Free Letter - District Court of Delaware - Delaware

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Case 1.04-cv-01199-SLR Document 41-2 Filed 06/02/2005 Page 1 of 4 fm
KING Sc SPAQLDING LLP
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Atlanta, Georgia 30303-1763
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DATE: May 24, 2005
Reei » ients Com · an Ci lState Tele hone # Fax #
Ann G. Fort, Esq. Sutlietiand Asbill Ec Atlanta, Georgia 404.853.84% 404.853.33%
Brennan LLP
Frank E. Fish & Richardson Boston, Massachusetts 617.521.7SS3 617.542.8906
Scherkenbaeh, Es . P.C.
FROM: Holmes I. Hawkins III, Esq. 5615 Our Ref. #2 05456.1 12001
NUMBER DF PAGES (Including Cover Page): 4

MESSAGE:

PLEASE CHECK THAT ALL PAGES ARE RECEIVED. IN CASE OF PROBLEMS, PLEASE CALL (404)
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Case 1:04-cv-01199-SLR Document 41-2 Filed 06/02/2005 Page 2 of 4
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Din:etFax: 404.572.5l45
[email protected]
May 24, 2005
HAND DELIVERY
The Honorable Clarence Cooper
United States District Judge,
Northern District of Georgia
Suite 1721
Richard B. Russell Building
75 Spring Street, S.W.
Atlanta, Georgia 30303-3309
Re: Internet Security Systems, Inc., a Georgia Corporation v. SRI
International, Inc., a Calybrnta Corporation
Civil Action No. 04-CV—2402-CC
Dear Judge Cooper:
We are counsel for plaintiff, Internet Security Systems, Inc. ("lSS-GA") in
connection with the above-referenced declaratory judgment action that is pending
before your Honor. We wish to inform you of developments in the related case
pending in the U.S. District Corut for the District of Delaware, SRI International,
Inc. v. Internet Security Systems, Inc., a Delaware Corporation, and Symantec
Corp., Civ. No. 04-1 199-SLR. As discussed below, in light of those
developments, ISS-GA hereby requests that the Court deny SRI’s pending motion
to dismiss and transfer ISS-GA’s declaratory judgment action to the U.S. District
of Delaware pursuant to 28 U.S.C. § 1404.
As Your Honor will recall, ISS-GA tiled this declaratory judgment
complaint against SRI International, Inc. ("SRI") on August 17, 2004. The
complaint seeks a declaration that ISS-GA’s products do not infringe five patents
ATLANTA * HOUSTON * LDNDDN '• NEW YORK * WASHINGTON, ILO.

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Case 1:04-cv-01199-SLR Document 41-2 Filed 06/O2i;§S?45E§;;iE2 gf?/E4
The Honorable Clarence Cooper
- May 24, 2005
Page 2
owned by SRI. Nine days later, on August 26, 2004, SRI filed a complaint against
ISS·GA’s Delaware parent company, ISS-DE, alleging that ISS·»DE is infringing
two of the tive patents that are the subject of the declaratory judgment suit in
Georgia. SRI’s complaint also asserted infringement claims against an unrelated
third party, Symantec Cerporation.
On October l5, 2004, ISS-DE tiled a motion to dismiss or, in the altemative,
to sever and transfer the Delaware action to the Northern District of Georgia. On
April 13, 2005, the Delaware court denied ISS-DE’s motion to dismiss without
prejudice and denied the motion to sever and transfer. On April 25, 2005, SRI
filed an amended complaint in Delaware to add ISS-GA as a defendant. The
amended complaint alleges that ISS-GA is infringing upon the same two patents
that are asserted against ISS-DE in the Delaware action.
In an effort to avoid continued motion practice relating to forum selection,
on May 23, 2005 ISS-GA filed an answer and counterclaims in the Delaware
action, a courtesy copy of which is enclosed. The counterclaims include an action
for a declaratory judgment of invalidity and non-infringement of the same Hve
patents involved in the declaratory judgment action pending in this Court.
SRI argued in its motion to dismiss pending before you that ISS-GA "will
get its day in court," but that the court should be "‘SRI’s chosen forum," the District
of Delaware, not ISS-GA’s chosen forum. (SRI’s Motion at p. 25, n.S.) SRI
claimed that dismissal was proper because at the time of filing, ISS-GA allegedly
lacked an objectively reasonable apprehension of suit.] SRI stated that should the
Court deny its motion, it would then move to transfer the action to the District of
Delaware.
Given that ISS-GA has now agreed to litigate in SRI’s chosen forum, where
SRI has tiled a patent infringement suit, SRI should not be heard to argue that ISS»
GA lacks a basis for subject matter jurisdiction over its declaratory judgment
claims or that transfer of those claims to Delaware is improper.
I As set forth in ISS-GA’s opposition to SRI‘s motion, subject matter jruisdiction is proper
given SR“l’s infringement allegations and threats of litigation dining the pre-suit negotiations
between the parties.

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Case 1:04-cv-01199-SLR Document 41 -2 F§e£d5O§|O;i;g10?45EH;g;E?l gf 24/B4
The Honorable Clarence Cooper
. May 24, 2005
Page 3
Accordingly, ISS-GA respectfully requests that the Court deny SRl’s
pending motion to dismiss and transfer ISS-GA’s declaratory judgment action to
the U.S. District of Delaware pursuant to 28 U.S.C. § 1404. In the hope of
avoiding umtecessary iilings with the Court, ISS-GA is submitting this request by
letter in lieu of a formal motion. However, we would be more than happy to
provide a formal motion at the COl11'lZ’S request.
Very truly yours,
%éa»%@
Holmes J. Hawkins III
hjh
Encl: Answer and Counterclaims of Intemet Security
Systems, Inc., a Georgia Corporation
cc; Ann Fort, Esq. (virzfeosimfle, w/o enc!.)
Frank Scherkenbach, Esq. (viafuesimile, w/o enc!.)
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