St Clair Intellectual Property Consultants Inc. v. Apple Inc.

Filing 45

Letter to The Honorable Leonard P. Stark from Tiffany Geyer Lydon regarding Apple's request for extension of stay. (Lydon, Tiffany)

April 29, 2011

The Honorable Leonard P. Stark
United States District Court
844 N. King Street
Wilmington, DE 19801
Re:

VIA ELECTRONIC FILING

St. Clair Intellectual Property Consultants, Inc. v. Apple Inc.,
C.A. No. 09-804-LPS

Dear Judge Stark:
I am Delaware counsel for Apple Inc. in the above-referenced action, which involves the
same patents-in-suit as C.A. Nos. 04-1436-LPS, 06-403-LPS, 06-404-LPS, and 08-371-LPS (the
“Related Cases”). I write, pursuant to the Court’s March 14, 2011 Order (D.I. 40), to
respectfully request that the Court extend the current stay in this action, which has been in place
since July 28, 2010 (D.I. 35). The parties have met and conferred, and St. Clair opposes this
request.
During an April 19, 2011 status teleconference in the Related Cases, Your Honor ordered
the parties to submit a schedule for summary judgment briefing on the issue of whether the
defendants in the Related Cases are entitled to summary judgment of non-infringement as a
result of the Federal Circuit’s decision in the St. Clair v. Fujifilm appeal, which rejected critical
aspects of the claim construction previously advanced by St. Clair. Because St. Clair’s
allegations against Apple are indistinguishable from its contentions against the defendants in the
Related Cases, Apple believes that that the interests of the Court and the parties would best be
served by extending the stay in this action until the Court decides the motions for summary
judgment of non-infringement in the Related Cases.
St. Clair will not be prejudiced by such an extension of the current stay. Indeed, the
patents-in-suit in this matter and the Related Cases have expired, so alleged past damages will be
the only thing at stake. In contrast, if the parties begin to actively litigate this matter before the
Court decides the summary judgment motions in the Related Cases, there is a very real risk that
the Court will waste a great deal of time and judicial resources, and the parties a great deal of
time and money, litigating issues that will likely be mooted by the Court’s decision on such
motions.

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The Honorable Leonard P. Stark
April 28, 2011
Page 2

Should the Court nevertheless wish to enter a schedule at this point, the parties will be
separately filing a proposed scheduling order that sets forth their respective positions.
Respectfully,
/s/ Tiffany Geyer Lydon
Tiffany Geyer Lydon
TGL/dmf
cc:

Patricia P. McGonigle, Esquire (via electronic mail)
R. Terrance Rader, Esquire (via electronic mail)
Victor Cole, Esquire (via electronic mail)

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