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

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LAW OFFICES One Arizona Center, 400 E. Van Buren Phoenix, Arizona 85004-2202 (602) 382-6000

Jennifer Hadley Dioguardi (#018380) SNELL & WILMER L.L.P. One Arizona Center 400 E. Van Buren Phoenix, AZ 85004-2202 Telephone: (602) 382-6371 Facsimile: (602) 382-6070 E-mail: [email protected] Brad W. Blocker (Admitted Pro Hac Vice) Colby B. Springer (Admitted Pro Hac Vice) John S. Ferrell (Admitted Pro Hac Vice) CARR & FERRELL LLP 2200 Geng Road Palo Alto, CA 94303 Telephone: (650) 812-3400 Facsimile: (650) 812-3444 E-mail: [email protected] [email protected] [email protected] Attorneys for Defendants VIA Technologies, Inc. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA

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Lemelson Medical, Education & Research Foundation, Limited Partnership, Plaintiff,

No. CV-00-0660 PHX-HRH ANSWER TO SECOND AMENDED COMPLAINT

Emerson Electric Co., et al, Defendants. Defendant VIA Technologies, Inc. ("VIA"), by its undersigned attorneys, hereby submits this original answer in response to the Lemelson Medical, Education & Research Foundation, Limited Partnership's ("Lemelson") Second Amended Complaint dated December 24, 2001. 1. VIA admits that Lemelson has brought the present action under the

auspices of the Patent Laws of the United States, 35 United States Code. VIA admits that

Case 2:00-cv-00660-HRH

Document 618

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the district court has original jurisdiction of any action arising under the Patent Laws of the United States as provided by 28 U.S.C. § 1338(a). 2. VIA is without sufficient information as to form a belief as to the truth of

whether Lemelson is a Nevada partnership and on that basis denies said allegation. VIA is without sufficient information as to form a belief as to the truth of whether Lemelson is the owner of the Subject Lemelson Patents as identified in the Second Amended Complaint and on that basis denies said allegation. VIA therefore denies that Lemelson is entitled to sue for and recover any relief, including past damages, as set forth in the Second Amended Complaint. 3. VIA is without sufficient information as to form a belief as to the truth of

the allegations as set forth in paragraph three of the Second Amended Complaint and on that basis denies each and every allegation set forth therein. 4. VIA admits that Jerome H. Lemelson is dead. VIA is otherwise without

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sufficient information as to form a belief as to the truth of the allegations as set forth in paragraph four of the Second Amended Complaint and on that basis denies each and every allegation set forth therein including but not limited to any characterization of Jerome H. Lemelson as one of the most prolific inventors of all time. 5. VIA is without sufficient information as to form a belief as to the truth of

the allegations set forth in paragraph five of the Second Amended Complaint as they concern any defendant other than VIA and on that basis denies each and every allegation set forth therein. VIA admits that its business involves various semiconductor products. VIA contends, however, that the allegations set forth in paragraph five of the Second Amended Complaint are so vague and ambiguous as to prevent VIA from being able to form a belief as to the truth of the allegations otherwise set forth and on that basis denies each and every allegation set forth in the first sentence of paragraph five of the Second Amended Complaint as it pertains to VIA. VIA admits that it is a defendant identified in the caption of the Second Amended Complaint but otherwise denies any liability for any cause of action set forth in the Second Amended Complaint.
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6.

VIA is without sufficient information as to form a belief as to the truth of

the allegations set forth in the sixth paragraph of the Second Amended Complaint and on that basis denies each and every allegation set forth therein including but not limited whether said issues should be resolved in a single case. 7. VIA admits that Lemelson has brought a cause of action for patent

infringement of the patents identified as the "Subject Lemelson Patents." VIA denies that the Subject Lemelson Patents as identified in sections (a)-(r) of paragraph seven of the Second Amended Complaint are at issue as one or more of said patents were invalidated and/or held unenforceable by the United States District Court for the District of Nevada, said unenforceability having been subsequently affirmed by the United States Court of Appeals for the Federal Circuit in the matter of Symbol Technologies et al. v. Lemelson Medical, Education & Research Foundation, LP. 8. VIA admits that the United States Patent and Trademark Office issued each

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of the Subject Lemelson Patents but denies that the Subject Lemelson Patents embody any invention purportedly claimed therein. VIA is without sufficient knowledge as to form a belief as to the truth as to whether Jerome H. Lemelson assigned all right, title and interest in the Subject Lemelson Patents to Lemelson, including the right to sue for past damages and on that basis denies said allegations as set forth in the second sentence of the eighth paragraph of the Second Amended Complaint. 9. VIA is without sufficient knowledge as to form a belief as to the truth of

the allegations set forth in the ninth paragraph of the Second Amended Complaint and on that basis denies each and every allegation as set forth therein. 10. VIA denies each and every allegation set forth in section (a) of paragraph

ten of the Second Amended Complaint as each of the patents identified therein was invalidated and/or held unenforceable by the United States District Court for the District of Nevada, said unenforceability having been subsequently affirmed by the United States Court of Appeals for the Federal Circuit in the matter of Symbol Technologies et al. v. Lemelson Medical, Education & Research Foundation, LP. VIA denies each and every
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LAW OFFICES One Arizona Center, 400 E. Van Buren Phoenix, Arizona 85004-2202 (602) 382-6000

allegation set forth in section (b) of paragraph ten of the Second Amended Complaint as each of the patents identified therein was invalidated and/or held unenforceable by the United States District Court for the District of Nevada, said unenforceability having been subsequently affirmed by the United States Court of Appeals for the Federal Circuit in the matter of Symbol Technologies et al. v. Lemelson Medical, Education & Research Foundation, LP. VIA is without sufficient knowledge as to form a belief as to the truth of the allegations set forth in section (c) of the tenth paragraph of the Second Amended Complaint and on that basis denies each and every allegation set forth therein. VIA specifically denies each and every allegation set forth in section (d) of the tenth paragraph of the Second Amended Complaint including but not limited to any allegation that VIA infringes U.S. patent number 4,390,586. VIA is without sufficient knowledge as to form a belief as to the truth of the allegation set forth in section (d) of the tenth paragraph as they pertain to any named defendant other than VIA and on that basis denies the allegations set forth therein. VIA denies each and every allegation set forth in section (e) of the tenth paragraph of the Second Amended Complaint including but not limited to any allegation that VIA infringes U.S. patent numbers 5,039,836; 5,170,032; and 5,231,259 said denial being subject to the exception that Lemelson does not allege infringement of any apparatus claim of U.S. patent 5,039,836. As to that allegation alone, VIA admits that Lemelson does not allege infringement of any apparatus claim of U.S. patent 5,039,836. VIA is otherwise without sufficient knowledge as to form a belief as to the truth of the allegation set forth in section (e) of the tenth paragraph as they pertain to any named defendant other than VIA and on that basis denies the allegations set forth therein. 11. VIA is without sufficient information as to form a belief as to the basis of

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the truth as to whether any party other than VIA infringes any of the Subject Lemelson Patents and on that basis denies the allegation. VIA specifically denies that VIA has infringed any of the Subject Lemelson Patents including the allegation that VIA will

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continue to infringe some or all of the unexpired Subject Lemelson Patents unless enjoined by this Court. 12. VIA is without sufficient information as to form a belief as to the basis of

the truth as to whether any party other than VIA has been subject to written notice as to any alleged infringement of the Subject Lemelson Patents and on that basis denies the allegation. VIA specifically denies the allegations of paragraph twelve of the Second Amended Complaint as they pertain specifically to VIA including not limited to the allegation that VIA has willfully infringed any of the Subject Lemelson Patents. VIA'S AFFIRMATIVE DEFENSES VIA asserts the following affirmative defenses: First Affirmative Defense (Failure to State a Claim) Lemelson has failed to state a claim upon which relief can be granted. Second Affirmative Defense (Statute of Limitations) Lemelson's claims are barred, in whole or in part, by the applicable statute of limitations. Third Affirmative Defense (Estoppel) Lemelson's claims are barred, in whole or in part, by the doctrine of estoppel. Fourth Affirmative Defense (Laches) Lemelson's claims are barred, in whole or in part, by the doctrine of laches. Fifth Affirmative Defense (Waiver) Lemelson's claims are barred, in whole or in part, by the doctrine of waiver.

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Document 618- 5 - Filed 12/20/2007

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Sixth Affirmative Defense (Unclean Hands) Lemelson's claims are barred, in whole or in part, by the doctrine of unclean hands. Seventh Affirmative Defense (Failure to Mitigate) Lemelson's claims are barred, in whole or in part, by its failure to mitigate injury and its failure to mitigate damages. Eighth Affirmative Defense (Lack of Injury in Fact) Lemelson's cannot satisfy its burden, in whole or in part, of demonstrating that Lemelson suffered any injury in fact, nor did Lemelson suffer any such injury. Ninth Affirmative Defense (Special Case) Lemelson cannot satisfy its burden, in whole or in part, of demonstrating that the present case is a special case. Tenth Affirmative Defense (Lack of Standing) Lemelson lacks standing to assert a claim of infringement of one or more the Subject Lemelson Patents. Eleventh Affirmative Defense (Lack of Infringement) VIA has not directly, indirectly, contributorily or by inducement infringed any claim of the Subject Lemelson Patents. Twelfth Affirmative Defense (Invalidity) The claims of the Subject Lemelson Patent are invalid for failure to comply with the requirements of 35 U.S.C. §§ 101, 102, 103 and/or 112.
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LAW OFFICES One Arizona Center, 400 E. Van Buren Phoenix, Arizona 85004-2202 (602) 382-6000

Thirteenth Affirmative Defense (Prosecution History Estoppel) The patentee has taken certain positions and/or done certain acts before the United States Patent and Trademark Office ("PTO") during prosecution of the applications that matured into the Subject Lemelson Patents to achieve allowance of the claims of those patents. Those positions and/or acts estop and/or preclude Lemelson from contending that VIA has infringed any of the claims of the Subject Lemelson Patents. Fourteenth Affirmative Defense (Marking) Any and all past damages in this action--if any--are barred for failure to comply with 35 U.S.C. § 287. Fifteenth Affirmative Defense (Prosecution History Laches Unenforceability) Lemelson knowingly and willingly engaged in unreasonable and unexplained delay during prosecution of the Lemelson Subject Patents before the United States Patent and Trademark Office. Said delay constitutes a deliberate pattern of egregious misuse of the statutory patent system thereby rendering the Lemelson Subject Patent unenforceable. WHEREFORE, VIA PRAYS: (a) (b) (c) (d) (e) (f) (g) (h) (i) that the Court find that the Lemelson Patents have not been infringed-- willfully or otherwise--by VIA; that Lemelson take nothing by way of damages, costs, or attorneys fees; that Lemelson be denied injunctive relief; that the Subject Lemelson Patents be deemed invalid; that the Subject Lemelson Patents be deemed not infringed by VIA; that the Subject Lemelson Patents be deemed unenforceable; that this case be deemed exceptional; that VIA be entitled to an award of its reasonable attorneys' fees in the defense and prosecution of this action; such other and further relief as this Court may deem just and proper.
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Case 2:00-cv-00660-HRH

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LAW OFFICES One Arizona Center, 400 E. Van Buren Phoenix, Arizona 85004-2202 (602) 382-6000

DATED this 20th day of December, 2007. SNELL & WILMER L.L.P. By: s/ Jennifer Hadley Dioguardi Jennifer Hadley Dioguardi (#018380) One Arizona Center 400 E. Van Buren Phoenix, AZ 85004-2202 E-mail: [email protected] -andBrad W. Blocker (Admitted Pro Hac Vice) Colby B. Springer (Admitted Pro Hac Vice) John S. Ferrell (Admitted Pro Hac Vice) Carr & Ferrell LLP 2200 Geng Road Palo Alto, CA 94303 E-mail: [email protected] [email protected] [email protected] Attorneys for Defendant VIA Technologies, Inc.

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Document 618- 8 - Filed 12/20/2007

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LAW OFFICES One Arizona Center, 400 E. Van Buren Phoenix, Arizona 85004-2202 (602) 382-6000

CERTIFICATE OF SERVICE I hereby certify that on the 20th day of December, 2007, I electronically transmitted the attached document to the Clerk's Office using the CM/ECF System for filing and transmittal of a Notice of Electronic Filing to the following CM/ECF registrants: Louis J. Hoffman Louis J. Hoffman, P.C. 11811 North Tatum Boulevard, Suite 2100 Phoenix, AZ 85028 and Victoria Gruver Curtin Victoria Gruver Curtin PLC 14555 North Scottsdale Road., Suite 160 Scottsdale, AZ 85254 Attorneys for Plaintiff Roger L. Cook (Admitted Pro Hac Vice) Townsend & Townsend & Crew LLP Two Embarcadero Center, 8th Floor San Francisco, CA 94111 Attorneys for Defendant IXYS Corporation A DUPLICATE COPY of this document has also been forwarded directly, via overnight delivery, to: Honorable H. Russel Holland United States District Court 222 West 7th Avenue, Unit 54 Anchorage, AK 99513 SNELL & WILMER L.L.P. By: s/ Jennifer Hadley Dioguardi Jennifer Hadley Dioguardi (#018380) One Arizona Center 400 E. Van Buren Phoenix, AZ 85004-2202 E-mail: [email protected] -andBrad W. Blocker (Admitted Pro Hac Vice) Colby B. Springer (Admitted Pro Hac Vice) John S. Ferrell (Admitted Pro Hac Vice) Carr & Ferrell LLP 2200 Geng Road Palo Alto, CA 94303 E-mail: [email protected] [email protected] [email protected] Attorneys for Defendant VIA Technologies, Inc.

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2086163.1

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