Free Answer to Counterclaim - District Court of Delaware - Delaware

Case 1:05-cv-00636-GMS

Document 13

Filed 12/21/2005

Page 1 of 6

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

BLACK & DECKER INC. and BLACK & DECKER (U.S.) INC., Plaintiffs, v. THE STANLEY WORKS, Defendant.

) ) ) ) ) ) ) ) ) )

Civil Action No. 05-636-GMS JURY TRIAL DEMANDED

BLACK & DECKER'S ANSWER TO THE STANLEY WORKS' COUNTERCLAIMS Plaintiffs, Black & Decker Inc. and Black & Decker (U.S.) Inc. (collectively "Black & Decker"), answers the counterclaims of defendant The Stanley Works ("Stanley") as follows: ANSWER TO COUNTERCLAIMS Jurisdiction and Venue 1. Answer: Admitted. This Court has jurisdiction pursuant to 28 U.S.C. § 1331 and 1338(a).

2. Answer:

Venue is proper in this Court under 28 U.S.C. §§ 1391(b) and (c).

Admitted.

Case 1:05-cv-00636-GMS

Document 13

Filed 12/21/2005

Page 2 of 6

3. Stanley brings this action pursuant to 35 U.S.C. § 1 et seq., and seeks declaratory relief under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. Answer: Black & Decker admits that Stanley brings this action pursuant to 35 U.S.C. § 1 et seq., and seeks declaratory relief under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202; otherwise, denied.

4. Defendant. Answer:

On August 30, 2005, Black & Decker filed this lawsuit, naming Stanley as the

Admitted.

5. Black & Decker's filing of this suit proves that there is a substantial, actual, and continuing controversy between Stanley and Black & Decker with respect to U.S. Patent No. 5,539,990 ("the `990 patent") and U.S. Patent No. 6,914,930 ("the `930 patent"). Answer: Admitted. The Parties 6. Stanley is a corporation organized and existing under the laws of the state of Connecticut, with its corporate headquarters at 1000 Stanley Drive, New Britain, Connecticut. Answer: Admitted.

7. On information and belief, Black & Decker Inc. is a corporation organized and existing under the laws of Maryland, with its principal place of business at 701 East Joppa Road, Towson, Maryland. Answer: Admitted. 2

Case 1:05-cv-00636-GMS

Document 13

Filed 12/21/2005

Page 3 of 6

8. On information and belief, Black & Decker (U.S.) Inc. is a corporation organized and existing under the laws of Maryland, with its principal place of business at 701 East Joppa Road, Towson, Maryland. Answer: Admitted.

9. On information and belief, Black & Decker (U.S.) Inc. purports to be an exclusive licensee of the `990 patent and the `930 patent. Answer: Admitted.

COUNTERCLAIM ONE: INVALIDITY OF THE `990 PATENT 10. Stanley incorporates by reference Paragraphs 1 through 9, above, as though fully set forth herein. Answer: Black & Decker incorporates by reference its answers to Paragraphs 1 through 9.

11. At least one claim of the `990 patent is invalid for failure to meet the conditions for patentability specified in 35 U.S.C. §1 et seq. Answer: Denied.

COUNTERCLAIM TWO: NON-INFRINGEMENT OF THE `990 PATENT 12. Stanley incorporates by reference Paragraphs 1 through 11, above, as though fully set forth herein. Answer: Black & Decker incorporates by reference its answers to Paragraphs 1 through 11.

3

Case 1:05-cv-00636-GMS

Document 13

Filed 12/21/2005

Page 4 of 6

13. Stanley does not infringe any valid claim of the `990 patent, either literally or under the doctrine of equivalents. Answer: Denied.

COUNTERCLAIM THREE: INVALIDITY OF THE `930 PATENT 14. Stanley incorporates by reference Paragraphs 1 through 13, above, as though fully set forth herein. Answer: Black & Decker incorporates by reference its answers to Paragraphs 1 through 13.

15. At least one claim of the `930 patent is invalid for failure to meet the conditions for patentability specified in 35 U.S.C. § 1 et seq. Answer: Denied.

COUNTERCLAIM FOUR: NON-INFRINGEMENT OF THE `930 PATENT 16. Stanley incorporates by reference Paragraphs 1 through 15, above, as though fully set forth herein. Answer: Black & Decker incorporates by reference its answers to Paragraphs 1 through 15.

17. Stanley does not infringe any valid claim of the `930 patent, either literally or under the doctrine of equivalents. Answer: Denied.

4

Case 1:05-cv-00636-GMS

Document 13

Filed 12/21/2005

Page 5 of 6

MORRIS, NICHOLS, ARSHT & TUNNELL

/s/ Thomas C. Grimm Thomas C. Grimm (#1098) James W. Parrett, Jr. (#4292) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 Attorneys for Plaintiffs OF COUNSEL: Raymond P. Niro Dean D. Niro Sally Wiggins NIRO, SCAVONE, HALLER & NIRO 181 West Madison, Suite 4600 Chicago, IL 60602-4515 (312) 236-0733 December 21, 2005
498776

5

Case 1:05-cv-00636-GMS

Document 13

Filed 12/21/2005

Page 6 of 6

CERTIFICATE OF SERVICE I hereby certify that on December 21, 2005, I electronically filed the foregoing document with the Clerk of Court using CM/ECF, which will send notification of such filing to the following: Neal C. Belgam, Dale R. Dube, Ross R. Barton, and William P. Atkins. I also certify that copies were caused to be served on December 21, 2005, upon the following in the manner indicated: BY HAND Neal C. Belgam Dale R. Dube Blank Rome LLP 1201 North Market Street, Suite 800 Wilmington, DE 19801

/s/ Thomas C. Grimm Thomas C. Grimm (#1098) [email protected]
498776

-6-