Free Notice to Take Deposition - District Court of Delaware - Delaware

Case 1:05-cv-00048-SLR

Document 123

Filed 11/28/2005

Page 1 of 8

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE HITACHI, LTD., and UNISIA NORTH AMERICA, INC., Plaintiff, v. BORGWARNER INC., and BORGWARNER MORSE TEC INC., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 05-048-SLR

BORGWARNER INC., Counterclaimant, v. HITACHI, LTD., and UNISIA NORTH AMERICA, INC. Counterdefendants.

DEFENDANTS' FIRST NOTICE OF DEPOSITION OF PLAINTIFF UNISIA NORTH AMERICA, INC. PLEASE TAKE NOTICE that, pursuant to Rule 30(b)(6) of the Federal Rules of Civil Procedure, and the Local Rules of this Court, commencing at a time and place to be mutually agreed upon by counsel, Defendants BorgWarner Inc. and BorgWarner Morse TEC Inc. ("BorgWarner"), by and through its counsel, will take the deposition upon oral examination, of Plaintiff Unisia North America, Inc. ("UNAI"), through one or more officers, directors, managing agents or other persons who consent to testify on UNAI's behalf with regard to the deposition topics set forth in Schedule A (attached hereto).

Case 1:05-cv-00048-SLR

Document 123

Filed 11/28/2005

Page 2 of 8

The depositions will take place under oath and before a duly authorized notary public, or other person authorized by law to administer oaths. The depositions will be recorded by stenographic means by a court reporter and by audio and visual means by a videographer. No later than five (5) business days prior to the deposition, you are requested to set forth in writing the identity of each witness who will testify in response to this notice and the matters on which the person will testify. Dated: November 28, 2005 __/s/ Mary B. Matterer_____________ Richard K. Herrmann (I.D. #405) Lewis H. Lazarus (I.D. #2374) Mary B. Matterer (I.D. #2696) Morris James Hitchens & Williams LLP 222 Delaware Avenue, 10th Floor Wilmington, DE 19899 (302) 888-6800 [email protected] Hugh A. Abrams (pro hac vice) Marc A. Cavan (pro hac vice) Lara V. Fleishman (pro hac vice) Lisa A. Schneider (pro hac vice) Sidley Austin Brown & Wood, LLP 10 South Dearborn Street Chicago, Illinois 60603 (312) 853-7000 Attorneys for BorgWarner Inc., and BorgWarner Morse Tec Inc.

2

Case 1:05-cv-00048-SLR

Document 123

Filed 11/28/2005

Page 3 of 8

SCHEDULE A DEFINITIONS A. "Hitachi" as used herein shall mean plaintiff Hitachi, Ltd., any corporate affiliates,

including plaintiff Unisia North America, Inc. , and any parent or parents, subsidiaries, domestic or foreign, partners, officers, directors, successors, predecessors, assigns, and the employees, attorneys and agents of any and all of them. B. "UNAI" as used herein shall mean plaintiff Unisia North America, Inc., any corporate

affiliates, and any parent or parents, subsidiaries, domestic or foreign, partners, officers, directors, successors, predecessors, assigns, and the employees, attorneys and agents of any and all of them. C. "Defendants" or "BorgWarner" as used herein shall mean BorgWarner Inc., and

BorgWarner Morse TEC Inc. D. E. The term "patent-in-suit" or "the '738 patent" shall mean U.S. Patent No. 5,497,738. The term "variable camshaft timing components" as used herein shall include, without

limitation, components used, or which can be used, in a system for controlling the timing of the opening and closing of an intake valve and/or exhaust valve (or for controlling the position of a camshaft relative to the position of a crankshaft or another camshaft) in an internal combustion engine, such components including without limitation: (1) camshaft sprockets capable of being hydraulically adjusted (e.g., sprockets with body vanes), (2) camshaft position sensors, (3) variable timing control solenoids and solenoid valves,

3

Case 1:05-cv-00048-SLR

Document 123

Filed 11/28/2005

Page 4 of 8

(4) variable timing control systems and related components, (5) camshaft phase adjustment systems, and (6) electronic control units, and software and hardware contained therein; that have been, are, or are currently planned to be made, used, prototyped, sold, offered or intended for sale in the United States, or imported or exported by or on Hitachi's behalf, or imported into the United States as part of an engine or vehicle system. F. The term "concerning" means comprising, relating to, referring to, reflecting, describing,

evidencing or constituting. G. "Documents" as used herein is employed in the broadest possible sense and means

without limitation any written, printed, typed, stored, photographed, recorded or otherwise reproduced communication, compilation or reproduction including computer or electronically generated or stored information or data whether assertedly privileged or not and including all copies of drafts of any document which differ in any respect from the original. H. "And" means "and/or." "Or" means "and/or." The plural of any word used herein

includes the singular and the singular includes the plural. The masculine gender of any word used herein includes the feminine and the neuter. The past tense of a verb used herein includes the present tense and the present tense includes the past tense. I. J. "Any," "all," "each" or "every" means any and all, each and every. The terms "make," "use," "sell," "offer to sell," and "import" each assume the broadest

possible meaning given those terms under U.S.C. § 154 and 35 U.S.C. §271(a).

4

Case 1:05-cv-00048-SLR

Document 123

Filed 11/28/2005

Page 5 of 8

DEPOSITION TOPICS 1. UNAI's knowledge of how any variable camshaft timing components supplied by UNAI

to its customers, including, but not limited to Nissan, are used by its customers, including, but not limited to, how those variable camshaft timing components interact with other engine components. 2. All efforts made by UNAI to communicate information regarding variable camshaft

timing components manufactured and/or sold by Hitachi to third parties, including but not limited to current and/or potential customers. 3. Any communications between UNAI and any third party concerning variable camshaft

timing components manufactured and/or sold by Hitachi. 4. UNAI's understanding of the Document entitled "Hitachi Feature and Production

History for VTC" (UNAI0211-233) (also marked as Defendant's Exhibit 11). 5. UNAI's understanding of the Document entitled "Function of Variable Valve Train

System" (HIT1490-1492) (also marked as Defendant's Exhibit 12). 6. UNAI's understanding of the Document entitled "Variable Valve Train Systems"

(HIT1590-1599) (also marked as Defendant's Exhibit 13). 7. UNAI's understanding of the Document entitled "Technical Information for GM In-Line

4 and 6 Engine" (HIT 1387-1403) (also marked as Defendant's Exhibit 41).

5

Case 1:05-cv-00048-SLR

Document 123

Filed 11/28/2005

Page 6 of 8

8.

The cooperation agreement between Hitachi and BorgWarner, including any benefits and

information received by Hitachi/UNAI under the cooperation agreement, as well as any meetings between Hitachi/UNAI and BorgWarner pursuant to the agreement. 9. UNAI's understanding of the Documents entitled "C-VTC System, November 19, `98"

(UNAI 678-745), "Variable Valve Actuation: In reply to the request from PSA" (UNAI11281139, and "Overseas Network" (UNAI 403-408). 10. UNAI's understanding of the Documents entitled Jan. 8, 1997 Technical Information for

GM In-line 4 and 6 Engine (HIT1387-1403). 11. 1403). 12. UNAI's understanding of the Documents entitled Nov. 19, 1998 C-VTC System UNAI's understanding of the Documents entitled DVP&R for VTC&SOL/V (HIT1379-

(UNAI764-807). 13. UNAI's understanding of the Documents entitled Daimler Chrysler Oct. 4, 2000

(HIT1413-25). 14. UNAI's understanding of the Documents entitled GM V6 OHV Engine, May 30, 2002

(HIT1468-1534). 15. UNAI's understanding of the Documents entitled Daimler Chrysler, Jan. 14, 2003

(HIT1535-1613). 16. 1799). 6 UNAI's understanding of the Documents entitled GM/Fiat, June 10, 2003 (HIT1689-

Case 1:05-cv-00048-SLR

Document 123

Filed 11/28/2005

Page 7 of 8

17.

UNAI's understanding of the Documents entitled 4.6L UV8/LT8 Camshaft Phasing

Review (HIT1800-50). 18. Documents relating to the topics identified in the above paragraphs.

7

Case 1:05-cv-00048-SLR

Document 123

Filed 11/28/2005

Page 8 of 8

CERTIFICATE OF SERVICE I hereby certify that on the 28th day of November, 2005, I electronically filed the foregoing document, DEFENDANTS' FIRST NOTICE OF DEPOSITION OF PLAINTIFF UNISIA NORTH AMERICA, INC., with the Clerk of the Court using CM/ECF which will send notification of such filing to the following: Steven J. Balick, Esq. John G. Day, Esq. ASHBY & GEDDES 222 Delaware Avenue, 17th Floor Wilmington, DE 19801 Additionally, I hereby certify that on the 28th day of November, 2005, the foregoing document was served via email and overnight mail on the following non-registered participants: Michael D. Kaminski, Esq. Liane Peterson, Esq. FOLEY & LARDNER LLP 3000 K Street, N.W., Suite 500 Washington, D.C. 20007-5109 [email protected] [email protected]

/s/ Mary B. Matterer Richard K. Herrmann (#405) Mary B. Matterer (I.D. #2696) MORRIS, JAMES, HITCHENS & WILLIAMS LLP 222 Delaware Avenue, 10th Floor Wilmington, Delaware 19801 302.888.6800 [email protected] Attorneys for Defendants and Counterclaimant, BORGWARNER INC., and BORGWARNER MORSE TEC INC.

8