Free Redacted Document - District Court of Delaware - Delaware

L Case 1:05-cv-00048-SLR Document 223 Filed 05/24/2006 Page 1 of 4
. IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
I-HTACI-H, LTD. and )
UNISIA NORTH AMERICA INC., )
)
Plaintiffs, )
) C.A. No. 05-048-SLR
v. )
) REDACTED PUBLIC
BORGWARNER INC. and ) VERSION
BORGWARNER MORSE TEC INC., )
)
Defendants. )
)
BORGWARNER INC., )
)
Counterclaimant, )
)
v. )
)
HITACHI, LTD. and )
UNISIA NORTH AMERICA, INC., )
)
Counterdefendants. )
JOINT STIPULATION
The parties, by and through their undersigned counsel, do hereby stipulate and agree, as
follows:
l. On January 25, 2006, BorgWamer moved to compel the production of discovery
related to Hitachi’s sales of Engine Control Units (ECUs) containing VCT modules, including
Hitachi’s ECU sales to customers other than (See Ltr. Brief to Special Discovery Master
REDACTED
Seitz from M. Matterer, I/25/06; see also Ltr. to Special Discovery Master Seitz from M.
Matterer, 3/ l/06). Special Master Seitz ruled against compelling the production of such
discovery. (See Third Discovery Order, 2/27/06 and Ltr. from Special Master Seitz, 3/13/06). In
his ruling, the Special Master explained that ECU sales to customers other tha§EDACTirB

I Case 1:05-cv-00048-SLR Document 223 Filed 05/24/2006 -Page 2 of 4
unrelated to the pending litigation, and would delay the proceedings and expand discovery
unreasonably. (See id).
2. Upon a request for reconsideration of the Special Master’s decision, he again
stated that he was denying discovery, and stated that his "March 13, 2006 Decision shall not
preclude BorgWamer from tiling a separate lawsuit against Hitachi in the fixture, for which
discovery was precluded by the March 13, 2006 Decision. If Hitachi wants to address in the
pending litigation the infringement issue for ECU sales to customers other th§ri£DACT]5iRen the
Special Master will revisit his ECU discovery ruling at Hitachi’s request." (See 4/3/06 Fourth
Discovery Order).
3. On April 21, 2006, BorgWamer tiled Defendants’ Motion to Bifurcate Claims of
Indirect and Contributory Infringement relating to Hitachi’s sales of ECUs to customers other
tha&EDAC,{ji£$otion to Bifurcate"). (See Defendants’ Motion to Bifurcate Claims, 4/21/06).
h 4. On May 10, 2006, Hitachi represented to BorgWamer that, upon its reasonable
investigation, no Hitachi entity has made any direct or indirect sales of ECUs to . RED ACTED
I for their U.S. engines/vehicles that employ VCT systems (solenoids/actuators). In other
words, Hitachi does not know or have reason to believe, based on a reasonable, good faith
investigation, that any of its ECUs will ultimately find their way on REDACTED
engines/vehicles in the U.S. that employ VCT systems.
5. Based on the foregoing, and in order to settle the aforementioned Motion to
Bifurcate, the parties agree and hereby stipulate that BorgWamer shall not be barred, under the
principles of res judicata/claim preclusion or collateral estoppel/issue preclusion, from bringing
(and preserves its right to bring) a iiiture action against Hitachi for sales of ECU's containing
VCT control modules (or sales of just the VCT control modules themselves or related control

Case 1:05-cv-00048-SLR Document 223 Filed 05/24/2006 Page 3 of 4
; · · data) to customers other th§nEDACTEHowever, Hitachi preserves all other defenses that would
be available to it in any such future action (including arguing collateral estoppel/issue preclusion
as to any issues of claim construction, validity, and enforceability that are actually litigated and
decided in the present action). In addition, the parties agree that in the present litigation no
further claims shall be asserted relating to sales of ECUs for customers other thzinEDACTll]r5
addition, the parties agree that no party to this litigation may use or rely on this stipulation to
argue for the expansion or contraction of any discovery obligations or rights in the present
litigation.
6. Hitachi will not contend in any future action that BorgWarner is barred under the
principles of res judicata/claim preclusion or collateral estoppel/issue preclusion from bringing
an action against Hitachi for induced and/or contributory infringement for sales of ECUs
containing VCT modules to customers other th§rhDACTEDHitachi preserves all other defenses
as outlined in paragraph 5 above.
7. Borg Warner agrees to withdraw its Motion to Bifurcate and hereby withdraws
that motion as moot.

Case 1 :05-cv-00048-SLR Document 223 Filed 05/24/2006 Page 4 of 4
ASHBY & GEDDES MORRIS, JAMES, HITCHENS &
LIAMS LLP
1/ll'? &·Z/K n
Steven J. Balick (I.D. #2114) Richard _ He am ([_D_ #405)
John G. Day (1.D. #2403) Lewis H. Laz S (I.D. #2374)
Tiffany Geyer Lydon (I.D. #3950) Mm-y ]3_ Matt my ([_])_ #2696)
222 D€l&W81'€ Ava., Um F l001‘ 222 Delaware Avenue, 10th Floor
P.0. Box 1150 winmmgum, DE 19899
Wilmington, DE 19899 (302) 333-5300
(302) 654*888 [email protected]
[email protected]
Of Counsel:
0fC'01mSai.‘ Hugh A. Abrams
Thomas D. Rein
Michael D. Kaminski Liga Schneider
Pavan K- Agarwal Marc A. cmn
Liane M. Peterson Lam v_ Hiyshfeld
FOLEY & LARDNER LLP SIDLEY AUSTIN LLp
Washington H8Yb0¤Y 1 South Dearbom Street
3000 K SUCCI, Sl1ltC 500 Chicago, mihcig
Washington, D.C. 20007-5143 (312) 853-7000
(202) 672-5300
Attorneys for B0rgWarner Inc. and
Att0"”€J’·Yf0V Hifachi. Ltd and BorgWarner Morse IEC1nc.
Unisia North America, Inc.
rssssrn