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

C.A. No. 04-875 (GMS) REDACTED ­ PUBLIC VERSION

C.A. No. 04-876 (GMS) REDACTED ­ PUBLIC VERSION

DEFENDANTS' REPLIES IN SUPPORT OF THEIR MOTIONS IN LIMINE YOUNG, CONAWAY, STARGATT & TAYLOR, LLP John W. Shaw (#3362) Monte T. Squire (#4764) 1000 West Street, 17th Floor, P.O. Box 391 Wilmington, DE 19899 (302) 571-6600 Attorneys for Lucent Technologies, Inc. Originally Filed: March 1, 2007 Redacted Version Filed: March 8, 2007 MORRIS, NICHOLS, ARSHT & TUNNELL LLP Jack B. Blumenfeld (#1014) Leslie A. Polizoti (#4299) 1201 N. Market Street Wilmington, DE 19899 (302) 658-9200

Attorneys for Cisco Systems, Inc.

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Defendants Cisco Systems, Inc. and Lucent Technologies, Inc. respectfully submit the following motions: Joint Motions Exhibit 1 Exhibit 2 Reply In Support Of Motion In Limine No. 1 Re: Unsupported Damages Theories Reply In Support Of Motion In Limine No. 2 Re: Uncorroborated Evidence of Conception Reply In Support Of Motion In Limine No. 3 Re: Advice of Counsel Reply In Support Of Motion In Limine No. 4 Re: Telcordia v. Fore Systems License and Settlement Agreements

Exhibit 3 Exhibit 4

Cisco's Motion Exhibit 5A Cisco's Reply In Support Of Motion In Limine No. 5 Re: Hyperbolic and Prejudicial Argument or Evidence

Lucent's Motion Exhibit 5B Lucent's Reply In Support Of Motion In Limine No. 5 Re: References to the Alcatel-Lucent Merger

YOUNG, CONAWAY, STARGATT & TAYLOR, LLP /s/ John W. Shaw John W. Shaw (#3362) Monte T. Squire (#4764) 1000 West Street, 17th Floor, P.O. Box 391 Wilmington, DE 19899 (302) 571-6600 Attorneys for Lucent Technologies, Inc.

MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Leslie A. Polizoti Jack B. Blumenfeld (#1014) Leslie A. Polizoti (#4299) 1201 N. Market Street Wilmington, DE 19899 (302) 658-9200 Attorneys for Cisco Systems, Inc.

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EXHIBIT 1

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LEXSEE 1995 US DIST LEXIS 22335

Positive As of: Feb 28, 2007 APPLIED MATERIALS, INC., Plaintiff, v. ADVANCED SEMICONDUCTOR MATERIALS AMERICA, INC., EPSILON TECHNOLOGY INC., doing business as ASM EPITAXY, and ADVANCED SEMICONDUCTOR MATERIALS INTERNATIONAL N.V., Defendants. NO. C 92-20643 RMW UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA

1995 U.S. Dist. LEXIS 22335 April 25, 1995, Decided April 25, 1995, Filed DISPOSITION: Pretrial motions were ruled upon. CASE SUMMARY: alter his testimony based upon prior testimony at trial. The court found that subpoenas and responses thereto that might have been appropriate for cross-examination were not to be excluded. Evidence of infringement was not excludable, provided the patentee made it clear that infringement was not being contested, only validity. OUTCOME: The court ruled on all the motions. LexisNexis(R) Headnotes

PROCEDURAL POSTURE: Plaintiff patentee filed an infringement action against defendant alleged infringers. The parties filed pretrial motions regarding exclusion of evidence, exclusion of expert testimony, exclusion of experts from the courtroom, and to add a reference. OVERVIEW: The patentee sought to exclude evidence of an alleged prior conception, which the alleged infringers claimed was relevant to its obviousness defense. The court found that the conception proof was not independently corroborated and was not admissible. The court also found that the probative value was substantially outweighed by the danger of unfair prejudice, confusion of the issues, and misleading the jury. The court found that experts who were not skilled in the art could not testify concerning technical aspects of the prior art or patent office procedures. The court held that the alleged infringers' technical expert could remain in the courtroom under Fed. R. Evid. 615(3), as he was essential to the presentation of the alleged infringers' case and there was minimal danger that he would substantially

Patent Law > Date of Invention & Priority > Corroboration of Invention Date Patent Law > Date of Invention & Priority > Reduction to Practice [HN1] An inventor, to establish reduction to practice for establishing priority, must provide independent corroborating evidence in addition to his own statements and documents. Patent Law > Date of Invention & Priority > Conception Date

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Patent Law > Date of Invention & Priority > Corroboration of Invention Date [HN2] Conception by an inventor, for the purpose of establishing priority, can not be proved by his mere allegation nor by his unsupported testimony where there has been no disclosure to others or embodiment of the invention in some clearly perceptible form, such as drawings or model, with sufficient proof of identity in point of time. Evidence > Documentary Evidence > Best Evidence Rule Evidence > Documentary Evidence > Writings > General Overview [HN3] Fed. R. Evid. 1004(1) does provide that the loss of the original, unless due to bad faith of the proponent, is a satisfactory explanation of nonproduction of the original. Patent Law > Date of Invention & Priority > Antedating Prior Art References [HN4] The probative value of one inventor's undisclosed conception of an invention is not persuasive evidence of the level of skill in the art. Evidence > Testimony > Experts > General Overview Evidence > Testimony > Experts > Admissibility Evidence > Testimony > Experts > Helpfulness [HN5] Expert testimony is only appropriate if helpful to understand or to determine a fact in issue. Fed. R. Evid. 702. Generally, an expert may not advise a jury as to applicable principles of law. Evidence > Procedural Considerations > Burdens of Proof > General Overview Patent Law > Infringement Actions > Burdens of Proof Patent Law > Infringement Actions > Defenses > Patent Invalidity > Validity Presumption [HN6] The presumption of validity is not substantive evidence, it is merely a procedural device assigning the burden of proof. In other words, the presumption of validity merely explains why the attacker's burden is clear and convincing evidence. However, when the patentee relies upon the deference that is due to the Patent Office which is presumed to have properly done its job, the attacker can show that the Patent Office did not consider certain invalidating evidence, thus showing no need to defer.

Civil Procedure > Pretrial Matters > Conferences > Case Management [HN7] U.S.D.C., N.D. Cal. Rule 235-7(i) provides that the pretrial statement contain a list of witnesses together with a brief statement following each name describing the substance of the testimony to be given. Local Rule 235-7(j) requires a list of exhibits with a brief statement following each describing its substance or purpose. COUNSEL: [*1] For APPLIED MATERIALS, INC., Plaintiff: Matthew D. Powers, Weil Gotshal & Manges LLP, Menlo Park, CA. For Plaintiff: MATTHEW D. POWERS, GOTSHAL & MANGES, MENLO PARK, CA. WEIL

For ADVANCED SEMICONDUCTOR MATERIALS AMERICA, INC., EPSILON TECHNOLOGY INC., ADVANCED SEMICONDUCTOR MATERIALS INTERNATIONAL N.V., defendants: Lowell Anderson, Joseph F. Jennings, John B. Sganga, Jr., Knobbe Martens Olson & Bear LLP, Newport Beach, CA. For ADVANCED SEMICONDUCTOR MATERIALS AMERICA, INC., defendant: Richard J. Gray, Mark E. Naite, Bergeson Eliopoulos Grady & Gray, San Jose, CA. For ADVANCED SEMICONDUCTOR MATERIALS INTERNATIONAL N.V., defendant: Charles B. Cohler, Christopher S. Yates, Lasky Haas & Cohler, San Francisco, CA. For ADVANCED SEMICONDUCTOR MATERIALS AMERICA, INC., EPSILON TECHNOLOGY INC., ADVANCED SEMICONDUCTOR MATERIALS INTERNATIONAL N.V., Counter-claimants: Lowell Anderson, Joseph F. Jennings, John B. Sganga, Jr., Knobbe Martens Olson & Bear LLP, Newport Beach, CA. For ADVANCED SEMICONDUCTOR MATERIALS AMERICA, INC., Counter-claimant: Charles B. Cohler, Lasky Haas & Cohler, San Francisco, CA. For ADVANCED SEMICONDUCTOR MATERIALS AMERICA, INC., ADVANCED [*2] SEMICONDUCTOR MATERIALS INTERNATIONAL N.V., Counter-claimants: Christopher S. Yates, Lasky Haas & Cohler, San Francisco, CA.

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For ADVANCED SEMICONDUCTOR MATERIALS AMERICA, INC., Counter-claimant: Mark E. Waite, Bergeson Eliopoulos Grady & Gray, San Jose, CA. For APPLIED MATERIALS, INC., Counter-defendant: Matthew D. Powers, Weil Gotshal & Manges LLP, Menlo Park, CA. For Defendants and Counterclaimants: DON W. MARTENS, KNOBBE MARTENS OLSON & BEAR, NEWPORT BEACH, CA. JUDGES: RONALD M. WHYTE, United States District Judge. OPINION BY: RONALD M. WHYTE OPINION: RULINGS ON PRETRIAL MOTIONS The hearing on the parties' pretrial motions was held on April 21, 1995. After reviewing the papers and hearing the oral arguments of counsel, the court makes the rulings set forth below. I. APPLIED MATERIALS MOTIONS A. In Limine Re: 1985 Conception Proof Applied seeks to exclude evidence of Goodwin's alleged 1985 conception of the use of reinforcing ribs on the outside of a quartz reaction chamber. ASM claims such evidence is relevant to its obviousness defense in that prior invention is probative of the level of ordinary skill in the art and suggests that those in the field were familiar [*3] with all of the basic concepts disclosed in the patent. Applied submits the evidence is inadmissible because: (1) Goodwin's alleged conception is not independently corroborated and (2) the only document showing the alleged conception is an inadmissible copy of a page from an unwitnessed, missing lab note book. Neither the parties nor the court has found a case which expressly holds that testimony of a witness plus his own, unwitnessed drawing is admissible on the issue of obviousness. In Hahn v. Wong, 892 F.2d 1028, 1032 (Fed. Cir. 1989), the court held that [HN1] an inventor, to establish reduction to practice for establishing priority, "must provide independent corroborating evidence in addition to his own statements and documents." ASM

argues that Price v. Symsek, 988 F.2d 1187 (Fed. Cir. 1993) backs off this requirement and provides for a "rule of reason" test, to determine whether the inventor's prior conception testimony has been corroborated. Although Price does articulate a "rule of reason" test, it does not hold that uncorroborated testimony of an inventor plus his or her own unwitnessed drawing is sufficient. The closest it comes is by quoting [*4] from Mergenthaler v. Scudder, 11 App. D.C. 264, 278 (D.C. Cir. 1897):

[HN2] Conception by an inventor, for the purpose of establishing priority, can not be proved by his mere allegation nor by his unsupported testimony where there has been no disclosure to others or embodiment of the invention in some clearly perceptible form, such as drawings or model, with sufficient proof of identity in point of time.

Price, 988 F.2d at 1194. It seems doubtful that an unwitnessed drawing, although bearing a purported date, would be "sufficient proof of identity in point of time." n1 In Price the inventor presented several exhibits, including an affidavit from someone else, corroborating the date of a drawing. n1 ASM argued at the hearing that it had other corroborating evidence. However, despite extensive briefing including extensive citations to evidence, ASM offered no such evidence in response to Applied's motion. The court has only considered the evidence properly before it. [*5] Although, as noted, no case has been found expressly discussing corroboration of conception in the context of an obviousness defense, the policy behind corroboration for establishing priority applies to a claim that those in the field were familiar with the idea of the invention thus making it obvious. In other words, if corroboration were not required there would be "a great temptation to perjury" and the absence of such a requirement "would have the effect of virtually precluding the adverse party from the possibility of rebutting such evidence." Price, 988 F.2d at 1194-95. Therefore, the court finds that the 1985 conception proof is not independently corroborated

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and should not be admitted. The court's conclusion that the evidence should be excluded is reinforced by the fact that the original drawing and the notebook in which it is allegedly contained are not available. [HN3] F.R.E. 1004(1) does provide that the loss of the original, unless due to bad faith of the proponent, is a satisfactory explanation of nonproduction of the original. Although ASM's explanation of the loss is not as detailed as it should be, the court finds that it is sufficient to show that the [*6] loss was not due to the bad faith of ASM. However, the inability of Applied to review the purported lab book and surrounding pages does result in some unfairness to Applied. There are legitimate questions of authenticity given that the drawing was unwitnessed, that no witness has been identified who can corroborate its existence in 1985, and that ASM apparently took no action for several years on the alleged 1985 conception. Even if the 1985 conception proof were deemed to meet the corroboration requirement for admissibility, the court finds that the evidence should be excluded because its probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, and misleading the jury. F.R.E. 403. [HN4] The probative value of one inventor's undisclosed conception of an invention is not persuasive evidence of the level of skill in the art. Further, the potential for the jury being confused or mislead is real in that the jury may not understand that the issue is not whether Goodwin came up with the idea first, but rather what was the level of skill in the art at the time of Applied's claimed invention. Finally, and most importantly, the risk of prejudice to [*7] Applied is significant in light of its limited ability to question the legitimacy and timing of the drawing. For the above reasons, the court orders that Applied's motion to exclude the Goodwin 1985 conception proof is granted. B. In Limine Re: ASM's Legal Expert Applied submits that ASM's legal expert Nusbaum, a former supervising patent examiner and former member of the Patent Office Board of Patent Appeals and Interferences, should not be allowed to testify on the topics listed below. Nusbaum is not a technical expert and testified that he is not skilled in the relevant art and never worked in the relevant art units within the Patent Office. ASM argues that Nusbaum's testimony is

designed to assist the jury in understanding the complex evidence that will be presented, particularly with respect to interpreting the materiality of prior art, the effect of prior art and test results not before or examined by the examiner, and the examiner's limited facilities. 1. Testimony About What the Prior Art Teaches. Both parties agree Nusbaum cannot testify as to what the prior art teaches, because he is not a technical expert. The motion, therefore, as to this area is granted. [*8] 2. Testimony About the Materiality of the Prior Art. The court grants Applied's motion to preclude testimony by Nusbaum about the "materiality" of prior art. He is not skilled in the art. Seilheimer, not Nusbaum, is the appropriate expert to address whether the prior art before the Patent Office is the most relevant prior art. 3. Testimony About What the Examiner Would Have Done if Nusbaum Had Been the Examiner or if the Examiner Had Different Information. The court grants Applied's motion precluding Nusbaum from testifying about what the examiner would have done if Nusbaum had been the examiner, or if the examiner had different information. The evidence would be irrelevant speculation and Nusbaum is not skilled in the art. Further, [HN5] expert testimony is only appropriate if helpful to understand or to determine a fact in issue. F.R.E. 702. Generally, an expert may not advise a jury as to applicable principles of law. Cotchett, Elkind Federal Courtroom Evidence, 3rd Ed., p. 287. 4. Testimony Regarding How the Examiner Would Have Reacted to the Results of Applied's Internal Development Program. The court grants Applied's motion requesting that Nusbaum be precluded [*9] from testifying about how the examiner would have reacted to the results of Applied's internal development program. Nusbaum is not skilled in the art. Further, how he personally would have reacted is irrelevant. 5. Testimony Concerning Overwork, Quotas, Awards or Promotions at the Patent Office, or the Number of Patents that Issue Annually or Otherwise Insinuating that the Patent Office Does Not Do Its Job Properly.

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Applied submits that Nusbaum should not be allowed to make generalized attacks on the Patent Office. It argues that such an attack would show inappropriate disrespect for a quasi-judicial administrative body. See, United States v. Morgan, 313 U.S. 409, 422, 85 L. Ed. 1429, 61 S. Ct. 999 (1941); Western Electric v. Pinezo Tech., 860 F.2d 428 (Fed. Cir. 1988). Applied also contends that a generalized attack would be irrelevant, because ASM has no evidence that the examiner who reviewed the application for the patents-in-suit were short of their "quotas," under bureaucratic pressure, or other factors that impacted the quality of their work. ASM counters that such evidence is necessary to rebut the presumption of validity and to provide [*10] the jury evidence to balance against Applied's reliance on the deference to be given to the decision of a government agency. [HN6] The presumption of validity is not substantive evidence - it is merely a procedural device assigning the burden of proof. Chore-Time Equip. Inc. v. Cumberland Corp., 713 F.2d 774, 780 (Fed. Cir. 1983). In other words, the presumption of validity merely explains why the attacker's burden is clear and convincing evidence. However, when the patentee relies upon the deference that is due to the Patent Office which is presumed to have properly done its job, the attacker can show that the Patent Office did not consider certain invalidating evidence, thus showing no need to defer. American Hoist & Derrick Co v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir.), cert. denied 469 U.S. 821, 105 S. Ct. 95, 83 L. Ed. 2d 41 (1984). The court finds that the type of evidence Applied seeks to exclude is properly excluded and will not prevent ASM from presenting appropriate evidence to try and meet its burden and to point out when deference to the Patent Office's determination is not appropriate (e.g. by showing through a technical [*11] expert and the prosecution history that the examiner did not consider pertinent prior art.) Testimony about overwork, quotas, awards or promotions at the Patent Office, or the number of patents that issue annually or insinuating that the Patent Office does not do its job properly is excluded. Such evidence would be irrelevant speculation and would constitute an inappropriate attack on the Patent Office. The court will reconsider this ruling, however, if Applied opens the door by presenting evidence suggesting that some extraordinary deference is due in this case.

6. Testimony About Patent Office Procedures that Do Not Relate to ASM's Only Defense of Obviousness. The parties do not dispute that Patent Office procedures unrelated to obviousness are not relevant. Therefore, Applied's motion to exclude such evidence is granted recognizing, however, that some general evidence about the Patent Office and its procedures is necessary to understand the Patent Office's function with respect to examining non-obviousness. 7. Evidence About Patent Office Burden Shifting Rules. The parties do not appear to dispute that the Patent Office's burden shifting rules are irrelevant. In any [*12] event, evidence pertaining to such rules is irrelevant and likely to be confusing to the jury who will be instructed on the burden of proof rules it must apply. Therefore, Applied's motion is granted and no evidence of the Patent's Office's burden shifting rules will be allowed absent a showing that some specific, relevant statement in the prosecution history cannot be understood without such an explanation. C. In Limine Re: Exclude Experts from Courtroom (ASM's Cross-Motion on Same Subject.) Applied submits that pursuant to F. R. E. 615 the parties' experts must be excluded from the courtroom. ASM counters that Rule 615(3) contains an exception for "a person whose presence is shown by a party to be essential to the presentation of the party's cause." The parties dispute whether ASM's counsel needs the assistance of its experts for the presentation of its cause. The court finds that an exception to the mandatory exclusion rule is supported here for ASM's technical expert, Seilheimer. The minimal danger that Seilheimer will substantially alter his testimony based upon prior testimony at trial, coupled with the compelling need for his expert assistance to counsel, supports [*13] the court's conclusion. Therefore, each party's one technical expert will be permitted to be present during trial. This ruling, of course, does not give license to either expert to unfairly bolster his opinions by adding bases upon which he did not rely at his deposition. D. In Limine Re: Nomura Evidence Applied moves to preclude ASM from presenting Nomura as a trial witness, because ASM engaged in

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discovery obstruction. ASM denies that it engaged in unfair tactics and claims Nomura's testimony is important to its assertion of obviousness. Nomura will apparently testify that while at ASM Japan he independently conceived reinforcing a quartz chamber with external ribs. This motion, unfortunately, requires the court to decide whether a party's conduct during discovery requires the exclusion of certain evidence. The court has reviewed in detail the various declarations, the transcript of the pretrial proceedings on February 2, 1995, and the parties' disclosures, letters and discovery responses. Although the court has some reservations about its conclusion, it finds that the Nomura evidence should not be excluded based upon the allegedly unfair actions of ASM. Nomura and [*14] the documents on which ASM intends to rely were disclosed over two years ago. Applied did not ask for Nomura's deposition until November 15, 1994. ASM advised on November 16, 1994 that: Because ASM does not presently intend upon presenting Mr. Nomura as a fact witness at trial, ASM will not bring him to the United States for a deposition. In the event ASM decides to use him as a fact witness, ASM will make him available. Apparently, ASM believed at that time that Nomura's conception was not independent of Goodwin's alleged conception. The fact that ASM's counsel had that belief causes the court to be a little suspicious of ASM's current claim that Nomura's conception was independent. n2 However, the court is not persuaded that there is sufficient evidence to support a conclusion that ASM is hiding evidence. The court has no reason to believe that counsel would engage in dishonest conduct and further finds that counsel's supervision of searches of files, although not technically in compliance with the court's February 2, 1995 order, was in good faith and reasonably thorough. n2 ASM's current claim, however, precludes Nomura as a witness to corroborate Goodwin's alleged conception. [*15]

ASM advised Applied on January 17, 1995, that it intended to use Nomura. At the pretrial conference on February 2, 1995, the court ordered ASM to make Nomura available for deposition and also initially ordered that an ASM American attorney in Japan declare that ASM Japan's files had been reviewed and all documents relevant to Nomura's alleged conception were being provided. After ASM advised that it did not have an attorney from the United States in Japan, the court ordered that a representative of ASM Japan declare that the files had been reviewed and that an Applied attorney had been provided access to the files. After the hearing, ASM decided to send Attorney Treska, one of its of counsel, to Japan and he has provided a detailed declaration of what was searched by him and others. Although this declaration does not technically comply with the modified version of the court's order, it does meet the substance of it. It was what the court had ordered before it learned that ASM did not have an American attorney in Japan - a situation that was remedied by sending Attorney Treska. The court is aware that Nomura stated at his deposition that he had not searched all of his files to see [*16] if there was anything related to development projects for reduced pressure Epsilon reactors. This evidence concerns the court but Nomura was not probed on what files existed that he did not search. The remainder of Nomura's deposition and Attorney Treska's declaration satisfies the court that a reasonable search was conducted and that Nomura should not be excluded as a fact witness. The court, although not pleased with ASM's handling of Nomura, is not convinced that Applied will be unfairly prejudiced by allowing him to testify. Therefore, Applied's motion to exclude Nomura evidence is denied. II. ASM'S MOTIONS A. In Limine Re: Letter from ASM's Counsel Describing ASM's Invalidity Contentions. ASM seeks to exclude from evidence Applied Exhibit 54, which is a January 5, 1995 letter from ASM's litigation counsel to Applied's litigation counsel which outlines certain of ASM's contentions. Since ASM is not now contesting infringement, Applied has withdrawn the exhibit. This issue is, therefore, moot. B. In Limine Manufacturers Re: Subpoenas of Quartz

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ASM seeks to exclude evidence of Applied's subpoenas to various third party quartz manufacturer on the basis that [*17] the subpoenas are not probative of any issue presently in the case. ASM also argues that any relevance of the subpoenas is outweighed by the likelihood that they will constitute a time consuming digression. F.R.E. 403. Applied argues that the fact that the subpoenas yielded no evidence of any quartz design close to Applied's patented design makes them relevant to the cross-examination of ASM's technical expert Seilheimer. The court believes that the subpoenas, and the responses thereto, may well be an appropriate subject for cross-examination and, therefore, will not exclude reference to them at this time. ASM's motion is, therefor, denied. C. In Limine Re: Skepticism Evidence ASM moves to exclude evidence of skepticism that Applied seeks to introduce as objective indicia of non-obviousness. ASM claims that despite discovery requests, Applied has never identified any such evidence. Applied denies that it has evaded discovery on this issue and further orally represented that the evidence is contained in depositions that have been taken. [HN7] Local Rule 235-7(i) provides that the pretrial statement contain a list of witnesses "together with a brief statement following each name [*18] describing the substance of the testimony to be given." Local Rule 235-7(j) requires a list of exhibits "with a brief statement following each describing its substance or purpose. . . ." Since Applied represents that the evidence is contained in the discovery, ASM's motion is denied on the condition that Applied supplements the pretrial statement within five (5) days with appropriate lists of witnesses and documents supporting its skepticism proof. D. In Limine Re: Evidence of Infringement ASM moves to exclude evidence at trial of infringement by ASM's accused CVD reactor, since ASM does not dispute infringement if invalidity is not proved. ASM says the evidence would be both a distraction and prejudicial. Applied responds that it does not plan to offer any evidence only relevant to infringement but believes that the fact that ASM infringes, if its invalidity claim fails, is of substantial probative value. Specifically, it shows that ASM's witnesses have a motive to embellish their testimony to help ASM and save their jobs. The court agrees that the point is a proper one for cross-examination. Applied must make clear, however,

that ASM is not contesting infringement except [*19] on the theory that one cannot infringe an invalid claim. Applied also may tell the jury that ASM gets to go first in presenting its opening, its evidence, and its argument because it has the burden of proof. However, there is no need to discuss what would have been the order of presentation had ASM contested infringement. With these understandings, ASM's motion to exclude evidence of infringement is denied. ASM, of course, is free to object to any evidence Applied seeks to offer on the basis that it is solely related to the non-disputed issue of infringement. E. In Limine Re: Other Patent Infringement Actions ASM moves to preclude the admission of evidence of the other prior or pending patent infringement actions between the parties. ASM argues that such evidence is irrelevant and, even if relevant, the relevance is outweighed by the danger of undue prejudice, confusion and delay. Applied agrees that prior liability findings are irrelevant but submits that the facts and circumstances of the prior litigation may prove relevant. Oral argument revealed little actual disagreement between the parties. Both appear to agree that prior testimony of experts may be relevant. The [*20] only issue on which the parties definitely disagree is on whether Applied's technical expert can support his opinion regarding the ordinary skill in the art by reference to Judge Ingram's finding of the level of ordinary skill in the art in case number C-91-20061. The court agrees with ASM that such reliance would be improper. The case is on appeal. The court seriously questions whether such a finding is the type of evidence on which expert's normally rely. Further, the prejudicial effect of the evidence would seem to outweigh its probative value, as it would be hard to get into Judge Ingram's finding without a discussion of the outcome of the case. Also, the court's finding, which is not yet final, might carry undue weight in the minds of the jurors. ASM's motion to exclude evidence is granted insofar as the court orders excluded evidence of liability findings in other litigation and reference to Judge Ingram's finding on the level of ordinary skill in the art in case number C-91-20061. It is otherwise denied as premature. Reference to other litigation may be necessary if expert testimony from any of those proceedings is relevant for some purpose. The existence of other litigation [*21] in

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and of itself, of course, has no relevance. F. In Limine Re: Testimony of Tom Thompson Re: Prior Work at AG Associates ASM also seeks to exclude the testimony of Thompson regarding a purported failed attempt to design a thick-walled quartz reactor chamber to withstand reduced-pressure operation. ASM asserts that Thompson is not competent to testify because the purported attempt was made by a company known as AG Associates before he started to work there. Therefore, since he has no personal knowledge, he is barred by F.R.E. 602 which says a witness cannot testify to a matter absent personal knowledge of it. Further, argues ASM, anything Thompson was told would be inadmissible hearsay under F.R.E. 801 and 802. Applied counters that Thompson's testimony is relevant because the recognition of need and difficulties encountered by those skilled in the field are indicia of unobviousness. Applied says Thompson's testimony is admissible because he has personal knowledge of the thick walled chamber and the tests that were run on it showing that the walls got too hot. He also knows that his company abandoned work on a thick-walled reactor. Assuming Applied can lay a foundation [*22] that Thompson has first hand knowledge of these events, he is competent to testify. However, his deposition testimony is not clear as to whether the testing was done before he arrived and how he has knowledge of the test results. It appears he may have observed the test results himself or it may be that he was merely informed by others who did testing before he arrived. If he has no personal knowledge of the testing, he would not be competent to testify as to what those results showed. In other words, he could testify that AG had a thick-walled chamber and that AG abandoned the project on it, but he could not testify as to the reason. The state of mind hearsay exception (F.R.E. 803(3)) does not apply. Nor can the statement of the reason the project was abandoned be considered a non-hearsay statement if offered for the truth of the reason. It is not an assessment of a product's quality and marketability of the type executives make inferentially from what they are told by customers and engineers as was the assessment in the case of Agfa-Gevart, A.G. v. A.B. Dick Co., 879 F.2d 1518, 1523 (7th Cir. 1989) cited by Applied.

ASM's motion to exclude is denied. However, before [*23] the evidence can be received, Applied will have to lay a proper foundation showing personal knowledge for its admissibility. G. In Limine Re: Failed Attempts by Others and Long Felt Need ASM moves to exclude evidence of failed attempts by others and long felt need as objective indicia of non-obviousness. The same analysis and ruling is appropriate here as in the case of the skepticism evidence discussed in II C above. Therefore, ASM's motion is denied on the condition that Applied supplements the pretrial statement within five (5) days with the appropriate lists of witnesses and documents supporting its failed attempts and long felt need proof. H. Motion to Add Russian Reference ASM moves to add a recently obtained prior art publication (the "Russian Reference") to its trial exhibit list. It claims it only recently discovered the reference. Applied argues that ASM has failed to adequately explain why the reference was not found earlier and claims it will be prejudiced by the late addition. The court believes that ASM has shown sufficient justification for its late disclosure and that any prejudice to Applied can be minimized, if not eliminated, by: (1) requiring [*24] ASM to produce Seilheimer at a reasonable time and location designated by Applied for further deposition; (2) precluding reference to the Russian reference by any ASM witness other than Seilheimer; and (3) requiring ASM to supplement its expert disclosure at least twenty-four hours before Seilheimer's supplemental deposition with an explanation of how the art fits into ASM's obviousness claim. ASM's motion to add the Russian Reference is granted on the above conditions. DATED: 4/25, 1995 RONALD M. WHYTE United States District Judge

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FULLY REDACTED

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EXHIBIT 3

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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 I3.B: FINAL JURY INSTRUCTIONS [PATENT] Plaintiff Telcordia Technologies, Inc. ("Telcordia") and Defendants Cisco Systems, Inc. and Lucent Technologies Inc. ("Defendants") submit the following proposed preliminary jury instructions and objections as of March 2, 2007. The parties reserve the right to submit

modifications to these instructions and/or additional instructions on any pertinent issue, if the need arises.1 In submitting these instructions, Defendants note that it may be prudent to alleviate potential jury confusion by providing separate instructions for Cisco and Lucent, where
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ASHBY & GEDDES Steven J. Balick (I.D. #2114) John G. Day (I.D. #2403) 222 Delaware Avenue, 17th Floor P.O. Box 1150 Wilmington, Delaware 19899-1150 (302) 654-1888 [email protected] [email protected] Donald R. Dunner Steven M. Anzalone Griffith B. Price James T. Wilson John M. Williamson FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 901 New York Avenue, NW Washington, DC 20001-4413 (202) 408-4000 Attorneys for Plaintiff Telcordia Technologies Inc.

MORRIS, NICHOLS, ARSHT & TUNNELL Jack B. Blumenfeld (I.D. #1014) Leslie A. Polizoti (I.D. #4299) 1201 North Market Street Wilmington, DE 19899-1347 (302) 658-9200 [email protected] [email protected] Matthew D. Powers Edward R. Reines Jessica Davis Sonal N. Mehta WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 (650) 802-3000 Attorneys for Defendant Cisco Systems, Inc. in C.A.

appropriate, rather than having the instructions state "Lucent or Cisco," "Lucent and Cisco," and "Lucent and/or Cisco." Defendants will address this issue with Telcordia during the parties' meet and confer regarding the jury instructions.

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YOUNG CONAWAY STARGATT & TAYLOR LLP John W. Shaw (I.D. #3362) The Brandywine Building 1000 West Street Wilmington, DE 19801 (302) 571-6600 [email protected] Steven C. Cherny LATHAM & WATKINS LLP 885 Third Avenue, Suite 1000 New York, NY 10022 (212) 906-1200 David A. Nelson Israel Sasha Mayergoyz. David C. McKone LATHAM & WATKINS LLP Sears Tower, Suite 5800 Chicago, IL 60606 (312) 876-7700 Sean S. Pak LATHAM & WATKINS LLP 633 West Fifth Street, Suite 4000 Los Angeles, CA 90071-2007 (213) 485-1234 Attorneys for Defendant Lucent Technologies Inc.

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FINAL JURY INSTRUCTIONS TABLE OF CONTENTS (PLAINTIFF'S PROPOSED CONTENT AND ORDER) 1. GENERAL INSTRUCTIONS 1.1 INTRODUCTION 1.2 JURORS' DUTIES 1.3 BURDENS OF PROOF 1.4 EVIDENCE DEFINED 1.5 CONSIDERATION OF EVIDENCE 1.6 DIRECT AND CIRCUMSTANTIAL EVIDENCE 1.7 CREDIBILITY OF WITNESSES 1.8 NUMBER OF WITNESSES 1.9 EXPERT WITNESSES THE PARTIES' CONTENTIONS 2.1 THE PARTIES 2.2 TELCORDIA'S CONTENTIONS 2.3 LUCENT AND CISCO'S CONTENTIONS 2.4 SUMMARY OF PATENT ISSUES INFRINGEMENT 3.1 CLAIM INFRINGEMENT 3.2 CONSTRUCTION OF CLAIMS 3.3 PATENT INFRINGEMENT -- GENERALLY 3.4 INFRINGEMENT -- KNOWLEDGE OF PATENT OR INTENT TO INFRINGE IS IMMATERIAL 3.5 INDUCING PATENT INFRINGEMENT 3.6 CONTRIBUTORY INFRINGEMENT 3.7 LITERAL INFRINGEMENT 3.8 DOCTRINE OF EQUIVALENTS 3.9 MEANS-PLUS-FUNCTION CLAIMS 3.10 INFRINGEMENT DESPITE DEFENDANT'S IMPROVEMENTS OR PATENTS ON IMPROVEMENTS 3.11 WILLFUL INFRINGEMENT VALIDITY DEFENSES 4.1 PRESUMPTION OF PATENT VALIDITY 4.2 DEFINITENESS UNDER 35 U.S.C. §112 4.3 BEST MODE 4.4 ANTICIPATION 4.5 WHAT IS PRIOR ART 4.5.1 PRINTED PUBLICATIONS AS PRIOR ART 4.5.2 PRIOR UNITED STATES PATENT APPLICATION AS PRIOR ART 4.5.3 NON-ENABLING REFERENCES

2.

3.

4.

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4.6

4.7 4.8 5.

4.5.4 REFERENCES DESCRIBING THE INVENTOR'S WORK OBVIOUSNESS 4.6.1 SCOPE AND CONTENT OF THE PRIOR ART 4.6.2 DIFFERENCES OVER THE PRIOR ART 4.6.3 LEVEL OF ORDINARY SKILL 4.6.4 OBJECTIVE CRITERIA CONCERNING OBVIOUSNESS (SECONDARY CONSIDERATIONS) 4.6.5 OBVIOUSNESS - HINDSIGHT 4.6.6 EXPRESSIONS OF DISBELIEF 4.6.7 TEACHING AWAY OF PRIOR ART 4.6.8 OBVIOUS TO TRY ENABLEMENT WRITTEN DESCRIPTION

EQUITABLE DEFENSES 5.1 LACHES 5.2 EQUITABLE ESTOPPEL 5.3 IMPLIED LICENSE 5.4 PATENT MISUSE 5.5 PATENT EXHAUSTION 5.6 UNCLEAN HANDS 5.7 INTERVENING RIGHTS 5.8 INEQUITABLE CONDUCT - GENERALLY 5.9 MATERIALITY 5.10 INTENT TO DECEIVE OR MISLEAD 5.11 BALANCING OF MATERIALITY AND INTENT DAMAGES 6.1 COMPENSATORY DAMAGES IN GENERAL 6.2 BURDEN OF PROOF 6.3 NOTICE AND MARKING 6.4 ENTIRE MARKET VALUE RULE 6.5 REASONABLE ROYALTY AS A MEASURE OF DAMAGES 6.6 FACTORS FOR DETERMINING REASONABLE ROYALTY 6.7 CURATIVE INSTRUCTION DELIBERATIONS AND VERDICT 7.1 INTRODUCTION 7.2 UNANIMOUS VERDICT 7.3 DUTY TO DELIBERATE 7.4 COURT HAS NO OPINION

6.

7.

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FINAL JURY INSTRUCTIONS TABLE OF CONTENTS (DEFENDANTS' PROPOSED CONTENT AND ORDER)

1.

GENERAL INSTRUCTIONS 1.1 INTRODUCTION 1.2 JURORS' DUTIES 1.3 BURDENS OF PROOF 1.4 EVIDENCE DEFINED 1.5 CONSIDERATION OF EVIDENCE 1.6 DIRECT AND CIRCUMSTANTIAL EVIDENCE 1.7 CREDIBILITY OF WITNESSES 1.8 NUMBER OF WITNESSES 1.9 EXPERT WITNESSES THE PARTIES' CONTENTIONS 2.1 THE PARTIES 2.2 TELCORDIA'S CONTENTIONS 2.3 LUCENT AND CISCO'S CONTENTIONS 2.4 SUMMARY OF PATENT ISSUES INFRINGEMENT 3.1 CLAIM INFRINGEMENT 3.2 CONSTRUCTION OF CLAIMS 3.3 PATENT INFRINGEMENT -- GENERALLY 3.4 3.5 INDUCING PATENT INFRINGEMENT 3.6 CONTRIBUTORY INFRINGEMENT 3.7 LITERAL INFRINGEMENT 3.8 DOCTRINE OF EQUIVALENTS 3.9 MEANS-PLUS-FUNCTION CLAIMS 3.10 INFRINGEMENT DESPITE DEFENDANT'S IMPROVEMENTS OR PATENTS ON IMPROVEMENTS 3.11 WILLFUL INFRINGEMENT VALIDITY DEFENSES 4.1 4.2 DEFINITENESS UNDER 35 U.S.C. §112 4.3 BEST MODE 4.4 ANTICIPATION 4.5 WHAT IS PRIOR ART 4.5.1 PRINTED PUBLICATIONS AS PRIOR ART 4.5.__ PATENT AS PRIOR ART 4.5.2

2.

3.

4.

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4.6

4.5.3 4.5.4 REFERENCES DESCRIBING THE INVENTOR'S WORK OBVIOUSNESS 4.6.1 SCOPE AND CONTENT OF THE PRIOR ART 4.6.2 DIFFERENCES OVER THE PRIOR ART 4.6.3 LEVEL OF ORDINARY SKILL 4.6.4 OBJECTIVE CRITERIA CONCERNING OBVIOUSNESS (SECONDARY CONSIDERATIONS) 4.6.5 4.6.6 4.6.7 4.6.8

4.7 4.8 4.__ 5.

INVENTORSHIP

EQUITABLE DEFENSES 5.1 LACHES 5.2 EQUITABLE ESTOPPEL 5.3 5.4 PATENT MISUSE 5.5 5.6 UNCLEAN HANDS 5.7 INTERVENING RIGHTS 5.8 INEQUITABLE CONDUCT - GENERALLY 5.9 MATERIALITY 5.10 INTENT TO DECEIVE OR MISLEAD 5.11 BALANCING OF MATERIALITY AND INTENT DAMAGES 6.1 COMPENSATORY DAMAGES IN GENERAL 6.2 BURDEN OF PROOF 6.3 NOTICE AND MARKING 6.4 6.5 REASONABLE ROYALTY AS A MEASURE OF DAMAGES 6.6 FACTORS FOR DETERMINING REASONABLE ROYALTY 6.7 CURATIVE INSTRUCTION DELIBERATIONS AND VERDICT 7.1 INTRODUCTION 7.2 UNANIMOUS VERDICT 7.3 DUTY TO DELIBERATE 7.4 COURT HAS NO OPINION

6.

7.

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1. GENERAL INSTRUCTIONS 1.1 INTRODUCTION (AGREED) 2 Members of the jury, now it is time for me to instruct you about the law that you must follow in deciding this case. Each of you has been provided a copy of these instructions. You may read along as I deliver them if you prefer, however, I would encourage you to focus your attention on me while the instructions are being read. You will be able to take your copies with you into your deliberations and refer to them at that time, if necessary. I will start by explaining your duties and the general rules that apply in every civil case. Then I will explain some rules that you must use in evaluating particular testimony and evidence. Then I will explain the positions of the parties and the law you will apply in this case. And last, I will explain the rules that you must follow during your deliberations in the jury room, and the possible verdicts that you may return. Please listen very carefully to everything I say. Source: Uniform Jury Instructions for Patent Cases in The United States District Court for the District of Delaware (March 1993) ("Uniform Instructions") § 1.1;3 Johns

In an effort to narrow the issues and streamline the process, Defendants have, where appropriate, "Agreed" to Telcordia's proposed instructions. Defendants' agreement to these instructions is not meant to suggest that Defendants agree with Telcordia's case law support or its application thereof. Defendants globally object to Telcordia's reliance on the Uniform Jury Instructions for Patent Cases in The United States District Court for the District of Delaware (March 1993) insofar as those instructions have been superseded by the 2004 Uniform Jury Instructions for Patent Cases in The United States District Court for the District of Delaware, and do not accurately reflect the law as it has developed in the intervening 14 years. Where Defendants rely on the Uniform Jury Instructions for Patent Cases in The United States District Court for the District of Delaware, they rely on the current version of those instructions ("2004 Uniform Instructions"). In some cases, Defendants have adopted the model instruction and in others, Defendants have tailored the model instruction to the specific issues in this case.
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2

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Hopkins Univ. v. CellPro, 894 F. Supp. 819, 829 (D. Del. 1995); Miscellaneous Jury Instructions (GMS) Rev: 1/18/06.

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1.2 JURORS' DUTIES (AGREED) Members of the Jury, it is important that you bear in mind the distinction between your duties and my duties. You have two main duties as jurors. The first one is to decide what the facts are from the evidence that you saw and heard here in court. You are the sole judges of the facts. It is your judgment, and your judgment alone, to determine what the facts are, and nothing that I have said or done during this trial was meant to influence your decision about the facts in any way. Your second duty is to take the law that I give you, apply it to the facts, and decide whether the defendants are liable. It is my job to instruct you about the law and about what the claims of the patent mean, and you are bound by the oath that you took at the beginning of the trial to follow the instructions that I give you, even if you personally disagree with them. This includes the instructions that I gave you before and during the trial, and these instructions. All the instructions are important, and you should consider them together as a whole. Perform these duties fairly. Do not let any bias, sympathy or prejudice that you may feel toward one side or the other influence your decision in any way. Source: Adapted from Uniform Instructions § 1.2; CellPro, 894 F. Supp. at 829; Miscellaneous Jury Instructions (GMS) Rev. 1/18/06.

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1.3 BURDENS OF PROOF (DISPUTED) Plaintiff's Instruction This is a civil case in which the plaintiff, Telcordia, is charging the defendants, Lucent and Cisco, with patent infringement. Telcordia alleges that Lucent and Cisco have infringed the asserted claims of Telcordia's patents. Telcordia has the burden of proving patent infringement by a preponderance of the evidence. That means that Telcordia has to produce evidence which, when considered in light of all of the facts, leads you to believe that what Telcordia claims is more likely true than not. To put it differently, if you were to put Telcordia's and the

defendants' evidence relating to infringement on the opposite sides of a scale, the evidence supporting Telcordia's claims would have to make the scales tip somewhat on Telcordia's side. Telcordia further urges that Lucent's and Cisco's infringement has been willful. Telcordia has the burden of proving that Lucent's and Cisco's infringement was willful by clear and convincing evidence. Clear and convincing evidence is evidence that produces an abiding conviction that a factual contention is true. Proof by clear and convincing evidence is thus a higher burden than proof by a preponderance of the evidence. In this case, Lucent and Cisco are urging that Telcordia's patents are invalid and unenforceable. A patent, however, is presumed to be valid and enforceable. Accordingly, Lucent and Cisco have the burden of proving that Telcordia's patents are invalid or unenforceable by clear and convincing evidence. Those of you who are familiar with criminal cases will have heard the term "proof beyond a reasonable doubt." That burden does not apply in a civil case and you should, therefore, put it out of your mind in considering whether or not the plaintiff or defendant has met its burden of proof. Source: Adapted from Uniform Instructions § 1.3; CellPro, 894 F. Supp. at 829; 35 U.S.C. § 282; Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464 (Fed. Cir. 1990).

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Defendants' Objections Defendants object to Plaintiff's proposed instruction because it includes an instruction on the presumption of validity. Such an instruction is likely to be confusing and is unsupported by current Federal Circuit case law. The presumption itself is not entitled to any evidentiary weight and, therefore, an instruction on the presumption is cumulative of the instruction on the burden of proof. Including both an instruction on the burden of proof and a statement as to the

presumption of validity may suggest to the jury that that presumption has some separate evidentiary weight. See Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1259 (Fed. Cir. 2004) ("[T]he presumption of validity and heightened burden of proving invalidity `are static and in reality different expressions of the same thing ­ a single hurdle to be cleared.'") (upholding district court's decision to not instruct the jury on the presumption of validity); SSIH Equip. S.A. v. U.S. Int'l Trade Comm'n, 718 F.2d 365, 375 (Fed. Cir. 1983) ("The presumption of validity afforded by 35 U.S.C. § 282 does not have independent evidentiary value. Rather the

presumption places the burden of going forward, as well as the burden of persuasion, upon the party asserting invalidity."); Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1562 (Fed. Cir. 1988) ("[T]he presumption is a procedural device, which assigns the burden of going forward as well as the burden of proof of facts to the challenger. . . . [T]he presumption is one of law, not fact, and does not constitute `evidence' to be weighed against a challenger's evidence."). Consequently, Telcordia's proposed instruction invites the jury to err by assigning evidentiary weight both to the presumption and to the heightened burden of proof and should not be adopted. Defendants further object to this instruction as misleading insofar as it suggests that Telcordia need only prove infringement with respect to Lucent's or Cisco's products or methods.

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Telcordia has the burden of proving infringement by each Defendant separately, and the instruction should, at a minimum, clarify that to avoid potential juror confusion. * * *

Defendants' Instruction This is a civil case in which the plaintiff, Telcordia, is charging the defendants, Lucent and Cisco, with patent infringement. Telcordia alleges that Lucent and Cisco have infringed the asserted claims of Telcordia's patents. Telcordia has the burden of proving patent infringement by a preponderance of the evidence. That means that Telcordia has to produce evidence which, when considered in light of all of the facts, leads you to believe that what Telcordia claims is more likely true than not. To put it differently, if you were to put Telcordia's and the

defendants' evidence relating to infringement on the opposite sides of a scale, the evidence supporting Telcordia's claims would have to make the scales tip somewhat on Telcordia's side. Telcordia further urges that Cisco's infringement of the '633 and '763 patents has been willful. Telcordia also urges that Lucent's infringement of the '633 patent has been willful. Telcordia has the burden of proving willful infringement by clear and convincing evidence. Clear and convincing evidence is evidence that produces an abiding conviction that a factual contention is true. Proof by clear and convincing evidence is thus a higher burden than proof by a preponderance of the evidence. In this case, Lucent and Cisco are urging that Telcordia's patents are invalid and unenforceable. Lucent and Cisco have the burden of proving that Telcordia's patents are invalid or unenforceable by clear and convincing evidence. Those of you who are familiar with criminal cases will have heard the term "proof beyond a reasonable doubt." That burden does not apply in a civil case and you should, therefore, put it out of your mind in considering whether or not the plaintiff or defendant has met its burden of proof.

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Source:

2004 Uniform Instructions § 1.3.

Plaintiff's Objections

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1.4 EVIDENCE DEFINED (AGREED) You must make your decision based only on the evidence that you saw and heard here in court. Do not let rumors, suspicions, or anything else that you may have seen or heard outside of court influence your decision in any way. The evidence in this case includes only what the witnesses said while they were testifying under oath, deposition transcript testimony that was read to you, the exhibits that I allowed into evidence, the stipulations that the lawyers agreed to, and the facts that I have judicially noticed. Certain charts, summaries, and graphics have been used to illustrate testimony from witnesses. These charts, summaries, and graphics are not themselves evidence, and are only as good as the underlying evidence supporting them. You should, therefore, give them only as much weight as you think the underlying evidence deserves. Nothing else is evidence. The lawyers' statements and arguments are not evidence. Their questions and objections are not evidence. My legal rulings are not evidence. Any of my comments and questions are not evidence. During the trial I may have not let you hear the answers to some of the questions that the lawyers asked. I also may have ruled that you could not see some of the exhibits that the lawyers wanted you to see. And sometimes I may have ordered you to disregard things that you saw or heard, or I struck things from the record. You must completely ignore all of these things. Do not even think about them. Do not speculate about what a witness might have said if he or she had been allowed to answer, or what an exhibit might have shown had I admitted it. These things are not evidence, and you are bound by your oath not to let them influence your decision in any way. Make your decision based only on the evidence, as I have defined it here, and nothing else. Source: Uniform Instructions § 1.4; CellPro, 894 F. Supp. at 830.

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1.5 CONSIDERATION OF EVIDENCE (AGREED) You should use your common sense in weighing the evidence. Consider it in light of your everyday experience with people and events, and give it whatever weight you believe it deserves. If your experience tells you that certain evidence reasonably leads to a conclusion, you are free to reach that conclusion. Source: Miscellaneous Jury Instructions (GMS) Rev: 1/18/06; Uniform Instructions § 1.5; CellPro, 894 F. Supp. at 830.

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1.6 DIRECT AND CIRCUMSTANTIAL EVIDENCE (AGREED) Now, some of you may have heard the terms "direct evidence" and "circumstantial evidence." Direct evidence is simply evidence like the testimony of an eyewitness which, if you believe it, directly proves a fact. If a witness testified that he saw it raining outside, and you believed him, that would be direct evidence that it was raining. Circumstantial evidence is simply a chain of circumstances that indirectly proves a fact. If someone walked into the courtroom wearing a raincoat covered with drops of water and carrying a wet umbrella, that would be circumstantial evidence from which you could conclude that it was raining. It is your job to decide how much weight to give the direct and circumstantial evidence. The law makes no distinction between the weight that you should give to either one, nor does it say that one is any better evidence than the other. You should consider all the evidence, both direct and circumstantial, and give it whatever weight you believe it deserves. Source: Miscellaneous Jury Instructions (GMS) Rev: 1/18/06; Uniform Instructions § 1.6; CellPro, 894 F. Supp. at 830.

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1.7 CREDIBILITY OF WITNESSES (AGREED) You are the sole judges of each witness's credibility. You should consider each witness's means of knowledge; strength of memory; opportunity to observe; how reasonable or unreasonable the testimony is; whether it is consistent or inconsistent; whether it has been contradicted; the witness's biases, prejudices, or interests; the witness's manner or demeanor on the witness stand; and all circumstances that, according to the evidence, could affect the credibility of the testimony. If you find the testimony to be contradictory, you must try to reconcile it, if reasonably possible, so as to make one harmonious story of it all. But if you can't do this, then it is your duty and privilege to believe the testimony that, in your judgment, is most believable and disregard any testimony that, in your judgment, is not believable. In determining the weight to give to the testimony of a witness, you should ask yourself whether there is evidence tending to prove that the witness testified falsely about some important fact, or, whether there was evidence that at some other time the witness said or did something, or failed to say or do something that was different from the testimony he or she gave at trial. You have the right to distrust such witness's testimony in other particulars and you may reject all or some of the testimony of that witness or give it such credibility as you may think it deserves. You should remember that a simple mistake by a witness does not necessarily mean that the witness was not telling the truth. People may tend to forget some things or remember other things inaccurately. If a witness has made a misstatement, you must consider whether it was simply an innocent lapse of memory or an intentional falsehood, and that may depend upon whether it concerns an important fact or an unimportant detail. This instruction applies to all witnesses. Source: Miscellaneous Jury Instructions (GMS) Rev: 1/18/06. 11

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1.8 NUMBER OF WITNESSES (AGREED) One more point about the witnesses. witnesses who testified makes any difference. Do not make any decisions based only on the number of witnesses who testified. What is more important is how believable the witnesses were, and how much weight you think their testimony deserves. Concentrate on that, not the numbers. Source: Miscellaneous Jury Instructions (GMS) Rev: 1/18/06; Uniform Instructions § 1.8; CellPro, 894 F. Supp. at 830-31. Sometimes jurors wonder if the number of

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1.9 EXPERT WITNESSES (AGREED) Expert testimony is testimony from a person who has a special skill or knowledge in some science, profession, or business. This skill or knowledge is not common to the average person but has been acquired by the expert through special study or experience. In weighing expert testimony, you may consider the expert's qualifications, the reasons for the expert's opinions, and the reliability of the information supporting the expert's opinions, as well as the factors I have previously mentioned for weighing testimony of any other witness. Expert testimony should receive whatever weight and credit you think appropriate, given all the other evidence in the case. Source: Miscellaneous Jury Instructions (GMS) Rev: 1/18/06.

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2. THE PARTIES' CONTENTIONS 2.1 THE PARTIES (DISPUTED)

Plaintiff's Instruction The plaintiff is Telcordia Technologies, Inc. Telcordia owns United States Patent Nos. 4,893,306, 4,835,763 and Re. 36,633. The defendants in this case are Lucent Technologies Inc. and Cisco Systems, Inc. For convenience, I will refer to the plaintiff as Telcordia and the defendants as Lucent and Cisco. Source: Adapted from Uniform Instructions § 2.1, CellPro, 894 F. Supp. at 831. Defendants' Objections Defendants object to Telcordia's instruction because it does not accurately reflect the parties' contentions and instead contains improper argument. * * *

Defendants' Instruction The plaintiff is Telcordia Technologies, Inc. Telcordia asserts that it owns United States Patent Nos. 4,893,306, 4,835,763 and Re. 36,633. The defendants in this case are Lucent Technologies Inc. and Cisco Systems, Inc. For convenience, I will refer to the plaintiff as Telcordia and the defendants as Lucent and Cisco, or collectively as Defendants. As I noted at the start of the trial, I will refer to the asserted patents by their last three numbers: the '306 patent, the '763 patent, and the '633 patent.

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2.2 TELCORDIA'S CONTENTIONS Plaintiff's Instruction

(DISPUTED)

Telcordia contends that Lucent and Cisco have infringed claims 1, 2, 7, and 8 of Telcordia's '763 patent, and claims 11 and 33 of Telcordia's '633 patent by making, using, selling and offering for sale telecommunications devices that fall within or perform methods falling within the scope of one or more of those claims, and by inducing and contributing to infringement by others. Telcordia contends that Cisco's infringement of the '763 and '633 patents is willful because Cisco was notified of the '763 patent on or about September 7, 2001, and Cisco was notified of the original patent (U.S. Patent No. 5,260,978) from which the '633 patent reissued on or about March 14, 1994, and yet Cisco did not exercise its affirmative duty to avoid infringement when it continued to make, use, sell, and offer for sale its products that fall within or perform methods falling within the scope of the '763 and '633 patents. Telcordia contends that Lucent's infringement of the '633 patent is willful because Lucent was notified of the original patent (U.S. Patent No. 5,260,978) from which the '633 patent reissued on or about January 8, 1997, and yet Lucent did not exercise its affirmative duty to avoid infringement when it continued to make, use, sell, and offer for sale its products that fall within or perform methods falling within the scope of the '633 patent. Telcordia contends that it has been damaged by Lucent's and Cisco's infringement of the '763 and '633 patents, and that Telcordia is thus entitled to, among other things, an award of a reasonable royalty, as provided by statute. Telcordia contends that none of claims 1, 2, 7, or 8 of the '763 patent is invalid or unenforceable for any of the reasons alleged by Lucent and Cisco, and that none of claims 11 or 33 of the '633 patent is invalid or unenforceable for any of the reasons alleged by Lucent and Cisco. Telcordia contends that Cisco's defenses of implied license, patent misuse, equitable

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