SMART’S COUNTERCLAIMS
1. SMART brings the following counterclaims against Plaintiff:
JURISDICTION AND VENUE
2. This is an action for declaratory relief regarding a United States patent. This Court has jurisdiction over these counterclaims pursuant to 28 U.S.C.
§§ 1331, 1338, and 28 U.S.C. §§ 2201, 2202. An actual, substantial, and continuing justiciable controversy exists between SMART and Plaintiff based on Plaintiff having filed a Complaint against SMART alleging infringement of the ‘108 Patent, with respect to which SMART requires a declaration of its rights by this Court. Specifically, the controversy concerns the non-infringement and invalidity of the ‘108 Patent and Plaintiff’s right to maintain suit for alleged
infringement of the ‘108 Patent.
3. The Court has personal jurisdiction over Plaintiff, as Plaintiff has submitted to the personal jurisdiction of the Court by filing its Complaint here.
4. Venue is proper in this Court because Plaintiff has submitted to the venue of this Court by filing its Complaint here.
5. SMART is a corporation duly organized and existing under the laws of the State of California and has its principal place of business in Newark, CA.
SMART’S ANSWER AND
COUNTERCLAIMS
6. According to Paragraph 6 of the Complaint, Plaintiff is a Delaware company with a place of business located at 16870 West Bernardo Drive, Suite
120, San Diego, CA 92127.
FIRST COUNTERCLAIM – DECLARATION OF NON-INFRINGEMENT
7. SMART realleges Paragraphs 1 through 6, above.
8. Plaintiff’s Complaint alleges that Plaintiff is the assignee and owner of entire right, title, and interest in and to the ‘108 Patent, and has the right to sue and recover for damages and other relief.
9. Plaintiff has brought suit against SMART alleging that SMART infringes the ‘108 Patent.
10. SMART has not infringed any valid claim of the ‘108 Patent.
11. An actual case or controversy exists between SMART and Plaintiff based on Plaintiff having filed its Complaint against SMART alleging infringement of the ‘108 Patent.
12. SMART has been injured and damaged by Plaintiff filing its Complaint asserting infringement of a patent that SMART does not infringe.
13. Declaratory relief is both appropriate and necessary to establish that SMART has not infringed any valid claim of the ‘108 Patent.
SECOND COUNTERCLAIM – DECLARATION OF INVALIDITY
14. SMART realleges Paragraphs 1 through 6, above.
15. SMART is informed and believes and thereon alleges that the ‘108 Patent is invalid and unenforceable for one or more of the reasons alleged in the Defenses contained in SMART’s Answer, which paragraphs are incorporated into this Counterclaim by reference.
16. An actual case or controversy exists between SMART and Plaintiff based on Plaintiff having filed its Complaint against SMART alleging infringement of the ‘108 Patent.
SMART’S ANSWER AND
COUNTERCLAIMS
17. SMART has been injured and damaged by Plaintiff filing its Complaint asserting infringement of an invalid patent.
18. Declaratory relief is both appropriate and necessary to establish that the ‘108 Patent is invalid and thus cannot be asserted against SMART.
PRAYER FOR RELIEF
WHEREFORE, SMART respectfully requests a judgment against Plaintiff as follows:
A. that Plaintiff take nothing by its Complaint in this action;
B. that the Court enter judgment against Plaintiff and in favor of SMART, and that the Complaint in this action be dismissed with prejudice;
C. that the Court enter a judgment that SMART does not infringe any claim of the ‘108 Patent;
D. that the Court enter a judgment that the claims of the ‘108 Patent are invalid;
E. that the Court declare this is an exceptional case under 35 U.S.C. § 285 and award SMART its costs and attorneys’ fees; and that the Court award SMART any and all other relief to which it may be entitled, or which the Court deems just and proper.
DATED: April 28, 2015 KING & SPALDING LLP
By: /s/Kendra Orr _________________
Kendra Orr
Attorneys for Defendant
SMART Modular Technologies, Inc.
