Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—00876-GIVIS Document 194 Filed 07/20/2006 Page 1 of 3
Mounts, NICHOLS, ARSHT & TUNNELL LLP
1201 NORTH MARKET STREET
P.O. Box 1347
WILMINGTON, DELAWARE 19899-1347
302 658 9200
302 658 3989 FAX
JACK B. BLUMENEELD
802 351 9291
302 425 3012 FAX
_jblumenfeld@mnat . com
July 20, 2006
BY ELECTRONIC FILING
The Honorable Gregory M. Sleet
United States District Court
844 North King Street
Wilmington, DE 19801
Re: T elcordia Technologies, Inc. v. Lucent Technologies, C.A. No. 04-875 (GMS)
T elcordia Technologies, Inc. v. Cisco Systems, Inc., C.A. No. 04-876 (GMS)
Dear Judge Sleet:
This responds to Telcordia’s letter to Your Honor of yesterday. Telcordia seeks
permission to serve infringement and damages expert reports on the ‘306 patent three and one-
half weeks late, proposing that defendants then get one week to respond to those reports (instead
of the three and one-half weeks contemplated by the Scheduling Order). This is the second time
Telcordia has sought to extend the date for its expert reports. The Court granted Telcordia’s
prior request in part, giving it additional time so that it could comply with its duty to submit
expert reports with the benefit ofthe claim construction Order. (D.I. 183 in C.A. 04-876-GMS).
Another extension is not justified. Telcordia makes its request after it made the unilateral
decision not to comply with the Court-ordered schedule for opening expert reports, and without
even advising the Court or the defendants of that decision in advance, let alone seeking leave to
deviate from the Court’s schedule. Moreover, it does so with the expert discovery cut-off just
two weeks away and summary judgment letters due in three weeks. Telcordia’s request should
be denied. Such a late submission would provide Telcordia with an unfair tactical advantage,
given that it has had defendants’ expert report on invalidity of the ‘306 patent for weeks, and it
would severely compress defendants’ time to submit reports, take depositions, and prepare
summary judgment papers.

Case 1 :04-cv—00876-GIVIS Document 194 Filed 07/20/2006 Page 2 of 3
The Honorable Gregory M. Sleet
July 20, 2006
Page 2
Telcordia says that its "problem" is a "result of yesterday aftemoon’s telephone
conference . . ." Nothing happened during Tuesday’s conference to create Telcordia’s
"problem." That was caused solely by Telcordia’s decision to flout the Court’s Scheduling
Order. The Court granted Telcordia an extension for opening expert reports until June 28, 2006
(QI. 183 in C.A. 04-876-GMS). On June 28, Telcordia served expert reports on the other two
patents, but advised defendants that it had decided not to serve reports on the ‘306 patent, but
instead to seek entry of judgment of non-infringement of that patent rurder Rule 54(b). (Ex. A).
Telcordia did not approach the Court with its proposal. Indeed, when Telcordia sought the
extension of the date to submit expert reports, it did so on the basis that it needed additional time
to comply fully with the expert report deadline, but it did not mention that it would not submit
reports on the ‘306 patent. (D.I. 180 in C.A. 04-876-GMS). Telcordia did not even advise
defendants of its plan before the time set for the exchange of expert reports. Telcordia
apparently decided that it did not have to abide by the Court’s Scheduling Order or get the
Court’s permission (or the defendants’ concurrence) to deviate from it. Telcordia’s letter says
that it simply "assumed" that there was no need to serve such reports. Telcordia, however, did
nothing to dissuade the defendants from serving their opening invalidity report on the ‘306 patent
when it was due on June 28, even though it now says that it was assuming that there was "no
need" for such reports. And when defendants pointed out Telcordia’s "total failure" to submit
timely expert disclosures on June 28 and again on July 6, Telcordia also ignored those
communications. (Ex. B). Telcordia also did not advise the Court during the conference on
Tuesday that it had not submitted expert reports on the ‘306 patent. In essence, Telcordia
decided that it would move under Rule 54(b) and that it therefore no longer needed to abide by
the Court’s schedule.
Telcordia next says that "the Court has now decided to permit defendants to
proceed with summary judgment" of noninfringement of the ‘306 patent. In fact, that procedure
was included in the Court’s Scheduling Order, and was not something new. Telcordia cannot
credibly contend that the Court’s refusal to deviate from its schedule or to permit a premature
Rule 54(b) motion constitutes a decision “to permit defendants to proceed with summary
judgment." The defendants have asserted noninfringement, and srunmary judgment always
was contemplated. Indeed, in their June 26, 2006 opposition to Telcordia’s motion for an
extension of the date for expert reports, defendants noted their plans to move for summary
judgment of noninfringement and their concerns about “delaying the srunmary judgment
process." (D.I. 181 in C.A. 04-876-GMS). The only thing that happened during the conference
call on Tuesday was that the Court rejected Telcordia’s request for Rule 54(b) judgment. And
the only reason that happened was because the Court scheduled a status conference, not because
Telcordia requested a conference with the Court raise the Rule 54(b) issue. Had the Court
not convened a status conference, Telcordia would have filed a motion under Rule 54(b) on
Tuesday, even though such a motion is not ripe, and apparently would have continued to
presume that it did not have to comply with the plain terms of the Scheduling Order. It simply is
disingenuous for Telcordia to act as if the default was that the Court would grant its
contemplated Rule 54(b) motion, and that the Court’s decision to adhere to its
schedule constituteda new event. If that were the case, any party could avoid the Court’s

Case 1 :04-cv—00876-GIVIS Document 194 Filed 07/20/2006 Page 3 of 3
The Honorable Gregory M. Sleet
July 20, 2006
Page 3
Scheduling Orders merely by expressing an intention to file a motion and assuming that it would
be granted.
Permitting Telcordia to reverse its decision not to submit expert reports and to
submit new expert reports on infringement and damages now would be highly prejudicial to the
defendants, for several reasons. First, although the Scheduling Order contemplated an exchange
of expert reports by burden of proof, Telcordia has had the benefit of defendants’ invalidity
report on the ‘306 patent for three weeks. Second, although the Scheduling Order provided three
and one-half weeks for rebuttal expert reports, Telcordia proposes to cut defendants’ time to
respond to two reports on the ‘306 patent to one week, solely as a result of its own decision to
ignore the Court’s Order. Third, the defendants are in the process of preparing and
finalizing rebuttal reports to Telcordia’s other three reports, which are due this Friday. Fourth,
the cutoff for expert discovery is August 7, and there is an enormous amormt of work already to
be done on the other two patents and on damages. Finally, opening summary judgment letters
are due in three weeks, on August 1 1.
The Court, with input from the parties, entered a Scheduling Order and has
repeatedly reminded the parties that it expected strict compliance. Defendants followed that
Order. Telcordia did not. Telcordia should not now be permitted to redo that schedule to
defendants’ clear prejudice, because it decided not to follow that schedule.
Respectfully,
/s/ Jack B. Blumenkld (#1014)
Jack B. Blumenfeld
JBB/bls
529530
cc: Peter T. Dalleo, Clerk (By Hand)
Steven J. Balick, Esquire (By Hand)
John W. Shaw, Esquire (By Hand)
Donald R. Dunner, Esquire (By Fax)
Steven C. Chemy, Esquire (By Fax)
Edward R. Reines, Esquire (By Fax)