Free Answer to Complaint - District Court of Delaware - Delaware

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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

DEFENDANT, JOHNSONFOILS, INC.'S, ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO PLAINTIFF, VOITH PAPER GMBH & CO. KG'S, COMPLAINT Defendant, JohnsonFoils, Inc. ("JohnsonFoils"), by and through its

undersigned counsel, hereby responds to the allegations in Plaintiff, Voith Paper GmbH & Co. KG's ("Voith"), Complaint as follows, and asserts the following Affirmative Defenses and Counterclaims. 1. 2. Denied. JohnsonFoils is without knowledge or information sufficient to form a

belief as to the truth of the allegations of this paragraph and denies the same. 3. 4. 5. 6. 7. Admitted. Denied. Denied. Denied. Denied as a conclusion of law; however, it is admitted that

JohnsonFoils is a Delaware corporation.

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8. 9. required. 10. required. 11. required. 12. required. 13. required. 14.

Denied. Denied as conclusions of law to which no responsive pleading is

Denied as conclusions of law to which no responsive pleading is

Denied as conclusions of law to which no responsive pleading is

Denied as conclusions of law to which no responsive pleading is

Denied as conclusions of law to which no responsive pleading is

Denied as stated. It is admitted that formation is a part of the paper

making process. 15. JohnsonFoils is without knowledge or information sufficient to form a

belief as to the truth of the allegations of this paragraph and denies the same. 16. JohnsonFoils is without knowledge or information sufficient to form a

belief as to the truth of the allegations of this paragraph and denies the same. 17. required. 18. To the extent the paragraph is understood, it is denied; however, it is Denied as conclusions of law to which no responsive pleading is

admitted that JohnsonFoils is engaged in designing and building improved drainage devices.

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19. 20. 21.

Denied. Denied. Paragraph 21 of Voith's Complaint is a transitional paragraph to

which no response is required. 22. 23. 24. 25. 26. Denied. Denied. Denied. Denied. Denied.

JohnsonFoils further denies that Voith is entitled to any of the relief requested in its Prayer for Relief. AFFIRMATIVE DEFENSES First Affirmative Defense Voith fails to state a claim upon which relief can be granted. Second Affirmative Defense JohnsonFoils has not infringed any claim of the Patents-in-Suit, either literally or under the doctrine of equivalents. Third Affirmative Defense Each of the Patents-in-Suit is invalid, unenforceable, and void for failure to comply with the provisions of 35 U.S.C. § 101 et seq.

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Fourth Affirmative Defense Voith is barred by the doctrine of Prosecution History Estoppel from presenting a claim interpretation necessary to find infringement of any claim of the Patents-in-Suit. Fifth Affirmative Defense Voith has misused each of the Patents-in-Suit which renders each of them unenforceable, and Voith is precluded from obtaining any relief in this action due to its misuse. Sixth Affirmative Defense Voith's claims are barred, in whole or in part, by the doctrine of equitable estoppel. Seventh Affirmative Defense Voith's claims are barred, in whole or in part, by the doctrine of waiver. Eighth Affirmative Defense Voith's claims are barred, in whole or in part, by the statute of limitations. Ninth Affirmative Defense Voith's claims are barred, in whole or in part, by the doctrine of laches.

COUNTERCLAIMS Defendant and Counterclaimant, JohnsonFoils, Inc. ("JohnsonFoils"), hereby asserts the following counterclaims against Voith:

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Parties 1. Upon information and belief, Plaintiff and Counterclaim Defendant,

Voith Paper GmbH & Co. KG's ("Voith"), is a corporation organized and existing under the laws of Germany, with its principal place of business at Sankt Poeltener Strasse 43, Heidenheim, Germany 89522. 2. Defendant and Counterclaimant, JohnsonFoils, is a corporation

organized and existing under the laws of the State of Delaware. 3. Defendant and Counterclaimant, JohnsonFoils has its principal place

of business located at 40 Progress Avenue, Springfield, MA 01104. Jurisdiction and Venue 4. Voith has invoked the jurisdiction and venue of this Court by filing its

Complaint arising out of the same subject matter as JohnsonFoils' counterclaims. 5. 2202. 6. Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400. Background 7. JohnsonFoils is in the business of researching, designing and Jurisdiction arises under 28 U.S.C. §§ 1331, 1338, 1367, 2201 and

developing drainage equipment, cleaning systems, ceramic products and technology for the management of water removal and sheet formation on pulp and paper machines.

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8.

On April 27, 2007, Voith filed a Complaint alleging that JohnsonFoils

infringed the Patents-in-Suit. 9. U.S. Patent Nos. 5,718,805 (`805 Patent) and 5,972,168 (`168 Patent),

(collectively hereinafter the "Patents-in-Suit") were attached as Exhibits "1" and "2" to Voith's Complaint. First Counterclaim Declaratory Judgment of Non-Infringement of the Patents-in-Suit 10. The allegations in Paragraphs 1-9 of JohnsonFoils' Counterclaims are

incorporated by reference as though fully set forth herein. 11. An actual controversy requiring a declaration of rights by this Court

exists under the Patent Act between JohnsonFoils and Voith concerning the alleged infringement and the invalidity of the Patents-in-Suit. 12. JohnsonFoils' counterclaim for declaratory relief is brought pursuant

to the Declaratory Judgment Act, 28 U.S.C. §§ 2201, et seq. and 35 U.S.C. §§ 1, et

seq.
13. JohnsonFoils has not and does not infringe, literally or under the

doctrine of equivalents, any claim of the Patents-in-Suit. 14. JohnsonFoils has not induced and is not inducing infringement of any

claim of the Patents-in-Suit. 15. JohnsonFoils' has not in the past and is not now contributing to the

infringement of any claim of the Patents-in-Suit. 16. JohnsonFoils is entitled to a declaratory judgment that it has not in

the past infringed and is not now infringing any claim of the Patents-in-Suit. -6-

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Second Counterclaim Declaratory Judgment that the Patents-in-Suit Are Invalid 17. The allegations in Paragraphs 1-16 of JohnsonFoils' Counterclaims are

incorporated by reference as though fully set forth herein. 18. 19. 20. 21. All claims of the Patents-in-Suit are invalid under 35 U.S.C. § 102. All claims of the Patents-in-Suit are invalid under 35 U.S.C. § 103. All claims of the Patents-in-Suit are invalid under 35 U.S.C. § 112. JohnsonFoils is entitled to a declaratory judgment that the all claims

of the Patents-in-Suit are invalid, unenforceable, and void pursuant to 35 U.S.C. §§ 101 et seq. Third Counterclaim Patent Misuse 22. JohnsonFoils incorporates paragraphs 1-21 of its Counterclaims as if

fully set forth herein. 23. On information and belief, Voith has misused the Patents-in-Suit by

filing the present action against JohnsonFoils for patent infringement when Voith knew or should have known that JohnsonFoils was not infringing any permissible, reasonable or valid interpretation of any claim of the Patents-in-Suit. 24. On information and belief, Voith's impermissible, unreasonable or

invalid interpretations of the claims of the Patents-in-Suit are interposed for the purposes of this suit and its anti-competitive effect.

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25.

On information and belief, Voith knew or should have known of

existing prior art that was not before the United States Patent and Trademark Office during the prosecution of the applications leading to the Patents-in-Suit. 26. On information and belief, that existing prior art is such that Voith

knew or should have known that the claims of the Patents-is-Suit were not patentable. 27. On information and belief, that existing prior art is such that Voith

now knows or should have known that its interpretations of the claims of the Patents-in-Suit render them invalid. 28. On information and belief, Voith knowingly ignored the existing prior

art so it could advance its impermissible, unreasonable or invalid interpretations of the claims of the Patents-in-Suit and use them as a jurisdictional basis for this sham suit and its anti-competitive effects. 29. Voith's assertion of impermissible, unreasonable or invalid

interpretations of the claims of the Patents-in-Suit is having an anti-competitive effect on JohnsonFoils. RELIEF WHEREFORE, JohnsonFoils requests that this Court enter a judgment that: (a) Dismisses Voith's Complaint with prejudice and denies all of the relief

it requested therein;

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(b)

Voith and all persons in active concert or participation with it are

enjoined from threatening or charging JohnsonFoils, its suppliers, customers or distributors with infringement of U.S. Patent Nos. 5,718,805 and 5,972,168; (c) JohnsonFoils its suppliers, customers and distributors are not liable

for any infringement of U.S. Patent Nos. 5,718,805 and 5,972,168; (d) That U.S. Patent Nos. 5,718,805 and 5,972,168 are invalid,

unenforceable, and void pursuant to 35 U.S.C. §§ 101 et seq.; (e) (f) That Voith is not entitled to costs pursuant to 35 U.S.C. § 288; Awards JohnsonFoils damages arising out of Voith's misuse of U.S.

Patent Nos. 5,718,805 and 5,972,168; (g) This is an exceptional case entitling JohnsonFoils to an award of its

attorneys' fees and costs pursuant to 35 U.S.C. § 285; (h) That JohnsonFoils is entitled to prejudgment interest and post-

judgment interest on the above damages awards; and (i) Such other and further relief as this Court may deem appropriate.

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JURY TRIAL DEMAND A trial by jury is demanded.

Dated: August 13, 2007

Respectfully submitted, Seitz, Van Ogtrop & Green, P.A.

/s/ George H. Seitz, III

_________________________________ George H. Seitz, III (DE #667) [email protected] Patricia P. McGonigle (DE #3126) [email protected] 222 Delaware Avenue, Suite 1500 P.O. Box 68 Wilmington, DE 19801 (302) 888-7602

Anthony S. Volpe Randolph J. Huis Ryan W. O'Donnell Volpe and Koenig, P.C. United Plaza, Suite 1600 30 South 17th Street Philadelphia, PA 19103 (215) 568-6400

Attorneys for Defendant JohnsonFoils, Inc.

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CERTIFICATE OF SERVICE I, Patricia P. McGonigle, Esquire, hereby certify that on this 13th day of August 2007, I electronically filed the foregoing pleading:
DEFENDANT, JOHNSONFOILS, INC.'S, ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO PLAINTIFF, VOITH PAPER GMBH & CO. KG'S, COMPLAINT

with the Clerk of Court using CM/ECF which will send notification of such filing to all counsel of record.

/s/ Patricia P. McGonigle _________________________________ Patricia P. McGonigle (ID No. 3126) [email protected]