Free Letter - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE PROMOS TECHNOLOGIES, INC., Plaintiff, v. FREESCALE SEMICONDUCTOR, INC., Defendant. ) ) ) ) ) ) ) ) )

C.A. No. 06-788 (JJF)

FREESCALE'S JUNE 6, 2008 LETTER TO SPECIAL MASTER REGARDING NUMBER OF PATENT CLAIMS AND REPRESENTATIVE PRODUCTS

DM ___
MORRIS, NICHOLS, ARSHT & TUNNELL LLP Mary B. Graham (#2256) James W. Parrett, Jr. (#4292) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 302.658.9200 [email protected] Attorneys for Freescale Semiconductor, Inc.

OF COUNSEL: David L. Witcoff Kevin P. Ferguson John M. Michalik JONES DAY 77 West Wacker Chicago, IL 60601-1692 312.782.3939 James L. Wamsley III F. Drexel Feeling Thomas R. Goots JONES DAY North Point 901 Lakeside Avenue Cleveland, OH 44114-1190 216.586.3939 June 6, 2008

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Dear Judge Poppiti: Defendant Freescale Semiconductor, Inc. hereby responds to the Special Master's request for submissions on reducing the number of asserted patent claims and the identification of representative Freescale products. Introduction The Court recently amended the scheduling order and set this matter down for a five-day trial October 20-24, 2008. That trial setting was explicitly premised on the parties' commitment to streamline the case for trial. ProMOS was expected to cut back on the number of asserted claims in the two Chan (`709 and `241) patents, given that it had been asserting almost all 52 claims of these patents. Due to the large number of accused products, Freescale was in turn expected to pick a number of representative products for purposes of trial. Although the parties exchanged lists of claims and products and held multiple phone conferences, they were unable to reach agreement on these issues, requiring that the matter be submitted to the Special Master. Freescale has identified fifteen products as representative of the approximately 300 Freescale products which ProMOS has accused of infringement. ProMOS has refused, however, to reduce appropriately the number of asserted patent claims to streamline the case. ProMOS still proposes to assert a total of fifteen patent claims from the two Chan patents--ten from the `709 patent (nos. 1, 2, 8, 9, 12, 14, 17, 21, 22 and 25) and five from the `241 patent (nos. 1, 5, 16, 25 and 26). That is far more claims than is necessary, especially because the two Chan patents share the same specification and are so closely related. ProMOS could easily cut that number by at least two-thirds (i.e., down to 4-6 claims total) by eliminating claims which involve overlapping subject matter and others which would require the Court to address additional legal issues that could otherwise be eliminated. The Asserted Claims Should Be Reduced To No More Than 2-3 Per Patent There are four independent claims in the Chan `709 patent: nos. 1, 13, 17 and 22. ProMOS proposes to assert three of these four claims (1, 17 and 22) directly and the fourth independent claim (13) indirectly by asserting claim 14, which depends from claim 13. In addition, of the six additional `709 claims still being asserted by ProMOS, three depend from other dependent claims not on ProMOS's list. In particular, proposed `709 claims 8, 12 and 21 depend from claims 7, 11 and 20--none of which is asserted directly. By this technique, ProMOS is effectively proposing to assert more than half (14) of the claims in the `709 patent. This is not the kind of significant reduction in claims for streamlining purposes contemplated by the Court. Moreover, there is significant duplication and overlap among the `709 patent claims that ProMOS proposes to assert. Dependent claims 2 and 9 substantially overlap independent claims 17 and 22, such that both of those claims (and the dependent claims

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identified by ProMOS) should be dropped. 1 Further unnecessary duplication is evident in ProMOS's assertion of both claims 12 and 21 as well as claims 14 and 252 of the `709 patent, given that these pairs of claims also pertain to the same subject matter. While ProMOS is proposing to assert only half as many `241 patent claims (five) as `709 claims, that is still far more than necessary given the fact that the two Chan patents are directly related, share the same disclosure and claim overlapping subject matter. Again, ProMOS seeks to assert both of the independent apparatus claims in the `241 patent even though it could easily assert only one such claim. ProMOS should pick one independent claim and no more than one or two dependent claims from the `241 patent. Further streamlining and judicial economy would be accomplished if ProMOS dropped each of the claims containing the "means-plus-function" limitations in both the '709 and `241 patents. Each of these claims (claims 12 and 21 in the `709 patent and claims 5 and 26 in the `241 patent) requires the Court to address additional issues beyond those presented by the other claims. On the validity side, Freescale argued in the Markman proceedings that each of these claims is invalid as indefinite, lacking enablement and written description because the specification does not disclose any structure linked to the claimed "means." On the infringement side, the Court (and perhaps the jury) would have to consider the different principles by which that issue must be addressed for claims having such limitations under 35 U.S.C. § 112, ¶ 6. Since these additional legal issues and complexities would disappear, considerable further streamlining of the case would be achieved if all four of these claims were dropped from the case. Notwithstanding the foregoing, ProMOS indicated in meet and confer conversations that it was unwilling to reduce further the number of asserted claims at this time, explaining that it might be willing to do so in the future. However, the Court's amended scheduling order requires that the number of asserted claims be pared back now rather than waiting until later once expert reports have been served, expert discovery taken and dispositive motions filed. The reason for this is is clear: the compressed pretrial schedule requires that the claims be cut back now if the parties are going to be able to meet it. Judge Farnan has ordered reductions in the number of asserted patent claims even before holding a Markman hearing and has consistently required patentees to reduce the number of asserted patent claims by far more than ProMOS has proposed to do here. In Fenster Family Patent Holdings, Inc. v. Siemens Medical Solutions USA, Inc., No. 04-0038-JJF (September 20, 2005) (copy attached as Exhibit A), for example, Judge Farnan held (prior to the Markman hearing) that the patentee's attempted assertion of 90 claims from eight unrelated patents was "unreasonable" and limited the patentee to ten claims total from all eight patents, noting that the

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Independent claims 17 and 22 are almost identical and there is no reason both should be in the case. ProMOS first advised Freescale that it would drop claim 25, then added it back in two days later.

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limitation was "appropriate from the viewpoint of the typical patent litigation." Id. at pp. 7-8. And in a pretrial conference in Affymetrix, Inc. v. Illumina, Inc., No. 04-907-JJF (February 8, 2007), Judge Farnan rejected the patentee's proposal to try the case on 22 claims from five patents, noting that "I don't think you ought to be limited . . . to one claim per each of the five patents, but there's going to have to be some reduction from the 22." (Exhibit B, Tr. at 5:18-22.) When the parties were still unable to agree to an appropriately reduced number of patent claims, Judge Farnan then ordered that the patentee was limited to asserting twelve claims of the five patents-in-suit. (Exhibit C, Order of Feb. 26, 2007.) Freescale has surveyed jury verdicts in patent cases tried by Judge Farnan over the last three years, and a summary of those verdicts reveals that the Judge has sent no more than three claims per patent to any jury during that time. (See Exhibit D.) Consistent with the Court's usual practice, therefore, and the corresponding benefits to judicial economy and the avoidance of jury confusion, Freescale submits that the asserted claims should be limited to no more than two or three per patent. As demonstrated above, ProMOS can readily reduce significantly the claims on its current list. Moreover, without such a meaningful reduction in asserted claims now, the parties' ability to prepare the case for trial, let alone try the case in just five days, is seriously in doubt. Judicial resources are scarce and should not be needlessly squandered. Therefore, Freescale asks that ProMOS be directed to identify no more than two or three patent claims per patent for purposes of trial. Freescale Has Identified Representative Products As mentioned above, of the approximately 300 products accused of infringement, Freescale has agreed to streamline the case by identifying fifteen as "representative" for purposes of the trial. In discussions leading up to these submissions, ProMOS has raised two issues, neither of which has merit. First, ProMOS has asked Freescale to include an identification of the files in which (and dates on which) Freescale produced RTL code for products on its list of representative products. This request is in reality a belated discovery request that has nothing to do with the identification of which particular Freescale products are representative for purposes of streamlining the trial. Moreover, it is duplicative discovery at that. RTL code in question was produced months ago. Freescale produced 15 witnesses in January, February and March under topic 6 of ProMOS's Third 30(b)(6) notice, which reads: 6. RTL documentation and circuit schematics for each Freescale Product and/or the processors contained therein. Based on this notice, ProMOS had the opportunity to ask each of these witnesses to identify the RTL code for Freescale products or processors--and it did so on some occasions. There is no reason why Freescale should be subjected again to questions that could have been asked in these depositions--especially given the substantial expansion of the deposition time limit that ProMOS was granted in that connection. Under paragraph 5 of the Court's February 2008 "Order Amending Discovery Schedule," ProMOS served infringement contentions for Freescale's products on a rolling basis following these depositions in February and March, 2008.

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Those infringement contentions apply the Chan patent claims to each of the representative products on the Freescale list and cite liberally to the RTL code that Freescale produced. While Freescale has responded informally to numerous RTL-related questions posed by ProMOS counsel, the latest demand that Freescale identify in writing RTL code files is unwarranted and has nothing at all to do with Freescale's obligation to list representative products for purposes of trial. It is instead a thinly-disguised interrogatory served far after the close of discovery. Freescale should not be compelled to do ProMOS's work for it. The second issue raised by ProMOS arises from its demand that Freescale identify representative products for products which have not even been accused of infringement. ProMOS has insisted that Freescale identify representative products for the list of products which Freescale provided under paragraph 4 of the agreement resolving the DM4 discovery dispute, even though ProMOS has yet to serve infringement contentions accusing any of those products. Freescale obviously has no way of doing this, and it would be unfair to require Freescale to identify representative products in a vacuum, without first receiving ProMOS's accusations and infringement contentions. As such, ProMOS's second demand is not ripe and should be rejected as well. Respectfully,

/s/ Mary B. Graham
Mary B. Graham (#2256) MBG/dam cc: All counsel on service list
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CERTIFICATE OF SERVICE The undersigned hereby certifies that on June 6, 2008, the foregoing was caused to be electronically filed with the Clerk of the Court using CM/ECF which will send electronic notification of such filing to all registered participants. In addition, the undersigned hereby certifies that on June 6, 2008 true and correct copies of the foregoing were caused to be served upon the following parties in the manner indicated: BY HAND DELIVERY (in triplicate): Vincent J. Poppiti, Esq. BLANK ROME LLP 1201 North Market Street, Suite 800 Wilmington, DE 19801-4226 BY E-MAIL: Vincent J. Poppiti, Esq. [email protected] BLANK ROME LLP
WITH A COPY TO:

BY E-MAIL AND HAND DELIVERY John G. Day, Esq. Steven J. Balick, Esquire ASHBY & GEDDES 500 Delaware Avenue, 8th Floor Wilmington, DE 19899 [email protected] [email protected] BY E-MAIL AND FEDERAL EXPRESS Sten A. Jensen, Esq. HOGAN & HARTSON LLP 555 Thirteenth Street, NW Washington, DC 20004 [email protected] BY E-MAIL: Steven J. Routh, Esq. [email protected] William H. Wright, Esq. [email protected] HOGAN & HARTSON LLP William C. Gooding, Esq. [email protected] GOODING & CRITTENDEN, L.L.P.

Elizabeth Oestreich [email protected] Mary Levan [email protected] Carrie David [email protected] BLANK ROME LLP

/s/ Mary B. Graham
______________________________________ Mary B. Graham (#2256)
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EXHIBIT A

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EXHIBIT B

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 THE CLERK: All rise. THE COURT: All right. Good morning. Be seated, please. THE COURT: All right. You want to announce your appearances? MS. NOREIKA: Good morning, Your Honor. THE COURT: Good morning. MS. NOREIKA: Maryellen Noreika from Morris, Nichols for the plaintiff. With me I have Michael Malacek, and Dan Reed from Affymetrix. And Jack Blumenfeld from my firm. THE COURT: All right. Good morning. Mr. Herrmann. MR. HERRMANN: Good morning, Your Honor. Your Honor, for the defendant I'd like to reintroduce Mark Pals from Kirkland & Ellis, Marc Sernel from Kirkland & Ellis, and Paul Collier from Kirkland & Ellis. THE COURT: All right. Good morning. MR. PALS: Good morning, Your Honor.
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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE AFFYMETRIX, INC., Plaintiff, v. ILLUMINA, INC., Defendant. ) ) ) ) C.A. No. 04-901-JJF ) ) ) ) )

Thursday, February 8, 2007 11:43 a.m. Courtroom 4B 844 King Street Wilmington, Delaware

BEFORE:

THE HONORABLE JOSEPH J. FARNAN, JR. United States District Court Judge

APPEARANCES:

MORRIS, NICHOLS, ARSHT & TUNNELL BY: MARYELLEN NOREIKA, ESQ. BY: JACK B. BLUMENFELD, ESQ. -andAFFYMETRIX BY: MICHAEL J. MALECEK, ESQ. BY: DANIEL REED, ESQ. Counsel for the Plaintiff

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4 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 MR. SERNEL: Good morning, Your Honor. MR. COLLIER: Good morning, Your Honor. THE COURT: Okay. I've taken a look at your proposed pretrial order, as well as the pending motions for summary judgment. All of the motions for summary judgment will be denied by memorandum order because of the factual disputes, except the motion related to assignor estoppel, which we'll talk about a little more later. With regard to the issues that are raised in the proposed pretrial order, there are two competing views about the structure of the trial, whether it should have a separation of issues, essentially along the lines of a bifurcation, or whether it should be a trifurcation, I guess, is the word used by somebody. This case will be tried in three phases. The first phase will deal with infringement and damages. The second phase, and sometime

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APPEARANCES CONTINUED:

MORRIS, JAMES, HITCHENS & WILLIAMS BY: RICHARD HERRMANN, ESQ. -and-

5 6 7 Counsel for the Defendant 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 KIRKLAND & ELLIS, LLP BY: MARK A. PALS, ESQ. BY: MARCUS E. SERNEL, ESQ.

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 So I'm going to not get involved in -- I mean, let me say this: The number of exhibits is unusually high would be a polite way of saying it. And when I read both the witness and exhibit recitals in the body of the proposed pretrial order, there are more conditions on exhibits and witnesses, like if I didn't name them, I could call them. But you know, if I find an exhibit later or if it's produced, I can use it. You know, I like to let lawyers try their own case. None of that is going to work for you on the time frame I'm going to provide. Now, since you agreed to the procedure of that 48-hour notice and 24-hour objections, I'm going to go along with it; although it creates more work for you, not for me, because I can get it done overnight. But I can tell from both parties that there's no inclination here, and I'm not being critical in a negative way, but there's no inclination here to actually provide a noticed witness or exhibit list. And that's okay with me. I just think it's going to make it a little
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around the commencement of this trial, we'll get a date for the summer of 2007, will be a trial on the invalidity issues. And immediately after that will be a trial on the California state law issues and any matters that have to be tried of an equitable nature to the bench. So for purposes of the March 5th trial, we're focused on infringement and damages. The infringement trial -- and I understand that Affymetrix has reduced the number of asserted claims from 50 or so to 22 or so. That's going to have to be further reduced to representative claims. As I review the summary judgment papers, as well as the pretrial order, there's some overlap there that can be avoided, which will avoid confusion to the jury. Now, I don't think you ought to be limited, as the defendants suggest, to one claim per each of the five patents, but there's going to have to be some reduction from the 22. I'll give you the first chance at doing that, and then if it can't be pared down by
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6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 the plaintiff, then I'll listen to both sides and I'll reduce it to a number per patent. Not all patents will be equal if I have to do it, because my view is that there is a difference. An assertion of multiple claims under one or two of the patents is more appropriate than maybe under another patent. But I'll reserve my judgment on it unless I have to exercise it. I don't foresee, given the structure that I've announced for the trial, that it will take eight days to try this case on infringement and damages, so I'm going to reduce the requested eight days to something in the range of five days. And, also, that's designed because I'm not going to get into whether either side is going to be able to use 2,100 documents, 34 designated depositions. I'll just indicate the amount of hours I think an infringement case can be tried on five patents with a certain number of claims, and then you'll manage how many documents you want to use on those issues, and how many witnesses you want to utilize. 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 more difficult for your record. But I'm going to subscribe to what you've proposed, which is 48-hour notice. Now, the one area I'm not going to agree with you on, and I'm going to become an advocate for the trial is demonstrative exhibits. When I read through what you proposed about demonstrative exhibits, you're going to have artists in some hotel room painting boards up or something. Demonstrative exhibits, first of all, they can only come into evidence -- what did I read? First of all, you're going to paint some or make them up, and then you're going to have some that can be created during the testimony of a witness. Well, if that isn't open ended, I don't know what is. And that, you know, the danger is in the demonstrative exhibits. The danger of prejudice to a party at a trial is in the demonstrative exhibits, because you can really play games, particularly when you're marking them up. Now, I don't mind you enlarging the

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EXHIBIT C

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EXHIBIT D

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EXHIBIT D Number Of Patent Claims Involved In Patent Jury Trials Before Judge Farnan Over The Last Three Years

CASE Nice Systems Inc. et al v. Witness Systems Inc.

CASE NO.

VERDICT DATE

PATENTS/TOTAL CLAIMS 5 total patents; 11 total claims

06-311

1/22/08

`371 patent 2 claims; `570 patent 1 claim; `372 patent 3 claims; `920 patent 3 claims; `109 patent 2 claims 5 total patents, 12 total claims

Affymetrix, Inc. v. Illumina, Inc.
04-901

03/13/2007

`243 patent 3 claims; `365 patent 2 claims; 432 patent 2 claims; `531 patent 2 claims; `716 patent 3 claims 4 total patents; 7 total claims

Power Integrations v. Fairchild Semi, et al.

04-1371

10/10/2006

`876 patent 1 claim; `851 patent 2 claims; `366 patent 2 claims; `075 patent 2 claims 1 patent; 2 claims

LG Phillips LCD Co., Ltd. V. Tatung Co., et. al. Kyphon Inc. v. DiscO-Tech Med. Techs., Ltd., et al.

05-292

07/27/2006

`002 patent 2 claims 1 patent; 1 claim `043 patent 1 claim

04-204

06/22/2005

June 5, 2008
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