3rd Pacer today--PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
Technology Properties Limited, Inc. and
Patriot Scientific Corporation,
Civil Action No. 2:05-CV-00494
(TJW)
Plaintiffs, § JURY DEMANDED
v.
Matsushita Electric Industrial Co. Ltd.,
Panasonic Corporation of North America,
JVC Americas Corp., NEC Corporation, NEC
Electronics America, Inc. NEC Display
Solutions of America, Inc., NEC Corporation
of America, NEC Unified Solutions, Inc.,
Toshiba Corporation, Toshiba America, Inc.,
Toshiba America Electronic Components,
Inc., Toshiba America Information Systems,
Inc., Toshiba America Consumer Products,
LLC, ARM, Inc., and ARM, Ltd.,
Defendants.
DEFENDANT PANASONIC CORPORATION OF NORTH AMERICA’S
AMENDED ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
TO PLAINTIFFS’ SECOND AMENDED COMPLAINT PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC 2 Panasonic Corporation of North America (“PNA”) files this Amended Answer in response to Technology Properties Limited, Inc. and Patriot Scientific Corporation’s (collectively “Plaintiffs”) Second Amended Complaint for Patent Infringement (“Complaint”).
THE PARTIES
1. On information and belief, PNA admits the allegations of paragraph 1 of the Complaint.
2. On information and belief, PNA admits the allegations of paragraph 2 of the Complaint.
3. PNA admits the allegations of paragraph 3.
4. PNA admits the allegations of paragraph 4.
5. PNA admits the allegations of paragraph 5.
6. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
7. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
8. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
9. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
10. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC 3
11. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph 12. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
13. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph 14. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
15. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
JURISDICTION AND VENUE
16. Paragraph 16 states a legal conclusion to which no response is required.
17. Paragraph 17 states a legal conclusion to which no response is required.
THE PATENTS
18. PNA admits that U.S. Patent No. 6,598,148 (“the ‘148 patent”) was issued on July 22, 2003, but denies that the ‘148 patent was duly and legally issued. All other allegations of paragraph 18 not specifically admitted herein are denied.
19. PNA admits that U.S. Patent No. 5,809,336 (“the ‘336 patent”) was issued on September 15, 1998, but denies that the ‘336 patent was duly and legally issued. All other allegations of paragraph 19 not specifically admitted herein are denied.
20. PNA admits that U.S. Patent No. 5,784,584 (“the ‘584 patent”) was issued on July 21, 1998, but denies that the ‘584 patent was duly and legally issued. All other allegations of paragraph 20 not specifically admitted herein are denied.
PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC 4
21. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph but, on information and belief, TPL lacks standing to assert the patents-in-suit.
22. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
23. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
INFRINGEMENT BY MATSUSHITA DEFENDANTS
24. PNA denies the allegations of paragraph 24.
25. PNA denies the allegations of paragraph 25.
26. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
27. PNA denies the allegations of paragraph 27.
28. PNA denies the allegations of paragraph 28.
29. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
30. PNA denies the allegations of paragraph 30.
31. PNA denies the allegations of paragraph 31.
32. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph 32.
INFRINGEMENT BY NEC DEFENDANTS
33. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
34. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
35. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
36. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
37. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
38. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
39. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
40. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
41. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
42. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
43. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
44. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC 6
45. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
46. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
47. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
INFRINGEMENT BY TOSHIBA DEFENDANTS
48. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
49. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
50. PNA is without sufficient knowledge Or information to form a belief as to the truth of the allegations contained in paragraph
51. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
52. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
53. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
54. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
55. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC 7
56. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
57. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
58. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
59. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
60. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
61. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph.
62. PNA is without sufficient knowledge or information to form a belief as to the truth of the allegations contained in paragraph
AFFIRMATIVE DEFENSES
63. For its affirmative defenses, PNA alleges as follows:
FIRST AFFIRMATIVE DEFENSE RES JUDICATA
64.Plaintiffs are not entitled to the relief sought because Plaintiffs’ claim for infringement of the ‘336 patent is barred by res judicata.
65. On December 30, 2003 Patriot Scientific Corporation (“Patriot”), a coowner of the patents-in-suit, filed a patent infringement action against PNA (then known as Matsushita Electric Corporation of America) in the United States District Court for the District of New Jersey, Case No. 03-6210 (WGB) alleging infringement of the '336 patent (“New Jersey Case”).
PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC 8
66. On March 11, 2004, Patriot filed a Consolidated Amended Complaint in its case against Fujitsu Microelectronics America, Inc. (“Fujitsu”) in the Northern District of California, Patriot v. Fujitsu, et al., Case No. 03-5787 (SBA) (“Patriot Case”), adding PNA (then known as Matsushita Electric Corporation of America) as a defendant.
67. On March 26, 2004, Patriot voluntarily dismissed the New Jersey Case against PNA.
68. On October 24, 2005, Patriot voluntarily dismissed its complaint in the Patriot Case against all of the defendants, including PNA. Earlier on the same day, Patriot’s co-owner, TPL, re-filed its complaint in the Eastern District of Texas.
69. Under Fed. R. Civ. P. 41, the dismissal of the Patriot Case operates as an adjudication on the merits with respect to the ‘336 patent and Plaintiffs’ claims are barred
by res judicata.
SECOND AFFIRMATIVE DEFENSE STANDING
70. On information and belief, Plaintiffs are not entitled to the relief sought because Plaintiffs do not have valid ownership of the patents-in-suit and the co-owners of the patents-in-suit have not joined as plaintiffs in this suit.
71. Accordingly, Plaintiffs lack standing.
THIRD AFFIRMATIVE DEFENSE PATENT EXHAUSTION/IMPLIED LICENSE/COVENANT NOT TO SUE
72. The relief sought by Plaintiffs are barred in whole or in part by the doctrines of patent exhaustion, implied license and/or covenant not to sue.
FOURTH AFFIRMATIVE DEFENSE IMPROPER VENUE
PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC 9
73. Plaintiffs are not entitled to the relief sought because Plaintiffs brought suit in an improper venue, both under Fed. R. Civ. P. 12(b)(3) and the doctrine of forum non-conveniens.
FIFTH AFFIRMATIVE DEFENSE NONINFRINGEMENT OF THE ‘336 PATENT
74. Plaintiffs are not entitled to the relief sought because PNA does not infringe any valid or enforceable claim of the ‘336 patent.
SIXTH AFFIRMATIVE DEFENSE INVALIDITY OF THE ‘336 PATENT
75. Plaintiffs are not entitled to the relief sought because the claims of the ‘336 patent are invalid, including under 35 U.S.C. §§ 101, 102, 103, 112, and/or 256.
SEVENTH AFFIRMATIVE DEFENSE NONINFRINGEMENT OF THE ‘584 PATENT
76. Plaintiffs are not entitled to the relief sought because PNA does not infringe any valid or enforceable claim of the ‘584 patent.
EIGHTH AFFIRMATIVE DEFENSE INVALIDITY OF THE ‘584 PATENT
77. Plaintiffs are not entitled to the relief sought because the claims of the ‘584 patent are invalid, including under 35 U.S.C. §§ 101, 102, 103, 112, and/or 256.
NINTH AFFIRMATIVE DEFENSE NONINFRINGEMENT OF THE ‘148 PATENT
78. Plaintiffs are not entitled to the relief sought because PNA does not infringe any valid or enforceable claim of the ‘148 patent.
PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC 10
TENTH AFFIRMATIVE DEFENSE INVALIDITY OF THE ‘148 PATENT
79. Plaintiffs are not entitled to the relief sought because the claims of the ‘148 patent are invalid, including under 35 U.S.C. 101, 102, 103, 112, and/or 256.
ELEVENTH AFFIRMATIVE DEFENSE
UNENFORCEABILITY OF THE ‘148, ‘336 AND ‘584 PATENTS
80. On information and belief, Plaintiffs’ claims for infringement of the Asserted Patents are barred because those patents are unenforceable as a result of
inequitable conduct.
a. Two individuals, Mr. Charles Moore and Mr. Russell Fish, are named as inventors on the face of the Asserted Patents.
b. In late 1988, Mr. Moore had previous experience designing Forth-based microprocessors, while Mr. Fish had experience in sales and marketing of microprocessors.
c. During 1989, Mr. Moore utilized the Semiconductor Design Center of Japanese semiconductor manufacturer, Oki, in Sunnyvale, California, to carry out his microprocessor design activities. Mr. Fish did not have access to the Oki Design Center.
d. During the time before the filing of U.S. Patent Application No. 07/389,334 (the “Application”), divisions of which issued as the Asserted Patents, Mr. Moore worked on designing the microprocessor discussed in the Application. Mr. Fish, however, worked on marketing that
PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC 11
microprocessor. Mr. Fish was not concerned about the problems
addressed by the microprocessor design disclosed in the Application.
e. Mr. Moore did all the design work on the microprocessor disclosed in the Application by himself.
f. None of the persons substantially involved in the prosecution of the Application, including Mr. Moore and Mr. Fish, disclosed to the patent office that Mr. Moore had performed all of the design work on the disclosed microprocessor himself.
g. Mr. Moore and Mr. Fish submitted declarations signed under oath stating that Mr. Fish was an inventor of the subject matter claimed in the Application.
h. Mr. Fish did none of the design work on the disclosed microprocessor. Mr. Fish was only responsible for marketing and potential sales of the microprocessor.
i. Mr. Fish was not an inventor of the subject matter claimed in the Application.
j. The misstatements made by both Mr. Moore and Mr. Fish that Mr. Fish was an inventor were material.
k. Mr. Moore was motivated to state that Mr. Fish was an inventor because he wanted to convince Mr. Fish to make every effort to market the microprocessor that Mr. Moore had designed.
PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC 12
l. Mr. Fish was motivated to claim inventorship both to receive a share of any patent rights that might result from the Application and for the recognition of being an inventor.
m. At least Mr. Moore was aware that Mr. Fish was not an inventor and intended to deceive the patent office when he declared under penalty of perjury that Mr. Fish was an inventor.
TWELFTH AFFIRMATIVE DEFENSE STATUTE OF LIMITATIONS
81. To the extent that Plaintiffs seek damages for alleged infringement more than six years prior to the filing of this action, the relief sought by Plaintiffs are barred by
35 U.S.C. § 286.
THIRTEENTH AFFIRMATIVE DEFENSE NOTICE / FAILURE TO MARK
82. Plaintiffs’ claims for relief and prayer for damages are barred, in whole or in part, by 35 U.S.C. § 287.
PRAYER FOR RELIEF WHEREFORE, PNA prays for judgment as follows:
1. That Plaintiffs take nothing by way of its complaint and that judgment be entered in favor of defendant PNA;
2. A judgment that PNA, and its products, do not infringe valid or enforceable claims of the patents-in-suit;
3. A judgment declaring this case exceptional under 35 U.S.C. § 285 and awarding PNA its attorneys’ fees and costs in connection with this case; and
PNA ANSWER TO 2ND AMENDED COMPLAINT_#1478038.DOC 13
4. Awarding PNA such other and further relief as the Court deems just and proper.
JURY DEMAND
PNA demands a jury on all issues triable by right to a jury.
By: /s/ David Healey
David J. Healey
Texas State Bar No. 09327980
david.healey@weil.com
CERTIFICATE OF SERVICE
The undersigned hereby certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a) on this 16th day of February 2007. As of this date, all counsel of record has consented to electronic service and are being served with a copy of this document through the Court’s CM/ECF system under Local
Rule CV-5(a)(3)(A).
/s/ Matthew Corwin
Matthew Corwin
