Free Answer to Counterclaim - District Court of Delaware - Delaware

Case 1:07-cv-00729-SLR

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ARTHROCARE CORPORATION, Plaintiff, v. GYRUS MEDICAL, INC., GYRUS ENT, L.L.C., and GYRUS ACMI, INC., Defendants. C.A. No. 07-729 (SLR) JURY TRIAL DEMANDED

ARTHROCARE CORPORATION'S REPLY TO DEFENDANTS' COUNTERCLAIM ArthroCare Corporation ("ArthroCare") replies to the counterclaim in the Answer, Defenses, and Counterclaim of Gyrus Medical, Inc., Gyrus ENT, L.L.C. and Gyrus ACMI, Inc. (collectively "Gyrus") as follows: REPLY TO COUNTERCLAIM FOR DECLARATORY RELIEF 25. ArthroCare admits that this Court has subject matter jurisdiction under 28

U.S.C. §§ 1338, 2201, and 2202 over Gyrus's Counterclaim and that venue is proper in this district under 28 U.S.C. §1391. Except as expressly admitted, ArthroCare denies the remaining allegations in paragraph 25 of Gyrus's Counterclaim and denies that Gyrus is entitled to any relief set forth in its Counterclaim or prayer for Counterclaim relief. 26. ArthroCare admits that Gyrus, by denying ArthroCare's allegations of

infringement, has created an actual controversy between ArthroCare and Gyrus. Except as so expressly admitted, ArthroCare denies the allegations of paragraph 26 of Gyrus's Counterclaim.

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REPLY TO COUNTERCLAIM COUNT I (Non-Infringement and Invalidity) 27. Counterclaim. 28. Counterclaim. 29. Counterclaim. 30. Counterclaim. REPLY TO COUNTERCLAIM COUNT II (Intervening Rights) 31. Counterclaim. REPLY TO COUNTERCLAIM COUNT III (Inequitable Conduct) 32. ArthroCare admits that in ArthroCare Corporation v. Ethicon, Inc., Mitek ArthroCare denies the allegations of paragraph 31 of Gyrus's ArthroCare denies the allegations of paragraph 29 of Gyrus's ArthroCare denies the allegations of paragraph 29 of Gyrus's ArthroCare denies the allegations of paragraph 28 of Gyrus's ArthroCare denies the allegations of paragraph 27 of Gyrus's

Surgical Products, Inc., and Gynecare, Inc., Case No. C-98-0609-WHO (N.D. Cal.), the Court, in an interlocutory non-final decision, denied ArthroCare's motion for a preliminary injunction in a Memorandum Decision and Order dated on or about December 2, 1998. Except as so expressly admitted, ArthroCare denies the allegations of paragraph 32 of Gyrus's Counterclaim. 33. ArthroCare admits that John Raffle submitted a declaration in the '882

Patent reexamination proceeding, participated in an interview with the Patent Office Examiner during which the patentability of claims 1 and 32, among others, was discussed, and that ArthroCare disclosed to the Patent Office the Court's interlocutory non-final Memorandum

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Decision and Order in the Ethicon case.

Except as so admitted, ArthroCare denies the

allegations of paragraph 33 of Gyrus's Counterclaim. 34. Counterclaim. 35. ArthroCare denies that Gyrus is entitled to any of the relief set forth in its ArthroCare denies the allegations of paragraph 34 of Gyrus's

prayer for Counterclaim relief. PRAYER FOR RELIEF WHEREFORE, ArthroCare prays for judgment in its favor and against Gyrus as follows: A. That Gyrus be adjudged to have infringed the '882 patent and that the

Court enter judgment declaring the '882 patent to be enforceable, not invalid, and infringed by Gyrus; B. That Gyrus, its officers, agents, servants, employees, attorneys, and those

persons in active concert or participation with any of them, be preliminarily and permanently restrained and enjoined from directly or indirectly infringing the '882 patent; C. An award of damages sufficient to compensate ArthroCare for Gyrus's

infringement, pursuant to 35 U.S.C. § 284, said damages to be trebled because of Gyrus's willful infringement; D. An assessment of pre-judgment and post-judgment interest and costs

against Gyrus, together with an award of such interest and costs, in accordance with 35 U.S.C. § 284; E. That Gyrus be directed to pay ArthroCare's attorneys' fees incurred in

connection with this lawsuit pursuant to 35 U.S.C. § 285;

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F.

That Gyrus's counsel be directed to pay ArthroCare's excess costs,

expenses, and attorneys' fees pursuant to 28 U.S.C. § 1927; G. That Gyrus's Counterclaim be dismissed with prejudice and that Gyrus

take nothing by its counterclaim against ArthroCare; and H. deem just and proper. DEMAND FOR JURY TRIAL Pursuant to Federal Rule of Civil Procedure 38, ArthroCare demands a trial by jury on all issues so triable. MORRIS, NICHOLS ARSHT & TUNNELL LLP /s/ Karen Jacobs Louden _________________________________________ Jack B. Blumenfeld (#1014) Karen Jacobs Louden (#2881) 1201 North Market Street Wilmington, DE 19899-1347 (302) 658-9200 Attorneys for Plaintiff ArthroCare Corporation Jared B. Bobrow WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 (650) 802-3000 Kevin Kudlac Cabrach J. Connor WEIL, GOTSHAL & MANGES LLP 8911 Capital of Texas Highway Suite 1350 Austin, TX 78759 (512) 349-1930 January 31, 2008 That ArthroCare be granted such other and further relief as this Court may

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CERTIFICATE OF SERVICE I, the undersigned, hereby certify that on January 31, 2008, I electronically filed the foregoing with the Clerk of the Court using CM/ECF, which will send notification of such filing(s) to the following: Richard L. Horwitz I also certify that copies were caused to be served on January 31, 2008, upon the following in the manner indicated: BY HAND AND E-MAIL Richard L. Horwitz David E. Moore Potter Anderson & Corroon LLP 1313 N. Market Street P.O. Box 951 Wilmington, DE 19899 BY E-MAIL Darle M. Short Thomas J. Pardini Daniel A. Tanner, III Daniel M. Schneider Oliff & Berridge, PLC 277 S. Washington Street, Ste. 500 Alexandria, VA 22314

/s/ Karen Jacobs Louden ___________________________ [email protected] (#2881)