Free Answering Brief in Opposition - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE FCI USA, INC. and FCI AMERICAS TECHNOLOGY, INC., Plaintiffs, v. MOLEX INCORPORATED, Defendant. ) ) ) ) ) ) ) ) ) )

C.A. No. 07-49-JJF

PLAINTIFFS' OPPOSITION TO DEFENDANT'S MOTION TO DISMISS, STAY, OR TRANSFER

OF COUNSEL: Albert J. Breneisen George E. Badenoch KENYON & KENYON LLP One Broadway New York, NY 10004 (212) 425-7200 John W. Bateman Michael M. Shen Yariv Waks KENYON & KENYON LLP 1500 K Street, NW Washington, DC 20005 (202) 220-4200 April 5, 2007

MORRIS, NICHOLS, ARSHT & TUNNELL LLP Thomas C. Grimm (#1098) Leslie A. Polizoti (#4299) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 [email protected] [email protected] Attorneys for Plaintiffs

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TABLE OF CONTENTS Page

I. II. III.

NATURE AND STAGE OF THE PROCEEDINGS ........................................................ 1 SUMMARY OF THE ARGUMENT ................................................................................ 1 STATEMENT OF FACTS ................................................................................................ 3 A. B. C. The Parties ............................................................................................................. 3 The Present Dispute ............................................................................................... 4 The Pending Litigations......................................................................................... 5 Legal Standard ....................................................................................................... 5 The First-to-File Rule Should Not Be Applied Because Litigation in Nevada Would Not Be Convenient for Either of the Parties or Any of the Witnesses. .............................................................................................................. 6 The First-to-File Rule Should Not Be Applied Because The Earlier-Filed Declaratory Judgment Action In Nevada Is Improper........................................... 9 The First-to-File Principle Should Not Be Applied Because the Two Litigations Are Not the Same. ............................................................................. 10 The First-to-File Rule Should Not Be Applied Because the Present Case Was Filed Only a Day After the Nevada Litigation ............................................ 12

IV.

ARGUMENT..................................................................................................................... 5 A. B.

C. D. E. V.

CONCLUSION................................................................................................................ 13

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TABLE OF AUTHORITIES

Cases

Page

APV N.A. Inc. v. Sig Simonazzi N.A. Inc., 295 F. Supp. 2d 393 (D. Del. 2002)..................... 10, 11 Arrow Commun. Labs., Inc. v. John Mezzalingua Assocs., No. 05-357-SLR, 2005 U.S. Dist. 25004 (D. Del. Oct. 26, 2005)............................................................................ 7 Bayer Bioscience N.V. v. Monsanto Co., No. 03-023-GMS, 2003 U.S. Dist. LEXIS 4594 (D. Del. Mar. 25, 2003) ................................................................................. 7 Capitol Records, Inc. v. Optical Recording Corp., 810 F. Supp. 1350 (S.D.N.Y. 1992)............. 12 Charles Scwab & Co. v. Duffy, No. C 98-03612-MMC, 1998 U.S. Dist. LEXIS 19606 (N.D. Cal. Dec. 8, 1998)............................................................................ 10 Chase Manhattan Bank v. Freedom Card Inc., 265 F. Supp. 2d 449 (D. Del. 2003) ................................................................................................................... 6 Columbia Pictures Indus., Inc. v. Schneider, 435 F. Supp. 742 (S.D.N.Y. 1977)........................ 12 EEOC v. University of Pa., 850 F.2d 969 (3d Cir. 1988) ............................................................... 6 EMC Corp. v. Norand Corp., 89 F.3d 807 (Fed. Cir. 1996)..................................................... 9, 11 Envirometrics Software v. Georgia-Pacific Corp., No. 97-243-SLR, 1997 U.S. Dist. LEXIS 17659 (D. Del. Nov. 4, 1997) .......................................................... 9, 10 Enzo Biochem, Inc. v. Calgene, Inc., No. 93-110-JJF, 1993 WL 266518 (D. Del. May 18, 1993)....................................................................................................... 9 Genentech, Inc. v. Eli Lilly and Co., 998 F.2d 931 (Fed. Cir. 1993).............................................. 6 Genfoot, Inc. v. Payless Shoesource, Inc., No. 03-398-SLR, 2003 WL 22953183 (D. Del. Dec. 3, 2003)......................................................................................................... 8 Hop-In Food Stores, Inc. v. S & D Coffee, Inc., 642 F. Supp. 1106 (W.D. Va. 1986)................................................................................................................ 12 Mentor Graphics v. Quickturn Design Sys., 77 F. Supp. 2d 505 (D. Del. 1999) ..................................................................................................................... 7 Miteq, Inc. v. Comtech Telecomm. Corp., No. 02-1336-SLR, 2003 WL 179991 *1-2 (D. Del. Jan. 23, 2003)................................................................................................ 8

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Optical Recording Corp. v. Capitol-EMI Music, Inc., 803. F. Supp. 971 (D. Del. 1992) ............................................................................................................... 8, 12 Reisman v. Van Wagoner Funds, Inc., No. 02-012-SLR, 2002 WL1459384 (D. Del. Jun. 7, 2002).......................................................................................................... 9 Serco Servs. Co., L.P. v Kelley Co., Inc., 51 F.3d 1037 (Fed. Cir. 1995)....................................... 6 Thales Airborne Sys. S.A. v. Univ. Avionics Sys. Corp., No. 05-583-SLR, 2006 U.S. Dist. LEXIS 41895 (D. Del. Jun. 21, 2006).......................................................... 6, 11 Statutes Fed. R. Civ. P. 26(f)........................................................................................................................ 1

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Plaintiffs FCI USA, Inc. ("FCI USA") and FCI Americas Technology, Inc. ("FCI TECH") (collectively "FCI") respectfully submit this memorandum in opposition to Defendant Molex Incorporated's ("Molex") Motion to Dismiss, Stay, or Transfer ("Motion"). I. NATURE AND STAGE OF THE PROCEEDINGS On January 26, 2007, FCI initiated the present action against Molex for infringement of United States Patent Nos. 6,981,883 ("'883 patent") and 7,114,964 ("'964 patent"). FCI

amended the complaint on February 27, 2007 to add U.S. Patent No. 7,182,643 B2 ("'643 patent"). On March 22, 2007, Molex filed the present motion seeking to dismiss, stay or transfer this case. This Court has set a Rule 16 scheduling conference for April 20, 2007 and the parties have already begun discussions pursuant to Fed. R. Civ. P. 26(f). II. SUMMARY OF THE ARGUMENT Molex's motion rests entirely on its perfunctory assertion of the first-to-file rule, because it filed a declaratory judgment action in Nevada on two of the same patents one day earlier than the filing of this action. The first-to-file rule is not an absolute rule, however, and Molex makes no effort to deal with the obvious reasons why the rule does not apply in this case. First, Molex's attempt to invoke declaratory judgment jurisdiction in Nevada is not proper, because the parties were in the midst of settlement negotiations which Molex led FCI to believe were continuing when it suddenly filed its Nevada lawsuit. Molex should not be

rewarded for undermining and discouraging good faith settlement negotiations out of court with

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its unseemly race to the courthouse. For this reason, FCI has moved to dismiss the Nevada action.1 Second, other than the technicality that FCI's patent holding company, FCI TECH, is incorporated in Nevada, there is no tie between either party and Nevada whatsoever. None of the witnesses, documents or operating offices of the parties are in Nevada, and Nevada is a completely inconvenient forum for both parties and all of the witnesses. In contrast, it cannot be disputed that this Court is more convenient for FCI and its witnesses, who reside near Harrisburg, Pennsylvania, and no less convenient for Molex and its witnesses located near Chicago. Third, the parties and patents in this case are not all included in the Nevada case. This case includes the real party in interest, FCI USA, and the recently issued '643 patent. Neither are included in Nevada. In contrast, there are no parties or patents in the Nevada case that are not included in this case. Finally, there is no inefficiency or prejudice arising from previous litigation activities or court familiarity with the issues in the earlier filed case, because the Nevada case was filed only one day earlier than this case. For each of the foregoing reasons, the first-to-file rule should not be applied in this case, and Molex's motion should be denied.

1

Copies of FCI's papers in support of its motion to dismiss in Nevada are attached as Exhibit A. Molex's responsive papers are due April 6, 2007.

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III.

STATEMENT OF FACTS A. The Parties

FCI USA, a New York corporation based in Etters, Pennsylvania (near Harrisburg), is a leading innovator and manufacturer of electrical connectors. (Page Decl. at ¶ 3.)2 Etters,

Pennsylvania is where the domestic research and development of FCI's products covered by the patents at issue took place, and where all of FCI's domestic business is transacted. (Id. at ¶ 6.) FCI TECH, the other plaintiff in this action, is a wholly owned subsidiary of FCI USA and holding company of FCI USA's United States patents. (Id. at ¶ 2.) FCI TECH is incorporated in Nevada and has a duly designated agent for service of process there, but has no other ties to Nevada. (Id.) FCI USA has developed proprietary technology relating to high speed, shieldless electrical connectors, and has been awarded numerous patents on this technology. These patents include the three patents at issue in this case, which are assigned to FCI TECH. FCI USA is the exclusive U.S. licensee of the patents-in-suit. In addition, FCI USA performed the work that resulted in these patents, applied for and prosecuted the patents, practices the patented technology, and sells its AirMax® connectors under the patents. Thus, FCI USA, not FCI TECH, is the real party in interest. Defendant Molex is a competing manufacturer of electrical connectors and recently began marketing a shieldless, high speed backplane connector in direct competition with FCI's AirMax® connector. (Page Decl. at ¶ 8.) Molex is incorporated in the state of Delaware and has

2

"Page Decl. at __" shall refer to the Declaration of M. Richard Page In Support of FCI's Opposition to Molex's Motion to Dismiss, Stay or Transfer, filed herewith as Exhibit B.

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its headquarters in Lisle, Illinois, near Chicago. Insofar as FCI is aware, there is no relationship between Molex and the State of Nevada. (Id.) B. The Present Dispute

FCI and Molex have been discussing a potential license related to the patents-in-suit and Molex's I-Trac connectors since at least December 2006 (and still are). (Page Decl. at ¶ 9.) During this time, FCI never threatened to bring a lawsuit; rather, it stressed its desire to reach a business-level resolution. (Id.) Molex represented that it was also interested in a business resolution. (Id.) On December 14, 2006, Molex's in-house counsel responsible for its I-Trac line of connectors visited FCI in Etters, Pennsylvania to discuss the issue of the I-Trac connectors in relation to FCI's patents. (Page Decl. at ¶ 9.) At this meeting, both parties stated that they did not want this issue to result in litigation and instead wanted it to be resolved by business level negotiations. (Id.) Pursuant to that meeting, FCI offered Molex licensing terms for the I-Trac line of connectors. (Page Decl. at ¶ 10.) Molex responded the next day and represented that it remained willing to discuss a license on reasonable terms, but did not specifically accept or reject FCI's terms. (Id.) During the remainder of December and January, the parties communicated through the exchange of e-mails and a phone call regarding the proposed license terms. (Id.) While Molex requested clarification of FCI's terms related to the I-Trac connectors, it never specifically addressed the proposed terms or offered a counterproposal. (Id.) Finally, in late January, FCI indicated to Molex that the licensing negotiations should not have been taking as long as they were, and again requested a prompt response. (Id.) The Nevada Litigation, filed the very next day, was Molex's only response.

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C.

The Pending Litigations

Despite representing to FCI that it was interested in discussing a license agreement, Molex preemptively filed a declaratory judgment action on January 25, 2007 with respect to the '883 patent and the '964 patent to gain a tactical advantage in the negotiations. Molex Inc. v. FCI Americas Technology, Inc., No. 3:07-CV-00039-BES-VPC (D. Nev. filed Jan. 25, 2007). Molex's complaint only named FCI TECH as the defendant and not FCI USA, the real party in interest. The Nevada litigation has been assigned to the Honorable Brian Sandoval. Molex did not serve the Nevada complaint until January 29, 2007 after the present lawsuit was filed on January 26, 2007. On February 27, 2007, FCI amended the complaint in this case to add the '643 patent, which issued that day. The '643 patent is not at issue in the Nevada litigation. On March 22, 2007 (the same day Molex filed the present motion), FCI TECH filed a motion to dismiss Molex's complaint, or in the alternative, to stay the Nevada litigation pending resolution of this case. IV. ARGUMENT Molex's motion to dismiss, transfer or stay the present case is based solely on the fact that it was the first to file a complaint in Nevada. Molex contends that the Court should defer to the Nevada litigation simply because it was filed one day earlier than the present action. (Motion at 3-5.) Molex further claims that there is no reason to depart from the first-to-file rule. (Id. at 5) Molex is wrong. The Court should not follow the first-to-file rule in this case, because several of the recognized exceptions to the rule are applicable here. A. Legal Standard

While the first-filed case is generally favored when determining which of two parallel litigations should proceed, there are several well-established exceptions to this rule. Indeed, 5

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"exceptions are not rare, and district courts are given discretion in retaining jurisdiction `when justice or expediency requires.'" Thales Airborne Sys. S.A. v. Univ. Avionics Sys. Corp., No. 05583-SLR, 2006 U.S. Dist. LEXIS 41895, at *10 (D. Del. Jun. 21, 2006) (emphasis added) (quoting Genentech, Inc. v. Eli Lilly and Co., 998 F.2d 931, 937 (Fed. Cir. 1993)). The first-tofile rule "is not a rigid or inflexible rule to be mechanically applied." Chase Manhattan Bank v. Freedom Card Inc., 265 F. Supp. 2d 449, 450 (D. Del. 2003); see also EEOC v. University of Pa., 850 F.2d 969, 972 (3d Cir. 1988), aff'd, 493 U.S. 182 (1990) (recognizing that the first-filed rule "is not a mandate directing wooden application."). The first-to-file inquiry is an equitable one. Serco Servs. Co., L.P. v Kelley Co., Inc., 51 F.3d 1037, 1039 (Fed. Cir. 1995) (holding that the principle should not be applied when "considerations of judicial and litigant economy, and the just and effective disposition of disputes, require otherwise."); EEOC, 850 F.2d at 977 (holding that "[t]he letter and spirit of the first-filed rule . . . are grounded on equitable principles"). B. The First-to-File Rule Should Not Be Applied Because Litigation in Nevada Would Not Be Convenient for Either of the Parties or Any of the Witnesses.

The Federal Circuit has held that the first-to-file principle does not apply when "considerations of judicial and litigant economy, and the just and effective disposition of disputes, require otherwise." Serco Servs., 51 F.3d at 1039; Genentech, 998 F.2d at 937 (holding that exceptions are "made when justice or expediency requires"). Exceptions are not rare and include considerations such as "the convenience and availability of witnesses, or absence of jurisdiction over all necessary or desirable parties, or the possibility of consolidation with related litigation, or considerations relating to the real party in interest." Genentech, 998 F.2d at 938. This Court has rejected the first-to-file principle in cases where the second-filed action is demonstrably more convenient for the parties and witnesses. See, e.g., Arrow Commun. Labs.,

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Inc. v. John Mezzalingua Assocs., No. 05-357-SLR, 2005 U.S. Dist. LEXIS 25004, *9-10 (D. Del. Oct. 26, 2005) (declining to apply the first-filed rule because, inter alia, "all of the documents and records related to the accused product" were in the second-filed forum and a suit in the first-filed forum would "generate significant expenses and other burdens to the parties); Bayer Bioscience N.V. v. Monsanto Co., No. 03-023-GMS, 2003 U.S. Dist. LEXIS 4594, *6 (D. Del. Mar. 25, 2003) (declining to apply the first-filed rule where, among other things, "travel time and convenience in the aggregate would be substantially increased" if the case was kept in Delaware); Mentor Graphics v. Quickturn Design Sys., 77 F. Supp. 2d 505, 509-512 (D. Del. 1999) (declining to apply the first-filed rule in a Delaware declaratory judgment action over an infringement suit filed one day later in the Northern District of California where doing so would "be extremely disruptive" to three nonparty witnesses and their employers, the witnesses would be within the subpoena power of the California court, where both parties were located on the west coast, and where all emulating engineering activities took place on the west coast). It cannot be disputed that this forum would be more convenient for the parties and the known witnesses in this case than Nevada. Molex's principal place of business is near Chicago, Illinois, approximately 2000 miles from Reno. FCI USA, the real party in interest, is

headquartered in Etters, Pennsylvania (a suburb of Harrisburg), over 2500 miles from Reno. Both parties are substantially closer to this Court--Wilmington, Delaware is about 750 miles from Chicago and about 100 miles from Etters. There are no witnesses from either party residing in or near Nevada. In contrast,

employees of FCI USA and other potential non-party witnesses living in the Harrisburg, Pennsylvania area may be within the subpoena power of this Court, but certainly are not within the subpoena power of the Nevada court. Thus, it would be more convenient for witnesses of

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both parties if this case proceeded in this Court. Finally, virtually all of the acts that led to the research, development, marketing, and sale of the product covered by the patents-in-suit and the procurement of the patents-in-suit occurred at FCI USA's headquarters in Etters, Pennsylvania. Molex would not be prejudiced by allowing this litigation to proceed in this Court. Molex is not a resident of Nevada, and thus, the Nevada court has no special interest in protecting Molex as does this Court since Molex is incorporated in Delaware. This case is in its most infant stages and the Nevada court has not spent substantial time considering the issues and does not have special familiarity with the patents or technology. Cf. Optical Recording Corp. v. Capitol-EMI Music, Inc., 803. F. Supp. 971, 974 (D. Del. 1992) ("The Court's familiarity with the subject matter of the litigation will reduce the expenditure of judicial resources in handling this matter."). With regard to the relative experience of the two courts in handling patent infringement litigations, this Court is one of the more active and experienced district courts. Finally, Molex has litigated in this Court before, namely, it was involved in a patent litigation in 1994 and 1995 with Berg Electronics, Inc., a predecessor in interest to FCI. That litigation was extensive and featured an eleven day trial. Furthermore, Molex's current counsel was also counsel during that litigation. See Exhibit C (docket sheet from 1:94-cv-00470-RRM). The cases cited by Molex at pages 4-5 of its Motion merely show that this Court will defer to the first-filed rule absent any unusual circumstances. These cases do not support Molex's motion because the first-to-file analysis is both case-by-case and discretionary. Notably, Molex does not allege that the current facts are similar to any of these cases. In Genfoot, Inc. v. Payless Shoesource, Inc., No. 03-398-SLR, 2003 WL 22953183 (D. Del. Dec. 3, 2003), the defendant did not allege an exception to the first-filed rule, and thus, the Court applied the first-to-file rule by default. In Miteq, Inc. v. Comtech Telecomm. Corp., No. 02-1336-SLR,

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2003 WL 179991, *1-2 (D. Del. Jan. 23, 2003), the Court applied the first-filed rule in favor of the first-filed Arizona case because Arizona was where the defendant resided and where all of defendant's witnesses and documents were located. The New York plaintiff, having witnesses and evidence in New York, only alleged that it would be more convenient for it to litigate in this Court, and thus, the Court reasoned it would merely be transferring the inconvenience from plaintiff to defendant if it were to reject the first-filed rule. Id. Here, Molex has no ties to Nevada and litigating in this Court would not be any more inconvenient for Molex than in Nevada. Reisman v. Van Wagoner Funds, Inc., No. 02-012-SLR, 2002 WL1459384 (D. Del. Jun. 7, 2002) (which is not a patent case) is inapposite because in that case the first-filed case was in the other district along with seven other substantially similar actions and there was no discussion of any of the exceptions to the first-to-file rule for patent cases, which apply here. C. The First-to-File Rule Should Not Be Applied Because The Earlier-Filed Declaratory Judgment Action In Nevada Is Improper.

As set forth in FCI TECH's motion to dismiss filed in the Nevada litigation, deferring to the first-to-file rule under the present facts would be inconsistent with the Declaratory Judgment Act pursuant to EMC Corp. v. Norand Corp., 89 F.3d 807, 815 (Fed. Cir. 1996). (See Exhibit A.) This Court has recognized that "an inappropriate use of the declaratory judgment remedy" is an exception to the first-to-file rule. See Envirometrics Software v. Georgia-Pacific Corp., No. 97-243-SLR, 1997 U.S. Dist. LEXIS 17659, *11 (D. Del. Nov. 4, 1997); see also Enzo Biochem, Inc. v. Calgene, Inc., No. 93-110-JJF, 1993 WL 266518, *5 (D. Del. May 18, 1993) (noting that the first-filed rule does not apply "when the first-filed action was brought in bad faith, or in anticipation of the opposing party's imminent suit in another, less favorable, forum"). Molex's declaratory judgment action was improper. Molex initiated the Nevada FCI had

litigation while FCI and Molex were discussing a potential license agreement.

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repeatedly expressed that it wanted a quick resolution to the issue outside of the courts. Molex indicated that it wanted the same, but nevertheless, its only substantive response during the discussions was to initiate the Nevada action. This filing was purely a tactical maneuver to gain bargaining power in these licensing negotiations because the complaint was not served on FCI TECH until after the present litigation was filed. Given these facts, it is the Nevada litigation that should be dismissed. The first-to-file rule does not apply. Molex only "won" the race to the courthouse by stalling during licensing negotiations. In these cases, the fact that the delaying party was first to file is of less relevance and the secondfiled case should proceed. See Charles Scwab & Co. v. Duffy, No. C 98-03612-MMC 1998 U.S. Dist. LEXIS 19606, *4-5 (N.D. Cal. Dec. 8, 1998) ("Moreover, permitting this case to continue would reward a race to the courthouse that appears to have been `won' by Schwab, at least in part, due to a letter sent to Duffy's attorney that may have misled Duffy as to Schwab's settlement intentions."). As in Schwab, Molex filed first because it misled FCI as to its

settlement intentions. This Court should therefore refuse to apply the first-to-file rule. Moreover, this Court has recognized that the "`race to the courthouse' is particularly inappropriate under circumstances where `the party entitled to bring a coercive action [has not] failed or delayed in bringing it.'" Envirometrics, 1997 U.S. Dist. LEXIS 17659 at *9-10. FCI can hardly be accused of delay in bringing the present infringement action, because it believed that discussions were still active and was misled as to Molex's real intentions. D. The First-to-File Principle Should Not Be Applied Because the Two Litigations Are Not the Same.

Another exception to the first-filed principle is when the two co-pending litigations do not involve the same patents. This Court has recognized that second-filed actions that implicate additional patents or technologies present an exception to the first-filed rule. See APV N.A. Inc.

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v. Sig Simonazzi N.A. Inc., 295 F. Supp. 2d 393, 397-398 (D. Del. 2002) (finding that the first-tofile rule did not apply where the first-filed Texas action did not include two additional patents at issue in the Delaware action.); see also Thales, 2006 U.S. Dist. LEXIS 41895 at *11-12 (in considering "whether the first-filed rule applies when the second action involves additional patents," the Court cited APV N.A. Inc. and noted that while the Federal Circuit does adhere to the first-filed rule, "its application seems limited to actions `involving the same patents.'"). An additional patent ­ the '643 patent ­ is at issue in the present case and is not at issue in the Nevada litigation. Thus, the presence of this additional patent further supports rejecting the firstto-file rule. Molex contends that the presence of FCI USA in this case does not affect the application of the first-filed rule (Motion at 6) and that the presence of the additional '643 patent does not affect it either, because infringement of the '643 patent would be a compulsory counterclaim in Nevada. (Motion at 7-9). These contentions miss the mark. As it presently stands, this case involves all of the relevant and necessary parties and all of the patents in dispute. This is not true for the Nevada litigation. Moreover, unlike the Nevada litigation, there is no question that this Court has subject matter jurisdiction.3 The relevant inquiry before this Court is to decide which jurisdiction is in the best position to promote judicial efficiency. This Court has explained that while it is often "reasonable and practical" to defer to the first-filed principle "when two federal courts are advised that both are handling the same case[,] . . . it is equally reasonable and practical for a district court not to defer to the first-filed jurisdiction if the court can demonstrate

3

As indicated above, FCI TECH has requested that the Nevada court exercise discretion in not hearing Molex's declaratory judgment action under the principles set forth by the Federal Circuit in the EMC case. See Exhibit A.

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that the second-filed court can insure that it is in a better position to preserve judicial resources and avoid duplication." Optical Recording, 803 F. Supp. at 973 (emphasis added). The present case would proceed more efficiently than the Nevada litigation. Accordingly, this Court is "in a better position to preserve judicial resources and avoid duplication" in comparison to the Nevada court. E. The First-to-File Rule Should Not Be Applied Because the Present Case Was Filed Only a Day After the Nevada Litigation.

Application of the first-to-file rule is not required here to prevent inefficiency or prejudice, because FCI filed suit against Molex the very next day. The first-to-file rule is less important when a short period of time passes between the first and second actions because no judicial resources are wasted in allowing the second-filed case to proceed. See Capitol Records, Inc. v. Optical Recording Corp., 810 F. Supp. 1350, 1355 (S.D.N.Y. 1992) ("Finally, the date of filing is less important when the competing actions are filed within a short period of time. Only twenty days elapsed between the filing of the two complaints and no discovery or other pretrial proceedings had occurred in either forum at the time.") (internal citations omitted); Columbia Pictures Indus., Inc. v. Schneider, 435 F. Supp. 742, 748 (S.D.N.Y. 1977) ("Moreover, only six days elapsed between the filing of the two complaints; no discovery or other pretrial proceedings occurred in either district. Thus, no judicial inefficiency or duplication of efforts will result from requiring the parties to litigate [in the second-filed forum.]"). Here, only one day passed

between the filing of this action and Molex's filing in Nevada. In fact, the present litigation was filed before Molex served its complaint in the Nevada litigation, which is another reason to depart from the first-to-file rule. See Hop-In Food Stores, Inc. v. S & D Coffee, Inc., 642 F. Supp. 1106, 1107 (W.D. Va. 1986) (departing from the first-to-file rule in part because service was only accomplished after the parallel action was filed).

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This Court should not dismiss, stay or transfer the present case under the first-filed rule for any one of the exceptions identified above. V. CONCLUSION For the reasons set forth above, the Court should deny Molex's Motion to Dismiss, Stay, or Transfer the present action.

MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Thomas C. Grimm
__________________________________________ Thomas C. Grimm (#1098) Leslie A. Polizoti (#4299) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 [email protected] [email protected] OF COUNSEL: Albert J. Breneisen George E. Badenoch KENYON & KENYON LLP One Broadway New York, NY 10004 (212) 425-7200 John W. Bateman Michael M. Shen Yariv Waks KENYON & KENYON LLP 1500 K Street, NW Washington, DC 20005 (202) 220-4200 April 5, 2007
787620

Attorneys for Plaintiffs

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CERTIFICATE OF SERVICE I hereby certify that on April 5, 2007, I electronically filed the foregoing document with the Clerk of the Court using CM/ECF which will send notification of such filing to the following: Adam W. Poff YOUNG, CONAWAY, STARGATT & TAYLOR LLP Additionally, I hereby certify that true and correct copies of the foregoing were caused to be served on April 5, 2007 upon the following individuals in the manner indicated: BY HAND & E-MAIL Josy W. Ingersoll Adam W. Poff YOUNG, CONAWAY, STARGATT & TAYLOR LLP The Brandywine Building, 1000 West Street, 17th Floor Wilmington, DE 19899-0391 BY E-MAIL John W. Kozak Dennis R. Schlemmer LEYDIG, VOIT & MAYER, LTD. Two Prudential Plaza, Suite 4900 180 N. Stetson Avenue Chicago, IL 60601-6780

/s/ Thomas C. Grimm
Thomas C. Grimm (#1098) [email protected]
787620

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EXHIBIT A

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EXHIBIT B

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EXHIBIT C

CM/ECF LIVE - U.S. District Court:ded - Docket Report Case 1:07-cv-00049-JJF Document 10-2

page 1 of p Filed 04/05/2007 Page 26 of 45 CLOSED, PATENT

U.S. District Court District of Delaware (Wilmington) CIVIL DOCKET FOR CASE #: 1:94-cv-00470-RRM

Berg Electronics v. Molex, Incorporated Assigned to: Judge Roderick R. McKelvie Demand: $0 Cause: 28:2201 Declaratory Judgment Plaintiff Berg Electronics, Inc.

Date Filed: 09/09/1994 Date Terminated: 12/05/1995 Jury Demand: Both Nature of Suit: 830 Patent Jurisdiction: Federal Question

represented by Jack B. Blumenfeld Morris, Nichols, Arsht & Tunnell LLP 1201 North Market Street P.O. Box 1347 Wilmington, DE 19899 (302) 658-9200 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED

V. Defendant Molex, Incorporated represented by Ben T. Castle Young, Conaway, Stargatt & Taylor The Brandywine Building 1000 West Street, 17th Floor P.O. Box 391 Wilmington, DE 19899-0391 (302) 571-6600 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED Josy W. Ingersoll Young, Conaway, Stargatt & Taylor The Brandywine Building 1000 West Street, 17th Floor P.O. Box 391 Wilmington, DE 19899-0391 (302) 571-6600 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED Counter Claimant Molex, Incorporated represented by Ben T. Castle (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED 4/5/2007

https://ecf.ded.uscourts.gov/cgi-bin/DktRpt.pl?731708590655908-L_353_0-1

CM/ECF LIVE - U.S. District Court:ded - Docket Report Case 1:07-cv-00049-JJF Document 10-2

page 2 of p Filed 04/05/2007 Page 27 of 45 Josy W. Ingersoll (See above for address) ATTORNEY TO BE NOTICED

V. Counter Defendant Berg Electronics, Inc. represented by Jack B. Blumenfeld (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED

Counter Claimant Molex, Incorporated represented by Ben T. Castle (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Josy W. Ingersoll (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED V. Counter Defendant Berg Electronics, Inc. represented by Jack B. Blumenfeld (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED

Date Filed 09/09/1994 09/09/1994 09/12/1994 09/23/1994 09/30/1994 10/03/1994 10/12/1994 10/13/1994

#

Docket Text 1 COMPLAINT filed; FILING FEE $ 120.00 RECEIPT # 106072 (joy) (Entered: 09/12/1994) SUMMONS(ES) issued for Molex, Incorporated (joy) (Entered: 09/12/1994) 2 Report to Commissioner of Patents and Trademarks. Exit original. (joy) (Entered: 09/12/1994) 3 CERTIFICATE OF SERVICE by Berg Electronics re pltfs' 1st set of reqst for production of docs & things (ds) (Entered: 09/27/1994) 4 ANSWER to complaint and COUNTERCLAIM by Molex, Incorporated (Attorney Ben T. Castle); jury demand against Berg Electronics (nj) (Entered: 10/05/1994) 5 RETURN OF SERVICE executed as to Molex, Incorporated 9/12/94 Answer due on 10/3/94 for Molex, Incorporated (nj) (Entered: 10/06/1994) 6 CASE assigned to Judge Roderick R. McKelvie . Notice to all parties. (lg) (Entered: 10/12/1994) 8 CERTIFICATE OF SERVICE by Molex, Incorporated re deft's 1st reqst for production of docs (ds) (Entered: 10/18/1994) 4/5/2007

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CM/ECF LIVE - U.S. District Court:ded - Docket Report page 3 of p Case 1:07-cv-00049-JJF Document 10-2 Filed 04/05/2007 Page 28 of 45 10/14/1994 7 Letter from Judge McKelvie to counsel with a draft proposed scheduling order. (lg) (Entered: 10/14/1994) 10/14/1994 10/14/1994 10/14/1994 10/14/1994 10/19/1994 9 DEMAND for jury trial by Berg Electronics (lg) (Entered: 10/18/1994) 10 MOTION by Berg Electronics with Proposed Order for Norman L. Norris to Appear Pro Hac Vice (lg) (Entered: 10/18/1994) 11 MOTION by Berg Electronics with Proposed Order for Albert T. Keyack to Appear Pro Hac Vice (lg) (Entered: 10/18/1994) 12 MOTION by Berg Electronics with Proposed Order for John P. Donohue, Jr. to Appear Pro Hac Vice (lg) (Entered: 10/18/1994) So Ordered granting [12-1] motion for John P. Donohue, Jr. to Appear Pro Hac Vice, granting [11-1] motion for Albert T. Keyack to Appear Pro Hac Vice, granting [10-1] motion for Norman L. Norris to Appear Pro Hac Vice ( signed by Judge Roderick R. McKelvie ) Notice to all parties. (lg) (Entered: 10/20/1994) 13 MOTION by Berg Electronics with Proposed Order for Frederick A. Tecce to Appear Pro Hac Vice (lg) (Entered: 10/20/1994) 14 CERTIFICATE OF SERVICE by Molex, Incorporated copies First Set of Interrogs No. 1-26. (lg) (Entered: 10/20/1994) 15 ANSWER by Berg Electronics to [4-2] counter claim (lg) (Entered: 10/21/1994) So Ordered granting [13-1] motion for Frederick A. Tecce to Appear Pro Hac Vice ( signed by Judge Roderick R. McKelvie ) Notice to all parties. (lg) (Entered: 10/21/1994) 16 CERTIFICATE OF SERVICE by Molex, Incorporated copies Response to First Request for Production of Documents and Things. (lg) (Entered: 10/25/1994) 17 Letter from Judge McKelvie to counsel to follow up the 10/31/94 telephone conference call. (lg) (Entered: 11/01/1994) 18 SCHEDULING ORDER setting Status Report 1/18/95 Status Conference 4:00 1/25/95 Joining of parties,amending of pleadings on 1/17/95 ; Discovery cutoff 7/13/95 ; Deadline for filing dispositive motions 7/6/95 Pretrial conference for 2:00 9/5/95 ; Fifteen Day Jury Trial Date Deadline 9:00 9/11/95 ; ( signed by Judge Roderick R. McKelvie ) copies to: counsel and MPT (lg) (Entered: 11/01/1994) 19 MOTION by Molex, Incorporated with Proposed Order for Preliminary Injunction (lg) (Entered: 11/01/1994) 20 Opening Brief Filed by Molex, Incorporated [19-1] motion for Preliminary Injunction Answer Brief due 11/14/94 {SEALED} (lg) (Entered: 11/01/1994) 21 Appendix to Brief Filed by Molex, Incorporated Appending [20-1] opening brief {SEALED} (lg) (Entered: 11/01/1994) 22 Exhibits to Opening Brief Filed by Molex, Incorporated Appending [20-1] opening brief Volume I {SEALED} (lg) (Entered: 11/01/1994) 23 Exhibits to Opening Brief Filed by Molex, Incorporated Appending [20-1] opening brief Volume II {SEALED} (lg) (Entered: 11/01/1994) 24 MOTION by Molex, Incorporated with Proposed Order for Dennis R. Schlemmer to Appear Pro Hac Vice (lg) (Entered: 11/01/1994)

10/20/1994 10/20/1994 10/20/1994 10/21/1994

10/25/1994 10/31/1994 10/31/1994

10/31/1994 10/31/1994 10/31/1994 10/31/1994 10/31/1994 11/01/1994

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4/5/2007

CM/ECF LIVE - U.S. District Court:ded - Docket Report page 4 of p Case 1:07-cv-00049-JJF Document 10-2 Filed 04/05/2007 Page 29 of 45 11/01/1994 25 MOTION by Molex, Incorporated with Proposed Order for John W. Kozak to Appear Pro Hac Vice (lg) (Entered: 11/01/1994) 11/02/1994 So Ordered granting [25-1] motion for John W. Kozak to Appear Pro Hac Vice, granting [24-1] motion for Dennis R. Schlemmer to Appear Pro Hac Vice ( signed by Judge Roderick R. McKelvie ) Notice to all parties. (lg) (Entered: 11/02/1994) 26 Proposed Protective Order filed by Berg Electronics, Molex, Incorporated (lg) (Entered: 11/08/1994) 27 ORDER, set Telephone Conference for 9:00 11/30/94 ( signed by Judge Mary P. Trostle ) copies to: Blumenfeld, Ingersoll & Castle (lg) (Entered: 11/14/1994) So Ordered [26-1] proposed order ( signed by Judge Roderick R. McKelvie ) Notice to all parties. (lg) (Entered: 11/14/1994) Tele-conference held - ct rptr V. Gunning. (lg) (Entered: 11/15/1994) 28 CERTIFICATE OF SERVICE by Berg Electronics resp. to deft's 1st rqst. for prod. docs. (ssb) (Entered: 11/17/1994) 29 ORDER, reset Pretrial Conference for 2:30 2/15/95 and 2 day Motion Hearing set for 9:00 2/22/95 for [19-1] motion for Preliminary Injunction w/each side being allocated 6 hours to present its case ( signed by Judge Roderick R. McKelvie ) copies to: cnsl. (ssb) (Entered: 11/17/1994) 30 CERTIFICATE OF SERVICE by Berg Electronics resp. to deft's 1st set of interrogs. (ssb) (Entered: 11/22/1994) 31 Steno Notes for 11/15/94 telephone conference (Ct. Rptr. Gunning) (ssb) (Entered: 11/29/1994) 32 ORDER, set Settlement Conference for 9:00 2/14/95 ( signed by Judge Mary P. Trostle ) copies to: Blumenfeld, Ingersoll & Castle (lg) (Entered: 12/01/1994) 33 NOTICE by Berg Electronics to take deposition of Kent E. regnier on 12/15/94 at 10:00 a.m. (lg) (Entered: 12/14/1994) 34 NOTICE by Berg Electronics to take deposition of Patrick D. Bakke on 12/14/94 at 10:30 a.m. (lg) (Entered: 12/14/1994) 35 NOTICE by Berg Electronics to take deposition of Anthony M. DiViesti on 12/16/94 at 10:00 a.m. (lg) (Entered: 12/14/1994) 36 CERTIFICATE OF SERVICE of Subpoena for Production of Documents and Things by Berg Electronics (lg) (Entered: 12/15/1994) 37 CERTIFICATE OF SERVICE by Berg Electronics of Subpoena for Production of Documents and Things. (lg) (Entered: 01/03/1995) 38 NOTICE by Berg Electronics to take deposition of Charles Cohen on 1/12/95 at 9:30 a.m. (lg) (Entered: 01/10/1995) 39 NOTICE by Berg Electronics to take deposition of Hans Van Delft on 1/11/95 at 10:30 a.m. (lg) (Entered: 01/10/1995) 40 NOTICE by Berg Electronics to take deposition of Stephen Z. Weiss on 1/20/95 at 9:00 a.m. (lg) (Entered: 01/19/1995) 41 NOTICE by Berg Electronics to take deposition of Alan Walse on 1/18/95 at 10:00 a.m. (lg) (Entered: 01/19/1995) 4/5/2007

11/08/1994 11/10/1994 11/14/1994 11/15/1994 11/15/1994 11/16/1994

11/21/1994 11/28/1994 11/30/1994 12/13/1994 12/13/1994 12/13/1994 12/14/1994 12/23/1994 01/09/1995 01/09/1995 01/17/1995 01/17/1995

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CM/ECF LIVE - U.S. District Court:ded - Docket Report Case 1:07-cv-00049-JJF Document 10-2 Filed 04/05/2007 Page 30 of 45 01/18/1995 42 STATUS REPORT by Molex, Incorporated (lg) (Entered: 01/19/1995) 01/18/1995 01/18/1995 01/18/1995 01/18/1995

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43 Videotape filed by Molex, Incorporated Molex Patents {SEALED} (lg) (Entered: 01/19/1995) 44 Videotape filed by Berg Electronics {SEALED} (lg) (Entered: 01/19/1995) 45 Letter from Jack B. Blumenfeld, Esq. to Judge McKelvie {SEALED} (lg) (Entered: 01/19/1995) 46 Letter from Jack Blumenfeld, Esq. to the Clerk of Court to inform that pltf does not intend to file an opening brief to their Motion for Leave to Amend Pltf's Complaint and Reply to Counterclaims. (lg) (Entered: 01/19/1995) 47 MOTION by Berg Electronics with Proposed Order for Leave to Amend Plaintiff's Complaint , and to Amend [15-1] counterclaim answer Plaintiff's Reply to Defendant's Counterclaims Answer Brief due 2/1/95 re: [47-1] motion, Answer Brief due 2/1/95 re: [47-2] motion (lg) (Entered: 01/19/1995) 48 RE-NOTICE by Berg Electronics to take videotape deposition of Stephen Z. Weiss on 1/20/95 at 9:00 a.m. (lg) (Entered: 01/19/1995) 49 NOTICE by Berg Electronics to take videotape deposition of John LoPata on 1/19/95 at 1:30 p.m. (lg) (Entered: 01/19/1995) 50 Letter from Josy Ingersoll, Esq. to Judge McKelvie RE: privileged documents inadvertently produced. (lg) (Entered: 01/20/1995) 51 TRANSCRIPT filed for dates of 11/15/94 teleconference - ct rptr V. Gunning. (lg) (Entered: 01/20/1995) 52 TRANSCRIPT filed for dates of 1/15/95 teleconference - ct rptr V. Gunning. (lg) (Entered: 01/20/1995) 53 CERTIFICATE OF SERVICE by Berg Electronics of Subpoena for Production of Documents and Things on Paul J. Hayes, Esq. (lg) (Entered: 01/23/1995) 54 CERTIFICATE OF SERVICE by Berg Electronics of Subpoena for Production of Documents and Things on IBM Corporation. (lg) (Entered: 01/23/1995) 55 CERTIFICATE OF SERVICE by Berg Electronics of Subpoena for Production of Documents and Things on IBM Corporation. (lg) (Entered: 01/23/1995) 56 RESPONSE in letter form filed by Berg Electronics in opposition to [43-1] videotape of Molex Incorporated. (lg) (Entered: 01/26/1995) Status conference held - ct rptr V. Gunning. (lg) (Entered: 01/26/1995) 57 TRANSCRIPT filed for dates of 1/20/95 teleconference - ct rptr H. Slate. (lg) (Entered: 01/26/1995) 58 NOTICE by Berg Electronics to take deposition of Richard Bahou on 1/26/95 at 1:30 p.m. (lg) Modified on 01/26/1995 (Entered: 01/26/1995) 59 NOTICE by Berg Electronics to take deposition of John LoPata on 1/26/95 at 10:30 a.m. (lg) (Entered: 01/26/1995) 60 Letter to Judge McKelvie from Josy W. Ingersoll on behalf of deft. Molex addressing the more significant controverted points of the videotape presentation submitted to the Court by Berg Electronics, Inc. (ssb) (Entered: 01/30/1995) 61 NOTICE by Berg Electronics to take deposition of Mansanori Yagi on 2/2/95 at 9:00 4/5/2007

01/18/1995

01/19/1995 01/19/1995 01/20/1995 01/20/1995 01/20/1995 01/20/1995 01/20/1995 01/20/1995 01/25/1995 01/25/1995 01/25/1995 01/26/1995 01/26/1995 01/27/1995

01/30/1995

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CM/ECF LIVE - U.S. District Court:ded - Docket Report Case 1:07-cv-00049-JJF Document 10-2 a.m. (lg) (Entered: 01/31/1995) 01/30/1995 01/31/1995 01/31/1995

page 6 of p Filed 04/05/2007 Page 31 of 45

62 CERTIFICATE OF SERVICE by Berg Electronics copies Supplemental Response to Deft's First Set of Interrogs. (lg) (Entered: 01/31/1995) 63 TRANSCRIPT filed for dates of 1/25/95 2:03 p.m. - ct rptr V. Gunning. (lg) (Entered: 01/31/1995) 65 STIPULATION with proposed order to grant pltf's Motion for Leave to Amend its Complaint and to Amend its Reply to Deft's Counterclaims (D.I. 47); to deem as filed upon the entry of this Stipulation and Order the Amended Complaint and Pltf's Amended Reply to Deft's Counterclaims; and to extend the time to 3/10/95 for deft to respond to the Amended Complaint. (lg) (Entered: 02/02/1995) 66 Proposed Order filed by Berg Electronics, Molex, Incorporated for deft to produce to pltf, for use by outside counsel only, a Design Development Agreement between Molex In. and International Business Machines Corp. executed 9/21/89 and any related documents; and that the parties shall produce, for use by outside counsel only, any other documents withheld on the basis of confidentiality obligations to third parties; provided, however, that if either party has concerns about production of a specific document because of confidentiality obligations to a third party, it may arrange for a telephone conference with the Court to resolve the matter. (lg) (Entered: 02/02/1995) 64 Steno Notes for 1/20/95 teleconference - ct rptr H. Slate. (lg) (Entered: 02/01/1995) So Ordered [66-1] proposed order granting [65-1] stipulation ( signed by Judge Roderick R. McKelvie ) Notice to all parties. (lg) (Entered: 02/03/1995) So Ordered granting [47-1] motion for Leave to Amend Plaintiff's Complaint, granting [47-2] motion to Amend [15-1] counterclaim answer Plaintiff's Reply to Defendant's Counterclaims ( signed by Judge Roderick R. McKelvie ) Notice to all parties. (lg) (Entered: 02/03/1995) 67 Amended ANSWER by Berg Electronics to [4-2] counter claim {SEALED} (lg) Modified on 02/07/1995 (Entered: 02/07/1995) 68 AMENDED COMPLAINT by Berg Electronics , (Answer due 2/13/95 for Molex, Incorporated ) amending [1-1] complaint (lg) (Entered: 02/07/1995) 69 Steno Notes for 2/5/95 teleconference - ct rptr K. Maurer. (lg) (Entered: 02/08/1995) 70 OPINION ( signed by Judge Roderick R. McKelvie ) copies to: picked up by cnsl (lg) (Entered: 02/09/1995) 71 ORDER Granting Deft's Motion for Return of Documents: pltf shall return to deft all copies of the documents deft has identified as inadvertently produced. As to each document returned, deft shall prepare a log identifying the document and the basis for the claim that it is protected by the attorney-client privilege or that it is not relevant. To the extent deft has also moved to strike that portion of the deposition testimony taken regarding the inadvertently produced documents, deft may renew this application at the pretrial conferece. ( signed by Judge Roderick R. McKelvie ) copies to: picked up by cnsl (lg) (Entered: 02/09/1995) 72 Proposed pre-trial order filed by Berg Electronics, Molex, Incorporated {SEALED} (lg) (Entered: 02/14/1995) 73 CERTIFICATE OF SERVICE of subpoena by Berg Electronics for prod. docs. on Thomas J. Scott, Jr., Esq. (ssb) (Entered: 02/17/1995) 74 Letter from Josy W. Ingersoll to Judge McKelvie encl. draft order reflecting the 4/5/2007

01/31/1995

02/01/1995 02/02/1995 02/02/1995

02/02/1995 02/02/1995 02/08/1995 02/08/1995 02/08/1995

02/13/1995 02/16/1995 02/16/1995

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CM/ECF LIVE - U.S. District Court:ded - Docket Report page 7 of p Case 1:07-cv-00049-JJF Document 10-2 Filed 04/05/2007 Page 32 of 45 confidential treatment of the Augat documents discussed at yesterday's pretrial conference. (ssb) (Entered: 02/17/1995) 02/16/1995 02/16/1995 02/17/1995 02/17/1995 02/21/1995 75 Steno Notes for 2/15/95 pretrial conference (Ct. Rptr. Maurer) (ssb) (Entered: 02/17/1995) 76 Proposed Order filed by Molex, Incorporated RE: confidential treatment of the Augat documents. (lg) (Entered: 02/22/1995) 77 Steno Notes for 1/25/95 conference - ct rptr V. Gunning. (lg) (Entered: 02/22/1995) 78 TRANSCRIPT filed for dates of 2/15/95 conference - ct rptr K. Maurer. (lg) (Entered: 02/22/1995) 79 MOTION by Berg Electronics with Proposed Order for Leave to Exceed Page Limitation - to exceed the 40 page limit for the Pre-Hearing Memorandum in Opposition to Deft's Motion for a Preliminary Injunction (to 53 pages) (lg) (Entered: 02/22/1995) 80 Answer Brief Filed by Berg Electronics [19-1] motion for Preliminary Injunction Reply Brief due 2/28/95 {SEALED} (lg) (Entered: 02/22/1995) 81 MOTION by Molex, Incorporated with Proposed Order for Paul J. Korniczky to Appear Pro Hac Vice (lg) Modified on 02/22/1995 (Entered: 02/22/1995) 82 MOTION by Molex, Incorporated with Proposed Order for Joh E. Rosenquist to Appear Pro Hac Vice (lg) (Entered: 02/22/1995) Motion hearing re: [19-1] motion for Preliminary Injunction Motion hearing held Day One - ct rptr K. Maurer. (lg) (Entered: 02/23/1995) Motion hearing re: [19-1] motion for Preliminary Injunction Motion hearing held Day Two - ct rptr K. Maurer. (lg) (Entered: 02/23/1995) So Ordered granting [82-1] motion for Joh E. Rosenquist to Appear Pro Hac Vice, granting [81-1] motion for Paul J. Korniczky to Appear Pro Hac Vice ( signed by Judge Roderick R. McKelvie ) Notice to all parties. (lg) (Entered: 02/23/1995) 83 TRANSCRIPT filed for dates of 2/22/95 Motion Hearing - ct rptr K. Maurer. (lg) (Entered: 02/23/1995) 84 MOTION by Berg Electronics with Proposed Order for Kevin M. Flannery to Appear Pro Hac Vice (lg) (Entered: 02/23/1995) 85 MOTION by Berg Electronics with Proposed Order for Rebecca Ralph to Appear Pro Hac Vice (lg) (Entered: 02/23/1995) 86 TRANSCRIPT filed for dates of 2/23/95 Hearing Day Two - ct rptr K. Maurer. (lg) (Entered: 02/24/1995) Motion hearing Day Three re: [19-1] motion for Preliminary Injunction - ct rptr K. Maurer. (lg) (Entered: 02/24/1995) So Ordered granting [85-1] motion for Rebecca Ralph to Appear Pro Hac Vice, granting [84-1] motion for Kevin M. Flannery to Appear Pro Hac Vice ( signed by Judge Roderick R. McKelvie ) Notice to all parties. (lg) (Entered: 02/24/1995) So Ordered [76-1] proposed order granting [79-1] motion for Leave to Exceed Page Limitation - to exceed the 40 page limit for the Pre-Hearing Memorandum in Opposition to Deft's Motion for a Preliminary Injunction (to 53 pages) ( signed by Judge Roderick R. McKelvie ) Notice to all parties. (lg) (Entered: 02/27/1995) 4/5/2007

02/21/1995 02/21/1995 02/21/1995 02/22/1995 02/23/1995 02/23/1995

02/23/1995 02/23/1995 02/23/1995 02/24/1995 02/24/1995 02/24/1995

02/27/1995

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CM/ECF LIVE - U.S. District Court:ded - Docket Report page 8 of p Case 1:07-cv-00049-JJF Document 10-2 Filed 04/05/2007 Page 33 of 45 02/27/1995 87 TRANSCRIPT filed for dates of 2/24/95 at 9:00 a.m. - ct rptr K. Maurer. (lg) (Entered: 02/27/1995) 02/28/1995 02/28/1995 02/28/1995 03/07/1995 88 Steno Notes for 2/22/1995 Motion Hearing RE: Preliminary Injunction - ct rptr K. Maurer. (lg) (Entered: 03/01/1995) 89 Steno Notes for 2/23/95 Motion Hearing Second Day - ct rptr K. Maurer. (lg) (Entered: 03/01/1995) 90 Steno Notes for 2/24/1995 Motion Hearing Third Day - ct rptr K. Maurer. (lg) (Entered: 03/01/1995) 91 Letter from Donald F. Parsons, Jr. to Judge McKelvie attaching a list which crossreferences the depos. exhibit numbers identified in the depos. admitted into evidence as exhibits numbers 520-527 with the corresponding trial exhibit numbers from the hearing of 2/23-24/95. (ssb) (Entered: 03/08/1995) 92 MOTION by Molex, Incorporated to Extend Time to Answer Count I of the Amended Complaint Answer Brief due 3/24/95 re: [92-1] motion (lg) (Entered: 03/14/1995) 93 MOTION by Molex, Incorporated to Dismiss Counts II through V of Amended Complaint (lg) (Entered: 03/14/1995) 94 Opening Brief Filed by Molex, Incorporated [93-1] motion to Dismiss Counts II through V of Amended Complaint Answer Brief due 3/24/95 {SEALED} (lg) Modified on 03/14/1995 (Entered: 03/14/1995) 95 Post Hearing Brief Filed by Molex, Incorporated [19-1] motion for Preliminary Injunction Answer Brief due 3/27/95 (lg) (Entered: 03/14/1995) 96 Post Hearing Memorandum in Opposition Filed by Berg Electronics [19-1] motion for Preliminary Injunction Reply Brief due 3/21/95 {SEALED} (lg) (Entered: 03/14/1995) 97 STIPULATION with proposed order for the parties to serve and file their responsive post hearing memoranda on deft's Motion for a Preliminary Injunction shall be extended to 3/23/95. (lg) (Entered: 03/17/1995) 98 Exhibit list by Berg Electronics, Molex, Incorporated for the February 1995 Hearing on the Motion for Preliminary Injunction. (lg) (Entered: 03/17/1995) So Ordered granting [97-1] stipulation ( signed by Judge Roderick R. McKelvie ) Notice to all parties. (lg) (Entered: 03/17/1995) 99 Reply Brief Filed by Molex, Incorporated [19-1] motion for Preliminary Injunction {SEALED} (lg) (Entered: 03/28/1995) 100 Answer Brief Filed by Berg Electronics [19-1] motion for Preliminary Injunction {SEALED} (lg) (Entered: 03/28/1995) 101 STIPULATION with proposed order that the schedule for the completion of briefing on Deft's Motion to Dismiss Counts II through V of the Amended Complaint (D.I. 93) shall be: Berg's Answering Brief due 4/11/95 and Molex's Reply Brief due 4/21/95. (lg) (Entered: 03/28/1995) 102 Answer Brief Filed by Berg Electronics [92-1] motion to Extend Time to Answer Count I of the Amended Complaint Reply Brief due 3/31/95 (lg) (Entered: 03/28/1995) 103 ORDER denying [19-1] motion for Preliminary Injunction, reset Scheduling Order Deadlines: Pretrial conference by 2:00 5/24/95 Ten Day Jury Trial Date Deadline 9:00 6/1/95 ( signed by Judge Roderick R. McKelvie ) copies to: Blumenfeld, Ingersoll & Castle (lg) (Entered: 03/28/1995) 4/5/2007

03/10/1995 03/10/1995 03/10/1995

03/13/1995 03/14/1995 03/16/1995

03/17/1995 03/17/1995 03/23/1995 03/24/1995 03/24/1995

03/24/1995 03/28/1995

https://ecf.ded.uscourts.gov/cgi-bin/DktRpt.pl?731708590655908-L_353_0-1

CM/ECF LIVE - U.S. District Court:ded - Docket Report page 9 of p Case 1:07-cv-00049-JJF Document 10-2 Filed 04/05/2007 Page 34 of 45 03/29/1995 104 TRANSCRIPT filed for dates of 3/28/95 Hearing - ct rptr V. Gunning. (lg) (Entered: 03/29/1995) 03/31/1995 04/11/1995 04/11/1995 04/12/1995 04/12/1995 04/13/1995 04/14/1995 04/14/1995 04/21/1995 04/21/1995 105 Steno Notes for 3/28/95 Hearing - ct rptr V. Gunning. (lg) (Entered: 03/31/1995) 106 CERTIFICATE OF SERVICE by Berg Electronics copies First Set of Interrogs and Second Set of Document Requests. (lg) (Entered: 04/12/1995) 107 TRANSCRIPT filed for dates of 4/5/95 teleconference - ct rptr V. Gunning. (lg) (Entered: 04/12/1995) 108 ANSWER to amended complaint and COUNTERCLAIM by Molex, Incorporated against Berg Electronics (lg) (Entered: 04/17/1995) 109 Answer Brief Filed by Berg Electronics [93-1] motion to Dismiss Counts II through V of Amended Complaint Reply Brief due 4/19/95 (lg) (Entered: 04/17/1995) 110 NOTICE by Berg Electronics to take deposition of Shoji Yamada on 4/18/95 at 10:00 a.m. (lg) (Entered: 04/17/1995) 111 MOTION by Molex, Incorporated to Place Berg's Tort Claims into the Second Trial (lg) (Entered: 04/17/1995) 112 Opening Brief Filed by Berg Electronics [111-1] motion to Place Berg's Tort Claims into the Second Trial Answer Brief due 4/28/95 (lg) (Entered: 04/17/1995) 113 Steno Notes for 4/5/95 teleconference - ct rptr V. Gunning. (lg) (Entered: 04/21/1995) 114 CERTIFICATE OF SERVICE by Molex, Incorporated copies Second Set of Requests for the Production of Documents and Things (Nos. 69-100) and Second Set of Interrogs (Nos. 27-29) (lg) (Entered: 04/21/1995) 115 Reply Brief Filed by Molex, Incorporated [93-1] motion to Dismiss Counts II through V of Amended Complaint (lg) (Entered: 04/24/1995) 116 Subpoena for E.I. duPont de Nemours & Co. for deposition and production of documents on 5/8/95 at 9:00 a.m. (lg) (Entered: 04/24/1995) 117 NOTICE by Molex, Incorporated to take deposition of E.I. duPont de Nemours & Co. on 5/8/95 at 9:00 a.m. (lg) (Entered: 04/24/1995) Tele-conference held - ct rptr V. Gunning. (lg) (Entered: 04/26/1995) 118 ORDER the court will defer decision on issues raised in the 4/26/95 conference call, including pltf's motion for an order compelling defendant to produce witnesses to be deposed and on deft's motion to bifurcate trial on the issues of liability and damages. ( signed by Judge Roderick R. McKelvie ) copies to: Blumenfeld, Castle & Ingersoll (lg) (Entered: 04/27/1995) 119 CERTIFICATE OF SERVICE by Berg Electronics copies Third Request for Production of Documents and Things. (lg) (Entered: 05/01/1995) 120 Answer Brief Filed by Berg Electronics [111-1] motion to Place Berg's Tort Claims into the Second Trial Reply Brief due 5/5/95 (lg) (Entered: 05/01/1995) 121 NOTICE by Berg Electronics to take deposition of Jay Neer on 5/4/95 at 11:00 a.m. (lg) (Entered: 05/02/1995) Tele-conference held - ct rptr not present. (lg) (Entered: 05/04/1995) 123 MOTION by Molex, Incorporated to Reorder the Presentation of Evidence in the First Trial (lg) (Entered: 05/04/1995) 4/5/2007

04/21/1995 04/21/1995 04/21/1995 04/26/1995 04/27/1995

04/27/1995 04/28/1995 05/01/1995 05/03/1995 05/03/1995

https://ecf.ded.uscourts.gov/cgi-bin/DktRpt.pl?731708590655908-L_353_0-1

CM/ECF LIVE - U.S. District Court:ded - Docket Report page 10 of p Case 1:07-cv-00049-JJF Document 10-2 Filed 04/05/2007 Page 35 of 45 05/03/1995 124 Opening Brief Filed by Molex, Incorporated [123-1] motion to Reorder the Presentation of Evidence in the First Trial Answer Brief due 5/17/95 (lg) (Entered: 05/04/1995) 05/04/1995 05/04/1995 122 Steno Notes for 4/26/95 teleconference - ct rptr V. Gunning. (lg) (Entered: 05/04/1995) 125 ORDER Following the May 3, 1995 Conference Call - counsel should proceed based on the decisions announced by the court during the call and counsel may file a motion, brief or letter memoranda to review or seek reconsideration of any matter discussed during the call. ( signed by Judge Roderick R. McKelvie ) copies to: Blumenfeld, Castle & Ingersoll (lg) (Entered: 05/04/1995) 126 Reply Brief Filed by Molex, Incorporated [111-1] motion to Place Berg's Tort Claims into the Second Trial (lg) (Entered: 05/08/1995) 127 NOTICE by Berg Electronics to take video tape deposition of Gerald E. Hespos on 5/10/95 at 10:00 a.m. (lg) (Entered: 05/09/1995) 128 Letter from Donald F. Parsons, Jr., Esq. to Judge McKelvie with a copy of a Notice issued 5/9/95 by the Admininstrative Law Judge in the ITC proceeding involving AMP and Berg. (lg) (Entered: 05/11/1995) 129 MOTION by Berg Electronics to Further Amend [68-1] the Amended complaint Answer Brief due 5/26/95 re: [129-1] motion {SEALED} (lg) Modified on 05/15/1995 (Entered: 05/15/1995) Scheduling conference held - ct rptr K. Maurer. (lg) (Entered: 05/15/1995) 130 NOTICE by Molex, Incorporated to take deposition of Barry Brigman & Richard Page on 5/17/95 at 9:30 a.m. (lg) (Entered: 05/15/1995) 131 CERTIFICATE OF SERVICE by Molex, Incorporated copies Response to Second Request for Production of Documents and Things and Answer to First Set of Interrogs. (lg) (Entered: 05/15/1995) 132 ORDER Berg may file a motion for protective order or injunction to protect it from having to try the I.T.C. case on a schedule that distracts it from preparing and presenting its case in this action. Berg may file a motion to bifurcate the liability and damage issues. ( signed by Judge Roderick R. McKelvie ) copies to: counsel via secretary (lg) (Entered: 05/16/1995) 133 Answer Brief Filed by Berg Electronics [123-1] motion to Reorder the Presentation of Evidence in the First Trial Reply Brief due 5/23/95 (lg) (Entered: 05/17/1995) 134 Steno Notes for 5/12/95 Teleconference - ct rptr K. Maurer. (lg) (Entered: 05/18/1995) 135 Letter from Donald F. Parsons, Jr., Esq. to Judge McKelvie with a courtesy copy of the transcript of the conference before Judge Saxon of the U.S. International Trade Commisision involving AMP and BERG on May 15, 1995. (lg) Modified on 05/18/1995 (Entered: 05/18/1995) 136 MOTION by Berg Electronics with Proposed Order to Bifurcate Damages and Willfulness for a Separate and Later Trial (lg) (Entered: 05/19/1995) 137 Opening Brief Filed by Berg Electronics [136-1] motion to Bifurcate Damages and Willfulness for a Separate and Later Trial Answer Brief due 6/1/95 (lg) (Entered: 05/19/1995) 138 Letter from Donald F. Parsons, Jr. to Judge McKelvie requesting expedited briefing on the Motion for Postponement of the Molex Trial, or , Alternatively, for an Injunction Concerning AMP's Proceedings against Berg Before the ITC, a hearing on the motion and a teleconference to discuss the presentation of the motion. (lg) (Entered: 4/5/2007

05/05/1995 05/09/1995 05/10/1995

05/12/1995

05/12/1995 05/15/1995 05/15/1995

05/15/1995

05/16/1995 05/17/1995 05/18/1995

05/18/1995 05/18/1995

05/19/1995

https://ecf.ded.uscourts.gov/cgi-bin/DktRpt.pl?731708590655908-L_353_0-1

CM/ECF LIVE - U.S. District Court:ded - Docket Report Case 1:07-cv-00049-JJF Document 10-2 05/22/1995) 05/19/1995

page 11 of p Filed 04/05/2007 Page 36 of 45

139 MOTION by Berg Electronics for Postponement of the Molex Trial , or, Alternatively for an Injunction Concerning AMP's Proceedings against Berg before the ITC (lg) Modified on 05/22/1995 (Entered: 05/22/1995) 140 Opening Brief Filed by Berg Electronics [139-1] motion for Postponement of the Molex Trial Answer Brief due 6/2/95, [139-2] motion for an Injunction Concerning AMP; s Proceedings against Berg before the ITC Answer Brief due 6/2/95 (lg) (Entered: 05/22/1995) 141 ORDER, Motion Hearing set for 11:00 5/24/95 for [139-1] motion for Postponement of the Molex Trial, set for 11:00 5/24/95 for [139-2] motion for an Injunction Concerning AMP's Proceedings against Berg before the ITC ( signed by Judge Roderick R. McKelvie ) copies to: counsel via secretary (lg) (Entered: 05/22/1995) 142 Reply Brief Filed by Molex, Incorporated [123-1] motion to Reorder the Presentation of Evidence in the First Trial (lg) (Entered: 05/26/1995) 143 TRANSCRIPT filed for dates of 5/12/95 teleconference - ct rptr K. Maurer. (lg) (Entered: 05/26/1995) 144 Answer Brief Filed by Mole