Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-01337-JJF

Document 330

Filed 09/03/2008

Page 1 of 2

Y OUNG C ONAWAY S TARGATT & T AYLOR , LLP
KAREN L. PASCALE DIRECT DIAL: (302) 571-5001 DIRECT FAX: (302) 576-3516 [email protected] THE BRANDYWINE BUILDING 1000 WEST STREET, 17TH FLOOR WILMINGTON, DELAWARE 19801 P.O. BOX 391 WILMINGTON, DELAWARE 19899-0391 (302) 571-6600 (302) 571-1253 FAX (800) 253-2234 (DE ONLY) www.youngconaway.com

September 3, 2008

BY E-FILING, E-MAIL, AND HAND DELIVERY Special Master Vincent J. Poppiti Blank Rome LLP Chase Manhattan Centre 1201 Market Street, Suite 800 Wilmington, DE 19801 Re: Honeywell International Inc., et al v. Apple Computer Inc., et al. C.A. Nos. 04-1337-JJF, 04-1338-JJF, 04-1536-JJF, 05-874-JJF Dear Special Master Poppiti: Optrex writes to address a point raised by Honeywell just as Honeywell and the Manufacturer Defendants were submitting their letters and joint chart on August 27, 2008. Specifically, in his Letter Appendix of August 27, Mr. Grimm states (at page 6) that "it is prudent to go forward with a trial against the manufacturers, but only on the assumption that they will fully stand in for the infringement of their customers." (Attachment #2 to D.I. 1171 in C.A. No. 04-1338-JJF (emphasis in original).) Mr. Grimm then refers to territorial defenses under 35 U.S.C. § 271. The Customer Defendants, in their letter of August 28, 2008 submitted by Mr. Halkowski, also address this issue. (See D.I. 1173 in C.A. No. 04-1338-JJF .) On August 29, 2008, Mr. Grimm filed yet another letter on this topic and discussed certain suppliers - Innolux and Citizen (notably not Optrex) - who raised defenses allegedly related to their foreign supplier status. (See D.I. 1175 in C.A. No. 04-1338-JJF.) Optrex is concerned that the section 271 issue is being raised to further delay trial. In contrast to Innolux, Citizen, and perhaps others, Honeywell has no dispute of this type with Optrex. Accordingly, this issue further supports Optrex's proposal of having a first trial on all issues involving only Optrex and Honeywell. Unlike the other remaining Manufacturer Defendants, Optrex alone filed a declaratory judgment action (C.A. No. 04-1536-JJF) for the specific purpose of defending Kyocera Wireless Corporation (KWC) products containing Optrex modules. Thus, Honeywell cannot complain that they are unable to get full relief as to Optrex. In short, Optrex remains ready and willing to go to trial with Honeywell as soon as possible, and respectfully suggests that this approach is the simplest way to move the case forward and bring it to an end.

DB02:7268412.1

065004.1001

Case 1:04-cv-01337-JJF

Document 330

Filed 09/03/2008

Page 2 of 2

YOUNG CONAWAY STARGATT & TAYLOR, LLP
Special Master Vincent J. Poppiti September 3, 2008 Page 2 Respectfully,

/s/ Karen L. Pascale
Karen L. Pascale (#2903) cc: CM/ECF list (by e-filing) Tara L. Laster, Esquire (by e-mail) [[email protected]] Elizabeth A. Sloan, Esquire (by e-mail) [[email protected]] Carrie David (by e-mail) [[email protected]] Mary C. LeVan (by e-mail) [[email protected]] Clerk of Court (by hand) Thomas C. Grimm, Esquire (by hand) Matthew L. Woods, Esquire (by e-mail) [[email protected]]

DB02:7268412.1

065004.1001