Free Redacted Document - District Court of Delaware - Delaware

Case 1 :05-cv-00048-SLR Document 294 Filed 10/31/2006 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
HITACHI, LTD. and HITACHI AUTOMOTIVE )
PRODUCTS (USA), INC., )
)
Plaintiffs, )
)
v. )
) Civil Action No. 05-048-SLR
BORGWARNER INC., )
and BORGWARNER MORSE TEC INC., )
)
Defendants. )
)
)
BORGWARNER INC., ) PUBLIC VERSION
)
Counterclaimant, )
)
v. )
)
HITACHI, LTD., and HITACHI AUTOMOTIVE )
PRODUCTS (USA), INC., )
)
Counterdefendants. )
SUPPLEMENTAL DECLARATION OF MARY B. MATTERER IN SUPPORT OF
THE RESPONSIVE CLAIM CONSTRUCTION BRIEF OF BORGWARNER INC. AND
BORGWARNER MORSE TEC INC.
F EL.·
O COUNS Richard K. Herrmann (I.D. #405)
SHDLEY AUSTIN BROWN & WOOD, LLP Mary ]3_ Mattcmr (I_I)_ #2696)
Hugh A- Abrams Moms JAMES, HITCHENS &
Thomas D. Rein WILLIAMS LLP
Lisa SChU€id€T 222 Delaware Avenue, 10th Floor
MMC A- Cavan Wilmington, DE 19801
Lara V. Hirshfeld (302) 333-6300
10 SOU01 D€¤Tb01`¤ StY€€'€ mmatterer@morrisj ames.com
ChiC¤g0» Illinois 60603 Attorneys for B0rgWarner Inc. and
(312) 8530000 B0rgWarner Morse TEC Inc.
Original Dated: October 23, 2006
Redacted Date: October 31, 2006

Case 1:05-cv-00048-SLR Document 294 Filed 10/31/2006 Page 2 of 4
I I, Mary B. Matterer, do hereby declare and say as follows:
1. I am a member in good standing of the Bar of the State of Delaware and a
partner at the law firm of Morris, James, Hitchens & Williams LLP, counsel to Defendant
BorgWamer Morse TEC Inc. and Defendant/Counterclaimant BorgWarner Inc. (collectively
"BorgWamer") in the above action.
2. I submit this declaration in support of the Responsive Claim Construction
Brief of BorgWarner Inc. and BorgWamer Morse TEC Inc.
3. Attached hereto as Exhibit 18 is a true and correct copy of Expert Report
I of William B. Ribbens Regarding Validity of U.S. Patent No. 5,497,738.
4. Attached hereto as Exhibit 19 is a true and correct copy of U.S. Patent No.
U.S. Patent No. 6,920,854 (Komaki). I
5. Attached hereto as Exhibit 20 is a true and correct copy of U.S. Patent No.
5,657,725 (Butterfield, et al.).
6. _ Attached hereto as Exhibit 21, submitted under seal, is a true and correct
copy of BW 136921-35.
7. Attached hereto as Exhibit 22 is a true and correct copy U.S. Patent No.
6,772,721 (Gardner, et al.).
8. Attached hereto as Exhibit 23 is a true and correct copy of the January 4,
1994 Office Action.
9. Attached hereto as Exhibit 24 is a true and correct copy of the August 1, V
1994 Office Action from the prosecution of the ‘738 patent.

Case 1:05-cv-00048-SLR Document 294 Filed 10/31/2006 Page 3 of 4
10. Attached hereto as Exhibit 25, submitted under seal, is a true and correct
copy of the Sughrue Opinion of Counsel, dated April 30, 1999 from the prosecution of the ‘738
patent.
1 1. Attached hereto as Exhibit 26 is a true and correct copy of U.S. Patent No.
5,012,774 (Strauber, et al.).
12. Attached hereto as Exhibit 27, submitted under seal, is a true and correct
copy of the Expert Report of Robert Kuhn, P.E. on the Invalidity of U.S. Patent No. 5,497,738.
13. Attached hereto as Exhibit 28, submitted rmder seal, is a true and correct
copy of Kuhn Exhibit 26, Comparison of Prior Art References Against Claim 10 Under
BorgWarner’s Interpretation.
14. Attached hereto as Exhibit 29 is a true and correct copy of U.S. Patent No.
6,807,931 (Taylor, et al.).
1 15. Attached hereto as Exhibit 30, submitted under seal, is a true and correct
copy ofHIT480l2l-131. I 1
16. Attached hereto as Exhibit 31 is a true and correct copy of U.S. Patent
Application No. 2005/0257762 (Sawada).
17. Attached hereto as Exhibit 32, submitted rmder seal, is a true and correct
copy of the Expert Report of Dr. Thomas G. Livemois, P.E. on the Invalidity of U.S. Patent No.
5,497,738
I declare under penalty of perjury that the foregoing is true and correct to the best
of my knowledge, information and belief
Dated: October 23, 2006 V Q
ary B. Mattere
3 .

Case 1:05-cv-00048-SLR Document 294 Filed 10/31/2006 Page 4 of 4
CERTIFICATE OF SERVICE
I hereby certify that on October 31, 2006, I caused the following document,
REDACTED VERSION OF SUPPLEMENTAL DECLARATION OF MARY B.
MATTERER IN SUPPORT OF THE RESPONSIVE CLAIM CONSTRUCTION BRIEF
OF BORGWARNER INC. AND BORGWARNER MORSE TEC INC. to be electronically
filed with the Clerk of the Court using CM/ECF which will send notification of such filing to the
following:
Steven J. Balick, Esq.
John G. Day, Esq.
Tiffany Geyer Lydon, Esq.
ASHBY & GEDDES
222 Delaware Avenue, 17th Floor
Wilmington, DE 19801
Additionally, I hereby certify that on October 31, 2006, I caused the foregoing
document to be served via email on the following non-registered participants:
Michael D. Kaminski, Esq.
Pavan K. Agarwal, Esq.
Liane M. Peterson
FOLEY & LARDNER LLP
3000 K Street, N.W., Suite 500
Washington, D.C. 20007-5109
[email protected]
[email protected]
[email protected]
/s/ Mag; B. Matterer
Mary B. Matterer (I.D. #2696)
MORRIS, JAMES, HITCHENS & WILLIAMS LLP
222 Delaware Avenue, 10th Floor
Wilmington, Delaware 19801
(302) 888-6800
[email protected]
Attorneys for Defendants and Counterclaimant,
BORGWARNER INC., and
BORGWARNER MORSE TEC INC.