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Case 1:04-cv-00357-GMS

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Filed 05/18/2005

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE INTERMEC IP CORP., a Delaware corporation, Plaintiff, v. SYMBOL TECHNOLOGIES, INC., a Delaware corporation, Defendant. ) ) ) ) ) ) ) ) ) ) )

C.A. No. 04-357-GMS DEMAND FOR JURY TRIAL

REPLY OF INTERMEC IP CORP. TO THE SECOND AMENDED COUNTERCLAIMS OF SYMBOL TECHNOLOGIES, INC. Intermec IP Corp. ("Intermec") replies to the numbered paragraphs of the Second Amended Counterclaims of Symbol Technologies, Inc. ("Symbol") as follows: 51. Intermec admits that Symbol's second amended counterclaims purport to

set forth claims under the patent laws of the United States and the Declaratory Judgment Act. 52. Intermec admits that this Court has jurisdiction over Symbol's second

amended counterclaims under 28 U.S.C. §§ 1331, 1338(a) and 2201. 53. 54. 55. Intermec admits that this Court has personal jurisdiction over it. Intermec admits that venue is proper in this district. Upon information and belief, Intermec admits that Symbol is a Delaware

corporation with a principal place of business at One Symbol Plaza, Holtsville, NY 11742. Intermec is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations in paragraph 55 of Symbol's second amended counterclaims. 56. Intermec admits that it is a Delaware corporation having its principal place

of business at 6001 36th Ave. West, Everett, WA 98203.

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57.

Intermec admits that U.S. Patent No. 5,912,632 ("the `632 patent") is

entitled "Single Chip RF Tag Oscillator Synchronized By Base Station Modulation Frequency," and was issued on June 15, 1999. 58. Intermec admits that U.S. Patent No. 5,528,222 ("the `222 patent") is

entitled "Radio Frequency Circuit And Memory In Thin Flexible Package," and was issued on June 18, 1996. 59. Intermec admits that U.S. Patent No. 5,995,019 ("the `019 patent") is

entitled "Method For Communicating With RF Transponders," and was issued on November 30, 1999. 60. Intermec admits that U.S. Patent No. 6,371,375 ("the `375 patent") is

entitled "Method And Apparatus For Associating Data With A Wireless Memory Device," and was issued on April 16, 2002. 61. Intermec admits that it is the present owner of all rights and title to the

`632, `222, `019 and `375 patents. 62. Intermec admits that it filed an Amended and Supplemental Complaint on

April 20, 2005, in which Intermec alleged that Symbol has infringed the `632, `222, `019 and `375 patents; otherwise, denied. 63. Intermec admits that a justiciable controversy exists between Intermec and

Symbol concerning the validity, enforceability and/or infringement of the `632, `222, `019 and `375 patents.

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FIRST CLAIM FOR RELIEF AGAINST INTERMEC (Declaratory Judgment of Invalidity of the `632 Patent, the `222 Patent, the `019 Patent or the `375 Patent) 64. Intermec restates and incorporates its responses to paragraphs 51-63 of

Symbol's second amended counterclaims as if fully set forth herein. 65. Intermec denies the allegations in paragraph 65 of Symbol's second

amended counterclaims. 66. Intermec denies the allegations in paragraph 66 of Symbol's second

amended counterclaims. 67. Intermec denies the allegations in paragraph 67 of Symbol's second

amended counterclaims. 68. Intermec denies the allegations in paragraph 68 of Symbol's second

amended counterclaims. SECOND CLAIM FOR RELIEF AGAINST INTERMEC (Declaratory Judgment of Noninfringement of the `632 Patent, the `222 Patent, the `019 Patent or the `375 Patent) 69. Intermec restates and incorporates its responses to paragraphs 51-63 of

Symbol's amended counterclaims as if fully set forth herein. 70. Intermec denies the allegations in paragraph 70 of Symbol's second

amended counterclaims. 71. Intermec denies the allegations in paragraph 71 of Symbol's second

amended counterclaims. 72. Intermec denies the allegations in paragraph 72 of Symbol's second

amended counterclaims.

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73.

Intermec denies the allegations in paragraph 73 of Symbol's second

amended counterclaims. PRAYER FOR RELIEF In addition to the relief prayed for in Intermec's Amended and Supplemental Complaint, Intermec requests that this Court: A. Dismiss Symbol's second amended counterclaims with prejudice and

declare that the claims of the `632, `222, `019 and `375 patents are valid, enforceable and infringed; B. Declare that this case is exceptional pursuant to 35 U.S.C. § 285, and

award Intermec its costs and reasonable attorneys' fees; and C. proper. MORRIS, NICHOLS, ARSHT & TUNNELL /s/ Leslie A. Polizoti Jack B. Blumenfeld (#1014) Rodger D. Smith II (#3778) Leslie A. Polizoti (#4299) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899 (302) 658-9200 [email protected] Attorneys for Plaintiff Intermec IP Corp. Grant Intermec such other and further relief as the Court deems just and

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OF COUNSEL: Frederick A. Lorig Bruce R. Zisser BRIGHT & LORIG 633 West Fifth Street Suite 3330 Los Angeles, CA 90071 (213) 627-7774 May 18, 2005
464524

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CERTIFICATE OF SERVICE I hereby certify that on May 18, 2005, I electronically filed the foregoing document with the Clerk of the Court using CM/ECF, which will send notification of such filing to Karen L. Pascale, Jack B. Blumenfeld and Rodger D. Smith II. I further certify that copies of the foregoing document were caused to be served on May 18, 2005 upon the following in the manner indicated: BY HAND Karen L. Pascale, Esquire Bouchard, Margules & Friedlander 222 Delaware Avenue Suite 1400 Wilmington, DE 19801

BY FEDERAL EXPRESS Eric J. Lobenfeld, Esquire Hogan & Hartson 875 Third Avenue New York, NY 10022

/s/ Leslie A. Polizoti Leslie A. Polizoti (#4299) MORRIS, NICHOLS, ARSHT AND TUNNELL (302) 658-9200 [email protected]

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