UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA. Defendant.

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1 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 CALDARELLI HEJMANOWSKI & PAGE LLP William J. Caldarelli (SBN #) 0 El Camino Real, Suite 0 San Diego, CA 0 Tel: () -00 Fax: () -0 wjc@chplawfirm.com FABIANO LAW FIRM, P.C. Michael D. Fabiano (SBN #0) High Bluff Drive, Suite 00 San Diego, CA 0 Telephone: () - mdfabiano@fabianolawfirm.com OSBORNE LAW LLC John W. Osborne (Pro Hac Vice App. Pending) Habitat Lane Cortlandt Manor, NY 0 Telephone: () - josborne@osborneipl.com WATTS LAW OFFICES Ethan M. Watts (SBN #) 0 El Camino Real, Suite 0 San Diego, CA 0 Telephone: () 0-00 Facsimile: () - emw@ewattslaw.com Attorneys for Defendant and Counterclaimant Ameranth, Inc. IPDEV CO., v. AMERANTH, INC., UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA Plaintiff, Defendant. Case No. -cv-0 DMS (WVG) ANSWER OF AMERANTH, INC. TO COMPLAINT FOR DETERMINATION OF PRIORITY; COUNTERCLAIMS OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

2 Case :-cv-00-dms-wvg Document Filed 0// Page of AMERANTH, INC., v. Counterclaimant, 0 IPDEV CO., / / / / / / / / / Counterdefendant. OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

3 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 ANSWER TO COMPLAINT Defendant and Counterclaimant Ameranth, Inc. ( Ameranth ) responds to the Complaint of Plaintiff IPDEV Co. ( IPDEV ) as follows:. Ameranth admits that IPDEV is an Illinois corporation located at the address stated at the complaint, and is an affiliate of QuikOrder, Inc. ( QuikOrder ) (fka as National Systems Corporation), which in turn indemnifies and is co-represented with Pizza Hut, Inc. and Pizza Hut of America, Inc. ( Pizza Hut ) in the consolidated patent infringement lawsuits brought by Ameranth and pending before this Court. Ameranth admits that IPDEV is the current owner of record of the and patents (but not the original owner of the patent or even the employer of the inventors named thereon), but denies and disputes the validity of the patent as further described herein.. Admitted.. Admitted.. Admitted.. Admitted.. Admitted.. Admitted.. Admitted. However, Ameranth contends that IPDEV works in concert with QuikOrder and this action is being used by QuikOrder, Pizza Hut, their joint litigation counsel, and other members of the Joint Defense Group in the consolidated patent infringement cases as part of their joint defense strategy.. Ameranth admits that Cupps and Glass filed the Application on November,, and that the application issued on November, as the patent. Ameranth lacks information and belief to admit or deny the remaining allegations of this paragraph, and on that basis denies them. 0. Admitted. OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

4 Case :-cv-00-dms-wvg Document Filed 0// Page of 0. Admitted; however, Ameranth denies and disputes the validity of the patent as further described herein and denies that the claimed subject matter was disclosed, described in or encompassed by the patent or the application.. Admitted.. Admitted.. Ameranth admits that the applicants of the application disclaimed, for certain claims contained in that application only, the part of the term that would extend beyond the expiration of the term of the 0 patent. Except as admitted, denied.. Admitted.. Ameranth admits that the applicants of the 0 application disclaimed, for certain claims contained in that application only, the part of the term that would extend beyond the expiration of the term of the 0 patent. Except as admitted, denied.. Ameranth admits that the IPDEV s application substantially copied claims - of the 0 patent and added claims -. Ameranth further admits that IPDEV s Preliminary Statement to the Patent Office states: Applicant notes that filed claims - are copied from claims - of issued U.S. Patent No.,,0, issued March, from U.S. Application No. /,0 filed April, 0 (the 0 Patent). Ameranth denies that IPDEV brought to the attention of the patent examiner of the patent that the copied claims were patented by a different inventor than the inventor of the patent of which the application purported to be a continuation, or that IPDEV s statements to the examiner of the patent constituted a request for an interference. Except as expressly admitted, denied. OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

5 Case :-cv-00-dms-wvg Document Filed 0// Page of 0. Ameranth admits that the Patent Office issued a Notice of Rejection of claims - of the application on or about June, for the reasons stated therein. Ameranth further admits that, subsequently, on or about December,, IPDEV submitted an amendment of the application claims to the Patent Office. Except as expressly admitted, denied.. Admitted.. Ameranth admits that claims - of the IPDEV patent (although not the specification) substantially copy the claims and encompass substantially the same subject matter as claims - of Ameranth s 0 patent. Ameranth denies and disputes the validity of the patent as further described herein. Except as expressly admitted, denied.. Denied. Ameranth further denies and disputes the validity of the patent as further described herein.. Ameranth admits that the 0 patent is a continuation in part of the 0 patent. Except as expressly admitted, denied.. Denied. Ameranth further denies and disputes the validity of the patent as further described herein.. Ameranth admits that the 0 patent is a continuation of the 0 patent, and that the 0 patent is a continuation in part of the 0 patent. Except as expressly admitted, denied.. Denied. Ameranth further denies and disputes the validity of the patent as further described herein.. Ameranth admits that IPDEV asserts a priority date of November, for the patent by virtue of characterizing it as a continuation of the application which issued as the patent, but denies that the patent claims are actually entitled to such priority date. Ameranth admits that all claims of Ameranth s, 0 and 0 patents have an effective priority date of at least OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

6 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 as early as September,, and further notes that Ameranth s patents were reviewed by multiple patent examiners between 0 and and were issued and allowed by the Patent Office specifically over the patent, among other references. Ameranth admits that regulations regarding practice before the USPTO as contained in CFR section.(a)() and section. speak for themselves and read as officially published, but denies that they apply to or govern the operation of the Court in which this lawsuit has been filed. Except as expressly admitted, denied.. Denied. Ameranth further denies and disputes the validity of the patent as further described herein. AFFIRMATIVE DEFENSES As additional and affirmative defenses, Ameranth alleges as follows: First Affirmative Defense (Lack of Patentability under USC section 0). As alleged herein, the patent, and the claims thereof, are not based on or supported by the subject matter contained in the patent or application No. 0/,, and therefore are not entitled to a priority date senior to Ameranth s 0, or 0 patents (and in fact that the earliest effective filing date to which the patent claims would be entitled is August, ). Therefore, the patent claims are not new and fail to satisfy the requirement of novelty under USC section 0. Second Affirmative Defense (Lack of Patentability under USC section 0). As alleged herein, the patent, and the claims thereof, are not based on or supported by subject matter contained in the patent or application No. 0/,, and therefore are not entitled to a priority date senior to Ameranth s 0, or 0 patents (and in fact that the earliest effective OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

7 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 filing date to which the patent would be entitled is August, ). Therefore, the claims of the patent are not non-obvious and fail to satisfy the requirements of patentability under USC section 0. Third Affirmative Defense (Failure to Disclose True Inventorship) 0. As alleged herein, the claims of the patent (copied from Ameranth s 0 patent) are not based on or supported by subject matter contained in the patent or application No. 0/,, which dealt with a different inventive idea, namely: (a) the use of geocodes to determine whether a customer is within a restaurant s specified geographic delivery area and/or whether a restaurant is within the customer s specified geographic take-out area; and (b) the facilitation of the placement of an order from a customer s standard PC type computer (e.g., desktops and laptops) to a restaurant through either conversion of the order into voice data transmitted by telephone to the restaurant or transmission of a facsimile order to the restaurant. The true inventors of the claims set forth in the copycat patent are not the persons identified on the patent, but rather are the inventors named in Ameranth s 0 patent.. Tellingly, the inventors listed on the patent (Bryan Cupps and Tim Glass) did not authorize a statement or declaration in connection with the application for the patent (which was filed years after the filing of the application for the Cupps patent) contending that they had conceived of Ameranth s non- PC-standard based invention or invented the subject matter claimed therein, or that the specification for the patent supported the claims of the patent. To the contrary, independent applications filed with the Patent Office by Cupps and Glass in 0, after the priority date of Ameranth s 0 patent, make it clear that they knew that the specification of the patent did OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

8 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 not support or disclose the non-pc-standard based subject matter of the claims in the patent copied from the 0 patent.. Furthermore, the original assignee of the patent, Food.com (by which Cupps and Glass had been employed) acknowledged that Cupps and Glass had not conceived of or invented Ameranth s patented inventions. Food.com partnered with Ameranth in July of in order to obtain and use Ameranth s inventions and technology, which Food.com needed and admitted it did not possess. Thus, an internal Food.com memo entitled Ameranth Licensing Contract dated September, (and which QuikOrder, Pizza Hut and their counsel have seen by virtue of their participation in discovery in the consolidated patent infringement lawsuits pending before this Court) states, in relevant part: I have met with Keith McNally to agree on the deal points on a Licensing Agreement. Here are the products and services we would want.. Menu Wizard- this is a tool which digitally constructs and updates restaurant menus. Communications Wizard- this tool creates a standard that can be used to integrate with any POS terminal and establishes the online ordering protocol.. Reservations- Food.com would have the exclusive rights to the online reservation system. They would help us create a hybrid system that can connect with the POS. These statements demonstrate that Food.com did not possess any invention or technology duplicating the functionality of Ameranth s menu generation, online and mobile ordering with point of sale ( POS ) integration or online reservations with POS integration inventions, despite the fact that the Notice of Allowance for their patent had been issued by the Patent Office in OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

9 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 December of, roughly months earlier. Moreover, the memo explains that Food.com was seeking exclusive rights to Ameranth s Menu Wizard technology because that tool created a barrier to entry in the online and mobile food ordering market, and to Ameranth's hybrid reservations system with POS integration, a further acknowledgment (made by persons skilled in the art, at the time of the invention) that neither Cupps, Food.com or anyone else in the industry had conceived of or possessed Ameranth s inventions.. Thus, both the named inventors of the patent (Cupps and Glass), and their employer and original assignee of the patent (Food.com), acknowledged that Cupps and Glass had not conceived of or invented Ameranth s inventions. Despite these facts, IPDEV, years later, covertly copied the claims from Ameranth s 0 patent into Application No.,, and falsely represented to the Patent Office that Cupps and Glass had conceived of such inventions earlier in order to improperly obtain the patent.. Additionally, IPDEV s affiliate, QuikOrder, took the position in and around 0 in the United States District Court for the Northern District of California, when it was sued by Food.com (the prior owner of the patent) for infringement of the patent, not only that the patent was invalid, but further that the claims of the Cupps patent (on which IPDEV s patent supposedly is based) were limited to a single inventive idea (an online ordering system that uses geocodes to match customers with restaurants in the appropriate delivery/take-out geographic area), and therefore could not encompass or disclose the entirely different invention described in the claims of Ameranth s 0 patent, now improperly copied by IPDEV in the claims of the patent. As QuikOrder stated in a November, 0 claim construction brief filed with the United States District Court for the Northern District of California: The purported invention of the patent is a single variation on an admittedly prior art OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

10 Case :-cv-00-dms-wvg Document Filed 0// Page 0 of 0 theme. The patent is characterized as an online ordering system that matches customers with appropriate vendors, such as restaurants providing food delivery services. While admitted prior art ordering systems match customers to appropriate vendors using the customer s address or telephone prefix, the system claimed by the patent uses geocodes. Food.com s claim construction position, and the Northern District of California s claim construction order in that lawsuit, similarly described the geocode based invention disclosed in the patent.. Likewise, in connection with the prosecution of a different patent application before the Patent Office in 0 (Application No. 0/00,), IPDEV/QuikOrder and its counsel argued that that the Cupps patent does not disclose, and in fact teaches away from, the concepts and inventions contained and described in Ameranth s patents and now duplicated in the claims of the patent.. In an earlier and separate patent application filed by IPDEV with the Patent Office supposedly based on the Cupps patent (Application No. 0/,), IPDEV previously attempted to duplicate claims of Ameranth s 0 patent in or around July of. The patent examiner for that application (a different examiner than the one later assigned to the application for the patent), in an August, interview summary, noted the dramatic differences between: (a) the claims IPDEV sought to copy from Ameranth s 0 patent (focusing on different display sizes of different user devices during mobile/remote ordering, according to the patent examiner); and (b) the geocode and location information for food ordering claims that IPDEV sought to derive from the Cupps patent, and pointed out in the office communication that the two sets of claims are for a different invention. Emphasis added. The application patent examiner s comments further reconfirmed what Cupps and OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

11 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 Glass, Food.com, QuikOrder, and IPDEV itself knew and previously acknowledged the patent is directed to an entirely different inventive concept than that disclosed by and described in the claims of Ameranth s non-pcstandard based 0 patent, and now improperly copied into the patent.. Importantly, none of the evidence described in paragraphs 0 to and to above demonstrating that Cupps and Glass did not invent the claims of the patent (copied from Ameranth s 0 patent) was provided by IPDEV to the patent examiner for the patent. Although the patent examiner did, incorrectly, allow the patent to issue, he provided no reasons whatsoever for the notice of allowance, provided no comments as to the substance of any prior art review, and made no indication that he had reviewed any of the extensive prosecution history of Ameranth s 0 patent, further confirming that he relied on and was misled by the misstatements and extensive withholding of material information by IPDEV and its counsel. Fourth Affirmative Defense (Lack of Conception and Diligent Reduction to Practice). The claims of the patent were not conceived by or diligently reduced to practice by the inventors named in the patent or the owners of such patent, rendering the patent invalid under (pre-aia) USC section 0. Additionally, the failure to diligently reduce such claims to practice constitutes abandonment of such claims, resulting in such claims being invalid and unenforceable. Further demonstrating that the examiner of the patent was confused when he approved and issued the patent, he cited to only prior art references in the patent. These references are dated August of 0, June, and May, references which would not be relevant to a patent application seeking a November priority date, such as IPDEV sought with the application for the patent. OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

12 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 Fifth Affirmative Defense (Lack of Sufficient Written Description in Specification) 0. Neither the specification of the patent, nor the content of the patent or application No. 0/,, contains a sufficient written description to support the invention claimed in the claims of the patent, in violation of USC section. The patent, on which the claims of the patent supposedly are based, describes a system that: (a) uses geocodes to determine whether a customer is within a restaurant s specified geographic delivery area and/or whether a restaurant is within the customer s specified geographic take-out area; and (b) facilitates placement of an order from a customer s computer to a restaurant through either conversion of the order into voice data transmitted by telephone to the restaurant or transmission of a facsimile order to the restaurant. In contrast, the claims of the patent (copied from Ameranth s 0 patent) describe a system for customized configuration and layout of menus to conform with non-pc-standard and different display sizes and characteristics of two or more different wireless handheld computing devices (e.g., smartphones ), and real time communication and data synchronization between a wireless handheld computing device, a web page and a master database. These claims are not described or disclosed in, or otherwise supported by, the specification of the patent, nor the content of the patent or application No. 0/,, rendering the patent and the claims thereof invalid. IPDEV even deleted an extensive discussion of geocodes from the Abstract of Application No. /, (which eventually issued as the patent) in an apparent attempt to obscure the primary focus of the application from the Examiner. 0 OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

13 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 Sixth Affirmative Defense (Lack of Enablement in Specification). The patent fails to satisfy the requirement of enablement imposed by USC section because neither the specification of the patent, nor the content of the patent or application No. 0/,, enables a relevant person of skill in the art to make and use the invention claimed in the claims of the patent. Seventh Affirmative Defense (Inequitable Conduct). IPDEV, its principals, affiliates and counsel, acted with inequitable conduct before the Patent Office in connection with prosecution and procurement of the patent as further alleged herein and with the specific intent to deceive the Patent Office, but for which the patent would not have issued, rendering the patent invalid and unenforceable. Eighth Affirmative Defense (Unclean Hands). IPDEV, its principals, affiliates and counsel, acted with unclean hands before the Patent Office in connection with prosecution and procurement of the patent as further alleged herein, but for which the patent would not have issued, rendering the patent invalid and unenforceable. Ninth Affirmative Defense (Estoppel). IPDEV is estopped from asserting the validity of the claims of the patent or contending that the patent, or any claims thereof, is entitled to priority over any of Ameranth s patents or any of the claims thereof by virtue of contradictory positions that IPDEV, through its attorneys, agents, affiliates, and those in privity or acting in concert with it, have taken: OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

14 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 (a) in the consolidated patent infringement lawsuits filed by Ameranth against QuikOrder, Pizza Hut and other members of the Joint Defense Group in this Court (in affirmative defenses, in counterclaims, in discovery responses, in invalidity contentions and in a joint motion in support of the defendants motion to stay proceedings, among other places); (b) in proceedings before the Patent Trial and Appeal Board with respect to the nearly identical claims of Ameranth s 0 patent and the claims of Ameranth s 0 and patents (including asserting that the claims of Ameranth s patents were invalid under USC sections 0 and and contending that such claims cover nothing more than an abstract idea ); (c) in other filings before the Patent Office regarding a different patent application but involving the patent from which the patent claims priority (among other things, traversing the patent and contending that the patent did not disclose or teach elements of the subject matter now claimed in the patent); (d) through a direct and contradictory admission made by IPDEV s President and managing agent, James Kargman, to Ameranth s Chief Executive Officer on December, 0; and (e) in filings made by QuikOrder in the United States District Court for the Northern District of California in and around 0 asserting that the patent was invalid when QuikOrder was being sued by Food.com (the prior owner of the patent) for infringement of the patent.. Consequently, IPDEV is estopped from asserting the validity of the claims of the patent or contending that the or any claims thereof is entitled to priority over any of Ameranth s patents or any of the claims thereof. OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

15 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 Tenth Affirmative Defense (Anticipation and Obviousness). Because the patent is not entitled to a priority date senior to Ameranth s 0 patent, the patent, and the claims thereof, is invalid as being anticipated by the 0 patent and rendered obvious by the 0 patent, which describes and discloses every element of the claims of the patent, pursuant to USC sections 0 and 0. Eleventh Affirmative Defense (Time Barred Claim). Because IPDEV is attempting to assert its purported interference claims based on the patent claims against Ameranth s 0 patent, which was issued by the Patent Office on May, 0, and Ameranth s patent, which was issued by the Patent Office on March, 0, such an interference challenge is untimely and time barred pursuant to, inter alia, (pre-aia) USC section (b)(), which requires any such interference claim to be made, if at all, within one year of the date of issuance of the patent to be challenged. Twelfth Affirmative Defense (Laches). IPDEV s interference claims against Ameranth s patents are barred by the doctrine of laches. IPDEV acquired the patent from the trustee of the bankruptcy estate of Food.com (the prior owner of the patent) on or about February, 0. IPDEV, its affiliate QuikOrder, and their common controlling persons (including but not limited to James Kargman) had knowledge of Ameranth s 0 and patents, and Ameranth s intent to enforce those patents, since at least February of 0. Nevertheless, and without justification, IPDEV waited until August, to file the application that issued as the patent (copying the claims of Ameranth s 0 patent) supposedly based upon OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

16 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 patent, which IPDEV now asserts supports interference claims against Ameranth s 0, and 0 patents. This delay is unreasonable and results in undue prejudice to Ameranth. Consequently, the doctrine of laches bars IPDEV s interference claims asserted herein. Thirteenth Affirmative Defense (Invalidity of Patent Under (pre-aia) USC section (b)()). The claims of IPDEV s patent are invalid under (pre-aia) USC section (b)(), which states, in relevant part: "A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted." 0. IPDEV asserts in its complaint in this matter that the claims of Ameranth s 0 and patents are obvious variants of the claims of the Ameranth 0 patent, and therefore are for the same or substantially the same subject matter as the claims of the 0 patent (the patent is a continuation of the 0 patent, and the 0 patent is a continuation in part of the 0 patent). IPDEV further asserts in its complaint that claims of the Ameranth patents (the 0, and 0 patents) interfere with claims of the patent. The 0 patent issued on May, 0. The patent issued on March, 0. IPDEV did not apply for the patent claims until August,, well past the one year time period in which any application for a claim for the same or substantially the same subject matter as the claims of Ameranth s issued 0 and patents would have had to have been filed with the Patent Office. Therefore, the claims of the patent are invalid. OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

17 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 Fourteenth Affirmative Defense (Failure to State a Claim). IPDEV fails to state claims upon which relief can be granted with respect to Ameranth s 0 and patents. PRAYER FOR RELIEF WHEREFORE, Ameranth prays for relief as follows:. That IPDEV take nothing by way of its claims herein;. For a judicial declaration that the patent, and all claims thereof, is invalid and unenforceable;. For a determination that the patent is not entitled to any priority over Ameranth s, 0 and 0 patents;. That the Court deem this to be an exceptional case and award attorneys fees and costs in favor of Ameranth; and follows:. For such other and further relief as the Court deems just and proper. COUNTERCLAIMS By and for its counterclaims against IPDEV, Ameranth further alleges as The Parties. Ameranth is a Delaware corporation registered to do business in California and located in San Diego, California.. On information and belief, IPDEV is an Illinois corporation headquartered in Chicago, Illinois, but doing business within this judicial district. IPDEV is an affiliate of QuikOrder (fka as National Systems Corporation) and under common control with QuikOrder. QuikOrder, in turn, provides the on-line and mobile ordering system used by Pizza Hut, and, on information and belief, is providing a defense and indemnity to Pizza Hut in the consolidated patent OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

18 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 infringement actions pending before this Court, and IPDEV, QuikOrder and Pizza Hut share common legal counsel in the cases pending before this Court. On information and belief, QuikOrder, Pizza Hut and other members of the Joint Defense Group in the consolidated patent infringement cases are utilizing IPDEV s complaint for determination of priority of invention as part of their joint defense strategy against Ameranth s claims for patent infringement. Jurisdiction and Venue. This counterclaim arises under the patent laws of the United States, U.S.C. 0, et seq., and under the declaratory judgments laws of the United States, U.S.C. and.. Jurisdiction of this counterclaim arises under U.S.C. and and under U.S.C. (a). This is a proper counterclaim under Rule of the Federal Rules of Civil Procedure.. By virtue of IPDEV s complaint for determination of priority of invention against Ameranth filed in this Court, a justiciable controversy exists between Ameranth and IPDEV regarding the validity and scope of IPDEV s rights in and to the patent and the claims thereof.. Venue is proper in this District pursuant to USC section (b) and (c), and IPDEV has consented to venue in this District by filing suit against Ameranth herein.. IPDEV is subject to personal jurisdiction in this Court by virtue of doing business in this judicial district and has subjected itself to personal jurisdiction herein by virtue of filing its complaint for determination of priority of invention against Ameranth in this Court. OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

19 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 First Counterclaim (Declaration of Invalidity of the Patent). Ameranth realleges and incorporates by reference herein the preceding allegations of this answer and counterclaim as though fully set forth herein.. An actual controversy has arisen and now exists between Ameranth, on one hand, and IPDEV, on the other, with respect to the validity of IPDEV s patent and the claims thereof. Specifically, IPDEV contends that the patent is valid, whereas, for the reasons described herein, among others, Ameranth contends that the patent, and the claims thereof, is invalid. 0. The patent, and the claims thereof, is invalid for at least the following reasons.. The patent is invalid under (pre-aia) USC section (b)(). (Pre-AIA) USC section (b)() states, in relevant part: "A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted." IPDEV asserts in its complaint in this matter that the claims of Ameranth s 0 and patents are obvious variants of the claims of the Ameranth 0 patent, and therefore are for the same or substantially the same subject matter as the claims of the 0 patent (the patent is a continuation of the 0 patent, and the 0 patent is a continuation in part of the 0 patent). IPDEV further asserts in its complaint that claims of the Ameranth patents (the 0, and 0 patents) interfere with claims of the patent. The 0 patent issued on May, 0. The patent issued on March, 0. IPDEV did not apply for the patent until August,, well over one year beyond the issuance dates of Ameranth s 0 and patents and therefore long past the one year time period OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

20 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 permitted by law for applying to the Patent Office for any claim for the same or substantially the same subject matter as the claims of Ameranth s previously issued 0 and patents.. The claims of the patent are not supported or disclosed by the specification and the drawings thereof. For example, there is no support for key claim elements such as: wireless handheld computing devices, real time synchronous communication with wireless handheld computing devices, configuration and formatting of menus for display on two or more different wireless handheld device display sizes, smart phones, reservations, wait-listing, ticketing, and integration with point of sale ( POS ) systems. Thus, the claims of the patent are invalid for lack of sufficient written description pursuant to USC section.. The claims of the are not sufficiently enabled by the specification and drawings thereof to enable a relevant person of skill in the art to make and use the invention claimed therein. Thus, the claims of the patent are invalid for lack of enablement pursuant to USC section.. The claims of the patent were not conceived by or diligently reduced to practice by the inventors named in the patent or the owners of such patent, rendering the patent invalid under (pre-aia) USC section 0. Additionally, the failure to diligently reduce such claims to practice constitutes abandonment of such claims.. As described more fully in Ameranth s Third Affirmative Defense, incorporated by reference herein, the patent fails to name the true inventors of the claims of the patent. The true inventors of such claims are the inventors identified in Ameranth s 0 patent: Keith McNally, William Roof and Richard Bergfeld. In contrast, the persons incorrectly named as inventors in the patent-- Bryan Cupps and Tim Glass have acknowledged, in other filings with OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

21 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 the Patent Office, that: (a) they understood that desktop computers (i.e., PC s ) and laptops (as referenced in the specification for the patent on which the patent supposed is based) were not the same as or equivalent to non-pc standard wireless handheld computing devices (the term used in Ameranth s 0 patent and wrongfully copied in the claims of the patent by IPDEV); and (b) they did not believe that the patent (from which the patent claims priority) disclosed or taught synchronization with wireless handheld computing devices, which is a core aspect of Ameranth s 0 patent and which the claims of the patent improperly copy. Moreover, and tellingly, neither Cupps nor Glass (the inventors of the patent) asserted that they invented the subject matter of the claims of Ameranth s 0 patent or approved any declaration to the Patent Office in connection with the prosecution of Application No. /,, which issued as IPDEV s patent, attesting to their supposed invention of the subject matter of the patent claims (IPDEV merely resubmitted to the Patent Office the inventorship declaration filed in connection with the application for the patent, which contains entirely different claims). As described in Ameranth s Third Affirmative Defense, IPDEV withheld from the Patent Office a vast amount of evidence refuting any contention that Cupps and/or Glass invented the invention described in the claims of the patent copied from Ameranth s 0 patent.. A judicial determination is necessary and appropriate at this time to resolve the foregoing dispute over the validity of the patent and the claims thereof, and there is no other just, efficient and satisfactory method for the resolution of this dispute.. Consequently, Ameranth requests a judicial declaration that the patent, and the claims thereof, is invalid. OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

22 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 Second Counterclaim (Inequitable Conduct). Ameranth realleges and incorporates by reference herein the preceding allegations of this answer and counterclaim as though fully set forth herein.. All claims of IPDEV s patent are invalid and unenforceable due to the inequitable conduct during the prosecution of the patent by IPDEV, its principals (including James Kargman and David Kargman), its patent prosecution counsel for the patent before the Patent Office, its agents, on information and belief litigation counsel for it and its affiliates (including George Yu and Schiff Hardin LLP), its affiliates and those working in concert with it, who intentionally withheld vast amounts of material information from the Patent Office, and/or made material misstatements to the Patent Office, with specific intent to deceive the Patent Office, but for which the patent would not have issued.. As a result of QuikOrder s and Pizza Hut s participation in the consolidated patent infringement cases pending before this Court, QuikOrder, IPDEV, their principals (including James and David Kargman) and their counsel knew of the claim constructions that had been given to numerous elements of Ameranth s patents by the District Court for the Eastern District of Texas that were entirely incompatible with the arguments made by IPDEV to the Patent Office in order to attempt to manufacture support for the claims of the patent in the specification thereof. IPDEV and its counsel withheld these claim constructions, including, for example, the construction of the term wireless handheld computing device from the examiner of the patent, in order to mislead the patent examiner about whether there was any support in the specification of the patent for such term. OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

23 Case :-cv-00-dms-wvg Document Filed 0// Page of 0. As a result of QuikOrder s and Pizza Hut s participation in the consolidated patent infringement cases pending before this Court, QuikOrder, IPDEV, their principals (including James and David Kargman) and their counsel knew of the various alleged prior art references that the members of the Joint Defense Group had asserted against Ameranth s 0, 0 and patents, including references that pre-dated the application date of the patent from which the patent claims priority. Despite the fact that the claims of the patent substantially duplicate the claims of Ameranth s 0 patent, IPDEV did not apprise the examiner of the patent of the alleged prior art references and conflicting claim construction positions that they and the other members of the Joint Defense Group have asserted against Ameranth s patents.. As a result of QuikOrder s participation in the Joint Defense Group in the consolidated patent infringement cases pending before this Court, and Pizza Hut s participation in the covered business method petition proceedings brought before the Patent Trial and Appeal Board by a number of the defendants in that Joint Defense Group against Ameranth s 0, 0 and patents, IPDEV and its counsel knew of the claim constructions that had been given to numerous elements of Ameranth s patents by the Patent Trial and Appeal Board in the covered business method petition proceedings concerning Ameranth s 0, 0 and patents that were incompatible with the arguments made by IPDEV to the Patent Office in order to attempt to manufacture support for the claims of the patent in the specification thereof. IPDEV and its counsel withheld these claim constructions from the examiner of the patent.. IPDEV misled the examiner of the /, application in order to obtain the patent. IPDEV did not use the word interference in its patent application, did not propose an interference to the Patent Office, did not propose a count for an interference, and importantly did not specifically explain that the OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

24 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 proposed claims were copied from claims of a different inventor. These procedures were required for proper suggestion of an interference. The examiner of the patent was thus not informed and did not understand that declaration of an interference was being suggested. IPDEV intentionally crafted its preliminary statement for its continuation application to the Patent Office in a manner designed to mislead the examiner into believing that the claims were copied from another IPDEV/QuikOrder/Cupps patent so that the examiner would apply minimal scrutiny to the application. IPDEV made no statement that the claims were being copied from the application of a different inventor and patent owner. IPDEV overtly misled the examiner in order to deflect the examiner s attention away from, inter alia, the lack of support in the Cupps patent description for the claims IPDEV copied from Ameranth s 0 patent and presented to the Patent Office as its own. Furthermore, IPDEV failed to explain to the examiner that the Cupps patent is cited as a reference in Ameranth s 0 patent and that the 0 patent had been issued by the USPTO specifically over the Cupps patent (as, for that matter, have been Ameranth s 0 and patents as well).. Although IPDEV now contends in the present lawsuit that the claims of Ameranth s 0 patent (issued on May, 0) and patent (issued on March, 0) are for the same or substantially the same subject matter as the claims of the 0 patent and are obvious variants of the claims of the 0 patent, which are substantially copied by IPDEV s patent, IPDEV failed to disclose or explain this to the Patent Office in connection with the prosecution of the patent. Under (pre-aia) USC section (b)(), "A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted." IPDEV did not OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

25 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 submit the application for the patent to the Patent Office until August,, far more than one year after the issuance of Ameranth s 0 and patents, in violation of (pre-aia) USC section (b)(). On information and belief, IPDEV and its counsel intentionally failed to disclose this information to the patent examiner for the patent in order to improperly obtain the patent despite the untimely nature of the application.. IPDEV has previously distinguished and traversed the Cupps patent in prior filings with the Patent Office in support of other patent applications seeking to replicate elements of Ameranth s inventions. In these filings, IPDEV has argued to the Patent Office correctly that Cupps does not disclose, and in fact teaches away from, the concepts contained in Ameranth s patents and now duplicated in the claims of the patent. For example, in its August 0, 0 Appeal Brief in support of Application No. 0/00,, IPDEV argued to the Patent Office that its proposed claims were not anticipated by the Cupps patent because, among other things: (a) Cupps did not disclose or enable the direct downloading of customer orders into a computer system/ POS system in order to bypass the conventional store order taking process; and (b) the Cupps invention was limited to conversion of customer computer orders into voice data transmitted to the restaurant via phone call or transmitted to the restaurant via facsimile transmission. Yet IPDEV withheld this information and these prior filings and inconsistent positions from the examiner of the patent during the prosecution of the patent.. In the consolidated District Court patent infringement litigation involving Ameranth s 0, 0 and patents, QuikOrder, Pizza Hut and other members of the Joint Defense Group have asserted (in affirmative defenses, counterclaims, invalidity contentions, motions, etc.) that Ameranth s patent claims, including all claims of the 0 patent, are invalid and fail to meet the OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

26 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 conditions for patentability under U.S.C. sections 0, 0, 0 and. Despite these judicial assertions of unpatentability, IPDEV simultaneously has pursued the claims of the patent, which are nearly identical to the claims of Ameranth s 0 patent, through prosecution in the USPTO without revealing these contradictory judicial assertions to the examiner of the patent.. In the covered business method petitions that Pizza Hut and other members of the Joint Defense Group have pursued against Ameranth s patents, the petitioners have alleged that the claims of the 0, and 0 patents fail to satisfy the written description and definiteness requirements of section, and fail to claim patentable subject matter under section 0. QuikOrder and Pizza Hut joined in the motions to stay the consolidated cases before the District Court pending determination of these covered business method petitions. Yet again, IPDEV failed to disclose the pending covered business method petition challenges to Ameranth s patents, the contradictory positions taken in the covered business method petition proceedings with the Patent Trial and Appeal Board (despite the fact that IPDEV was concurrently pursuing the patent containing nearly exact duplicates of the claims of Ameranth s 0 patent being challenged before the Patent Trial and Appeal Board), the claim constructions issued by the Patent Office in the covered business method petition proceedings, or the rulings issued by the Patent Office in those proceedings, even though these events all occurred and were known to IPDEV, QuikOrder, Pizza Hut and their counsel well prior to the issuance of the patent. Further, despite asserting in the consolidated patent infringement lawsuits pending before this Court that the claims of Ameranth s 0 patent (from which the claims of IPDEV s are directly copied) are invalid and that QuikOrder and Pizza Hut supposedly do not practice those claims, QuikOrder and Pizza Hut both now mark their accused products with IPDEV s and patent numbers, thereby admitting that their products do, in fact, practice such claims and thus that their non-infringement assertions are untrue. OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

27 Case :-cv-00-dms-wvg Document Filed 0// Page of 0. In connection with the prosecution of the patent, IPDEV, its principals and agents (including James and David Kargman), and its counsel violated the requirements of section 0.0(c) of the Patent Office s Manual of Patent Examining Procedures ( M.P.E.P. ), which provides, in relevant part: Where the subject matter for which a patent is being sought is or has been involved in litigation, the existence of such litigation and any other material information arising therefrom must be brought to the attention of the U.S. Patent and Trademark Office. Examples of such material information include evidence of possible prior public use or sales, questions of inventorship, prior art, allegations of "fraud," "inequitable conduct," and "violation of duty of disclosure." Another example of such material information is any assertion that is made during litigation which is contradictory to assertions made to the examiner. Environ Prods., Inc. v. Total Containment, Inc., USPQd, (E.D. Pa. ). Such information might arise during litigation in, for example, pleadings, admissions, discovery including interrogatories, depositions, and other documents and testimony. (Emphasis added).. Despite acknowledging that the claims of the patent are copied directly from the claims of the 0 patent, and despite asserting in this action that the claims of Ameranth s 0 and patents are obvious variants of the claims of the 0 patent and therefore directed to the same or substantially same subject matter, IPDEV and its counsel intentionally withheld from the patent examiner of the patent any of the over thirty lawsuits involving the claims of Ameranth s 0, 0, and patents pending before this Court, and the contradictory assertions, contentions and positions taken by QuikOrder, Pizza Hut and other members of the Joint Defense Group about the claims over which IPDEV now asserts an interference. 0. Despite acknowledging that the claims of the patent are copied directly from the claims of Ameranth s 0 patent, and despite asserting in this action that the claims of Ameranth s 0 and patents are obvious variants of the claims of the 0 patent and therefore directed to the same or substantially OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

28 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 same subject matter, IPDEV and its counsel intentionally failed to disclose to the patent examiner for the patent any of the covered business method petition proceedings challenging the patentability of the claims of the 0, 0, and patents filed in the Patent Trial and Appeal Board by Pizza Hut and other members of the Joint Defense Group, and the contradictory assertions, contentions and positions taken by the petitioners therein about the claims over which IPDEV now asserts an interference.. James Kargman, founder and President of IPDEV and founder and Chief Executive Officer of QuikOrder, previously admitted to Keith McNally, Chief Executive Officer of Ameranth, in a December, 0 face to face meeting in San Diego, California, that QuikOrder and its intellectual property counsel had concluded that the Cupps patent (which IPDEV, QuikOrder s affiliate, acquired in 0) was trumped by Ameranth s synchronization patents in that the patent does not describe, disclose, anticipate or render obvious the inventions claimed in Ameranth s patents.. This direct admission by IPDEV s President to Ameranth's CEO was also entirely consistent with an earlier public statement made by James Kargman on November, 0, two years prior to IPDEVs acquisition of the patent. In a CRN.com article of that date, Kargman claimed that QuikOrder s (then known as National System Corporation) point of sale ( POS ) system was: the only solution on the market I am aware of that has a direct tie into an online ordering facility. At the time Kargman made this statement, he was well aware of the scope of substance of the patent as a result of the infringement lawsuit filed in 0 by Food.com (the prior owner of the patent) against QuikOrder. Thus, Mr. Kargman s statement, in November of 0, that no other solution had a direct tie in between an online ordering facility and a POS system (which is an element of claims of the Ameranth s 0 patent now copied by the claims of the OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)

29 Case :-cv-00-dms-wvg Document Filed 0// Page of 0 patent) is a recognition that the Food.com system did not provide for direct integration between an online ordering facility and a restaurant POS system. Moreover, because the Food.com system was based upon and practiced the claims of the patent, Mr. Kargman s November 0 statement is also an admission that the patent did not teach such direct integration between an online ordering facility and a POS system, and therefore did not teach or disclose the claims of Ameranth s 0 patent.. Nevertheless, despite these multiple contrary admissions by James Kargman, IPDEV later submitted the application for the patent to the Patent Office covertly copying the claims of Ameranth s 0 patent and knowingly misrepresenting to the Patent Office that the specification of the Cupps patent contained, described, encompassed and disclosed the elements and functionality of the claims copied from the 0 patent.. As a result of QuikOrder s and Pizza Hut s participation in the consolidated patent infringement cases pending before this Court, QuikOrder, IPDEV and their counsel knew that Food.com, the prior owner of the Cupps patent before the patent was purchased by IPDEV, partnered with Ameranth in in order to use Ameranth s patented inventions and thus publicly acknowledged that the Cupps patent (upon which Food.com s products were built) did not encompass Ameranth s inventions. On information and belief, IPDEV and its counsel intentionally withheld this material information from the patent examiner of the patent, but for which the patent would not have issued.. On information and belief, IPDEV, its principals and agents (including James Kargman and David Kargman) and its counsel, intentionally withheld the information and material described above from the patent examiner OF PRIORITY; COUNTERCLAIMS Case No. -cv-0 DMS (WVG)