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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
VOITH PAPER GMBH & CO. KG, ) Plaintiff, )

V. JOHNSONFOILS, INC.,
Defendant.

) )
) }

C.A. No. 07-226-JJF

PLAINTIFF VOITH PAPER GMBH & CO. KG'S ANSWERING BRIEF IN OPPOSITION TO
DEFENDANT JOHNSONFOILS , INC.'S MOTION FOR LEAVE TO AMEND ITS COUNTERCLAIMS

Adam W. Poff (43990) Chad S. C. Stover (#4919) YOUNG CONWAY STARGATT & TAYLOR, LLP The Brandywine Building
1000 West Street, 17tH Floor Wilmington, Delaware 19899 (302) 571-6642 Neil F. Greenblul'x1 Michael J. Fink Neal Goldberg

GREENBLUM & BERNSTEIN , P.L.C. 1950 Roland Clarke Place
Reston, Virginia 20191 (703) 716-1191 Attorneys for Plaintiff Voith Paper GrnzbH & Co. KG

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TABLE OF CONTENTS Page TABLE OF AUTHORITIES .................................................................................................... i NATURE AND STAGE OF PROCEEDINGS ....................................................................... 2 STATEMENT OF FACTS
A. The Parties ' Allegations Are Limited to the Patents-in- Suit .................................................................................................. 4 No pending dispute relating to the claims of the Unasserted Patents ................................................. .......................................... 4 1. Voith has not asserted the Unasserted Patents

B.

against JohnsonFoils ............................................................................ 4
2. The Unasserted Patents contain claims different from the claims of the Patents- in-Suit ................................................. 5 Voith' s discovery- limited definition of "Accused Product" does not constitute a threat to assert any claim of the Unasserted Patents ........................................................... 5

3.

C.

JohnsonFoils ' Unexplained Delay in Requesting Amendment ....................... 6 1. JohnsonFoils was aware that the Unasserted Patents are related to the Patents - in-Suit prior to filing its original counterclaims .......................................................................... 6 JohnsonFoils repeatedly demonstrated its awareness of the Unasserted Patents throughout the subsequent months, but did nothing to raise the issue in this case until the last day to file this Motion .......................................................................... 6 Johnson.Foils asserted the declaratory judgment claims at issue in its Motion to Amend in a separate action but continued to avoid raising those claims in this action ......................... 7 Finally, on the last possible date permitted by the Scheduling Order for amending pleadings, JohnsonFolls requested that claims identical to the DJ claims raised in its DJ Action be added to this case .................................................. 7

2.

3.

4.

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D.

Undue Prejudice to Voith Resulting from JollnsonFoils' Unexplained Delay ........................................................................................... 7 1. If allowed, JohnsonFoils ' amendments would leave no time for further discovery relating to Joln sonFoils'

new claims ............ ............................................................................... 7
?. If allowed, JohnsonFoils' amendments would leave no time for Voith to address the construction of the claims of the Unasserted Patents in its Markman Brief ................................. 8

SUMMARY OF ARGUMENT ............................................................................................... 8

ARGUMENT ......................................................................................................................... 10 1. JOHNSONFOILS' MOTION TO AMEND SHOULD BE DENIED AS FUTILE BECAUSE THE PROPOSED NEW COUNTERCLAIMS RELATE TO UNASSERTED PATENTS FOR WHICH THERE IS NO DECLARATORY JUDGMENT JURISDICTION ............................................................................................ 12
A. The Proposed New Counterclaims Relate to Patents That Voith Has Never Asserted , or Threatened to Assert, Against JohnsonFoils ......................................... 1.

12

The claims of the Patents-in - Suit have different scope from the claims of the Unasserted Patents subject to JohnsonFoils' new counterclaims .......................... 12
Voith 's use of abroad definition of "Accused Product" expressly limited to the context of Voith's discovery requests does not amount to an allegation that the Unasserted Patents

2.

are infringed ........................................................................... 12 3. JohnsonFoils' Further Assertion that Voith's First Set of Interrogatories Directly Alleged Infringement of the Unasserted Patents is False .................... 13 JohnsonFoils ' sole remaining basis for declaratory judgment jurisdiction, that the Unasserted Patents

4.

are related to the Patents-in-Suit, is insufficient .................... 14
B. JohnsonFoils ' Argument That Its Proposed Counterclaims Are Not Futile Blatantly Mischaracterizes its Counterclaims ........... 14

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11.

JOHNSONFOILS' MOTION TO AMEND SHOULD BE DENIED BECAUSE JOHNSONFOILS' UNEXPLAINED DELAY PREJUDICES VOITH .................................................................... 15
A. Joi-msonFoils knew of every ground now relied upon to support its proposed counterclaims prior to filing its original Answer and Counterclaim on August 13, 2007 .................... 15 1. Voith served its discovery requests containing the discovery- limited definition of Accused Product at issue on July 26, 2007, prior to JohnsonFoils' Answer and Counterclaims .................................................... 16 JohnsonFoils was also aware of the Unasserted Patents prior to filing its original Answer and Counterclaims ........................................................................ 16

2.

B.

Subsequent to Filing Its Original CounterClaims, JohnsonFoils Continued to Delay Moving to Amend Its CounterClaims Without Any Justification .................................... 17
JohnsonFoiIs ' Motion to Amend Should be Denied Because JohnsonFoils ' Delay is Undue and is Likely

C.

the Result of Dilatory Motives ........................................................... 18 D. JohnsonFoils ' Unduly Delayed Motion to Amend Prejudices Voith ................................................................................ 20

III.

JOHNSONFOILS' MOTION TO AMEND SHOULD BE DENIED EVEN IF JOHNSONFOILS INTENDS AT SOME FUTURE TIME TO MOVE FOR CONSOLIDATION OF ITS SEPARATELY FILED ACTION RELATING TO THE UNASSERTED PATENTS ........................................................................... 21

CONCLUSION ...................................................................................................................... 23

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TABLE OF AUTHORITIES Page Cases
Barkaitskie v. Indian River School Dist., 951 F. Supp. 519 (D. Del. 1996) ............................................................................................... 11 Clopay Coip. v. Newell Co., Ite., 527 F.Supp. 733 (D. Del. 1981) ................................................................................................ 22 DRR L.L.C. v. Sears, Roebuck & Co., 171 F.R.D. 162 (D. Del. 1997) ................................................................................................. 11 Foman i,. Davis, 371 U.S. 178 (1962) ............................................................................................................ 10,11 Forest Labs, Inc. v. Abbott Labs., 239 RM 1305 (Fed. Cir. 2001) ................................................................................................ 12 In re Burlington Coat Factory See. Litig., 114 F.3d 1410 (3d Cir. 1997) ................................................................................................... 10 Jackson v. Batik of Haivaii, 902 F.2d 1385 (9th Cir. 1990) .................................................................................................. 19 La Chemise La Coste v. Alligator Co., Ittc., 60 F.R.D. 164 (D. Del. 1973) ................................................................................................... 22 -AlledImmune, Inc. v. Genentech, Iite., 127 S.Ct. 764 (2007) ........................ ................................................................................... 10

]4fliller Prods Co., Inc. v. Veltek Assoc. Inc., 218 F.R.D. 425 (D. Del. 2003) ................................................................................................. 11 Sandisk Coip, v. STMicroelectronics, Inc., 480 F.3d 1372 (Fed. Cir. 2007) ................................................................................................ 10 Sierra Club v. Union Oil Co. of California, 813 F.2d 1480 (9th Cir. 1987), vacated on other grounds by Union Oil Co. of California v. Sierra Club, 485 U.S. 931 (1988) .................................................................................................................. 19 Teva Pharnts. USA, Inc. v. Novartis Pharms. Corp., 482 F.3d 1330 (Fed. Cir. 2007) ................................................................................................ 10 Rules Federal Rule of Civil Procedure 13 ................................................................................................ 1 Federal Rule of Civil Procedure 13(a) .......................................................................................... 17 Federal Rule of Civil Procedure 15(a) .......................................................................................... 10 Federal Rule of Civil Procedure 16(b) ............................................................................................ 2 Federal Rule of Civil Procedure 42(a) .......................................................................................... 22

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Other Authorities
9 Wright & Miller, Federal Practice

and Procedure: Civil § 2383 ..................................................................................................... ??

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Plaintiff Voith Paper GmbH & Co. KG ("Voith") hereby opposes JohnsonFolls, h>c.'s ("JohnsonFoils") Motion to Amend its Counterclaims (JohnsonFoils' "Motion to Amend") to include new declaratory judgment counterclaims of invalidity and noninfringement against Voith's United States Patents Nos. 5,389,205 ("the '206 patent"), 5,853,544 ("the '544 patent"), and 5,500,091 ("the '091 patent) (collectively, the "Unasserted Patents"). A tactical move almost surely calculated to delay these proceedings and impose undue burdens on Voith, JohnsonFoils' proposed amendment, if allowed, would more than double the number of patents at issue in this case to include three patents that Voith never asserted, or even threatened to assert, against JohnsonFoils. JohnsonFoils does not contend that Voith threatened enforcement of the Unasserted Patents, but grounds its new counterclaims on its assertion that the Unasserted Patents share "subject matter" with the Patents-in-Suit. This vague allegation of shared subject matter does nothing to rebut the presumption that the claims of the Unasserted Patents-even though generally directed to paper forming-have scope different from any claim asserted, or threatened to be asserted, against JohnsonFoils. Among other reasons, JohnsonFoils' proposed amendment should thus be denied as futile for failing to recite sufficient grounds for this Court's exercise of declaratory judgment jurisdiction. Moreover, without exception, each purported ground for relating the Unasserted Patents to this case was known to JohnsonFoils prior to JohnsonFoils' filing of its first responsive pleading on August 13, 2007. Assuming the truth of JohnsonFoils' claim that the Unasserted Patents share subject matter with the Patents-in-Suit sufficient to support declaratory judgment jurisdiction, JohnsonFoils offers no excuse for its delay from the time it was required, pursuant to Fed. R. Civ. P. 13, to assert any known counterclaims in August, 2007, to the December 21 date of its Motion to Amend. JohnsonFoils' dilatory amendment prejudices Voith because

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JohnsonFoils' unexplained delay practically ensures that claims relating to the three Unasserted Patents will not be added prior to the parties' Markman Brief submission deadline of January 16, 2008. In addition, JohnsonFoils' new counterclaims will not be added prior to the last day for filing a timely discovery request under the Scheduling Order. JohnsonFoils' delay fitrther prejudices Voith by requiring Voith to repeat a costly search of its files for information and documents relevant to JohnsonFoils' new claims. For the foregoing reasons, and as explained more fully below, JohnsonFoils Motion to Amend should be denied.

NATURE AND STAGE OF PROCEEDINGS
This is a patent infringement action. The Complaint, asserting United States Patent Nos. 5,718,805 ("the '805 patent") and 5,972,168 ("the '168 patent") (collectively, "the Patents-inSuit") against JohnsonFoiIs, Inc., was filed by Voith on April 27, 2007, against the Defendant JohnsonFoils. See Complaint, D.I. 1. Voith's first served discovery requests on JohnsonFoils on July 26, 2007. After requesting and obtaining several unopposed extensions of time, JohnsonFoils filed its answer, affirmative defenses, and counterclaims, on August 13, 2007. See "Defendant, Jol-iriSonFoils, Inc.'s Answer, Affirmative Defenses, and Counterclaims to Plaintiff, Voith Paper GnbH & Co. KG's Complaint," (JohnsonFoiIs's "Answer, Defenses, and CounterClaims") D.I. 19. Voith replied to the Counterclaims on September 5, 2007. See "Voith's Answer to Defendant's Co unterCl aims," D.I. 31. On August 1, 2007, a scheduling conference pursuant to Fed. R. Civ. P. 16(b) was held. A Scheduling Order was entered on August 3, 2007, ordering that the "[e]xchange and completion of contention interrogatories, identification of fact witnesses and document

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production shall be commenced so as to be completed by February 15, 2008." Rule 16(b) Scheduling Order, "Scheduling Order," D.T. 17. On August 16, 2007, JohnsonFoils served seven (7) deposition notices before written discovery had even begun. JohnsonFoils tiled a "Motion for Summary Judgment That U.S. Patents 5,718,805 and 5,972,168 are Invalid," on August 22, 2007. D.I.25. JohnsonFoils withdrew that motion on August 24, 2007. See JohnsonFoils's Notice of Motion to Withdraw its

Motion for Summary Judgment, dated August 24, 2007, D.I.26.
JohnsonFoils filed its "Defendant's Motion to Stay the Proceedings Pending Reexamination of the Patents in Suit or in the Alternative For Leave to File a Motion for Summary Judgment Prior to August 20, 2005 That U.S. Patents 5,718,805 and 5, 972,168 are Invalid" on August 28, 2007. (JohnsonFoils' "Motion for Stay") D.T. 28. Voith filed its response on September 17, 2007. D.1. 33. JohnsonFoils' Motion is currently pending and no hearing date has been set. Both parties have served discovery requests and their respective objections and responses to discovery requests. Voith filed its "Motion to Compel Defendant JollnsonFoils, Inc. to Provide Information Requested in Voith's First and Second Sets of Interrogatories and to Produce Documents Responsive to Voith's First and Second Requests for Documents" on November 9, 2007. D.T. 43 ("Voith's Motion to Compel"). JoluisonFoils' "Opposition to [Voith's Motion to Compel]" was filed on November 28, 2007. D.I. 46. Voith filed its "Reply to JohnsonFoils' Opposition to Voith's Motion to Compel" on December 3, 2007, D.I.48. The Court issued an Oral Order on December 6, 2007, cancelling the scheduled December 7 Motion Day hearing and stating that the Court would rule based on the parties' written submission.

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JohnsonFoils filed its Motion to Compel on December 17, 2007. Voith filed its Motion for a Protective Order on December 18, 2007. Briefing on both Motions is expected to be complete by Wednesday, January 16, 2008. Briefs for a Markman Hearing scheduled for January 30, 2008, are due on January 16, 2008. STATEMENT OF FACTS A. The Parties' Allegations Are Limited to the Patents-in-Suit

Voith's Complaint alleges that JohnsonFoils has infringed Voith's '16 8 patent and '805 patent. See Complaint,D.I. 1. Voith's complaint contains no reference to other patents, such as the '544 patent, the '091 patent, and the '206 patent. Id. JOhnsonFoils hied its Answer and Counterclaims on August 13, 2007. ("Answer and Counterclaims") D.I. 19. JohnsonFoils' Counterclaims make no reference to any Voith patent claim other than the claims of the '805 patent and the '168 patent. Id. JohnsonFoils' Answer and Counterclaims further alleges no facts relating to any threat, perceived or actual, to JOhnsonFOils based on any Voith patent claim other than the claims of Voith's '168 and '805 patents. Id. B. No pending dispute relating to the claims of the Unasserted Patents
1. Voith has not asserted the Unasserted Patents against JohnsonFoils Voith has never asserted, or threatened to assert, any claim of the Unasserted Patents against JohnsonFoils. See Complaint, D.I. 1. JohnsonFoils has not alleged that Voith ever threatened to enforce the Unasserted Patents against JohnsonFoils. See Motion to Amend.

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2.

The Unasserted Patents contain claims different from the claims of the Patents-in-Suit.

Although related to the Patents-in-Suit, the Unasserted Patents contain claims that are different from the claims of the Patents-in-Suit. See '168 patent, Cols. 7-10 (claims), Exh. 1; '805 patent, Cols. 8-12 (claims), Exh. 2; '544 patent, Cols. 8-10 (claims), Exh. 3; `091 patent, (claims), Exh. 4; '206 patent, Cols. 8-10 (claims), Exh. 5. Apart from a generalized claim that the Unasserted Patents "concern the same subject matter," Motion to Amend at pp. 3-4, and 6, JohnsonFoils' Motion to Amend states no facts to support its allegation that its products are threatened by the claims of the Unasserted Patents. 3. Voith' s discovery-limited definition of "Accused Product" does not constitute a threat to assert any claim of the Unasserted Patents.

On July 26, Voith served its First Set of Requests for Documents and its First Set of Interrogatories (collectively, Voith's "First Discovery Requests"), each including definitions of teens that were expressly limited to the context of the discovery requests. See First Set of Interrogatories (Definitions), Exh. 6; First Set of Document Requests (Definitions), Exh. 7. Voith's First Discovery Requests include a definition of the term "Accused Product" which states "as used herein, Accused Product means a twin wire foriner that has resiliently mounted blades." See First Set of Interrogatories, at p. 5; First Set of Document Requests (incorporating the definitions of the First Set of Interrogatories) (emphasis supplied). The definitions of terms in Voith's discovery requests are expressly limited to the purposes of discovery. Id.
JohnsonFolls subsequently o bjected to Voith 's

discovery-limited definition of "Accused

Product":

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JohnsonFoils objects to Voith's Interrogatories as its definition of the terns "Accused Products" is vague and unclear, and to the extent that any such definition refers to products that are irrelevant to the subject matter of the present suit. Defendant JoluisonFoils' Responses to Voith's First Set of Interrogatories, at p. ("JohnsonFoils' Objections"). C. JohnsonFoils' Unexplained Delay in Requesting Amendment. 1. JohnsonFoils was aware that the Unasserted Patents are related to the Patents-in -Suit prior to filing its original counterclaims.

JohnsonFoils was at least aware of the Unasserted Patents and their relationship to the Patents-in-Suit prior to filing its original counterclaims on August 13, 2007. See '168 patent, Col. 1:4-14 (expressly citing the '206 patent and the '091 patent); '805 patent , Col. 1:4-11; '544 patent, Col . 1:4-13 (expressly identifying the parent ' 805 patent, '206 patent, and '091 patent). JohnsonFoils was also aware of Voith's discovery-limited definition of "Accused Product" well before filing its original counterclaims on August 13, 2007. See Voith' s First Set of Interrogatories , served July 26, 2007, at p. 2. 2. JohnsonFoils repeatedly demonstrated its awareness of the Unasserted Patents throughout the subsequent months, but did nothing to raise the issue in this case until the last day to file this Motion.

JohnsonFoils expressly discussed the relationship between Unasserted Patents and the Patents-in-Suit in its Memorandum of Law in Support of Defendant's Motion for Summary Judgment That [the Patents-in-Suit] are Irivalid ("Summary Judgment Motion"), filed August 22, 2007. See Summary Judgment Motion, at p. 29, D.I. 25. JohnsonFoils filed requests for reexamination of the Unasserted Patents with the United States Patent and Trademark Office on November 16, 2007.

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3.

JohnsonFoils asserted the declaratory j udgment claims at issue in its Motion to Amend in a separate action but continued to avoid raising those claims in this action.

JohnsonFoils filed a Declaratory Judgment Action on November 27, 2007. JohnsonFoils' Complaint, Exh. G to JohnsonFoils' Motion to Amend (JohnsonFoils' "DJ Action") seeking a declaration that the Unasserted Patents were invalid and not infringed. The DJ Action makes no mention of any intent to raise those claims in this action. Id. 4. Finally, on the last possible date permitted by the Scheduling Order for amending pleadings , JohnsonFoils requested that claims identical to the DJ claims raised in its DJ Action be added to this case.

The allegations in JohnsonFoiIs' DJ Action-identical to the claims in JolmsonFoils' Motion to Amend-were raised in this case for the first time on December 21, 2007, the last possible day for requesting amendments. See Scheduling Order,'[ 5, D.I. 17. The Scheduling Order states that "All motions to amend the pleadings shall be filed on or before December 21, 2007." Id. D. Undue Prejudice to Voith Resulting from JohnsonFoils ' Unexplained Delay 1. If allowed, JohnsonFoils' amendments would leave no time for further discovery relating to JohnsonFoils ' new claims.

The last possible day for timely serving document requests or interrogatories is January 16, 2008, well before the likely completion of the briefing on JohnsonFoils' Motion to Amend, and well ahead of any decision. See Scheduling Order, D.T. 17 (discovery to be conducted so as to be completed by February 15, 2008).

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2.

If allowed , JohnsonFoils' amendments would leave no time for Voith to address the construction of the claims of the Unasserted Patents in its Markman Brief.

Briefs relating to the Markman claim construction Hearing are due to be filed on Wednesday, January lb, 2008, well before the likely completion of briefing on JohnsonFoils' Motion to Amend. Scheduling Order, 115, D.I. 17. SUMMARY OF ARGUMENT
1. JollllsonFolls ' Motion to Amend to add new counterclaims of noninfringement

and invalidity relating to the '091 , ' 544, and ' 206 patents ("Unasserted Patents ") should be denied as futile because JohnsonFoils has failed to allege facts sufficient to support declaratory judgment jurisdiction . Voith has never asserted the Unasserted Patents against JohnsonFoils, or even threatened to do so. Therefore, there is no justiciable dispute between Voith and JohnsonFoils relating to the Unasserted Patents. JohnsonFoils ' assertion that the Unasserted Patents are directed to the "same subject matter" as the Patents-in-Suit is insufficient because it fails to rebut the legal presumption that each claim of the Unasserted Patents has different scope from any claim of the Patents-in-Suit. As an additional ground of futility, this Court should decline to accept j urisdiction over claims directed to the Unasserted Patents on discretionary grounds given JohnsonFoils ' unexplained failure to assert claims relating to the Unasserted Patents in its first responsive pleading and its subsequent unexplained delay of over four months.

2.

JohnsonFoils ' Motion to Amend should also be denied because Johnsor&oils'

unexplained delay in filing its amendment is prejudicial to Voith. JohnsonFoils was aware of the Unasserted Patents prior to filing it Answer and Counterclaims on August 13, 2007. JohnsonFoils ' sole basis for supporting the existence ofa controversy with respect to the Unasserted Patents-that Voith defined, for the purposes of its discovery requests, the term

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Accused Product, generally to include any paper former with resiliently mounted blades-was also known to JohnsonFoils prior to filing its Answer and Counterclaims. JohnsonFoils also filed a separate action asserting the identical declaratory judgment counterclaims now sought to be added by amendment on November 27, 2007, but delayed filing its Motion to Amend until nearly a month later on December 21, 2007-the last possible day. 3. JohnsonFoils' unexplained four month delay in requesting the addition of

declaratory judgment counterclaims relating to the Unasserted Patents is prejudicial to Voith because 1) if the Unasserted Patents are added, there will be no time under the current Scheduling Order to serve timely discovery requests relating to the Unasserted Patents, 2) if the Unasserted Patents are added, the time for submitting a timely Markman Brief which addresses the claims of the Unasserted Patents will have passed, and 3) if the Unasserted Patents are added, Voith will be forced to incur the additional burden of duplicating its search through Voith's files to include the subject matter of the Unasserted Patents prior to the fast-approaching close of discovery on February 15, 2008. Because of JolmsonFoils' unexplained four month delay, the additional burdens imposed on Voith by permitting the Proposed Amendment are undue. 4. JOluisonFoils' Motion to Amend should also be denied because-as evidenced by

Johnson.Foils' otherwise unexplained delay and the fact that JohnsonFoils has never been threatened with enforcement of the Unasserted Patents-the amendment has been proposed for the improper purpose of delaying these proceedings and needlessly increasing the cost of litigation. 5. JohnsonFoils' Motion to Amend should be denied notwithstanding the possibility

that JohnsoiToils may at some time in the future seek to consolidate its separately filed action relating to the Unasserted Patents with this action. Because JohnsonFoils has failed to adduce

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any ground sufficient to support declaratory judgment jurisdiction for claims relating to the Unasserted Patents, the possibility that the separately filed claims will survive to support a Motion for Consolidation is speculative. In addition, the likely disruption of this action resulting from JolunsonFoils' undue delay in raising the proposed new counterclaims and the likely prejudice to Voith weighs against consolidation. ARGUMENT JohnsonFoils' Motion to Amend to add declaratory judgment counterclaims of noninfringement and invalidity relating to the Unasserted Patents should be denied because Voith has never asserted, or threatened to assert, the Unasserted Patents against JohnsonFoils. Consequently, there is no basis for 7ohnsonFoils' invocation of declaratory judgment jurisdiction and adding these counterclaims would be futile. See Medlnumme, Inc. v. Genentech, I12C., 127 S.Ct. 764, 771 (2007) (alleged dispute must be of sufficient immediacy and reality to warrant declaratory relief); Teva Pharms. USA, Inc. v. Novartis Pharnrs. Corp., 482 F.3d 1330, 1337-38 (Fed. Cir. 2007) (declaratory plaintiff must demonstrate standing, including a definite and concrete injury-in-fact, and that the issue for which declaratory relief is sought must be ripe for judicial determination); Sandisk Carp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1378 (Fed. Cir. 2007). Although requests to amend the pleadings pursuant to Fed. R. Civ. P. 15(a) ("Rule 15") are liberally granted, leave to amend is properly denied where the proposed claims would not survive a motion to dismiss. See Fornan v. Davis, 371 U.S. 178, 182 (1952) (futility of amendment is grounds for denying leave to amend pursuant to Rule 15(a)); In re Burlington Coat Factory Sec. Litig., 114 F.3d 1410, 1434 (3d Cir. 1997) (same); lllfassarsky v. General

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.Motors Co1P., 706 F.2d 111, 125 (3d Cir.1983) (court may properly deny leave to amend if the claims as amended would not survive a motion to dismiss).] Moreover, JohnsonFoils knew of every fact relating to the Unasserted Patents it now cites to support its proposed declaratory judgment counterclaims of noninfringement and invalidity prior to filing its original counterclaims over four months ago. JohnsonFoils' unexplained delay prejudices Voith since, as explained below, the proposed amendment would likely delay this action and increase Voith's litigation costs. See DRR LL, C. v. Sears, Roebuck & Co., 171 F.R.D. 162, 167 (D. Del. 1997) (a movant who offers no adequate explanation for its delay will nonnally be denied leave to amend). Because JolmsonFoils' undue delay prejudices Voith, JohnsonFoils' request to add its declaratory judgment counterclaims relating to the Unasserted Patents is properly denied. See Foman, 371 U.S. at 182 (amendment pursuant to Rule 15(a) is properly denied where the amendment is unduly delayed to the prejudice of the nonmoving party); Bar Icauskie v. Indian River School Dist., 951 F. Supp. 519, 527 (D. Del. 1996) (For the purpose of Federal Rule of Civil Procedure 15(a), prejudice "concerns only the prejudice resulting from the fact of adding new claims at a late date.") General allegations that claims relating to new patents or concern similar subject matter are insufficient to negate the prejudice resulting from an unduly delayed Motion to Amend. See Miller Prods Co., Inc. v. Veltek Assoc. Inc., 218 F.R.D. 425, 426-27 (D. Del. 2003) (denying leave to amend to include claims to an additional patent where delay was unexplained despite purported overlap in subject matter).

1

Since Voith has served its Answer to JohnsonFoils' originally filed counterclaims, Rule 15(a) requires JohnsonFoils to obtain leave of the court to amend its counterclaims.

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I.

JOHNSONFOILS' MOTION TO AMEND SHOULD BE DENIED AS FUTILE BECAUSE THE PROPOSED NEW COUNTERCLAIMS RELATE TO UNASSERTED PATENTS FOR WHICH THERE IS NO DECLARATORY JUDGMENT JURISDICTION A. The Proposed New Counterclaims Relate to Patents That Voith Has Never Asserted, or Threatened to Assert , Against JohnsonFoils The claims of the Patents-in-Suit have different scope from the claims of the Unasserted Patents subject to JohnsonFoils ' new counterclaims. JolmsonFoils' Motion to Amend should be denied as futile because it improperly seeks to

add, after an unexplained delay of over four months, declaratory judgment counterclaims relating to patents that have never been asserted, or threatened to be asserted, against JohnsonFoils. JohnsonFoils' attempt to gloss over the differences between the unasserted '091, '706, and '544 patents (the "Unasserted Patents"), does nothing to rebut the presumption that the claims of the Unasserted Patents have different scope from the claims of the Patents-in-Suit. See Forest Labs, Inc. v. Abbott Labs., 239 F.3d 1305, 1310 (Fed. Cir. 2001) ("Where claims use different terms, those differences are presumed to reflect a difference in the scope of the claims.") (citing Tandon Corp. v. United States Intl Trade Conulr'11, 831 F.2d 1017, 1023 (Fed. Cir. 1987)). Because of the difference in scope between the claims of the Patents-in-Suit and the claims of the Unasserted Patent, Voith's assertion of the Patents-in-Suit does nothing to justify the exercise of declaratory judgment jurisdiction over JohnsonFoils' new counterclaims. 2. Voith' s use of a broad definition of "Accused Product" expressly limited to the context of Voith 's discovery requests does not amount to an allegation that the Unasserted Patents are infringed.

JoimsonFoils does not even allege that Voith has ever threatened to enforce the Unasserted Patents against JohnsonFoils, instead erroneously resting its claim to the existence of a dispute as to the Unasserted Patents on a definition taken out of context from Voith's First Set of Interrogatories to JohnsonFoils. In Voith's First Set of Interrogatories, Voith stated that the

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terln "Accused Product" as used in Voith's discovery requests includes paper formers modified by JohnsonFoils to include one or more resiliently supported blades. See Voith's First Set of Interrogatories, at p. 5. Specifically, Voith provided the following definition. The terms "Accused Product" and "Accused Products" as used herein means each and every paper forming machine which Defendant has modified, or contracted to modify, to utilize one or more resiliently supported blades. Id. (emphasis supplied)- This definition, expressly limited to Voith's discovery requests with the qualifier "as used herein" plainly has no proper application outside Voith's requests for discovery. In accordance with the Federal Rules of Civil Procedure, Voith chose to define its discovery requests broadly in order to obtain both relevant evidence and inforlnation intended to lead to the discovery of relevant evidence. Given the express limitation of the definition to discovery requests, this definition cannot be fairly read as an infringement allegation of any sort. Furthermore, having expressly discussed the numerous other claim limitations of the Patents-in-Suit-besides resiliently supported blades-in its various pleadings, JohnsonFoils carmot have reasonably believed that Voith's discovery-limited definition of Accused Product amounted to such a broad infringement allegation. JohnsonFoils' apparent claim to the contrary is disingenuous. 3. JohnsonFoils' Further Assertion that Voith's First Set of Interrogatories Directly Alleged Infringement of the Unasserted Patents is False.

JolmsonFoils' further claim that Voith's definition of Accused Product relates to the infringement of the Unasserted Patents results from a further blatant mischaracterization of Voith's First Set of Interrogatories. See Motion to Amend at 6. Specifically, JohnsonFoils states that "Voith asserted that any JohnsonFoils' twin wire former products that utilize resiliently mounted blades ... infringe Voith's Twin Wire Former Patents." Id. But the term "Voith's

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Twin Wire Former Patents" is defined by JohnsonFoils to include both the Patents-in-Suit and the Unasserted Patents. Id. at p. 3. Voith's First Set of Interrogatories contains no reference to the term "Voith's Twin Wire Former Patents" and nowhere mentions the Unasserted Patents. JohnsonFoils' apparent claim to the contrary is plainly incorrect. 4. JohnsonFoils ' sole remaining basis for declaratory judgment jurisdiction , that the Unasserted Patents are related to the Patents-inSuit, is insufficient.

Because Voith never asserted, or threatened to assert, the Unasserted Patents against JohnsonFoils, JohnsonFoils sole claim for declaratory judgment jurisdiction is the unremarkable fact that the Unasserted Patents share a common parent application with the Patents-in-Suit. Because of this shared parentage, both the Patents-in-Suit and the Unasserted Patents have a common specification. However, the measure of a patent dispute----the most important consideration for assessing the existence, or nonexistence, of declaratory judgment jurisdictionis the scope of a patent's claims, not its specification. B. .IohnsonFoils ' Argument That Its Proposed Counterclaims Are Not Futile Blatantly Mis characterizes its Counterclaims.

Lacking any evidence of a dispute relating to the Unasserted Patents sufficient to support declaratory judgment jurisdiction, JohnsonFoils defends its proposed counterclaims by mischaracterizing the proposed counterclaims as "essentially identical to JohnsonFoils' existing counterclaims." Motion to Amend, at p. 7. Yet, it is beyond dispute that the proposed new counterclaims relate to different patent claims-the claims of the Unasserted Patents-than the claims of the Patents-in-Suit. In view of this essential difference, JohnsonFoils' assertion that its proposed new noninfiingement and invalidity counterclaims are "essentially identical" to its original counterclaims is inexplicable.

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The importance of the difference between JohnsonFoils' original and Johnsonl~oils' newly proposed counterclaims is underscored by JohnsonFoils' further outlandish contention that its rtew counterclaims cannot be deemed futile because Voith's didn't move to dismiss JolmsonFoils' original cotenterclaifns. Motion to Amend, at p. 7. Plainly, Voith did not challenge the existence of declaratory judgment jurisdiction for JohnsonFoils' original counterclaims because those counterclaims related to patents which Voith has actually asserted against JohnsonFoils: The Patents-in-Suit. Voith's reason for not challenging the existence of declaratory judgment jurisdiction for JohnsonFoils' original counterclaims has no applicability to the Unasserted Patents challenged by JohnsonFoils' newly proposed counterclaims because Voith has never asserted, or threatened to assert, the Unasserted Patents against JohnsonFoils. JohnsonFoils' assertion to the contrary is plainly incorrect. II. JOHNSONFOILS' MOTION TO AMEND SHOULD BE DENIED BECAUSE JOHNSONFOILS' UNEXPLAINED DELAY PREJUDICES VOITH A. JohnsonFoils knew of every ground now relied upon to support its proposed counterclaims prior to filing its original Answer and Counterclaim on August 13, 2007

Apart from the futility of Johnsonl=oils' proposed new counterclaims resulting from the absence of any factual basis for a dispute relating to the Unasserted Patents, JohnsonFoils' unexplained delay and the resulting prejudice to Voith provides an independent ground for denying JohnsonFoils' Motion to Amend. Significantly, no asserted ground for JohnsonFoils' new counterclaims was unknown to JohnsonFoils prior to the filing of JohnsonFoils' original Answer and Counterclaims on August 13, 2007.

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1.

Voith served its discovery requests containing the discovery-limited definition of Accused Product at issue on July 26, 2007, prior to JohnsonFoils ' Answer and Counterclaims.

Although, as explained above, Voith's broad discovery-limited definition of Accused Product is not an infringement allegation, JohnsonFoils knew of this definition well before it filed its original Answer and Counterclaims on August 13, 2007. In fact, Voith's First Set of Interrogatories, containing the discovery-limited definition of "Accused Product" at issue, was served on July 26, 2007. Notwithstanding this fact, JohnsonFoils surprisingly relies on the following assertion to "reasonably explain" JohnsonFoils' delay: After JohnsonFoils filed its [Answer and Counterclaims] Voith asserted that any JohnsonFoils twin wire former products that utilize resiliently mounted blades is an "Accused Product," infringe (sic) Voith's Twin Wire Former Patents. Motion to Amend, at pp. 5-6 (citing Voith's First Set of Interrogatories). First, in light of the fact that Voith provided the discovery-limited definition of Accused Product to JohnsonFoils well before JohnsonFoils filed its Answer and Counterclaims, JohnsonFoils' "reasonable explanation" is false, and explains nothing. Second, JohnsonFoils' Motion to Amend defines "Voith's Twin Wire Fortner Patents" to include both the Patents-in-Suit and the Unasserted Patents. See Motion to Amend at p. 3. JohnsonFoils' definition of "Voith's Twin Wire Fonner Patents"--or any reference to the Unasserted Patents for that matter--occurs nowhere in the cited Voith's First Set of Interrogatories. Consequently, JohnsonFoils' claim that Voith asserted an hin about the Unasserted Patents in Voith's First Set of Interrogatories is also incorrect, and does nothing to explain JohnsonFoils' delay. 2. JohnsonFoils was also aware of the Unasserted Patents prior to filing its original Answer and Counterclaims.

Although, as explained above, JohnsonFoils is incorrect to assume that patents sharing a common parent patent application have claims with identical scope, the family relationship

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between the Unasserted Patents and the Patents-in-Suit was also known to JohnsonFoils prior to filing its original Answer and Counterclaims. Both the '168 patent and the '805 patent expressly state that they result from continuations of the parent '206 patent and '091 patents. See '805 Patent, Col. 1:4-11; '168 Patent, Col. 1:4-14. Thus, at least two of the Unasserted Patents, the '206 patent and the '091 patent were known to JohnsonFoils prior to the filing date of its original counterclaims. Moreover, taking JohnsonFoils at its word that Voith's definition of Accused Product, served on July 26, 2007, implicated all family members of the parent '206 patent, JohnsonFoils could have easily identified the '544 patent, which expressly recites that it is a continuation of the '805 patent, and is similarly descended from the '491 patent and the '206 patent. See '544 patent, Col. 1:4-12. To the extent that JohnsonFoils considers these Unasserted Patents to give rise to a declaratory judgment claim due to any shared "subject matter," JohnsonFoils should have asserted those counterclaims with its original counterclaims on August 13, 2007. See Fed. R. Civ. P. 13(a) (directing the defendant assert in its responsive pleading any counterclaim arising out of the same transaction or occurrence that is within the subject matter of the plaintiffs claim). B. Subsequent to Filing Its Original CounterClaims , JohnsonFoils Continued to Delay Moving to Amend Its CounterClaims Without Any Justification.

Subsequent to filing its original counterclaims, JohnsonFoils demonstrated its continuing
awareness of the Unasserted Patents, but made no move to amend its counterclaims. For example, JohnsonFoils' Memorandum of Law in Support of Defendant's Motion for Summary Judgment that [the Patents-in-Suit] are Invalid, C JohnsonFoils' Summary Judgment Motion"), filed on August 22, 2007, just nine days after filing its original counterclaims, expressly

discusses the '206 patent and the '091 patent. See JohnsonFoils' Motion for Summary Judgment, pp. 11-14, D.I. 25.

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In addition, Voith served its Second Set of Interrogatories containing the very same definition of Accused Product cited by JohnsonFoils as the basis for its proposed new declaratory judgment counterclaims, on August 16, 2007. See Voith's Second Set of Interrogatories, at p. 6. Yet, even then, JohnsonFoils made no attempt to amend its counterclaims. Months later, on November 16, 2007, JohnsonFoils filed reexamination requests for each of the Unasserted Patents, but still made no attempt to amend its Counterclaims in this action. See JohnsonFoils' Complaint, 1115, Exh. G to JohnsonFoils' Motion to Amend. Finally, JohnsonFoils filed a separate declaratory judgment action on November 27, 2007, asserting the identical claims now proposed to be added to this action. Id. Yet, not until December 21, 2007, the last day permitted by the Scheduling Order, and several weeks after filing its DJ Action, did JohnsonFoils finally request leave to amend its original counterclaims to include new declaratory judgment counterclaims relating to the Unasserted Patents.? C. JohnsonFoils ' Motion to Amend Should be Denied Because JohnsonFoils' Delay is Undue and is Likely the Result of Dilatory Motives.

JohnsonFoils' delay in seeking amendment is undue because, as explained in detail above, every fact cited by JohnsonFoils to support the existence of declaratory judgment jurisdiction for the newly proposed counterclaims was known to JohnsonFoils prior to the time it filed its original Counterclaims on August 13, 2007. Taking JolmsonFoils at its word that the cited facts were a sufficient basis for asserting the newly proposed counterclaims, the delay from

2

Aware that it has no valid explanation for delaying its request to amend its original counterclaims, JohnsonFozls incredibly suggests that Volth's insistence that service of the complaint in JohnsonFoils' separate action be made in accordance with the Hague Convention excuses JohnsonFoils' delay. Motion to Amend, p. 6-7. JohnsonFoils fails to explain why it filed a separate action instead of moving to amend its counterclaims in the first instance. The likely reason is that JohnsonFoils was aware that it had no excuse for its delay, and hoped to avoid the issue by filing a separate action and presenting this Court with a fait accompli in the form of a Motion for Consolidation.

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August 13, 2007, to December 21, 2007, is completely unexplained. Moreover, given the unexplained delay of over four months , JoluzsonFoils is not excused by the mere fact that its December 21 requested amendment technically falls within the December 21 deadline set by the Court' s Scheduling Order. The relevant inquiry for determining whether a delay is undue is "whether the moving party knew or should have known the facts and theories raised by the amendment in its original pleading ." See Jackson v. Bank of Hawaii, 902 F.2d 1385, 1388 (9th Cir. 1990) (motions to amend made within the time allowed by a scheduling order are nonetheless unduly delayed if the movant knew the facts supporting the amendment at the time of the movant ' s original pleading); Sierra Club v. Union Oil Co. of California, 813 F. 2d 1480, 1492-93 (9th Cir. 1987), vacated on other grounds by Union Oil Co. of Califoriiia v. Sierra Club, 485 U.S. 931 (1988 ). As explained in detail above, JohnsonFoils knew all the facts cited to support its Motion to Amend well before filing its original counterclaims on August 13, 2007. JohnsonFoils ' failure to provide any explanation for its delay strongly suggests that its Amendment is offered for a dilatory motive. JohnsonFoils has made it plain that it would like to delay this action pending the outcome of the pending reexamination of the Patents-in-Suit. See Motion to Stay, D.I 27. By waiting until the last possible day before technically filing its Motion to Amend within the time set by the Scheduling Order, JohnsonFoils has ensured that, if granted, its amendment will likely delay the scheduled January 30 Markman hearing and the close of document and interrogatory discovery on February 15.

Even if JohnsonFoils is correct that filing within the time provided by the scheduling order is "prima facie reasonable," Motion to Amend, at p. 5, any purported "prima facie" reasonableness is amply rebutted by JohnsonFoils' unexplained delay and the likely effect its delay will have on other deadlines specified in the Scheduling Order if its amendment is allowed.

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D.

JohnsonFoils' Unduly Delayed Motion to Amend Prejudices Voith

JohnsonFoils' undue delay in filing its Motion to Amend over four months after the time it first knew the facts cited as the basis for its proposed amendment prejudices Voith by disrupting the case schedule and requiring costly duplication of discovery. JohnsonFoils' contention that "Voith has almost two months until February 15, 2008, to serve additional interrogatories and document requests" mischaracterizes the Scheduling Order. See Motion to Amend, at p. 8. In fact, the Scheduling Order requires that document and interrogatory discovery be completed by February 15, 2008. Thus, any additional document requests or interrogatories relating to the proposed claims would have to be made by January 16, 2008, one day from the filing of this Opposition, and a week before briefing on JohnsonFoils' Motion is likely to be completed. JohnsonFoils attempt to brush off these consequences of its undue delay by reference to Voith's broad discovery requests neglects the fact that Jo11nsonFoils stated in its objections to Voith's discovery requests that it would not respond to Voith's discovery requests to the extent that the definition of Accused Product is not relevant to the Patents-in-Suit. See JohnsonFoils' Objections, at p. 2. In addition, with briefing on JohnsonFoils' unduly delayed Motion to Amend under way, Voith's Markman Brief, currently due January 16, 2008, could not possibly address issues raised in the distinct clahns of the Unasserted Patents. Also, having already invested significant resources in searching Voith's documents for documents either responsive to JohnsonFoils' document requests or supporting Voith's claims and defenses, that effort will have to be repeated to include issues relating to the three Unasserted Patents. Such documents include at least documents sufficient to demonstrate the

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incorporation of the invention as claimed in the Unasserted Patents in commercially successful machines to support objective considerations of nonobviousness. Such prejudice is undue because JohnsonFoils' delay is unexplained and inexcusable. Had JohnsonFoils asserted its newly proposed declaratory judgment counterclaims when it first knew the facts now cited to support them prior to filing its original Answer and Counterclaims on August 13, 2008-Voith would have had the opportunity to either have the claims dismissed for lack of declaratory judgment jurisdiction or to at least conduct one pass through Voith's documents in search of relevant documents, instead of two. Finally, JohnsonFoils' failure to cite any facts supporting declaratory judgment jurisdiction over the Unasserted Patents makes it likely that, if granted, JohnsonFoils' new counterclaims will require another full round of briefing on a Motion to Dismiss. JohnsonFoils' unexplained delay is thus likely to significantly disrupt the pre-trial schedule. Because of the limited time remaining in the term of the Patents-in-Suit, such delays would unfairly benefit JohnsonFoils at Voith's expense. III. JOHNSONFOILS' MOTION TO AMEND SHOULD BE DENIED EVEN IF JOHNSONFOILS INTENDS AT SOME FUTURE TIME TO MOVE FOR CONSOLIDATION OF ITS SEPARATELY FILED ACTION RELATING TO THE UNASSERTED PATENTS JohnsonFoilS' Motion to Amend should be denied even if JohnsonFoils intends, at some time in the future, to seek addition of its declaratory judgment counterclaims with this action by filing a Motion for Consolidation. As explained above, JohnsonFoils' new declaratory judgment counterclaims are futile for failing to identify a dispute relating to the Unasserted Patents. As a result, the possibility that JohnsonFoils' claims in the separately filed action will survive a motion to dismiss in a form sufficient to justify consolidation of the two actions is purely speculative.

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Even if JohnsonFoils' Unasserted Patent declaratory claims survive a motion to dismiss, the economies of trying any common factual issues is more than offset by the likely prejudice to Voith resulting from JohnsonFoils' undue delay. Under Fed. R. Civ. P. 42(a), separate actions involving common questions of law or fact may, in the discretion of the Court, be consolidated for trial. See La Chemise La Coste v. Alligator Co., Inc., 60 F.R.D. 164, 175 (D. Del. 1973). Although such common issues are a prerequisite to consolidation, the mere existence of these issues does not require a joint trial as a matter of course. Instead the Court must balance the savings of time and effort gained through consolidation against the inconvenience, delay or expense that might result from simultaneous disposition of the separate actions. See Clopay Corp. v. Newell Co., Inc., 527 F.Supp. 733, 735-36 (D. Del. 1981) (denying Motion to Consolidate actions involving identical patent asserted against different infringers); 9 Wright & Miller, Federal Practice and Procedure: Civil § 2383 at 259-60. Because of JohnsonFoils' delay in asserting its newly proposed counterclaims, it is unlikely that the new claims can be incorporated into the current action without substantial disruption, including at least a full round of briefing on jurisdictional issues and redoing document and interrogatory discovery. However, to the extent that the claims of the separately filed action survive a Motion to Dismiss, any economy from consolidating aspects of the two actions are best addressed by a timely filed Motion for Partial Consolidation.

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CONCLUSION For the foregoing reasons, Voith respectfully requests that JohnsonFoils' Motion to Amend be denied. Respectfully submitted, YOUNG CONWAY STARGATT & TAYLOR, LLP

Dated. January 14, 2008 Adam W -4'6ff (#3990) Chad S.C. Stover (#4919) The Brandywine Building 1000 West Street, 17th Floor Wilmington, Delaware 19899 (302) 571-6642 Neil F. Greenblum Michael J. Fink Neal Goldberg GREENBLUM & BERNSTEIN , P.L.C. 1950 Roland Clarke Place Reston, Virginia 20191 (703) 716-1191 Attorneys fot· Plaintiff Voith Papei- GnIbH & Co. KG

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CERTIFICATE OF SERVICE
1, Adam W. Poff, hereby certify that on January 14, 2008, 1 caused to be electronically filed a true and correct copy of the foregoing document with the Clerk of the Court using CM/ECF, which will send notification that such filing is available for viewing and downloading to the following counsel of record: George H. Seitz, 111 , Esquire Patricia P. McGonigle, Esquire SEITZ, VAN OGTROP & GREEN, P.A. 222 Delaware Avenue Suite 1500 P.O. Box 68 Wilmington, DE 19899

1 fizrther certify that on January 14, 2008, 1 caused a copy of the foregoing document to be served by hand delivery on the above-listed counsel of record and on the following nonregistered participants in the manner indicated:

BY E-MAIL
Anthony S. Volpe, Esquire Ryan W. O'Donnell, Esquire Volpe and Koenig United Plaza, Suite 1600 30 South 17`t' Street, Philadelphia, PA 19103

YOUNG CONAWAY STARGATT & TAYLOR, LLP /s/Adan? tiv. Poff
Adam W. Poff (No. 3990) Chad S.C. Stover (No. 4919) The Brandywine Building 1000 West Street, 17th Floor Wilmington, Delaware 19801 (302) 571-6600
[email protected]

Attorneys for Voith Paper GmbH & Co. KG

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Exhibit 1

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Hill Hill

U9005972168A

1111111111111111111111111111111
51972,1.68 Oct. 26, 1999

United States Patent pi
Egelhof et al.
[54] TWIN WIIRE+, FORMER
[75]

[I1] 045)

Patent Nmubeir: Date of Patent :

3,5827467
3,726,758 3,772145

611971 Gussafson cl al. ._ .................. 161GU3
4?1973 Parker et et. 162rm 1111973 Nolbohm ................................ 162/273

Inventors: Dieter F,l elhof; Klaus Henseler, both of Heidenheim, Germany; Werner Kade, Neenah, Wis.; Albrecht
Melnecke, Heidenheim , Germany;

Wilhelm Wanke, lleidenheim, Germany; Hans-Jurgen Wulz, Heidenheim, Germany; Rudolf Buck,
deceased, late of Hcidealicint, Germany, by Elsie Buck, legal representative [73]

3,994,774 1111976 Maine et al ................. .......... 4,609,43$ 911986 Tissari ..................................... 4,769,111 911988 Nevalainen et al. ................ 4,917,766 411990 Koivuranla et al. .. ......... 4 ,925,531 5/1990 Koski ... ................................... 4 ,999,087 3.11991 Ebibara ct al, ......................... 5 ,389 , 206 211995 Huck et of ..............................

1621301 162,'301 162J351 1621301 162001 1621301 1621301

Assignee: Volth Sulzer Papfertechulk Patent GmbH , Germany Appl. No.: 091161,138 Filed: Sep. 25, 1998 Related U.S. Application Data

FOREIGN PATENT DOCUMENTS
3138133 3321406 9/1981 6?1983 Germany Cxenuany .

[21]
[22]

Primary F_xruniner--Karen M. Hastings Attorney, Agem, or Finn- Ostrolenk, Faber, Gerh 4r Soifm, I.I_P [57] ABSTRACT

[62]

Continualiou of application No. 091023,435, Feb. 13, 1998, which is a continuation of application No, 081556,769, Nov. 2, 1995, Pal. No. 5,718,805, which is a continuation of gplicntion No, t181M,948, Aug. 8, 1994, Pat. No. 5,500, 1, which is a continuation of application No. 081055,918, Apr. 29, 1993, Pat. No. 5,389,206, which is a continuation of application No. 071773,965, abandoned, Wd as application No. PCT/EP90A1313, Scp. 8, 1990. ......................................... D21F 1/00 Int. C1.6 U.S. Cl...__ ............... ................ _...... 1621203; 162/301 Meld of Search ..................................... 162/2(13, 300,

[51] [52] [581

162/301, 303, 348, 352 References Cited U.S. PATENT DOCUMENTS
3,056,719 1011962 Webster .................................. 152[203

[561

In a tvtn-wire former for the production of a paper web, two wire belts (11 and 12) wgethcr form a w4a-wire zone which is divided into three sections (1, H and 111). In the first section (1) the two wires (11,12) travel over a carved forming shoo (16). They form there a wedge-shaped inlet slot (15) with which a headbox (10) is directly associated. In the second section 61), several resiliently supported strips (27) rest against the lower wire (11) and between each of said strips (27) a rigidly mounted strip (28) rests against the upper wire (12). In the third section (111) both wiry bells (11, 12) pass over another carved forming shoe (23). 8 Claims, 2 Drawing Sheets

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U.S.

Patent

Oct. 26, 1999

Sheet 1 of 2

5,9729168

x

F ii g^j

Y^ r

--4 r

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J.S. Patent

Oct. 25,1999

Sheet 2 of 2

5,972,165

Fici.S

1

1

11

'.I

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5,972,168
1 TWIN WIRE FORMER RP.LATED APPLICATIONS
This is a continuing application of, and hereby incorporates by reference the entire disclosure of, application Sor. No. 09/023,435, filed Feb. 13, 1998, allowed, which is a continuing application of Ser. No. 081556,769, filed Nov 2, 1995, now Pat. No. 5,718,805, which is a continuing application of Ser. No. 081286,946, filed Aug. 8,1994, now Pat. No. 5,500,091, which is a continuing application of Ser. No. 081055,918, filed Apr. 29, 199;3, now Pat. No. 5,389,206, which is a continuing application of Ser. No. 07x773,965, filed Nov. 12, 1991, now abandoned, filed as PCl'/EP90/ 01313 on Sept. 8, 1990, now abandoned. 2 stationary curved forming shoe developed in accordance with the aforementioned British Patent 1 12.5 906 counteracts the danger of reflocculation. This is true also of the drainage strips arranged in the BritLMi Patent in the second 5 section of tho twin-wire zone. Nevertbeless, the danger of reflocculation is not completely eliminated in the arrangement according to said British Patent. Since the number of drainage strips there is very small, a large part of the web-farming takes place in the region of the following to flat-suction boxes. 't'hey, to be sure, are of high drainage capacity so that the web-forming can be completed in the region of the last flat suction boxes (i.e. the so-called main drainage zone, in which a part of the fiber material is still in the form of a suspension, terminates in the region of the flat

BACKGROUND OF THE INVENTION
The present invention relates to a twin-wire former for the production of a fiber web, in particular a paper web, from a fiber suspension. The invention proceeds from the basis of the twin-wire former known from British Patent 1125 906. The features indicated in the patent include a twin wire former for producing a fiber web and particularly a paper web from a fiber suspensivn.'ilvo web forming wire belts, in the form of endless loops, travel together to form a twin wire zonc. The web travels between and along the path of the wire belts through the twin wire zone. The twin wire 7nne has three sections and the elements in those three sections are described below. The patent describes features that state, in other words, that the forming of the fiber web from the pulp suspension fed from the headbox takes place exclusively between two wire belts. Thus, there is no so-called single-wire pre-drainage path. In a first section of the twin-wire 7A,)ne, the two wire belts together form a wedgeshaped inlet slot; a jet of pulp slurry corning from the headbox discharges into-it. The jet strikes the two wire belts at a place where they pass over a curved drainage element; in the case of the aforementioned British patent, this is a stationary, curved forming shoe. Its curved wire guide surface is formed of a plurality of strips with drainages slots between them. This forming shoe is followed (in a second sectioa of the twin-wire zone) by a drainage strip arranged in the other wire loop and, behind the latter, by a drainage strip arranged in the first-mentioned wire loop (and formed by a first suction box). Finally, in a third section of the twin-wire -zone there are a plurality of stationary drainage elements developed as flat suction boxes. It has been attempted for decades with twin·wira farmers of the known type to produce fiber webs (in particular, paper webs) of the highest possible quality with relatively high operating speeds. !Due to the forming of the web between two wires, the result, in particular, is obtained that the final fiber web has substantially the same properties on both sides (little "two-sidedness' }. however; it is difficult to obtain as uniform as possible a distribution of the fibers in the final fiber web. In other words, It is difficult to obtain a good "formation" siuce while the web is formed, there is always the danger that fibers will agglomerate and form flocculaLions. Therefore, it is attempted to form a jet of pulp slurry which pulp slurry is as frog as possible of, flocculations in the headbox (for instaxim, by means of a turbulence producer). It is, furthermore, endeavored so to influence the drainage of the fiber suspension during the web-forming that "reflocculation" is avoided as far as possible or that, after possible flocculation, a "defloccu]aLion" (i.e. a breaking up of the floceulations) takes place. It is known that a curved drainage element arranged in the first section of the twin-wire zono and, in particular, a

15 suction box). The flat suction boxes, however, are not able,
to avoid reflocculation or to break up tlocculations which have already occurred. In order to control these last-mentioned difficulties, a web forming device known under the name of "Duaformer 20 D" has bccn developed (TAPPI Proceedings 1988 annual meeting, pages 75 to 80). This known web-forming device is part of a twin-wire former which has a single-wire pre-drainage zone. In the twin-wire zone there are provided, in the one wire loop, a plurality of strips which arc fixed in =5 position but adjustably supported, namely, on the bottom of a suction box which drains in upward directio