Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—00874—Gl\/IS Document 157 Filed O4/12/2006 Page 1 of 2
Youivo CONAWAY STARGATT & TAYLOR, LLP .
THE BRAr~mYxvrNE BUILDING
1000 WEST STREET, 17TH FLooR
JOSY W. INGERS01-L (N0- 1088) WILMINGTON, DELAWARE 19801 (302) $71-6600
DIRECT DLAL: 302-571-6672 (302) 571-1253 FAX
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ji¤S€fS0U@Y0Si·00m WILNIINGTON, DELAWARE 19899-0391 W“W»Y0¤¤g00¤¤)V¤y-0002
April 12, 2006
BY E-FILING
The Honorable Gregory M. Sleet
United States District Court
844 King Street
Wilmington, DE 19801
Re: Telcordia Technologies, Inc. v. Alcatel USA, Inc.
Civil Action No. 04-874-GMS
Dear Judge Sleet:
We write on behalf of Defendant Alcatel USA, Inc ("Alcatel") to bring to the Court's
attention a circumstance that should obviate the need for the Court to consider Alcatel's U.S.
Patent No. 6,247,052 (the "'052 patent") at the claim construction hearing scheduled for April 26,
2006.
As Your Honor is aware, Telcordia filed a motion on September 29, 2005 to dismiss, or
in the alternative to sever and stay, Alcatel's counterclaim for infringement of the '052 patent
(D.l. 54), which Alcatel opposed and contended was without merit. That motion was fully
briefed (see D.1. 55, 58) and is still pending before the Court. Although Alcatel still disagrees
with the basis of Telcordia's motion, for the reasons explained below, Alcatel now believes it
appropriate that all claims pertaining to the '052 patent be stayed, and therefore consents to that
portion of Telcordia’s motion.
Alcatel has recently discovered that its '052 patent inadvertently did not claim the priority
benefit of an earlier filed provisional patent application to which it was entitled pursuant to 35
U.S.C. Section l19(e). Alcatel intends to correct this omission by filing within the next few days
with the U.S. Patent and Trademark Office ("PTO”) an application to reissue the '052 patent.
During the reissue process, pursuant to its duty of full disclosure, Alcatel will be submitting
for consideration by the PTO all of the prior art that Telcordia has alleged invalidates the
asserted claims of the '052 patent. Given that the reissue process could take up to two years to
complete, it makes sense to stay Alcatel’s counterclaim on the ‘052 patent pending the outcome
of the reissue proceeding.
Alcatel therefore withdraws its opposition to Telcordia's request for a stay (and
severance, if the Court deems it appropriate),* consents to such a stay, and hereby
` Alcatel has today tiled its Notice of Withdrawal of Opposition.
Da01;206so77.i 0635351001

Case 1:04-cv—00874—G|\/IS Document 157 Filed 04/12/2006 Page 2 of 2
Youno CoNAwAY STARGATT & TAYLOR, LLP .
The Honorable Gregory M. Sleet
April 12, 2006
Page 2
respectfully requests the Court to enter the stay requested in Telcordia's pending motion, subject
to re-evaluation after the patent reissue proceedings have been completed.
Respectfully submitted,
Josy W. Ingersoll (No. 1088)
JWI:cg
cc: Clerk ofthe Court (by e-tiling and hand delivery)
Steven J. Balick, Esquire (by e—filing 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)
DB0l;2065077.l 0635351001