Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01264-SLR Document 276 Filed 1 1/O2/2005 Page 1 of 3
BOUCHARD MARGULES ES. FRIEDLANDER
A PROFESSIONAL CORPORATION
SUITE I 4OO
2 2 2 DELAWARE AVENUE
Wu.MiN<;TON, DELAWARE IQBOI
573-3500
FAX (302) 573-3501
ANDRE G. BOUCHARD JOANNE P. PINCKNEY
JOEL FRIEDLANDER COUNSEL
DAVID J. MARGULES KAREN L. PASCALE
November 2, 2005 JOHN M- SEAMAN
Dommrcx T. GATFUSO
JAMES G. MCMILLAN, in
Via Electronic Filing
The Honorable Sue L. Robinson
United States District Court
844 North King Street
Wilmington, DE 19801
RE: BTG International, Inc., etal. v. Amazon.com, Inc., etal.,
D. Del., C.A. No. 04-1264-SLR
Dear Chief Judge Robinson:
I am writing today on behalf of Defendants Amazon.com, Inc., Amazon Services, Inc., and
Overstock.com, Inc. in connection with the discovery conference at 4:30 p.m. today. There are
several issues Defendants wish to raise, in addition to certain housekeeping issues. Defendants’
counsel has raised each of these issues with Plaintiffs’ counsel but we have not been able to resolve
our differences.
1. Plaintiffs' Assertion of Privilege for Tucows Documents
As the Court may recall, Plaintiff BTG originally provided Defendants with a 474-page
privilege log, alleging 2246 documents were covered by one or more privileges. BTG asserts a
"common interest" privilege as to a number of documents originally in the possession of
Tucows/Infonautics, which were subsequently provided to BTG sometime around the time Tucows
assigned the patents-in-suit to BTG. BTG's primary argument was that the Patent Assignment and
Commercialization Agreement ("PACA") contained termination rights allowing Tucows to terminate
and regain interest in the patents. The parties briefed this issue for the Court, and on July 6, 2005,
the Court offered BTG two options: either produce the documents or join Tucows/Infonautics to the
litigation. See July 6, 2005 Order @.1. 157). BTG joined Tucows and Infonautics as parties.
Defendants have since reviewed the Tucows/Infonautics documents, and deposed those
parties. This evidence demonstrates that Tucows’ "interest" is neither identical, nor "legal" (as is
required to assert the common interest privilege), but rather is solely commercial in nature. In light
of these and other facts developed since July 6, 2005, Defendants request the opportunity to brief
why the common interest privilege does not apply to the communications logged by Plaintiff BTG
and why the documents should be tumed over to Defendants.

Case 1 :04-cv-01264-SLR Document 276 Filed 1 1/O2/2005 Page 2 of 3
The Honorable Sue L. Robinson
November 2, 2005
Page 2
2. Plaintiffs' Assertion of Privilege for Third-Papty Communications
The Court may also recall that Defendants questioned a number of documents on BTG's
privilege log relating to intemal BTG communications and documents not involving attomey
communications with third parties. After the last discovery conference with the Court, BTG
reviewed these privilege log entries (covering about 50 documents) and merely added the phrase
"performed at the direction of Bradley Ditty, Esq." This is hardly meaningful or explanatory and in
no way assists Defendants in determining if such documents are actually privileged. Defendants
would request that the Court inspect these documents to determine if they are privileged.
BTG has also asserted privilege with respect to a number of communications with third-
parties. BTG has continued to refuse to produce communications with Patent Logistics and Serissa
Research, purported experts that BTG consulted long before this lawsuit ever commenced.
Additionally, after our last discovery conference in June, BTG produced some communications with
the marketing firms Firefly and Taylor Rafferty. BTG, however, has refused to produce the
remainder of the documents it withheld due to a claim of privilege. There is no basis for the
assertion of privilege regarding communications with third-party marketing companies. Defendants
request the Court inspect these documents to determine if they are privileged.
3. Response to Overstock.com's Interrogatog No. 7 and Amazon.com's No. 9
Overstock.com and Amazon.com have fully answered BTG's Interrogatory Nos. 9 and l0
related to identification of prior art, providing detailed claim charts and descriptions of the
invalidating prior art references. Both defendants have served interrogatories requesting BTG to
identify the claim limitations not present in the prior art identified in detail in Defendants’ answers to
BTG's Interrogatory Nos. 9 and l0. To date, BTG has provided only objections, but no substantive
response. Defendants request that the Court order BTG to respond.
4. "Confidential" Designation of Watkeys Deposition
Defendants took the deposition of Edwin Watkeys. At the end of the deposition, BTG
designated the entire transcript "Confidential" under the protective order in this case. Overstock.com
thereafter requested on September 14, 2005 that the transcript of the second day of the deposition and
all of the public domain exhibits be de-designated. After getting no response, Overstock.com again
requested de-designation on September 29, and October 28, 2005. BTG has not substantively
responded.
Respectfully submitted,
/s/ Karen L. Pascale
Karen L. Pascale (#2903)
[[email protected]]
cc: All counsel

Case 1 :04-cv-01264-SLR Document 276 Filed 1 1/O2/2005 Page 3 of 3
CERTIFICATE OF SERVICE
I hereby certify that on November 1, 2005, I caused the foregoing Agenda Letter to the
Honorable Sue L. Robinson to be electronically filed with the Clerk of Court using CM/ECF, which
will send notification of such filing to the following:
Steven J. Balick, Esquire [[email protected]]
John G. Day, Esquire [[email protected]]
ASHBY & GEDDES
222 Delaware Avenue, 17°h Floor
Wilmington, DE 19801
Attorneys for Plaint#s, BTG International, Inc., Infonautics Corporation, and Tucows Inc.
John W. Shaw, Esquire [[email protected]]
YouNo CoNAwAv STARGATT & TAYLoR LLP
The Brandywine Building
1000 West Street, 17th Floor
P.O. Box 391
Wilmington, DE 19899-0391
Attorneys for Dekndants Amazon. com, Inc. and Amazon Services, Inc.
I further certify that on November 1, 2005, I caused a copy of the foregoing document to be
served by e-mail on the above-listed counsel, and that a copy was served on the following non-
registered participants by e-mail:
Niall A. MacLeod, Esquire [[email protected]]
Michael A. Collyard, Esquire [[email protected]]
ROBINS, KAPLAN, MILLER & Cuuzsi, LLP
2800 LaSalle Plaza
800 LaSalle Avenue
Minneapolis, MN 55402-2015
Attorneys for Plaint#s, BTG International, Inc., Infonautics Corporation, and Tucows Inc.
Kristin L. Cleveland, Esquire [[email protected]]
KLARQUIST SPARKMAN LLP
One World Trade Center
121 S.W. Salmon Street, Suite 1600
Portland, OR 97204
Attorneys for Dekndants Amazon. com, Inc. and Amazon Services, Inc.
BoUcHARD MARGULES & FRIEDLANDER, P.A.
/s/ Karen L. Pascale
Dated: November 1, 2005
David J. Margules (#2254) [[email protected]]
Karen L. Pascale (#2903) [[email protected]]
222 Delaware Avenue, Suite 1400
Wilmington, Delaware 19801
(302) 573-3500
Attorneys for Defendant Overstock. com, Inc.