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Case 1 :04-cv-01338-JJF Document 694 Filed O1/24/2007 Page 1 of 4
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January 24, 2007
BY E—FILE
The Honorable Mary Pat Thynge
Magistrate Judge
United States District Court
U.S. Courthouse
844 N. King Street
Wilmington, DE 19801
Re: Honeywell International, Inc., et al., v. Apple Computer, Inc., et al.,
D. Del., CA. No. 04—l338—***
Dear Magistrate Judge Thynge:
We write on behalf of the Manufacturer Defendants in response to Your Honor’s
order of .IElI`1`t1Ei1'y 18 requesting the parties’ respective positions regarding the efficient handling
ofthe remainder of this large, multi-defendant patent infringement action. Specifically, we write
in support of our proposal to defer expert reports on damages until after completion of the initial
jury trial, which Judge Jordan limited to the issues of validity and enforceability of the patent—in—
suit. For reasons that will lead only to case management inefficiencies, Honeywell opposes any
such postponement. Indeed, it appears that, in addition to its desire to proceed with expert
discovery on damages notwithstanding that damages is not a "first triai" issue, Honeywell seeks

Case 1:04-cv-01338-JJF Document 694 Filed O1/24/2007 Page 2 of 4
The Honorable Mary fat Thynge
January 24, 2007
Page 2
to lift the stay of its claims against the Customer Defendants, which has been in place for more
than one year.]
As Your Honor is aware, the patent—in-suit, the ‘37 l patent, was tiled on luly 9,
1992 and issued January 18, 1994. Honeywell waited until October 6, 2004 (more than ten years
later) to assert its patent against the initial defendants (both manufacturer and customer
defendants) and another year to assert the patent against the new Manufacturer Defendants.
Honeywelfs long delay in asserting the ‘37l patent against tlie defendants compounded the
normal problem of finding prior art and relevant contemporaneous third-party work in the field at
issue. Not only did this delay impact on validity and enforceability discovery, it created an
impact on many ofthe party—speciiic issues of the Manufacturer Defendants, such as
infringement, laches, damages and willfulness.
In Judge .lordan’s Order of May l8, 2005 (DI. 202) (Ex. A hereto), he stayed this
case as to "customer defendants" and set out a procedure whereby they would be replaced by
their suppliers after this process was completed. In his March 28, 2006 Scheduling Order (BI.
376) (Ex. B hereto), after the procedure for identifying and providing Manufacturer Defendants
was essentially completed, Judge Jordan recognized the difficulties confronting the large number
of Manufacturer Defendants in preparing for, and participating in, the- trial of this action. Indeed,
during the March 13 hearing on the parties’ respective scheduling proposals, the Court expressly
l For many ofthe same reasons that support postponing expert reports on damages (not the least
of which is that damages will not be tried, if it is tried at all, until after the initial trial), the
Manufacturer Defendants oppose Honeywel1’s request to lift the stay as to the Customer
Defendants and respectfully refer the Court to the letter submitted today by the Customer
Defendants in support of a continued stay. Please note that several ofthe Manufacturer
Defendants are what were classified as hybrids, both manufacturing or assembling LCD modules
and buying such modules from third parties. The portion of this case relating to such hybrid
defendants third party modules has also been stayed.

Case 1:04-cv-01338-JJF Document 694 Filed O1/24/2007 Page 3 of 4
The Honorable Mary Pat Thynge
January 24, 2007
Page 3
rejected I-ioneywell’s trial approach (trial on all issues against all defendants). Instead, Judge
Jordan adopted the approach advocated by the majority of Manufacturer Defendants: a first trial
on common issues. See March 13, 2006 Hearing Tr. at 32 (Ex. C hereto).
Accordingly, paragraph 18 ofthe Scheduling Order provides for an initiai jury
trial on the issues of validity and enforcement of U.S. Patent No. 5,280,371 involving only the
Manufacturer Defendants. Following that trial, Judge Jordan was to decide how the remaining
issues (ag., infringement, laches, damages, willlitlness) were to be tried, to the extent they
survive the first trial.
Paragraph 3(d) of the Order provides that:
Unless otherwise agreed to by the parties, they shall fiie their initial Federal Rule of Civil
Procedure 26(a)(2) disclosures of expert testimony on or before ninety (90) days before
the date of completion of discovery, and tile a supplemental disclosure to contradict or
rebut evidence on the same subj ect matter identified by another party on or before forty»
five (45) days before the date for the completion of discovery.
As the foregoing deadline approached, it became clear that it would be a waste of
time, money and effort to produce damages expert reports at this early stage of the case. To the
extent a second trial or trials become necessary, supplemental discovery on damages and
supplemental damages expert reports would, inevitably, be required. To the extent products and
defendants are eliminated from the case by summary judgment or as a result of the first trial, the
initial damages expert reports would have been unnecessary, in whole or in part.
In view of the foregoing, the Manufacturer Defendants propose to defer only
damages expert reports until after the results of the initial trial are known and the Court sets a
schedule for the conduct of the next stage of this case. Damages discovery would be completed
and technical expert reports would be exchanged in accordance with the existing Scheduling

Case 1:04-cv-01338-JJF Document 694 Filed O1/24/2007 Page 4 of 4
The Honorable Mary Pat Thynge
January 24, 2607
Page 4
Order (as amended to extend all deadlines by three months as proposed by Plaintiffs and the
Manufacturer Defendants).
The Manufacturer Defendants, through Lawrence Rosenthal (counsel for the Fuji
Defendants), have met and conferred with Matthew Woods, counsel to Plaintiffs, but Plaintiffs
have refused to agree to the Manufacturer Defendants common sense approach to expert
damages discovery. Rather, it is now clear that Plaintiffs oppose the Manufacturer Defendants’
proposal because Plaintiffs seek a more fundamental change in the schedule: the reintroduction
of the stayed customer defendants. The Manufactmer Defendants, which advocated the two-step
trial schedule adopted by Judge Jordan over the vigorous objections of the Plaintiffs, oppose any
such fundamental change in the Scheduling Order, especially at this late date.2
Respectfully,
/s/ Philip A. Rovner
Philip A. Rovner
PAR/mes/774064
Enc.
cc: All Local Counsel of Record — By ECP .
2 Aside from Mr. Woods’ mention, without explanation, that Plaintiffs were contemplating a
"fundamental change” in the schedule, and Mr. Rosenthal’s advice that the Manufacturer
Defendants would oppose any "funda1nental change" in the schedule, the meet and confer
between Mr. Rosenthal and Mr. Woods on the 3—month extension and damages expert report
issues did not deal with a lifting of the stay applicable to customer defendants.