Free Letter - District Court of Delaware - Delaware

Case 1:O4—cv—O1338-JJF Document 722 Filed O3/O1/2007 Paget of3
MoRR1s, NICHOLS, ARSHT & TUNNELL LLP
1201 NORTH MARKET STREET
P.O. Box 1347
WILMINGTON, DELAWARE 19899-1347
302 658 9200
Trromns C.GR1MM FAX
302 351 9595
302 425 4661 Fxx March 1, 2007
[email protected]
BY E-FILING
The Honorable Mary Pat Thynge
United States Magistrate Judge
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.
Cons. CA. No. 04-1338-***
Dear Magistrate Judge Thynge:
I write on behalf of Honeywell in response to Mr. Philip Rovner’s letter of
February 28, 2007, submitted on behalf of the Manufacturer Defendants. In circumvention of
the Protective Order that all parties negotiated and agreed to, Mr. Rovner’s letter requests the
ability to keep a copy of a plainly privileged document that Honeywell inadvertently produced
during the course of this litigation. What Mr. Rovner’s letter requests would completely negate
Section 19.1 of the Protective Order and undermine the principles underlying the attorney-client
and work-product privilege.
The privileged document at issue was inadvertently produced by Honeywell on
October 20, 2006. Honeywell became aware of the inadvertent production on February 23, 2007,
and immediately requested in writing that, pursuant to Section 19.1 of the Protective Order, all
copies of the documents be retumed or destroyed. This section of the Protective Order is
attached for Your Honor’s convenience (see Exhibit A). While Mr. Rovner implies that the
inadvertent production of this document presents a situation identical to that which was
discussed at the February 22, 2007 conference with Your Honor, nothing could be further from
the truth. This specific document is clearly privileged on its face: (1) Loria Yeadon, who all
parties know to be counsel for Honeywell, is expressly indicated as a recipient; and (2) the
document is explicitly marked as "Attomey-Client Privilege/Attomey Work Product/Honeywell
Confidential? Besides these clear indications of privilege, in contrast to the document that was

Case 1:O4—cv—O1338-JJF Document 722 Filed O3/O1/2007 Page 2 of 3
The Honorable Mary Pat Thynge
March l, 2007
Page 2
the subject of discussion at the February 22 conference, this document has not been used in any
way in the present litigationl
If any of the defendants were aware of the document prior to Honeywell bringing
it to their attention, then they were obligated to inform Honeywell. Under Delaware Rule of
Professional Conduct 4.4 (b), a lawyer who receives a document that he or she knows or
reasonably should know was inadvertently produced shall promptly notify the sender.
Honeywell has itself followed this rule at least three times during the course of this litigation
when something on the face of a document produced by defendants indicated that it may contain
privileged information. Moreover, Honeywell has on at least six occasions undertaken to destroy
documents upon the request of a defendant who wrote, pursuant to Section 19.1 of the Protective
Order, to request the destruction or return of inadvertently produced documents (see Exhibit B,
correspondence from Honeywell to Epson, Toppoly and Optrex confirming destruction of
inadvertently produced documents per request of those parties). The privileged document at
issue presents clear indications of privilege on its face, and Honeywell expects the same courtesy
and compliance with Delaware practices regarding inadvertent productions of privileged
documents from defendants’ counsel.
If the defendants were not previously aware of the privileged document and were
only made aware of it upon receipt of Honeywell’s letter of February 23, 2007, then it is their
obligation under the Protective Order — which they negotiateal agreed t0, and signed — to destroy
all copies of the document. There is absolutely no basis, under either the Protective Order or any
rule of professional responsibility, to allow Fuji or any other defendant to retain an inadvertent
production so that they can consider the privileged document in terms of the basis for the
privilege. At this time, the defendants should never have even seen the document, let alone be in
any position to claim a right to retain this document in order to evaluate it. Defendants
presumably, and properly, have yet to examine the document — because when pressed by
Honeywell for the basis for the impending privilege challenge or the basis for their claimed right
to refuse to destroy the clocument, the defendants provided no response.
This is how it should be: the defendants should not be allowed continued access to
privileged material, and the procedures established by the Protective Order should and must be
followed. The proper procedure for any challenge to the status of this document is to wait until
the document is destroyed and properly placed on Honeywell’s privilege log. At that time, the
defendants may request an in-camera review of the document. Under no circumstances should a
party in this case or any other be allowed to circumvent a protective order and retain a privileged
document that has been called to their attention as inadvertently produced so that the party can
I As the defendants know, the document that was the subject of the discussion at the
February 22 conference was used at a deposition and was not immediately recognized by
Honeywell as privileged. Honeywell’s agreement that defendants be allowed to keep one
copy of this particular document until the issue was resolved was a unique compromise
born out of that specific situation.

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The Honorable Mary Pal Thynge
March l, 2007
Page 3
"complete its investigation" of the document. Such a proposal completely negates the procedure
that the parties agreed to in the Protective Order and undermines the very nature of the rules of
professional conduct surrounding attorney-client privilege and inadvertent productions.
Honeywell is available on Friday should Your Honor wish to have a
teleconference on this matter.
Respectfully,
Thomas C. Grimm (#1098)
TCG
Enclosures
cc: Dr. Peter T. Dalleo, Clerk (by hand)
All Counsel of Record (by e-tiling and e-mail)
Matthew L. Woods, Esquire (by e-mail)
Stacie E. Oberts, Esquire (by e-mail)