Free Answer to Amended Complaint - District Court of California - California

Case 3:08-cv-03129-MMC

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JAMES W. GERIAK (STATE BAR NO. 32871) [email protected] ALLAN W. JANSEN (STATE BAR NO. 81992) [email protected] MARK STIRRAT (STATE BAR NO. 229448) [email protected] ORRICK, HERRINGTON & SUTCLIFFE LLP 4 Park Plaza, Suite 1600 Irvine, CA 92614-2558 Telephone: (949) 567-6700 Facsimile: (949) 567-6710 Attorneys for Defendant NEW STAR LASERS, INC. d/b/a COOLTOUCH, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

VNUS MEDICAL TECHNOLOGIES, INC., Plaintiff, v. BIOLITEC, INC., DORNIER MEDTECH AMERICA, INC., and NEW STAR LASERS, INC. d/b/a COOLTOUCH, INC., DAVID S. CENTANNI, and TYRELL L. SCHIEK. Defendants. NEW STAR LASERS, INC. d/b/a COOLTOUCH, INC., Counterclaimant, v. VNUS MEDICAL TECHNOLOGIES, INC., Counterdefendant.

Case No. C08-03129-JCS NEW STAR LASERS, INC.'S D/B/A COOLTOUCH, INC. ANSWER TO FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT AND COUNTERCLAIMS DEMAND FOR JURY TRIAL Complaint Filed: July 10, 2008

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ANSWER TO FIRST AMENDED COMPLAINT CASE NO. C 08-03129-JCS

Case 3:08-cv-03129-MMC

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Defendant, New Star Lasers, Inc. d/b/a CoolTouch, Inc., ("CoolTouch"), by counsel, alleges as follows in answer and as counterclaims in response to the First Amended Complaint ("Complaint") filed by VNUS Medical Technologies, Inc. ("VNUS"): JURISDICTION AND VENUE 1. 2. 3. CoolTouch admits the allegations of paragraph 1 of the Complaint. CoolTouch admits the allegations of paragraph 2 of the Complaint. CoolTouch admits the allegations of paragraph 3 of the Complaint only inso far as

those allegations concern CoolTouch. As to the allegations with regard to the remaining defendants, CoolTouch is without information or belief sufficient to respond to such allegations and therefore denies the remaining allegations. 4. Insofar as the allegations of paragraph 4 of the Complaint are directed to

CoolTouch, CoolTouch admits those allegations but, on information and belief, denies those allegations with regard to the remaining defendants. 5. 6. CoolTouch admits the allegation of paragraph 5 of the Complaint. CoolTouch is without sufficient information and belief to answer the allegations of

paragraph 6 of the Complaint. 7. CoolTouch is without sufficient information and belief to answer the allegations of

paragraph 7 of the Complaint. 8. CoolTouch is without sufficient information and belief to answer the allegations of

paragraph 8 of the Complaint. 9. CoolTouch is without sufficient information and belief to answer the allegations of

paragraph 9 of the Complaint. 10. CoolTouch is without sufficient information and belief to answer the allegations of

paragraph 10 of the Complaint. 11. CoolTouch is without sufficient information and belief to answer the allegations of

paragraph 10 of the Complaint.

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ANSWER TO FIRST AMENDED COMPLAINT CASE NO. C 08-03129-JCS

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THE PATENTS 12. CoolTouch is without sufficient information and belief to answer the allegations of

paragraph 12 of the Complaint and therefore denies those allegations. 13. CoolTouch is without sufficient information and belief to answer the allegations of

paragraph 13 of the Complaint and therefore denies those allegations. 14. CoolTouch is without sufficient information and belief to answer the allegations of

paragraph 14 of the Complaint and therefore denies those allegations. 15. CoolTouch is without sufficient information and belief to answer the allegations of

paragraph 15 of the Complaint and therefore denies those allegations. 16. CoolTouch is without sufficient information and belief to answer the allegations of

paragraph 16 of the Complaint and therefore denies those allegations. 17. 18. CoolTouch denies the allegations of paragraph 17 of the Complaint . CoolTouch denies the allegations of paragraph 18 of the Complaint . AFFIRMATIVE DEFENSES CoolTouch asserts the following affirmative and other defenses and reserves the right to amend its Answer as additional information becomes available. FIRST AFFIRMATIVE DEFENSE 19. Plaintiff's Complaint fails to state a claim upon which relief can be granted. SECOND AFFIRMATIVE DEFENSE 20. CoolTouch has not and is not infringing the 6,752,803 ("`803 patent"); 6,769,433

("`433 patent"); 6,258,048 ("`048 patent"); and 7,396,355 ("`355 patent") patents. THIRD AFFIRMATIVE DEFENSE 21. On information and belief, the `803, `433, `048 and `355 patents are invalid for

failing to comply with one or more requirements of the patent laws of the United States, including, but not limited to, the conditions for patentability set forth in 35 U.S.C. §§ 101, 102, 103 and 112.

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ANSWER TO FIRST AMENDED COMPLAINT CASE NO. C 08-03129-JCS

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FOURTH AFFIRMATIVE DEFENSE Plaintiff is estopped by representations or actions taken during the prosecution of

the `803, `433, `048 and `355 patents which limits the scope of the claims of those patents under the doctrine of prosecution history estoppel. FIFTH AFFIRMATIVE DEFENSE On information and belief, Plaintiff's claim for damages, if any, is limited by 35

COUNTERCLAIMS Parties Counterclaimant CoolTouch ("CoolTouch") is a corporation organized and

existing under the laws of California and having a principal place of business at 9085 Foothills Blvd., Roseville, CA 95747. 2. Counterdefendant VNUS alleges that it is a Delaware corporation and having its

principal place of business at 5799 Fontanoso Way, San Jose, CA 95138. VNUS alleges that it is the owner of all rights in the patents asserted by VNUS in this action. FACTUAL BACKGROUND CoolTouch incorporates by reference the allegations of paragraphs 1 and 2 of these

counterclaims as though fully set forth herein. 4. By its Complaint, Counterdefendant VNUS ("VNUS") has alleged that it is the

owner of U.S. Patent Nos. 6,752,803, ("`803 patent"); 6,769,433 ("`433 patent"); 6,258,048 ("`048 patent"); and 7,396,355 ("`355 patent"), that the `803, `433, `048 and `355 patents are valid and enforceable, and that CoolTouch has infringed the `803, `433, `048 and `355 patents by making, offering for sale, selling, and using certain products. CoolTouch denies that any of its products infringes or has infringed any claim of the `803, `433, `048 and `355 patents directly, indirectly, contributorily, or otherwise and contends that the `803, `433, `048 and `355 patents are invalid for failure to comply with the patent laws of the United States, including, without limitation, the provisions of 35 U.S.C. §§ 101, 102, 103 and 112. A justiciable controversy therefore exists between VNUS and CoolTouch and this Court has jurisdiction under 28 U.S.C.
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ANSWER TO FIRST AMENDED COMPLAINT CASE NO. C 08-03129-JCS

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§§ 1331, 1338(a) and 2201. FIRST COUNTERCLAIM 5. CoolTouch incorporates by reference the allegations of paragraphs 1-4 of these as

though fully set forth herein. 6. CoolTouch has not infringed and is not infringing any valid and enforceable

claims of the `803, `433, `048 and `355 patents. 7. A judicial declaration is necessary and appropriate at this time so that CoolTouch

may ascertain its rights and duties with respect to the manufacture and sale of its products that VNUS alleges infringe the `803, `433, `048 and `355 patents. SECOND COUNTERCLAIM 8. CoolTouch incorporates by reference the allegations of paragraphs 1-7 of these

counterclaims as though fully set forth herein. 9. The claims of the `803, `433, `048 and `355 patents are invalid for failing to

comply with one or more requirements of the patent laws of the United States, including, but not limited to, the conditions for patentability set forth in 35 U.S.C. §§ 101, 102, 103 and 112. 10. A judicial declaration is necessary and appropriate at this time so that CoolTouch

may ascertain its rights and duties with respect to the manufacture and sale of its products that VNUS alleges infringe the `803, `433, `048 and `355 patents. EXCEPTIONAL CASE 11. This is an exceptional case entitling CoolTouch to an award of its attorneys' fees

and expenses incurred in connection with defending and prosecuting this action pursuant to 35 U.S.C. § 285. PRAYER FOR RELIEF WHEREFORE, CoolTouch prays for judgment as follows: A. B. C. VNUS take nothing from its complaint; VNUS' Complaint be dismissed with prejudice; A declaratory judgment that CoolTouch has not infringed and does not infringe,

directly or indirectly, any claims of the `803, `433, `048 and `355 patents, either literally or under
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ANSWER TO FIRST AMENDED COMPLAINT CASE NO. C 08-03129-JCS

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the doctrine of equivalents, willfully or otherwise; D. A declaratory judgment be entered adjudging that the `803, `433, `048 and `355

patents are invalid; E. A declaration that VNUS' claims are limited and/or barred in whole or in part by

the provisions of 35 U.S.C. § 287; F. G. A denial of VNUS' request for damages and injunctive relief; A declaratory judgment that this case is exceptional pursuant to 35 U.S.C. § 285,

granting an award of costs and reasonable attorney fees incurred in connection with this action; and H. The grant to CoolTouch of any further equitable or legal relief as the Court deems

just and proper.

Dated: August 6, 2008

Respectfully submitted, ORRICK, HERRINGTON & SUTCLIFFE LLP

By

/James W. Geriak JAMES W. GERIAK ALLAN W. JANSEN MARK STIRRAT Attorneys for Defendant NEW STAR LASERS, INC. d/b/a COOLTOUCH, INC.

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ANSWER TO FIRST AMENDED COMPLAINT CASE NO. C 08-03129-JCS

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CERTIFICATE OF ELECTRONIC SERVICE I hereby certify that on August 6, 2008, I electronically filed the foregoing document with the Clerk of the Court using the CM/ECF system, which will send electronic notification of such filing to the following individual(s):

Matthew B. Lehr Diem-Suong T. Nguyen Chung G. Suh DAVIS POLK & WARDWELL 1600 El Camino Real Menlo Park, CA 94025 Telephone: (650) 752-2000 Facsimile: (650) 752-2111 Email: [email protected] [email protected] [email protected] I declare under penalty of perjury under the laws of the State of California that the foregoing is true and correct. Executed on August 6, 2008, at Irvine, California. s/James W. Geriak James W. Geriak

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