STC.UNM v. Intel Corporation

Filing 170

STC.UNM'S ANSWER to 162 Answer to Counterclaim and Answer to Complaint - STCS ANSWER TO INTELS SECOND AMENDED COUNTERCLAIMS by STC. UNM.(Pedersen, Steven) Modified text on 1/9/2012 (vh).

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

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

Defendant.
STC’S ANSWER TO INTEL’S SECOND AMENDED COUNTERCLAIMS
STC hereby replies to the counterclaims of Intel as follows:
Parties
56. Admitted.
57. Admitted.
Jurisdiction and Venue
58. Admitted.
59. Admitted.
60. Admitted.
First Counterclaim - Non-Infringement
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.

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Second Counterclaim - Invalidity
64. STC incorporates by reference its forgoing responses.
65. Admitted.
66. STC is without knowledge of the allegations in paragraph 66 and therefore
denies the same.
Third Counterclaim – Unenforceability
67. STC incorporates by reference its forgoing responses. To the extent that any
allegation set forth in Intel’s Fourth Defense of Unenforceability, or Fifth
Affirmative Defense of Inequitable Conduct is not repeated in its Third
Amended Counterclaim for Unenforceability, it is denied.
68. Admitted.
69. STC is without knowledge of the allegations in paragraph 69 and therefore
denies the same.
70. STC admits UNM filed a terminal disclaimer with respect to the '321 patent to
overcome a rejection for double patenting, that the terminal disclaimer recites the
language quoted in paragraph 70, that the "prior patent" is the '321 patent, and
denies the remaining allegations in this paragraph 70.
71. Denied.
72. Denied
73. STC admits it sought a Certificate of Correction to correct the continuation-inpart status the ’998 patent, and denies the remaining allegations in paragraph
73.

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74. STC admits the Examiner issued a double patenting rejection of the claims in
the '998 patent application, and advised that the applicants could overcome the
double patenting rejection by filing a terminal disclaimer, STC is without
knowledge or information sufficient to form a belief as to the truth of the
remaining allegations set forth in paragraph 74 and on this basis STC denies
such allegations.
75. STC admits it filed a terminal disclaimer that contained language quoted in
paragraph 75. STC denies the terminal disclaimer was the only reason the
Examiner allowed the claims of the '998 application.
76. Denied.
77. STC admits that UNM assigned certain ownership rights in Patent Application
08/123,543 and its "continuations" to Sandia Corporation, that the '321 patent
issued from a continuation application of Patent Application 08/123,543, that
UNM recorded the assignment with the PTO on October 22, 1996, and later filed
the terminal disclaimer as to the '998 patent. STC denies that there was any
intentional misrepresentation regarding common ownership. 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
78. STC admits the ’998 patent application did not claim priority to any earlier-filed
patent applications, and denies the remaining allegations in paragraph 78.

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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 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 80.
81. 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 81.
82. STC admits that the PTO issued a first Office Action rejecting the claims, and
that remarks were submitted in response that were subsequently deemed nonmeritorious by the Patent Office. STC denies the remaining allegations of
paragraph 82.
83. STC is without knowledge or information sufficient to form a belief as to the
truth of the allegations set forth in paragraph 83 and on this basis STC denies
such allegations.
84. STC admits that the PTO issued a second Office Action rejecting the claims, and
that remarks were submitted in response that were subsequently deemed nonmeritorious 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 84 and on this basis STC denies such allegations.

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85. 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 85 and on this basis STC denies such allegations.
86. STC is without knowledge or information sufficient to form a belief as to the
truth of the allegations set forth in paragraph 86 and on this basis STC
denies such allegations.
87. 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.
88. Admitted.
89. STC admits that it STC learned of the ‘258 patent sometime after UNM’s
assignment, and denies the remaining allegations of paragraph 89.
90. 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 90.

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91. STC admits that paragraph 91 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 91 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.
92. STC objects to the allegations in paragraph 92 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 92 and on this basis STC denies such
allegations.
93. Denied.
94. Denied.
95. 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.
96. Denied.
97. Denied.
98. Denied.
99. 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 99.
100. Denied.
101. 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: January 4, 2012

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: January 4, 2012

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 January 4, 2012, 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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