l`*?rcr~rAi=n:>s, i...AYTON & Fiuean
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ANNE SHEA GAZA WiLMiNGTON, DELAWARE IBBCH DURECT Dur;
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March 3, 2007
BY E-MAIL & HAND DELIVERY
The Honorable Vincent .I, Poppiti
BLANK ROME LLP
Chase Manhattan Center
l20i Market Street, Suite 800
Wilmington, DE l980i
Re: l.G.P/vi/ips LCD Co, Lid v ViewSonic Corp, er cu'. CA. No, 04-343-.i.ili`
Dear Special Master Poppiti:
Tatung Company and Tatung Company of America, Inc., (collectively, the "Defendants") hereby
oppose LG Philips LCD Cot, Ltd.’s ("LPL") motion for protective order regarding the deposition of Mr.
Yeong he—Bang (the “motion"). Based on the information and documentation received to date by
defendants, they believe that Mr. Bang may be an important witness in this case. In addition, the
defendants believe that his testimony will lead to the discovery of admissible evidence on, among other
things, the following:
1, Standing: Defendants contend that the so called "rear rnonnting" invention, which forms
the basis of the patents—in-suit, was developed during the term of and pursuant to the Development and
Manufacturing Agreement between LG Electronics ("LGlE,") and Digital Equipment Corporation ("DEC")
(the “DMAâ€) and, thus, plaintiff has no standing to bring this action Plaintiff disputes this contention,
but, until this week, refused to appoint a 30(b)(6) witness on this subject and still refuses to produce the
DMA and other relevant documentation, Plaintiff has the burden to prove that LG Philips (as opposed to
DEC or its assignees) owns the invention and has the right to sue for infringement. Defendants believe
that Mr, Bang, who was the Product Planning Department Manager for the LCD Division of LGE at the
time of the alleged invention of rear mounting, has personal knowledge concerning the DMA, side
mounting and the invention of rear mounting, Mr. Bang was intimately involved with the administration
and performance of the DMA, was one of the LGB employees who claims to have independently
developed the side mounting technology,] and Defendants suspect he also had a significant role in the
°‘rear mounting" invention,
The recent testimony of Messrs, Kim and Cho has raised serious questions as to how these two
I This claim was, however, debunked in the Chungwa Pictures Tubes arbitration over the DMA
and the Court’s ruling in California Indeed, Mr. Bang’s assertion was specifically dismissed in the
arbitration as not credible,
RLFl—3i24307—I
Case 1:04-cv-00343-JJF Document 553 Filed O3/08/2007 Page 2 of 4
The I·Ionorable Vincent .l Poppiti
March 8, 2007
Page 2
administrators in the LGB patent oflice (one with a BA in Chemisty and the other an electrical engineer)
independently conceived of “rear· mounting," which they described in their invention disclosure as an
"improvernent" to side mounting and a method to "design around" side mounting. They claim to have
done this based on their understanding ofthe importance of mounting to LGE, However, at least Mr Cho
admits that he conceived of the invention without even seeing a module, let alone a mounted module or a
drawing of side mountingr See Ex A to the motion, page 1 Boxes 6, 9 and I0. The inventors, of course,
kept no notes, have no work papers, made no sketches and do not have the CAD/CAM facilities to
produce the printed drawings in the second invention disclosure. `fhere also is a mystery surrounding how
this invention, conceived ofjust before the issuance of the ‘l39 patent, was submitted to the Korean
patent officeiust l0 days alter its conception compared to the usual 3 to 6 month cycle between invention
and submission, Further, the duplication of various ligures in the ‘139 patent and the patents·-in~suit (ag
figure 6 and figure 4C) seems to be more than a coincidence The ‘64l and ‘7i 8 patents are attached as
Exhibits l and L2 hereto. Finally, the extent of Mr, l3ang’s involvement in the patents—in—suit is critical.
LPL has already admitted that Mr. Bang had at least one substantive conversation with Mr. Kim in which
he is reported to have discussed the rear mount invention as a means to design around the side mounting
method. Defendants have a right to explore this conversation with Mr, Bang particularly since Mr. Kim
now claims to have very little memory of it.
2. Prior Art: LGE and LG Philips, who claim to own the ‘i39 patent, deleted references
and Figures contained in the Korean patent applications relating to side mounting and failed to cite the
‘ E39 patent as prior art. Mr. Bang’s role in this decision is important, since neither Mr. Kim nor Mr, Cho
can recall how or why this happened..
3. Obviousness: There is a signilicant question as to whether the rear mounting invention
was obvious in light of prior art, including side mounting, That is, it is appears that moving mounting
holes from the front to the back of the first frame is obvious, Not surprising, the inventors claim not to
have details regarding side mounting Defendant must determine what role Mr. Bang, the ostensibie
inventor of side mounting, had in the ‘“rear mounting" invention to add to their ohviousness defense.
4.. Plaintiff asserts that the only communication between Messrs. Bang and Kim on the
subject of the inventions was a "short telephone discussion? There is, however, no indication ofthe
duration of the discussion in Exhibit A to the motion. In any event, the substance, not the length, ofthe
discussion is the issue, Moreover, this argument raises even more questions about Mr. Bang’s role For
instance, how could Mr. Bang possibly have concluded that "bacl< mounting entails no known technical
difliculties" and comment on the complexity ofthe “‘back hinge" technology, without seeing drawings,
diagrams or mockups. Further, how could he determine from a short phone call that "thicl
far or there had to have been multiple communications between these gentlemen,
Defendants do not agree with plaintiffs assertion that Mr:. Bang did not have a material role in
the invention of rear mounting Since Mr. Cho claims never to have spoken to Mr. Bang and Mr. Kim’s
recollection is hazy, at best, the best source of evidence on this issue is Mr. Bang. Further, Defendants
inquiries of Mr. Bang are not limited to inventorship, but also have to do with the DMA and the alleged
design around LGE’s own patent. Interrogatory responses that generally deny legal conclusions are not
Rt F t ~s 224307-i
Case 1:04-cv-00343-JJF Document 553 Filed O3/08/2007 Page 3 of 4
The Honorable Vincent J . Poppiti
March 8, 2.007
Page 3
going to be suflicient to pin down Mr. Bangfs true role in the DMA and the invention. Defendants should
not be denied the opportunity to depose a hey witness because plaintiff does not agree with a yet to be
determined legal issue.
The following addresses the particular items raised by plaintiff in its motion:
l. Whether Defendants noticed Mr. Bang’s deposition in November or January is
imniaterial. The only timing issue that should be considered is whether the notice was timely, which, it is
undisputed, it was. Defendants strategy in scheduling discovery that is timely noticed is, therefore,
irrelevant.
2. In the discussions among counsel, it was expressly stated that the reasons discussed were
not the exclusive bases for deposing Mr. Bang. Counsel for Defendants did not agree it was necessary or
appropriate to discuss in detail each of the subjects to be covered in Mr. Bang’s deposition and declined
to do so.
3.. Judge Farnan’s ruling in another case on a motion in limine is not binding or relevant
here. indeed, whether evidence proposed to be offered by a third party not involved in the present
proceedings during a trial in a completely different case that did not even involve mounting has nothing to
do with whether discovery in this case is proper.
4. Defendartts, not plaintiff, should be the party to decide who they should depose in this
case and the area of inquiry for the deposition. Defendants have limited time and obviously are only
going to use that time in a manner they believe will be productive. The suggestion that Defendants
counsel would travel from Los Angeles to Washington DC to depose Mr. Bang over a weekend in order
to merely harass him is simply inaccurate.
5. Defendants’ examination of Mr. Bang should not be limited to subjects that plaintiff
thinks are relevant.
6. The Defendants would be willing to reimburse Mr. Bang’s travel expenses on the
condition that LPI, reimburse the Defendants for expenses they have incurred in bringing numerous
employees to the United States to be deposed on subjects they believe are irrelevant and duplicative.
Respectfully,
r
6t)ri. »rtrgl/rtrrrlt.fa·> .....
Anne Shea Gaza r
(#4093)
ASG/afg
Enclosures
arr 1-2 i 24307-l
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Tire Honorable Vincent J1 Poppiti
March 8, .2007
Page 4
cc: Clerk oi"Court (via CM/ECP)
Richard Kirk, Esquire (via electronic mail)
Cormac T. Connor, Esquire (via electronic maii)
Mark Krietzrnari, Esquire (via electronic mail)
Scott R. Miiler, Esquire (via electronic mail)
Jeffrey B. Bove, Esquire (via electronic mail)
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