Free Answer to Counterclaim - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

PARKER-HANNIFIN CORPORATION, and PARKER INTANGIBLES, LLC, Plaintiffs, v. SCHLEGEL ELECTRONIC MATERIALS, INC., Defendant. SCHLEGEL ELECTRONIC MATERIALS, INC., Counterclaimant, v. PARKER-HANNIFIN CORPORATION, Counter-Defendant.

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C.A. No. 1:07-cv-266

ANSWER OF PARKER-HANNIFIN CORPORATION TO DEFENDANT'S COUNTERCLAIMS

Plaintiff and Counter-Defendant, Parker-Hannifin Corporation (hereinafter "Parker"), hereby answers the counterclaims filed by Defendant and Counterclaimant, Schlegel Electronic Materials, Inc. (hereinafter "Schlegel") as follows: COUNTERCLAIMS 19. Parker is without knowledge or information sufficient to form a belief as

to the truth or falsity of the allegations contained in Paragraph 19 of the Counterclaims and they are therefore denied.

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20.

Parker admits the allegations contained in Paragraph 20 of the

Counterclaims. Jurisdiction And Venue 21. Parker admits the allegations contained in Paragraph 21 of the

Counterclaims. 22. Parker admits the allegations contained in Paragraph 22 of the

Counterclaims. Schlegel's Patents 23. Parker admits that United States Patent No. 4,857,668 (hereinafter "the

`668 patent") was issued on August 15, 1989, but is without knowledge or information sufficient to form a belief as to the truth or falsity of the allegations that it was duly and legally issued and therefore denies same. Parker admits that the `668 patent is owned by Schlegel. 24. Parker admits that United States Patent No. 5,045,635 (hereinafter "the

`635 patent") was issued on September 3, 1991, but is without knowledge or information sufficient to form a belief as to the truth or falsity of the allegations that it was duly and legally issued and that it is owned by Schlegel and therefore denies same. 25. Parker admits that United States Patent No. 5,105,056 (hereinafter "the

`056 patent") was issued on April 14, 1992, but is without knowledge or information sufficient to form a belief as to the truth or falsity of the allegations that it was duly and legally issued and that it is owned by Schlegel and therefore denies same. 26. Parker denies each and every allegation contained in Paragraph 26 of the

Counterclaims.

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27.

Parker denies each and every allegation contained in Paragraph 27 of the

Counterclaims. 28. Parker denies each and every allegation contained in Paragraph 28 of the

Counterclaims. 29. Parker denies each and every allegation contained in Paragraph 29 of the

Counterclaims. 30. Parker denies each and every allegation contained in Paragraph 30 of the

Counterclaims. Declaration Of Invalidity 31. Parker denies each and every allegation contained in Paragraph 31 of the

Counterclaims. Affirmative Defenses To Schlegel's Counterclaims 32. Schlegel is barred from asserting the `668 patent against Parker and

Parker's products and/or recovering damages for same because Schlegel disclaimed and dedicated to the public following issuance of the `668 patent any and all relevant subject matter. 33. Schlegel is barred from asserting the `668 patent against Parker and

Parker's products and/or recovering damages for same under the doctrine of equitable estoppel. 34. Schlegel is barred from asserting the `668, `635 and/or `056 patents

against Parker and Parker's products and/or recovering damages for same under the doctrine of laches.

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35.

There is no infringement of the `668 patent to the extent that one or more

of Parker's products are licensed by Schlegel under the `668 patent. The Patent License Agreement between Schlegel and Parker's predecessor in interest is attached hereto as Exhibit A. 36. Upon information and belief, the claims of Schlegel's `668, `635 and/or

`056 patents are invalid for failure to satisfy the requirements of the United States patent laws, 35 U.S.C. §§ 101 et seq., including, but not limited to, 35 U.S.C. §§ 101, 102, 103 and 112. 37. Upon information and belief, Schlegel is estopped from asserting the `668,

`635 and `056 patents against Parker's products and/or recovering damages by virtue of amendments and statements made during the course of prosecution of the `668, `635 and `056 patents from obtaining any construction of the claims of these patents that could cover any of Parker's products and the methods by which those products are made. 38. On information and belief, Schlegel has failed to comply with the

provisions of 35 U.S.C. § 287(a) and is therefore barred from recovery of any damages prior to service of the Complaint. 39. Schlegel is barred under 35 U.S.C. § 286 from recovering any damages for

activity that occurred more than six (6) years prior to the filing of its Counterclaims. Prayer For Relief WHEREFORE, Plaintiff and Counter-Defendant, Parker-Hannifin Corporation prays that Schlegel's Counterclaims be dismissed with prejudice, that Schlegel take nothing by reason of its Counterclaims, that Parker be awarded the relief sought in its First Amended Complaint, its attorneys' fees, costs and expenses in this action, and that

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the Court grant Parker such other and further relief as the Court may deem just and proper. Respectfully submitted CONNOLLY BOVE LODGE & HUTZ, LLP

By:

/s/ Ryan P. Newell Rudolf E. Hutz (#484) Francis DiGiovanni (#3189) Ryan P. Newell (#4744) The Nemours Building 1007 N. Orange Street Wilmington, DE 19899 Phone (302) 658-9141 [email protected] [email protected] [email protected] Attorneys for Plaintiffs

Dated: October 1, 2007

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CERTIFICATE OF SERVICE I hereby certify that October 1, 2007, a true copy of the foregoing document was hand delivered to the following persons and was electronically filed with the Clerk of the Court using CM/ECF which will send notification of such filing to the following and the document is available for viewing and downloading from CM/ECF: George Pazuniak Anna Martina Linnea Tyreus James Michael Lennon Stephen James MacKenzie Womble Carlyle Sandridge & Rice 222 Delaware Avenue Wilmington, Delaware 19801

/s/Ryan P. Newell Ryan P. Newell (#4744) [email protected]

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EXHIBIT A

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