Free Redacted Document - District Court of Delaware - Delaware

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JANET Z. CHARLTON SPECIAL COUNSEL Cuims J. CROWTHER
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_ J0sYw. INGERSOLL
July 25, 2008 .
HIGHLY CONFIDENTIAL — OUTSIDE TRIAL COUNSEL’S
EYES ONLY, PURSUANT TO LR 26.2
BY E-FILE, E-MAIL, AND HAND DELIVERY
_ The Honorable Vincent J. Poppiti, Special Master I E D l
Blank Rome {
1201 N. Market Street, Suite 800 -
Wilmington, DE 19801
Re: Honeywell International Inc., er al. v. Apple Computer et al., C.A. No. 04—
1338-JJF (consolidated) .
Dear Special Master Poppiti: . »
This letter, on behalf of stayed customer-defendants Pentax/Hoya Corporation and Pentax
of America, Inc. (collectively "Pentax/Hoya"), responds to Honeywell’s letter of July 18, 2008.
The parties understand each other’s positions. Honeywell wants (1) a declaration from
Pentax/Hoya confirming the prior identification of products and module suppliers; (2) a
declaration from Pentax/Hoya confirming non-use of the accused Optrex and Samsung SDI
modules; and, (3) declarations from (Pentax/H0ya’s suppliers) that the
_ respective licenses cover all Pentax/Hoya activities. ir
[ _Although Pentax/Hoya believes that it should be dismissed without having to provide any
additional information, Pentax/Hoya is willing to provide a declaration with information in its .
possession, i.e., (1) confirming the prior identification of products and module suppliers and (2) I
the non-use of` the accused Optrex and Samsung SDI modules. However, Pentax/I—Ioya objects to
(3) Honeywell’s demand that it provide declarations frorrr—
DBO1:2595084.l 063672.100l { A
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YOUNG CONAWAY STARGATT & TAYLOR, LLP
The Honorable Vincent J. Poppiti
July 25, 2008
Page 2
· 1. Pentax/Hoya Should Be Dismissed Without Having To Provide Any Additional
Information
Honeywell asserts that Pentax/Hoya bears the burden of establishing that it is licensed. I 1 I
Under the circumstances surrounding this litigation, Pentax/I-Ioya should not have to show that it
is licensed; rather Honeywell should be required to show why it can maintain the suit against
Pentax/I—Ioya. This is not the typical case where a defendant asserts that it has a license as an
affirmative defense. In this litigation, the customer defendants identified the manufacturers of
the LCDs used in the products which Honeywell accused of infringement} The manufacturers n
were then joined as parties to the litigation, and the manufacturers assumed responsibility for the
case from the customer defendants. The litigation with respect to the customer defendants was E
then stayed based upon, inter alia, that the customer defendants did not have relevant D
information regarding the accused LCD modules.
Honeywell subsequently obtained discovery from and negotiated and executed
settlements with several of the manufacturers. Importantly, Q of Pentax/Hoya’s LCD suppliers
(manufacturers) have settled with Honeywell and/or are licensed under the patent-in-suit. I
Accordingly, having dismissed all of Pentax/I-Ioya’s suppliers from the litigation, Honeywell 1
should similarly dismiss Pentax/I·Ioya Hom the litigation because whatever dispute Honeywell {
had with Pentax/Hoya and its suppliers has now been resolved. Honeywell dismissed ’
Pentax/Hoya’s suppliers Eom suit. For whatever reasons Pentax/Hoya’s suppliers were
dismissed, Pentax/I—Ioya should be dismissed for the same reasons. Whatever was in dispute with ‘
respect to‘Pentax/Hoya has been resolved by the agreements and dismissals of Pentax/Hoya’s
suppliers. i
Honeywell has no good faith basis to maintain the litigation against Pentax/Hoya where 1
all of its suppliers have settled. Pentax/Hoya’s suppliers, as well as other LCD manufacturers,
were joined in the litigation because of the assertions made against Pentax/I-Ioya and the other p
customer defendants. Having dismissed all of Pentax/Hoya’s suppliers from the litigation should i`
be the end of the matter for Pentax/I-Ioya. The dispute over the accused products of Pentax/Hoya
and Pentax/Hoya’s suppliers has been resolved.
Thus, under the circumstances surrounding this litigation, it should be Honeywell, not
Pentax/Hoya, who bears the burden of going forward. See, e. g., Bourne v. Walt Disney C0., 68 ‘ l
F.3d 621, 631 (Fed. Cir. 1995) (holding that, when question is scope of license instead of the
existence thereof in copyright matter, licensor bears burden of establishing that accused iniringer
is not licensed); Buckley v. Airshield Corporation, 116 F.Supp.2d 658, 668 (D. Md. 2000) (to l=
meet burden of establishing infringement, plaintiff must "establish that Defendants acted outside
the scope of the previous license..."). If Honeywell has basis for continuing the suit against
Pentax/Hoya where all of its suppliers have been dismissed and/or are licensed, Honeywell
I Honeywell accused the Pentax OptioS4i and OptioS40 of infringement. PentaxfHoya
informed Honeywell that the LCDs used in these cameras were manufactured by-
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YOUNG CONAWAY STARGATT & TAYLOR, LLP
The Honorable Vincent J. Poppiti
_ July 25, 2008
Page 3
should bear the burden of going forward. Having settled with and dismissed Pentax/Hoya’s
suppliers from the litigation, Honeywell should likewise be required to immediately dismiss the
suit against Pentax/Hoya. The purpose of bringing the manufacturers into the litigation was
because they possessed the information pertinent to the accused product. Where all of
Pentax/Hoya’s suppliers have settled, Pentax/Hoya (expressly identified in the aagreement, `
see —), should also enjoy and be accorded the benefit of the settlement.
2. Pentax/Hoya Is Willing To Provide Limited Additional Information
If Pentax/Hoya is required to provide additional information, the only information that it
should be required to provide is a declaration with information in its possession, i.e., (l) ,
confirming the prior identification of products and module suppliers and (2) the non-use of the 2
accused Optrex and Samsun SDI modules. Pentax/Hoya should not be required to provide ' ,_
inf`ormation from
Pentax/Hoya does not control _, and there is no guarantee that-
’- will provide a declaration which is satisfactory to Honeywell. Pentax/Hoya and its
counsel have requested declarations from —, but thus far have not been able to
obtain them. Moreover, Honeywell is`°in a better position to obtain the information it is seeking
nom ell has negotiated settlement agreements with-?
-; and have been dismissed from the litigation. Additionally, the
executed agreements with ·
, so there is no reason to place the burden on Pentax/Hoya to obtain the third party’s A
information. Pentax/Hoya is also willing to provide Honeywell with its contact information for A
_;if Honeywell so desires. In any event, Honeywell is in a much better A
position to obtain the requested information from
3. No Information Should Be Necessary From — I 5
Honeywell has not accused any Pentax/Hoya camera of infringement which incorporates
an LCD from The accused products contain LCDs supplied from _
As such, the dismissal of Pentax/Hoya should not be prefaced on obtaining information from
- As Judge Jordan said during the hearing on September 9, 2005, it is not right to require
the defendants to provide any information about products which were not accused. See
Transcript, Sept. 9, 2005, p. 27, line 23 — p. 29, line 14.
Furthermore, to date, Pentax/Hoya has not been able to obtain any information or A
assistance from Since Honeywell was able to successfully negotiate a settlement
agreement with , it should get any information it desires directly-from--7
DB01:2595084.l 3 063672.100l

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YOUNG CONAWAY STARGATT & TAYLOR, LLP
The Honorable Vincent J. Poppiti _
July 25, 2008
Page 4
4. Conclusion
For the above reasons and those set forth in Pentax/Hoya’s letter of July l8, 2008, -
Pentax/Hoya should be dismissed from this litigation. _
Respectfully submitted,
l Andrew A. Lundgren (N 0. 4429)
l
AAL l ·
cc: Elizabeth A. Sloan, Esquire ([email protected]) ~ J
Carrie David (david—[email protected]) {
Mary Levan ([email protected]) ’
All counsel of record (by e—iiling and e-mail) i
1>B01;2s9s0s4.1 4 0626724001