Opinion
CASE NO. 6:01 (CV-1036-ORL19-JGG)
February 26, 2002
Lori T. Milvain, Esq., HOLLAND KNIGHT LLP, Orlando, FL, Local Counsel for Plaintiff
Lee F. Grossman, Gina M. Steele, MARSHALL, GERSTEIN BORUN, Chicago, Illinois, Trial Counsel for Plaintiff
1. Rockwell International Corporation repeats and alleges the answers to paragraphs 1-11 of the Complaint and its first through fifth additional defenses.
ANSWER: Plaintiff Golden Voice Technology Training, L.L.C., ("Golden Voice") repeats and re-alleges the allegations made in paragraphs 1-11 of the Complaint, denies any allegations or assertions in Defendant Rockwell International Corporation's ("Rockwell") answers to paragraphs 1-11 that are anything other than an admittance and denies all assertions made in Rockwell's first through fifth additional defenses.
2. Rockwell International Corporation is a Delaware Corporation having a place of business at 777 East Wisconsin Avenue, Suite 1400, Milwaukee, Wisconsin 53202.
ANSWER: Golden Voice admits the allegations in paragraph 2 of Rockwell's Counterclaim.
3. Based on the statements made in paragraph 1 of the Complaint, Counterdefendant Golden Voice Technology, L.L.C. ("Golden") is a Delaware limited liability company having a principal place of business at 250 Perimeter Center, 4450 West Eau Gallie Boulevard, Melbourne, Florida 32934.
ANSWER: Golden Voice admits the allegations contained in Paragraph 3 of Rockwell's Counterclaim.
4. If this Court finds that it has jurisdiction of the Complaint, which Rockwell International Corporation denies, then this Court has jurisdiction over the subject matter of this counterclaim under 28 U.S.C. § 1331, 1338(a), 2201 and 2202 because this action arises under the patent laws of the United States, Title 35, United States Code.
ANSWER: Golden Voice admits the allegations in Paragraph 4 of Rockwell's Counterclaim, except to the extent that Rockwell denies that this court has jurisdiction of the Complaint. Golden Voice asserts that jurisdiction is proper in this Court.
5. This Court has jurisdiction over Golden because Golden filed the instant action in this Court.
ANSWER: Golden Voice admits the allegations in Paragraph 5 of Rockwell's Counterclaim.
6. If this Court finds that it has jurisdiction, which Rockwell International Corporation denies, then venue is proper in this Court under 28 U.S.C. § 1391 (b), 1391(c) and 1400(b).
ANSWER: Golden Voice admits the allegations in Paragraph 6 of Rockwell's Counterclaim, except to the extent that Rockwell denies that this court has jurisdiction of the Complaint. Golden Voice asserts that jurisdiction is proper in this Court.
7. As evidenced by the averments made in Golden's Complaint, and Rockwell International Corporation's answers to those averments, there is an actual and justiciable controversy between Rockwell International Corporation and Golden with respect to whether Rockwell International Corporation and/or one of its subsidiaries is licensed to make, use, sell and offer to sell products Golden asserts are covered by U.S. Patent Nos. 4,623,761; 4,697,282; and 4,734,930, and a justiciable controversy with respect to non-infringement, invalidity, and laches.
ANSWER: Golden Voice admits that there is an actual and justiciable controversy between Golden Voice and Rockwell with respect to whether certain products Rockwell has made, used, sold, or offered to sell are covered by the license agreement between Golden Voice and Rockwell and/or U.S. Patent Nos. 4,623,761; 4,697,282; and 4,734,930 and a justiciable controversy with respect to laches. Golden Voice denies that there is a justiciable controversy with respect to non-infringement and invalidity because Rockwell is estopped from asserting these defenses because of the res judicata effect of the consent judgment in case number 94-680-CIV-ORL-19 between Rockwell and Golden Enterprises, Inc, which was Golden Voices predecessor in interest of U.S. Patent Nos. 4,623,761; 4,697,282; and 4,734,930.
8. Rockwell International Corporation and/or at least one of its subsidiaries is licensed under the 1996 Settlement Agreement to make, use, sell, or offer to sell products that Golden has asserted are covered by U.S. Patent Nos. 4,623,761; 4,697,282; and 4,734,930.
ANSWER: Golden Voice only admits that there is a license agreement under the 1996 Settlement Agreement that allows Rockwell International Corporation to make, use, sell, or offer to sell products "incorporating a prerecorded response system for telephone operators" that are covered by U.S. Patent Nos. 4,623,761; 4,697,282; and 4,734,930, "if and only if the number of prerecorded response messages accessible by an operator at any operator position does not exceed six (6)."
9. Rockwell International Corporation does not infringe any valid claim of U.S. Patent Nos. 4,623,761; 4,697,282, or 4,734,930 by making, using offering for sale, selling or using telephone operator voice storage and retrieval systems either directly, contributorily or by inducement.
ANSWER: Golden Voice denies the allegations of Paragraph 9 of Rockwell's Counterclaim.
10. A reasonable opportunity for investigation or discovery is likely to provide evidentiary support that United States Pat. Nos. 4,623,761; 4,697,282; or 4,734,930 are invalid for failure to comply wit one or more conditions for patentability set forth in Part II of Title 35 of the United States Code. 35 U.S.C. § 101, et seq., and 35 U.S.C. § 282, including, without limitation, 35 U.S.C. § 101, 102, 103, and 112.
ANSWER: Golden Voice denies the allegations of Paragraph 10 of Rockwell's Counterclaim.
11. A reasonable opportunity for investigation or discovery is likely to provide evidentiary support that United States Pat. Nos. 4,623,761; 4,697,282; or 4,734,930 are unenforceable for failure to comply with one or more conditions for patentability set forth in Part II of Title 35 of the United States Code. 35 U.S.C. § 101, et seq., and 35 U.S.C. § 282, including, without limitation, 35 U.S.C. § 101, 102, 103, and 112.
ANSWER: Golden Voice denies the allegations of Paragraph 11 of Rockwell's Counterclaim.
12. Golden brought this action with full knowledge that United States Pat. Nos. 4,623,761; 4,697,282; ro 4,734,930 are invalid and/or unenforceable and not infringed.
ANSWER: Golden Voice denies the allegations of Paragraph 12 of Rockwell's Counterclaim.
13. This case is exceptional under 35 U.S.C. § 285. and Rockwell International Corporation is entitled to an award of its reasonable attorneys' fees.
ANSWER: Golden Voice denies the allegations of Paragraph 13 of Rockwell's Counterclaim.
First Affirmative Defense
Defendant Rockwell is estopped from arguing that Golden Voice's Patents are invalid, unenforceable or noninfringed because of the res judicata effect of the consent judgment in case number 94-680-CIV-ORL-19 between Rockwell and Golden Enterprises, Inc., which was Golden Voices predecessor in interest of U.S. Patent Nos. 4,623,761; 4,697,282; and 4,734,930.
Second Affirmative Defense
Defendant Rockwell is contractually estopped from arguing that Golden Voice's Patents are invalid, unenforceable or noninfringed because of paragraph 7 of the 1996 Settlement Agreement in case number 94-680-CIV-ORL-19 between Rockwell and Golden Enterprises, Inc, which was Golden Voice's predecessor in interest of U.S. Patent Nos. 4,623,761; 4,697,282; and 4,734,930. See Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362 (Fed. Cir. 2001). Specifically, paragraph 7 of the 1996 Settlement Agreement states, "Rockwell agrees that Rockwell will not itself initiate or directly or indirectly assist others in initiating any reexamination of or opposition to the Licensed Patents or otherwise take any action or assist others in any action adverse to the Licensed Patents absent compulsion of law or governmental agency request."
WHEREFORE, Golden Voice requests the following relief:
1. monetary damages adequate to compensate it for the infringement of Golden's Patents in accordance with 35 U.S.C. § 284;
2. increased damages pursuant to 35 U.S.C. § 284 for Rockwell's willful infringement of Golden's Patents;
3. prejudgment interest in accordance with 35 U.S.C. § 284;
4. costs pursuant to 35 U.S.C. § 284;
5. attorney fees pursuant to 35 U.S.C. § 285 because this case is an exceptional case;
6. judgment dismissing Rockwell's Counterclaim with prejudice;
7. any further relief this Court deems is reasonable and appropriate.