of the patents, the prior art to the patents, 
and the alleged "inventions" of the patents. For example, InterTrust has accused non-infringing 

DOCSSVl: 16621 3.1 MICROSOFT CORPORATION'S "COR-RECTED" AMENDED 

■ ANSWER AND COUNTERCLAIMS TO INTERTRUST'S THIRD 

"* °' AMENDED complaint: Case No. C 01-1640 SBA 


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products of infringement, has buried Patent Office Examiners with a collection of more than 400 
references, many of which were not related to the particular claims in issue, and has buried the 
Examiners with hundreds or thousands of pages of redundant, verbose, unclear text, effectively 
prohibiting a real comparison of the alleged "invention" versus the prior art This pattern of 
intentional conduct constitutes an abuse of the patent system, unclean hands, misuse and illegal 
extension of the patent right, rendering the Count XI patents unenforceable, as well as invalid 
under Section 112. 

89. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to 

whether the claims of the '891 Patent, the '912 Patent, the *683 Patent, the '193 Patent, the '861 

Patent, and the '900 Patent are enforceable. 

COUNT XH - INFRINGEMENT 
OF U.S. PATENT NO. 6.049.671 

90. Microsoft repeats and realleges paragraphs 2-3 of its Counterclaims, as if 
fully restated herein. 

9 1 . This Court has exclusive subject matter jurisdiction over Microsoft' s cause 
of action for patent infringement under Title 28, United States Code, Sections 1331 and 1338, and 
under the patent laws of the United States, Title 35 of the United States Code. 

92. U.S. Patent No. 6,049,671 ("the '671 Patent") issued to Microsoft 
Corporation as the assignee of Benjamin W. Slivka and Jeffrey S. Webber on April 1 1, 2000. 

93. A true copy of the '671 Patent is attached as Exhibit C to Microsoft's 
counterclaims filed in response to InterTrust's Second Amended Complaint, and is incorporated 
herein by reference. 

94. Microsoft owns all right, title and interest in the '671 Patent. 

95. InterTrust has had actual notice of the '671 Patent. 

96 . InterTrust has infringed one or more claims of the '67 1 Patent, in violation 
of at least 35 U.S.C. § 271(a, b, c). 


docssvm66213.1 microsoft corporation's "corrected " amended 

Answer and Counterclaims to intertrust's third 

AMENDED COMPLAINT Case No. C01-1640SBA 


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97. InterTrust's infringement of the '67 1 Patent has caused and will continue to 
cause Microsoft damage, including irreparable harm for which it has no adequate remedy at law. 

COUNT Xffl - INFRINGEMENT 
OF U.S. PATENT NO. 6.256.668 

98. Microsoft repeats and realleges paragraphs 2-3 and 91 of its Counterclaims, 
as if fully restated herein. 

99. U.S. Patent No. 6,256,668 Bl ("the '668 Patent") issued to Microsoft 
Corporation as the assignee of Benjamin W. Slivka and Jeffrey S. Webber on July 3, 2001 . 

1 00. A true copy of the ' 668 Patent is attached as Exhibit D to Microsoft's 
counterclaims filed in response to InterTrust's Second Amended Complaint, and is incorporated 
herein by reference. 

101. Microsoft owns all right, title and interest in the '668 Patent. 

1 02. InterTrust has had actual notice of the '668 Patent. 

103. InterTrust has infringed one or more claims of the '668 Patent, in violation 
of at least 35 U.S.C. § 271(a, b, c). 

104. InterTrust's infringement of the '668 Patent has caused and will continue to 
cause Microsoft damage, including irreparable harm for which it has no adequate remedy at law. 

PRAYER FOR RELIEF 
WHEREFORE, Microsoft prays for the following relief: 

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

B. The Court enter judgment declaring that Microsoft has not infringed, 
contributed to infringement of, or induced infringement of the '683 Patent; 

C. The Court enter judgment declaring that Microsoft has not infringed, 
contributed to infringement of, or induced infringement of the ' 193 Patent; 

D. The Court enter judgment declaring that Microsoft has not infringed, 
contributed to infringement of, or induced infringement of the '504 Patent; 

E. The Court enter judgment declaring that Microsoft has not infringed, 
d0cssv1:166213.1 microsoft corporation's "corrected " amended 

Answer and Counterclaims to intertrust's third 
'2"" amended complaint: Case No. C 01-1640 SBA 


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ontributed to infringement of, or induced infringement of the '861 Patent; 

F. The Court enter judgment declaring that Microsoft has not mfringed, 
ontributed to infringement of, or induced infringement of the '900 Patent; 

G. The Court enter judgment declaring that Microsoft has not infringed, 
ontributed to infringement of, or induced infringement of the '891 Patent; 

H. The Court enter judgment declaring that Microsoft has not infringed, 
ontributed to infringement of, or induced infringement of the '912 Patent; 

I. The Court enter judgment declaring that the '683 Patent is invalid; 
J. The Court enter judgment declaring that the ' 1 93 Patent is invalid; 
K. The Court enter judgment declaring that the '504 Patent is invalid; 
L. The Court enter judgment declaring that the '861 Patent is invalid; 
M. The Court enter judgment declaring that the '900 Patent is invalid; 
N. The Court enter judgment declaring that the '891 Patent is invalid; 
O. The Court enter judgment declaring that the '9 1 2 Patent is invalid; 

P. The Court enter judgment declaring that the '861 Patent is unenforceable 

iue to inequitable conduct; 

Q. The Court enter judgment declaring that the '900 Patent is unenforceable 

due to inequitable conduct; 

R. The Court enter judgment declaring that each of the '891 Patent, the '912 
Patent, the '683 Patent, the '193 Patent, the '861 Patent and the '900 Patent is unenforceable due 
to an abuse of the patent system, unclean hands, and misuse and illegal extension of the patent 
right; 

S. The Court enter judgment that InterTrust has irifringed the '671 Patent; 

T. The Court enter judgment that InterTrust has infringed the '668 Patent; 

U. The Court enter a permanent injunction prohibiting InterTrust, its officers, 
agents, servants, employees, and all persons in active concert or participation with any of them 
from infringing the '671 and '668 Patents; 
/// 

D0CSSVU166213.1 MICROSOFT CORPORATION'S "CORRECTED " AMENDED 

ANSWER AND COUNTERCLAIMS TO INTERTRUST' S THIRD 
"21" AMENDED COMPLAINT CASENO. C01-1640 SBA 


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V. The Court award damages and attorney fees against InterTrust pursuant to 
he provisions of 35 U.S.C §§ 284 and 285. 

W. The Court award to Microsoft pre-judgment interest and the costs of this 

iction. 

X. The Court award to Microsoft its reasonable costs and attorneys' fees; and 
Y. The Court grant to Microsoft such other and further relief as may be 
ieemed just and appropriate. 

JURY DEMAND 

Pursuant to Fed. R. Civ. P. 38(b), Defendant Microsoft Corporation demands a 

trial by jury. 

DATED: November 15, 2001 

By: v 

WILLIAM L. ANTHONY 
ERIC L: WESENBERG 
MARK R. WEINSTEIN 
ORRICK HERRINGTON & SUTCLEFFE, LLP 
1000 Marsh Road 
Menlo Park, CA 94025 
Telephone: 650^14-7400 

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 



Of Counsel: 

T. Andrew Gilbert, Esq. 
MICROSOFT CORPORATION 
One Microsoft Way, Building 8 
Redmond, WA 98052-6399 
Phone: 425-882-8080 


Attorneys for Defendant 
Microsoft Corporation 


docssvl :166213.1 microsoft corporation's "corxected" amended 

Answer and Counterclaims to ntertrust's third 
"22- amended complaint: Case No. C 01*1640 SBA 


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DECLARATION OF SERVICE VIA ELECTRONIC MAIL AND U.S. MAIL 

I am more than eighteen years old and not a party to this action. My place of 
employment and business address is 1000 Marsh Road, Menlo Park, California 94025. 
On November 15, 2001, 1 served: 

MICROSOFT CORPORATION'S "CORRE CTED " AMENDED ANSWER AND 
COUNTERCLAIMS TO INTERTRUST'S THIRD AMENDED COMPLAINT 


By transmitting a copy of the above-listed documents) in PDF form via electronic mail Michael 
H. Page at mhp@kvn.com, Christopher P. Isaac at chris.isaac@finnegan.com, Stephen E. 
Taylor at staylor@tcolaw.com and James E. Geringer at james.geringer@klarquistcom and 

also by placing true and correct copies of the above documents in an envelope addressed to: 


John W. Keker, Esq. 
Michael H. Page, Esq. 
KEKER & VAN NEST, LLP 
710 Sansome Street 
San Francisco, California 94111 
Tel. No. 415-391-5400 
Fax No. 415-397-7188 
Email: jwk@kvn.com 
Email: mhp@kvn.com 

Attorneys for Plaintiff 
INTERTRUST TECHNOLOGIES 
CORPORATION 


Christopher P. Isaac, Esq. 

FINNEGAN, HENDERSON, FARABOW, 

GARRETT & DUNNER LLP 

1300 1. Street, N.W. 

Washington, DC 20005-3314 

Tel. No. 202-408-4000 

Fax No. 202-408-4400 

Email: chris.isaac@finnegan.com 

Attorneys for Plaintiff 
INTERTRUST TECHNOLOGIES 
CORPORATION 


Stephen E. Taylor, Esq. 

TAYLOR & CO. LAW OFFICES 

1050 Marina Village Parkway, Suite 101 

Alameda, CA 94501 

Tel. No. 510-865-9401 

Fax No. 510-865-9408 

Email: staylor@tcolaw.com 

Attorneys for Plaintiff 
INTERTRUST TECHNOLOGIES 
CORPORATION 


John D. Vandenberg, Esq. 

James E. Geringer, Esq. 

KLARQUIST, SPARKMAN, CAMPBELL, 

LEIGH & WHINSTON LLP 

One World Trade Center 

121 S. W. Salmon Street, Suite 1600 

Portland, Oregon 97204 

Tel. No: 503-226-7391 

Fax No: 503-228-9446 

Email: john.vandenberg@klarquist.com 

Email: james.geringer@klarquist.com 

Attorneys for Defendant and 
Counterclaimant, MICROSOFT 
CORPORATION 


DOCSSVl:164899.1 


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md sealing the envelope, affixing adequate first-class postage and depositing it in the U.S. mail 
it Menlo Park, California. 

Executed on November 15, 2001 at Menlo Park, California. 

I declare under penalty of perjury that the foregoing is true and correct 


(SIGNATURE) 


(PRINT NAME) 


D0CSSV1:164899.1 


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