Free Letter - District Court of Delaware - Delaware

Case 1:04—cv—01338-JJF Document 496 Filed 07/14/2006 Paget of4
Momzrs, NICHOLS, ARSHT & TUNNELL LLP
1201 Noxrn MARKET Srrmxr
P.O. Box 1347
WILMINGTON, DELAWARE 19899-1347
302 658 9200
THOMAS C.G1uMM FAX
302 351 9595 JUIY 14= 2006
302 425 4661 FAX
[email protected]
The Honorable Kent A. Jordan
United States District Court for the District of Delaware Via Electronic Filing
844 King Street, Lockbox 10
Wilmington, DE 19801
Re: Honeywell International Inc., et. al., v. Apple Computer, Inc., et. al.
C.A. No. 04-1338 QKAJ) gConsolidated)
Dear Judge Jordan:
We represent the Honeywell parties in this matter. We write with respect to the majority
of the LCD Manufacturer Defendants’ refusal to provide documents and information going to the
heart of Honeywell’s infringement claim.
Specifically, most defendants have refused to answer key interrogatories and document
requests directed to all LCD modules made by them that use "substantially the same structure"
(the phrase used in the Court’s October 7, 2005 Order) as the modules previously identified by
Honeywell as infringing. This letter sets forth the basic contours of the present dispute.
However, because the defendants’ refusal to respond to this discovery threatens to severely and
perhaps irreparably prejudice Honeywell’s ability to pursue its infringement claim, Honeywell
respectfully requests the opportunity to brief fully the legal and factual arguments briefly
summarized below.
The defendants’ refusal to provide discovery is based on three unsupportable objections.
First, Honeywell asked the LCD Manufacturer Defendants to identify, and then provide
teclmical and financial information regarding, all LCD modules which use "substantially the
same structure" as those previously identified; i.e., those that include a light source, an LCD
panel, and two lens arrays, one of which is misaligned (the "Accused Structure"). This definition
provides straightforward, objective criteria by which any LCD module manufacturer can easily
identify which LCD modules fall under Honeywell’s infringement allegations. The defendants
argue that such discovery goes beyond the scope of the case insofar as Honeywell has not first
identified, by model number, each such module; they also argue it is unduly burdensome for
them to produce information on modules which meet these select criteria.
However, the requested discovery was crafted in view of prior guidance from the Court.
The Court has determined that Honeywell is entitled to information regarding modules with
"substantially the same structure." October 7, 2005 Order, il l(c). In the hearing leading up to

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The Honorable Kent A. Jordan
July 14, 2006
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this Order, the Court approved of Honeywell’s identification of criteria to be used to determine
whether a module was substantially the same:
THE COURT: [ . . . ] what do you mean when you say "similar'?"
MR. LUECK: Right. Here is what I mean when I say "similar," Your
Honor. A light source, an LCD panel, two lens arrays, one of which is misaligned.
THE COURT: If you want to say, if you want to frame your discovery in a
manner that incorporates your specific allegations of infringement, fine.
MR. LUECK: That is exactly what we’re asking for. And that we would
frame it exactly that way.
THE COURT: All right. Does everybody understand the discovery I’m
telling them they’re entitled to?
September 9, 2005 hearing transcript, page 31. When the original customer defendants largely
could not provide this information, Honeywell focused its discovery efforts upon the current
manufacturer defendants, seeking information only on modules which meet the criteria stated at
the hearing and in the Order. Thus, while the defendants attempt to avoid the consequences of
their infringement by crying "fishing expedition," Honeywell’s focused discovery extends only
to products with substantially the same structure (defined using non-subjective criteria) as those
that Honeywell has already analyzed and considers to be infringing. In a further effort to
alleviate any claimed burdens on the defendants, Honeywell has offered to purchase from each
defendant a sample of each of their modules and perform the above-noted evaluation itself. Only
one defendant has agreed to such an arrangement.
The LCD Manufacturer Defendants are the only ones in possession and control of the
basic information about the LCD modules at issue that Honeywell is seeking. Indeed, these
defendants were brought into the case specifically because of their superior knowledge regarding
the structure of their products, as compared with their customers -— the original defendants in this
case. See, e. g., May 16, 2005 status conference transcript at 17-18 (statements of Counsel for
Seiko Epson). For the LCD Manufacturer Defendants to now refiise to provide discovery
regarding their modules vitiates the purpose of the Court ordering them brought into the
litigation — i.e., their ability and presumed desire to defend their products on behalf of the
original defendants who are their customers. These defendants have no legitimate practical or
legal basis for refusing to respond to Honeywell’s discovery.
Not only are the Manufacturer Defendants best positioned to provide the requested
discovery, but without it, Honeywell will be severely prejudiced because it has no other way to
obtain the evidence critical to its infringement claims. This is true for a number of practical
reasons, including:
• LCD modules can generally be obtained only by purchasing the consumer electronic
products containing them. But there is no way when purchasing a retail product to know
which brand LCD module is used in it, let alone which model LCD module is in it.

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The Honorable Kent A. Jordan
July 14, 2006
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• In the electronics industry, it is common for new models of consumer products to be
brought to market, and relatively recent models to be discontinued, frequently. The same
is true for the LCD modules within them.
• Older model modules, sold within the relevant statute of limitations period, are often not
available for purchase.
Thus, while Honeywell was able to gather evidence of widespread patent infringement by
purchasing and tearing down many dozens of electronics products before suit, it is highly
impractical, if not literally impossible, for Honeywell to locate (and ultimately be compensated
for) all infringing products without the aid of discovery. See, e.g., [P. Innovation L.L.C. v.
Sharp Corp., 219 F.R.D. 427, 429 (N .D. Ill. 2003) (In litigation involving industry with rapidly
changing model numbers, defendant ordered to provide discovery on all models which met
certain criteria).
Second, a majority of the LCD Manufacturer Defendants have refused to provide
discovery based on the presumed viability of a collection of affirmative defenses, such as: the
alleged fact that modules are sold outside of the United States and thus outside of the reach of
U.S. patent laws (35 U.S.C. §27l); time limitation on damages; and alleged licensing. Such
positions put the proverbial cart before the horse —— effectively converting legal defenses into
discovery shields. Moreover, in the context of the original defendants’ earlier claim that it is the
LCD Manufacturer Defendants who have the ability to provide the requested information, the
use of these defenses as a shield to discovery represents a bait and switch approach to discovery
that both deprives Honeywell of information to which it is been entitled and defeats the purpose
of bringing the LCD Manufacturer Defendants into the litigation in the first instance.
Third, a majority of the LCD Manufacturer Defendants have objected to producing
information about their products until after the claims of the patent-in-suit (the "’371 Patent")
have been construed. This position similarly gets the order and purpose of discovery all wrong.
Indeed, Honeywell is unaware of any precedent allowing the defendants to avoid infringement
discovery until after the claim construction process is complete. The effrontery of this objection
is exacerbated by the fact that the claim at issue here is not unduly complicated.
Ultimately, if the defendants fail to answer Honeywell’s requested discovery, Honeywell
will have been whipsawed between the original defendants’ claimed inability to defend this
action and the LCD Manufacturer Defendants’ feigned willingness to do so. Particularly in light
of the lengths to which Honeywell is willing to go to alleviate any claimed burdens associated
with the requested discovery, such a result would not be just, fair, or an efficient administration
of justice. See, eg., Hallco v. Foster, 947 F.3d 469, 479-80 (Fed. Cir. 1991) (recognizing
potential for res judicata where "new" infringement assertion is brought against device existing
at the time of an earlier suit).

Case 1:04—cv—01338-JJF Document 496 Filed 07/14/2006 Page 4 of 4
The Honorable Kent A. Jordan
July 14, 2006
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Respectfully,
Thomas C. Grimm (#1098)
cc: Dr. Peter T. Dalleo, Clerk (by hand)
CM/ECF list (by e-filing)