Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01338-JJF Document 1 131 Filed 08/07/2008 Page 1 of 2
YOUNG CONA WAY STARGATT & TAYLOR, LLP
THE BRANDYWINE BUILDING
1000 WEST STREET, 17T1-1 FLOOR ·
KAREN L. PASCALE w¤LM1Nc.T6N, DELAWARE 19801 (3 02) 571-6600
DIRECT DIAL: (302) 571-5001 (302) 571-1253 FAX
DIRECT EAx: (302) 576-3516 p_O_ BOX 391 (800) 253-2234 (DE ONLY)
[email protected] W;LM[NG·[·ON’ DELAWARE 19899-039] www.youngconaway.com
August 7, 2008
BY E-FILING, E—MAIL, AND HAND DELIVERY
The Honorable Vincent J. Poppiti
Blank Rome LLP
1201 Market Street, Suite 800 ‘ .
Wilmington, DE 19801
Re: Honeywell International [nc., et al v. Apple Computer [nc., et al.
C.A. Nos. 04-1337, -1338, and -1536-JJP (Consolidated)
Dear Judge Poppiti:
In its letter of August 5th (D.I. 1126 in C.A. No. 04—1338—JJP), Honeywell requested that
Your Honor consider its pending motion to reopen discovery against the customer defendants on
the alleged "commercial success" of the ‘37l patent. Optrex requests that if such discovery is
reopened, the Court should also permit commensurate discovery regarding "commercial success"
to be taken of Honeywell.
Specifically, Honeywell intends to take discovery from the customer defendants on the
commercial success of consumer products with modules that have been accused of infringement.
Commercial success requires that Honeywell show a nexus between the patented invention and
the commercial sales. Honeywell has admitted analyzing a number of products which do not
practice the claimed invention. A
For example, in a letter from Apple to Magistrate Judge Thynge dated January 24, 2007
(Exhibit A hereto), Apple reported that Honeywell admitted tearing down at least one Apple
iPod, but Honeywell refused to inform Apple whether such iPod infringed the ‘371 patent.
Clearly, if a product as ubiquitous and commercially successful as the iPod has been tom down
and found by Honeywell not to infringe the ‘371 patent, this would rebut a claim of a nexus
between commercial success and the ‘371 patent. If there are other similarly successful
products which Honeywell determined did not infringe the ‘371 patent, Honeywell’s claim of
commercial success will be destroyed. .
Accordingly, if Honeywell is permitted to proceed with its requested discovery, Optrex
requests that Honeywell must identify each module and product that it tore down, but which
Honeywell held did not infringe the ‘37l patent. t I
DB02:7l 10565.1 i 065004.100l

Case 1 :04-cv—01388-JJF Document 1 131 Filed 08/07/2008 Page 2 of 2
Yormc CoNAwAY STARGATT & TAYLOR, LLP
The Honorable Vincent J. Poppiti
August 7, 2008
Page 2
For the sake of completeness, Optrex notes that Magistrate Judge Thynge denied a
request by the Fujifilm defendants for the production of torn—down modules and technical
infomation from Honeywell, to the extent such modules had not been formally accused by
Honeywell. See pp. 36-37 of May 17, 2007 transcript (Exhibit B hereto). However, the
present request by the Manufacturer Defendants is proper, given (1) Honeywell’s recent request
to revisit a.nd reopen discovery against the customer defendants; (2) Optrex's limited present
request that Honeywell identify the modules/products that it tore down but found not to infringe
the ‘37l patent; and (3) the need for the Court and the parties to have parity and a more complete
view on the issue of commercial success.
Of course, if Your Honor wishes the parties to address this matter in further detail, the
Manufacturer Defendants are prepared to do so at your convenience.
A Respectfully,
/s/ Karen L. Qhscalé
Karen L. Pascale (#2903)
cc: CM/ECF list (by e—filing)
Clerk of Court (by hand)
Thomas C. Grimm, Esquire (by ha.nd)
Matthew L. Woods, Esquire (by e-mail)
Andrew M. Ollis, Esquire (by e—mail)
DB02:7ll0565.l 0650041001