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UNITED STATES DISTRICT COURT 

DISTRICT OF NEW HAMPSHIRE 

Zipher Ltd. and Videojet Technologies, Inc., 

 Plaintiffs, 

v. 

Markem Corporation, 

 Defendant. 

NH Civil Action No. 07-cv-85-PB 

 (formerly WI case No. 06-C-0745-S) 

DEFENDANT MARKEM’S ANSWER TO PLAINTIFFS’ FIRST AMENDED 

COMPLAINT TRANSFERRED FROM THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF WISCONSIN 

(FORMERLY WI CASE NO. 06-C-0745-S)

NOW COMES Defendant Markem Corporation (“Markem”), by its attorneys Fish & 

Richardson P.C. and Hinckley, Allen & Snyder LLP, pursuant to Rules 8 and 12(a)(4)(A) of the 

Federal Rules of Civil Procedure, responding to Zipher Ltd. (“Zipher”) and Videojet 

Technologies, Inc.’s (“Videojet”) (collectively “Plaintiffs”) First Amended Complaint for Patent 

Infringement, filed in the United States District Court for the Western District of Wisconsin and 

assigned Civil Action No. 06-C-0745-S (the “Wisconsin Suit”). 

On March 16, 2007, District Court Judge John Shabaz granted in part Markem’s Motion 

to Dismiss, or in the Alternative, Transfer, and transferred the Wisconsin Suit to the United 

States District Court for the District of New Hampshire. On March 28, 2007, this Court 

docketed and designated the transferred case as NH Civil Action No. 07-cv-85-PB (formerly WI 

case No. 06-C-0745-S). On March 29, 2007, the Court granted the parties’ motion to extend the 

due date for Markem’s Answer to April 11, 2007. 

Markem denies each and every allegation contained in the Amended Complaint that is 

not expressly admitted below. Any factual allegation admitted below is admitted only as to the 

specific admitted facts, not as to any purported conclusions, characterizations, implications, or 

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speculations that arguably follow from the admitted facts. Markem denies that Plaintiffs are 

entitled to the relief requested or any other. 

1. Markem admits that Plaintiffs’ Amended Complaint purports to state a claim for 

patent infringement, but denies that any bases exist for any such claims against Markem. 

Markem admits that this Court has subject matter jurisdiction over the action. 

2. Markem admits that this judicial district is one in which venue is proper with 

respect to Markem. Markem denies the remaining allegations of paragraph 2. 

3. Markem is without information or knowledge sufficient to form a belief as to the 

truth or falsity of the allegations of paragraph 3, and therefore denies the allegations. 

4. Markem is without information or knowledge sufficient to form a belief as to the 

truth or falsity of the allegations of paragraph 4, and therefore denies the allegations. 

5. Admitted. 

6. Admitted. 

7. Admitted. 

8. Denied. 

9. Markem admits that United States Patent No. 7,150,572 (the “’572 patent”) is 

entitled “Tape Drive and Printing Apparatus,” and was issued by the United States Patent and 

Trademark Office on December 19, 2006. Markem denies that the ‘572 patent was duly and 

legally issued by the United States Patent and Trademark Office. 

10. Markem is without information or knowledge sufficient to form a belief as to the 

truth or falsity of the allegations of paragraph 10, and therefore denies these allegations. 

11. Markem is without information or knowledge sufficient to form a belief as to the 

truth or falsity of the allegations of paragraph 11, and therefore denies these allegations. 

12. Markem is without information or knowledge sufficient to form a belief as to the 

truth or falsity of the allegations of paragraph 12, and therefore denies these allegations. 

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RESPONSE TO PLAINTIFFS’ REQUEST FOR RELIEF 

13. Markem incorporates by reference the preceding paragraphs 1-12 as if fully set 

forth herein. 

14. Denied. 

15. Markem denies that it offered to sell or sold SmartDate®5 printers in the Western 

District of Wisconsin to DoBoy Packaging Machinery, Inc. in New Richmond, Wisconsin, from 

December 19, 2006 through March 16, 2007. With regard to the allegations that “DoBoy 

includes SmartDate®5 printers in packaging equipment that is made by DoBoy in Wisconsin and 

offered for sale and/or sold to DoBoy end use customers in this judicial district, as well as 

elsewhere in Wisconsin and the United States,” Markem is without information or knowledge 

sufficient to form a belief as to the truth or falsity of the these allegations, and therefore denies 

these allegations. 

16. Markem denies that it offered to sell or sold SmartDate®5 printers in the Western 

District of Wisconsin to Matrix Packaging Machinery, Inc. in Saukville, Wisconsin, from 

December 19, 2006 through March 16, 2007. With respect to the allegations that “Matrix 

includes SmartDate®5 printers in packaging equipment that is made by Matrix in Wisconsin and 

offered for sale and/or sold to Matrix end use customers in this judicial district, as well as 

elsewhere in Wisconsin and the United States,” Markem is without information or knowledge 

sufficient to form a belief as to the truth or falsity of these allegations, and therefore denies these 

allegations. 

17. Denied. 

18. Denied. 

RESPONSE TO PLAINTIFFS’ PRAYER FOR JUDGMENT AND RELIEF

19. Markem denies that Plaintiffs are entitled to any relief whatsoever in this action, 

either as prayed for in its Amended Complaint or otherwise. 

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AFFIRMATIVE DEFENSES

First Affirmative Defense 

20. Markem does not infringe and has not infringed any claims of the ‘572 patent, 

either directly, contributorily, or by inducement. 

Second Affirmative Defense 

21. The claims of the ‘572 patent are invalid because they fail to satisfy the conditions 

for patentability specified in Title 35 of the United States Code, §§101, 102, 103, and 112. 

Third Affirmative Defense 

22. The ‘572 patent is unenforceable against Markem, including pursuant to the 

doctrine of shop rights. 

Markem reserves the right to assert any additional defenses to Plaintiffs’ claims as they 

become known or apparent. 

PRAYER FOR RELIEF

 WHEREFORE, Markem respectfully requests that this Court enter judgment in 

Markem’s favor against Zipher and Videojet, and issue an order: 

A. That Zipher and Videojet take nothing by their Amended Complaint; 

B. Entering judgment against Zipher and Videojet and in favor of Markem and 

dismissing Zipher and Videojet’s Amended Complaint with prejudice; 

C. Awarding Markem’s costs and attorneys’ fees incurred in defending this action; 

and 

D. Awarding any other such relief as is just and proper. 

JURY DEMAND 

Pursuant to Rule 30 of the Federal Rules of Civil Procedure, Markem hereby requests a 

trial by jury for all issues so triable. 

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Dated: April 11, 2007 Respectfully submitted, 

By: /s/ Daniel M. Deschenes 

 Christopher H.M. Carter, Esq. (Bar No. 12452) 

Daniel M. Deschenes, Esq. (Bar No. 14889) 

HINCKLEY, ALLEN & SNYDER, LLP 

43 North Main Street 

Concord, NH 03301 

Telephone: (603) 225-4334 

Facsimile: (603) 224-8350 

Of counsel:

Kurt L. Glitzenstein 

Peter J. Kirk (Bar No. 14909) 

Michael S. Forman 

FISH & RICHARDSON P.C. 

225 Franklin Street 

Boston, MA 02109 

Telephone: (617) 542-5070 

Facsimile: (617) 542-8906 

Attorneys for Defendant 

MARKEM CORPORATION 

CERTIFICATE OF SERVICE

I certify that on this date a true and accurate copy of the foregoing was served upon Larry 

S. Nixon and Daniel J. Bourque via CM/ECF. 

/s/ Daniel M. Deschenes 

Daniel M. Deschenes 

637022v1 

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