Free Redacted Document - District Court of Delaware - Delaware

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 1 of 13

Redacted Version Original Filing Date: July 10, 2008 Redacted Filing Date: July 17, 2008

Case 1:07-cv-00113-GMS
The Honorable Gregory M. Sleet
Page

Document 49

Filed 07/17/2008

Page 2 of 13

2

July 10, 2008

those versions have been substantially modified over the years to include many new fuctionalities and features? Telcordia apparently alleges that the accused features in this case were present in NM version 3.2, which was released in 1991. Telcordia relies solely on the longtme employee Donald McGowan to support this contention. 30(b)(6) testimony of According to Mr. McGowan,

REDACTED
Mr. McGowan's uncorroborated testimony is legally inadequate to establish the invalidity of either the '622 or the '988 patents. As to the '622 patent, Mr. McGowan gave no
testimony that an accused NM feature predated the patent's 1989 priority date. With respect to

the '988 patent, Mr. McGowan's testimony regarding the alleged 1991 use and/or sale is uncorroborated and thus is legally inadequate. See Finnigan, 180 F.3d at 1369. The Court

should grant sumary judgment that the NM product does not invalidate the clai of either
the '622 or '988 patents.

Similarly, Telcordia cannot support its allegation that the accused featues of

the

Telcordia Element Communcator product are prior art to the patents-in-suit. Teleordia has simply failed to provide any evidence (oral, wrtten, or otherwise) supporting its contention that
the aecused featues of Element Communicator were in public use or one sale before the priority
dates ofthe '622 or '988 patents. Given this total failure of

proof, the Cour should grant Cisco
Respectfully,

sumar judgment.

fLi~~
JBB
cc: Peter T. Dalleo, Clerk (By Hand)

Bdward R. Reines, Bsquire (By Bmail) Steven J. Balick, Bsquire (By Hand and Bmail) Vincent P. Kovalick, Bsquire (By Bmail)
2405566

REDACTED
-'''.

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 3 of 13

EXHIBIT i

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 4 of 13

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

CISCO SYSTEMS, INC., and ) cisco TECHNOLOGY, INC., )

~ )

Plaintiffs, )
) )

C.A. No. 07-113-GMS
)
)

TELCORDIA TECHNOLOGIES, INC., )

Defendant. )

TELCORDIA TECHNOLOGIES, INC.'S FIRST SUPPLEMENTAL RESPONSES TO CiSCO'S FIRST SET OF INTERROGATORIES (NOS. 1- 4,6, AND 7)
Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure and subject
to the objections set forth below, Defendant Telcordia Techologies, Inc. ("Defendant" or

"Telcordia") hereby serves its First Supplemental Objections and Responses to Plaintiffs Cisco

Systems, Inc. and Cisco Technology, Inc.'s (collectively, "Plaintiffs" or "Cisco") First Set of
Interogatories (Nos. i -4 and 6-8).

GENERA OBJCTIONS
The following General Objections and Statements apply to each and ever of

Plaintiffs' numbered Interrogatories and are incorporated by reference as par of Telcordia's

response to each of those Interogatories.
1. Telcordia objects to, and does not accept or agree with the Definitions and

Instrctions provided by Plaintiffs, except to the extent those Definitions and Instrctions
specifically conform to the requirements of the Federal Rules of Civil Procedure and the
applicable case law developed thereunder. Additionally, Telcordia objects to Plaintiffs'

(00212904;v1~

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 5 of 13

FIT SUPPLEMENTAL RESPONSE TO INTERROGATORY NO.4:
Subject to and in addition to the foregoing objections and responses, Telcordia provides

the following additional information. Telcordia incorprates its objections and responses from
its first supplemental responses to literrogatory Nos. I and 2. To the extent Telcordia could
understand Interrogatory Nos. i and 2, Tel cordi

a has not identified any responsive products, and

as such, Telcordia canot state a total quantity of product, a gross or net revenue, or profits

derved from each such alleged activity. Although Telcordia canot identify products that
correspond to the above-recited accused fuctionalities, information in response to this

interogatory for Telcordia products identified in Cisco's Complaint and its interogatory
responses may be gleaned from documents that Telcordia wil produce, to the extent any exist,
puruant to Fed. R. Civ. P. 33(d). The burden for deriving or asceraining information from any

such documents and locating and identifyng documents in response to this interogatory is
substantially the same for Cisco as for Telcordia.

INTERROGATORY NO.6:
Separately for each claim of each Patent-in-Suit that Telcordia contends is invalid under 35 U.S.C. §§ 102 and/or 103, identify each prior ar reference that Telcordia contends is invalidating, either separately or in combination, explain the basis for that contention, and identify all documents related thereto and persons with knowledge thereof.

RESPONSE TO INTERROGATORY NO.6:
In addition to its General Objections, Telcordia objects to ths Interrogatory as

prematurely callng for contentions. Cisco has not even identified which claims it is asserting,
and the paries have not discussed the constrction of any claim limitations. Moreover,

discover has been limited and is incomplete. Thus, contention interogatories are prematue,
unduly burdensome, and harassing at this stage of the litigation. Telcordia is willng to consider

(00212904;v1~

12

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 6 of 13

a proposal whereby both paries exchange contentions according to a mutually agreed upon
schedule.
Tel cordi

a also objects to ths Interogatory to the extent that it calls for information
any other

protected by the attorney-client privilege, the attorney work product doctrne, or

applicable privilege or immunity. Telcordia also objects to ths Intergatory as unduly
burdensome and overly broad to the extent that it requests Telcordia to identify "all" documents
and persons. Telcordia fuer objects to this request as being premature and unduly burdensome

and overly broad to the extent it requires Telcordia at this time in the litigation to marshal all of
its evidence before tral. Telcordia also objects to this Interrogatory as multi-par. In addition,

Telcordia objects to this Interogatory as improper to the extent it seeks legal or exper

conclusions, or presents questions of

pure law.

Subject to these and the General Objections, Telcordia submits that at least the accused

NMA product predates the patent filing dates and would invalidate the claims to the extent Cisco

suggests that they infrnge.

FIRST SUPPLEMENTAL RESPONSE TO INTERROGATORY NO.6:
Subject to and in addition to the foregoing objections and responses, Telcordia provides
the following additional infonnation. Tel cordi

a maintains its objections to this Interogatory to

the extent that it calls for information protected by the attorney-client privilege, the attorney

work product doctrine, or any other applicable privilege or immunty. Telcordia also maintains
its objects to this Interogatory as improper to the extent it seeks legal or expert conclusions, or
presents questions of

pure law.

Tel

cordi

a also maintains its objections to ths Interogatory as prematurely callng for

contentions. The Court has not yet constred any assered claim of the patents-in-suit.

Moreover, discover has been limited and is stil incomplete. Telcordia's invalidity contentions

í00212904;v1l

13

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 7 of 13

are based in whole or in par on its present understanding of

the assered claims of

the

patents-in-suit and/or the apparent constrctions that Telcordia believes Cisco to be asseg

based on Cisco's limited infrngement contentions disclosed in its responses to Telcordia's First

Set of Interrogatories, regardless of whether or not Telcordia agrees with such constrctions.

Accordingly, Telcordia's invalidity contentions set fort below are subject to modification,
amendment, or supplementation.

Telcordia submits that at least the accused NMA and Elcom products predate the patent
filing dates and therefore invalidate the assered claims of

the '988 Patent and the '622 Patent to

the extent Cisco suggests that those products infrnge. In addition, Telcordia submits that
assered claim 1 of

U.S. Patent No. 6,377,988 (''te '988 Patent") is invalid as anticipated under

35 U.S.c. § 102 in view ofthe following prior ar references: (1) Ballard et aI., U.S. 4,937,825
(fied Jun. 15, 1988, issued Jun. 26 1990); (2) Gottschalk, NetView Version 2 Release 3 Graphic

Monitor Facilty: Network management graphics support for the 1990s, IBM Systems Joural,
VoL. 31, No.2 (1992), pp. 223-251; (3) Gray, U.S. 5,426,421 (filed Nov. 24, 1993, issued Jun.

20, 1995); (4) Hidekaz, JP Pub. No. 62035736A (filed Aug. 9, 1985, published Feb. 16, 1987);
(5)

Nihar et aI., E.P. 0463764A2 (filed Jun. II, 1991, published Jan. 2, 1992); (6) Smith, U.S.

5,193,152 (filed Apr. 24, 1992, issued Mar. 9, 1993); (7) Vesterinen, U.S. 5,533,116 (filed Nov.

7, 1994, issued JuI. 2, 1996); and (8) Vesterinen, WO 83/18598 (filed Mar. 10, 1993, published
Sept. 16, 1993).

To the extent Cisco contends that any of

the above-identified references are not
the '988 Patent is invalid as

anticipatory, Telcordia furter submits that assered claim I of

obvious under 35 U.S.C. § 103 in view of any ofthe above-identified eight prior ar references in view of one or more ofthe other above-identified prior ar references and/or in combination with

(00212904;v1)

14

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 8 of 13

what was known to a person of ordinar skill in the ar. Telcordia also submits that assered
claim I of the '988 Patent is invalid as obvious under 35 U.S.C. § 103 in view of any of

the

above~identified eight prior ar references in view of one or more of following additional
references and/or in combination with what was known to a person of ordinar skil in the ar:

(1) Gurr et al., U.S. 4,4 19,667 (filed Aug. 6, 1982, issued Dec. 6, 1983); and (2) Tester et aI.,

U.S. 5,583,928 (fied Aug. 17, 1993, issued Dec. 10, 1996).
Furtermore, Telcordia submits that assered claim 7 of

U.S. Patent No.5, 1 42,622 (''the

'622 Patent") is invalid as anticipated under 35 U.S.C. § 102 in view of

the following prior ar

references: (1) Benjamin et aI., U.S. 4,677,588 (filed Nov. 14, 1983, issued Jun. 30, 1987); (2)
Brown et aI., U.S. 5,060,140 (filed Jan. 1.6, 1986, issued Oct. 22, 1991); (3) Chang et aI., E.P.

0260458A2 (filed Aug. 18, 1987, published Mar. 23, 1988); (4) Francois, et al., Some Methods
for Providing OSI transport in SNA, IBM J. Res. Develop., VoL. 27, NO.5 (1983), pp. 452-463;

(5) G. A. Deaton, et aI., X.25 and Related Recommendations in IBM Products, IBM Systems
Journal, VoL. 22, Nos. 1/2 (1983) (6) Groenbaek, Inge, Conversion Between the TCP and iSO

Transport Protocols as a Method of Achieving Interoperabilty Between Data Communication
Systems, IEEE Joural of

Selected Areas in Communcations, VoL. SAC-4, No.2 (March 1986);

(7) McKay et aI., U.S. 4,893,307 (filed Feb. 29, 1988, issued Jan. 9, i 990); (8) Narayanan, A

Common Transport Based Approach to Network Interconnection, Computer Networks and ISN

Systems 13 (1987), pp. 257-267; (9) Norstedt, U.S. 4,586,134 (fied Feb. 15, 1984, issued Apr.
29, 1986); (10) Seifer, Bridges and Routers, IEEE Network, VoL. 2, NO.1 (Jan. 1988), pp. 57-

64; (11) Sy et aI., OSI-SNA Interconnections, IBM Systems Joural, VoL. 26, NO.2 (1987), pp.
157-73; and (12) Yakubaitis et aI., Analysis of Methods of

Combining Wide-Area and Local

Area Networks, Avtomatika i Vychislitel naya Tekhika, VoL. 23, NO.1 (1989), pp. 3-10.

t00212904;v1l

15

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 9 of 13

To the extent Cisco contends that any of the above-identified references are not
anticipatory, Telcordia furter submits that assered claim 7 of

the '622 Patent is invalid as
the above-identified 12 prior ar references in

obvious under 35 U.S.C. § 103 in view of any of

view of one or more of the other above-identified prior ar references and/or in combination with

what was known to a person of ordinar skilin the ar. Telcordia also submits that assered
claim 7 of the '622 Patent is invalid as obvious under 35 U.S.C. § 103 in view of any of

the

above-identified 12 prior ar references in view of one or more of following additional references

and/or in combination with what was known to a person of ordinary skil in the ar: (1) Barilai
et aI., U.S. 4,736,369 (filed Jun. 13, i 986, issued Apr. 5, 1988); (2) Bishop et aI., U.S. 4,901,231

(filed Dec. 22, 1986, issued Feb. 13, 1990); (3) Chang et aI., U.S. 4,768,150 (filed Sep. 17, 1986,

issued Aug. 30, 1988); (4) Hars et aI., U.S. 4,631,666 (filed Oct. 25, 1982, issued Dec. 23,
i 986); (5) Katzeff et aI., U.S. 4,760,395 (fied Jun. 20, 1986, issued JuI. 26, 1988); (6) Lineback,

Mainframe Server Links Etheret to ffM'S SNA; (7) Marinez et al., Interconnection ofSytek
Localnet 20 Networks though the Defense Data Network using Interet Protocol Gateways,
TH01 79-2/87/0000/0354 (1987), pp. 354-60; (8) Perlman et aI., Choosing the Appropriate ISO

Layer for LAN Interconnection, IEEE Network, VoL. 2, NO.1 (Jan. 1988), pp. 81-86; (9)

Steddum, Front-end Solutions for Major Problems, Data Communications, (Oct. 1986), pp.
169-77.

The prior ar references cited above may disclose the elements of the asserted claims
either explicitly and/or inherently and/or may be relied upon to show the state of

the ar in the

relevant timeframes. The suggested obviousness combinations are in the alterative to
Telcordia's anticipation contentions and are not to be constred to suggest that any reference
included in the combinations is not anticipatory. Telcordia is curently unaware of

the extent, if

l00212904;V1)

16

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 10 of 13

any, to which Cisco wil contend that limitations of the claims at issue are not disclosed in the ar
identified by Telcordia as anticipatory. To the extent that an issue arses with respect to any such
limitation, Telcordia reserves the right to identify other references and combinations, which may
make obvious the addition of

the allegedly missing limitation to the disclosed device or method

of operation.

INTERROGATORY NO.7:
Separately for each claim of each Patent-in-Suit that Telcordia contends is invalid under
35 U .S.C. § 1 12, explain the basis for that contention, including a full descrption of all facts

(including documents related thereto and persons with knowledge thereof).

RESPONSE TO INTERROGATORY NO.7:
In addition to its General Objections, Telcordia objects to ths Interrogatory as

prematurely callng for contentions. Cisco has not even identified which claims it is asserting,
and the paries have not discussed the constrction of any claim limitations. Moreover,

discovery has been limited and is incomplete. Thus, contention interogatories are prematue,
unduly burdensome, and harassing at this stage of the litigation. Telcordia is wiling to consider
a proposal whereby both pares exchange contentions according to a mutually agreed upon

schedule.

Furterore, Telcordia objects to this Interrogatory to the extent that it calls for
information protected by the attorney-client privilege, the attorney work product doctrne, or any

other applicable privilege or immunity. Telcordia also objects to ths Interogatory as unduly

burdensome and overly broad to the extent that it requests Telcordia to "all" facts, documents,
and persons. Tel cordi

a objects to this request as being premature and unduly burdensome and

overly broad to the extent it requires Telcordia at ths time in the litigation to marshal all of its
evidence before tral. Telcordia also objects to ths Interrogatory as improper to the extent it
seeks legal or expert conclusions, or presents questions of

pure law.

t00212904;v1)

17

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 11 of 13

CERTIFICATE OF SERVICE
I hereby cerify that on the 29th day of April, 2008, the attched TELCORDIA
TECHNOLOGIES, INC.'S FIRST SUPPLEMENTAL RESPONSES TO CISCO'S FIT

SET OF INTERROGATORIES (NOS. 1 - 4, 6, AND 7) was sered upon the below-named
counsel of record at the address and in the maner indicated:

Jack B. Blumenfeld, Esquire

HAND DELIVERY

Morrs, Nichols, Arsht & Tunell 1201 Nort Market Street Wilmington, DE 19899-1347
Matthew D. Powers, Esquire Weil, Gotshal & Manges LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065
Paul E. Torchia, Esquire Weil, Gotshal & Manges LLP

VIA ELECTRONIC MAIL

VIA BLBCTRONIC MAIL

767 Fift Avenue New York, NY 10153

Tiffany Geyer Lydon
179743.1

f~i-

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 12 of 13

EXHIBIT 2

Case 1:07-cv-00113-GMS

Document 49

Filed 07/17/2008

Page 13 of 13

ENTIRE EXHIBIT REDACTED