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Case 1 :04-cv—00876-GIVIS Document 232 Filed 09/1 1/2006 Page 1 of 3
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WILMINGTON, DELAWARE I9899
September ll, 2006
The Honorable Gregory M. Sleet VIA ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, Delaware 19801
Re: T elcordia Technologies, Inc. v. Lucent Technologies, Inc., C.A. No. 04-875-GMS
T elcordia Technologies, Inc. v. Cisco Systems, Inc., C.A. No. 04-876-GMS
Dear Judge Sleet:
Pursuant to the Court’s Revised Scheduling Order, plaintiff respectfully submits this reply letter
in support of plaintiff’ s requests for leave to file summary judgment motions.
I. Non-infringement of the ’306 Patent
At the outset, defendants criticize Telcordia for seeking judgment against itself during the summary
judgment phase of the case. As the Court is aware, as early as June 28, 2006 (six days after the Court’s claim
construction Order issued), Telcordia represented that it could not establish infringement of the ’306 patent
under the Court’s claim construction, and that for this reason Telcordia would seek the entry of judgment
against itself on its ’306 patent infringement claims. (Ex. 1 to D.I. 200 in C.A. No. 04-87 5—GMS). Although
Telcordia proposed the entry of judgment through altemative means such as a stipulation, or a concession in
conjunction with a Rule 54(b) motion, defendants steadfastly opposed any procedme other than summary
judgment. Indeed, during a July 18, 2006, status hearing, defendants claimed that summary judgment is "the
only rule that permits you to move from claim construction to non—infringement." (July 18, 2006, Tr. at 19).
At that hearing, the Court Ordered that the case would advance to summary judgment. In accordance with the
Court’s Order, Telcordia moved for summary judgment against itself—a procedure that this Court has
recognized. Schering Corp. v. Amgen, Inc., 35 F. Supp. 2d 375 (D. Del. 1999). Telcordia is not seeking to
distort the process or to create a parallel set of moving papers as defendants suggest, but rather is seeking only
to maintain its consistent position—that judgment should be entered against it—given the Court’s instruction
that judgment on ’306 patent infringement will issue through the Court’s summary judgment process.
Telcordia submits that the summary judgment proceeding need not extend any further than the two
claim limitations for which Telcordia concedes non-infringement. There is no reason to move forward with a
wide—ranging, complex summary judgment proceeding, laden with disputed factual issues, where Telcordia
already concedes non-infringement. Indeed, defendants’ sole stated ptupose for engaging in a wide-ranging
summary judgment proceeding is that such a process might afford them the chance to obtain "alternative
grounds supporting summary judgment? Defendants’ proposal is inefficient and entirely self-serving}
Given that Telcordia concedes judgment on specific grounds, and that Telcordia has raised disputed issues of
material fact on all other grounds, the summary judgment proceeding should focus on developing the
undisputed factual record needed to support the already conceded judgment.
I At the same time, defendants accuse Telcordia of manipulating the summary judgment procedure to create a
"vulnerable" record on appeal. This is not true. Telcordia, quite simply, seeks the most efficient and least
burdensome means to concede judgment on ’306 patent infringement. Defendants, on the other hand, seek to
take advantage of Telcordia’s concession by insisting that the Court needlessly look past the concession and
evaluate complex disputed factual issues just so the defendants can have the chance to obtain hypothetical
"altemative grounds supporting summary judgment?

Case 1 :04-cv—00876-GIVIS Document 232 Filed 09/1 1/2006 Page 2 of 3
Defendants recast Telcordia’s proposal as "granting judgment based merely on the plaintiffis
concession of non-infringement due to an adverse claim cons1mction," and suggest that such a procedure
conflicts with Federal Circuit law. Defendants are wrong on the facts and the law. First, Telcordia is not
proposing that the Court grant summary judgment "merely" on Telcordia’s concession of non-infringement.
Rather, Telcordia is proposing that the parties frst develop a factual record by briefmg exactly how and why
Telcordia is unable to establish infringement of the two conceded limitations as construed by the Court.2
Second, Federal Circuit law does not preclude the Court from granting summary judgment of non-
infiingement based upon a concession of non-infringement. Specifically, the procedure as applied, for
example, by this court in Schering Corp. v. Amgen, is neither outdated nor inapplicable as defendants contend.
Rather, many Federal Circuit cases recognize the ability of a court to dispense with an infringement claim
through a stipulation of non—infiingement as was done in the Schering case. See, e. g., Versa Corp. v. Ag-Bag
Int’l Ltd, 392 F.3d 1325, 1328 (Fed. Cir. 2004); Phillnns v. AWHCorp., 363 F.3d 1207, 1210 (Fed. Cir.
2004); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1368-69 (Fed. Cir. 2003). Indeed, even inthe two
cases cited by defendants, Wilson Sporting Goods, C0. v. Hillerich & Bradsby Co., 442 F.3d 1322 (Fed. Cir.
2006) and Lava Trading Inc. v. Sonic Trading Mgmt., LLC, 445 F.3d 1348 (Fed. Cir. 2006), the Federal
Circuit allowed the appeal of a judgment based upon a stipulation of non—infringement. The cases note—in
dicta only——the lack of a factual record supporting the judgment, but that dicta is inapplicable here because a
factual record supporting Telcordia’s conceded judgment will be developed in this case.
In summary, where Telcordia concedes non-infringement based upon two claim limitations, and
correctly contends that the factual issues are vigorously disputed as to all other claim limitations, there is no
reason to complicate the summary judgment process by focusing on the disputed claim limitations.
H. Mootness of the ’306 Patent Invalidity Counterclaims
Defendants contend that the Court should not consider the mootness of their ’306 patent invalidity
counterclaims in connection with stunmary judgment motions. Rather, defendants argue, the Court should
first decide summary judgment motions (including, apparently, summary judgment motions directed toward
’306 patent validity), and then later consider whether ’306 patent validity issues are moot.
Defendants fail to appreciate that the mootness of ’306 patent validity is premised upon a finding of
’306 non-infringement—a finding with which all parties agree. Following a judgment of non-infringement,
invalidity counterclaims may be dismissed as moot, at the Court’s discretion. Phonometrics, Inc. v. Northern
Telecom, Inc., 133 F.3d 1459, 1468 (Fed. Cir. 1998). The dicta cited by defendants from a 1945 Supreme
Court case has no bearing on the procedural propriety of dismissing invalidity counterclaims as moot. Indeed,
far more recent Supreme Court jurisprudence, as directly applied by the Federal Circuit, supports Telcordia
and confirms that the Court may dismiss the counterclaims as moot. "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 . . ." Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361, 1371 (Fed. Cir.
2004). "We have noted that ‘[t]he Supreme Court’s decision in Cardinal Chemical does not preclude this
discretionary action by the district court."’ Id at 1370, citing Cardinal Chemical C0. v. Morton Int ’l, Inc., 508
U.S. 83 (1993); Phonometrics, 133 F.3d at 1468. Consistent with this precedent, the Court should exercise its
discretion to dismiss the ’306 counterclaims as moot for the reasons noted in Telcordia’s opening letter.
HI. The ’306 Patent is Not Invalid Under 35 U.S.C. § 102 or § 112(1)
Defendants suggest that Telcordia should be precluded from filing a motion that the ’306 patent is
not invalid under 35 U.S.C. § 102 (anticipation) or § 112 (enablement) because the motion, if successful,
would not be "dispositive of any claim." This argument is baseless and distracts from the established
summary judgment standard of Fed. R. Civ. P. 56, which has nothing to do with whether a motion, if
successful, would be "dispositive of any claim." Indeed, Telcordia’s motion, which defendants criticize as
"fractional," is expressly contemplated by Rule 56(d) and the advisory committee’s note: "The partial
2 Defendants criticize Telcordia’s proposal to develop the factual record, claiming that "[a]llowing the losing
party to create a factual summary judgment record . . . is not sensible and invites legal error." This
conclusory argument ignores the reality of the Court’s summary judgment briefing process, which allows
both sides an opportunity to develop the record.
2

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summary judgment is merely a pretrial adjudication that certain issues shall be deemed established for the trial
of the case. This adjudication . . . serves the purpose of speeding up litigation by eliminating before trial
matters wherein there is no genuine issue of fact." Fed. R. Civ. P. 56 advisory committee’s note. The focus
of a partial summary judgment motion, as with any other summary judgment motion, centers on whether there
are genuine issues of material fact and whether the moving party is entitled to judgment as a matter of law.
Fed. R. Civ. P. 56(c). For this reason, in its opening letter, Telcordia explained why there are no genuine
issues of material fact, and why it is entitled to judgment as a matter of law. Defendants simply fail to
respond to Telcordia’s substantive position on the merits in any meaningful way, choosing instead to argue
that the Court should not entertain a partial summary judgment motion—regardless of the merits—simply
because the motion would not be "dispositive of any claim."
Indeed, taking their theory a step further, defendants contend that their proposed summary
judgment motion on ’306 validity should be permitted because, if successful, it would fully dispose of the
issue.3 Again, whether a summary judgment motion is or is not fully dispositive of a claim has no relevance
to the viability of the motion on the merits. Moreover, Telcordia responded to defendants’ proposed summary
judgment motion on the merits and within the framework of Rule 56 by identifying specific issues of disputed
fact that would make the entry of stunmary judgment improper. In contrast, defendants do not even mention,
let alone argue, the possibility that disputed facts would preclude Telcordia’s summary judgment motion. For
this reason, under the standards of Rule 56, the Court should allow Telcordia to proceed with its motion.
IV. Cisco Products Operating in SRTS Mode Infringe Claim 33 of the ’633 Patent
Again, defendants incorrectly argue that their proposed ’633 patent infringement motion should be
permitted, and Telcordia’s proposed motion on the same issue should be precluded, simply because their
proposed motion, if successful, would dispose of all of Telcordia’s ’633 patent infringement claims.
Amazingly, defendants advance this self-serving argument where the parties agree that there are no disputed
factual issues and that the only remaining question is whether the l"convergence sublayer” element is met as a
matter of law. Under defendants’ approach, if they are entitled to judgment on the "convergence sublayer"
point as a matter of law, then summary judgment should issue in their favor, whereas if Telcordia is entitled to
judgment as a matter of law on the same point, then summary judgment should not issue in Telcordia’s favor.
This one—sided proposal should not be entertained. Should the Court permit srunmary judgment motions on
infringement of the ’633 patent, for the reasons already noted in Telcordia’s opening and responding letters,
Telcordia’s motion should be granted and defendants’ motion should be denied.
V. The ’633 Patent is Not Invalid Under 35 U.S.C. § 112(1) or § 112(2)
Defendants concede that "[a]bsent a change in the Court’s claim construction, Defendants are rg
pursuing an indefiniteness, non—enablement or written description allegation on the two remaining asserted
claims of [the ’633 patent]," and that therefore srunmary adjudication is "urmecessary." (D.I.s 235 and 222).
Because defendants have insisted that the summary judgment process go forward even on issues which
Telcordia concedes, the process should also go forward on issues which defendants concede. Specifically,
defendants claim that srunmary judgment is "the only rule that permits you to move from a claim construction
to noninfringement." (July 18, 2006, Tr. at 19). If that is true, then summary judgment would also be "the
only rule that permits you to move from claim construction" to judgment on validity issues.
Respectfully,
Steven J. Balick
c: All Counsel (by electronic mail)
3 Defendants also contend that the Court should allow their summary judgment motion on ’306 patent validity
because it allegedly would "support and reinforce” the conceded ’306 patent non-infringement judgment
against Telcordia. This theory is even further afield from the Rule 56 standards. "Supporting and
reinforcing" judgment on a separate and unrelated infringement claim cannot serve as the basis for granting
summary judgment of invalidity. Moreover, judgment on validity does not in any way "support and
reinforce" judgment on infringement. Validity and infringement are mutually exclusive.
3