Free Motion to Stay - District Court of Delaware - Delaware

Case 1 :04-cv—OO874—Gl\/IS Document 214 Filed 07/10/2006 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
TELCORDIA TECHNOLOGIES, INC.,
Plcziiztgf
Coznzterclaim—Defeizdcmt,
vs. Case No. 04-CV-874 GMS
ALCATEL USA, INC.,
Defendant,
Cozmterclaim-Plczintyji
ALCATEL USA, INC.’S MOTION FOR MANDATORY STAY OF
PROCEEDINGS PURSUANT TO 28 U.S.C. § 1659QA)
Defendant Alcatel USA, Inc. ("Alcatel USA") hereby requests that the Court stay this
case pursuant to 28 U.S.C. § 165 9(a), pending a final determination in an investigation instituted
by the United States International Trade Commission (the "ITC") based on a complaint filed by
Plaintiff Telcordia Technologies, Inc. ("Telcordia").1
On May 15, 2006, Telcordia filed a complaint before the ITC alleging violations of § 337
of the Tariff act of l930 by Alcatel USA, Alcatel S.A., Lucent Technologies, Inc., and Cisco
Systems, lnc.2 (See Ex. l.) The ITC complaint asserts essentially the same allegations as
Telcordia’s First Amended Complaint in this case (D.I. 42), including that certain Alcatel USA
I 28 U.S.C. § 1659(a) states: "In a civil action involving parties that are also parties to the proceeding before
the United States International Trade Commission under section 337 of the Tariff Act of 1930, at the request of a
party to the civil action that is also a respondent in the proceeding before the Commission, the district court shall
stay, until the determination of the Commission becomes final, proceedings in the civil action with respect to any
claim that involved the same issues involved in the proceedings before the Commission, but only if such a request is
made within (1) 30 days after the party is named as a respondent in the proceeding before the Commission, or (2) 30
days after the district court action is filed, whichever is later.
2 On June 5, 2006, Telcordia amended its Complaint to add PMC-Sierra, Inc. as a proposed respondent.

Case 1:04-cv—00874—Gl\/IS Document 214 Filed 07/10/2006 Page 2 of 4
products infringe United States Patent Nos. 4,893,306 and Re. 36,633. On June 9, 2006 the ITC
instituted an investigation based on Telcordia’s complaint and named Alcatel USA as one of the
respondents. (See Ex. 2, Inv. No. 337—TA—574.)
As the ITC investigation involves the same parties and same issues as this case, Alcatel
USA, as a respondent in the ITC investigation, respectfully requests, pursuant to 28 U.S.C. §
165 9(a), that the Court stay proceedings in this case until the ITC issues a final determination.
Dated; July 10, 2006
Respectfully submitte ·
Josy W. Ingersoll (ID. No. 1088)
Adam Poff (LD. No. 3990)
Youno CONAWAY STARGATT & TAYLoR, LLP
The Brandywine Building
1000 West Street
Wilmington, DE 19801
Tel. (302) 571-6672
Fax. (302) 571-1253
Attorneys for Defenclcmt / COMHZ€i'Cldl77Z·PldllZZUj(`
Alcatel USA, Inc.
OF COUNSEL;
Stuart J. Sinder
Michelle Carniaux
Mark A. I—Iannernann
Clement J. Naples
Kenyon & Karwon LLP
One Broadway
New York, NY 10004
Tel. (212) 425-7200
Fax. (212) 425-5288

Case 1:04-cv—00874—G|\/IS Document 214 Filed 07/10/2006 Page 3 of 4
RULE 7.1.1 CERTIFICATION
I hereby certify that counsel for Defendant has complied with Rule 7.l.l of the Local
Rules of Civil Practice and Procedure of the United States District Court for the District of
Delaware
L4 x
Adam W. Poff (No. 3990)
DBOl:l34lS58.l

Case 1:04-cv—00874—G|\/IS Document 214 Filed 07/10/2006 Page 4 of 4
CERTIFICATE OF SERVICE
I, Adam W. Poff, Esquire, hereby certify that on July 10, 2006, I caused to be
electronically filed a true and correct copy of the foregoing document with the Clerk of the Court
using CM/ECP, which will send notification that such filing is available for viewing and
downloading to the following counsel of record:
Steven J. Balick
As1—1BY & Gennias
222 Delaware Avenue
Wilmington, DE 19801
sbalick@ashby-geddescom
I further certify that on July 10, 2006, I caused a copy ofthe foregoing document to be
served by hand delivery on the above-listed counsel of record and on the following non-
registered participants in the manner indicated:
BY E-MAIL
Donald R. Dunner [[email protected]]
Don O. Burley [[email protected]]
FINNEGAN, HENDERsoN, FA1>tA12ow
GARRETT & DUNNER, LLP
901 New York Avenue, NW
Washington, DC 20001
(202) 408-4000
Younc CONAWAY STARGATT & TAYLOR, LLP
Dated: July 10, 2006 /s/ Adam W Pali
Josy W. Ingersoll (#1088) [[email protected]]
Adam W. Poff (#3 990) [[email protected]]
The Brandywine Building
1000 West Street, 17th Floor
Wilmington, Delaware 19801
(302) 571-6600
Az‘t0rneysf01· Defendant /
Caunrerclaim Plaintnjf Alcatel USA, [ne.
DB01:2094760.1 0625251001