throbber
Case 1:17-cv-00868-CFC-SRF Document 38 Filed 06/14/19 Page 1 of 17 PageID #: 1305
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`UNIVERSITY OF MASSACHUSETTS and
`CARMEL LABORATORIES, LLC,
`
` Plaintiffs,
`
`v.
`
`L’ORÉAL USA, INC.,
`
`
`Defendant.
`
`)
`)
`)
`) C.A. No. 17-868-CFC-SRF
`)
`) JURY TRIAL DEMANDED
`)
`)
`)
`)
`)
`
`DEFENDANT L’ORÉAL USA, INC.’S ANSWER AND DEFENSES TO PLAINTIFFS’
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT AND
`COUNTERCLAIMS
`
`
`Of Counsel:
`
`Dennis S. Ellis
`Katherine F. Murray
`Serli Polatoglu
`Paul Hastings LLP
`515 South Flower Street, 25th Floor
`Los Angeles, CA, 90071
`(213) 683-6000
`
`Naveen Modi
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, D.C., 20005
`(202) 551-1990
`
`
`Dated: June 14, 2019
`
`Frederick L. Cottrell, III (#2555)
`Jeffrey L. Moyer (#3309)
`Katharine L. Mowery (#5629)
`Richards, Layton & Finger, P.A.
`One Rodney Square
`920 N. King Street
`Wilmington, Delaware 19801
`(302) 651-7700
`cottrell@rlf.com
`moyer@rlf.com
`mowery@rlf.com
`
`Attorneys for Defendant
`L’Oréal USA, Inc.
`
`
`
`1
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`

`

`Case 1:17-cv-00868-CFC-SRF Document 38 Filed 06/14/19 Page 2 of 17 PageID #: 1306
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`
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`Subject to its defenses, and without waiving any rights, privileges or defenses, Defendant
`
`L’Oréal USA, Inc. (“L’Oréal USA”), by and through its attorneys of record, by way of answer to
`
`Plaintiffs University of Massachusetts Medical School and Carmel Laboratories, LLC’s
`
`(collectively, “Plaintiffs”) First Amended Complaint (“FAC”), hereby admits, denies and alleges
`
`as follows:
`
`THE PARTIES
`
`1.
`
`Answering Paragraph 1 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`2.
`
`Answering Paragraph 2 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`3.
`
`Answering Paragraph 3 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`4.
`
`Answering Paragraph 4 of the FAC, L’Oréal USA denies the allegations
`
`contained in this paragraph to the extent they do not accurately describe Exhibits 1 and 2 to the
`
`FAC. L’Oréal USA further denies that University of Massachusetts Medical School is the
`
`assignee of United States Patent numbers 6,423,327 (the “’327 patent”) and 6,645,513 (the “’513
`
`patent”). L’Oréal USA lacks knowledge or information sufficient to form a belief as to the truth
`
`of the remaining allegations contained in this paragraph and therefore denies them.
`
`5.
`
`Answering Paragraph 5 of the FAC, L’Oréal USA admits that L’Oréal S.A. is a
`
`French corporation with its principal place of business at 41 Rue Martre, Clichy, Paris, Ile-de-
`
`2
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`
`

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`
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`France 92117, France. L’Oréal USA denies the remaining allegations contained in this
`
`paragraph—namely, that L’Oréal S.A. is a Defendant in this action—as L’Oréal S.A. was
`
`dismissed from this case. (See D.I. 36.)
`
`6.
`
`Answering Paragraph 6 of the FAC, L’Oréal USA admits that it is a Delaware
`
`corporation with its principal place of business at 10 Hudson Yards, New York, NY 10001.
`
`L’Oréal USA denies the remaining allegations contained in this paragraph.
`
`7.
`
`Answering Paragraph 7 of the FAC, L’Oréal USA admits that it is a wholly-
`
`owned subsidiary of L’Oréal S.A. L’Oréal USA denies the remaining allegations in this
`
`paragraph.
`
`JURISDICTION AND VENUE
`
`8.
`
`The allegations in Paragraph 8 constitute conclusions of law to which no
`
`responsive pleading is required. To the extent a response is deemed required, L’Oréal USA
`
`denies that this court has subject matter jurisdiction over this matter, in part because Plaintiff
`
`University of Massachusetts Medical School is not the assignee of the ’327 and ’513 patents,
`
`and, as such, could not have licensed either patent to Plaintiff Carmel Laboratories, LLC. Thus,
`
`neither Plaintiff has standing to pursue claims for patent infringement. L’Oréal USA does not
`
`contest venue at this time. Except as expressly admitted, L’Oréal USA denies the remaining
`
`allegations contained in this paragraph.
`
`THE ALLEGED CLAIMED ADENOSINE TECHNOLOGY
`
`9.
`
`Answering Paragraph 9 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`
`
`3
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`

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`10.
`
`Answering Paragraph 10 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`11.
`
`Answering Paragraph 11 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`12.
`
`Answering Paragraph 12 of the FAC, L’Oréal USA admits that claim 1 of Exhibit
`
`1 and claim 1 of Exhibit 2 contain the text quoted in Paragraph 12 of the FAC, but denies the
`
`allegations contained in this paragraph to the extent they do not accurately describe the ’327
`
`patent and the ’513 patent. Except as expressly admitted, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`13.
`
`Answering Paragraph 13 of the FAC, L’Oréal USA admits that claim 9 of Exhibit
`
`1 and claim 9 of Exhibit 2 contain the text quoted in Paragraph 13 of the FAC but denies the
`
`allegations contained in this paragraph to the extent they do not accurately describe the ’327
`
`patent and the ’513 patent. Except as expressly admitted, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`PLAINTIFFS’ PRODUCTS
`
`14.
`
`Answering Paragraph 14 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`
`
`4
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`

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`
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`15.
`
`Answering Paragraph 15 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`16.
`
`Answering Paragraph 16 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`17.
`
`Answering Paragraph 17 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`DEFENDANT’S ALLEGED USE OF PLAINTIFFS’ PATENTED TECHNOLOGY
`
`18.
`
`Answering Paragraph 18 of the FAC, L’Oréal USA admits that it is a cosmetic
`
`company that sells hair care, skin care, make-up, and perfume products. Except as expressly
`
`admitted, L’Oréal USA denies the remaining allegations contained in this paragraph.
`
`19.
`
`Answering Paragraph 19 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`20.
`
`Answering Paragraph 20 of the FAC, L’Oréal USA admits that Exhibit 3 contains
`
`the quoted text in Paragraph 20, excluding any bracketed text, but denies the allegations
`
`contained in this paragraph to the extent they do not accurately describe Exhibit 3 to the FAC or
`
`U.S. Patent Application No. 10/701,495. Except as expressly admitted, L’Oréal USA denies the
`
`remaining allegations contained in this paragraph.
`
`
`
`5
`
`

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`
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`21.
`
`Answering Paragraph 21 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`22.
`
`Answering Paragraph 22 of the FAC, L’Oréal USA admits that Exhibits 7, 8, 9,
`
`and 10 reference the ’327 and ’513 patents, but deny the allegations contained in this paragraph
`
`to the extent they do not accurately describe U.S. Patent Nos. 9,018,177, 9,023,826, 9,072,919,
`
`and 9,107,853. L’Oréal USA lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations contained in this paragraph and therefore denies them.
`
`23.
`
`Answering Paragraph 23 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`24.
`
`Answering Paragraph 24 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`25.
`
`Answering Paragraph 25 of the FAC, L’Oréal USA admits that it has a Youth
`
`Code line of products, and admits that Exhibit 5 to the FAC contains the quoted text contained in
`
`Paragraph 25 of the FAC. Except as expressly admitted, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`26.
`
`Answering Paragraph 26 of the FAC, L’Oréal USA denies the allegations
`
`contained in this paragraph to the extent they allege that there are two defendants in this action,
`
`as L’Oréal S.A. has been dismissed from this case. (See D.I. 36.) L’Oréal USA admits that
`
`Exhibit 6 contains the text quoted in Paragraph 26 of the FAC. Except as expressly admitted,
`
`L’Oréal USA lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations contained in this paragraph and therefore denies them.
`
`
`
`6
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`

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`27.
`
`Answering Paragraph 27 of the FAC, L’Oréal USA denies the allegations
`
`contained in this paragraph to the extent they allege that there are two defendants in this action,
`
`as L’Oréal S.A. has been dismissed from this case. (See D.I. 36.) L’Oréal USA admits that an
`
`article entitled “Evaluation of anti-wrinkle efficacy of adenosine-containing products using the
`
`FOITS technique” is cited in Exhibit 6. Except as expressly admitted, L’Oréal USA lacks
`
`knowledge or information sufficient to form a belief as to the truth of the allegations contained in
`
`this paragraph and therefore denies them.
`
`28.
`
`Answering Paragraph 28 of the FAC, L’Oréal USA denies the allegations
`
`contained in this paragraph to the extent they allege that there are two defendants in this action,
`
`as L’Oréal S.A. has been dismissed from this case. (See D.I. 36.) L’Oréal USA lacks
`
`knowledge or information sufficient to form a belief as to the truth of the remainder of the
`
`allegations contained in this paragraph and therefore denies them.
`
`29.
`
`Answering Paragraph 29 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`30.
`
`Answering Paragraph 30 of the FAC, L’Oréal USA lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations contained in this
`
`paragraph and therefore denies them.
`
`31.
`
`Answering Paragraph 31 of the FAC, L’Oréal USA denies each and every
`
`allegation in Paragraph 31.
`
`32.
`
`Answering Paragraph 32 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`
`
`7
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`

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`33.
`
`Answering Paragraph 33 of the FAC, L’Oréal USA admits that it manufactures,
`
`markets, and sells products across the United States. L’Oréal USA denies the remainder of each
`
`and every allegation contained in this paragraph.
`
`34.
`
`Answering Paragraph 34 of the FAC, L’Oréal USA denies the remainder of each
`
`and every allegation contained in this paragraph.
`
`FIRST CAUSE OF ACTION
`(Infringement of U.S. Patent No. 6,423,327)
`
`35.
`
`Answering Paragraph 35 of the FAC, L’Oréal USA admits that the FAC refers to
`
`and incorporates by reference the allegations contained in Paragraphs 1 through 34 of the FAC.
`
`L’Oréal USA repeats and re-alleges all the responses in Paragraphs 1 through 34 above, as if set
`
`forth fully herein.
`
`36.
`
`Answering Paragraph 36 of the FAC, L’Oréal USA denies that the University of
`
`Massachusetts Medical School is the assignee of the ’327 patent. L’Oréal USA lacks knowledge
`
`or information sufficient to form a belief as to the truth of the remaining allegations contained in
`
`this paragraph and therefore denies them.
`
`37.
`
`Answering Paragraph 37 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`38.
`
`Answering Paragraph 38 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`39.
`
`Answering Paragraph 39 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`40.
`
`Answering Paragraph 40 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`
`
`8
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`

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`41.
`
`Answering Paragraph 41 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`42.
`
`Answering Paragraph 42 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`43.
`
`Answering Paragraph 43 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`44.
`
`Answering Paragraph 45 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`SECOND CAUSE OF ACTION
`(Infringement of U.S. Patent No. 6,645,513)
`
`45.
`
`Answering Paragraph 45 of the FAC, L’Oréal USA admits that the FAC refers to
`
`and incorporates by reference the allegations contained in Paragraphs 1 through 44 of the FAC.
`
`L’Oréal USA repeats and re-alleges all the responses in Paragraphs 1 through 44 above, as if set
`
`forth fully herein.
`
`46.
`
`Answering Paragraph 46 of the FAC, L’Oréal USA denies that the University of
`
`Massachusetts Medical School is the assignee of the ’513 patent. L’Oréal USA lacks knowledge
`
`or information sufficient to form a belief as to the truth of the remaining allegations contained in
`
`this paragraph and therefore denies them.
`
`47.
`
`Answering Paragraph 47 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`48.
`
`Answering Paragraph 48 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`49.
`
`Answering Paragraph 49 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`
`
`9
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`

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`50.
`
`Answering Paragraph 50 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`51.
`
`Answering Paragraph 51 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`52.
`
`Answering Paragraph 52 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`53.
`
`Answering Paragraph 53 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`54.
`
`Answering Paragraph 54 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
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`WILLFUL INFRINGEMENT
`
`55.
`
`Answering Paragraph 55 of the FAC, L’Oréal USA admits that the FAC refers to
`
`and incorporates by reference the allegations contained in Paragraphs 1 through 54 of the FAC.
`
`L’Oréal USA repeats and re-alleges all the responses in Paragraphs 1 through 54 above, as if set
`
`forth fully herein.
`
`56.
`
`Answering Paragraph 56 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`57.
`
`Answering Paragraph 57 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`58.
`
`Answering Paragraph 58 of the FAC, L’Oréal USA denies each and every
`
`allegation contained therein.
`
`
`
`
`
`
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`10
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`

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`
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`JURY DEMAND
`
`59.
`
`Answering Paragraph 59 of the FAC, no response is required to Plaintiffs’
`
`demand for a trial by jury on all issues. To the extent a response is required, L’Oréal USA admits
`
`that Plaintiffs demand a trial by jury on all issues triable by jury, but denies that any such issues
`
`exist with respect to claims asserted by Plaintiffs in the FAC.
`
`PRAYER FOR RELIEF
`
`
`
`L’Oréal USA denies that Plaintiffs are entitled to any relief sought by Plaintiffs in their
`
`Prayer for Relief. L’Oréal USA requests that Plaintiffs take nothing from L’Oréal USA in this
`
`lawsuit and that L’Oréal USA be awarded attorneys’ fees and costs and such other and further
`
`relief as the Court deems just and proper.
`
`L’ORÉAL USA’S DEFENSES
`
`L’Oréal USA asserts the following defenses to Plaintiffs’ allegations:
`
`FIRST DEFENSE
`
`(Failure to State a Cause of Action)
`
`L’Oréal USA alleges that neither the FAC, nor any purported claim alleged therein, states
`
`facts sufficient to constitute a cause of action against L’Oréal USA upon which relief may be
`
`granted.
`
`SECOND DEFENSE
`
`(Non-infringement)
`
`As a further separate and affirmative defense, L’Oréal USA alleges that L’Oréal USA has
`
`not infringed and does not infringe any valid and enforceable claim of the ’327 and ’513 patents
`
`willfully, literally, under the doctrine of equivalents, directly, indirectly, contributorily, and/or by
`
`way of inducement.
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`11
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`THIRD DEFENSE
`
`(Invalidity)
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`As a further separate and affirmative defense, L’Oréal USA alleges that the ’327 and
`
`’513 patents are invalid and unenforceable for failure to comply with one or more of the
`
`requirements of Title 35 of the United States Code, including, without limitation, 35 U.S.C.
`
`§§ 101, 102, 103 and/or 112.
`
`FOURTH DEFENSE
`
`(Prosecution History Estoppel and Disclaimer)
`
`As a further separate and affirmative defense, L’Oréal USA alleges, on information and
`
`belief, that Plaintiffs’ claims are barred, in whole or in part, by the doctrine of prosecution
`
`history estoppel and/or disclaimer.
`
`FIFTH DEFENSE
`
`(No Willfulness)
`
`As a further separate and affirmative defense, Defendants allege that Plaintiffs’ TAC fails
`
`to state a claim for willful infringement.
`
`SIXTH DEFENSE
`
`(Not Exceptional)
`
`As a further separate and affirmative defense, L’Oréal USA alleges that Plaintiffs cannot
`
`prove that this is an exceptional case justifying an award of attorney fees against Defendants
`
`pursuant to 35 U.S.C. § 285.
`
`SEVENTH DEFENSE
`
`(Barred or Limited Liability)
`
`As a further separate and affirmative defense, L’Oréal USA alleges, on information and
`
`
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`12
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`belief, that Plaintiffs’ ability to recover for any alleged infringement is barred or limited under 35
`
`U.S.C. §§ 286 and 287.
`
`EIGHTH DEFENSE
`
`(Equitable Defenses)
`
`As a further separate and affirmative defense, L’Oréal USA alleges that Plaintiffs’ claims
`
`are barred, in whole or in part, by the doctrine of waiver, equitable estoppel and/or other
`
`equitable defenses.
`
`COUNTERCLAIMS
`
`Pursuant to Rule 13 of the Federal Rules of Civil Procedure, Defendant and
`
`Counterclaimant L’Oréal USA, Inc. (“L’Oréal USA” or “Counterclaimant”), by and through its
`
`counsel of record, hereby alleges against Plaintiffs and Counterclaim Defendants University of
`
`Massachusetts Medical School and Carmel Laboratories, LLC (“Counterclaim Defendants”) as
`
`follows:
`
`NATURE OF ACTION
`
`1.
`
`L’Oréal USA seeks a declaration that the claims of United States Patent numbers
`
`6,423,327 (the “’327 patent”) and 6,645,513 (the “’513 patent”) are invalid and/or not infringed
`
`pursuant to the Patent Laws of the United States, 35 U.S.C. § 101, et seq.
`
`FIRST CLAIM FOR RELIEF
`(Declaratory Judgment of Non-Infringement of the ’327 Patent)
`
`2.
`
`L’Oréal USA re-alleges and incorporates by reference paragraph 1 of this
`
`Counterclaim as though set forth fully herein.
`
`3.
`
`Counterclaim Defendants purport to be the owners of the ’327 patent and to have
`
`all substantial rights and interests in the ’327 patent, including the right to sue and recover
`
`damages for past, present, and future patent infringement of the ’327 patent.
`
`
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`13
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`4.
`
`L’Oréal USA has not infringed and does not infringe any valid and enforceable
`
`claim of the ’327 patent willfully, literally, under the doctrine of equivalents, directly, indirectly,
`
`contributorily, and/or by way of inducement.
`
`5.
`
`There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and
`
`2202, between L’Oréal USA and Counterclaim Defendants as to whether L’Oréal USA has
`
`infringed or does infringe any valid and enforceable claim of the ’327 patent.
`
`6.
`
`L’Oréal USA requests a judicial determination and declaration that it has not
`
`infringed and does not infringe any valid and enforceable claim of the ’327 patent willfully,
`
`literally, under the doctrine of equivalents, directly, indirectly, contributorily, and/or by way of
`
`inducement.
`
`SECOND CLAIM FOR RELIEF
`(Declaratory Judgment of Invalidity of the ’327 Patent)
`
`7.
`
`L’Oréal USA re-alleges and incorporates by reference paragraphs 1 through 6,
`
`inclusive, of this Counterclaim as though set forth fully herein.
`
`8.
`
`Counterclaim Defendants purport to be the owner of the ’327 patent and to have
`
`all substantial rights and interests in the ’327 patent, including the right to sue and recover
`
`damages for past, present, and future patent infringement of the ’327 patent.
`
`9.
`
`The ’327 patent is invalid and unenforceable for failure to comply with one or
`
`more of the requirements of Title 35 of the United States Code, including, without limitation, 35
`
`U.S.C. §§ 101, 102, 103, and/or 112.
`
`10.
`
`There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and
`
`2202, between L’Oréal USA and Counterclaim Defendants as to the validity of the ’327 patent.
`
`
`
`14
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 38 Filed 06/14/19 Page 15 of 17 PageID #: 1319
`
`
`
`11.
`
`L’Oréal USA requests a judicial determination and declaration that all claims of
`
`the ‘327 patent are invalid for failure to comply with one or more of the requirements of Title 35
`
`of the United States Code, including, without limitation, 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`THIRD CLAIM FOR RELIEF
`(Declaratory Judgment of Non-Infringement of the ’513 Patent)
`
`12.
`
`L’Oréal USA re-alleges and incorporates by reference paragraphs 1 through 11,
`
`inclusive, of this Counterclaim as though set forth fully herein.
`
`13.
`
`Counterclaim Defendants purport to be the owners of the ’513 patent and to have
`
`all substantial rights and interests in the ’513 patent, including the right to sue and recover
`
`damages for past, present, and future patent infringement of the ’513 patent.
`
`14.
`
`L’Oréal USA has not infringed and does not infringe any valid and enforceable
`
`claim of the ’513 patent willfully, literally, under the doctrine of equivalents, directly, indirectly,
`
`contributorily, and/or by way of inducement.
`
`15.
`
`There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and
`
`2202, between L’Oréal USA and Counterclaim Defendants as to whether L’Oréal USA has
`
`infringed or does infringe any valid and enforceable claim of the ’513 patent.
`
`16.
`
`L’Oréal USA requests a judicial determination and declaration that it has not
`
`infringed and does not infringe any valid and enforceable claim of the ’513 patent willfully,
`
`literally, under the doctrine of equivalents, directly, indirectly, contributorily, and/or by way of
`
`inducement.
`
`FOURTH CLAIM FOR RELIEF
`(Declaratory Judgment of Invalidity of the ’513 Patent)
`
`17.
`
`L’Oréal USA re-alleges and incorporates by reference paragraphs 1 through 16,
`
`inclusive, of this Counterclaim as though set forth fully herein.
`
`
`
`15
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 38 Filed 06/14/19 Page 16 of 17 PageID #: 1320
`
`
`
`18.
`
`Counterclaim Defendants purport to be the owner of the ’513 patent and to have
`
`all substantial rights and interests in the ’513 patent, including the right to sue and recover
`
`damages for past, present, and future patent infringement of the ’513 patent.
`
`19.
`
`The ’513 patent is invalid and unenforceable for failure to comply with one or
`
`more of the requirements of Title 35 of the United States Code, including, without limitation, 35
`
`U.S.C. §§ 101, 102, 103, and/or 112.
`
`20.
`
`There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and
`
`2202, between L’Oréal USA and Counterclaim Defendants as to the validity of the ’513 patent.
`
`21.
`
`L’Oréal USA requests a judicial determination and declaration that all claims of
`
`the ’513 patent are invalid for failure to comply with one or more of the requirements of Title 35
`
`of the United States Code, including, without limitation, 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Counterclaimant prays for judgment as follows:
`
`A.
`
`For judgment in favor of Counterclaimant and against the Counterclaim
`
`Defendants on all claims asserted in this Counterclaim;
`
`B.
`
`For judgment that Counterclaimant has not and does not infringe any valid and
`
`enforceable claim of the ’327 and ’513 patents willfully, literally, under the doctrine of
`
`equivalents, directly, indirectly, contributorily, and/or by way of inducement;
`
`C.
`
`For judgment that the ’327 and ’513 patents are invalid pursuant to Title 35 of the
`
`United States Code;
`
`D.
`
`For an order permanently enjoining Counterclaim Defendants, their successors
`
`and assigns, and anyone acting in concert therewith or on their behalf, from attempting to
`
`enforce the ’327 and ’513 patents against Counterclaimant, any parents, affiliates, or
`
`
`
`16
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 38 Filed 06/14/19 Page 17 of 17 PageID #: 1321
`
`
`
`subsidiaries of Counterclaimant, or any of its respective officers, agents, employees, successors,
`
`and assigns;
`
`E.
`
`For a finding that this case is exceptional and an award to Counterclaimant of its
`
`costs and expenses, including reasonable attorneys’ fees, in accordance with the provisions of
`
`35 U.S.C. § 285 or otherwise; and
`
`F.
`
`For all costs, including reasonable attorneys’ fees and expenses; and
`
`G.
`
`For any other relief the Court deems just and proper.
`
`DEMAND FOR JURY TRIAL
`
`Counterclaimant hereby demands a trial by jury of all issues so triable pursuant to Federal
`
`Rule of Civil Procedure 38.
`
`
`
`OF COUNSEL:
`
`DENNIS S. ELLIS
`KATHERINE F. MURRAY
`SERLI POLATOGLU
`PAUL HASTINGS LLP
`515 South Flower Street, 25th Floor
`Los Angeles, CA, 90071
`(213) 683-6000
`
`NAVEEN MODI
`JOSEPH E. PALYS
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, D.C., 20005
`(202) 551-1990
`
`
`
`Dated: June 14, 2019
`
`
`
`
`
`
`
`
`
`
`/s/ Frederick L. Cottrell, III
`
`Frederick L. Cottrell, III (#2555)
`Jeffrey L. Moyer (#3309)
`Katharine L. Mowery (#5629)
`Richards, Layton & Finger, P.A.
`One Rodney Square
`920 N. King Street
`Wilmington, Delaware 19801
`(302) 651-7700
`cottrell@rlf.com
`moyer@rlf.com
`mowery@rlf.com
`
`Attorneys for Defendant
`L’Oréal USA, Inc.
`
`
`
`17
`
`

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