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PATRICIA A. Wrnnoss STUART B. Youxo
EDWARD B. M¤\X‘.‘.'ELL. IND
March 3, 2006
BY CM/ECF
The Honorable Gregory M. Sleet
United States District Court
844 King Street
Wilmington, DE 19801
Re: National Starch and Chemical Investment Holding Corporation,
et al. v. Cargill, Inc.. et al.. C.A. No. 04-1443-GMS
Dear Judge Sleet:
The parties in the above—referenced matter have met and discussed a proposed
discovery schedule for Defendants’ new counterclaims of inequitable conduct and unfair
competition. The parties also discussed the scheduling of additional depositions in light of
Defendants' recent production of documents. The parties, therefore, propose the following
schedule:
1. Document requests and interrogatories regarding the counter claims shall
be served by both parties by March 10, and responded to by March 30;
2. 30(b)(6) depositions and third party depositions to be completed by both
parties on or before April 15;
3. Rebuttal expert report concerning inequitable conduct served by April 30,
to the extent necessary (see below), and
4. Depositions of Mr. Tenbarge and Mr. Paoli to be completed on or before
April 15 (Plaintiffs: Plaintiffs have agreed to limit the depositions to the
800 newly produced documents many of which are new documents that
DB0l:2014934.l 063631.1001
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Youno CoNAwAv STARGATT & TAYLOR, LLP
The Honorable Gregory M. Sleet
March 3, 2006
Page 2
were never produced during the discovery periord. Plaintiffs object to
identifying the documents that are going to be used during the depositions,
because this would disclose Plaintiffs' litigation strategy. Plaintiffs do not
- agree that the depositions of Messrs. Tenbarge and Paoli be limited in time
because Mr. Tenbarge has submitted an expert report and Mr. Paoli may
be designated as a 30(b)(6) witness, both of which would require at least ' ’
one day alone. Finally, Plainitiffs note that the cited deposition testimony
by Defendants is simply misleading and that no such agreement was
made.) (Defendants: First, as to identification of new and relevant
materials, Defendants note that much of the "newly produced documents,"
in fact are simply duplicative of previously produced materials.
Defendants do not wish to provide Plaintiffs with the opportunity to use
these materials to re-open discovery on matters after-the-fact. Thus,
Defendants previously requested, and Plaintiffs previously agreed} to
advise of anything "relevant and new" that would require further
deposition in the recently produced documents. We do not seek
Defendants‘ litigation strategy -— rather, we merely seek advance notice of
what is purportedly new so that we can timely have a meet and confer in
order to avoid a re-opening of discovery regarding materials that have
previously been produced. Indeed, when faced with Plaintiffs failure to
produce critical materials relevant to the Capatini deposition, Defendants
specifically identified the materials and suggested either a stipulation or a
brief deposition limited to those materials. We seek nothing more from
Plaintiffs. Second, since Mr. Tenbarge will need to testify regarding his
4-page expert report and since Mr. Paoli will need to testify as to the
30(b)(6) deposition that Plaintiffs are requesting regarding the inequitable
conduct and unfair competition claims, Defendants have requested that
1 See Simpson Deposition Rough Transcript at pp. 119-120:
18 MR. HALKOWSKI: We will take your
19 request under advisement, happy to work with you in any
20 reasonable fashion that we can. lt would be helpful to us
21 if you can identify anything within the documents that
22 have been produced that is relevant and new that was not
23 produce the previously that you would like to ask somebody
24 about.
25 MS. BERSH: And we will be happy to do
l that. We also reserve the right to re depose Mr. Simpson
2 after we've had time to carefully review the documents
3 that were produced last evening. Md this conclusion my
4 deposition.
DBOl:20l4934.l 063631.100l
Case 1:04-cv—01443—G|\/IS Document 100 Filed 03/03/2006 Page 3 of 4
YOUNG CONAWAY STARGATT & TAYLOR, LLP
The Honorable Gregory M. Sleet
March 3, 2006
Page 3
these two depositons should be combined, respectfully, with the very
limited depositions of Tenbarge and Paoli concerning the "newly
produced" material. There appears to be no reason why each such
- deposition should need to take longer than one day -—— particularly given
that Mr. Tenbarge has already been deposed for two days, and Mr. Paoli
has also been previously deposed.) ` ‘
Finally, Plaintiffs wish to inform the Court that they have received an expert
report from Defendants regarding inequitable conduct. Defendants' expert is a patent attorney
and is scheduled to give an opinion concerning the alleged materiality of alleged prior art.
However, Plaintiffs note that Defendants' expert is not an expert in the subject matter of the
patents in suit. Further, the patent attorney expert opinion is unnecessary and will not assist the
fact finder in weighing the materiality of asserted prior art. The fact finder here, as in other cases
before this Court, is perfectly capable of weighing the evidence without guidance from any
alleged expert patent attorney. In addition, other portions of the patent attomey's expert report
offer an opinion on the patent system and practice before the U.S. Patent Office, this is
duplicative and unnecessary in light of the Court's instructions. Finally, not once does the patent
attorney discuss what one of ordinary skill in the art would have recognized as material (contrary
to Defendants' assertion below). Plaintiffs obj ect to this expert and do not believe that they
should be required to spend additional resources rebutting the expert opinions of a patent
attorney. Therefore, Plaintiffs request guidance from the Court concerning this expert and
whether she should be permitted to give this type of expert testimony.
Defendants initially note an objection to Plaintiffs using this correspondence as a
vehicle to present the argument to the Court. In response to Plaintiffs' argument, Defendants
note that Ms. Sweeney: (l) has an undergraduate degree in Botany and is also uniquely qualified
to provide testimony useful to the fact—finder by virtue of her extensive experience in dealing
with patents concerning the patenting of plants and hybrid seed (including especially hybrid corn
seed); (2) is not being presented to provide a mere primer on patent office procedure and
practice; and (3) will, instead, provide testimony —— related to both inequitable conduct and
validity issues -- that is focused upon: (i) the materiality that would have been recognized as to a
limited number of devastating documents that Plaintiffs possessed but did not provide to the
Patent Office, and (ii) testimony regarding key particular events in the file histor ies of the
patents-in—suit, including critical issues of timing that are highly relevant to validity and
inequitable conduct issues regarding the two patents—in—suit.
Respectfully sub 'tted,
ub
J W. Shaw
JWS/prt
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YoUNG CoNAwAY STARGATT & TAYLOR, LLP
The Honorable Gregory M. Sleet
March 3, 2006
Page 4
cc: Clerk ofthe Court (by e—filing)
Thomas L. Halkowski, Esquire (by e-filing/hand delivery)
Gregory Madera, Esquire (by e—mail)
Richard L. DeLucia, Esquire (by e-mail)
Paul M. Richter, Esquire (by e—mail) __
DBOl:20l4934.l 0636311001
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