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W¤¤¤'z;<;)¤;;§¤2;Tmb¤r== WILMINGTON, DELAWARE 19899 DO*{*;EI1?EJ6;;“;’;jlr;I;4;°°01
Wdtcrls E-Maj] Address: FAXQ (302) 674—5864
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May 10, 2006
The Honorable Kent A. Jordan VIA EFILIN G AND HAND DELIVERY
United States District Court
844 King Street
Wilmington, DE 19801
RE: Ampex Corp. v. Eastman Kodak Co., et al.
C.A. No. 04-1373 (KA,][
Dear Judge Jordan:
Defendants Eastman Kodak Company ("Kodak") and Altek Corporation ("Altek") respectfully
submit this response to Ampex’s letter seeking to compel the production of all communications
between trial counsel and Defendants relating to the issue of infringement.
I. Factual and Procedural Background
On August 29, 2001, more than ten years after Kodak began selling its digital cameras, and twelve
years after U.S. Patent No. 4,821,121 (the "‘ 121 patent") issued, Ampex sent Kodak a letter
demanding that Kodak take a license to the ‘ 121 patent. In response, Kodak conducted an internal
analysis of Ampex’s infringement claim and concluded that its digital cameras did not infringe the
‘ 121 patent. On September 14, 2001, Kodak responded to Ampex’s demand by requesting that
Ampex provide the basis for Ampex’s infringement assertions. Ampex did not respond to Kodak’s
request and did not provide any basis for its assertion of infringement.
On May 26, 2004, nearly three years later, Ampex sent Kodak a second letter demanding that Kodak
license the ‘121 patent. On June 18, 2004, Kodak repeated its request that Ampex provide the basis
for its claim of infringement. Once again, Ampex did not respond.
In August, 2004, in response to Ampex’s threats regarding the ‘ 121 patent, Kodak retained the law
firm Roylance, Abrams, Berdo and Goodman LLP ("Roylanceâ€) to provide a further opinion on the
issue of whether Kodak’s digital cameras infringed the ‘ 121 patent.
On October 21, 2004, Ampex filed suit against the Defendants in the International Trade
Commission asserting infringement ofthe ‘ 121 patent. On the same date, Ampex also filed this
action but it was stayed pending resolution of the ITC investigation. The ITC is statutorily permitted
to grant only injunctive relief so neither Ampex’s claim for damages nor its assertion of willful
infringement was at issue during the ITC action.
On July 29, 2005, Ampex moved to withdraw its complaint in the ITC action. As a result, on August
23, 2005, Ampex’s complaint was dismissed and this action commenced. Two weeks later, on
September 2, 2005, Roylance provided Defendants with an opinion that the Defendants’ digital
cameras do not infringe the ‘ 121 patent.
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Case 1:04-cv—01373-KAJ Document 269 Filed 05/10/2006 Page 2 of 4
The Honorable Kent A. Jordan
May 10, 2006
Page 2
II. Ampex is not entitled to all communications between trial counsel and the Defendants
relating to the subject matter of infringement.
The Defendants have already produced communications between: (1) the Defendants and opinion
counsel (Roylance); (2) trial counsel (WilmerHale) and opinion counsel; and (3) trial counsel and the
Defendants relating to the substance of the opinion. Ampex now seeks all communications between
the Defendants and trial counsel on the issue of infringement. By way of example, Ampex indicated
that it seeks draft interrogatory responses from the ITC investigation that relate in any way to the
issue of infringement and that were communicated to the Defendants. Defendants believe that such a
broad waiver is unwarranted.
Defendants objected to the production of communications with trial counsel, other than those relating
to the substance ofthe opinion of counsel, on the grounds that a production of such communications
was not compelled by then existing law. Thisjurisdiction has only waived the privilege between
client and trial counsel where trial counsel was either the same as opinion counsel or trial counsel
" was substantively involved in the preparation of the opinion. See Novartis Pharm. Corp. v. Eon Labs
Mfg., 206 F.R.D. 396 (D. Del. 2002); Mosel Vitelic Corp. v. Micron Tech., Inc., 162 F. Supp. 2d 307
(D. Del. 2000). Moreover, other jurisdictions have also strictly limited the waiver as it applies to trial
counsel. See, e.g., Terra Novo, Inc. v. Golden Gate, Inc., No. C-03-2684, 2004 WL 2254559 (N.D.
Cal., Oct. 1, 2004) (communications between trial counsel and client are outside ofthe scope ofthe
waiver); Douglas Press, Inc. v. Universal Mfg. Co., No. 01 C 2565 2003 WL 21361731, at *3 (N.D.
Ill. June 11, 2003) ("Based on Universal’s representation that it is not relying on any opinions from
[trial counsel] as part of its advice of counsel defense, Universal need not disclose any documents or
other materials prepared by the firm."); VLT Inc. v. Artesyn Tech., Inc., 198 F. Supp. 2d 56 (D.
Mass. 2002) (waiver of communications between client and trial counsel includes only those that are
inconsistent with the opinion).
The rationale for these limitations on the waiver as it applies to trial counsel has been that waiver
would "inappropriately chill communications between trial counsel and client and would impair trial
counsel’s ability to give the client candid advice regarding the merits of the case." Motorola, Inc. v.
Vosi Techs., Inc., No. 01 C 4182, 2002 WL 1917256, at *2 (N.D. Ill. Aug. 19, 2002). This rationale
applies in particular in this case where the ITC action, in which willfulness was not at issue, preceded
this action.
The Federal Circuit’s recent decision in In re Echostar contains language that, on its face, could be
construed as adopting a broad waiver of all attorney-client communications relating to the subject
matter addressed by an opinion. See In re Echostar Commc ’ns Corp., Misc. Nos. 803, 805, slip. op.
at 7, 16 (Fed. Cir., May 1, 2006). In Echostar, however, the defendant was attempting to rely upon
an opinion received from in-house counsel while not waiving the privilege as to communications
with its outside opinion counsel. See Echostar, slip. op. at 6. Communications with trial counsel
were not at issue and the Court’s opinion does not specifically address the unique circumstances of
waiver as it applies to trial counsel. See Echostar, slip. op. at 2. The earlier district court decisions
attempted to balance the need for confidentiality between trial counsel and client with the need for an
appropriate scope of waiver. The Echostar opinion does not address these considerations.
Moreover, to the extent the Echostar case is interpreted as creating a waiver ofthe privilege with
respect to trial counsel, it is likely to be the subject of further review by the Federal Circuit or the
Supreme Court.
Even the broad statements in Echostar do not justify Ampex’s request for all communications
between trial counsel and Defendants. The Federal Circuit made clear that it did not intend the
waiver to include day to day communications regarding the prosecution of the litigation: "By
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Case 1:04-cv—01373-KAJ Document 269 Filed 05/10/2006 Page 3 of 4
The Honorable Kent A. Jordan
May 10, 2006
Page 3
asserting the advice-of-counsel defense to a charge of willful infringement, the accused infringer and
his or her attorney do not give their opponent unfettered discretion to rummage through all of their
files and pillage all oftheir litigation strategies." See Echostar, slip. op. at 13. Instead, the Court
suggested that only communications rising to the level of "a traditional opinion 1etter" are
encompassed within the waiver. See Echostar, slip. op. at 12. In fact, in Akeva L.L. C. v. Muzuno
Corp., 243 F. Supp. 2d 418 (M.D.N.C. 2003), which was cited by the Federal Circuit in Echostar,
and in which the defendant relied on an opinion of counsel that it did not infringe, the court expressly
defined the subject matter waiver to mean that "all opinions received by the client relating to
infringement" must be revealed. Id at 422, 423.
Notwithstanding Defendants’ objections (and subject to a reservation of their objections), to the
extent that this Court interprets Echostar as effecting a waiver of communications between trial
counsel and client, Defendants are prepared to produce communications from trial counsel that can
be fairly interpreted as offering an opinion on whether Defendants infringe the ‘ 121 patent (or
documents reflecting any such communications). Should the Court deem it appropriate, Defendants
are also prepared to produce communications that they believe fall outside the scope of this waiver
for in camera review.
III. Ampex is not entitled to a privilege log separately listing all trial counsel communications
and work product that fall outside the scope of the waiver.
Ampex also moves to compel Defendants to produce a privilege log listing all trial counsel
communications and work product that Defendants contend fall outside the scope ofthe waiver. The
Defendants have already served a privilege log that includes communications between trial counsel
and Kodak that occurred prior to the filing ofthe ITC investigation. Defendants do not believe that
the production of an additional log listing all trial counsel communications and work product
regarding the issue of infringement is warranted because it would inevitably reveal trial strategy, it is
not necessary to assess Defendants’ privilege claims, and it would be extraordinarily burdensome to
do so.
Defendants cannot realistically produce a privilege log to show that the privileged contents of trial
counsel documents do not relate to a particular subject matter without actually revealing the contents
of the privileged communications. See VLI1 Inc. v. Artesyn Tech., Inc., 198 F. Supp. 2d 56, 59 (D.
Mass. 2002) ("In such cases involving the scope of a subject matter waiver, it may be difficult if not
impossible for the party asserting the privilege to ‘describe the nature of the documents. . . in a
manner that, without revealing the information itself privileged or protected, will enable other parties
to assess the applicability ofthe privilege or protection.’. . . How can one show that the privileged
contents of a document do not relate to a certain subject matter without revealing the contents of
what is contained in the documents?"). Providing the date and subject matter of all trial counsel
communications and work product would provide a roadmap to Defendants’ trial strategy.
Moreover, a detailed log is not necessary to assess Defendants’ privilege claims. Instead, once the
Court determines the categories of documents that must be produced, Defendants can simply produce
the documents that fall into those categories. See Caliper Tech. Corp. v. Molecular Devices Corp.,
213 F.R.D. 555, 563 (N.D. Cal. 2003) (in lieu ofa privilege log that could itself reveal privileged
information, the withholding party may describe the documents categorically).
Finally, to require a privilege log listing all trial counsel communications and work product would
impose a significant burden on Defendants. See, e. g. Imperial Corp. of America v. Sheilds, 174
F.R.D. 475, 479 (S.D. Cal. 1997) (document-by-document privilege log not required because the
large volume of documents to be logged would make the task overly burdensome).
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Case 1:04-cv—01373-KAJ Document 269 Filed 05/10/2006 Page 4 of 4
The Honorable Kent A. Jordan
May 10, 2006
Page 4
Respectéylly submitted, Z ?
PAUL M. LUKOFF
Del. Bar No. 96
PML/mhl
cc: Clerk ofthe Court (Via Hand)
Jack B. Blumenfeld, Esquire (Via E-Filing & E-Mail)
Norman H. Beamer, Esquire (Via E-Mail & FedEx)
Jesse J. Jenner, Esquire (Via E-Mail)
S. Calvin Walden, Esquire (Via E-Mail)
Michael J. Summersgill, Esquire (Via E-Mail)
Jordan L. Hirsch, Esquire (Via E-Mail)
19660.2\z0374sv1
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