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Case 1 :04-cv-00343-JJF Document 773 Filed 08/23/2007 Page 1 of 4
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rkirk(iDbayardfirm.com
August 23, 2007
The Honorable Vincent J. Poppiti
Blank Rome LLP
1201 Market Street, Suite 800
Wilmington, DE 19801
Re: LG.Phil1]1s LCD C0., Ltd. v. ViewSonic, C.A. N0. 04-343 JJF
Dear Special Master Poppiti:
On August 15, 2007, the Tatung Defendants wrote to “bring to Your Honor’s attention
their recent proposal to LPL" regarding its motion to compel Ms. Rebecca Rudich°s deposition.
That proposal sought, inter alia, to depose a 30(b)(6) witness from LPL’s law firm (McKenna
Long & Aldridge LLP or "McKenna") regarding its practices and procedures relating to patent
prosecution in general, and regarding a prior litigation (hereinafter "the NEC litigation") in
which attorneys from McKenna or its predecessor firrns may have been involved, in lieu of
having Ms. Rudich testify as to those topics. These proposed topics were formalized by the
Tatung Defendants on August 20, 2007. (See Ex. A.)
Proposed topic 1 generally pertains to McKenna’s policies and procedures relating to its
patent prosecution practice for the time frame of April 1998 to December 2002, including how
McKenna researches, obtains, investigates, evaluates and discloses prior art to the Patent Office.
Proposed topic 2 pertains to every conceivable aspect of prosecuting the Patents-in—Suit,
including "the disclosure or non-disclosure of prior art," "[a]ll details regarding the awareness of
any of the inventors of the Patents-in-Suit, the attorneys who prepared and/or prosecuted the
applications for the Patents-in—Suit . . . of any Prior Art LPL product", "[t]he understanding of
the attorneys who prepared and/or prosecuted the applications for the Patents—in-Suit regarding
the subject matter claimed in the Patents-in-Suit", etc. And proposed topic 3 generally pertains
to McKenna’s involvement in the NEC litigation. (Ex. A at pp. 3-5.)
The Tatung Defendants suggest that they are being reasonable in not proceeding to take
Ms. Rudicl1’s deposition relating to the Patents-in—Suit when she has very little information
relating to the Patents—in-Suit in any event. Her lack of knowledge regarding the prosecution of
the Patents-in-Suit is outlined in her Declaration provided to Your Honor on August 20, 2007.
(Ex. B.) Further, the Tatung Defendants are not entitled to a deposition from McKenna
regarding its patent prosecution procedures and regarding a prior litigation because the Tatung
Defendants request is untimely, unreasonable, and overbroad.
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Case 1 :04-cv—00343-JJF Document 773 Filed 08/23/2007 Page 2 of 4
The Honorable Vincent J . Poppiti
THE BAYARD Firm August 23, 2007
Page 2
On February 27, 2007, the Tatung Defendants served a subpoena on Ms. Rudich for her
personal deposition. (Ex. C.) This subpoena was the culmination of the Tatung Defendants’
attempt to prove that McKenna’s prosecuting attorneys had violated the Protective Order by
reviewing the Tatung Defendants’ technical specifications marked as Highly Sensitive
Confidential. (See Ex. D.) In an effort to resolve that issue, on March 6, 2007, Ms. Rudich
provided a Declaration regarding, inter alia, whether or not attorneys at McKemra had access to
Defendants’ documents designated as Highly Sensitive Confidential. (Ex. E.) Pursuant to that
Declaration, Mr. Merideth stated on March I6, 2007 (before the March 30th close of fact
discovery), that given LPL’s "agreement to provide designated privileged documents to the
Special Master, Tatung Company agreed to withdraw its subpoena of Ms. Rudich." (Ex. F.)
Mr. Merideth went on to state there was "one very limited issue, unrelated to the
Protective Order, on which we need testimony from Ms. Rudich. The testimony will be limited
to her responses to a specific PTO office action regarding the ‘079 [Application] related to an
IBM product. In lieu of such testimony we would be willing to accept a declaration .... ” (Ex.
F.) The Tatung Defendants even provided LPI, with a draft of the declaration they wanted Ms.
Rudich to execute. Importantly, the draft declaration never even hints that the Tatung
Defendants wanted to depose Ms. Rudich on any topic other than the prosecution of the ‘079
Application. (See generally Ex. G.)
The Tatung Defendants’ recent attempt to convince this Court that they needed Ms.
Rudich all along for all types of information, including McKenna’s practices and procedures
relating to patent prosecution in general, and regarding the NEC litigation in which attorneys
from McKenna or its predecessor firms may have been involved, is simply belied by the facts.
Indeed, as late as July 9, 2007, Mr. Meredith stated that the only issue for which he wanted to
depose Ms. Rudich related to a specific issue in connection with the ‘079 Application. (Ex. H.)
The Tatung Defendants now argue that they "believed the appropriate witness [for a
30(b)(6) deposition regarding patent prosecution] was Rebecca Rudiclr, whose declaration stated
that she is involved in prosecution activities relating to the Patents-in—Suit and that she is the
senior partner in charge of all prosecution work." (Ex. I.) But the Tatung Defendants
exaggerated Ms. Rudich’s supervisory capacity when they stated to this Court that "she is the
senior partner in charge of all prosecution work." What Ms. Rudich actually stated in her
Declaration is "For the past several years, I have been the Senior Partner in charge of day to day
activities for all of the patent prosecution work. " (Ex. E at 1] 4, emphasis added.) As Your
Honor is aware, Ms. Rudich’s patent prosecution activity related to the Patents-in—Suit pertains to
the ‘079 Application, which is a continuation of the Patents—in-Suit.
Ms. Rudich’s August 20m Declaration reinforces her lack of knowledge regarding
McKenna’s patent practice during the prosecution of the Patents—in—Suit. For example, she
specifically states that "[d]uring the period from June 28, 2000, until the issuance of [the Patents-
in-Suit], I was involved in patent prosecution activities for a variety of technologies under the
supervision of Song K. Jung, a partner with" McKenna (Ex. B at 1] 4); but that "[d]uring the
period of time from June 28, 2000, until the issuance of the Patents-in—Suit in December of 2002,
I performed very limited work related to the prosecution of the Patents-in—Suit, all of which was
done under the supervision of Mr. J ung.” (Ex. B at 1] 5.)
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Case 1 :04-cv—00343-JJF Document 773 Filed 08/23/2007 Page 3 of 4
The Honorable Vincent I. Poppiti
THE BAYARI) FIRM August 23, 2007
Page 3
Importantly, the Tatung Defendants have known from the earliest stages of this litigation
that Mr. Song Jung prosecuted the Patents—in-Suit, and thus was the appropriate person to be
deposed regarding McKenna’s prosecution practice. For example, the Tatung Defendants’ Initial
Disclosures, dated July 29, 2005, specifically identify Mr. Jung as an individual with McKenna
that is "likely to have discoverable inf`ormation" regarding the "Prosecution of Patents—in-Suit."
(Ex. J at pp. 2-3.) Similarly, in their Responses To LPL’s Second Set Of Interrogatories, dated
February 13, 2006, the Tatung Defendants again identified Mr. Jung as a person with
information or knowledge relevant to the Tatung Defendants’ contention that any claim of the
Patents-in-Suit were invalid. (Ex. K at pp. 11-13.)
Thus, the Tatung Defendants’ representations regarding Ms. Rudich’s work are not only
incorrect, but are an improper attempt to bootstrap a 30(b)(6) deposition of McKenna out of the
singular reason that the Tatung Defendants stated they needed Ms. R.udich’s deposition - "her
responses to a specific PTO office action regarding the ‘079 [Application] related to an IBM
product." (Ex. F.) Any attempt by the Tatung Defendants to seek a 30(b)(6) deposition of
McKenna should be denied given the Tatung Def`endants’ failure to serve a 30(b)(6) deposition
notice on Mr. Jung or McKenna before discovery closed almost five months ago.
Moreover, the proposed 30(b)(6) deposition topics are clearly topics that the Tatung
Defendants should and could have pursued when fact discovery was still open, had they intended
to do so. For example, proposed topic 1 generally pertains to McKenna’s policies and
procedures relating to its patent prosecution practice for the time frame of April 1998 to
December 2002, including how McKenna researches, obtains, investigates, evaluates and
discloses prior art to the Patent Office. And proposed topic 2, while it is partially couched in
terms ofthe newly produced LPL documents, still seeks an open—ended deposition to explore
grounds for supporting its affirmative defenses of unclean hands, patent misuse and inequitable
conduct. These are clearly issues that could and should have been explored before the close of
fact discovery. (See Ex. K, the Tatung Defendants’ responses for Interrogatory Nos. l5, 17 and
18, respectively.)
The Tatung Defendants are therefore not entitled either to a deposition of McKenna or a
deposition of any attorney who prosecuted the Patents-in-Suit. Moreover, the Tatung
Defendants’ proposed scope of a 30(b)(6) deposition is unreasonably broad, wholly
inappropriate, and seeks proprietary and privileged information about McKenna’s business
practices. In addition, the Tatung Defendants appear to be seeking to discover privileged
information, including communications between McKenna and LPL.
For at least all these reasons, this Court should not permit any deposition of McKenna
Long & Aldridge or Ms. Rudich.
Respectfully submitted,
4 f I km
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Richard D. Kirk (rk0922)
cc: Counsel as shown on the attached certificate
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Case 1:04-cv-00343-JJF Document 773 Filed 08/23/2007 Page 4 of 4
CERTIFICATE OF SERVICE
The undersigned counsel certifies that, on August 23, 2007, he electronically filed
the foregoing document with the Clerk of the Court using CM/ECF, which will send
automatic notification of the tiling 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 l9899—2207
The undersigned counsel further certifies that copies of the foregoing document
were sent by email and by hand on August 23, 2007 to the above counsel and were sent
by email and by U.S. Mail on August 23, 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 Traurig 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
571447-l

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