New Pacer--DEFENDANT NEC ELECTRONICS AMERICA, INC.’S FIRST AMENDED ANSWER TO THE SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT AND NEC ELECTRONICS AMERICA, INC.’S SECOND AMENDED COUNTERCLAIM
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION TECHNOLOGY PROPERTIES LIMITED, et al.,
Plaintiff,
v.
FUJITSU LIMITED, et al.,
Defendants.
DEFENDANT NEC ELECTRONICS AMERICA, INC.’S FIRST AMENDED ANSWER TO THE SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT AND NEC ELECTRONICS AMERICA, INC.’S SECOND AMENDED COUNTERCLAIM
Defendant NEC Electronics America, Inc. (“NEC Electronics”) hereby amends its response to Plaintiffs’ Second Amended Complaint for Patent Infringement (doc. no. 191) and presents its Second Amended Counterclaim, as follows:
THE PARTIES
1. Upon information and belief, NEC Electronics admits the allegations in paragraph 1 of Plaintiffs’ Second Amended Complaint for Patent Infringement (“Second Amended Complaint”).
2. Upon information and belief, NEC Electronics admits the allegations in paragraph 2 of the Second Amended Complaint.
3. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 3 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph.
4. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 4 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph.
5. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 5 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph.
6. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 6 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Corporation with prejudice.
7. NEC Electronics admits the allegations in paragraph 7 of the Second Amended Complaint.
8. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 8 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Display Solutions of America, Inc. (“NEC Display”) with prejudice.
9. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 9 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Corporation of America (“NEC America”) with prejudice.
10. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 10 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Unified Solutions, Inc. (“NEC Unified”) with prejudice.
11. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 11 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph.
12. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 12 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph.
13. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 13 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph.
14. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 14 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph.
15. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 15 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph.
JURISDICTION AND VENUE
16. NEC Electronics admits the allegations in paragraph 16 of the Second Amended Complaint because Plaintiffs have alleged a cause of action under the patent laws of the United States, 35 U.S.C. §§ 1, et seq. NEC Electronics denies the remaining allegations of this paragraph of the Second Amended Complaint.
17. NEC Electronics admits that this Court has personal jurisdiction over NEC Electronics by virtue of NEC Electronics conducting business in this district, and that, therefore, venue in this district is proper over it. NEC Electronics denies each and every remaining allegation in paragraph 17 of the Second Amended Complaint directed to it. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 17 of the Second Amended Complaint with respect to each defendant other than NEC Electronics and, accordingly, denies such allegations in paragraph 17 of the Second Amended Complaint.
THE PATENTS
18. NEC Electronics admits that a copy of U.S. Patent No. 6,598,148 (“the ‘148 patent”) is attached to the Second Amended Complaint as Exhibit A, that it appears on its face to have issued on July 22, 2003, and that it is entitled “High Performance Microprocessor Having Variable Speed System Clock.” NEC Electronics denies each and every remaining allegation in paragraph 18 of the Second Amended Complaint.
19. NEC Electronics admits that a copy of U.S. Patent No. 5,809,336 (“the ‘336 patent”) is attached to the Second Amended Complaint as Exhibit B, that it appears on its face to have issued on September 15, 1998, and that it is entitled “High Performance Microprocessor Having Variable Speed System Clock.” NEC Electronics denies each and every remaining allegation in paragraph 19 of the Second Amended Complaint.
20. NEC Electronics admits that a copy of U.S. Patent No. 5,784,584 (“the ‘584 patent”) is attached to the Second Amended Complaint as Exhibit C, that it appears on its face to have issued on July 21, 1998, and that it is entitled “High Performance Microprocessor Using Instructions That Operate Within Instruction Groups.” NEC Electronics denies each and every remaining allegation in paragraph 20 of the Second Amended Complaint.
21. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 21 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph.
22. NEC Electronics admits that it believes that Patriot is a proper and necessary party plaintiff in this action and that defendants did indicate that they might seek to dismiss this action for failure to join Patriot if Patriot was not joined as a plaintiff. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations in paragraph 22 of the Second Amended Complaint and, accordingly, denies such allegations in this paragraph.
23. Assuming that the reference to “Moore” is to Mr. Charles Moore, NEC Electronics admits that it has not asserted that Mr. Moore need be a plaintiff in this action. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations in paragraph 23 of the Second Amended Complaint and, accordingly, denies such allegations in this paragraph.
INFRINGEMENT BY MATSUSHITA DEFENDANTS
24. – 32. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraphs 24-32 of the Second Amended Complaint and, accordingly, denies the allegations in those paragraphs.
INFRINGEMENT BY NEC DEFENDANTS
33. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 33 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Corporation with prejudice.
34. NEC Electronics denies the allegations in paragraph 34 of the Second Amended Complaint.
35. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 35 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC America with prejudice.
36. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 36 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Display with prejudice.
37. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 37 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Unified with prejudice.
38. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 38 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Corporation with prejudice.
39. NEC Electronics denies the allegations in paragraph 39 of the Second Amended Complaint.
40. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 40 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC America with prejudice.
41. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 41 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Display with prejudice.
42. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 42 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Unified with prejudice.
43. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 43 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Corporation with prejudice.
44. NEC Electronics denies the allegations in paragraph 44 of the Second Amended Complaint.
45. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 45 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC America with prejudice.
46. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 46 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Display with prejudice.
47. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 47 of the Second Amended Complaint and, accordingly, denies the allegations in this paragraph. NEC Electronics answers further that Plaintiffs have filed a Stipulation and Order of Dismissal with Prejudice dismissing NEC Unified with prejudice.
INFRINGEMENT BY TOSHIBA DEFENDANTS
48. – 62. NEC Electronics is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraphs 48 - 62 of the Second Amended Complaint
and, accordingly, denies the allegations in those paragraphs.
63. All allegations not specifically admitted herein are denied.
AFFIRMATIVE DEFENSES NON-INFRINGEMENT
64. NEC Electronics does not directly infringe, contributorily infringe, or induce infringement of, and at all relevant times to this action, has not directly infringed, contributorily infringed, or induced infringement of any valid and enforceable claim of the ‘148, ‘336, and/or ‘584 patents.
INVALIDITY
65. The claims of the ‘148, ‘336 and/or ‘584 patents are invalid for failure to comply with one or more of the requirements of 35 U.S.C. §§ 102, 103, 112 and/or 133.
UNENFORCEABILITY
66. Plaintiffs’ claims for infringement of the ‘148 and ‘336 patents (“the Asserted Patents”) are barred because those patents are unenforceable as a result of inequitable conduct.
UNENFORCEABILITY COUNT 1:
67. At least Drew Hamilton, Esq., engaged in inequitable conduct in the prosecution of application ser. no. 09/124,623, which became U.S. Pat. No. 6,598,148. Mr. Hamilton was substantively involved in the prosecution of application ser. no. 09/124,623.
68. Sometime before December 31, 1999, employees of Patriot Scientific Corporation made the decision to abandon patent application ser. no. 09/124,623.
69. Mr. George Shaw, an employee of Patriot Scientific Corporation, was the principal liaison of Patriot Scientific Corporation to its patent attorneys. Both Mr. Shaw and Mr.
Hamilton were aware that there was an intent to abandon the patent application ser. no. 09/124,623.
70. The patent application ser. no. 09/124,623 went abandoned on May 2, 2000 for failure to timely file a proper response to an office action mailed on January 31, 2000.
71. On April 29, 2002, Mr. Hamilton filed a declaration with the U.S. Patent and Trademark Office, attesting that the entire delay in failing to file a proper response to the office
action mailed January 31, 2000, was unintentional.
72. Mr. Hamilton, through his declaration, intentionally deceived the United States Patent and Trademark Office in order to recover a previously abandoned patent application for his client, Patriot Scientific Corporation.
73. The deception was material, because otherwise no patent would have issued.
UNENFORCEABILITY COUNT 2:
74. At least Mr. Shaw engaged in inequitable conduct during the prosecution of patent application ser. no. 08/484,918, which became U.S. Pat. No. 5,809,336. Mr. Shaw was substantively involved in the prosecution of application ser. no. 08/484,918.
75. During 1992, Mr. Shaw was a contractor to Nanotronics Corporation (“Nanotronics”) involved in design work concerning a microprocessor related to the ShBoom microprocessor (“Nanotronics Microprocessor”).
76. Engineers working for Nanotronics, including Mr. Shaw, intended to implement in the Nanotronics Microprocessor a critical component of the claimed subject matter of U.S. Pat. No. 5,809,336: a ring oscillator system clock.
77. At some point in early 1992, engineers working for Nanotronics decided to forego the use of a ring oscillator system clock in the Nanotronics Microprocessor because of the risk that a microprocessor using such a clock would not work.
78. Mr. Shaw was aware of this decision by Nanotronics engineers and was aware of the deficiencies in a ring oscillator system clock in the 1995-2000 time frame. Mr. Shaw further worked with one or more engineers at Patriot Scientific Corporation, the successor to Nanotronics, to correct flaws in the design of the ring oscillator system clock disclosed in U.S. Pat. No. 5,809,336.
79. Mr. Shaw was the principal liaison and technical contact of Patriot Scientific Corporation for its then patent attorney, Willis Higgins. In that capacity, Mr. Shaw attended several interviews during 1997 and 1998 with the Examiner assigned by the United States Patent and Trademark Office to patent application ser. no. 08/484,918.
80. Despite believing that a ring oscillator system clock would not work as claimed in patent application ser. no. 08/484,918 or that undue experimentation would be required to achieve a microprocessor with a functioning ring oscillator system clock, Mr. Shaw told the Examiner that a ring oscillator system clock would work to drive a microprocessor at its fastest safe operating speed, thus conveying the impression that a ring oscillator system clock was an improvement over other clocking systems. In particular, Mr. Shaw failed to tell the Examiner that Nanotronics had abandoned the design because it likely would not work.
81. Mr. Shaw intentionally deceived the United States Patent and Trademark Office in order to expedite the allowance of patent application ser. no. 08/484,918.
82. The deception related to material facts which, if they had been fully disclosed to the Examiner, would have allowed the Examiner to make a prima facie rejection under 35 U.S.C. §112 1.
LACHES
83. On information and belief, all or some of Plaintiffs’ claims for relief are barred by the doctrine of laches.
COUNTERCLAIM
Defendant/Counterclaim Plaintiff NEC Electronics America, Inc. alleges its Counterclaim as follows:
1. Defendant/Counterclaim Plaintiff NEC Electronics America, Inc. (“NEC Electronics”) is a corporation organized and existing under the laws of the State of California and maintains a principal place of business in Santa Clara, California.
2. Upon information and belief, Plaintiff/Counterclaim Defendant Technology Properties Limited (“TPL”) is a corporation organized and existing under the laws of the State of California and maintains a principal place of business in San Jose, California.
3. Upon information and belief, Plaintiff/Counterclaim Defendant Patriot Scientific Corporation (“Patriot”) is a corporation organized and existing under the laws of the State of
Delaware and maintains a principal place of business in San Diego, California.
4. NEC Electronics asserts a Counterclaim for declaratory relief under the patent laws of the United States, Title 35, United States Code, in particular, Sections 271 and 285. This Court has jurisdiction over the subject matter of this Counterclaim pursuant to 28 U.S.C. 1331, 1338(a), 2201 and 2202.
5. Venue is proper in this Court pursuant to 28 U.S.C. § 1391(b).
6. In their Second Amended Complaint, TPL and Patriot (“Plaintiffs”) allege that they (along with Charles Moore) are the owners of the right, title and interest to the ‘148, ‘336 and ‘584 patents and that TPL has the exclusive right to enforce and license these patents. Plaintiffs further allege that NEC Electronics has infringed the ‘148, ‘336 and ‘584 patents.
7. An actual controversy exists between Plaintiffs and NEC Electronics by virtue of the allegations in Plaintiffs’ Second Amended Complaint in this action.
8. The ‘148, ‘336, and/or ‘584 patents are invalid for failure to comply with one or more of the requirements of 35 U.S.C. §§ 102, 103, 112, and/or 133.
9. NEC Electronics has not directly infringed, contributorily infringed, or induced infringement of any valid and enforceable claim of the ‘148, ‘336 and/or ‘584 patents. 10. The ‘148 and/or ‘336, patents are unenforceable for the reasons stated in paragraphs 66 – 82 of NEC Electronics’ First Amended Answer to Plaintiffs’ Second Amended Complaint, which paragraphs are incorporated herein by reference as if set forth fully herein.
11. This is an exceptional case under 35 U.S.C. § 285, entitling NEC Electronics to an award of its attorneys’ fees, expenses and costs in this action.
PRAYER FOR RELIEF
WHEREFORE, Defendant/Counterclaim Plaintiff NEC Electronics prays for:
A. A judgment dismissing the Second Amended Complaint with prejudice.
B. A judgment providing that Plaintiffs shall not be awarded any relief on their Second Amended Complaint, including without limitation, any award of damages, attorneys’ fees, costs, and/or injunctive relief.
C. A judgment declaring each claim of the ‘148, ‘336 and ‘584 patents invalid.
D. A judgment declaring unenforceable each of the ‘148 and ‘336 patents.
E. A judgment declaring that NEC Electronics has not directly infringed, contributorily infringed, or induced infringement of any valid and enforceable claim of the ‘148, ‘336 and ‘584 patents.
F. A judgment deeming this to be an exceptional case under 35 U.S.C. § 285 and awarding NEC Electronics its attorneys’ fees, expenses and costs in this action.
G. Such other and further relief as the Court deems just and proper.
Case 2:05-cv-00494-TJW Document 306-2 Filed 09/10/2007