Free Answer to Complaint - District Court of California - California

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 1 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

Frank S. Farrell Pro hac vice application pending F.S. FARRELL, LLC 7101 York Avenue South, Suite 153 Edina, MN 55435 Telephone: 952-921-3260 Facsimile: 952-216-0106 e-mail: [email protected] John L. Haller, California Bar No. 61392 Susan . Meyer, Califlrnia Bar Number 204931 GORDON & REES LLP 101 West Broadway, Suite 1600 San Diego, CA 92101 619-696-6700 619-696-7124 FAX [email protected], [email protected] [email protected] Attorneys for Defendant, CAS ENTERPRISES, INC. dba KREG TOOL COMPANY

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
FSFA/1051305/5747081v.1

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA

JOON PARK, an individual,

) ) Plaintiff, ) ) vs. ) ) CAS ENTERPRISES, INC., an Iowa ) corporation, d/b/a KREG TOOL COMPANY, ) ) Defendant. ) _______________________________________ ) ) CAS ENTERPRISES, INC., an Iowa ) corporation, d/b/a KREG TOOL COMPANY, ) ) Counterclaimant, ) vs. ) )

CIVIL NO. 08-CV-0385 DMS NLS

DEFENDANT CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT

DEMAND FOR JURY TRIAL

1
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 2 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

JOON PARK, an individual,

) ) Counterclaim Defendant, ) ) _______________________________________ )

CAS Enterprises, Inc. d/b/a Kreg Tool Company (hereinafter "Kreg Tool") through its undersigned counsel, answers the allegations of Plaintiff's Complaint (hereinafter "the Complaint") filed by Plaintiff Joon Park (hereinafter "Park") as follows. Except as expressly stated hereafter, Kreg Tool denies each allegation contained in the Complaint. THE PARTIES 1. In response to Paragraph 1 of the Complaint, Kreg Tool lacks knowledge or

information sufficient to form a belief as to the truth of the allegations and therefore can neither admit nor deny the same. 2. Kreg Tool admits the allegations in Paragraph 2 of the Complaint. JURISDICTION 3. Kreg Tool admits that the Court has jurisdiction over actions arising under the

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Patent Laws. Except as admitted, Kreg Tool denies the allegations of Paragraph 3 of the Complaint. BACKGROUND FACTS 4. In response to Paragraph 4 of the Complaint, Kreg Tool admits that U.S. Patent No.

6,637,988 (hereinafter "the `988 patent") is entitled as alleged and was issued as alleged. Kreg Tool is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 4 of the Complaint, and therefore denies the same. 5. In response to Paragraph 5 of the Complaint, Kreg Tool admits that U.S. Patent No.

7,134,814 (hereinafter "the `814 patent") is entitled as alleged and was issued as alleged. Kreg

2
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 3 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

Tool is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 5 of the Complaint, and therefore denies the same. 6. In response to Paragraph 6 of the Complaint, Kreg Tool admits that one of its

attorneys contacted Park and offered to buy the `988 and `814 patents. Kreg Tool denies the remaining allegations of Paragraph 8 of the Complaint. INFRINGEMENT ALLEGATIONS 7. In response to Paragraph 7 of the Complaint, Kreg Tool incorporates its answers in

Paragraphs 1 through 6 above. 8. 9. 10. 11. Kreg Tool denies the allegations of Paragraph 8 of the Complaint. Kreg Tool denies the allegations of Paragraph 9 of the Complaint. Kreg Tool denies the allegations of Paragraph 10 of the Complaint. Kreg Tool denies the allegations of Paragraph 11 of the Complaint. AFFIRMATIVE DEFENSES FIRST AFFIRMATIVE DEFENSE (Invalidity, 35 U.S.C. § 102) 1. The `988 patent and the `814 patent shall hereinafter be collectively referred to as

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

"The Patents-in-Suit". The Patents-in-Suit, and at least one claim thereof, are invalid for failure to meet at least one of the requirements of patentability set forth in the patent laws, including, but not limited to, 35 U.S.C. § 102. SECOND AFFIRMATIVE DEFENSE (Invalidity, 35 U.S.C. § 103) 2. The Patents-in-Suit, and at least one claim thereof, are invalid for failure to meet at

least one of the requirements of patentability set forth in the patent laws, including, but not limited to, 35 U.S.C. § 103.

3
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 4 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

THIRD AFFIRMATIVE DEFENSE (Invalidity, 35 U.S.C. § 112) 3. The Patents-in-Suit, and each claim thereof, are invalid for failure to meet at least

one of the requirements of patentability set forth in the patent laws, including, but not limited to, 35 U.S.C. § 112. FOURTH AFFIRMATIVE DEFENSE (35 U.S.C. § 287) 4. § 287. FIFTH AFFIRMATIVE DEFENSE (Laches) 5. Plaintiff's claims for relief are barred, in whole or in part, by the doctrines of Plaintiff's claims for relief are barred, in whole or in part, pursuant to 35 U.S.C.

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

waiver, estoppel, acquiescence and/or laches. SIXTH AFFIRMATIVE DEFENSE (Failure to State a Claim) 6. The Complaint is barred, in whole or in part, for failing to state a claim upon which

relief can be granted. SEVENTH AFFIRMATIVE DEFENSE (Misuse) 7. Plaintiff's enforcement of the asserted patents constitutes patent misuse. EIGHTH AFFIRMATIVE DEFENSE (Inequitable Conduct) 8. The Patents-in-Suit are unenforceable because of the actions of at least one

individual, substantively involved in the prosecution of the applications that led to the issuance of

4
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 5 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

the Patents-in-Suit, failed to comply with their duty of candor and good faith in their dealing with the United States patent and Trademark Office and failed to disclose to the United States Patent and Trademark Office material art known to that individual which was material to the patentability of the Patents-in-Suit. On information and belief, the failure to deal with candor and good faith, and the failure to disclose material art in the prosecution of the Patents-in Suit, were made with intent to deceive the United States Patent and Trademark Office into improperly issuing the Patents-in Suit. NINTH AFFIRMATIVE DEFENSE (Reservation of Rights) 9. Kreg Tool reserves the right to assert any additional defenses that further

investigation or discovery may indicate the existence of evidence sufficient to assert any such affirmative defense. COUNTERCLAIMS THE PARTIES 1. Counterclaimant Kreg Tool is a corporation organized under the laws of the State

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

of Iowa, having its principal place of business at 201 Campus Drive, Huxley, Iowa 50124. 2. Counterclaim Defendant Joon Park has represented in a pleading filed with this

Court, he is an individual having an address at 1320 Virginia Avenue, Glendale, California 91202. JURISDICTION AND VENUE 3. and 1331. 4. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1331, 1332(a), Subject matter jurisdiction in the Court is based on 28 U.S.C. §§ 2201(a), 1338(a)

1391(b) and/or 1400.

5
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 6 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

5.

Plaintiff and Counterclaim Defendant Joon Park ("Park") has charged Kreg Tool

with committing acts of infringement of the `988 and `814 patents. A judiciable controversy exists between Counterclaim Defendant Park and Kreg Tool concerning Kreg Tool's alleged liability for infringement of the `988 and `814 patents, as well as the enforceability, validity and scope of the `988 and `814 patents. 6. Park has charged Kreg Tool with committing acts of infringement of U.S. Patent

No. 7,374,373 (the "`373 patent"). A judiciable controversy exists between Park and Kreg Tool concerning Kreg Tool's alleged liability for infringement of the `373 patents, as well as the enforceability, validity and scope of the `373 patent. BACKGROUND FACTS 7. or elsewhere. 8. elsewhere. 9. On information and belief, Park does not offer for sale any products in the United On information and belief, Park does not sell any products in the United States or On information and belief, Park does not make any products in the United States

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

States or elsewhere. 10. On information and belief, Park does make any type of woodworking tool in the

United States or elsewhere. 11. On information and belief, Park does not sell any type of woodworking tool in the

United States or elsewhere. 12. On information and belief, Park does not offer for sale any type of woodworking

tool in the United States or elsewhere. 13. On information and belief, Park does not make any type of pocket hole jig in the

United States or elsewhere.

6
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 7 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

14.

On information and belief, Park does not sell any type of pocket hole jig in the

United States or elsewhere. 15. On information and belief, Park does not offer for sale any type of pocket hole jig

in the United States or elsewhere. 16. On information and belief, Park does not make any product that practices any of

the claims of the `988 patent in the United States or elsewhere. 17. On information and belief, Park does not offer for sale any product that practices

any of the claims of the `988 patent in the United States or elsewhere. 18. On information and belief, Park does not sell any product that practices any of the

claims of the `988 patent in the United States or elsewhere. 19. On information and belief, Park does not make any product that practices any of

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

the claims of the `814 patent in the United States or elsewhere. 20. On information and belief, Park does not offer for sale any product that practices

any of the claims of the `814 patent in the United States or elsewhere. 21. On information and belief, Park does not sell any product that practices any of the

claims of the `814 patent in the United States or elsewhere. 22. On information and belief, Park does not make any product that practices any of

the claims of the `373 patent in the United States or elsewhere. 23. On information and belief, Park does not offer for sale any product that practices

any of the claims of the `373 patent in the United States or elsewhere. 24. On information and belief, Park does not sell any product that practices any of the

claims of the `373 patent in the United States or elsewhere. 25. /// Park does not compete with Kreg Tool.

7
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 8 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

FIRST COUNTERCLAIM DECLARATORY JUDGMENT OF NON-INFRINGEMENT 26. Kreg Tool restates all allegations in Paragraphs 1 through 25 of this Counterclaim. Non-infringement of the `988 Patent 27. Kreg Tool has not infringed claim 1 of the `988 patent. 28. Kreg Tool has not infringed claim 2 of the `988 patent. 29. Kreg Tool has not infringed claim 3 of the `988 patent. 30. Kreg Tool has not infringed claim 4 of the `988 patent. 31. Kreg Tool has not infringed claim 5 of the `988 patent. 32. Kreg Tool has not infringed claim 6 of the `988 patent. 33. Kreg Tool has not infringed claim 7 of the `988 patent. 34. Kreg Tool has not infringed claim 8 of the `988 patent. 35. Kreg Tool has not infringed claim 9 of the `988 patent. 36. Kreg Tool has not infringed claim 10 of the `988 patent. 37. Kreg Tool has not infringed claim 11 of the `988 patent. 38. Kreg Tool has not infringed claim 12 of the `988 patent. 39. Kreg Tool has not infringed claim 13 of the `988 patent. 40. Kreg Tool has not infringed claim 14 of the `988 patent. 41. Kreg Tool has not infringed claim 15 of the `988 patent. 42. Kreg Tool has not infringed claim 16 of the `988 patent. 43. Kreg Tool has not infringed claim 17 of the `988 patent. 44. Kreg Tool has not infringed claim 18 of the `988 patent. 45. Kreg Tool has not infringed claim 19 of the `988 patent. 46. Kreg Tool has not infringed claim 20 of the `988 patent.

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

8
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 9 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

47. Kreg Tool has not infringed claim 21 of the `988 patent. Non-infringement of the `814 Patent 48. Kreg Tool has not infringed claim 1 of the `814 patent. 49. Kreg Tool has not infringed claim 2 of the `814 patent. 50. Kreg Tool has not infringed claim 3 of the `814 patent. 51. Kreg Tool has not infringed claim 4 of the `814 patent. 52. Kreg Tool has not infringed claim 5 of the `814 patent. 53. Kreg Tool has not infringed claim 6 of the `814 patent. 54. Kreg Tool has not infringed claim 7 of the `814 patent. 55. Kreg Tool has not infringed claim 8 of the `814 patent. 56. Kreg Tool has not infringed claim 9 of the `814 patent. 57. Kreg Tool has not infringed claim 10 of the `814 patent. 58. Kreg Tool has not infringed claim 11 of the `814 patent. 59. Kreg Tool has not infringed claim 12 of the `814 patent. Non-infringement of the `373 Patent 60. Kreg Tool has not infringed claim 1 of the `373 patent. 61. Kreg Tool has not infringed claim 2 of the `373 patent. 62. Kreg Tool has not infringed claim 3 of the `373 patent. 63. Kreg Tool has not infringed claim 4 of the `373 patent. 64. Kreg Tool has not infringed claim 5 of the `373 patent. 65. Kreg Tool has not infringed claim 6 of the `373 patent. 66. Kreg Tool has not infringed claim 7 of the `373 patent. 67. Kreg Tool has not infringed claim 8 of the `373 patent. 68. Kreg Tool has not infringed claim 9 of the `373 patent.

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

9
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 10 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

69. Kreg Tool has not infringed claim 10 of the `373 patent. 70. Kreg Tool has not infringed claim 11 of the `373 patent. 71. Kreg Tool has not infringed claim 12 of the `373 patent. 72. Kreg Tool has not infringed claim 13 of the `373 patent. 73. Kreg Tool has not infringed claim 14 of the `373 patent. 74. Kreg Tool has not infringed claim 15 of the `373 patent. 75. Kreg Tool has not infringed claim 16 of the `373 patent. 76. Kreg Tool has not infringed claim 17 of the `373 patent. 77. Kreg Tool has not infringed claim 18 of the `373 patent. 78. Kreg Tool has not infringed claim 19 of the `373 patent. 79. Kreg Tool has not infringed claim 20 of the `373 patent. 80. Kreg Tool has not infringed claim 21 of the `373 patent. 81. Kreg Tool has not infringed claim 22 of the `373 patent. 82. Kreg Tool has not infringed claim 23 of the `373 patent. SECOND COUNTERCLAIM DECLARATORY JUDGMENT OF INVALIDITY 83. Counterclaim. 84. The asserted claims of the `988 patent are invalid for failure to comply with Kreg Tool restates all allegations in Paragraphs 1 through 82 of this

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

grounds specified in Title 35 of the United States Code as a condition of patentability, in particular 35 U.S.C. § 102. 85. The asserted claims of the `988 patent are invalid for failure to comply with

grounds specified in Title 35 of the United States Code as a condition of patentability, in particular 35 U.S.C. § 103.

10
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 11 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

86.

The asserted claims of the `988 patent are invalid for failure to comply with

grounds specified in Title 35 of the United States Code as a condition of patentability, in particular 35 U.S.C. § 112. 87. The asserted claims of the `814 patent are invalid for failure to comply with

grounds specified in Title 35 of the United States Code as a condition of patentability, in particular 35 U.S.C. § 102. 88. The asserted claims of the `814 patent are invalid for failure to comply with

grounds specified in Title 35 of the United States Code as a condition of patentability, in particular 35 U.S.C. § 103. 89. The asserted claims of the `814 patent are invalid for failure to comply with

grounds specified in Title 35 of the United States Code as a condition of patentability, in particular 35 U.S.C. § 112. 90. The asserted claims of the `373 patent are invalid for failure to comply with

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

grounds specified in Title 35 of the United States Code as a condition of patentability, in particular 35 U.S.C. § 102. 91. The asserted claims of the `373 patent are invalid for failure to comply with

grounds specified in Title 35 of the United States Code as a condition of patentability, in particular 35 U.S.C. § 103. 92. The asserted claims of the `373 patent are invalid for failure to comply with

grounds specified in Title 35 of the United States Code as a condition of patentability, in particular 35 U.S.C. § 112. /// /// ///

11
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 12 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

THIRD COUNTERCLAIM DECLARATORY JUDGMENT OF INEQUITABLE CONDUCT 93. Counterclaim. 94. The `988 patent is unenforceable because of the actions of at least one Kreg Tool restates all allegations in Paragraphs 1 through 92 of this

individual, substantively involved in the prosecution of the application that led to the issuance of the `988 patent, failed to comply with their duty of candor and good faith in their dealing with the United States patent and Trademark Office and failed to disclose to the United States Patent and Trademark Office material art known to that individual which was material to the patentability of the `988 patent. 95. On information and belief, the failure to deal with candor and good faith,

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

and the failure to disclose material art in the prosecution of the `988 patent, were made with intent to deceive the United States Patent and Trademark Office into improperly issuing the `988 patent. 96. The `814 patent is unenforceable because of the actions of at least one

individual, substantively involved in the prosecution of the application that led to the issuance of the `814 patent, failed to comply with their duty of candor and good faith in their dealing with the United States patent and Trademark Office and failed to disclose to the United States Patent and Trademark Office material art known to that individual which was material to the patentability of the `814 patent. 97. On information and belief, the failure to deal with candor and good faith,

and the failure to disclose material art in the prosecution of the `814 patent, were made with intent to deceive the United States Patent and Trademark Office into improperly issuing the `814 patent. 98. The `373 patent is unenforceable because of the actions of at least one

individual, substantively involved in the prosecution of the application that led to the issuance of

12
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 13 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

the `373 patent, failed to comply with their duty of candor and good faith in their dealing with the United States patent and Trademark Office and failed to disclose to the United States Patent and Trademark Office material art known to that individual which was material to the patentability of the `373 patent. 99. On information and belief, the failure to deal with candor and good faith,

and the failure to disclose material art in the prosecution of the `373 patent, were made with intent to deceive the United States Patent and Trademark Office into improperly issuing the `373 patent. FOURTH COUNTERCLAIM DECLARATORY JUDGMENT OF EXCEPTIONAL CASE 100. Counterclaim. 101. The `988 patent has two independent claims, claim 1 and claim 12. 102. As of the filing date of this pleading, Park has no evidentiary basis to allege that either of the independent claims of the `988 patent are being infringed. 103. Claim 1 of the `988 patent has a clear limitation that requires a "gaging structure between said base and said guide carrier". 104. Claim 12 of the `988 patent has a clear limitation that requires a "measuring structure selectively positionable between said base and said guide carrier". 105. On information and belief, at no time prior to the filing of this action, did Park identify the "gaging structure between said base and said guide carrier" as set forth in claim 1 of the `988 patent, and compare that structure with a specific structure made, used, sold, offered for sale, or imported into the United States by Kreg Tool to determine if Kreg Tool used a structure that is the same as, or equivalent of, the structure in the `988 patent. Kreg Tool restates all allegations in Paragraphs 1 through 99 of this

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

13
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 14 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

106. On information and belief, at no time prior to the filing of this action, did Park identify the "measuring structure selectively positionable between said base and said guide carrier" as set forth in claim 12 of the `988 patent, and compare that structure with a specific structure made, used, sold, offered for sale, or imported into the United States by Kreg Tool to determine if Kreg Tool used a structure that is the same as, or equivalent of, the structure in the `988 patent. 107. On information and belief, at no time prior to the filing of this action, did Park

make any effort to determine whether pocket hole jigs or any other woodworking tools incorporating the elements of the claims in the `988 patent were known prior to November 15, 2001. 108. On information and belief, at no time prior to the filing of this action, did Park make any effort to determine whether pocket hole jigs or any other woodworking tools incorporating the elements of the claims in the `814 patent were known prior to November 15, 2001 or September 23, 2003. 109. On information and belief, at no time prior to accusing Kreg Tool of infringement of the `373 patent did Park make any effort to determine whether a pocket hole drilling machine, or any other woodworking tools incorporating the elements of the claims in the `373 patent were known prior to June 23, 2004. 110. Park failed to perform an adequate pre-filing investigation prior to initiating this action. 111. The failure of Park to perform the analysis set forth in the previous paragraphs renders this case exceptional under 35 U.S.C. § 285. 112. The failure of Park to conduct an adequate pre-filing investigation prior to initiating this action renders this case exceptional under 35 U.S.C. § 285.

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

14
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385
FSFA/1051305/5747081v.1

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 15 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

113. Park's allegations of infringement of claims 1 and 12 of the `988 patent without any supporting evidentiary basis renders this case exceptional under 35 U.S.C. § 285. 114. Park's inequitable conduct as set forth in Kreg Tool's Third Counterclaim renders this case exceptional under 35 U.S.C. § 285. PRAYER FOR RELIEF Wherefore, Kreg Tool prays for the following relief: A. B. C. That the Complaint be dismissed with prejudice. That Plaintiff take nothing by its Complaint; That the Court enter judgment that: 1. 2. 3. 4. Kreg Tool has not infringed U.S. Patent No. 6,637,988; Kreg Tool has not infringed U.S. Patent No. 7,134,814; Kreg Tool has not infringed U.S. Patent No. 7,374,373; Kreg Tool has not contributed to the infringement of U.S. Patent No. 6,637,988; 5. Kreg Tool has not contributed to the infringement of U.S. Patent No. 7,134,814; 6. Kreg Tool has not contributed to the infringement of U.S. Patent No. 7,374,373; 7. Kreg Tool has not induced the infringement of U.S. Patent No. 6,637,988; 8. Kreg Tool has not induced the infringement of U.S. Patent No. 7,134,814; 9. Kreg Tool has not induced the infringement of U.S. Patent No. 7,374,373;

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
FSFA/1051305/5747081v.1

15
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 16 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

10. 11. 12. D. E. F. and proper.

That U.S. Patent No. 6,637,988 is invalid and unenforceable; That U.S. Patent No. 7,134,814 is invalid and unenforceable; That U.S. Patent No. 7,374,373 is invalid and unenforceable;

This case be rendered exceptional pursuant to 35 U.S.C. § 285 That Kreg Tool be awarded its reasonable costs and attorneys' fees. That the Court award Kreg Tool Country such other relief as the Court deems just

Respectfully submitted, GORDON & REES LLP

Dated: June 18, 2008 /s/ John L. Haller John L. Halle Susan B. Meyer - and F.S. FARRELL, LLC Frank S. Farrell Counsel for Defendant CAS ENTERPRISES, INC. d/b/a KREG TOOL COMPANY

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
FSFA/1051305/5747081v.1

16
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385

Case 3:08-cv-00385-DMS-NLS

Document 10

Filed 06/18/2008

Page 17 of 17

1 2 3 4 5 6 7 8 9 10 11 12
Gordon & Rees LLP
101 W. Broadway Suite 2000 San Diego, CA 92101

DEMAND FOR TRIAL BY JURY

Defendant CAS Enterprises, Inc. dba Kreg Tool Company hereby requests a trial by jury of all the claims, defenses and counterclaims so triable. Respectfully submitted, GORDON & REES LLP

Dated: June 18, 2008 /s/ John L. Haller John L. Halle Susan B. Meyer - and F.S. FARRELL, LLC Frank S. Farrell Counsel for Defendant CAS ENTERPRISES, INC. d/b/a KREG TOOL COMPANY

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
FSFA/1051305/5747081v.1

17
CAS ENTERPRISES' ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS TO PLAINTIFF'S COMPLAINT CASE NO. 08-CV-0385