Free Reply to Response to Motion - District Court of Connecticut - Connecticut

Case 3:00-cv—00754-JBA Document 484-2 Filed 01 /26/2005 Page 1 of 2

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VIA FACSIMILE/THEN MAIL I i
Robert P. Greenspoon, Esq.
Niro, Scavone, Haller &· Niro
181 West Madison Street _
Suite 4600
Chicago, Illinois 60602-4515
OFFER OF COMPROMISE PROTECTED BY
FED. R. EVID., RULE 408
Re.: Sony Electronics Inc., et al. v. Soundview Technologies, Inc 1
_ CA 00·CV·754 JBA, (Consolidated with CA 00-CV-768) ‘
Dear Rob: l
K"
I arrr writing this letter at the instructions of my client, Sharp Corporation In view of the
recent decision of the Federal Circuit affirming the decision of no infringement and no antitrust
or CUPTA violation, Sharp believes that now is an appropriate time for the parties to again
discuss possible settlement of this case. Prior making the settlement offer, Sharp has asked me to
emphasize two points -
First, the decision of the Federal Circuit means that Sharp has no further "downside" in
this case Thus, there is no impediment to its going forward with the claims that were stayed. Q
Second, in that connection, it is our opinion that Soundview will likely have to pay all of
the reasonable attorneys‘ fees and costs of Sharp To that end, the remaining invalidity and i
unenforceability arguments can be simplified to just two points at trial: ,
(1) that Soundview falsely stated to the USPTO in its Elam Rule 131 declaration that the
invention was reduced to practice prior to the filing date ofthe patent application This point is
critical because Soundview only overcame the citation of the Chard reference by swearing
behind its filing date with this declaration. However, as you will recall, during my discovery
deposition examination of Mr. Elam, he admitted that the invention was NOT been reduced to
practice prior to May 2002.. Furthermore, you will recall that I deposed attorney Yoches (a
Finnegan lawyer responsible for the case) who agreed, among other things, that great care should
be taken to ensure that Rule 131 declarations are accurate. In this case, the requisite level of care
{ra plainly was not exercised and, instead, it appears that your client, its counsel and the inventor 2
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Case 3:00-cv—00754-JBA Document 484-2 Filed 01/26/2005 Page 2 of 2
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adopted an intentional attitude of willful blindness concerning the alleged actual reduction to
r,-—\_ practice ofthe Elam invention.
(2) that Soundview failed to provide the USPTO with the documents describing the Elam
invention that were given to the FTC more than one year prior to the filing date of the Elam
patent application Significantly, Soundview does not dispute that the documents were given to
the FIC. Rather, it merely argues that they were not a public disclosure of the invention. On the
other hand, there is no dispute that these documents were given by Soundview without any ;
confidential restrictions so that we feel Soundview‘s argument is very weak.
Obviously, there are many other invalidity/unenforceability arguments that Sharp can
make at trial. Nevertheless, we are convinced that these two arguments alone serve to establish g
both the invalidity and unenforceablity of all claims in the Elam patent, l
With this in mind, Sharp now makes the following settlement proposal. To date, Sharp l
has paid or been charged attorney fees and expenses totaling about $2 million Accordingly,
Sharp hereby offers to settle this matter by Soundview‘s prompt payment of these fees and .
expenses. 2 %
Please advise if the foregoing is acceptable and we will prepare a draft Agreement f`or
you and your client to review lf you have any questions regarding this offer, please do not
hesitate to contact me. _
fr. Very truly yours, t
NIKON & VANDERHYE. P.C.
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