Free Declaration - District Court of Arizona - Arizona

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PETER E. HEUSER, admitted pro hac vice ELIZABETH A. TEDESCO, admitted pro hac vice Kolisch Hartwell, P.C. 200 Pacific Building, 520 SW Yamhill Street Portland, OR 97204 Telephone: (503) 224-6655 Facsimile: (503) 295-6679 [email protected] [email protected] DANIEL R. MALINSKI (#005911) Burch & Cracchiolo, P.A. 702 East Osborn, Suite 200 Phoenix, Arizona 85014 Telephone: (602) 274-7611 Facsimile: (602) 234-0341 [email protected] Attorneys for Plaintiffs Richard G. Krauth and R.M. Wade & Co.

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA ) ) No.04-544 PHX PGR ) Plaintiffs, ) ) v. ) DECLARATION OF PETER E. HEUSER ) IN SUPPORT OF PLAINTIFFS' Phelps Dodge Corporation, a New York ) RESPONSE IN OPPOSITION TO corporation; Phelps Dodge Bagdad Inc., a ) DEFENDANTS' MOTION FOR Delaware corporation; Phelps Dodge Chino ) SANCTIONS Inc., a Delaware corporation; Phelps Dodge ) Morenci Inc., a Delaware corporation; Phelps ) Dodge Sierrita Inc., a Delaware corporation; ) Phelps Dodge Tyrone Inc., a Delaware ) corporation; and Phelps Dodge Miami Inc., a ) Delaware corporation, ) ) Defendants. ) Richard G. Krauth, an individual; and R.M. Wade & Co., an Oregon corporation,

Case 2:04-cv-00544-PGR

Document 80

Filed 04/12/2006

Page 1 of 3

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I, PETER E. HEUSER, declare: 1. I am a shareholder in the firm of Kolisch Hartwell, P.C. I am a member of the

State Bar of Oregon and am admitted pro hac vice to this Court. I am principal counsel for plaintiffs Richard G. Krauth and R.M. Wade & Co. ("plaintiffs") in the present action. 2. Appended as Exhibit A hereto is the transcript of the August 16, 2004 hearing to

discuss Plaintiffs' request to stay the case during the pending reexamination of proceedings in the PTO. 3. Appended as Exhibit B hereto is my August 25, 2004 letter to Mr. Kittredge

enclosing drafts of the two 9 page reexamination requests. These documents included the reexamination requests and claim charts applying the new prior art to the claims at issue. These were prepared by me based upon discovery responses by defendants. I had deleted the sections of these drafts in which I argued in favor of the validity of the patents because it was my understanding both the Court and Mr. Kittredge were concerned with him seeing the arguments of invalidity I had prepared. 4. After Mr. Kittredge indicated in a September 15, 2004 telephone conference that

he was not going to provide me with any arguments of invalidity, I reinserted my arguments in favor of patentability and filed the 23 page reexamination requests in the PTO. I sent these documents to Mr. Kittredge with a letter dated October 14, 2004, which is appended hereto as Exhibit C. 5. On November 16, 2004, the PTO granted the reexamination request, noting that

there were substantial new questions of patentability. I forwarded this document to Mr. Kittredge with a cover letter on December 10, 2004. Copies of this cover letter, with the PTO documents granting the reexamination, are collectively appended hereto as Exhibit D. In the PTO documents declaring the reexaminations, the PTO stated that the patent owner had two months from November 16, 2004, or until January 16, 2005, to file a Patent Owner's Statement. Because I did not receive anything from Defendants by January 16, 2005, I did not file a Patent Owner's Statement.

Page - 1 - - DECLARATION OF PETER Filed 04/12/2006 Page OF PLAINTIFFS' Case 2:04-cv-00544-PGR Document 80 E. HEUSER IN SUPPORT 2 of 3 RESPONSE IN OPPOSITION TO DEFENDANTS' MOTION FOR SANCTIONS

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6.

On October 18, 2005 the PTO issued an Office Action confirming patentability of

all the claims of the two patents-in-suit. I forwarded that document to Mr. Kittredge in an email on October 21, 2005. The email and the Office Actions are collectively appended hereto as Exhibit E. 7. 8. Appended hereto as Exhibit F is 37 CFR § 1.550(g). Appended hereto as Exhibit G is 37 CFR § 1.530(b) and (c).

Dated this 12th Day of April, 2006.

___/s/ Peter E. Heuser_______________

Page - 2 - - DECLARATION OF PETER Filed 04/12/2006 Page OF PLAINTIFFS' Case 2:04-cv-00544-PGR Document 80 E. HEUSER IN SUPPORT 3 of 3 RESPONSE IN OPPOSITION TO DEFENDANTS' MOTION FOR SANCTIONS