DECHERT LLP
ATTORNEYS AT LAW
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GATEWAY’S EX PARTE APPLICATION IN SUPP. OF
GATEWAY’S MOT. FOR PARTIAL SUMM. JUDGMENT OF
INVALIDITY OF U.S. PATENT NO. 4,763,356 (DAY)
CASE NO. 07-CV-2000-H (CAB)
Bryan W. Farney (pro hac vice)
Steven R. Daniels (SBN 235398)
Jeffrey B. Plies (pro hac vice)
DECHERT LLP
300 W. Sixth Street, Suite 1850
Austin, Texas 78701
Telephone: (512) 394-3000
Facsimile: (512) 394-3001
David J. Zubkoff (SBN 149488)
SELTZER CAPLAN MCMAHON VITEK
750 “B” Street, Suite 2100
San Diego, California 92101
Telephone: (619) 685-3003
Facsimile: (619) 685-3100
Attorneys for Defendants
GATEWAY, INC., GATEWAY COUNTRY
STORES LLC, GATEWAY COMPANIES, INC.,
GATEWAY MANUFACTURING LLC, AND
COWABUNGA ENTERPRISES, INC.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
LUCENT TECHNOLOGIES INC. and
MULTIMEDIA PATENT TRUST,
Plaintiff and Counter-Defendant,
v.
GATEWAY, INC., GATEWAY COUNTRY
STORES LLC, GATEWAY COMPANIES,
INC., GATEWAY MANUFACTURING LLC,
AND COWABUNGA ENTERPRISES, INC.,
Defendants and Counter-Claimants,
and
MICROSOFT CORPORATION
Intervenor and Counter-Claimant.
AND CONSOLIDATED CASES
Case No. 07-CV-2000-H (CAB)
consisting of matters severed from
consolidated cases:
Case No. 02-CV-2060-B (CAB)
Case No. 03-CV-0699-B (CAB)
Case No. 03-CV-1108-B (CAB)
GATEWAY’S EX PARTE
APPLICATION TO SUBMIT
CITATIONS TO CASE LAW
REGARDING ISSUE RAISED FOR
THE FIRST TIME DURING
SUMMARY JUDGMENT HEARING
ON GATEWAY’S MOTION FOR
PARTIAL SUMMARY JUDGMENT
OF INVALIDITY OF U.S. PATENT
NO. 4,763,356 (DAY)
Date: January 8, 2008
Time: 9:30 a.m.
Courtroom: 13, 5th Floor
Judge: Hon. Marilyn L. Huff
Case 3:07-cv-02000-H-CAB Document 224 Filed 01/09/2008 Page 1 of 3
DECHERT LLP
ATTORNEYS AT LAW
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GATEWAY’S EX PARTE APPLICATION IN SUPP. OF
GATEWAY’S MOT. FOR PARTIAL SUMM. JUDGMENT OF
INVALIDITY OF U.S. PATENT NO. 4,763,356 (DAY)
1 CASE NO. 07-CV-2000-H (CAB)
At the summary judgment hearing on January 8, 2008, the Court raised a question that had
not been briefed by the parties regarding the effect of the hearsay rule on the Tyler article. Since
this issue had not been raised in Lucent’s briefs, Gateway did not have the relevant case law to
cite to the Court during the hearing. Accordingly, Gateway requests leave of court to call the
Court’s attention to the cases cited below that address the Court’s question.
In Gateway’s motion, Gateway relies upon the Tyler article for two separate purposes:
(1) as a prior art printed publication in and of itself, and (2) as corroboration for Mr. Long’s and
Mr. Tyler’s testimony regarding the public use and prior invention of the FXFE system. The
following cases establish that the Tyler article is not hearsay when used as a prior art reference:
• Joy Technologies, Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C. 1990) (“A prior art
document submitted as a ‘printed publication’ under 35 U.S.C.A. § 102(a) is offered simply
as evidence of what it describes, not for proving the truth of the matters addressed in the
document. Therefore, it is not hearsay under Fed.R.Evid. 801(c).”);
• Freeman v. Minnesota Min. and Mfg. Co., 675 F. Supp. 877, 884 n.5 (D. Del. 1987) (“Section
102(b) requires only that the invention be described in a printed publication, not that the
description be true. Therefore, the [reference] is being introduced, not for the truth of the
matter asserted, i.e., that 150 lenses were made or 24 implanted, but only for the fact that it
was indeed written and filed before March 15, 1975. Thus, it cannot be hearsay.”).
The following case establishes that the Tyler article is not hearsay when used as corroboration
because it is a prior consistent statement offered to rebut Lucent’s charges of recent fabrication
and improper motive under Fed. R. Evid. 801(d)(1):
• Ethicon, Inc. v. U.S. Surgical Corp., 937 F. Supp. 1015, 1021 n.8 (D.Conn. 1996) (“The
document is admissible under Fed.R.Evidence 801(d)(1)(B) as a prior statement consistent
with Yoon's testimony that he conceived of the subject matter of the claims at issue before he
met Choi. Allowing the document to remain in evidence is appropriate because it was offered
to rebut an express charge that Yoon's testimony concerning his conception of the subject
matter of the claims before he met Choi is false.”).
The following case establishes that the Tyler article also falls under the ancient documents
exception to the hearsay rule when used as corroboration:
• Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc., No. C-03-1431 SBA, 2006 WL
1330001, at *3 (N.D. Cal. May 15, 2006) (holding that document offered to corroborate
testimony regarding prior art device was admissible under ancient documents exception to
hearsay rule because “‘[s]tatements in a document in existence twenty years or more the
authenticity of which is established’ are exceptions to the hearsay exclusion.”).
In his deposition testimony, Mr. Tyler authenticated the Tyler article and confirmed that it was
published in January 1984. Baker Decl., Ex. 29 at 126:25-127:25, 146:25-147:10.
Case 3:07-cv-02000-H-CAB Document 224 Filed 01/09/2008 Page 2 of 3
DECHERT LLP
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GATEWAY’S EX PARTE APPLICATION IN SUPP. OF
GATEWAY’S MOT. FOR PARTIAL SUMM. JUDGMENT OF
INVALIDITY OF U.S. PATENT NO. 4,763,356 (DAY)
2 CASE NO. 07-CV-2000-H (CAB)
Dated: January 9, 2008
DECHERT LLP
By: /s/ Jonathan D. Baker
Jonathan D. Baker
Attorneys For Defendants and Counter-
Claimants: Gateway, Inc., Gateway
Country Stores LLC, Gateway Companies,
Inc., Gateway Manufacturing LLC, and
Cowabunga Enterprises, Inc.
13061475.1
Case 3:07-cv-02000-H-CAB Document 224 Filed 01/09/2008 Page 3 of 3
