Free Notice (Other) - District Court of Delaware - Delaware

Case 1:04-cv-00876-GMS

Document 85

Filed 02/16/2006

Page 1 of 13

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE TELCORDIA TECHNOLOGIES INC., Plaintiff/Counterclaim Defendant, v. CISCO SYSTEMS, INC., Defendant/Counterclaim Plaintiff. ) ) ) ) ) ) ) ) )

Civil Action No. 04-876 (GMS)

NOTICE OF SUBPOENA (STEPHEN M. GUREY) PLEASE TAKE NOTICE THAT Defendant Cisco will serve the attached subpoena on Stephen M. Gurey.

MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Leslie A. Polizoti Jack B. Blumenfeld (#1014) Leslie A. Polizoti (#4299) 1201 North Market Street Wilmington, DE 19899-1347 (302) 658-9200 [email protected] Attorneys for Cisco Systems, Inc.

Case 1:04-cv-00876-GMS

Document 85

Filed 02/16/2006

Page 2 of 13

OF COUNSEL: Matthew D. Powers Edward R. Reines Jessica L. Davis Sonal N. Mehta Thomas King WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 (650) 802-3000 Ryan Owens WEIL, GOTSHAL & MANGES LLP 767 Fifth Avenue New York, NY 10153 (212) 310-8000 February 16, 2006

-2-

Case 1:04-cv-00876-GMS
AO 88 (Rev. 11/94) Subpoena in a Civil Case

Document 85
Issued by the

Filed 02/16/2006

Page 3 of 13

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

TELCORDIA TECHNOLOGIES, INC.

SUBPOENA IN A CIVIL CASE
CISCO SYSTEMS, INC.
Case Number: I

04 - 8 7 6 ( GMS )

Case Pending in United States District Court, District of Delaware

TO: STEPHEN M. GUREY

Livingston, NJ 07039
YOU ARE COMMANDED to appear in the United States District Court at the place , date , and time specified below to
testify in the above case.
PLACE OF TESTIMONY

34 Scarsdale Drive

COURTROOM

DATE AND TIME

YOU ARE COMMANDED to appear at the place , date , and time specified below to testifY at the taking of a deposition in

PLACE OF DEPOSITION
See
PLACE

the above case.

DATE AND TIME

YOU ARE COMMANDED to produce and permit inspection and copying of the following documents or objects at the place , date , and time specified below (list documents or objects): Attachment " " attached hereto.

Weil , Gotshal & Manges LLP

DATE AND TIME

February 28, 2006
at 9:30

PREMISES
10153
ttorne s for Defendant

c/o Ryan Owens 767 Fifth Avenue, New York, NY

YOU ARE COMMANDED to permit inspection of the following premises at the date and time specified below.

I DATE AND TIME

Any organization not a party to this suit that is subpoenaed for the taking of a deposition shall designate one or more officers directors , or managing agents , or other persons who consent to testify on its behalf , and may set forth , for each person designated the matters on which the person will testify. Federal Rules of Civil Procedure , 30(b)(6).
TURE AND TITLE (INDICATE IF ATTORNEY FOR PLAINTIFF OR DEFENDANT)
DATE

'2../IL/ WOf:;
ISS G OFFICER' S NAME ADDRESS AND TELEPHONE NUMBER

Weil , Gotshal & Manges, LLP- 201 Redwood Shores Pkwy, Redwood Shores, CA 94065
(See Rule 45 , Federal Rules of Civil Procedure , parts C & D on reverse) I If action is pending in district other than district of issuance , state district Ill1der case nwnber.
Ao-

Sonal Mehta

Case 1:04-cv-00876-GMS
AO 88 (Rev. 11/94) Subpoena in a Civil Case

Document 85

Filed 02/16/2006

Page 4 of 13

PROOF OF SERVICE
DATE

PLACE

SERVED
SERVED ON (PRINT NAME)
MANNER OF SERVICE

SERVED BY (PRINT NAME)

TITLE

DECLARATION OF SERVER
I declare under penalty of perjury under the laws of the United States of America that the foregoing information contained in the
Proof of Service is true and correct.

Executed on
DATE

SIGNATURE OF SERVER

ADDRESS OF SERVER

Rule 45 ,

Federal Rules of Civil Procedure, Parts C & D: (c) PROTECTION OF PERSONS SUBJECT TO SUBPOENAS.
(1) A party or an attorney
responsible for the issuance and service

of a subpoena shall take reasonable steps to avoid imposing undue burden or expense on a person subject to that subpoena. The court on behalf of which the subpoena was issued shall enforce this duty and impose upon the party or attorney in breach of this duty an appropriate
sanction which may include, but is not limited to, lost earnings and

the provisions of clause (c) (3) (B) (iii) of this rule, such a person may in order to attend trial be commanded to travel from any such place within the state in which the trial is held , or the demanding party to contest the claim.

(iii) requires disclosure of privileged or other protected matter and
no exception or waiver applies, or (iv) subjects a person to undue burden.
(B) If a subpoena (i) requires disclosure of a trade secret or other confidential research development , or commercial information , or

reasonable attorney s fee.

(2) (A) A person commanded to produce and permit inspection and copying of designated books, papers, documents or tangible things , or
inspection of premises need not appear in person at the place of production or inspection unless commanded to appear for deposition , hearing or trial.

not describing specific events or occurrences in dispute and resulting from the
expert's study made not at the request of any party, or

(ii) requires disclosure of an unretained expert' s opinion or information

(B) Subject to paragraph (d) (2) of this rule, a person commanded to produce and permit inspection and copying may, within 14 days after service of subpoena or before the time specified for compliance if such time is less than 14 days after service , serve upon the party or attorney designated in the
subpoena written objection to inspection or copying of any or all of the

designated materials or of the premises. If objection is made, the party serving the subpoena shall not be entitled to inspect and copy materials or inspect the premises except pursuant to an order of the court by which the subpoena was issued. If objection has been made , the party serving the subpoena may, upon notice to the person commanded to produce , move at any time for an order to compel the production. Such an order to comply production shall protect any person who is not a party or an officer of a party from significant expense resulting from the inspection and copying commanded.
(3) (A) On timely motion , the court by which a subpoena was issued shall quash or modify the subpoena if it

(iii) requires a person who is not a party or an officer of a party to incur substantial expense to travel more than 100 miles to attend trial , the court may, to protect a person subject to or affected by the subpoena, quash or modify the subpoena , or if the party in who behalf the subpoena is issued shows a substantial need for the testimony or material that cannot be otherwise met without undue hardship and assures that the person to whom the subpoena is addressed will be reasonably compensated , the court may order appearance or production
only upon specified conditions.

(d) DUTIES IN RESPONDING TO SUBPOENA.
(1) A person responding to a subpoena to produce documents shall produce
them as they are kept in the usual course of business or shall organize and label

them to correspond with the categories in the demand.

(i) fails to allow reasonable time for compliance

(2) When information subject to a subpoena is withheld on a claim that is privileged or subject to protection as trial preparation materials , the claim shall be

(ii) requires a person who is not a party or an officer of a party to travel to a place more than 100 miles from the place where that person resides, is employed or regularly transacts business in person , except that , subject to

made expressly and shall be supported by a description of the nature of the
demanding party to contest the claim.

documents , communications , or things not produced that is sufficient to enable the

Case 1:04-cv-00876-GMS

Document 85

Filed 02/16/2006

Page 5 of 13

ATTACHMENT A
Pursuant to Rule 45 of the Federal Rules of Civil Procedure ,

Defendant

Cisco Systems ,

Inc. hereby requests that Stephen M. Gurey produce for inspection and

copying the documents described below.

INSTRUCTIONS
As used in these Requests , the singular shall include the plural , and
the past tense shall include the present tense ,

and vice versa; the words " and" and "
the

shall be both conjunctive and disjunctive; the word " all" shall mean " any and all; "

word " including" shall mean " including but not limited to " so as to be most inclusive.
Documents produced in response to these

requests should be

produced as they are kept in the usual course of business or should be organized and
labeled to correspond with the categories in the request.

If you contend that a portion of a document is subject to being
withheld under a claim of privilege or immunity from production or that a portion of a
document is non-responsive to the requests below, produce the entire document with any
necessary redactions.
If any document is withheld under a claim of privilege or

immunity from production, separately identify each document for which such a privilege
or immunity is claimed with the following information:
(a)
(b)

the date of, or appearing on, the document;
the document' s author;

(c)

the addressees ofthe document , if any;

SVI :\241361 \01 \568HOI !.DOC\35826. 0048

(g)

,"
Document 85 Filed 02/16/2006 Page 6 of 13

Case 1:04-cv-00876-GMS

(d)

the identity of each recipient of a copy of the document;

(e)
(f)

a description ofthe subject matter of the document;
the privilege claimed; and
the basis on

which the privilege is claimed.

If a document request is silent as to the time period for which
response is sought ,

please respond by providing all

infonnation , regardless of time

through the date of your response.

DEFINITIONS
As used herein
you" and "your" shall mean Stephen M. Gurey, as

well as your present or fonner partners ,

associates ,

legal assistants

, employees , agents

consultants , and all others acting or purporting to act

on

your behalf.
Inc. , its

Cisco " means Defendant Cisco Systems ,

predecessors

and successors ,

past and present parents , subsidiaries , divisions , affiliates , and other

organizational or operating units of any of the foregoing, and all past and present

directors ,

officers , employees , agents , and

representatives (including consultants and

attorneys) of any of the foregoing.

Telcordia " means Plaintiff Telcordia Technologies ,
predecessors and successors ,

Inc. , its

including, but not limited

to , Bell Communications

Research , Inc. (" Bellcore ), its past and present parents , subsidiaries , divisions , affiliates
and other organizational
or operating units of any of the foregoing, and all past and

present directors , officers , employees , agents , and representatives (including consultants
and attorneys) of any of the foregoing.

SVI :\241361 \OI\568HO1 LDOC\35826. 0048

Case 1:04-cv-00876-GMS

Document 85

Filed 02/16/2006

Page 7 of 13

Patents- in- Suit" means u.S. Patent Nos. 4 893 306 ,
and RE 36 633 individually and collectively.

4

835 763

Related Patents

means any

and all patents and patent

applications relating to the Patents in Suit ,

including any patents or patent applications

(including but not limited to all published , unpublished , pending, abandoned , divisional
continuation , continuation in part , or reissue applications) which share in whole or in part
a common disclosure with the Patents in Suit , including but not limited to u.S. Patent No.
260 978.

Document" shall be interpreted to the full extent permitted by the

Federal Rules of Civil Procedure and includes , without limitation , e-mail , files stored on

electronic media, copies of letters , notes and records of telephone conversations ,
corporate
communications
minutes
bulletins

intra-

specifications

instructions

advertisements , literature , patents , patent applications , specification sheets and diagrams

work assignments , reports , memoranda, memoranda of conversations , notes , notebooks
drafts ,
data sheets , work sheets ,

contracts and agreements , memoranda of agreements

assignments , licenses , sublicenses , opinions and reports of experts and consultants , books
of account , orders , invoices , statements , bills , checks and vouchers , brochures

photographs ,
decals

drawings , charts , catalogs , pamphlets ,

magazines ,

copies of magazines

world-wide web

and/or internet

postings

trade letters

notices

and

announcements ,

and press releases; and all other printed , written , recorded , taped

electronic , graphic , computerized printout or other tangible materials of whatever kind

known to , or in your possession , custody, or control. A draft or nonidentical copy is a
separate document within the meaning of this term.

SVI :\241361 \01 \568HOI !.DOC\35826. 0048

, ,,""

"

Case 1:04-cv-00876-GMS

Document 85

Filed 02/16/2006

Page 8 of 13

As used herein
opposition ,

proceeding(s)" shall

mean any litigation

cancellation proceeding, mediation , arbitration, interference , request for

reexamination , reexamination , reissue , or other judicial or administrative proceeding.

As used herein
conversation
conversations ,
negotiations
letters

communications(s)" shall mean all discussions
understandings

agreements

meetings

telephone

, notes , memoranda, telegrams , advertisements or other fonns

infonnation sent to or received ITom

any person or entity, whether oral ,

written or

electronic.

As used herein
referring to ,

relating to

" shall mean pertaining to , concerning,

describing, discussing, reflecting, evidencing, constituting or resulting ITom

the matter specified.

SPECIFI C REQUESTS

REQUEST NO.

All documents and things relating to the preparation, filing or prosecution
of any applications that led to any of the Patents- in- Suit or any Related Patents.
REQUEST NO.
All non- identical copies ,

including all drafts and drawings , of the file

histories of any ofthe Patents- in- Suit or any Related Patents.
REQUEST NO.

All documents and things relating to any communication , meeting or
contact with the u.S. Patent Office or any foreign patent office relating to any of the

Patents- in- Suit or any Related Patents.

SVl:\241361 \Ol\568HOl !.DOC\35826. 0048

Case 1:04-cv-00876-GMS

Document 85

Filed 02/16/2006

Page 9 of 13

REQUEST NO.

Copies of all references

cited to the u.S. Patent Office or any foreign

patent office during the prosecution of any of the Patents- in- Suit or any Related Patents.
REQUEST NO.

All documents and things relating to any decision as to what materials to
cite ,
or not cite , during the prosecution of any of the Patents- in- Suit or any Related

Patent , including but not limited to all prior art search results.
REQUEST NO.

All prior art relating to the claimed inventions of any claims of any of the
Patents- in- Suit or Related Patents.
REQUEST NO.

All documents and things prepared by or at the direction of the named
inventors of the Patents- in- Suit

or Related Patents relating to the subject matter of any

claim of any of the Patents- in- Suit or any Related Patent.
REQUEST NO.

All documents and things relating to communications between the named
inventors of any of the Patents- in- Suit
agent( s) relating to the

and you or any other patent

attomey(s) and/or

preparation and prosecution of the applications that led to any of

the Patents- in- Suit or Related Patents.
REQUEST NO.
All documents and things relating to the ownership, title ,
transfer

assignment , or licensing (including offers of any of the above) of any of the Patents- in-

Suit or any Related Patent in whole or part , alone or in conjunction with any other patents

SVI :\241361 \01 \568HOI !. DOC\35826. 0048

Case 1:04-cv-00876-GMS

Document 85

Filed 02/16/2006

Page 10 of 13

or intellectual property, including, but not limited to , any assignment from the named

inventors to Bellcore and any assignment from Bellcore to Telcordia , and any ownership
interest that Telcordia or anyone else has or had in the Patents- in- Suit or Related Patents.

REQUEST NO. 10
All documents and

things relating to the identification ,

selection, or

determination of the proper named inventors
Patents.

for any of the Patents- in- Suit or Related

REQUEST NO. 11 All documents and things relating to Telcordia
s decision to seek patent

protection for the subject matter of any claim of any of the Patents- in- Suit or Related
Patents , including but not limited to Telcordia s decision to seek a reissue patent for the

subject matter disclosed in US. Patent No. 5 260 978.

REQUEST NO. 12
All documents and things relating to any pre- filing communication of the

subject matter of any claim of any of the Patents- in- Suit or any Related Patent to any
person or entity outside of Telcordia.

REQUEST NO. 13
All documents concerning your file maintenance and document retention
policies and practices ,

including but not limited to any such documents concerning

retention , storage , maintenance , organization , filing, or destruction of documents received

from or sent to any of the named inventors of any of the Patents- in- Suit
Patents.

or Related

SVI :\241361 \01 \568HOl LDOC\35826. 0048

Case 1:04-cv-00876-GMS

Document 85

Filed 02/16/2006

Page 11 of 13

REQUEST NO. 14

All documents evidencing and otherwise

concerning the conception or

reduction to practice of the inventions claimed in the Patents- in- Suit or Related Patents.

REQUEST NO. 15
All documents concerning each mode , including, but not limited to , the
best mode , of practicing the subject matter of any claim of the Patents- in- Suit or Related

Patents contemplated by any of the named inventors at or around the time of filing any
patent applications that led to or resulted in any of the Patents- in- Suit.

REQUEST NO. 16
All documents concerning representations made by third parties to you
the named inventors ,
or Telcordia regarding the

validity, enforceability, scope or

infringement ofthe Patents- in- Suit.

REQUEST NO. 17
All documents concerning the patentability, validity, enforceability, scope

or infringement of the Patents- in-suit or Related Patents , including any evaluation made
by or on behalf of you or Telcordia concerning the Patents- in- Suit or any Related Patents.

REQUEST NO. 18
All documents and things relating to any communications , including but

not limited to any representations made by Telcordia or any of the named inventors
regarding the patentability validity, enforceability, scope or infringement of any of the
Patents- in- Suit or any Related Patents.

SV1 :\241361 IO11568HO1 LDOC\35826. 0048

Case 1:04-cv-00876-GMS

Document 85

Filed 02/16/2006

Page 12 of 13

REQUEST NO. 19
All documents concernIng any OpInIOnS of counsel concerning the

patentability, validity, enforceability, scope or infringement of the any of Patents-in- Suit
or Related Patents.

REQUEST NO. 20
All communications between you

and any law finn ,

patent agent or patent

attorney concerning any of the Patents- in- Suit or Related Patents.

REQUEST NO. 21
All communications between you

and anyone at Telcordia concerning the

Patents- in- Suit or Related Patents.

REQUEST NO. 22
All documents that you

provided to Telcordia , or anyone else , concerning

this case.

REQUEST NO. 23
All documents and things relating to Civil Action No. 98- 586 (D. Del.)

between Telcordia and Fore Systems , Inc. (also known as Marconi Communications
Inc. ), including all documents that
that case.
you

provided to Telcordia or anyone else concerning

SVI :\241361 \01 \568HOI LDOC\35826. 0048

Case 1:04-cv-00876-GMS

Document 85

Filed 02/16/2006

Page 13 of 13

CERTIFICATE OF SERVICE I hereby certify that on February 16, 2006 I electronically filed the foregoing NOTICE OF SERVICE with the Clerk of the Court using CM/ECF, which will send notification of such filing to Steven J. Balick and John G. Day. I further certify that I caused to be served copies of the foregoing document on February 16, 2006 upon the following in the manner indicated: BY HAND John G. Day ASHBY & GEDDES 222 Delaware Avenue Wilmington, DE 19801 BY ELECTRONIC MAIL John Day ([email protected]) John Williamson ([email protected]) York Faulkner ([email protected]) Don Burley ([email protected]) BY FEDERAL EXPRESS Don O. Burley FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER 1300 I Street, N.W. Washington, DC 20005-3315

/s/ Leslie A. Polizoti (#4299) MORRIS, NICHOLS, ARSHT AND TUNNELL LLP 1201 North Market Street Wilmington, DE 19801 (302) 658-9200 [email protected]

-3-