Free Order - District Court of Delaware - Delaware

Case 1:04-cv-00876-GMS

Document 236

Filed 09/20/2006

Page 1 of 2

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ____________________________________ TELCORDIA TECHNOLOGIES, INC., ) ) Plaintiff, ) ) v. ) Civil Action No. 04-875 GMS ) LUCENT TECHNOLOGIES, INC., ) ) Defendant. ) ____________________________________) TELCORDIA TECHNOLOGIES, INC., ) ) Plaintiff, ) ) v. ) Civil Action No. 04-876 GMS ) CISCO SYSTEMS, INC., ) ) Defendant. ) ____________________________________) ORDER WHEREAS, on September 18, 2006, the court held a summary judgment teleconference with the parties; WHEREAS, during the conference, the parties raised several issues on which the court reserved judgment, including (1) the plaintiff's request to have the court render the defendants' invalidity counterclaims moot; (2) the plaintiff's request to file a motion for summary judgment with respect to the defendants' anticipation and enablement counterclaims; and (3) the defendants' request to file a motion for summary judgment of invalidity for failure to satisfy the best mode requirement;

Case 1:04-cv-00876-GMS

Document 236

Filed 09/20/2006

Page 2 of 2

WHEREAS, after having considered the parties' submissions and arguments, as well as the relevant law,1 the court concludes that it will exercise its discretion to hear the defendants' counterclaims; and WHEREAS, the court further concludes that the plaintiff's request to file a motion for summary judgment regarding patent validity on the grounds of anticipation and enablement, and the defendants' request to file a motion for summary judgment of invalidity for failure to satisfy the best mode requirement shall be granted in the interest of justice; IT IS HEREBY ORDERED that: 1. The plaintiff's request to have the court render the defendants' invalidity counterclaims moot is DENIED. 2. The plaintiff's request to file a motion for summary judgment with respect to the defendants' anticipation and enablement counterclaims is GRANTED. 3. The defendants' request to file a motion for summary judgment of invalidity for failure to disclose the best mode is GRANTED.

Dated: September 20, 2006

/s/ Gregory M. Sleet UNITED STATES DISTRICT JUDGE

See Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361, 1371 (Fed. Cir. 2004) ("A district court judge faced with an invalidity counterclaim challenging a patent that it concludes was not infringed may either hear the claim or dismiss it without prejudice. . . .") (citing Nystrom v. TREX Co., 339 F.3d 1347, 1351 (Fed. Cir. 2003)). 2

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