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EXHIBIT B1

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE TELCORDIA TECHNOLOGIES, INC., ) ) Plaintiff/Counterclaim Defendant, ) ) v. ) ) LUCENT TECHNOLOGIES INC., ) ) Defendant/Counterclaim Plaintiff. ) ) ) ___________________________________________ )

Civil Action No. 04-875-GMS

) ) Plaintiff/Counterclaim Defendant, ) ) v. ) ) CISCO SYSTEMS, INC., ) ) Defendant/Counterclaim Plaintiff. ) _____________________________________________ )

TELCORDIA TECHNOLOGIES, INC.,

Civil Action No. 04-876-GMS

EXHIBIT B1:

AGREED STATEMENT OF CONTESTED ISSUES OF FACT AND LAW I. Telcordia's Claim of Infringement A. Cisco 1. Whether Cisco induced infringement of claims 1, 2, 7, or 8 of the '763 patent. 2. Whether Cisco contributorily infringed claims 1, 2, 7, or 8 of the '763 patent.

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3. Whether Cisco induced infringement of claims 11 or 33 of the '633 patent. 4. Whether Cisco contributorily infringed claims 11 or 33 of the '633 patent. B. Lucent 5. Whether Lucent induced infringement of claims 1, 2, 7, or 8 of the '763 patent. 6. Whether Lucent contributorily infringed claims 1, 2, 7, or 8 of the '763 patent. 7. Whether Lucent induced infringement of claims 11 or 33 of the '633 patent. 8. Whether Lucent contributorily infringed claims 11 or 33 of the '633 patent. II. Telcordia's Claim of Notice 9. Whether Telcordia provided Cisco or Lucent with constructive notice of the '633 patent by satisfying the marking requirement of 35 U.S.C. § 287(a). 10. Whether Telcordia provided Cisco or Lucent with constructive notice of the '763 patent by satisfying the marking requirement of 35 U.S.C. § 287(a). 11. The identity of licensees of the '633 patent or '763 patent who were required to mark patented products in order to satisfy the marking requirements of 35 U.S.C. § 287(a) and whether Telcordia took steps to ensure that these licensees marked licensed products with the patent number. 12. Whether Telcordia can recover any damages from Cisco for activities occurring prior to September 7, 2001. 13. Whether Telcordia can recover any damages from Lucent for activities occurring prior to June 14, 2005. III. Telcordia's Claim of Willful Infringement 14. Whether Cisco willfully infringed the '763 patent. 15. Whether Cisco willfully infringed the '633 patent. 16. Whether Lucent willfully infringed the '633 patent.

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IV.

Defendants' Claim of Invalidity A. The '306 Patent 1 1. Conception and Reduction to Practice

17. The conception date of each of claims 1, 3, and 4 of the '306 patent and whether such date(s) are corroborated. 18. Whether the named inventors of the '306 patent were diligent in reducing the inventions of claims 1, 3, and 4 of the '306 patent to practice and whether such diligence was corroborated. 2. Obviousness

19. What is the scope and content of the prior art. 20. What was the level of ordinary skill in the art related to the subject matter of claims 1, 3, and 4 of the '306 patent at the time of the invention. 21. Whether at the time of the invention a person of ordinary skill in the art would have been motivated to combine FasNet with Turner, the '041 patent, Luderer, or the Baran EP Patent. 22. Whether at the time of the invention a person of ordinary skill in the art would have been motivated to combine Budrikis with Turner, the '041 patent, Luderer, or the Baran EP Patent. 3. Best Mode

23. Whether claims 1, 3, or 4 of the '306 patent are invalid for failure to comply with the best mode requirement.
1

As to all '306 validity and enforceability issues raised in this exhibit (Exhibit B1), Telcordia incorporates its "mootness of '306 validity and enforceability position." See Telcordia's Statement of Contested Issues of Fact and Law (Exhibit B2) at Section IX.

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24. Whether named inventor Hung-Hsiang Chao had a best mode of practicing the claimed invention at the time the '306 patent was filed. 25. Whether the specification adequately discloses what named inventor HungHsiang Chao contemplated as the best mode so that those having ordinary skill in the art could practice it. B. The '763 patent 1. Obviousness

26. What is the scope and content of the prior art. 27. What was the level of ordinary skill in the art related to the subject matter of claims 1, 2, 7, and 8 of the '763 patent at the time of the invention. 28. Whether at the time of the invention a person of ordinary skill in the art would have been motivated to combine Prisco & Hoss with TR-TSY-000010, TA-TSY000009, TR-TSY-000191, the Northern Telecom FD-565, the Hashizume patent, Ester, the Jones patent, the Cagle patent, or Jones & Cagle. 29. Whether at the time of the invention a person of ordinary skill in the art would have been motivated to combine the Hashizume patent with TR-TSY-000010, TA-TSY-000009, TR-TSY-000191, the Northern Telecom FD-565, Prisco & Hoss, Ester, the Jones patent, the Cagle patent, or Jones & Cagle. 30. Whether at the time of the invention a person of ordinary skill in the art would have been motivated to combine Ester with TR-TSY-000010, TA-TSY-000009, TR-TSY-000191, the Northern Telecom FD-565, Prisco & Hoss, the Hashizume patent, the Jones patent, the Cagle patent, or Jones & Cagle.

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2.

Best Mode

31. Whether claims 1, 2, 7, or 8 of the '763 patent are invalid for failure to comply with the best mode requirement. 32. Whether named inventor Chi-Leung Lau had a best mode of practicing the claimed invention at the time the '763 patent was filed. 33. Whether the specification adequately discloses what named inventor Chi-Leung Lau contemplated as the best mode so that those having ordinary skill in the art could practice it. 3. Indefiniteness

34. Whether one of ordinary skill in the art would understand the '763 patent to disclose adequate structure corresponding to the term "monitoring means" in claims 1, 2, 7, or 8. C. The '633 Patent 1. Conception and Reduction to Practice

35. The conception date of claims 11 and 33 of the '633 patent and whether such date(s) are corroborated. 36. Whether the named inventors of the '633 patent were diligent in reducing the inventions of claims 11 and 33 of the '633 patent to practice and whether such diligence was corroborated. 2. Obviousness

37. What is the scope and content of the prior art. 38. What was the level of ordinary skill in the art related to the subject matter of claims 11 and 33 of the '633 patent at the time of the invention. 39. Differences between the Gonzales article and claims 11 and 33 of the '633 patent.

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40. Differences between the Draft AAL1 Recommendation and claims 11 and 33 of the '633 patent. 3. Inventorship

41. Whether claims 11 and 33 of the '633 patent are invalid for failure to name Pierre Adam, Thierry Houdoin, and/or Jean-Yves Cochennec as an inventor. 4. Derivation

42. Whether the subject matter claimed in the '633 patent was derived from someone other than the named inventors of the '633 patent, including Pierre Adam, Thierry Houdoin, and/or Jean-Yves Cochennec of France Telecom. 43. What are the differences between any information France Telecom (e.g., Pierre Adam, Thierry Houdoin, and/or Jean-Yves Cochennec) provided to the named inventors and claims 11 and 33 of the '633 patent. V. Defendants' Defense of Inequitable Conduct A. Inequitable Conduct 1. '306 Patent

44. Whether one or more of the individuals involved in a substantial way with the prosecution of the '306 patent withheld Wu-Lee-Lee from the PTO with intent to deceive the patent examiner. 45. Whether one or more of the individuals involved in a substantial way with the prosecution of the '306 patent withheld Beckner-Lee-Minzer from the PTO with intent to deceive the patent examiner. 46. Whether one or more of the individuals involved in a substantial way with the prosecution of the '306 patent withheld FasNet from the PTO with intent to deceive the patent examiner.

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B.

The '763 patent 47. Whether one or more of the individuals involved in a substantial way with the prosecution of the '763 patent withheld Prisco & Hoss from the PTO with intent to deceive the patent examiner.

C.

The '633 patent 48. Whether one or more of the individuals involved in a substantial way with the prosecution of the '978 patent withheld any of the 1991 communications between Telcordia and France Telecom from the PTO with intent to deceive the patent examiner. 49. Whether one or more of the individuals involved in a substantial way with the prosecution of the '633 patent withheld the facsimile from B. Kittams to P. Adam dated September 4, 1991 from the PTO with intent to deceive the patent examiner. 50. Whether one or more of the individuals involved in a substantial way with the prosecution of the '633 patent withheld the facsimile from R. Lau and B. Kittams to T. Houdoin and J.Y. Cochennec dated October 16, 1991 from the PTO with intent to deceive the patent examiner. 51. Whether one or more of the individuals involved in a substantial way with the prosecution of the '978 or the '633 patent misrepresented the Gonzales article to the PTO with intent to deceive the PTO.

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VI.

Defendants' Equitable Defenses A. Laches 1. Cisco

52. Whether Telcordia delayed in filing its complaint and/or its amended complaint against Cisco. 2. Lucent

53. Whether Telcordia delayed in filing its complaint and/or its amended complaint against Lucent. 2 B. Cisco's Defense of Equitable Intervening Rights 54. Whether Cisco is entitled to equitable intervening rights. 55. Whether Cisco substantially invested in designing and developing its DCU ASIC and/or SLFP FPGA before the '633 patent issued. 56. Whether Cisco has made profits on its DCU ASIC and/or SLFP FPGA sufficient to cover its investment. C. Cisco's Defense of Unclean Hands 57. Whether Telcordia has acted with unclean hands so as to deny Telcordia the relief it seeks. VII. ATTORNEYS' FEES AND COSTS 58. Whether this is an exceptional case pursuant to 35 U.S.C. § 285. 59. Whether attorneys fees, expenses, and/or costs are due to Plaintiff or Defendants, and the amount.

2

Lucent is not asserting a defense of laches for the '633 patent.

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EXHIBIT B2

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EXHIBIT B3

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE TELCORDIA TECHNOLOGIES, INC., Plaintiff/Counterclaim Defendant, v. LUCENT TECHNOLOGIES, INC., Defendant/Counterclaim Plaintiff. TELCORDIA TECHNOLOGIES, INC., Plaintiff/Counterclaim Defendant, v. CISCO SYSTEMS, INC., Defendant/Counterclaim Plaintiff. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

C.A. No. 04-875-GMS

C.A. No. 04-876-GMS

EXHIBIT B3: DEFENDANTS' STATEMENT OF CONTESTED ISSUES OF FACT AND LAW The following is Defendants Cisco and Lucent's Statement of Contested Issues of Fact and Law, and Defendants' statement concerning Telcordia's assertion of mootness of invalidity and unenforceability defenses and counterclaims for the '306 patent.1 Defendants have not included the contested issues of fact about which the parties agree, which are included in Exhibit B1. Defendants reserve the right to submit a revised version of this statement after receiving the Court's rulings on the parties' respective motions in limine. Defendants incorporate by reference herein the law cited in their proposed jury instructions and their motions in limine.
1

Defendants' statements of contested facts and law set forth herein are based on the Court's Claim Construction Order and Telcordia's infringement theories and damages contentions as set forth in its experts' reports.

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CONTESTED ISSUES OF FACT

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I.

NON-INFRINGEMENT A. U.S. Patent No. 4,835,763 ("the '763 patent") 1. Cisco's Alleged Direct Infringement a. Whether Cisco directly infringes claims 1, 2, 7, or 8 of the '763 patent by making, using, selling, or offering to sell in the United States, or importing into the United States, the ONS 15454, ONS 15310, ONS 15327, ONS 15600, or ONS 15305 ("ONS products"). Whether Cisco makes, uses, sells, or offers to sell in the United States, or imports into the United States, communications networks comprising nodes connected to form a loop by two unidirectional counter-rotating rings. Whether the ONS products insert error signals on the channels following demultiplexing in response to the monitoring means determining that a high-level signal is defective. Whether the insertion of an all ones error signal by the Receive Framer in Cisco's ONS products occurs following demultiplexing. Whether the ONS products select another channel based on detecting an error signal on one or more of the channels following demultiplexing. Whether the ONS products include the claimed monitoring means. Whether the ONS products include the claimed insertion means. Whether the ONS products include the claimed selector means.

b.

c.

d. e.

f. g. h. 2.

Lucent's Alleged Direct Infringement a. Whether Lucent directly infringes claims 1, 2, 7, or 8 of the '763 patent by making, using, selling, or offering to sell in the United States, or importing into the United States, the DMX Access Multiplexer, the DMXtend Access Multiplexer, the DMXplore Access Multiplexer, or DMXpress Access Multiplexer ("DMX products"). Whether Lucent makes, uses, sells, or offers to sell in the United States, or imports into the United States, communications networks comprising nodes connected to form a loop by two unidirectional counter-rotating rings.

b.

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c.

Whether the DMX products insert error signals on the channels following demultiplexing in response to the monitoring means determining that a high-level signal is defective. Whether the insertion of an all ones error signal by the Byte Processor in Lucent's DMX products occurs following demultiplexing. Whether the DMX products select another channel based on detecting an error signal on one or more of the channels following demultiplexing. Whether the DMX products include the claimed monitoring means. Whether the DMX products include the claimed insertion means. Whether the DMX products include the claimed selector means.

d.

e.

f. g. h. 3.

Cisco's Alleged Indirect infringement a. b. c. Whether Cisco's customers who purchase the ONS products directly infringe claims 1, 2, 7, or 8 of the '763 patent. Whether the ONS products have substantial non-infringing uses. Whether Cisco knew that the ONS products were especially made or especially adapted for use in an infringement of claims 1, 2, 7, or 8 of the '763 patent. Whether Cisco specifically intended to induce the legal wrong of actual infringement of claims 1, 2, 7, or 8 of the '763 patent. Whether Cisco encouraged its customers to use the ONS products in a manner that would result in actual infringement of claims 1, 2, 7, or 8 of the '763 patent.

d. e.

4.

Lucent's Alleged Indirect Infringement a. b. c. d. Whether Lucent's customers who purchase the DMX products directly infringe claims 1, 2, 7, or 8 of the '763 patent. Whether and when Lucent had knowledge of the '763 patent. Whether the DMX products have substantial non-infringing uses. Whether Lucent knew that the DMX products were especially made or especially adapted for use in an infringement of claims 1, 2, 7, or 8 of the '763 patent. 4

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e. f.

Whether Lucent specifically intended to induce the legal wrong of actual infringement of claims 1, 2, 7, or 8 of the '763 patent. Whether Lucent encouraged its customers to use the DMX products in a manner that would result in actual infringement of claims 1, 2, 7, or 8 of the '763 patent.

5.

Doctrine of Equivalents a. Cisco (1) (2) Whether the ONS products infringe claims 1, 2, 7, or 8 of the '763 patent under the doctrine of equivalents. Whether differences between the ONS products and any of the limitations of claims 1, 2, 7 or 8 of the '763 patent for which the doctrine of equivalents is viable, if any, are such that the ONS products perform substantially the same function in substantially the same way to obtain substantially the same result as any claim limitation and/or are interchangeable with the corresponding claim limitation.

b.

Lucent (1) (2) Whether the DMX products infringe claims 1, 2, 7, or 8 of the '763 patent under the doctrine of equivalents. Whether differences between the DMX products and any of the limitations of claims 1, 2, 7 or 8 of the '763 patent for which the doctrine of equivalents is viable, if any, are such that the DMX products perform substantially the same function in substantially the same way to obtain substantially the same result as any claim limitation and/or are interchangeable with the corresponding claim limitation.

B.

U.S. Patent No. Re. 36,633 ("the '633 patent") 1. Cisco's Alleged Direct Infringement a. Whether Cisco directly infringes claims 11 or 33 of the '633 patent by making, using, selling, or offering to sell in the United States, or importing into the United States, the MGX 8200 and 8800 series products ("MGX products"), LightStream 1010 series products ("LightStream products"), Catalyst 8510 and 8540 series products ("Catalyst products"), IGX 8400 series products ("IGX products"), IP Transfer Point products, 7200 series routers ("7200 products"),

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or 3600 series routers ("3600 products") (collectively, "Cisco products accused of infringing the '633 patent"). b. How many MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and/or 3600 products actually contain a module that can perform the accused SRTS functionality. Whether the MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products infringe claims 11 or 33 of the '633 patent when such products are not equipped with a module that can perform the accused SRTS functionality. Whether the MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products are capable of transporting an RTS other than in the convergence sublayer overhead. Whether the Cisco products accused of infringing the '633 patent using AAL1Gator chips have a means, at the source node, for defining a derived network clock frequency fnx from a network frequency fn where fnx = fn/x, x is a rational number, and fnx is less than or equal to twice the service clock frequency. Whether the Cisco products accused of infringing the '633 patent using AAL1Gator chips, the DCU ASIC, or the SLFP FPGA and WinPath chips have a means for transmitting from the source node an RTS that is equal to the modulo 16 count of derived network clock cycles in the RTS period. Whether the Cisco products accused of infringing the '633 patent using AAL1Gator chips define, at the source node, a derived network clock frequency fnx from a network frequency fn where fnx = fn/x, x is a rational number, and fnx is less than or equal to twice the service clock frequency. Whether the Cisco products accused of infringing the '633 patent using AAL1Gator chips, the DCU, or the SLFP FPGA and WinPath chips transmit from the source node an RTS that is equal to the modulo 16 count of derived network clock cycles in the RTS period. Whether the Cisco products accused of infringing the '633 patent using the DCU have a means, at the source node, for counting the derived network clock cycles in an RTS period.

c.

d.

e.

f.

g.

h.

i.

2.

Lucent's Alleged Direct Infringement a. Whether Lucent directly infringes claims 11 or 33 of the '633 patent by making, using, selling, or offering to sell in the United 6

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States, or importing into the United States, the CBX-500 and CBX3500 ("CBX products"), the GX-550 ("GX product"), or the PSAX 1000, PSAX 1250, PSAX 2300, or PSAX 4500 ("PSAX products). b. c. How many CBX, GX, and/or PSAX products actually contain a module that can perform SRTS. Whether the CBX, GX, and PSAX products infringe claims 11 or 33 of the '633 patent when such products are not equipped with a module that can perform SRTS. Whether the CBX, GX and PSAX products are capable of transporting an RTS other than in the convergence sublayer overhead. Whether the PSAX products are capable of defining a RTS period as an integral number of source-node service clock cycles. Whether the PSAX products have a means for defining a derived network clock frequency fnx from a network frequency fn where fnx = fn/x, x is a rational number, and fnx is less than or equal to twice the service clock frequency. Whether the PSAX products define a RTS period as an integral number of source-node service clock cycles. Whether the PSAX products have a means for counting the derived network clock cycles modulo 16 in an RTS period. Whether the PSAX products define a derived network clock frequency fnx from a network frequency fn where fnx = fn/x, x is a rational number, and fnx is less than or equal to twice the service clock frequency.

d.

e. f.

g. h. i.

3.

Cisco's Alleged Indirect Infringement a. Whether Cisco's customers who purchase the MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products directly infringe claims 11 or 33 of the '633 patent. Whether the MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products have substantial non-infringing uses. Whether Cisco knew that the MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products were especially made or especially adapted for use in an infringement of claims 11 or 33 of the '633 patent.

b. c.

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d. e.

Whether Cisco specifically intended to induce the legal wrong of actual infringement of claims 11 or 33 of the '633 patent. Whether Cisco encouraged its customers to use the MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products in a manner that would result in actual infringement of claims 11 or 33 of the '633 patent.

4.

Lucent's Alleged Indirect Infringement a. b. c. d. Whether Lucent's customers who purchased the CBX, GX, and PSAX products directly infringe claims 11 or 33 of the '633 patent. Whether and when Lucent had knowledge of the '633 patent. Whether the CBX, GX, and PSAX products have substantial noninfringing uses. Whether Lucent knew that the CBX, GX, and PSAX products were especially made or especially adapted for use in an infringement of claims 11 or 33 of the '633 patent. Whether Lucent specifically intended to induce the legal wrong of actual infringement of claims 11 or 33 of the '633 patent. Whether Lucent encouraged its customers to use the CBX, GX, and PSAX products in a manner that would result in actual infringement of claims 11 or 33 of the '633 patent.

e. f.

5.

Doctrine of Equivalents a. Cisco (1) Whether the MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products infringe claims 11 or 33 of the '633 patent under the doctrine of equivalents. Whether differences between the MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products and any of the limitations of claims 11 or 33 of the '633 patent for which the doctrine of equivalents is viable, if any, are such that the MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products perform substantially the same function in substantially the same way to obtain substantially the same result and/or are interchangeable with the corresponding claim limitation.

(2)

b.

Lucent

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(1)

Whether the CBX, GX, and PSAX products infringe claims 11 or 33 of the '633 patent under the doctrine of equivalents. Whether differences between the CBX, GX, and PSAX products and any of the limitations of claims 11 or 33 of the '633 patent for which the doctrine of equivalents is viable, if any, are such that the CBX, GX, and PSAX products perform substantially the same function in substantially the same way to obtain substantially the same result and/or are interchangeable with the corresponding claim limitation.

(2)

II.

INVALIDITY A. U.S. Patent No. 4,893,306 ("the '306 patent") 1. Anticipation a. Whether the printed publication J. Limb and C. Flores, "Description of Fasnet ­ A Unidirectional Local-Area Communications Network," The Bell System Technical Journal, Vol. 61, No. 7 (September 1982) ("FasNet") anticipates claims 1, 3, or 4 of the '306 patent. Whether the printed publication Z. Budrikis and A. Netravali, "A Packet/Circuit Switch," AT&T Bell Laboratories Technical Journal, Vol. 63, No. 8 (October 1984) ("Budrikis") anticipates claims 1, 3, or 4 of the '306 patent.

b.

2.

Obviousness a. b. c. d. Differences between FasNet and claims 1, 3, or 4 of the '306 patent. Differences between Budrikis and claims 1, 3, or 4 of the '306 patent. Whether there are any secondary considerations. Whether "Wideband Packet Technology for Switching Systems" by G.W.R. Luderer et al. was presented and/or published between March 15-20, 1987.

3.

Best Mode a. Whether "Design Architectures of DTDM Packet Assembler and Packet Multiplexer" by Hung-Hsiang Chao was presented and/or published between November 9-11, 1987.

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4.

Conception and Reduction to Practice a. Whether there was an actual reduction to practice by Telcordia of the subject matter of the claims of the '306 patent.

B.

The '763 patent 1. Anticipation a. Whether the printed publication J. Prisco and R. Hoss, "Fiber Optic Regional Area Networks," IEEE Communications Magazine, Vol. 23, No. 11 (November 1985) ("Prisco & Hoss") anticipates claims 1, 2, 7, or 8 of the '763 patent. Whether U.S. Patent No. 4,347,605 ("the Hashizume patent") anticipates claims 1, 2, 7, or 8 of the '763 patent. Whether the printed publication G. Ester, "Ring up big profits with ring architecture," Telephony, pp. 22-29 (December 1987) ("Ester") anticipates claims 1, 2, 7, or 8 of the '763 patent. Whether G. Ester, "Ring up big profits with ring architecture," Telephony, pp. 22-29 (December 1987) ("Ester") was published in December 1987.

b. c.

d.

2.

Obviousness a. b. c. d. Differences between Prisco & Hoss and claims 1, 2, 7, and 8 of the '763 patent. Differences between the Hashizume patent and claims 1, 2, 7, and 8 of the '763 patent. Differences between Ester and claims 1, 2, 7, and 8 of the '763 patent. Whether there are any secondary considerations.

3.

Conception and Reduction to Practice a. Whether there was an actual reduction to practice by Telcordia of the subject matter of the claims of the '763 patent

C.

The '633 patent 1. Anticipation a. Whether the printed publication J. Gonzales and J.P. Le Meur, "Jitter Reduction in ATM Networks," Proceedings of the ICC, pp. 10

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274-279 (1991) ("the Gonzales article") anticipates claims 11 or 33 of the '633 patent. b. Whether the printed publication CCITT Study Group XVIII, SWP XVIII/8-3, Revised text of I.363 section 2 (AAL type 1), Melbourne 2-13 (December 1991) ("the Draft AAL1 Recommendation") anticipates claims 11 or 33 of the '633 patent.

2.

Obviousness a. Whether there are any secondary considerations.

3.

Conception and Reduction to Practice a. Whether there was an actual reduction to practice by Telcordia of the subject matter of the claims of the '633 patent.

III.

INEQUITABLE CONDUCT/UNENFORCEABILITY A. The '306 patent 1. Whether the printed publication Wu, Lee, and Lee, "Dynamic TDM ­ a Packet Approach to Broadband Networking," IEEE International Conference on Communications (June 1987) ("Wu-Lee-Lee") would have been important to a reasonable examiner in deciding whether to issue the '306 patent. Whether "Dynamic TDM ­ A Packet Approach to Broadband Networking" by L.T. Wu, S.H. Lee and T.T. Lee was presented and/or published between June 7-10, 1987. Whether the printed publication M. Wm. Beckner, T.T. Lee, and S.E. Minzer, "A Protocol and Prototype for Broadband and Subscriber Access to ISDNs," Proceedings of the International Switching Symposium,Vol. 2, pp. 462-69 (1987) ("Beckner-Lee-Minzer") would have been important to a reasonable examiner in deciding whether to issue the '306 patent.

2.

3.

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4.

Whether "A Protocol and Prototype for Broadband and Subscriber Access to ISDNs" by M. Wm. Beckner, T.T. Lee, and S.E. Minzer was presented and/or published in March 1987. Whether "Tutorial on Asynchronous Time Division Multiplexing (ATDM): A Packet Access Capability for Broadband Interfaces to ISDNs" by M. Wm. Beckner and S.E. Minzer was presented and/or published between November 18-22, 1985. Whether FasNet would have been important to a reasonable examiner in deciding whether to issue the '306 patent.

5.

6. B.

The '763 patent 1. Whether Prisco & Hoss, and named inventor Lau's relationship with that reference, would have been important to a reasonable examiner in deciding whether to issue the '763 patent.

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C.

The '633 patent 1. Whether the role of Pierre Adam, Theirry Houdoin, and/or Jean-Yves Cochennec in the conception of the claimed invention, as evidenced by the 1991 communications between Telcordia and France Telecom,2 would have been important to a reasonable examiner in deciding whether to issue U.S. Patent No. 5,260,978 ("the '978 patent"). Whether the role of Pierre Adam, Theirry Houdoin, and/or Jean-Yves Cochennec in the conception of the claimed invention, as evidenced by the facsimile from B. Kittams to P. Adam dated September 4, 1991, would have been important to a reasonable examiner in deciding whether to issue the '633 patent. Whether the role of Pierre Adam, Theirry Houdoin, and/or Jean-Yves Cochennec in the conception of the claimed invention, as evidenced by the facsimile from R. Lau and B. Kittams to T. Houdoin and J.Y. Cochennec dated October 16, 1991, would have been important to a reasonable examiner in deciding whether to issue the '633 patent. Whether the misrepresentation of the Gonzales article during prosecution of the '978 patent would have been important to a reasonable examiner in deciding whether to issue the '978 patent. Whether the misrepresentation of the Gonzales article during prosecution of the '633 patent would have been important to a reasonable examiner in deciding whether to issue the '633 patent.

2.

3.

4.

5.

IV.

DAMAGES A. Cisco 1. To the extent that Cisco's ONS products are found to infringe the '763 patent, what damages would be adequate to compensate Telcordia.

2

The 1991 communications between Telcordia and France Telecom include the following: Facsimile from P. Adam of France Telecom dated August 26, 1991. Facsimile from B. Kittams to P. Adam dated September 4, 1991. Memo from R. Lau and B. Kittams to T. Houdoin dated October 11, 1991. Facsimile from T. Houdoin to B. Kittams to R. Lau dated October 14, 1991. Facsimile from R. Lau and B. Kittams to T. Houdoin and J.Y. Cochennec dated October 16, 1991. Undated memo from T. Houdoin to B. Kittams and R. Lau.

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2.

To the extent that Cisco's MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products are found to infringe the '633 patent, what damages would be adequate to compensate Telcordia. Whether the form of the appropriate measure of damages, if any, is an upfront, paid-up royalty or a running royalty. To the extent that Cisco's ONS products are found to infringe the '763 patent and a running royalty is the appropriate measure of damages, what is the appropriate royalty base that Cisco and Telcordia would have negotiated at the time of the hypothetical negotiation To the extent that Cisco's ONS products are found to infringe the '763 patent and a running royalty is the appropriate measure of damages, what is the reasonable royalty rate that Cisco and Telcordia would have negotiated at the time of the hypothetical negotiation. To the extent that Cisco's MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products are found to infringe the '633 patent and a running royalty is the appropriate measure of damages, what is the appropriate royalty base that Cisco and Telcordia would have negotiated at the time of the hypothetical negotiation. To the extent that Cisco's MGX, LightStream, Catalyst, IGX, IP Transfer Point, 7200, and 3600 products are found to infringe the '633 patent and a running royalty is the appropriate measure of damages, what is the reasonable royalty rate that Cisco and Telcordia would have negotiated at the time of the hypothetical negotiation. When any hypothetical negotiation between Telcordia and Cisco regarding the '763 patent would have taken place. When any hypothetical negotiation between Telcordia and Cisco regarding the '633 patent would have taken place.

3. 4.

5.

6.

7.

8. 9. B. Lucent 1.

To the extent that Lucent's DMX products are found to infringe the '763 patent, what is the appropriate royalty base that Lucent and Telcordia would have negotiated at the time of the hypothetical negotiation in April 2000. To the extent that Lucent's DMX products are found to infringe the '763 patent, what is the reasonable royalty rate that Lucent and Telcordia would have negotiated at the time of the hypothetical negotiation in April 2000.

2.

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3.

To the extent that Lucent's CBX, GX, and PSAX products are found to infringe the '633 patent, what is the appropriate royalty base that Lucent and Telcordia would have negotiated at the time of the hypothetical negotiation in April 2000. To the extent that Lucent's CBX, GX, and PSAX products are found to infringe the '633 patent, what is the reasonable royalty rate that Lucent and Telcordia would have negotiated at the time of the hypothetical negotiation in April 2000. When any hypothetical negotiation between Telcordia and Lucent regarding the '763 patent would have taken place. When any hypothetical negotiation between Telcordia and Lucent regarding the '633 patent would have taken place.

4.

5. 6. C.

Actual Notice 1. Cisco a. b. Whether Telcordia provided Cisco with actual notice of the '763 patent prior to September 7, 2001. Whether Telcordia provided Cisco with a specific charge of infringement of the '763 patent by a specific Cisco product prior to August 5, 2003. Whether Telcordia provided Cisco with actual notice of the '633 patent prior to September 7, 2001. Whether Telcordia provided Cisco with a specific charge of infringement of the '633 patent by a specific Cisco product prior to August 5, 2003.

c. d.

2.

Lucent a. b. Whether Telcordia provided Lucent with actual notice of the '763 patent prior to filing its amended complaint on June 14, 2005. Whether Telcordia provided Lucent with a specific charge of infringement of the '763 patent by a specific Lucent product prior to filing its amended complaint on June 14, 2005. Whether Telcordia provided Lucent with actual notice of the '633 patent prior to filing its amended complaint on June 14, 2005.

c.

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d.

Whether Telcordia provided Lucent with a specific charge of infringement of the '633 patent by a specific Lucent product prior to filing its amended complaint on June 14, 2005.

D.

Constructive Notice 1. 2. Whether licensees of the '763 patent mark their licensed products with the patent number. Whether licensees of the '763 patent that have licensed products made for them under "have made" rights have such licensed products marked with the patent number. Whether licensees of the '633 patent mark their licensed products with the patent number. Whether licensees of the '633 patent that have licensed products made for them under "have made" rights have such licensed products marked with the patent.

3. 4.

E.

Laches 1. Cisco a. Whether Telcordia's delay in filing its complaint on July 16, 2004 and/or its amended complaint on June 14, 2005 against Cisco was unreasonable and inexcusable. When Telcordia knew or should have known of the alleged infringement by Cisco or companies it acquired prior to filing its complaint on July 16, 2004 and its amended complaint on June 14, 2005. Whether Telcordia's delay in asserting the patents gives rise to a presumption of laches because Telcordia knew or should have known of the alleged infringement by Cisco or companies it acquired more than six years prior to filing its complaint on July 16, 2004 and its amended complaint on June 14, 2005. Whether Cisco suffered material economic prejudice as a result of Telcordia's delay in asserting the patents. Whether Cisco suffered material evidentiary prejudice as a result of Telcordia's delay in asserting the patents.

b.

c.

d. e.

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2.

Lucent a. Whether Telcordia's delay in filing its complaint on July 16, 2004 and/or its amended complaint on June 14, 2005 against Lucent was unreasonable and inexcusable. When Telcordia knew or should have known of the alleged infringement by Lucent or companies it acquired prior to filing its complaint on July 16, 2004 and its amended complaint on June 14, 2005.3 Whether Telcordia's delay in asserting the patents gives rise to a presumption of laches because Telcordia knew or should have known of the alleged infringement by Lucent or companies it acquired more than six years prior to filing its complaint on July 16, 2004 and its amended complaint on June 14, 2005. Whether Lucent suffered material economic prejudice as a result of Telcordia's delay in asserting the patents. Whether Lucent suffered material evidentiary prejudice as a result of Telcordia's delay in asserting the patents.

b.

c.

d. e.

3

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V.

EQUITABLE ESTOPPEL A. Whether Telcordia's conduct at ANSI and/or ITU-T/CCITT misled Cisco to believe that Telcordia did not have patents relevant to the SRTS clock recovery technique in the AAL1 standards. Whether Telcordia's conduct at ANSI, ITU-T/CCITT, and/or the ATM Forum misled Cisco to believe that Telcordia would not assert any patents based on compliance with the SRTS clock recovery technique in the AAL1 standards. Whether Telcordia's conduct at ANSI, ITU-T/CCITT, and/or the ATM Forum misled Cisco to believe that Telcordia would license any patents relevant to the SRTS clock recovery technique in the AAL1 standards to the industry for free. Whether Telcordia's conduct at ANSI, ITU-T/CCITT, and/or the ATM Forum misled Cisco to believe that Telcordia would license any patents relevant to the SRTS clock recovery technique in the AAL1 standards to the industry on reasonable and nondiscriminatory terms far less than those Telcordia is now seeking. Whether Cisco relied on Telcordia's misleading conduct. Whether Cisco suffered material prejudice based on its reliance on Telcordia's conduct.

B.

C.

D.

E. F. VI.

WILLFULNESS A. Cisco 1. 2. 3. 4. 5. 6. Whether Cisco had a substantial defense to infringement of the '763 patent and reasonably believed that the defense would be successful if litigated. Whether Cisco exercised due care regarding the '763 patent after it acquired notice of the patent. Whether Cisco formed a good-faith belief that the '763 patent was invalid or unenforceable or that it was not infringed. Whether Cisco tried to cover up any activities accused of infringing the '763 patent. Whether Cisco had a substantial defense to infringement of the '633 patent and reasonably believed that the defense would be successful if litigated. Whether Cisco exercised due care regarding the '633 patent after it acquired notice of the patent.

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7. 8. 9. B. Lucent 1.

Whether Cisco formed a good-faith belief that the '633 patent was invalid or unenforceable or that it was not infringed. Whether Cisco tried to cover up any activities accused of infringing the '633 patent. In the event that willful infringement is found, whether enhanced damages are warranted under 35 U.S.C. § 284.

Whether Lucent had a substantial defense to infringement of the '633 patent and reasonably believed that the defense would be successful if litigated. Whether Lucent exercised due care regarding the '633 patent after it acquired notice of the patent. Whether Lucent formed a good-faith belief that the '633 patent was invalid or unenforceable or that it was not infringed. Whether Lucent tried to cover up any activities accused of infringing the '633 patent. In the event that willful infringement is found, whether enhanced damages are warranted under 35 U.S.C. § 284.

2. 3. 4. 5. VII.

PATENT MISUSE A. Whether Telcordia's infringement allegations against Cisco impermissibly broaden the scope of its patent monopoly.

VIII. PERMANENT INJUNCTION A. B. Whether Telcordia has suffered irreparable harm as a result of Cisco's and/or Lucent's alleged infringement. Whether the remedies available at law, such as monetary damages, are adequate to compensate Telcordia for any injury resulting from Defendants' alleged infringement. Whether the balance of hardships warrants a permanent injunction. Whether the public interest will be disserved by a permanent injunction.

C. D.

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CONTESTED ISSUES OF LAW

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I.

NON-INFRINGEMENT A. Generally Infringement involves a two-step analysis. See, e.g., Cook Biotech v. Acell, Inc., 460 F.3d 1365, 1372 (Fed. Cir. 2006). First, the Court must construe the disputed claims as a matter of law. Id. Second, the fact finder must compare the properly construed claims to the accused products. Id. The plaintiff bears the burden of proving by a preponderance of the evidence that every limitation of an asserted claim is present, either literally or by equivalents, in the accused product. See, e.g., Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir. 2004); Nomos Corp. v. Brainlab, Inc., 239 F. Supp. 2d 430, 434 (D. Del. 2003). An accused infringer has no burden of proving non-infringement. See, e.g., Under Sea Indus., Inc. v. Dacor Corp., 833 F.2d 1551, 1557 (Fed. Cir. 1988). B. Literal Infringement Literal infringement "requires that each and every limitation set forth in a claim appear in an accused product." Cross, 424 F.3d at 1310. Every claim limitation is material and must be present in the accused product. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991). "[A] device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim." High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1555 (Fed. Cir. 1995); Lucent Techs., Inc. v. Newbridge Networks Corp., 168 F. Supp. 2d 181, 225 (D. Del. 2001) ("That a device could have been made to do something else does not of itself establish infringement.").

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C.

Doctrine of Equivalents Infringement Infringement under the doctrine of equivalents requires that the accused product contain each limitation of the claim or its equivalent. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997). An element in the accused product is equivalent to a claim limitation if the differences between the two are insubstantial. See id. The infringement analysis for doctrine of equivalents focuses on whether the element in the accused product "performs substantially the same function in substantially the same way to obtain substantially the same result" as the claim limitation. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). The Federal Circuit has articulated specific rules for establishing infringement under the doctrine of equivalents. See nCUBE Corp. v. SeaChange Int'l, Inc., 436 F.3d 1317, 1325 (Fed. Cir. 2006). Plaintiff must set forth "evidence and argument concerning the doctrine and each of its elements.'" Id. (emphasis in original). In particular, plaintiff must provide "particularized testimony and linking argument as to the `insubstantiality of the differences' between the claimed invention and the accused device or process, or with respect to the function, way, result test when such evidence is presented to support a finding of infringement under the doctrine of equivalents." Texas Instr. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996). Particularized linking testimony and argument "must be presented on a limitationby-limitation basis" and "[g]eneralized testimony as to the overall similarity between the claims and the accused infringer's product or process will not suffice." Id. Further, evidence on DOE "cannot merely be subsumed in plaintiff's case of literal infringement." nCUBE, 436 F.3d at 1325.

D.

Infringement of Means-Plus-Function Claims Claims 1, 2, 7, and 8 of the '763 patent and claim 11 of the '633 patent are written in means-plus-function format pursuant to 35 U.S.C. § 112 ¶ 6. Determining infringement of means-plus-function claim requires: (1) identifying the claimed function of the element; (2) identifying the corresponding structure in the patent that performs that function; (3) performing a function-to-function comparison to determine if the accused products have the identical function as the claim element; and (4) performing a structure-to-structure comparison to determine if the accused products have identical or equivalent structure as that described in the patent. See, e.g., Med. Instrumentation and Diagnostic Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). Infringement of a means-plus-function claim "requires that the relevant structure in the accused device . . . be identical or equivalent to the corresponding structure in the specification." CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1178 (Fed. Cir. 2005). It is insufficient for the plaintiff to "present testimony `based only on a functional, not a structural, analysis.'" Id.

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E.

Direct Infringement Direct infringement requires the presence of each element of the asserted claim. See Cross Med. Prods., 424 F.3d at 1310. A method claim is not directly infringed by the mere manufacture and sale of the product capable of performing that method. See, e.g., Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir. 1993). A method claim can only be directly infringed when the method is actually performed by the product user. Id. at 773-74.

F.

Indirect Infringement A plaintiff that alleges that a defendant is liable for indirect infringement, either induced infringement or contributory infringement, always has the burden of establishing direct infringement. See Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004) ("Indirect infringement, whether inducement to infringe or contributory infringement, can only arise in the presence of direct infringement."). Upon a failure of proof of direct infringement, any claim of indirect infringement also fails. See Epcon Gas Sys. v. Bauer Compressors, Inc., 279 F.3d 1022, 1033 (Fed. Cir. 2002); DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1303 (Fed. Cir. 2006) ("[T]he patentee always has the burden to show direct infringement for each instance of indirect infringement."). 1. Induced Infringement 35 U.S.C. § 271(b) provides that "[w]hoever actively induced infringement of a patent shall be liable as an infringer." To establish induced infringement, a plaintiff must prove that a defendant "actively and knowingly aid[ed] and abett[ed] another's direct infringement." DSU Med., 471 F.3d at 1305 (en banc). The Federal Circuit recently explained that, to establish induced infringement, "knowledge of the acts alleged to constitute infringement" is not enough. Id. Rather, "[t]he plaintiff has the burden of showing that the alleged infringer's actions induced infringing acts and that he knew or should have known his actions would induce actual infringements." Id. at 1304. "The requirement that the alleged infringer knew or should have known his actions would induce actual infringement necessarily includes the requirement that he or she knew of the patent." Id. Active inducement requires the plaintiff to establish that defendant caused, urged, encouraged, or aided a third-party's infringement of a patent. See Tegal Corp. v. Tokyo Electron Co., 248 F.3d 1376, 1379-80 (Fed. Cir. 2001). 2. Contributory infringement Section 271(c) provides that "[w]hoever offers to sell or sells . . . a component of a patented machine, manufacture, combination or 23

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composition . . . constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer" (emphasis added). The Supreme Court has held that establishing contributory infringement "require[s] a showing that the alleged contributory infringer knew that the combination for which his component was especially designed was both patented and infringing." Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964). To establish contributory infringement, a plaintiff must establish that (1) "the alleged contributory infringer knew that the combination for which his component was especially designed was both patented and infringing," and (2) the accused product has no substantial non-infringing uses. Aro, 377 U.S. at 488. A substantial non-infringing use is any non-infringing use that is not fanciful or concocted merely for purposes of litigation. Dawson Chem. Co. v. Rohm & Hass Co., 448 U.S. 176, 198 (1980).

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II.

INVALIDITY A. Anticipation Defendant must establish that a claim is invalid as anticipated by clear and convincing evidence. See Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002). A patent claim is invalid as anticipated if "the invention was . . . described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent." 35 U.S.C. § 102(a). A patent claim is also invalid as anticipated if "the invention was patented or described in a printed publication in this or a foreign country . . . more than one year prior to the date of the application for patent in the United States." 35 U.S.C. § 102(b). Whether a specific document constitutes a publication under 35 U.S.C. § 102 is a question of law. See Constant v. Advanced Micro Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). "A claim is anticipated if each and every limitation is found either expressly or inherently in a single prior art reference." Celeritas Techs., Ltd. v. Rockwell, 150 F.3d 1354, 1361 (Fed. Cir. 1998); accord Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1327 (Fed. Cir. 2001). Whether a claimed invention is anticipated by prior art reference is a question of fact. See Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 914 (Fed. Cir. 2005). "To invalidate a patent by anticipation, a prior art reference normally needs to disclose each and every limitation of the claim. . . . However, a prior art reference may anticipate when the claim limitation or limitations not expressly found in that reference are nonetheless inherent in it." Atlas Powder Co. v. Ireco Inc., 190 F.3d. 1342, 1347 (Fed. Cir. 1999) ("Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates."). The inherent teachings of a prior art reference is a question of fact. In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995); Hazani v. U.S. Int'l Trade Comm'n, 126 F.3d 1473, 1477 (Fed. Cir. 1997). "[A]nticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure." Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Further, inherency "accommodates situations where the common knowledge of technologists is not recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to judges." Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). "[R]ecourse to extrinsic evidence is proper to determine whether a feature, while not explicitly discussed, is necessarily present in a reference." Telemac, 247 F.3d at 1328. "A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention." In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1996) (emphasis removed).

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"Material not explicitly contained in the single, prior art document may still be considered for purposes of anticipation if that material is incorporated by reference into the document." Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). Incorporating by reference may be performed "by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein." Id. "When a document is `incorporated by reference' into a host document, such as a patent, the referenced document becomes effectively part of the host document as if it were explicitly contained therein." Telemac, 247 F.3d at 1329. "Teaching away is irrelevant to anticipation." SeaChange Int'l Inc. v. C-COR Corp., 413 F.3d 1361, 1380 (Fed. Cir. 2005). Rather, "it is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art." See In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). B. Obviousness A claim is invalid "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103(a). "The ultimate test of patent validity is one of law . . . but resolution of the obviousness issue necessarily entails several basic factual inquiries." Sakraida v. AG Pro, Inc., 425 U.S. 273, 280 (1976). Under Section 103, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art are resolved." Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Secondary considerations such as "commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy." Id. at 17-18. A patent claim that "simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations . . . [is] not patentable under standards appropriate for a combination patent." Sakraida, 425 U.S. at 282.

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C.

Best Mode Compliance with the best mode requirement is a question of fact. See United States Gypsum Co. v. National Gypsum Co., 74 F.3d 1209, 1212-13 (Fed. Cir. 1996). A defendant must establish a best mode violation by clear and convincing evidence. The best mode legal test has two prongs. "First, it must be determined whether, at the time the patent application was filed, the inventor had a best mode of practicing the claimed invention." Id. at 1212. "Second, if the inventor had a best mode of practicing the claimed invention, it must be determined whether the specification adequately disclosed what the inventor contemplated as the best mode so that those having ordinary skill in the art could practice it." Id. An inventor's mistake in failing to disclose a preferred mode of practicing the invention constitutes a best mode violation. See, e.g., Graco, Inc. v. Binks Mfg. Co., 60 F.3d 785, 789 (Fed. Cir. 1995).

D.

Conception and Reduction to Practice Conception is a question of law predicated on underlying facts. See Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003). "Conception must include every feature or limitation of the claimed invention." Kridl v. McCormick, 105 F.3d 1446, 1449 (Fed. Cir. 1997). "[I]n establishing conception, a party must show possession of every feature recited in the [claim], and that every limitation of the [claim] must have been known to the inventor at the time of the alleged conception." Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985). "Conception must be proved by corroborating evidence which shows that the inventor disclosed to others his `complete thought expressed in such clear terms as to enable those skilled in the art' to make the invention." Kridl, 105 F.3d at 1449-50. "[A]n inventor's testimonial assertions of inventive facts require corroboration by independent evidence." Brown v. Barbacid, 276 F.3d 1327, 1335 (Fed. Cir. 2002). "[U]nwitnessed laboratory notebooks on their own are insufficient to support [a] claim of [ ] inventorship." Stern v. Trustees of Columbia Univ., 434 F.3d 1375, 1378 (Fed. Cir. 2006). "Corroboration is required to support an inventor's testimony regarding his reasonable diligence in pursuit of the invention." In re Jolley, 308 F.3d 1317, 1328 (Fed. Cir. 2002). "The evidence must show that the alleged earlier inventor was diligent throughout the entire critical period." Monsanto v. Mycogen, 261 F.3d 1356, 1369 (Fed. Cir. 2001). To show diligence, one must show "reasonably continuing activity to reduce the invention to practice." Brown v. Barbacid, 436 F.3d 1376, 1380 (Fed. Cir. 2006). An inventor has not exercised reasonable diligence when there is unexplained inactivity for a period of time. See, e.g., Griffith v. Kanamru, 816 F.2d 624, 627 (Fed. Cir. 1987).

27

Case 1:04-cv-00875-GMS

Document 334-2

Filed 03/09/2007

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E.

Indefiniteness Section 112 ¶ 2 provides that "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." The definiteness requirement applies to claims written in means-plus-function format. A "structure disclosed in the specification qualifies as `corresponding' structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim." Default Proof Credit Card Sys., Inc. v. Home Depot, Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005). Accordingly, in a means-plus-function claim when "an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112." Id. The knowledge of "one of ordinary skill in the art cannot supplant the total absence of structure from the specification." Default Proof, 412 F.3d at 1302. "It is not proper to look to the knowledge of one skilled in the art apart from and unconnected to the disclosure of the patent." Medical Instrum. & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir. 2003).

F.

Inventorship A patent is invalid if the named inventor "did not himself invent the subject matter sought to be patented." 35 U.S.C. § 102(f). Misjoinder of inventors must be proven by clear and convincing evidence. See Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998). To be a joint inventor "[o]ne need not alone conceive of the entire invention, for this would obviate the concept of joint inventorship. However, a joint inventor must contribute in some significant manner to the conception of the invention." Fina Oil and Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). Nonjoinder of a proper inventor may not be corrected when failure to name such an inventor occurred with deceptive intent. Pannu, 155 F.3d at 1351. "A co-inventor need not make a contribution to every claim of a patent." Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). A contribution to one claim is enough. See id. Individuals can be joint inventors even though they did not physically work together. See Pannu, 155 F.3d at 1351.

G.

Derivation "[S]ubject matter derived from another not only is itself unpatentable to the party who derived it under § 102(f), but, when combined with other prior art, may make a resulting obvious invention unpatentable to that party under a combination of §§ 102(f) and 103." Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1403 (Fed. Cir.