Free Proposed Pretrial Order - District Court of Delaware - Delaware

Case 1:04-cv-01199-SLR

Document 524-6

Filed 08/18/2008

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SRI v. ISS and Symantec Exhibit 5 to the Proposed Pretrial Order SRI'S STATEMENT OF ISSUES OF LAW REMAINING TO BE LITIGATED L.R. 16.4(d)(5) SRI expects the issues of law listed below will be litigated at trial. To the extent that any issues of fact set forth in Exhibit 2 of the Joint Pretrial Order may be considered issues of law, SRI incorporates those portions of Exhibit 2 by reference. These issues of law may change based on the Court's decisions on motions for summary judgment and motions in limine. A. Validity of SRI's Patents 1. SRI will present evidence in rebuttal to defendants' assertions that each of:

(a) claims 1, 2, 4, 6, 12, 13, 15, 17 of the '203 patent and claims 1, 2, 4, 13, 14, 16 of the '615 patent; and (b) as also alleged by ISS, claims 1, 4, 5, 11, 12, 13, 24 of the '338 patent is invalid under 35 U.S.C. § 103 as obvious in light of the prior art. Authority: · · · · · · · B. Graham v. John Deere Co., 383 US. 1 (1966). Alza Corp. v. Mylan Laboratories, Inc., 391 F.3d 1365, 1373 (Fed. Cir. 2004). Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339 (Fed. Cir. 2004). Honeywell Intern. Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131 (Fed. Cir. 2004). KSR International Co. v. Teleflex Inc. et al., 127 S.Ct. 1727 (2007) 35 U.S.C. § 103 35 U.S.C. § 282

Non-Jury Issues for Court 1. Whether clear and convincing evidence shows that the named inventors or

others involved in the prosecution of the patents-in-suit failed to disclose material

Case 1:04-cv-01199-SLR

Document 524-6

Filed 08/18/2008

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information with an intent to mislead the United States Patent and Trademark Office, thereby rendering the patents-in-suit unenforceable. Authority: · · Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1264 (Fed. Cir. 2001). Union Oil Co. of California v. Atlantic Richfield Co., 208 F.3d 989, 1002 (Fed. Cir. 2000).

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