Free Letter - District Court of Delaware - Delaware

Case 1:07-cv-00442-JJF

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EXHIBIT A

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EXHIBIT B

Case 2:07-cv-08182-GPS-CW Document 12 Filed 02/01/2008 Page 2 of of 9 Case 1:07-cv-00442-JJF Document 26-3 Filed 01/28/2008 Page 1 10

JAMES B. HICKS. SBN 109117 GARY W. PARK, SBN 173390 HICKS I PARK LLP 824 Wilshire Boulevard, Suite 300 900 17

Attorneys for Defendant Counterclaimant, and Third-Party ~ l a i n h fHicks I Park LLP f

UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA
RATES TECHNOLOGY INC., Plaintiff,
VS.

Case No. CV 07-8 182 GPS (CWx)

JAMES B. HICKS, et al., Defendants. HICKS I PARK LLP, Counterclaimant and Third-Party Plaintiff,
VS.

RATES TECHNOLOGY INC. a Delaware corporation; and DOBS 1-25, and Counterclaim-defendants,

COIJNTERCLAIMAND THIRDPARTY COMPLAINT FOR DECLARATORY REXIEF

EPSTEIN DRANGEL BAZERMAN & JAMES, LLP, a New York limited liabili artnershi . LAZER, APTHEKER, %&ELLA YEDID, P.C., a Ne York rofessional corporation; and ~0~826-50, Third-Party Defendants.

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DEMAND FOR JURY TRIAL

Defendant, Counterclaimant and Third-Party Plaintiff Hicks I Park LLP ("Defendant"), files this counterclaim and third-party complaint, on the grounds that such allegations are likely to have evidentiary support after a reasonable opportunity

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for further investigation or discovery, as follows: 1
COUNTERCLAIM AND THIRD-PARTY COMPLAINT; DEMAND FOR JURY TRIAL

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1.

Counterclaim-Defendant Rates Technology Inc. ("RTI") is a corpora-

tion formed under the laws of the State of Delaware, with its principal place of msiness in New York, and is a plaintiff who has submitted to the jurisdiction of this court. 2. Upon information and belief, Third-Party Defendant Epstein Drangel Bazerman & James, LLP ("Epstein") is a limited liability partnership formed under ;he laws of the State of New York, with its principal place of business in New York, Formed of partners who are citizens and residents of the State of New York. Epstein .s named as a Cross-Claim-Defendant under Fed.R.Civ.P. 14(a), on the grounds that .t may be liable to the Defendant for all or part of a claim asserted by the Plaintiffs .n the action against the Defendant. 3. Upon information and belief, Third-Party Defendant Lazer, Aptheker,

Xosella & Yedid, P.C. ("Lazer") is a professional corporation formed under the laws ~fthe State of New York, with its principal place of business in New York. Lazer is lamed as a Cross-Claim-Defendant under Fed.R.Civ.P. 14(a), on the grounds that it nay be liable to the Defendant for all or part of a claim asserted by the Plaintiffs in :he action against the Defendant. 4. Defendant, Counterclaimant, and Third-Party Plaintiff Hicks I Park

2LP is a defendant in this action, and is a limited liability partnership fonned under .he laws of the State of California, with its principal place of business in this judicial lisctrict, formed of partners who are citizens and residents of the State of California.
5.

The Court has subject matter jurisdiction over the patent declaratory

eelief claims alleged below under 28 U.S.C. 6.

5 5 1331, 1338 and 220 1-02.

The Court has subject matter jurisdiction over the other claims alleged

)elow under 28 U.S.C. $5 1332(a) and 2201-02; and under 28 U.S.C. 5 1338 and the loctrine of supplemental jurisdiction under 28 U.S.C. 5 1367(a), since they requ.ire :he resolution of substantial questions of patent law, and are so related to the patent

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claims in this case within the Court's original jurisdiction that they form part of the same case or controversy under Article I11 of the United States Constitution. 7. 8. Venue is proper under 28 U.S.C. §1391(a). The counterclaim also Counterclaim-Defendants Does 1 through 25 are sued under fictitious responds to plaintiff RTI's complaint filed in this Court. names. Defendant is informed and believes, and on that basis alleges, that each Counterclaim-Defendant sued under such fictitious name is in some manner responsible for the wrongs and damages as alleged below, and in so acting was functioning as the agent, servant, partner and employee of the other CounterclaimDefendants, and in doing the actions mentioned below was acting within the course and scope of his or her authority as such agent, servant, partner and employee with the permission and consent of the other Counterclaim-Defendants. 9. Third-Party Defendants Does 26 through 50 are sued under fictitious

names. Defendant is informed and believes, and on that basis alleges, that each Third-Party Defendant sued under such fictitious name is in some manner responsible for the wrongs and damages as alleged below, and in so acting was functioning as the agent, servant, partner and employee of the other Third-Party Defendants, and in doing the actions mentioned below was acting within the course and scope of his or her authority as such agent, servant, partner and employee with the permission and consent of the other Third-Party Defendants.

FIRST CLAIM FOR DECLARATORY RELIEF
(By Defendant Against RTI and Does 1-25) 10. Defendant repeats the allegations in paragraphs 1 through 9 above, as RTI is the owner of United States Patent number 5,425,085 (the " '08 5

if stated in full herein. 11.

Patent"), for inventions relating to the routing of telephone calls based upon cost; and of United States Patent Number 5,5 19,769 (the " '769 Patent"), for inventions relating to a method for updating a database in a telephone call routing system. 3
COUNTERCLAIM AND THIRD-PARTY COMPLAINT; DEMAND FOR JURY TRIAL

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12.

RTI's complaint alleges that Defendant through its partner Jim Hicks

engaged in professional malpractice and other torts and wrongful conduct in connection with litigation concerning such patents, and that as a result of such alleged conduct, RTI was supposedly damaged. 13. An actual controversy, within the meaning of 28 U.S.C. 5 5220 1-02, sxists between RTI on the one hand, and Defendant on the other hand, on the invalidity and enforceability of such patents, in that RTI's lead patent counsel Robert L. Epstein, with the Epstein law firm, has expressed concern that RTI's president Gerald Weinberger may have backdated, forged, or otherwise falsified documents relating to the development of the inventions described in such patents, which if true, could affect the validity and enforceability of such patents. 14. On information and belief, and if RTI's lead patent counsel is correct in

nis concern that RTI's president Gerald Weinberger may have backdated, forged, or 3therwise falsified documents relating to the development of the inventions described in such patents, the claims of such patents may be and/or are invalid ~nd/or unenforceable for failing to comply with the provisions of the Patent Laws, I'itle 35 U.S.C., including without limitation one or more of 35 U.S.C. 5 5 101, 102, 103, and 112. Defendant has a reasonable basis for making the allegations :ontained in this paragraph, and believes they are likely to have evidentiary support Ifter a reasonable opportunity for further investigation or discovery. 15. Accordingly, Defendant is entitled to declaratory relief as to whether

;he claims of RTI's '085 and '769 patents are invalid and/or unenforceable for Failing to comply with the provisions of the Patent Laws, Title 35 U.S.C., including without limitation one or more of 35 U.S.C.

5 5 101, 102, 103, and 112, in that such

nvalidity and/or unenforceability would affect the amount of damages sought by RTI in its malpractice and other claims in this case. Defendant has a reasonable 3asis for making the allegations contained in this paragraph, and believes they are 4 COUNTERCLAIM AND THIRD-PARTY COMPLAINT; DEMAND FOR JURY TRIAL

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likely to have evidentiary support after a reasonable opportunity for further investigation or discovery. 16. Defendant is further entitled to an award of its damages against RTI

under the Declaratory Relief Act, 28 U.S.C. $$2201-02, in an amount to be proven at trial.

SECOND CLAIM FOR DECLARATORY RELIEF
(By Defendant against Epstein and Does 26-50) 17. Defendant repeats the allegations in paragraphs 1 through 16 above, as if stated in full herein. 18. As more fully alleged above, RTI is the owner of the '085 and '769

Patents, and alleges that Defendant through its partner Jim Hicks supposedly engaged in professional malpractice and other torts and wrongful conduct in connection with litigation concerning such patents, and that as a result of such alleged conduct, RTI was supposedly damaged. 19. In connection with such litigation, Defendant at all relevant times

relied upon the Epstein law firm, and in particular upon Robert L. Epstein, for advice and counsel with respect to patent law issues, and also to some extent with respect to New York law and local procedural issues. 20.

An actual controversy, within the meaning of 28 U.S.C. $$2201-02,

exists between Epstein on the one hand, and Defendant on the other hand, as to whether Epstein gave Defendant correct legal advice as to such legal and procedural issues, since if the alleged wrongful conduct of Defendant's partner Jim Hicks was based in whole or in part upon such legal advice and it was wrong, Defendant is entitled to indemnity from Epstein, and Epstein may be liable to the Defendant for all or part of a claim asserted in the action by RTI against the Defendant. 21. On information and belief, if Epstein gave Defendant incorrect legal

advice as to such legal and procedural issues, and if .the alleged wrongful conduct of Defendant's partner Jim Hicks was based in whole or in part upon such incorrect 5
COUNTERCLAIM AND THIRD-PARTY COMPLAINT; DEMAND FOR JURY TRIAL

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legal advice, Defendant is entitled to indemnity fiom Epstein, and Epstein may be liable to the Defendant for all or part of a claim asserted in the action by RTI against .the Defendant. 22. Accordingly, Defendant is entitled to declaratory relief as to whether Epstein gave Defendant incorrect legal advice as to such legal and procedural issues, since if the alleged wrongful conduct of Defendant's partner Jim Hicks was based in whole or in part upon such incorrect legal advice, Defendant is entitled to indemnity from Epstein, and Epstein may be liable to the Defendant for all or part of a claim asserted in the action by RTI against the Defendant. 23. Defendant is further entitled to an award of its damages against Epstein

under the Declaratory Relief Act, 28 U.S.C. 552201-02, in an amount to be proven at trial.

THIRD CLAIM FOR DECLARATORY RELIEF
(By Defendant against Lazer and Does 26-50)
24.

Defendant repeats .the allegations in paragraphs 1 through 23 above, as

if stated in full herein. 25. As more fully alleged above, RTI is the owner of the '085 and '769

Patents, and alleges that Defendant through its partner Jim Hicks supposed.ly engaged in professional malpractice and other torts and wrongful conduct in connection with litigation concerning such patents, and that as a result of such alleged conduct, RTI was supposedly damaged. 26. In connection with such litigation, Defendant at all relevant times

primarily relied upon the Lazer law firm, and in particular upon David Lazer, for advice and counsel with respect to New York law and local procedural issues. 27.

An actual controversy, within the meaning of 28 U.S.C. 552201-02,

exists between Lazer on the one hand, and Defendant on the other hand, as to whether Lazer gave Defendant correct legal advice as to such legal and procedural issues, since if the alleged wrongful conduct of Defendant's partner Jim Hicks was 6
COUNTERCLAIM AND THIRD-PARTY COMPLAINT; DEMAND FOR JURY TRIAL

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based in whole or in part upon such legal advice and it was wrong, Defendant is entitled to indemnity fiom Lazer, and Lazer may be liable to the Defendant for all or part of a claim asserted in the action by RTI against the Defendant. 28. On information and belief, if Lazer gave Defendant incorrect legal advice as to such legal and procedural issues, and if the alleged wrongful conduct of Defendant's partner Jim Hicks was based in whole or in part upon such incorrect legal advice, Defendant is entitled to indemnity fiom Lazer, and Lazer may be liable to the Defendant for all or part of a claim asserted in the action by RTI against the Defendant. 29. Accordingly, Defendant is entitled to declaratory relief as to whether Lazer gave Defendant incorrect legal advice as to such legal and procedural issues, since if the alleged wrongful conduct of Defendant's partner Jim Hicks was based in whole or in part upon such incorrect legal advice, Defendant is entitled to indemnity from Lazer, and Lazer may be liable to the Defendant for all or part of a claim asserted in the action by RTI against the Defendant.
30.

Defendant is further entitled to an award of its damages against Lazer

under the Declaratory Relief Act, 28 U.S.C. 552201-02, in an amount to be proven at trial.

PRAYER FOR RELIEF
WHEREFORE, Defendant prays for judgment, as follows:
1.

For judicial declarations and declaratory relief as described above; For awards of its damages under the Declaratory Relief Act, 28 U.S.C.

2.

55220 1-02, in amounts to be proven at trial;
3.

For an order holding that such damages awards are not dischargeable in

bankruptcy or otherwise;

4. 5.

For an award of its costs, expenses, and disbursements incurred in this

action, including an award of its attorney's fees, as applicable; and For such other and further relief as the Court may deem just and proper.

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DEMAND FOR JURY TRIAL
Defendant requests a trial by jury on all issues so triable. Dated: January 28,2008 HICKS ( PARK LLP By:

Gary W. Park Attorneys for ~gfendantCounterclaimant, and Third-Party plaintiff Hlcks I Park LLP

L6?all/

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COUNTERCLAIM AND THIRD-PARTY COMPLAINT; DEMAND FOR JURY TRIAL

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PROOF OF SERVICE STATE OF CALIFORNIA
) ) ss. COUNTY OF LOS ANGELES )

I am employed in the County of Los Angeles, State of California. I am over the age of 18 and not a party to the within action; my business address is 824Wilshire Boulevard, Suite 300, Los Angeles, California 900 17. On January 28,2008, I served the foregoing document on the interested parties in this action by placing [ ] the original [XI a true copy thereof enclosed in sealed envelope(s) addressed as follows: John M. Moscarino, Esq. Moscarino & Connolly, LLP 11911 San Vicente Blvd., Suite 324 Los Angeles, California 90049-66 16 George M. Lindahl, Esq. Lindahl Beck LLP 660 S. Figueroa St., Suite 1500 Los Angeles, CA 90017-3457

[X ] BY ELECTRONIC MAIL I caused the foregoing document to be transmitted to the interested parties.
[ ] BY MAIL As follows: I am "readily familiar" with the firm's practice of collection and processing correspondence for mailing. Under that practice, it would be deposited with U.S. postal service on that same day with postage thereon fully prepaid at Los Angeles, California in the ordinary course of business. I am aware that on motion of the party served, service is presumed invalid if postal cancellation date or postage meter date is more than one day after date of deposit for mailing in affidavit. [ ] BY PERSONAL SERVICE

caused the WORLD WIDE ATTORNEY SERVICES, INC., to personally deliver such envelopes by hand to the offices andlor resident addresses of the persons on the attached list.
[

[ ] BY FEDERAL EXPRESS
[ deposited in a box or other facility regularly maintained by Federal Express, an express service carrier, or delivered to a courier or driver authorized by said express service carrier to receive, a copy of the document described above together with an unsigned copy of this declaration, in an znvelope designated by the said express service carrier, with delivery fees paid or provided for, addressed as per the attached mailing list.

Executed on January 28,2008, at Los Angeles, California.
[ ] STATE I declare under penalty of perjury under the laws of the State of California that the

above is true and correct.

[XIFEDERAL I declare that I am employed in th at whose direction the service was made.

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COUNTERCLAIM AND THIRD-PARTY COMPLAINT; DEMAND FOR JURY TRIAL