Free Redacted Document - District Court of Delaware - Delaware

Case 1 :04-cv-01333-JJF Document 929-3 Filed 1 1/26/2007 Page 1 of 3 `
Richard L. Horwitz I
P an E
Pottgr Altoriiizy at Law I
@ AHd€YSOH [email protected]
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1313 North Market Street
PO. Box 95l
Wilmington, DE 19899-09.%
302 984 6000
www.potterande1·son.eom Novcmbcf 19, ZOU7
BY ELECTRONIC FILING I
The Honorable Mary Pat 'l`hynge PUBLIC VERSION I
United States District Court Public Version Dated: November 26, 2007
For the District of Delaware
844 North King Street
Wilmington, DE 19801
Re: Honeywell International, Inc., et al., v. Apple Computer, Inc., et al.,
D. Del., C.A. No. 04-1338-“"**
Dear Magistrate Judge Thynge:
Plaintiffs I-loneywell International, Inc. and Honeywell lntell t a Pr erties, nc.
eollectivel , "Ho e ell" ha e rosecute this liti ation f _.-·.. ::3 ;E;‘2;.:;¥;¤2{·g- ‘._` * --._.‘ - .. `-·· II’I however, wishes to keep the details of their collaboration with secret from Defendants
Samsung SDI Co., Ltd, Samsung SDI America, inc. (collectively, "San1sung SDl"), FUHFILM
Corp., FU] ll? ILM U.S.A., Inc., and Optrex America, lnc. (collectively, "Defendants") in two
ways. First, Honeywell refuses to allow counsel for Defendants to disclose even the most
limited details ofthe license to their clients. Second, Honeywell reiiises to produce its
communications with , stating that they are protected by the common interest privilege.
Honeywel1’s motivation is clear: Honeywell does not want Defendants to know that one of their
competitors is driving this lawsuit or that any settlement payment will directly benetit their
competitor. Therefore, Defendants request that the Court order Honeywell to do the following:
1) permit counsel for Defendants to disclose enumerated details of the - license to their
clients and 2) produce its communications with -
I. I11—House Counsel Should Be Permitted to See Certain Provisions of The -
Licenses
On z, Honeywell granted a non-exclusive license hereinafter, "the 2003
License" to U.S. Patent No. 5,280,371 to ;-. . Ex. A • 2.l. - -‘·_ - · ‘_· - . Z Q

Case 1 :04-cv-01333-JJF Document 929-3 Filed 1 1/26/2007 Page 2 of 3
The Honorable Mary Pat Thynge
November 19, 2007 (Public Version Dated: November 26, 2007)
Page 2
Over a year later, 0= -‘_- ‘E5§0··;_§`g0.j.0Z0_=T;Q -_‘·‘_ ‘..` 3 ··-` gjji, one ell and `_ 1 . entered into a second license
“¥ ¢ 004 Li¤€ S<=" · y EK B- ·—11 Ii?’Qiritéi`%§i???§i1*?-;°i?iiii?ieT `-`.·.‘ ‘-‘=. j ‘-iE i;?*t0QtaT.i.¥J05*? ·»r—·‘ T -‘`/.’» ‘ ‘`-‘ 0. 0 v {QQ 0 ” 0 r r 1 “ v 0. ·_
Earlier this year, counsel for Samsung SDI requested that Honeywell allow them to
disclose the following facts to their client:
Samsung SDI justified this request by stating that these facts could potentially form the basis for
a patent misuse claim. Further, Samsung SDI did not seek to disseminate these facts as public
infomation, instead seeking only to disclose them to a limited set of in—house counsel for
Samsung SDI, who have already agreed to be bound by the protective order, as "Confidentia1—<
Attorneys’ Eyes {)nly" infomation. Honeywell refused and offered to obtain an affidavit from
- that would prove that no patent misuse occurred. Later, however, Honeywell stated that it
‘ would only attempt to obtain such an affidavit if counsel for Samsung SDI agreed in advance not
to pursue a patent misuse claim. Counsel for Samsung SDI could not agree to Honeywell’s
proposal because Honeywell’s proposal did not allow for counsel for Samsung SDI to consult
with its client about the underlying facts.
Honeywell has offered no justification for its claim that these facts deserve “I—Iighly
Confidential-Outside Attorneys.? Eyes Only" designation, which justification is required under
the protective order. Further, licenses that grant a third party the ability to approve license
agreements have formed the basis for a patent misuse claim. See United States v. Krasnov, 143
F. Supp. 184, 203 (EI). Pa. 1956); United States v. Besser Mfg. C0., 96 F. Supp. 304 (ED.

Case 1 :04-cv-01333-JJF Document 929-3 Filed 1 1/26/2007 Page 3 of 3
The Honorable Mary Pat Thynge
November 19, 2007 (Public Version Dated: November 26, 2007)
Page 3 `
Mich. 1951). Therefore, Honeywell should be compelled to permit Defendants counsel to
disclose the five facts enumerated above to individuals qualified to view “Contidential~
Attorneys’ Eyes ()n1y" information.
II. Honeywell’s Communications with a Are Not Protected By a Joint Defense or H
Common Interest Privilege
Defendants? requests for production encompass communications between Honeywell and ,
- regarding licensing of the ‘37l patent. In response to these requests, Honeywell has g
produced only a single email between - and Honeywell and refused to produce almost one =
hundred cormnunications, arguing that they are protected by an alleged joint defense of common `
interest privilege. However, the joint defense doctrine expands the attorney-client privilege to
enable counsel for clients facing a common litigation opponent to exchange privileged
communications and attorney work product in order to adequately prepare a defense without ‘
waiving either privilege. Haines v. Liggett Group, Inc., 975 F.2d 81, 94 (3d Cir. 1992). For a
communication to be protected, the interests must be identical, not similar, and be legal, not
solely commercial. Corning Inc. v. SRU Biosystems, LLC, 223 li`.R.D. 189, l90 (D. Del. 2004)
(quotations and citations omitted).
Here, Honeywell has not demonstrated that it shares a legal interest with -, instead
stating only that it and n “had a common interest in this ‘371 patent? (Ex. C at 29: 1 8-30:4.)
Courts have found licensees and patent owners to have a common interest in a patent only when
the licensee is an exclusive licensee or when the patentee owes the licensee a duty to defend that
1icensee’s rights. See Research Institute for Medicine di: Chemistry, Inc. v. lids. Alumni Research
Found. , 114 F.R.D. 672, 678 W.D. Wis. 1987 . Nei cr situation exists here. ··`.. 1 -__· Q I .·l`- ‘ , r -- `
‘ · Therefo e, Honeywell and do no shar a legal interest in the ‘37l patent, and the
common interest privilege does not apply to H0neywell’s communications with -
` Without a common interest privilege, any privilege attaching to I—loneywell’s
communications with - has been waived. See Corning, 223 F.R.D. at l9l—92 ("’()nce a
corporate decision is made to disclose [privileged documents] for commercial purposes, no
matter what the economic imperatives, the privilege is lost."’). Therefore, Defendants
respectfully request that the Court order production of each of the documents withheld by
Honeywell as joint defense or common interest privileged.
Respectfully,
/s/ Richard L. Horwitz
Richard L. Horwitz
RLH:rimt/ss0121/29140
cc: Clerk of Court (by hand w/attachments)
Counsel of Record (by e-·fi1ing and e—mail w/attachments)