Free Letter - District Court of Delaware - Delaware

Case 1 :06-cv—00785-GIVIS Document 68 Filed 12/1 1/2007 Page 1 of 3
CON NOLLY BOVE LODGE 8c HUTZ LLP
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The Nemours Building
Bova 1007 North Orange St.
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FAX (3 O2) 6599072 nat; (sez) ess 9141
EMAIL Jb¤V€@°bU*·°9m F/xx. (302) ees 5614
REPLY TO Wilmington Office WEB: WWW_Cb,h_cOm
December ll, 2007
VIA ELECTRONIC FILING AND HAND DELIVERY
The Honorable Magistrate Judge Thynge
United States District Court for the District of Delaware ,
J. Caleb Boggs Federal Building
844 N. King Street
Room 6100 ?
Lockbox 8
Wilmington, DE 19801
Re: Remy, Inc. v. CIF Licensing, LLC, d/b/a GE Licensing, et al., C.A. No.: 06-785
Dear Magistrate Judge Thynge:
We represent Defendant Wells Manufacturing, L.P. in the above—captioned action. We
are writing to inform the Court of important matters concerning the scheduling of this action.
Specifically, we would like to call to the Court’s attention the fact that the automatic stay in the
Remy bankruptcy proceeding has now been lifted. As such, the case at hand could proceed.
However, there is a compelling reason for this case to continue to be stayed: the United States
Patent Office is currently reexamining the patent at issue in this case} Wells is preparing a
Motion for Stay Pending Reexamination that it expects to file with the Court shortly.
As will be explained in greater detail in Wells’s Motion, this reexamination proceeding is
expected to result in invalidation of all the claims in the patent. lf the U.S. Patent Office reaches
this result, then there would be no patent claims upon which CIF Licensing, LLC could maintain
its patent infringement cause of action. Without a patent infringement case, Remy’s claims for
indemnification should fall as well. This stay is being requested to conserve judicial resources
because an administrative proceeding has been initiated that may render moot action taken by the ‘
Court in this litigation. —
I Plaintiff Remy, Inc. filed a reexamination request concerning U.S. Patent No. 4,733,159 to Edwards et. al. (the
patent—in—suit) on February 26, 2007, which the U.S. Patent and Trademark Office granted. Wells Manufacturing,
L.P. filed an additional patent reexamination request concerning the patent—in—suit with the U.S. Patent and
Trademark Office on December 4, 2007. It is the policy ofthe U.S. Patent Office that if a second reexamination
request for a patent is granted while the first request is pending, then the two proceedings will be consolidated by the
Office. 37 C.F.R. l.565(c): "If ex parte reexamination is ordered while a prior ex parte reexamination is pending
and prosecution in the prior ex parte reexamination proceeding has not been terminated, the ex parte reexamination
proceedings will be consolidated and result in the issuance of a single certificate under § l.570." On this basis,
Wells believes that its request will be granted and will be consolidated with Remy’s reexamination proceeding. ‘
wmvumcron, mz wnsumerou, nc tos Ancates, CA

Case 1 :06-cv—00785-GIVIS Document 68 Filed 12/1 1/2007 Page 2 of 3
Magistrate Judge Thynge
December 11, 2007
Page 2
Because there is a reasonable likelihood that the patent will be invalidated, it is in the best
interest of the judicial system to stay this proceeding. The significant judicial resources that will
be required to resolve the extensive number of pending motions, all of which may be for naught
if the patent is found invalid, could be conserved by waiting for the outcome of the
reexamination proceeding. The U.S. Patent Office proceeding may in the first instance provide
the most efficient resolution of the validity issue raised in this case, and we believe further
judicial resources should not be expended until the U.S. Patent and Trademark Office has
reached a conclusion.
Respec ,
J ey B. Bove
ove cb1h.com
cc: CIF Licensing, LLC, d/b/a GE Licensing (Defendant)
Steven J. Balick, Esq.
John G. Day, Esq.
Lauren E. McGuire
Ashby & Geddes
222 Delaware Avenue, 17th Floor
Wilmington, DE 19801
(302) 654-1888
Fax: (302) 654-2067
Remy Inc., Unit Parts Company, Worldwide Automotive LLC (Plaintiffs)
Brian A. Carpenter, Esq.
Donald J. Detweiler
Titania R. Mack, Esq.
Greenburg Trauri g LLP
1007 N. Orange St. Ste. 1200
Wilmington, DE 19801
(302) 661-7000
Fax: (302) 661-7360
STMicroelectronics (3rd Party Defendant)
John W. Shaw (No. 3362)
Adam W. Poff (No. 3990)
Monte T. Squire (No. 4764)
The Brandywine Building
1000 West Street, 17th Floor
Wilmington, DE 19801
(302) 571-6600

Case 1:06-cv—00785-G|\/IS Document 68 Filed 12/11/2007 Page 3 of 3
Magistrate Judge Thynge
December 11, 2007
Page 3
E-mails: [email protected]
Taditel US, Inc. (Defendant)
David E. Moore, Esq.
Potter Anderson & Corroon LLP
1313 N. Market St.
Hercules Plaza, 6th Floor
Wilmington, DE 19801
(302) 984-6264
Fax (302) 658-1192
Wetherill Associates, Inc. (Defendant)
Local Counsel Counsel
Thomas C. Grimm, Esq. Stephen Milbrath, Esq.
Morris Nichols Arsht & Tunnell LLP Allen Dyer Dopplet Milbrath & Christ, PA
1201 North Market Street 255 S. Orange Avenue, Ste. 1401
Wilmington, DE 19801 Orlando, FL 32802
(302) 658-9200 (407) 841-2330
Fax: (302) 658-3989 Fax: (407) 841-2343
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