Free Reply Brief - District Court of Delaware - Delaware

Case 1 :04-cv—00875-GIVIS Document 319 Filed 03/01 /2007 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
TELCORDIA TECHNOLOGIES, INC., )
)
Plaintiff/Counterclaim Defendant, ) .
· )
v. ) Civil Action No. 04-875 -GMS
)
LUCENT TECHNOLOGIES INC., )
)
Defendant/Counterclaim Plaintiff. )
TELCORDIA TECHNOLOGIES, INC., )
’ )
Plaintiff/Counterclaim Defendant, )
)
v. )
)
CISCO SYSTEMS, INC., ) Civil Action No. 04-876-GMS
)
Defendant/Counterclaim Plaintiff. ) V
. )
TELCORDLA TECHNOLOGIES, INC.’S REPLY BRIEF
IN SUPPORT OF TELCORDIA TECHNOLOGIES, INC.’S MOTION IN LIMINE NO. 2:
MOTION TO PRECLUDE DEFENDAN TS FROM PRESENTING EXPERT OPINIONS
ON VALIDITY AND UNENFORCEABHJTY BY AN ADDITIONAL EXPERT WHO
NEVER PREPARED OR SUBIVHTTED AN OPENING EXPERT REPORT ON
Y INVALIDITY AND UNENFORCEABILITY
ASHBY & GEDDES
Steven J. Balick (I.D. #21 14)
Of Counsel: John G. Day (I.D. #2403)
Tiffany Geyer Lydon (I.D. #3950)
Donald R. Dunner 500 Delaware Avenue, 8th Floor
Steven M. Anzalone P.O. Box 1150
' Richard H. Smith Wilmington, Delaware 19899
James T. Wilson (302) 654-1888
John M. Williamson sbalick@ashby-geddescom
FINNEGAN, HENDERSON, FARABOW, jday@ashby-geddescom
GARRETT & DUNNER, L.L.P. tlydon@ashby—geddes.com
901 New York Ave., N.W.
Washington, D.C. 20001 Attorneys for Plaintyf
(202) 408·4000 T elcordio Technologies, Inc
h Dated: March 1, 2007

Case 1 :04-cv—00875-GIVIS Document 319 Filed 03/01 /2007 Page 2 of 4
U Telcordia’s Motion in Limine No. 2 asks the Court to prevent defendants from switching expert ‘
horses in mid—stream so that they can present expert testimony by Dr. Anthony Acampora on validity and
enforeceability of the ’633 patent even though it was Dr. Jones who actually submitted the opening expert
report on those issues. As Telcordia’s motion pointed out, defendants’ approach violates the Federal
Rules of Civil Procedure and this Court’s scheduling order. In their response to Telcordia’s motion,
defendants provide no compelling justification for departing from those rules and allowing the switch.
V Amazingly, defendants argue that it is Telcordia’s fault that defendants switched experts after the
applicable deadlines. (D.I. 304, Ex. 2 at l-3). Specifically, defendants disclaim any responsibility for
their own strategic choices and instead paint Telcordia’s ITC action as the culprit, claiming that their A
original expert, Dr. Jones, was actually Alcatel’s choice as an expert and that once Alcatel decided to stay
· the district court proceedings against it pursuant to 28 U.S.C. § l659(a), it was only natural that the
defendants would jettison Dr. Jones in favor of Dr. Acampora. But defendants’ tactics are their own, and
they should be required to live with their own strategies. It was defendants’ choice, not Telcordia’ s, to
jointly hire experts and divide the technical subjects in the case among the diff`erent experts. While that
A approach can result in efficiencies, there was always a risk that one defendant would leave the case, for
example by settling, leaving the other defendants relying on an expert that was hired and handled by the
now absent party. It was also defendants’ choice to continue litigating in this forum even though Alcatel
chose not to. Cisco and Lucent cannot now lay the natural consequences of their strategic litigation
decisions at Telcordia’s feet.
n Aside from attempting to disclaim any responsibility for the predicament they created, defendants
also provide no satisfactory justification for switching experts in the first place. When Alcatel’s case was
active, Cisco and Lucent were satisfied with Dr. Jones as their expert on invalidity and unenforceability A
and would apparently have presented his testimony at trial without complaint. Nothing changed after
‘ Alcatel opted for a stay—Dr. Jones is just as experienced and competent as he was when he submitted his
initial report, and defendants have never identified any reason why he could not attend the trial and
present his expected testimony.
l

Case 1 :04-cv—00875-GIVIS Document 319 Filed 03/01 /2007 Page 3 of 4
A Other than merely expressing a personal preference for Dr. Acampora over Dr. Jones, a
preference Telcordia believes is the result of the weakness in Dr. Jones’ positions that became clear once
Telcordia submitted its reply report, defendants claim that allowing Dr. Acampora to testify instead of Dr.
Jones would be more efficient. But requiring defendants to stick to their original lineup of experts would
· result in the same trial testimony they intended to present all along. If that is "ineflicient for the Court,
the jury and the litigants" as defendants claim, see D.I. 304, Ex. 2 at 3, then that is the trial presentation
defendants originally chose and, again, they should be required to live with their choice.] Further, the
search for efficiency cannot override the Court’s scheduling order and the expert report requirements of
_ _ the Federal Rules, since litigants can nearly always point to some purported gain in efficiency to justify
whatever late change they want to make to their trial presentation.
Finally, defendants claim they will be prejudiced if they are forced to use their original expert,
Dr. Jones, on some ’633 patent issues and Dr. Acampora on others. (D.I. 304, Ex. 2 at 5). But again, that
was defendar1ts’ original trial plan—present Dr. J ones’ testimony on ’633 patent validity and
A enforceability and Dr. Acampora’s testimony on ’633 patent non-infringement. Defendants cannot claim
that they will suffering prejudice if they are required to use the exact same witnesses they originally told
Telcordia and the Court they intended to use.
Defendants committed to using Dr. Jones as their expert witness on the ’633 patent validity and
" enforceability issues, and Dr. Jones is the only expert who submitted a valid expert report on those issues.
As a result, defendants should be limited to their chosen expert—Dr. Jones, and Dr. Acampora should be
prevented from testifying about the ’633 patent validity and enforceability issues since they were never in
his original expert reports. l
1 Defendants point out that Telcordia is using only two experts as well, D.I. 304, Ex. 2 at 3, but
Telcordia made that choice at the appropriate point in the litigation, not long after its expert reports were
originally due.
-

Case 1 :04-cv—OO875-GIVIS Document 319 Filed 03/01/2007 Page 4 of 4
ASHBY & GEDDES
/s/ T yjicmy Geyer Lydon
_ Steven J. Balick (l.D. #2114)
John G. Day (I.D. #2403) _
Tiffany Geyer Lydon (I.D. #3950)
500 Delaware Avenue, 8th Floor
P.O. Box 1 150
Wilmington, Delaware 19899
(302) 654-1888
[email protected]
[email protected]
· t1ydon@,ashby-geddes.com
Attorneys for Plaintyf
Of Counsel: T elcordia Technologies, Inc
Donald R. Durmer
Steven M. Anzalone
Richard H. Smith
_ James T. Wilson A
John M. Williamson -
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
901 New York Ave., N.W.
Washington, D.C. 20001
(202) 408-4000
Dated: March 1, 2007 .
. 178408.1 1
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