Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—00876-GIVIS Document 230 Filed 09/1 1/2006 Page 1 of 3
MORRIS, NICHOLS, ARSHT gt TUNNELL LLP
E20] Nonrm MARKET Scraper
P.O. Box 1347
Wirnrnoron, Bnrnwsne l9899—i3¢i7
302 658 9200
302 658 3989 Fax
tlaox B. BLUMENFELD
302 351 9291
302 425 3012 Fax
_]blume¤[email protected] Septcmbcr ll:
The Honorable Gregory M. Sleet VEA ELECTRONIC FILING
United States District Court
844% N. King Street
Wilmington, Delaware 19801
Re: Telcordio Tech., [hc. v. Lucent Tech., Inc., Civil Action No. 04»~875 GMS
Telcordio Tech. Inc. v. Cisco, Inc., Civil Action No. 04-876-GMS
Dear Judge Sleetz
Defendants submit this reply in support of their request to tile summary judgment motions.
Summary Judgment Of Noninfringement Of The ’3(}6 Patent Should Not Be Unduly
Limited: 'i`elcordia’s response confirms that its strategic goal is to position its appeal on this patent so as
to isolate and attack the aspects of this Court’s claim construction ruling that it considers most vulnerable.
Specifically, Telcordia seeks to cherry—picl< the few terms that it wants to form the basis of a judgment
and to use that artificially abridged judgment and record as a vehicle to request that the Federal Circuit
also review the Court’s other constructions, even though those terms would not he the basis for judgment
and no corresponding factual record would be created. As explained in Defenda.nts’ prior letters, this is
inefficient, inconsistent with the rules of civil procedure, and contrary to the goals of creating a proper
record for appeal and avoiding piecemeal litigation. in pursuit of this cynical appeai strategy, Telcordia
attempts to manufacture "hotly disputed issues of fact" regarding the other claim terms by submitting
hundreds of pages of exhibits that it never cited in its infringement interrogatory responses. Telcordia
cannot limit the summary judgment process by attaching a horde of previously unidentified documents,
and claim that they raise “disputed issues of material fact as to each claim element other than those
covered by Telcordia’s concessions? Defendants will show in their summary judgment motion, if
permitted, that there are no material issues of fact with respect to any ofthe grounds on which they seek
summary judgment, and that Telcordia cannot meet its burden of proving that Defendants products meet
any ofthe limitations asserted on that motion}
E 'felcordia again mischaracterizes its decision not to serve an infringement expert report based on its
assumption that the Court would enterjudgment under Rule S·4(b) as the Court refusing to "permit" it to
serve such a report. Regardless, it is undisputed that under Federal Circuit law Telcordia “crmn0t satigfy
its burden of proof that the complex technology embodied in the accused products meets the claimed
elements. Centricut, LLC v. Esob Group, 390 F.3d 136}, 1370 (Fed. Cir. 2004). Ignoring Centricut,
Teicordia incorrectly argues that Third Circuit law governs whether a potentee can meet its burden of
proving potent infringement when it fails to submit an expert opinion and, as here, the defendant submits
an expert opinion showing noninfringement. Such a dispute regarding the applicabie law is a legal
question and certainly no barrier to summary judgment.

Case 1 :04-cv—OO876-GIVIS Document 230 Filed 09/11/2006 Page 2 of 3
The Honorable Gregory M. Sleet
September I l, 2006
Page 2
Best Mode Vioiation For The ’3(36 Patent: Telcordia does not deny that the named inventor
tiatiy admitted that he failed to disclose his best mode "iook ahead" technique. Telcordia instead argues
that this does not constitute an invaiidating best mode violation because the "iook ahead" technique is
"completely irrelevant to the claims? The inventor however admitted, without quaiification, that his
failure to disclose the “‘1ook ahead" constituted a failure to disclose "the best way to implement the
claimed inventions ofthe ’306 Patent? D1. 214 in 04-876~GMS, Ex. I (Chao Tr.) at 330:5-14. Indeed,
he admitted that the best mode "look ahead" feature was developed to determine whether the incoming
frames were "empty and avaiEable" M a core part ofthe claimed inventions, as reflected in the words of the
asserted claims. Id at 339:5-12 (“[T]he patent makes a mistake by teaching someone to take the parailel
data out after the delay unit when they’re trying to look ahead to whether a frame is empty and
avail¢1ble.")i Finally, Telcordia’s argument that there are aiternatives to the “look ahead" feature for
practicing the claimed invention actuaily supports Def`endants’ argument because the ’306 Patent
admittedly faiis to disclose the inventor’s best "aiternative." Telcordia cannot avoid the legal
consequence of failing to disclose the best mode by arguing that there are other, admittedly inferior,
modes of practicing the claimed invention.
"763 Patent Noninfringement: Teicordia does not contest the key facts that warrant summary
judgment of noninfringement of the ’763 Patent and it acknowledges that the Courtfs claim construction,
adverse to 'i`elcordia’s proposed construction, requires error signals to be inserted Yoliewirzg
demultiptexing? As in many cases where a plaintiff loses a key disputed claim construction, summary
judgment is appropriate here. AT1) Corp, v. Lydall, Inc., 159 F .3d 534, 540 (Fed. Cir. 1998). In the face
of an undisputed record and an unfavorable claim construction, Telcordia cobbles together an alternative
infringement theory that hinges on its new contention that there is another demultiplexer, called the
pointer processor, located before error signals are inserted. Telc01‘dia’s expert conceded, however, that
the claimed demultiplexer is the cr0ss—c0rmect, not the pointer processor. D.I. 214 in 04-876—G1\/IS, Ex.
2 (Prucnai Tr.) at 142:14-19 ("{T}he multiplexer and demultiplexer of claim one is the crosswzormcct
circuitry?). TeEcordia’s strained contention that the claimed demultiplexing is somehow performed by
something other than what its expert contends is the claimed demultiplexer (the cross—connect) makes no
sense. Regardless, Telcordia’s expert admitted that, even if the pointer processor were to be treated as a
demultipiexer, the demultiplexing would not be complete Mg! the cr0ss~cermect performed its
demulriplexing function. Id at 121 :I6-18 ("{T}he final stage of the demultiplexing and its completion,
as you said, is done at the cross»comf1ect."). Thus, even under Te1cordia’s fall back theory, the error
signals are not inserted afar demultiplexiog because demuitiplexing admittedly occurs and is completed
at the cross—connect. Summary judgment of noninfringement follows as a matter of logic.
Indeiiniteness Of The ’763 Patent: Defendants’ claim construction brief showed that the
asserted claims of the ‘763 Patent are indefinite. "flcordia argued then that this issue should be resolved
at summary judgment. D.I. 94 in O4-876-GMS, at 27 11.7. The Court agreed. T elcordia naw argues that
the Court should not consider whether the asserted claims ofthe ’763 Patent are indefinite, an undisputed
question of law. There is no dispute that the ’763 Patent: (1) does not disclose any "circuitry at the
controller"; and (2) does not associate the claimed function with any such structure. Telcordia cannot
cure this failure by using an expert to testify that one of ordinary skill in the art would have been aware of
undisclosed structure for performing the claimed function. See Default Proof Inc. v. Home Depot, 412
F.3d 1291, HG2 (Fed. Cir. 2005), Accordingly, summary judgment of invalidity is appropriate.
Noninfringement Of The ’633 Patent: The Court rejected 'Felcordia’s position that a time-
stamp carried inside the convergence sublayer overhead could fail within the scope of this patent,
requiring instead that the time stamp be communicated outside the convergence subtayer overhead.
There is no serious dispute that I)efcndants’ products perform the accused SRTS function within the
convergence sublayer and therefore do not infringe the ’633 patent. For example, Teicordia contends that
Defe11dants’ products meet the applicable standard and Telcordia’s expert testified "that [in standards

Case 1 :04-cv—OO876-GIVIS Document 230 Filed 09/11/2006 Page 3 of 3
The Honorable Gregory M. Sleet
September 1 1, 2006
Page 3
compliant products} the convergent sablayer provides the SR T S met}i0d." Summary judgment therefore
is proper.
’633 Patent Improper Inventorship: The undisputed record demonstrates that France Teiecom
invented the claimed inventions by August i.99l. For the last ten months, Telcordia contended, in swom,
Court—Ordered interrogatory responses, that it conceived the claimed inventions months after that date.
Understanding that it cannot win with the conception date it advanced throughout discovery, after the end
of all discovery, and just before the submission of this letter (Friday evening, September S), Tclcordia
desperately attempted to change its interrogatory response to advance an earlier conception than France
Telecom. Telcorciia did so in contravention of its sworn interrogatory response and in defiance of the
Cou1t’s Order to speciiy a fixed conception date almost 21 year ago.2 Compare Ex. E0 with Ex. 11. This
highly prejudiciai tactic should not be permitted. Teicordia should be precluded from advancing its
newly-conceived conception date. Its decision to try to do so, however, highlights the importance of the
Court permitting Defendants to brin their motion for summary judgment based on France Telecoms
prior inventorship. in any event, nothing in Telcordiais response ietter addresses the fact that 'feicordizfs
expert studied the inventorship issue and agreed that France Teiecornfs idea to move the time stamp out
of the convergence subinyer was as important as shortening the time stamp. Di. 214 in 04-376-GMS, Ex.
3 (Clark Tr.) at 983048 ("Q. Now, you set forth two key aspects of the invention. One is that you use a
residual time stamp that’s not as large as a full time stamp and that you communicate that not in the
convergent subiayer. is one of those more important than the other? A. E wou1dn’t know how to judge
their relative importance. They’re bath important?). France Telecom indisputably contributed a key
aspect of the claimed invention W a fact that Teicordia did not tcl} the Patent Office, but now admits.
Teicordia Cannot Recover Damages Prior to Fiiing Suit Against Lucent: The oniy issue
regarding constructive notice is whether there is 21 legal exception to the marking requirement for
products made under a "have made" license. Section 287(a) does not recognize such an exception, and
courts have rejected an exception for iiccnseesf manufacturers because "production of the article for the
use of the licensee is production under the license? Southwire C0. v. USITC, 629 F.2d 1332, 1338
(CCPA i980); Maxwell v. J Baker, Inc., 86 F.3d H}98, 1111 (Fed. Cir. §996). Telcordia does not dispute
that Lucent first received actual notice of the ’763 Patent after the patent was asserted on June 14, 2005.
Regarding alleged actual notice of the *633 Patent, the only issue is a legal question of whether a generic
letter that does not identify E1 specific product constitutes actual notice. The cases say that it does not.
Tcicordia also suggests that a meeting between the parties provided Lucent with actual notice, aithough
Tclcordia admits it cannot confirm whether the asserted patents were even discussed or whether any
specific Lucent product was idcntiried. Ex. 12 at 5%:21-548:16; 774:l3~775:iI. This meeting cannot
serve as actual notice which requires ‘“a specific charge of infringement by a specific accused product?
Arnsted Indus. v. Buckeye Steel, 24 F.3d 178, 137 (Fed. Cir. 1994).
Rcspcctfuliy,
k}3.Blumcnfe1 (#10%)
IBB/dam
cc: Peter T. Dalieo, Clerk (By Hand)
All Counsei of Record (By Email)
2 Teicordia deleted the following commitment from its new response: "Consistent with the Court’s
instructions during the October li, 2005, hearing [D,]. 54 in 04~875··GI\/IS], . . . T elcardia will not assert,
in this case, dates af conception or reduction tc practice earlier than those dates stated in Telcordiafs
November El, 2005 Second Supp1ementa1Rcsponse to Cisco Interrogatory No. 8." (Ex. 10 at 5.)