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

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Howard I. Sobelman (#015559) Jennifer Hadley Dioguardi (#018380) SNELL & WILMER L.L.P. One Arizona Center 400 E. Van Buren Phoenix, AX 85004-2202 Telephone: (602) 382-6000 E-mail: [email protected] [email protected] Roger L. Cook (CA Bar No. 55208) Raquel Pacheco (CA Bar No. 245328) TOWNSEND AND TOWNSEND AND CREW LLP Two Embarcadero Center, Eighth Floor San Francisco, California 94111 Telephone: (415) 576-0200
E-mail: [email protected] [email protected]

Attorneys for Defendant IXYS CORPORATION

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF CALIFORNIA

LEMELSON MEDICAL, EDUCATION & RESEARCH FOUNDATION, LIMITED PARTNERSHIP, Plaintiff, v. EMERSON ELECTRIC CO., et al., Defendants.

Case No. CV-00-0660 PHX-HRH ANSWER OF IXYS CORPORATION TO PLAINTIFF'S SECOND AMENDED COMPLAINT, AND COUNTERCLAIM

CASE NO. CV-00-0660 PHX-HRH

Case 2:00-cv-00660-HRH

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Defendant IXYS Corporation (IXYS) responds to Plaintiff's Second Amended Complaint ("Complaint ") by answering as follows: ALLEGATIONS OF COMPLAINT 1. 2. IXYS admits the allegations in paragraph 1 of the Complaint. IXYS is without knowledge or information sufficient to form a belief as to the

truth of the allegations in paragraph 2 of the Complaint and, therefore, denies same. 3. IXYS is without knowledge or information sufficient to form a belief as to the

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truth of the allegations in paragraph 3 of the Complaint and, therefore, denies same. 4. IXYS is without knowledge or information sufficient to form a belief as to the

truth of the allegations in paragraph 4 of the Complaint and, therefore, denies same. 5. IXYS is without knowledge or information sufficient to form a belief as to the

truth of the allegations in paragraph 5 of the Complaint with respect to each defendant other than IXYS and, therefore, denies same. IXYS admits the allegations are of paragraph 5 of the Complaint with respect to IXYS. 6. IXYS is without knowledge or information sufficient to form a belief as to the

truth of the allegations in paragraph 6 of the Complaint with respect to each defendant other than IXYS and, therefore, denies same. IXYS denies that the issues relating to infringement of the Subject Lemelson Patents may be efficiently resolved in a single case with other defendants.

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IXYS CORPORATION'S ANSWER TO COMPLAINT Case 2:00-cv-00660-HRH Document CASE NO. CV-00-0660 PHX-HRH

7.

IXYS denies the allegations in paragraph 7 of the Complaint, to the extent those

allegations refer to Subject Lemelson Patents as to which partial judgment has been entered in favor of IXYS and against Plaintiff on or about February 3, 2006. IXYS admits that the United States Letters Patents remaining at issue in this action are United States Letters Patent

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Numbers 4,390,586 ("'586"), 5,039,836 ("'836"), 5,170,032 ("'032") and 5,231,259 ("'259") whose correct titles and issue dates are set forth on the faces of those patents. 8. IXYS is without knowledge or information sufficient to form a belief as to the

truth of the allegations in paragraph 8 of the Complaint and, therefore, denies same. 9. IXYS is without knowledge or information sufficient to form a belief as to the

truth of the allegations in paragraph 9 of the Complaint and, therefore, denies same. 10.(a) IXYS is without knowledge or information sufficient to form a belief as to the

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truth of the allegations in paragraph 10 (a) of the Complaint with respect to each defendant other than IXYS and, therefore, denies same. IXYS denies the allegations in paragraph 10 (a) with respect to IXYS, judgment having been entered in favor of IXYS regarding these allegations. 10.(b) IXYS is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 10 (b) of the Complaint with respect to each defendant other than IXYS and, therefore, denies same. IXYS denies the allegations in paragraph 10 (b) with respect to IXYS, judgment having been entered in favor of IXYS regarding these allegations. 10.(c) IXYS is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 10 (c) and, therefore, denies same. 10.(d) IXYS is without knowledge or information sufficient to form a belief as to the

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IXYS CORPORATION'S ANSWER TO COMPLAINT Case 2:00-cv-00660-HRH Document CASE NO.CV-00-0660 PHX-HRH

truth of the allegations in paragraph 10 (d) of the Complaint with respect to each defendant other than IXYS and, therefore, denies same. IXYS denies the allegations in paragraph 10(d) with respect to IXYS. 10.(e) IXYS is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 10 (e) of the Complaint with respect to each defendant

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other than IXYS and, therefore, denies same. IXYS denies the allegations in paragraph 10 (e) with respect to IXYS. 11. IXYS is without knowledge or information sufficient to form a belief as to the

truth of the allegations of paragraph 11 of the Complaint with respect to each defendant other than IXYS and, therefore, denies same. IXYS denies the allegations in paragraph 11 with respect to IXYS. 12. IXYS is without knowledge or information sufficient to form a belief as to the

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IXYS CORPORATION'S ANSWER TO COMPLAINT Case 2:00-cv-00660-HRH Document CASE NO.CV-00-0660 PHX-HRH

truth of the allegations of paragraph 12 of the Complaint with respect to each defendant other than IXYS and, therefore, denies same. IXYS denies the allegations in paragraph 12 with respect to IXYS.
PRAYER FOR RELIEF

13.

IXYS denies that the relief requested in the prayer for relief should be granted. AFFIRMATIVE DEFENSES

For its affirmative defenses, IXYS alleges as follows: FIRST AFFIRMATIVE DEFENSE PROSECUTION LACHES 14. On information and belief, some or all of Plaintiff's claims for relief are barred

by the doctrine of laches, including the doctrine of prosecution laches by reason of Plaintiff's predecessor in interest having unreasonably, without adequate cause, delayed prosecution of its patent applications. SECOND AFFIRMATIVE DEFENSE COLLATERAL ESTOPPEL 15. On information and belief, some or all of Plaintiff 's claims for relief are barred

by the doctrine of collateral estoppel, including estoppel from denying that Plaintiff's claims for relief are barred by the doctrine of prosecution laches, in view of prior decisions involving

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Plaintiff, including the Federal Circuit decision in Symbol Technologies v. Lemelson Medical, Education and Research Foundation, LP, 422 F.3d 1278 (Fed. Cir. (2005). THIRD AFFIRMATIVE DEFENSE NONINFRINGEMENT OF THE '586 PATENT 16. On information and belief, Plaintiff is not entitled to the relief sought because

IXYS does not infringe any valid or enforceable claim of the '586 patent. FOURTH AFFIRMATIVE DEFENSE INVALIDITY OF THE '586 PATENT 17. On information and belief, Plaintiff is not entitled to the relief sought because

the claims of the '586 patent are invalid, including under 35 USC §§101, 102, 103 and/or 112. FIFTH AFFIRMATIVE DEFENSE NONINFRINGEMENT OF THE '836 PATENT 18. On information and belief, Plaintiff is not entitled to the relief sought because

IXYS does not infringe any valid or enforceable claim of the '836 patent. SIXTH AFFIRMATIVE DEFENSE INVALIDITY OF THE '836 PATENT 19. On information and belief, Plaintiff is not entitled to the relief sought because

the claims of the '836 patent are invalid, including under 35 USC §§101, 102, 103 and/or 112. SEVENTH AFFIRMATIVE DEFENSE NONINFRINGEMENT OF THE '032 PATENT 20. On information and belief, Plaintiff is not entitled to the relief sought because

IXYS does not infringe any valid or enforceable claim of the '032 patent. EIGHTH AFFIRMATIVE DEFENSE INVALIDITY OF THE '032 PATENT 21. On information and belief, Plaintiff is not entitled to the relief sought because

the claims of the '032 patent are invalid, including under 35 USC §§101, 102, 103 and/or 112.

IXYS CORPORATION'S ANSWER TO COMPLAINT Case 2:00-cv-00660-HRH Document CASE NO.CV-00-0660 PHX-HRH

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NINTH AFFIRMATIVE DEFENSE NONINFRINGEMENT OF THE '259 PATENT 22. On information and belief, Plaintiff is not entitled to the relief sought because

IXYS does not infringe any valid or enforceable claim of the '259 patent. TENTH AFFIRMATIVE DEFENSE INVALIDITY OF THE '259 PATENT 23. On information and belief, Plaintiff is not entitled to the relief sought because

the claims of the '259 patent are invalid, including under 35 USC §§101, 102, 103 and/or 112.

ELEVENTH AFFIRMATIVE DEFENSE STATUTE OF LIMITATIONS 24. On information and belief, Plaintiff is not entitled to the relief sought because its

claim for damages is limited by the applicable statutes of limitations, including 35 USC §§286, 287(a) and/or 271(b). TWELFTH AFFIRMATIVE DEFENSE EQUITABLE ESTOPPEL 25. On information and belief, Plaintiff is not entitled to the relief sought because

some or all of Plaintiff's claims for relief are barred by the doctrine of equitable estoppel, including the doctrine of prosecution history estoppel. THIRTEENTH AFFIRMATIVE DEFENSE LICENSE 26. On information and belief, Plaintiff is not entitled to the relief sought because

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IXYS CORPORATION'S ANSWER TO COMPLAINT Case 2:00-cv-00660-HRH Document CASE NO.CV-00-0660 PHX-HRH

IXYS is licensed under the patents-in-suit pursuant to license agreements between Plaintiff and IXYS's vendors, including vendors who manufacture semiconductor products for IXYS and/or lithography masks for use in manufacturing semiconductor products for IXYS.

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FOURTEENTH AFFIRMATIVE DEFENSE EXHAUSTION 27. On information and belief, Plaintiff is not entitled to the relief sought because

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some or all of Plaintiff's claims for relief are barred by the doctrine of patent exhaustion. COUNTERCLAIMS IXYS alleges as its Counterclaim as follows: 28. Counterclaim Plaintiff IXYS Corporation is a corporation organized and existing

under the laws of the State of California and maintains a place of business in Santa Clara, California. 29. 30. Venue is proper in this Court pursuant to 28 USC §1391(b). In its Complaint, Plaintiff Lemelson Medical, Education & Research

Foundation, Limited Partnership ("Plaintiff") alleges that it is the owner of all right, title and interest to the '586, '032, '259 and '836 patents by virtue of assignment from Jerome H. Lemelson; and further alleges that IXYS has infringed the '586, '032, '259 and '836 patents. 31. An actual controversy exists between Plaintiff and IXYS by virtue of the

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IXYS CORPORATION'S ANSWER TO COMPLAINT Case 2:00-cv-00660-HRH Document CASE NO.CV-00-0660 PHX-HRH

allegations in Plaintiff's Complaint in this action. 32. Upon information and belief, the '586, '032, '259 and '836 patents are invalid for

failure to comply with one or more of the requirements of 35 USC §§ 101, 102, 103 and/or 112. 33. Upon information and belief, IXYS has not directly infringed, contributorily

infringed, or induced infringement of any valid and enforceable claim of the '586, '032, '259 and/or '836 patents. PRAYER FOR RELIEF WHEREFORE, Defendant/Counterclaim Plaintiff prays for: A. A judgment declaring each claim of the '586, '032, '259 and '836 patents invalid.

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B.

A judgment declaring that IXYS has not directly infringed, contributorily

infringed, or induced infringement of any valid and enforceable claim of the '586, '032, '259 and '836 patents. C. A judgment deeming this to be an exceptional case under 35 USC §285 and

awarding IXYS its attorney fees, expenses and costs in this action. D. Such other and further relief as the Court deems just and proper. Respectfully submitted, By: /s/ Roger L. Cook TOWNSEND and TOWNSEND and CREW LLP SNELL & WILMER L.L.P. Attorneys for Defendant IXYS CORPORATION
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DATED: December 20, 2007

IXYS CORPORATION'S ANSWER TO COMPLAINT Case 2:00-cv-00660-HRH Document CASE NO.CV-00-0660 PHX-HRH

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61240771 v1

CERTIFICATE OF SERVICE I certify that, on December 20, 2007, I caused this paper to be served through the Court's electronic filing and service system (ECF) to those registered with that system for this case and that I caused a copy to be delivered by U.S. mail, postage prepaid, to Judge Holland's chambers at: United States District court, 222 West 7th Avenue, Unit 54, Anchorage, AK 99513.
s/ Laureen Finger

CASE NO. CV-00-0660 PHX-HRH

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