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1 1 2 3 PHILLIPS, L.G., LCD CO., LTD, 4 Plaintiffs, 5 v. 6 7 8 Defendants. 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Page 1 CORBETT & WILCOX Registered Professional Reporters 230 North Market Street Wilmington, DE 19899 (302) 571-0510 www.corbettreporting.com Corbett & Wilcox is not affiliated with Wilcox & Fetzer, Court Reporters Hearing of above matter taken pursuant to notice before Renee A. Meyers, Registered Professional Reporter and Notary Public, in the law offices of BLANK ROME, LLP, 1201 North Market Street, Wilmington, Delaware, on Monday, August 27, 2007, beginning at approximately 11:30 a.m., there being present: BEFORE: THE HONORABLE VINCENT J. POPPITI, SPECIAL MASTER APPEARANCES: THE BAYARD FIRM RICHARD D. KIRK, ESQ. 222 Delaware Avenue, Suite 900 Wilmington, Delaware 19899 for Plaintiffs TATUNG CO., TATUNG COMPANY OF AMERICA, INC., and VIEWSONIC CORPORATION, ) ) ) ) ) ) ) ) ) ) ) C.A. No. 04-343(JJF) IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

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2 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Page 2 RASKIN PETER RUBIN & SIMON LLP TRACY ROMAN, ESQ. 1801 Century Park East, 23rd Floor Los Angeles, California 90071 for Defendant ViewSonic Corporation BINGHAM McCUTCHEN LLP SCOTT R. MILLER, ESQ. 355 South Grand Avenue Los Angeles, California 90071-3106 for Defendant ViewSonic Corporation CONNOLLY BOVE LODGE & HUTZ LLP JAMES D. HEISMAN, ESQ. 1007 North Orange Street Wilmington, Delaware 19899 for Defendant ViewSonic Corporation GREENBERG TRAURIG LLP FRANK MERIDETH, ESQ. VALERIE HO, ESQ. MARK KREISMAN, ESQ. 2450 Colorado Avenue, Suite 400E Santa Monica, California 90404 for Defendant Tatung Company of America, Inc. APPEARANCES (Continued): MCKENNA, LONG & ALDRIDGE, LLP CASS W. CHRISTENSON, ESQ. REL S. AMBROZY, ESQ. LORA BRZEZYNSKI, ESQ. 1900 K Street, N.W. Washington, D.C. 20006 for Plaintiffs RICHARDS LAYTON & FINGER FREDERICK L. COTTRELL, III ANNE SHEA GAZA, ESQ. One Rodney Square Wilmington, Delaware 19801 for Defendant Tatung Co.

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3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 SPECIAL MASTER POPPITI: MR. KIRK: Mr. Kirk, please. This is

Thank you, Your Honor.

Richard Kirk from The Bayard Firm for the plaintiff, LG Phillips LCD Co., Ltd. With me on the line from

Washington are my colleagues from McKenna, Long & Aldridge, Cass Christenson, Rel Ambrozy, and Lora Brzezynski. MS. GAZA: Good afternoon, Your Honor. Anne

Gaza from Richards, Layton & Finger.

On the phone with

me is Valerie Ho from Greenberg Traurig for the Tatung defendants. SPECIAL MASTER POPPITI: MS. HO: Thank you.

And Frank Merideth as well. Thank you.

SPECIAL MASTER POPPITI: MR. HEISMAN:

Good afternoon, Your Honor.

Jim Heisman from Connolly Bove on behalf of ViewSonic Corporation. With me on the line are Scott Miller and

Tracy Roman in California. SPECIAL MASTER POPPITI: Thank you.

I just want to make sure that everyone has in front of them what we would be discussing today, and that would be correspondence from Fred Cottrell dated August 26th, 2007. I also have correspondence,

actually, e-mail from Mr. Kirk that's dated Friday, Page 3

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15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Cass Christenson. Why don't I go through, if I may, and

I can just sort of, starting at the beginning, I can flag any concerns that we had and we can get your input if that's acceptable. SPECIAL MASTER POPPITI: MR. CHRISTENSON: Sure.

Some of these I don't want

to revisit because I think they are acceptable given your prior guidances and instructions. For example,

topics 1B, C, D, topics 2B, C, and D, I think, are within the general scope of which you had found permissible. SPECIAL MASTER POPPITI: MR. CHRISTENSON: Okay.

I did want to raise an

issue with respect to topic 1B. SPECIAL MASTER POPPITI: MR. CHRISTENSON: purposes of this concern. SPECIAL MASTER POPPITI: MR. CHRISTENSON: It's a mirror. Yes.

Topic 2B is the same for

And that is that it's

framed in a way that is related to your claim construction. And, so, it's asking potential -- and we

discussed this with the defendants as well -- it's potentially requiring the witness to talk about LPL products in terms of what claim limitations they meet Page 15

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16 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 under your definitions of those terms. And we

previously agreed with the other side that the Rule 30(b)6 depositions in this case would not encompass parties' positions or contentions on validity infringement or enforceability, but, rather, those issues would be for the expert witnesses. So we don't want to be in a position where the witness is going to be asked questions that would fall into that expert realm and require the witness to take positions related to claim construction. SPECIAL MASTER POPPITI: MR. MILLER: Mr. Miller.

Your Honor, what I advised

Mr. Christenson of on the 22nd was that we would be -consistent with our agreement, if LPL's witness says, We are relying solely on expert testimony with regard to those issues, that that's fine, that was our agreement. But if they intend to put on a witness, a fact witness, beyond their expert to testify about any of these things, obviously, we are entitled to know what that fact witness is going to say and all we would be looking for here is if there are facts that their fact witnesses intend to deal with or testify to at trial, we want to know what they are. If they are going to come in and

say, We are solely relying on expert testimony with Page 16

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17 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Your Honor. regard to those issues, that will be the end of the inquiry. SPECIAL MASTER POPPITI: Can I expect, then,

your response is really framed in sub paragraph C, D, and E of each of those topics, No. 1 and No. 2? I think

what happened, and, certainly, even before looking at LPL's position with respect to the topic in terms of arguing through it, when I looked at it, and I did turn to the topics first, I certainly had the concern that LPL raises. It seems to me, though, that, Mr. Christenson, what Mr. Miller just said was what makes -- it certainly makes sense to me. If topic B

gets responded to by virtue of saying, We intend to rely on expert opinion, doesn't that answer the concern? MR. CHRISTENSON: It sounds like it would,

I agree with you that the factual -- we

understood were the factual type questions were under subparts C and D. SPECIAL MASTER POPPITI: MR. CHRISTENSON: read that way. C and D.

And D, obviously, does not

So, if that's the -- if the

understanding is that they will not attempt to make LPL an expert in that regard, then I understand that and Page 17

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18 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 that. SPECIAL MASTER POPPITI: Okay. I expect that resolves that concern. SPECIAL MASTER POPPITI: Mr. Miller, did you hear? MR. MILLER: Yes. I was speaking on mute. That's all right. Mr. Miller.

SPECIAL MASTER POPPITI: MR. MILLER: Yes.

What I said was, Our

agreement originally from the beginning has been so long as the parties indicates they are relying solely on expert testimony, that that's the end of the inquiry. SPECIAL MASTER POPPITI: MR. MILLER: Okay.

So we are happy to abide by

that, with that understanding, the topics and the subtopics underneath of that are gone; do you agree, Mr. Christenson. MR. CHRISTENSON: We understand that your

expectation is, Your Honor, that those are permissible subject areas, yes. SPECIAL MASTER POPPITI: MR. CHRISTENSON: Thank you.

Thank you.

Topic 1E and 2E, I think, are within the scope of what you expected. I think there is a concern

there that it's, you know, very broad in terms of the Page 18

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19 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 number of products and the way that the topic is framed, but, ideally, we will be able to resolve that by trying to pinpoint certain products. And if not, we will just

have to deal with that topic generally, which is the way that it's currently framed. So, I don't think there is anything we need to do today on 1E. MR. MILLER: Your Honor, on that point, in

our discussion on the 22nd, we indicated that, obviously, if they had documents that would assist the witness, we are happy to have those documents and try to narrow issues and use documents in a way that will be efficient. If there are other documents they have that If there

they haven't produced, that would be great.

aren't, then we will be able to only get the information that's available. SPECIAL MASTER POPPITI: MR. CHRISTENSON: Okay.

With respect to topic

three, and I am looking at the red-lined, which is topic, actually, 3C, 3D, and 3E, these topics deal very broadly with sales marketing, supply channels, product distribution, customer relationships for a whole host of products, and we understood, from the hearing that we had with you on August 16th, that ViewSonic was going to Page 19

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47 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 way it is. that. catchall inequitable conduct topic, I suspect, given Your Honor's prior comments, that would be treated the same as topic five and you would permit topic 7I even though LPL's position is that it's really overly -- it's not clear what's being requested and a more specific subject matter is set forth in the preceding topics. SPECIAL MASTER POPPITI: Mr. Miller, do you

have anything else to add with respect to I before discussing some of the other concerns raised with respect to topic seven? MR. MILLER: Not as to the specifics of

Obviously, I am happy to discuss the issues

relating privilege or something that might be implicated which we also discussed with Mr. Christenson last week. SPECIAL MASTER POPPITI: Okay. Then, with

respect to I, again, I think it's part of the way we have done -- that I have hopefully assisted in getting this business accomplished in terms of the way I is phrased, and I will raise the same concerns and caution with respect to questioning a witness using, if you will, 7I. So, having said that, it has to stand the And, you know, with respect to

attorney/client privilege and things of that nature, is Page 47

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48 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 it fair to expect that the umbrella of topic No. 7 is whatever information is going to be elicited is information that is non-privileged? MR. MILLER: It would be non-privileged or

information about which, if they raise the privilege, obviously, if they assert it, we are entitled to have the assertion, and we know we won't see it at trial, but that's the purpose is, if their questions would be within the scope of the privilege and they assert it, that's fine, we will deal with that provided it's a proper assertion. SPECIAL MASTER POPPITI: Mr. Christenson. MR. CHRISTENSON: clarification is helpful. Looking at the face of the topics, for example, in topic 7C and in topic 7H, there is specific reference to privileged communications within the face of the topic. So if they are now not planning to Yes. I think that I understand.

address those issues in the deposition, which is what I understand to be the case, it's essentially the effect of amending those topics not to any longer include those communications. MR. MILLER: Let's just be clear. Page 48 We are

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60 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 correct. think she would be the appropriate person. SPECIAL MASTER POPPITI: framed my question very artfully. I don't see anything clearly enough to suggest to me that there was a focus on anyone as a 30(b)(6) deponent on the issue of inequitable conduct. MR. MERIDETH: I believe that's also I don't think I

I don't think it is up to the Tatung

defendants to designate the witness that would speak for McKenna. SPECIAL MASTER POPPITI: I understand that.

But where is the discussion on a 30(b)(6) witness? MR. MERIDETH: The discussion was originally

with respect to Miss Rudich and her knowledge with respect to the prosecution of these patents which arose when the issues regarding her testimony came up, I think, for the second time, at which we discussed the scope of her deposition that covered both the issues of the '079 patent and inequitable conduct in light of the recent disclosure of the Lucky Gold Star reference. If she was not the person to be able to give that testimony, as we had thought she was, then we believe that we should be entitled to take a 30(b)(6) deposition of McKenna on the subject of this recently Page 60

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61 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 produced prior art. SPECIAL MASTER POPPITI: Okay. And I

understand your position with respect to wanting to look rather squarely at this recent production of the prior art. I guess my question is: In looking at the

subjects, or the topics, I am sorry -- let me get those in front of me -- looking at topics No. 1, 2 -- No. 1 and 2 and all the subtopics under that, isn't it fair to say that those subtopics could have been the subject of a 30(b)(6) notice before fact discovery concluded? MR. MERIDETH: That's correct, except that

we did not have the information that we now have that was just produced with respect to this Lucky Gold Star product, and that creates an entirely new ball game, from our vista, because we need to know what considerations were taken with respect to not producing other prior art references. In other words, prior to having that, we didn't have a basis to assert, although there were general allegations in the complaint with -- I mean, in the answer, that cites inequitable conduct, we didn't have a specific. Now we have a specific. We have a

product that is in all fours, that is an invalidating Page 61

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62 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 piece of prior art, it was not produced to the patent office, it was not produced to us but was intentionally withheld, according to Mr. Christenson, and that was a strategy that was undertaken by McKenna, and we are now in a situation -MR. CHRISTENSON: not what I said. That's not fair. That's

That's not correct. Just let him

SPECIAL MASTER POPPITI: finish, please. MR. MERIDETH:

That's the way I interpret

it, is that there was a decision made not to produce this prior art reference. We now have the prior art

reference and it raises very significant issues with regard to inequitable conduct, and we think we ought to be able to inquire into those issues. It's not our purpose to inquire into things that could have been inquired into before, except the difficulty that we have is, A, we have a real for instance, it's very specific, and it's the Lucky Gold Star product. There are other references that are

invalidating and there is going to be an issue as to whether they were known of or whether they have just recently been discovered. But, in this case, it was a

product that was produced by LG. Page 62

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63 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 So, we think that we have a right to inquire into that and discover why that or any other similar products, from which that product may have been derived, there may be some other manufacturers' products that we have specifically identified, of why those were not disclosed to the patent office, and, in fact, why they weren't disclosed to us in discovery. MS. BRZEZYNSKI: Your Honor, may I respond? Yes, please.

SPECIAL MASTER POPPITI: MS. BRYEZYNSKI:

Your Honor, first of all,

we absolutely disagree that this Lucky Gold Star product is invalidating prior art and we will address that at the appropriate time. We also disagree that any

improper conduct has occurred by either MLA attorneys or by LPL. Regardless of that, Your Honor, we believe you nailed it on the head that any notice of the deposition of MLA should have been served long, long ago, prior to the close of fact discovery. Tatung has had an inequitable conduct defense since 2005. Second, Tatung asserted wrong

theories of prior art relating to its inequitable conduct defense in its February 2006 interrogatory answers which we attached as Exhibit K to our August Page 63

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64 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 those. MS. BRZEZYNSKI: The same issues were raised 23rd submission to Your Honor. SPECIAL MASTER POPPITI: I have looked at

by Tatung then; therefore, it's the -- if Tatung wanted to proceed with a deposition of MLA, it should have done so during fact discovery. I also want to point out to Your Honor another important fact. You will notice, in their

August 27th letter sent less than one hour before the hearing today, that Tatung also refers to an LG 500 LC class. I want to point out to you, Your Honor, that

Tatung and ViewSonic have already questioned John Kim, one of the inventors, about that product at length in March of this year. They also questioned Mr. Bang,

after insisting on his deposition, at length, about that product in March of this year. They also deposed a

third party, LGE USA, about that product. So, once again, those issues were before Tatung and raised by Tatung during fact discovery, and if they wanted to proceed with a deposition of MLA, they should have noticed it during fact discovery. It is now

untimely and there is simply no basis for granting a deposition of MLA at this time. Page 64

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65 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 I think what we have here is an attempt by Tatung to bootstrap a 30(b)(6) deposition of McKenna, Long & Aldridge on a notice of deposition and subpoena for Rebecca Rudich's deposition that they served in February 2007. That should not be permitted for several

additional reasons, including that Rebecca Rudich's deposition was withdrawn, by subpoena, and then was revised to one issue only, only related to the '079 application, which was confirmed by Mr. Merideth as late as his July 9th e-mail, which is also attached to this submission. Second, Your Honor, Tatung says, in its August 27th letter today, that they relied on the Rebecca Rudich declaration when they issued the subpoena, so that cannot be accurate because the subpoena and deposition notice for Rebecca Rudich was served by Tatung on February 27th, but Miss Rudich's first declaration was not dated until March 6th, 2007. So, certainly, there is no possible way that Tatung could have relied on Rebecca Rudich's declaration when it served its subpoena. In any event, even if Tatung attempts to argue that sometime after Miss Rudich's declaration, Tatung relied on the language in there to suggest that Page 65

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66 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Miss Rudich was involved in patent prosecution of the patents-in-suit, again, we argue that that's simply not possible either. That declaration was signed in 2007.

The language in there says that Miss Rudich works on patent prosecution activity related to the patents-in-suit. The only patent prosecution activity

going on in 2007 was related to the continuation application. The patents-in-suit issued in 2002, and

there has been no patent prosecution activity after that point. I, therefore, suggest to Your Honor that Tatung's recent attempt to obtain a deposition of McKenna, Long & Aldridge is wholly inappropriate and untimely and should be denied. MS. HO: Your Honor, if I may address a

couple of the points that Miss Brzezynski just brought up? SPECIAL MASTER POPPITI: MS. HO: Please.

First of all, we did not say, in

our submission this morning, that we had relied on Miss Rudich's declaration in issuing our subpoena to her. That is not what we said. We issued our subpoena to her and then we received her declaration which confirmed to us that she Page 66

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67 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 was the appropriate witness. Had we known, as it turned

out, that she is not the appropriate witness, then we could have subpoenaed someone else. We could have

subpoenaed McKenna or we could have subpoenaed someone else at the McKenna firm before the close of fact discovery, but we did not do that because we understood, based on her declaration, that she was the appropriate witness. So, that's my first point. My second point is that I know that Your Honor was just focusing on topic No. 1, but if you turn to topic No. 2, you see that those topics are really limited to what's defined in the depo notice as the LPL prior art products. SPECIAL MASTER POPPITI: MS. HO: Yes.

And the definition of LPL prior art

product is the products -- includes the products disclosed in the recent discovery and that were conceived, made, marketed, sold, distributed, disclosed, and/or offered for sale by LPL on or before December 31st, 1998, and that's pretty much the same definition that was used in LPL's -- I am sorry, in our deposition notice, supplemental deposition notice to LPL that we had just talked about earlier. Page 67

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68 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 SPECIAL MASTER POPPITI: much the same. MS. HO: And, so, you see that the topics in Yes. That's pretty

-- or the subtopics in topic No. 2 are generally limited to the products that were recently disclosed. And then topic No. 3 has to do with the NEC litigation which Your Honor has already ruled that we can explore. The only question is: Why topic No. 1?

Well, when read in isolation, yes, topic No. 1 could have been noticed before March 30th, 2007. That's true.

But it would have been pointless for us, Your Honor, I submit, to just notice topic No. 1 because, back in March, we did not know about the LPL prior art products that just recently have been produced and that we want to explore in topic No. 2. interrelated. SPECIAL MASTER POPPITI: I gather, and I So, the two topics are

want you to speak, just very briefly, to Miss Brzezynski's comments with respect to Tatung's response to the respective interrogatories that were identified at Exhibit K. There, Tatung described, with

some factual backdrop, its -- I am just flipping through it, that's why I am -- it describes some of the factual Page 68

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69 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 backdrop for its assertion of inequitable conduct, and it, in fact, describes some prior art, as I remember, when I read it initially. MS. HO: That's correct, Your Honor. We do have some prior art,

MR. MERIDETH:

but let me make it clear, we view taking the deposition of counsel to be a serious matter that should not be undertaken based upon just skepticism. SPECIAL MASTER POPPITI: MR. MERIDETH: Right.

In this case, we have a

situation in which we were presented three weeks ago with what we view, notwithstanding Miss Brzezynski's position, to be a smoking gun. That immediately brings

into focus the necessity to take the deposition of MLA with respect to inequitable conduct with respect to that reference, and it's not simply that reference in isolation because, while the other references are not unimportant, we did not view them, prior to receiving this most recent disclosure, to be of such moment that it was necessary for us to depose MLA. We have a new ball game here. We have a

piece of prior art that we believe was intentionally withheld. We have a right, I respectfully submit, to In the context of that area to produce Page 69

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70 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 that prior art, I think we are compelled to ask the question, Well, if you withheld that piece of prior art, what other prior art did you withhold? And that

question would not have been appropriate prior to the production of this Lucky Gold Star product. And I don't

think it is appropriate to argue that, Well, just because we managed to keep this Lucky Gold Star product under wraps until the discovery cutoff lapsed, you don't have any right to make any discovery with respect to inequitable conduct. That's fundamentally unfair. And

it was the production of that particular product that really brings this whole matter of inequitable conduct into focus. MS. BRZEZYNSKI: Your Honor, the arguments

being made by Miss Ho and Mr. Merideth are inconsistent with each other. Mr. Merideth is now saying that if,

you know, as a result of production of the -- in documents relating to Lucky Gold Star, they now want a deposition of McKenna. Miss Ho is saying that Tatung could have subpoenaed someone else prior to the close of discovery if they had known that Miss Rudich was not involved in the prosecution of the patents-in-suit. SPECIAL MASTER POPPITI: Page 70 It was against the

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71 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 backdrop of this late production. understood Ms. Ho's comments. MS. HO: That's correct. The issue, though, Your That's what I

MS. BRZEZYNSKI:

Honor, is Miss Rudich's deposition was never related to the patents-in-suit. It was always limited to the '079.

If you read Miss Ho's argument, then you also have to assume that Tatung's offer, over several months, to accept a declaration from Ms. Rudich was also an empty offer that they were always going to renege on. Miss Rudich's deposition was always limited to the '079 and nothing more. Now, correct me, Your Honor, Tatung had previously asserted every product as prior art in support of their inequitable conduct defense, including an LGE product, prior to the close of discovery. Any

deposition of McKenna, Long & Aldridge attorneys should have been noticed prior to the close of discovery. The suggestion now that the production of the Lucky Gold Star information somehow raises the importance of this issue and warrants a deposition is simply inappropriate. SPECIAL MASTER POPPITI: Let me ask --

MS. BRZEZYNSKI: They should have made these Page 71

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72 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 issues during discovery and they should have noticed this deposition at that time. SPECIAL MASTER POPPITI: There is no

question, certainly in -- there is no question in my mind that a deposition of a patent prosecutor from McKenna could have been noticed before. Mr. Miller

acknowledges that and I expect that Miss Ho would acknowledge that as well. I know, and you all know, and there is even some case law out there that expresses chagrin when it is done, there is some case law that suggests if you are going to depose the inventor, then you shouldn't be deposing the patent prosecutor -- I think I am correct in stating it that way -- so, if there was a determination made not to depose a McKenna, Long attorney on the issue of inequitable conduct and if the path forward on Rebecca Rudich was as it is and there is some garble to it, I understand where we were the day before there was production of Lucky Gold Star. I think what I see here is, with the production of -- and maybe -- let me pose this question: If Lucky Gold Star were produced in isolation and it was not connected to NEC litigation, would we not be having a different discussion? Page 72

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73 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 MR. MERIDETH: We very well could be, but,

in this case, we know that at least LG Phillips, and we believe McKenna was involved in the NEC litigation, had that sheet, that specification for this product in at least 1999 or 2000, and, yes, it makes a lot of difference. MS. HO: And, in fact, Your Honor, we were

able to obtain copies of the complaints in the NEC matter, and the complaints identify McKenna's predecessor, which I believe is McKenna -- sorry, I am just trying to flip through it right now -- it's -- I am sorry, it's McKenna's predecessor, Long, Aldridge & Norman as the lead trial counsel in those cases. SPECIAL MASTER POPPITI: think we are: Here is where I

There is no question that I expected

production may lead to the requirement for additional discovery of whatever -- whatever that additional discovery was at the time that we had that conversation about the prospect of having additional discovery sometime ago, and I want to say it was in the March or April time frame. Given the production of the Lucky Gold Star asserted prior art and given the context of its production, namely, the reference to NEC litigation, I Page 73

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74 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 am satisfied that Tatung should be able to explore all that that means with a McKenna, Long attorney. Again, I will ask Mr. Merideth and Miss Ho, for purposes of getting something across my desk as quickly as possible, to do the form of order -- not a form of order, it would be in the format of a proposed recommendation to the Court, reviewed by Miss Brzezynski for form only, and present it to me not later than the end of the week Friday. MS. BRZEZYNSKI: Your Honor, I'd like an

opportunity to address their proposed -- Tatung's proposed topics for examination as well. SPECIAL MASTER POPPITI: MS. BRZEZYNSKI: Okay.

Tatung's proposed topics

are extremely broad, not limited to just the Lucky Gold Star products only. When you are looking at topic No.

1, they are general broad topics as to McKenna's business policies and procedures and practices, and are not at all related to Lucky Gold Star products or anything specific to Lucky Gold Star or prosecution of the patents-in-suit in NEC litigation. Topic No. 1 is completely inappropriate, including its two subtopics. SPECIAL MASTER POPPITI: Page 74 Let's talk about

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75 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Mr. Miller? that for a moment. Who is going to speak to that, please? Mr. Merideth or Miss Ho? MR. MERIDETH: The issue here is whether

McKenna, Long & Aldridge had a policy with respect to requiring its clients to produce prior art or a product that -- or identified product that would implicate beyond cerebar (phonetic) in the process of prosecuting the patent. We need to determine whether or not this reference to the Lucky Gold Star product was, in fact, given to McKenna, Long & Aldridge, whether they had it in their possession, or whether it was not disclosed to them by their client, that is going to bear on how the trial of this issue of inequitable conduct goes forward. If the answer to the question: Did you know

anything about this Lucky Gold Star product?, is, Gee, I didn't know anything about it; I didn't know that there was a product like that. The next question is going to And

be, Well, what did you do to find out about it?

that's what the question No. 1 is intended to elicit. If we can't ask those questions, we are going to have one arm behind our back. MS. BRZEZYNSKI: Your Honor, the problem Page 75

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76 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 is -SPECIAL MASTER POPPITI: Are you suggesting here is that topic No. 1, as framed, is extremely broad, covers McKenna's general business practices and procedures relating to patent prosecution for all of its clients and all of its matters and is not limited to just the prosecution of the patents-in-suit. MR. MERIDETH: We need to know whether there

that if the topic were changed to say "patents-in-suit," that there is some policy or practice that's different with respect to these patents-in-suit as opposed to other work that McKenna, Long did between 1998 and 2002? MS. BRZEZYNSKI: is a difference. I am not saying that there

What I am saying is the only relevant

information -- and, first of all, we do argue that NEC deposition is appropriate. SPECIAL MASTER POPPITI: MS. BRZEZYNSKI: I understand that.

But the only relevant area And getting into

is prosecution of the patents-in-suit.

McKenna's general business practices is proprietary and privileged information and it's inappropriate in this context. MR. MERIDETH: I respectfully disagree. I don't know how

SPECIAL MASTER POPPITI: Page 76

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77 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 to -SPECIAL MASTER POPPITI: Would it be fair there can be any development of what was done or not done against what I understand to be the topic of inequitable conduct if Tatung is not able to explore the process as it is contemplated. MS. BRZEZYNSKI: They should be required

for me to suggest that what I expect Mr. Merideth and his colleagues would be looking for is what you would all say in response to an assertion that something went wrong here. I mean, if you start describing your policy

and practice in the context of, We didn't do anything out of the ordinary here, without Tatung having the opportunity to explore that in discovery, I think there is one hand tied behind their back; isn't there? MS. BRZEZYNSKI: I disagree. Tatung can ask

questions relating to policies and procedures for prosecuting the patents-in-suit and should not be permitted to get broader than that, Your Honor. We are talking about proprietary information relating to McKenna's business products being asked by a competitive law firm. SPECIAL MASTER POPPITI: Excuse me. Why

can't these topics be framed in the context of the Page 77

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78 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 that again? SPECIAL MASTER POPPITI: Mr. Merideth, why patents-in-suit? MS. BRZEZYNSKI: I am sorry. Can you say

can't the topics 1A and B be framed in the context of the patents-in-suit? MR. MERIDETH: They can, Your Honor, so long

as we are able to ask whether there is any variation on the policies and procedures that are generally applicable to other clients. In other words, if they

say, Well, we send out a questionnaire, or we ask the following specific question, or we don't ask the following specific question, I think we should be able to ask, Well, in general, is your practice the same or different with respect to other clients? SPECIAL MASTER POPPITI: MR. MERIDETH: Why?

I believe that it pinpoints

the issue of whether or not there has been sufficient inquiry and inquiry that meets the standard of care that's required under the patent laws with respect to asking the patentee to disclose prior art or art that would preclude patenting because of the on sale of art. And if, for example, I am not suggesting that was the case here, MLA simply never asked LGE or LPL for that Page 78

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79 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 information, we are entitled to know that. If it is

their practice to otherwise ask for that information and they failed to do so in this case, I think we ought to be able to develop that. MS. BRZEZYNSKI: I submit that those

follow-up questions do not matter and are not relevant at all to this case, and any questions at all should be limited to just prosecution of the patents-in-suit. MR. KREISMAN: Your Honor, if I may speak. Yes.

SPECIAL MASTER POPPITI: MR. KREISMAN:

I may be one of the only What I can tell you is

patent prosecutors on the phone.

there is the issue of the McKenna firm and the attorneys at the McKenna firm and their predecessor practices have a tremendous amount of patent work being prosecuted on behalf of LGE and LG Phillips, and if we are limited to questioning LG Phillips' representative only on the patents-in-suit, you can see a position we could be placed in where, at trial, we will be suddenly advised there was information that was given to LG Phillips, or LGE, as a predecessor, about other LG patents that had been worked on, and if we are not allowed to ask about those other earlier practices regarding their earlier portfolio, we will never know. Page 79 We will be sandbagged.

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80 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Somebody could answer, Well, for these patents-in-suit, thus or such happened, and if we are not allowed to follow-up with, Well, what was the practice with all the hundreds of LG patents, was there a policy?, it becomes very difficult for us to get any of the evidence regarding intent. MS. BRZEZYNSKI: Your Honor, I am now even

more troubled by Mr. Kreisman's comments that they want to depose a witness about earlier practices about other patents. SPECIAL MASTER POPPITI: heard him say "other patents." I don't think I

I thought I heard him

say "other policies and practice." MR. KREISMAN: That's true, Your Honor. Let's do this: I

SPECIAL MASTER POPPITI:

am going to permit that topics 1A and 1B, given the nature of the conversation that we have just had, I do not think that that involves proprietary information. Your record is protected. The document that I will look

to sign, I would expect, would highlight the discussion that we have just had, certainly not in the detail that we have had it, so that Judge Farnan can be informed, as I expect he would be, given the nature of the conversation that we have had. Page 80

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81 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 please? MR. MERIDETH: Yes. From LPL's Is Friday, with this document, also doable,

SPECIAL MASTER POPPITI: perspective? MS. BRZEZYNSKI:

Yes, Your Honor.

If I may

just add, is my understanding correct that the topics are limited, however, to the Lucky Gold Star product and should not include any questioning related to any other of the asserted prior art products by Tatung? MS. HO: We have defined prior art LPL

product in the deposition notice. SPECIAL MASTER POPPITI: MS. HO: And those -It's all Yes, you have.

SPECIAL MASTER POPPITI: supplemental. MS. HO:

Yes, Your Honor.

Well, it's all Let me clarify.

supplemental and that 500 LC monitor.

It's the product identified in the recent discovery produced by LPL plus the LG 500 LC monitor. MR. MERIDETH: Let me explain why the 500 LC It has to do with the

is important in that context.

supplemental information filing by LPL with respect to the '079 patent in which other prior art that was Page 81

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82 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 identified by the Tatung defendants was provided to the patent office, that the reference to the 500 LC was omitted, and we want to know why. MS. BRZEZYNSKI: Your Honor, the LG 500 LC If

product was raised by Tatung in March and April.

they had an issue with that product, they should have raised it in a notice prior to this close of fact discovery. SPECIAL MASTER POPPITI: I thought I

understood Mr. Merideth to say, and please correct me if I am wrong or restate what you have just said to me, the reason why the LG 500 LC is being raised at this time, in this context, is because of information that was received in supplemental production? MR. MERIDETH: MR. KREISMAN: Correct. I think I can clarify the

point if I may, Your Honor. SPECIAL MASTER POPPITI: MR. KREISMAN: Please.

We spoke, in the earlier

hearings, about the '079 prosecution, and Mr. Merideth mentioned an information disclosure statement, an IDS, and he had mentioned that certain products were appearing on that now, and Miss Brzezynski, rightly so, indicated to Your Honor that it would be McKenna's Page 82

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83 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 obligation, when references that were asserted as prior art in litigation came to their attention, that they would submit those in an IDS to the patent office. SPECIAL MASTER POPPITI: I remember exactly

what you said and I understand the obligation. MR. KREISMAN: Thank you, Your Honor. And

what was our reading of the IDS is the 500 LC product, which has been repeatedly identified in interrogatory responses by the defendants, continues to be omitted from that IDS list. MS. BRZEZYNSKI: Your Honor, I thought we

discussed this issue previously that if an IDS was submitted in the '079 application, that that was an obligation of McKenna to provide that information but that it had nothing to do with the prosecution of the patents-in-suit. If it had to do with the '079, then

the appropriate inquiry would be of Ms. Rudich but not of an MLA attorney having to do with the patent prosecution of the patents-in-suit. MS. HO: The reason that the LG 500 LC

monitor continues to be relevant in this case, Your Honor, is because, based on LPL's most recent infringement contention, which was served after Your Honor's claim construction rulings, we believe that this Page 83

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84 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 please. argument -SPECIAL MASTER POPPITI: Give me a second, product is an invalidating prior art reference and it was not disclosed during prosecution of the patents-in-suit, and based on LPL's own reading and application of Your Honor's claim construction, this product would have been material prior art, would be invalidating prior art, and should have been disclosed. So, it is the receipt of LPL's recent infringement contentions that have confirmed for us that this is a material reference for purposes of inequitable conduct, and that is why we have included it as one of the products in the definition for prior art LPL products. MS. BRZEZYNSKI: If that is all, Your Honor,

Tatung was making those claims in March and April when they deposed LPL witnesses on the LG 500 LC product. SPECIAL MASTER POPPITI: focus on the LG 500 issue. Look, I didn't

I think I understand what

you are talking about, but, quite frankly, I want -MR. AMBROZY: Your Honor, also the

What I want you to do, and I am sorry that I

have to do it this way, I just want you to focus on the 500 LC issue, and I want you to do it without discussing Page 84

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85 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 please? please. say 3:00? SPECIAL MASTER POPPITI: 3:00 my time, And I just want it on the phone. I want to be able to look at it and I

want it in two pages and I want cross filings, simultaneous filings tomorrow, not later than 3:00 my time, so you will all have time to get it done. And I

will advise counsel sometime late tomorrow afternoon what my view of including or not including the LG 500 LC product hopefully by the end of the business day tomorrow if not first thing Wednesday morning. MS. HO: I did not catch the time. Did you

That would be 12:00 your time.

two short pages without having to use a magnifying glass. Okay? MS. BRZEZYNSKI: Yes, Your Honor. Anything else,

SPECIAL MASTER POPPITI: Thank you all. MR. CHRISTENSON:

Your Honor, just briefly

before we conclude, we have had some discussions off-line to agree on some revisions or refinement to the expert disclosure deadlines, and I don't think it would impact any of the work that you are going to be doing, but in the abundance of caution, and to assist you in Page 85