Case 5:16-cv-01578-BLF Document 14 Filed 05/13/16 Page 1 of 11
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`
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`Shamita D. Etienne-Cummings
`CA State Bar No. 202090
`setienne@whitecase.com
`Bijal V. Vakil
`CA State Bar No. 192878
`bvakil@whitecase.com
`WHITE & CASE LLP
`3000 El Camino Real
`5 Palo Alto Square, 9th Floor
`Palo Alto, CA 94306
`Telephone: (650) 213-0300
`Facsimile: (650) 213-8158
`
`Attorneys for Defendants
`GLOBALFOUNDRIES U.S., INC.
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`DANIEL L. FLAMM,
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`Plaintiff,
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`v.
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`GLOBALFOUNDRIES U.S. INC.,
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`Defendant.
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`
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`Case No. 5:16-cv-01578-BLF
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`GLOBALFOUNDRIES U.S., INC.’S
`ANSWER TO COMPLAINT AND
`COUNTERCLAIMS
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`DEMAND FOR JURY TRIAL
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`Defendant GLOBALFOUNDRIES U.S., Inc. (“GLOBALFOUNDRIES”) hereby submits
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`this Answer, Affirmative Defenses, and Counterclaims in response to Plaintiff Daniel L. Flamm’s
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`(“Flamm”) Complaint for Patent Infringement (“Complaint”), filed on April 22, 2016. To the
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`extent not specifically admitted herein, the allegations of the Complaint are denied.
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`I. ANSWER
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`1.
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`GLOBALFOUNDRIES admits that U.S. Patent No. 5,711,849 (the “’849 Patent”),
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`on its face, is entitled “Process Optimization in Gas Phase Dry Etching,” U.S. Patent No.
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`6,017,221 (the “’221 Patent”), on its face, is entitled “Process Depending on Plasma Discharges
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`Sustained by Inductive Coupling,” and U.S. Reissue Patent No. RE40,264 (the “’264 Patent”), on
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`Case 5:16-cv-01578-BLF Document 14 Filed 05/13/16 Page 2 of 11
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`its face, is entitled “Multi-Temperature Processing,” (collectively, the “Flamm Patents”).
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`GLOBALFOUNDRIES lacks knowledge or information sufficient to form a belief as to the truth
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`of the remaining allegations of Paragraph 1 of the Complaint, and therefore denies those
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`allegations.
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`THE PARTIES
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`2.
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`GLOBALFOUNDRIES lacks knowledge or information sufficient to form a belief
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`as to the truth of the allegations of Paragraph 2 of the Complaint, and therefore denies those
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`allegations.
`3.
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`GLOBALFOUNDRIES admits that GLOBALFOUNDRIES U.S., Inc. is a
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`Delaware corporation with a principal place of business in the United States at 2600 Great
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`America Way, Santa Clara, CA 95054.
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`JURISDICTION AND VENUE
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`4.
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`GLOBALFOUNDRIES admits that this Court has subject matter jurisdiction
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`under 28 U.S.C. § 1331 and 1338(a) over claims for patent infringement arising under the patent
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`laws of the United States, Title 35 of the United States Code. GLOBALFOUNDRIES denies
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`each and every remaining allegation of Paragraph 4 of the Complaint.
`5.
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`GLOBALFOUNDRIES consents to the personal jurisdiction of this Court for
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`purposes of this action only. GLOBALFOUNDRIES denies any alleged wrongdoing or
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`infringement. GLOBALFOUNDRIES lacks knowledge or information sufficient to form a belief
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`as to the truth of the remaining allegations of Paragraph 5 of the Complaint, and therefore denies
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`those allegations.
`6.
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`GLOBALFOUNDRIES admits that venue for GLOBALFOUNDRIES is proper in
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`this District under 28 U.S.C. §§ 1391 and 1400.
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`FACTS
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`7.
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`GLOBALFOUNDRIES admits that Lam filed its Second Amended Complaint in
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`the action styled Lam Research Corp. v. Daniel L. Flamm, Case No. 4:15-cv-01277-BLF (Dkt.
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`No. 80) on or about January 15, 2016. GLOBALFOUNDRIES admits that in Lam’s Second
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`Amended Complaint, Lam seeks a declaration of non-infringement of each of the Flamm Patents.
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`Case 5:16-cv-01578-BLF Document 14 Filed 05/13/16 Page 3 of 11
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`GLOBALFOUNDRIES admits that in Lam’s Second Amended Complaint, Lam further seeks a
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`declaration that: “Lam and its customers do not design or use its products in an infringing
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`manner” for each of the Flamm Patents.
`8.
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`GLOBALFOUNDRIES denies that in Lam’s Second Amended Complaint, Lam
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`identified GLOBALFOUNDRIES as a customer on whose behalf it seeks relief in its Second
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`Amended Complaint. GLOBALFOUNDRIES lacks knowledge or information sufficient to form
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`a belief as to the truth of the remaining allegations of Paragraph 8 of the Complaint, and therefore
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`denies those allegations.
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`COUNT I
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`Infringement of the ’849 Patent
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`9.
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`GLOBALFOUNDRIES incorporates its responses to Paragraphs 1-8 as if fully set
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`forth herein.
`10.
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`GLOBALFOUNDRIES admits that the ’849 Patent, on its face, is entitled
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`“Process Optimization in Gas Phase Dry Etching” and appears to have been issued on January 27,
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`1998. GLOBALFOUNDRIES also admits that a purported copy of the ’849 Patent appears to
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`have been attached to the Complaint as Exhibit A. GLOBALFOUNDRIES lacks knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 10
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`of the Complaint, and therefore denies those allegations.
`11.
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`To the extent that Paragraph 11 of the Complaint alleges that
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`GLOBALFOUNDRIES infringes the ’849 Patent-in-Suit, GLOBALFOUNDRIES denies the
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`allegations contained in Paragraph 11. For allegations pertaining to unidentified “third-party
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`defendants,” GLOBALFOUNDRIES lacks knowledge or information sufficient to form a belief
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`as to the truth of those allegations and therefore denies them. GLOBALFOUNDRIES denies
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`each and every remaining allegation contained in Paragraph 11.
`12.
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`Denied.
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`COUNT II
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`Infringement of the ’221 Patent
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`13.
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`GLOBALFOUNDIRES incorporates its responses to Paragraphs 1-12 as if fully
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`Case 5:16-cv-01578-BLF Document 14 Filed 05/13/16 Page 4 of 11
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`set forth herein.
`14.
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`GLOBALFOUNDRIES admits that the ’221 Patent, on its face, is entitled
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`“Process Depending on Plasma Discharges Sustained by Inductive Coupling” and appears to have
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`been issued on January 25, 2000. GLOBALFOUNDRIES also admits that a purported copy of
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`the ’221 Patent appears to have been attached to the Complaint as Exhibit B.
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`GLOBALFOUNDRIES lacks knowledge or information sufficient to form a belief as to the truth
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`of the remaining allegations of Paragraph 14 of the Complaint, and therefore denies those
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`allegations.
`15.
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`To the extent that Paragraph 15 of the Complaint alleges that
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`GLOBALFOUNDRIES infringes the ’221 Patent, GLOBALFOUNDRIES denies the allegations
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`contained in Paragraph 15. For allegations pertaining to unidentified “third-party defendants,”
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`GLOBALFOUNDRIES lacks knowledge or information sufficient to form a belief as to the truth
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`of those allegations and therefore denies them. GLOBALFOUNDRIES denies each and every
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`remaining allegation contained in Paragraph 15.
`16.
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`Denied.
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`COUNT III
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`Infringement of the ’264 Patent
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`17.
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`GLOBALFOUNDRIES incorporates its responses to Paragraphs 1-16 as if fully
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`set forth herein.
`18.
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`GLOBALFOUNDRIES admits that the ’264 Patent, on its face, is entitled “Multi-
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`Temperature Processing” and appears to have been issued on April 29, 2008.
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`GLOBALFOUNDRIES also admits that a purported copy of the ’264 Patent appears to have been
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`attached to the Complaint as Exhibit C. GLOBALFOUNDRIES lacks knowledge or information
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`sufficient to form a belief as to the truth of the remaining allegations of Paragraph 18 of the
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`Complaint, and therefore denies those allegations.
`19.
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`To the extent that Paragraph 19 of the Complaint alleges that
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`GLOBALFOUNDRIES infringes the ’264 Patent, GLOBALFOUNDRIES denies the allegations
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`contained in Paragraph 19. For allegations pertaining to unidentified “third-party defendants,”
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`GLOBALFOUNDRIES lacks knowledge or information sufficient to form a belief as to the truth
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`of those allegations and therefore denies them. GLOBALFOUNDRIES denies each and every
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`remaining allegation contained in Paragraph 19.
`20.
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`Denied.
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`PRAYER FOR RELIEF
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`GLOBALFOUNDRIES denies that Flamm is entitled to any of the relief it seeks.
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`Flamm’s prayer should, therefore, be denied in its entirety and with prejudice, and Flamm should
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`take nothing from GLOBALFOUNDRIES.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Rule 38 of the Federal Rules of Civil Procedure, GLOBALFOUNDRIES
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`hereby demands a trial by jury, separate from all other defendants pursuant to 35 U.S.C. § 299, on
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`all issues so triable.
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`II. AFFIRMATIVE DEFENSES
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`Without acknowledging that GLOBALFOUNDRIES bears the burden of proof or burden
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`of persuasion with respect thereto, GLOBALFOUNDRIES asserts the following affirmative
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`defenses to Flamm’s Complaint.
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`FIRST AFFIRMATIVE DEFENSE
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`(Failure to State a Claim)
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`1.
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`Flamm has failed to state a claim upon which relief can be granted.
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`SECOND AFFIRMATIVE DEFENSE
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`(Non-Infringement)
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`2.
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`GLOBALFOUNDRIES is not infringing and has not infringed, directly or
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`indirectly, contributorily or by inducement, literally or under the doctrine of equivalents, any
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`valid, enforceable claim of any of the Flamm Patents.
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`THIRD AFFIRMATIVE DEFENSE
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`(Invalidity)
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`3.
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`The claims of the Flamm Patents are invalid for failure to comply with one or
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`more of the provisions of 35 U.S.C. § 1 et seq., including, but not limited to, §§ 101, 102, 103,
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`and/or 112.
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`FOURTH AFFIRMATIVE DEFENSE
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`(Prosecution Estoppel / Judicial Estoppel)
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`4.
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`Based on representations, admissions, arguments, and amendments made during
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`the prosecution of the Flamm Patents, Flamm’s claims against GLOBALFOUNDRIES are barred
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`in whole or in part by the doctrine of prosecution history estoppel and/or judicial estoppel.
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`FIFTH AFFIRMATIVE DEFENSE
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`(No Injunctive Relief)
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`5.
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`Flamm is not entitled to any injunctive relief because it has not suffered immediate
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`and irreparable harm and has an adequate remedy at law.
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`SIXTH AFFIRMATIVE DEFENSE
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`(Failure to Mark)
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`6.
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`Flamm’s claims for damages are barred, or limited from, recovery in whole or in
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`part, because it, by itself or by one or more parties licensed to practice any of the Flamm Patents,
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`failed to mark relevant products as required by 35 U.S.C. § 287.
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`SEVENTH AFFIRMATIVE DEFENSE
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`(Estoppel, Waiver, Laches and/or Acquiescence)
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`7.
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`Flamm’s claims are barred in whole or in part under the equitable doctrines of
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`estoppel, laches, waiver, and/or acquiescence.
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`EIGHTH AFFIRMATIVE DEFENSE
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`(Limitation of Damages)
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`8.
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`Flamm is barred from recovering any damages for alleged infringement, if any,
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`that occurred more than six years prior to the complaint under 35 U.S.C. § 286.
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`NINTH AFFIRMATIVE DEFENSE
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`(Express or Implied License and/or Patent Exhaustion)
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`10.
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`Flamm is barred from asserting claims for patent infringement against
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`GLOBALFOUNDRIES because its claims for patent infringement against
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`GLOBALFOUNDRIES are precluded to the extent that any allegedly infringing products are
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`supplied, directly or indirectly to GLOBALFOUNDRIES by an entity or entities having an
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`express or implied license to the Flamm Patents, and/or Flamm’s claims are precluded under the
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`doctrine of patent exhaustion.
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`TENTH AFFIRMATIVE DEFENSE
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`(Not an Exceptional Case)
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`11.
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`Flamm has not alleged any basis for and cannot prove this is an exceptional case to
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`justify any award of attorney fees against GLOBALFOUNDRIES, pursuant to 35 U.S.C. § 285.
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`RESERVATION OF ADDITIONAL DEFENSES
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`12.
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`GLOBALFOUNDRIES reserves all defenses under the Patent Laws of the United
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`States, Title 35 of the United States Code, the Federal Rules of Civil Procedure, and any other
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`defenses, at law or in equity, including but not limited to the defenses of inequitable conduct
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`and/or unclean hands, that may now exist or come to light in the future based on discovery and
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`further investigation into Flamm’s allegations.
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`III. COUNTERCLAIMS
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`GLOBALFOUNDRIES incorporates the foregoing paragraphs as if fully set forth herein,
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`and asserts the following counterclaims against Flamm.
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`THE PARTIES
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`1.
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`Counterclaim Plaintiff GLOBALFOUNDRIES is a Delaware corporation with a
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`principal business in the United States at 2600 Great America Way, Santa Clara, CA 95054.
`2.
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`On information and belief, and as stated in the Complaint, Counterclaim
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`Defendant Flamm is an individual who resides in Walnut Creek, California.
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`JURISDICTION AND VENUE
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`3.
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`These counterclaims arise under the patent laws of the United States as enacted
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`under Title 35 of the United States Code and the provisions of the Federal Declaratory Judgment
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`Act.
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`4.
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`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338,
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`1367, 2201, and 2202.
`5.
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`This Court has personal jurisdiction over Flamm because, among other reasons,
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`Flamm filed its Complaint in this District, submitting to the jurisdiction of this Court.
`6.
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`Venue is proper in this judicial district under 28 U.S.C. §§ 1391 because Flamm
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`has asserted claims for patent infringement in this District pursuant to 28 U.S.C. § 1400.
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`COUNT I
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`(Declaratory Judgment of Non-Infringement of the ’849 Patent)
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`7.
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`GLOBALFOUNDRIES incorporates Paragraphs 1-6 of its Counterclaims as if
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`fully set forth herein.
`8.
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`Based on the filing of the Complaint, Flamm’s claimed ownership interest in the
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`’849 Patent, and GLOBALFOUNDRIES’ Affirmative Defenses, an actual and justiciable
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`controversy has arisin and now exists between Flamm and GLOBALFOUNDIRES as to whether
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`GLOBALFOUNDRIES has infringed or is infringing one or more claims of the ’849 Patent.
`9.
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`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
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`GLOBALFOUNDRIES requests a judgment declaring that GLOBALFOUNDIRES does not
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`infringe and has not infringed any valid and enforceable claim of the ’849 Patent, either directly,
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`jointly, indirectly, literally, or under the doctrine of equivalents.
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`COUNT II
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`(Declaratory Judgement of Non-Infringement of the ’221 Patent)
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`10.
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`GLOBALFOUNDRIES incorporates Paragraphs 1-9 of its Counterclaims as if
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`fully set forth herein.
`11.
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`Based on the filing of the Complaint, Flamm’s claimed ownership interest in the
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`’221 Patent, and GLOBALFOUNDRIES’ Affirmative Defenses, an actual and justiciable
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`controversy has arisin and now exists between Flamm and GLOBALFOUNDIRES as to whether
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`GLOBALFOUNDRIES has infringed or is infringing one or more claims of the ’221 Patent.
`12.
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`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
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`GLOBALFOUNDRIES requests a judgment declaring that GLOBALFOUNDIRES does not
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`infringe and has not infringed any valid and enforceable claim of the ’221 Patent, either directly,
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`jointly, indirectly, literally, or under the doctrine of equivalents.
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`COUNT III
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`(Declaratory Judgment of Non-Infringement of the ’264 Patent)
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`13.
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`GLOBALFOUNDRIES incorporates Paragraphs 1-12 of its Counterclaims as if
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`fully set forth herein.
`14.
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`Based on the filing of the Complaint, Flamm’s claimed ownership interest in the
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`’264 Patent, and GLOBALFOUNDRIES’ Affirmative Defenses, an actual and justiciable
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`controversy has arisin and now exists between Flamm and GLOBALFOUNDIRES as to whether
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`GLOBALFOUNDIRES has infringed or is infringing one or more claims of the ’264 Patent.
`15.
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`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
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`GLOBALFOUNDRIES requests a judgment declaring that GLOBALFOUNDRIES does not
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`infringe and has not infringed any valid and enforceable claim of the ’264 Patent, either directly,
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`jointly, indirectly, literally, or under the doctrine of equivalents.
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`COUNT IV
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`(Declaratory Judgement of Invalidity of the ’849 Patent)
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`16.
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`GLOBALFOUNDRIES incorporates Paragraphs 1-15 of its Counterclaims as if
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`fully set forth herein.
`17.
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`Based on the filing of the Complaint, Flamm’s claimed ownership interest in the
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`’849 Patent, and GLOBALFOUNDRIES’ Affirmative Defenses, an actual and justiciable
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`controversy has arisin and now exists between Flamm and GLOBALFOUNDIRES as to the
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`validity of the claims of the ’849 Patent.
`18.
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`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
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`GLOBALFOUNDRIES requests a judgment declaring that the claims of the ’849 Patent are
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`invalid for failure to comply with one or more of the statutory requirements of patentability
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`specified by 35 U.S.C. §§ 101 et seq., including 35 U.S.C. §§ 101, 102, 103, and 112.
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`COUNT V
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`(Declaratory Judgement of Invalidity of the ’221 Patent)
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`19.
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`GLOBALFOUNDRIES incorporates Paragraphs 1-18 of its Counterclaims as if
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`fully set forth herein.
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`Case 5:16-cv-01578-BLF Document 14 Filed 05/13/16 Page 10 of 11
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`20.
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`Based on the filing of the Complaint, Flamm’s claimed ownership interest in the
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`’221 Patent, and GLOBALFOUNDRIES’ Affirmative Defenses, an actual and justiciable
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`controversy has arisin and now exists between Flamm and GLOBALFOUNDIRES as to the
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`validity of the claims of the ’221 Patent.
`21.
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`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
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`GLOBALFOUNDRIES requests a judgment declaring that the claims of the ’221 Patent are
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`invalid for failure to comply with one or more of the statutory requirements of patentability
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`specified by 35 U.S.C. §§ 101 et seq., including 35 U.S.C. §§ 101, 102, 103, and 112.
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`COUNT VI
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`(Declaratory Judgement of Invalidity of the ’264 Patent)
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`22.
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`GLOBALFOUNDRIES incorporates Paragraphs 1-21 of its Counterclaims as if
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`fully set forth herein.
`23.
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`Based on the filing of the Complaint, Flamm’s claimed ownership interest in the
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`’264 Patent, and GLOBALFOUNDRIES’ Affirmative Defenses, an actual and justiciable
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`controversy has arisin and now exists between Flamm and GLOBALFOUNDIRES as to the
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`validity of the claims of the ’264 Patent.
`24.
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`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
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`GLOBALFOUNDRIES requests a judgment declaring that the claims of the ’264 Patent are
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`invalid for failure to comply with one or more of the statutory requirements of patentability
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`specified by 35 U.S.C. §§ 101 et seq., including 35 U.S.C. §§ 101, 102, 103, and 112.
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`
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`WHEREFORE, GLOBALFOUNDRIES respectfully requests that this Court grant the
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`REQUEST FOR RELIEF
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`following relief:
`a.
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`A declaration that GLOBALFOUNDRIES has not infringed and is not infringing
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`any of the claims of the ’849 Patent;
`b.
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`A declaration that GLOBALFOUNDRIES has not infringed and is not infringing
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`any of the claims of the ’221 Patent;
`c.
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`A declaration that GLOBALFOUNDRIES has not infringed and is not infringing
`- 10 -
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`GLOBALFOUNDRIES ANSWER TO COMPLAINT
`CASE NO: 5:16-cv-01578-BLF
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`Case 5:16-cv-01578-BLF Document 14 Filed 05/13/16 Page 11 of 11
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`any of the claims of the ’264 Patent;
`d.
`e.
`f.
`g.
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`A declaration that the claims of the ’849 Patent are invalid;
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`A declaration that the claims of the ’221 Patent are invalid;
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`A declaration that the claims of the ’264 Patent are invalid;
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`A judgment against Flamm in favor of GLOBALFOUNDRIES and a dismissal
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`with prejudice of the Complaint against GLOBALFOUNDRIES;
`h.
`i.
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`A denial of any and all relief sought by Flamm;
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`A declaration that this case is exceptional under 35 U.S.C. § 285 and awarding
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`GLOBALFOUNDRIES its attorneys’ fees, costs, and expenses incurred; and
`j.
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`Such other and further relief as this Court deems just and proper.
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`REQUEST FOR JURY TRIAL
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`
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`Pursuant to Rule 38 of the Federal Rules of Civil Procedure, GLOBALFOUNDRIES
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`requests a trial by jury, separate from all other counterclaim plaintiffs pursuant to 35 U.S.C. §
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`WHITE & CASE LLP
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`
`
`By: /s/ Shamita D. Etienne-Cummings
`Shamita D. Etienne-Cummings
`CA State Bar No. 202090
`setienne@whitecase.com
`Bijal V. Vakil
`CA State Bar No. 192878
`bvakil@whitecase.com
`WHITE & CASE LLP
`3000 El Camino Real
`5 Palo Alto Square, 9th Floor
`Palo Alto, CA 94306
`Telephone: (650) 213-0300
`Facsimile: (650) 213-8158
`
`Attorneys for Defendants
`GLOBALFOUNDRIES U.S., INC.
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`- 11 -
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`GLOBALFOUNDRIES ANSWER TO COMPLAINT
`CASE NO: 5:16-cv-01578-BLF
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`299, of all issues so triable.
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`Dated: May 13, 2016
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