Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01337-JJF Document 339 Filed 09/ 1 2/2008 Page 1 of 3
Potter ,
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Wzlmingum, DE 39899-0951 (302) 984~6l40 Direct Phone
302 ssa 6000 (302) 65S·l 192 Fax
wwvmpotte1·anderson.eum
September l2, 2008
BY E-FILE HAND DELIVERY AND E-MAIL -
The Honorable Vincent J. Poppiti
Blank Rome LLP ·
Chase Manhattan Centre
1201 Market Street, Suite 800
Wilmington, DE 19801 (
Re: Honeywell Int’l Inc., et ai. v. Apple Computer, Inc., et al. l
D. Del. C.A. Nos. 04~i338-JJF A
· Honeywell Int’l Inc. et al v. Audiovox Corporation, et al.,
D. Del. C.A. No. 04~1337—JJ“F
Optrex America Inc. v. Honeywell lnt’l Inc., etal.
D. Del. C.A. No. 04-l536~JJF
Dear Judge Poppiti:
Having just learned of the cancellation of the telephone conference, the Manufacturer
Defendants feel it appropriate and necessary to bring to Your Honor’s attention certain facts in
response to l~loneyweIl’s letter of last night. As indicated in Karen Pascale’s email earlier today,
the Manufacturer Defendants also believe that this important subject warrants a telephone
conference.
Regarding the proposed schedule, the Manufacturer Defendants wish to make the
following observations:
1. The Customer Defendants seeking dismissal recently reached an agreement with
Honeywell for a schedule on their motions to dismiss that would not resolve that issue with
tinality until December, 2008. For this reason, the Manufacturer Defendants withdraw their first
condition to the start of the Supplemental Markman Briefing and Final Marlnnan Ruling section
of the Joint Chart on page 6, such that the sole triggering event for Supplemental Claim
Construction Briefing is seven (7) days after the preliminary Markman ruling. Given the impact
of the proposed stipulation, waiting until after the Customer Det`endants’ motions are ruled upon
will make it very difficult, if not impossible, to achieve a July 2009 trial date.

Case 1 :04-cv—O1337-JJF Document 339 Filed O9/12/2008 Page 2 of 3
The Honorable Vincent .l. Poppiti
September 12, 2008 ‘
Page 2
2. Honeywell, in its September ll letter, proposes an alternative method of dealing
with case dispositive motions, namely a reversion to the conventional motion practice,
eliminating the Special Master’s determination of whether disputed facts exist as the trigger for
response briefs. In effect, it replaces the counter-statement and certifications practice with an
immediate response brief, which could be fourteen (14) days after tiling Opening Briefs, and
would shorten the entire process. The Manufacturer Defendants agree to this process. In any
event, if the July 2009 trial date is to be preserved, the parties must be willing to act in parallel,
rather than only in sequence as proposed by Honeywell.
ln response to points made for the first time in Honeywell’s September 11, 2008 letter:
I. While not intending to dispute Your l~Ionor’s determination that supplemental
Markman proceedings are required, Honeywell rnisstates how the structure established by Judge _
lordan came to pass. Judge Jordan carefully considered l-loneywell’s complaint in light of Rule
ll and the nature of the defendants sued initially, and concluded that the identification, joinder
and initial trial against the Manufacturer Defendants should go forward with regard to products
accused of infringement by Honeywell. The Customer Defendants had no reason to monitor this
case since, under Judge .lordan’s order, the case was stayed as to them and they were not bound
by what happened. At no time did Judge Jordan indicate, by word or conduct, that the Customer
Defendants would be precluded from rearguing prior rulings. The current Supplemental
Markman Proceeding recognizes this fact. Regarding Honeywell’s willingness to assist the
Customer Defendants, the Customer Defendants have requested claim charts specifying the basis
of infringement against their respective accused products but Honeywell has unilaterally refused
to do anything more than provide previously submitted discovery and pleadings.
II. In Section II of its letter Honeywell argues the merits of its commercial success
motion which, while before Your Honor, has not as yet been heard. Nowhere in Section Il is
there any description of the scope and duration ofthe requested discovery which, as pointed out
in our September ll letter, could jeopardize the July, 2009 trial date. When the issue of
commercial success discovery of Customer Defendants was raised before Magistrate Judge
Thynge on February 22, 2007, she stated that the scope of discovery sought by Honeywell was
“extremely broad and extremely unfocused." DI 718 at 67:8-16. In response, in its March 2,
2007 submittal at page 7, Honeywell identified the requested discovery as being directed to sale
of accused products and why modules allow the accused products to better meet market demand,
including product launch, advertising and customer survey material. Also mentioned were
“1imited” depositions to authenticate and determine the "import" ofthe produced material. DI
724. The l\/lanufacturer Defendants proposed a forty-five (45) day limit on this discovery and
believe that Honeywell can obtain its requested discovery, if granted, within that timeframe.
III. Again, in this section, Honeywell seeks to argue the merits of a motion that the
schedule puts before Your Honor. However, certain observations of Honeywell require
immediate response. One or more of the lvfanufacturer Defendants requested communications
between Honeywell and the Customer Defendants during the pendency of discovery and
Honeywell complied without condition. In the course of monitoring the communications
between the parties and Your Honor in connection with the Customer Defendants’ proceeding it
becameapparent that there were communications which were not produced that were directed to

Case 1 :04-cv—O1337-JJF Document 339 Filed O9/12/2008 Page 3 of 3
The Honorable Vincent J. Poppiti
September 12, 2008
Page 3
the identification of accused products. Again there was agreement by Honeywell to produce
them without condition. lt is only now that Honeywell suddenly demands production of
communications between the Manufacturer Defendants and Customer Defendants. Although
Honeywell states that it seeks communications regarding Accused Products, apparently
Honeywell interprets that request to cover all communications regarding this litigation. lt is
respectfully submitted that cornrnunications between these two groups which shared and
continue to share a common interest cannot shed any light on any issue before Your Honor and
will implicate the common interest privilege shared among all of the defendants in this case. In
addition, Honeywell complains that such communications are not found on the privilege log,
knowing full well that by mutual agreement the privilege logs in this case only went up to the
date of filing of the complaint. Therefore, common interest communications could never appear
on those privilege logs.
1V. On the issue of expert reports, the Manufacturer Defendants compromised their
position with regard to damages experts, offering Honeywell 7.5 hours for each of Defendants
experts and requesting from Honeywell’s single expert a total of 3.5 hours plus 4 times the
number of defendants, without restriction as to the subject matter to be covered during that
period, which will be determined by the l\/lanufacturer Defendants. With respect to supplemental
invalidity and unenforceability expert reports, I-loneywell’s experts previously testified almost
entirely based on Honeywell’s proposed claim constructions. The final Markman order is likely
to be based on the Manufacturer Defendants’ proposed constructions and therefore will
dramatically alter the basis upon which l—Ioneywell’s experts testified. Thus, the Manufacturer
Defendants anticipate meaningful changes in Honeywell’s experts’ positions and contend that 7
hours per expert, shared by all of the Manufacturer Defendants, is appropriate.
V. As noted above, the Manufacturer Defendants agree that the dispositive motion
practice should he changed as suggested by Honeywell. However, the Manufacturer Defendants
oppose any limitation on the number of issues submitted for summary determination. ln seeking
restructuring of this case, one point made by Honeywell was that it wanted to be treated as a
“normal” plaintiff, although the implications of that term are unclear. On the other hand,
. Honeywell would deny the Defendants the opportunity to have full and regular access to motions
for summary determination by imposing an abnormal limitation.
VI. See Manufacturer Defendants’ September 11 letter.
Respectfully,
fs! Philip A. Rovner
Philip A. Rovner
[email protected]
PAR/mes/882385
cc: All Counsel of Record — by CM-ECP