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Case 1:O4—cv—O1436-JJF Document 151 Filed 07/O3/2008 Page 1 of 4 J
SEFIZ, VAN Ooraoe Bi GREEN, PQA.
ATTORNEYS AND COUNSELLORS AT LAW
azz DELAWARE AVENUE, SUITE nsoo
Posr OFFICE Eox ea
V WILMINGTON, DELAWARE lessee
BERNARD A. VAN OGTROP (393) 535-(350;)
GEORGE H. SEITZ. lll FAX: <:ao2> aeeoeoe
JAMES S. GREEN
R. KARL HILL
PATRICIA P. McGONlGl£
KEWN A- GUERKE Writer’s Direct Dial: (302) 888-7605
Writer’s E-Mail Address: pmcgonigle@,svglaw.com
July 3, 2008 .
VIA HAND DELIVERY AND E—FILING
The Honorable Joseph J. Faman, Jr.
United States District Court
844 King Street
Wilmington, DE 19801
Re: St. Clair v. Samsung, et al. (Civil Action No. 04-1436—JJ"F)
St. Clair v. Siemens, et al. (Civil Action No. 06-403-JJF)
Dear Judge Farnan:
Plaintiff St. Clair Intellectual Property Consultants, Inc. ("St. Clair") respectfully submits
this letter in response to Defendants’l joint June 23, 2008 letter and to Defendant UTStarcom,
lnc.’s separate letter dated June 25, 2008 (but filed on June 26, 2008) and in further support of its
Renewed Motion to Lift the Stays in Litigation. As Your Honor is aware, a hearing will be held
on July 11, 2008 at 10:00 a.m. on St. Clair’s application to lift the stay in this action.
OWNERSHIP IS RESOLVED
Nothing raised in Defendants’ June 23, 2008 letter to the Court, or their May 28, 2008
letter for that matter, changes the simple fact that the only condition for the stay has been met-——
ownership is resolved. The Court should, therefore, lift the stays.
( ln raising the new argument of claim construction as an alleged roadblock to a
straightforward motion to lift the stays, the Defendants’ proclaimed "elephant in the room" is a
creattue of Defendants’ own making in an attempt to unjustiiiably delay St. Clair’s right to
enforce its patents.2 Defendants’ repeated arguments regarding Fuji’s potential appeal of this
1 Court’s claim construction does not support a continued stay. The PTO examiner’s comments
during reexamination proceedings do not trump this Court’s well-reasoned claim construction
I "Defendants" as used herein shall mean the Defendants who joined in the letter tiled with the Court on June
23, 2008, and where applicable, "Defendants" shall also include Defendant UTStarcom, Inc.
Z The "patents—in-suit" are U.S. Patent Nos. 4,138,459; 6,094,219; 6,233,010; and 6,323,899.
1
E

Case 1 :04-cv-01436-JJF Document 151 Filed 07/O3/2008 Page 2 of 4
The Honorable Joseph J. Farnan, Jr. _
July 3, 2008
Page 2
rulings. Defendants have cited to no legal authority to support such a position. It is undisputedly
the province of courts to construe claim terms.
This Court explicitly stayed the Samsung case pending the resolution of the patent
ownership dispute in California (and the parties in Siemens accordingly stipulated to a stay).
. Defendants’ claim that the stay was somehow related to the reexamination proceedings of the
patents-in-suit is wrong. There is not a single mention of the PTO examiner’s comments during
reexamination in the Court’s Order staying the Samsung case. D.I. 109. Thus, with ownership
resolved, there is no basis to continue the stays.
PREJUDICE TO ST. CLAIR
Defendants are wrong in claiming that there is no prejudice to St. Clair because damages
are currently accruing against the Defendants or that prejudice depends on whether St. Clair can
obtain injunctive relief The prejudice that St. Clair would suffer with a continued stay is severe.
• St. Clair’s business operations would suffer further injury because a continued
stay would impede licensing discussions and cut off resulting rev_enue for St.
Clair, hindering St. Clair’s efforts to fund and grow its business operations.
• St. Clair would be forced to litigate expired or at least nearly expired patents. The
psychological impact of trying expired patents would prejudice the jury against
St. Clair and would give Defendants an unfair tactical advantage, especially given
how long these cases have already been stayed.
• The Samsung actionhas already been pending for nearly four years while Siemens
has been pending for over two years. St. Clair has not been able to obtain any
discovery of the Defendants’ infringing activities during this time. A further stay
would prevent the discovery of crucial evidence and inevitably lead to evidentiary
prejudice based on the passage of time.
• Defendants only focus on discovery that St. Clair already collected, but
completely ignore the evidentiary prejudice to St. Clair related to the Defendants’
preservation of evidence including, but not limited to, Defendants’ respective
knowledge of the patents, copying of the patented technology, and valuation of
the patents that a continued stay would have on St. Clair.3
i 3 Defendants wrongly claim that has been no evidentiary prejudice to St. Clair because St. Clair could have
brought suit a decade earlier. St. Clair did not delay bringing suit as the majority of the Defendants did not sell _
l infringing digital cameras until years after the first of the patents—in~suit issued in 1992. In any event, when St.
Clair decided to sue the Defendants is irrelevant to the issue of lifting stays that were based solely on the
resolution of the ownership dispute between St. Clair and Kodak.
i

Case 1:O4—cv—O1436-JJF Document 151 Filed 07/O3/2008 Page 3 of 4
The Honorable Joseph J. Farnan, Jr.
July 3, 2008
Page 3
• Defendants misconstrue St. Clair’s business and the nature of St. Clair’s licenses.
St. Clair’s licensees have all relied on the Cou.rt’s previous claim construction
rulings in obtaining a license from St. Clair. St. Clair’s licensees are also
substantially harmed because the stay provides Defendants with an unfair
competitive advantage over St. Clair’s licensees by allowing Defendants to
continue to sell infringing digital cameras without incurring the cost of a license.
Defendants’ reliance on Fuji’s potential appeal of this Court’s claim construction ruling is
an attempt to avoid facing the consequences for the Defendants’ willful infringement of the
patents—in—suit. The manifest prejudice to St. Clair warrants lifting the stay of these cases.
LITIGATION CAN PROCEED EFFICIENTLY
The other arguments raised by the Defendants also do not justify a continued stay and
will not promote judicial efficiency. First, even if Fuji appeals the issue of the Court’s claim
construction to the Federal Circuit, it is unlikely that the Federal Circuit will arrive at a new or
different claim construction. Defendants concede that they do not know how the Federal Circuit
will rule on claim construction, if at all. Further, if there are substantive claim construction
arguments that the Defendants want to make, they can only do so in an active case. Regardless
of what Fuji may or may not do in another action with the Court’s twice-construed claim
construction, relying on the possible actions of another party in another litigation is not a basis
for a stay, especially given the prejudice to St. Clair.
Second, Defendants also claim that they still have ownership arguments despite Kodak’s
confirmation that St. Clair has owned the patents-in-suit since 1995. Although St. Clair believes
any ownership argument by the Defendants would be meritless and likely procedurally improper,
this issue can only be addressed in an active case.
Third, Defendants are experienced in patent litigation and are represented by highly
capable counsel. Patent iniiingement cases can and often do involve competing claim
constructions.4 This occurred in the Sony litigation. Despite what the Defendants may claim,
there is no greater uncertainty regarding claim scope than in any other patent case. Indeed, the
claim scope is actually more certain in these cases given the Court’s previous claim construction
orders. In later litigation after Sony, Canon and Fuji were able to participate in discovery while
attempting to argue a different claim construction than the Court’s construction in Sony. It is no
different with these cases. Discovery can be completed independent of what happens with Fuji.
Further, any concerns that Defendants have about discovery can be addressed by the parties
under Fed. R. Civ. P. 26(f) once the stays are lifted.
4 Defendant UTStarcom’s reliance on Medtronic Navigation, Inc. v. Brainlab Medizinische Computersystems
GMBH, N0. 98-1072, 2008 U.S. Dist. LEXIS 13483 (D. Colo. Feb. 12, 2008) given the stage of these cases-
where Defendants have yet to provide their positions on claim construction—makes no sense. Medtronic
underscores the weight that should be given to a district court’s claim construction.

Case 1 :04-cv-01436-JJF Document 151 Filed 07/O3/2008 Page 4 of 4
The Honorable Joseph J. Faman, Jr. ‘
July 3, 2008
Page 4
Finally, any potential Federal Circuit opinion regarding the Court’s claim construction
will not absolve the Defendants of their infringement. Fuji has conceded that the claims of the
patents—in-suit are not limited to one-to—one correspondence with computer architectures.5 Even
in the unlikely event that the Federal Circuit were to adopt Fuji’s proposed claim construction,
Defendants would still infringe the patents—in—suit. Defendants rely on statements made at the
Markman hearing in Fuji that are taken out of context. St. Clair has in no way conceded non-
infringement if the Court were to adopt a construction similar to Fuji’s proposed claim
construction.6 Accordingly, no possible efficiency is gained Hom a continued stay of these cases.
St. Clair has a constitutional right to enforce its patents and will be unduly prejudiced by
a continued stay. As stated in St. Clair’s June 6, 2008 letter, once the stay is lifted in these
actions, the parties can confer on an appropriate scheduling order that will efficiently move these
cases forward. St. Clair, therefore, respectfully requests that the Court grant St. Clair’s renewed
motion to lift the stays in these actions.
Res lly,
ATRICIA P. MCGONT LE (DE3 126)
cc: Clerk of Court (by hand and ECF)
Counsel of Record (by ECF)
5 At the Markman Hearing, Fuji’s counsel stated: "Now, we’re not here arguing it would always have to be a
one-to—one correspondence, as that’s not what our claim construction reguires." 4/l2/04 Fuji Markman
Hearing Tr. at 76:24-77:2 (D.I. 525) (emphasis added).
6 In quoting from the Markman hearing in Fuji, Defendants leave out a later statement by St. Clair’s counsel
making it clear that St. Clair does not concede non-infringement with Fuji’s proposed construction:
Now, I was glad to hear, and I’m going to keep Fuji to this if the time comes, that they
are not seeking one-to—one correspondence. In other words, that if you’ve got one file format
and it works with IBM, and you’ve got a separate file format and it works with Mac, for
example, that would be an inappropriate construction here, clearly not supported by anything. .
And they admit that.
So what you have is a situation where you can have a file format, and it can be used in an
IBM—compatible computer with a software program on it, and it can be used in a Macintosh
computer with a software program on it.
And it might even fit within their definition and does nothing for them. And I think the
record just needs to be clear that if lFuji’s counsell @s that if they win on this argument, .
they’re off the hook on infringement, that’s clearly not the case.
4/12/04 Fuji Murkman Hearing Tr. at 178:9—l79:3 (D.l. 525) (emphasis added).