Free Letter - District Court of Delaware - Delaware

Case 1:04-cv—O1338-JJF Document 1124 Filed 08/O4/2008 Page 1 of 3
CONNOLLY BOVE LODGE 8c HUTZ LLP
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The Nemours Building
1007 North Orange St.
Francis DiGiovanni P·°· BOX 2207
Farmer Wilmington, DE 19899
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REPLY ro \/Wlmington Office
August 4, 2008
VIA HAND DELIVERY and E-MAIL
The Honorable Vincent J. Poppiti
Blank Rome LLP
1201 N. Market Street, Suite 800 1
Wilmington, DE 19801 1
Re: Honeywell Int’l Inc. v. Apple Computer, [nc., et al., Civ. No. 04-1338-JJF
Dear Special Master Poppiti:
l write on behalf of Sony Ericsson Mobile Communications AB and Sony Ericsson
Mobile Communications USA Inc. (collectively, "SEMC”) as a follow-up to the ·
teleconference held on July 30th. On that teleconference, the suggestion was made-
apparently for the first time—that Honeywell had until the end of fact discovery to identify
the accused products in this case. As stated in the call, SEMC disagrees with this proposition.
I submit herein several important points pertaining to this new proposition. [
First, it is clear that Judge Jordan required Honeywell to specifically identify the
accused products in 2005. I enclose the entire transcript of Judge J ordan’s telephonic hearing
of September 9, 2005. See Exhibit A. It is clear from both the Judge’s rulings and
Honeywell’s statements at that hearing that the deadline for naming accused products was in
2005. Honeywell conceded at the hearing that "[w]e’ve identified what the products are that
have infringed .... " Tr. at 22. Honeywell further stated that it merely sought information
about "all of the generations of those products that they have introduced in the past.” Id.
(emphasis added). Honeywell later reiterated that "[w]e’ve narrowed it down to specific q
products we’ve torn down." Id. at 24. Judge Jordan then explained to Honeywell what
Honeywell was required to do at that time (September 2005): "[W]hat I do expect to happen .
at this juncture is for you guys to come together with a specific set now of identified products
and manufacturers of the models of LCD modules that go into those products so that we can 1
go about having the proper defendants in the suit.” Tr. at 29 (emphasis added). Thus, Judge
Jordan required Honeywell to identify all accused products in 2005. This was confirmed in
the Court’s Order dated October 7, 2005. See Exhibit B. In that Order, Judge Jordan
formalized a process that was completely dependent upon Honeywell having named specific E
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Case 1 :04-cv—O1338-JJF Document 1124 Filed 08/O4/2008 Page 2 of 3
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LAW OFFICES
Connolly Bove Lodge & Hutz LLP
The Honorable Vincent J. Poppiti
August 4, 2008
Page 2 of 3
accused products (as Honeywell’s counsel confirmed that it did), and based on those specific
named products, the non—manufacturer defendants were to provide the names of
manufacturers by October 29, 2005, and then Honeywell was to amend its complaint by
November 6, 2005, to include these manufacturers. Order at 4-6. The non-manufacturer
defendants were then to send the amended complaint (and the Court’s Order) to its
manufacturers, and were to use good faith efforts to persuade their manufacturers to accept
service of the amended complaint. Id. at 6.
Second, allowing Honeywell until December 2007——the close of fact discovery——to
name accused products would completely turn the scheduling order and Judge Jordan’s p
October 2007 Order upside down and destroy its purpose. By that time, it was too late for a
non-manufacturing defendant to comply with the October 2005 Order. lf a non-
manufacturing defendant’s product was first identified by Honeywell in late 2007, it would
have been too late for that defendant to go through the manufacturenidentification process
mandated by Judge Jordan, and it was too late for the manufacturer of the newly—named
product to be added to the case. This is especially so because the deadline to amend pleadings
and add parties was July 7, 2006. See D.I. 167. Thus, Judge Jordan cannot have ,
contemplated that Honeywell was free to identify new "accused products" through the end of
fact discovery. Judge J ordan’s express edict that the accused products were to be named in
2005 must be upheld in order to make sense of the schedule and the Orders entered in this
case.
Finally, even in an ordinary patent case, where no express order requires a defendant
to name its accused products many months in advance of the discovery cut-off date, parties
cannot add new accused products late in the discovery period. lf they were free to do that,
then depositions and other discovery would have to be re—taken in view of the new accused
products. Thus, a ruling that Honeywell was free to name new accused products up through ,
the end of fact discovery in this case (December 20071) would not only contravene the Orders
entered in this case, but would be inconsistent with ordinary practice in patent cases. SEMC l
will be highly prejudiced if the Special Master rules that Honeywell was allowed to add new
accused products up through the end of fact discovery in December 2007. The case was
stayed against SEMC in late 2005, and it would have been impossible to conduct discovery
and involve the manufacturer of such products in this case if new accused products were
identified after that date.
I The March 28, 2006, Scheduling Order (D.l. 167) set a discovery cut—off date of May 30, i
2007. This was later extended to December 3, 2007 (see D.I. 285). It would be patently
unfair to allow Honeywell to name new accused products against SEMC through December 3,
2007, considering that the case has been stayed against SEMC since late 2005.

Case 1 :04-cv—O1338-JJF Document 1124 Filed 08/O4/2008 Page 3 of 3 ;
LAW Os=1=:cEs
Connolly Bove Lodge & Hutz LLP
The Honorable Vincent J. Poppiti
I August 4, 2008
Page 3 of 3
SEMC thus urges that the Special Master conclude that Honeywell was required to
identify its accused products in this litigation no later than 2005. Alternatively, SEMC asks
that the Special Master conclude that Honeywell was required to identify its accused products
in this litigation no later than July 7, 2006 (the date by which pleadings were to be amended,
see D.l. 167).
Respectfully ubmitted,
rancis DiGiovanni
FD/njw
Enclosures
cc: Clerk of Court (via ECF)
Counsel of Record (via ECF and e—mail)
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