STC.UNM v. Intel Corporation

Filing 153

STC.UNM's REPLY /Supplemental Answer to Intel's Amended Counterclaims re 38 Answer to Counterclaim,, Answer to Complaint,,, filed by STC. UNM. (Pedersen, Steven)

UNITED STATES DISTRICT COURT
DISTRICT OF NEW MEXICO
STC.UNM,
Plaintiff,
v.
INTEL CORPORATION,

Civil No. 10-CV-01077-RB-WDS

Defendant.
STC’S SUPPLEMENTAL ANSWER TO INTEL’S AMENDED COUNTERCLAIMS
STC hereby replies to the counterclaims of Intel as follows:
Parties
53. Admitted.
54. Admitted.
Jurisdiction and Venue
55. Admitted.
56. Admitted.
57. Admitted.
First Counterclaim - Non-Infringement
58. STC incorporates by reference its forgoing responses.
59. Admitted.
60. STC is without knowledge of the allegations in paragraph 60 and therefore
denies the same.

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Second Counterclaim - Invalidity
61. STC incorporates by reference its forgoing responses.
62. Admitted.
63. STC is without knowledge of the allegations in paragraph 63 and therefore
denies the same.
Third Counterclaim – Unenforceability
64. STC incorporates by reference its forgoing responses. To the extent that any
allegation set forth in Intel’s Fifth Affirmative Defense of Inequitable
Conduct

is

not

repeated

in

its

Third

Amended

Counterclaim

for

Unenforceability, it is denied.
65. Denied.
66. The allegations in this paragraph have been withdrawn.
67. STC admits it sought a Certificate of Correction to correct the continuationin-part status the ’998 patent, and denies the remaining allegations in
paragraph 67.
68-70. The allegations in paragraphs 68-70 have been withdrawn.
71. STC admits the ’998 patent application did not claim priority to any earlierfiled patent applications, and denies the remaining allegations in paragraph
71.
72. STC is without knowledge or information sufficient to form a belief as to the
truth of the allegations set forth in paragraph 72 and on this basis STC
denies such allegations.

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73. STC objects to the allegations in paragraph 73 as vague and indefinite with
respect to the terms “related.” As a result, STC denies the allegations set
forth in paragraph 73.
74. STC admits it contends that the ’998 patent is a continuation-in-part of the
’321 patent, which, in turn, is a continuation of U.S. Patent Application No.
08/123,543, filed on September 20, 1993, and denies the remaining
allegations in paragraph 74.
75. STC admits that the PTO issued a first Office Action rejecting the claims,
and that remarks were submitted in response that were subsequently
deemed non-meritorious by the Patent Office. STC denies the remaining
allegations of paragraph 75.
76. STC is without knowledge or information sufficient to form a belief as to the
truth of the allegations set forth in paragraph 76 and on this basis STC
denies such allegations.
77. STC admits that the PTO issued a second Office Action rejecting the claims,
and that remarks were submitted in response that were subsequently
deemed non-meritorious by the Patent Office. STC is without knowledge or
information sufficient to form a belief as to the truth of the remaining
allegations set forth in paragraph 77 and on this basis STC denies such
allegations.

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78. STC admits that a Terminal Disclaimer was executed that relinquished that
part of the ’998 patent term that would have otherwise extended beyond the
term of the ’321 patent. STC is without knowledge or information sufficient
to form a belief as to the truth of the remaining allegations set forth in
paragraph 78 and on this basis STC denies such allegations.
79. STC is without knowledge or information sufficient to form a belief as to the
truth of the allegations set forth in paragraph 79 and on this basis STC
denies such allegations.
80. STC admits that the on or about June 22, 1999, the Examiner allowed the
’998

patent

based

upon,

inter

alia,

an

“Examiner’s

Amendment,”

“amendments made in the response filed 5/21/99,” and “the filing of a
terminal disclaimer.” STC admits the ‘998 patent issued on March 28, 2000.
81. Admitted.
82. STC admits that it STC learned of the ‘258 patent sometime after UNM’s
assignment, and denies the remaining allegations of paragraph 82.
83. STC admits that it filed a Request for a Certificate of Correction to correct
the continuation-in-part status of the ’998 patent and denies the remaining
allegations of paragraph 83.

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84. STC admits that paragraph 84 cites MPEP §§ 1481 & 1485. STC is without
knowledge or information sufficient to form a belief as to the truth of the
remaining allegations set forth in paragraph 84 and on this basis STC
denies such allegations. For example, the instant request for certificate of
correction was routed from the certificate of corrections branch to Examiner
Huff in art unit 1756, and approved on November 25, 2008.
85. STC objects to the allegations in paragraph 85 as vague and indefinite with
respect to the terms “issues” and “priority.” As a result, STC denies the
allegations set forth in paragraph 85. In addition, STC is without knowledge
or information sufficient to form a belief as to the truth of the remaining
allegations set forth in paragraph 85 and on this basis STC denies such
allegations.
86. Denied.
87. Denied.
88. STC admits that pursuant to the statutory language of 35 U.S.C. 255, STC
classified the failure to claim priority to the ’321 patent as a “clerical
mistake.” STC further admits that in support of satisfaction of the
requirements for the requested correction it stated, inter alia:
“U.S. Patent Application No. 08/490,101 (the parent application)
was filed on June 6, 1995 and issued as U.S. Patent No. 5,705,321
on January 6, 1998. U.S. Patent Application No. 08/932,428 (the
child application) was filed on September 17, 1997 and issued as
US. Patent No. 6,042,998 on March 28, 2000. Accordingly, these
applications were copending from September 17, 1997 until
January 6, 1998. These application have common inventors, i.e.,
Steven R. J. Brueck and Saleem H. Zaidi. These applications have
common subject matter, e.g., method of obtaining a pattern by
coating, exposing, etc.
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The record of the parent and child applications demonstrate that
they were entitled to a filing date and all necessary fees were
properly paid such that priority is appropriate.
STC denies there was no further discussion of the original prosecution
history, and objects to the remaining allegations in paragraph 88 as vague
and indefinite with respect to the terms “applicants’ prior positions to the
contrary.” As a result, STC denies the remaining allegations set forth in
paragraph 88.
89. Denied.
90. Denied.
91. Denied.
92. STC admits that the PTO approved STC’s Request for a Certificate of
Correction on November 25, 2008, and denies the remaining allegations in
paragraph 92.
93. Denied.
94. Denied.

WHEREFORE, STC

prays that the Court find for STC on Intel’s

counterclaims, dismissing such counterclaims with prejudice. STC further
requests its attorney fees and costs associated with the defense against such
counterclaims, and such additional relief as the Court deems appropriate.

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Dated: October 13, 2011

Respectfully submitted,
/s/ Steven R. Pedersen
Rolf O. Stadheim
Joseph A. Grear
George C. Summerfield
Keith A. Vogt
Steven R. Pedersen
STADHEIM & GREAR, LTD.
400 N. Michigan Avenue, Suite 2200
Chicago, Illinois 60611
[phone]

Deron B. Knoner
KELEHER & MCLEOD, P.A.
201 Third Street NW, 12th Floor
PO Box AA
Albuquerque, New Mexico 87103
[phone]

Attorneys for Plaintiff STC.UNM
DEMAND FOR JURY TRIAL
Pursuant to Fed. R. Civ. P. 38(b), STC demands a jury trial of all issues
properly triable to a jury in this case.
Dated: October 13, 2011

Respectfully submitted,
/s/ Steven R. Pedersen
Rolf O. Stadheim
Joseph A. Grear
George C. Summerfield
Keith A. Vogt
Steven R. Pedersen
STADHEIM & GREAR, LTD.
400 N. Michigan Avenue, Suite 2200
Chicago, Illinois 60611
[phone]

Deron B. Knoner
KELEHER & MCLEOD, P.A
201 Third Street NW, 12th Floor
PO Box AA
Albuquerque, New Mexico 87103
[phone]

Attorneys for Plaintiff STC.UNM
CERTIFICATE OF SERVICE: I hereby certify that on October 13, 2011, I
electronically filed the foregoing with the Clerk of the Court using the CM/ECF
system which will send notification of such filing via electronic mail to all
counsel of record.
/s/ Steven R. Pedersen

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