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Case 1 :07-cv-00113-GIVIS Document 48 Filed 07/10/2008 Page 1 of 4
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July 10, 2008
The Honorable Gregory M. Sleet VIA ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, Delaware 19801
Re; Cisco Systems, lnc., and Cisco Technology, lnc. v. T elcordici Technologies, lnc.,
C.A. No. 07-113-GMS
Dear Chief Judge Sleet:
This patent case concerns two patents — U.S. Patent Nos. 5,142,622 ("the ’622 Patent")
and 6,377,988 ("the ’988 Patent") — that Cisco purchased from IBM and British Telecom,
respectively. Shortly after acquiring these patents, Cisco sued Telcordia for infringement,
asserting method claim 7 ofthe ’622 Patent and method claim 1 ofthe ’988 Patent.
Unfortunately for Cisco, it purchased the wrong patents and asserted the wrong claims.
As discussed below, Cisco’s decision to assert only method claims creates fundamental,
legal infringement issues that are common to both patents and ripe for a summary judgment
determinationl In addition, there are other simple reasons — based upon claim construction —
as to why the Telcordia Accused Products do not infringe. On these grounds, Telcordia
respectfully requests permission to file and brief a motion for summary judgment of
non-infringement.
Telcordia Cannot Be Liable for Direct Infringement of the Asserted Method Claims
This case is limited to method claims. Specifically, it concerns two method claims that
are generally directed to the operation of network communication devices that consist of
hardware and software. As such, to show a direct infringement of either asserted method claim,
Cisco must prove that a single party operates communication devices in such a way that they
perform each and every step of the claimed method. See BMC Resources, [nc. v. Pciymeniech,
L.P., 498 F.3d 1373 (Fed. Cir. 2007) (citing Joy Technologies, lnc. v. Flciki, lnc., 6 F.3d 770, 773
(Fed. Cir. 1993)).
1 Cisco’s Complaint alleges infringement by the following Telcordia software products: Telcordia’s Element
Commrmicator CE ("Elcom”), Granite Inventory ("Granite"), and NMA System CE ("NMA”) (collectively, the
"Accused Products"). Although Cisco did not name Telcordia’s OCS product in its Complaint, Cisco identified
OCS as an allegedly infringing product in its contentions. Accordingly, Telcordia considers OCS to be an "Accused
Product" for the purpose of this motion.
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Case 1:07-cv—00113-G|\/IS Document 48 Filed 07/10/2008 Page 2 of 4
The Honorable Gregory M. Sleet
July 10, 2008
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Here, there is no dispute that the Accused Products are software products. Nor is there
any dispute that Telcordia "makes" and "sells" these products in the form of software, but does
not "make" or "sell" the associated hardware that is necessary for its software to execute. This is
critical, because any making and selling of software without hardware falls well short of the
claimed method of operation that must be performed by a single party. That is, Telcordia’s acts
of "making" and "selling" its software cannot and do not amount to a direct infringement. At
least this much, Cisco cannot dispute. Accordingly, Telcordia seeks to move for summary
judgment that it does not directly infringe either asserted method claim by "making" or "selling"
the Accused Products.
Telcordia Cannot Be Liable for Indirect Infringement of the Asserted Method Claims
Because Telcordia cannot directly infringe either claimed method by "making" or
"selling" the Accused Products, Cisco can only allege indirect infringement by Telcordia, i. e.,
contributory or induced. Even then, however, to establish indirect infringement Cisco must show
evidence of a specific instance of direct infringement by a Telcordia customer. See ACCO
Brands, [nc. v. ABA Locks Mfrs. C0., 501 F.3d 1307, 1313 (Fed. Cir. 2007). Specifically, Cisco
must show evidence of a specific instance where a customer operated or operates the Telcordia
Accused Products so as to perform each and every step of the claimed methods.
Here, the record shows no evidence of a specific instance of direct infringement by a
Telcordia customer. Indeed, Cisco cannot dispute that it has not subpoenaed a single Telcordia
customer. Nor can Cisco dispute that it failed to take or provide any testimony from a Telcordia
customer who actually uses one of the Accused Products. In short, Cisco’s entire case rests on
hypothetical instances of direct infringement by a Telcordia customer. This, however, is
insufficient as a matter of law. Id.
Moreover, even if there was evidence from a single customer (which there is not), Cisco
still could not prove the necessary instance of direct infringement. Not only did Cisco choose to
assert method claims, but it chose method claims that were drafted to require independent
conduct from multiple actors. Cisco’s own infringement contentions prove this point. Indeed,
Cisco’s contentions for claim 7 of the ‘622 Patent allege that the limitation of "executing an
application program on each of said first and second processing systems" is met by Cisco’s own
network devices operating Cisco’s own software. As such, the claim requires a second party
performing a different act. Claim 1 ofthe ‘988 Patent suffers the same fate. That claim requires
supporting network elements "performing a predetermined function in response to a
group-specific instruction." The patentee’s decision to have different parties perform different
acts within one method claim is fatal to its case. See BMC Resources, 498 F.3d at 1381.
Telcordia also seeks to move for summary judgment of non-infringement based on the
undisputed fact that the Accused Products cannot be operated so as to perform each and every
step of the claimed methods. For at least the following reasons, the Accused Products do not
meet certain claim limitations construed by the Court and/or agreed to by the parties.

Case 1:07-cv—00113-G|\/IS Document 48 Filed 07/10/2008 Page 3 of 4
The Honorable Gregory M. Sleet
July 10, 2008
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Telcordia Does Not Infringe Claim 7 of the ’622 Patent
Telcordia’s request to move for summary judgment of non-infringement of claim 7 of the
‘622 Patent is predicated, in part, on the Cou1t’s Claim Construction Order. In that Order, the
Court determined that the term "socket" means "an application program interface (API) that was
developed for the Berkeley version of AT&T’s UNIX operating system for interconnecting
applications running on data processing systems in a network. It is an object that identifies a
communication end point in a network, can be connected to other sockets, and hides the protocol
of the network architecture beneath a lower layer." (D.I. 46) (emphasis added). As explained
below, under this construction there can be no genuine issue of disputed material fact in that the
Accused Products do not infringe claim 7.
First, with regard to NMA and OCS, the undisputed record reveals that these products
operate on a VOS operating system ("OS"), not a UNIX OS. VOS and UNIX are different OSs.
Because NMA and OCS operate on a non-UNIX OS, it cannot genuinely be disputed that NMA
and OCS do not operate with an "(API) that was developed for the Berkeley version of AT&T’s
UNIX operating system," as required by the Claim Construction Order. As such, at least NMA
and OCS do not infringe claim 7.
Second, with regard to the Elcom product, there is no dispute that Elcom operates on the
HP-UX OS. Consequently, it cannot be disputed that Elcom operates with an API that was
developed for the HP-UX OS. On its face, the HP-UX OS is not the "Berkeley version of
AT&T’s UNIX operating system," as required by the Claim Construction Order. For at least this
reason, Elcom also does not infringe claim 7.
Telcordia Does Not Infringe Claim 1 of the ’988 Patent
Telcordia also requests permission to seek summary judgment of non-infringement for
claim l of the ’988 Patent. Summary judgment is proper here because the undisputed facts show
that the Accused Products do not use a "generic instruction." As agreed to by the parties, the
term "generic instruction" means "an instruction applicable to the groups of elements." (D. I. 44-
2). Based on this construction, there is no dispute that a "generic instruction" must be applicable
to more than one network element.
To the extent Telcordia’s customers use the Accused Products to generate an instruction,
the undisputed record shows that each instruction is applicable to one—and only one—network
element. Stated otherwise, the Accused Products require each instruction to be generated
separately for each individual network element. Moreover, the record shows that the Accused
Products require each and every instruction generated to specify the individual network element
where the command will be sent and the channel connected to that network element that will
carry the instruction. It cannot be genuinely disputed that such an instruction is g applicable to
more than one element. Instead, each instruction is element-specific, generated separately for

Case 1:07-cv—00113-G|\/IS Document 48 Filed 07/10/2008 Page 4 of 4
The Honorable Gregory M. Sleet
July l0, 2008
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each specific element in the network. Based on these grounds, summary judgment of no
infringement as to claim l ofthe ‘988 Patent is appropriate.
Respectfully,
/s/ T Many Geyer Lydon
Tiffany Geyer Lydon
cz Jack B. Blumenfeld, Esquire (by hand, and via electronic mail)
Matthew D. Powers, Esquire (via electronic mail)
Vincent P. Kovalick, Esquire (via electronic mail)