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Case1:04-cv-01338-JJF Document 901-4 Filed 11/01/2007 Page1 014

Case 1:04-cv-01338-JJF Document 901-4 Filed 11/01/2007 Page 2 of 4
OBLON
SPNAK
MCCLELIAND
MAIER

NEUSTADT
P.C.
August 3, Al-IORNEYS AT LAW
Via email 18%%,if §§i—,22"
[email protected]
Alan E. McKenna, Esq. *BAR OTHER THAN Vmcmm
ROBINS, KAPLAN, MILLER & CIRESI LLP
800 Boylston Street, 25th Floor
Boston, MA 02199
Re: Honeywell Litigations
C.A. Nos. 04-1337, -1338, and -1536-KAJ
Our Ref: 260613-261775US
Dear Alan,
I write regarding the responses served by Honeywell on July 1 1, 2007 to Optrex’s Second
Set of Requests for Admissions and Fourth Set of Interrogatories. Optrex seeks supplementation
of Honeywell’s responses as discussed below.
Optrex’s Second Set of Requests for Admissions
Honeywell objected to and professed it could neither admit nor deny Request Nos. 30 and
130-91 for the following five reasons:
1) Optrex allegedly asserted that only modules specifically accused of infringing the ‘37l
patent are relevant to this litigation;
2) Honeywell could not fully respond until "Optrex provides complete discovery regarding
this module";
3) Attorney-client and work-product privilege;
4) Optrex’s technical witness testified that Optrex products have a tolerance of +/- 1 degree;
and
5) Optrex modules made available for Honeywell’s analysis had lens arrays with
inconsistent degrees of rotation, even though such modules had the same module number.
These reasons for neither admitting nor denying these requests are without merit, and
Honeywell must supplement its responses immediately.
It is obviously not Optrex’s position that only modules specifically accused of infringing
the ‘37l patent are relevant to this litigation. As you know, Optrex has identified a whole series
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Case 1:04-cv-01338-JJF Document 901-4 Filed 11/01/2007 Page 3 of 4
Alan E. McKenna, Esq. OBLON
August 3, 2007 mi
Page 2 ivrrgimw
MAIER
W NEUSTK
of modules as alternative designs that are relevant to its laches and damages defenses.
Accordingly, Optrex provided Honeywell with ample discovery on these modules, such
as interrogatory responses specifically identifying them, as well as extensive and substantive
technical and sales documentation regarding these modules. Optrex also made witnesses
available to testify about these modules, and Honeywell took significant testimony on these
modules. Thus, we are puzzled as to what "complete discovery" requested by Honeywell on
these modules remains.
Honeywell’s objection that only accused products are relevant to this litigation is further
without merit because Honeywell knows very well that the Court itself ordered that Honeywell
camiot require defendants to inform Honeywell which products might infringe — and that this
burden squarely falls upon Honeywell’s shoulders. This Court order has nothing to do with
discovery of facts relating to Optrex’s laches and damages defenses regarding the existence of
non-infringing alternatives. Unless Honeywell stipulates that it is not entitled to damages for
sales of accused products prior to the filing of the lawsuit and that all of the identified modules in
these requests are non-infringing (which Honeywell appears unwilling to do), these facts are very
important, discoverable, and relevant to Optrex’s damages and laches defenses.
With respect to attorney—client and work product privileges, these are not reasons for
Honeywell to withhold taking a position on whether a particular module infringes. Honeywell
certainly has not waived its privileges by identifying the modules accused of infringement by
Optrex and other parties thus far. Accordingly, Honeywell does not appear to rely upon this
objection for not taking a position regarding the non-infringement of the identified modules.
Honeywell’s first three reasons above therefore provide no excuse to avoid admitting or denying
these requests.
Each of these requests provided Honeywell with the bates number of the engineering
drawing in Optrex’s document production showing the backlight structure for the identified
module. These requests were also specifically limited to modules having the particular structure
shown in the engineering drawing. Accordingly, Honeywell’s objections and comments
regarding tolerances and former instances of Optrex modules with inconsistent degrees of
rotation have no bearing on these requests because the requests are directed only to the specific
structures shown in the engineering drawings. Optrex is therefore entitled to an admission or
denial that the modules with the structures shown in the identified drawings do not infringe any
claim of the ‘37l patent.
Optrex’s Fourth Set of Interrogatories
Honeywell relies only upon the first three objections enumerated above to refuse
substantively responding to Interrogatory No. 12. For the aforementioned reasons, these three
objections are baseless. Optrex is entitled to a response from Honeywell that explains whether

Case 1:04-cv-01338-JJF Document 901-4 Filed 11/01/2007 Page 4 of 4
Alan E. McKenna, Esq. OBLON
August 3, 2007 QQ?
Page 3 MCCLELLAMS
MAIER
NEUSTAUI
such modules are accused of infringement, and if so, the facts and documents and that support
this contention.
If Honeywell does not agree to immediately supplement the discovery responses
identified above, we request to meet and confer on the substance of Honeywell’s responses and
determine if the Courts intervention is required to resolve these issues. Please advise when you
are available next week to have such a discussion.
Very truly yours,
OBLON, SPIVAK, McCLELLAND,
MAIER & NEUSTADT, P.C.
Jo resper