Free Redacted Document - District Court of Delaware - Delaware

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ORIGINAL FILING DATE: APRIL 24,2007 REDACTED FILING DATE: MAY 1, 2007 PUBLIC VERSION

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EXHIBIT A

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EXHIBIT B

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Not Reported in F.Supp.2d Not Reported in F.Supp.2d, 2000 WL 1335053 (D.Or.) (Cite as: Not Reported in F.Supp.2d)

Whatley v. Nike, Inc. D.Or.,2000. Only the Westlaw citation is currently available. United States District Court, D. Oregon. Ian WHATLEY, Plaintiff, v. NIKE, INC., Defendant. No. CV 98-963-AS. June 30, 2000. OPINION and ORDER ASHMANSKAS. *1 Plaintiff filed this action against defendant asserting two claims: (1) patent infringement; and (2) slander per se. Plaintiff now moves to strike affirmative defenses raised to oppose his slander claims. The parties have also filed cross-motions to compel and for a protective order. 1. Motion to Strike Affirmative Defenses Plaintiff's slander claim is premised upon two telephone conversations between a Nike employees and the President and Vice-President of Business Development for Tietex Inc. From 1994-96, plaintiff was a consultant for Tietex. Tietex provides materials, sales and marketing for the athletic footwear industry. Plaintiff claims that in July of 1996, he was offered a full-time position with Tietex as a footwear product manager. Shortly thereafter, plaintiff claims that Nike employees told Tietex that they would "have a problem" with Tietex if Whatley was hired full time. Plaintiff further alleges that Nike employees told Tietex that Whatley had stolen trade secrets from previous employers and that Whatley's patent issues with Nike "must be dealt with before he comes on board with you." Plaintiff contends that Nike made these statements in a deliberate attempt to force Whatley to accept its offer of $20,000 for his patents. Plaintiff further contends that when this effort failed, Tietex withdrew its offer of employment based upon Nike's interference. Plaintiff now moves to strike two categories of af-

firmative defenses raised against his slander claim: (a) a statute of limitations bar (affirmative defense # 11); and (b) the unconstitutionality of punitive damages (affirmative defenses # 12-15). Pursuant to Rule 12(f), a court may strike any "insufficient defense." The facts must be viewed in the light most favorable to the non-moving party. American Agriculture, Inc. v. Shropshire, 1999 U.S. Dist. LEXIS 13972, *2 (D.Or.1999) (cites omitted). A motion to strike a defense is disfavored except when the defense is insufficient as a matter of law. Id. Both parties agree that the court must apply South Carolina conflicts of law analysis to determine which law applies to the slander claim since this action was originally filed in a Federal District Court in South Carolina. Klaxon Co. v. Stentor Electric Manufacturing Co., 313 U.S. 487, 496 (1941); Van Dusen v. Barrack, 376 U.S. 612, 639 (1964). In tort actions, South Carolina generally follows the "lex loci delicti" rule which calls for application of the substantive law of the situs of the injury. Thornton v. Cessna Aircraft Co., 886 F.2d 85 (4th Cir.1989). However, the court may refuse to apply the law of the situs of the injury if to do so would be contrary to South Carolina public policy or due process. Id. As the pleadings now stand, the situs of plaintiff's injury remains unclear. In his complaint, plaintiff alleges damage to his business representation in the athletic shoe industry in general. The fact that plaintiff is currently a South Carolina resident is not determinative if the injury to his reputation has a more substantial connection to another forum, such as Oregon. Because plaintiff has declined to expressly limit his claim for damages to his business reputation in South Carolina and/or damages relative to the loss of the Tietex contract, then the issue of the applicable statute of limitations necessarily involves a factual inquiry unsuitable for a ruling on a motion to strike. Further, because defendant seeks to preserve a due process challenge to the system for

© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.

Case in F.Supp.2d Document Not Reported 1:04-cv-01338-JJF Not Reported in F.Supp.2d, 2000 WL 1335053 (D.Or.) (Cite as: Not Reported in F.Supp.2d)

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awarding punitive damages (as opposed to the fact of punitive damages), elimination of this defense would be premature as well. *2 Based upon the foregoing, plaintiff's motion to strike (# 172) is DENIED. 2. Plaintiff's Motion for a Protective Order; Defendant's Motion to Compel Defendant seeks to compel the depositions of plaintiff's patent attorneys, Roy Anderson and Richard Warburg, to discover how plaintiff determined the value of his patents for purposes of his divorce proceedings. Defendant claims that during a deposition, plaintiff referred to consultation with his patent attorneys relative to the valuation issue. Plaintiff argues that he never waived the attorney-client privilege relative to his patent attorneys. Plaintiff agrees that he has waived the attorney-client privilege relative to his divorce attorney and the patent valuation issue. Further, plaintiff has submitted sworn declarations from Anderson and Warburg in which they attest to the fact that they have no memory of having given advice to the plaintiff regarding the value of his intellectual property for purposes of his divorce proceedings. Plaintiff seeks a protective order to prevent the depositions based upon the attorney-client privilege. Having reviewed the plaintiff's deposition excerpts, I find that there has been no clear waiver of the privilege relative to the patent attorneys. The crux of the valuation question should be adequately addressed with the deposition of plaintiff's divorce attorney. Plaintiff testified that it was his belief that the patents should be valued at $0 as contingent property; this testimony does not rest upon any understanding of patent law. Should any unresolved issues remain following the deposition of plaintiff's divorce attorney, defendant may re-raise this motion. Based upon the foregoing, defendant's motion to compel (# 230-1) is DENIED and plaintiff's motion for protective order (# 233) is DENIED as MOOT. 3. Defendant's Motion for Extension of Time (# 230-2)

Defendant seeks additional time to file a reply memorandum in support of its motion for summary judgment based upon judicial estoppel relative to plaintiff's valuation of his patents during his divorce proceedings. Defendant's motion (# 230-2) is GRANTED as follows: defendant shall file any reply to its motion for summary judgment based upon judicial estoppel (# 187) and plaintiff shall file any reply to his motion for partial summary judgment on infringement (# 123) that has not been withdrawn by July 31, 2000. Oral argument on motions # 187 and # 123 shall be held on Monday, August 7, 2000, at 9:30 a.m. IT IS SO ORDERED and DATED this 30th day of June, 2000. D.Or.,2000. Whatley v. Nike, Inc. Not Reported in F.Supp.2d, 2000 WL 1335053 (D.Or.) END OF DOCUMENT

© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.

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CERTIFICATE OF SERVICE I hereby certify that on May 1, 2007, I electronically filed the foregoing document with the Clerk of Court using CM/ECF, which will send notification of such filing to the following: John R. Alison, Parker H. Bagley, Robert J. Benson, Robert Karl Beste, III, Elizabeth L. Brann, Christopher E. Chalsen, Hua Chen, Arthur G. Connolly, III, Frederick L. Cottrell, III, Francis DiGiovanni, Thomas M. Dunham, Kevin C. Ecker, Amy Elizabeth Evans, York M. Faulkner, Maria Granovsky, Christopher J. Gaspar, Alexander E. Gasser, Alan M. Grimaldi, Thomas C. Grimm, Thomas Lee Halkowski, Angie Hankins, Richard L. Horwitz, Dan C. Hu, John T. Johnson, Robert J. Katzenstein, Nelson M. Kee, Richard D. Kelly, Matthew W. King, Stephen S. Korniczky, Gary William Lipkin, Hamilton Loeb, Robert L. Maier, David J. Margules, David Ellis Moore, Carolyn E. Morris, Arthur I. Neustadt, Elizabeth A. Niemeyer, Andrew M. Ollis, Karen L. Pascale, Adam Wyatt Poff, Leslie A. Polizoti, John F. Presper, Alana A. Prills, Steven J. Rizzi, Lawrence Rosenthal, Avelyn M. Ross, Philip A. Rovner, Diana M. Sangelli, Robert C. Scheinfeld, Carl E. Schlier, Chad Michael Shandler, John W. Shaw, Matthew W. Siegal, Neil P. Sirota, Monte Terrell Squire, William J. Wade, Roderick B. Williams, Edward R. Yoches.

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I also certify that on May 1, 2007, I caused to be served true and correct copies of the foregoing on the following as indicated below: BY E-MAIL: John W. Shaw Monte T. Squire YOUNG CONAWAY STARGATT & TAYLOR LLP 1000 West Street, 17th Floor P.O. Box 391 Wilmington, DE 19899-0391 [email protected] Attorneys for Sony Corporation Karen L. Pascale YOUNG CONAWAY STARGATT & TAYLOR, LLP The Brandywine Building, 17th floor 1000 West Street Wilmington, DE 19801 [email protected] Attorneys for Optrex America, Inc.

Philip A. Rovner POTTER ANDERSON & CORROON LLP Hercules Plaza, 6th Floor 1313 N. Market Street P.O. Box 951 Wilmington, DE 19899 [email protected] Attorneys for Fuji Photo Film Co., Ltd. and Fuji Photo Film U.S.A., Inc.

David J. Margules John M. Seaman BOUCHARD MARGULES & FRIEDLANDER, P.A. 222 Delaware Ave., Suite 1400 Wilmington DE 19801 [email protected] Attorneys for Citizen Watch Co., Ltd. and Citizen Displays Co., Ltd.

Gary W. Lipkin DUANE MORRIS LLP 1100 North Market Street, 12th Floor Wilmington, DE 19801-1246 [email protected] Attorneys for InnoLux Display Corporation

Richard L. Horwitz David E. Moore POTTER ANDERSON & CORROON LLP Hercules Plaza, 6th Floor 1313 N. Market Street P.O. Box 951 Wilmington, DE 19899 [email protected] Attorneys for Hitachi Displays, Ltd., Wintek Corp., Wintek Electro-Optics Corporation, Samsung SDI America, Inc. and Samsung SDI Co., Ltd.

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Robert C. Scheinfeld Neil P. Sirota BAKER BOTTS L.L.P. 30 Rockefeller Plaza New York, NY 10112 [email protected] [email protected] Attorneys for Hitachi Displays, Ltd.

Andrew M. Ollis OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, P.C. 1940 Duke Street Alexandria, VA 22314 [email protected] Attorneys for Optrex America, Inc.

Elizabeth A. Niemeyer FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 901 New York Avenue, N.W. Washington, DC 20001 [email protected] York M. Faulkner FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 11955 Freedom Drive Reston, VA 20190 [email protected] Attorneys for Wintek Corp. and Wintek Electro-Optics Corporation

Stephen S. Korniczky Elizabeth L. Brann PAUL, HASTINGS, JANOFSKY & WALKER LLP 3579 Valley Centre Drive San Diego, CA 92130 [email protected] [email protected]

Hamilton Loeb PAUL, HASTINGS, JANOFSKY & WALKER LLP 875 15th Street, N.W. Washington, DC 20005 [email protected] Attorneys for Samsung SDI Co., Ltd. and Samsung SDI America, Inc.

John Flock KENYON & KENYON One Broadway New York, NY 10004-1050 [email protected] Attorneys for Sony Corporation

Stuart Lubitz HOGAN & HARTSON LLP 1999 Avenue of the Stars, Suite 1400 Los Angeles, CA 90067 [email protected] Attorneys for Citizen Watch Co., Ltd. and Citizen Displays Co., Ltd.

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Lawrence Rosenthal Matthew W. Siegal STROOCK & STROOCK & LAVAN LLP 180 Maiden Lane New York, NY 10038-4982 [email protected] [email protected] Attorneys for Fuji Photo Film Co., Ltd. and Fuji Photo Film U.S.A., Inc.

Donald R. McPhail DUANE MORRIS LLP 1667 K Street, N.W., Suite 700 Washington, DC 20006 [email protected] Attorneys for InnoLux Display Corporation

BY FEDERAL EXPRESS Mr. Seong Yoon Jeong Assistant Manager Technology Planning Group BOE HYDIS TECHNOLOGY CO., LTD. San 136-1, Ami-ri, Bubal-eub Ichon-si, Gyeonggi-do 467-701 Republic of Korea

/s/ Thomas C. Grimm Thomas C. Grimm (#1098) MORRIS, NICHOLS, ARSHT & TUNNELL LLP Wilmington, DE 19801 (302) 658-9200 [email protected]
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