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Case 1:06-cv-00028-SLR-LPS Document 108 Filed 04/23/2007 Page 1 of 4
BLAI\I|<— ROA/\Ertr·
COUNSELORS AT LAW
Phone: (302) 425-6467
Fax: (302) 428-5'H]8
l:`mraiI: Drrbe@B/urtkkoarre.com
April 23, 2007
BY CM/ECF and HAND DELIVERY
The Honorable Mary Pat '1`hynge
U.S. District Court for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: McKesson Automation, Inc. v. Swiss/og Ito/io S. p./1. er at'.;
C.A. No. 06-028-MPT
Your Honor:
On behalf of Plaintiff McKesson Automation, Inc., ("McKesson") we are responding to
Defendants Translogic Corporation’s and Swisslog Italia S.p.A.’s April 4, 2007 letter requesting
that the Court issue an order compelling production ofthe source code for the APS and Robot Rx
products.
Defendants argue that production of the computer source code is necessary because it is
relevant to the question of whether 1\/1cKesson’s APS product constitutes prior art under 35
U.S.C. § 102(b). As part of that argument, Defendants contend that "the source code may be
particularly helpful in determining whether the APS embodies claim elements recited in means~
plus—function form." McKesson is prepared to stipulate that it does not possess any source code
for the APS or Robot Rx systems that is sufficiently old to constitute prior art under § l02(b).
The oldest source code in l\/lcKesson’s possession that it is aware of dates from 1998. Prior to
1998, 1\/1c1 code from its servers and started storing code on other media. The fact that l\/lclicsson only
possesses code lrom 1998 forward is consistent with McKesson’s corporate change in the
manner and method of code storage. In addition, McKesson is aware of no employee possessing
personal copies of any code dating prior to 1998. Thus, Defendants have no need for the source
code as potential prior art, because it is not prior art.
Defendants further argue that source code may somehow be relevant as extrinsic
evidence in the claim construction process for means—plus—function elements. This argument
also does not warrant compulsion of McKesson’s source code. Defendants should be able to
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COUNSELORS AT LAW
The Honorable Mary Pat Thynge
April 23, 2007
Page 2
determine directly from the claim and specification of the patent what structures are necessary
for those elements defined in means—plus—f`unetion format and McKesson’s source code is
unnecessary to perform this analysis. See, ag., Asyst Tec/1., Inc. v. Empa/c, Inc., 268 F.3d 1364,
1371 (Fed. Cir. 2001) (noting that courts look to the patent specification to determine
corresponding structure for means—plus—function elements and that the corresponding structure is
limited to that which is necessary to perform the recited function). lf, as Defendants seem to
claim, they believe one or more terms of the ‘ll0 and ‘267 patents that are in means—plus-
function format require resort to extrinsic evidence, they should identify those terms, and explain
why they believe production of the APS and/or Robot Rx source code will assist in claim
construction.
Further, McKesson has previously agreed to identify the terms it believes are covered by
35 U.S.C. § l 12, il 6, and the corresponding structure and function from the specification of the
patents-in-suit. Seeking McKesson’s proprietary code because it “may be helpful” to defendant
"if the Court ultimately construes the corresponding structure" in a certain way is exactly the sort
of fishing expedition that even thc liberal discovery of the Federal Rules does not contemplate.
Defendants also refer to an article in the Pittsburgh Business Times dated June 13, l988
(attached hereto as Ex. A) to bolster their argument that the APS source code is relevant and
necessary to Def`endants’ discovery. As stated above, as far as McKesson is aware, this version
ofthe APS source code is no longer in existence. Further, even if this software still existed, this
article makes clear that the software at issue was a prototype that did not yet function for its
intended purpose. Thus, such developmental source code cannot constitute prior art under
§ l02(b). The Pittsburgh Business Times article is thus nothing more than a red herring intended
to create the spectre of relevance where none exists.
While Defendants give short shrift to McKesson’s concerns about the APS and Robot Rx
source code, Federal Rule of Civil Procedure 26(c)(7) explicitly contemplates that, under some
circumstances, a "trade secret or other confidential research, development or commercial
information" may not be revealed in discovery. Translogic and Swisslog Italia are fierce
competitors with McKesson in the automated drug storage system market. McKesson
acknowledges that precautions can be taken to minimize the risk that its source code would fall
into the hands of Translogic or Swisslog ltalia persomielg however, when combined with the lack
of relevance detailed above, this is an additional factor in favor of not requiring production ofthe
source code. Further, the production of the APS and Robot Rx source code would impose a
large cost and undue burden upon McKesson. Such expense and burden, given the code’s lack
of relevance, are additional factors weighing against production. However, should the Court

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BLANl<~ROMEtlr·
COUNSELORS AT LAW
The Honorable Mary Pat Thynge
April 23, 2007
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decide to grant Defendants request, there is precedent for requiring Defendants to bear at least
some ofthe cost of production, and we would request that the Court do so. See, e. g., OpenTV v.
Liberote Technologies, 219 F.R.D. 474 (N.D. Cal. 2003).
Finally, we would like to correct several inaccuracies in Defendants’ letter concerning
McKesson’s compliance with its discovery obligations. Defendants stated that McKesson has
“‘refused to produce source code for the APS" and "has produced few documents dated prior to
i996 and has not produced any documents from before 1992 relating to sales of the APS or
conception and reduction to practice of the inventions taught and disclosed in the ‘1l0 and ‘267
patents." Translogic and Swisslog ltalia’s April 4, 2007 letter to Judge Thynge, p. 3 (emphasis
in original). This attempt to paint McKesson as unwilling to submit to discovery is a
mischaracterization of the facts. As we have repeatedly explained to Defendants’ counsel, many
of the documents sought by Defendants were generated ten to twenty years ago, and McKesson
only possesses a limited number of documents from this time period. In addition, many ofthe
documents sought by Defendants pre—date McKesson’s acquisition of Automated Healthcare,
Inc., the original assignee of the patents-in-suit. McKesson has diligently searched for and
produced (and continues to search for and produce) documents responsive to the Defendants’
document requests. Therefore, Defendants’ attempts to characterize McKesson as non-compliant
are misplaced.
For these reasons, McKesson requests that the Court deny T ranslogic and Swisslog
ltalia’s request for an order compelling production of the existing source code for all versions of
the APS and Robot Rx products.
Respectfully submitted,
Dale R. Dube
No. 2863
— and -
Blair M. Jacobs
SUTHERLAND ASBILL & BRENNAN LLP
1275 Pennsylvania Avenue, NW
Washington, DC 20004

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COUN$ElOR5 AT LAW
The Honorable Mary Pat 'lhynge
April 23, 2007
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