IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF PENNSYLVANIA 

TOLEDO MACK SALES & : 

SERVICE, INC., : 

 : 

 Plaintiff, : Civil Action No. 2:02-CV-04373-RLB 

 : 

 v. : 

 : JURY TRIAL DEMANDED 

MACK TRUCKS, INC., : 

 : 

 Defendant. : 

_____________________________________________________________________________ 

MACK TRUCKS, INC., : 

 : 

 Counterclaim : 

 Plaintiff, : 

 : 

 v. : 

 : JURY TRIAL DEMANDED 

 : 

TOLEDO MACK SALES & SERVICE, : 

INC., : 

 : 

 Counterclaim : 

 Defendant. : 

AMENDED ANSWER OF COUNTERCLAIM DEFENDANT 

TOLEDO MACK SALES & SERVICE, INC. TO FIRST 

AMENDED COUNTERCLAIMS OF DEFENDANT MACK TRUCKS, INC.

 Counterclaim Defendant Toledo Mack Sales and Service, Inc. (“Toledo Mack”), 

by and through its undersigned counsel, hereby submits its Answer to the First Amended 

Counterclaims of Defendant Mack Trucks, Inc. (“Mack”). 

PARTIES

1. Admitted. 

2. Admitted. 

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JURISDICTION AND VENUE

3. This paragraph contains conclusions of law to which no response is 

required. 

4. This paragraph contains conclusions of law to which no response is 

required. 

5. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, they are denied. 

FACTUAL BACKGROUND

6. Admitted. 

7. Admitted. 

8. It is admitted that Mack and the distributor community work together to 

promote Mack products. It is denied that Mack regularly entrusts its distributors with 

confidential or proprietary materials. Toledo Mack is without knowledge or information 

sufficient to form a belief as to the truth of the rest of the matters asserted in this paragraph, and 

they are therefore denied. 

9. It is admitted that the after-market is competitive and comprised of namebrand manufacturers and manufacturers of generic parts. Toledo Mack is without knowledge or 

information sufficient to form a belief as to the truth of the rest of the matters asserted in this 

paragraph, and they are therefore denied. 

10. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

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11. It is admitted that the MACSPEC 2001 system is comprised of 28 CD 

Rom disks containing parts configuration data. As to the remaining allegations in this paragraph, 

Toledo Mack is without knowledge or sufficient information to form a belief as to the truth of 

these allegations, and they are therefore denied. 

12. It is admitted that MACSPEC 2001 allows distributors to search quickly 

for parts necessary to meet a particular customer’s needs. As to the remaining allegations in this 

paragraph, Toledo Mack is without knowledge or information sufficient to form a belief as to the 

truth of these allegations, and they are therefore denied. 

13. It is denied that the compilation of data and software codes give Mack and 

its distributors a significant competitive edge. As to the remaining allegations in this paragraph, 

Toledo Mack is without knowledge or information sufficient to form a belief as to the truth of 

these allegations, and they are therefore denied. 

14. Toledo Mack is without knowledge or sufficient information to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

15. It is admitted that the MACSPEC 2001 system includes “unlock codes.” 

It is further admitted that each “unlock code” is specific to each copy of the MACSPEC 2001 

system, and that each “unlock code” integrates itself onto the computer hard drive on which it is 

first used, such that it can never be used on any other computer. Further, it is admitted that an 

“unlock code” can be assigned only once, during the first use of MACSPEC 2001 on the 

computer on which it is first installed. As to the remaining allegations in this paragraph, Toledo 

Mack is without knowledge or information sufficient to form a belief as to the truth of these 

allegations, and they are therefore denied. 

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16. It is admitted that Mack has authorized GGS to distribute unlock codes. 

As to the remaining allegations in this paragraph, Toledo Mack is without knowledge or 

information sufficient to form a belief as to the truth of these allegations, and they are therefore 

denied. 

17. It is admitted that dealers are permitted to order more than one copy of 

MACSPEC 2001. The remaining allegations of this paragraph are denied. 

18. It is admitted that for each new copy of the system, the user receives a new 

unlock code. As to the remaining allegations in this paragraph, Toledo Mack is without 

knowledge or information sufficient to form a belief as to the truth of these allegations, and they 

are therefore denied. 

TOLEDO MACK’S LICENSING OF MACSPEC 2001

19. Denied. There is no license agreement between Toledo Mack and Mack 

for MACSPEC 2001. By way of further answer, in February 1996, Toledo Mack entered into a 

license agreement with Mack for MACSPEC II, not MACSPEC 2001. Toledo Mack terminated 

the license agreement for MACSPEC II in January 2001 and returned the MACSPEC II software 

to Mack at that time. In early 2002, Toledo Mack ordered copies of MACSPEC 2001, but never 

entered into a license agreement with Mack for that software. 

20. Denied. By way of further response, the language misquoted by Mack in 

this paragraph is from the MACSPEC II license agreement between Toledo Mack and Mack. 

This language actually uses the word “SOFTWARE” (defined by the MACSPEC II license 

agreement to be “[t]he MACSPEC II parts information system, consisting of both the operating 

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software and the parts database on CD-ROM.”) in place of the bracketed phrase “[MACPEC 

2001]” that Mack incorrectly uses. 

21. Denied. 

22. Denied. 

TOLEDO MACK AND PAI CONSPIRE TO STEAL MACSPEC 2001

23. It is denied that Toledo Mack secretly conspired with PAI to steal and 

misappropriate MACSPEC 2001. Toledo Mack is without knowledge or information sufficient 

to form a belief as to the truth of the other allegations in this paragraph, and they are therefore 

denied. 

24. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

25. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

26. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

27. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

28. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

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29. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

30. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

31. It is admitted that Toledo Pack provided MACSPEC 2001 to its customer, 

PAI in exchange for the fair value of MACSPEC 2001. It is denied that this was fraudulent or in 

violation of any license agreement with Mack. To the extent that this paragraph contains any 

additional factual allegations, they are denied. 

MACK CONTINUES TO SUFFER IRREPARABLE HARM

AS A RESULT OF PAI’s THEFT

32. It is denied that Toledo Mack was involved in the theft of the MACSPEC 

2001 system and that Mack has suffered irreparable harm. Toledo Mack is without knowledge 

or information sufficient to form a belief as to the truth of the remaining matters asserted in this 

paragraph, and they are therefore denied. 

33. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, they are denied. 

34. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, they are denied. It is 

specifically denied that Toledo Mack continues to conspire to steal Mack’s trade secrets, 

confidential business information and intellectual property. 

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FURTHER REVELATIONS DURING DISCOVERY OF TOLEDO MACK’S

SALE OF MACK’S TRADE SECRETS AND CONFIDENTIAL INFORMATION

35. It is admitted that Mack filed its original Counterclaims and Motion for 

Preliminary Injunction on August 22, 2002. The remaining allegations of this paragraph are 

denied. It is specifically denied that Toledo Mack was involved with any “ thefts” of Mack’s 

trade secrets and confidential business information. 

36. It is admitted that Toledo Mack provided a copy of MACSPEC 2001 to 

PAI and Northwest Truck Sales of Edmonton, Canada, a customer of Toledo Mack. As to the 

remaining allegations in this paragraph, Toledo Mack is without knowledge or information 

sufficient to form a belief as to the truth of these allegations, and they are therefore denied. 

37. It is admitted that Toledo Mack sold portions of Mack’s microfiche parts 

database to PAI and Illinois Diesel Parts Center, Inc. (“Illinois Diesel”). It is denied that the 

Mack microfiche parts database that Toledo Mack leased from Mack is confidential or 

proprietary. It is admitted that Mack’s microfiche parts database contains drawings and 

diagrams for Mack trucks. It is admitted that Illinois Diesel is a PAI distributorship. It is further 

admitted that Paul Palmer is a former Toledo Mack parts manager, who is now involved with 

Illinois Diesel. Toledo Mack is without knowledge or information sufficient to form a belief as 

to the remaining factual allegations in this paragraph, and they are therefore denied. 

38. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, they are denied. 

39. It is admitted that Toledo Mack sold Mack’s parts price lists to PAI. It is 

denied that these price lists are confidential or secret. 

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40. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, Toledo Mack is without 

knowledge or information sufficient to form a belief as to the truth of the matters asserted in this 

paragraph, and they are therefore denied, however it is specifically denied that the costs of 

Mack’s parts are not publicly available or published and that such costs are kept confidential. 

41. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, Toledo Mack is without 

knowledge or information sufficient to form a belief as to the truth of the matters asserted in this 

paragraph, and they are therefore denied, however it is specifically denied that Toledo Mack 

participated in a conspiracy to undermine Mack’s position. 

COUNT I (MISAPPROPRIATION OF TRADE SECRETS AND 

CONFIDENTIAL BUSINESS INFORMATION

(AS AGAINST TOLEDO MACK AND PAI)

42. Toledo Mack incorporates paragraphs 1 through 41 of its Answer as if 

fully set forth herein. 

43. It is admitted that the MACSPEC 2001 system consists of a compilation of 

information about truck parts and computer software to search and use that compilation. As to 

the remaining allegations in this paragraph, Toledo Mack is without knowledge or information 

sufficient to form a belief as to the truth of these allegations, and they are therefore denied. 

44. It is denied that Mack’s parts price lists are confidential. Toledo Mack is 

without knowledge or information sufficient to form a belief as to the truth of the remaining 

allegations in this paragraph, and they are therefore denied. 

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45. It is admitted that Mack distributes individual copy-specific unlock codes 

for MACSPEC 2001. The remaining allegations in this paragraph are denied. It is specifically 

denied that the information on the MACSPEC 2001 system is confidential and proprietary to 

Mack. 

46. Denied. 

47. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, they are denied. 

48. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, they are denied. 

49. Denied. 

50. Denied. 

51. Denied. 

52. It is admitted that Toledo Mack distributed one copy of the MACSPEC 

2001 system to PAI. It is denied that Toledo Mack provided PAI with the necessary unlock code 

to access the system. It is further denied that it was a breach of any agreement or confidence for 

Toledo Mack to provide PAI with a copy of the MACSPEC 2001 system. To the extent that this 

paragraph contains additional factual allegations, they are denied. 

53. It is admitted that Toledo Mack provided PAI with a Mack parts price list 

of the service dealer variety on one occasion. It is also admitted that Toledo Mack provided 

portions of the microfiche databases to PAI. It is denied that this was a breach of any confidence 

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Mack reposed in Toledo Mack. To the extent that this paragraph contains additional factual 

allegations, they are denied. 

54. It is specifically denied that Toledo Mack participated in any “theft” of the 

MACSPEC 2001 system. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the remaining allegations in this paragraph, and they are therefore denied. 

55. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, they are denied. It is 

specifically denied that Toledo Mack’s distribution of MACSPEC 2001 violated Mack’s 

confidence and the License Agreement. 

56. Denied. 

57. Denied. 

58. Denied. 

COUNT II (COPYRIGHT INFRINGEMENT)

(AS AGAINST TOLEDO MACK AND PAI)

59. Toledo Mack incorporates paragraphs 1 through 58 of its Answer as if 

fully set forth herein. 

60. It is admitted that MACSPEC 2001 is a computer program. Toledo Mack 

is without knowledge or information sufficient to form a belief as to the truth of the remaining 

allegations in this paragraph, and they are therefore denied. 

61. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

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62. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

63. Toledo Mack is without knowledge or information sufficient to form a 

belief as to the truth of the matters asserted in this paragraph, and they are therefore denied. 

64. It is admitted that Toledo Mack distributed MACSPEC 2001 to PAI. It is 

denied that such distribution was without authorization from Mack. To the extent that this 

paragraph contains additional factual allegations, they are denied. 

65. It is admitted that Toledo Mack distributed portions of the microfiche 

parts database to PAI. It is denied that such distribution was without authorization from Mack. 

To the extent that this paragraph contains additional factual allegations, they are denied. 

66. It is denied that PAI induced Toledo Mack to distribute MACSPEC 2001 

to it by offering consideration to Toledo Mack. By way of further answer, PAI paid Toledo 

Mack the fair cost of MACSPEC 2001. To the extent that this paragraph contains additional 

factual allegations, they are denied. 

67. This paragraph contains legal conclusions to which no response is 

required. To the extent that this paragraph contains additional factual allegations, Toledo Mack 

is without knowledge or information sufficient to form a belief as to the truth of such allegations, 

and they are therefore denied. 

68. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, Toledo Mack is without 

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knowledge or information sufficient to form a belief as to the truth of such allegations, and they 

are therefore denied. 

69. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, they are denied. 

70. This paragraph contains conclusions of law to which no response is 

required. To the extent this paragraph contains factual allegations, they are denied. 

COUNT III (BREACH OF CONTRACT)

(AS AGAINST TOLEDO MACK)

71. Toledo Mack incorporates paragraphs 1 through 70 of its Answer as if 

fully set forth herein. 

72. Denied. 

73. Denied. 

74. It is admitted that Toledo Mack distributed MACSPEC 2001 to PAI. It is 

denied that this was a breach of any agreement with Mack because there is no license agreement 

between Toledo Mack and Mack for MACSPEC 2001. 

75. Denied. It is specifically denied that Toledo Mack ever provided the 

relevant unlock code to PAI. Under Mack’s own description of the “unlock” feature, only Mack 

or its contractor, GSS, can distribute an unlock code during the first use of MACSPEC 2001 on 

the computer on which it is first installed. To the extent that this paragraph contains additional 

factual allegations, they are denied. 

76. Denied. 

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COUNT IV (CIVIL CONSPIRACY)

(AS AGAINST TOLEDO MACK AND PAI)

77. Toledo Mack incorporates paragraphs 1 through 76 of its Answer as if 

fully set forth herein. 

78. Denied. 

79. Denied. 

80. It is admitted that Toledo Mack provided a copy of MACSPEC 2001 to 

PAI. The remaining factual allegations in this paragraph are denied. 

81. Denied. 

82. Denied. 

FIRST AFFIRMATIVE DEFENSE

Mack’s Amended Counterclaims fail to state a claim upon which relief may be granted 

and therefore must be dismissed. 

SECOND AFFIRMATIVE DEFENSE

Mack’s counterclaims fail to state an appropriate claim for declaratory or equitable relief. 

THIRD AFFIRMATIVE DEFENSE

Mack has suffered no damages. 

FOURTH AFFIRMATIVE DEFENSE

Mack's counterclaims are barred by Mack's consent. 

FIFTH AFFIRMATIVE DEFENSE

Mack's counterclaims are barred by Mack's unclean hands. 

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SIXTH AFFIRMATIVE DEFENSE

Mack's counterclaims are barred by the doctrine of estoppel, and by Mack's failure to 

mitigate its alleged damages. 

SEVENTH AFFIRMATIVE DEFENSE

Mack's counterclaims are barred by the doctrine of laches. 

EIGHTH AFFIRMATIVE DEFENSE

Mack's counterclaims are barred by the doctrine of waiver. 

NINTH AFFIRMATIVE DEFENSE

Mack’s counterclaims are barred by the applicable statutes of limitations. 

TENTH AFFIRMATIVE DEFENSE

Mack has failed to allege facts sufficient to establish misappropriation of trade secrets 

and confidential business information. Mack has not alleged facts sufficient to establish the 

existence of trade secrets or any misappropriation by Toledo Mack. 

ELEVENTH AFFIRMATIVE DEFENSE

Mack has not suffered irreparable injury. 

TWELFTH AFFIRMATIVE DEFENSE

Mack has not stated a claim upon which punitive damages may be awarded. 

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PRAYER FOR RELIEF

WHEREFORE, Toledo Mack requests the following relief on all claims and 

counterclaims in this action: 

1. That the Court dismiss Mack’s counterclaim’s with prejudice. 

2. That the Court award Toledo Mack relief on all of its claims. 

3. For compensatory, general, special, statutory, and other damages in an amount to 

be determined according to the proofs presented during the course of trial; 

4. For double damages; 

5. For treble damages; 

6. For punitive damages in an amount to be determined according to the proofs 

presented during the course of trial; 

7. For costs and attorneys’ fees; 

8. For a preliminary and permanent injunction enjoining MTI from engaging in 

unfair competition with Toledo Mack in violation of Section 4517.59 of the Ohio Revised Code 

Annotated; 

9. For a preliminary and permanent injunction enjoining MTI from making direct 

sales to retail customers other than through its franchised dealers in violation of Section 

445.1574 of the Michigan Franchise Investment Law. 

10. For a declaration that, pursuant to its Distributor Agreement with Toledo Mack 

and any other legal duties that MTI owes to Toledo Mack, MTI must distribute Mack trucks and 

components exclusively through franchised Mack dealers, and that MTI must not sell Mack 

trucks or components directly to body manufacturers, other National Accounts, or other 

non-public purchasers; 

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11. For such other relief as the Court deems necessary, just and appropriate under the 

circumstances. 

JURY TRIAL DEMAND

Plaintiff demands a trial by jury on any and all claims for which adjudication by jury may 

be appropriate. 

 Respectfully Submitted, 

Dated: January 13, 2004 _________________________ 

 Wayne A. Mack 

 J. Manly Parks 

 Keith J. Verrier 

 Marcella E. McIntyre 

 DUANE MORRIS LLP 

 One Liberty Place 

 Philadelphia, PA 19103 

 Phone: 215-979-1152/1342/1133/1167 

 Fax: 215-979-1020 

 Attorneys for Plaintiff Toledo Mack 

 Sales & Service, Inc. 

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Certificate of Service

I hereby certify that on January 13, 2004, a true and correct copy of the foregoing Answer 

of Counterclaim Defendant Toledo Mack Sales & Service, Inc. To First Amended Counterclaims 

of Defendant Mack Trucks, Inc. was served via hand delivery upon the following: 

 Jeremy Heep, Esquire 

 Pepper Hamilton LLP 

 3000 Two Logan Square 

 Eighteenth and Arch Streets 

 Philadelphia, PA 19103-2799 

 _____________________________ 

 Marcella E. McIntyre, Esquire 

PH2\749563.2 

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