`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`MicroPairing Technologies LLC,
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` Plaintiff,
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`v.
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`FCA US LLC,
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` Defendant.
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`Case No. 2:21-cv-12015-LJM-DRG
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`Honorable Laurie J. Michelson
`Magistrate Judge David R. Grand
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`JURY TRIAL DEMANDED
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`PLAINTIFF MICROPAIRING TECHNOLOGIES LLC’S ANSWER
`TO DEFENDANT FCA US LLC’S COUNTERCLAIMS
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`Plaintiff MicroPairing Technologies LLC (“MicroPairing”) answers the
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`Counterclaims of Defendant FCA US LLC (“FCA”). MicroPairing answers FCA’s
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`allegations using the same headers and numbers that appear in the “Counterclaims”
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`section of FCA’s pleading (Dkt. No. 21). For this reason, paragraph numbers five
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`and six are skipped, as they were skipped in the Counterclaims. All of FCA’s
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`allegations not expressly admitted herein are denied.
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`THE PARTIES
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`1.
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`On information and belief, MicroPairing is a Texas limited liability
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`company in Plano, Texas.
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`Answer: Admitted.
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.243 Filed 12/09/21 Page 2 of 14
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`2.
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`FCA is a Delaware corporation with its principal place of business
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`located at 1000 Chrysler Drive, Auburn Hills, Oakland County, Michigan 48326.
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`Answer: Admitted.
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`JURISDICTION AND VENUE
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`3.
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`This is a counterclaim for declaratory judgement of patent invalidity
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`and non-infringement arising under the Declaratory Judgement Act, Title 28,
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`sections 2201 and 2202, and the Patent Act, Title 25, section 1 et seq. This Court has
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`subject matter jurisdiction based on 28 U.S.C. §§ 1331, 1339, and 1367. Venue is
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`proper in this district under 28 U.S.C. §§ 1391(b) and (c) and 1400(b).
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`Answer: Admitted that this counterclaim purports to be for a declaratory
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`judgment of patent invalidity and non-infringement. Admitted that this Court has
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`subject matter jurisdiction, and that venue is proper for this action. The balance of
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`this paragraph is denied.
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`4. MicroPairing has filed this case, alleging that FCA is infringing the
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`’049, ’028, ’117, and ’136 patents and that the asserted patents are valid. FCA
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`disputes MicroPairing’s allegations, thus there is an actual case or controversy
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`between the parties over the non-infringement and invalidity of the asserted patents.
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`Answer: Admitted as to the first sentence. Admitted that FCA purports to
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`dispute MicroPairing’s allegations. The balance of this paragraph is denied.
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`2
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.244 Filed 12/09/21 Page 3 of 14
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`COUNT 1: NON-INFRINGEMENT OF THE ’049 PATENT
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`7. MicroPairing claims that it is the assignee of the ’049 patent and that it
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`is the owner of all rights, title and interest in and to the ’049 patent. MicroPairing
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`has charged FCA with infringement of the ’049 patent by filing the Complaint
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`against FCA on August 30, 2021.
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`Answer: Admitted.
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`8.
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`FCA has not been and is not now infringing any claim of the ’049
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`patent. In light of MicroPairing’s Complaint, there exists an actual and justiciable
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`controversy between MicroPairing and FCA regarding this patent.
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`Answer: Denied.
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`9.
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`Accordingly, FCA desires a judicial determination and declaration of
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`the respective rights and duties of the parties herein. Such a determination and
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`declaration is necessary and appropriate at this time so that the parties may ascertain
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`their respective rights and duties.
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`Answer: Admitted as to first sentence. The balance of this paragraph is
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`denied.
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`10. FCA is entitled to a declaratory judgment that it has not infringed and
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`is not infringing the ’049 patent.
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`Answer: Denied.
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`3
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.245 Filed 12/09/21 Page 4 of 14
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`COUNT 2: INVALIDITY OF THE ’049 PATENT
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`11. FCA contends that the asserted claims of the ’049 patent are invalid
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`pursuant to one or more of the provisions of Title 35 of the United States Code,
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`including, but not limited to, 35 U.S.C. §§ 101 (lack of patentable subject matter),
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`102 (anticipation), 103 (obviousness), and/or 112 (indefiniteness and failure to
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`satisfy the written description and/or enablement requirements).
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`Answer: Admitted that FCA makes the referenced contentions. The
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`contentions themselves, and the balance of this paragraph, are denied.
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`12. MicroPairing avers that the ’049 patent is valid and enforceable.
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`Answer: Admitted.
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`13. Accordingly, a valid and justiciable controversy has arisen and exists
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`between MicroPairing and FCA. FCA desires a judicial determination and
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`declaration of the respective rights and duties of the parties herein. Such a
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`determination and declaration is necessary and appropriate at this time so that parties
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`may ascertain their respective rights and duties.
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`Answer: Denied.
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`14. FCA is entitled to a declaratory judgment that the asserted claims of the
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`’049 patent are invalid.
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`Answer: Denied.
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`4
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.246 Filed 12/09/21 Page 5 of 14
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`COUNT 3: NON-INFRINGEMENT OF THE ’028 PATENT
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`15. MicroPairing claims that it is the assignee of the ’028 patent and that it
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`is the owner of all rights, title and interest in and to the ’028 patent. MicroPairing
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`has charged FCA with infringement of the ’028 patent by filing the Complaint
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`against FCA on August 30, 2021.
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`Answer: Admitted.
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`16. FCA has not been and is not now infringing any claim of the ’028
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`patent. In light of MicroPairing’s Complaint, there exists an actual and justiciable
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`controversy between MicroPairing and FCA regarding this patent.
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`Answer: Denied.
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`17. Accordingly, FCA desires a judicial determination and declaration of
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`the respective rights and duties of the parties herein. Such a determination and
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`declaration is necessary and appropriate at this time so that the parties may ascertain
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`their respective rights and duties.
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`Answer: Admitted as to first sentence. The balance of this paragraph is
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`denied.
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`18. FCA is entitled to a declaratory judgment that it has not infringed and
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`is not infringing the ’028 patent.
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`Answer: Denied.
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`5
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.247 Filed 12/09/21 Page 6 of 14
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`COUNT 4: INVALIDITY OF THE ’028 PATENT
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`19. FCA contends that the asserted claims of the ’028 patent are invalid
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`pursuant to one or more of the provisions of Title 35 of the United States Code,
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`including, but not limited to, 35 U.S.C. §§ 101 (lack of patentable subject matter),
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`102 (anticipation), 103 (obviousness), and/or 112 (indefiniteness and failure to
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`satisfy the written description and/or enablement requirements).
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`Answer: Admitted that FCA makes the referenced contentions. The
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`contentions themselves, and the balance of this paragraph, are denied.
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`20. MicroPairing avers that the ’028 patent is valid and enforceable.
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`Answer: Admitted.
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`21. Accordingly, a valid and justiciable controversy has arisen and exists
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`between MicroPairing and FCA. FCA desires a judicial determination and
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`declaration of the respective rights and duties of the parties herein. Such a
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`determination and declaration is necessary and appropriate at this time so that parties
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`may ascertain their respective rights and duties.
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`Answer: Denied.
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`22. FCA is entitled to a declaratory judgment that the asserted claims of the
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`’028 patent are invalid.
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`Answer: Denied.
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`6
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.248 Filed 12/09/21 Page 7 of 14
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`COUNT 5: NON-INFRINGEMENT OF THE ’117 PATENT
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`23. MicroPairing claims that it is the assignee of the ’117 patent and that it
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`is the owner of all rights, title and interest in and to the ’117 patent. MicroPairing
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`has charged FCA with infringement of the ’117 patent by filing the Complaint
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`against FCA on August 30, 2021.
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`Answer: Admitted.
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`24. FCA has not been and is not now infringing any claim of the ’117
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`patent. In light of MicroPairing’s Complaint, there exists an actual and justiciable
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`controversy between MicroPairing and FCA regarding this patent.
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`Answer: Denied.
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`25. Accordingly, FCA desires a judicial determination and declaration of
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`the respective rights and duties of the parties herein. Such a determination and
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`declaration is necessary and appropriate at this time so that the parties may ascertain
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`their respective rights and duties.
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`Answer: Admitted as to first sentence. The balance of this paragraph is
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`denied.
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`26. FCA is entitled to a declaratory judgment that it has not infringed and
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`is not infringing the ’117 patent.
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`Answer: Denied.
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`7
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.249 Filed 12/09/21 Page 8 of 14
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`COUNT 6: INVALIDITY OF THE ’117 PATENT
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`27. FCA contends that the asserted claims of the ’117 patent are invalid
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`pursuant to one or more of the provisions of Title 35 of the United States Code,
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`including, but not limited to, 35 U.S.C. §§ 101 (lack of patentable subject matter),
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`102 (anticipation), 103 (obviousness), and/or 112 (indefiniteness and failure to
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`satisfy the written description and/or enablement requirements).
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`Answer: Admitted that FCA makes the referenced contentions. The
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`contentions themselves, and the balance of this paragraph, are denied.
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`28. MicroPairing avers that the ’117 patent is valid and enforceable.
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`Answer: Admitted.
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`29. Accordingly, a valid and justiciable controversy has arisen and exists
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`between MicroPairing and FCA. FCA desires a judicial determination and
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`declaration of the respective rights and duties of the parties herein. Such a
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`determination and declaration is necessary and appropriate at this time so that parties
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`may ascertain their respective rights and duties.
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`Answer: Denied.
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`30. FCA is entitled to a declaratory judgment that the asserted claims of the
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`’117 patent are invalid.
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`Answer: Denied.
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`8
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.250 Filed 12/09/21 Page 9 of 14
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`COUNT 7: NON-INFRINGEMENT OF THE ’136 PATENT
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`31. MicroPairing claims that it is the assignee of the ’136 patent and that it
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`is the owner of all rights, title and interest in and to the ’136 patent. MicroPairing
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`has charged FCA with infringement of the ’136 patent by filing the Complaint
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`against FCA on August 30, 2021.
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`Answer: Admitted.
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`32. FCA has not been and is not now infringing any claim of the ’136
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`patent. In light of MicroPairing’s Complaint, there exists an actual and justiciable
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`controversy between MicroPairing and FCA regarding this patent.
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`Answer: Denied.
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`33. Accordingly, FCA desires a judicial determination and declaration of
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`the respective rights and duties of the parties herein. Such a determination and
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`declaration is necessary and appropriate at this time so that the parties may ascertain
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`their respective rights and duties.
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`Answer: Admitted as to first sentence. The balance of this paragraph is
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`denied.
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`34. FCA is entitled to a declaratory judgment that it has not infringed and
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`is not infringing the ’136 patent.
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`Answer: Denied.
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`9
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.251 Filed 12/09/21 Page 10 of 14
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`COUNT 8: INVALIDITY OF THE ’136 PATENT
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`35. FCA contends that the asserted claims of the ’136 patent are invalid
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`pursuant to one or more of the provisions of Title 35 of the United States Code,
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`including, but not limited to, 35 U.S.C. §§ 101 (lack of patentable subject matter),
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`102 (anticipation), 103 (obviousness), and/or 112 (indefiniteness and failure to
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`satisfy the written description and/or enablement requirements).
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`Answer: Admitted that FCA makes the referenced contentions. The
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`contentions themselves, and the balance of this paragraph, are denied.
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`36. MicroPairing avers that the ’136 patent is valid and enforceable.
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`Answer: Admitted.
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`37. Accordingly, a valid and justiciable controversy has arisen and exists
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`between MicroPairing and FCA. FCA desires a judicial determination and
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`declaration of the respective rights and duties of the parties herein. Such a
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`determination and declaration is necessary and appropriate at this time so that parties
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`may ascertain their respective rights and duties.
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`Answer: Denied.
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`38. FCA is entitled to a declaratory judgment that the asserted claims of the
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`’136 patent are invalid.
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`Answer: Denied.
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`10
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.252 Filed 12/09/21 Page 11 of 14
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`DEMAND FOR JURY TRIAL
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`In accordance with Rule 38 of the Federal Rules of Civil Procedure FCA
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`respectfully requests a jury trial of all issues triable to a jury in this action.
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`Answer: Admitted that FCA requests a jury trial of all issues triable to a jury
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`in this action.
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`PRAYER FOR RELIEF
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`WHEREFORE, FCA respectfully requests the following relief:
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`(a) That MicroPairing take nothing by reasons of its Complaint;
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`(b) That the Court find and declare that FCA has not and does not infringe in
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`any manner any valid, asserted claim of the asserted patents;
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`(c) That the Court find and declare that the asserted claims of the asserted
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`patents are invalid, void, and without force or effect against FCA and its officers,
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`employees, agents, and attorneys;
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`(d) That the Court award FCA its costs and disbursements in this action;
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`(e) That the Court declare this case exceptional pursuant to 35 U.S.C. § 285
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`and award FCA its reasonable attorneys’ fees and costs in this action; and
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`(f) That the Court award to FCA such other and further relief to which it may
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`be entitled.
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`Answer: Denied that FCA is entitled to any of the relief requested in
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`paragraphs (a)-(f) of FCA’s Prayer for Relief.
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`11
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.253 Filed 12/09/21 Page 12 of 14
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`MICROPAIRING’S PRAYER FOR RELIEF
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`Wherefore, MicroPairing prays for the following relief:
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`A. All relief sought in MicroPairing’s Original Complaint;
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`B. That FCA takes nothing by reason of the Counterclaims, and that the
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`counterclaims be dismissed with prejudice;
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`C. That the Court enter judgment in favor of MicroPairing and against FCA,
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`with respect to all causes of action in the Counterclaims;
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`D. That the Court award MicroPairing its attorneys’ fees and other costs
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`reasonably incurred in the defense of the counterclaims; and
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`E. That the Court order such other further relief for MicroPairing as the Court
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`may deem just and proper.
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`JURY DEMAND
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`MicroPairing demands a trial by jury of any and all issues triable of right
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`before a jury.
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`Dated: December 9, 2021
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`Respectfully Submitted,
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`By: /s/ Edward R. Nelson III
`Edward R. Nelson III (TXSBN 00797142)
`ed@nelbum.com
`Admitted to the Bar of this Court
`Brian P. Herrmann (TXSBN 24083174)
`brian@nelbum.com
`Admitted to the Bar of this Court
`NELSON BUMGARDNER CONROY
`3131 West Seventh Street, Suite 300
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`12
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.254 Filed 12/09/21 Page 13 of 14
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`Fort Worth, TX 76107
`Telephone: 817.377.9111
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`Timothy E. Grochocinski (ILSBN
`6295055)
`tim@nelbum.com
`Admitted to the Bar of this Court
`C. Austin Ginnings (NYSBN 4986691)
`austin@nelbum.com
`Admitted to the Bar of this Court
`NELSON BUMGARDNER CONROY
`15020 S. Ravinia Avenue, Suite 29
`Orland Park, IL 60462
`Telephone: 708.675.1974
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`Ryan P. Griffin (TXSBN 24053687)
`ryan@nelbum.com
`Admitted to the Bar of this Court
`NELSON BUMGARDNER CONROY
`2727 N. Harwood Street, Suite 250
`Dallas, Texas 75201
`Telephone: 817.377.9111
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`Thomas E. Bejin (MISBN P56854)
`bejin@b2iplaw.com
`BEJIN BIENEMAN PLC
`2000 Town Center, Suite 800
`Southfield, MI 48075
`Telephone: 313.528.4882
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`Attorneys for Plaintiff
`MICROPAIRING TECHNOLOGIES
`LLC
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`13
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`Case 2:21-cv-12015-LJM-DRG ECF No. 25, PageID.255 Filed 12/09/21 Page 14 of 14
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`CERTIFICATE OF SERVICE
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`I hereby certify that on December 9, 2021, I electronically filed the foregoing
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`instrument with the Clerk of the Court using the CM/ECF system, which will send
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`notification of such filing to all counsel of record.
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`/s/ Edward R. Nelson III
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`14
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