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[email protected]
April 18, 2006
BY CM/ECF AND HAND DELIVERY
The Honorable Gregory M. Sleet
United States District Court
844 King Street
Wilmington, DE 19801
Re: Telcorclicz Tec/zzzologies, [nc. v. Alcatel USA, [nc.
Civil Action No. 04-874-GMS
Dear Judge Sleet:
Telcordia’s April 17, 2006 letter puts Telcordia in the conflicting position of
Opposing a stay requested in its own pending motion. Telcordia has never withdrawn that
motion, and until a few months ago, refused to engage in any discovery related to the ‘052 patent
because its motion was still pending. The Court could well have been devoting effort to
considering that motion. Telcordia Should not be permitted to have it both ways: on the one
hand, continue to maintain its motion in hopes of a stay, and then oppose a stay when Alcatel
agrees to accept one, because Telcordia fears the result of the reissue process.
Telcordia’s letter focuses entirely on its efforts expended to date, but fails even to
address the unnecessary burden that continuing the litigation on the ‘052 patent would place
upon the Court and the parties. Alcatel’s reissue application should result in an earlier effective
filing date for the patent, and could also result in changes or additions to the asserted claims. lf
the ‘052 patent counterclaim were to proceed, the Court would have to devote unnecessary time
and resources to construing claims that could well change, to dealing with infringement issues
which could change by virtue of changes in the claims, to adj udicating discovery and other pre-
trial issues relating to the patent, and to judging validity issues based on references that will be
removed as prior art by virtue ofthe earlier priority date for the patent, not to mention additional
time for a trial and needless work for a jury on those same issues. For just one example, the ‘050
DB0l:2075l83.l 0635351001 .
Case 1:04-cv—00874—Gl\/IS Document 163 Filed 04/18/2006 Page 2 of 3
Yourio CoNAwAY STARGATT & TAYLOR, LLP
The Honorable Gregory M. Sleet
April 18, 2006
Page 2
patent on which Telcordia erroneously relies for invalidity will no longer even be considered
prior art when Alcatel obtains its proper priority date from the PTO in the reissue.
Telcordia’s assertions regarding its efforts expended to date are also exaggerated
and misleading. Because Telcordia refused to provide or even engage in discovery on the `052
patent until January of 2006, discovery relating to that claim has been ongoing for only about
three months. Not a single deposition has yet been taken on the patent, the Markman hearing
(although briefed) has not been held, expert reports have not yet been prepared nor expert
discovery taken, and no discovery disputes or substantive motions have yet come before the
Court relating to this patent. Further, trial of this action is not scheduled until April 2007, an
entire year from now.] While Telcordia did dump a mountain of documents on Alcatel, as the
Court is well aware, the number of documents does not tell the entire story of the burden,
because the great bulk of Telcordia’s documents are largely irrelevant and many are duplicates.
Indeed, the burden has fallen more greatly on Alcatel, which had to review all of them and work
to cull out sometimes over ten copies of the same document. Moreover, when the patent is
reissued, and the case is reactivated, Telcordia’s document production, its research analyses,
expert consultation, etc. will once again all be put to good use.
More importantly, Telcordia focuses on the wrong issue. The issue at hand is the
appropriate course of action going forward, not what has been expended so far. Alcatel
respectfully submits that the only sensible thing to do is to stay the proceedings relating to the
‘052 patent counterclaim pending the reissue process.
Telcordia is evidently concerned that the reissue will strengthen Alcatel’s patent.
so Telcordia wants Alcatel’s counterclaim to proceed in the hope of pre—ernpting the PTO
process. The statutory scheme is precisely the opposite. The PTO should first decide the issues
raised by Alcatel’s reissue application, before the patent is litigated in Court. Although
Telcordia accuses Alcatel of wanting to return to the PTO to correct flaws in its patent, that is
precisely the result for which the reissue process is intended. The Court cannot confer a new
filing date to a patent, so the pendency of Alcatel’s reissue application presents an even more
compelling reason for a stay of court proceedings than does a reexamination, which involves
only an evaluation of prior art. Wherever possible, the PTO should have the first opportunity to
judge the patent against the relevant prior art, and to do so in light of the proper priority date to
which the patent is entitled.
Telcordia’s suggestion of a dismissal with prejudice is also without merit. Alcatel
is unaware of any authority which would support such relief, nor does Telecordia cite any.
Indeed, Telcordia’s request is tantamount to asking the court to grant it summary judgment,
without briefing or argument and on a schedule which is untimely under the Court’s Scheduling
Order. It is well settled that seeking a reissue patent does not constitute any admission or
concession that the patent is invalid. Nor does Alcatel’s reissue request make any such
I Alcatel brought this matter to the Court’s attention promptly after learning of the provisional application
just last month during discovery, and after Alcatel determined that it could properly still claim priority to that
application during reissue.
DBOi:2075i83.l 0<»3535.1u01 .
Case 1:04-cv—00874—Gl\/IS Document 163 Filed 04/18/2006 Page 3 of 3
YoUNG CoNAvi/AY STARGATT & TAYLOR, LLP
The Honorable Gregory M. Sleet
April 18, 2006
Page 3
admissions. Alcatel’s reissue request under 35 U.S.C. §251, ifit concedes anything only
concedes that the ‘052 patent is "inoperative" to provide the earlier effective filing date to which
the patent is entitled, because the patent failed to claim it. This is fully consistent with the
statutory purpose of correcting a patent ‘claiming. . .1ess than [it] had a right to claim."
Moreover, the PTO Rules specifically authorize reissue applications for this purpose. Manual of
Patent Examining Procedure (MPEP), §1402. Indeed, correction of a reference to a prior co-
pending application is among the most common bases for filing a reissue application. ld.
The Courts have long followed "a liberal policy in favor of granting motions to
stay proceedings pending the outcome of USPTO reexamination or reissuance proceedings?
ACSH Corp. v. STD Ezztcrtcziimzcrzz USA, [nc., 844 F. Supp. 1378, 1381 (N.D. Cal. 1994);
accord, Dcmzco, [nc. v. Dominick Cironc 1995 U.S. Dist. Lexis 9988 (D.N.H. 1995). For the
foregoing reasons, and in the interest of justice and judicial economy, Alcatel respectfully
requests that the Court grant a stay of its counterclaim relating to the ‘052 patent as sought in
Telcordia’s pending motion, and as requested in Alcatel’s April 12, 2006 letter.
Respectfully submitted,
gersoll (No. 1088)
SJS:dd
cc: Clerk of the Court (by e—filing and hand delivery)
Steven J. Balick, Esquire (by e—ti1ing and e-mail)
Donald R. Dunner, Esquire (by e-mail)
Don O. Burley, Esquire (by e-mail)
Richard J. Smith, Esquire (by e-mail)
Vincent P. Kovalick, Esquire (by e-mail)
Stuart J. Sinder, Esquire (by e-mail)
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