Free Motion to Compel - District Court of Connecticut - Connecticut

Case 3:03-cv—O0703-CFD Document 62-3 Filed O4/27/2004 Paget of 4
UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
CENTRDC, INC.,
: Civil Action N0. 3:03 CV 703 (CFD)
Plaintiff, :
v. DECLARATION OF
: ROBERT L. NEWELL
ANDON BRUSH COMPANY, INC., :
Defendant. April 27, 2004
Robert L. Newell, being of full age, declares under penalty of perjury:
l. l am the president of Andon Brush Company, lnc. ("Andon"), which is the
defendant in the above entitled action. I have personal knowledge ofthe statements made herein.
2. On Friday, April 16, 2004, I attended a settlement conference in this case. The
conference was held before United States Magistrate Judge William i Garlinlrel. This
conference was scheduled after a settlement conference on December 3, 2003, made progress
towards a settlement but had not yet reached a settlement.
3. As of the commencement of the April E6, 2004 conference, Centrix Inc.
("Centrix“) and Andon has reached an impasse in their settlement negotiations over the issue of
whether the dismissal of certain affirmative defenses of Andon in the case would be without
prejudice or would be with prejudice. Among the defense at issue were defenses relating to the
validity of the patents which Centrix was suing upon in this action. Several differences also still
existed with respect to some of the wording ofthe drafts of the settlement agreements which had
been exchanged between the parties.

Case 3:03-cv—O0703-CFD Document 62-3 Filed O4/27/2004 Page 2 of 4
4. At the April l6, 2004 settlement conference, it was explained to Magistrate Judge
Garfinkel that Andon was concerned that if it dismissed its affirmative defenses with prejudice, it
could find itself disadvantaged ii in the future, Centrix brought an infringement action on other
products that Andon might make in the future particularly if the future products were products
that were in the prior art or which did not embody certain elements ofthe patent claims.
5. l\/iagistrate Judge Garhnkel suggested that if Centrix were to agree that certain
products would be deemed not to infringe the patent in suit, then Andorra concerns about a
dismissal of the afhrmative defenses with prejudice might eliminated. As a result of Magistrate
Judge Garfinltefs suggestion, I questioned the chief executive officer of Centrix, Dr. Dragan,
whether certain possible future products of Andon would be deemed to be norninfringing.
6. ln layman’s terms, the patents in suit are with respect to disposable dental brushes.
The utility patent, in layman's terms, is for a brush having a completely hollow handle and which
has a "crimp" in the handle near the brush end which enables the user of the brush to bend the
brush at the point of the crimp. The design patent is for the appearance of such a brush having
such a crimp.
7. At the conference, l` specifically asked Dr. Dragau whether Centrix considered a
solid handle brush not to infringe. Dr. Dragan agreed that a solid handle brush would not he
deemed infringing.
S. At the conference, I specifically asked Dr. Dragan whether a brush that was not
hollow throughout the length of its handle, such as molded brush which hollow at the portion of
the handle where the bristles are inserted, would not infringe. Dr. Dragan responded that such a
brush would not infringe, and even wished Andon good luck if it tried to manufacture such a
brush.
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Case 3:03-cv—O0703-CFD Document 62-3 Filed O4/27/2004 Page 3 of 4
9. I also asked Dr. Dragan at the conference if a brush that was already bent as part
of the manufacturing process would not infringe even if such a bending during manufacture
resulted in some form of crease, crimp or flattening at the point of the bend. He agreed that such
a brush would not infringe.
lt). At the conference, l also asked Dr. Dragan whether a hollow handled brush which
was bendable by means other than a crimp would infringe the patents. He replied that it would
not.
ll. Based upon these statements by Dr. Dragan of Centrix, l gave additional
consideration to Magistrate Judge Gartinkefs suggestion that Andon could agree to dismissing
its aftirrnative defenses with prejudice. After such consideration, Centrix was informed that
Andon agrees to dismissal with prejudice with an agreement that the products which were the
subject of my questions to Dr. `Dragan are agreed to be non-infringing. Centrix so agreed, even
stating that by saying all of the above in a settlement conference before Magistrate Judge
Garfinkel, Centrix could not later take a position that the products l` had asked about as shown
above would he infringements.
l2. While the parties were waiting to inform Magistrate Judge Gartinlrel of those
results of the conference, l asked Dr. Dragan whether Andon and Centrix could agree on
allowing Andon to sell accused brushes which it had in stock. Dr. Dragan asked how many
accused brushes were in stock, and I told him that it was approximately 200,000 brushes. Dr.
Dragan then offered to allow such a sale for an 8% royalty on the selling price. l made a
counter-proposal of a 5% royalty. Dr. Dragan sought to adhere to 8%. Dr. Dragan suggested that
we calculate the actual dollar amount of the proposed royalties, and he calculated an 8% royalty
to amount to $560.00 and he calculated a 5% royalty to amount to $350.00. After some
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additional discussion, Dr. Dragan propoeed that the royalty be an even $500.0Q. Reluctantiy, a
royalty of $500.00 was acceptable to Andon.
E3- Thereafter, the parties and their attorneys informed Magistrate Judge Garfmkel in
chambers of the agreement that had been reached. The conference conoiuded by Andon's
attorney stating that he would send proposed language to Ce11tt*ix's attorney later that day or on
Monday setting forth a description of the products that would be deemed not to infringe and
language regarding the sale of Andorra remaining stock of accused brushes. Centrix did not
disagree with the offer of Andon‘s attorney to prepare and send such language, and snob. a letter
was prepared.
14. I understand from seeing copies of correspondence and other documents from
Centri.x's attorney that Centrix is now repudiating the settlement that was reached on April 16,
2004, and seeking to proceed with discovery and the litigation ofthis action.
I declare under penalty of perjury that the foregoing is true.
Executed on April 26, 2004
Fri; y,._ é if ff
Robert L. Newell
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