IN THE UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

____________________________________

)

MEDTECH PRODUCTS INC., )

)

Plaintiff, )

)

v. )

)

RANIR, LLC and ) Civil Action No. 07 CV 03302-UA-LMS

CVS PHARMACY, INC. )

)

Defendant. ) PLAINTIFF MEDTECH PRODUCTS

____________________________________) INC.’S ANSWER TO

) DENTEK ORAL CARE, INC.’S

MEDTECH PRODUCTS INC., ) COUNTERCLAIM

)

Plaintiff, )

) ECF FILED

v. )

)

DENTEK ORAL CARE, INC., )

)

Defendant. )

____________________________________)

)

MEDTECH PRODUCTS INC., )

)

Plaintiff, )

)

v. )

)

POWER PRODUCTS, INC. )

d/b/a SPLINTEK, )

)

Defendant. )

____________________________________)

Plaintiff/Counter-Defendant Medtech Products Inc. (“Medtech”) hereby submits the

following Answer to Defendant/Counter-Plaintiff DenTek Oral Care, Inc.’s (“DenTek”)

Counterclaim:

Case 7:07-cv-03302-KMK-LMS Document 32 Filed 06/19/2007 Page 1 of 7
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FIRST AFFIRMATIVE DEFENSE

DenTek’s Counterclaim fails to state a claim against Medtech upon which relief can be

granted.

SECOND AFFIRMATIVE DEFENSE

DenTek’s claims are barred in whole or in part by the equitable doctrines of waiver

and/or estoppel.

THIRD AFFIRMATIVE DEFENSE

DenTek’s claim for costs and attorney’s fees is barred because it lacks basis in law or

contract.

FOURTH AFFIRMATIVE DEFENSE

Medtech reserves the right to amend its answer to assert additional defenses if discovery

yields additional information warranting such amendment.

FIFTH AFFIRMATIVE DEFENSE

DenTek’s claims are barred to the extent they seek injunctive relief, as DenTek has not

suffered and will not suffer irreparable harm; DenTek is not likely to succeed on the merits of its

claims; and the public interest would not be served by granting DenTek’s request.

SIXTH AFFIRMATIVE DEFENSE

DenTek’s claims are barred by the doctrine of unclean hands.

ANSWER

In response to the numbered paragraphs of DenTek’s Counterclaim, Medtech states as

follows:

PARTIES

1. Admitted.

2. Admitted.

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JURISDICTION AND VENUE

3. In response to the allegations in Paragraph 3 of the Counterclaim, Medtech avers

that this Court has subject matter jurisdiction and personal jurisdiction over this action.

4. In response to the allegations in Paragraph 3 of the Counterclaim, Medtech avers

that venue is proper in this Court.

COUNT I

(Non-infringement of U.S. Patent No. 6,830,051)

5. Medtech incorporates by reference its responses to all previous allegations of the

Counterclaim.

6. In response to the allegations of Paragraph 6 of the Counterclaim, Medtech states

that the Medtech NIGHTGUARDTM dental protector is covered by U.S. Patent No. 6,830,051,

issued by the U.S. Patent and Trademark Office on December 14, 2004 (the “’051 Patent”). A

true and correct copy of the ‘051 Patent was attached to Medtech’s Complaint as Exhibit D (Case

No. 07-cv-03304, Docket No. 1). The ‘051 Patent is valid and is subsisting in full force and

effect, and Medtech is the current assignee of all rights under the ’051 Patent. Medtech has

complied with all appropriate requirements to maintain the validity and effect of the ’051 Patent.

Further, Medtech states that DenTek manufactures, makes, has made, uses, assembles, sells

and/or offers for sale a dental protector that infringes one or more claims in the ’051 Patent,

literally and/or under the doctrine of equivalents and/or induces or contributes to the

infringement of one or more claims in the ’051 Patent by others, including but not limited to

retailers and consumers who buy DenTek’s product. The remaining statements in Paragraph 6 of

the Counterclaim are denied.

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7. It is admitted that there is an actual, substantial and continuing justiciable

controversy between DenTek and Medtech regarding DenTek’s infringement of the ’051 Patent.

The remaining allegations of Paragraph 7 are denied.

8. Denied.

9. Denied.

COUNT II

(Invalidity and/or Unenforceability of U.S. Patent No. 6,830,051)

10. Medtech incorporates by reference its responses to all previous allegations of the

Counterclaim.

11. Denied.

12. Denied.

COUNT III

(Non-existence and Non-infringement of Medtech Trademark Rights)

13. Medtech incorporates by reference its responses to all previous allegations of the

Counterclaim.

14. In response to the allegations of Paragraph 14 of the Counterclaim, Medtech

states that it presently owns a pending federal trademark application for its NIGHTGUARDTM

mark (NIGHTGUARD, Ser. No. 77/056,556, United States Patent and Trademark Office

(“USPTO”)). Medtech states that the USPTO Office Action is a document that speaks for itself

and Medtech denies any statement to the extent that it is contrary to or mischaracterizes the

Office Action. Further, Medtech expressly denies that the NIGHTGUARDTM mark is

“commonly descriptive”. The remaining statements in Paragraph 14 of the Counterclaim are

denied.

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15. Denied.

16. Denied.

COUNT IV

(Non-infringement of U.S. Copyright TX 6-536-309)

17. Medtech incorporates by reference its responses to all previous allegations of the

Counterclaim.

18. In response to the allegations of Paragraph 18 of the Counterclaim, Medtech

states that it owns a federal copyright registration for its packaging and “At-Home Fitting

Instructions” insert, as reflected in U.S. Reg. No. TX 6-536-309, issued by the U.S. Register of

Copyrights on April 23, 2007 (the “Copyright Registration”). A true and correct copy of the

Copyright Registration was attached to the Amended Complaint as Exhibit E (Case No. 07-cv03304, Docket No. 1). The Copyright Registration is valid and is subsisting in full force and

effect. Further, Medtech states that DenTek has copied substantial portions of Medtech’s

copyrighted material, as identified in the Copyright Registration, and that DenTek’s conduct

infringes upon and violates the exclusive rights belonging to Medtech as owner of the work

identified in the Copyright Registration, including, without limitation, Medtech's rights under 17

U.S.C. § 106. The remaining statements in Paragraph 18 of the Counterclaim are denied.

19. Admitted that there is an actual, substantial and continuing justiciable controversy

between DenTek and Medtech regarding the DenTek’s infringement of TX 6-536-309

registration. The remaining allegations of Paragraph 19 are denied.

20. Denied.

21. Denied.

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COUNT V

(Invalidity and/or Unenforceability of U.S. Copyright TX 6-536-309)

22. Medtech incorporates by reference its responses to all previous allegations of the

Counterclaim.

23. Denied.

24. Denied.

25. Medtech denies DenTek is entitled to any of the relief sought in the Counterclaim.

26. Medtech denies each and every factual allegation and factual and legal conclusion

contained in the Counterclaim, not heretofore admitted, denied or explained.

PRAYER FOR RELIEF

AND NOW HAVING FULLY ANSWERED, Medtech prays:

1. That DenTek’s Counterclaim be dismissed with prejudice;

2. That Medtech recover its lawful costs and attorneys’ fees in this cause; and

3. For such other and further relief as the Court may deem just.

Dated: June 19, 2007

Respectfully submitted,

ALSTON & BIRD LLP

By: s/ Amy Manning

Karl Geercken (KG 5897)

Amy Manning (AM 0338)

90 Park Avenue

New York, New York 10016-1387

(212) 210-9471 (phone)

(212) 210-9444 (facsimile)

karl.geercken@alston.com

amy.manning@alston.com

Case 7:07-cv-03302-KMK-LMS Document 32 Filed 06/19/2007 Page 6 of 7
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W. Edward Ramage, TN BPR No. 16261

BAKER, DONELSON, BEARMAN,

CALDWELL & BERKOWITZ, P.C.1800

Commerce Center, Suite 1000

211 Commerce Street

Nashville, Tennessee 37201

(615) 726-5600

eramage@bakerdonelson.com

Admitted Pro Hac Vice

Micheline Kelly Johnson, TN BPR No.

13847

Clinton P. Sanko, TN BPR No. 23354

BAKER, DONELSON, BEARMAN,

CALDWELL & BERKOWITZ, P.C.

1800 Republic Centre

633 Chestnut Street

Chattanooga, Tennessee 37450-1800

(423) 756-2010

mjohnson@bakerdonelson.com

csanko@bakerdonelson.com

Admitted Pro Hac Vice

Of Counsel:

Todd R. David , GA BPR No. 206526

ALSTON & BIRD LLP

One Atlantic Center

1201 West Peachtree Street

Atlanta, Georgia 30309-3424

todd.david@alston.com

Carl M. Davis II, GA Bar Number 207710

BAKER, DONELSON, BEARMAN,

CALDWELL & BERKOWITZ, P.C.1800

Six Concourse Parkway

Suite 3100

Atlanta, Georgia 30328

(678) 406-8700

cdavis@bakerdonelson.com

Attorneys for Plaintiff

Medtech Products Inc.

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