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Case 1:04-cv-00343-JJF Document 395 Filed O1/08/2007 Page 1 of 3
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January 8, 2007
BY E··l\/IAIL & HAND DELIVERY
The Honorable Vincent J. Poppiti
BLANK ROME LLP
Chase Manhattan Center
1201 Market Street, Suite 800
Wilmington, DE 19801
Re: LG'.PhiIips LCD C0., Ltd. v. ViewSonic Corp., et al., C.A. No. 04·-343—.l.iF
Dear Special Master Poppiti:
Defendants Tatung Company and Tatung Company of America, Inc. (collectively, the
"Tatung Defendants") respectfully submit this letter brief in opposition to Plaintiff LG. Philips
LCD Co., Ltdfs ("LPL") Motion to Compel Discovery Regarding Advice of Counsel.
The decision of whether to assert the advice of counsel defense is a monumental one
because it implicates waivers of the attorney—client privilege and work product doctrine. See
Ajjinioii Net Patents, Inc. v. Moritz, Inc., 440 F.Supp.2d 354, 356 (D- Del. 2006). Indeed, the
Federal Circuit has acknowledged the dilemma faced by an accused infringer, who has to choose
between waiving the attorney client privilege with respect to reliance on opinions of counsel or
risking a finding of willful infringement.} in Qucmtzzm Corp v. Tcmdon Corp., 940 F.2d 642,
643-644 (Fed. Cir. 1991), the Court noted:
Proper resolution of the dilemma of an accused infringer who must choose
between the iawful assertion of the attorney—client privilege and avoidance of a
willfulness finding if infringement is found, is of great importance not only to the
parties but to the fundamentai values sought to be preserved by the attorney-client
privilege ....
An accused infringer . . . should not, without the trial court's careful
consideration, be forced to choose between waiving the privilege in order to
i Neediess to say, the `fatung Defendants affinnatively denied LPL’s claim of willful
infringement in their Answers. (1).1. 186; 187).
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Case 1:04-cv-00343-JJF Document 395 Filed O1/08/2007 Page 2 of 3
The Honorable Vincent l. Poppiti
January 8, 2007
Page 2
protect itself from a willfulness finding, in which case it may risk prejudicing
itself on the question of liability, and maintaining the privilege, in which case it
may risk being found to be a willful infringer if liability is found ..,.
ln order to ameliorate the harsh effects of this dilemma, some Courts have been willing to
bifurcate liability from wiiifulness and damages so that an accused inftinger is not required to
make the monumental decision of whether to waive the attorney client privilege until
infringement has been established. See id, at 644.
Here, the Tatung Defendants repeatedly have informed LPL that they have not yet
decided whether to assert the advice of counsel defense. At the parties’ December 2006 meet
and confer, LPL stated that it needed this information because of the upcoming March 2007 fact
discovery cut~off. The Tatung Defendants proposed that the parties agree to a date (eg., mid-
June 2007) by which the Tatung Defendants will inform LPL as to whether they are relying on
the advice of counsel defense and agree to extend the fact discovery cutoff relating to advice of
counsel issues (ag., to mid~August 2007). Counsel for LPL stated that they were willing to
consider this proposal. (Declaration of Valerie W. Ho, il 6.) Should advice of counsel issues
become ripe for discovery, the Tatung Defendants are willing make the relevant witnesses
available for deposition at a location in the United States of LPL’s choosing. This approach will
not cause LPL any prejudice whatsoever.2
Accordingly, the Tatung Defendants respectfully request that the Court deny LPL’s
Motion to Compel. The Tatung Defendants further request that the Court (1) set a deadline for
sometime in June 2007 by which the Tatung Defendants will inform LPL as to whether they are
asserting the advice of counsel defense and (2) extend the fact discovery cut··off relating to
advice of counsel issues to sometime in August 2007.
Respectiiiliy,
Qin/liv diva 2-it M
Anne Shea Gaza
(#4093)
ASG/afg
2 In fact, as the Special Master knows, LPL only very recently has asserted a number of
new claims against the Defendants and has asked for an extension of the fact discovery cut—off.
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Case 1:04-cv-00343-JJF Document 395 Filed O1/08/2007 Page 3 of 3
The Honorable Vincent J. Poppiti
January 8, 2007
Page 3
cc: Clerk of the Court (By Electronic Filing)
Richard Kirk, Esquire (via electronic mail)
Cormac T. Connor, Esquire (via electronic mail)
Lora Brzezynski, Esquire (via electronic mail)
Mark Krietzman, Esquire (via electronic mail)
Scott R. Miller, Esquire (via electronic mail)
Jeffrey B. Bove, Esquire (via electronic mail)
RLFE-3E02ll6—l

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