Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01536-JJF Document 66 Filed 07/14/2006 Page 1 of 4
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July 14, 2006
BY E—FILE
The Honorable Kent A. Jordan
United States Distr-ict Court
for the District of Delaware
U.S. Courthouse
844 King Street
Wilmington, Delaware l980l
Re: Honeywell International, Inc., at cr! , v. Apple Computer, Inc., et cri.,
D. Del., C.A. No. 04·—l338·-KA]
Honeywell International inc. , er al. v. Audiovox Communications Corp., er af,
D. Del., CA. No. 04-1337-KAJ
Optrex America, Inc. v- Honeywell International Inc., el cu'.,
D. Del., C.A. No. 04~l536—KAJ
Dear Judge Jordan:
I write on behalf ofthe Manufacturer Defendants regarding the defendant composition
for the January 2008 trial on the validity and enforceability ofthe patent·in~suit. During the
March 13, 2006 teleconference, Your Honor proposed that the Manufacturer Defendants select
no more than five lead defendants to represent the parties at the January 2008 trial, leaving open
how and when the Eve would be selected. Having considered the issue, it is respectfully
submitted that the instant case qualities as one where "earlier claim construction would be
helpful in resolving the case," including the selection of lead defendants, as contemplated in
Paragraph E l of the Scheduling Order. The Manufacturer Defendants initially developed a
proposal, including advancing claim construction of the single claim at issue in this case by three
months, that adopted the Court’s suggestion and, at the same time, gave all parties coniidence
that their positions would be presented adequately at the hrst trial. Based on further
consideration, the objection of Honeywell that the previous proposal interfered with an important
stage of discovery, and Honeyweil’s failure to respond to discovery on issues involving claim
interpretation and the doctrine of equivalents on the ground that either the existing Schedule or
the absence of a claim construction determination makes the discovery premature, the
Manufacturer Defendants have developed a new proposal based on advancing claim construction
by about six months.

Case 1:04-cv-01536-JJF Document 66 Filed 07/14/2006 Page 2 of 4
The Honorable Kent A. Jordan
July I4, 2006
Page 2
The Manufacturer Defendants’ Proposal
The lVlanufacturer Defendants propose to identify a set oftive lead defendants within two
months following a claim construction order in this case. To preserve the date scheduled for the
first trial, the Manufacturer Defendants propose to accelerate the timetable for briefing and
hearing on claim construction issues. We propose to conduct a claim construction hearing at the
Cotut’s convenience sometime in February 2007 and to revise related milestone events as shown
below:
DATE IN CURRENT
EVENT REVISED DATE SCHEDULING ORDER
Exchange oflnitial Claim Terms: October 6, 2006 November 9, 2006
Joint Chart on Claim Construction: November l0, 2006 May 30, 2007
Opening Briefs on Claim Construction: December 8, 2006 June 29, 2007
_. _ November ___,__, 2006 (at I
Technology Tutorial. the CO m1,S Conwmicncg) December 22, 2006
Reply Briefs on Claim Construction: January I2, 2007 July 27, 2007
. . . _ February __, 2007 (at
Claim Construction Hemng. the CDU 11,5 Convenience} August 30, 2007
Following the Claim Construction Hearing, we foresee that the Court will prepare its claim
construction order in its own time. Even if a claim construction order becomes available as late
as July 2007, the Manufacturer Defendants should have sufficient time to review the order and
select lead defendants well in advance of preparation for the joint proposed final pretrial order,
which is scheduled to be filed on November 16, 2007. We believe this approach is the best way
to accommodate Your Honor’s interest in having a limited set of lead defendants for the common
issues trial.
Evaluation of Competing Proposals
The Manufacturer Defendants considered the possibility of selecting a set of lead
defendants immediately but we disfavor this approach. lt is possible that the Court will
announce a claim construction that affects different defendants differently. In light of the
Court’s claim construction, members of a pre-selected set of lead defendants may not have an
acute interest in the outcome of a validity and unenforceability trial, favoring instead to
emphasize their nondnfringement defenses. Other defendants, however, may develop an acute
interest in the outcome of a trial on validity and enforceability as discovery progresses and claim
construction issues are resolved. Further, lead defendants selected immediately may settle before
trial. There is too much uncertainty at this stage for the Manufacturer Defendants to have
confidence that we can select lead defendants now who will remain the lead defendants come
trial and ensure that all of us will have our day in court.
I Magistrate Judge Thynge has scheduled mediation sessions that overlap with this date.

Case 1:04-cv-01536-JJF Document 66 Filed 07/14/2006 Page 3 of 4
The Honorable Kent A. Jordan
July 14, 2006
Page 3
The Manufacturer Defendants also considered l—Ioneywell’s proposal — to select lead
defendants from among the set of parties that had served discovery requests on or before May 1,
2006 —— but concluded that this proposal is arbitrary. it presumes, wrongly, that the parties who
serve discovery requests first somehow are best suited to represent the interests of all other
parties at trial. Honeywell’s proposal also fails to ensure that all Manufacturer Defendants can
have their day in court.
Honeywell resisted GUI first proposed change to the Scheduling Order on the ground that
it does not hold the defendants’ "feet to the fire." As explained below, Honeywell is incorrect.
The present Scheduling Order obligates all active parties to conduct discovery on all issues and
to ready themselves for trial. Selection of lead defendants does not operate as a stay on any other
party. Moreover, given that Honeywell’s discovery requests use language copied in part directly
from its patent claims but Honeywell denies production of any discovery regarding its
infringement theories or claim interpretations, this change to the Scheduling Order is likely to
push discovery forward.2
Accordingly, the Manufacturer Defendants believe our proposal provides the best balance
between Your Honor’s interest in managing conduct of the first trial and the Manufacturer
Def`endants’ interest in presenting the best possible case at that trial.
The Role of a Lead Defendant
The Manufacturer Defendants foresee that the lead defendants will coordinate the
conduct ofthe validity and enforceability issues at trial and, therefore, should provide an
effective trial management tool.. Thus, we expect that the lead defendants will provide
coordinated managernent ofthe pretrial and trial activities specified in paragraphs l5·-~l 8 of the
current Scheduling Order, D-I. 376. Under the current Scheduling Order, a Final Pretrial Order
is due November 16, 2007 and the Pretrial Conference will be held on December 17, 2007.
The Manufacturer Defendants see no need, however, to require any lead defendant to
coordinate earlier aspects ofthe case, either on behalfof another defendant or on behalfof
Honeywell. All active defendants will remain active in the case through claim construction
briefing and through to the end of discovery. All active defendants bear responsibility to pursue
their own interests throughout this period. Thus, there is no reason for the lead defendants to
coordinate portions of this case beyond the pretrial and trial activities of paragraphs l5—1 8 ofthe
Scheduling Order.
2 i··loneywell’s discovery requests require identification and production of all products with
“Accused Structure,” a term that Honeywell defined solely on the basis of a portion, but not all,
of the claim language. At the same time, Honeywell objects to production of its claim
interpretations, to providing claim charts against accused products and to providing the bases for
doctrine of equivalence allegations, notwithstanding clear requests to do so. Honeywell seems
determined to contradict the Court’s instruction that Honeywell must bear the burden to
investigate new products before adding them to this case. The Manufacturer Defendants will
raise at least sorne of these issues during the telephone conference with the Court Honeywell
recently proposed.

Case 1:04-cv-01536-JJF Document 66 Filed 07/14/2006 Page 4 of 4
The l·lonorable Kent A,. Jordan
July E4, 2006
Page 4
The undersigned has met and conferred with counsel for Honeywell on this issue and the
parties remain far apart
Conclusion
Having considered all proposals before us, the Manufacturer Defendants conclude that
the best way to accommodate the Court’s request to proceed to trial with a limited set of
defendants is to identify them after a claim construction order is available from the Court.
Thereafter, the Manufacturer Defendants can review the claim construction order and identify a
set of lead defendants appropriate for the situation after the Courts claim construction
Accordingly, the Manufacturer Defendants respectfully request the Court to revise the
Scheduling Order as shown in the table above For convenience, a proposed order is attached,
Should Your Honor have any questions, counsel are available at the Court’s convenience.
Respectfully,
./· _
?hiiip A. Rovner
provner@potterar1derson,com
PAR/mes/740731
Eno.
cc: All Local Counsel of Record — By ECF