Free Redacted Document - District Court of Delaware - Delaware

Case 1 :04-cv-01536-JJF Document 72 Filed 07/21/2006 Page 1 of 3
P tter
iii Anderson
COITOOH LLP
l3`E3 North Marlust Street
HO. Box 951
\v§l1IllIi\l:,’1UII, Richard L Hgrwitz
302 984 c000 Palmer `
‘m,,_“p,,m,,.m,,j,:mm,_€u,,1 rhorwitz@potter·anticrson com
302 98445027 Direct Phone
302 658-1t92 Fax
July 14, 2006
PUBLIC VERSION JULY 21, 2006
BY E-FILE CONFIDENTIAL
FILED UNDER SEAL PURSUANT
The Honorable Kent A. Jordan TO D. DEL. LR 26.2
United States District Court
for the District of Delaware
U.S. Courthouse
844 King Street
Wilmington, Delaware 1980l
Re: Honeywell International, inc., er al., v. Apple Computer, Inc., et al.,
D. Del., C.A. No. O4-1338~KA.l
Honeywell International Inc. , et ol. v. Audiovox Communications Corp., et al.
D. Dei., C.A. No. 04-1337-KAJ
Optrex America, Inc. v. Honeywell International Inc., at al'.,
D. Del., C.A. No. 04··1536—KAJ
Dear Judge J ordan:
l write on behalf of the Manufacturer Defendants in anticipation ofthe telephone
conference with the Court currently scheduled for July 21, 2006. The Manufacturer Defendants
wish to alert the Court to several deficiencies in PlaintiffI~loneywell’s discovery responses to
date, as well as other discovery—related issues, which we will he prepared to discuss in more
detail during the teleconferextcei
E Most, but not all, Manufacturer Defendants have served discovery on Honeywell and have
received inadequate responses, as outlined herein. Not all Manufacturer Defendants have had
the opportunity to meet and confer with Honeywell as of this date; however, it is presumed that
Honeywell will take consistent positions with each Manufacturer Defendant- The issues outlined
are therefore expected to be common to all Manufacturer Defendants. Honeywelfs position is
that, with respect to its own discovery deficiencies, the parties have yet to exhaust the meet and
confer process and that it is premature for any Manufacturer Defendant to raise those issues with
the Court. For the reasons stated herein, the Manufacturer Defendants strongly disagree.

Case 1:04-cv-01536-JJF Document 72 Filed 07/21/2006 Page 2 of 3
The Honorable Kent A. Jordan
July 14, 2006
Page 2
(1) Honeywell has refused to provide a meaninghil response to Defendants’
interrogatories and document requests seeking information regarding I~loneywell’s claim
construction. Instead, Honeywell has objected that such discovery is “premature" in light ofthe
Court’s claim construction procedure. Spg, g:,g,, Plaintiffs Answer to Interrogatory Nos. l and
l0 of Defendant Samsung SDI Co., Ltd-’s First Set oflnterrogatories (attached hereto as Exhibit
"A"). Similarly, Honeywell refuses to respond meaningfully to discovery regarding the factual
bases underlying its infringement contentions (whether literal or under the doctrine of
equivalents), primarily on the grounds that this discovery is premature prior to the Court’s
Mar/mma ruling and before receiving discovery from the defendants. _S_eg, ;g,, Plaintiff s
Answer to Interrogatory No. 3 of Defendant Seiko Epson Corpcratiorfs First Set of
interrogatories to Plaintiff (attached hereto as Exhibit "B").
Neither ofl—loneywell’s objections has merit. As to the first point, this Court clearly
encourages early contention interrogatories (_s§_e_ March 28, 2006 Scheduling Order, Par. 3(c))
such as those seeking l·loneywell’s claim interpretation. it is therefore readily apparent that
Honeywell should be required to answer interrogatories and document requests directed at the
meaning and scope ofthe claim at issue. In the same way, to satisfy its obligation to conduct an
adequate pre—filing investigation, Honeywell must have reached factual conclusions regarding
the products that it now accuses of infringement. Defendants are entitled to those factual
conclusions. As a result, Honeywell should be instructed to fully respond to defendants
discovery regarding claim construction and the factual hases for Honeywell’s infringement
positions.
(2) Honeywell has refused to produce documents to several of the Manufacturer
Defendants unless and until that defendant agrees not to share the documents with any other
defendant and/or until it receives documents from the Manufacturer Defendant. Honeywell has
explained that it does not want to lose "leverage”’ over a Manufacturer Defendant with which it is
in discovery negotiations by having its document production shared among the defendants- This
is not a legitimate basis for withholding discovery under the Federal Rules ofCivil Procedure
aud, in fact, constitutes a violation of Fed. R. Civ. Pro. 26(d). The Manufacturer Defendants
have crafted their discovery to Honeywell under the presumption that duplicative discovery was
not necessary, and that the Manufacturer Defendants would he sharing with each other
l—Ioneyweil’s discovery responses and document production. In fact, some Manufacturer
Defendants have withheld serving discovery on Honeywell entirely, in order to avoid
unnecessary duplication. Moreover, it is inappropriate for Honeywell to withhold document
production in response to document requests it does not dispute, simply because disputed issues
related to I-Ionywelfs own document requests have not yet been resolved. To proceed as
Honeywell demands would violate the Federal Rules and be grossly inefficient.
(3) Honeywell has refused to provide complete responses to discovery requesting
information regarding those products it has investigated for purposes of assessing infringement.
Honeywell has limited its response to those products it has concluded infringe the ‘37l patent
but will not provide any information regarding what other products ofthe Manufacttuter
Defendants it has investigated and how it concluded that such products do not infringe. I

Case 1:04-cv-01536-JJF Document 72 Filed 07/21/2006 Page 3 of 3
The Honorable Kent A. Jordan
July 14, 2006
Page 3
Manufacturer Defendants, Honeywell has not explained the parameters under which it assessed
the rotation of the lens arrays, what angle its measurements revealed, or how this measurement
compares to I-loneywell’s interpretation of the "slight misalignment" required by Claim 3 ofthe
‘37l patent,. Sig, _t;g,, Plaintiffs Answer to lnterrogatory Nos, l2 and lll of Defendant Seiko
Epson Coiporiatiorfs First Set of interrogatories to Plaintiff (Exhibit “B”) (during the parties’
meet and confer, Honeywell further declined to provide information as to the angle of rotation
measured for the accused modules, nor would it provide any details of its analysis of modules
not accused of infringement),
(4) Similarly, Honeywell has refused to provide any discovery on any Honeywell
LCD products, requiring the Manufacturer Defendants to rely on lrloneywelfs unilateral
determination that the LCD modules in those products are not covered by the '37l patent.
Honeywell has taken this position even with
respect to products from the period between reduction to practice in 1990 and tiling in l992, or
later when a failure to mark with the patent number would be fatal to iIoneywell's claim for
damages Moreover, Honeywell refuses to reveal the criteria for its determination that these
products are not covered by the ‘3'7l patent
The Manufacturer Defendants appreciate your consideration of these issues and believe
that resolution of these points will materially advance discovery in this case, There may be
additional disputed discovery issues unique to specific defendants, which may or may not be
raised at a future date. In the meantime, however, we wanted to bring to your attention the
universal difficulties the Manufacturer Defendants are experiencing.
Respectfully,
fs! Richard L. Horwitz
Richard L. Horwitz
[email protected]
RLH/msb/742172
Eno
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