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ELEcrRoNicALr,Y FILED (Fm
BY HAND AND BY EMAIL \‘ (302) 429~4208
[email protected]
August 1, 2007
The Honorable Vincent J. Poppiti
Blank Rome LLP
1201 Market Street, Suite 800
Wilmington, DE 19801
Re: LG.Philq1s LCD C0., Ltd. v. ViewSonic, C.A. N0. 04-343 JJF
Dear Special Master Poppiti:
LG.Philips LCD Co., Ltd. ("LPL") moves for a protective order relating to Tatung
Company’s ("Tatung") request for a deposition of Rebecca Rudich, a McKenna Long &
Aldridge LLP attorney. Tatung’s intent appears to be to harass LPL and its attorneys as there is
no justifiable reason why a deposition is necessary or material to this case. Tatung’s demand is
now untimely, and Tatung has waived any right it may have had to pursue a deposition.
Tatung first stated in March 2007 that it was willing to accept a declaration in lieu of a
deposition Hom Ms. Rudich. Tatung sent a draft declaration by letter dated March 29, 2007 (Ex.
1), but that draft incorrectly assumed that MLA was in possession of an IBM 9516 monitor and
that Ms. Rudich had seen such monitor. It also asked Ms. Rudich to attest to photos taken by
Tatung of an IBM 9516 monitor that she had not seen. Just four days later on April 3, 2007, LPL
responded with its detailed comments. (Ex. 2.) Tatung responded by email (Ex. 3) and counsel
for Tatung and LPL spoke on April 5, 2007, during which conversation LPL stated that it would
prepare a revised draft declaration in response to the issues raised by Tatung. Specifically,
Tatung asked that Ms. Rudich attach to her declaration a photo or other picture identifying what
she meant by "rear tray" in her response to the PTO. On April 23, 2007, LPL responded as
promised with a four page detailed declaration that referenced on an Exhibit B attached to her
declaration what Ms. Rudich meant by rear tray. (Ex. 4.) Tatung responded on April 26, 2007
and stated that it did not want Ms. Rudich to include "subj ective observations and comrnentary,"
which it stated was "not relevant or admissible." (Ex. 5.) Just one day later, LPL responded
with a revised declaration that deleted her commentary but did clearly show on an attached
exhibit what structure she was referring to when she used the term "rear tray." (Ex. 6.)
Then, on July 9, 2007, Tatung stated that it wanted to proceed with Ms. Rudich’s
deposition without providing LPL any reason why the April 27, 2007 declaration was not
sufficient. (Ex. 7.) There was an exchange of better quality photos in June (Ex. 8), but that can
be of no importance because as noted, Ms. Rudich indicated what she meant by rear tray not on
the photos but on an IBM 9516 Reference diagram that was submitted to the PTO. LPL tried to
learn Tatung’s reasoning for why it believes a declaration is now insufficient (Ex. 9), but Tatung
666503—l
Case 1 :04-cv—00343-JJF Document 744 Filed 08/01/2007 Page 2 of 3
The Honorable Vincent J. Poppiti
THE BAY./XRD FIRM August 1,2007
Page 2
has refused to provide an explanation. Because it appears that Tatung never had any intention of
actually accepting a declaration, LPL submits that the Court should find that Tatung has waived
the right to pursue Ms. Rudich’s deposition. Further, Tatung having sat for months on the last
version of the declaration which it had essentially prepared, Tatung’s renewed request for a
deposition is now untimely as discovery has essentially concluded.
"[T]he request to depose a pa1ty’s attorney must be weighed by balancing, generally
speaking, the necessity for such discovery in the circumstances of the case against its potential to
oppress the adverse party and to burden the adversary process itself." Resqnercom, Inc. v.
Lcznsa, Inc., 2004 WL 1627170, *2 (S.D.N.Y. 2004) citing Madanes v. Madcznes, 199 F.R.D.
135, 151 (S.D.N.Y. 2001). The proposed Rudich deposition testimony is neither necessary nor
relevant to this case; Tatung’s only motive appears to be to harass LPL. Tatung stated in its July
18, 2007 submission that the "subj ect of Ms. Rudich’s deposition is limited to her written
representation to the patent office in connection with a continuation app1ication" regarding a
structure in the referenced 1BM monitor that she referred to as a "tray." (D.I. 728.) However,
the continuation application is not the subject of this case. Moreover, Ms. Rudich has already
stated all that she can about her reference to a "tray" in her two draft declarations. Stating more
would only add her subjective observations and commentary, which Tatung stated it did not
want. Finally, Tatung has already deposed the two inventors on eleven separate days. In fact,
Tatung spent considerable time deposing at least one inventor on the term "tray" as it supposedly
pertains to the Invention Disclosure Fonns for the Patents—in—Suit. If Tatung had a question
about the use of the term "rear tray" in the continuation application, it should have asked the
inventors. Having failed to do so, Tatung wants another bite at the apple. See Resqnet, 2004 WL
1627170, *5 (denying request to depose prosecuting attorney because inventors already deposed
with detailed questions about patent histories, cited prior art, and patents-in-suit).
Further, Tatung’s position that the method of mounting in the IBM 9516 is common to
the Tatung accused products is not relevant because Tatung’s accused products also meet the
claim limitations of the Patents—in—Suit. Importantly, the prosecution history at issue is not the
prosecution history of the Patents—in—Suit, and the exact claim referenced in Ms. Rudich’s
response to the PTO is not even in the Patents-in—Suit, thus further establishing the lack of
relevance of Ms. Rudich’s statements to the PTO.
Tatung’s suggestion that Ms. Rudich’s testimony may provide facts relating to
inequitable conduct also is not a sufficient reason for granting the deposition. lnequitable
conduct must be pled with specificity, and Tatung has not asserted that LPL committed
inequitable conduct related to the continuation application or the IBM product. See Resqnet,
2004 WL 1627170, *4. Finally, Tatung does not need Ms. Rudich’s testimony because it can use
LPL’s document filed with the PTO to establish what representations were made and can argue
any alleged inconsistency based on the document alone.
Respectfully subm
(rk0922)
cc: Counsel as shown on the attached certificate
666503—l
Case 1:04-cv-00343-JJF Document 744 Filed 08/O1/2007 Page 3 of 3
CERTIFICATE OF SERVICE
The undersigned counsel certifies that, on August 1, 2007, he electronically filed
the foregoing document with the Clerk of the Court using CM/ECF, which will send
automatic notification of the filing to the following:
Jeffrey B Bove, Esq. Frederick L. Cottrell, III, Esq.
James D. Heisman, Esq. Anne Shea Gaza, Esq.
Jaclyn M. Mason, Esq. Richards, Layton & Finger
Connolly Bove Lodge & Hutz LLP One Rodney Square
1007 North Orange Street P.O. Box 551
P.O. Box 2207 Wilmington, DE 19899
Wilmington, Delaware 19899-2207
The undersigned counsel further certifies that copies of the foregoing document
were sent by email and by hand on August 1, 2007 to the above counsel and were sent by
email and by U.S. Mail on August 1, 2007 to the following non—registered participants:
Scott R. Miller, Esq. Valerie Ho, Esq.
Connolly Bove Lodge & Hutz LLP Mark H. Krietzman, Esq.
333 South Grand Avenue Frank C. Merideth, Jr., Esq.
Suite 2300 Greenberg Trauri g LLP
Los Angeles, CA 90071 2450 Colorado Avenue, Suite 400E
Santa Monica, CA 90404
Tracy Roman, Esq.
Raskin Peter Rubin & Simon LLP
1801 Century Park East, Suite 2300
Los Angeles, CA 90067
/s/ Richard D. Kirk grk0922)
Richard D. Kirk
5`ll44`/»1
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