Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—00876-GIVIS Document 190 Filed 07/19/2006 Page 1 of 2
Asn-1EY & GEDDES
ATTORNEYS AND COUNSELLORS AT LAW TELEPHONE
302-654-IBB8
222 DELAWARE AVENUE FACSIMILE
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WILMINGTON. DELAWARE 19899
July 19, 2006
The Honorable Gregory M. Sleet VIA ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, Delaware l 9801
Re: Telcordia Technologies, Inc. v. Lucent Technologies, Inc.,
C.A. No. 04-875-GMS
Telcordia Technologies, Inc. v. Cisco Systems, Inc.,
C.A. No. 04-876-GMS
Dear Judge Sleet:
I am writing on behalf of Telcordia with a time-sensitive request in connection with a
problem we now face as a result of yesterday afternoon’s teleconference in the above actions.
Specifically, as more fully explained below, we respectfully request permission to serve
infringement and damages expert reports this Friday, July 21st, on the ‘306 patent — reports that
we believed were rendered moot when we concluded that we could not prove infringement under
the Court’s claim construction and would have to consent to the entry of a judgment of non-
infringement on that patent. If, as we propose, defendants serve their responsive expert reports
on the ‘306 patent on July 28th and Telcordia forgoes any reply expert reports, then this request,
if granted, would have no impact whatsoever on any date in the current scheduling order beyond
the dates for service of expert reports.
When Telcordia concluded that under the Court’s claim construction it could not prove
infringement of the ‘306 patent- and that as a result it would have to concede the issue and
consent to the entry of a judgment of non-infringement on that patent without requiring the
defendants to prevail on summary judgment or at trial — we assumed that there no longer was any
reason to serve opening infringement and damages expert reports on the ‘306 patent, and we did
not do so. However, the Court has now decided to permit defendants to proceed with summary
judgment in order to make a fuller record of the factual bases for the entry of judgment of non-
infringement on the ‘306 patent. Since defendants apparently intend to seek summary judgment
not only on the claim elements which we concede we cannot prove but also on the claim
elements which we believe we still can prove under Your Honor’s claim construction, Telcordia
is requesting permission to put forward its infringement and damages experts on the ‘306 patent
in order to protect its rights on the claim elements that remain viable under the Court’s
constructions.

Case 1 :04-cv—00876-GIVIS Document 190 Filed 07/19/2006 Page 2 of 2
The Honorable Gregory M. Sleet
July 19, 2006
Page 2
We attempted to contact counsel for Cisco and Lucent (the Alcatel case having been
stayed) at approximately 3:00 p.m. today. We discussed the matter with Lucent’s counsel, Mr.
Cherny. We were unable to reach Cisco’s counsel, but we subsequently left him detailed
voicemail and e-mail messages. We do not yet have a response from either defendant as to
whether this request will be opposed.
We appreciate the Court’s indulgence in considering this follow-up to yesterday’s
discussion. If at all possible, we would appreciate a brief teleconference with Your Honor to
discuss this matter.
Respectfully,
/s/ Steven J Balick
Steven J. Balick
SJ B/dwh
msssi
c: Donald R. Dunner, Esquire (via electronic mail)
John W. Shaw, Esquire (by hand, and via electronic mail)
Steven C. Chemy, 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)