Free Letter - District Court of Delaware - Delaware

Case 1:07-cv—OO442-JJF Document 31 Filed O4/O1/2008 Page 1 of 2
M '
O1'1`1S_l3lT1€S LLP
April 1, 2008
. The Honorable Joseph J. F aman, Jr.
U.S. District Court Judge
for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: Rates Technology Inc v. Qwest Communications Corporation et al.
» Civil Action No. 07-442 (JJF)
Dear Judge Farnan:
We are counsel to plaintiff, Rates Technology, Inc. in the above captioned case. We
write in response to the letter &om Mary Dugan on behalf of defendants dated March 31, 2008,
and in particular to address certain inaccurate statements of law and procedure set forth in that
letter.
Although there has been a "final" rejection issued in the Reexamination, it is not true
that: (a) Q assertable claims of the ‘085 patent are finally rejected as unpatentable; (b) the final
rejection closes the prosecution on the ‘085 reexamination; or (c) same effectively bars
Defendant (sic) Rates from making further comment or amendment to any assertable claims for
the Exa1niner’s consideration, as Ms. Dugan proclaims.
The conclusion of a reexamination is govemed by 35 USC § 307 (a), which reads:
§ 307 Certificate of patentability, unpatentability, and claim
cancellation
(a) In a reexamination proceeding under this chapter, when
the time for appeal has expired or any appeal proceeding has
terminated, the Director will issue and publish a certificate
canceling any claim of the patent finally determined to be
tmpatentable, confirming any claim of the patent determined to be
patentable, and incorporating in the patent any proposed amended
or new claim determined to be patentable.
500 Delaware Avenue, Suite 1500 [ Wilmington, DE 19801-1494 T302.888.6800 F302.571.1750
Mailing Address P.O. Box 2306 | Wilmington, DE 19899-2306 www.m0rrisjames.com

Case 1 :07-cv—O0442-JJF Document 31 Filed O4/O1/2008 Page 2 of 2
The Honorable Joseph J. Faman, Jr.
April l, 2008
Page 2
Thus, the "final” rejection does not mean that the claims are finally rejected as
unpatentable, it by no means closes the prosecution of the ‘085 reexamination nor does it bar
plaintiff from making further comment or amendment to the claims. To the contrary, the above
noted statute explicitly states that a reexamination is not over until the time for appeal has
expired or any appeal proceeding has terminated and a certificate canceling any claim finally
determined to be unpatentable is issued.
As the record in the Reexamination clearly reflects, the patentability of claims 6 and 17
of the patent has been confirmed. Thus, all of the claims of ‘085 have not been rejected in the
Reexamination.
What the record does not yet reflect is that RTI has recently submitted to the Patent
Office a detailed request for reconsideration of the rejections of all other claims. The
Reexamination Examiner will now consider the additional arguments in favor of patentability,
and a newly submitted declaration, in that submission and if found compelling, will withdraw the
rejections of some or all of the claims. Thus, the prosecution is g closed and RTI is g barred
from making further comment or amendment. Clearly, it is not true that plaintiff’ s "only
recourse" is to appeal at this point in time.
Should RTl’s request for reconsideration not result in a reversal of the rejections and
confirmation of the patentability of the rejected claims, RTI has the right to and intends to appeal
the rejections to the Board of Patent Appeals and Interferences, and if need be, to the U.S. Court
of Appeals for the Federal Circuit. Accordingly, the rejection of some of the claims in the ‘085
patent is far from "fnal" and will not become final until all appeals have be concluded, which
undoubtedly will require considerable time.
Further, plaintiff respectfully reminds the Court that the ‘085 patent is only one of two
patents asserted in this case asserted against defendants. Accordingly, this case should not be
delayed further and the stay should not be continued.
Respectfully,
Mary erer (#2696)
mbm/tmp
cc: Clerk of the Court
Mary F. Dugan, Esquire