Case 5:16-cv-00162-GLS-DEP Document 51 Filed 11/18/16 Page 1 of 2
`
`DLA Piper LLP (US)
`500 Eighth Street, NW
`Washington, DC 20004
`www.dlapiper.com
`
`Joseph P. Lavelle
`joe.lavelle@dlapiper.com
`T 202.799.4780
`F 202.799.5021
`
`
`Nov. 18, 2016
`
`VIA CM/ECF
`
`Hon. David E. Peebles
`United States Magistrate Judge
`U.S. District Court for the
`Northern District of New York
`100 South Clinton Street
`Syracuse, NY 13261
`
`
`
`
`
`
`
`Re:
`
`
`PPC Broadband, Inc. v. Corning Optical Communications RF LLC,
`No. 5:16-cv-162-GLS-DEP_________________________________
`
`Dear Judge Peebles:
`
`
`
`We represent defendant, Corning Optical Communications RF LLC (“Corning”) in the
`above identified matter. We write to request leave to file a motion to amend Corning’s Local
`Patent Rule 4.3 disclosures and in response to the letter to you from John Cook, on behalf of
`plaintiff, dated Nov. 17, 2016.
`
`
`
`As the Court is aware from handling multiple Markman proceedings in the various
`related cases, the technology in these cases is not especially complicated. As a result, Corning
`generally has not filed expert reports in support of its proposed claim construction positions.
`That was Corning’s intention when it filed its Rule 4.3 disclosures in this case.
`
`
`However, in the course of actually writing the brief, we came to conclude that the
`construction of the term “engagement fingers” in US Patent No. 8,075,338 would benefit from
`expert testimony as to how one skilled in the art would understand the patent, file history, and a
`related patent as they relates to that claim term. Hence, we included a copy of a declaration from
`an experienced electrical engineer, Les Baxter, when we filed Corning’s opening Markman
`Brief. We note that PPC likewise included a declaration from a witness, Mr. Montena, who was
`not disclosed in the PPC Rule 4.3 disclosures.
`
`
`

`

`Case 5:16-cv-00162-GLS-DEP Document 51 Filed 11/18/16 Page 2 of 2
`
`
`
`Hon. Davvid E. Peeblees
`
`
`
`
`Novembeer 18, 2016
`o
`Page Tw
`
`
`
`
`
`
`
`
`
`
`Several weekks after the oopening claimm constructiion briefs wwere filed, wwe were conttacted
`Rule
`
`
`
`
`
`
`
`by PPC wwho objecteed to the decclaration of MMr. Baxter bbecause it wwas not discllosed in the
`
`4.3 discloosures. We
`
`
`
`told PPC we would seek leave to ammend those
`disclosures
`
`and asked iff they
`
`
`
`
`
`
`
`wanted to join the mmotion, as thheir Montenaa declarationn also appeaared to violaate the rule.
` PPC
`
`
`
`
`indicatedd that they wwould opposee such a motiion.
`
` A
`
`
`
`
`
`As a result, wwe seek leaave to file aa motion to
`
`
`amend Corrning’s Rulee 4.3 disclossures.
`Without
`arguing the
`
`entire motioon, Corning
`believes it
`
`
`
`has good grround to ammend. First oof all,
`
`
`
`
`
`
`
`the declaaration materially strenggthens Corniing’s construuction of thee “engagemeent fingers”
`term
`
`
`
`
`
`
`
`
`by explaiining how one skilled inn the art wouuld understaand the intrinnsic evidencce pertinent tto the
`
`
`constructtion of that tterm.
`
` S
`
`
`
`econd, Cornning can estaablish that it
`
`
`had no intenntion to “hidde” or delay
`
`disclosure oof the
`
`
`
`
`d its Rule 4Corning filedAt the time CBaxter teestimony. A
`
`
`.3 disclosurees, it had noo intention t
`o use
`
`
`
`
`
`
`expert testimony. Thhe decision tto use the exxpert testimonny was madde late in the
`
`drafting proocess.
`
` T
`
`Third, we subbmit there iss no prejudicce to PPC froom this amenndment. Thhe subject matters
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`on whichh Mr. Baxterr opines are parts of thee intrinsic reecord and arre well knowwn to PPC.
` PPC
`
`
`
`
`has had tthe declaratioon for severaal weeks, annd will have
`ample time
`
`to respond tto it. If PPC
` feels
`it needs
`
`
`
`
`
`
`
`additional tiime to respoond, we have no objectiion to grantiing them furrther time, aand if
`
`
`PPC wishhes to file aa responsive
`
`
`
`
`expert repoort, we havee no objectioon to that. IIf the Court
`feels
`
`
`
`
`
`
`
`
`any otherr relief is apppropriate, suuch additionnal briefing, tthere is ampple time to aaccommodatee that
`
`
`
`
`
`
`
`request, aas the Markmman hearing was movedd to January 22017 to accoommodate PPPC.
`
`
`
`matter withh the Court
`
`
`
`at the hearinng scheduleed for
`
`
`
` W
`
`We look forwward to disccussing this
`
`
`
`
`
`Monday,, Nov. 21, 20016.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Resppectfully subbmitted,
`
`
`
`
`
`
`Joseeph P. Lavellle
`
`
`
`Couunsel for Corrning Opticaal
`
`
`
`
`
`
`Commmunicationns RF LLC
`
`
`
`