Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-01199-SLR

Document 497

Filed 04/09/2008

Page 1 of 2

Richard K. Herrmann 302.888.6816 [email protected]

April 9, 2008 VIA EFILING AND HAND DELIVERY The Honorable Sue L. Robinson United States District Court District of Delaware 844 King Street Wilmington, Delaware 19801 Re: Your Honor: On behalf of Defendant Symantec Corporation, and further to my letter of September 8, 2006, I write to update the Court regarding the reexamination of SRI's patents-insuit1 by the United States Patent and Trademark Office. All of the claims in SRI's patents currently stand rejected by the USPTO in initial office actions. To summarize the ongoing proceedings in the USPTO: In late 2006, in response to a series of requests filed by Symantec, the USPTO ordered ex parte reexamination of each of SRI's four patents-in-suit.2 The USPTO determined that prior art cited in Symantec's requests for reexamination raised new and substantial questions as to the patentability of each of the claims in SRI's patents. In early 2008, the USPTO issued a series of initial Office Actions rejecting all claims of SRI's patents-in-suit. The claims of the `203 patent were rejected under 35 U.S.C. § 103 as being obvious over Emerald 1997 in view of Intrusive Activity 1991. The claims of the `615 patent were rejected under 35 U.S.C. § 103 as being obvious over Emerald 1997 in view of Intrusive Activity 1991 and NetRanger Manual. The claims of the `212 patent were rejected under 35 U.S.C. § 102(b) as being anticipated by Emerald 1997 and under the doctrine of obviousness-type double patenting in view of the `203 and `615 patent claims.3 The claims of
U.S. Patent Nos. 6,484,203 ("the `203 patent"), 6,711,615 ("the `615 patent"), 6,708,212 ("the `212 patent"), and 6,321,338 ("the `338 patent"). Reexamination Nos. 90/008,125 (`203 patent), 90/008,113 (`615 patent), 90/008,098 (`212 patent), 90/008,123 (`338 patent). As the Court is aware, the Federal Circuit recently affirmed that all claims of the `212 patent are anticipated by Emerald 1997 and therefore invalid. SRI Int'l, Inc. v. Internet Sec. Sys., 511 F.3d 1186, 1188 (Fed. Cir. 2008).
500 Delaware Avenue, Suite 1500 | Wilmington, DE 19801-1494 T 302.888.6800 F 302.571.1750 Mailing Address P.O. Box 2306 | Wilmington, DE 19899-2306 www.morrisjames.com
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SRI International v. ISS and Symantec, D. Del., C.A. No. 04-1199-SLR

Case 1:04-cv-01199-SLR The Honorable Sue L. Robinson April 9, 2008 Page 2

Document 497

Filed 04/09/2008

Page 2 of 2

the `338 patent were rejected under 35 U.S.C. §§ 102(b) and 103 as being anticipated and/or obvious in view of multiple references, including Network NIDES, Emerald 1997, JiNao Report and NetRanger Manual. On March 18, 2008, SRI responded to the office actions concerning the `203 and `615 patents. At the present time, all four reexamination proceedings concerning SRI's patentsin-suit are still pending in the USPTO. Copies of the reexamination filings are available at the Court's request. Symantec continues to appreciate the Court's attention to these matters. Respectfully, /s/ Richard K. Herrmann Richard K. Herrmann, I.D. No. 405 [email protected] RKH/tp cc: Dr. Peter T. Dalleo, Clerk of the Court (via hand delivery) John Horvath, Esq. (via email) Howard G. Pollack, Esq. (via email) Richard L. Horwitz, Esq. (via email) David Moore, Esq. (via email) Holmes Hawkins, III, Esq. (via email)