Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01337-JJF Document 333 Filed 09/1 1/2008 Page 1 of 3
Potter
E! Anderson
t..eCorroon LLP
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Wdlmmgron, DE 19899-0951 (302) 984-6140 Direct Phone
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www.potterandcr·son.oom
September 11, 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 lnt’l Inc., et al. v. Apple Computer, Inc., etal.
D. Del., C.A. Nos. 04-1338-JJF
Honeywell Int`] Inc. etal v. Audiovox Corporation, etal.,
D. Del., C.A. No. 044337-JJF
Optrex America Inc. v. Honeywell Int’l Inc., et al.
D. Del., C.A. No. 04—l536—JJF
Dear Judge Poppiti:
I write on behalf of the Manufacturer Defendants FUJ IFILM, Optrex, Samsung SDI, and
Innolux. Honeywell and the Manufacturer Defendants exchanged draft schedules and met and
conferred on the scheduling issues together with the Customer Defendants on September 10,
2008. The parties’ scheduling proposals are set forth in a joint chart that Honeywell has
submitted to Your Honor today.
On September 4, Your Honor ordered the parties to devise schedules designed to take this
case to trial on all issues involving the Manufacturer Defendants in July 2009. Given the
advanced stage of this case, the Manufacturer Defendants believe that a trial in July 2009 is
reasonable and have proposed a schedule designed to achieve that trial date. Honeywell, on the
other hand, has proposed a schedule that appears to be designed to delay trial indefinitely.
At the outset, I-loneywell’s schedule is conditioned on an initial Markman decision from
Judge Faman no later than September 29, 2008, i.e., within the next two and a half weeks.
Therefore, I-Ioneywell’s schedule is so fragile as to be calculated to fail. The rest of I-Ioneywell’s
schedule avoids and unnecessarily rejects any overlap between the various activities leading up
to trial, contributing to its fragility. Although optimally there would be no overlap between

Case 1 :04-cv—01337-JJF Document 333 Filed 09/11/2008 Page 2 of 3
The Honorable Vincent J. Poppiti
September ll, 2008
Page 2
activities leading up to trial, the Manufacturer Defendants are prepared to do what is necessary to
maintain the July 2009 date. The framework proposed by Honeywell errs in two fundamental
ways.1
First, Honeywell’s schedule is erroneously based on the assumption the Manufacturer
Defendants will stipulate to certain matters so that Honeywell will not need to take commercial
success discovery from the Customer Defendants. Specifically, Honeywell proposes that the
Manufacturer Defendants either (l) stipulate to the admissibility of Honeywell’s licenses to the
‘37 l patent or (2) stipulate that the commercial success ofthe accused products is due at least in
part to the ‘37l patent technology. The Manufacturer Defendants are unwilling to enter into
either of these stipulations. l~Ioneywe1l’s licenses do not tend to prove nonobviousness at least
because they were entered into either during litigation or as a result of a threat of litigation. See
Iron Grip Barbell Co. v. USA Sports, Irzc., 392 F.3d 1317, 1324 (Fed. Cir. 2004) (“[l]t is often
‘cheaper to take licenses than to defend infringement suits.”’). Further, all but one license were
entered into before the Supreme Court significantly broadened the test for obviousness in a way
that particularly impacts validity in this case. KSR Im"! Co. v. Teleflex Inc., 127 S. Ct. 1727
(2007). Finally, Honeywell has not and, it is submitted, cannot demonstrate that there is any
nexus between the alleged invention in the ‘37l patent and the commercial success ofthe
accused products ofthe Customer Defendants. See Ormco Corp. v. Align Tech., Inc., 463 F.3d
l299, 1312 (Fed. Cir. 2006) (noting that use of elements already in the prior art cannot form the
basis for commercial success of the patented invention).
Without such stipulations, Honeywell maintains that it is entitled to extensive discovery
about the commercial success of the Customer Defenda.nts’ products and that such discovery will
inevitably delay the July 2009 trial date. Specifically, Honeywell seeks at least sales and
marketing information from each ofthe Customer Defendants and potentially depositions to
authenticate that information. Honcywelfs proposal does not address the timing for commercial
success discovery, but Honeywell has stated that it would have to add time into its schedule if
commercial success discovery were allowed. Therefore, under Honeywe1l’s proposal, the grant
of Honeywell’s motion to compel commercial success discovery will delay the trial date well
beyond July 2009. ln contrast, if Honeywell obtains leave to seek that discovery, the
Manufacturer Defendants propose conducting commercial success discovery in parallel with any
supplemental Markman briefing and within a fixed forty-five day time frame. Due to the
“~ The Manufacturer Defendants and Honeywell have presented their schedules differently. The
Manufacturer Defendants present their expert and dispositive motion deadlines relative to the
date the Final Markman Decision issues and/or when commercial success discovery is
completed, whereas Honeywell has proposed limi dates. If Judge Farnan does not issue the
initial Markman ruling by September 29, Honeywelfs entire schedule would need to be
reworked, whereas the Manufacturer Defendants’ schedule can adapt to a much wider range of
issue dates for the Markman ruling. Notwithstanding, the time intervals between the events on
the parties’ schedules are quite similar with the few exceptions noted herein. Other differences
in details are self evident and can be explored at the September l2 conference.

Case 1:04-cv-01337-JJF Document 333 Filed O9/11/2008 Page 3 of 3
The Honorable Vincent J. Poppiti
September ll, 2008
Page 3
importance of resolving the issue of commercial success discovery as quickly as possible, the
Manufacturer Defendants’ proposal sets the hearing on that issue on October 2, 2008.
Second, Honeywell insists that it will not engage in any pre-trial activities, including motions
in limine and the preparation of a pre—t1·ial order, until Judge Farnan issues final summary
- judgment rulings. The Manufacturer Defendants see no need for this sequential scheduling, and
their schedule, by mixing tixed dated and contingent deadlines, will permit overlapping
deadlines in order to protect the July 2009 trial date. Specifically, the Manufacturer Dei`endants’
proposal allows overlap between the dispositive motions briefing period and motions in
limine/pretrial periods if necessary. Again, Honeywell’s proposal holds this case’s progress
hostage to indeterminate time periods.
The Manufacturer Det`endants’ proposed schedule is calculated to get this case to trial in July
2009. Therefore, the Manufacturer Defendants respectfully request that their schedule be
recommended to Judge Faman.
Respectfully, I
/s/ Philip A. Rovner
Philip A. Rovner
provner@,pottera11derson.com
PAR/mes/882255
cc: All Counsel of Record ·~ by CM~ECF