Free Letter - District Court of Delaware - Delaware

Case 1:07-cv-00057-MPT

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Mary B. Matterer 302.888.6816 [email protected]

September 27, 2007 VIA EFILING AND HAND DELIVERY The Honorable Mary Pat Thynge USDC for the District of Delaware 844 King Street Wilmington, DE 19801 Re: Your Honor: As you know, Defendant Nexus filed a Request for Reexamination of U.S. Patent No. 6,447,485, one of the Patents-in-Suit in the above-captioned litigation, with the U.S. Patent Office on June 25, 2007. Nexus recently received notice from the U.S. Patent Office that it granted the Request for Inter Partes Reexamination of the '485 patent. Nexus is submitting this letter because Your Honor indicated an interest in knowing the outcome of the Request for Reexamination in connection with Nexus's pending motion to stay all proceedings. A copy of the Order granting inter partes reexamination as issued by the Patent Office and dated September 21, 2007, is enclosed as Exhibit A. The Patent Office also issued an Office Action to the patentee, Plaintiff Venetec, a copy of which is enclosed as Exhibit B. Notably, the Patent Office agreed with each of Nexus's bases for requesting reexamination. The Patent Office found that there was a substantial new question of patentability of all the claims requested for reexamination, which includes all of the independent claims and the claim Venetec asserts is infringed in the present litigation. For each of the bases of unpatentability set forth in the reexamination request by Nexus and adopted by the Patent Office, the Office stated that "there is a substantial likelihood that a reasonable examiner would consider these teachings [of the respective cited reference] important in deciding whether or not the claims are patentable." (See Ex. A, Order, pp. 8, 10, 13, 15, 17, 19, and 21). Moreover, claim 22 asserted against Nexus in this litigation stands rejected by the Patent Office as anticipated by three different references and rendered obvious by various combinations of all four references cited by Nexus in its request for reexamination. The reasoning applied by the Patent Office will have equal force against the remaining asserted claims in this lawsuit. Nexus is still awaiting the Court's ruling on its Motion to Clarify the Protective Order to proceed and file the remaining requests for reexamination, one of which has been prepared already by "Litigation Counsel" for Nexus. Venetec International, Inc. v. Nexus Medical, LLC, C.A. No. 07-057 ***

500 Delaware Avenue, Suite 1500
Mailing Address

| Wilmington, DE 19801-1494

T 302.888.6800

F 302.571.1750

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www.morrisjames.com

Case 1:07-cv-00057-MPT The Honorable Mary Pat Thynge September 27, 2007 Page 2

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Venetec will now have two months to respond to the Office Action, which may only be extended by Venetec upon showing of sufficient cause and usually for only one month. Upon filing of a response to the Office Action, Nexus will have 30 days, non-extendable, to rebut Venetec's response. Therefore, the reexamination of the '485 patent will now proceed with the "special dispatch" set forth in 35 U.S.C. § 314(c). Therefore, based on the Patent Office statistics previously cited in Nexus's briefing, it is highly likely that the rejected claims in the '485 patent, including the asserted claim in this litigation, will not survive reexamination with its present limitations. Any attendant litigation of the asserted claim, should it even survive in an amended form, will be wasted, as new limitations with likely new claim constructions, theories of invalidity, and theories of infringement will have to be relitigated. Should Your Honor have any questions or need further information prior to the mediation next week, please let me know. Respectfully, /s/ Mary B. Matterer Mary B. Matterer, I.D. No. 2696 [email protected] MBM/tmp cc: Maryellen Noreika, Esq. (via email and hand delivery) Steven C. Cherny, Esq. (via email) Maximilian A. Grant, Esq. (via email)

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