Free Letter - District Court of Delaware - Delaware

Case 1:O4—cv—O1338-JJF Document 901-8 Filed 11/O1/2007 Page 1 013

Case 1 :04-cv-01338-JJF Document 901 -8 Filed 11/01 /2007 Page 2 of 3
— SPIVAK A
McC1.E11.AN1>
MAJER
..............— & ........1.
NEUsTAr;vr
September 13, 2007 BQ
V~1Em·~’ ATTORNEYS AT uw
Alan E. McKenna, Esq. “g*6*$;’A;°;§;;*;R
ROBINS, KAPLAN, MILLER & CIRESI LLP _ JPRESPHR@¤BL¤~.c¤M
800 Boylston Street, 25m Floor BAR OTHER THAN V'RG""'A
Boston, MA 02199
Re: Honeywell Litigations
C.A. Nos. 04-1337, -1338, and -1536-KAJ
Our Ref: 260613-261775US .
Dear Alan:
I write in response to your letter of August 13, 2007, wherein you conveyed Honeywell’s
unwillingness to supplement its responses to Optrex’s Second Set of Requests for Admissions
and Fourth Set of Interrogatories.
Your letter characterizes the discovery Optrex provided for the modules in question as
“limited and selective" such that Honeywell cannot "respond more fully than it already has" nor
"make determinations as to the technical aspects of each of these modules." Unfortunately, your
letter provides no guidance as to what additional discovery Honeywell believes it needs on these
modules. As stated in my letter of August 3, 2007, Optrex provided Honeywell with
interrogatory responses specifically identifying these modules, as well as extensive and
substantive technical and sales documentation regarding these modules. As your letter
acknowledges, Optrex produced lens sheet drawings for each module in question. Optrex seeks
an explanation — which your letter fails to provide — as to why the lens sheet drawings Optrex
provided are insufficient to allow Honeywell to "make determinations as to the technical aspects
of each of these modules," such as whether or not they infringe the ‘37l patent. Moreover,
Optrex made witnesses available to testify about these modules, and Honeywell took significant
testimony on these modules, including five days of testimony from Mr. Kobayashi, Optrex’s
technical witness. Thus, we are still puzzled as to what "complete discovery" requested by
Honeywell on these modules remains.
Furthermore, Honeywell asserts that it cannot make a determination as to whether the
modules in question do not in fact contain rotated lens sheets (and thus, do not infringe), despite
the aforementioned lens sheet drawings showing no such rotation in their design, because Mr.
Kobayashi testiiied that Optrex accepts up to l° of rotation in its BEF sheets as a natural and
necessary tolerance for manufacturing purposes, even though the design of these modules calls
for no rotation ofthe BEF sheets. (See Kobayashi, Vol. 3, at 269:9-272: 1). In fact, your letter
1940 Duke Smear ¤ ArExAuoRiA,ViRc1N1A 22314 ¤ U.S.A.
Tetapmoue: 703-413-3000 n Fmsnvuuz: 703-413-2220 u wvvw.oeto~.coM

Case 1 :04-cv-01338-JJF Document 901 -8 Filed 11/01 /2007 Page 3 of 3
Alan E. McKenna, Esq. ‘ "
September 13, 2007 ...9..“L°§}]'....
Page 2 · ...§2’}.‘5£‘... (
McCu:u.·xN1:•
Mmizx
goes so far as to state that "Mr. Kobayashi’s testimony highlights the impropriety of the *l*i¤T1str-Airi-
discovery requests at issue." Optrex requests confirmation that it is Honeywell’s Be
position that modules with up to l° of rotation resulting from necessary manufacturing
tolerances infringe the ‘37l patent despite no rotation being called for in their design, as
Honeywell’s position has significant impact on the prior art to the ‘37l patent, as well as
Optrex’s §l l2 defense.
Finally, your concern regarding potentially "cherry picking" modules to include in these
discovery requests misses the point of these discovery requests. Optrex wishes to establish (l)
whether Honeywell still regards Optrex’s redesigned versions of previously accused products
as infringing (even though they now are specified not to include rotated lens sheets), and (2)
whether similarly designed (i.e., non—rotated) Optrex modules sold years prior to this litigation
would have been deemed by Honeywell as not infringing. Both of these principles are vital
to calculating damages in this case, as well as to Optrex’s laches defense.
Whether the modules identified in Optrex’s discovery are a representative or an
exhaustive list of modules designed to include non—rotated lens sheets is irrelevant to
Honeywell’s obligation to properly respond to the discovery. Furthermore, Honeywell is without
any right to hold its obligated responses hostage in return for the potential disclosure of
additional rotated two-sheet Optrex modules that Honeywell has not specifically accused of
infringement, in direct contravention with the Court’s rulings. The existence of an additional
Optrex module that Honeywell could potentially accuse neither changes Honeywell’s obligation
to properly respond to Optrex’s discovery requests, nor impacts the vital importance of this
discovery to Optrex’s damages case and laches defense.
Unless Honeywell is willing to properly supplement its discovery responses, we request
to conduct a meet and confer on Monday, September 17th, or Tuesday, September 18th, so that
we can promptly resolve this matter, and if necessary, bring it before the Court for resolution.
Sincerely,
OBLON, SPIVAK, McCLELLAND,
MAIER & NEUSTADT, P.C.
(‘ J _,{y\A
l `
John F. Presper