24. Upon information and belief, statements made in Mr. Turek's declaration of commercial success that relate to present and pending sales contracts are false and are not supported by documentary evidence.
25. Upon information and belief, Mr. Turek signed the declaration of commercial success knowing that it was false and with the intent to deceive the PTO.
Case 5:04-cv-00336-JBC Document 75 Filed 07/13/2006
PROMOTIONAL CONTAINERS, INC.
Plaintiff,
vs.
AZTEC CONCRETE ACCESSORIES, INC.
and
DAYTON SUPERIOR CORPORATION
Defendants.
)))))))))))))
Case No.: 04-336
Judge Jennifer B. Coffman
DEFENDANTS' ANSWER AND COUNTERCLAIM TO THE FIRST AMENDED COMPLAINT
For their answer to the First Amended Complaint of Plaintiff, Promotional Containers Inc. ("Plaintiff"), Defendants Dayton Superior Corporation ("Dayton") and Aztec Concrete Accessories, Inc. ("Aztec") (jointly, "Defendants") state as follows:
1. Defendants need not admit or deny the allegations in paragraph 1 because they are legal conclusions.
2. Defendants deny the allegations of paragraph 2 for lack of knowledge or information sufficient to form a belief as to their truth.
3. Defendants deny the allegations in paragraph 3. On or about December 7, 2004, Aztec was merged into Dayton and is no longer an independent corporate entity.
4. Defendants admit that Dayton is an Ohio corporation doing business in Ohio with principal offices in Dayton, Ohio, but deny the remaining allegations of paragraph 4.
5. Defendants admit the allegations in paragraph 5 that jurisdiction and venue are proper in this Court for all claims and defenses except the Sixth Affirmative Defense set forth below.
6. Defendants admit the allegations in paragraph 6 but deny that U.S. Patent No. 4,942,714 (the “'714 patent”) was duly and legally issued.
7. Defendants deny the allegations of paragraph 7 for lack of knowledge or information sufficient to form a belief as to their truth.
8. Defendants deny the allegations in paragraph 8.
9. Defendants deny the allegations in paragraph 9.
10. Defendants deny the allegations of paragraph 10.
11. Defendants deny the allegations in paragraph 11.
12. Defendants deny the allegations in paragraph 12.
13. Defendants deny the allegations in paragraph 13.
14. Defendants deny the allegations in paragraph 14.
15. Defendants deny the allegations in paragraph 15.
FIRST DEFENSE
(Failure to State a Claim)
16. Plaintiff's allegations fail to state a claim upon which relief may be granted.
SECOND DEFENSE
(No Infringement)
17. Defendants do not infringe any claim of the asserted '714 patent.
THIRD DEFENSE
(Invalidity)
18. The '714 patent is invalid, in whole or in part, for failure to comply with one or more provisions of the patent laws and regulations of the United States including, without limitation, 35 U.S.C. §§ 102, 103 and 112.
FOURTH DEFENSE
(Unenforceability)
19. Upon information and belief, the '714 patent is unenforceable due to inequitable conduct of the named inventors and their attorneys before the United States Patent and Trademark Office ("PTO").
20. On or about February 28, 1989, James N. Turek signed a declaration in support of the '714 patent application stating that he was a co-inventor of one or more inventions claimed in the '714 patent.
21. Upon information and belief, Mr. Turek is not a co-inventor of any invention claimed in the '714 patent
22. Upon information and belief, Mr. Turek signed the inventor declaration knowing that it was false and with the intent to deceive the PTO.
23. On or about October 30, 1989, Mr. Turek signed a declaration in support of the '714 patent application stating that the inventions claimed therein were nonobvious as evidenced by their commercial success in the marketplace.
24. Upon information and belief, statements made in Mr. Turek's declaration of commercial success that relate to present and pending sales contracts are false and are not supported by documentary evidence.
25. Upon information and belief, Mr. Turek signed the declaration of commercial success knowing that it was false and with the intent to deceive the PTO.
FIFTH DEFENSE
(License)
26. Defendants are licensed to practice the '714 patent under a prior settlement agreement between Plaintiff and Aztec dated August 24, 2000.
SIXTH DEFENSE
(Arbitration)
27. Under the terms of a prior settlement agreement between Plaintiff and Aztec that granted Aztec a license to practice the '714 patent, all disputes regarding the license, including whether Plaintiff has effectively terminated the license, are to be arbitrated rather than litigated.
SEVENTH DEFENSE
(Estoppel)
28. Plaintiff is estopped or otherwise barred from asserting that Defendants are liable for infringement of the '714 patent.
EIGHTH DEFENSE
(Aztec not subject to suit)
29. Aztec is no longer a legal entity subject to liability separate and distinct from Dayton.
COUNTERCLAIM
(Request for Declaratory Judgment as to the '714 Patent)
For its counterclaim against Plaintiff, Dayton states as follows:
1. This Counterclaim arises under the Patent Laws of the United States. The Court has jurisdiction over the subject matter of this Counterclaim pursuant to 28 U.S.C. §§ 1331, 1338, 2201 and 2202.
2. Plaintiff has submitted to the personal jurisdiction and venue in this District by filing the First Amended Complaint.
3. Plaintiff has alleged that it is a Nevada corporation with principal offices at Lexington, Kentucky.
4. Dayton is an Ohio corporation doing business in Ohio with principal offices in Dayton, Ohio.
5. By its First Amended Complaint, Plaintiff alleges, inter alia, that it is the owner by
assignment of the '714 patent and that Dayton and Aztec infringe the '714 patent. An
actual controversy thus exists between Plaintiff and Dayton as to whether the '714 patent is valid, infringed and enforceable.
6. Dayton has not infringed any claim of the '714 patent.
7. The '714 patent is invalid, in whole or in part, for failure to comply with one or more provisions of the patent laws and regulations of the United States including, without limitation, 35 U.S.C. §§ 102, 103 and 112.
8. Upon information and belief, the '714 patent is unenforceable due to inequitable conduct of the named inventors and their attorneys before the United States Patent and Trademark Office ("PTO").
9. On or about February 28, 1989, James N. Turek signed a declaration in support of the '714 patent application stating that he was a co-inventor of one or more inventions claimed in the '714 patent.
10. Upon information and belief, Mr. Turek is not a co-inventor of any invention claimed in the '714 patent.
11. Upon information and belief, Mr. Turek signed the inventor declaration knowing that it was false and with the intent to deceive the PTO.
12. On or about October 30, 1989, Mr. Turek signed a declaration in support of the '714 patent application stating that the inventions claimed therein were nonobvious as evidenced by their commercial success in the marketplace.
13. Upon information and belief, statements made in Mr. Turek's declaration of commercial success that relate to present and pending sales contracts are false and are not supported by documentary evidence.
14. Upon information and belief, Mr. Turek signed the declaration of commercial success knowing that it was false and with the intent to deceive the PTO.
15. An actual controversy exists between Plaintiff and Dayton over the parties' respective rights and liabilities in connection with the '714 patent. Dayton seek a judicial declaration pursuant to 28 U.S.C. §§ 2201 et seq. that it has not infringed the '714 patent and that the patent is invalid and unenforceable.
WHEREFORE, Dayton prays that the Court enter judgment in its favor and against
Promotional Containers, Inc. on the Counterclaim and that it:
1. Dismiss the Complaint and First Amended Complaint with prejudice;
2. Declare that the '714 patent is invalid and unenforceable;
3. Declare that Dayton and Aztec do not infringe the '714 patent;
4. Declare that this is an exceptional case under 35 U.S.C. § 285 and award to Dayton its reasonable attorney's fees and expenses; and
5. Award Dayton all other statutory, legal and equitable relief to which it may be entitled and as the Court deems just and proper. |
