1. 10-13-08Sobolski-Counterclaims1 What is a counterclaim? It is a counterlawsuit - defendant* suing plaintiff* – filed in response to the plantiff’s lawsuit against the defendant. *Please ask me about any word that is *d or CAPITALIZED. Backing up: Basic Lawsuit Terms and Chronology (Instant Civil Procedure) A lawsuit starts when a PLAINTIFF serves* and files* a SUMMONS and COMPLAINT. In the complaint, the PLAINTIFF states its CAUSE(S) OF ACTION against the DEFENDANT. PATENT INFRINGEMENT is a CAUSE OF ACTION. It is a TORT. Defendant MUST* file an ANSWER to a COMPLAINT within 20 days of receiving the SUMMONS and COMPLAINT. FRCivP 12(a)(1).FRCivP 12 An ANSWER is required or the defendant is in DEFAULT. COUNTERCLAIMS need not be asserted. Each patent is a separate cause of action, but all the claims of one patent are included in a single cause of action. Patent infringement suits must be brought in FEDERAL court. Different courts have different jurisdictions*.

2. 10-13-08Sobolski-Counterclaims2 Patent Counterclaims DECLARATORY JUDGMENT* of: –Non-infringement of PO’s patent –Invalidity of PO’s patent –Unenforceability of PO’s patent OTHER COMMON COUNTERCLAIMS Infringement by PO of AI’s patents Antitrust violations Trade secret theft For Civil Procedure Junkies: A ounterclaim (CC) may be “compulsory” or “permissive.” FRCivP 13(a)(1)FRCivP 13 A CC is “compulsory” if - it arises from the “same transaction or occurrence” and - requires no additional parties over which the court lacks jurisdiction. Compulsory counterclaims are waived* if not filed with the Answer.* Permissive counterclaims can be brought at any time. Permissive counterclaims are defined as any counterclaims that are not permissive (!) Q. Which of the above patent counterclaims are COMPULSORY?

3. 10-13-08Sobolski-Counterclaims3 Counterclaims vs. Affirmative Defenses Invalidity and non-infringement are AFFIRMATIVE DEFENSES. (35 USC 282, 2 nd paragraph)35 USC 282 Like COMPULSORY counterclaims, affirmative defenses must be included in the RESPONSIVE PLEADING (Answer) or will be waived. FRCivP 8FRCivP 8 Why file a Counterclaim when the same arguments are already in the Answer? Hint: The answer is NOT that lawyers are paid by the word.

4. 10-13-08Sobolski-Counterclaims4 Counterclaims vs. Answers The plaintiff started the lawsuit. If the plaintiff wants to have its case dismissed, it can. Issues the defendant hoped to have resolved won’t be. The only way the defendant can get around this problem is by having its own lawsuit (=counterclaim). See Cardinal Chemical (508 US 93 (1993)).Cardinal Chemical At the time, the Fed Cir routinely did NOT deal with validity if it found that the patent was not infringed. It would VACATE the not-invalid* determination, rather than reviewing it. (WHY DID IT THINK THAT WAS OK? Hint: The word is “moot.”) The Supreme Court scolded the Fed Cir. If the AI had a counterclaim for INVALIDITY and prevailed, and PO appealed, the Fed Cir must address INVALIDITY. (Not to mention that the Federal Circuit was not the court of last resort, and had an obligation to consider all the appealed issues before it.)