Mounts, Nionorrs, Ansett & TUNNELL LLP
i20l Norerni Manner STREET
P,O. Box l347
Wrrmruoron, Damwana l9899~l3*E7
302 658 9200
Taonins C.Gn1i·m 302 658 3989 FAX
302 351 9595
302 425 4661 Fax
tgré[email protected]
BY E-FILING
The Honorable Mary Pat Thynge
United States District Court for the District of Delaware
844 North King Street
Wilmington, DE 1980i
Re: Hrmeywell Interitotiontti Inc. ei nf. in Aggie Computer Inc. Cons. C.A. No. O·4—l338—***
Plaintiffs Honeywell International Inc., and Honeywell Intellectual Properties Inc.,
(“Honeywell") respectfully request that the Court compel Defendant Optrex America, Inc. ("Optrex") to
produce documents and information identifying afi sales of its accused modules regardless ofthe situs of
those sales,] As explained in detail below, despite the fact that all sales of its accused modules are highly
relevant to claims and issues in this case——and the fact that other defendants have acknowledged this and
agreed to provide discovery for worldwide sales of their accused modules——Optrex has refused to produce
discoverable information for any non—U.Sr sales of its accused modules.
Optrex should he ordered to produce information for all worldwide sales of its accused modules
because this information is discoverabte and relates directly to claims and defenses in this case, including
Optrex’s own claim that the ‘37l patent is invalid and Honeyvs/ell’s claims that Optrex has contributed to
andfor induced infringement of the “37l patent. From both the perspective of proving infringement, and
establishing commercial success, the first step to determining what modules ultimately enter the U.S. is to
identify what Optrex has sold to end product makers, regardless of location; then, the end product makers
("custorners") can cull that list and identify what is incorporated tnto a product destined for the U.S.2
l See, ag., Optrex’s Objections and Responses to Honeywelfs First Set Of Document Requests, Nos. 2i and 22,
attached as Exhibit A. On July 13, 2006, Honeywell and Optrex entered into a certain Stipuiation whereby Optrex
agreed to produce discoverable information from its affiliates and subsidiaries, including Optrex Corporation,
located in Japan.
2 As addressed further below, Honeywell requires commercial success discovery from both module manufacturers
such as Optrex and their customers, the end product makers. As the Court is aware, the customer defendants are
refusing to provide their discoverable information relating to commercial success.
Case 1:O4—cv—O1338-JJF Document 739 Filed O3/19/2007 Page 2 of 4
The Honorable Mary Pat Thynge
March E9, 2007
Page 2
Optrex’s refusal to produce this relevant and discoverable infomation prejudices Honeywell’s right and
ability to properly defend against Optrex’s invalidity assertions and otherwise prepare this case for trial.
A. The Commercial Success of Optrex’s Accused Modules is Relevant To Optrerds
invalidity Claims And Optrex Should Produce information For Alt Accused Module
Sales
lt cannot be disputed that the commercial success of Optrex’s accused products is relevant to
Optrex’s invalidity contention because commercial success CHU be used by a patent holder as indicia of
noroobviousness. See Graham v. John Deere C0., 383 U.S. 1, 17-18, 35-36 (1996). It also cannot be
disputed that sales of the accused inninging products can be utilized to gauge the commercial success of
the patented invention. See, ag., Brown & Willicmzsort Tobacco Corp. v. Pliillzp Mforris Inc., 229 F.3d
H20, il30 (Fed Cir. 2000). Moreover, the commercial success of OptreX’s accused modules is highly
relevant to Optrexfs claim that the subject matter of the ‘37l patent is obvious. Without information
establishing the commercial success of Optrex’s accused products, Honeywell cannot properly and
adequately rebut Optrex’s obviousness argument. Optrex’s refusal to produce all discoverable
information evidencing the commercial success of its products, therefore, unduly prejudices Honeywell.
As set forth in Honeywell’s March 2, 2007 letter, l·loneywell’s ability to counter Optrex’s (and
the other defendants’) obviousness argument is already impaired by the fact that Honeywell does not
currently have information dom the Customer Defendants showing the commercial success of the
patented invention as incorporated into end products sold in the United States. Optrefs refusal to
produce its own information relating to the commercial success of its products only exacerbates the
prejudice to Honeywell, which is faced with opposing Optreros obviousness arguments without any
information relating to commercial success of Optrercs products. While Honeywell’s request for such
information from the Customer Defendants has been addressed in H`oneywell’s March 2, 2007 letter, it is
important to note that Honeywell needs commercial success information from both the Customer
Defendants and the manufacturers such as Optrex in order to gain a complete understanding of the
commercial success ofthe patented invention. Without all of this infomation Honeywell cannot properly
challenge Optrex’s invalidity contentions.
Case 1:O4—cv—O1338-JJF Document 739 Filed O3/19/2007 Page 3 of 4
The Honorable Mary Pat Thynge
March 19, 2007
Page 3
B. Information Regarding Optrex’s Non—U.S. Sales ls Relevant to I-loneywellls Inducement
and Contributory Infringement Claims, And Honeywel1’s Direct lnfringement Claims
Against The Customers Even lf Optrex. Asserts Honeywell Cannot Recover Damages For
Every Sale Of An Accused Module
Regardless of the fact that Optrex may contend that most of its sales of infringing modules are
beyond the territorial scope of 35 U.S.C. § 27l, infomation relating to Optreifs sales is nevertheless
relevant and discoverable because Honeywell has alleged that Optrex has contributed to and/or induced
infringement of the ‘37l patent. As outlined recently by the Federal Circuit in DSU Medical Corp. v.
JMS Co., F.3d, Nos, 0&—l620, 05~10·
constituted direct inningenient and (2) possessed specific intent to encourage those acts of direct
infringement. Based upon its own investigation and inforrnation provided by Optrex’s customers,
Honeywell has also alleged that Optrex’s modules have been found in infringing end products sold in the
United States.
As a result of the test outlined in DSU Medical, it imperative that Honeywell have access to
Optreifs worldwide sales information as a first step in building its inducement of infringement case
against Optrex. Even if ultimately some of those foreign sales are not subject to damages calculations
against Optrex per se, the information regarding all sales is nevertheless relevant and discoverable at this
stage so that Honeywell can determine whether those sales are made to a Customer Defendant who
incorporates the modules into end products that are then irnponed into the United States. In this way,
Honeywell will have an opportunity to meet its burden under DSU Medical and determine whether sales
that appear "foreign" on their face are nevertheless infringing because they are sales made by Optrex with
the requisite knowledge and intent to cause direct infringement. If Optrex refuses to produce infomation
relating to its worldwide sales, Honeywell will not be able to discover infomation highly relevant and
necessary under the test outlined in DSU Medical. Optrex’s refusal, therefore, prejudices l—Ioneyweli’s
ability to prosecute its case.
For all of these reasons, Honeywell respectfully requests that this Court order Optrex to produce
information detailing the worldwide sales of its accused modules within 7 days.
Respectfully,
/s/’ Thomas C. Grimm
Thomas C. Grimm (#l098)
Case 1 :04-cv-01338-JJF Document 739 Filed O3/19/2007 Page 4 0f 4
The Honorable Mary P&tThy1'1g€
Merch 19, 2007
Page 4
ce: Dr. Peter T. Dallec, Clerk (by hand)
Ali Counsel 0fRec0rd (by 6-lilillg and e—maii)
Mmthew L. Weeds, Esquire (by e—m21il)
United States Free Forms
Canada Free Forms
United Kingdom Free Forms
Australia Free Forms