Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01 199-SLR Document 547 Filed 09/ 1 4/2008 Page 1 of 3
POtt€r Richard L. Horwitz
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M Anderson Attoriley at Law
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, Canoga LLP §a‘i"3é4?6’£’i ii“?s§"f»i2§§“`
302 658-1192 Fax
1313 North Market Street
1 PO. Box 951
, Wilmington, DE 1.9899-0951
Z $$02 984 a000
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September 14, 2008
BY ELECTRONIC FILING
The Honorable Sue L. Robinson
United States District Court
p 844 King Street
Wilmington, DE 19801
Re: SRI Interncrtionmi Inc. v. Internet Security Systems, et al.
C.A. No. 04-1 199-SLR
Dear Judge Robinson:
At Your Honor’s suggestion, we write to seek the Con1t’s assistance in resolving a matter
of prej udice and jury confusion, which arose when Mr. Scherkenbach, counsel for SRI,
improperly raised Your 12-lonor’s claim construction during his cross-examination of defendant
( iSS’s expert witness, Mr. Smaha, iast Friday, September 12, 2008. As discussed in court, this
type of questioning is not typical, precisely for the confusion and prejudice it could create. To
mitigate the unfair prejudice caused by Mr. Sci1erl 91 request for an appropriate instruction to be read to the jury that the Court’s ciaim construction
was not issued until after all experts in the case had filed their reports.
During the cross-examination, Mr. Scherkenbach questioned Mr. Smaha about his non-
4 infringement opinions, and improperly initiated the discussion of how Mr. Smaha’s rebuttal
expert report differed from the Court’s claim construction. When this issue was raised during a
break, Mr. Scherkenbach represented to the Court that:
l • Mr. Smaha indicated that "he tiled his supplemental response because, in part, a
I new claim construction? (Trial Tr. at 181 1:19—2l .)1
• Mr. Scherl 1 Excerpts ofthe trial testimony from Friday, September l2, 2008 (hereinafter referred to as
Z (""l`rial Tr.”)) are attached as Ex. A.

1 Case 1 :04-cv-01 199-SLR Document 547 Filed 09/14/2008 Page 2 of 3
The Honorable Sue L. Robinson
September 14, 2008
Page 2
• Mr. Srnaha "volunteered, oh, and, of course, a new claim construction came out."
(Id at 1812:},8-20.)
i • Mr. Srnaha "pointed to the claim construction as one reason he supplernented?
T (Id at 1812:21-23 .)
• Mr. Smaha "did open the door on this issue by saying why tiled his supplemental
j report. Again, he pointed to your claim construction having come out, which was
, not true." (Id at 1814:15-l8.)
• Mr. Smaha testified "on direct, that one ofthe reasons he supplemented was also
because the claims had been construed? (Id at i8i5:5—9.)
Upon review of the record, each of Mr; Scherkenbaclfs representations is clearly incorrect. it
was Mr. Scherl Mr. Smaha’s nondnfringenient report did not apply the Court’s claim constructionw-which, as
Your Honor is aware, was issued after the submission ofthe parties’ expert reports.
First, Mr. Sinaha has consistently informed SRI of the reasons he issued a supplemental
1 report and never once mentioned the Court’s claim construction. As indicated in Mr. Smaha’s
l supplemental report itself, Mr. Smaha submitted the report “[b]ased on discovery from third
party Arbor Networks that took place after {Mr. Smaha] wrote [his] report, including a review of
1 the August 14, 2006 deposition transcript of Douglas Song and a discussion with Mr. Song on
. October 5, 2006." (See Smaha Supp. Report, attached as Ex. B, at i.) In addition, SRI was
E permitted by Your Honor to take Mr. Smaha’s deposition this past Tuesday, September 9, 2008,
on this very topic. Under repeated questioning, Mr. Smaha confirmed that these same reasons
were the bases for filing his supplemental report. (See Srnaha Dep., attached as Ex. C, at 24:l3—
25:15,) When Mr. Scherkenbach asked Mr. Smaha about this again during the trial, Mr. Srnaha
unequivocally responded that the Court’s claim construction was E a basis for tiling his
supplemental report. (See Trial Tr., at 1798:13-1799:1.) Contrary to Mr. Scherkenbach’s
. representations to Your Honor last Friday, no testimony elicited during Mr. Smaha’s direct
examination even touched upon this topic, much less indicated otherwise.
Second, the record could not be more clear that Mr. Scherkenbach pursued this line of
5 questioning too far, insinuating to the jury that Mr. Smaha did not use the correct construction
when presenting his non-infringement opinion. In particular, Mr. Scherkenbach asked "You
didn’t offer any opinion of noninfringement under the right construction at that time, did you?”
(Trial Tr. at 1797:14-18; see also id at 1797:9-12 ("Y0u did not opine in your original report
i that the -— under the correct construction, that the Proventia product lacked a short—term statistical
profiie?").) Notwithstanding Mr. Smaha’s response that "[t}here wasn’t a correct construction
available at the time°’ (id at 1797:19-20), the jury has already heard both the inappropriate
questioning as well as the responsive testimony it necessarily elicited. Whether or not Mr.
Scherkenbach actually intended to discredit Mr. Srnaha’s expert opinion by this exchange, it is
, very likely that the jury was left with the highly misleading impression that Mr. Smaha’s
“faiiure” to rely on the Court’s claim construction in his expert report was improper.

Case 1:04-cv-01199-SLR Document 547 Filed O9/14/2008 Page 3 of 3
The Honorable Sue L. Robinson
September 14, 2008
Page 3
` This exchange was prejudicial, inappropriate, and requires redress. To attempt to offset
the prejudice caused by Mr. Scherkenbaclfs line of questioning, ISS proposes the following
I instruction be read to the jury, and we suggest that it be added imediately before the actual
‘ claim constructions in the jury instructions:
You should be aware that based on the case schedule followed in my Court, I
determine the definitions for the patent claim terms after all of the parties’ experts
submit their reports. While sometimes I may have adopted a construction
2 proposed by either the Plaintiff or the Defendants, many times I have defined the
patent claim terms in a manner that is a combination ofthe two. Since the parties’
experts were not aware of the actual constructions that I ultimately issued when
they drafted their original opinions, their reports could not have been prepared in
view of the exact constiuctions issued by the Court. Therefore, you must ignore
any questions posed by the attorneys during their examination of any expert that
§ he has, or has not, applied the Court’s claim construction in reaching his
conclusions.
Respectfully,
/s/ Richard L. Horwitz
Richard L. Horwitz
882482/28434
Attachments
( cc: Clerk of the Court (via hand delivery)
Counsel of Record (via electronic mail)