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August 15, ZOO?
VIA E- FILE AND HAND DELIVERY
The l—ionorable Vincent J. Poppiti
BLANK ROME LLP
Chase Manhattan Center
i20l Market Street, Suite 800
Wilmington, DE 19801
Re: LG.PhiIigs LCD C0., Ltd. v. ViewSonic et rr}., (LA. No. 04-343-JJF
Dear Special Master Poppiti:
In connection with the Tatung Det`endants’ motion to compel the deposition of Rebecca Rudich and
LPL’s motion for protective order, the Tatung Defendants wanted to bring to Your i·lonor’s attention their recent
proposal to LPL, which they believe is a reasonable compromise under the circumstances, but which LPL
rejected outright.
As Your Honor knows, within the last several weeks, LPL finally produced technicai documents
regarding its own products. A review of these documents led to the discovery that the LG LC056N1 LCD
module, which has rear mounting features, was on sale in i996 (as shown by LPL documents) and is therefore
highly material prior art to the i’atents·in—Suit that should have been disclosed during prosecution. LPL’s recent
document productions have raised new issues regarding inequitable conduct, especiaily because it appears that
LPL had gathered, reviewed and produced those documents in its litigation with NEC Corporation during the
exact time frame that the Patents—in-Suit were being prosecuted. Based on these newly discovered facts, it has
become even more imperative that the Tatung Defendants have an opportunity to depose LPL’s prosecuting,
attorney, that is, the attorney at the Mclienna iirm who is familiar with the tirm’s policies and procedures
regarding patent prosecution and disclosure of prior art and who played a substantial role in prosecuting the
Patents—in—Suit
Until the August 13, 2007 hearing, the Tatung Defendants believed that the appropriate witness was
Rebecca Rudich, whose declaration in this case stated that she is involved in prosecution activities relating to the
Patents—in-Suit and is the senior partner in charge of all prosecution work, At the August I3, 2007 hearing,
however, Ms. Brzeynski suggested for the first time that while Msn Rudich has worked in that capacity for the
past several years, she worked in a different capacity as an associate during the time the Patents-in—Suit were
being prosecuted, Ms, Brzeynski also suggested that Ms. Rudich is not the appropriate witness to testify about
prosecution of the Patents—in—Suit or the McKenna firm’s policies regarding patent prosecution for the time
frame in question
In iight of these revelations, on August I3, 2007, the Tatung Defendants sent a letter to LP}. proposing
the following compromise:
Rt1=r-3r902=is-r
Case 1:04-cv-00343-JJF Document 768 Filed 08/15/2007 Page 2 of 3
1) The Tatung Defendants will withdraw their request that Your Honor review in camera certain
communications and documents identified in Ll’l,.’s privilege log as having been sent hom or to Ms. Rudich.
2) McKenna will make Ms, Rudich available for deposition limited to questions relating to the ‘079
continuation application, which LPI., concedes is being prosecuted by Ms. Rudich.
3) In lieu of making Ms. Rudich available on other topics, McKenna will provide an appropriate Rule
30(b)(6) witness for deposition. The topics to be addressed at this deposition will include (a) Mcl
prosecuted; (b) any policies and procedures implemented by McKenna to ensure that its prosecuting attorneys
and clients comply with their duty of candor to the Patent Office during the time frame that the Patents—in—Suit
were being prosecuted; (c) the custom and practice employed by Mclienna prosecution attorneys in connection
with obtaining, investigating, evaluating and disclosing prior art; (d) the prosecution of the Patents—in~suit; and
(e) whether any McKenna attorneys were involved in any capacity in the NEC litigation, (See Exh. A.)
LPL rejected this proposal on August l4, 2007. (See iixh. B,) LPL contends that it is too late for the
Tatung Defendants to depose McKenna because the discovery cutoff` has passed. This position, of course, is
extremely disingenuous because LPL chose to wait until after Your I~lonorâ€s issuance ofthe claim construction
rulings to produce highly relevant technical documents relating to its own products. The Tatung Defendants
simply did not know about the materiality of the LG LC056Nl reference until three weeks ago. Moreover,
relying on Ms. Rudich’s declaration, the Tatung Defendants believed that they had subpoenaed the appropriate
witness before the close of fact discovery LPI. now claims, long after the close of tact discovery, that Ms.
Ruclich is not the appropriate witness after all. if that is true, then LPL and l\/lclienna should be required to
produce an appropriate witness for deposition.
LPL also niistaltenly contends that the Tatung Defendants are seeking these depositions in order to
harass LPL and to delve into attorney—client privileged communications. That is simply not true. Prosecuting
attorneys are routinely deposed in cases in which inequitable conduct ofthe patentee has been raised. Indeed,
courts have ordered depositions of prosecuting attorneys even in situations where the attorneys also were acting
as litigation counsel. See, eg, Alcon Lobororories, Bic. v P/rorrnocio Corgo, 225 F.Supp.2d 340, 344 (S.D.N,Y.
2002) (holding that “the prosecuting attorney’s mental impressions are crucial to any claim of inequitable
conduct" and the prosecuting attorney must submit to a deposition even if he has no non-privileged information
so that "‘his lack of knowledge may be tested and any claimed privilege placed on the record."’); Environ
Product.; Inc. v. Toro} Corrroirrrrrerrt, Inc., 1996 WL 494l32 at *4 (E.D. Pa. 1996) (denying motion for
protective order on grounds that prosecuting attorney has information relevant to inequitable conduct defense).
The `fatung Defendants believe that their proposal is reasonable because it will obviate the need lor LPI,.
to submit privileged documents for in camera review, it will spare Your Honor the need to review potentially
voluminous documents, Ms. Rudich will not be burdened with an extensive deposition and will be required to
testiiy only about what LPL concedes she knows (ie., prosecution of the ‘O’79 application), and the Tatung
Defendants will have a meaningful opportunity to explore the issue of inequitable conduct, and in particular, the
recently disclosed prior art, with an appropriate witness. Accordingly, the Tatung Defendants respectfully
request that Your Honor consider this approach.
Respectfully,
Heal.,-ral. L. ordeal}, 117;, ay 0Y.··a.¤.s¤,.
M- ' @
Frederick 1,.. Cottrell, III (#2555) ' -T°"a‘°'°/' E L/jg
FLC,llI/afg
Enclosures
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Case 1:04-cv-00343-JJF Document 768 Filed 08/15/2007 Page 3 of 3
cc: Clerk of the Court (By Eiectronic Filing)
A11 Counsel of`Reco:d (via electronic maii)
nm-2.190248-1 3
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Document 768
Filed 08/15/2007
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Case 1:04-cv-00343-JJF
Document 768
Filed 08/15/2007
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Case 1:04-cv-00343-JJF
Document 768
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