Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01338-JJF Document 919 Filed 11/19/2007 Page 1 of 3
Richard L. Horwitz
Potter §“""’“ L
@ And@fS0[] 1·htd@géipo;c`ei#ar1derson.com
302 984-6027 D' Pe
COITOOD LLP · 302 658-i 192 Fdicgct Om
1313 Noah Market Street
RO. Box 951
Wilmington, DE 19899-0951
302 984 6000
WW-P°“”m“d“$°“·"°m November 19, 2007
BY ELECTRONIC FILING
The Honorable Mary Pat '1`hynge
United States District Court
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., CA. N0. 04-1338-*** .
Dear Magistrate Judge Thynge:
Plaintiffs Honeywell International, Inc. and Honeywell Intellectual Property, Inc.
(collectively, "l—loneywe11") have failed to provide documents sufficient to fulfill their burden of
proof under 35 U.S.C. § 287(a). Honeywell seeks damages for alleged infringement occurring
years before Honeywell provided actual notice of the alleged infringement of U.S. Patent No.
5,280,371 (“the ‘37l patent”). To collect such damages, Honeywell must first prove that it has
complied with the marking provisions of Title 35. Therefore, defendants Samsung SDI Co., Ltd.
("Samsung SDI"), FUJlFILl\/I Corp., and FUJIFILM U.S.A., lnc. (collectively, "Defendants”)
_ requested information regarding the design of LCDs incorporated into Honeywell products. ln
response, Honeywell has refused to provide sufficient discovery to demonstrate that it has, in
fact, satisfied its statutory marking obligations, even though it bears the burden of proof on this
issue. Without the requested discovery, which is uniquely·in_1loneywell’s possession,
Defendants must take Honeywell at its word that it has never made or sold a product practicing —
the ‘371 patent. Therefore, Defendants respectfully request that the Court compel Honeywell to
respond to interrogatories, produce documents, and provide corporate testimony to substantiate
its claim that it provided constructive notice of the alleged infringement ofthe ‘37l patent to
Defendants by properly marking its products pursuant to 35 1l.S.C. § 287(a).
The award of damages for infringement occurring prior to actual notice of a patent
depends on whether the patentee provided constructive notice pursuant to § 287(a). See 35
U.S.C. § 287(a); Gert v. Logitech, Inc., 254 F.3d 1334 (Fed. Cir. 2001). Section 287(a) requires
"patentees, and persons making or selling any patented article for or under thern" to mark
products that practice a patent with the relevant patent number. Therefore, to satisfy § 287(a), a
patentee must demonstrate 1) that it marked any products practicing the patent with the patent
number and 2) that its licensees were required to mark their products and that it made reasonable ·
efforts to police its licensees. See Maxwell v. J Baker, Inc., 86 F.3d 1098, 1111-13 (Fed. Cir.
1996); Maxwell v. K Mart Corp., 880 F. Supp. 1323, 1336 (li}. Minn. 1995) ("Cornpliar1ce with
the marking statute cannot be measured by the reasonable efforts of a licensor alone as such
efforts without substantial and continuous marking by the licensee provide no notice to the

Case 1 :04-cv-01338-JJF Document 919 Filed 11/19/2007 Page 2 of 3
The Honorable Mary Pat Thynge
November 19, 2007
Page 2
public?). The patentee bears the burden of proving compliance with the marking statute.
Dunlop v. Schofield, 152 U.S. 244, 248 (l894); Maxwell, 86 F.3d at 1112-13.
Accordingly, Defendants sought discovery to determine whether Honeywell’s LCD
products practice the ‘37l patent and whether Honeywell and/or its licensees have marked
products as required by § 287(a). Samsung SDI served its lnterrogatories Nos. 12-14 ("the
marking inten·ogatories") seeking: 1) an identification of any products that Honeywell or its `
licensees made, sold, offered for sale, or imported into the United States that contain any LCD;
2) a description of I-Ioneywelks efforts to investigate whether Honeywell or any of its licensees
made, sold, offered for sale, or imported into the United States any unmarked LCD modules or
products incorporating the ‘37l technology; and 3) all facts supporting I—loneywel1’s contention
that it has complied with 35 U.S.C. § 287(a). Samsung SDI also served Document Request Nos.
52 and 53 ("the marking document requests") seeking documents sufficient to show the
composition of all relevant LCD modules, which would demonstrate whether any Honeywell
products are covered by the ‘37l patent.}
Honeywell failed to provide substantive infomation in response to these requests.
Rather than provide substantive responses to the marking interrogatories, Honeywell provided
the unsupported, conclusory, and self—serving statement that it has not cornmercialized the
technology of the ‘37l patent. Further, Honeywell objected to producing any information
responsive to the marking document requests, stating, without support, that the requests were
overly broad, unduly burdensome, and not likely to lead to admissible evidence. As discussed
below, Honeywell’s objections are not supported by the law or the facts.
Defendants’ requests are neither overly broad nor unduly burdensome, especially in light
of the significant damages that Honeywell seeks. Courts have compelled this type of
information from plaintiffs who fail to respond to discovery requests. See, ag., Mclfesson Info.
Solutions LLC v. Epic Sys. Corp., 242 F.R.D. 689 (N .D. Ga. 2007). ln McKesson, the defendant
asserted a marking defense and asked the plaintiff to produce information supporting its
contention that it had complied with the marking statute. The court ordered the plaintiff to
produce such information, stating that the information was relevant to the marking defense.
Despite the relevance of the requested infonnation, Honeywell has stonewalled
Defendants’ attempts to obtain this discovery. When Samsung SDI attempted to convince
Honeywell to comply with its discovery obligations, counsel for Honeywell stated that
responsive information could be obtained from Honeywell’s 30(b)(6) witness. Honeywell’s
corporate witness, however, was unable to explain the most basic details of Honeywell’s
investigation into whether its products incorporate the technology claimed in the ‘37 1 patent and
in fact testified that he was not familiar with either the design of any given LCD or the reasons
why any given LCD was deemed not to be covered by the ‘37l patent. Honeywell then
attempted to place the onus on Defendants to identi@ products for which it wishes to see design
information. Yet, Defendants can only identify and purchase a small subset of Honeywell’s
LCD products because many of Honeywell’s products are included in non-consumer products
1 FUIIFILM Corp.’s document request numbers 2 and 4 request discovery provided to other
defendants and thus also request such documentation. FU} IFILM Corpfs document request
number 8 also requests marking and notice—related information.

Case 1 :04-cv-01338-JJF Document 919 Filed 11/19/2007 Page 3 of 3
The Honorable Mary Pat Thynge
November 19, 2007
Page 3
such as jets and space shuttles. Therefore, Honeywell must be compelled to produce documents
sufficient to show the composition of all of the LCD modules incorporated into its products.
Defendants requests fairly and properly seek information that could greatly reduce
l—ioneywell’s damages claim. In fact, Samsung SDI has recently uncovered proof that Honeywell
and its licensees have sold unmarked products that practice the ‘37l patent. Samsung SDI
purchased and examined an unmarked Honeywell TE601CELW Color Weather Forecaster. This
product is covered by the ‘37l patent at least under Honeywell's claim interpretation. Upon
confrontation with the device, Honeywell stated that the device was not marked because it was
made by a third party licensee and thus was not subject to the marking requirements of § 2S7(a).
This position, however, is in blatant disregard of the plain language of § 287(a) and supporting
case law, which require licensees to mark products covered by the patent. See, e. g. , Maxwell v.
K Mart Corp., 880 F. Supp. 1323, 1336 (D. Minn. 1995). Given this new evidence, l~loneywell’s
motives for refusing to provide discovery are clear: Honeywell does not want Defendants to
have the opportunity to evaluate l~loneywell’s marking compliance because Honeywell knows it
has not complied with the statute. Defendants will be highly prejudiced if Honeywell is allowed
to continue to withhold this highly relevant information because the information will
significantly reduce the potential damages allowable for Honeywel1’s claims.
Without the requested discovery, Defendants have no way of continuing I-loneywell’s
contention that its LCDs do not practice the ‘371 patent. Only through additional discovery will
Defendants be able to determine the full extent to which Honeywell has failed to comply with the
marking requirements. Honeywell should therefore be compelled to do the following: 1)
provide a complete document production in response to request Nos. 52 and 53; 2) answer
Samsung SDI’s interrogatory nos. 12, 13, and 14, and 3) provide a corporate witness for -
deposition about l—loneywe1l’s failure to mark. Honeywell should not be allowed to make
unsupported allegations to sustain its damages claim, for which it has the burden of proof,
without producing the underlying information to substantiate its position. In the alternative, if
Honeywell refuses to produce the requested discovery regarding basic compliance with the
patent statutes, then it should be precluded from seeking any damages incurred prior to giving
actual notice to Defendants.
Respectfully,
/s/ Richard L. Horwitz
Richard L. Horwitz
RLH:mnr/sscizsrzsiae
cc: Clerk of Court (by hand)
Counsel of Record (by e-tiling and e—mail)