Free Redacted Document - District Court of Delaware - Delaware

Case 1 :05-cv-00048-SLR Document 281 Filed 10/06/2006 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
HITACHI, LTD. and HITACHI AUTOMOTIVE )
PRODUCTS (USA), INC., )
)
Plaintiffs, )
)
v. )
) Civil Action No. 05-048-SLR
BORGWARNER INC., )
and BORGWARNER MORSE TEC INC., )
)
Defendants. ) PUBLIC VERSION

)
BORGWARNER INC., )
)
Counterclaimant, )
)
v. )
)
HITACHI, LTD., and HITACHI AUTOMOTIVE )
. PRODUCTS (USA), INC., )
)
Counterdefendants. )
DECLARATION OF MARY B. MATTERER IN SUPPORT OF
THE OPENING CLAIM CONSTRUCTION BRIEF OF BORGWARNER INC. AND
BORGWARNER MORSE TEC INC.
OF OUNSEL: .
C Richard K. Herrmann (I.D. #405)
Hugh A. Abrams Momus JAMES, HITCHENS &
Thomas D. Rein WILLIAMS LLP
Lisa Schneider 222 Delaware Avenue, 10th Floor
Marc A. Cavan wiimmgm, DE 19801
Lara V. Hirshfeld (302) 333-6300
10 $@101 D§3Y001°¤ Stf€€t [email protected]
Ch103g0, Illinois 60603 Attorneysfor B0rgWarner Inc. and
(312) 853*7000 B0rgWarner Morse TEC Inc.
Original Date: September 28, 2006
Redacted Date: October 6, 2006

Case 1 :05-cv-00048-SLR Document 281 Filed 10/06/2006 Page 2 of 4
I, Mary B. Matterer, do hereby declare and say as follows:
l. I am a member in good standing of the Bar of the State of Delaware and a
partner at the law firm of Morris, James, Hitchens & Williams LLP, counsel to Defendant
BorgWamer Morse TEC Inc. and Defendant/Counterclaimant BorgWamer Inc. (collectively
"BorgWarner") in the above action.
2. I submit this declaration in support of the Opening Claim Construction
Brief of BorgWamer Inc. and BorgWamer Morse TEC Inc.
3. Attached hereto as Exhibit l is a true and correct copy of U.S. Patent No.
5,497,738 ("the '738 patent").
4. Attached hereto as Exhibit 2 is a true and correct copy of U.S. Patent No.
5,184,578.
5. Attached hereto as Exhibit 3 is a true and correct copy U.S. Patent No.
5,172,659.
6. Attached hereto as Exhibit 4 is a true and correct copy U.S. Patent No.
5,002,023.
7. Attached hereto as Exhibit 5 is a true and correct copy U.S. Patent No.
5,l 07,804.
8. Attached hereto as Exhibit 6 is a true and correct copy U.S. Patent No.
5,218,935.
9. Attached hereto as Exhibit 7 is a true and correct copy of the Manual 0f
Patent Examining Procedure ("MPEP") § 2l63.07(b).
l0. Attached hereto as Exhibit 8 is a true and correct copy of the Original
Specification from the prosecution history of the '738 patent.

Case 1 :05-cv-00048-SLR Document 281 Filed 10/06/2006 Page 3 of 4
11. Attached hereto as Exhibit 9 is a true and correct copy ofthe June 30,
1994 Reply to Office Action from the prosecution history ofthe '738 patent.
n 12. Attached hereto as Exhibit 10 is a true and correct copy of the November
1, 1994 Reply to Office Action from the prosecution history of the '738 patent.
13. Attached hereto as Exhibit 11 is a true and correct copy of the Appeal
Brief from the prosecution history of the '738 patent.
14. Attached hereto as Exhibit 12 is a true and correct copy of pages 480, 731 l
and 2541 from Websteris Third New Int’l Dictionary ofthe English Language Unabridged
(1993).
15. Attached hereto as Exhibit 13 is a true and correct copy of page 1311 from
Merriam- Websterls Collegiate Dictionary (10th ed. 1993). .
16. Attached hereto as Exhibit 14 is a true and correct copy of pages 51 and
2022 from the McGraw-Hill Dictionary of Scientyic and Technical Terms (4th ed. 1989).
17. Attached hereto as Exhibit 15 is a true and correct copy of page 22 and
n 910 from the McGraw-Hill Dictionary of Science and Engineering (3d ed. 1984). t
18. Attached hereto as Exhibit 16 is a true and correct copy of pages 64 and
2323 from the Academic Press? Dictionary of Science and Technology (1992).
19. Attached hereto as Exhibit 17 is a true and correct copy of the Expert l
Report of William B. Ribbens Regarding Infringement of U.S. Patent No. 5,497,738.
I declare under penalty of perjury that the foregoing is true and correct to the best
of my knowledge, information and belief. Q Q
Dated: September 28, 2006
M B. M rer
3

Case 1:05-cv-00048-SLR Document 281 Filed 10/06/2006 Page 4 of 4
CERTIFICATE OF SERVICE
I hereby certify that on October 6, 2006, I caused the following document,
REDACTED VERSION OF DECLARATION OF MARY B. MATTERER IN SUPPORT
OF THE OPENING CLAIM CONSTRUCTION BRIEF OF BORGWARNER INC. AND
BORGWARNER MORSE TEC INC. to be electronically filed with the Clerk of the Court
using CM/ECF which will send notification of such filing to the following:
Steven J. Balick, Esq.
John G. Day, Esq.
Tiffany Geyer Lydon, Esq. _
ASHBY & GEDDES
222 Delaware Avenue, 17th Floor
Wilmington, DE 19801
Additionally, I hereby certify that on October 6, 2006, I caused the foregoing
document to be served via email on the following non-registered participants:
Michael D. Kaminski, Esq.
Pavan K. Agarwal, Esq.
Liane M. Peterson
FOLEY & LARDNER LLP
3000 K Street, N.W., Suite 500
Washington, D.C. 20007-5109
[email protected]
[email protected]
[email protected]
/S/ Mag; B. Matterer
MARY B. MATTERER (I.D. #2696)
MORRIS, JAMES, HITCHENS & WILLIAMS LLP
222 Delaware Avenue, 10th Floor
Wilmington, Delaware 19801
(302) 888-6800
[email protected]
Attorneys for Defendants and Counterclaimant,
BORGWARNER INC., and
BORGWARNER MORSE TEC INC.