Case 5:04-cv-00336-JBC Document 8 Filed 08/31/2004
FIFTH AFFIRMATIVE DEFENSE
12. Aztec is licensed to practice the '714 patent.
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF KENTUCKY
LEXINGTON DIVISION
Case No.: 04-336
Filed Electronically
Judge: Coffman
PROMOTIONAL CONTAINERS, INC.
Plaintiff,
vs.
AZTEC CONCRETE ACCESSORIES, INC. )
Defendant.
DEFENDANT AZTEC CONCRETE ACCESSORIES, INC.’S
ANSWER AND COUNTERCLAIM TO COMPLAINT
Defendant Aztec Concrete Accessories, Inc. (“Aztec”), through its attorneys hereby answers Plaintiff Promotional Containers, Inc.’s (“Plaintiff”) Complaint as follows:
1. Aztec is without knowledge sufficient to form a belief as to the truth of the allegations of paragraph 1 of Plaintiff's Complaint and, therefore, denies same and puts Plaintiff to its proof.
2. Aztec admits the allegations of paragraph 2 of Plaintiff’s Complaint.
3. Aztec admits that Plaintiff’s Complaint purports to state claims under the patent laws of the United States, and that this Court has jurisdiction over the parties, but denies that Plaintiff has any such claim or that any such claim is justified. Aztec denies the remaining allegations of paragraph 3 of Plaintiff's Complaint.
4. Aztec admits that United States Patent No. 4,942,714 (“the '714 patent”) shows on its face that it issued on July 24, 1990; that the '714 patent is entitled “Rebar And Beam Bolster, Slab And Beam Bolster Upper;” and that a copy of the '714 patent is attached as Exhibit A to Plaintiff’s Complaint. With respect to the remaining allegations of paragraph 4 of Plaintiff’s Complaint, Aztec is without knowledge sufficient to form a belief as to the truth thereof and, therefore, denies same and puts Plaintiff to its proof.
5. Aztec is without knowledge sufficient to form a belief as to the truth of the allegations of paragraph 5 of Plaintiff's Complaint and, therefore, denies same and puts Plaintiff to its proof.
6. Aztec denies the allegations of paragraph 6 of Plaintiff’s Complaint.
7. Aztec denies the allegations of paragraph 7 of Plaintiff’s Complaint.
AFFIRMATIVE DEFENSES
By and for its affirmative defenses, Aztec states:
FIRST AFFIRMATIVE DEFENSE
8. The Complaint fails to state a claim upon which relief may be granted.
SECOND AFFIRMATIVE DEFENSE
9. Upon information and belief, and as will likely be supported by evidence after a reasonable opportunity for further investigation and discovery, the '714 patent is invalid for failure to comply with the conditions and requirements for patentability specified in Title 35 U.S.C., including, but not limited to, 35 U.S.C. §§ 102, 103, and/or 112.
THIRD AFFIRMATIVE DEFENSE
10. Aztec has not infringed the '714 patent and is not liable for infringement thereof.
FOURTH AFFIRMATIVE DEFENSE
11. Plaintiff is estopped and/or otherwise barred from asserting that Aztec is liable for infringement of the '714 patent.
FIFTH AFFIRMATIVE DEFENSE
12. Aztec is licensed to practice the '714 patent.
SIXTH AFFIRMATIVE DEFENSE
13. Plaintiff is equitably barred from asserting that Aztec is liable for infringement of the '714 patent, including due to laches.
SEVENTH AFFIRMATIVE DEFENSE
14. Arbitration.
EIGHTH AFFIRMATIVE DEFENSE
15. Improper venue.
COUNTERCLAIM
Defendant Aztec, through its attorneys, hereby alleges as follows:
16. This counterclaim is for a declaratory judgment declaring the '714 patent invalid and arises under the patent laws of the United States, 35 U.S.C. § 1, et seq.
17. Jurisdiction of this Court over this counterclaim is based upon 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202, and upon Rule 13 of the Federal Rules of Civil Procedure.
18. Assuming this Court deems that venue is proper over Plaintiff’s Complaint, venue in this Court is proper pursuant to 28 U.S.C. § 1391, and Plaintiff, by virtue of having brought suit against Aztec, has submitted itself to the jurisdiction of this Court.
19. Plaintiff claims to be the assignee of the '714 patent and has brought suit against Aztec herein for alleged infringement of the '714 patent.
20. An actual case or controversy exists between Plaintiff and Aztec based upon Plaintiff having filed the Complaint against Aztec.
21. Neither Aztec nor any of its respective customers has infringed any of the claims of the '714 patent.
22. Upon information and belief, and as will likely be supported by evidence after reasonable opportunity for further investigation and discovery, the '714 patent is invalid, null, and/or void for failure to comply with the conditions and requirements for patentability specified in Title 35, U.S.C., including, but not limited to, 35 U.S.C. §§ 102, 103 and/or 112.
23. Aztec has been injured and damaged by Plaintiff’s filing of the Complaint in the present action asserting a patent that is invalid and not infringed.
WHEREFORE, Defendant Aztec prays that:
A. Plaintiff’s Complaint be dismissed with prejudice and that judgment be entered for Aztec;
B. A declaratory judgment be entered declaring that the '714 patent is invalid;
C. A declaratory judgment be entered declaring that neither Aztec nor any of its respective customers has infringed any of the claims of the '714 patent;
D. This case be adjudged and decreed exceptional pursuant to 35 U.S.C.
§ 285 and Aztec be awarded its costs and attorneys fees in defending this action; and
E. For such other and further relief as the Court deems just and proper.
Respectfully submitted,
Dated: August 31, 2004 s/ Brett A. Schatz
Brett A. Schatz (Ky. Reg. No. 88610)
bschatz@whepatent.com
Thomas W. Flynn (Ohio Reg. No. 0016466)
tflynn@whepatent.com
Trial Attorneys
WOOD, HERRON & EVANS, L.L.P.
2700 Carew Tower, 441 Vine Street
Cincinnati, Ohio 45202
(513) 241-2324
Attorneys for Defendant
K:\DBZ\583P3\Pleadings\Answer and Counterclaim.doc
CERTIFICATE OF SERVICE
I hereby certify that on August 31, 2004, I electronically filed the foregoing with the clerk of the court by using the CM/ECF system, which will send a notice of electronic filing to the following: Henry E. Kinser, Esq., and H. Roy Berkenstock, Esq.
s/ Brett A. Schatz |
