Free Letter - District Court of Delaware - Delaware

Case 1:O6—cv—OOO28-SLR-LPS Document 102 Filed O4/O4/2007 Page 1 of 3
Monars, Nrcnots, Ansar St TUNNEL;. 1.1,.12
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P.O. Box 1347
Wrrmrworou, DELAWARE 19899-1347
302 658 9200
302 658 3989 FAX
JULIA HEANEY
302 251 9221
302 425 200a FAX
[email protected]
April 4, 2007
BY E—FILING and HAND DELIVERY
The Honorable Mary Pat Thynge
United States Magistrate Judge
United States District Court
844 King Street
Wilmington, DE 19801
Re: McKesson Automation, Inc. v Swisslog Italia S.P.A. and
Tmns!0gicCorporarion C.A. No. 06-28 g°*‘**)
Dear Judge Thynge:
On behalf of defendants Translogic Corp. and Swisslog Italia SpA, we are writing
to inform the Court of a discovery dispute that, after several attempts, counsel for the parties
have been unable to resolve on their own.
Specifically, "franslogic and Swisslog Italia have asked McKesson to produce
computer source code for its Automated Pharmacy Station (‘°APS") product (also known as
Robot Rx), which appears to be an embodiment of the inventions disclosed in the two patents in
suit, the ‘1l0 and ‘267 patents. The APS product was developed in the late 80s by a company
called Automated Healthcare, Inc. ("Al~Il"), which was formed by the lead named inventor ofthe
’l 10 and ’267 patents in suit »~ Sean McDonald. In or about 1996, Mcliesson appears to have
acquired AHI together with the rights to the APS product and the patents-in-suit.
Defendants believe that the APS was at least in development, ready tbr patenting
and possibly being demonstrated or scid as early as 1988, approximately 1 % years before the
prima facie effective filing date of the ‘267 and ‘ll0 patents, rendering these patents invalid
under 35 U.S.C. §l02(b).;Additionally, the failure to disclose APS's development and related
I The *267 and ‘110 patents are both continuations of an earlier application filed on
January 24, 1990. Defendants, however, do not concede that the ‘267 and ‘1l0 patents
are entitled to the benefit of the January 24, 1990 tiling date.

Case 1 :O6—cv—OOO28-SLR-LPS Document 102 Filed O4/O4/2007 Page 2 of 3
The Honorable Mary Pat Thynge
April 4, 2007
Page 2
activities during prosecution of the ‘267 and ‘ll0 patents may have constituted inequitablc
conduct before the USPTO, thereby rendering unenforceable the ‘26'7 and “ll0 patents. The
requested source code is relevant to both of these defenses and may be the only document that
can show the date of development of APS and the detail as to how it worked — issues which are
highly relevant to Defendants §l02(b) defense.
l\/ic-Kesson has refused to produce the source code for the APS, despite the fact
that this code clearly falls within several of Translogids first set of document requests to
McKesson served on September 8, 2006, including the following;
8. All documents that refer or relate to the conception,
development, testing and/or reduction to practice of each purported
invention claimed in the Patents~in-Suit, including without limitation,
laboratory notebooks, invention disclosures, development records, notes,
minutes, schematics, diagrams, memoranda, testing records, flowcharts,
and computer code listings.
10. All documents that refer or relate to the first disclosure, first
sale or offer to sell and/or first use or public use of any purported
invention claimed in the Patents~in-Suit.
20. All documents that refer or relate to the design, structure,
manufacture, operation, or steps of any of the Defendants? and/or any
other person’s products that compete in the marketplace with Plaintiff s
Products, including without limitation schematics, engineering drawings,
product specifications, process specifications, performance specification,
manufacturing specifications, manuals, program design documents,
flowcharts, and computer code listings.
Since a defense under 35 USC. §l02(b) requires a comparison of the product
sold (or demonstrated) with the claims of the asserted patents, the operation of the APS
computer, which depends almost exclusively on the source code, may be relevant to the question
of whether the APS embodied any of the claims ofthe patents in suit. Indeed, claim l of the
°ll0 patent recites "a program for directing the picking means to chosen storage area." Claim l
of the “267 patent recites "means for picking medicine packages . . . in accordance with
instructions received from a computer? The specification also states that the patented system
depends on ‘“computer controlled inst1uctions" (col. I3, ins. l5—l6). The source code may be
particularly helpful in determining whether the APS embodies claim elements recited in means-
plus-function form. lf the Court ultimately construes the corresponding structure of this element
to require a "computer" executing certain "instructions," the source code may be helpful to
determine whether the APS embodies such structure.
The source code for the APS may also be relevant for other reasons. As extrinsic
evidence, the source code may shed light on the understanding of persons of ordinary skill in the
art during the relevant time period and, in this regard, is likely to lead to admissible evidence
concerning the proper construction of various claim elements. More importantly, source code is
typically dated and contains comments by the software developer. This information could help

Case 1 :O6—cv—OOO28-SLR-LPS Document 102 Filed O4/O4/2007 Page 3 of 3
The Honorable Mary Pat Thynge
April 4, 2007
Page 3
Defendants determine when various versions of the APS existed and could provide highly
relevant insights into the inventors’ thought processes. This is especially important here because
Mcliesson has produced few documents dated prior to 1996 and has not produced any
documents from before 1992 relating to sales ofthe APS or conception and reduction to practice
ofthe inventions taught and disclosed in the ‘l 10 and ‘267 patents. Nor has Mcliesson produced
any documents relating to the early testing and development of the APS. This makes the need
for the source code all the more pressing as l\/lcKesson has not produced any documents that
show what products AHI was developing, demonstrating or offering for sale prior to January 24,
1989. Defendants need the documents soon because depositions of McKesson’s designated
30(b)(6) witnesses on these topics as well as inventor Sean McDonald will be taken in April
and/or May. If additional witnesses and sources of information are identified at those
depositions, it will require additional discovery that will have to be completed by the July 31,
2007 discovery deadline.
Defendants have made several attempts to obtain the source code without
involving the Court. On December 22, 2006, shortly after Mcliesson made its initial production
of documents, Defendants wrote to l\/1cKesson and specifically noted McKesson’s failure to
produce any source code. Counsel exchanged letters several times in January and February but
McKesson maintained its refusal to produce any source code. Most recently, on March 26, 2007
during a conference between counsel, Defendants’ counsel again requested the source code and
cited an article found by Defendants in the Pittsburgh Business Times dated June 13, 1988 —
approximately 1 % years before the effective filing date of the ‘267 and ‘1l0 patents. That
article quotes inventor and then—President of AHL Sean McDonald, as saying that that he was
then “de—bugging" the computer program that runs the APS, that AH1 was developing its first
prototype and hoped to begin hospital testing in the Fall of 1988. Defendants explained that the
source code is directly relevant to the question of whether the APS was an embodiment of the
invention later claimed in the patents in suit. McKesson’s counsel again refused, stating that the
functional specifications and brochures produced by l\/1cKesson adequately set forth the
functionality of the Robot Rx and APS products and that it is not necessary to provide detail at
the source code level. Mcliesson also refuses to produce on the grounds that the source code is
highly sensitive and confidential even though the Protective Order would prevent the disclosure
to anyone but trial counsel.
For these reasons, Translogic and Swisslog Italia request an order compelling
Mcliesson to produce the source code for all versions ofthe APS and Robot Rx products.
Respectfully,
g 3 M

if/Jiilia Heaney
JH:ncf
cc: Dr. Peter Dalleo, Clerk (By e—filing)
Dale R. Dubé (By e—rnail)
Blair M. Jacobs (By e—mail)
784097