STC.UNM v. Intel Corporation

Filing 176

DECLARATION re 175 Response in Opposition to Motion,, of Brian L. Ferrall in Support of Intel's Opposition to STC's Motion to Strike and Dismiss Intel's Invalidity Affirmative Defense and Counterclaim by Intel Corporation (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K - part 1, # 12 Exhibit K - part 2, # 13 Exhibit L)(Atkinson, Clifford)

Trevor White
From:

Brian Ferrall

Sent:

Tuesday, January 03, 2012 11:09 AM

To:

UNM2-Intel Client

Subject: FW: STC v. Intel - Draft Motion to Strike
Just slightly revised from Ben's version.

From: Brian Ferrall
Sent: Tuesday, January 03, 2012 11:08 AM
To: 'George Summerfield'; Tim Franks; [e-mail]
Cc: Rolf Stadheim; Joe Grear; Keith Vogt; Steve Pedersen
Subject: RE: STC v. Intel - Draft Motion to Strike
George,
In November, Intel promptly notified STC of new facts we discovered that the '998 patent is, and always
has been, unenforceable by the plain language of the terminal disclaimer that UNM filed to obtain the
patent. In response, your partner, Rolf, told me on December 12 that STC refused to dismiss this case,
suggesting instead that STC could somehow "cure" this fatal defect in the lawsuit. That same day
Rolf also requested an extension until after the holidays to respond to Intel's Amended Counterclaims,
which we gave to STC as a professional courtesy. Your email of last Thursday, threatening that STC will
move to strike defenses that have not changed since Intel's January 2011 pleadings, and that were not
addressed in either of STC's two prior motions to dismiss or strike, seems simply an attempt to avoid
facing the reality that STC has no Rule 11 basis for maintaining this litigation.
More immediately, STC's latest proposed motion to strike is frivolous. Contrary to the two cursory,
unreported district court cases from other judicial districts, the District of New Mexico does not require
detailed factual support for affirmative defenses. Lane v. Page, 272 F.R.D. 581 (D. N.M. 2011). To our
knowledge, no Court in New Mexico has applied Iqbal/Twombley to affirmative defenses, or otherwise
held that affirmative defenses must be pleaded with detailed factual support beyond the requirements
of Rule 8. Even if there were authority supporting an objection to these defenses, STC waived that
objection by taking discovery about them already, rather than attempting to dismiss them. Federal Rule
12(g)(2) prohibits a belated attempt at dismissal now when no similar objection had been raised in prior
motions. Moreover, STC has had the detail from Intel requested in your Thursday email since Intel's April
1, 2011 detailed responses to STC's contention interrogatories. Therefore STC cannot seriously argue
that it does not understand the factual basis for Intel's affirmative defenses.
STC's behavior in forcing Intel to defend since November 2010 an action on an unenforceable patent
makes this an "exceptional case" pursuant to 35 U.S.C. Section 285. STC's latest strategy of threatening
to force Intel to incur additional cost and expense opposing a frivolous motion to dismiss, all the
while refusing to answer the central question raised in November -- why is STC maintaining this litigation
when the patent is unenforceable? -- simply compounds the prejudice to Intel. Therefore, we look forward
to STC's substantive response to the new allegations on the agreed January 4, 2012 date.
Brian.

From: George Summerfield [mailto:[e-mail]]
Sent: Thursday, December 29, 2011 3:07 PM
To: Tim Franks; Brian Ferrall; [e-mail]
Cc: Rolf Stadheim; Joe Grear; Keith Vogt; Steve Pedersen
Subject: STC v. Intel - Draft Motion to Strike
All -

EXHIBIT J
1/17/2012

Recent caselaw suggests that a defendant can no longer plead a laundry list of affirmative
defenses/counterclaims with no specificity attendant thereto. Attached is a draft motion directed to those
defenses and counterclaims asserted by Intel that run afoul of this prohibition. We would like to avoid bothering
the Court with this motion, if possible. We also see this is a good opportunity for eliminating the defenses and
counterclaims that Intel does not intend to pursue seriously. To that end, please let us know by January 3rd
whether Intel will re-file its latest amended answer and counterclaims to provide the requisite specificity to the
defenses and counterclaims that it intends to pursue, and to remove those defenses and counterclaims for which
Intel cannot provide the requisite specificity.
If we have not heard from you by close of business on January 3, we will assume that you will not be amending
your answer and counterclaim, and will file the attached motion.
Regards,
George

George C. Summerfield
STADHEIM & GREAR
400 North Michigan Avenue
Suite 2200
Chicago, Illinois 60611
[phone]

1/17/2012