Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 1 of 19
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`
`
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`MASSACHUSETTS INSTITUTE OF
`TECHNOLOGY,
`
`
`Plaintiff,
`
`
`DEFENDANT MICRON MEMORY JAPAN, INC.’S ANSWER TO AMENDED
`COMPLAINT
`
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`Defendant Micron Memory Japan, Inc. (“MMJ” or “Defendant”), by its undersigned
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`attorneys, hereby answers the Amended Complaint for Patent Infringement (D.E. 35) filed April
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`26, 2015, by Plaintiff Massachusetts Institute of Technology (“MIT”).
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`ANSWER
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`NATURE OF THE ACTION
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`1.
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`MMJ admits that this purports to be an action for patent infringement arising
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`under the federal patent statutes, 35 U.S.C. §§ 1, et seq.
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`2.
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`MMJ admits that Exhibit A to the Amended Complaint purports to be a copy of
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`United States Patent No. 6,057,221 (“the ’221 patent”), and that the ’221 patent on its face is
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`entitled “Laser-Induced Cutting of Metal Interconnect,” identifies an issue date of May 2, 2000,
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`and identifies the inventors as Joseph B. Bernstein and Zhihui Duan. MMJ further admits that
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`1
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`MICRON TECHNOLOGY, INC., APPLE INC.,
`ELPIDA MEMORY, INC., MICRON MEMORY
`JAPAN, INC., ELPIDA MEMORY USA, INC.,
`
`
`v.
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`Civil Action No. 1:15-cv-10374-FDS
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`Defendants.
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`

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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 2 of 19
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`Exhibit A purports to include both a Certificate of Correction and an Ex Parte Reexamination
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`Certificate (“Reexam Certificate”), and that the Reexam Certificate identifies on its face that the
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`certificate issued on September 11, 2012, and that the certificate number is US 6,057,221 C1.
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`MMJ further admits that Exhibit B to the Amended Complaint purports to be a copy of an
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`Assignment for the ’221 patent. MMJ is without knowledge or information sufficient to form a
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`belief as to the truth of the remaining allegations stated in this paragraph, and therefore denies
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`them.
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`3.
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`MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`4.
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`Denied.
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`PARTIES
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`5.
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`MMJ is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations stated in this paragraph, and therefore denies them.
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`6.
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`MMJ admits that Defendant Micron Technology, Inc. is a corporation organized
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`and existing under the laws of the State of Delaware having a place of business at 8000 S.
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`Federal Way, Boise, Idaho 83716. MMJ is without knowledge or information sufficient to form
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`a belief as to the truth of the remaining allegations stated in this paragraph, and therefore denies
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`them.
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`7.
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`MMJ admits that it is a corporation having a place of business at Sumitomo
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`Seimei Yaesu Bldg. 3F, 2-1 Yaesu 2-chome, Chuo-ku, Tokyo 104-0028, Japan. MMJ further
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`admits that it is a wholly-owned subsidiary of Micron Technology, Inc. MMJ denies the
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`remaining allegations of this paragraph.
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`2
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`

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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 3 of 19
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`8.
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`MMJ admits that Micron Memory Taiwan Co., Ltd. and Micron Akita, Inc.
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`manufacture DRAM semiconductors. MMJ denies the remaining allegations of this paragraph
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`directed to MMJ. MMJ is without knowledge or information sufficient to form a belief as to the
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`truth of the remaining allegations stated in this paragraph, and therefore denies them.
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`9.
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`MMJ admits that, until May 2014, Defendant Elpida Memory USA, Inc. was a
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`corporation organized and existing under the laws of the State of Delaware having a place of
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`business at 1175 Sonora Court, Sunnyvale, California 94086. MMJ further admits that, to the
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`extent it still exists, Elpida Memory USA, Inc. is a wholly-owned subsidiary of Micron
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`Technology, Inc. MMJ denies the remaining allegations stated in this paragraph.
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`10. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`JURISDICTION AND VENUE
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`11. MMJ admits that this action purports to arise under the federal patent statutes, 35
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`U.S.C. § 271 et seq., and that this Court has subject matter jurisdiction over this action. MMJ
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`denies the remaining allegations stated in this paragraph.
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`12. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`13. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`3
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`

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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 4 of 19
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`14. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`15. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`16. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`17. MMJ is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations stated in this paragraph, and therefore denies them.
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`18. MMJ admits that this is a judicial district in which this action may be brought but
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`denies that this venue is convenient or proper. MMJ denies the remaining allegations of this
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`paragraph.
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`CLAIMS AND COUNTS
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`19. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`20. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`4
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 5 of 19
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`21. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`22. MMJ is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations stated in this paragraph, and therefore denies them.
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`23. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`24.
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`Denied.
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`25. MMJ is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations stated in this paragraph, and therefore denies them.
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`COUNT ONE
`(MIT vs. Micron)
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`26. MMJ re-alleges and incorporates herein its responses to paragraphs 1-25 and 29-
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`37 (Counts 2-4).
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`27. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`28. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`COUNT TWO
`(MIT vs. Micron Japan)
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`5
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 6 of 19
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`29. MMJ re-alleges and incorporates herein its responses to paragraphs 1-28 and 32-
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`37 (Counts 3-4).
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`30.
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`31.
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`Denied.
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`Denied.
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`COUNT THREE
`(MIT v. Elpida USA)
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`32. MMJ re-alleges and incorporates herein its responses to paragraphs 1-31 and 35-
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`37 (Count 4).
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`33. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`34. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`COUNT FOUR
`(MIT v. Apple)
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`35. MMJ re-alleges and incorporates herein its responses to paragraphs 1-34.
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`36. MMJ denies the allegations of this paragraph directed to MMJ. MMJ is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`stated in this paragraph, and therefore denies them.
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`37. MMJ is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations stated in this paragraph, and therefore denies them.
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`DEFENSES
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`6
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 7 of 19
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`Further answering the Amended Complaint, and as defenses to the averments therein,
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`Defendant asserts as follows:
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`First Defense – Failure to State a Claim
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`38. MIT’s Amended Complaint fails to state a claim upon which relief can be
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`granted.
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`Second Defense – Lack of Personal Jurisdiction
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`39.
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`Defendant is not subject to personal jurisdiction in the District of Massachusetts.
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`Third Defense – Noninfringement
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`40. MMJ is not infringing and has not infringed any claim of the ’221 patent, either
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`literally or under the doctrine of equivalents. MMJ does not import into the United States, or
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`offer to sell, sell or use within the United States, and has not imported into the United States, or
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`offered to sell, sold or used within the United States, products that are made by the process
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`claimed in the ’221 patent. For example, all of the claims of the ’221 patent require “a first
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`electrically-conductive line and a second electrically-conductive line on a substrate.” The
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`accused products in the Amended Complaint do not infringe and have not infringed any of the
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`claims of the ’221 patent at least because they do not meet this limitation. As a further example,
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`each of claims 14, 15 and 29 of the ’221 patent require that “the cut-link pad is covered with a
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`passivative layer that is harder than the substrate.” The accused products in the Amended
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`Complaint do not infringe and have not infringed any of claims 14, 15 and 29 of the ’221 patent
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`at least because they do not meet this limitation.
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`41. MMJ does not induce infringement and has not induced infringement of any claim
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`of the ’221 patent, either literally or under the doctrine of equivalents. There has been no direct
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`infringement by another for which MMJ is responsible. Further, MMJ lacks the requisite
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`7
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 8 of 19
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`knowledge, intent, and mens rea for inducement of infringement. And, MMJ has a good faith
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`belief that the ’221 patent is invalid, inequitably produced, and not infringed. Still further, it is
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`an improper extra-territorial expansion of 35 U.S.C. § 271(g) to assert inducement of
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`infringement under 35 U.S.C. § 271(b) against a foreign manufacturing entity with respect to
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`products which that entity does not import or sell in the United States.
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`Fourth Defense – Invalidity
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`42.
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`Each claim of the ’221 patent is invalid and void because it fails to comply with
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`one or more conditions and requirements of the patent laws, including without limitation 35
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`U.S.C. §§ 102, 103, and 112, and the rules, regulations, laws, and decisions pertaining thereto.
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`43.
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`For example, one or more of the claims of the ’221 patent are invalid as
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`anticipated by, or obvious in view of, at least the following prior art:
`
`• The New IEEE Standard Dictionary of Electrical and Electronic Terms, Fifth Ed.,
`Institute of Electrical and Electronics Engineers, Inc., New York (1993)
`
`• Japan Pat. Appl. Publ. No. 8-213465 to Koyou
`
`• Japan Pat. Appl. Publ. No. 6-244285 to Wada et al.
`
`• U.S. Patent No. 5,729,042 to Lou et al.
`
`• U.S. Patent Application No. 514,800
`
`• U.S. Patent No. 5,025,300 to Billig et al.
`
`• “Thermal Conductivity of Metals,” The Engineering ToolBox,
`http://www.engineeringtoolbox.com/thermal-conductivity-metals-d_858.html (last
`visited April 1, 2015)
`
`• Pierson, Handbook of Refractory Carbides and Nitrides: Properties, Characteristics,
`Processing, and Applications, Noyes Publications (1996)
`
`• U.S. Patent No. 5,872,389 to Nishimura et al.
`
`• U.S. Patent No. 5,675,174 to Nakajima
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`• U.S. Patent No. 5,538,924 to Chen
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`8
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 9 of 19
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`• U.S. Patent No. 5,300,461 to Ting
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`• U.S. Patent No. 5,729,041 to Yoo
`
`• U.S. Patent No. 5,747,869 to Prall
`
`• Wilson et al., Handbook of Multilevel Metallization For Integrated Circuits:
`Materials, Technology, and Applications, Noyes Publications (1993)
`
`• Wolf, Silicon Processing for the VLSI ERA Volume 2: Process Integration, Lattice
`Press, Sunset CA (1990)
`
`• Construction Analyses of the Samsung KM44C4000J-7 16 Megabit DRAM,
`published by Integrated Circuit Engineering, Scottsdale AZ, Report No. SCA 9311-
`3001 (available at http://smithsonianchips.si.edu/ice/cd/9311_300.pdf)
`
`• Construction Analyses of the Lattice ispLSI2032-180L CPLD, published by
`Integrated Circuit Engineering, Scottsdale AZ, Report No. SCA 9712-573 (available
`at http://smithsonianchips.si.edu/ice/cd/9712_573.pdf)
`
`• Construction Analysis of the Intel Pentium Processor w/MMX, published by
`Integrated Circuit Engineering, Scottsdale AZ, Report No. SCA 9706-540 (available
`at http://smithsonianchips.si.edu/ice/cd/9706_540.pdf)
`
`• “Intel Introduces The Pentium® Processor With MMX™ Technology,”
`http://www.intel.com/pressroom/archive/releases/1997/dp010897.htm (last visited
`April 14, 2015)
`
`• “Intel Microprocessor Quick Reference Guide,”
`http://www.intel.com/pressroom/kits/quickreffam.htm#pentium (last visited April 26,
`2015)
`
`• Construction Analyses of the Motorola PC603R Microprocessor, published by
`Integrated Circuit Engineering, Scottsdale AZ, Report No. SCA 9709-551 (available
`at http://smithsonianchips.si.edu/ice/cd/9709_551.pdf)
`
`• Construction Analyses of the Toshiba TC5165165AFT-50 64 Mbit DRAM, published
`by Integrated Circuit Engineering, Scottsdale AZ, Report No. SCA 9702-524
`(available at http://smithsonianchips.si.edu/ice/cd/9702_524.pdf)
`
`• “Material: Stainless steel, bulk,”
`https://www.memsnet.org/material/stainlesssteelbulk/ (last visited April 14, 2015)
`
`• “Material: Silicon Dioxide (SiO2), bulk,”
`https://www.memsnet.org/material/silicondioxidesio2bulk/ (last visited April 14,
`2015)
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`9
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 10 of 19
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`• Osaka et al., “Development of new electrolytic and electroless gold plating processes
`for electronics applications,” Science and Technology of Advanced Materials, vol. 7
`(2006), pp. 425-437
`
`• Uttecht et al., “A four-level-metal fully planarized interconnect technology for dense
`high performance logic and SRAM applications,” VLSI Multilevel Interconnection
`Conference, 1991, Proceedings, Eighth International IEEE, June 11-12, 1991, pp. 20-
`26
`
`• Seshan ed., Handbook of Thin-Film Deposition Processes and Techniques: Principles,
`Methods, Equipment and Applications, Second Ed., Noyes Publications, New York
`(2002)
`
`• Vlassak et al., “A new bulge test technique for the determination of Young’s modulus
`and Poisson’s ratio of thin films”, J. Mater. Res., Vol. 7, No. 12, Dec 1992
`
`• Hitachi HM51W64400A
`
`• Texas Instruments TMS464169B
`
`• Samsung KM44C4000J-7 16 Megabit DRAM
`
`• Lattice ispLSI2032-180L CPLD
`
`•
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`Intel Pentium Processor w/MMX
`
`• Motorola PC603R Microprocessor
`
`• Toshiba TC5165165AFT-50 64 Mbit DRAM
`
`44.
`
`As another example, all of the claims of the ’221 patent are invalid because they
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`fail to meet the definiteness requirement of 35 U.S.C. § 112, second paragraph, with respect to at
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`least the terms “cut-link pad,” “first electrically-conductive line,” “second electrically-
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`conductive line,” and “substantially less thermal resistance per unit length.”
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`Fifth Defense – Unenforceability for Inequitable Conduct
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`45.
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`The ’221 patent is unenforceable due to inequitable conduct because, during ex
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`parte reexamination of the ’221 patent, (i) MIT, (ii) its patent attorney, Andrew D. Fortney (Reg.
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`No. 34,600), and (iii) Dr. Joseph Bernstein, a named inventor of the ’221 patent, breached their
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`duty of candor and good faith in dealing with the United States Patent and Trademark Office
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`10
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 11 of 19
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`(“Patent Office”), by knowingly making misrepresentations of material information, failing to
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`disclose to the Patent Office all information known to be material to patentability of the claims of
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`the ’221 patent, and by misleading the Patent Office, with an intent to deceive. But for these
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`misrepresentations, failures, and misleading statements, the ’221 patent would have been found
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`to be unpatentable and would not have been granted a reexamination certificate.
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`46.
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`U.S. Patent Application No. 08/825,808, from which the ’221 patent issued, was
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`filed on April 3, 1997. The’221 patent issued on May 2, 2000. The ’221 patent, entitled “Laser-
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`Induced Cutting of Metal Interconnect,” is directed to the design of conducting structures
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`referred to as cut-links that are severable by laser ablation. The named inventors of the ’221
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`patent are Dr. Joseph B. Bernstein and Zhihui Duan. According to the Patent Office assignment
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`records, the ’221 patent was assigned to MIT in 1997.
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`47.
`
`On information and belief, on or about May 27, 2009 and February 22, 2010,
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`invalidating prior art references for the ’221 patent were disclosed to MIT and its patent attorney,
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`Mr. Fortney, by representatives of Elpida Memory, Inc. during their discussions regarding
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`the ’221 patent.
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`48.
`
`On March 30, 2011, MIT, through its patent attorneys, requested ex parte
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`reexamination of the ’221 patent, Reexamination Control No. 90/011,607. Counsel representing
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`MIT in the reexamination were the Law Offices of Andrew D. Fortney, Ph. D., P.C., including
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`Mr. Fortney.
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`49. MIT’s request for reexamination was made in view of the following four U.S.
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`patents and three foreign patent publications and non-patent literature documents, which
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`included the prior art references previously disclosed to MIT and Mr. Fortney on or about May
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`27, 2009, and February 22, 2010:
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`11
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 12 of 19
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`• U.S. Patent No. 5,872,389 to Nishimura et al.
`
`• U.S. Patent No. 5,729,042 to Lou et al. (“Lou”)
`
`• U.S. Patent No. 5,608,257 to Lee et al.
`
`• U.S. Patent No. 4,826,785 to McClure et al.
`
`• Japan Pat. Appl. Publ. No. 8-213465 to Koyou (“Koyou”)
`
`• Japan Pat. Appl. Publ. No. 6-244285 to Wada et al. (“Wada”)
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`• Japan Pat. Appl. Publ. No. 6-104338 to Matsumoto
`
`50.
`
`In the reexamination request, MIT and its patent attorneys admitted that:
`
`Each of the [seven] references listed above is believed to raise a
`substantial new question of patentability (hereinafter “SNQ”) as to
`claims of the ’221 patent as detailed in this Statement.
`
`
`(Request for Ex Parte Reexamination dated March 30, 2011, at 4.)
`
`51.
`
`The Patent Office granted MIT’s reexamination request on June 23, 2011. In
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`ordering reexamination, the Patent Examiner found that 15 different, substantial new questions
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`of patentability were raised by the prior art presented in the reexamination request. Of the above
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`seven references, the Patent Examiner noted that “only Lee was cited during the prosecution of
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`application of the [’221] patent.” (Order Granting Request for Ex Parte Reexamination dated
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`June 23, 2011, at 3.) Further, the Patent Examiner found that:
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`[A] substantial new question (SNQ) of patentability exists where
`any prior art uncovered shows or discloses the shape of the cut-link
`pad having: (1) substantially less thermal resistance per unit length
`than each of the first and second lines, and (2) wherein the width of
`the cut-link pad is at least ten percent greater than the width of the
`first and second electrically-conductive lines. It is asserted by the
`[Patent Owners] that the prior art cited above provides such
`teachings.
`
`
`(Order Granting Request for Ex Parte Reexamination dated June 23, 2011, at 4.)
`
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`12
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 13 of 19
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`52.
`
`On January 26, 2012, the Patent Examiner rejected all then-pending claims of
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`the ’221 patent, including all of the asserted claims in this case, except later-added dependent
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`claim 30, as obvious over one or more of Koyou, Wada, and Lou. (Office Action dated January
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`26, 2012, at 4-13.)
`
`53.
`
`In response to the office action, on March 26, 2012, MIT and its patent attorney,
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`Mr. Fortney, responded with the submission of an expert declaration by named inventor Dr.
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`Bernstein that was sworn to and signed on March 8, 2012 (“Bernstein Declaration”). MIT and
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`its patent attorney, Mr. Fortney, relied heavily on the Bernstein Declaration in arguing that the
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`pending claims of the ’221 patent as amended were not invalid as obvious over the cited prior
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`art. (Request for Reconsideration dated March 26, 2012.)
`
`54.
`
`In confirming the patentability of the pending claims of the ’221 patent as
`
`amended, the Patent Examiner expressly relied on the Bernstein Declaration, noting:
`
`The Declaration and affidavits filed with the Response on
`03/26/2012 on behalf of the Patent Owner and others have been
`instrumental in a greater understanding of the intricacies of this
`case. As such, as noted hereinbelow, this Notice of Reexam
`Confirmation (NIRC) is prepared.
`
`
`(Notice of Intent to Issue Ex Parte Reexamination Certificate dated July 11, 2012, at 2-5.)
`
`55.
`
`As set forth below, MIT, its patent attorney Mr. Fortney, and named inventor Dr.
`
`Bernstein, knowingly made misrepresentations of material information, failed to disclose to the
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`Patent Office all information known to be material to patentability of the claims of the ’221
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`patent, and misled the Patent Office, with an intent to deceive, in order to obtain a confirmation
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`of the claims of the ’221 patent.
`
`56.
`
`For example, MIT, its patent attorney Mr. Fortney, and named inventor Dr.
`
`Bernstein, misrepresented the scope and content of Koyou by failing to identify critical
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`13
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 14 of 19
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`disclosures within Koyou which, when properly considered, render the claims of the ’221 patent
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`unpatentable under §§ 102 and/or 103. In particular, they failed to disclose that Koyou Figure 1
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`is a “plan view” of Koyou Figure 3. They also failed to disclose Koyou’s description of titanium
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`and titanium nitride vias (i.e., cut-link pad connecting lines), which have thermal conductivities
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`several times higher than that of the tungsten vias that were expressly considered and relied upon
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`during reexamination.
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`57.
`
`As another example, MIT, its patent attorney Mr. Fortney, and named inventor
`
`Dr. Bernstein, knew or should have known that their characterizations of the expectations of
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`those of ordinary skill in the art and the conventional wisdom within the relevant technological
`
`field submitted to the Patent Office were inaccurate and misleading. In particular, they
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`misrepresented the applicability of Moore’s law to the technology at issue and the relationship
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`between material hardness and resistance to fracture as conventionally understood.
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`58.
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`As a result of the material misrepresentations, misleading and inaccurate
`
`information, and arguments relying on those misrepresentations and inaccuracies that were
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`presented to the Patent Office by MIT, its patent attorney Mr. Fortney, and named inventor Dr.
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`Bernstein, the Patent Examiner withdrew the rejections based on the prior art and confirmed the
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`patentability of the pending claims citing and relying on the Bernstein Declaration in addition to
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`the related arguments made by MIT and its patent attorney, Mr. Fortney. (Notice of Intent to
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`Issue Ex Parte Reexamination Certificate dated July 11, 2012, at 2-4.) But for the Bernstein
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`Declaration and the arguments made by MIT and its patent attorney, Mr. Fortney, the surviving
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`claims of the ’221 patent would have been rejected over Koyou and would not have issued. (See
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`IPR2015-01087 Petition filed May 4, 2015.)
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 15 of 19
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`59.
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`Based on the evidence and information set forth above, the single most reasonable
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`inference that can be drawn from the material misrepresentations, misleading and inaccurate
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`information, and arguments relying on those misrepresentations and inaccuracies that were
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`presented to the Patent Office by MIT, its patent attorney Mr. Fortney, and named inventor Dr.
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`Bernstein, is that they each had the specific intent to deceive the Patent Office to overcome the
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`Koyou prior art reference and obtain a confirmation of the patentability of the claims of the ’221
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`patent. Each of these individuals owed a duty of candor and good faith in dealing with the Patent
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`Office in connection with the ’221 patent and, upon information and belief, knowingly and
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`deliberately breached that duty during reexamination.
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`60.
`
`As set forth above, MIT, its patent attorney Mr. Fortney, and named inventor Dr.
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`Bernstein, knowingly made misrepresentations of material information, failed to disclose to the
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`Patent Office all information known to be material to patentability of the claims of the ’221
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`patent, and misled the Patent Office, with an intent to deceive in order to obtain a confirmation
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`of the claims of the ’221 patent. As a result, the ’221 patent is unenforceable for inequitable
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`conduct.
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`Sixth Defense – Equitable Defenses
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`61. MIT’s claims against MMJ for alleged infringement of the ’221 patent are barred
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`in whole or in part by equitable doctrines including, for example, laches, estoppel, release,
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`waiver, double recovery, patent misuse and unclean hands.
`
`62.
`
`For example, MIT failed to diligently pursue its claims from at least 2004 when it
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`knew or reasonably should have known of the alleged infringement, which failure was
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`unreasonable, unjustified, misleading and has caused MMJ material prejudice.
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 16 of 19
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`63.
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`As another example, MIT previously accepted an offer in writing to settle its
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`claims with respect to the ’221 patent and failed to negotiate a final agreement in good faith.
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`64.
`
`As a further example, MIT is barred from asserting claims that are redundant to
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`claims brought in, or discharged by, a bankruptcy court in the United States or in Japan.
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`65.
`
`As an additional example, the ’221 patent is unenforceable for patent misuse and
`
`unclean hands. For example, despite MIT’s awareness that material misrepresentations,
`
`misleading and inaccurate information, and arguments relying on those misrepresentations and
`
`inaccuracies were presented to the Patent Office during reexamination and upon which the Patent
`
`Examiner relied in withdrawing rejections and confirming the patentability of the pending
`
`claims, MIT filed this action seeking to enforce the ’221 patent. MIT’s conduct in asserting
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`the ’221 patent and attempting to enforce it in this litigation constitutes bad faith.
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`Seventh Defense – Limitation on Damages
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`66. MIT is limited or barred from recovering damages from MMJ for alleged
`
`infringement of the ’221 patent under 35 U.S.C. §§ 286 and 287; MIT is also limited or barred
`
`from recovering damages from MMJ under 35 U.S.C. §§ 252, 307(b), and 316(b); MIT is also
`
`barred from recovering damages from MMJ under 28 U.S.C. § 1498 for products sold to the
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`United States Government; and MIT is further barred from asserting claims against MMJ that are
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`redundant to claims brought in, or discharged by, a bankruptcy court in the United States or in
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`Japan.
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`67.
`
`As an example, MIT’s claim for damages is limited under 35 U.S.C. § 287(b)(2);
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`specifically, MIT is barred from recovering damages from MMJ prior to the date MMJ had
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`actual notice that it was allegedly infringing the claims of the ’221 patent.
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`16
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 17 of 19
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`68.
`
`As another example, MIT’s claim for damages is limited or barred under 35
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`U.S.C. §§ 252, 307(b), and 316(b) because the scope of the claims of the ’221 patent that issued
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`from ex parte reexamination are not substantially identical to the original claims of the ’221
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`patent.
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`
`
`
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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 18 of 19
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`
`
`Respectfully submitted,
`
`/s/ Brendan T. St. Amant
`Thomas R. Makin*
`Rose Cordero Prey*
`David J. Cooperberg, Ph.D.*
`KENYON & KENYON LLP
`One Broadway
`New York, New York 10004
`(212) 425-7200 (T)
`(212) 425-5288 (F)
`tmakin@kenyon.com
`rprey@kenyon.com
`dcooperberg@kenyon.com
`
` *
`
` admitted pro hac vice
`
`
`T. Christopher Donnelly (BBO# 129930)
`Brendan T. St. Amant (BBO# 672619)
`DONNELLY, CONROY & GELHAAR, LLP
`260 Franklin Street, Suite 1600
`Boston, Massachusetts 02110
`(617) 720-2880 (T)
`(617) 720-3554 (F)
`tcd@dcglaw.com
`bts@dcglaw.com
`
`Attorneys for Defendants Micron Technology,
`Inc., Micron Memory Japan, Inc., Elpida
`Memory USA, Inc., and Apple Inc.
`
`
`18
`
`Dated: May 14, 2015
`
`
`

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`Case 1:15-cv-10374-FDS Document 41 Filed 05/14/15 Page 19 of 19
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`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that this document filed through the ECF system will be sent
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`electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
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`and paper copies will be sent to those indicated as non-registered participants.
`
`
`
`/s/ Brendan T. St. Amant
`
`
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`19