Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 1 of 17 PageID #: 1283
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 1:12-CV-00274-LPS
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`JURY TRIAL DEMANDED
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`))))))
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`))))))))))
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`ENZO LIFE SCIENCES, INC.,
`
`Plaintiff,
`
`v.
`
`ABBOTT LABORATORIES and
`ABBOTT MOLECULAR INC.,
`
`Defendants,
`
`and
`
`LUMINEX CORPORATION,
`
`Intervenor-Defendant.
`
`.
`
`LUMINEX CORPORATION’S ANSWER AND COUNTER-COUNTERCLAIMS
`TO PLAINTIFF’S AMENDED ANSWER AND COUNTERCLAIMS
`
`Intervenor-Defendant and Counterclaim-Plaintiff Luminex Corporation (“Luminex”)
`
`answers Plaintiff Enzo Life Sciences, Inc.’s (“Enzo” or “Plaintiff”) Counterclaims as set forth in
`
`Enzo’s Amended Answer and Counterclaims to Luminex’s Counterclaims (D.I. 88) as follows.
`
`The numbered Paragraphs below correspond to the numbered Paragraphs
`
`in Enzo’s
`
`Counterclaims:
`
`PARTIES
`
`Admitted, based on information and belief.
`
`Admitted.
`
`NATURE OF THE ACTION
`
`This Paragraph contains legal conclusions to which no response is required. To
`
`1.
`
`2.
`
`3.
`
`the extent that a response is deemed required, Luminex admits that Enzo’s Counterclaims are
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`WEST\243087505.2
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 1:12-CV-00274-LPS
`
`JURY TRIAL DEMANDED
`
`))))))
`
`))))))))))
`
`ENZO LIFE SCIENCES, INC.,
`
`Plaintiff,
`
`v.
`
`ABBOTT LABORATORIES and
`ABBOTT MOLECULAR INC.,
`
`Defendants,
`
`and
`
`LUMINEX CORPORATION,
`
`Intervenor-Defendant.
`
`.
`
`LUMINEX CORPORATION’S ANSWER AND COUNTER-COUNTERCLAIMS
`TO PLAINTIFF’S AMENDED ANSWER AND COUNTERCLAIMS
`
`Intervenor-Defendant and Counterclaim-Plaintiff Luminex Corporation (“Luminex”)
`
`answers Plaintiff Enzo Life Sciences, Inc.’s (“Enzo” or “Plaintiff”) Counterclaims as set forth in
`
`Enzo’s Amended Answer and Counterclaims to Luminex’s Counterclaims (D.I. 88) as follows.
`
`The numbered Paragraphs below correspond to the numbered Paragraphs
`
`in Enzo’s
`
`Counterclaims:
`
`PARTIES
`
`Admitted, based on information and belief.
`
`Admitted.
`
`NATURE OF THE ACTION
`
`This Paragraph contains legal conclusions to which no response is required. To
`
`1.
`
`2.
`
`3.
`
`the extent that a response is deemed required, Luminex admits that Enzo’s Counterclaims are
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`WEST\243087505.2
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`
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 2 of 17 PageID #: 1284
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`purportedly for the alleged infringement of United States Patent Nos. 7,064,197 (“the ’197
`
`Patent”) 8,097,405 (“the ’405 Patent”), and 6,992,180 (“the ’180 Patent”) under the Patent Laws
`
`of the United States, 35 U.S.C. § 1, et seq. Luminex denies all other allegations of Paragraph 3.
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`JURISDICTION AND VENUE
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`4.
`
`This Paragraph contains legal conclusions to which no response is required. To
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`the extent that a response is deemed required, Luminex admits this Court has subject matter
`
`jurisdiction over this action. Luminex denies all remaining allegations in Paragraph 4.
`
`5.
`
`This Paragraph contains legal conclusions to which no response is required.
`
`Luminex admits that it is a Delaware corporation and that it consented to the jurisdiction of this
`
`Court for purposes of this action only. Luminex denies all remaining allegations in Paragraph 5.
`
`6.
`
`This Paragraph contains legal conclusions to which no response is required.
`
`Luminex denies all allegations in Paragraph 6.
`
`7.
`
`This Paragraph contains legal conclusions to which no response is required. To
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`the extent that a response is deemed required, Luminex does not currently contest that venue in
`
`this Court is proper for purposes of this action only.
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`THE PATENTS-IN-SUIT
`
`8.
`
`This Paragraph contains legal conclusions to which no response is required. To
`
`the extent that a response is deemed required, Luminex admits the ’197 Patent is entitled
`
`“System, Array and Non-Porous Solid Support Comprising Fixed or Immobilized Nucleic
`
`Acids,” the issue date is January 31, 2006, and that an uncertified copy of the ’197 Patent was
`
`attached as Exhibit A to Plaintiff’s Amended Answer and Counterclaims. Luminex denies that
`
`the ’197 Patent was duly or legally issued, and further denies any remaining allegations in
`
`Paragraph 8.
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`WEST\243087505.2
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`2
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`
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 3 of 17 PageID #: 1285
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`9.
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`This Paragraph contains legal conclusions to which no response is required.
`
`Luminex denies all allegations in Paragraph 9.
`
`10.
`
`This Paragraph contains legal conclusions to which no response is required. To
`
`the extent that a response is deemed required, Luminex admits the ’405 Patent is entitled
`
`“Nucleic Acid Sequencing Processes Using Non-Radioactive Detectable Modified or Labeled
`
`Nucleotide Analogs and Other processes for Nucleic Acid Detection and Chromosomal
`
`Characterization Using Such Non-Radioactive Detectable Modified or Labeled Nucleotides or
`
`Nucleotide Analogs ,” the issue date is January 17, 2012, and that an uncertified copy of the ’405
`
`Patent was attached as Exhibit B to Plaintiff’s Amended Answer and Counterclaims. Luminex
`
`denies that the ’405 Patent was duly or legally issued, and further denies any remaining
`
`allegations in Paragraph 10.
`
`11.
`
`This Paragraph contains legal conclusions to which no response is required.
`
`Luminex denies all allegations in Paragraph 11.
`
`12.
`
`This Paragraph contains legal conclusions to which no response is required. To
`
`the extent that a response is deemed required, Luminex admits the ’180 Patent is entitled “Oligo-
`
`or Polynucleotides Comprising Phosphate-Moiety Labeled Nucleotides,” the issue date is
`
`January 31, 2006, and that an uncertified copy of the ’180 Patent was attached as Exhibit C to
`
`Plaintiff’s Amended Answer and Counterclaims. Luminex denies that the ’180 Patent was duly
`
`or legally issued, and further denies any remaining allegations in Paragraph 12.
`
`13.
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`This Paragraph contains legal conclusions to which no response is required.
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`Luminex denies all allegations in Paragraph 13.
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`WEST\243087505.2
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`3
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`
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 4 of 17 PageID #: 1286
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`COUNT I
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`Infringement Of The ’197 Patent
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`14.
`
`Luminex repeats and reasserts its responses to Paragraphs 1-13 as if fully set forth
`
`herein.
`
`15.
`
`16.
`
`Denied.
`
`Luminex admits that it had knowledge of the existence of the ’197 Patent no later
`
`than November 28, 2012, when Luminex moved to intervene in this action. Luminex admits that
`
`it learned of this action from Abbott. Luminex denies all remaining allegations of paragraph 16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT II
`Infringement Of The ’405 Patent
`
`21.
`
`Luminex repeats and reasserts its responses to Paragraphs 1-20 as if fully set forth
`
`herein.
`
`22.
`
`23.
`
`Denied.
`
`Luminex admits that it received a letter from Enzo bearing the date January 2,
`
`2013, concerning the ’405 Patent and Enzo’s allegations of infringement. Luminex denies all
`
`remaining allegations of paragraph 23.
`
`24.
`
`25.
`
`26.
`
`Denied.
`
`Denied.
`
`Denied.
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`WEST\243087505.2
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`4
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`
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 5 of 17 PageID #: 1287
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`COUNT III
`Infringement Of The ’180 Patent
`
`27.
`
`Luminex repeats and reasserts its responses to Paragraphs 1-26 as if fully set forth
`
`herein.
`
`28.
`
`29.
`
`Denied.
`
`Luminex admits that it had knowledge of the existence of the ’180 Patent no later
`
`than November 28, 2012, when Luminex moved to intervene in this action. Luminex denies all
`
`remaining allegations of paragraph 16.
`
`30.
`
`31.
`
`32.
`
`Denied.
`
`Denied.
`
`Denied.
`
`PRAYER FOR RELIEF
`
`The Prayer for Relief does not contain any allegations and thus does not require a
`
`response. To the extent a response is deemed required, Luminex denies that Enzo is entitled to
`
`any relief against Luminex with respect to the ’197, ‘405, and ’180 Patents.
`
`AFFIRMATIVE DEFENSES
`
`Luminex denies that Enzo is entitled to any relief against Luminex with respect to the
`
`’197,’405, and ’180 Patents. Upon information and belief, Luminex asserts the following
`
`defenses to Enzo’s Counterclaims. By asserting such defenses, Luminex does not concede that it
`
`has the burden of proving the matters asserted.
`
`First Defense
`
`Enzo’s Counterclaims, in whole or in part, fails to state a claim upon which relief may be
`
`granted.
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`WEST\243087505.2
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`5
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`
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 6 of 17 PageID #: 1288
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`Second Defense
`
`Luminex has not
`
`infringed and is not
`
`infringing, directly, contributorily, or by
`
`inducement, any valid and enforceable claim of the ’197 Patent either literally or under the
`
`doctrine of equivalents.
`
`Third Defense
`
`Luminex has not
`
`infringed and is not
`
`infringing, directly, contributorily, or by
`
`inducement, any valid and enforceable claim of the ’405 Patent either literally or under the
`
`doctrine of equivalents.
`
`Fourth Defense
`
`Luminex has not
`
`infringed and is not
`
`infringing, directly, contributorily, or by
`
`inducement, any valid and enforceable claim of the ’180 Patent either literally or under the
`
`doctrine of equivalents.
`
`Fifth Defense
`
`Each of the claims of the ’197 Patent is invalid or unenforceable for failing to comply
`
`with one or more of the requirements for patentability pursuant to one or more provisions
`
`specified in 35 U.S.C. §§ 101, 102, 103, and 112 and/or other judicially created basis for
`
`invalidity including obviousness-type double patenting.
`
`Sixth Defense
`
`Each of the claims of the ’405 Patent is invalid or unenforceable for failing to comply
`
`with one or more of the requirements for patentability pursuant to one or more provisions
`
`specified in 35 U.S.C. §§ 101, 102, 103, and 112 and/or other judicially created basis for
`
`invalidity including obviousness-type double patenting.
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`WEST\243087505.2
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`6
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`
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 7 of 17 PageID #: 1289
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`Seventh Defense
`
`Each of the claims of the ’180 Patent is invalid or unenforceable for failing to comply
`
`with one or more of the requirements for patentability pursuant to one or more provisions
`
`specified in 35 U.S.C. §§ 101, 102, 103, and 112 and/or other judicially created basis for
`
`invalidity including obviousness-type double patenting.
`
`Eighth Defense
`
`Enzo’s allegations of infringement of the ’197 Patent are barred because the ’197 Patent
`
`is unenforceable due to prosecution laches.
`
`Ninth Defense
`
`Enzo’s allegations of infringement of the ’405 Patent are barred because the ’405 Patent
`
`is unenforceable due to prosecution laches.
`
`Tenth Defense
`
`Enzo’s allegations of infringement of the ’180 Patent are barred because the ’180 Patent
`
`is unenforceable due to prosecution laches.
`
`Eleventh Defense
`
`Enzo’s claims are barred, in whole or in part, by the equitable doctrine of waiver,
`
`acquiescence, estoppel,
`
`including, without
`
`limitation, prosecution history estoppel, unclean
`
`hands, or laches.
`
`Enzo’s claims are barred, in whole or in part, by the doctrine of patent misuse.
`
`Twelfth Defense
`
`Thirteenth Defense
`
`All or part of Enzo’s claims for infringement are barred, in whole or in part, to the extent
`
`they allege acts of infringement barred by the statute of limitations.
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`WEST\243087505.2
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`7
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 8 of 17 PageID #: 1290
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`Fourteenth Defense
`
`Enzo’s infringement claims and prayer for relief are limited by 35 U.S.C. § 287.
`
`Fifteenth Defense
`
`Enzo’s prayers for injunctive relief are barred in light of the availability of an adequate
`
`remedy at law, to the extent any remedy is justified. Enzo will not suffer any irreparable harm or
`
`injury if no injunction is issued.
`
`Sixteenth Defense
`
`Luminex has not engaged in any conduct that would entitle Enzo to an award of
`
`enhanced damages.
`
`Seventeenth Defense
`
`Luminex has not engaged in any conduct that would make this an exceptional case or that
`
`would entitle Enzo to an award of its reasonable attorneys’ fees.
`
`Eighteenth Defense
`
`Each of the claims of the ’197 Patent is invalid, unenforceable, and void for failure to
`
`satisfy the requirements of 35 U.S.C. § 116.
`
`Reservation of All Defenses
`
`Luminex reserves the right to offer any other and additional defenses that are now or may
`
`become available or appear during, or as a result of, discovery proceedings in this action.
`
`Luminex also reserves the right to rely on any defenses that Abbott has asserted or will assert
`
`that are relevant to the ’197, ’405 and ’180 Patents.
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`WEST\243087505.2
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`8
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`
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 9 of 17 PageID #: 1291
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`COUNTER-COUNTERCLAIMS
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`Intervenor-Defendant and Counterclaim-Plaintiff Luminex Corporation (“Luminex”)
`
`asserts the following Counter-counterclaims against Plaintiff and Counterclaim-Defendant Enzo
`
`Life Sciences, Inc. (“Enzo”):
`
`Parties
`
`1.
`
`Luminex is a Delaware corporation, with a principal place of business at 12212
`
`Technology Blvd., Austin, Texas, 78727.
`
`2.
`
`On information and belief, and based upon the allegation of Paragraph 1 of
`
`Plaintiff’s Counterclaims, Plaintiff Enzo is a New York corporation with its principal place of
`
`business at 10 Executive Boulevard, Farmingdale, NY 11735.
`
`Jurisdiction and Venue
`
`3.
`
`Luminex’s Counter-counterclaims arise under 28 U.S.C. §§ 2201 and 2202 and
`
`seek declaratory relief and further relief based upon a declaratory judgment or decree. In these
`
`Counter-counterclaims, Luminex seeks a judicial declaration of the noninfringement, invalidity,
`
`and unenforceability of U.S. Patent Nos. 7,064,197 (“the ’197 Patent”), 8,097,405 (“the ’405
`
`Patent”), and 6,992,180 (“the ’180 Patent”). This Court has original jurisdiction over all
`
`Counter-counterclaims herein pursuant to 28 U.S.C. §§ 1331, 1338(a), and 1367.
`
`4.
`
`Venue is proper in this district pursuant to 28 U.S.C. § 1391. This Court has
`
`personal jurisdiction over Enzo.
`
`COUNT 1
`
`Declaration of Noninfringement of the ’197 Patent
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`5.
`
`Luminex repeats and realleges Paragraphs 1-4 of its Counter-counterclaims as if
`
`fully set forth herein.
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`WEST\243087505.2
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`9
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 10 of 17 PageID #: 1292
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`6.
`
`Enzo, by its Counterclaims, has alleged that Luminex has infringed and continues
`
`to infringe one or more claims of the ’197 Patent by making, using, selling and/or importing
`
`certain products, including products involving xTAG® or xMAP® technology, for example and
`
`without
`
`limitation xTAG® Cystic Fibrosis Assays,
`
`including: IVD xTAG Cystic Fibrosis
`
`(CFTR) v2 assays, xTAG® Cystic Fibrosis (CFTR) 39 kit v2, and xTAG® Cystic Fibrosis
`
`(CFTR) 60 kit v2, xTAG® CYP2D6 Kit assays and kits, xTAG® Respiratory Viral Panel
`
`("RVP") Products, including: xTAG® Respiratory Viral Panel (“RVP”) v1 assays and xTAG®
`
`RVP FAST assays, xMap® Salmonella Serotyping Assays, FlexScript™ LDA (custom and
`
`standard assays), and Se1ecTAG™Microsphere mixes (collectively “the ’197 Patent Accused
`
`Products”).
`
`7.
`
`Luminex, by and through the ’197 Patent Accused Products, has not infringed,
`
`and is not infringing, directly, contributorily, or by inducement, any valid claim of the ’197
`
`Patent.
`
`8.
`
`To resolve the legal and factual questions raised by Enzo and to afford relief from
`
`the uncertainty and controversy precipitated by Enzo’s allegations, Luminex is entitled to
`
`declaratory judgment by this Court that Luminex has not infringed, and is not infringing,
`
`directly, contributorily, or by inducement, any valid and enforceable claim of the ’197 Patent.
`
`COUNT 2
`
`Declaration of Invalidity of the ’197 Patent
`
`9.
`
`Luminex repeats and realleges Paragraphs 1-8 of its Counter-counterclaims
`
`above, as if fully set forth herein.
`
`10.
`
`One or more of the claims of the ’197 Patent are invalid for failing to meet one or
`
`more of the requisite statutory and decisional requirements and/or conditions for patentability
`
`WEST\243087505.2
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`10
`
`
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 11 of 17 PageID #: 1293
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`pursuant to one or more provisions of Title 35 of the United States Code, including without
`
`limitation §§ 101, 102, 103, 112, and 116.
`
`11.
`
`One or more of the claims of the ’197 Patent are invalid and void under the
`
`doctrine of obviousness-type double patenting.
`
`12.
`
`To resolve the legal and factual questions raised by Enzo and to afford relief from
`
`the uncertainty and controversy precipitated by Enzo’s allegations, Luminex is entitled to
`
`declaratory judgment by this Court that one or more of the claims of the ’197 Patent are invalid
`
`for one or more of the grounds set forth in 35 U.S.C. §§ 101, 102, 103, 112, and/or 116 and/or
`
`are invalid and void under the doctrine of obviousness-type double patenting.
`
`COUNT 3
`
`Declaration of Unenforceability of the ’197 Patent
`
`13.
`
`Luminex repeats and realleges paragraphs 1-12 of its Counter-counterclaims
`
`above, as if fully set forth herein.
`
`14.
`
`One or more claims of the ’197 Patent are unenforceable under the doctrine of
`
`prosecution laches.
`
`15.
`
`To resolve the legal and factual questions raised by Enzo and to afford relief from
`
`the uncertainty and controversy that Enzo’s accusations have precipitated, Luminex is entitled to
`
`a declaratory judgment that the ’197 Patent is unenforceable.
`
`COUNT 4
`
`Declaration of Noninfringement of the ’405 Patent
`
`16.
`
`Luminex repeats and realleges Paragraphs 1-15 of its Counter-counterclaims as if
`
`fully set forth herein.
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`WEST\243087505.2
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`11
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`
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 12 of 17 PageID #: 1294
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`17.
`
`Enzo, by its Counterclaims, has alleged that Luminex has infringed and continues
`
`to infringe one or more claims of the ’405 Patent by making, using, selling and/or importing
`
`certain products, including products involving Luminex MultiCode® Technology, for example
`
`and without
`
`limitation, MultiCode®-RTx HSV 1&2 Kit, MultiCode Bordetella pertussis
`
`Primers, MultiCode Bordetella parapertussis Primers, MultiCode Enterovirus Primers,
`
`MultiCode Influenza A Primers, MultiCode Influenza B Primers, MultiCode CMV Primers,
`
`MultiCode BK Virus Primers, MultiCode EBV Primers, MultiCode Adenovirus Primers,
`
`MultiCode JC Virus Primers, MultiCode VZV Primers, MultiCode HSV Primers, MultiCode
`
`Trichomonas vaginalis Primers, MultiCode Candida albicans Primers, and MultiCode
`
`Gardnerella vaginalis Primers (collectively “the ’405 Patent Accused Products”).
`
`18.
`
`Luminex, by and through the ’405 Patent Accused Products, has not infringed,
`
`and is not infringing, directly, contributorily, or by inducement, any valid claim of the ’405
`
`Patent.
`
`19.
`
`To resolve the legal and factual questions raised by Enzo and to afford relief from
`
`the uncertainty and controversy precipitated by Enzo’s allegations, Luminex is entitled to
`
`declaratory judgment by this Court that Luminex has not infringed, and is not infringing,
`
`directly, contributorily, or by inducement, any valid and enforceable claim of the ’405 Patent.
`
`COUNT 5
`
`Declaration of Invalidity of the ’405 Patent
`
`20.
`
`Luminex repeats and realleges Paragraphs 1-19 of its Counter-counterclaims
`
`above, as if fully set forth herein.
`
`21.
`
`One or more of the claims of the ’405 Patent are invalid for failing to meet one or
`
`more of the requisite statutory and decisional requirements and/or conditions for patentability
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`WEST\243087505.2
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`12
`
`
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 13 of 17 PageID #: 1295
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`pursuant to one or more provisions of Title 35 of the United States Code, including without
`
`limitation §§ 101, 102, 103, and 112.
`
`22.
`
`One or more of the claims of the ’405 Patent are invalid and void under the
`
`doctrine of obviousness-type double patenting.
`
`23.
`
`To resolve the legal and factual questions raised by Enzo and to afford relief from
`
`the uncertainty and controversy precipitated by Enzo’s allegations, Luminex is entitled to
`
`declaratory judgment by this Court that one or more of the claims of the ’405 Patent are invalid
`
`for one or more of the grounds set forth in 35 U.S.C. §§ 101, 102, 103, and/or 112 and/or are
`
`invalid and void under the doctrine of obviousness-type double patenting.
`
`COUNT 6
`
`Declaration of Unenforceability of the ’405 Patent
`
`24.
`
`Luminex repeats and realleges paragraphs 1-23 of its Counter-counterclaims
`
`above, as if fully set forth herein.
`
`25.
`
`One or more claims of the ’405 Patent are unenforceable under the doctrine of
`
`prosecution laches.
`
`26.
`
`To resolve the legal and factual questions raised by Enzo and to afford relief from
`
`the uncertainty and controversy that Enzo’s accusations have precipitated, Luminex is entitled to
`
`a declaratory judgment that the ’405 Patent is unenforceable.
`
`COUNT 7
`
`Declaration of Noninfringement of the ’180 Patent
`
`27.
`
`Luminex repeats and realleges Paragraphs 1-26 of its Counter-counterclaims as if
`
`fully set forth herein.
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`WEST\243087505.2
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`13
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`
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`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 14 of 17 PageID #: 1296
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`28.
`
`Enzo, by its Counterclaims, has alleged that Luminex has infringed and continues
`
`to infringe one or more claims of the ’180 Patent by making, using, selling and/or importing
`
`certain products, including products involving Luminex MultiCode® Technology, for example
`
`and without limitation, MultiCode Products (collectively “the ’180 Patent Accused Products”).
`
`29.
`
`Luminex, by and through the ’180 Patent Accused Products, has not infringed,
`
`and is not infringing, directly, contributorily, or by inducement, any valid claim of the ’180
`
`Patent.
`
`30.
`
`To resolve the legal and factual questions raised by Enzo and to afford relief from
`
`the uncertainty and controversy precipitated by Enzo’s allegations, Luminex is entitled to
`
`declaratory judgment by this Court that Luminex has not infringed, and is not infringing,
`
`directly, contributorily, or by inducement, any valid and enforceable claim of the ’180 Patent.
`
`COUNT 8
`
`Declaration of Invalidity of the ’180 Patent
`
`31.
`
`Luminex repeats and realleges Paragraphs 1-30 of its Counter-counterclaims
`
`above, as if fully set forth herein.
`
`32.
`
`One or more of the claims of the ’180 Patent are invalid for failing to meet one or
`
`more of the requisite statutory and decisional requirements and/or conditions for patentability
`
`pursuant to one or more provisions of Title 35 of the United States Code, including without
`
`limitation §§ 101, 102, 103, and 112.
`
`33.
`
`One or more of the claims of the ’180 Patent are invalid and void under the
`
`doctrine of obviousness-type double patenting.
`
`34.
`
`To resolve the legal and factual questions raised by Enzo and to afford relief from
`
`the uncertainty and controversy precipitated by Enzo’s allegations, Luminex is entitled to
`
`WEST\243087505.2
`
`14
`
`
`
`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 15 of 17 PageID #: 1297
`
`declaratory judgment by this Court that one or more of the claims of the ’180 Patent are invalid
`
`for one or more of the grounds set forth in 35 U.S.C. §§ 101, 102, 103, and/or 112 and/or are
`
`invalid and void under the doctrine of obviousness-type double patenting.
`
`COUNT 9
`
`Declaration of Unenforceability of the ’180 Patent
`
`35.
`
`Luminex repeats and realleges paragraphs 1-34 of its Counter-counterclaims
`
`above, as if fully set forth herein.
`
`36.
`
`One or more claims of the ’180 Patent are unenforceable under the doctrine of
`
`prosecution laches.
`
`37.
`
`To resolve the legal and factual questions raised by Enzo and to afford relief from
`
`the uncertainty and controversy that Enzo’s accusations have precipitated, Luminex is entitled to
`
`a declaratory judgment that the ’180 Patent is unenforceable.
`
`LUMINEX’S PRAYER FOR RELIEF
`
`WHEREFORE, Luminex respectfully requests that this Court:
`
`A.
`
`Declare that Enzo is not entitled to any of the relief requested in its Counterclaims
`
`for the claims concerning the ’197 Patent;
`
`B.
`
`Declare that Enzo is not entitled to any of the relief requested in its Counterclaims
`
`for the claims concerning the ’405 Patent;
`
`C.
`
`Declare that Enzo is not entitled to any of the relief requested in its Counterclaims
`
`for the claims concerning the ’180 Patent;
`
`D.
`
`Dismiss all claims concerning the ’197, ’405, and ’180 Patents in Enzo’s
`
`Counterclaims with prejudice;
`
`WEST\243087505.2
`
`15
`
`
`
`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 16 of 17 PageID #: 1298
`
`E.
`
`Declare that Luminex has not infringed any valid and enforceable claim of the
`
`’197 Patent;
`
`F.
`
`Declare that the claims of the ’197 Patent are invalid under the patent laws of the
`
`United States for failure to comply with the requirements of patentability set forth in Title 35,
`
`U.S.C. § 1, et seq. and/or are invalid and void under the doctrine of obviousness-type double
`
`patenting;
`
`G.
`
`H.
`
`’405 Patent;
`
`Declare that the ’197 Patent is unenforceable;
`
`Declare that Luminex has not infringed any valid and enforceable claim of the
`
`I.
`
`Declare that the claims of the ’405 Patent are invalid under the patent laws of the
`
`United States for failure to comply with the requirements of patentability set forth in Title 35,
`
`U.S.C. § 1, et seq. and/or are invalid and void under the doctrine of obviousness-type double
`
`patenting;
`
`J.
`
`K.
`
`’180 Patent;
`
`Declare that the ’405 Patent is unenforceable;
`
`Declare that Luminex has not infringed any valid and enforceable claim of the
`
`L.
`
`Declare that the claims of the ’180 Patent are invalid under the patent laws of the
`
`United States for failure to comply with the requirements of patentability set forth in Title 35,
`
`U.S.C. § 1, et seq. and/or are invalid and void under the doctrine of obviousness-type double
`
`patenting;
`
`M.
`
`N.
`
`Declare that the ’180 Patent is unenforceable;
`
`Find that this case is exceptional under 35 U.S.C. § 285 and award Luminex its
`
`reasonable attorneys’ fees;
`
`WEST\243087505.2
`
`16
`
`
`
`Case 1:12-cv-00274-LPS Document 89 Filed 10/21/13 Page 17 of 17 PageID #: 1299
`
`O.
`
`P.
`
`Award Luminex its costs and disbursements related to this action; and
`
`Grant Luminex any further relief as the Court deems just and appropriate.
`
`JURY DEMAND
`
`Luminex hereby demands a jury trial on all issues so triable in this case.
`
`Dated: October 21, 2013
`
`DLA PIPER LLP (US)
`
`/s/ Denise S. Kraft
`Denise S. Kraft (DE No. 2778)
`Aleine M. Porterfield (DE No. 5053)
`Brian A. Biggs (DE No. 5591)
`1201 North Market Street, Suite 2100
`Wilmington, DE 19801-1147
`Telephone: 302-468-5700
`Facsimile:
`302-394-2341
`denise.kraft@dlapiper.com
`aleine.porterfield@dlapiper.com
`brian.biggs@dlapiper.com
`
`Attorneys for Intervenor-Defendant
`and Counterclaim-Plaintiff Luminex Corporation
`
`OF COUNSEL:
`
`John Guaragna (pro hac vice)
`DLA Piper LLP (US)
`401 Congress Avenue
`Suite 2500
`Austin, TX 78701-3799
`Telephone:512. 457.7125
`Facsimile: 512.721.2325
`john.guaragna@dlapiper.com
`
`Stanley Panikowski (pro hac vice)
`Erica Pascal (pro hac vice)
`DLA Piper LLP (US)
`401 B Street
`Suite 1700
`San Diego, CA 92101-4297
`Telephone:619.699.2700
`Facsimile: 619.699.2701
`stanley.panikowski@dlapiper.com
`erica.pascal@dlapiper.com
`
`WEST\243087505.2
`
`17
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