Free Letter - District Court of Delaware - Delaware

Case 1:04-cv—01264-SLR Document 299-2 Filed 11/15/2005 Page 1 of 3
Asn-rev & GEDDES
ATTORNEYS AND COUNSELLORS AT LAW TELEPHONE
302-654-IBB!
222 DELAWARE AVENUE
FACSIMILE
P- O- BOX ||5O aca-e¤4-acc?
WILMINGTON, DELAWARE |9899
November 15, 2005
The Honorable Sue L. Robinson
United States District Court
844 North Kind Street,
Wilmington, DE 19801
RE: BTG International Inc. v. Amazon. com, Inc.
C.A. No. 04-1264-SLR
Dear Chief Judge Robinson:
At the discovery conference on November 2, 2005, the defendants challenged BTG’s
assertion of privilege as to two categories of documents. The first category involves
communications between non-lawyers undertaken at the instruction of an attomey. For BTG,
these communications were made either to seek legal advice, or at the direction of an in-house
counsel for the purpose of giving legal advice to BTG. The second category involves
communications between a party and third-party consultants. With respect to this category, two
of the third-parties listed on BTG’s privilege log are non-testifying experts who were hired to
assist cormsel with an infiingement analysis of the patents-in—suit. The other third-parties were
hired to assist BTG with its public relations strategy for this lawsuit.
After hearing from the parties, the Court directed them to submit a short letter providing
one or two cases addressing each of the two categories of documents described above. The
Court also advised the parties that the same standard should apply to each party: "But I just want
to make sure that we’re playing on a level playing field and that we all treat the same kind of
documents the same way." (1 l/2/05 Transcript at 26)
The cases cited below (and enclosed for the Court’s convenience) demonstrate that
BTG’s assertion of privilege was proper. And, since Amazon.com included documents from
both categories on its own privilege log (as described below), the Court should deny the
defendants’ challenge to BTG’s assertion of privilege as to documents in each category in order
to maintain a "level playing field."l
I The Court also requested that the parties further develop the facts pertaining to documents that may have been held
at a Tucows facility in the King of Prussia, Pennsylvania area. Plaintiffs are investigating these facts and hope to be
able to provide them to the Court by Tuesday, November 22, 2005.

Case 1:04-cv—01264-SLR Document 299-2 Filed 11/15/2005 Page 2 of 3
The Honorable Sue L. Robinson
November 15, 2005
Page 2
Communications between Non-Lawyers at BTG 2
The primary purpose of the BTG privileged communications between non-lawyers was to
seek legal advice from BTG’s in-house counsel and to assist counsel in giving legal advice with
respect to BTG’s licensing, commercialization and enforcement efforts for the patents-in-suit
(the proj ect related to these communications was known intemally at BTG as "Web Nav"). The
BTG employees identified on its privilege log all worked on the Web Nav project and, at times,
worked at the direction of BTG’s in-house attorney, Brad Ditty. Many of the withheld
communications relate to BTG’s investigations of potential licensees or infringers, licensing
strategy, acquisition of the patents—in-suit, potential damages theories, and information to be
presented to BTG’s Board of Directors in order to obtain approval to file this lawsuit. Each of
the non-lawyers participated in gathering and relaying such information necessary for BTG’s
counsel to give effective legal advice regarding the proj ect. These communications are privileged
because they were made specifically for the purpose of obtaining legal services for the
corporation and were subsequently conveyed to BTG’s in—house counsel. See Eutectic Corp v.
Metco, Inc., 6l F.R.D. 35, 39 (E.D.N.Y. 1973).
Moreover, in gathering and relaying such information to BTG’s in-house counsel, the
Web Nav team sought legal advice regarding the Web Nav project. These communications
demonstrate an ongoing implied request for legal advice relating to the proj ect. Indeed,
Delaware has recognized that communications intended to keep in-house counsel apprised of
continuing business developments can constitute an implied request for legal advice and may be
privileged without even having explicit direction from counsel. See Hercules, Inc. v. Exxon
Corp., 434 F. Supp. 136, 144 (D. Del. 1977). As such, all of the withheld documents on BTG’s
log between non-lawyers are privileged.
Communications with Third Party Consultants3
l. BTG’s communications with its non-testifying experts
BTG’s in-house counsel hired expert consultants Patent Logistics and Serissa Research to
provide technical analyses of the claims of the patents with potentially infringing
2This is the second time Defendants have raised this issue with the Court. On July 6, the Court ordered that all of
the parties to this suit (at that time there were four defendants) amend their privilege logs to identify the attomey
implicated in any communications between non-lawyers. In accordance with that order, BTG revised its log to
identify the particular attomeys implicated in all such cormnunications. Amazon attempted to make the same
revisions, but to date has failed to properly identify on its log the particular attorneys implicated in its non—lawyer
communications. Despite Amazon’s failure, and the fact that it claims its own identical category of communications
is privileged, it now joins Overstock in claiming that BTG’s non-lawyer communications should be treated
differently from its own. Overstock has been spearheading this argument because it only has tive entries on its
privilege log——-all of which are internal memoranda that do not even identify a recipient of the communication—and
knows it largely is immune from any potential adverse ruling on the issue as a result of its minimal entries.
3 Amazon also logged privileged communications with third-party consultants, including (1) emails from a non-
lawyer to third—parties at Stanford and Columbia University that were copied to a lawyer; and (2) communications
between a lawyer and an "Amazon agent."

Case 1:04-cv—01264-SLB Document 299-2 Filed 11/15/2005 Page 3 of 3
The Honorable Sue L. Robinson
November 15, 2005
Page 3
systems/programs. Both of these experts were hired by BTG with written and executed retainer
agreements. Moreover, they worked at the direction and under the supervision of BTG’s in-
house attomeys.4 The infiingement analyses were necessary for BTG’s in-house counsel to
provide legal advice to BTG relating to licensing, commercialization and enforcement of the
patents-in—suit. Delaware has recognized that such communications with an agent employed by
attomeys are privileged. See Willemyn Houdstermaatschaapy BV v. Apollo Computer Inc., 707
F. Supp. 1429, 1446 (D. Del. 1989). Furthermore, these non—testifying experts were hired by
BTG in anticipation of litigation and, as such, communications between them and BTG are
protected under the work product doctrine. Fed. R. Civ. P. 26(d).
2. BTG’s communications with its public relations consultants
Taylor Rafferty and Firefly are public relations consultants who have been on retainer
with BTG for several years and are bound by nondisclosure agreements. Here, BTG
connnunicated with them to assist with legal advice regarding communications about this
lawsuit. Specifically, these consultants assisted BTG’s attomeys and the Web Nav team (as an
extension of BTG’s in-house counsel) with preparing press releases, statements for release,
talking points and Q & A models. In assisting with these matters, Taylor Rafferty and Firefly
participated in many communications with BTG’s in-house and outside litigation counsel
(Robins, Kaplan, Miller & Ciresi L.L.P.) and members of the Web Nav team. They also assisted
BTG’s counsel in giving legal advice on the timing of bringing suit, statements that could be
made about the claims of the patents, statements that could be made about potential damages and
statements about potential defendants. All of these cornrnunications are protected under both the
attomey-client privilege and the work product doctrine because they were made to facilitate the
rendition of legal services to BTG for the sole purpose of this lawsuit. See Copper Market
Antitrust Litigation v. Sumitomo Corp., 200 F.R.D. 213 (S.D.N.Y. 2001).
For the foregoing reasons, each of the communications between non—lawyer BTG
employees and the communications between BTG and its third-party consultants are protected by
either the attomey—c1ient privilege, the work product doctrine, or both.
Respectfully,
/s/ John G. Day
John G. Day (l.D. #2403)
JGD: nml
Enclosures
160081.1
4 At the November 2, 2005 hearing, counsel for Overstock suggested that while communications between an in-
house attorney and an in-house technical expert may be privileged, communications between an in-house counsel
and an outside technical expert retained to help in-house coimsel grasp technical issues for the purpose of providing
legal advice regarding those teclmical issues, can never be privileged solely because they are "outside"
communications. That argument is inherently legally incorrect, and also exalts form over substance.