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Case 1:04-cv-00343-JJF Document 753 Filed 08/08/2007 Page 1 of 3
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August 8, 2007
VIA ELECTRONIC FILING AND HAND DELIVERY
Tlte Honorable Vincent J. Poppiti
BLANK ROME LLP
Chase Manhattan Center
l201 Market Street, Suite 800
Wilmington, DE l980i
Re: LG.PIriIigs LCD C0., Lmt v. ViewSonic ei nl., C.A. No. 04-·343~.}JF
Dear Special Master Poppiti:
At the August 7, 2007 hearing during which Your Honor heard argument regarding the deposition of
Rebecca Rudich, Your Honor aslred the parties to brief whether a patentee’s inequitable conduct in connection
with a patent/patent application that is a continuation of the Patents—in-Suit renders the Patents—in—Suit
unenforceable. Pursuant to Your l~lonor’s request, the Tatung Defendants hereby submit this supplemental brief.
A. Related Patents May Be Found To Be Unenforceable Under An Unclean Hands Theory.
In general, inequitable conduct in connection with one patent does not extend to another patent that was
not acquired through culpable conduct. See Pharmacia Corp v. Pm-?/rct:·1r2rrce1tticc:l, Inc., 4l 7 F.3d 1369, 1375
(Fed. Cir. 2005). However, a continuation patent may be unenforceable based on inequitable conduct during
prosecution of the parent patent if the continuation patent claims similar subject matter that is related to the
omitted prior art. See AGFA Corp. v. Creo Pr0cz'z.·c1.s·Inc., 451 F.3d 1366, l379 (Fed. Cir, 2006). in addition,
under an unclean hands theory, "a broad pattern of inequitable conduct" in connection with one patent may
render an entire family of patents unenforceable where there is a relationship between the culpable conduct and
the patents or a relationship between the culpable conduct and the relief sought. See Consolidated Aluminwn
Corp. v Foseco [nr? Ltd, 910 l?2d 804, 809-1 0 (Fed. Cir. 1990). ln other words, even if the taint of inequitable
conduct generally flows from parent to child, and not from child to parent, a broad pattern of inequitable
conduct in connection with the child can render even the parent unenforceable under an unclean hands theory.
if LPL was not sufticiently forthcoming witli the Patent Office during prosecution of the ‘079
application, this may support an unclean hands defense. For example, the rear mountable LG LC056Nl module
has not been disclosed by LPI., in connection with the ‘079 prosecution. (See Exh. A.) However, at this time,
the Tatung Defendants do not have sufficient information regarding LPL’s conduct with respect to the ‘079
application without Ms. Rudich’s deposition.
B. Regardless Of Whether LFL Engaged In Inequitable Conduct With Respect To The ‘0'/9
Application, Ms, Rudiclfs Testimony ls Relevant To Infringement And Invalidity Of The 1’atents~
In~Suit.
The statements made by Ms. Rudich on behalf of LPL during prosecution of the ‘079 application are
relevant to infringement and invalidity of the Patents—in—Suit. Notably, the ‘079 application shares the same

Case 1:04-cv-00343-JJF Document 753 Filed 08/08/2007 Page 2 of 3
specification as the ‘64i Patent and claims similar subject matter. `lhe `iatung products accused in this case are
strikingly sirnilar to the cited IBM 9516 prior art reference, which Ms. Rudich contends practices front
mounting, which the Patents~in—Suit explain was known in the art. Ms. Rudich”s statements support the Tatung
Defendants’ non—inh··ingernent positions and are entirely inconsistent with LPl-’s inliingernent contentions.
Based on positions taken by LPL during prosecution ol the *079 application, the products accused by LPL either
do not infringe the Patents-in—Suit, or the Patents are invalid based on prior art references such as the IBM 95l6.
Accordingly, the ‘O'79 application and Msr Rudich’s testimony are relevant to non-infringement and invalidity of
the Patents—in~Suit. Indeed, the Federal Circuit has found that a patentee’s statements regarding one patent may
be relevant to the understanding of a related patent.. See Microsoji Corp. ii. Il/hrhi-Tec/2 Systems, Inc., 357 F.3d
1340, l349~50 (Fed. Cir. 2004) (stating that patentee’s statement to the Patent Office during prosecution of one
patent was a "representation of its own understanding of the invention disclosed in all three [related] patents?).
C. Ms. Rudiclfs Testimony Also Is Relevant To LPL’s Inecguitable Conduct Relating To The
Patents-In—Suit.
At the August 7 hearing, Ms. Brzezinsky represented that Ms. Rudich "does not have any relevant
information at all" about the Patents—in—Suit and that Ms. Rudich only signed the March l2., 2002 Preliminary
Amendments in connection with the ‘376 and ‘338 applications (which eventually issued as the Patents—in—Suit)
for Song Jung, another McKenna attorney. (Tr. 43:12-13, 48:2l—24, 51:1l—16 at Exh. B) These statements
appear to be contradicted by LPL’s own privilege log, which includes no less than 66 references to written
communications involving Ms. Rudich (formerly Ms. Goldman). (Exit. C at l4—l6, 18, 20, 29—30, 32-33, 45-48,
58~59, 6l, 63-64, 69-7l, "/3—75, 77, 80-8l, 83, 90-92, 95, 97-98, 100—l02.) Many of these comrnunications are
fiom the time frame during which the Patents-—in-Suit were being prosecuted -— 1999 to 2002. Notably, there are
communications involving Ms. Rudich in March 2002, when she signed the Preliminary Amendments. (Exit. C
at 20, 29, 45.) Ms. Rudiclfs claim of lack of involvement also is belied by her own declaration submitted in this
case, which states: "l currently participate in, direct, and supervise patent prosecution activity related to the
Patents—in-Suit and involving fiat panel display technology." (Exit. D at'll 3) She further states: "For· the pas!
several years, I Ircnie been the Senior Partner in circrrge of day ro day ciciiviiies for all of the parent prosecution
work. I have and continue to supervise the patent associates in our Intellectual Property Department who also
prosecute patents involving flat panel display technology and who work on patent prosecution activity related to
the Patents—in~Suit." (Id. at ll 4 (emphasis added).)
A crucial issue on the subject of inequitable conduct that requires deposition testimony is whether and
when LPL or its counsel became aware of material prior art, including the Lucky Goldstar LC056Nl (a rear
mountable flat panel display device with no fiont mounting elements, developed in 1996). Lucky Goldstar was
the predecessor to LG Electronics, Inc., which contributed its LCD product division to LPL. Therefore, it is
highly unlikely that LPL was unaware of this product during. Further, the drawing for the LC056Nl (with hates
no. LPL l8925) attached to the T atung Defendant? August 3 submission also bears a hates number from the
LG. P7riIr,os LCD Co v. NEC Corporation litigation. There were two related cases filed against NEC in the
District of Delaware, No. i:99~cv~·0O680~RRM and 1:99-cv-00726—RRl\/I. A review of the dockets in those two
cases shows that all discovery in the cases occurred in l999 and 2000. (Exhs. E. and ii .) It appears that the cases
were settled in early 200l. Mr. Kirk was counsel of record for LPL in those cases. Thus, the drawing for the
LG LC056Nl module must have been produced by LPL in the NEC litigation in 1999 or 2000, when the
Pcriem‘s—in—Szrit were being prosecuted.
Because Ms. Rudich played a role in prosecuting the Patents—in—Suit (including signing documents
submitted to the Patent Office) and is the "Senior Partner in charge ofday to day activities for all ofthe patent
prosecution work" at the McKenna firm, the Tatung Defendants are entitled to depose her regarding her
knowledge of relevant prior art, the investigation she conducted regarding the existence of prior art, her custom
and practice when prosecuting patents, and the McKenna firrn’s policies and procedures relating to patent
prosecution. See Brosseler, USA. I, LP v. Stryker Series Corp, 267 F..3d 1370, 1379-83 (Fed. Cir. 200l);
Alcon Laboratories, Inc. v P/icrrnrocio Corp , 225 F.Supp 2d 340, 344 (S.D.N.Y. 2002). Ms. Rudich should be
ordered to submit to a deposition because her testimony is relevant to nondnfringement, invalidity and
inequitable conduct relating to the Patents-in-Suit.

Case 1:04-cv-00343-JJF Document 753 Filed 08/08/2007 Page 3 of 3
Respectfully,
Anne Shea Gaza (#4390)
ASG/afg
Enclosures
cc: Clerk of the Court (via Electronic Filing)
All Counsel of Record (via electronic mail)

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