6th Pacer Today--UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
TECHNOLOGY PROPERTIES LIMITED and PATRIOT SCIENTIFIC CORPORATION,
Plaintiffs,
MATSUSHITA ELECTRICAL INDUSTRIAL
COY LTD; PANASONIC CORPORATION OF
NORTH AMERICA; JVC AMERICAS
CORPORATION; NEC CORPORATION; NEC
ELECTRONICS AMERICA, INC.; NEC
CORPORATION OF AMERICA, INC.; NEC
DISPLAY SOLUTIONS OF AMERICA, INC.;
NEC UNIFIED SOLUTIONS, INC.; TOSHIBA
CORPORATION; TOSHIBA AMERICA,
INC.; TOSHIBA AMERICA ELECTRONIC
COMPONENTS, INC.; TOSHIBA AMERICA
INFORMATION SYSTEMS, INC.; and
TOSHIBA AMERICA CONSUMER
PRODUCTS, LLC,
Defendants.
Civil Action No. 2-05CV-494 (TJW)
JURY TRIAL DEMANDED
TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.'S AMENDED ANSWER
AND AMENDED COUNTERCLAIMS TO TECHNOLOGY PROPERTIES LIMITED'S
AND PATRIOT SCIENTIFIC CORPORATION'S SECOND AMENDED COMPLAINT
Defendant, Toshiba America Electronic Components, Inc. ("TAEC"), by and through its undersigned counsel, hereby presents its Amended Answer and Amended Counterclaims to Plaintiffs Technology Properties Limited's ("TPL") and Patriot Scientific
Corporation's ("Patriot") Second Amended Complaint, filed February 2, 2007 (the "Complaint").
ANSWER
1. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 1 of the Complaint and therefore denies the same.
2. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 2 of the Complaint and therefore denies the same.
3. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 3 of the Complaint and therefore denies the same.
4. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 4 of the Complaint and therefore denies the same.
5. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 5 of the Complaint and therefore denies the same.
6. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 6 of the Complaint and therefore denies the same.
7. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 7 of the Complaint and therefore denies the same.
8. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 8 of the Complaint and therefore denies the same.
9. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 9 of the Complaint and therefore denies the same.
10. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 10 of the Complaint and therefore denies the same.
II. TAEC admits the averments of Paragraph 1 1.
12. TAEC admits the averments of Paragraph 12.
13. TAEC admits the averments of Paragraph 13.
14. TAEC admits the averments of Paragraph 14.
15. TAEC admits the averments of Paragraph 1 5.
16. TAEC admits that the Complaint purports to arise under the patent laws of the United States and that the Court has subject matter jurisdiction over patent cases pursuant to 28 U.S.C. $8 1331 and 1338(a).
17. TAEC denies that it has committed acts of infingement or continues to commit acts of inhngement, directly or indirectly, either within the State of Texas, within this district, or anywhere else. TAEC denies that venue is proper in this district.
18. TAEC admits that United States Patent No. 6,598,148 ("the '148 patent") recites as a title "High Performance Microprocessor Having Variable Speed System Clock." TAEC is without knowledge or information sufficient to form a belief as to the truth of the remaining averments of Paragraph 18 of the Complaint and therefore denies the same.
19. TAEC admits that United States Patent No. 5,809,336 ("the '336 patent") recites as a title "High Performance Microprocessor Having Variable Speed System Clock."
TAEC is without knowledge or information sufficient to form a belief as to the truth of the remaining averments of Paragraph 19 of the Complaint and therefore denies the same.
20. TAEC admits that United States Patent No. 5,784,584 ("the '584 patent") recites as a title "High Performance Microprocessor Using Instructions That Operate Within
Instruction Groups." TAEC is without knowledge or information sufficient to form a belief as to the truth of the remaining averments of Paragraph 20 of the Complaint and therefore denies the same.
21. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 21 of the Complaint and therefore denies the same.
22. TAEC admits that it believes that Patriot is a proper and necessary party plaintiff in this action. TAEC admits that it did, through its counsel, indicate that it might seek to
dismiss this action for failure to join Patriot if Patriot was not joined as a plaintiff. TAEC is without knowledge or information sufficient to form a belief as to the truth of the remaining averments of Paragraph 22 of the Complaint and therefore denies the same.
23. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 23 of the Complaint and therefore denies the same.
24. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 24 of the Complaint and therefore denies the same.
25. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 25 of the Complaint and therefore denies the same.
26. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 26 of the Complaint and therefore denies the same.
27. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 27 of the Complaint and therefore denies the same.
28. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 28 of the Complaint and therefore denies the same.
29. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 29 of the Complaint and therefore denies the same.
30. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 30 of the Complaint and therefore denies the same.
31. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 3 1 of the Complaint and therefore denies the same.
32. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 32 of the Complaint and therefore denies the same.
33. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 33 of the Complaint and therefore denies the same.
34. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 34 of the Complaint and therefore denies the same.
35. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 35 of the Complaint and therefore denies the same.
36. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 36 of the Complaint and therefore denies the same.
37. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 37 of the Complaint and therefore denies the same. 38. TAEC is without knowledge or information sufficient to form a belief as
to the truth of the averments of Paragraph 38 of the Complaint and therefore denies the same.
39. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 39 of the Complaint and therefore denies the same.
40. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 40 of the Complaint and therefore denies the same.
41. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 41 of the Complaint and therefore denies the same.
42. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 42 of the Complaint and therefore denies the same.
43. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 43 of the Complaint and therefore denies the same.
44. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 44 of the Complaint and therefore denies the same.
45. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 45 of the Complaint and therefore denies the same.
46. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 46 of the Complaint and therefore denies the same.
47. TAEC is without knowledge or information sufficient to form a belief as to the truth of the averments of Paragraph 47 of the Complaint and therefore denies the same.
48. TAEC denies that Toshiba Corporation has infringed or continues to inhnge, directly or indirectly, any of the patents in suit within the State of Texas, within this
district, or anywhere else. TAEC denies that Toshiba Corporation is liable for infringement pursuant to 35 U.S.C. 5 271.
49. TAEC denies that Toshiba America Inc. has infringed or continues to infringe, directly or indirectly, any of the patents in suit within the State of Texas, within this
district, or anywhere else. TAEC denies that Toshiba America Inc. is liable for infringement pursuant to 35 U.S.C. 5 271.
50. TAEC denies that Toshiba America Electronic Components, Inc. has inhnged or continues to inhnge, directly or indirectly, any of the patents in suit within the State of Texas, within this district, or anywhere else. TAEC denies that Toshiba America Electronic Components, Inc. is liable for infringement pursuant to 35 U.S.C. 5 271.
51. TAEC denies that Toshiba America Information Systems, Inc. has infringed or continues to infringe, directly or indirectly, any of the patents in suit within the State of Texas, within this district, or anywhere else. TAEC denies that Toshiba America Information Systems, Inc. is liable for infringement pursuant to 35 U.S.C. 5 271.
52. TAEC denies that Toshiba America Consumer Products, LLC has
infringed or continues to inhnge, directly or indirectly, any of the patents in suit within the State of Texas, within this district, or anywhere else. TAEC denies that Toshiba America Consumer Products, LLC is liable for infringement pursuant to 35 U.S.C. 5 271.
53. TAEC denies that TPL or Patriot has been damaged by any action of Toshiba Corporation and denies that TPL or Patriot is entitled to an injunction against Toshiba Corporation. TAEC denies that TPL or Patriot is entitled to any remedy, legal or equitable, against Toshiba Corporation. TAEC denies the remaining averments of Paragraph 53 of the Complaint.
54. TAEC denies that TPL or Patriot has been damaged by any action of Toshiba America, Inc. and denies that TPL or Patriot is entitled to an injunction against Toshiba America, Inc. TAEC denies that TPL or Patriot is entitled to any remedy, legal or equitable, against Toshba America, Inc. TAEC denies the remaining averments of Paragraph 54 of the Complaint.
55. TAEC denies that TPL or Patriot has been damaged by any action of Toshiba America Electronic Components, Inc. and denies that TPL or Patriot is entitled to an injunction against Toshba America Electronic Components, Inc. TAEC denies that TPL or
Patriot is entitled to any remedy, legal or equitable, against Toshiba America Electronic Components, Inc. TAEC denies the remaining averments of Paragraph 55 of the Complaint.
56. TAEC denies that TPL or Patriot has been damaged by any action of Toshiba America Information Systems, Inc. and denies that TPL or Patriot is entitled to an injunction against Toshiba America Information Systems, Inc. TAEC denies that TPL or Patriot
is entitled to any remedy, legal or equitable, against Toshiba America Information Systems, Inc. TAEC denies the remaining averments of Paragraph 56 of the Complaint.
57. TAEC denies that TPL or Patriot has been damaged by any action of Toshiba America Consumer Products, LLC and denies that TPL or Patriot is entitled to an injunction against Toshiba America Consumer Products, LLC. TAEC denies that TPL or Patriot
is entitled to any remedy, legal or equitable, against Toshiba America Consumer Products, LLC. TAEC denies the remaining averments of Paragraph 57 of the Complaint.
58. TAEC denies the averments of paragraph 58.
59. TAEC denies the averments of paragraph 59.
60. TAEC denies the averments of paragraph 60.
61. TAEC denies the averments of paragraph 6 1.
62. TAEC denies the averments of paragraph 62.
63. TAEC denies that TPL and Patriot are entitled to any of the relief requested in their Prayer for Relief.
64. All remaining averments not specifically admitted herein are denied.
DEFENSES AND AFFIRMATIVE DEFENSES
First Defense
On information and belief, TAEC does not infringe and has not infringed, directly or indirectly, any valid claim of the '148 patent.
Second Defense
On information and belief, TAEC does not infringe and has not infringed, directly or indirectly, any valid claim of the '336 patent.
Third Defense
On information and belief, TAEC does not infringe and has not inhnged, directly or indirectly, any valid claim of the '584 patent.
Fourth Defense
On information and belief, the '148 patent is invalid under one or more of the provisions in Title 35 of the United States Code, including 5 5 102, 103, and 1 12.
Fith Defense
On information and belief, the '336 patent is invalid under one or more of the provisions in Title 35 of the United States Code, including $9 102, 103, and 1 12.
Sixth Defense
On information and belief, the '584 patent is invalid under one or more of the provisions in Title 35 of the United States Code, including $5 102, 103, and 112.
Seventh Defense
On information and belief, all or some of TPL's and Patriot's claims for relief are barred by the doctrine of equitable estoppel.
Eighth Defense
On information and belief, all or some of TPL's and Patriot's claims for relief are barred by the doctrine of laches.
Ninth Defense On information and belief, TPL and Patriot did not have and/or did not timely perfect all necessary right, title, and interest in the '148, '336, and '584 patents ("the Asserted
Patents") as of the filing date of the Complaint, and on information and belief, TPL and Patriot thus lacked standing to sue as the patentee or sole exclusive licensee of the patentee as of the date of the filing of the Complaint, as to one or all of the Asserted Patents.
Tenth Defense
On information and belief, some or all of TPL's and Patriot's damages, if any, are limited under 35 U.S.C. 5 287.
Eleventh Defense The Complaint fails to state a claim upon which relief can be granted.
Twelfth Defense
On information and belief, for the convenience of the parties and witnesses and in the interest of justice, the case should be transferred to the United States District Court for the
Northern District of California, Oakland Division.
Thirteenth Defense
Venue is improper in this district.
Fourteenth Defense
On information and belief, TPL's and Patriot's claims are barred to the extent that some or all of the accused activities are licensed under the Asserted Patents.
Fifteenth Defense
On information and belief, TPL and Patriot have exhausted any patent rights against TAEC concerning the Asserted Patents.
Sixteenth Defense On information and belief, Plaintiffs' claims for infi-ingement 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 Forthbased 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. 071389,334 (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 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 perfonned 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.
1. 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.
COUNTERCLAIMS
1. TAEC herein incorporates by reference all of the allegations and averments of its Answer and Defenses and Affirmative Defenses. The Parties
2. TAEC is a California corporation.
3. TPL is a California corporation.
4. Patriot is a Delaware corporation. Jurisdiction and Venue
5. This declaratory judgment action arises under the patent laws of the United States, 35 U.S.C. $8 1 et seq., and the Federal Declaratory Judgment Act, 28 U.S.C. $8 2201 and 2202. This Court has subject matter jurisdiction pursuant to 28 U.S.C. $5 1331 and
1338(a).
6. Plaintiffs TPL and Patriot have voluntarily submitted to the jurisdiction of the Eastern District of Texas, Marshall Division, as a result of initiating the present action within
this district. TPL and Patriot are subject to personal jurisdiction in the Eastern District of Texas, Marshall Division, for the purposes of the TAECYs declaratory judgment counterclaims.
5. Venue is proper in Eastern District of Texas, Marshall Division. A substantial part of the events giving rise to Defendants' counterclaims occurred in the Eastern
District of Texas, Marshall Division, including the Plaintiffs' having brought their action in this forum. 28 U.S.C. $ 1391.
Declaratory Judgment of Invalidity and Non-Infringement of the
'336, '584, and '148 Patents 6. This is an action for declaratory judgment under 28 U.S.C. $8 2201, 2202 and Title 35 of the United States Code.
7. By the Complaint in this lawsuit, TPL and Patriot have alleged that they are owners of the Asserted Patents. TPL and Patriot have further alleged that TAEC infringed and continues to infringe the Asserted Patents. TPL and Patriot have also alleged that TAEC has contributed to and induced others to infnnge the Asserted Patents.
8. By filing their Complaint and alleging infringement on the part of TAEC in this lawsuit, TPL and Patriot have created a reasonable apprehension on the part of TAEC that TPL and Patriot will maintain this lawsuit against TAEC or initiate additional lawsuits against TAEC for infringement of the Asserted Patents, and such apprehension will persist even if TPL and Patriot were subsequently to dismiss this lawsuit. For these reasons, an actual controversy within the Court's jurisdiction exists under 28 U.S.C. 5 2201.
9. TAECYs activities do not and have not constituted infnngement, either directly, contributorily, or by inducement of others, of any claims of any of the Asserted Patents,
either literally or under the doctrine of equivalents with respect to the products accused by TPL's Preliminary Infringement Contentions of July 17,2006 and any amendments allowed thereto.
10. On information and belief, the claims of all of the Asserted Patents are invalid under 35 U.S.C. $5 102, 103, and/or 112.
Declaratory Judgment of Unenforceability of the '148, '336 and '584 Patents Due to Inequitable Conduct
11. 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.Relief Requested WHEREFORE, TAEC prays the Court enter judgment against TPL and Patriot and grant the following relief:
11. A declaration that TAEC does not infringe, contribute to the infringement of, or induce any other party to infringe, any valid claim of the '336, ' 148, and '584 patents with respect to the products accused by TPL's Preliminary Infringement Contentions of July 17, 2006 and any amendments allowed thereto;
12. A declaration that the '336, '148, and '584 patents are each invalid for failing to meet one or more of the requirements for patentability, including 35 U.S.C. $8 102, 103, and 112;
13. A declaration that the '336, '148, and '584 patents are each unenforceable due to inequitable conduct;
14. A declaration that this case is exceptional and award TAEC its reasonable attorneys' fees pursuant to 35 U.S.C. $ 285;
15. Award TAEC the costs of this suit, including defending against Plaintiffs claims and bringing this counterclaim;
16. Denial of all relief requested in the Complaint of TPL and Patriot and that they take nothing;
17. Entry of judgment that TAEC has not infringed, directly or indirectly, any valid claim of the '148, '336, or '584 patent as properly construed, literally or under the doctrine
of equivalents;
18. Entry of judgment that the ' 148, '336, or '584 patents are invalid;
19. A declaration that this is an exceptional case if and to the extent that it is determined that TPL and Patriot have brought or maintained the instant action without an adequate pre-filing investigation as to the basis or the sustainability of its claims as filed, or have engaged in patent misuse or anti-competitive conduct, or have engaged in inequitable conduct in
conjunction with the acquisition of the '148, '336, or '584 patent, or have engaged in objectively unreasonable, oppressive, vexatious, dilatory, or otherwise inappropriate conduct in conjunction with this action, discovery herein, or its overall course of conduct with respect to the '148, '336, or '584 patent;
20. TAEC be awarded its costs and attorneys' fees; and
21. TAEC be awarded such other and further relief as the Court deems just and proper.
JURY TRIAL DEMANDED AS TO ALL ELEMENTS SO TRIABLE
R BOTTS L.L.P.
9 1 0 Louisiana Street
Houston, Texas 77002
CERTIFICATE OF SERVICE
The undersigned hereby certifies that on February 16, 2007, a copy of the foregoing TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.'S AMENDED ANSWER AND AMENDED COUNTERCLAIMS TO TECHNOLOGY PROPERTIES LIMITED'S AND PATRIOT SCIENTIFIC CORPORATION'S SECOND AMENDED COMPLAINT was served electronically, via CMIECF, on all counsel of record below who are deemed to have consented to such service under the Court's local rules. Any other counsel of
record will be served via facsimile and certified mail, return receipt requested.
Scoit F. Partridge
