Case 1:12-cv-00274-LPS Document 24 Filed 11/08/12 Page 1 of 14 PageID #: 367
`Case 1:12—cv—OO274—LPS Document 24 Filed 11/08/12 Page 1 of 14 Page|D #: 367
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`ENZO LIFE SCIENCES, INC.
`
`Plaintiff,
`
`V.
`
`ABBOTT LABORATORIES, and
`
`ABBOTT MOLECULAR INC.,
`
`Defendants.
`
`Civil Action No. 12-274-LPS
`
`JURY TRIAL DEMANDED
`
`ENZO’S ANSWER TO ABBOTT’S AMENDED COUNTERCLAIMS
`
`Plaintiff Enzo Life Sciences, Inc. (“Enzo”) answers Abbott Laboratories and Abbott
`
`Molecular, Inc.’s (collectively, “Abbott’s”) Amended Counterclaims (hereinafter
`
`“Counterc1aims”) as follows:
`
`Parties
`
`46. On information and belief, Enzo admits the allegations in Paragraph 46 of the
`
`Counterclaims.
`
`47. On information and belief, Enzo admits the allegations in Paragraph 47 of the
`
`Counterclaims.
`
`48. Enzo admits the allegations in Paragraph 48 of the Counterclaims.
`
`Jurisdiction and Venue
`
`49. Enzo admits that Abbott purports to set forth claims that arise under 28 U.S.C. §§ 2201
`
`and 2202 and to seek declaratory relief and further relief based upon a declaratory judgment or
`
`decree. Enzo admits that Abbott states that it is seeking a judicial declaration as to non-
`
`infringement, invalidity, and unenforceability of U.S. Patent No, 6,992,180 (“the ’ l 80 patent”).
`
`

`
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`Enzo further admits that this Court has original jurisdiction over all counterclaims under 28
`
`U.S.C. §§ 1331, 1338(a), and 1367. Enzo denies all remaining or different allegations in
`
`Paragraph 49 of the Counterclaims.
`
`50. Enzo admits the allegations in Paragraph 50 of the Counterclaims.
`
`Prosecution of the ’180 patent
`
`51. Enzo admits that the ’ 1 80 patent contains claims that generally relate, among other
`
`things, to oligo- or polynucleotides comprising at least one modified nucleotide or modified
`
`nucleotide analog having the formula Sig—PM—SM—BASE wherein PM is a phosphate moiety and
`
`Sig is directly or indirectly attached to the PM. Enzo denies all remaining or different
`
`allegations in Paragraph 51 of the Counterclaims.
`
`52. Enzo admits that the ’180 patent contains claims generally relating to oligonucleotide and
`
`polynucleotide compositions, and that the scope of the claims is defined by the claims
`
`themselves. Enzo denies all remaining or different allegations in Paragraph 52 of the
`
`Counterclaims.
`
`53. Enzo admits that in an Amendment Under 37 C.F.R. § 1.116, dated July 14, 1987,
`
`applicants stated:
`
`Applicants have determined that the examples set forth at pages 55-81, except
`Examples 1, 21, 22, 23, 30, 31, 40, are “Paper”, rather than “working examples”
`(Manual of Patent Examining Procedure § 608.01 (q)) and may,
`therefore, be
`incorrectly represented by use of the past tense. By this Amendment, applicants call
`this inadvertent misstatement to the attention of the Examiner, and eventually to the
`public should this application issue as a patent.
`
`U.S. Patent Application No. 06/674,242 (“the ’352 Application”), Amendment under 37 C.F.R. §
`
`1.1 16, dated July 14, 1987, at 5. Enzo admits that Dean Engelhardt (“Engelhardt”) is a co-
`
`inventor of the ’180 patent. Enzo denies all remaining or different allegations in Paragraph 53
`
`of the Counterclaims.
`
`

`
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`54. Enzo admits that in an Amendment under 37 C.F.R. § 1.116, dated July 14, 1987,
`
`applicants requested that the Patent Office amend the specification as follows:
`
`line 2, after “invention”, delete “z” and substitute thererfor (sic) --.
`Page 55,
`Examples 2-20, 24-29 and 32-39, although expressed in the past tense hereinafter,
`were not in fact actually carried out. Thus, those examples are [prophetic], not actual,
`examples.
`
`’352 Application, Amendment under 37 C.F.R. § 1.116, dated July 14, 1987, at 1. Enzo denies
`
`all remaining or different allegations in Paragraph 54 of the Counterclaims.
`
`55. Enzo admits that in an Amendment under 37 C.F.R. § 1.116, dated July 14, 1987,
`
`applicants stated:
`
`Applicants have determined that the examples set forth at pages 55-81, except
`Examples 1, 21, 22, 23, 30, 31, 40, are “Paper”, rather than “working examples”
`(Manual of Patent Examining Procedure § 608.01(q)) and may,
`therefore, be
`incorrectly represented by use of the past tense. By this Amendment, applicants call
`this inadvertent misstatement to the attention of the Examiner, and eventually to the
`public should this application issue as a patent. Although, applicants do not believe
`that the Examiner has relied on the tense of the examples in her examination of this
`application, they specifically request that the Examiner reconsider this application in
`View of their disclosure of these paper examples. E Robin & Haas Co. v. Crystal
`Chemical Co.. 722 F.2d 1556, 1572 (Fed.Cir. 1983).
`
`’352 Application, Amendment under 37 C.F.R. § 1.116, dated July 14, 1987, at 5. Enzo denies
`
`all remaining or different allegations in Paragraph 55 of the Counterclaims.
`
`56. Enzo admits that Application No. 08/479,997 (“the ’997 application”) was filed on June
`
`7, 1995. Enzo further admits that Ronald C. Fedus was an attorney of record. Enzo also admits
`
`that Dean Engelhardt is listed as a co-inventor of the ’ 180 patent. Enzo denies all remaining or
`
`different allegations in Paragraph 56 of the Counterclaims.
`
`57. Enzo admits that the ’352 application is a parent application to the ’997 application.
`
`Enzo also admits that the ’l80 patent states on its face that the ’997 application is a continuation
`
`of Application No. 08/046,004, filed on April 9, 1993, which is a continuation of Application
`
`

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`No. 07/532,461 filed on May 31, 1990, which is a division of Application No. 07/140,980 filed
`
`on January 1, 1988, which is a continuation of the ’352 application, which is a continuation of
`
`Application No. 06/391,440 filed June 23, 1982. Enzo lacks knowledge or information sufficient
`
`to form a belief as to the truth of the remaining or different allegations relating to Ronald C.
`
`Fedus and Dean Engelhardt in Paragraph 43 of the Counterclaims, and therefore denies the same.
`
`Enzo denies all remaining or different allegations in Paragraph 57 of the Counterclaims.
`
`58. Enzo admits the allegations in Paragraph 58 of the Counterclaims.
`
`59. Enzo admits that Engelhardt signed an inventor declaration under 37 C.F.R. 1.63 during
`
`prosecution of the applications that eventually issued as the ’180 patent. Enzo lacks knowledge
`
`or information sufficient to form a belief as to the truth of the remaining or different allegations
`
`relating to Engelhardt in Paragraph 59 of the Counterclaims, and therefore denies the same.
`
`Enzo denies all remaining or different allegations in Paragraph 59 of the Counterclaims.
`
`60. Enzo admits that during the prosecution of the ’997 application, Enzo added new claims
`
`relating generally to oligo— or polynucleotides comprising at least one nucleotide having the
`
`formula “Sig—PM—SM—BASE,” wherein Sig is directly or indirectly attached to a Phosphate
`
`Moiety (PM). Enzo also admits that on September 18, 1995, Enzo amended the application to
`
`seek patentability of the following claim:
`
`
`pol mac!
`(NEW) An saga»
`--236.
`one noclwm “mg me '0 mi?
`
`~
`lldorwdgo‘
`90
`.
`we comprismg al teas:
`
`‘“°“‘*+’ PM being aflached to the 3‘ or
`-"1-9" sat
`nucleotide is a
`'
`37 3 '1' 5‘ flosilion when said nucfiemiog 3,
`
`
`
`359 i; 3
`purine at hjeazaourine. an
`viaa chemical linkage, said Sig 53599
`to PM,
`..
`
`313,,
`
`10 PM directly or
`"V 9““‘1*1€-1
`'["°'“ ‘"0591? when attached
`
`“N
`
`

`
`Case 1:12-cv-00274-LPS Document 24 Filed 11/08/12 Page 5 of 14 PageID #: 371
`Case 1:12—cv—OO274—LPS Document 24 Filed 11/08/12 Page 5 of 14 Page|D #: 371
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`’997 application, Second Preliminary Amendment dated Sept. 18, 1995, at 4. Enzo denies all
`
`remaining or different allegations in Paragraph 60 of the Counterclaims.
`
`61. Enzo admits that in a Final Office Action dated May 13, 1997, the Patent Office rejected
`
`Claims 207-224, 227-262, 265, and 267 alleging inter alia that “the specification, as originally
`
`filed, does not provide support for the invention as is now claimed.” Enzo further admits that in
`
`a Final Office Action dated September 29, 1998, the Patent Office rejected Claims 310-372 and
`
`405-453 under 35 U.S.C. § 112, first paragraph. Enzo denies all remaining or different
`
`allegations in Paragraph 61 of the Counterclaims.
`
`62. Enzo admits that during prosecution of the ’ 180 patent, Enzo Biochem, Inc. filed a
`
`November 24, 1997 Declaration by Dean L. Engelhardt. Enzo also admits that Dr. Engelhardt is
`
`a listed co—inventor for the ’180 patent and, at the time the November 24, 1997 Declaration was
`
`filed, was a Senior Vice President of Enzo Biochem, Inc. Enzo denies all remaining or different
`
`allegations in Paragraph 62 of the Counterclaims.
`
`63. Enzo admits the allegations in Paragraph 63 of the Counterclaims.
`
`64. Enzo admits that the November 24, 1997 Engelhardt Declaration states:
`
`In all, there are no fewer than nine (9) instances where the Sig moiety component
`is described in the specification as being attached to the phosphate moiety P, the
`sugar moiety S and/or the base moiety B! These nine separate and distinct
`instances include the following:”
`
`’997 Application, Declaration of Dr. Dean L. Engelhardt in Support of Adequate Description and
`
`Enablement, dated Nov. 24, 1997, at 10, 1] 9(B). Enzo denies all remaining or different
`
`allegations in Paragraph 64 of the Counterclaims.
`
`65. Enzo admits that Paragraph 9B of the November 24, 1997 Engelhardt Declaration lists
`
`nine instances where the Sig moiety component is described in the ’180 patent specification as
`
`

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`being attached to the phosphate moiety. Enzo denies all remaining or different allegations in
`
`Paragraph 65 of the Counterclaims.
`
`66. Enzo admits that the November 24, 1997 Engelhardt Declaration states, in part:
`
`In addition to those portions in the specification cited above, Example V
`C.
`describes a method for attaching biotin, one of the embodiments for Sig,
`to the
`phosphate moiety of a mononucleotide and an oligonucleotide that are coupled to a
`protein, poly—L—lysine. Using the procedure in Example V in the specification .
`.
`. the
`biotinylated poly-L-lysine is coupled to a terminal oxygen of the phosphate moiety or
`to a terminal phosphorus. These reaction schemes are set forth in Figure 1 on page
`374 in Halloran and Parker, J. Immunol., 96:373 (1966) cited in Example V, page 57
`in the specification (a copy of Halloran’s publication also having been attached hereto
`as Exhibit 1).
`
`Id. , 11 9(C). Enzo further admits that in the Remarks, in the Amendment under 37 C.F.R. §1.116
`
`in Response to the June 25, 1997 Office Action, applicants stated:
`
`According to Dr. Engelhardt, using the procedure in Example V in the
`specification (page 57), the biotinylated poly—L-lysine is coupled to a terminal
`oxygen of the phosphate moiety or to a terminal phosphorus.
`
`Enzo denies all remaining or different allegations in Paragraph 66 of the Counterclaims.
`
`67. Enzo admits that the Amendment under 37 C.F.R. §1.116 in Response to the June 25,
`
`1997 Office Action and the November 24, 1997 Engelhardt Declaration did not cite the
`
`Amendment under 37 C.F.R. § 1.116, dated July 14, 1987. Enzo denies all remaining or
`
`different allegations in Paragraph 67 of the Counterclaims.
`
`68. Enzo admits that on November 20, 1998, applicants added new claims generally relating
`
`to oligo- or polynucleotides comprising at least one modified nucleotide or modified nucleotide
`
`analog having the formula Sig—PM-SM—BASE wherein PM is a phosphate moiety and Sig is
`
`directly or indirectly attached to the PM. Enzo also admits that these new claims included the
`
`following claim:
`
`

`
`Case 1:12-cv-00274-LPS Document 24 Filed 11/08/12 Page 7 of 14 PageID #: 373
`Case 1:12—cv—OO274—LPS Document 24 Filed 11/08/12 Page 7 of 14 Page|D #: 373
`
`
`Km-»W ease
`
`.-..~.m...n PM .-5 a a:amp:w:u mosry. M 3: a augar moiety and BASE ia a maisty
`selected from the group consisting or
`gyflyugjngf 3 purine and 5 ¢“,.pm;m,' 6,
`anaiog mereot. sold WI biting weaned W, said SASE bung attactud in sin,
`
`5,,
`
`and Sip being wvafontly attached to PM iii my arm; 3 gbgni“; gnaw’ 33., 3;“
`boinn 1! moiety capabb of ntmtadlmmhm me: man wmm snags“: 1,; my 9, when
`'rt=«n:vr1aonuc'.«a:uoa. ~.
`said nucleotide ta iacurporeted into said ougo» Ur
`
`
`’997 application, Amendment under 37 C.F.R. § 1.116 dated Nov. 20, 1998, at 2. Enzo denies
`
`all remaining or different allegations in Paragraph 68 of the Counterclaims.
`
`69. Enzo admits that in Office Actions dated February 3, 1999 and July 18, 2000, the Patent
`
`Office rejected Enzo’s claims 454-575 under 35 U.S.C. § 112, first paragraph. Enzo also admits
`
`that in the Office Action dated February 3, 1999, the Patent Office rejected claims 454-5 75 and
`
`stated that “subject matter which was not described in the specification in such a way as to
`
`reasonably convey to one skilled in the relevant art that the inventor(s), at the time the
`
`application was filed, had possession of the claimed invention for reasons of record.” ’997
`
`application, Office Action dated February 3, 1999 at 2. Enzo denies all remaining or different
`
`allegations in Paragraph 69 of the Counterclaims.
`
`70. Enzo admits that Enzo Diagnostics, Inc. c/o Enzo Biochem, Inc. filed an Appeal Brief on
`
`August 20, 2001 that, in part, stated:
`
`

`
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`The original disclosure provides for Sig to be attacherz directly or indirectly to me
`
`phosphate moiety PM nucleotide, This onrebutied ‘fact has been made abundantly clear
`
`in the record. (See Amendment —January 18. 2001. at 23451; Agris Declaration 1] 21-
`
`26.} Attachment of Sig to the oxygen atom of PM 3 set forth ‘an me description of the
`
`invention, while attachment of Sig to the phosphate atom of ?M is set forth in Example
`
`V ofthe invention. (id.; see also Sp8CifiCaliOfl at 57.) Specifically in Example V. both
`
`biotin and poiybiolinylated poly-bfysine were coupled to oligodeoxyribonucleolides
`
`using a carbodiimide coupling procedure described in Halioran and Parker, The Office
`
`even admits that "1-lalloran discloses the ailachmenl ofa specific signal moiety. 3
`
`protein, to the phosphorus atom oi the phosphate moiety using a specific linker. 9 -C-
`
`{C'H;).~N- chain! (Final Otfroe Aclion - .iuly18. 2000 at 3.) Funher. attachment of Sig
`
`to various positions on the sugar moiety via a phosphaie linkage have been described
`
`previously in the prosecution. {$99, 9,9,. sflirnendment — January $8, 2001. at 23-31;
`
`Agris Declaration 11 21-26.)
`
`It is important to take into consideration that fixarnpie V must be read in
`
`conjuncfioin with Examples I-III. which support the preparation of Example V. Example I
`
`demonstrates the preparation of the acilvated asler of biotin. Exampie It supports the
`
`gmeparatlon ofihe amide form of biotin. Finaliy. Example Iii supports the preparation of
`
`polybiolinylated poly-L-lysine. All of these compounds were used in Example V, as
`
`shown in the following figure.
`
`Relalianshép of Examples I-Ill in Example ‘:3
`Pages 55-57
`
`o f-‘reparation of Activated Ester of Biotin
`{Biolinyr-N-‘hydmxysuoanimide eslsr (BNHS)
`
`Egagp-[g_[[|
`
`(Preparation of Pnlyfilodinylnisd poly-Léysinel
`
`§5§_n_1_p_|'g_)f
`
`(Coupmu of?o poiy—L~iysino lo Oiigoiibonuctooiloea
`
`xam
`
`V
`
`(Couifimg of Bioiin lo Oiigoribonuoleolides)
`
`Exarnfis II
`
`{Proportion of Amino Form 01 Siotifli
`(Blotlnyi-1.6-dlamiwohexane amide)
`
`’997 application, Appeal Brief dated Aug. 20, 2001, at 15-16. Enzo denies all remaining or
`
`different allegations in Paragraph 70 of the Counterclaims.
`
`

`
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`71. Enzo admits that the August 20, 2001 Appeal Brief did not cite the Amendment under 37
`
`C.F.R. § 1.116, dated July 14, 1987. Enzo denies all remaining or different allegations in
`
`Paragraph 71 of the Counterclaims.
`
`72. Enzo admits that in an Office Action dated November 26, 2001, the Patent Office
`
`stated:
`
`1.
`
`in view ofilw appeaf brief. filed WZOIO1, and newly found rejections suminzlriacd hercim
`
`PROSECUTION IS HEREBY REGPENBD. New grounds ofrejection an: sea forth beiow. To
`
`“Nd am“d°”m°m °m‘° ‘I’Pii°3|50!1. awellant must exercise one oflhc following we options;
`
`1) fi'° 3 “P1? “F133? 37 Cm I-l133°’2)m§11l2st reinstatement oflhe app:-ai.
`h
`'
`-
`‘ E 3”“ ‘E '°9"°5“'d« “ch MW‘ 113"“ b¢3°i‘«0mPamed by a supplemental appeal brief, but
`
`ifrcinstatcmenl of’
`
`no new amendments, affidavits (37 CPR 1.30, M33, or 1.132) or other cvidence arc permiiied.
`Sec 37 CFR 1.93 (b) (2).
`
`’997 application, Office Action dated Nov. 26, 2001. Enzo lacks knowledge or information
`
`sufficient to form a belief as to the truth of the remaining or different allegations in Paragraph 72
`
`of the Counterclaims, and therefore denies the same. Enzo denies all remaining or different
`
`allegations in Paragraph 72 of the Counterclaims.
`
`73. Enzo lacks knowledge or information sufficient to form a belief as to the truth of the
`
`remaining or different allegations in Paragraph 73 of the Counterclaims, and therefore denies the
`
`same.
`
`74. Enzo admits that The Patent Office also withdrew its objections and rejections based on
`
`failure to demonstrate possession of a Signaling Moiety (Sig) attached to a Phosphate Moiety
`
`(PM) as required by 35 U.S.C. § 1 12, first paragraph.
`
`’997 application, Non—Final Rejection
`
`filed November 26, 2001. Enzo further admits that the Patent Office cited Halloran et al. (J. of
`
`Immun. (1966)) in its November 26, 2001 Non—Final Rejection. Enzo denies all remaining or
`
`different allegations in Paragraph 74 of the Counterclaims.
`
`

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`75. Enzo admits that in a May 28, 2002 Reply Under 37 C.F.R. § 1.11l(in Reponse to the
`
`November 26, 2001 Office Action), Enzo entered new claims 576-825. Enzo denies all
`
`remaining or different allegations in Paragraph 75 of the Counterclaims.
`
`76. Enzo denies all allegations in Paragraph 76 of the Counterclaims.
`
`77. Enzo denies all allegations in Paragraph 77 of the Counterclaims.
`
`78. Enzo denies all allegations in Paragraph 78 of the Counterclaims.
`
`MATERIALITY AND INTENT
`
`79. Enzo denies all allegations in Paragraph 79 of the Counterclaims.
`
`80. Enzo denies all allegations in Paragraph 80 of the Counterclaims.
`
`81. Enzo denies all allegations in Paragraph 81 of the Counterclaims.
`
`82. Enzo admits that the ’180 patent contains claims generally relating to oligonucleotide and
`
`polynucleotide compositions, and that the scope of the claims is defined by the claims
`
`themselves. Enzo denies all remaining or different allegations in Paragraph 82 of the
`
`Counterclaims.
`
`83. Enzo denies all allegations in Paragraph 83 of the Counterclaims.
`
`84. Enzo admits that it did not directly cite the Amendment under 37 C.F.R. § 1.1 16, dated
`
`July 14, 1987, during prosecution of U.S. Patent Application No. 08/479,997. Enzo denies all
`
`remaining or different allegations in Paragraph 84 of the Counterclaims.
`
`85. Enzo denies all allegations in Paragraph 85 of the Counterclaims.
`
`86. Enzo denies all allegations in Paragraph 86 of the Counterclaims.
`
`87. Enzo admits that individuals who participated in the prosecution of the ’180 patent,
`
`including Ronald C. Fedus and Dean Engelhardt, were aware that they owed a duty of candor to
`
`

`
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`the U.S. Patent Office. Enzo denies all remaining or different allegations in Paragraph 87 of the
`
`Counterclaims.
`
`88. Enzo denies all allegations in Paragraph 88 of the Counterclaims.
`
`89. Enzo denies all allegations in Paragraph 89 of the Counterclaims.
`
`90. Enzo denies all allegations in Paragraph 90 of the Counterclaims.
`
`Declaration of Noninfringement of the ’180 Patent
`
`COUNT 1
`
`91. In response to Paragraph 91 of the Counterclaims, Enzo incorporates by reference the
`
`Answers set forth in Paragraphs 46-90 above as if fully set forth herein.
`
`92. Enzo admits that the Amended Complaint in this action alleges that Abbott, alone or in
`
`conjunction with others, has infringed and continues to infringe, either literally or under the
`
`doctrine of equivalents, at least U.S. Patent No. 6,992,180 (“the ’180 patent”). Enzo denies all
`
`remaining or different allegations in Paragraph 92 of the Counterclaims.
`
`93. Enzo denies all allegations in Paragraph 93 of the Counterclaims.
`
`94. Enzo denies all allegations in Paragraph 94 of the Counterclaims.
`
`COUNT 2
`
`Declaration of Invalidity of the ’180 Patent
`
`95. In response to Paragraph 95 of the Counterclaims, Enzo incorporates by reference the
`
`Answers set forth in Paragraphs 46-94 above as if fully set forth herein.
`
`96. Enzo denies all allegations in Paragraph 96 of the Counterclaims.
`
`97. Enzo denies all allegations in Paragraph 97 of the Counterclaims.
`
`98. Enzo denies all allegations in Paragraph 98 of the Counterclaims.
`
`COUNT 3
`
`Declaration of Unenforceabiligg of the ’180 Patent
`
`

`
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`99. In response to Paragraph 99 of the Counterclaims, Enzo restates and incorporates by
`
`reference each of the Answers set forth in Paragraphs 46-98 above as if fully set forth herein.
`
`100.
`
`Enzo denies all allegations in Paragraph 100 of the Counterclaims.
`
`101.
`
`Enzo denies all allegations in Paragraph 101 of the Counterclaims.
`
`102.
`
`Enzo denies all allegations in Paragraph 102 of the Counterclaims.
`
`COUNT 4
`
`Declaration of Noninfringement of the ’197 Patent
`
`103.
`
`In response to Paragraph 103 of the Counterclaims, Enzo restates and incorporates
`
`by reference each of the Answers set forth in Paragraphs 46-102 above as if fully set forth herein.
`
`104.
`
`Enzo admits that the Amended Complaint in this action alleges that Abbott, either
`
`alone or in conjunction with others, has infringed and continues to infringe, either literally or
`
`under the doctrine of equivalents, at least U.S. Patent No. 7,064,197 (“the ’197 patent”). Enzo
`
`denies all remaining or different allegations in Paragraph 104 of the Counterclaims
`
`105.
`
`Enzo denies all allegations in Paragraph 105 of the Counterclaims.
`
`106.
`
`Enzo denies all allegations in Paragraph 106 of the Counterclaims.
`
`COUNT 5
`
`Declaration of Invalidity of the ’197 Patent
`
`107.
`
`In response to Paragraph 107 of the Counterclaims, Enzo incorporates by
`
`reference the Answers set forth in Paragraphs 46-106 above as if fully set forth herein.
`
`108. Enzo denies all allegations in Paragraph 108 of the Counterclaims.
`
`109. Enzo denies all allegations in Paragraph 109 of the Counterclaims.
`
`1 10. Enzo denies all allegations in Paragraph 1 10 of the Counterclaims.
`
`COUNT 6
`
`

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`Case 1:12-cv-00274-LPS Document 24 Filed 11/08/12 Page 13 of 14 PageID #: 379
`Case 1:12—cv—OO274—LPS Document 24 Filed 11/08/12 Page 13 of 14 Page|D #: 379
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`Declaration of Uncnl'orr:c-.1hi|i
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`-' of the ’197 Patent
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`111.
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`In response to Paragraph 111 of the Counterclaims, Enzo incorporates by
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`reference the Answers set forth in Paragraphs 46-110 above as if fully set forth herein.
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`112.
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`Enzo denies all allegations in Paragraph 112 of the Counterclaims.
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`113.
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`Enzo denies all allegations in Paragraph 113 of the Counterclaims.
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`PRAYER FOR RELIEF
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`Enzo denies that Abbott is entitled to any relief, either as prayed for in its Counterclaims
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`or otherwise. Enzo further denies each allegation contained in Abbott’s Counterclaims that was
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`not specifically admitted, denied, or otherwise responded to herein. Enzo respectfully requests
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`that the Court enter judgment in its favor and against Abbott on the Counterclaims, declare this
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`case exceptional under 35 U.S.C. § 285, award Enzo its attorneys’ fees, costs, and expenses, and
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`grant Enzo such further relief as the Court deems just and proper.
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`DEMAND FOR JURY TRIAL ON COUNTERCLAIMS
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`Enzo demands trial by jury on all issues so triable.
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`Dated: November 8, 2012
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`Respectfully submitted,
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`Farnan LLP
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`/s/ Brian E. Farnan
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`Brian E. Farnan (Bar No. 4089)
`919 North Market Street
`12”‘ Floor
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`Wilmington, DE 19801
`(302) 777-0300
`(302) 777-0301
`bfarnan@farnanlaw.com
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`John M. Desmarais (admitted pro hac vice)
`Michael P. Stadnick (admitted pro hac vice)
`Xiao Li (admitted pro hac vice)
`Joseph C. Akalski (admitted pro hac vice)
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`

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`Case 1:12-cv-00274-LPS Document 24 Filed 11/08/12 Page 14 of 14 PageID #: 380
`Case 1:12—cv—OO274—LPS Document 24 Filed 11/08/12 Page 14 of 14 Page|D #: 380
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`Lauren Nowierski (admitted pro hac vice)
`DESMARAIS LLP
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`230 Park Avenue
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`New York, NY 10169
`(212) 3 51-3400 (Tel)
`(212) 351-3401 (Fax)
`jdesmarais@desmarais11p.com
`mstadnick@desmaraisl1p.com
`x1i@desmarais1lp.com
`jaka1ski@desmarais11p.com
`1nowierski@desmarais11p.com
`
`Counselfor Plaintifi’