Free Remark - District Court of Delaware - Delaware

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 1 of 16

CLOSED, DISCMAG, JURY, PATENT

U.S. District Court [LIVE] Eastern District of TEXAS LIVE (Marshall) CIVIL DOCKET FOR CASE #: 2:06-cv-00507-TJW-CE

Rembrandt Technologies, LP v. Charter Communications, Inc., et al Assigned to: Judge T. John Ward Referred to: Magistrate Judge Charles Everingham Cause: 35:271 Patent Infringement Plaintiff Rembrandt Technologies, LP

Date Filed: 11/30/2006 Jury Demand: Plaintiff Nature of Suit: 830 Patent Jurisdiction: Federal Question

represented by Max Lalon Tribble, Jr Susman Godfrey LLP 1000 Louisiana Street Ste 5100 Houston, TX 77002-5096 713/651-9366 Fax: 17136546666 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED Andrew Wesley Spangler Brown McCarroll - Longview 1127 Judson Rd - Ste 220 PO Box 3999 Longview, TX 75606-3999 903-236-9800 Fax: 19032368787 Email: [email protected] ATTORNEY TO BE NOTICED Brooke Ashley-May Taylor Susman Godfrey, LLP - Seattle 1201 Third Avenue Suite 3800 Seattle, WA 98101 206/516-3880 Fax: 206/516-3883 Email: [email protected] ATTORNEY TO BE NOTICED Charles Ainsworth Parker Bunt & Ainsworth 100 E Ferguson Suite 1114 Tyler, TX 75702

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 2 of 16

US 903/531-3535 Fax: 903/533-9687 Email: [email protected] ATTORNEY TO BE NOTICED Collin Michael Maloney Ireland Carroll & Kelley 6101 S Broadway Suite 500 Tyler, TX 75703 903/561-1600 Fax: 9035811071 Email: [email protected] ATTORNEY TO BE NOTICED Edgar G Sargent Susman Godfrey, LLP - Seattle 1201 Third Avenue Suite 3800 Seattle, WA 98101 206/516-3804 Fax: 206/516-3883 Email: [email protected] ATTORNEY TO BE NOTICED Elizabeth L DeRieux Brown McCarroll 1127 Judson Rd - Ste 220 PO Box 3999 Longview, TX 75606-3999 903/236-9800 Fax: 9032368787 Email: [email protected] ATTORNEY TO BE NOTICED Franklin Jones, Jr Jones & Jones - Marshall 201 W Houston St PO Drawer 1249 Marshall, TX 75670 903/938-4395 Fax: 9039383360 Email: [email protected] ATTORNEY TO BE NOTICED James Patrick Kelley Ireland Carroll & Kelley 6101 S Broadway Suite 500

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 3 of 16

Tyler, TX 75703 903/561-1600 Fax: 9035811071 Email: [email protected] ATTORNEY TO BE NOTICED Joseph Samuel Grinstein Susman Godfrey - Houston 1000 Louisiana Street Ste 5100 Houston, TX 77002-5096 713/651-9366 Fax: 7136546666 Email: [email protected] ATTORNEY TO BE NOTICED Matthew R Berry Susman Godfrey, LLP - Seattle 1201 Third Avenue Suite 3800 Seattle, WA 98101 206/373-7394 Fax: 206/516-3883 Email: [email protected] ATTORNEY TO BE NOTICED Otis W Carroll, Jr Ireland Carroll & Kelley 6101 S Broadway Suite 500 Tyler, TX 75703 903/561-1600 Fax: 9035811071 Email: [email protected] ATTORNEY TO BE NOTICED Robert Christopher Bunt Parker, Bunt & Ainsworth, P.C. 100 East Ferguson, Ste. 1114 Tyler, TX 75702 903/531-3535 Fax: 903/533-9687 Email: [email protected] ATTORNEY TO BE NOTICED Robert M Parker Parker, Bunt & Ainsworth, P.C. 100 E Ferguson Suite 1114 Tyler, TX 75702

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 4 of 16

903/531-3535 Fax: 9035339687 Email: [email protected] ATTORNEY TO BE NOTICED Sidney Calvin Capshaw, III Brown McCarroll - Longview 1127 Judson Rd - Ste 220 PO Box 3999 Longview, TX 75606-3999 903/236-9800 Fax: 19032368787 Email: [email protected] ATTORNEY TO BE NOTICED Tibor L. Nagy Susman Godfrey - Houston 1000 Louisiana Street Ste 5100 Houston, TX 77002-5096 713/653-7850 Fax: 713/654-6102 Email: [email protected] ATTORNEY TO BE NOTICED V. Defendant Charter Communications, Inc. represented by Allen Franklin Gardner Potter Minton PC 110 N College Suite 500 PO Box 359 Tyler, TX 75710-0359 903/597-8311 Email: [email protected] ATTORNEY TO BE NOTICED Bradford P Lyerla Marshall Gerstein & Borun 233 S Wacker Dr 6300 Sears Tower Chicago, IL 60606-6357 312/474-6300 Fax: 312/474-0448 Email: [email protected] ATTORNEY TO BE NOTICED Charles Edward Juister

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 5 of 16

Marshall Gerstein & Borun 233 S Wacker Dr 6300 Sears Tower Chicago, IL 60606-6357 312/474-6300 Fax: 312/474-0448 Email: [email protected] ATTORNEY TO BE NOTICED Gregory E Stanton Marshall Gerstein & Borun 233 S Wacker Dr 6300 Sears Tower Chicago, IL 60606-6357 312/474-6300 Fax: 312/474-0448 Email: [email protected] ATTORNEY TO BE NOTICED Jon-Thomas Bloch Marshall Gerstein & Borun 233 S Wacker Dr 6300 Sears Tower Chicago, IL 60606-6357 312/474-6300 Fax: 312/474-0448 Email: [email protected] ATTORNEY TO BE NOTICED Kevin D Hogg Marshall Gerstein & Borun 233 S Wacker Dr 6300 Sears Tower Chicago, IL 60606-6357 312/474-6300 Fax: 317/474-0448 Email: [email protected] ATTORNEY TO BE NOTICED Margaret Lynn Begalle Marshall Gerstein & Borun 233 S Wacker Dr 6300 Sears Tower Chicago, IL 60606-6357 312/474-6300 Fax: 312/474-0448 Email: [email protected] ATTORNEY TO BE NOTICED Michael Edwin Jones

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 6 of 16

Potter Minton PC 110 N College Suite 500 PO Box 359 Tyler, TX 75710-0359 903/597/8311 Fax: 9035930846 Email: [email protected] ATTORNEY TO BE NOTICED Paul Bryan Stephens Marshall Gerstein & Borun 233 S Wacker Dr 6300 Sears Tower Chicago, IL 60606-6357 312/474-6300 Fax: 312/474-0448 Email: [email protected] ATTORNEY TO BE NOTICED William Joseph Kramer Marshall Gerstein & Borun 233 S Wacker Dr 6300 Sears Tower Chicago, IL 60606-6357 312/474-6300 Fax: 312/474-0448 Email: [email protected] ATTORNEY TO BE NOTICED Defendant Charter Communications Operating, LLC represented by Allen Franklin Gardner (See above for address) ATTORNEY TO BE NOTICED Bradford P Lyerla (See above for address) ATTORNEY TO BE NOTICED Charles Edward Juister (See above for address) ATTORNEY TO BE NOTICED Gregory E Stanton (See above for address) ATTORNEY TO BE NOTICED Jon-Thomas Bloch (See above for address) ATTORNEY TO BE NOTICED

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 7 of 16

Margaret Lynn Begalle (See above for address) ATTORNEY TO BE NOTICED Michael Edwin Jones (See above for address) ATTORNEY TO BE NOTICED Paul Bryan Stephens (See above for address) ATTORNEY TO BE NOTICED William Joseph Kramer (See above for address) ATTORNEY TO BE NOTICED Defendant Coxcom, Inc., represented by Allen Franklin Gardner (See above for address) ATTORNEY TO BE NOTICED Leroy M Toliver Kilpatrick Stockton 1100 Peachtree St Suite 2800 Atlanta, GA 30309 404/815-6483 Fax: 404/541-3274 Email: [email protected] ATTORNEY TO BE NOTICED Michael Edwin Jones (See above for address) ATTORNEY TO BE NOTICED Mitchell G Stockwell Kilpatrick Stockton LLP 1100 Peachtree St Ste 2800 Atlanta, GA 30309-4530 404/815-6214 Fax: 14048156555 Email: [email protected] ATTORNEY TO BE NOTICED Tonya R Deem Kilpatrick Stockton LLP NC

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 8 of 16

1001 W Fourth Street Winston-Salem, NC 27101 336-607-7485 Fax: 336-607-7500 Email: [email protected] ATTORNEY TO BE NOTICED Movant Coxcom, Inc., Counter Claimant Charter Communications, Inc. Counter Claimant Charter Communications Operating, LLC V. Counter Defendant Rembrandt Technologies, LP represented by Tibor L. Nagy (See above for address) ATTORNEY TO BE NOTICED

Date Filed 11/30/2006

#

Docket Text 1 COMPLAINT with JURY DEMAND against Charter Communications, Inc., Charter Communications Operating, LLC, Coxcom, Inc., (Filing fee $ 350.) , filed by Rembrandt Technologies, LP. (Attachments: # 1 # 2 # 3 # 4 # 5)(ehs, ) Additional attachment(s) added on 12/1/2006 (ehs, ). (Entered: 12/01/2006) 2 CORPORATE DISCLOSURE STATEMENT filed by Rembrandt Technologies, LP (ehs, ) (Entered: 12/01/2006) E-GOV SEALED SUMMONS Issued as to Charter Communications, Inc., Charter Communications Operating, LLC, Coxcom, Inc.,. (ehs, ) (Entered: 12/01/2006) 3 Form mailed to Commissioner of Patents and Trademarks. (ehs, ) (Entered: 12/01/2006) 4 AMENDED COMPLAINT (First Amended Complaint) against all defendants, filed by Rembrandt Technologies, LP. (Attachments: # (1) Exhibit A# (2) Exhibit B# (3) Exhibit C# (4) Exhibit D# (5) Exhibit E) (DeRieux, Elizabeth) Additional attachment(s) added on 12/1/2006 (ehs, ). (Entered: 12/01/2006) Filing fee: $ 350.00, receipt number 2-1-2128 (ch, ) (Entered: 12/05/2006)

11/30/2006 11/30/2006

11/30/2006 12/01/2006

12/04/2006

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 9 of 16

12/07/2006 12/07/2006 12/07/2006 12/12/2006 12/12/2006

5 NOTICE of Attorney Appearance by Robert M Parker on behalf of Rembrandt Technologies, LP (Parker, Robert) (Entered: 12/07/2006) 6 NOTICE of Attorney Appearance by Robert Christopher Bunt on behalf of Rembrandt Technologies, LP (Bunt, Robert) (Entered: 12/07/2006) 7 NOTICE of Attorney Appearance by Charles Ainsworth on behalf of Rembrandt Technologies, LP (Ainsworth, Charles) (Entered: 12/07/2006) 8 NOTICE of Attorney Appearance by Franklin Jones, Jr on behalf of Rembrandt Technologies, LP (Jones, Franklin) (Entered: 12/12/2006) 9 E-GOV SEALED SUMMONS Returned Executed by Rembrandt Technologies, LP. Charter Communications, Inc. served on 12/4/2006, answer due 12/26/2006. (ehs, ) (Entered: 12/15/2006) 10 E-GOV SEALED SUMMONS Returned Executed by Rembrandt Technologies, LP. Charter Communications Operating, LLC served on 12/4/2006, answer due 12/26/2006. (ehs, ) (Entered: 12/15/2006) 11 E-GOV SEALED SUMMONS Returned Executed by Rembrandt Technologies, LP. Coxcom, Inc., served on 12/4/2006, answer due 12/26/2006. (ehs, ) (Entered: 12/15/2006) 12 MOTION for Extension of Time to File Answer re 4 Amended Complaint, by Charter Communications, Inc., Charter Communications Operating, LLC. (Attachments: # 1 Text of Proposed Order)(Jones, Michael) (Entered: 12/21/2006) 13 Consent MOTION for Extension of Time to File Answer re 4 Amended Complaint, by Coxcom, Inc.,. (Attachments: # 1 Text of Proposed Order) (Jones, Michael) (Entered: 12/28/2006) 14 APPLICATION to Appear Pro Hac Vice by Attorney Margaret Lynn Begalle for Charter Communications, Inc. and Charter Communications Operating, LLC. (ehs, ) (Entered: 12/29/2006) 15 APPLICATION to Appear Pro Hac Vice by Attorney Jon-Thomas Bloch for Charter Communications, Inc. and Charter Communications Operating, LLC. (ehs, ) (Entered: 12/29/2006) 16 APPLICATION to Appear Pro Hac Vice by Attorney Charles Edward Juister for Charter Communications, Inc. and Charter Communications Operating, LLC. (ehs, ) (Entered: 12/29/2006) 17 APPLICATION to Appear Pro Hac Vice by Attorney William Joseph Kramer for Charter Communications, Inc. and Charter Communications Operating, LLC. (ehs, ) (Entered: 12/29/2006) 18 APPLICATION to Appear Pro Hac Vice by Attorney Bradford P Lyerla for Charter Communications, Inc. and Charter Communications Operating, LLC. (ehs, ) (Entered: 12/29/2006) 19 APPLICATION to Appear Pro Hac Vice by Attorney Gregory E Stanton for Charter Communications, Inc. and Charter Communications

12/12/2006

12/12/2006

12/21/2006

12/28/2006

12/28/2006

12/28/2006

12/28/2006

12/28/2006

12/28/2006

12/28/2006

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 10 of 16

Operating, LLC. (ehs, ) (Entered: 12/29/2006) 12/28/2006 20 APPLICATION to Appear Pro Hac Vice by Attorney Paul Bryan Stephens for Charter Communications, Inc. and Charter Communications Operating, LLC. (ehs, ) (Entered: 12/29/2006) 28 APPLICATION to Appear Pro Hac Vice by Attorney Kevin D Hogg for Rembrandt Technologies, LP. APPROVED (poa, ) (Entered: 01/04/2007) Filing fee: $ 25., receipt number 618131 (poa, ) (Entered: 01/04/2007) 29 APPLICATION to Appear Pro Hac Vice by Attorney Bradford P Lyerla for Charter Communications, Inc. and Charter Communications Operating, LLC.APPROVED (poa, ) (Entered: 01/04/2007) Filing fee: $ 25., receipt number 618131 (poa, ) (Entered: 01/04/2007) Filing fee: $ 25., receipt number 618131 (poa, ) (Entered: 01/04/2007) Pro Hac Vice Filing fee paid by Juister; Fee: $25, receipt number: 618131 (poa, ) (Entered: 01/04/2007) Pro Hac Vice Filing fee paid by Kramer; Fee: $25, receipt number: 618131 (poa, ) (Entered: 01/04/2007) Pro Hac Vice Filing fee paid by Begalle; Fee: $25, receipt number: 618131 (poa, ) (Entered: 01/04/2007) 33 APPLICATION to Appear Pro Hac Vice by Attorney Jon-Thomas Bloch for Charter Communications, Inc. and Charter Communications Operating, LLC. APPROVED (poa, ) (Entered: 01/04/2007) Pro Hac Vice Filing fee paid by Bloch; Fee: $25, receipt number: 618131 (poa, ) (Entered: 01/04/2007) 34 APPLICATION to Appear Pro Hac Vice by Attorney Paul Bryan Stephens for Charter Communications, Inc. and Charter Communications Operating, LLC.APPROVED (poa, ) (Entered: 01/04/2007) Pro Hac Vice Filing fee paid by Margaret Begalle, Jon-Thomas Bloch, Charles Juister, William Kramer, Bradford Lyerla, Gregory Stanton, Paul Stephens; Fee: $175.00, receipt number: 6-1-8131 (ehs, ) (Entered: 12/29/2006) 21 NOTICE of Attorney Appearance by Matthew R. Berry on behalf of Rembrandt Technologies, LP (Berry, Matthew) (Entered: 01/03/2007) 22 NOTICE of Attorney Appearance by Brooke Ashley-May Taylor on behalf of Rembrandt Technologies, LP (Taylor, Brooke) (Entered: 01/03/2007) 23 NOTICE of Attorney Appearance by Joseph Samuel Grinstein on behalf of Rembrandt Technologies, LP (Grinstein, Joseph) (Entered: 01/03/2007) 24 NOTICE of Attorney Appearance by Sidney Calvin Capshaw, III on

12/28/2006 12/28/2006 12/28/2006

12/28/2006 12/28/2006 12/28/2006 12/28/2006 12/28/2006 12/28/2006

12/28/2006 12/28/2006

12/29/2006

01/03/2007 01/03/2007

01/03/2007

01/03/2007

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 11 of 16

behalf of Rembrandt Technologies, LP (Capshaw, Sidney) Modified on 1/4/2007 (mpv, ). (Entered: 01/03/2007) 01/03/2007 25 NOTICE of Attorney Appearance by Andrew Wesley Spangler on behalf of Rembrandt Technologies, LP (Spangler, Andrew) (Entered: 01/03/2007) 26 ORDER granting 12 Motion for Extension of Time to Answer re 4 Amended Complaint. The time for Defendant Charter to answer, move or otherwise respond is extended to 1/23/07 . Signed by Judge Leonard Davis on 1/3/07. (kjr, ) (Entered: 01/04/2007) 27 ORDER granting 13 Motion for Extension of Time to Answer re 4 Amended Complaint. The time for Defendant Coxcom Inc. to answer, move or otherwise respond is extended to 1/23/07 . Signed by Judge Leonard Davis on 1/3/07. (kjr, ) (Entered: 01/04/2007) Answer Due Deadline Updated for Charter Communications, Inc. to 1/23/2007; Charter Communications Operating, LLC to 1/23/2007; Coxcom, Inc., to 1/23/2007. (kjr, ) (Entered: 01/04/2007) 30 DOCKETED IN ERROR. SEE CORRECT DOCUMENT #16*** APPLICATION to Appear Pro Hac Vice by Attorney Charles Edward Juister for Charter Communications, Inc. and Charter Communications Operating, LLC.APPROVED (poa, ) Modified on 1/4/2007 (Entered: 01/04/2007) 01/04/2007 31 ***DOCKETED IN ERROR. SEE CORRECT DOCUMENT # 17*** APPLICATION to Appear Pro Hac Vice by Attorney William Joseph Kramer for Charter Communications, Inc. and Charter Communications Operating, LLC. APPROVED (poa, ) Modified on 1/4/2007 (ch, ). (Entered: 01/04/2007) 01/04/2007 32 ***DOCKETED IN ERROR. SEE CORRECT DOCUMENT # 14*** APPLICATION to Appear Pro Hac Vice by Attorney Margaret Lynn Begalle for Charter Communications, Inc. and Charter Communications Operating, LLC. APPROVED (poa, ) Modified on 1/5/2007 (ch, ). (Entered: 01/04/2007) 01/11/2007 01/11/2007 01/11/2007 01/11/2007 38 APPLICATION to Appear Pro Hac Vice by Attorney Leroy M Toliver for Coxcom, Inc.. (ch, ) (Entered: 01/16/2007) Pro Hac Vice Filing fee paid by Toliver; Fee: $25, receipt number: 2-12200 (ch, ) (Entered: 01/16/2007) 39 APPLICATION to Appear Pro Hac Vice by Attorney Mitchell G Stockwell for Coxcom, Inc.. (ch, ) (Entered: 01/16/2007) Pro Hac Vice Filing fee paid by Stockwell; Fee: $25, receipt number: 2-

01/03/2007

01/03/2007

01/03/2007

01/04/2007

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 12 of 16

1-2201 (ch, ) (Entered: 01/16/2007) 01/12/2007 01/12/2007 01/15/2007 01/15/2007 01/15/2007 01/22/2007 40 APPLICATION to Appear Pro Hac Vice by Attorney Edgar G Sargent for Rembrandt Technologies, LP. (ch, ) (Entered: 01/19/2007) Pro Hac Vice Filing fee paid by Sargent; Fee: $25, receipt number: 2-12207 (ch, ) (Entered: 01/19/2007) 35 NOTICE of Attorney Appearance by Otis W Carroll, Jr on behalf of Rembrandt Technologies, LP (Carroll, Otis) (Entered: 01/15/2007) 36 NOTICE of Attorney Appearance by Collin Michael Maloney on behalf of Rembrandt Technologies, LP (Maloney, Collin) (Entered: 01/15/2007) 37 NOTICE of Attorney Appearance by James Patrick Kelley on behalf of Rembrandt Technologies, LP (Kelley, James) (Entered: 01/15/2007) 41 Consent MOTION for Extension of Time to File Answer re 4 Amended Complaint, by Coxcom, Inc.,. (Attachments: # 1 Text of Proposed Order) (Jones, Michael) (Entered: 01/22/2007) 42 ANSWER to Amended Complaint and, COUNTERCLAIM against Rembrandt Technologies, LP by Charter Communications, Inc., Charter Communications Operating, LLC.(Jones, Michael) (Entered: 01/23/2007) 43 CORPORATE DISCLOSURE STATEMENT filed by Charter Communications, Inc., Charter Communications Operating, LLC identifying Charter Communications, Inc. as Corporate Parent. (Jones, Michael) (Entered: 01/23/2007) 44 ORDER granting 41 Motion for Extension of Time to Answer. Answer deadline extended to 1/26/07 . Signed by Judge Leonard Davis on 1/23/07. (ehs, ) (Entered: 01/23/2007) 45 MOTION to Dismiss for Lack of Subject Matter Jurisdiction, Personal Jurisdiction, or in the Alternative, Transfer, and Brief in Support Thereof by Coxcom, Inc.,. (Attachments: # 1 Declaration of J. Spalding# 2 Exhibit 1# 3 Exhibit 2# 4 Exhibit 3A-C# 5 Exhibit 3D-E# 6 Exhibit 4# 7 Exhibit 5A-C# 8 Exhibit 6# 9 Exhibit 7# 10 Exhibit 8A-D# 11 Exhibit 9# 12 Exhibit 10A-B# 13 Text of Proposed Order Re: Personal Jurisdiction# 14 Text of Proposed Order Re: Subject Matter Jurisdiction# 15 Text of Proposed Order Re: Transfer to Delaware)(Jones, Michael) (Entered: 01/26/2007) 46 MOTION to Change Venue/Transfer case Contained in #45; proposed order attached to #45 by Coxcom, Inc.,. (mpv, ) (Entered: 01/29/2007) 47 NOTICE of Attorney Appearance by Allen Franklin Gardner on behalf of Charter Communications, Inc., Charter Communications Operating, LLC (Gardner, Allen) (Entered: 01/29/2007) 48 NOTICE of Attorney Appearance by Allen Franklin Gardner on behalf of Coxcom, Inc., (Gardner, Allen) (Entered: 01/29/2007) 49 NOTICE of Attorney Appearance by Tibor L. Nagy on behalf of

01/23/2007

01/23/2007

01/23/2007

01/26/2007

01/26/2007 01/29/2007

01/29/2007 01/31/2007

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 13 of 16

Rembrandt Technologies, LP (Nagy, Tibor) (Entered: 01/31/2007) 02/02/2007 50 MOTION for Extension of Time to File Response/Reply as to 45 MOTION to Dismiss for Lack of Subject Matter Jurisdiction, Personal Jurisdiction, or in the Alternative, Transfer, and Brief in Support Thereof by Rembrandt Technologies, LP. (Attachments: # 1 Text of Proposed Order)(Nagy, Tibor) (Entered: 02/02/2007) 51 ORDER granting 50 Rembrandt Technologies, LP to respond to the motion to dismiss filed by dft CoxCom, Inc is moved from 2/12/07 to 2/23/07. Signed by Judge Leonard Davis on 2/5/07. (djh, ) (Entered: 02/05/2007) 52 NOTICE by Rembrandt Technologies, LP Notice of Related Action Currently Pending Before The Honorable T. John Ward (Nagy, Tibor) (Entered: 02/05/2007) 53 Plaintiff's ANSWER to Counterclaim of Defendants, Charter Communications, INc., Charter Communications Operating, LLC and Coxcom, Inc. by Rembrandt Technologies, LP.(Nagy, Tibor) (Entered: 02/12/2007) 54 ORDER - the court Transfers this case to the Honorable T. John Ward. Signed by Judge Leonard Davis on 2/13/07. (ch, ) (Entered: 02/13/2007) 55 APPLICATION to Appear Pro Hac Vice by Attorney Tonya R Deem for Coxcom, Inc.(FEE PAID). (ch, ) (Entered: 02/15/2007) 56 RESPONSE in Opposition re 45 MOTION to Dismiss for Lack of Subject Matter Jurisdiction, Personal Jurisdiction, or in the Alternative, Transfer, and Brief in Support Thereof TO COXCOM, INC.'S MOTION TO DISMISS filed by Rembrandt Technologies, LP. (Attachments: # 1 Affidavit of Tibor L. Nagy# 2 Exhibit A# 3 Exhibit B# 4 Exhibit C# 5 Exhibit D# 6 Exhibit E.1# 7 Exhibit E.2# 8 Exhibit F# 9 Exhibit G# 10 Exhibit H# 11 Exhibit I# 12 Exhibit J)(Nagy, Tibor) (Entered: 02/23/2007) 57 REPLY to Response to Motion re 45 MOTION to Dismiss for Lack of Subject Matter Jurisdiction, Personal Jurisdiction, or in the Alternative, Transfer, and Brief in Support Thereof filed by Coxcom, Inc.,. (Attachments: # 1 Exhibit 1# 2 Exhibit 2)(Jones, Michael) (Entered: 03/05/2007) 58 SUR-REPLY to Reply to Response to Motion re 45 MOTION to Dismiss for Lack of Subject Matter Jurisdiction, Personal Jurisdiction, or in the Alternative, Transfer, and Brief in Support Thereof filed by Rembrandt Technologies, LP. (Nagy, Tibor) (Entered: 03/08/2007) 59 NOTICE by Coxcom, Inc., of Filing Motion for Transfer and Consolidation of Rembrandt Technologies, LP Patent Litigation Pursuant to 28 U.S.C. 1407 (Attachments: # 1 MDL Motion for Transfer and Consolidation# 2 Motion Ex. A# 3 Motion Ex. B# 4 MDL Memorandum# 5 MDL Exhibit List# 6 MDL Notice of Appearance# 7

02/05/2007

02/05/2007

02/12/2007

02/13/2007 02/14/2007 02/23/2007

03/05/2007

03/08/2007

03/09/2007

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 14 of 16

MDL Corporate Disclosure# 8 MDL Certificate of Service)(Stockwell, Mitchell) (Entered: 03/09/2007) 03/09/2007 60 Additional Attachments to Main Document: 59 Notice (Other), Notice (Other).. (Attachments: # 1 MDL Ex. 1# 2 MDL Ex. 2# 3 MDL Ex. 3# 4 MDL Ex. 4# 5 MDL Ex. 5# 6 MDL Ex. 6# 7 MDL Ex. 7# 8 MDL Ex. 8# 9 MDL Ex. 9# 10 MDL Ex. 10# 11 MDL Ex. 11# 12 MDL Ex. 12# 13 MDL Ex. 13# 14 MDL Ex. 14# 15 MDL Ex. 15# 16 MDL Ex. 16# 17 MDL Ex. 17# 18 MDL Ex. 18# 19 MDL Ex. 19# 20 MDL Ex. 20# 21 MDL Ex. 21# 22 MDL Ex. 22# 23 MDL Ex. 23# 24 MDL Ex. 24# 25 MDL Ex. 25# 26 MDL Ex. 26# 27 MDL Ex. 27# 28 MDL Ex. 28# 29 MDL Ex. 29# 30 MDL Ex. 30# 31 MDL Ex. 31# 32 MDL Ex. 32# 33 MDL Ex. 33# 34 MDL Ex. 34# 35 MDL Ex. 35# 36 MDL Ex. 36# 37 MDL Ex. 37# 38 MDL Ex. 38# 39 MDL Ex. 39# 40 MDL Ex. 40# 41 MDL Ex. 41# 42 MDL Ex. 42# 43 MDL Ex. 43)(Stockwell, Mitchell) (Entered: 03/09/2007) 61 NOTICE by Coxcom, Inc., re 45 MOTION to Dismiss for Lack of Subject Matter Jurisdiction, Personal Jurisdiction, or in the Alternative, Transfer, and Brief in Support Thereof of Supplemental Authority Supporting its Motion to Transfer (Jones, Michael) (Entered: 03/29/2007) 62 NOTICE by Rembrandt Technologies, LP Joint Notice of Conference Regarding Proposed Discovery Order and Docket Control Order (Attachments: # 1 Exhibit Discovery Order and Docket Control Order) (Taylor, Brooke) (Entered: 03/30/2007) 63 NOTICE by Rembrandt Technologies, LP re 60 Additional Attachments to Main Document,,,, 59 Notice (Other), Notice (Other) Notice of Filing Opposition to CoxComs Motion for Transfer and Consolidation (Attachments: # 1 Exhibit Rembrandts Brief in Opposition to CoxComs Motion For Transfer and Consolidation# 2 Exhibit Exhibit List# 3 Exhibit Opposition Brief Exh 1# 4 Exhibit Opposition Brief Exh 2# 5 Exhibit Opposition Brief Exh 3# 6 Exhibit Opposition Brief Exh 4# 7 Exhibit Opposition Brief Exh 5# 8 Exhibit Opposition Brief Exh 6# 9 Exhibit Opposition Brief Exh 7# 10 Exhibit Opposition Brief Exh 8# 11 Exhibit Opposition Brief Exh 9# 12 Exhibit Opposition Brief Exh 10# 13 Exhibit Exhibit 11# 14 Exhibit Exhibit 12# 15 Exhibit Opposition Brief Exh 13# 16 Exhibit Response to CoxComs Motion for Transfer and Consolidation# 17 Exhibit Reasons Why Oral Argument Should Be Heard# 18 Exhibit Proof of Service)(Taylor, Brooke) (Entered: 04/05/2007) 64 ORDER - referring case to Magistrate Judge Charles Everingham in accordance with the assignments made by General Order 07-03. The magistrate judge shall conduct pre-trial proceedings pursuant to 28 USC 636. Signed by Judge T. John Ward on 4/18/07. (ch, ) (Entered: 04/18/2007) 65 NOTICE by Charter Communications, Inc., Charter Communications Operating, LLC, Coxcom, Inc., Notice of Development (Attachments: # 1 Notice of Hearing)(Gardner, Allen) (Entered: 04/18/2007)

03/29/2007

03/30/2007

04/05/2007

04/18/2007

04/18/2007

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 15 of 16

04/19/2007

66 ORDER- REGARDING THE PROTECTIVE ORDER AND DOCUMENT PRODUCTION. Signed by Judge Charles Everingham on 4/19/07. (ch, ) (Entered: 04/19/2007) 67 DOCKET CONTROL ORDER Respond to Amended Pleadings 11/30/07. Amended Pleadings due by 11/16/2007. Discovery due by 5/14/2008. Joinder of Parties due by 5/3/2007. Claims Construction Hearing set for 2/13/2008 - 2/14/08 9:00 AM before Judge T. John Ward. Motions in limine due by 7/21/2008. Proposed Pretrial Order due by 7/24/2008. Jury Selection set for 8/4/2008 9:00AM before Judge T. John Ward. Pretrial Conference set for 7/24/2008 9:30 AM before Judge T. John Ward. Privilege Logs to be exchanged by parties 6/4/07. All other deadlines are set forth herein. Signed by Judge Charles Everingham on 4/19/07. (ch, ) (Entered: 04/19/2007) 68 NOTICE by Rembrandt Technologies, LP Of Proposed Protective Order (Attachments: # 1 Text of Proposed Order Proposed Protective Order) (Taylor, Brooke) CORRECTED PROPOSED PROTECTIVE ORDER added on 4/25/2007 (mpv, ). Modified on 4/25/2007 (mpv, ). (Entered: 04/24/2007) 69 NOTICE by Rembrandt Technologies, LP Re Electronic Production (Taylor, Brooke) (Entered: 04/24/2007) NOTICE re 68 Notice (Other) CORRECTED PROPOSED PROTECTIVE ORDER ADDED BY CLERK (mpv, ) (Entered: 04/25/2007) 70 Minute Entry for proceedings held before Judge Charles Everingham : Scheduling Conference held on 4/30/2007. (Court Reporter Debbie Latham.)(delat, ) (Entered: 04/30/2007) TRANSCRIPT of Proceedings held on 4/3/07 before Judge Chad Everingham. Court Reporter: Transcriber/Susan Simmons. (lss) (Entered: 05/03/2007) 72 NOTICE by Charter Communications, Inc., Charter Communications Operating, LLC of Disclosures (Gardner, Allen) (Entered: 05/03/2007) 73 NOTICE of Disclosure by Coxcom, Inc.,, Coxcom, Inc., Notice of Service of Initial Disclosures (Stockwell, Mitchell) (Entered: 05/04/2007) 74 PROTECTIVE ORDER. Signed by Judge Charles Everingham on 5/4/07. (ehs, ) (Entered: 05/04/2007) 75 NOTICE of Disclosure by Rembrandt Technologies, LP (Berry, Matthew) (Entered: 05/07/2007) 76 NOTICE of Disclosure by Rembrandt Technologies, LP (Taylor, Brooke) (Entered: 05/23/2007) 77 Joint MOTION to Amend/Correct Docket Control Order by Rembrandt Technologies, LP. (Attachments: # 1 Text of Proposed Order Order Granting Motion to Amend)(Taylor, Brooke) (Entered: 06/04/2007)

04/19/2007

04/24/2007

04/24/2007 04/25/2007

04/30/2007

05/03/2007

05/03/2007 05/04/2007 05/04/2007 05/07/2007 05/23/2007 06/04/2007

Case 1:07-cv-00404-GMS

Document 89

Filed 06/28/2007

Page 16 of 16

06/06/2007

78 ORDER granting 77 Motion to Amend/Correct. Docket Control Order is amended to move date to exchange privilege logs to 7/10/07. Signed by Judge Charles Everingham on 6/5/07. (ch, ) (Entered: 06/06/2007) 79 NOTICE of Disclosure by Rembrandt Technologies, LP Regarding Compliance with Paragraph 3(b) of the Discovery Order (Berry, Matthew) (Entered: 06/12/2007) 80 **PLEASE IGNORE - PLEADING REFILED AS DOC #82**NOTICE of Disclosure by Coxcom, Inc., (Gardner, Allen) Modified on 6/14/2007 (rml, ). (Entered: 06/13/2007) 81 NOTICE of Disclosure by Charter Communications, Inc., Charter Communications Operating, LLC P.R. 3-3 and P.R. 3-4 (Gardner, Allen) (Entered: 06/14/2007) 82 ***REPLACES #80*** NOTICE of Disclosure by Coxcom, Inc., P.R. 3-3 and P.R. 3-4 (Gardner, Allen) Modified on 6/14/2007 (mpv, ). (Entered: 06/14/2007)

06/12/2007

06/13/2007

06/14/2007

06/14/2007

06/14/2007

***FILED IN ERROR. PLEASE IGNORE Document # 80, Notice of disclosure. DOCUMENT REFILED AS #82.*** (rml, ) (Entered: 06/14/2007)

06/21/2007

83 NOTICE by Charter Communications, Inc., Charter Communications Operating, LLC, Coxcom, Inc., of Multi-District Litigation Developments Pursuant to Local Rule CV-42 (Attachments: # 1 Exhibit A)(Gardner, Allen) (Entered: 06/21/2007) 84 Interdistrict transfer to the District of Delaware, Wilmington DE. Pursuant to letter Elizabth Dinan was notified. Certified copy of Docket Sheet, Complaint, Transfer Order and letter were mailed to the Federal Blding, Lockbox 18, 844 N. King Street,Wilmington, DE (ch, ) Additional attachment(s) added on 6/28/2007 (ch, ). Modified on 6/28/2007 (ch, ). (Entered: 06/27/2007)

06/25/2007

PACER Service Center
Transaction Receipt
06/29/2007 09:21:32 PACER Login: Description: ud0037 Docket Report Client Code: Search Criteria: Cost: 2:06-cv-00507-TJWCE 0.72

Billable Pages: 9

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-2 Document 57-1 Filed 06/28/2007 Page 1 1 of 10 Filed 03/05/2007 Page of 10

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION REMBRANDT TECHNOLOGIES, L.P. Plaintiff, v. CHARTER COMMUNICATIONS, INC., CHARTER COMMUNICATIONS OPERATING, LLC, and COXCOM, INC., Defendants. CASE NO. 2:06-CV-507 [TJW]

DEFENDANT COXCOM, INC.'S REPLY IN SUPPORT OF ITS MOTION TO DISMISS Defendant CoxCom files this Reply to Rembrandt's Opposition and in further support of its motion to dismiss. I. A. ARGUMENT AND LEGAL AUTHORITY

Dismissal is Appropriate Under the First to File Rule. 1. Federal Circuit Law Applies the First to File Rule and Does Not Require the Same Patents at Issue.

While the Federal Circuit has recognized a few exceptions to the generally-applicable first to file rule, it continues to enforce the rule and only recognizes exceptions when there are additional facts in the case that would make it unjust or inefficient to continue the first-filed case. See, e.g., Genentech v. Eli Lilly & Co., 998 F.2d 931, 938 (Fed. Cir. 1993) ("[t]here must . . . be sound reason that would make it unjust or inefficient to continue the first-filed action), overruled in part on other grounds by, Wilton v. Seven Falls Co., 515 U.S. 277, 289 (1995); Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1347 (Fed. Cir. 2005) (the first to file rule should generally be followed in patent cases absent a "sound reason" that would make proceeding unjust or unreasonable). There are no such facts in this case. In fact, Rembrandt has sued Cablevision for infringement of the `903 Patent and other patents in the District of Delaware. (Mot. to

1
US2000 9802751.5 C8490-331049

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-2 Document 57-1 Filed 06/28/2007 Page 2 2 of 10 Filed 03/05/2007 Page of 10

Dismiss, Ex. 7.) That action is pending in the same judicial district and before the same judge as CoxCom's first-filed action. Moreover, Judge Steele, of the District of Delaware, has already expressed an interest in at least coordinating discovery between the various Rembrandt actions pending in Delaware. (Exhibit 1 at 3-4.) The Federal Circuit has not held, as Rembrandt urges, that "the same patents and the same parties" are required to constitute parallel actions for the purposes of the first to file rule. (Opp'n. at 4.) Rembrandt's "same patents and same parties" test stems from language in which the Federal Circuit defined a term for use in its opinion. Id.; see Lab. Corp. of Am. Holdings v. Chiron Corp., 384 F.3d 1326 (Fed. Cir. 2004). However, the Federal Circuit did not hold, because the question was not presented, that actions require the same patents and the same parties to be suitable for first to file treatment. See Lab. Corp. of Am. Holdings, 384 F.3d at 1332-33. If the first-filed action "can resolve the various legal relations in dispute and afford relief from the controversy that gave rise to the proceeding, and absent sound reason for a change of forum," the action should proceed. Genentech, 998 F.2d at 938. In this case, and in the Delaware Action, all of the patents are directed to the same functionality, operability, and communications step. Specifically, the patents are directed to facilitating communications between a modem, a receiver, and a controller, and to providing high speed internet access through the cable system with cable modems communicating with head-ends. Therefore, the Delaware court must resolve the same or substantially similar issues to address the invalidity and non-infringement of the `903 Patent, as those to be addressed for the patents at issue here. 2. Filing On the Same Day Does Not Prevent Application of the First to File Rule, and Rembrandt's Cited Case Law is Distinguishable.

Rembrandt argues that the first to file rule does not apply because the two lawsuits were filed in the same day, with CoxCom's declaratory judgment action filed four hours prior to this

2
US2000 9802751.5 C8490-331049

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-2 Document 57-1 Filed 06/28/2007 Page 3 3 of 10 Filed 03/05/2007 Page of 10

action. (Opp'n. at 5-6.) In making its argument, Rembrandt relies on several district court opinions, while ignoring controlling Federal Circuit precedent. (Id. at 5 n.15.) Each of the cases cited by Rembrandt precede Lab. Corp. of Am. Holdings, in which the Federal Circuit affirmed the district court's order staying a second-filed, infringement action that was filed four and one half hours after a declaratory judgment action. 384 F. 3d at 1327. Moreover, unlike the instant action, none of the cases cited by Rembrandt are patent cases and thus are not governed by Federal Circuit precedent. Finally, although Rembrandt asserts that Beverlly Jewerlly Co., Ltd. v. Tacori Enter., No. 1:06-cv-1967, 2006 WL 3304218 (N.D. Ohio Nov. 13, 2006), is an outlier, it is consistent with Federal Circuit law as set forth in Lab. Corp. of Am. Holdings. 3. This Case Substantially Overlaps With the Delaware Action, and Application of the First to File Rule is Appropriate.

Continuing its erroneous mantra that the first to file rule only applies when the actions involve exactly the same parties and exactly the same patents, Rembrandt, relies on CumminsAllison Corp. v. Glory, Ltd., Civ. A. 2-03-CV-358TJ, 2004 WL 1635534 (E.D. Tex. May 26, 2004) and Datamize, Inc. v. Fidelity Brokerage Services, LLC, No. 2:03-CV-321-DF, 2004 WL 1683171 (E.D. Tex. Sept. 5, 2003), to contend that the Fifth Circuit's "substantial overlap" test is as narrow as the non-existent "same parties, same patents" test it seeks to attribute to the Federal Circuit. (Opp'n. at 6-8.) CoxCom does not dispute that Federal Circuit law controls. Genentech, 998 F.2d at 937. But, there is no practical difference between the Federal Circuit and Fifth Circuit standards. Indeed, this district applied the Fifth Circuit standard in both CumminsAllison and Datamize, demonstrating that it and the Federal Circuit standard are substantially the same, and, likely, are virtually identical. See Cummins-Allison Corp. v. Glory, Ltd., No. 2:03CV-358TJ, 2004 WL 1635534 (E.D. Tex. May 26, 2004) and Datamize, Inc. v. Fidelity Brokerage Services, LLC, No. 2:03-CV-321-DF, 2004 WL 1683171 (E.D. Tex. Sept. 5, 2003).

3
US2000 9802751.5 C8490-331049

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-2 Document 57-1 Filed 06/28/2007 Page 4 4 of 10 Filed 03/05/2007 Page of 10

Most importantly, Cummins-Allison and Datamize are distinguishable from the instant action for determining whether or not the first to file rule is applicable. For example, in Datamize, although the patents at issue were related, the court concluded that the two opposing suits involved "different defendants, . . . different accused products, and a different industry." Datamize, 2004 WL 1683171, at *4. Thus, there was "[n]o substantial overlap" because the accused products were products from different industries. Id. at *5 (emphasis added). In contrast to Datamize, this action and the Delaware Action involve the same parties (CoxCom and Rembrandt), the same accused activity (providing high-speed internet services), and at least one of the same patents (the `903 Patent).1 Moreover, this action and the Delaware Action accuse the same technology and the same industry standard--DOCSIS. In Cummins-Allison, the court held that "[t]he cases need not be identical to be duplicative." 2004 WL 1635534, at *2. While Rembrandt is correct that the court declined to transfer a suit with different but overlapping patents, the court's ruling was based on considerations of judicial efficiency. Id. at *4. In the first Illinois action, discovery was only a week away from the completion when the plaintiff requested leave to amend its complaint to add the three patents at issue in the later cases. The Illinois court found that it would not be in the interest of judicial efficiency to add those patents at that stage of the litigation. The plaintiff then instituted an infringement action in Texas for the patents it was not allowed to add in Illinois. The defendant filed a subsequent declaratory judgment action in Illinois over the same three Tellingly, Rembrandt states at least four times throughout its Response that it "voluntarily added the `903 patent to this suit the next day as a prophylactic measure and for reasons for judicial economy." (Opp'n. at 2,4, and 6.) This basically self-serving statement is made without further explanation or evidentiary support. Rembrandt cannot escape that it filed suit in both Delaware and Texas prior to filing this action against CoxCom. Rembrandt, in amending its complaint, also added the `903 Patent to its suits against Charter and Comcast, neither of which had filed declaratory judgment actions. Therefore, Rembrandt's continual statements that it amended its complaint to protect itself and for the Court's best interests are dubious at best.
1

4
US2000 9802751.5 C8490-331049

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-2 Document 57-1 Filed 06/28/2007 Page 5 5 of 10 Filed 03/05/2007 Page of 10

patents. The judge in that action set a scheduling order, but deferred the decision of which case should go forward to the first-filed case in Texas. Id. at *3. The Texas court found that it had jurisdiction between itself and subsequent second action filed in Illinois based on the first to file rule. However, it noted with approval that the discovery, depositions, and claim constructions made in the prior Illinois case would be helpful in its case. Id. In this action, however, the parallel Delaware action has not proceeded beyond the complaint, answer, and introductory motion stages. No discovery has been taken, and no scheduling order has been issued. The cases are at the same point. Therefore, Rembrandt's reliance on these two cases is misplaced, and the first to file rule is applicable to this case and its parallel Delaware Action. 4. The Action Can be Successfully Adjudicated in Delaware.

Rembrandt also contends that the first to file rule does not apply because there are other cases pending in this district involving Rembrandt and, therefore, dismissal and transfer would result in waste and duplication. (Opp'n. at 9-10.) However, Rembrandt has filed related litigation in Delaware as well, rendering this argument inapplicable. (Mot. to Dismiss, Exs. 7 and 8A-8D.) Rembrandt nonetheless seeks to bolster this claim by citing an Order by Judge Folsom in Visto Corp. v. Microsoft Corp., No. 2:05-CV-546 (DF), denying a motion to transfer. In that case, the plaintiff, Visto, had a long history of filing cases in this District, and this Court's knowledge of the technology created efficiencies, which justified keeping all of the subsequently-filed cases here. See Exhibit 2 at 6, 8, attached hereto. Notably, and unlike the instant action, the earlier Visto cases were filed years before the actions at issue, and one of them had even completed trial. Ex. 2 at 3. Here, while Rembrandt has filed other cases in this district,

5
US2000 9802751.5 C8490-331049

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-2 Document 57-1 Filed 06/28/2007 Page 6 6 of 10 Filed 03/05/2007 Page of 10

the ones involving the same patents at issue here were either filed the same day as this case or a month earlier. See Rembrandt v. Comcast, No. 2:06-cv-506-TJW (filed on the same day); Rembrandt v. Time Warner Cable, No. 2:06-cv-369-TJW (filed a month earlier). This Court, therefore, does not have the same technical advantage that justified the denial of the transfer in Visto. Thus, there is no substantial institutional knowledge and background regarding the Patents In Suit that justifies making an exception to the first to file rule and not transferring the matter to Delaware. B. Dismissal is Also Appropriate Because This Court Lacks Personal Jurisdiction Over CoxCom. 1. CoxCom is Not Purposefully Directing Activity at Texas or Toward the Residents of Texas.

In 2003, with the exception of a POP node in Dallas, CoxCom assigned all of its Texas assets to Cox Southwest. (Spalding Decl. ¶ 7.) As a result, CoxCom does no business in Texas, owns no assets in Texas, keeps no records in Texas, has no employees in Texas, and does not own or operate any cable systems in Texas. (Id. ¶¶ 4, 6.) CoxCom's actions in Texas have not been "continuous and systematic," and, in fact, have been intentionally discontinued. 2. The Activities of Affiliates of Cox Communications are Irrelevant to Whether This Court Should Exercise Jurisdiction Over CoxCom.

Absent evidence of an alter ego arrangement, the activities of a parent company are irrelevant in establishing personal jurisdiction over a subsidiary--and vice versa. 3D Sys., Inc. v. Aarotech Lab., Inc., 160 F.3d 1373, 1380 (Fed. Cir. 1998) (examining jurisdiction based on the specific activities of the respective companies "[o]n its own"); Hanson Pipe & Prods., Inc. v. Bridge Techs. LLC, 351 F. Supp. 2d 603, 611-12 (E.D. Tex. 2004), aff'd, 160 Fed. Appx. 380 (5th Cir. 2005). Thus, actions of CoxCom's affiliates are irrelevant to resolution of this motion.

6
US2000 9802751.5 C8490-331049

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-2 Document 57-1 Filed 06/28/2007 Page 7 7 of 10 Filed 03/05/2007 Page of 10

Rembrandt also claims the POP node in Dallas evidences that CoxCom is directing activity toward Texas sufficient to justify the exercise of personal jurisdiction. Again, however, Rembrandt is in error. The POP node cannot support the exercise of jurisdiction because it is not a continued activity directed toward a Texas resident. (Spalding Decl. ¶ 5.) Moreover, the internet node is not related to the DOCSIS communications that occur between a cable modem and the cable modem termination system in the head-end (id. ¶ 5), which are the methods and systems at issue in this litigation (see Am. Compl. ¶¶ 17, 23, 29, and 35 (describing Patents in Suit)). The purpose of the node, which is implemented by computer servers in leased space in Dallas, is to connect with CoxCom's national internet backbone to carry traffic from and to its cable systems that are located in several (non-Texas) metro areas throughout the country. In any event, Judge Clark, whose findings Rembrandt did not challenge, addressed similar arguments against CoxCom by a patentee and found that [t]his POP is a transport backbone node for a national IP network and is located in leased office space in Dallas. The POP consists of a network of circuits and equipment for connecting internet protocol traffic traveling across the nation to and from CoxCom's systems located outside of Texas. It is undisputed that the node operates only to carry internet protocol traffic through Texas, not to any Texas residents.2 In fact, there is no evidence to suggest that CoxCom does any business in Texas at all. (Mot. to Dismiss, Ex. 1 at 6.) The law is clear that interconnecting national or international networks through assets in Texas does not support personal jurisdiction. See Access Telecom, Inc. v. MCI Telecomms. Corp., 197 F.3d 694, 717-718 (5th Cir. 1999) (holding that leasing Rembrandt states that the POP node carried Internet traffic to CoxCom customers in various Texas cities. (Opp'n. at 17). However, Rembrandt has provided insufficient evidentiary support for this allegation that contradicts the declaration of John Spalding (Spalding Decl. ¶ 5) and the findings of Judge Clark. Indeed, all Rembrandt did was to cite to a whitepaper ­ reviewing the paper shows it actually supports both Mr. Spalding's testimony and Judge Clark's findings by describing how the internet backbone provides for a national internet traffic transport network to support its Voice over Internet Protocol services, not the technology at issue, here. (See Opp'n. at 17 n. 66.)
2

7
US2000 9802751.5 C8490-331049

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-2 Document 57-1 Filed 06/28/2007 Page 8 8 of 10 Filed 03/05/2007 Page of 10

[telephone] lines in Texas "for the purpose of connecting two points in Mexico . . . [did] not constitute doing business in Texas"). Finding Access Telecom persuasive, Judge Clark also reasoned that "[t]he POP only operates to transfer digitized packets of information as part of a national network, and it is not directly related to any business activity in Texas. This is not the type of activity which is so substantial and of such a nature to justify the exercise of general jurisdiction." (Mot. to Dismiss Ex. 1 at 6.) Indeed, Rembrandt has expressly avoided asserting that the POP node relates to its claims of infringement in such a way as to support a claim of specific personal jurisdiction. Finally, the purchase of the computer servers used by the POP node and the purchase of related services (such as the space occupied by the servers) also do not support personal jurisdiction. See Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 408 (1984) ("[m]ere purchases, even if occurring at regular intervals, are not enough to warrant a state's assertion of . . . jurisdiction over a nonresident corporation in a cause of action not related to those purchase transactions"); Shaffer v. Heitner, 433 U.S. 186, 213 (1977) (ownership of property in forum state unrelated to claim did not support jurisdiction). 3. Exercising Personal Jurisdiction Over CoxCom Would be Unreasonable and Does Not Comply With Due Process.

Even if the Court were to find that CoxCom is subject to personal jurisdiction in Texas (which CoxCom denies), the exercise of such jurisdiction would be both unreasonable and unfair. See HollyAnne Corp. v. TFT,Inc., 199 F.3d 1304 (Fed. Cir. 1999); Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc. 148 F.3d 1355 (Fed. Cir. 1998). When considering the plaintiff's interest in obtaining convenient and effective relief, courts examine "the convenience and effectiveness of relief from the plaintiff's perspective, as

8
US2000 9802751.5 C8490-331049

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-2 Document 57-1 Filed 06/28/2007 Page 9 9 of 10 Filed 03/05/2007 Page of 10

generally the first party to file suit chooses the forum." Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 444 F.3d 1356, 1367-68 (Fed. Cir. 2006). None of Rembrandt's assertions regarding the importance of Texas as a venue, however, are persuasive. CoxCom no longer conducts business in Texas, therefore it cannot conduct any allegedly-infringing activities there. Furthermore, the State of Texas has no distinct interest in protecting Rembrandt. Rembrandt does not practice the patents it owns, and has no business in Texas other than filing suits here. Rembrandt's assertions that Texas should protect technology development within its borders, when applied to Rembrandt, a New Jersey limited partnership with offices a short thirty miles from the District of Delaware, are disingenuous and unpersuasive. More importantly, according to Rembrandt's own website, it is not in the business of developing technology; its only business is instead to acquire already developed technology and sue or license patents on same. (Mot. to Dismiss Ex. 4.) To implement this business plan, Rembrandt has sued in Delaware, and is also relying on that court to protect its rights. Given CoxCom's intentional sale of its Texas assets, it would be unfair to subject CoxCom to continued jurisdiction in Texas. That is especially true given that this action can and should proceed in Delaware, where CoxCom was incorporated, where Rembrandt has filed suit enforcing its patents, and where both parties will consequently find the litigation more convenient. II. CONCLUSION

For the reasons set forth above, CoxCom respectfully submits that it would be improper for this Court to exercise either subject matter or personal jurisdiction over it and renews its request to be dismissed from this action, or, in the alternative, transfer this action to the District of Delaware.

9
US2000 9802751.5 C8490-331049

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-2 Document 57-1 Filed 06/28/2007 Page 10 of 10 Filed 03/05/2007 Page 10 of 10

This the 5th day of March 2007.

Mitchell G. Stockwell [email protected] KILPATRICK STOCKTON LLP 1100 Peachtree Street, N.E. Suite 2800 Atlanta, Georgia 30309 (404) 815-6500 (404) 815-6555 (Facsimile)

/s/ Michael E. Jones State Bar. No. 10929400 [email protected] Allen F. Gardner State Bar No. 24043679 POTTER MINTON A Professional Corporation 110 N. College, Suite 500 (75702) P.O. Box 359 Tyler, Texas 75710 (903) 597-8311 (903) 593-0846 (Facsimile)

CERTIFICATE OF SERVICE The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a) and contemporaneously served upon all counsel who have consented to electronic service on this the 5th day of March 2007. Other counsel shall be served by first class mail.

/s/ Michael E. Jones

10
US2000 9802751.5 C8490-331049

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-3 Document 57-2 Filed 06/28/2007 Page 1 1 of 10 Filed 03/05/2007 Page of 10

Exhibit 1

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-3 Document 57-2 Filed 06/28/2007 Page 2 2 of 10 Filed 03/05/2007 Page of 10

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE REMBRANDT TECHNOLOGIES, LP Plaintiff, v. CABLEVISION SYSTEMS CORPORATION, and CSC HOLDINGS, INC. Defendants. C.A. No. 06-635-GMS

JOINT STATUS REPORT In accordance with the Court's Notice of Scheduling Conference, dated January 31, 2007 (D.I. 15), counsel for Rembrandt Technologies, LP ("Rembrandt") and counsel for Cablevision Systems Corporation, and CSC Holdings, Inc. ("Cablevision") submit this Joint Status Report in preparation for the Status and Scheduling Conference before the Court on February 13, 2007. Attached for the Court's consideration is a chart summarizing the parties' proposed schedule for this action. (Exhibit A). 1. JURISDICTION AND SERVICE

The parties agree that this Court has jurisdiction over the subject matter of, and the parties to, this action and that the defendants have been properly served. 2. SUBSTANCE OF THE ACTION (a) The Parties' Claims and Defenses

Plaintiff Rembrandt brought this action against Cablevision alleging infringement of U.S. Patent Nos. 5,243,627 ("the `627 patent"); 5,852,631 ("the `631 patent"); 5,719,858 ("the `858 patent"); 4,937,819 ("the `819 patent"); and 5,008,903 ("the `903 patent") (collectively "the Rembrandt patents"). Rembrandt alleges that Cablevision, by their provision of high speed internet and related services to cable television subscribers, has infringed and continues to infringe the `631, `858, `819, and `903 patents. Rembrandt also alleges that Cablevision, by

1

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-3 Document 57-2 Filed 06/28/2007 Page 3 3 of 10 Filed 03/05/2007 Page of 10

their receipt and retransmission over their cable television systems of digital terrestrial broadcast signals that comply with the ATSC Digital Television Standard, has infringed and continues to infringe the `627 patent. Rembrandt further alleges that Cablevision's infringement of the Rembrandt patents has been willful and seeks monetary and other damages it has incurred as a result of Cablevision's willful infringement of the Rembrandt patents. Rembrandt also seeks the entry of a permanent injunction enjoining Cablevision's continued infringement of the Rembrandt patents. Cablevision denies that it infringes any of the above five patents and further asserts that those patents are invalid and/or unenforceable. Cablevision has brought counterclaims seeking declarations of non-infringement and/or invalidity and/or unenforceability with respect to each of Rembrandt's patents. In the event that Cablevision is found to infringe any valid and enforceable claim of Rembrandt's patents, however, Cablevision submits that Rembrandt will be unable to satisfy the standards recently articulated by the Supreme Court in eBay Inc. v. MercExchange L.L.C., 126 S. Ct. 1837 (2006), for injunctive relief. (b) The Patents and Products In Suit

The titles of the patents-in-suit and the areas of technology to which they pertain (as described in the "Field of the Invention" sections of the patents) are:


The `627 patent - Signal point interleaving technique - "The present invention relates to the transmission of digital data over band-limited channels." The `631 patent - System and method for establishing link layer parameters based on physical layer modulation - "The present invention generally relates to data communication protocols, and more particularly, to presetting the link layer parameters per the physical layer modulation in a protocol stack for modems." The `858 patent - Time-division multiple-access method for packet transmission on shared synchronous serial buses - "The present invention relates to data communications, and more particularly, to communications systems that have channelized network access, and may transport both synchronous data and variablebit-rate data such as frame relay (hereafter referred to as packet data), in a timedivision multiplexed format."





2

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-3 Document 57-2 Filed 06/28/2007 Page 4 4 of 10 Filed 03/05/2007 Page of 10



The `819 patent - Time orthogonal multiple virtual dce for use in analog and digital networks - "This invention relates to an apparatus and method for a master unit in a multidrop network to communicate to and from a plurality of remote units, using a plurality of host applications using half duplex polled protocols, through the use of time division multiple access techniques." The `903 patent - Adaptive transmit pre-emphasis for digital modem computed from noise spectrum - "This invention relates to an apparatus for determining a frequencydependent signal-to-noise ratio in a communications network so as to allow proper equalization in a transmit pre-emphasis mode." For each of the patents, there may be multiple products in dispute relating to



Cablevision's provision of digital television, voice, and data services. Further, two separate standards, "ATSC" and "DOCSIS," are likely to be implicated by Rembrandt's claims. ATSC ("Advance Television System Committee") is a standard that relates to the receipt and broadcast of digital television signals. Rembrandt's Complaint alleges that the Cablevision infringes the `627 patent through its receipt and retransmission of signals that comply with the ATSC standard. DOCSIS ("Data-Over-Cable Service Interface Specifications") is a specification that describes the operational parameters of equipment that is used for cable networks. Rembrandt alleges that DOCSIS-compliant equipment infringes the `631, `858, `819, and `903 patents. (c) Related Litigations

There are currently eleven other lawsuits pending relating to one or more of the Rembrandt patents at issue here, including six lawsuits in the Eastern District of Texas and five lawsuits in the District of Delaware.1 Of the Delaware cases, four of the other suits

1

In one of the recently-filed Texas lawsuits asserting the `903 patent, Rembrandt Technologies, LP v. Charter Communications, Inc. et al. (E.D. Tex. 2:06-cv-507), Defendant CoxCom has made a motion to transfer the case to the District of Delaware. That motion is likely to be fully briefed later this month. 3

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-3 Document 57-2 Filed 06/28/2007 Page 5 5 of 10 Filed 03/05/2007 Page of 10

relate to the `627 patent,2 and the final one relates to the `903 patent.3 Although this Court has not yet issued Notices of Scheduling Conferences in the five Delaware suits, it may be efficient for discovery to be coordinated in the related Delaware cases to some extent. (d) Additional Information Provided By Cablevision Cablevision notes that none of the five patents in this action are related, and none of the patents cites to any of the others. The five asserted patents contain, in total, more than 100 claims. Although Rembrandt has not yet identified the claims that it asserts that

Cablevision infringes, based upon Rembrandt's allegations in the Complaint and in other proceedings, Rembrandt may attempt to assert dozens of claims in this action. There are seven inventors named on the five patents; of those seven, there is only one "overlapping" inventor whose name appears on two of the five patents. In addition, the patents in suit involve disparate and complex technologies, will implicate unique infringement, validity, and enforceability issues, and are likely to involve different witnesses and other discovery. 3. IDENTIFICATION OF ISSUES

The parties agree that the issues to be decided in this matter include at least the following: 1) whether Cablevision has directly or indirectly infringed one or more claims of

the Rembrandt patents literally or under the doctrine of equivalents; 2) whether any infringement by Cablevision of any claims of the Rembrandt

patents has been willful; 3) whether any of the asserted claims of the Rembrandt patents are invalid;

2

Rembrandt Technologies, LP v. CBS Corp., Case No. 06-727-GMS (D. Del.); Rembrandt Technologies, LP v. NBC Universal, Inc., Case No. 06-729-GMS (D. Del.); Rembrandt Technologies, LP v. ABC, Inc., Case No. 06-730-GMS (D. Del.); Rembrandt Technologies, LP v. Fox Entertainment Group et al., Case No. 06-731 (GMS) (D. Del.). CoxCom, Inc. v. Rembrandt Technologies, LP, Case No. 06-721-GMS (D. Del.). Rembrandt has moved to dismiss CoxCom's Complaint for lack of subject matter jurisdiction. 4

3

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-3 Document 57-2 Filed 06/28/2007 Page 6 6 of 10 Filed 03/05/2007 Page of 10

4)

whether Rembrandt's claims for damages are limited and/or barred under the

doctrine of laches; 5) whether Rembrandt's enforcement of any of its patent rights is limited and/or

barred under the doctrine of estoppel; 6) whether Rembrandt's enforcement of any of its patent rights is limited and/or

barred due to the existence of any express or implied license and/or patent exhaustion; 7) whether Rembrandt's claims for damages are limited and/or barred by the

patent notice statute (35 U.S.C. § 287(a)); 8) whether Rembrandt's claims are limited and/or barred under the doctrines of

patent misuse or unclean hands; 9) the damages to which Rembrandt is entitled if Cablevision is found to have

infringed any valid and enforceable claim of the Rembrandt patents; and 10) whether Rembrandt is entitled to a permanent injunction enjoining Cablevision's

alleged infringement of the Rembrandt patents. 4. NARROWING OF ISSUES

The parties expect that they may be able to narrow the issues as discovery in this case proceeds. 5. RELIEF

Rembrandt requests that this Court award Rembrandt damages adequate to compensate it for such infringement and enter a permanent injunction enjoining Cablevision from making, using, offering for sale and selling products that infringe the Rembrandt patents. According to Rembrandt, the appropriate measure of damages in this case is a reasonable royalty. Rembrandt further requests that the Court enter judgment against Cablevision declaring that Cablevision has infringed the Rembrandt patents and that Cablevision's conduct has been willful, and awarding Rembrandt treble damages sustained as a result of Cablevision's willful infringement.

5

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-3 Document 57-2 Filed 06/28/2007 Page 7 7 of 10 Filed 03/05/2007 Page of 10

Rembrandt also seeks recovery of attorney's fees and costs due to the exceptional nature of this case in accordance with 35 U.S.C. § 285. Cablevision seeks declaratory judgments that each of the patents-in-suit is not infringed and/or invalid and/or unenforceable. Cablevision denies that Rembrandt is entitled to any relief. Cablevision also seeks attorney's fees and costs, due to the exceptional nature of this case, in accordance with 35 U.S.C. § 285. 6. AMENDMENT OF PLEADINGS

The parties are not aware of any amendments needed to the pleadings at this time, but reserve the right to amend their pleadings within the time period set forth in the schedule entered by the Court. 7. JOINDER OF PARTIES

The parties are not aware of any additional parties that should be joined in this action at this time. The parties, however, reserve the right to move to join parties, if appropriate, within the time period set forth in the schedule entered by the Court. 8. DISCOVERY

Scheduling of Litigation Events. The parties' agreement as to the identification and timing of deadlines and events in this action is set forth for the Court's consideration in Exhibit A. The parties are mindful of the Court's interest in proceeding expeditiously. The parties respectfully submit that the proposed schedule takes account of that interest and is necessary and appropriate, given the number and complexity of the issues raised by Rembrandt's patents, the technology, and the accused products. believes that it will require discovery on at least the following issues: A. B. the design, development, and operation of the accused products and services; the identification of the asserted claim(s) and Cablevision's alleged At present, Rembrandt

6

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-3 Document 57-2 Filed 06/28/2007 Page 8 8 of 10 Filed 03/05/2007 Page of 10

infringement of those claims; C. documents, testimony, and expert opinion materials regarding, infringement,

willful infringement, damages and damages amounts. D. the factual basis for each party's claims, affirmative defenses, and counterclaims,

including any opinion of counsel upon which any party intends to rely; E. expert and third party discovery on the above-listed items.

At present, Cablevision believes that it will require discovery on at least the following additional issues: F. G. H. I. J. the validity of the asserted claims and the enforceability of the asserted patents; the conception and reduction to practice of the claimed inventions; the prosecution of the patents at issue; prior art relating to the technology covered by the patents; Rembrandt and/or its predecessors-in-interest's participation in the standard-

setting processes for the ATSC and/or DOCSIS standards; Limitations on Discovery. Rembrandt and Cablevision propose that the parties limit discovery as follows: 1) Fact Depositions. At this stage of the case, the parties agree that the

limitations of depositions contained in FRCP 30(a)(2)(A) should be modified as follows: each side shall be permitted to take a maximum of 175 hours of depositions by fact witnesses, including 30(b)(6) depositions. Unless otherwise agreed to by the parties, the deposition of an individual non-30(b)(6) witness is limited to one day of seven hours of actual examination. No deposition of any witness shall exceed seven hours of examination in a single day provided, however, that: (A) a deposition of an individual inventor shall not exceed fourteen hours over two days, unless that inventor is a named inventor on more than one patent in suit, in which the deposition of such individual inventor may continue for an additional seven

7

Case 1:07-cv-00404-GMS Case 2:06-cv-00507-TJW-CE Document 89-3 Document 57-2 Filed 06/28/2007 Page 9 9 of 10 Filed 03/05/2007 Page of 10

hours over an additional day for each patent in suit on which he or she is named in excess of one; and (B) there shall be no specific hour limit with respect to depositions conducted pursuant to FRCP 30(b)(6), and such depositions may proceed for as many hours as reasonably necessary. 2) In addition, Cablevision believes that no more than 75 of the 175 hours of fact

depositions per side should be depositions of parties (i.e., depositions of Cablevision or Rembrandt employees). Rembrandt believes that there should be no such limitation and to the extent any limitation is necessary, it should be to third party discovery. 3) Requests for Admissions shall be limited to fifty (50) per side, excluding

Requests for Admissions directed at authenticating documents; and 4) 9. Interrogatories shall be limited to fifty (50) per side. ESTIMATED TRIAL LENGTH

The parties estimate