Free Answer to Amended Complaint - 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 Plaintiff, 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 JURY TRIAL DEMANDED

ANSWER AND COUNTERCLAIM OF DEFENDANT SCHLEGEL ELECTRONIC MATERIALS, INC.
Defendant Schlegel Electronic Materials, Inc. ("Schlegel") hereby answers the Complaint of Plaintiff Parker-Hannifin Corporation and Parker Intangibles, LLC (collectively "Parker") as follows: 1. Schlegel lacks knowledge or information sufficient to form a belief as to

the truth of the allegations contained in Paragraph 1 of the Complaint. 2. Schlegel lacks knowledge or information sufficient to form a belief as to

the truth of the allegations contained in Paragraph 2 of the Complaint.

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3.

Schlegel denies that it is a corporation organized and existing under the

laws of the State of New York, and denies that its principle place of business is 1555 Jefferson Road, but admits the remaining allegations contained in Paragraph 3 of the Complaint. JURISDICTION AND VENUE 4. Schlegel admits subject matter jurisdiction of this Court as alleged in

Paragraph 4 of the Complaint and waives objection to personal jurisdiction. 5. Schlegel waives objection to venue of this Court as alleged in Paragraph 5

of the Complaint. PARKER-HANNIFIN'S PATENTS 6. Schlegel admits that U.S. Patent No. 6,387,523 ("the '523 patent") issued

on May 14, 2002, but denies that it was duly and legally issued. Schlegel denies that Parker has standing to assert the '523 patent. Schlegel is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations contained in paragraph 6 of the Complaint. 7. Schlegel admits that U.S. Patent No. 6,521,348 ("the '348 patent") issued

on February 18, 2003, but denies that it was duly and legally issued. Schlegel denies that Parker has standing to assert the '348 patent. Schlegel is without information or knowledge sufficient to form a belief as to the truth of the remaining allegations contained in paragraph 7 of the Complaint. 8. Schlegel admits that U.S. Patent No. 6,716,536 ("the '536 patent") issued

on April 6, 2004, but denies that it was duly and legally issued. Schlegel denies that Parker has standing to assert the '536 patent. Schlegel is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations -2-

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contained in paragraph 8 of the Complaint. 9. Schlegel admits that U.S. Patent No. 6,777,095 ("the '095 patent") issued

on August 17, 2004, but denies that it was duly and legally issued. Schlegel denies that Parker has standing to assert the '095 patent. Schlegel is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations contained in paragraph 9 of the Complaint. 10. Schlegel admits that U.S. Patent No. 6,248,393 ("the '393 patent") issued

on June 19, 2001, but denies that it was duly and legally issued. Schlegel denies that Parker has standing to assert the '393 patent. Schlegel is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations contained in paragraph 10 of the Complaint. PARKER-HANNIFIN'S ALLEGATIONS OF INFRINGEMENT 11. Complaint. 12. Complaint. SCHLEGEL'S AFFIRMATIVE DEFENSES 13. Upon information and belief, Schlegel has not infringed and is not Schlegel denies each and every allegation of Paragraph 12 of the Schlegel denies each and every allegation of Paragraph 11 of the

infringing any claim of Parker's `523, `348, `536, `095, and `393 patents, either directly or by inducing or contributing to their infringement by others. 14. Upon information and belief, the claims of Parker's `523, `348, `536, `095,

and `393 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. -3-

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15.

Upon information and belief, Parker's `523, `348, `536, `095, and `393

patents are invalid as a result of obviousness-type double patenting. 16. Upon information and belief, Parker is estopped by virtue of amendments

and statements made during the course of prosecution of Parker's `523, `348, `536, `095, and `393 patents from obtaining any construction of the claims of these patents that could cover any of Schlegel's products and the methods by which those products are made. 17. On information and belief, Parker and Parker Intangibles LLC have failed

to comply with the provisions of 35 U.S.C. § 287(a) and are therefore barred from recovery of any damages prior to service of the Complaint. RESERVATION OF RIGHTS 18. Schlegel is still investigating this matter and has not yet had an

opportunity to conduct any discovery, and therefore reserves the right to raise such additional defenses as may be appropriate upon further investigation and discovery.

COUNTERCLAIM
Counterclaimant, Schlegel Electronic Materials, Inc. ("Schlegel"), as and for its counterclaim against counter-defendant, Parker-Hannifin Corporation ("Parker"), hereby alleges as follows: 19. Schlegel is a corporation organized and existing under the laws of the

State of Delaware, having its principle place of business at 806 Linden Avenue, Suite 100, Rochester, New York 14602. 20. As Parker admits in paragraph 1 of its complaint, Parker is a corporation

organized and existing under the laws of the State of Ohio having a principal place of business at 6035 Parkland Blvd., Cleveland Ohio.

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JURISDICTION AND VENUE 21. As Parker admits in paragraph 3 of its complaint, jurisdiction in this Court

is proper pursuant to 28 U.S.C. §§ 1331 and 1338(a). Jurisdiction over the declaratory judgment counterclaims is also proper under 28 U.S.C. § 2201. 22. As Parker admits in paragraph 4 of its complaint, venue is proper in this

Court pursuant to 28 U.S.C. §§ 1391(b) and (c), and 1400(b). SCHLEGEL'S PATENTS 23. On August 15, 1989, United States Patent Letter No. 4,857,668 (the '668

patent) (attached hereto as Exhibit "A") was duly and legally issued. The '668 patent is owned by Schlegel. 24. On September 3, 1991, United States Letter Patent No. 5,045,635 (the '635

patent) (attached hereto as Exhibit "B") was duly and legally issued. The '635 patent is owned by Schlegel. 25. On April 14, 1992, United States Letter Patent No. 5,105,056 (the '056

patent) (attached hereto as Exhibit "C") was duly and legally issued. The '056 patent is owned by Schlegel.
SCHLEGEL'S ALLEGATIONS OF INFRINGEMENT

26. 27. patent. 28. patent. 29.

Parker has been and still is infringing at least claim 16 of the `668 patent. Parker has been and still is infringing one or more claims of the `635

Parker has been and still is infringing one or more claims of the `056

Parker's infringing activities have included direct infringement,

contributory infringement and/or active inducement of infringement within the meaning -5-

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of 35 U.S.C. §§ 271(a) through (c). 30. Parker has committed the acts of infringement in disregard of Schlegel's

rights in Schlegel's `668, `635, and `056 patents. Upon information and belief, Parker's infringement has been willful, deliberate and intentional, and will continue, to Schlegel's irreparable harm, unless enjoined by this Court.
DECLARATION OF INVALIDTY

31.

Upon information and belief, the claims of Parker's `523, `348, `536, `095,

and `393 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.

WHEREFORE, Schlegel prays as follows: A. That Parker take nothing by reason of its Complaint, and that judgment be entered for Schlegel; B. That Parker's `523, `348, `536, `095, and `393 patents and each and every claim thereof be adjudged to be and declared invalid, and that Schlegel be adjudged not to infringe such patent; C. That the Court declare this an exceptional case and award Schlegel its attorneys' fees and costs pursuant to 35 U.S.C. § 285; D. That Parker has infringed Schlegel's `668, `635, and `056 patents; E. That Parker be permanently enjoined from further conduct which infringes Schlegel's `668, `635, and `056 patents;

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F. That Schlegel be awarded damages adequate to compensate it for Parker's infringement, and that the damages be trebled because of the willful nature of Parker's infringement, together with interest, pursuant to 35 U.S.C. § 284; and G. That the Court grant such other and further relief as is just and proper.

Dated: September 10, 2007

WOMBLE CARLYLE SANDRIDGE & RICE, PLLC By: s/ George Pazuniak George Pazuniak (DE # 478) James M. Lennon (DE # 4570) Martina Tyreus (DE # 4771) 222 Delaware Avenue, Suite 1501 Wilmington, DE 19801 (302) 252-4320

Of Counsel: Dan O'Brien, Esq. Woods Oviatt Gilman LLP 700 Crossroads Bldg 2 State Street Rochester, NY 14614 Attorneys for Defendant/Counterclaimant SCHLEGEL ELECTRONIC MATERIALS, INC.

WCSR 3722657v1

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

PARKER-HANNIFIN CORPORATION, and PARKER INTANGIBLES, LLC Plaintiff, 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 JURY TRIAL DEMANDED

CERTIFICATE OF SERVICE
I hereby certify that on this 10th day of September, 2007, the following: 1. 2. 3. 4. Answer and Counterclaim; Exhibit A to Answer and Counterclaim; Exhibit B to Answer and Counterclaim; and Exhibit C to Answer and Counterclaim,

were filed with the Clerk of Court by Defendant Schlegel Electronic Materials, Inc. using the CM/ECF system and were served by hand to the following attorney of record:

WCSR 3730403v1

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VIA CM/ECF NOTICE AND HAND DELIVERY Francis DiGiovanni Connolly, Bove, Lodge & Hutz The Nemours Building 1007 North Orange Street P.O. Box 2207 Wilmington, DE 19899 (302) 658-9141 [email protected]

s/ James M. Lennon James M. Lennon (#4570) Counsel for Defendant Schlegel Electronic Materials, Inc.

WCSR 3730403v1