Free Letter - District Court of Delaware - Delaware

Case 1 :04-ov-01373-KAJ Document 393 Filed 06/20/2006 Page 1 of 2
MORRIS, NICHOLS, ARSHT gt TUNNELL LLP
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BY ELECTRONIC FILING
The Honorable Kent A. Jordan
United States District Court
844 King Street
Wilmington, DE 1980l
RE: Ampex v. Eastman Kodak, CA. No. 04-l373·-KAJ
Dear Judge Jordan:
Pursuant to D. Del. LR 7.l.2(c), Ainpex respectfully submits a copy of a recently
- published opinion from the United States District Court for the Southern District of Indiana,
Indiana Mills & Mfg., Inc. v. Dore! Indus., Inc., No. 1:04-cv-01l02-LJM—WTL, 2006 U.S. Dist.
LEXIS 34023 (SD. Ind. May 26, 2006)(Ex.A). The opinion addresses issues relating to the
scope of the waiver of attorney—client privilege and work product in light of the Federal Circuit‘s
recent decision in In re EchoStar Canzmlr Corp., Misc. Nos. 803, 805, 2006 WL 1149528 (Fed.
Cir. May 1, 2006), and is pertinent to Arnpex's Motion to Compel Disclosure of Withheld
Communications and for Production of a Privilege Log, tiled May 18, 2006.
In Indiana Mills, the district court determined that Ech0Star’s holding on waiver
of attorney~clier1t privilege and work product did not extend to trial counsel communications and
work product. Although the district court found that there was not a waiver with respect to trial
counsels’ communications on the facts before it, it applied an analysis consistent with the
balancing of interests suggested by Ampex in its motion. The district court predicated its finding
of no waiver on the fact that "{t]here is no allegation in this case that {the accused infringer]
received additional advice of counsel post—tiling, other than advice from counsel in the course of
litigation? Indiana Mills, 2006 U.S. Dist. LEXIS 34023 at * l9.
The Court further suggested, albeit in dicta, that waiver would be appropriate in a
case such as this one, in which the accused infringer allegedly received advice both before and
after the filing of the lawsuit: "[T]herc is merit in extending the temporal scope of the waiver
beyond filing ofthe suit in cases where there is a fear that post—iiling nominfringeinent opinions,

Case 1:04-cv—01373-KAJ Document 393 Filed 06/20/2006 Page 2 of 2
The Honorable Kent A. Jordan
June 20, 2006
Page 2
whether they may be of trial counsel, in—house counsel, or third-party outside counsel, differ
from these preatiling and have bearing on the reasonableness of the alleged inl`ringer's reliance
on advice of counsel." Indiana Milfs, 2006 U.S. Dist. LEXIS 34023 at *20 n.2.
Respectfully,
/s/ Jack B. Blumenfeld (#1014)
I ack B. Blumenfeld
JBB/bls
ec: Peter T. Dalleo. Clerk (By Hand)
Collins J. Seitz, Jr., Esquire (By Hand)
Michael J. Surnmersgill, Esquire (By Fax)
Norman H. Beamer, Esquire (By Fax)