Free Letter - District Court of Delaware - Delaware

Case 1:06-cv-00788-JJF

Document 151

Filed 03/10/2008

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MORRIS, NICHOLS, ARSHT & TUNNELL
1201 N O R T H M A R K E T S T R EE T P.O. B O X 1347 W I L M I N G T O N , D E L A W A R E 19899-1347 302 658 9200 302 658 3989 F A X
M A R Y B. G R A H A M 302.351.9199 [email protected]

LLP

March 10, 2008 VIA E-FILING The Honorable Joseph J. Farnan, Jr. United States District Court Federal Building 844 King Street Wilmington, DE 19801 Re: Dear Judge Farnan: Pursuant to Local Rule 7.1.2, and in response to ProMOS's March 5, 2008 letter (D.I. 150), we note that every person, of ordinary skill in the art or otherwise, has some understanding of what the words "fragile" and "rounding" mean. As confirmed by the Federal Circuit in Halliburton, however, the point of the definiteness requirement of the patent laws (35 U.S.C. § 112) is that the patentee must make clear where "to draw the line" on such qualitative terms so that the public can be properly notified of the metes and bounds of the claimed invention for purposes of both invalidity and non-infringement. In this instance, ProMOS's March 5 letter reaffirms the point of Freescale's February 28, 2008 letter (D.I. 147). Specifically, after asserting that "Figure 5 of the Fortin patent is a representation of what the top edge of the opening looks like after it has been `round[ed]'" (D.I. 150, p. 1), ProMOS goes on to admit that, "Figure 5 does not purport to distinguish the prior art based on the `rounding' feature of the claimed invention." (Id. at p. 2). In other words, as ProMOS effectively admits, the Fortin patent does not teach people of ordinary skill in the art the extent of "rounding" that is required (1) to distinguish the claimed invention from the prior art or (2) to avoid infringement. Consequently, just as in Halliburton, Fortin's claimed "rounding" is fatally indefinite and, therefore, the claims containing this term are invalid. Respectfully, ProMOS Technologies, Inc. v. Freescale Semiconductor, Inc. C.A. No. 06-788 (JJF)

/s/ Mary B. Graham
Mary B. Graham (#2256)

Case 1:06-cv-00788-JJF The Honorable Joseph J. Farnan, Jr. March 10, 2008 Page 2

Document 151

Filed 03/10/2008

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MBG/dam cc: Dr. Peter Dalleo, Clerk (via e-filing and hand delivery) John G. Day, Esquire (via email) Sten A. Jensen, Esquire (via email) David L. Witcoff, Esquire (via email)
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