Free Letter - District Court of Delaware - Delaware

Case 1:04-cv,=O1436-JJF Document 144 Filed O`5/16/2008 Page 1 of 2
SEITZ, VAN OGTROP Oc GREEN, P.A.
ATTORNEYS AND COUNSELLORS AT LAW
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WILMINGTON, DELAWARE tease
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GEORGE H. SEFIZ, III · FAX: (302) 8880508
JAMES S. GREEN
R. KARL HILL
PATRICIA P. MCGONIGLE
KEVIN A. GUERKE
vvRttER·s DIRECT DIAL: 302.888.7605 .
WRITER'S EMAIL: pmcgcnigte@svgIaw.<:0m
May 16, 2008 .
VIA HAND DELIVERY AND ELECTRONIC FILING
The Honorable Joseph J. Faman, Jr.
United States District Cotut
844 King Street »
Wilmington, DE 19801
Re: St. Clair v. Samsung, et al. (Civil Action No. 04-1436-JJF)
» Our File No. 121865.0011
I Dear Judge Farnan,
Plaintiff St. Clair Intellectual Property Consultants, Inc. ("St. Clair") submits this letter to
inform the Court of new developments relating to St. Clair’s Motion to Lift the Stay (D.I. 134) in
the above referenced action and to renew its Motion to Lift the Stay. This Court ordered this
I action stayed pending the resolution of the ownership dispute between Eastman Kodak Company
¤ ("Kodak") and St. Clair in Kodak v. Speasl, et al., Cal. Sup. Ct. Case No. 1-05~C\/-039164
("Califomia action"). St. Clair moved to lift the stay in this action on March 3, 2008 because the
parties to the California action had entered into a Memorandum of Understanding ("MOU”) that
resolved all claims among the parties, including ownership of the Roberts Patents. Defendants,
however, opposed St. Clair’s motion on the grounds that St. Clair could not produce confidential
documents to establish that the California action had resolved. This Court denied St. Clair’s
motion with leave to renew by letter memoranda.
As the non-confidential attached iinal settlement documents establish, all of the pending
matters among St. Clair, Kodak, Mirage Systems, Inc., and the inventors of the Roberts Patents,
including the California action are resolved. There is no longer any basis for staying the case.
Moreover, each of the points raised in the Defendants’ opposition papers has been addressed:]
I There is also no basis for the Defendants to argue that having resolved the California action, new
conditions should be imposed on St .Clair before the stay can be lifted. For example, this Court should
disregard comments made by a defendant during the hearing about continuing the stay pending the final

Case 1 :04-cv-01436-JJF Document 144 Filed 05/16/2008 Page 2 of 2
The Honorable Joseph J. Farnan, Jr.
May 16, 2008
Page -2- ·
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the Roberts Patents since St. C1air’s 1995 purchase of the patents from
Personal Computer Cameras, Inc.
• St. Clair will be producing the settlement agreement, MOU, and other
relevant non—contidential exhibits to the settlement agreement to each of
the Defendants.
• The parties have signed a stipulation for the dismissal of the California
action and will file it with the court today.
A • Defendants can now conduct meaningful licensing discussions with the
true owner of the Roberts Patents.
With the confirmation that St. Clair has been the owner of the Roberts Patents since 1995
and the production of the settlement agreement and non—coniidential exhibits, there is no basis to
continue the stay. Accordingly, St._Clair respectfully requests that the Court grant its Motion to
Lift the Stay. _
_,/R mitted,
Ljéicia P. McG
Enclosure —— Public Version of Settlement Agreement
cc: All Counsel of Record (via CM/ECF with enclosure)
i outcome of the Fuji case (St. Clair v. Canon, et al., Civil Action No. O3—24l—JJP), including post-
judgment rulings after briefing and a potential appeal of this Court’s decisions. This position is meritless.
If any defendant still opposes lifting the stay for this or any other new reason, St. Clair reserves the right
to fully brief its position.