Free Letter - District Court of Delaware - Delaware

Case 1:04-cv—01338-JJF Document 901 Filed 11/01/2007 Page 1 of 3
Yourvo CoNAwAY STARGATT & TAYLOR, LLP , ,_
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November 1, 2007
BY E-FILING
The Honorable Mary Pat Thynge
United States District Court`
844 King Street
Wilmington, DE 19801
Re: Honeywell International Inc., et al v. Apple Computer Inc., et ol.
C.A. Nos. 04-1337, -1338, and -1536-*** (Consolidated)
Dear Judge Thynge:
In advance of the teleconference scheduled for Thursday, November 8, 2007 at 9:00 a.m.
EST, 1 write on behalf of Optrex America, Inc. ("Optrex") regarding a discovery matter that
Optrex addressed with Honeywell in a meet and confer on October 1, 2007, and in prior
correspondence.
Optrex respectfully requests from the Court the following relief:
1. That Honeywell be ordered to supplement its responses, and admit or deny
Optrex’s Second Set of Requests for Admission, Nos. 30 and 130-191; and
2. That Honeywell be ordered to supplement its response to Optrex’s Fourth Set of
lnterrogatories, No. 12.
1. Optrex’s Second Set of Requests for Admission
Optrex’s Request Nos. 30 and 130-191 ask Honeywell to admit or deny whether Optrex
modules having the structure shown in identified engineering drawings infringe the ‘371 patent.
(See Optrex’s Second Set of Requests for Admission, Ex. A.) Those drawings show modules
having two BEF films that are rg; rotated relative to the LCD panel. ln contrast, claim 3 of the
‘371 patent requires lens arrays to be rotated relative to the LCD panel. These are simple and
straightforward requests that seek to streamline the litigation by establishing facts over which
there should be no dispute.
The requested admissions relate directly to the fact that Optrex has now (and had in the
past) a non-infringing alternative to the design claimed in the ‘371 patent. Optrex is entitled to
know whether Honeywell considers Optrex’s non-rotated BEF design to infringe the ‘371 patent.
Among other issues, these facts are essential to Optrex’s laches defense and the calculation of
damages in this case. Moreover, Honeywel1’s responses to these requests impact the effect of
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Case 1:04-cv—01338-JJF Document 901 Filed 11/01/2007 Page 2 of 3
Youno CoNAwAY STARGATT & TAYLOR, LLP _'
The Honorable Mary Pat Thynge ' l
November 1, 2007
Page 2 i 1
certain prior art to the ‘371 patent having the same design (the Abileah ‘041 patent), as well as
Optrex’s defense that claim 3 of the ‘371 patent is indefinite.
Honeywell, however, refuses to admit or deny Optrex’s requests for admission on the
grounds, inter alia, that (1) Optrex has purportedly asserted that only modules specifically
accused of infringement are relevant to this litigation, (2) Optrex has provided insufficient
discovery regarding the modules in question, and (3) Optrex modules have a manufacturing
tolerance of +/— 1 degree.1 (See Honeywe11’s Responses to Optrex’s Second Set of Requests for
Admission, Ex. B.)
Honeywell alleges that information regarding non-rotated modules is irrelevant "based on
Optrex’s ongoing assertion in this matter that the only modules relevant to this litigation are
those modules that Honeywell has specifically accused of infringing the ‘371 patent." (Ex. B at
2; and in pczssim). This objection grossly overstates Optrex’s reliance on this Court’s prior
rulings.2 Neither Optrex nor the Court have ever suggested that the modules at issue in Optrex’s
laches defense are limited to those Optrex modules specifically identified by Honeywell. For
example, Optrex’s first responses in May 9, 2006, to Honeywell’s first interrogatories identified
many modules other than those identified by Honeywell in support of Optrex’s laches defense.
Honeywell attempts once again to improperly shift the burden of identifying infringing
products, this time by holding responses relating to Optrex’s alternative design hostage in return
for the disclosure of additional rotated two-BEF Optrex modules that Honeywell
has not specifically accused of infringement (see letter of August 13, 2007 from Alan McKenna
to John Presper, Ex. D at 2), in direct contravention with the Court’s rulings. Honeywell has
made these arguments before, and the Court has repeatedly decided against Honeywell. (See,
e. g., Transcript of September 9, 2005 Teleconference at 27-29 (not docketed) (Ex. E); Transcript
ofJuly 21, 2006 Teleconference at 18-21 (D.l. 506 in C.A. No. 04-1338-*}**) (Ex. F).)
Honeywell further objects that the discovery Optrex provided for the modules in question
is "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" (Ex. D at 1).
This argument is not credible. Optrex seeks very narrow, focused discovery. Optrex provided
Honeywell with interrogatory responses specifically identifying these modules, as well as
extensive and substantive technical and sales documentation regarding these modules (including
backlight drawings for each module in question). Optrex also provided witnesses to testify about
I Honeywell also refuses to admit or deny these requests on the grounds of attomey-client and work product
privilege, and because two modules made available for Honeywell’s analysis with the same module number had
lens arrays with inconsistent degrees of rotation. As stated in the letter of August 3, 2007 from John Presper to
Alan McKenna, the attorney-client and work product privileges are not valid reasons for Honeywell to withhold
its position on whether a particular module infringes, and each request is specifically limited to modules having
the particular stnrcture shown in the engineering drawing cited in Optrex’s document production. (See Ex. C at
2).
2 Those rulings confirmed that Honeywell bears the burden of specifically identifying allegedly infringing
products.
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Case 1:04-cv—01338-JJF Document 901 Filed 11/01/2007 Page 3 of 3
Youne CoNAwAY STARGATT & TAYLOR, LLP
The Honorable Mary Pat Thynge ‘ l W
November 1, 2007
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these modules (including Mr. Kobayashi, OptreX’s technical witness, from whom Honeywell
took five days of testimony on these and other modules). (See letter of September 13, 2007 from
‘ John Presper to Alan McKenna, Ex. G at 1.) Furthermore, Honeywell has given no guidance as
to why it requires additional discovery for these modules, nor has Honeywell explained 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." (Id) Refusing to provide
responses to Optrex’s valid discovery requests is simply improper.
Honeywell also refuses to admit or deny the requests by relying upon Mr. Kobayashi’s
testimony that Optrex accepts up to 1 degree of rotation of the lens sheets as a natural and
necessary manufacturing tolerance (see Ex. D at 1). This is despite the fact that these requests
are specifically limited to modules having the structure shown in specified engineering drawings,
and these lens sheet drawings show no rotation of the lens sheets. (See, eg., Request to Admit
no. 182: "Admit that Optrex LCD module no P-51963GD035J-MLW—AlN, having the structure
shown in engineering drawing N0. LEDBL51963B—W-1 , found at Bates number OAI 0126531,
does not infringe claim 3 of the ‘37l Patent."(italics added).) Accordingly, tolerances involving
rotation of these lens sheets are irrelevant to the precisely drafted requests. Even if a drawing
referred to manufacturing tolerances, this still would not permit Honeywell to avoid admitting or
denying the request. Optrex deserves a substantive response from Honeywell on whether any
such tolerance in rotation does or does not infringe the ‘371 patent.
2. Optrex’s Fourth Set of interrogatories
Optrex’s lnterrogatory No. 12 asks Honeywell to state whether certain modules identified
by Optrex that contain non-rotated lens arrays infringe the ‘371 patent, and if so, to identify all
facts and documents Honeywell relies on in support thereof. Honeywell relies upon the three
objections discussed above to refuse substantively responding to this interrogatory. (See Ex. H at
pp. 4-6.) For the aforementioned reasons, these objections are likewise without merit. Optrex is
entitled to a response from Honeywell that explains whether such modules are accused of
infringement, and if so, the facts and documents that support this contention,.
Respectfully,
Karen L. Pascale
Delaware Bar No. 2903
cc: Dr. Peter T. Dalleo, Clerk (by hand)
CM/ECP list (by e-filing)
Thomas C. Grimm, Esquire (by hand)
Matthew L. Woods, Esquire (by e-mail)
Andrew M. Ollis, Esquire (by e-mail)
nB02;6s42610.1 065004.100]