Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—00876-GIVIS Document 195 Filed 07/20/2006 Page 1 of 3
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July 20, 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 elcordicz Technologies, Inc. v. Cisco Systems, Inc.,
C.A. No. 04-876-GMS
Dear Judge Sleet:
Defendants’ response to Telcordia’s request for pennission to file ‘306 patent expert
reports on infringement and damages accuses Telcordia of flouting the Court’s Scheduling
Order, of not providing the Court or the defendants with Telcordia°s decision not to pursue its
‘306 patent in advance, or of its plan to seek Rule 54(b) relief as well as many other alleged
transgressions. The facts undermine defendants’ contentions.
First, Telcordia did not flout the Court’s Scheduling Order. On the date set for initial
expert reports, Telcordia served defendants with complete expert reports on the ‘633 and ‘763
patents. While they did not serve any expert reports on the ‘306 patent, that was not in defiance
of the Court’s Scheduling Order but a simple reflection of the fact that during the days following
the Court’s Markman Order of June 22nd, Telcordia concluded that it could not prove
infringement of the ‘306 patent. Having reached that conclusion and the further conclusion that
Telcordia had no choice but to ask the Court to enter judgment against it on the ‘306 patent, it
was reasonable to conclude that it would have been a waste of the defendants’ and the Court’s
resources to deal further with the ‘306 patent infringement issues, whether or not the Court
entered a Rule 54(b) judgment permitting an immediate appeal to the Federal Circuit. There was
no intent in this decision to disrespect the Court’s orders, only the realization that if infringement
cannot be proved, it made no sense to serve an expert report directed to proving it.
While defendants argue that we should have given them advance notice of this
conclusion, the conclusion was reached only in the final stages of the short extension of time
granted by the Court after the issuance of its Markman order. While defendants complain that

Case 1 :04-cv—00876-GIVIS Document 195 Filed 07/20/2006 Page 2 of 3
The Honorable Gregory M. Sleet
July 20, 2006
Page 2
this provides Telcordia with the advantage of having seen their ‘306 patent validity expert
reports, that knowledge has no impact on anything that would be included in ‘306 patent expert
reports on infringement or damages and it certainly was not Telcordia’s intent to gain any such
advantage.
Nor is there any merit to defendants’ contention that Telcordia did not approach the Court
with its Rule 54(b) proposal. On June 28th, the day initial expert reports were due, Telcordia
advised defendants not Oflly that it could not prove infringement of the ‘306 patent but that it
would move the Court to enter judgment of non-infringement and certify the case under Rule
54(b), ln that same letter, Telcordia asked defendants if they would oppose such a motion. What
followed was a series of communications between the parties in which defendants sought certain
information before they would commit to opposing or approving Rule 54(b) relief, culminating
in a Telcordia letter to defendants asking again whether they’d oppose a Rule 54(b) motion and a
statement that Telcordia intended to ile the motion on July 18th. That motion was not filed only
because the Court had by then advised the parties that it had scheduled a status conference on
July 18th and because Lucent insisted that we should not file our motion prior to that status
conference.
While defendants contend otherwise, what happened at that status conference in fact is
what prompted Telcordia’s request for permission to file ‘306 patent expert reports. Before that
conference, Telcordia reasonably believed that its concession of noninfringement of the ‘306
patent and its intent to have judgment on that patent immediately entered against it would be
realized and that that would lead to an immediate end to the district court litigation on that
patent, as it had in the Bellcore v. F ORE case. Your HOHOI’S ruling at the status conference,
however, was inconsistent with this belief since the ruling permits defendants to pursue further
their positions on elements of the ‘306 patent claims other than those on which Telcordia
concedes non-infringement and to seek summary judgment on those elements.
While defendants contend that the summary judgment procedure is nothing new and was
included in the Court’s Scheduling Order, what was new was the fact that the ‘306 patent claims
would be subject to further proceedings, including summary judgment, notwithstanding that
Telcordia was prepared for the immediate entry of judgment against it on the ‘306 patent.
We should note at this point that while defendants blur the distinction between
Telcordia’s desire to have judgment entered against it and to have the Court certify its entry of
judgment under Rule 54(b), there is a clear distinction between the two. Whatever the Court did
on the Rule 54(b) issue, Telcordia’s intent and interest was to end the district court case as to the
‘306 patent. Even if the Court decided not to certify the case under Rule 54(b), Telcordia
believed that entry of judgment against it on the ‘306 patent would obviate the need for any
further action on that patent, including the filing of its ‘306 patent expert infringement reports.
While the Court’s decision at the July 18th status conference achieved a different result, we
respectfully submit that Telcordia’s actions and beliefs were nonetheless reasonable.

Case 1 :04-cv—00876-GIVIS Document 195 Filed 07/20/2006 Page 3 of 3
The Honorable Gregory M. Sleet
July 20, 2006
Page 3
The bottom line is that Telcordia is not seeking any unfair advantage over defendants.
All it is doing is seeking reasonable and limited relief following an unanticipated change in
circumstances as a result of the July 18th status conference. In seeking such relief, Telcordia has
gone out of its way to minimize the burden on the Court and defendants, agreeing to file its ‘306
patent reports by tomorrow and agreeing not to file any reply reports on this patent so that the
period for expert reports would not extend even one day beyond the current date for the last of
those reports.
If the relief requested by Telcordia is denied, Telcordia will be seriously disadvantaged
vis-a—vis defendants. If Telcordia had acted with evil intent or with a desire to flout the Court’s
rules, such disadvantage would be deserved. But contrary to defendants' disparaging letter,
Telcordia has not in any way acted in disregard of its obligations to the Court, and in the interests
of faimess, we respectfully seek relief from the unanticipated spot in which we find ourselves.
With nine months remaining before trial, we believe there to be ample time to fully protect all
parties' interests and allow the creation of a complete record on the ‘306 patent rather than one
supported only by defendants' expert testimony.
For the foregoing reasons, Telcordia respectfully asks the Court to approve its request.
Respectfully,
/s/ Steven J Balick
Steven J. Balick
SJ B: mnl
171454.1
cc: Donald R. Dunner, Esquire (via electronic mail)
John W. Shaw, Esquire (by hand, and via electronic mail)
Steven C. Cherny, Esquire (via electronic mail)
David A. Nelson, Esquire (via electronic mail)
Jack B. Blumenfeld, Esquire (by hand, and via electronic mail)
Edward R. Reines, Esquire (via electronic mail)