Youno CoNAwAY STARGATT & TAYLOR, LLP
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November 22, 2006
BY E-FILING
The Honorable Kent A. Jordan
United States District Court
for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: Honeywell [m‘errzczri0nczl Inc., et al v. Apple Computer [nc., er al.
C.A. Nos. 04-1337, -1338, and -1536-KAI
Dear Judge Jordan:
In advance of the telephone conference scheduled for December 1, 2006 at 4:30 p.m.
EST (see D.I. 641) I write on behalf of Optrex America, Inc. ("OptreX") in the above—captioned
case regarding several discovery matters that Optrex addressed with Honeywell during meet and
confers commencing on October 30, 2006, and in subsequent correspondence.
Optrex now respectfully asks the Court for the following relief:
1. That Honeywell be ordered to produce its license agreement with LG-Philips and
related papers; and
2. That Honeywell be ordered to produce its privilege log to Optrex three (3)
business days prior to the Honeywell laches deposition or within five (5) days of
the requested order, whichever is earlier, without restriction on Optrex’s ability to
share that log with other defendants.
1. LG-Philips License Agreement
Honeywell continues to insist on a court order before producing its license agreement
between Honeywell and LG-Philips and related papers. Honeywell bases its refusal on LG
Philips’ alleged withholding of consent to allow Honeywell to produce the agreement absent a
court order. (See Mr. McDiarmid’s letter to Mr. Gasser, Ex. A). Since Optrex is entitled to
discovery regarding Honeywell’s licenses of the patent-in-suit, and because "Honeywell does not
anticipate opposing a motion to compel production of the agreement between Honeywell and
LG-Philips" (id.), Optrex respectfully requests that the Court order Honeywell to produce its
DB02;s62s400.1 0650041001
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Yorrnc CoNAwAv STARGATT & TAvLoR, LLP
The Honorable Kent A. Jordan
November 22, 2006
Page 2 , _
license agreement with LG Philips, and related papers, and any other outstanding license
agreements under the ‘371 patent to Optrex as soon as possible.
2. Privilege Log Exchange
Despite Optrex’s efforts over the last two months to exchange privilege logs, Honeywell
has placed unreasonable conditions on its proposed exchange of logs with Optrex. Specifically,
Honeywell proposes either (1) withholding production of its privilege log to Optrex until all
defendants simultaneously exchange their respective privilege logs, or (2) exchanging privilege
logs with Optrex only if Optrex agrees not to share Honeywell’s privilege log with other
defendants. (See Mr. Gasser’s letter to Mr. McDiarmid, Ex. B). Both of Honeywell’s proposals
are improper and have prejudiced Optrex.
Honeywell’s first proposal improperly holds the exchange of its privilege log hostage to
the conduct of other defendants. This approach goes directly against the Court’s instruction that
Honeywell treat defendants individually rather than as a group. (See Tr. of September 14, 2006
Teleconference, pp. 20-21) (D.l. 565). ln addition to the obvious prejudice in the delay itself, the
delay has created a risk that Honeywell will not produce its privilege logs prior to the noticed
depositions of Honeywell personnel on issues relating to laches.1
Equally improper is Honeywell’s alternative proposal to provide its privilege log to
Optrex onlv on the condition that Optrex not disclose Honeywell’s privilege log to other
defendants until such other defendants produce their respective logs.2 Indeed, this is the sort of
"You first" arrangement that the Court expressly rejected on several occasions. (See Tr. of July
21, 2006 Teleconference, p. 15) (D.l. 506). This Court has emphasized the importance of
defendants coordinating their efforts in this case. Honeywell's proposal thwarts that goal by not
allowing Optrex to share Honeywell's privilege log with other defendants. To the extent
the defendants have objections to Honeywell's privilege log, Honeywell’s approach makes it
impossible to properly coordinate those objections.
For these reasons, Optrex respectfully requests that the Court order a bilateral exchange
of privilege logs between Optrex and Honeywell at least three (3) business days prior to the
commencement of the Honeywell laches deposition, or within five (5) days of the requested
order, whichever is earlier, with no conditions regarding disclosure to other defendants.
1 The logs may indicate, for example, whether various key documents remain in Honeywell’s
possession, or whether such documents have been lost or destroyed during the ten years that have
passed between the issuance of the patent in suit and the filing of the instant lawsuits.
2 Honeywell is always free to bring to the Court complaints relating to other defendants.
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Case 1:04-cv-01536-JJF Document 91 Filed 11/22/2006 Page 3 of 3
YoUNo CoNAwAY STARGATT & TAYLoR, LLP
The Honorable Kent A. Jordan
November 22, 2006
Page 3 , W
Respectfhlly submitted,
/ /L/ ' U
3/’V~Ma7 / /WA/L.
Karen L. Pascale
Delaware Bar No. 2903
cc: Dr. Peter T. Dalleo, Clerk (by hand)
CM/ECP list (by e-filing)
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