Free Motion to Compel - District Court of Delaware - Delaware

Case 1 :04-cv-00343-JJF Document 645 Filed 05/O2/2007 Page 1 of 4
CONNOLLY BOVEZ LODGE 8c HUTZ LLP
% ATTORNEYS AT LAW
wrrmmcron, mz
The Nemours Building
1007 North Orange St.
P.O. Box 2207
Wilmington, DE 19899
nat: (302) ees 9141
James D_ Heisman FAX! 658
paying; WEB: www.cbIh.com `
m (sez) 888-6216
¤M~¤-
Via Email and Hand—Delivery
May 2, 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 et al., USDC, D. Del., No. 04-343-JJF
DM 31: ViewSonic’s Motion to Compel re RFP 128
Dear Special Master Poppiti:
ViewSonic Corporation ("ViewSonic") moves to compel Plaintiff ("LPL") to
_ produce documents and things sought by supplemental discovery expressly allowed by the
Ccurtdue to LPL’s' late assertion of new claims after the start of the Markman process. See
DI 401. RFP 128 seeks information related to attaching a flat panel display device (i.e., an
LCD module or plasma display panel) to, on or within any other structure at or near the
Veornersnof the flat panel display device. See Ex. 2.1 RFP 128 defines flat panel display
i it device to be an LCD module or plasma display panel, thus removing any ambiguity
regarding whether LPL’s LCD modules or plasma products are covered by the request.
LPL2product specifications, assembly drawings and product samples are responsive to RFP
128.
As to documents and things relating to products that quality as prior art and predate
the US tiling date of the ’64l patent (April 2, 1999), such discovery is clearly proper to
enable defendants’ experts to evaluate these materials as part of defendants’ invalidity
defense. There is no reason to delay such discovery until alter a claim construction
decision as doing so will have the unintended consequence of effectively bifurcating fact
discovery and will likely impact the trial date. The information sought is critical to
properly evaluate the validity of the patents in suit. LPL has conceded that an LCD module
with holes on the rear surface or back side of the module is relevant to rear-mount
technology. See Ex. 23 (providing partial "list of LPL’s modules that have holes at rear _
surface"). ViewSonic believes that virtually all of LPL’s LCD modules, including the prior
art modules, are related to mounting at the corners and have holes on the rear surface or
back side of the module that were or could be used to attach various items to the module, or
to attach the module to another component. ViewSonic’s understanding is based on the
1 Numeric exhibits are enclosed with ViewScnic’s 7.1.1 certification. Letter exhibits are enclosed with Mr.
Nelson’s declaration. ’
2 Discovery related to attaching a flat panel display device to, on or within any other structure at or near the
"comers" of the flat panel display device is specifically directed to newly asserted claims 38-39 ofthe ’64l
patent, which recites “comer", a term not found in any previously asserted claim.
wnuvuneron, or wAsmNeroN, nc Los ANGELES, CA

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The Honorable Vincent J. Poppiti l
May 2, 2007 F
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few LPL product specs that ViewSonic independently obtained which reveal what look like l
fastening holes on the back of the devices, and mention mounting at the corners.3 See 1
Nelson Decl., {lil 4-12 & Exs. F—L. ViewSonic is entitled to have its expert(s) examine ,
LPL’s prior art products specs, assembly drawings and product samples to investigate the
configurations ofthe holes on the back ofthe module, including the type, location, size,
robustness, material, etc. of such holes, and determine independently whether such holes on
the back of LPL’s prior art LCD modules are or could be used to attach the module to
another structure, such as a monitor case or laptop housing. This is the identical position
` LPL took during the March 9, 2007 hearing regarding discovery sought Hom Tatung. See
Ex. 22 ("Mar. 9, 2007 Hrng. Tr.”), p. 29, l. 9 - p. 33, l. 22 (LPL needs drawings to evaluate
whether there are any fastening elements or parts on the back of the device; id., p. 84, l. 20
- p. 88, 1. 19 (even if product is Hont or side mounted, party entitled to evaluate whether
product also may be capable of being rear mounted through fastening parts on the back).
Claim construction will not impact RFP 128, and provides no basis for delaying
production of the materials sought. LPL’s relevant proposed constructions, including that
of "flat panel display device,” encompass the defendants’ proposed constructions. See
Mar. 9, 2007 Hrng. Tr., p. 79,1. 23 - p. 80, 1. 12 (representing that LPL’s construction is
broader, and encompasses an LCD module and plasma panel). If LPL’s proposed
construction of "flat panel display device” is adopted and does not cover its own products
(e. g., LCD modules), then LPL’s products before and after the filing date of the patents
would represent extremely significant discovery regarding non-inninging alternatives. See
Minco, Inc. v. Combustion Eng’g, Inc., 95 F.3d 1109, 1120 (Fed. Cir. 1996) (non-
inninging alternatives considered for damages determination). Thus, LPL should be
ordered to immediately produce product specifications and assembly drawings, as well as
product specimens, that evidence or relate to attaching a flat panel display device (i.e., an
LCD module or plasma display panel) to, on or within any other structure at or near the
corners of the device that was published, distributed, made, offered for sale, imported or
sold in the U.S. prior to April 2, 1999. LPL’s prior arguments conceded this fact. See Mar.
9, 2007·-Hrng. Tr., p. 79, l. 23 -· p. 80, 1. 12 (argument by LPL that it is improper to limit —
discovery to party’s claim construction).
Finally, information regarding prior art (front or side mount) specifications,
drawings and products without holes on the back of the modules is also properly
discoverable for numerous reasons. For example, a proper obviousness inquiry requires an
examination of the scope and content of the prior art, which includes front mount and side
mount technology. Graham v. John Deere Co., 383 U.S. 1, 17-18 (obviousness inquiry
examines scope- and content of prior art, and differences between prior art and claims at
issue); McNeil-PPC v. Perrigo Co., 337 F.3d 1362, 1368 (Fed. Cir. 2003) (same). Designs
that are different than rear mounting teclmology (i.e., non-infringing alternatives)
3 Notably, LPL hid this information from the U.S. Patent Office, just as it is trying to do in this case. For
example, the Examiner rejected the claims ofthe ’64l patent as obvious over U.S. Patent No. 5,835,139 (Yun
et al.), finding that it would have been obvious to rearrange the fastening parts from the side to the rear ofthe
device. See Ex. 24, at VS5005614. In response to the Examiner’s obviousness rejection, LPL challenged the
Examiner’s failure to cite prior art showing a fastener on the back of a module while simultaneously failing to
disclose that prior art LCD modules commonly had fastening elements on their backs. See Nelson Decl., 11 3
& Ex. A (back of prior art [BM module that practices side mounting has holes in back); see also id., {lll 4-12
& Exs. F-L. .

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The Honorable Vincent J. Poppiti
May 2, 2007
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encompass front and side mounting, and are relevant. A reasonable royalty damages
analysis naturally includes alternatives to rear mounting, thus encompassing Eont and side l
mounting. See Minco, 95 F.3d at 1120 (non-infringing alternatives considered in
reasonable royalty determination). LPL has argued that front and side mounted products
are relevant to discovery it seeks, estopping it from arguing the opposite here. See Mar. 9,
2007 Hrng. Tr., p. 81, ll. 2-12; see also Nelson Decl., 1111 4-13 & Exs. F—M.
Similarly, information related to products first sold, offered for sale, imported or
published inthe US after April 2, 1999 is also highly relevant and properly discoverable.
For example, these materials are directly related to the evaluation of the "commercial
success” factor used in both invalidity and damages analyses.4 ViewSonic needs the
information sought by RFP 128 to allow its expert to ascertain if there is any correlation
between mounting schemes on the products sold by LPL and their commercial success in {
order to properly conduct these analyses. These same analyses are directly relevant to the
evaluation of any assertion by LPL that the supposed invention has enjoyed commercial
success, thus the discovery sought is necessary to permit the full evaluation of that
assertion, unless LPL commits to waive its right to argue same at trial. This analysis is
even more important under the KSR Int ’l Co. v. T eldlex Inc. decision just handed down by
the U.S. Supreme Court April 30, 2007 which over-ruled the Federal Circuit’s overly rigid
approaches in obviousness examinations. ____ U.S. ___, 2007 WL 1237837 (2007).
~ LPL has wrongly asserted that ViewSonic is not permitted to use the new requests
to seek discovery that (1) it could have obtained previously, or (2) happens to fall within
the scope of discovery sought by ViewSonic’s February 16 motion. LPL’s positions make
the Court’s Amended Scheduling Order (DI 401) allowing discovery related to the new
claims a nullity. See also Ex. 20 (Jan. 19, 2007 Hrng. Tr.), p. 9, 1. 15 - p. 10, 1. 11.
ViewSonic’s new discovery requests are directed to the new claims asserted by LPL. That
the scope of information responsive to such discovery hypothetically could have been
sought earlier, or that some of the information responsive to the new discovery requests
may also fall within the scope of information sought by ViewSonic’s February 16, 2007
motion is not relevant.
LPL’s assertion that an alleged agreement reached during the December 28, 2006
hearing limits ViewSonic’s new discovery to information dated prior to December 31,
1998 is an equally frivolous attempt to write limitations into the clear mandate of the
Amended Scheduling Order. Nowhere in the transcript of that hearing is there a hint of an
agreement to temporally limit all discovery. See Ex. 21 (DI 384), p. 100, l. 19-p. 176, 1. 18.
Based on the foregoing, LPL should be compelled to produce the information
sought herein.
4 See, e.g.,‘ Graham, 383 U.S. at 17-18 (commercial success a secondary consideration for obviousness
inquiry); Iruswal Sys. Corp. v. Hydro—Air Eng g, Inc., 813 F.2d 1207, 1212 (Fed. Cir. 1987) ("secondary”
considerations refer to secondary in time, not importance); Georgia-Pacyic Corp. v. US. Plywood Carp., 318
F. Supp. 1116, 1120-21 (S.D.N.Y. 1970) (eighth factor for reasonable royalty determination includes
commercial success). As discussed above, deferring discovery of post April 1999 materials similar to the
deferral of independent discovery sought in ViewSonic’s Feburayr 16, 2007 motion (argued March 2) ignores
the subsequent admissions of LPL of the relevance of such material and the importance of these materials
regardless of the construction adopted.

Case 1:O4—cv—OO343-JJF Document 645 Filed 05/O2/2007 Page 4 of 4
g c:otggy_g_r,t.v rsovst LODGE Bl Htrrz 1.L,1?__
The Honorable Vincent J. Poppiti
May 2, 2007
Page 4
Respectihlly submitted,
/s/ James D. Heisman
James D. Heisman {
cc: Counsel of record

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