Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-00343-JJF Document 745 Filed 08/O1/2007 Page 1 of 3
Riceianps, L.Avr0N 8. Firierzra
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ONE RODNEY SQUARE
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ANNE SHEA GAM Wii.MrNorr0i~r, DELAWARE react 302.,55 1.,.7539
COUNSEL (soar eels: 700 oAzA@»=u_r— con
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WWW..F2LF.COM
August l, 2007
The Honorable Vincent J. Poppiti
BLANK ROME. LLP
Chase Manhattan Center
l20i Market Street, Suite 800
Wilmington, DE i980l
Re: LG’.PhiligsLCD C0., Lmi v. View.S'0rric at nl., C.A. No. 04-343-J.Hi`
Dear Special Master Poppiti:
The "fatung Defendants respectfully submit this letter brief regarding the deposition of Rebecca
Rudich. On February 28, 2007, well before the fact discovery cutoff the Tatung Defendants subpoenaed
Rebecca Rudich, one of the attorneys at the McKenna law firm who prosecuted the Patents—in—Suit. (See
Subpoena at Exh. A and Excerpts from *718 File History and ‘64i File History at Exits. B and C.) ln
addition to being intimately involved in the prosecution ofthe Patents—in—Suit, Ms. Rudich continues to be
involved in the prosecution of the family of continuation patent applications derived from the Patents~in-
Suit. On March 16, 2007, the Tatung Defendants confirmed in writing with counsel for LPL that it would
be necessary to depose Ms. Rudich, or in lieu of her deposition, to obtain an acceptable declaration that
LPL would stipulate could be used at trial. (Sea Letter at Exh. D.) The subject ofthe declaration and/or
deposition was identified specifically as her written response on behalf of LPI,. to a PTO office action
regarding a continuation patent application, Serial No. ll/096,079, which shares the same specification as
the Patents~in-Suit. (See Office Actions and Responses at Exh. E.)
In follow up correspondence, the Tatung Defendants provided a draft declaration. Several
exchanges of proposed language followed. (See Exhs. F—L.) After requesting and finally receiving on
June 26, 2007 clearer copies of the photographs attached to LPL’s most recent draft declaration, the
Tatung Defendants finally were able to fully evaluate the proffered declaration and concluded that the
declaration proposed by LPL was not sufficient. On July 9, 2007, the Tatung Defendants notified LPL
that the parties were at an impasse on language for the declaration and again asked to discuss a mutually
convenient date for Ms. Rudicifs testimony. At no time during this four month exchange was any
objection raised by LPL to the taking of Ms. Rudiclfs deposition and at no time did LPI,. suggest it would
file a motion for protective order. Also, during this period, the parties’ status reports noted Ms.. Rudich’s
deposition was an open item. Instead of responding with proposed dates, on July i2, 2007, LPL
requested that the Special Master not permit Ms. Rudich to be deposed. F ive months after Ms. Rudich
was subpoenaed, LPL suggests for the first time that it may seek a protective order in connection with her
deposition.. Your I-Ionor should deny l.,PL’s request for a protective order and order LPI., to make Ms.
Rudich available for deposition.
Ms. Rudich’s testimony is relevant for the following reasons. First, Ms. Rudich’s anticipated
testimony authenticating and explaining her responses to the office actions is relevant and admissible to
impeach LPL. At trial, it is anticipated that LPL witnesses will testify (as confirmed in its recent
supplemental infringement contentions) that a tray structure in the accused Tatung products to which the
module or flat panel display device is mounted is the claimed "first f`rame" notwithstanding that the
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Case 1:04-cv-00343-JJF Document 745 Filed 08/O1/2007 Page 2 of 3
module itself has a first liame and is front or side mounted to the tray During prosecution of the ‘079
application, Ms. Rudich referred to the tray structure as a “tray" and not a “first h·arne," The position
taken by Ms. Rudich on behalf of LPI., contradicts LPL’s inhringement claims in this case and is entirely
consistent with the Tatung Defendants non»int`ringe1nent positions. ln addition, in her efforts to
distinguish the cited IBM 9516 reference, Ms. Rudich argued to the PTO that the lBM, which is strikingly
similar to the accused Tatung products, is distinguishable from the claimed invention because it practices
"front rnounting." The statements made by Ms. Rudiclr to the PTO further support the Tatung
Detendants’ position that their products practice the prior art of “front mounting" and do not practice
"rear rnonnting." Accordingly, the statements made by Ms. Ruclich on behalf of LPL during prosecution
of the ‘079 continuation application are highly relevant to infringement and invalidity. See Micro.so_H
Corp. ra Mu!ri—Tec!r Sy.rrcrrr.r, Inc., 357 l’.3d 1340, i349—50 (Fed. Cir. 2004) (stating that patentee’s
statement to PTO during prosecution of one patent was "representation of its own understanding of the
invention disclosed in all three [related] patents.”), The Tatung Defendants are entitled to question to Ms.
Rudiclr regarding the ‘079 application, among other things, and to determine for example if it was her
practice to forward PTO office actions to her clients and whether she solicits, evaluates and adopts her
clients’ comments about prior art. The statements made by LPL to the PTO obviously are not privileged.
LPL’s blanket claim of privilege, therefore, has no merit.
Second, in response to Defendant ViewSonic Corporation’s discovery requests and the Special
Master’s instructions, LPL only recently produced long anticipated technical information regarding its flat
panel display devices with rear mounting features. These devices were disclosed, published, used, and/or
sold in the United States prior to the earliest priority date for the Patents. LPI., did not disclose these
material references to the PTO Examiner. The Tatung Defendants believe that had these LG products
been disclosed, the Patents would not have issued.. Sec 35 l}.S.C. § l02(b), Because Ms. Rudich was one
ofthe prosecuting attorneys for the Patents-in-Suit, the Tatung Defendants are entitled to question her
regarding LPL’s inequitable conduct, including the investigation she performed. See Br·n.s.scler, USA. 1,
LP v. Striyirer Srrics Corp, 267 F.3d i370, l379—83 (Ped. Cir. 2.001) (inventors and their attorney are
under duty of candor to disclose material information including facts that would trigger Section l02’s on-
sale bar and attorney has duty to inquire if he is on notice that specific, material information exists and
should be disclosed). Indeed, prosecuting attorneys are routinely deposed.. See, e. g., Alcorr Lcrbomrories,
Inc. v. Phorrnncicr Corp., 225 F.Supp,2d 340, 344 (S.D.N.Y. 2002) (holding that "the prosecuting
attorney’s mental impressions are crucial to any claim of inequitable conduct” and the prosecuting
attorney must submit to a deposition even if he has no non—privileged information so that "‘his lack of
knowledge may be tested and any claimed privilege placed on the r·ecord."’); Environ Pron’zrc1.s, Inc. v.
Told! Conrrrirrrnent, Inc. , 1996 Wl, 494l32 at *4 (ED. Pa. 1996) (denying motion for protective order on
grounds that prosecuting attorney has inforrnation relevant to inequitable conduct defense). Notably, in
Alcorr, the prosecuting attorney was also trial counsel who nevertheless was ordered to submit to a
deposition. l-Iere, Ms. Rudich is not even one of`LPL’s litigation attorneys. The McKenna law firm has
represented to Your Honor that there is a complete separation of litigation and prosecution counsel, as
required by the Protective Order,
Without Ms. Rudiclfs deposition, the Tatung Defendants believe that LPI., may object to the ‘079
lile history as hearsay or lacking foundation (even though such objections would have no merit), refuse to
produce Ms. Rudich, who resides outside of Delaware, as a witness at trial, and/or claim that her
statements were ambiguous or mistaken. The Tatung Defendants acted diligently to arrange for Ms.
Rudich’s deposition. Ms. Rudich’s testimony is relevant to issues of infringement, invalidity and
inequitable conduct. To their detriment, the Tatung Defendants extended the courtesy of allowing Ms.
Rudich to submit an admissible declaration in lieu of testimony, only to be "strung along" by LPL, who
apparently had no intention of ever agreeing to a meaningful declaration or deposition. Accordingly, the
Special Master should order LPL to make Ms. Rudich available for deposition on a mutually agreeable
date.
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Case 1:04-cv-00343-JJF Document 745 Filed 08/O1/2007 Page 3 of 3
Respectfully,
A aza (#4093)
ASG/afg
cc: Clerk of thc Court (By Electronic Filing)
All Counsel of Record (via electronic mail)
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