Free Affidavit - District Court of Delaware - Delaware

Case 1:04-cv-01436-JJF

Document 108-6

Filed 02/09/2006

Page 1 of 3

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ATTORNEYS AT LAW

BECKY THORSON R.
(612) 349-8756

December 17,2004

Via Federal Express
Mr. William P. DiSalvatore, Esq. Wilmer Cutler Pickering Hale and Don LLP 399 Park Avenue New York, NY 10022 Re:
St. Clair v. Samsung, et al.

O r File No. 121865.0011 u
Dear Mr. DiSalvatore: We have further reviewed the categories of documents you requested in your December 3,2004 letter. All of the materials are subject to the protective order entered into in the Canon/Fuji case. We understand you may contact Canon and Fuji about their willingness to release these materials to Kodak. (1) Ownership - A Motion to Dismiss for Lack of Subject Matter Jurisdiction was filed in the Canon litigation. These briefs are confidential and cannot be disclosed without the parties' consent. If Canon and Fuji consent and represent in writing that Mirage has no objections, we are willing to produce these briefs to you. The titles of the briefs and court docket numbers are: Canon's Opening Brief In Support of Their Motion to Dismiss for Lack of Standing and Subject Matter Jurisdiction, DI #612 b. Plaintiff's Memorandum of Law in Opposition to Canon's Motion to Dismiss for Lack of Standing and Subject Matter Jurisdiction, DI #63 1 c. Canon's Reply Brief in Support of Canon's Motion to Dismiss for Lack of Standing and Subject Matter Jurisdiction, DI #655 d. Fuji joins Motion, DI #604 a. (2) Inequitable Conduct - The only relevant pleadings in the current litigation are Motions by Canon and Fuji to Amend their Answers and Counterclaims and an Expert Report by Gerald

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Case 1:04-cv-01436-JJF

Document 108-6

Filed 02/09/2006

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Mi. William P. DiSalvatore, Esq. December 17,2004 Page 2
Bjorge. These documents are confidential and cannot be disclosed without the parties' consent. If Canon and Fuji agree, we are willing to produce these briefs and report to you. The titles of the briefs and court docket numbers are: a. Canon's Motion for Leave to File Amended Answers and Counterclaims, DI #356 b. Canon's Opening Brief in Support of Motion for Leave to File Amended Answers and Counterclaims, DI #357 c. Plaintiffs Answering Brief in Opposition to Canon's Motion for Leave to File Amended Answer and Counterclaims, DI #38 1 d. Canon's Reply Brief in Support of Motion or Leave to File Amended Answers and Counterclaims, DI #402 e. Fuji's Motion for Leave to File Amended Answers and Counterclaims, DI #354 f. Memorandum of Points and Authorities by Fuji in Support of Motion for Leave to File Amended Answers and Counterclaims, DI #355 g. PlaintifTs Answering Brief in Opposition to Fuji's Motion for Leave to File Amended Answer and Counterclaims, DI #383 h. Fuji's Reply Brief in Support of Motion to Leave to File Amended Answers and Counterclaims, DI ##403
(3) Laches - There is no briefing related to the laches defense. T h s matter was not substantively briefed, but w s discussed on the record at trial against Fuji. This trial transcript was previously a provided to you.

(4) Marking - A Motion for Summary Judgment Precluding Pre-filing Damages was filed in the Canon litigation. These briefs are confidential and cannot be disclosed without the parties' consent. If Canon and Fuji agree, we are willing to produce these briefs to you. The titles of the briefs and court docket numbers are: a. Fuji's Opening Brief and Certified Statement of Undisputed Facts in Support of its Motion for Summary Judgment Precluding Pre-filing Damages, DI #600 b. Plaintiffs Memorandum of Law In Opposition to Defendants Fuji and Canon's Motions for Summary Judgment Precluding Pre-filing Damages, DI #647 (5) Foreign Patent Filings - The following foreign patents applications have issued and they should be publicly available:

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Case 1:04-cv-01436-JJF
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Document 108-6

Filed 02/09/2006

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Mr. William P. DiSalvatore, Esq. December 17,2004 Page 3 ADplication 1993-701490 92902180.6 92902180.6 2095817 Patent 222,359 0558670 6913 11138.2 2,095,8 17 Country Korea Great Britain Germany Canada

Date July 5, 1999 April 14,1999 April 14,1999 Jan. 1,2002

The underlying PCT application number is PCT/US91/08500 (filed Nov. 2, 1991). There are two applications i Japan that are still pending - 2002/067371 filed March 12,2002 and n 2004162416 filed March 5,2004. I understand that many of the documents related to these Japanese applications are publicly available through the foreign patent offices or on the Internet. The process of searching through our documents and producing publicly available documents related to these patents is too burdensome at this time. As settlement discussions progress, we can discuss whether the production of additional documents related to the foreign patent filings would be helpful.
(6) Conception - St. Clair's Supplemental Response to Canon's Interrogatory No. 1 is enclosed. As Mr. Holdreith mentioned, we did not assert an earlier date of conception than the filing date of November 20, 1990 in either the Canon and Fuji cases. While we reserve our right to argue and earlier conception date, it is unlikely that we will do so.

You further requested documents relied upon by Matthew Chikosky in his January 29,2003 declaration. In this declaration, Mr. Chikosky only relied upon non-confidential pages ii-om his deposition in the Sony litigation. These pages are enclosed.

If you secure the necessary approval to release any of these documents from Canon, Fuji and Mirage if applicable, please provide this to us in writing. Meanwhile, we look forward to your response to St. Clair's settlement demand.
Please contact me if you have any questions or would like to discuss this matter further.

Very truly yours,

ROBINS, KAPLAN, MILLER & ClRESI L.L.P
A

Becky R. &orson BRT/mmt Enclosures

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