throbber
Case 9:22-cv-81726-AHS Document 44 Entered on FLSD Docket 04/10/2023 Page 1 of 10
`
`
`UNITED STATES DISTRICT COURT FOR THE
`SOUTHERN DISTRICT OF FLORIDA
`
`
`
`
`
` Plaintiffs/Counterclaim Defendants,
`
`v.
`
`SYSTEM STORMSEAL PTY LTD and
`STORMSEAL USA, LLC,
`
`
`
`
`
`ABC SUPPLY CO., INC., MULE-HIDE
`PRODUCTS CO., INC., and STRUCTURAL
`WRAP, LLC,
`
`
`
` Defendants/Counterclaim Plaintiffs.
`
`
`
`
`
`C.A. NO. 9:22-cv-81726-AHS
`
`
`
`
`
`
`PLAINTIFFS/COUNTERCLAIM DEFENDANTS SYSTEM STORMSEAL PTY LTD
`AND STORMSEAL USA, LLC’S ANSWER TO DEFENDANT/COUNTERCLAIM
`PLAINTIFF STRUCTURAL WRAP, LLC’S COUNTERCLAIMS
`
`Plaintiffs/Counterclaim Defendants System Stormseal Pty Ltd. and Stormseal USA, LLC
`
`(collectively, “Stormseal”), hereby answer Defendant/Counterclaim Plaintiff Structural Wrap,
`
`LLC’s (“Structural Wrap”) Counterclaims (the “Counterclaims”) against Stormseal as follows:
`
`ANSWER TO COUNTERCLAIMS
`
`1.
`
`To the extent that the allegations of Paragraph 1 of the Counterclaims set forth legal
`
`conclusions, no response is required. Stormseal admits that the Counterclaims purport to state
`
`claims for declaratory judgment of noninfringement and invalidity of one or more claims of U.S.
`
`Patent No. 11,168,484 and infringement of one or more claims of United States Patent No.
`
`11,041,312 (“the ’312 Patent”), and arise under the patent laws of the United States, Title 35,
`
`United States Code, including 35 U.S.C. § 271, and the Declaratory Judgment Act, United States
`
`Code, including §§ 2201, 2202. Stormseal denies all other allegations in Paragraph 1.
`
`
`
`Exhibit 2011, Page 1 of 10
`IPR2024-00084
`
`

`

`Case 9:22-cv-81726-AHS Document 44 Entered on FLSD Docket 04/10/2023 Page 2 of 10
`
`
`The Parties
`
`2.
`
`Stormseal admits that the Florida Department of State website lists Structural Wrap,
`
`LLC as a Florida company with a principal place of business at 8793 SW 131st St., Miami, FL
`
`33176. Stormseal is without sufficient knowledge or information to form a belief as to the truth of
`
`the allegations of Paragraph 2 of the Counterclaims, and therefore denies them.
`
`3.
`
`Stormseal is without sufficient knowledge or information to form a belief as to the
`
`truth of the allegations of Paragraph 3 of the Counterclaims, and therefore denies them.
`
`4.
`
`Stormseal is without sufficient knowledge or information to form a belief as to the
`
`truth of the allegations of Paragraph 4 of the Counterclaims, and therefore denies them.
`
`5.
`
`Stormseal is without sufficient knowledge or information to form a belief as to the
`
`truth of the allegations of Paragraph 5 of the Counterclaims, and therefore denies them.
`
`6.
`
`Stormseal is without sufficient knowledge or information to form a belief as to the
`
`truth of the allegations of Paragraph 6 of the Counterclaims, and therefore denies them.
`
`7.
`
`8.
`
`9.
`
`Admitted.
`
`Admitted.
`
`Denied.
`
`Jurisdiction and Venue
`
`10.
`
`Stormseal incorporates by reference its responses to Paragraphs 1–9 of their
`
`Answer to Counterclaims as if fully set forth herein.
`
`11.
`
`To the extent that the allegations of Paragraph 11 of the Counterclaims set forth
`
`legal conclusions, no response is required. Stormseal admits that the Counterclaims purport to arise
`
`under the patent laws of the United States, Title 35, United States Code, including 35 U.S.C. § 100
`
`
`
`2
`
`Exhibit 2011, Page 2 of 10
`IPR2024-00084
`
`

`

`Case 9:22-cv-81726-AHS Document 44 Entered on FLSD Docket 04/10/2023 Page 3 of 10
`
`
`et seq. and the Declaratory Judgment Act, United States Code, including §§ 2201, 2202. Stormseal
`
`denies all other allegations in Paragraph 11.
`
`12.
`
`To the extent that the allegations of Paragraph 12 of the Counterclaims set forth
`
`legal conclusions, no response is required. Stormseal does not dispute that this Court has subject
`
`matter jurisdiction over Structural Wrap’s counterclaims.
`
`13.
`
`Stormseal does not contest that it is subject to personal jurisdiction in this District,
`
`solely for purposes of this action. Stormseal denies all other allegations in Paragraph 13.
`
`14.
`
`Stormseal does not contest that venue is proper in this District. Stormseal denies all
`
`other allegations in Paragraph 14.
`
`The ’484 Patent
`
`15.
`
`Stormseal incorporates by reference its responses to Paragraphs 1–14 of their
`
`Answer to Counterclaims as if fully set forth herein.
`
`16.
`
`Admitted.
`
`The ’312 Patent
`
`17.
`
`Stormseal incorporates by reference its responses to Paragraphs 1–16 of their
`
`Answer to Counterclaims as if fully set forth herein.
`
`18.
`
`Stormseal admits that Exhibit 1 to Structural Wrap’s counterclaims appears to be a
`
`copy of the ’312 Patent. Stormseal denies all other allegations in Paragraph 18.
`
`19.
`
`Stormseal admits that the face of the ’312 Patent identifies Christopher M. Mouriz,
`
`Spiro Naos, and Larry J. Bond as inventors and Structural Wrap, LLC as the assignee. Stormseal
`
`denies that the ’312 Patent was duly and legally issued, and denies all other allegations in
`
`Paragraph 19.
`
`20.
`
`Denied.
`
`
`
`3
`
`Exhibit 2011, Page 3 of 10
`IPR2024-00084
`
`

`

`Case 9:22-cv-81726-AHS Document 44 Entered on FLSD Docket 04/10/2023 Page 4 of 10
`
`
`FIRST CAUSE OF ACTION
`(Declaratory Judgment of Non-Infringement of the ’484 Patent)
`
`21.
`
`Stormseal incorporates by reference its responses to Paragraphs 1–20 of their
`
`Answer to Counterclaims as if fully set forth herein.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`27.
`
`Admitted.
`
`Admitted.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`SECOND CAUSE OF ACTION
`(Declaratory Judgment of Invalidity of the ’484 Patent)
`
`28.
`
`Stormseal incorporates by reference its responses to Paragraphs 1–27 of their
`
`Answer to Counterclaims as if fully set forth herein.
`
`29.
`
`Denied, except that Stormseal does not presently contend that the Court lacks
`
`subject matter jurisdiction over Structural Wrap’s Second Cause of Action.
`
`30.
`
`31.
`
`32.
`
`Denied.
`
`Denied.
`
`Denied.
`
`THIRD CAUSE OF ACTION
`(Alleged Infringement of U.S. Patent No. 11,041,312 Patent)
`
`33.
`
`Stormseal incorporates by reference its responses to Paragraphs 1–32 of their
`
`Answer to Counterclaims as if fully set forth herein.
`
`34.
`
`Denied.
`
`
`
`4
`
`Exhibit 2011, Page 4 of 10
`IPR2024-00084
`
`

`

`Case 9:22-cv-81726-AHS Document 44 Entered on FLSD Docket 04/10/2023 Page 5 of 10
`
`
`35.
`
`36.
`
`Denied.
`
`Admitted that Paragraph 36 accurately quotes claim 8 of the ’312 Patent. To the
`
`extent this Paragraph contains any other factual allegations, Stormseal denies them, and
`
`specifically denies that claim 8 is valid or that Stormseal has infringed claim 8.
`
`37.
`
`Stormseal admits that Paragraph 37 appears to include excerpted text and images
`
`from Stormseal’s website. Stormseal denies all other factual allegations in Paragraph 37.
`
`38.
`
`Stormseal admits that Paragraph 38 appears to include an excerpted image from
`
`Stormseal’s website. Stormseal denies all other factual allegations in Paragraph 38.
`
`39.
`
`Stormseal admits that Paragraph 39 appears to include excerpted images from
`
`Stormseal’s website. Stormseal denies all other factual allegations in Paragraph 39.
`
`40.
`
`Stormseal admits that Paragraph 40 appears to include an excerpted image from
`
`Stormseal’s website. Stormseal denies all other factual allegations in Paragraph 40.
`
`41.
`
`Stormseal admits that Paragraph 41 appears to include an excerpted image from
`
`Stormseal’s website. Stormseal denies all other factual allegations in Paragraph 41.
`
`42.
`
`Stormseal admits that Paragraph 42 appears to include excerpted images from
`
`Stormseal’s website. Stormseal denies all other factual allegations in Paragraph 42.
`
`43.
`
`Stormseal admits that Paragraph 43 appears to include an excerpted image from
`
`Stormseal’s website. Stormseal denies all other factual allegations in Paragraph 43.
`
`44.
`
`Stormseal admits that Paragraph 44 appears to include an excerpted image from
`
`Stormseal’s website. Stormseal denies all other factual allegations in Paragraph 44.
`
`45.
`
`Stormseal admits that Paragraph 45 appears to include a link to Stormseal’s
`
`website. Stormseal denies all other factual allegations in Paragraph 45.
`
`46.
`
`Denied.
`
`
`
`5
`
`Exhibit 2011, Page 5 of 10
`IPR2024-00084
`
`

`

`Case 9:22-cv-81726-AHS Document 44 Entered on FLSD Docket 04/10/2023 Page 6 of 10
`
`
`PRAYER FOR RELIEF
`
`To the extent Structural Wrap’s Prayer for Relief contains any factual allegations,
`
`Stormseal denies them. Stormseal denies that Structural Wrap is entitled to any relief whatsoever
`
`from Stormseal, whether sought in the Prayer for Relief or otherwise. Stormseal also denies that
`
`Structural Wrap has any valid claim pursuant to 35 U.S.C. § 271, et seq., and denies that it has
`
`violated any of the patent laws of the United States with respect to the ’312 Patent. Structural
`
`Wrap’s Prayer for Relief should therefore be denied in its entirety and with prejudice, and
`
`Structural Wrap should take nothing from Stormseal.
`
`Stormseal further reserves the right to seek costs and attorney’s fees under 35 U.S.C. § 285
`
`and any other applicable law.
`
`JURY DEMAND
`
`Stormseal demands a jury trial on all issues so triable.
`
`DEFENSES AND AFFIRMATIVE DEFENSES
`
`
`
`Stormseal alleges and asserts the following defenses and affirmative defenses in
`
`response to the allegations in the Counterclaims. Stormseal undertakes the burden of proof only
`
`as to those defenses that are deemed affirmative defenses as a matter of law. In addition to the
`
`defenses described below, Stormseal reserves all rights to amend or supplement these defenses
`
`as additional facts become known.
`
`First Defense – Failure to State a Claim
`
`1.
`
`Structural Wrap has failed to state a claim against Stormseal upon which relief can
`
`be granted. For example, the Counterclaims lack a factual basis, and fail to make more than bare
`
`conclusory allegations regarding non-infringement and invalidity of the ’484 Patent.
`
`
`
`6
`
`Exhibit 2011, Page 6 of 10
`IPR2024-00084
`
`

`

`Case 9:22-cv-81726-AHS Document 44 Entered on FLSD Docket 04/10/2023 Page 7 of 10
`
`
`2.
`
`By way of example only, Structural Wrap’s Counterclaims fail to identify any direct
`
`infringer with respect to any of its claims of direct or indirect infringement.
`
`3.
`
`By way of further example, Structural Wrap alleges that “manufacture, use, offer
`
`for sale, sale, and/or importation” of the “Stormseal Product” directly infringes claim 8 of the ’312
`
`Patent, but Structural Wrap does not allege how manufacture, sale, offer for sale or importation of
`
`a product can directly infringe a claim directed to a “method for covering at least a portion of a
`
`roof of a structure with an impermeable membrane.”
`
`Third Defense – Non-Infringement of the ’312 Patent
`
`4.
`
`Stormseal has not infringed, directly, jointly, contributorily, or by inducement,
`
`any valid or enforceable claim of the ’312 Patent, either literally or under the doctrine of
`
`equivalents, and has not otherwise committed any acts in violation of 35 U.S.C. § 271, et seq.
`
`Fourth Defense – Invalidity/Ineligibility of the ’312 Patent
`
`5.
`
`At least the asserted claim of the ’312 Patent is invalid, unenforceable, or
`
`ineligible for patenting under one or more of the provisions of Title 35 of the United States Code,
`
`including but not limited to 35 U.S.C. §§ 101 (subject matter), 102 (anticipation), 103
`
`(obviousness), and/or 112 (indefiniteness, failure to claim the subject matter regarded as the
`
`invention, and failure to satisfy the written description and/or enablement requirements), the
`
`rules, regulations, and laws pertaining thereto, and/or under other judicially-created bases for
`
`invalidity and ineligibility.
`
`6.
`
`By way of example only, Stormseal’s ’484 Patent is prior art to Structural Wrap’s
`
`’312 Patent and anticipates or renders obvious the asserted claim of the ’312 Patent.
`
`Fifth Defense – Prosecution History Estoppel
`
`
`
`7
`
`Exhibit 2011, Page 7 of 10
`IPR2024-00084
`
`

`

`Case 9:22-cv-81726-AHS Document 44 Entered on FLSD Docket 04/10/2023 Page 8 of 10
`
`
`7.
`
`Structural Wrap is estopped from construing any of the claims of the ’312 Patent in
`
`such a way as may cover, encompass, and/or include Stormseal’s products, services, or activities
`
`and/or has waived any right to do so by reason of amendment, cancellation, and/or abandonment
`
`of claims, and/or admissions, representations, and/or statements made by or on behalf of the
`
`applicants, in proceedings before the United States Patent and Trademark Office.
`
`Sixth Defense – Limitations on Damages and Costs
`
`8.
`
`Structural Wrap’s claims for damages and/or costs are limited under the statutory
`
`limitations on damages and/or costs set forth in 35 U.S.C. §§ 286, 287 and/or 288.
`
`Seventh Defense – Waiver, Estoppel, and Unclean Hands
`
`9.
`
`Structural Wrap’s Counterclaims are barred, in whole or in part, by the equitable
`
`doctrines of waiver, estoppel, and/or unclean hands.
`
`Eighth Defense – Sales to the United States Government
`
`10.
`
`To the extent any products accused of infringement in this cases are used by and/or
`
`manufactured for the United States Government or a person or entity affiliated with the United
`
`States Government, Plaintiff’s claims with respect to those products cannot be pursued in this
`
`Court and are subject to other limitations under 28 U.S.C. § 1498.
`
`Reservation of Additional Defenses
`
`Stormseal’s investigation of the matter is ongoing. It reserves all defenses under the
`
`Federal Rules of Civil Procedure, the patent laws of the United States, other applicable state and
`
`federal laws, and any other defenses, at law or in equity, that may now exist or in the future be
`
`available based on discovery and further factual investigation in this case.
`
`REQUESTED RELIEF ON COUNTERCLAIMS
`
`Stormseal respectfully requests this Court:
`
`
`
`8
`
`Exhibit 2011, Page 8 of 10
`IPR2024-00084
`
`

`

`Case 9:22-cv-81726-AHS Document 44 Entered on FLSD Docket 04/10/2023 Page 9 of 10
`
`
`A.
`
`Dismiss all counts of the Counterclaims against Stormseal with prejudice
`
`and deny Structural Wrap any relief by way of its Counterclaims;
`
`B.
`
`Enter a judgment that Stormseal has not infringed, does not infringe, does
`
`not induce infringement of, and does not contribute to the infringement of any valid and
`
`enforceable claim of the ’312 Patent;
`
`C.
`
` Award Stormseal attorney’s fees under 35 U.S.C. § 285 along with
`
`Stormseal’s costs; and
`
`D.
`
`Award Stormseal such further relief as this Court may deem just and proper.
`
`
`
`
`
`
`
`Dated: April 10, 2023
`
`
`
`
`
`
`
`
`DUANE MORRIS LLP
`
`
`
`By: /s/ Stephanie Vazquez
`Stephanie Vazquez (FL Bar 1011124)
`SVazquez@duanemorris.com
`DUANE MORRIS LLP
`201 S. Biscayne Boulevard, Suite 3400
`Miami, FL 33131-4325
`Tel:
`(305) 960-2200
`Fax:
`(305) 960-2201
`
`
`
`David J. Wolfsohn (pro hac vice)
`DJWolfsohn@duanemorris.com
`Joseph Powers (pro hac vice)
`JAPowers@duanemorris.com
`Tyler Marandola (pro hac vice)
`TMarandola@duanemorris.com
`DUANE MORRIS LLP
`30 S. 17th Street
`Philadelphia, PA 19103
`Tel:
`(215) 979-1000
`Fax:
`(215) 979-1020
`
`Attorneys for Plaintiffs
`
`
`
`.
`
`9
`
`Exhibit 2011, Page 9 of 10
`IPR2024-00084
`
`

`

`Case 9:22-cv-81726-AHS Document 44 Entered on FLSD Docket 04/10/2023 Page 10 of 10
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on April 10, 2023 a true and correct copy of the foregoing was filed
`
`electronically with the Clerk of the Court using the Case Management/Electronic Case Files
`
`(“CM/ECF”) System. Notice of this filing will be sent by operation of the Court’s electronic filing
`
`system to all parties indicated on the electronic filing receipts. Parties may access this filing
`
`through the Court’s system.
`
`
`/s/ Stephanie Vazquez
`Stephanie Vazquez
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`10
`
`Exhibit 2011, Page 10 of 10
`IPR2024-00084
`
`

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