Free Amended Complaint - District Court of California - California

Case 4:07-cv-03010-CW Document 31-2 Filed 08/28/2007 Page 1 of 3

Case 4:07-cv-03010-CW Document 31 -2 Filed 08/28/2007 Page 2 of 3
‘ WEIL, GOTSHAL 84 MANGES LLP
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VIA FACSINHLE AND FEDERAL EXPRESS
Mr. James Pooley
Pooley & Oliver LLP
Five Palo Alto Square .
3000 El Camino Real, 7th Floor
Palo Alto, CA 94306
Dear Mr. Pooleyc
This letter is in response to your letter of November 1, 2006, to Yar Chaikovsky, my
former partner. I apologize for the delay in responding, but it has taken some time to get familiar
with the issues in the wake of Yar's departure. Below is a response to the points raised in your
letter:
First, you observed that the application for Optovue’s issued patent was filed on October
28, 2005, roughly two years after Mr. Wei’s departure from Carl Zeiss Meditec ("CZM").
However, your letter failed to address the fact that Mr. Wei also tiled two provisional patent
applications on February 10, 2004, just several months aiter leaving CZM. We have studied the
content of those provisional applications, and our preliminary review has determined that at least
one, U.S. Provisional App. No. 60/543,862, contains confidential information of CZM that was
in Mr. Wei’s possession while he was employed by CZM. Further, we have also analyzed the
pending Optovue patent applications claiming priority liom those provisional applications, and
have concluded that CZM should be the sole assignee of at least Optovue’s pending U.S.
Application No. 1 1/056,537.
Second, you mentioned that you see no reason to suspect improper use of CZM
confidential information because the Optovue product relies on fourier domain technology,
which is "fundamentally different" hom CZM’s technology. But, your client is certainly aware
that CZM has been developing spectral domain OCT technology since at least 2004, because
Tom Zhao, one of the founders of Optovue, was an early contributor to CZM’s development of
this technology before his departure from CZM in 2004.
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Case 4:07-cv-03010-CW Document 31 -2 Filed 08/28/2007 Page 3 of 3
Wm, GOTSHAL & Mmiess LLP
Mr. James Pooley
April ll, 2007
Page 2
Third, regarding Optovue’s interference with CZM’s contractual relations with third
parties, CZM is particularly concemed about Optovue’s relationship with Prof David Huang.
Specifically, until recently, Prof. Huang was a long-term scientific adviser to CZM, and he now
serves on Optovue’s scientific advisory board. While Prof Huang was working with CZM, he
had in his possession a prototype CZM OCT device and a production CZM OCT device. CZM
has re—possessed its OCT devices from Prof Huang, and found stored on one ofthe disk drives
indications of several files, including a directory, relating to R”l"Vue, Optovue’s competing OCT
product. CZM is justifiably alarmed at finding Optovue files on the disk drive of its highly
confidential OCT device, and would like to understand exactly what Optovue asked Prof Huang
to investigate, whether he used any CZM equipment to do so, and whether any employee of
Optovue has had access to any of the CZM equipment in Prof Huang’s possession.
Also, in our last letter, CZM pointed out a false statement regarding CZM on Optovue’s
website, which has since been removed. However, since our last letter, CZM has become aware
of additional troubling marketing practices of Optovue. Namely, Optovue has begun distributing
marketing literature for its OCT product, with the caption: "From the developers ofthe first
OCT systems in eye care." At best, this statement is deceptive, because it is easily verifiable that
CZM was the first company to provide a commercially available OCT device for eye care. CZM
demands that Optovue immediately remove this false statement Bom its marketing materials. In
addition, CZM has in its possession a marketing document provided to a physician by an
Optovue salesperson, which is a complete copy of a CZM document, but with the references to
CZM and CZM’s product redacted. This raises a host of legal issues, including copyright
infringement and unfair competition. CZM demands that Optovue immediately cease providing
to customers any marketing material derived tiom CZM documentation.
I hope you find that the additional information in this letter sufficiently answers your
questions, and helps you to understand CZM’s concems. CZM remains willing to discuss these
issues in a productive manner, and requests a substantive response within the next two weeks.
We may take iitrther legal actions if a satisfactory response is not received within two weeks.
I look forward to your response.
Jason Kipnis
IDKJmac
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Case 4:07-cv-03010-CW

Document 31-2

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Case 4:07-cv-03010-CW

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