Free Letter - District Court of Delaware - Delaware

Case 1:06-cv—OOO28-SLR-LPS Document 227 Filed O1/28/2008 Paget of 3
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Phone: (302) 425-6467
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January 28, 2008
VIA CMF AND HAND DELIVERY
The Honorable Mary Pat Thynge DISCOVERY TELECONFERENCE:
United States Magistrate Judge JANUARY 30, 2008 at 12:00 p.m.
U.S. District Court for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: McKesson Automation, Inc. v. Swisslog Italia S.p.A. etal.;
C.A. No. 06-028-MPT
Your Honor:
We write regarding Swisslog’s failure to abide by promises made during the November
29, 2007 hearing. Rather than doing whatever they could to secure the cooperation of Andrea
Balsamo and Paolo Provvisionato (the "ltalian witnesses") as promised to the Court, Swisslog
instead appears to have encouraged the Italian witnesses to refuse to cooperate. Swisslog has
likely chosen this tactic because the Court tied certain willfulness milestones to the timing of the
Italian depositions. The lack of cooperation delays into perpetuity Swisslog’s reconsideration of
its advice of counsel election, the depositions of the Dickstein attomeys including trial counsel,
and, most importantly, the filing of a motion to disqualify the Dickstein law firm due to the
conflict of interest presented by Swisslog’s reliance on the Dickstein opinions as a willfulness
defense. Swisslog’s actions have effectively resulted in a unilateral bifurcation of willfulness
discovery without the Court’s permission.
Specifically, at the hearing, Your Honor stated that the Italian depositions should go
forward before any further willfulness discovery occurs. Your Honor informed Swisslog that
that "the depositions of the Italian lawyers are authorized under this circumstance. And I think
that to the extent that Swisslog can provide its assistance in getting those Italian lawyers
available for depositions [it] would be appropriate. I don’t [know] how much help they can
provide but I would expect any cooperation that they can render should be given." D.I. 213, p.
37:19-25. Defendants promised to "cooperate and try to get [the Italian witnesses] to cooperate
and make them available." D.1. 213, p. 15:3-5.
Chase Manhattan Centre 1201 Market Street Suite 800 Wilmington, DE 19801
www.B|anl Delaware • Florida • New Jersey • New York • Ohio • Pennsylvania • Washington, DC • Hong Kong

Case 1:06-cv—OOO28-SLR-LPS Document 227 Filed O1/28/2008 Page 2 of 3
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COUNSELORS AT LAW
The Honorable Mary Pat Thynge
January 28, 2008
Page 2
Unfortunately, Defendants apparently hindered any cooperation, instead of securing it,
from these previously cooperative witnesses. Before the Court’s ruling and Swisslog’s
interference, the witnesses returned the phone calls of McKesson’s Italian counsel, agreed to
appear at McKesson’s and Swisslog’s request, and one witness even had a set deposition date (in
July 2007) that did not occur for a variety of reasons. Swisslog’s counsel also indicated during
this timeframe that they could coordinate the availability of the Italian witnesses. Now, after the
Court’s ruling, the witnesses will no longer voluntarily appear or even retum the numerous
phone calls placed by McKesson’s Italian counsel seeking voluntary compliance.
Swisslog refuses to provide a single explanation for the Italian witnesses’ changed
position despite McKesson’s repeated requests for answers. Instead of providing any details
about its efforts to coordinate these depositions, Swisslog will only state that the Dickstein finn
is not authorized to accept service of the subpoenas. Swisslog’s behavior appears to be the
opposite of what it promised to the Court.
It strains credulity to think that these witnesses will not appear at Swisslog’s request.
Swisslog is an important and substantial client for these witnesses and has been for several years.
These witnesses handle all of Swisslog Italia’s transactional intellectual property work and
receive substantial sums of money for services rendered.
The change in cooperativeness makes clear that Swisslog is using these tactics to place
willfulness discovery in limbo so that decisions on willfulness elections and rulings on the
disqualification of the Dickstein firm will be postponed for as long as possible. McKesson is
diligently pursuing all available avenues to keep willfulness discovery moving forward as
discussed below, but, without voluntary compliance, such discovery is not likely to occur for
several months.
McKesson, therefore, seeks remedial action from the Court including an order requiring
Swisslog to elect which opinions of counsel it will rely on as a defense to willful infringement by
April 9, 2008 and completion of the Dickstein depositions by April 23, 2008 for opinions being
relied upon.
Under the ethics rules, McKesson has a duty to bring a motion regarding the conflict of
interest presented by Swisslog’s continued reliance on the Dickstein opinions. McKesson thus
also seeks guidance from the Court on an orderly and timely mechanism for bringing this motion
forward.

Case 1:06-cv—OOO28-SLR-LPS Document 227 Filed O1/28/2008 Page 3 of 3
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COUNSELORS AT LAW
The Honorable Mary Pat Thynge
January 28, 2008
Page 3
McKesson is simultaneously working through local Italian counsel, the Italian courts and
the Hague Convention to secure depositions of the Italian witnesses, as evidenced by its January
24, 2008 letter to the Court requesting the issuance of a Commission. D.I. 220.
Respectfully,
@2. @1,Li.
Dale R. Dube
No. 2863
DRD:pb
Enclosure
cc: Clerk of Court (by CM/ECF)
Julia Heaney, Esquire (by CM/ECF and hand delivery)
Lawrence C. Drucker, Esquire (by email and First Class Mail)
Alfred R. Fabricant, Esquire (by email and First Class Mail)
Richard LaCava, Esquire (by email and First Class Mail)
Bryan N. DeMatteo, Esquire (by email and First Class Mail)
Robert A. Gutkin, Esquire
Blair M. Jacobs, Esquire
Christina A. Ondrick, Esquire
Christopher L. May, Esquire
Katherine R. Lahnstein-Bertocci, Esquire