Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01338-JJF Document 646 Filed 1 1/30/2006 Page 1 of 3
MORRIS, NICHOLS, ARSHT & TUNNELL LLP
1201 NORTH MARKET STREET
P.O. Box 1347
WILMINGTON, DELAWARE 19899-1347
302 658 9200
THOMAS C. GRIMM FAX
302 351 9595
302 425 4661 FAX
[email protected] NOX/€H]bCI` 30,
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 International Inc., et al. v. Apple Computer, Inc., et al.
C.A. No. 04-1338-KAJ {consolidated)
Dear Judge Jordan:
We write on behalf of Honeywell in advance of the telephone conference scheduled for
December 1, 2006 at 4:30 p.m. EST. Optrex has made two requests of the Court: (1) that it order
the production of Honeywell’s license agreement with LG-Philips; and (2) that it order an
unconditional exchange of privilege logs between Honeywell and Optrex. This letter addresses
each request briefly.
LG-Philips License Agreement
Optrex requests that the Court order Honeywell to produce its license agreement with
LG-Philips and related papers. This request has been mooted by Honeywell’s recent production
of the license, following LG-Philips’ recent consent. It has been Honeywell’s clearly stated
position from the earliest stage of discovery that all such agreements and related materials would
be produced as soon as Honeywell met its contractual obligations with its licensees by securing
their consent for the requested production. LG-Philips, the last of the current thirteen licensees
to provide its contractual consent, recently acquiesced — after extensive effort on the part of
Honeywell. This week, upon receiving LG-Philips’ consent, the requested license was
immediately produced, and counsel for Optrex was notified as soon as the production could be
confirmed. The related materials will follow shortly upon an expedited privilege review. As a
consequence, this issue is now moot.

Case 1:04—cv—01338-JJF Document 646 Filed 11/30/2006 Page 2 of 3
The Honorable Kent A. Jordan
November 30, 2006
Page 2
Privilege Log Exchagge
Honeywell has been and remains prepared to exchange privilege logs with Optrex. The
problem is that Optrex wants to share Honeywell’s log with the remaining defendants who have
not yet committed to a date for providing their logs despite Honeywell’s repeated requests.
Honeywell respectfully submits that it is fundamentally unfair to allow Optrex to funnel this
material to defendants who have not yet produced their own logs and allow them to scrutinize
and question Honeywell’s log.
Honeywell has thus made two proposals to address this inequity. One proposal merely
requires that Optrex agree not to share Honeywell’s log with other defendants who have not yet
produced their logs to Honeywell. The defendants note their desire to be treated individually,
and this proposal is wholly consistent with that principle. (See Ms. Pascale’s letter to Your
Honor at p. 2) (D.l. 643 in No. 04-1338).
The second proposal involves a universal date for mutual exchange of logs for all parties.
Optrex claims this scenario holds them hostage to the conduct of other defendants. This concern,
however, is undercut by Optrex’s express desire to coordinate its efforts with other defendants.
Optrex cannot seek to act for the benefit of all defendants when it is unwilling to accept the
consequences of the conduct of those defendants. Honeywell’s proposal offers a pragmatic
approach to the need to get all privilege logs exchanged in time for the defendants to have them
for their stated purpose — in time for their collaborative 30(b)(6) deposition on issues relating to
laches. (Icl.)l
Honeywell is willing to produce its log under either circumstance noted above, but
Optrex has indicated that these options are unacceptable. Honeywell would be pleased to
provide the Court with additional infomation on either of these issues prior to or during the
telephone conference.
Respectfully, Q
Thomas C. Grimm (#1098)
I For its part, withim the last month Honeywell has reached out to defendants on two
occasions in an atte pt to negotiate exchange dates. As of the submission of this letter,
only three defend nts have responded to Honeywell’s entreaties. All defendants
committed to havi g their document production substantially complete by the end of
October — a full m nth ago. lt is Honeywell’s position that, were they meeting their
obligations pursuan to Fed. R. Civ. P. 26, all defendants would have their privilege logs
ready for productio .

Case 1:04—cv—01338-JJF Document 646 Filed 11/30/2006 Page 3 of 3
The Honorable Kent A. Jordan
November 30, 2006
Page 3
cc: Dr. Peter T. Dalleo, Clerk (via hand delivery)
Matthew L. Woods, Esquire (via e-mail)
Counsel for Non-Stayed Defendant Module Makers (via e-tiling and e-mail)
Seong Yoon Jeong (of BOE-Hydis) (via Federal Express)
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