ESN LLC v. Cisco Systems, Inc. et al

Filing 55

*WITHDRAWN PER ORDER # 122 * MOTION to Amend/Correct Invalidity Contentions by Cisco Systems, Inc., Cisco-Linksys LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Affidavit Sharper Declaration, # 7 Text of Proposed Order)(Smith, Kevin) Modified on 9/11/2009 (mrm, ).

Exhibit D

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May 8, 2008
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Peter J. McAndrews McAndrews Held & Malloy Ltd. 500 West Madison Street 34th Floor Chicago, Illinois 60661 Re: ESN, LLC v. Cisco LSystems, Inc., and Cisco-Linksm LLC

Dear Mr. McAndrews: I write to address the deficiencies in ESN's P.R. 3-1 Disclosure of Asserted Claims and Infringement Contentions served on April 18, 2008. As set forth below, ESN's infringement contentions fall far short of meeting the requirements of Local Patent Rule 3-1. Local Patent Rule 3-1(c) states that "a party claiming patent infringement must serve on all parties .... a chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality , including for each element that such party contends is governed by 35 U.S.C. § 112(6), the identify of the structure ( s), act(s), or material ( s) in the Accused Instrumentality that performs the claim function." P.R. 3-1(c). Compliance with P.R. 3-1, therefore, requires ESN to set forth "particular theories of infringement with sufficient specificity to provide defendants with notice of infringement." STMicroelectronics, Inc. v. Motorola, Inc., 308 F. Supp. 2d 754. 754, 755 (E.D. Tex. 2004). Furthermore, infringement contentions "providing vague, conclusory language or simply mimicking the language of the claims when identifying infringement fail to comply with Patent Rule 3-1." Connectel, LLC v. Cisco Systems, Inc., 391 F. Supp. 2d 526, 528 (E.D. Tex. 2005). ESN's purported infringement charts are conclusory and unsupported. ESN provided four charts that allegedly mapped each element of the 16 asserted claims to the Accused Instrumentality. Yet, the charts contain not a single citation to a Cisco or third-party publication in support of these contentions. Indeed, the charts fail to provide any evidentiary support whatsover for

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ESN's allegations. This failure to cite to any evidence does not comport with the Local Patent Rules . See STMicroelectronics , 308 F . Supp. 2d at 756 ("[T] he Court will not tolerate gamesmanship that attempts to conceal or delay the production of discoverable items.") In Connectel, the plaintiff provided over 600 footnotes in its infringement charts, but failed to "specifically identify" where in the cited publications each elements of the asserted claims were found. Connectel, 391 F. Supp. 2d at 527. The court held that the plaintiff failed to comply with P.R. 3-1, and ordered the plaintiff to amend the charts "to highlight ... the text of every piece of cited literature where elements of the asserted claims are found." Id. at 528. Here, ESN has provided far less than the plaintiff in Connectel before the court ordered the plaintiff to amend its charts.
In order to comply with P.R. 3-1(c), ESN must: (1) provide citations to documentary evidence for its contentions, and (2) specifically identify where in the cited publications each elements of the asserted claims for each Accused Instrumentality is found. Please let me know by May 16, 2008 if ESN will amend its infringement contentions to meet these requirements.

Please do not hesitate to contact me if you have any questions.

Very truly yours,

Victoria F. Maroulis

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