Free Answer to Complaint - District Court of California - California

Case 3:08-cv-00070-BTM-CAB

Document 14

Filed 03/05/2008

Page 1 of 8

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

Rperkins~mpplaw .com 2 Angela Kim, Esq., CSB #216374

Akim~mpplaw.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

Rmallin~brinsho fer. com
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 Defendants Ryobi Technologies, Inc. and Techtronic Industries North America, Inc.
11

12
13

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA
CASE NO. 3:08-cv-00070-BTM-CAB

14 JENS ERIK SORENSEN, As Trustee of SORENSEN RESEARCH AND

15 DEVELOPMENT TRUST,

17 v.

16 Plaintiff,

18 RYOBI TECHNOLOGIES, INC., a Delaware corporation; TECHTRONIC INDUSTRIES 19 NORTH AMERICA, INC., a Delaware corporation; and DOES 1-100 20 Defendants.
21

RYOBI TECHNOLOGIES, INC.'S AND TECHTRONIC INDUSTRIES NORTH AMERICA INC.'S RESPONSE TO COMPLAINT FOR PATENT INFRINGEMENT AND AFFIRMATIVE DEFENSES
(Hon. Bar Ted Moskowitz)

JURY TRIL DEMANDED

22
23

24 ANSWER TO COMPLAINT
25 Defendants, Ryobi Technologies, Inc. ("RTI") and Techtronic Industries North America Inc.
26 ("TTINA") answer the allegations of plaintiff, Jens Erik Sorensen, as trustee of

Sorensen Research and

27 Development Trust ("SRDT"), and assert affative defenses and counterclaims as set forth below,
28 solely on their own behalf RTI and TTINA are without knowledge or information suffcient to form a
RYOBI TECHNOLOGIES, INC.'S AND TECHTRONIC INDUSTRIES NORTH AMERICA, INC.'S RESPONSE

TO COMPLAIT FOR PATENT INFRGEMENT AN AFFIATIVE DEFENSES
3:08-CV -00070-BTM -CAB

Case 3:08-cv-00070-BTM-CAB

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1 belief as to the truth of the allegations set forth in SRDT's Complaint with respect to the defendants

2 referred to as DOES 1-100, and therefore deny the allegations with respect to them. To the extent that
3 any response to the conclusory headings used in the complaint may be deemed required, RTI and

4 TTINA deny any allegations set forth in those headings. RTI and TTINA deny any allegation not

6 THE PARTIES
7
1.
9 with the exception of

5 deemed to be addressed below, if any, to the extent that the allegation is deemed to require a response.

RTI and TTINA are without knowledge or information suffcient to form a belief as to

8 the truth of the allegations and therefore deny the allegations except that RTI and TTINA admit that
the numbering, Exhibit A appears to be a true and correct copy of

U.S. Patent No.

10 4,935,184 ("the' 184 patent").
11

2.
3.

Admitted. Admitted.
RTI and TTINA are without knowledge or information suffcient to form a belief as to

12
13

4.

14 the truth of the allegations and therefore deny the allegations.
15
5. 6.

Denied. Denied.

16 17
18

JURISDICTION AND VENUE
7. 8. 9.

Admitted that this action purports to be for alleged patent infringement.
Denied.

19

20
21

Denied.

GENERAL ALLEGATIONS
10.

22
23

Admitted.
Denied. Denied. Denied.

11. 12. 13.

24
25

26 27
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-2RYOBI TECHNOLOGIES, INC.'S AND TECHTRONIC INDUSTRIES NORTH AMERICA, INC.'S RESPONSE

TO COMPLAIT FOR PATENT INFRGEMENT AN AFFIRATIVE DEFENSES
3:08-CV -00070-BTM -CAB

Case 3:08-cv-00070-BTM-CAB

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1

14.

TTINA admits that it received a letter on September 16, 2004 from an attorney

2 purporting to represent "Sorensen Research & Development Trust" that that identified the ' 184 patent
3 but denies the remainder of

the allegations. RTI denies the allegations.
Denied. Denied.

4
5

15. 16.

6

17.

RTI and TTINA admit that no license has been obtained because no license is needed.
the allegations.

7 Denied as to the remainder of

8 CLAIM 1- PATENT INFRINGEMENT AS TO RYOBI PRODUCTS
9
18.

RTI and TTINA reallege and incorporate herein by reference paragraphs 1 through 17,

10 inclusive, as though fully set forth herein.
11

19.

Denied.
RTI and TTINA admit that Plaintiff

12

20.

has identified several RYOBI-branded products, but

13 denies the remainder of

the allegations.

14
15

21. 22.

Denied. Denied. Denied. Denied.

16 17

23. 24. 25.

Admitted

20
21

26. 27. 28. 29.
30. 31.

Denied. Denied. Denied. Denied. Denied.
Denied. Denied.

22
23

24
25

26 27
28

32.

-3RYOBI TECHNOLOGIES, INC.'S AND TECHTRONIC INDUSTRIES NORTH AMERICA, INC.'S RESPONSE

TO COMPLAIT FOR PATENT INFRGEMENT AN AFFIRATIVE DEFENSES
3 :08-CV -00070-BTM-CAB

Case 3:08-cv-00070-BTM-CAB

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1 CLAIM 2 - PATENT INFRINGEMENT WITH RESPECT TO CRAFTSMAN PRODUCTS
2

33.

RTI and TTINA reallege and incorporate herein by reference paragraphs 1 through 17,

3 inclusive, as though fully set forth herein.
4
5

34. 35.

Denied.

RTI and TTINA admit that Plaintiff has identified several CRAFTSMAN-branded
the allegations..

6 products, but deny the remainder of

7

36.

RTI and TTINA admit that Plaintiff has identified several CRAFTSMAN-branded
the allegations.

8 products, but deny the remainder of

9 10
11

37. 38.

Denied. Denied. Denied. Denied. Denied.
Admitted that all manufacturig ofthe products identified in paragraphs 35 and 36 of

39.

12
13

40. 41. 42.

14

the

15 Complaint occurs in China. Denied as to the remainder of

the allegations.

16 17
18

43.
44. 45. 46. 47. 48. 49.

Denied. Denied. Denied. Denied. Denied. Denied. Denied.

19

20
21

22
23

AFFIRMATIVE DEFENSES
1.

24

RTI and TTINA have not and do not infringe, directly or indirectly, or actively induce

25 others to infringe, or contribute to the infringement by others because RTI and TTINA do not make, use,

26 sell, offer to sell or import any product manufactured by a process covered by any valid and enforceable
27
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-4RYOBI TECHNOLOGIES, INC.'S AND TECHTRONIC INDUSTRIES NORTH AMERICA, INC.'S RESPONSE

TO COMPLAIT FOR PATENT INFRGEMENT AN AFFIRATIVE DEFENSES
3:08-CV -00070-BTM -CAB

Case 3:08-cv-00070-BTM-CAB

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1 claim of

the '184 patent and do not practice any process covered by any valid and enforceable claim of

2 the ' 184 patent.

3
4 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.

5 §§ 102, 103 and/or 112.

6

3.

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

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

4.

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

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

10

5.

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

11 whole or in par by the equitable doctrie oflaches.
12
6.

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

13 whole or in part by the equitable doctrie of equitable estoppel.
14
7.

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

15 whole or in par by the doctrie ofprosecution history estoppel.

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

judgment orderig that the Accused Processes are presumed
liability

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

21 ofPlaintifts claims;
22
b.
RTI and TTINA deny that a

judgment stating that they act together as a single enterprise

23 for purposes of designing, manufacturig, marketing, importing, offering for sale, and or/selling the
24 Accused Ridgid Products should be entered;
25
c.

RTI and TTINA deny that ajudgment stating that they act together as a single enterprise

26 for purposes of designing, manufacturig, marketing, importing, offering for sale, and or/selling the

27 Accused Craftsman Products should be entered;
28

-5RYOBI TECHNOLOGIES, INC.'S AND TECHTRONIC INDUSTRIES NORTH AMERICA, INC.'S RESPONSE

TO COMPLAIT FOR PATENT INFRGEMENT AN AFFIRATIVE DEFENSES
3:08-CV-00070-BTM-CAB

Case 3:08-cv-00070-BTM-CAB

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1

d.

RTI and TTINA deny that ajudgment adjudicating and decreeing the Defendants to have
liability 0 f Plaintift s claims;

2 infringed the' 184 patent should be entered, and deny any and all

3

e.

RTI and TTINA deny that ajudgment adjudicating and decreeing the Defendants to have
the '184 patent should be entered, and deny any and all

4 contributed to the infringement of

liability of

5 Plaintifts claims;
6

f

RTI and TTINA deny that ajudgment stating that Defendants, their parents, subsidiaries,

7 divisions, affliates, offcers, agencies and attorneys, and those acting in privity or concert with RTI and
8 TTINA, are enjoined from further infringement of

the '184 patent, and from further contribution to or
the '184 patent should be entered, and deny any and all

9 inducement ofthe infringement of

liability of

10 Plaintift s claims;
11

g.

RTI and TTINA deny that a

judgment orderig the Defendants to account for damages
for the infringement of

12 adequate to compensate Plaintiff

the '184 patent should be entered, and deny any

13 and all

liability 0 f Plaintift s claims;
h.

14

RTI and TTINA deny that a judgment orderig that such damages as are awarded, to the

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

the

16 willful, wanton, and deliberate nature of the infringement should be entered, and deny any and all
17 liability of

Plaintifts claims;
1.

18

RTI and TTINA deny that ajudgment decreeing this case to be an "exceptional case" and

19 awarding SRDT reasonable attorneys' fees pursuant to 35 U.S.C. § 285 should be entered, and deny any
20 and all

liability ofPlaintifts claims;
J.

21

RTI and TTINA deny that ajudgment awarding interest on such damages, to the extent
liability of

22 Plaintiffis entitled to any such damages, should be entered, and deny any and all

Plaintifts

23 claims;
24
k.
RTI and TTINA deny that ajudgment awarding costs of

suit herein incurred by Plaintiff

25 should be entered, and deny any and all

liability ofPlaintifts claims; and

26
27 in favor of

i.

RTI and TTINA deny that ajudgment should be entered for such other and further relief
the Plaintiff, and deny any and all liability of Plaintiff

s claims.

28

-6RYOBI TECHNOLOGIES, INC.'S AND TECHTRONIC INDUSTRIES NORTH AMERICA, INC.'S RESPONSE

TO COMPLAIT FOR PATENT INFRGEMENT AN AFFIRATIVE DEFENSES
3:08-CV-00070-BTM-CAB

Case 3:08-cv-00070-BTM-CAB

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1 PRAYER FOR RELIEF
2 WHEREFORE, RTI and TTINA request the following relief:
3

a.

Dismissal ofPlaintifts Complaint, with prejudice;

4

b.

A judgment that RTI and TTINA have not infringed, induced infringement or contributed
any valid claim of

5 to the infringement of

the '184 patent;

6
7
8

c.

A judgment that the claims 0 f the' 184 patent are invalid;
Judgment in favor ofRTI and TTINA on all of

d.
e.

the Plaintifts claims;

A

judgment that this is an exceptional case under 35 U.S.C. § 285 and for an award to

9 RTI and TTINA for their attorneys' fees and expenses in this action; and
10

f

For such relief as the Court may deem just and proper.

11 DEMAND FOR JURY TRIL
12 Pursuant to FED. R. Crv. P. 38(b), RTI and TTINA hereby demand a trial by jury of

all issues so

13 triable in this action.
14
15 Date: March 5,2008

MORRS POLICH & PURDY, LLP

16
17
18

By: s/Angela Kim

Attorneys for Defendant
SENCO PRODUCTS, INC.

19

Akim~mpplaw.com
Robert S. Mallin
Brins Hofer Gilson & Lione

20
21

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23

NBC Tower, Suite 3600 455 North Cityfront Plaza Drive Chicago, Ilinois 60611-5599
RYOBI TECHNOLOGIES, INC. AND TECHTRONIC INDUSTRIES NORTH AMERICA, INC.

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25

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-7RYOBI TECHNOLOGIES, INC.'S AND TECHTRONIC INDUSTRIES NORTH AMERICA, INC.'S RESPONSE

TO COMPLAIT FOR PATENT INFRGEMENT AN AFFIRATIVE DEFENSES
3:08-CV-00070-BTM-CAB

Case 3:08-cv-00070-BTM-CAB

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Jens Erik Sorensen v. Ryobi Technologies, Inc., et aL

U.S. District Court, Southern District, Case No. 3:08-cv-00070-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: RYOBI
5 TECHNOLOGIES, INC.'S AND TECHTRONIC INDUSTRIES NORTH AMERICA INC.'S
6 RESPONSE TO COMPLAINT FOR PATENT INFRINGEMENT AND AFFIRMATIVE DEFENSES

7 to all paries in this action.

8 SEE SERVICE LIST
9

10
11

Melody A. Kramer, Esq. CSB #169984 Mak~kramerlawip.com Kramer Law Offce, Inc. 9930 Mesa Rim Road, Suite 1600 San Diego, CA 92121 619/993-0874
1. 1. Michael Kaler, Esq. michael~kalerlaw .com 9930 Mesa Rim Road, Suite 200 San Diego, California 92121 858/362-3151

Attorney for Plaintiff

12

Attorney for Plaintiff

13

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15 16

(2 ELECTRONIC FILING
(2 FEDERAL I declare that I am employed in the offce ofa member of the bar of

17
18

this court at whose

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

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~/

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SD017451

PROOF OF SERVICE CASE NO. 3:08-cv-00070-BTM-CAB