throbber
Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.190 Filed 11/22/21 Page 1 of 25
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`)
`MICROPAIRING TECHNOLOGIES
`)
`LLC,
`)
`)
`)
`)
`)
`)
`)
`)
`
`v.
`FCA US LLC,
`
`
`
`
`Plaintiff,
`
`Defendant.
`
`No. 2:21-cv-12015-LJM-DRG
`
`Hon. Laurie J. Michelson
`
`Magistrate Judge David R. Grand
`
`JURY TRIAL DEMANDED
`
`
`
`
`DEFENDANT FCA US LLC’S ANSWER AND DEFENSES TO
`MICROPAIRING TECHNOLOGIES LLC’S COMPLAINT
`AND COUNTERCLAIMS
`Defendant FCA US LLC (“FCA”), by and through the undersigned
`
`attorneys, hereby responds by way of Answer and Defenses to the Complaint
`
`(“Complaint”) of plaintiff MicroPairing Technologies LLC (“MicroPairing” or
`
`“Plaintiff”), as follows:
`
`THE PARTIES1
`
`1.
`
`FCA is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations in this paragraph of the Complaint and therefore
`
`denies those allegations.
`
`2.
`
`FCA admits the allegations of this paragraph.
`
`
`1 FCA has reproduced MicroPairing’s headings for convenience only. No
`response to any headings is required under Fed. R. Civ. P. 8(b) and 10. Nevertheless,
`to the extent any heading could be construed as an allegation to which a response
`may be required, it is denied.
`
`
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.191 Filed 11/22/21 Page 2 of 25
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`
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`JURISDICTION AND VENUE
`
`3.
`
`The allegations of this paragraph are legal conclusions that do not
`
`require a response from FCA. To the extent the allegations require a response,
`
`FCA admits that the Complaint purports to set forth an action under the patent laws
`
`of the United States and that this Court has subject matter jurisdiction for civil
`
`actions for patent infringement pursuant to 28 U.S.C. §§ 1331 and 1338(a). FCA
`
`denies any remaining allegations in this paragraph of the Complaint.
`
`4.
`
`The allegations of the paragraph are legal conclusions that do not
`
`require a response from FCA. To the extent the allegations require a response,
`
`FCA admits that this Court has personal jurisdiction over FCA. FCA also admits
`
`that FCA does business, owns property, and operates its principal place of business
`
`in Michigan but denies that FCA has committed the tort of patent infringement in
`
`Michigan and denies the remaining allegations in this paragraph of the Complaint.
`
`5.
`
`The allegations of the paragraph are legal conclusions that do not
`
`require a response from FCA. To the extent the allegations require a response,
`
`FCA admits that this Court has personal jurisdiction over FCA. FCA also admits
`
`that it has engaged and continues to engage in activities within Michigan and this
`
`District including the marketing and sale of products and services. FCA further
`
`admits that it has derived revenue from its goods and services in Michigan and this
`
`District and maintains its principal place of business in this District but denies that
`
`2
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.192 Filed 11/22/21 Page 3 of 25
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`
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`it has committed acts giving rise to Plaintiff’s claim of patent infringement within
`
`this District and denies the remaining allegations in this paragraph of the
`
`Complaint.
`
`6.
`
`7.
`
`FCA denies the allegations of this paragraph.
`
`This paragraph of the Complaint states a legal conclusion and does
`
`not require a response from FCA. To the extent a response is required, FCA admits
`
`that venue is proper in this District. FCA also admits that it operates a regular and
`
`established place of business from its principal place of business in Auburn Hills,
`
`MI. FCA also admits that it conducts business within this District. FCA denies the
`
`remaining allegations set forth in this paragraph of the Complaint.
`
`THE PATENTS-IN-SUIT
`
`8.
`
`FCA admits that the title appearing on the face of U.S. Patent No.
`
`7,178,049 (the ’049 patent”) is “Method for Multi-Tasking Multiple Java Virtual
`
`Machines in a Secure Environment” and that a purported copy of the ’049 patent is
`
`attached to the Complaint as Exhibit 1. FCA is without knowledge or information
`
`sufficient to form a belief as to the truth of the remaining allegations in this
`
`paragraph of the Complaint and therefore denies those allegations.
`
`9.
`
`FCA admits that the title appearing on the face of U.S. Patent No.
`
`8,020,028 (“the ’028 patent) is “Application Management System for Mobile
`
`Devices” and a purported copy of the ’028 patent is attached to the Complaint as
`
`3
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.193 Filed 11/22/21 Page 4 of 25
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`
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`Exhibit 2. FCA is without knowledge or information sufficient to form a belief as
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`to the truth of the remaining allegations in this paragraph of the Complaint and
`
`therefore denies those allegations.
`
`10. FCA admits that the title appearing on the face of U.S. Patent No.
`
`8,006,117 (“the ’117 patent”) is “Method for Multi-Tasking Multiple Java Virtual
`
`Machines in a Secure Environment” and that a purported copy of the ’117 patent is
`
`attached to the Complaint as Exhibit 3. FCA is without knowledge or information
`
`sufficient to form a belief as to the truth of the remaining allegations in this
`
`paragraph of the Complaint and therefore denies those allegations.
`
`11. FCA admits that the title appearing on the face of U.S. Patent No.
`
`7,793,136 (“the ’136 patent”) is “Application Management System with
`
`Configurable Software Applications” and that a purported copy of the ’136 patent
`
`attached to the Complaint as Exhibit 4. FCA is without knowledge or information
`
`sufficient to form a belief as to the truth of the remaining allegations in this
`
`paragraph of the Complaint and therefore denies those allegations.
`
`12. FCA is without knowledge or information sufficient to form a belief
`
`as to the truth of the remaining allegations in this paragraph of the Complaint and
`
`therefore denies those allegations.
`
`13. FCA admits that MicroPairing’s Complaint only seeks damages for:
`
`(1) infringement of method claims of the ’049 and ’028 patents; and (2)
`
`4
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.194 Filed 11/22/21 Page 5 of 25
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`
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`infringements of claims of the ’136 and ’117 patents accruing upon and after notice
`
`of infringement to FCA. FCA denies the remaining allegations in this paragraph of
`
`the Complaint.
`
`14. FCA denies the allegations of this paragraph.
`
`15. FCA admits that paragraph 15 of the Complaint recites col. 2, lines
`
`22-35 and 36-42 of the ’049 patent. FCA denies the remaining allegations set forth
`
`in this paragraph of the Complaint.
`
`16. FCA admits that paragraph 16 of the Complaint recites col. 2, line 57-
`
`col. 3, line 8 of the ’049 patent. FCA denies the remaining allegations set forth in
`
`this paragraph of the Complaint.
`
`17. FCA admits that paragraph 17 of the Complaint recites claim 29 of the
`
`’049 patent. FCA denies the remaining allegations set forth in this paragraph of the
`
`Complaint.
`
`18. FCA admits that paragraph 18 of the Complaint recites col. 1, lines
`
`38-50 of the ’028 patent. FCA denies the remaining allegations set forth in this
`
`paragraph of the Complaint.
`
`19. FCA admits that paragraph 19 of the Complaint recites col. 1, lines
`
`51-61 of the ’028 patent.
`
`20. FCA admits that paragraph 20 of the Complaint recites col. 2, lines
`
`39-47 of the ’028 patent. FCA denies the remaining allegations set forth in this
`
`5
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.195 Filed 11/22/21 Page 6 of 25
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`
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`paragraph of the Complaint.
`
`21. FCA admits that paragraph 21 of the Complaint recites col. 2, line 60-
`
`col. 3, line 10 of the ’028 patent. FCA denies the remaining allegations set forth in
`
`this paragraph of the Complaint.
`
`22. FCA admits that paragraph 22 of the Complaint recites claim 18 of the
`
`’028 patent. FCA denies the remaining allegations set forth in this paragraph of the
`
`Complaint.
`
`23. FCA admits that paragraph 23 of the Complaint recites claim 1 of the
`
`’117 patent. FCA denies the remaining allegations set forth in this paragraph of the
`
`Complaint.
`
`24. FCA admits that paragraph 24 of the Complaint recites col. 1, lines
`
`27-34 and 34-47 of the ’136 patent. FCA denies the remaining allegations set forth
`
`in this paragraph of the Complaint.
`
`25. FCA admits that paragraph 25 of the Complaint recites col. 1, lines
`
`48-51 and 51-58 of the ’136 patent.
`
`26. FCA admits that paragraph 26 of the Complaint recites col. 2, lines
`
`35-40 and col. 2, line 66-col. 3, line 1 of the ’136 patent. FCA denies the remaining
`
`allegations set forth in this paragraph of the Complaint.
`
`27. FCA admits that paragraph 27 of the Complaint recites col. 3, lines 7-
`
`22 of the ’136 patent. FCA denies the remaining allegations set forth in this
`
`6
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.196 Filed 11/22/21 Page 7 of 25
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`
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`paragraph of the Complaint.
`
`28. FCA admits that paragraph 28 of the Complaint recites col. 4, line 60-
`
`col. 5, line 3 of the ’136 patent. FCA denies the remaining allegations set forth in
`
`this paragraph of the Complaint.
`
`29. FCA admits that paragraph 29 of the Complaint recites claim 31 of the
`
`’136 patent. FCA denies the remaining allegations set forth in this paragraph of the
`
`Complaint.
`
`30. FCA denies the allegations of this paragraph.
`
`COUNT I
`INFRINGEMENT OF U.S. PATENT NO. 7,178,049
`31. FCA references and incorporates by reference all of the preceding
`
`paragraphs of this Answer.
`
`32. FCA admits that the present action purports to arise under the patent
`
`laws of the United States. FCA denies any remaining allegations in this paragraph
`
`of the Complaint.
`
`33. FCA is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations in this paragraph of the Complaint and therefore
`
`denies those allegations.
`
`34. FCA denies the allegations of this paragraph.
`
`35. FCA admits that what MicroPairing characterizes as a claim chart
`
`relating to the ’049 patent is attached to the Complaint as Exhibit 5. FCA denies
`
`7
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`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.197 Filed 11/22/21 Page 8 of 25
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`
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`the remaining allegations of this paragraph, and specifically denies that the claim
`
`chart details how FCA infringes the ’049 patent.
`
`Direct Infringement (35 U.S.C. § 271(a))
`
`36. FCA denies the allegations of this paragraph.
`
`37. FCA denies the allegations of this paragraph.
`
`Indirect Infringement (Inducement – 35 U.S.C. § 271(b))
`
`38. FCA denies the allegations of this paragraph.
`
`39. FCA admits that it became aware of the ’049 patent as of the date of
`
`the filing of the Complaint and denies the remaining allegations of this paragraph.
`
`40. FCA denies the allegations of this paragraph.
`
`41. FCA denies the allegations of this paragraph.
`
`Damages
`
`42. FCA denies the allegations of this paragraph.
`
`43. FCA denies the allegations of this paragraph.
`
`COUNT II
`INFRINGEMENT OF U.S. PATENT NO. 8,020,028
`44. FCA references and incorporates by reference all of the preceding
`
`paragraphs of this Answer.
`
`45. FCA admits that the present action purports to arise under the patent
`
`laws of the United States. FCA denies any remaining allegations in this paragraph
`
`of the Complaint.
`
`8
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`

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`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.198 Filed 11/22/21 Page 9 of 25
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`46. FCA is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations in this paragraph of the Complaint and therefore
`
`denies those allegations.
`
`47. FCA denies the allegations of this paragraph.
`
`48. FCA admits that what MicroPairing characterizes as a claim chart
`
`relating to the ’028 patent is attached to the Complaint as Exhibit 6. FCA denies
`
`the remaining allegations of this paragraph, and specifically denies that the claim
`
`chart details how FCA infringes the ’028 patent.
`
`Direct Infringement (35 U.S.C. § 271(a))
`
`49. FCA denies the allegations of this paragraph.
`
`50. FCA denies the allegations of this paragraph.
`
`Indirect Infringement (Inducement – 35 U.S.C. § 271(b))
`
`51. FCA denies the allegations of this paragraph.
`
`52. FCA admits that it became aware of the ’028 patent as of the date of
`
`the filing of the Complaint and denies the remaining allegations of this paragraph.
`
`53. FCA denies the allegations of this paragraph.
`
`54. FCA denies the allegations of this paragraph.
`
`Damages
`
`55. FCA denies the allegations of this paragraph.
`
`56. FCA denies the allegations of this paragraph.
`
`9
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.199 Filed 11/22/21 Page 10 of 25
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`
`
`COUNT III
`INFRINGEMENT OF U.S. PATENT NO. 8,006,117
`57. FCA references and incorporates by reference all of the preceding
`
`paragraphs of this Answer.
`
`58. FCA admits that the present action purports to arise under the patent
`
`laws of the United States. FCA denies any remaining allegations in this paragraph
`
`of the Complaint.
`
`59. FCA is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations in this paragraph of the Complaint and therefore
`
`denies those allegations.
`
`60. FCA denies the allegations of this paragraph.
`
`61. FCA admits that what MicroPairing characterizes as a claim chart
`
`relating to the ’117 patent is attached to the Complaint as Exhibit 7. FCA denies
`
`the remaining allegations of this paragraph, and specifically denies that the claim
`
`chart details how FCA infringes the ’117 patent.
`
`Direct Infringement (35 U.S.C. § 271(a))
`
`62. FCA denies the allegations of this paragraph.
`
`63. FCA denies the allegations of this paragraph.
`
`Damages
`
`64. FCA denies the allegations of this paragraph.
`
`65. FCA denies the allegations of this paragraph.
`
`10
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`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.200 Filed 11/22/21 Page 11 of 25
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`
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`COUNT IV
`INFRINGEMENT OF U.S. PATENT NO. 7,793,136
`66. FCA references and incorporates by reference all of the preceding
`
`paragraphs of this Answer.
`
`67. FCA admits that the present action purports to arise under the patent
`
`laws of the United States. FCA denies any remaining allegations in this paragraph
`
`of the Complaint.
`
`68. FCA is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations in this paragraph of the Complaint and therefore
`
`denies those allegations.
`
`69. FCA denies the allegations of this paragraph.
`
`70. FCA admits that what MicroPairing characterizes as a claim chart
`
`relating to the ’136 patent is attached to the Complaint as Exhibit 8. FCA denies
`
`the remaining allegations of this paragraph, and specifically denies that the claim
`
`chart details how FCA infringes the ’136 patent.
`
`Direct Infringement (35 U.S.C. § 271(a))
`
`71. FCA denies the allegations of this paragraph.
`
`72. FCA denies the allegations of this paragraph.
`
`Indirect Infringement (Inducement – 35 U.S.C. § 271(b))
`
`73. FCA denies the allegations of this paragraph.
`
`74. FCA admits that it became aware of the ’136 patent as of the date of
`
`11
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`

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`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.201 Filed 11/22/21 Page 12 of 25
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`the filing of the Complaint and denies the remaining allegations of this paragraph.
`
`75. FCA denies the allegations of this paragraph.
`
`76. FCA denies the allegations of this paragraph.
`
`Damages
`
`77. FCA denies the allegations of this paragraph.
`
`78. FCA denies the allegations of this paragraph.
`
`DEMAND FOR JURY TRIAL
`
`MicroPairing’s request for a jury trial includes no allegations and, therefore,
`
`no response is required.
`
`PRAYER FOR RELIEF
`
`FCA denies that MicroPairing is entitled to any of the relief requested in
`
`paragraphs (i) through (viii) of its Prayer for Relief or to any relief in any form
`
`whatsoever from FCA.
`
`DEFENSES
`
`FCA asserts the following defenses and in asserting such defenses does not
`
`concede that it bears the burden of proof as to any of them. Discovery has not yet
`
`begun, and FCA has not yet collected and reviewed all of the information and
`
`materials that may be relevant to the matters and issues raised herein. Accordingly,
`
`FCA reserves the right to amend, modify, or expand these defenses and to take
`
`further positions as discovery proceeds in this case.
`
`12
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.202 Filed 11/22/21 Page 13 of 25
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`
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`FIRST DEFENSE: INVALIDITY
`
`A. One or more of the claims of the ’049 patent, ’028 patent, ’117 patent,
`
`and ’136 patent (collectively, “the asserted patents”) are invalid for failure to
`
`satisfy the requirements of patentability set forth in 35 U.S.C. §§ 101, 102, 103
`
`and/or 112.
`
`SECOND DEFENSE: NON-INFRINGEMENT
`
`B.
`
`FCA does not infringe and has not infringed, willfully or otherwise,
`
`any valid claim of the asserted patents under any theory of infringement, including
`
`direct infringement, induced infringement, contributory infringement, joint
`
`infringement, literal infringement, or infringement under the doctrine of
`
`equivalents.
`
`THIRD DEFENSE: LICENSE AND/OR PATENT EXHAUSTION
`
`C.
`
`To the extent that one or more of FCA’s suppliers hold a license or
`
`other rights to the asserted patents and supplies licensed components and/or parts
`
`for assembly of or assembly into the accused products, MicroPairing’s claims
`
`would be barred.
`
`FOURTH DEFENSE: MARKING AND NOTICE
`
`D.
`
`To the extent that MicroPairing and/or any licensee of the asserted
`
`patents had an obligation and failed to mark products that fall within the claims of
`
`the asserted patents, MicroPairing’s claims against FCA would be barred, in whole
`
`13
`
`

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`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.203 Filed 11/22/21 Page 14 of 25
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`
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`or in part, in accordance with 35 U.S.C. § 287.
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`FIFTH DEFENSE: FAILURE TO STATE A CLAIM
`
`E. MicroPairing fails to state a claim against FCA upon which relief can
`
`be granted.
`
`F.
`
`FCA cannot be liable for indirect infringement before its receipt of the
`
`Complaint, filed on August 30, 2021, at least because FCA did not have notice of
`
`the asserted patents before that time. FCA cannot be liable for indirect
`
`infringement after its receipt of the Complaint, filed on August 30, 2021, at least
`
`because the Complaint does not put FCA on sufficient notice of any alleged
`
`infringement.
`
`G.
`
`To the extent MicroPairing alleges that FCA has indirectly infringed
`
`and/or continues to indirectly infringe the asserted patents under 35 U.S.C.
`
`§§ 271(b),(c), MicroPairing has failed to plead any facts that, if true, could render
`
`FCA liable for indirect patent infringement.
`
`SIXTH DEFENSE: PROSECUTION HISTORY ESTOPPEL
`
`H. MicroPairing’s claims for relief are barred, in whole or in part, by
`
`prosecution history estoppel based on statements, representations, and admissions
`
`made during the prosecution before the U.S. Patent Office of the patent
`
`applications that led to the asserted patents.
`
`SEVENTH DEFENSE: WAIVER, ESTOPPEL, AND UNCLEAN HANDS
`
`14
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`

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`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.204 Filed 11/22/21 Page 15 of 25
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`I. MicroPairing’s claims against FCA are barred, in whole or in part, by
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`one or more of the equitable doctrines of waiver, estoppel, and unclean hands
`
`because of MicroPairing’s unreasonable and inexcusable delay in filing this
`
`litigation and/or its intervening actions both during prosecution of the asserted
`
`patents and between issuance of the asserted patents and the date of the filing of
`
`the Complaint.
`
`J.
`
`Despite that FCA and its predecessors have sold and publicly
`
`marketed the accused functionality for several years, MicroPairing made no
`
`assertion of any claim against FCA until, at the earliest, FCA received the
`
`Complaint.
`
`K.
`
`FCA has been materially prejudiced by MicroPairing’s delay in
`
`bringing its claim at least because the passage of so much time has potentially led
`
`to the loss of evidence that FCA could use in defending itself against
`
`MicroPairing’s claims.
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`EIGHTH DEFENSE: LIMIT ON DAMAGES
`
`L. MicroPairing’s claims for damages, if any, against FCA for alleged
`
`infringement of the asserted patents are limited by 35 U.S.C. §§ 286 and/or 288.
`
`
`
`
`
`15
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`

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`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.205 Filed 11/22/21 Page 16 of 25
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`COUNTERCLAIMS
`
`Pursuant to Federal Rule of Civil Procedure 13, Defendant and Counter-
`
`Plaintiff FCA alleges the following against Plaintiff and Counter-Defendant
`
`MicroPairing:
`
`THE PARTIES
`
`1.
`
`On information and belief, MicroPairing is a Texas limited liability
`
`company in Plano, Texas.
`
`2.
`
`FCA is a Delaware corporation with its principal place of business
`
`located at 1000 Chrysler Drive, Auburn Hills, Oakland County, Michigan 48326.
`
`JURISDICTION AND VENUE
`
`3.
`
`This is a counterclaim for declaratory judgement of patent invalidity
`
`and non-infringement arising under the Declaratory Judgement Act, Title 28,
`
`sections 2201 and 2202, and the Patent Act, Title 25, section 1 et seq. This Court
`
`has subject matter jurisdiction based on 28 U.S.C. §§ 1331, 1339, and 1367. Venue
`
`is proper in this district under 28 U.S.C. §§ 1391(b) and (c) and 1400(b).
`
`4. MicroPairing has filed this case, alleging that FCA is infringing the
`
`’049, ’028, ’117, and ’136 patents and that the asserted patents are valid. FCA
`
`disputes MicroPairing’s allegations, thus there is an actual case or controversy
`
`between the parties over the non-infringement and invalidity of the asserted
`
`patents.
`
`16
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`

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`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.206 Filed 11/22/21 Page 17 of 25
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`COUNT I: NON-INFRINGEMENT OF THE ’049 PATENT
`
`7. MicroPairing claims that it is the assignee of the ’049 patent and that
`
`it is the owner of all rights, title and interest in and to the ’049 patent. MicroPairing
`
`has charged FCA with infringement of the ’049 patent by filing the Complaint
`
`against FCA on August 30, 2021.
`
`8.
`
`FCA has not been and is not now infringing any claim of the ’049
`
`patent. In light of MicroPairing’s Complaint, there exists an actual and justiciable
`
`controversy between MicroPairing and FCA regarding this patent.
`
`9.
`
`Accordingly, FCA desires a judicial determination and declaration of
`
`the respective rights and duties of the parties herein. Such a determination and
`
`declaration is necessary and appropriate at this time so that the parties may
`
`ascertain their respective rights and duties.
`
`10. FCA is entitled to a declaratory judgment that it has not infringed and
`
`is not infringing the ’049 patent.
`
`COUNT 2: INVALIDITY OF THE ’049 PATENT
`
`11. FCA contends that the asserted claims of the ’049 patent are invalid
`
`pursuant to one or more of the provisions of Title 35 of the United States Code,
`
`including, but not limited to, 35 U.S.C. §§ 101 (lack of patentable subject matter),
`
`102 (anticipation), 103 (obviousness), and/or 112 (indefiniteness and failure to
`
`17
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`

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`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.207 Filed 11/22/21 Page 18 of 25
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`
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`satisfy the written description and/or enablement requirements).
`
`12. MicroPairing avers that the ’049 patent is valid and enforceable.
`
`13. Accordingly, a valid and justiciable controversy has arisen and exists
`
`between MicroPairing and FCA. FCA desires a judicial determination and
`
`declaration of the respective rights and duties of the parties herein. Such a
`
`determination and declaration is necessary and appropriate at this time so that
`
`parties may ascertain their respective rights and duties.
`
`14. FCA is entitled to a declaratory judgment that the asserted claims of
`
`the ’049 patent are invalid.
`
`COUNT 3: NON-INFRINGEMENT OF THE ’028 PATENT
`
`15. MicroPairing claims that it is the assignee of the ’028 patent and that
`
`it is the owner of all rights, title and interest in and to the ’028 patent. MicroPairing
`
`has charged FCA with infringement of the ’028 patent by filing the Complaint
`
`against FCA on August 30, 2021.
`
`16. FCA has not been and is not now infringing any claim of the ’028
`
`patent. In light of MicroPairing’s Complaint, there exists an actual and justiciable
`
`controversy between MicroPairing and FCA regarding this patent.
`
`17. Accordingly, FCA desires a judicial determination and declaration of
`
`the respective rights and duties of the parties herein. Such a determination and
`
`declaration is necessary and appropriate at this time so that the parties may
`
`18
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.208 Filed 11/22/21 Page 19 of 25
`
`
`
`ascertain their respective rights and duties.
`
`18. FCA is entitled to a declaratory judgment that it has not infringed and
`
`is not infringing the ’028 patent.
`
`COUNT 4: INVALIDITY OF THE ’028 PATENT
`
`19. FCA contends that the asserted claims of the ’028 patent are invalid
`
`pursuant to one or more of the provisions of Title 35 of the United States Code,
`
`including, but not limited to, 35 U.S.C. §§ 101 (lack of patentable subject matter),
`
`102 (anticipation), 103 (obviousness), and/or 112 (indefiniteness and failure to
`
`satisfy the written description and/or enablement requirements).
`
`20. MicroPairing avers that the ’028 patent is valid and enforceable.
`
`21. Accordingly, a valid and justiciable controversy has arisen and exists
`
`between MicroPairing and FCA. FCA desires a judicial determination and
`
`declaration of the respective rights and duties of the parties herein. Such a
`
`determination and declaration is necessary and appropriate at this time so that
`
`parties may ascertain their respective rights and duties.
`
`22. FCA is entitled to a declaratory judgment that the asserted claims of
`
`the ’028 patent are invalid.
`
`COUNT 5: NON-INFRINGEMENT OF THE ’117 PATENT
`
`23. MicroPairing claims that it is the assignee of the ’117 patent and that
`
`it is the owner of all rights, title and interest in and to the ’117 patent. MicroPairing
`
`19
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.209 Filed 11/22/21 Page 20 of 25
`
`
`
`has charged FCA with infringement of the ’117 patent by filing the Complaint
`
`against FCA on August 30, 2021.
`
`24. FCA has not been and is not now infringing any claim of the ’117
`
`patent. In light of MicroPairing’s Complaint, there exists an actual and justiciable
`
`controversy between MicroPairing and FCA regarding this patent.
`
`25. Accordingly, FCA desires a judicial determination and declaration of
`
`the respective rights and duties of the parties herein. Such a determination and
`
`declaration is necessary and appropriate at this time so that the parties may
`
`ascertain their respective rights and duties.
`
`26. FCA is entitled to a declaratory judgment that it has not infringed and
`
`is not infringing the ’117 patent.
`
`COUNT 6: INVALIDITY OF THE ’117 PATENT
`
`27. FCA contends that the asserted claims of the ’117 patent are invalid
`
`pursuant to one or more of the provisions of Title 35 of the United States Code,
`
`including, but not limited to, 35 U.S.C. §§ 101 (lack of patentable subject matter),
`
`102 (anticipation), 103 (obviousness), and/or 112 (indefiniteness and failure to
`
`satisfy the written description and/or enablement requirements).
`
`28. MicroPairing avers that the ’117 patent is valid and enforceable.
`
`29. Accordingly, a valid and justiciable controversy has arisen and exists
`
`between MicroPairing and FCA. FCA desires a judicial determination and
`
`20
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.210 Filed 11/22/21 Page 21 of 25
`
`
`
`declaration of the respective rights and duties of the parties herein. Such a
`
`determination and declaration is necessary and appropriate at this time so that
`
`parties may ascertain their respective rights and duties.
`
`30. FCA is entitled to a declaratory judgment that the asserted claims of
`
`the ’117 patent are invalid.
`
`COUNT 7: NON-INFRINGEMENT OF THE ’136 PATENT
`
`31. MicroPairing claims that it is the assignee of the ’136 patent and that
`
`it is the owner of all rights, title and interest in and to the ’136 patent. MicroPairing
`
`has charged FCA with infringement of the ’136 patent by filing the Complaint
`
`against FCA on August 30, 2021.
`
`32. FCA has not been and is not now infringing any claim of the ’136
`
`patent. In light of MicroPairing’s Complaint, there exists an actual and justiciable
`
`controversy between MicroPairing and FCA regarding this patent.
`
`33. Accordingly, FCA desires a judicial determination and declaration of
`
`the respective rights and duties of the parties herein. Such a determination and
`
`declaration is necessary and appropriate at this time so that the parties may
`
`ascertain their respective rights and duties.
`
`34. FCA is entitled to a declaratory judgment that it has not infringed and
`
`21
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.211 Filed 11/22/21 Page 22 of 25
`
`
`
`is not infringing the ’136 patent.
`
`COUNT 8: INVALIDITY OF THE ’136 PATENT
`
`35. FCA contends that the asserted claims of the ’136 patent are invalid
`
`pursuant to one or more of the provisions of Title 35 of the United States Code,
`
`including, but not limited to, 35 U.S.C. §§ 101 (lack of patentable subject matter),
`
`102 (anticipation), 103 (obviousness), and/or 112 (indefiniteness and failure to
`
`satisfy the written description and/or enablement requirements).
`
`36. MicroPairing avers that the ’136 patent is valid and enforceable.
`
`37. Accordingly, a valid and justiciable controversy has arisen and exists
`
`between MicroPairing and FCA. FCA desires a judicial determination and
`
`declaration of the respective rights and duties of the parties herein. Such a
`
`determination and declaration is necessary and appropriate at this time so that
`
`parties may ascertain their respective rights and duties.
`
`38. FCA is entitled to a declaratory judgment that the asserted claims of
`
`the ’136 patent are invalid.
`
`DEMAND FOR JURY TRIAL
`
`In accordance with Rule 38 of the Federal Rules of Civil Procedure FCA
`
`respectfully requests a jury trial of all issues triable to a jury in this action.
`
`22
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.212 Filed 11/22/21 Page 23 of 25
`
`
`
`PRAYER FOR RELIEF
`
`WHEREFORE, FCA respectfully requests the following relief:
`
`(a) That MicroPairing take nothing by reasons of its Complaint;
`
`(b) That the Court find and declare that FCA has not and does not
`
`infringe in any manner any valid, asserted claim of the asserted patents;
`
`(c) That the Court find and declare that the asserted claims of the asserted
`
`patents are invalid, void, and without force or effect against FCA and its officers,
`
`employees, agents, and attorneys;
`
`(d) That the Court award FCA its costs and disbursements in this action;
`
`(e) That the Court declare this case exceptional pursuant to 35 U.S.C.
`
`§ 285 and award FCA its reasonable attorneys’ fees and costs in this action; and
`
`(f)
`
`That the Court award to FCA such other and further relief to which it
`
`may be entitled.
`
`Dated: November 22, 2021
`
`
`
`
`Respectfully Submitted,
`
`
`
`By:
`
`
`/s/ Frank C. Cimino, Jr.
`
`23
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.213 Filed 11/22/21 Page 24 of 25
`
`
`
`
`
`
`
`Frank C. Cimino, Esq.
`Megan S. Woodworth, Esq.
`Jonathan L. Falkler, Esq.
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, DC 20001
`Telephone: 202.344.4000
`Facsimile: 202.344.8300
`FCCimino@Venable.com
`MSWoodworth@Venable.com
`JLFalkler@Venable.com
`
`
`
`Patrick G. Seyferth (P47575)
`Derek J. Linkous (P82268)
`BUSH SEYFERTH PLLC
`100 West Big Beaver
`Suite 400
`Troy, MI 48084
`(248) 822-7800
`seyferth@bsplaw.com
`linkous@bsplaw.com
`
`24
`
`

`

`Case 2:21-cv-12015-LJM-DRG ECF No. 21, PageID.214 Filed 11/22/21 Page 25 of 25
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 22, 2021, I electronically filed the
`
`foregoing instrument with the Clerk of the Court using the CM/ECF system, which
`
`will send notification of such filing to all counsel of record.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Frank C. Cimino, Jr.
`Frank C. Cimino, Jr.
`
`
`
`25
`
`

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