Free Response in Opposition to Motion - District Court of California - California

Case 3:07-cv-02277-BTM-RBB

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Filed 02/21/2008

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J. MICHAEL KALER, SBN 158296 KALER LAW OFFICES 9930 Mesa Rim Road, Suite 200 San Diego, California 92121 Telephone (858) 362-3151 MELODY A. KRAMER, SBN 169984 KRAMER LAW OFFICE, INC. 9930 Mesa Rim Road, Suite 1600 San Diego, California 92121 Telephone (858) 362-3150

Attorneys for Plaintiff JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA ) ) ) ) ) Plaintiff, ) v. ) ESSEPLAST (USA) NC, INC. and DOES ) ) 1-10, ) ) Defendants. ) ) ) ) ) ) ) ) ) ) JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Case No. 07-CV-02277-BTM-CAB DECLARATION OF J. MICHAEL KALER IN SUPPORT OF PLAINTIFF'S OPPOSITION TO DEFENDANT'S MOTION TO STAY PENDING OUTCOME OF REEXAMINATION PROCEEDINGS Date: March 14, 2008 Time: 11:00 a.m. Courtroom 15 ­ 5th Floor The Hon. Barry T. Moskowitz NO ORAL ARGUMENT UNLESS REQUESTED BY THE COURT

Case 3:07-cv-02277-BTM-RBB

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I, J. Michael Kaler, declare: 1. I am not a party to the present action. I am over the age of eighteen. I have personal knowledge of the facts contained within the following paragraphs, and could and would competently testify thereto if called as a witness in a court of law. 2. 3. Proceedings. 4. A related `184 patent case, Sorensen v. Black & Decker Corporation, et al, Case No. 06cv1572, has been stayed pending a third-party patent reexamination requested filed in July 2007 by Black & Decker ("1st reexamination"). The 1st reexamination is already in its seventh month and the first office action has not yet issued. 5. Plaintiff declined to file an optional patent owner's statement in response to the reexamination request in order to shorten the reexamination process. Black & Decker was thereby barred from a second filing with the USPTO regarding the 1st reexamination. 6. A full six months after the 1st reexamination request had been filed, Black & Decker's co-defendants Phillips Plastics and Hi-Tech Plastics filed their own third-party reexamination request ("2nd reexamination") with the USPTO, citing some of same prior art listed in the 1st reexamination request. 7. Although the USPTO has not yet issued any response to the 2nd reexamination request, which is not due until about March 23, 2008, it is likely that this 2nd reexamination request will complicate and lengthen the time from the 1st reexamination filing to completion of the reexamination. 8. Based on more recent research, the likely time period for conclusion of a reexamination is five years, extending to nearly eight years if an appeal to the
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Case No. 07-CV-02277

At all times relevant herein I have been an attorney for Sorensen This Declaration is being submitted in conjunction with Plaintiff's

Research and Development Trust ("SRDT"), Plaintiff in the above-captioned matter. Opposition to Defendant's Motion for Stay Pending Outcome of Reexamination

Case 3:07-cv-02277-BTM-RBB

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Federal Circuit is sought. The San Diego Intellectual Property Lawyers Association ("SDIPLA") newsletter, SDIPLA News, Vol. 11, Issue 10, Feb. 2008, reports that when one looks only at recent years, "the average ex parte reexamination now takes about 5 years (vs. the PTO's claim that it takes 2 years). If an appeal to the CAFC is involved, that extends the period to 7.7 years."

RESPECTFULLY SUBMITTED this Thursday, February 21, 2008. JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Plaintiff /s/ J. Michael Kaler J. Michael Kaler, Esq. Attorney for Plaintiff

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Case No. 07-CV-02277

Case 3:07-cv-02277-BTM-RBB

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PERSON(S) SERVED Alan A. Limbach DLA Piper USA LLC 2000 University Avenue East Palo Alto, CA 94303-2214 [email protected] Gregory J. Lundell DLA Piper USA LLC 2000 University Avenue East Palo Alto, CA 94303-2214 [email protected] Elizabeth Day DLA Piper USA LLC 2000 University Avenue East Palo Alto, CA 94303-2214 [email protected] Vincent S Lam DLA Piper USA LLC 2000 University Avenue East Palo Alto, CA 94303-2214 [email protected]

PROOF OF SERVICE
I, J. Michael Kaler, declare: I am and was at the time of this service working within in the County of San Diego, California. I am over the age of 18 year and not a party to the within action. My business address is Kaler Law Office, 9930 Mesa Rim Road, Suite 200, San Diego, California, 92121. On Thursday, February 21, 2008, I served the following documents:

DECLARATION OF J. MICHAEL KALER IN SUPPORT OF PLAINTIFF'S OPPOSITION TO DEFENDANT'S MOTION TO STAY PENDING OUTCOME OF REEXAMINATION PROCEEDINGS
PARTY(IES) SERVED Esseplast (USA) NC, Inc. METHOD OF SERVICE Email--Pleadings Filed with the Court via CM/ECF

Esseplast (USA) NC, Inc

Email--Pleadings Filed with the Court via CM/ECF Email--Pleadings Filed with the Court via CM/ECF

Esseplast (USA) NC, Inc

Esseplast (USA) NC, Inc

Email--Pleadings Filed with the Court via CM/ECF

(Personal Service) I caused to be personally served in a sealed envelope hand-delivered to the office of counsel during regular business hours.

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Case No. 07-CV-02277

Case 3:07-cv-02277-BTM-RBB

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(Federal Express) I deposited or caused to be deposited today with Federal Express in a sealed envelope containing a true copy of the foregoing documents with fees fully prepaid addressed to the above noted addressee for overnight delivery. (Facsimile) I caused a true copy of the foregoing documents to be transmitted by facsimile machine to the above noted addressees. The facsimile transmissions were reported as complete and without error. (Email) I emailed a true copy of the foregoing documents to an email address represented to be the correct email address for the above noted addressee. X (Email--Pleadings Filed with the Court) Pursuant to Local Rules, I electronically filed this document via the CM/ECF system for the United States District Court for the Southern District of California. (U.S. Mail) I mailed a true copy of the foregoing documents to a mail address represented to be the correct mail address for the above noted addressee. I declare that the foregoing is true and correct, and that this declaration was executed on Thursday, February 21, 2008, in San Diego, California.

/s./ J. Michael Kaler J. Michael Kaler

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Case No. 07-CV-02277