Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—00876-GIVIS Document 234 Filed 09/14/2006 Page 1 of 2
MORRXS, NICHOLS, ARSHT gl TUNNELL LLP
1201 Nonrn Manninr Sriznnr
P.O. Box 1347
Wtrmtuorois, DELAWARE l989l*}~l347
302 658 9209
302 658 3989 FAX
Janie B. BLUMENFELD
302 ss; 9291
302 425 2012 Fax
[email protected]
September 14, 2006
BY ELECTRONIC FILING
The Honorable Gregory M. Sleet
United States District Court
$44 N. King Street
Wilmington, Delaware 19801
Re: Telcordio Tech., Inc. v. Lucent Tech., Inc., Civil Action No. 04~8'/5 GMS
Te/cordia Tech., Inc. v. Cisco, Inc., Civil Action No. 04-876-GMS
Dear Judge Sleet:
We are writing pursuant to D.Del. LR 7.l .2(c) to bring to the Court’s attention the
Federal Circuits decision yesterday in The Massachusetts Institute of Technology v. Abacus
Software, 05-l 142 (Fed. Cir. Sept. 13, 2006) (Exh. A), which is relevant to the issue of summa1y
judgment of non—~int`ringement of the '306 patent —— the subject of the summary judgment letters
to be discussed during the telephone conference next Monday morning.
In MIT, the Federal Circuit declined to address claim construction issues that were
not the basis for the stipulated judgment of nondnfringement, and stated its preference for a
developed factual record with respect to the accused devices. lt stated (at 7—8):
This case once again involves an effort by parties to a patent
infringement case to have this court opine on a range of claim
construction issues even though the judgment of the district court
is not based on the resolution of those issues. We decline that
invitation and limit our consideration to issues presented by the
judgment under review ....
rr e *
Even with respect to the claim construction issues on which the
judgment is based we perceive a problem with the mechanism by

Case 1 :04-cv—00876-GIVIS Document 234 Filed 09/14/2006 Page 2 of 2
The Honorable Gregory M. Sleet
September 14, 2006
Page 2
which this case has been litigated. As in Lava Trading, Inc. v.
Sonic Trading Mgmt., LLC, 445 F.3d 1348 (Fed. Cir. 2006), the
record does not disclose the nature ofthe accused devices, and our
rulings on claim construction in this case unfortunately must be
made without knowledge of the accused devices. gc; id; at 1350
(“Without knowledge of the accused products, this court cannot
assess the accuracy of the infringement judgment under review and
lacks a proper context for an accurate claim construction."); gage
glgo Exigent Tech., Inc. v. Atrana Solutions, inc., 442 F.3d 1301,
13l0 n. l0 (Fed. Cir. 2006) (°‘[l}t is appropriate for a court to
consider the accused device when determining what aspect of the
claim should be construed?). Moreover, the stipulated judgment
does not identify which of the many claim construction rulings are
dispositive. While it is highly undesirable to consider these issues
in the abstract, here as in Lava Trading, we have proceeded to do
so.
Consistent with Lava Trading and MIT, the defendants believe that there should
be a fully—developed record on summary judgment reflecting all potential bases to support the
judgment. This will provide a proper record for an appeal.
Respectfully,
Ar/Jack B. Blumenfeld
Jack B. Blumenfeld (#1014)
J BB/bls
cc: Peter T. Dalleo, Clerk (By Hand)
John G. Day, Esquire (By Hand)
John W. Shaw, Esquire (By Hand)
Donald R. Donner, Esquire (By Email)
Steven C. Cherny, Esquire (By Email)
Edward R. Reines, Esquire (By Email)