Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01337-JJF Document 219 Filed O9/13/2006 Page 1 of 2
Yourio CoNAwAv STARGATT & TAYLOR, LLP
THE B1>e~woxwi¤1Nr2 Buiruixo
1000 Wizsr STREET, 17TH FLOOR
KAREN L- P·~\$€·~\LE \V1LX1lNGTON,DELA\\*.~\RE 19801 (302) 571-6600
Dmecr Dm.: (302) 571-5001 (302) 571-1253 mx
DIRECT mx: (302) 576~3516 po Bm 391 18001 253~2234 (DE ONLY)
l‘¤5€·99m \V11,MlNGTON, DELAWARE 19899-0391 “’W“‘·>‘<>¤¤$¢0¤¤W¤>‘-CO111
September 13, 2006
BY E-FILING
The Honorable Kent A. Jordan
United States District Court
for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: Honeywell Imerncziiortczl Inc., et al v. Apple Computer [nc., et ol.
C.A. Nos. 04-1337, -1338, and -1536-KAJ
Dear Judge Jordan:
Optrex America, Inc. ("OAI") responds to the September 7m letter from the Honeywell
Plaintiffs ("Honeywell") (D.I. 549 in 04—1338—KAJ) regarding three discovery issues scheduled
for a teleconference at 11:00 a.m. on September 14th. While Honeywell’s letter is allegedly
directed to "a majority of" or "most of the defendants," it appears none of these discovery issues
involve OAI.
Regarding Honeywell’s foremost issue of document production, OAI already produced to
Honeywell on September lst detailed drawings, as well as sales and profit information regarding
each and every one of the OAI modules specifically accused of infringement by Honeywell or
discussed within OAI’s interrogatory responses. OAI also produced marketing, prior art
documents and communications regarding the accused modules. OAI has already informed
Honeywell that OAI intends to produce additional marketing and prior art documents by this
coming Friday, September 15m. Accordingly, the document production issue mentioned in
Honeywell’s September 7m letter does not appear directed at OAI.
Honeywell’s second discovery issue regards defendants’ responses to contention
interrogatories, and how Honeywell allegedly "still has not received any meaningful information
regarding most defendants’ affirmative defenses .... " Although OAI had provided the bases for
its affirmative defenses in great detail in its original interrogatory responses, OAI elaborated still
further in its supplemental responses dated September ISL. For example, OAI provided four
pages of detailed support for its invalidity defense, including pin—point citations to figures,
columns, and lines in the prior art. While Honeywell’s September 7m letter to the Court
complains that defendants’ responses are not in claim chart form, Honeywell’s own interrogatory
did not require the response to be in claim chart form. OAI’s supplementation also addressed its
laches and other affirmative defenses, providing greater detail, and informing Honeywell of the
DBO2:5509519.l 0650041001 `

Case 1:04-cv-01337-JJF Document 219 Filed O9/13/2006 Page 2 of 2
Youno CONAWAY STARGATT & TAYLOR, LLP
The Honorable Kent A. Jordan
September 13, 2006
Page 2
bases behind OAI’s contentions. Accordingly, the contention interrogatory issue mentioned in
Honeywell’s September 7m letter does not appear directed at OAI.
Honeywell’s third and final issue is the identification of "other versions" of the modules
Honeywell specifically accused of infringement. OAI followed the Court’s guidance provided
on July 21, 2006:
If we’re one letter off or one number off in the alphanumeric sequence in the
model number, they could say, well, you didn’t ask about that and that’s not fair,
and I was agreeing well that isn’t fair. You know, if you’ve got a next generation
of the very thing you’ve produced, the fact that you can’t name it with precision
using the alphanumeric sequence attached to that make or model number
shouldn’t prevent you from getting discovery on that.
July 21st Hearing Transcript (D.I. 506 in 04—1338—KAJ), page 19 lines 1-9 (emphasis added).
Honeywell specifically identified three Optrex module numbers, namely: 1*-5 l 7l9GNCJ, F—
51629, and F51719AA. The first and third modules appear to designate a single module, namely
F—5l719GNCJ—MLW—AA. OAI already identified in its interrogatory responses other "versions"
of this specifically identified module, which differ in their alphanumeric sequence only by the —
AA, -AB, and ·AC suffix of their module numbers. The “F—5 l629" module only had one version
associated with it, and so there was nothing further to disclose. Thus, OAI has already met
I—Ioneywel1’s request and "provide[d] identification of other versions of the modules Honeywell
has specifically identified? This "module version" issue mentioned in Honeywell’s September
7m letter therefore does not appear directed at OAI.
Por all of the above reasons, OAI submits that none of the issues raised in Honeywell’s
letter of September 7m involve or are directed to OAI. Consequently, OAI should not be ordered
to further produce additional documents or further supplement its discovery responses.
Respectfully, X
/@{6;/lg
Karen L. Pascale
Delaware Bar No. 2903
cc: Dr. Peter T. Dalleo, Clerk (by hand)
CM/ECP list (by e-filing)
oB02;ss09s19.1 065004.100i