Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01536-JJF Document 60 Filed 05/O1/2006 Page 1 of 3
Potter
‘·,t Anderson
COITOOII LLP
l3’l3 North Market Street
PU. Box 951
Wiliningtcm, DE 1989*}-0951
s02 984 6000
www.pullcrunderson..cou1 Philip rin Rovner
Partner
provner@pottermiderson com
302 984-6140 Direct Phone
302 658-t192 Fm;
May l, 2006
BY E-FILE
The Honorable Kent A. Jordan
United States District Court
for the District of Delaware
U.S. Courthouse
844 King Street
Wilmington, Delaware 19801
Re: Honeywell international, Inc., at ul., v. Apple Computer, incr, et al.,
D. Dei., C.A- No. 04-I338·KAJ
Honeywell international Inc, , ei al. v. Audiovox Communications Corp., et al.
Dr. Del., C.A- No. O4»l337—KAJ
Optrex America, Inc. vt Honeywell International Inc., er ol.,
D. Del., C.A. No. 04-1536-KA]
Dear Judge Jordan:
At the conclusion ofthe March 13, 2.006 teleconference, Your Honor requested
that the parties report to the Court regarding the defendant composition for the first trial on the
issues ofvalidity and enforceability of the patent-in-suit. Short of identifying which defendants
would participate in the first trial, Your Honor requested the parties’ proposals regarding the
"appropriate way to get this smaller group." Tr. at 50.
On behalf of the Manufacturer Defendants, we write to inform Your Honor that
the Manufacturer Defendants, consistent with Your Honor’s proposal, are prepared to proceed to
the first trial on validity and enforceability with a defense group ofno more than five
Manufacturer Defendants. According to the procedure outlined by this Court, the composition of
the defense group to go to trial first will be decided in the first instance by the Manufacturer
Defendants,. As we have informed Honeywell, however, we are not in a position at this time to
identify which specific defendants will participate in this first trial. After conferring on this
issue, the Manufacturer Defendants have concluded that it is not feasible to select those "1ead"

Case 1:04-cv-01536-JJF Document 60 Filed 05/O1/2006 Page 2 of 3
The Honorable Kent A. Jordan
May l, 2006
Page 2
defendants at the present time because (1) it is anticipated that some of the current defendants
may settle with Honeywell as the litigation progresses, particularly now that a case schedule is in
place and discovery is underway; and (2) the Court’s claim construction ruling after Marknmn
could impact the interests of the Manufacturing Defendants differently, and alter both the
settlement posture of the case and the desired composition ofthe lead defendant group. In fact,
since the last conference, we have been advised that at least three additional defendant groups
have settled.
We believe that the selection ofthe defense group must occur before the Joint
Proposed First Pretrial Order can be prepared. Once claim construction has been decided, the
Manufacturer Defendants will know which will likely still be an active party in the case and
which will not. Ifclaim construction proceeds as scheduled (briefing to begin on May 30, 2007;
hearing on August 30, 2007), it is quite possible, if not likely, that, very close to trial, one or
more ofthe five Manufacturer Defendants set to try the case will find itself no longer a
defendant, a result which will inure to the detriment of all remaining Manufacturer Defendants.]
Accordingly, we feel that it makes more sense to initiate claim construction briefing in February
2007, rather than in May 2007, in the hope that the Court’s claim construction will be available
before pre»trial order preparation will be required, and thus assist in the selection of which
Manufacturer Defendants will participate in the first trial,
With the deadline in mind, and given the strong likelihood in this case that the
results of the Mrirkmcm process will result in a material reduction in the number of parties and a
narrowing of the issues in dispute, the Manufacturer Defendants respectfully request that the
Markmrm briefing schedule be moved forward about three months as set out in the annexed
Proposed First Revised Scheduling Order.
Pursuant to the Court’s instruction, I spoke with Honeywell’s counsel on April ll
to advise them ofthe Manufacturer Def`endants’ position. On April 27, Honeywell’s counsel
reiected the proposal, based on their contention that the case may somehow be delayed as a
result. The Manufacturer Defendants strongly disagree. We believe that the proposal described
above is fair and equitable to all patties and that earlier claim construction will reduce, if not
eliminate, any potential for delay in completing discovery and proceeding to trial in accordance
with the March 28 Scheduling Order. We have agreed with counsel for Honeywell that the
parties will submit short letters in support of their respective positions no later than May l.
l The claim construction schedule contained in the Scheduling Order entered by this Court on
March 28, 2006 (D.l. 376) was premised on all defendants participating at the first trial on the
issues of validity and enforceability. The Manufacturer Defendants’ proposal for an earlier claim
construction, a recognized deviation from the Court’s normal practice, stems from the fact that,
as Your Honor recognized, this case, with such a large number of defendants, is itself a deviation
from normal practice. Defendants’ revised proposal reflects that fact.

Case 1:04-cv-01536-JJF Document 60 Filed 05/O1/2006 Page 3 of 3
The Honorable Kent A, Jordan
May 1, 2006
Page 3
Should Your Honor have any questions, counsel are available at the Couxfs
convenience.
Respectfully,
Philip A. Rovner
provner@pottera11derson-com
PARfmes/728094
Eno,
oc: All Local Counsel of Record —— By ECF