Free Answer to Complaint - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

CVS CORPORATION, Plaintiff, v.
RONALD A. KATZ TECHNOLOGY LICENSING, L.P. Defendant.

) ) ) ) ) ) ) ) ) ) )

C.A. No. 06-00775 GMS

JURY TRIAL DEMANDED

RONALD A. KATZ TECHNOLOGY LICENSING, L.P.'S ANSWER AND COUNTERCLAIMS TO CVS CORPORATION'S COMPLAINT FOR DECLARATORY JUDGMENT OF PATENT INVALIDITY, NONINFRINGEMENT, AND UNENFORCEABILITY Defendant Ronald A. Katz Technology Licensing, L.P. ("Katz Technology Licensing") hereby sets forth its Answer and Counterclaims to the Complaint for Declaratory Judgment of Patent Invalidity, Noninfringement and Unenforceability filed by plaintiff CVS Corporation ("CVS") as follows: THE PARTIES 1. Upon information and belief, Katz Technology Licensing admits that CVS

is a Delaware corporation with its offices at One CVS Drive, Woonsocket, Rhode Island 02895, as alleged in Paragraph 1. 2. Katz Technology Licensing admits that it is a limited partnership

organized under the laws of the State of California with principal place of business at 9220 Sunset Boulevard, Suite 315, Los Angeles, California 90069. JURISDICTION AND VENUE 3. § 1, et seq. Katz Technology Licensing admits that this action arises under 35 U.S.C.

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4.

Katz Technology Licensing: (a) admits that this Court has subject matter

jurisdiction over this action under 28 U.S.C. §§ 1331 and 1338(a); (b) admits that CVS purports to bring its counterclaims for a declaratory judgment pursuant to 28 U.S.C. §§ 2201 and 2202 as alleged in Paragraph 4; and (c) denies the viability of plaintiff's request for declaratory judgment. Katz Technology Licensing denies the remaining allegations set forth in Paragraph 4. 5. Katz Technology Licensing admits that this Court has personal

jurisdiction over Katz Technology Licensing in this action. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 5. 6. 7. Katz Technology Licensing denies the allegations set forth in Paragraph 6. Katz Technology Licensing admits that it has sued multiple defendants in

five lawsuits filed in the District of Delaware on September 1, 2006. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 7. 8. 9. Katz Technology Licensing denies the allegations set forth in Paragraph 8. Katz Technology Licensing admits that certain companies that have

entered into licenses with Katz Technology Licensing or A2D, L.P. are Delaware corporations. Katz Technology Licensing denies the remaining allegations set forth in Paragraph 9. 10. Katz Technology Licensing admits that venue is proper in this judicial

district pursuant to 28 U.S.C. §§ 1391(b) and (c). BACKGROUND 11. Katz Technology Licensing lacks information or belief to answer the

allegations in Paragraph 11 and on that basis denies the allegations in that paragraph. 12. Katz Technology Licensing lacks information or belief to answer the

allegations in Paragraph 12 and on that basis denies the allegations in that paragraph. 13. Katz Technology Licensing lacks information or belief to answer the

allegations in Paragraph 13 and on that basis denies the allegations in that paragraph.

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14.

Katz Technology Licensing admits that its licensing arm, A2D, L.P.,

offered CVS a license under the Katz Technology Licensing patent portfolio. Katz Technology Licensing denies the remaining allegations set forth in Paragraph 14. 15. Katz Technology Licensing admits that it is the sole holder of the entire

right, title, and interest in the `021, `065, `120, `134, `150, `156, `223, `252, `285, `309, `360, `415, `551, `703, `707, `734, `762, `863, `893, `965, `968, and `984 patents (collectively "patents-in-suit"). 16. Katz Technology Licensing admits that it has initiated litigation against

companies other than CVS in which Katz Technology has alleged infringement of patents in the Katx Technology Licensing patent portfolio, including one or more of the patents-in-suit, in connection with call processing systems operated by or for those other companies. Technology Licensing denies the remaining allegations set forth in Paragraph 16. 17. Katz Technology Licensing admits it filed multiple lawsuits in 2005 and Katz

2006 in the Eastern District of Texas and the District of Delaware against companies other than CVS, that certain of those lawsuits were subsequently split into separate actions, and that certain of those actions are listed in Paragraph 17. 18. Katz Technology Licensing admits that in the actions listed in Paragraph

17 Katz Technology Licensing has alleged that defendants have infringed and/or are infringing one or more of the patents asserted in those actions. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 18. 19. Katz Technology Licensing admits that it has alleged in its complaint filed

in Ronald A. Katz Technology Licensing, L.P. v. Ahold, et al., Case No. 1:06-CV-00545-GMS, that defendants, including Eckerd Corporation, have infringed and/or are infringing one or more of the patents asserted in that action. Katz Technology Licensing lacks information or belief to answer the remaining allegations in Paragraph 19 and on that basis denies those allegations. 20. Katz Technology Licensing admits that it has asserted that Eckerd

Corporation has infringed and/or is infringing the `021, `065, `120, `150, `223, `252, `285, `309,

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`360, `415, `551, `703, `707, `734, `762, `863, `893, `965, `968, and `984 patents in the action captioned Ronald A. Katz Technology Licensing, L.P. v. Ahold, et al., Case No. 1:06-CV-00545GMS. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 20. 21. Katz Technology Licensing admits that A2D, L.P is the licensing arm of

Katz Technology Licensing. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 21. 22. Katz Technology Licensing admits that attorneys representing A2D, L.P. Katz

have engaged in written and oral communications with representatives of CVS. Technology Licensing denies any remaining allegations set forth in Paragraph 22. RAKTL'S Communications With CVS 2002 LETTER SENT TO CVS 23.

Katz Technology Licensing admits that its attorneys sent a letter to CVS

offering a license under Katz Technology Licensing's patent portfolio on September 3, 2002 ("the 2002 letter"). Paragraph 23. 24. Katz Technology Licensing admits that the 2002 letter stated: "Claims Katz Technology Licensing denies any remaining allegations set forth in

that have been of interest to other companies in the health services field include: [certain claims of the `309, `707, `156 and `551 patents]." Katz Technology Licensing denies any remaining allegations set forth in Paragraph 24. 25. Katz Technology Licensing admits that the 2002 letter to CVS stated:

"The breadth and scope of the claims in the portfolio were demonstrated in an infringement lawsuit brought by RAKTL in the United States District Court for the District of Eastern Pennsylvania. . . . The case settled in November 2000 with the defendant agreeing to purchase a license under the RAKTL patent portfolio." Katz Technology Licensing denies any remaining allegations set forth in Paragraph 25

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2003 PRESENTATION SHOWN TO CVS 26. Katz Technology Licensing admits that its attorneys met with CVS

representatives on April 29, 2003. Katz Technology Licensing further admits that during that meeting its attorneys used a PowerPoint presentation to provide information about Katz Technology Licensing's patent portfolio ("the 2003 presentation"). denies any remaining allegations set forth in Paragraph 26. 27. Katz Technology Licensing admits that the 2003 presentation included a Katz Technology Licensing

section entitled, "Examples of How CVS Corporation Uses RAKTL's Patented Technology." Katz Technology Licensing further admits that the 2003 presentation included examples based upon selected claims of the `156, `223, `551 and `707 patents. Katz Technology Licensing denies the remaining allegations set forth in Paragraph 27. 28. Katz Technology Licensing admits that the 2003 presentation included a

section entitled, "Examples of How CVS Corporation Uses RAKTL's Patented Technology." Katz Technology Licensing further admits that the 2003 presentation included comparisons of certain claims from the `156, `223, `551 and `707 patents to the CVS Pharmacy Rapid Refill Prescription Service and other CVS systems. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 28. 29. Katz Technology Licensing admits that the 2003 presentation stated that Developing and

"RAKTL And Its Licensing Arm, A2D, L.P., Have Been Successful In:

Patenting Key Technologies . . . Licensing Its Patents . . . Litigating, When Necessary, to Protect its Patent Rights." Katz Technology Licensing further admits that the 2003 presentation stated: "The Patents Have Been In Litigation Seven Times" and that "Two Cases Are Currently Pending." Katz Technology Licensing denies any remaining allegations set forth in

Paragraph 29. CVS' MEETINGS WITH KATZ'S ATTORNEYS 30. Katz Technology Licensing admits that its attorneys met with CVS

representatives on or about January 22, 2004 ("the 2004 meeting").

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31.

Katz Technology Licensing admits that representatives of CVS and

attorneys for Katz Technology Licensing engaged in a telephone conversation in January 2005 ("the January 2005 call"). 32. Katz Technology Licensing admits that representatives of CVS and

attorneys for Katz Technology Licensing engaged in a telephone conversation in June 2005 (referred to by CVS as "the July 2005 call"). 33. Katz Technology Licensing admits that its attorneys met with CVS

representatives on or about December 5, 2005 ("the 2005 meeting"). 34. Katz Technology Licensing admits that its attorneys met with CVS

representatives on or about July 17, 2006 ("the 2006 meeting"). 35. Katz Technology Licensing admits that its attorneys have communicated

with CVS representatives about Katz Technology Licensing's willingness to offer CVS a license under Katz Technology Licensing's patent portfolio and the need for such a license. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 35. 36. Katz Technology Licensing admits that its attorneys have communicated

with CVS representatives about Katz Technology Licensing's willingness to offer CVS a license under Katz Technology Licensing's patent portfolio and the need for such a license. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 36. 37. Katz Technology Licensing admits that its attorneys have communicated

with CVS representatives about Katz Technology Licensing's willingness to offer CVS a license under Katz Technology Licensing's patent portfolio and the need for such a license. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 37. 38. Katz Technology Licensing lacks information or belief to answer the

allegations in Paragraph 38, and on that basis denies the allegations in that paragraph. 39. Katz Technology Licensing admits that its attorneys have communicated

with CVS representatives subsequent to the 2006 meeting. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 39.

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40.

Katz Technology Licensing admits that (a) its attorneys have

communicated with a group of companies, including certain companies that offer pharmacy and prescription services, about those companies taking a license under Katz Technology Licensing's patent portfolio; and (b) CVS participated in a meeting between Katz Technology Licensing and that group of companies. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 40. 41. Katz Technology Licensing admits that in early 2006, CVS participated

with a group of companies ("the negotiating group") that were negotiating a license agreement with Katz Technology Licensing. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 41. 42. Katz Technology Licensing admits that its attorneys met with legal

representatives of CVS on or about November 30, 2006. Katz Technology Licensing lacks information or belief to answer the allegations in Paragraph 42 relating to CVS's understanding of the "tenor" of the meeting and on that basis denies them. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 42. 43. Katz Technology Licensing admits that on or about October 10, 2006,

CVS participated in a meeting with the negotiating group and Katz Technology Licensing. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 43. 44. Katz Technology Licensing lacks information or belief to answer the

allegations in Paragraph 44 and on that basis denies them. 45. Katz Technology Licensing admits that on September 1, 2006, it filed a

complaint against Ahold U.S.A., Inc., The Stop & Shop Supermarket Company LLC, Giant Food Stores, LLC, Giant Food LLC, Giant Food Inc. and Express Scripts, Inc. in the District of Delaware in Ronald A. Katz Technology Licensing, L.P. v. Ahold, et al., Case No. 1:06-CV00545-GMS. Katz Technology Licensing further admits that it amended its complaint on

October 25, 2006 to, among other things, add as defendants Rite Aid Corporation, Rite Aid of Delaware, Inc., The Jean Coutu Group (PJC) USA, Inc., Eckerd Corporation, Brooks Pharmacy,

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Inc., Maxi Drug, Inc. and Maxi Drug North, Inc. Katz Technology Licensing denies any remaining allegations in Paragraph 45. 46. Katz Technology Licensing lacks information or belief to answer the

allegations in Paragraph 46 and on that basis denies them. 47. Katz Technology Licensing lacks information or belief to answer the

allegations in the first sentence of Paragraph 47, and on that basis denies the allegations in that sentence. The allegations in the second sentence of Paragraph 47 are so vague and uncertain that Katz Technology Licensing lacks sufficient information or belief to answer the allegations in that sentence and on that basis denies them. 48. Katz Technology Licensing admits that an attorney representing CVS sent

a letter to an attorney representing Katz Technology Licensing on December 19, 2006, advising that CVS was terminating negotiations with Katz Technology Licensing. Katz Technology Licensing further admits has asserted certain of its patents against The Jean Coutu Group (PJC) USA, Inc. and others in an action captioned Ronald A. Katz Technology Licensing, L.P. v. Ahold, et al. Katz Technology Licensing lacks information or belief to answer the remaining allegations in Paragraph 48 and on that basis denies them. 49. Katz Technology Licensing admits that it has asserted the `021, `065,

`120, `150, `223, `252, `285, `309, `360, `415, `551, `703, `707, `734, `762, `863, `893, `965, `968, and `984 patents against The Jean Coutu Group (PJC) USA, Inc., Eckerd Corporation, Brooks Pharmacy, Inc., Maxi Drug, Inc. and Maxi Drug North, Inc. in Ronald A. Katz Technology Licensing, L.P. v. Ahold, et al., Case No. 1:06-CV-00545-GMS. 50. Katz Technology Licensing admits that it has asserted the `021, `120,

`134, `150, `223, `252, `285, `309, `551, `703, `707, `734, `863, `893, `968, and `984 patents against Rite Aid Corporation and Rite Aid of Delaware, Inc. in Ronald A. Katz Technology Licensing, L.P. v. Ahold, et al., Case No. 1:06-CV-00545-GMS. 51. Katz Technology Licensing lacks information or belief to answer the

allegations in Paragraph 51 and on that basis denies them.

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52.

Katz Technology Licensing lacks information or belief to answer the

allegations in Paragraph 52 and on that basis denies them. 2003 LETTER SENT TO J.C. PENNEY CORPORATION 53. Katz Technology Licensing admits that its attorneys sent a letter regarding

Katz Technology Licensing's patent portfolio to the J.C. Penney Corporation on or about June 24, 2003 ("the J.C. Penney letter"). Katz Technology Licensing lacks information or belief to answer the allegations in that second sentence of Paragraph 53 and on that basis denies them. Katz Technology Licensing denies any remaining allegations in Paragraph 53. 54. Katz Technology Licensing admits that Laurie Adams of Heller Ehrman

sent a letter to an attorney representing CVS on December 1, 2005 and that Ms. Adams enclosed a copy of the 2003 J.C. Penney letter with her 2005 letter to CVS. Katz Technology Licensing lacks information or belief to answer the remaining allegations in Paragraph 54 and on that basis denies them. 55. Katz Technology Licensing admits that the J.C. Penney letter stated:

"Claims that have been of interest to other companies that provide similar automated services include: [certain claims of the `707, `156, `863, `893, `547, `065, `965, `223 and `415 patents]." Katz Technology Licensing denies any remaining allegations in Paragraph 55. 56. Katz Technology Licensing admits that the J.C. Penney letter stated:

"This meeting would be designed to provide element-by-element examples of how exemplary RAKTL claims (which may not conform exactly to the list above) apply to J.C. Penney's operations." Katz Technology Licensing denies any remaining allegations in Paragraph 56. 57. Katz Technology Licensing admits that the J.C. Penney letter stated: "The

breadth and scope of the claims in the portfolio were demonstrated in an infringement lawsuit brought by RAKTL in the United States District Court for the District of Eastern Pennsylvania. . . . The case settled in November 2000 with the defendant agreeing to purchase a license under the RAKTL patent portfolio." Katz Technology Licensing denies any remaining allegations in Paragraph 57.

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ALLEGED INEQUITABLE CONDUCT 58. Paragraph 58. 59. response is required. 60. Paragraph 60. 61. Katz Technology Licensing admits that certain of the patents-in-suit claim Katz Technology Licensing denies the allegations set forth in The allegations in Paragraph 59 constitute legal conclusions to which no Katz Technology Licensing denies the allegations set forth in

priority from other patents and applications that, depending upon the patent, may include U.S. Patent Nos. 4,845,739 ("the `739 patent"); 5,014,298 ("the `298 patent"); 5,048,075 ("the `075 patent"); 5,073,929 ("the `929 patent"); 5,224,153 ("the `153 patent"); 5,359,645 ("the `645 patent"); 5,365,575 ("the `575 patent"); 6,016,344 ("the `344 patent") and U.S. Patent Application Nos. 06/753,299 ("the `299 application"); 07/640,337 ("the `337 application") and 07/342,506 ("the `506 application"). The term "relevant" as used in the first sentence of Paragraph 61 and the term "related" as used throughout Paragraph 61 are so vague and uncertain that Katz Technology Licensing lacks sufficient information or knowledge to respond and on that basis denies the remaining allegations in Paragraph 61. Further, to the extent the terms "relevant" and "inequitable conduct" are intended to allege legal relevance or the outcome of the complaint filed by CVS, the allegation constitutes a legal conclusion to which no response is required. Katz Technology Licensing denies the remaining allegations set forth in Paragraph 61. 62. Paragraph 62 Alleged Failure to Disclose Material Prior Art 63. Paragraph 63. Katz Technology Licensing denies all the allegations set forth in Katz Technology Licensing denies all the allegations set forth in

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THE BARGER PATENT 64. Katz Technology Licensing admits that on its face, U.S. Patent No.

4,071,698 ("the `698 patent") indicates that it was issued to Barger, Jr., et al. Katz Technology Licensing further admits that it had knowledge of the `698 patent in 1989. Katz Technology Licensing admits that the `698 patent was not disclosed during the prosecution of the `984, `739, `150, `298, `929, and `252 patents. allegations set forth in Paragraph 64. 65. Katz Technology Licensing admits that on its face, the `698 patent Katz Technology Licensing denies all the remaining

indicates that it was filed in the United States Patent and Trademark Office ("USPTO") on January 10, 1977. The remaining allegations in Paragraph 65 constitute legal conclusions to which no response is required. 66. Katz Technology Licensing admits that on its face, the `698 patent is titled

"Telephone System For Audio Demonstration And Marketing Of Goods Or Services." The term "material" in the first sentence of Paragraph 66 is so vague and uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent this term is intended to allege legal materiality, the

allegation constitutes a legal conclusion to which no response is required. As to the remaining allegations in Paragraph 66 relating to the system allegedly disclosed by the Barger patent, the `698 patent speaks for itself and no further response is required. 67. The allegations in Paragraph 67 relate to the system allegedly disclosed by

the Barger patent; Katz Technology Licensing responds that the `698 patent speaks for itself and no further response is required. 68. The terms "central features claimed" and "material" as used in the first

sentence of Paragraph 68 are so vague and uncertain that Katz Technology Licensing lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent the terms "central features" and "material" are intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required.

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The remaining allegations in Paragraph 68 relate to the system allegedly disclosed by the Barger patent; Katz Technology Licensing responds that the `698 patent speaks for itself and no further response is required. 69. Katz Technology Licensing admits that in Appeal No. 94-0834, the Board

of Patent Appeals and Interferences affirmed an Examiner's rejection of certain of Katz's pending claims in Application No. 07/640,337. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 69. 70. Katz Technology Licensing admits that the USPTO cited the Barger patent

in its Decision on Request for Reexamination, Control No. 90/008,057, dated July 27, 2006, relating to the `285 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 70. 71. Katz Technology Licensing admits that the USPTO cited the Barger patent

in its Decision on Request for Reexamination, Control No. 90/008,039, dated July 21, 2006, relating to the `551 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 71. 72. Katz Technology Licensing admits that the USPTO cited the Barger patent

in its Decision on Request for Reexamination, Control No. 90/008,051, dated July 21, 2006, relating to the `223 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 72. 73. Katz Technology Licensing admits that the USPTO cited the Barger patent

in its Decision on Request for Reexamination, Control No. 90/008,095, dated September 22, 2006, relating to the `863 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 73. 74. The terms "materiality" and "relevance" as used in the first sentence of

Paragraph 74 are so vague and uncertain that Katz Technology Licensing lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent those terms are intended to allege legal materiality or relevance, the

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allegation constitutes a legal conclusion to which no response is required. Katz Technology Licensing admits that the `698 patent was cited in a Supplementary European Search Report dated December 27, 1988 during the prosecution of PCT Application No. WO 87/00375. Katz Technology Licensing also admits that PCT Application No. WO 87/00375 claims priority to U.S. Patent Application No. 06/753,299. Katz Technology Licensing further admits that the Supplementary European Search Report identified the `698 patent as a "category x" document. The contents of that search report speak for themselves and the allegations relating to the report require no further response. Katz Technology Licensing admits that a copy of the search report was sent to Mr. Graham F. Coles. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 74. 75. Katz Technology Licensing admits that the patents-in-suit claim priority to

United States Patent Application No. 06/753,299, which was filed with the USPTO on July 10, 1985. The term "materiality" as used in the second sentence of Paragraph 75 is so vague and uncertain that Katz Technology Licensing lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent the term

"materiality" is intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 75. 76. Katz Technology Licensing admits that it is the owner of the `698 patent

by way of an assignment from First Data Resources, Inc. executed September 17, 1994. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 76. 77. Katz Technology Licensing admits that the `698 patent was not disclosed

during the prosecution of the `984, `739, `150, `298, `929, and `252 patents. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 77. 78. Katz Technology Licensing denies that the `698 patent was not disclosed

during the prosecution of the `285 patent. Katz Technology Licensing admits that the `698 patent was listed on an information disclosure statement dated September 20, 1994, filed in

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connection with U.S. Patent Application No. 08/047,241, which led to the issuance of the `285 patent. Katz Technology Licensing further admits that the `285 patent issued on September 27, 1994. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 78. 79. Katz Technology Licensing admits that the `984, `150 and `285 patents are

among the patents-in-suit. Katz Technology Licensing further admits that certain of the patentsin-suit claim priority from other patents and applications that, depending upon the patent, may include the `739, `150, `252, `285, `298, `929 and `984 patents. In connection with the

allegations in Paragraph 79, the terms "intentionally withheld," "intent to deceive," "beyond which Katz was entitled," "inequitable conduct," "unenforceable" and "related, material subject matter" are alleged legal conclusions to which no response is required. Licensing denies all remaining allegations set forth in Paragraph 79. 80. Paragraph 80. 81. Katz Technology Licensing admits that the `156 patent is among the Katz Technology Licensing denies all allegations set forth in Katz Technology

patents-in-suit. Katz Technology Licensing denies that the `156 patent claims priority from the `150 and `285 patents. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 81. 82. Katz Technology Licensing further admits that certain of the patents-in-

suit claim priority from other patents and applications that, depending upon the patent, may include the `739 patent. Katz Technology Licensing further admits that terminal disclaimers were filed during the prosecution of the `863, `551, `065 and `360 patents. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 82. 83. Katz Technology Licensing admits that the `965 patent is among the

patents-in-suit. Katz Technology Licensing further admits that the `965 patent claims priority from other patents and applications that include the `153 and `298 patents. The term "material" in the first sentence of Paragraph 83 is so vague and uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the remaining

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allegations in that sentence.

Further, to the extent that the terms "material" and/or

"unenforceable" are intended to allege legal materiality or unenforceability, the allegation constitutes a legal conclusion as to which no response is required. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 83. 84. Katz Technology Licensing admits that the `734, `120, and `223 patents

are among the patents-in-suit. Katz Technology Licensing further admits that the `120 and `223 patents claim priority from other patents and applications that include the `929, `984 and `252 patents and the `734 patent claims priority from the `984 and `252 patents. Katz Technology Licensing further admits that terminal disclaimers were filed during the prosecution of the `734, `120 and `223 patents. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 84. 85. Paragraph 85. THE DEBRUYN PATENT 86. Katz Technology Licensing admits that on its face, European Patent Katz Technology Licensing denies all allegations set forth in

No. 0032410 indicates that it was issued to DeBruyn. Katz Technology Licensing admits that European Patent No. 0032410 was not disclosed during the prosecution of the `150, `252, `285, `739, `929, and `984 patents. Katz Technology Licensing further admits that the patents-in-suit claim priority from other patents and applications that, depending upon the patent, may include the `150, `984, `252, `285, `739 or `929 patents. remaining allegations set forth in Paragraph 86. 87. Katz Technology Licensing admits that the European Patent Office The remaining Katz Technology Licensing denies all

published European Patent Specification EP0032410A1 on July 22, 1981.

allegations in Paragraph 87 constitute legal conclusions to which no response is required. 88. The term "material" in the first sentence of Paragraph 88 is so vague and

uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent this term is intended to allege

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legal materiality, the allegation constitutes a legal conclusion to which no response is required. The remaining allegations in Paragraph 88 relate to the system allegedly disclosed by European Patent No. 0032410; Katz Technology Licensing responds that European Patent No. 0032410 speaks for itself and no further response is required. 89. The allegations in Paragraph 89 relate to the system allegedly disclosed by

European Patent No. 0032410; Katz Technology Licensing responds that European Patent No. 0032410 speaks for itself and no further response is required. 90. The terms "relevant" and "material" in the first sentence of Paragraph 90

are so vague and uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent these terms are intended to allege legal relevance or materiality, the allegation constitutes a legal conclusion to which no response is required. The remaining allegations in Paragraph 90 relate to the system allegedly disclosed by European Patent No. 0032410; Katz Technology Licensing responds that European Patent No. 0032410 speaks for itself and no further response is required. 91. Katz Technology Licensing admits that Canadian Patent No. 1,162,336

was cited in the Order Granting Request for Reexamination for each of U.S. Patent Nos. 5,561,707 ("the `707 patent") and 5,255,309 ("the `309 patent"). Katz Technology Licensing further admits that the Director Initiated Order for Reexamination with respect to the `309 patent states: "In view of the teachings of Canadian Patent 1,162,336 to DeBruyn, a substantial new question of patentability is raised as to claim 23 of U.S. Patent No. 5,255,309, and a reexamination of all the patent claims as to the substantial new question of patentability is appropriate." Katz Technology Licensing further admits that the `707, `309, and `023 patents claim priority from, among other patents and applications, the `739 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 91. 92. Katz Technology Licensing admits that the non-final Office Action in Ex

Parte Reexamination (Application/Control Nos. 90/007,092 & 90/006,976), dated September 9, 2005, states that "Claims 23, 25-37, 41-43, 46, 50 and 51 are rejected under 35 U.S.C. 102(b) as

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being anticipated by Canadian Patent No. 1,162,336, DeBruyn . . . ."

Katz Technology

Licensing further admits that the non-final Office Action in Ex Parte Reexamination (Application/Control Nos. 90/007,092 & 90/006,976), dated September 9, 2005, rejected claims 1, 7-12, 14, 20, 24, 32, 38-42, 52-58 pursuant to 35 U.S.C. § 103(a) based in part or in whole on Canadian Patent No. 1,162,336. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 92. 93. The term "materiality" as used in the first sentence of Paragraph 93 is so

vague and uncertain that Katz Technology Licensing lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent the term "materiality" is intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required. Katz Technology Licensing admits that the Barger patent `698 patent and the DeBruyn patent, European Patent No. 0032410, were cited in a Supplementary European Search Report dated December 27, 1988 during the prosecution of PCT Application No. WO 87/00375. Katz Technology Licensing further admits that the

Supplementary European Search Report identified European Patent 0032410 as a "category x" document. Katz Technology Licensing further admits that a copy of the search report was sent to Mr. Graham F. Coles. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 93. 94. Katz Technology Licensing admits that European Patent No. 0032410 was

not disclosed during the prosecution of the `150, `075, `739, `929, `984, and `252 patents. The terms "materiality" and "material prior art" as used in Paragraph 94 are so vague and uncertain that Katz Technology Licensing lacks sufficient information or knowledge to respond and on that basis denies the remaining allegations in Paragraph 94. Further, to the extent the terms "materiality" and "material prior art" are intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required. Katz Technology Licensing denies the remaining allegations set forth in Paragraph 94.

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95.

Katz Technology Licensing denies that the DeBruyn patent was not

disclosed during the prosecution of the `285 patent. Katz Technology Licensing admits that Canadian Patent No. 1, 162,336, issued to DeBruyn, was disclosed during the prosecution of the `285 patent on September 20, 1994. Katz Technology Licensing admits that the `285 patent issued on September 27, 1994. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 95. 96. Katz Technology Licensing admits that the `150, `285 and `984 patents are

among the patents-in-suit. Katz Technology Licensing further admits that certain of the patentsin-suit claim priority from other patents and applications that, depending upon the patent, may include the `739, `075, `929 and `252 patents. In connection with the allegations in Paragraph 96, the terms "intentionally withheld," "intent to deceive," "beyond which Katz was entitled," "inequitable conduct," "unenforceable" and "related, material subject matter" are legal conclusions to which no response is required. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 96. 97. Paragraph 97. 98. Katz Technology Licensing admits that the `021, `065, `120, `134, `150, Katz Technology Licensing denies all allegations set forth in

`156, `223, `252, `285, `309, `360, `415, `551, `703, `707, `734, `762, `863, `893, `965, `968, and `984 patents are among the patents-in-suit. Katz Technology Licensing further admits that certain of the patents-in-suit claim priority from other patents and applications that, depending upon the patent, may include the `739 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 98. 99. Katz Technology Licensing admits that the `734, `120 and `223 patents are

among the patents-in-suit. Katz Technology Licensing further admits that the `120 and `223 patents claim priority from other patents and applications that include the `929, `984 and `252 patents and the `734 patent claims priority from the `984 and `252 patents. Katz Technology Licensing further admits that terminal disclaimers were filed during the prosecution of the `734,

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`120 and `223 patents. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 99. 100. Paragraph 100. THE YOSHIZAWA ARTICLE 101. Katz Technology Licensing admits that an article titled "Voice Response Katz Technology Licensing denies all allegations set forth in

System for Telephone Betting," by Yoshizawa, et al. ("the Yoshizawa article"), appeared in a 1977 issue of Hitachi Review. Katz Technology Licensing admits that the `309 and `707 patents are among the patents-in-suit and that the `707 patent claims priority from the `309 patent. Katz Technology Licensing denies that the Yoshizawa article was not disclosed to the USPTO during the prosecution of the `575 patent. Katz Technology Licensing admits that the Yoshizawa article was disclosed to the PTO during the prosecution of the `575 patent on September 16, 1994. Katz Technology Licensing admits that the Yoshizawa article was not disclosed to the USPTO during the prosecution of the `309 patent. Katz Technology Licensing further denies all remaining allegations set forth in Paragraph 101. 102. Katz Technology Licensing admits that the Yoshizawa article is titled

"Voice Response System for Telephone Betting." The allegations in Paragraph 102 relate to the system allegedly disclosed by the Yoshizawa article; Katz Technology Licensing responds that the article speaks for itself and no further response is required. 103. The allegations in Paragraph 103 relate to the system allegedly disclosed

by the Yoshizawa article; Katz Technology Licensing responds that the article speaks for itself and no further response is required. 104. The term "relevant" in the first sentence of Paragraph 104 is so vague and

uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent the term is intended to allege legal relevance, the allegation constitutes a legal conclusion to which no response is required.

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The remaining allegations in Paragraph 104 relate to the system allegedly disclosed by the Yoshizawa article; Katz Technology Licensing responds that the article speaks for itself and no further response is required. 105. The term "relevant" in the first sentence of Paragraph 105 is so vague and

uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent the term is intended to allege legal relevance, the allegation constitutes a legal conclusion to which no response is required. The remaining allegations in Paragraph 105 relate to the system allegedly disclosed by the Yoshizawa article; Katz Technology Licensing responds that the article speaks for itself and no further response is required. 106. The term "materiality" in the first sentence of Paragraph 106 is so vague

and uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent the term is intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required. Katz Technology Licensing admits that the Yoshizawa article was cited in a

September 2, 1992 interrogatory response during discovery in First Data Resources Inc. v. West Interactive Corp., Civil Action No. 91-4471-TJH (C.D. Cal.). Katz Technology Licensing denies all remaining allegations set forth in Paragraph 106. 107. Paragraph 107. 108. Paragraph 108. 109. Paragraph 109. 110. Katz Technology Licensing admits the `707 patent is among the patentsKatz Technology Licensing denies all allegations set forth in Katz Technology Licensing denies all allegations set forth in Katz Technology Licensing denies all allegations set forth in

in-suit. Katz Technology Licensing further admits that the `707 patent claims priority from the `309 patent. Katz Technology Licensing further admits that terminal disclaimers were filed

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during the prosecution of the `309 and `707 patents, which disclaimed the term of the `309 and `707 patents beyond the expiration of the `968 patent. Katz Technology Licensing denies all allegations set forth in Paragraph 110. 111. Paragraph 111. 112. Katz Technology Licensing admits the `156 patent is among the patentsKatz Technology Licensing denies all allegations set forth in

in-suit. Katz Technology Licensing further admits that the `156 patent claims priority from the `575 patent. Katz Technology Licensing admits that a terminal disclaimer was filed during the prosecution of the `156 patent, which disclaimed the term of the `156 patent beyond the expiration of the `968 patent. Katz Technology Licensing denies all allegations set forth in Paragraph 112. 113. Paragraph 113. THE FLORAFAX BROCHURE 114. Katz Technology Licensing admits that a document dated January 22, Katz Technology Licensing denies all allegations set forth in

1986 that indicates that it was distributed by Florafax exists (the "Florafax brochure"). Katz Technology Licensing admits that the issue fee for the `575 patent was paid on June 29, 1994. Katz Technology Licensing denies that the Florafax brochure was not disclosed to the USPTO during the prosecution of the `575 patent. Katz Technology Licensing admits that the Florafax brochure was disclosed to the USPTO during the prosecution of the `575 patent on September 16, 1994. Katz Technology Licensing denies all remaining allegations set forth in

Paragraph 114. 115. The term "material" in the first sentence of Paragraph 115 is so vague and

uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent this term is intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required.

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Katz Technology Licensing lacks sufficient information or knowledge to respond to the allegations in the last sentence of Paragraph 115 and therefore denies them. The remaining allegations in Paragraph 115 relate to the service allegedly disclosed by the Florafax brochure; Katz Technology Licensing responds that the brochure speaks for itself and no further response is required. 116. Paragraph 116. 117. Katz Technology Licensing admits that the Florafax brochure was Katz Technology Licensing denies all allegations set forth in

produced in First Data Resources Inc. v. West Interactive Corp., Civil Action No. 91-4471-TJH (C.D. Cal.). Katz Technology Licensing lacks sufficient information or knowledge to respond to the remaining allegations in Paragraph 117 and on that basis denies them. 118. Paragraph 118. 119. Paragraph 119. 120. Paragraph 120. 121. Katz Technology Licensing admits that the `703 patent is among the Katz Technology Licensing denies all allegations set forth in Katz Technology Licensing denies all allegations set forth in Katz Technology Licensing denies all allegations set forth in

patents-in-suit. Katz Technology Licensing further admits that the `703 patent claims priority from other patents and applications that include the `575 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 121. 122. Paragraph 122. PERDUE AND HESTER ARTICLES 123. Katz Technology Licensing admits that an article entitled "Conversant I Katz Technology Licensing denies all allegations set forth in

Voice Systems: Architecture and Applications" by R.J. Perdue, et al. ("the Perdue article")

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appeared in the September/October 1986 issue of AT&T Technical Journal. Katz Technology Licensing further admits that the Perdue article was not disclosed during the prosecution of the `309 patent. Katz Technology Licensing further admits that the Perdue article was cited by Examiner Thomas W. Brown during the prosecution of the `404 patent in an office action dated June 3, 1991. Katz Technology Licensing further admits that the Perdue article was cited by Examiner Brown during the prosecution of the `631 patent in an office action dated June 17, 1991. Katz Technology Licensing denies that Examiner Brown was unaware of the Perdue article during the prosecution of the `309 patent, the application leading to which was filed on December 3, 1991. 124. Katz Technology Licensing admits that an paper entitled "The AT&T

Multimode Voice Systems-Full Spectrum Solutions for Speech Processing Applications" by S. D. Hester, et al. ("the Hester article") was presented at the Proceedings of the 1985 AVIOS Conference in September, 1985. Katz Technology Licensing further admits that the Hester article was not disclosed during the prosecution of the `309 patent. Katz Technology Licensing further admits that the Hester article was cited by Examiner Thomas W. Brown during the prosecution of the `404 patent in an office action dated June 3, 1991. Katz Technology

Licensing denies that Examiner Brown was unaware of the Perdue article during the prosecution of the `309 patent, the application leading to which was filed on December 3, 1991. 125. The term "material" in the first sentence of Paragraph 125 is so vague and

uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent this term is intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required. Katz Technology Licensing admits that an article entitled "AT&T's Conversant I Voice System" by John P. Moosemiller ("the Moosemiller article") appeared in the March/April 1986 issue of Speech Technology. Katz Technology Licensing further admits that in a non-final Office Action in Ex Parte Reexamination (Application Control Nos. 90/007,092; 90/006,976 and 90/007,884), dated September 29, 2006, states: "Claims 1-6, 13, 15-19, 21, and 22 are rejected under 35

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U.S.C. 102(b) as being anticipated by the article Moosemiller entitled "AT&T's ConversantTM I Voice System" in Speech Technology, Mar/Apr 1986, pp. 88-93." The remaining allegations in Paragraph 125 relate to the service allegedly disclosed by the Perdue, Hester and Moosemiller articles; Katz Technology Licensing responds that the articles speak for themselves and no further response is required. 126. Katz Technology Licensing admits that the USPTO cited the Perdue

article in its Decision on Request for Reexamination, Control No. 90/008,155, dated November 6, 2006, relating to the `734 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 126. 127. The term "materiality" used in Paragraph 127 is so vague and uncertain

that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent this term is intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 127. 128. The terms "materiality" and "material prior art" used in Paragraph 128 are

so vague and uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations. Further, to the extent these terms are intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required. Katz Technology Licensing denies all remaining allegations set forth in

Paragraph 128. 129. patents-in-suit. Paragraph 129. 130. Katz Technology Licensing admits that the `707 patent claims priority Katz Technology Licensing admits that the `309 patent is among the

Katz Technology Licensing denies all remaining allegations set forth in

from the `309 patent. Katz Technology Licensing denies that any of the other patents-in-suit claim priority from the `309 patent. Katz Technology Licensing denies the remaining allegations set forth in Paragraph 130.

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131.

Katz Technology Licensing admits that the `707 and `309 patents are

among the patents-in-suit. Katz Technology Licensing admits that terminal disclaimers were filed during the prosecution of the `309 and `707 patents, which disclaimed the term of the `309 and `707 patents beyond the expiration of the `968 patent. Katz Technology Licensing denies the remaining allegations set forth in Paragraph 131. 132. Paragraph 132. INTERNATIONAL APPLICATION WO 87/00375 133. Katz Technology Licensing admits that the `285 patent is among the Katz Technology Licensing denies all allegations set forth in

patents-in-suit. Katz Technology Licensing denies that PCT Application No. WO 87/00375 ("the WO `375 application") was not disclosed to the USPTO during the prosecution of the `285 patent. Katz Technology Licensing admits that the issue fee for the `285 patent was paid on June 3, 1994. Katz Technology Licensing further admits that the WO `375 application was disclosed to the USPTO during the prosecution of the `285 patent on September 20, 1994. Katz

Technology Licensing admits that the WO `375 application was not disclosed to the USPTO during the prosecution of the `739 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 133. 134. Katz Technology Licensing admits that the WO `375 application is titled

"Statistical Analysis System for Use with Public Communication Facility." The remaining allegations relate to the system allegedly disclosed in the WO `375 application; Katz Technology Licensing responds that the application speaks for itself and that no further response is required. 135. Katz Technology Licensing admits that the WO `375 application was filed

pursuant to the Patent Cooperation Treaty ("PCT") and published on January 15, 1987. The remaining allegations in Paragraph 135 constitute legal conclusions to which no response is required.

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136.

Katz Technology Licensing admits that the application that led to the `739

patent was filed on May 16, 1998 and that the application that led to the `285 patent was filed on April 13, 1993. The allegations in the second and third sentences of Paragraph 136 relate to the contents of the `739 and the `285 patents and the WO `375 application, which speak for themselves and as to which no further response is required. The remaining allegations in Paragraph 136 constitute legal conclusions to which no response is required. 137. The terms "material," "materiality" and "relevant" in Paragraph 137 are so

vague and uncertain that Katz Technology Licensing lacks sufficient information or knowledge to respond and on that basis denies the allegations. Further, to the extent these terms are intended to allege legal materiality or relevance, the allegations constitute legal conclusions to which no response is required. Katz Technology Licensing admits that PCT Application No. WO 87/00375 was cited by the examiner in an Office Action dated March 5, 1991 for U.S. Patent Application No. 07/425,779, which resulted in the issued `984 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 137. 138. Katz Technology Licensing admits that the patent applicant had

knowledge of the WO `375 application during prosecution of the `739 and `285 patents. The term "duty to disclose information material to the patentability of any of Katz's pending patent applications" is so vague and uncertain that Katz Technology Licensing lacks sufficient information or knowledge to respond and on that basis denies the allegations. Further, to the extent these terms are intended to allege a legal duty or legal materiality, the allegations constitute legal conclusions to which no response is required. Katz Technology Licensing denies any and all remaining allegations set forth in Paragraph 138. 139. Katz Technology Licensing admits that the `285 patent is among the

patents-in-suit. Katz Technology Licensing further admits that certain of the patents-in-suit claim priority from other patents and applications that, depending upon the patent, may include the `739 patent. In connection with the allegations in Paragraph 139, the terms "intentionally withheld," "intent to deceive," "beyond which Katz was entitled," "inequitable conduct,"

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"unenforceable" and "related, material subject matter" are alleged legal conclusions to which no response is required. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 139. 140. Katz Technology Licensing admits that certain of the patents-in-suit claim

priority from other patents and applications that, depending upon the patent, may include the `739 and `285 patents. In connection with the allegations in Paragraph 140, the terms

"inequitable conduct," "material," and "unenforceable" are alleged legal conclusions to which no response is required. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 140. 141. Paragraph 141. THE DAUDELIN `995 PATENT 142. Katz Technology Licensing admits that U.S. Patent No. 4,943,995 was not Katz Technology Licensing denies all allegations set forth in

disclosed during the prosecution of the `120 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 142. 143. Katz Technology Licensing admits that U.S. Patent No. 4,943,995, on its

face, indicates that it was filed with the USPTO on October 8, 1986 and issued on July 24, 1990 to Daudelin, et al. ("the Daudelin `995 patent"). Katz Technology Licensing further admits that U.S. Patent No. 5,974,120 was filed on June 7, 1995. The remaining allegations in

Paragraph 143 constitute legal conclusions to which no response is required. 144. The term "material" in the first sentence of Paragraph 144 is so vague and

uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent the term is intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required. The remaining allegations in Paragraph 144 relate to the system allegedly disclosed by the

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Daudelin `995 patent; Katz Technology Licensing responds that the patent speaks for itself and no further response is required. 145. The term "material" in the first sentence of Paragraph 145 is so vague and

uncertain that Katz Technology lacks sufficient information or knowledge to respond and on that basis denies the allegations in that sentence. Further, to the extent the term is intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required. The remaining allegations in Paragraph 145 relate to the claims of the `120 patent; Katz Technology Licensing responds that the patent speaks for itself and no further response is required. 146. Katz Technology Licensing admits that the Daudelin `995 patent was

disclosed to the USPTO during the prosecution of certain patents-in-suit. Katz Technology Licensing further admits that the Daudelin `995 patent was disclosed to the USPTO more than two years prior to the issuance of the `120 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 146. 147. Paragraph 147. 148. Paragraph 148. 149. Katz Technology Licensing admits that the `223 patent is among the Katz Technology Licensing denies all allegations set forth in Katz Technology Licensing denies all allegations set forth in

patents-in-suit. Katz Technology Licensing further admits that the `223 patent claims priority to other patents and applications that include the `120 patent. In connection with the allegations in Paragraph 149, the terms "inequitable conduct," "material," and "unenforceable" are alleged legal conclusions to which no response is required. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 149. 150. Paragraph 150. Katz Technology Licensing denies all allegations set forth in

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THE SZLAM `911 PATENT
151. Katz Technology Licensing admits that on its face, U.S. Patent No. Katz

4,797,911 indicates that it was issued to Szlam, et al. ("the Szlam `911 patent").

Technology Licensing admits it was aware of the the Szlam `911 patent during the prosecution of the `309 patent. Katz Technology Licensing further admits that the Szlam `911 patent was not disclosed during the prosecution of the `309 patent. Katz Technology Licensing further admits it the `309 is among the patents-in-suit. allegations set forth in Paragraph 151. 152. Katz Technology Licensing admits that on its face, the Szlam `911 patent Katz Technology Licensing denies any remaining

indicates that it was filed on June 16, 1987 and issued on January 10, 1989. Katz Technology Licensing admits that the application which led to the issuance of the `309 patent was filed on December 3, 1991. The remaining allegations in Paragraph 152 are legal conclusions to which no response is required. 153. The allegations in the first sentence of Paragraph 153 relate to the system

allegedly disclosed by the Szlam `911 patent; Katz Technology Licensing responds that the Szlam `911 patent speaks for itself and no further response is required. The remaining

allegations set forth in Paragraph 153 constitute legal conclusions to which no response is required. 154. The term "material" used in the first and third sentences of Paragraph 154

are so vague and uncertain that Katz Technology Licensing lacks sufficient information or knowledge to respond and on that basis denies the allegations in those sentences. Further, to the extent the term is intended to allege legal materiality, the allegation constitutes a legal conclusion to which no response is required. The allegations in the second sentence of Paragraph 154 relate to the system allegedly disclosed by the Szlam `911 patent; Katz Technology Licensing responds that the Szlam `911 patent speaks for itself and no further response is required. Katz Technology Licensing denies any remaining allegations set forth in Paragraph 154.

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155.

Katz Technology Licensing admits that during the prosecution of the `150

patent, it stated in an amendment dated October 5, 1989: "It is noteworthy that the utilization of ANI and DNIS signals is not foreign to the patent literature. In that regard, the following patents are deemed relative to the present application: . . . U.S. Patent 4,797,922 ­ Szlam et al. CUSTOMER ACCOUNT ON-LINE SERVICING SYSTEM. . . . It is generally noteworthy that neither Riskin nor Szlam appears to be a reference with regard to the present case; however, as a further consideration it is significant that the claims herein clearly distinguish the disclosure of these patents." Paragraph 155. 156. Paragraph 156. 157. Paragraph 157. 158. Katz Technology Licensing admits that the `707 patent is among the Katz Technology Licensing denies all allegations set forth in Katz Technology Licensing denies all allegations set forth in Katz Technology Licensing denies any remaining allegations set forth in

patents-in-suit. Katz Technology Licensing further admits that the `707 patent claims priority from the `309 patent. Katz Technology Licensing denies all remaining allegations set forth in Paragraph 158. 159. Paragraph 159. THE PERIPHONICS ART 160. Katz Technology Licensing denies the allegations set forth in the first Katz Technology Licensing denies all allegations set forth in

sentence of Paragraph 160. Katz Technology Licensing lacks information and knowledge to answer the allegation that materials bearing Bates numbers W72807-W73756 were provided to Harold Wurst, Esq. of Nilsson, Wurst & Green in connection with First Data Resources Inc. v. West Interactive Corp., CV 91-4471 TJH (C.D. Cal.) (the "West" case) and therefore denies it. Katz Technology Licensing admits that Byard Nilsson and Reena Kuyper, who were at one time

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affiliated with the Nilsson, Wurst & Green law firm, were involved in prosecuting certain of Mr. Katz's patent applications that ultimately issued as certain of the patents-in-suit. Technology Licensing denies the remaining allegations set forth in Paragraph 160. 161. Katz Technology Licensing admits that the application for the `965 patent Katz

stated: "During the litigation of [the West case], a voluminous quantity of prior art, that is, some 500 items (including single or plural related documents grouped together), were identified by the defendant. However, during pretrial procedures, the defendant distilled the applied art to 59 separate items (including single or plural related documents)." U.S. Patent Application

08/306/456, Paper no. 3, filed November 4, 1994. Katz Technology Licensing further admits that the application also stated: "The voluminous quantity of art identified during litigation, excluding the 59 items (Set I), is listed on the second set of forms PTO-1449 (Supplemental I)." Paper no. 3, filed November 4, 1994. allegations set forth in Paragraph 161. 162. No response is required to the allegations in Paragraph 162 to the extent Katz Technology Licensing denies any remaining

the allegations of Paragraph 162 refer to various patent applications, as the applications speak for themselves. To the extent any further response is required, Katz Technology Licensing lacks information or knowledge sufficient to form a belief as to the truthfulness of the full meaning in and intent of any remaining allegations in Paragraph 162 and therefore denies those allegations. 163. In response to the allegations of Paragraph 163, Katz Technology

Licensing incorporates it responses to paragraphs 161 and 162. Katz Technology Licensing further responds that it lacks sufficient information and knowledge to answer the remaining allegations set forth in Paragraph 163 and therefore denies them. 164. Katz Technology Licensing is unable to ascertain the meaning of the

allegation in Paragraph 164 that references are "highly relevant to many claims," and therefore denies them on the basis that Katz Technology Licensing lacks sufficient information and knowledge to answer such allegations. Further, to the extent that this phrase is meant to allege legal relevance, the allegations constitute legal conclusions to which no response is required.

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