Free Answer to Complaint - District Court of California - California

Case 3:08-cv-00060-BTM-CAB

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Filed 03/05/2008

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1 Roger G. Perkins, Esq., CSB #86617

Rperkinsêmpplaw. com
2 Angela Kim, Esq., CSB #216374

Akimêmpp1aw.com 3 MORRS POLICH & PURDY LLP
501 West Broadway, Suite 500
4 San Diego, California 92101

Telephone: (619) 557-0404
5 Facsimile: (619) 557-0460
6 Robert S. Mallin, Ilinois Bar No. 6205051

Rmallinêbrinksho feLcom
7 Brins Hofer Gilson & Lione

NBC Tower, Suite 3600
8 455 North Cityfront Plaza Drive

Chicago, IL 60611-5599
9 Telephone: (312) 321-4221
Facsimile: (312) 321-4299

10

Attorneys for Defendant One World Technologies, Inc.
11

12
13

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA
JENS ERIK SORENSEN, As Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST,
Plaintiff,
v.

14
15

CASE NO. 3:08-cv-00060-BTM-CAB

16
17
18

ONE WORLD TECHNOLOGIES, INC.'S RESPONSE TO COMPLAINT FOR PATENT INFRINGEMENT, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS

19

20
21

EMERSON ELECTRIC CO., a Missouri Corporation; ONE WORLD TECHNOLOGIES, (Hon. Barr Ted Moskowitz) INC., a Delaware corporation; RIDGE TOOL COMP ANY, an Ohio Corporation; RIDGID, JURY TRIAL DEMANDED INC., a Delaware corporation; and DOES 1-100
Defendants.

22
23

24 ANSWER TO COMPLAINT
25 Defendant, One World Technologies, Inc. ("OWT") answers the allegations of plaintiff, Jens
26 Eri Sorensen, as trustee of Sorensen Research and Development Trust ("SRDT") and asserts

27 affrmative defenses and counterclaims as set forth below, solely on its own behalf OWT is without
28
ONE WORLD TECHNOLOGIES, INC.'S RESPONSE TO COMPLAIT FOR PATENT INFRGEMENT, AFFIRATIVE DEFENSES AND COUNTERCLAIMS
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Case 3:08-cv-00060-BTM-CAB

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1 knowledge or information suffcient to form a belief as to the truth ofthe allegations set forth in SRDT's

2 Complaint with respect to the defendants referred to as DOES 1-100, and therefore denies the
3 allegations with respect to them. To the extent that any response to the conclusory headings used in the

4 complaint may be deemed required, OWT denies any allegations set forth in those headings. OWT

5 denies any allegation not deemed to be addressed below, if any, to the extent that the allegation is

7 THE PARTIES
8

6 deemed to require a response.

1.

OWT is without knowledge or information suffcient to form a belief as to the truth of

the

9 allegations and therefore denies the allegations except that OWT admits that with the exception of the
10 numbering, Exhibit A appears to be a true and correct copy of

U.S. Patent No. 4,935,184 (''the '184

11 patent").
12
2.
OWT is without knowledge or information suffcient to form a belief as to the truth of

the

13 allegations and therefore denies the allegations.
14
15

3.

Admitted.

4.
5.

(Paragraph 4 does not exist in the Complaint)
OWT is without knowledge or information suffcient to form a belief as to the truth of

16

the

17 allegations and therefore denies the allegations.
18

6.

OWT is without knowledge or information suffcient to form a belief as to the truth of

the

19 allegations and therefore denies the allegations.
20
7.

OWT is without knowledge or information suffcient to form a belief as to the truth ofthe

21 allegations and therefore denies the allegations.
22
8.

OWT is without knowledge or information suffcient to form a belief as to the truth of the

23 allegations and therefore denies the allegations.
24
25
9.

Denied.

10.

Admitted that OWT designs, sells and offers to sell power tools with plastic housings but
the allegations.

26 denies the remainder of

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1

JURISDICTION AND VENUE
11.

2
3 remainder of

OWT admits that this action purports to be for alleged patent infringement but denies the
the allegations.

4

12.

OWT admits that venue is proper as to OWT. OWT is without knowledge or information

5 suffcient to form a belief as to the truth of the allegations with respect to the other defendants and
6 therefore denies the allegations with respect to them. OWT denies the remainder of

the allegations.

7

13.

OWT admits that this court has personal jurisdiction over OWT. OWT is without
as to the truth of

8 knowledge or information suffcient to form a belief

the allegations with respect to the

9 other defendants and therefore denies the allegations with respect to them. OWT denies the remainder
10 0 f the allegations.

11 GENERAL ALLEGATIONS
12
13

14. 15. 16. 17. 18. 19.

Admitted.
Denied. Denied. Denied. Denied.

14
15

16 17

Admitted that OWT designs, sells and offers to sell power tools with plastic housings.

18 OWT is without knowledge or information suffcient to form a belief as to the truth of the allegations

19 with respect to the other defendants and therefore denies the allegations with respect to them. OWT
20 denies the remainder of

the allegations.

21

20. 21.

Denied.

22

OWT admits that it has not obtained a license because no license is needed. OWT is

23 without knowledge or information sufficient to form a belief as to the truth of the allegations with

24 respect to the other defendants and therefore denies the allegations with respect to them. OWT denies
25 the remainder of

the allegations.

26 27
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1

CLAIM 1 - PATENT INFRINGEMENT
22.

2

OWT realleges and incorporates herein by reference paragraphs 1 through 21, inclusive,

3 as though fully set forth herein.
4
23.

Admitted that OWT designs, sells and offers to sell power tools with plastic housings.

5 OWT is without knowledge or information suffcient to form a belief as to the truth of the allegations

6 with respect to the other defendants and therefore denies the allegations with respect to them. OWT
7 denies the remainder of

the allegations.

8
9 the remainder of

24.

OWT admits that Plaintiff has identified several RIDGID-branded products, but denies
the allegations.

10
11

25. 26. 27.

Denied. Denied.

12
13 as to the truth of

Denied as to OWT. OWT is without knowledge or information suffcient to form a belief
the allegations with respect to the other defendants and therefore denies the allegations

14 with respect to them.
15

28.

Denied.

16

29.

OWT admits that all manufacturig of the products identified in paragraph 24 of the
the allegations.

17 Complaint occurs in China but denies the remainder of

18

30.
31. 32.

Denied. Denied.
Denied. Denied.

19

20
21

33. 34.
35. 36.

22
23

Denied.
Denied. Denied.

24
25

AFFIRMATIVE DEFENSES
1.

26

OWT has not and does not infringe, directly or indirectly, or actively induce others to

27 infringe, or contribute to the infringement by others because OWT does not make, use, sell, offer to sell
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1 or import any product manufactured by a process covered by any valid and enforceable claim of

the
the ' 184

2 ' 184 patent and does not practice any process covered by any valid and enforceable claim of

3 patent.

4
5 more of

2.

The claims of

the ' 184 patent are invalid and/or unenforceable for failing to meet one or

the statutory requirements of35 U.S.C. § 101 et seq., including but not limited to 35 U.S.C.

6 §§ 102, 103 and/or 112.
7

3.

SRDT's claim for damages (to the extent SRDT is entitled to any damages) is limited

8 because SRDT failed to provide notice as required by 35 U.S.C. § 287(b).
9

4.

SRDT's claim for damages (to the extent SRDT is entitled to any damages) is limited by

10 the statute oflimitations as set forth in 35 U.S.C. § 286.
11

5.

SRDT's claim for damages (to the extent SRDT is entitled to any damages) is bared in

12 whole or in par by the equitable doctrie oflaches.
13

6.

SRDT's claim for damages (to the extent SRDT is entitled to any damages) is bared in

14 whole or in par by the equitable doctrie of equitable estoppel.
15

7.

SRDT's claim for damages (to the extent SRDT is entitled to any damages) is barred in
prosecution history estoppel.

16 whole or in par by the doctrie of

17 RESPONSE TO SRDT'S PRAYER FOR RELIEF
18 The allegations in the paragraph requesting relief are in the nature of a prayer. Although no
19 answer is required, OWT responds to the individual requests for relief as follows:

20

a.

OWT denies that a judgment orderg that the Accused Processes are presumed to
and all

21 infringe the '184 patent pursuant to 35 U.S.c. § 295 should be entered, and denies any

liability of

22 Plaintiffs claims;
23

b.

OWT denies that ajudgment stating that the Defendants act together as a single

24 enterprise for purposes of designing, manufacturing, marketing, importing, offering for sale, and

25 or/selling the Accused Products should be entered;
26
c.

OWT denies that a judgment adjudicating and decreeing the Defendants to have infringed
liability 0 f Plaintiff s claims;

27 the' 184 patent should be entered, and denies any and all

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1

d.

OWT denies that a judgment adjudicating and decreeing the Defendants to have

2 contributed to the infringement of

the '184 patent and to have induced others to infringe the '184 patent
liability of Plaintiff

3 should be entered, and denies any and all

s claims;

4

e.

OWT denies that a judgment orderg the Defendants to account for damages adequate to
the '184 patent should be entered, and denies any

5 compensate SRDT for the infringement of

and all

6 liability of

Plaintiff

s claims;

7

f

OWT denies that a judgment orderg that such damages as are awarded, to the extent

8 Plaintiffis entitled to any such damages, are trebled pursuant to 35 U.S.C. § 284 by reason of

the wilful,
liability of

9 wanton, and deliberate nature of

the infringement should be entered, and denies any and all

10 Plaintiff s claims;
11

g.

OWT denies that a judgment decreeing this case to be an "exceptional case" and

12 awarding SRDT reasonable attorneys' fees pursuant to 35 U.S.C. § 285 should be entered, and denies
13 any and all liability of

Plaintiffs claims;

14

h.

OWT denies that a judgment awarding interest on such damages, to the extent Plaintiff is
liability of

15 entitled to any such damages, should be entered, and denies any and all

Plaintiffs claims;

16

1.

OWT denies that a judgment awarding all costs of suit herein incurred by Plaintiff should
and all liability of

17 be entered, and denies any

Plaintiffs claims; and

18
19 of

J.

OWT denies that a judgment should be entered for such other and further relief in favor
and all liability of

the Plaintiff, and denies any

20 COUNTERCLAIMS
21
1.

Plaintiffs claims.

Counterclaim Plaintiff OWT is a Delaware corporation with a principal place of

business

22 at 1428 Pearman Dairy Road, Anderson, South Carolina, 29625.

23

2.

SRDT has alleged that Counterclaim Defendant SRDT is a California resident and trustee
all rights that may exist to the '184 patent.

24 ofa trust organized according to California law, and owner of

25

3.

This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1332, 1337(a),

26 1338(a) and 1367.

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4.

Personal jurisdiction is proper in this judicial district.

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1

5.
6.

Venue is proper in this judicial district under 28 U.S.C. § 1391

(b) and (c).
the claims of

2

SRDT has alleged that OWT is infringing one or more of

the '184 patent by

3 manufacturing, importing into, selling and/or offering for sale in the United States several RIDGID4 branded power tools.

5

7.

SRDT is seeking damages from OWT for the alleged infringement of the' 184 patent.

6 7
8 8.

FIRST COUNTERCLAIM FOR DECLARATION OF NONINFRIGEMENT
OWT realleges and incorporates herein by reference paragraphs 1 through 7, inclusive, as

9

though fully set forth herein.
9.

10
11

This is an action under the Federal Declaratory Judgments Act, 28 U.S.C. §§ 2201 and
the United States, 35 U.S.C. § 1 et seq.

2202, and pursuant to the patent laws of

12
13

10.

OWT has not and does not directly infringe, contributorily infringe or actively induce

others to infringe any valid claim of the ' 184 patent by manufacturig, importing into, selling, and/or
offering for sale in the United States any of

14
15

the Accused Products, or by practicing any method covered

by a valid and enforceable claim 0 f the ' 184 patent.

16
17

SECOND COUNTERCLAIM FOR DECLARATION OF PATENT INVALIDITY

11. OWT realleges and incorporates herein by reference paragraphs 1 through 10, inclusive,
18

as though fully set forth herein.
19

12. The' 184 patent is the subject of two granted requests for reexamination in the United
States Patent and Trademark Office (''the PTO").

20
21
13. The PTO has found more than twenty substantial new questions of

22
numerous prior art references that anticipate or render obvious the claims of

patentability based on
the ' 184 patent.

23
14. This is an action under the Federal Declaratory Judgments Act, 28 U.S.C. §§ 2201 and

24
2202, and pursuant to the patent laws of

the United States, 35 U.S.c. § 1 et seq.
the '184 patent are invalid for failing to meet one or more of

25
15. The claims of

the statutory

26
requirements of35 U.S.C. § 101 et seq., including but not limited to 35 U.S.C. §§ 102, 103 and/or 112.

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1 PRAYER

FOR

RELIEF

2 WHEREFORE, OWT prays for relief against SRDT as follows:
3
1.
For a declaration that OWT does not infringe any valid claim of

the '184 patent;

4
5
6 to OWT of

2.
3.

For a declaration that the claims ofthe ' 184 patent are invalid and/or unenforceable;

For a declaration that this is an exceptional case under 35 U.S.C. § 285 and for an award
its attorneys' fees and expenses in this action; and

7

4.

For such relief

as the Court may deem

just and proper.

8 DEMAND FOR JURY TRIL
9 Pursuant to FED. R. Civ. P. 38(b), OWT hereby demands a trial by jury of all issues so triable in

10 this action.
11

12 Date: March 5,2008
13

MORRS POLICH & PURDY, LLP

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15

By: s/Angela Kim

Attorneys for Defendant SENCO PRODUCTS, INC.

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17

Akimêmpplaw.com
Robert S. Mallin, Ilinois Bar No. 6205051

18

Brins Hofer Gilson & Lione

19

NBC Tower, Suite 3600 455 North Cityfront Plaza Drive Chicago, IL 60611-5599
Attorneys for Defendant ONE WORLD TECHNOLOGIES, INC.

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21

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23

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Jens Erik Sorensen v. Emerson Electric Co., et aL

U.S. District Court, Southern District, CASE NO. 3:08-cv-00060-BTM-CAB

1 CERTIFICATE OF SERVICE
2 I am employed in San Diego County. I am over the age of 18 and not a party to this action. My
3 business address is 501 West Broadway, Suite 500, San Diego, California 92101-3544.

4 On March 5, 2008, I served a copy of the foregoing document(s) entitled: ONE WORLD

5 TECHNOLOGIES, INC.'S RESPONSE TO COMPLAINT FOR PATENT INFRIGEMENT,

6 AFFIRMATIVE DEFENSES AND COUNTERCLAIMS to all paries in this action.

7 SEE SERVICE LIST
8

Melody A. Kramer, Esq. CSB #169984 Makêkramerlawip.com
Kramer Law Offce, Inc. 9930 Mesa Rim Road, Suite 1600 San Diego, CA 92121 619/993-0874

Attorney for Plaintiff

9
10
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1. 1. Michael Kaler, Esq.
12
13

michaelêkalerlaw.com 9930 Mesa Rim Road, Suite 200
San Diego, California 92121 858/362-3151

Attorney for Plaintiff

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15

~ ELECTRONIC FILING
~ FEDERAL I declare that I am employed in the offce ofa member ofthe bar of

16 17
18

direction the service was made.
Executed on March 5,2008, at San Diego, California.

this court at whose

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SD017451

PROOF OF SERYICE 3:08-cv-00060-BTM-CAB