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Case 1 :04-cv—00876-GIVIS Document 189 Filed 07/1 1/2006 Page 1 of 3
Asn-1EY 6. GEDDES
ATTORNEYS AND COUNSELLORS AT LAW TELEPHONE
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July ll, 2006
The Honorable Gregory M. Sleet VIA ELECTRONIC FILIN G
United States District Court
844 King Street
Wilmington, Delaware 19801
Re: T elcordia Technologies, Inc. v. Alcatel SA. andAlcotel USA, Inc.,
C.A. No. O4-874-GMS
T elcordict Technologies, Inc. v. Lucent Technologies, Inc.,
C.A. No.04-875-GMS
T elcordio Technologies, Inc. v. Cisco Systems, Inc.,
C.A. No. 04-876-GMS
Dear Judge Sleet:
The striking contrast between the July 10th filings in the above cases by Alcatel and
Cisco, on the one hand, and Lucent, on the other, exposes Lucent’s letter as nothing more than an
attempt to poison Telcordia’s relationship with the Court. Alcatel’s motion simply invokes its
statutory right (under 28 U.S.C. § 1659) to stay the action before this Court due to the ITC’s
institution of an investigation. Cisco’s letter merely advises the Court that it has chosen not to
seek a stay. Lucent, however, after briefly advising that it has elected not to seek a stay, goes on
to use its letter as an opportunity to disparage Telcordia and accuse it of having dishonorable
intentions in filing its action before the ITC. Lucent’s allegations are false, and Telcordia
respectfully requests that Your Honor permit us this opportunity to respond.
We note at the outset that contrary to Lucent’s reckless allegation that Telcordia’s ITC
tiling was designed "to collaterally attack this Court’s Markman order in another forum,"
Telcordia filed its ITC action on May 15, 2006 — more than a month before this Court’s June 22,
2006 Markman decision. Lucent’s accusation therefore obviously is untrue. Indeed, Telcordia’s
ITC complaint was filed at a time when Telcordia still anxiously awaited the Court’s claim
construction decision and hoped that it would be a favorable one.
Lucent’s other arguments in support of its assertion that Telcordia’s ITC filing was
motivated by non-legitimate tactical reasons are that: (1) Telcordia cannot obtain any relief from
the ITC that this Court cannot also provide; (2) the ‘306 and ‘763 patents will expire before or

Case 1 :04-cv—00876-GIVIS Document 189 Filed 07/11/2006 Page 2 of 3
The Honorable Gregory M. Sleet
July ll, 2006
Page 2
shortly after the ITC might issue an exclusion order; and (3) Telcordia merely is seeking to
ratchet up defendant’s costs by commencing a parallel action. However, for the reasons that
follow, Lucent’s contentions are inconsistent with both conventional ITC practice and the facts
of this case.
First, Telcordia can obtain significant relief from the ITC that is not available in the
actions before this Court. An ITC investigation is an in rem proceeding in which a successful
complainant can obtain an exclusion order, enforced by the Customs Service, against the goods
involved regardless of the parties who import those goods. Such exclusion orders almost never
are stayed pending appeal, contrary to district court practice where, on a proper showing, stays
are more readily available. It is for reasons such as these that parties routinely institute co-
pending district court and ITC actions involving overlapping patents against common parties.
Indeed, since January 2005, more than 50% of the § 1337 actions filed in the ITC involved
patents that also were asserted in co-pending district court actions against parties involved in the
ITC investigation.
Second, when the ITC complaint was filed on May 15, 2006, it was believed that
substantial relief could be obtained in the ITC based on the ‘633 patent in suit (expiring October
30, 2012), and that some, though lesser, relief could be obtained based on the ‘763 patent
(expiring February 4, 2008) and the ‘306 patent (expiring November 10, 2007). Since that
complaint was filed, this Court has issued its Markman ruling and Telcordia has concluded that it
cannot prove infringement of the ‘306 patent based on that ruling. Telcordia has advised the
defendants that it intends to ask this Court to enter judgment against Telcordia on the ‘306 patent
and to issue a Rule 54(b) certification as to that patent in order to permit an immediate appeal to
the Federal Circuit. Since, contrary to Lucent’s assertion, it is not Te1cordia’s desire to mount a
collateral attack on this Court’s Markman ruling on the ‘306 patent, Telcordia intends to advise
the ITC that it will be withdrawing its allegations based on that patent- as we were about to
advise the defendants when we received their filings yesterday.
Finally, Telcordia is not seeking to ratchet up defendants’ costs by commencing parallel
actions. Aside from the fact that those actions provide non—overlapping forms of relief as noted
above, both Lucent and Cisco had the option of staying the district court actions under
28 U.S.C. § 1659, as Alcatel has done, but chose for reasons of their own not to do so.
Respectfully,
/s/ Steven J Balick
Steven J. Balick
SJB/dmf
171158.1

Case 1 :04-cv—00876-GIVIS Document 189 Filed 07/11/2006 Page 3 of 3
The Honorable Gregory M. Sleet
July ll, 2006
Page 3
c: Donald R. Dunner, Esquire (via electronic mail)
J osy W. Ingersoll, Esquire (by hand, and via electronic mail)
Stuart J. Sinder, 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)
Matthew D. Powers, Esquire (via electronic mail)