Free Order - District Court of Delaware - Delaware

Case 1:04-cv—01264-SLR Document 157 Filed 07/06/2005 Page 1 of 3
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
BTG INTERNATIONAL, INC., )
Plaintiff, ;
v. 3 Civ. No. 04-1264-SLR
AMAZON.COM, INC., g
Defendant. ;
O R D E R
At Wilmington this 6th day of July, 2005, having reviewed
the papers submitted in connection with a discovery dispute
relating to plaintiff’s asserted common interest privilege (D.I.
146, 147, 150);
IT IS ORDERED that plaintiff BTG shall produce the disputed
documents, for the reasons that follow;
1. The common interest privilege is an exception to the
general rule that disclosure to a third party waives the
attorney—client privilege. Corning Incorporated v. SRU
Biosystems, Inc., LLC, 223 F.R.D. 189, 190 (D. Del. 2004). For
the common interest privilege to apply, the interests must be
“identical, not similar, and be legal, not solely commercial.”
In re Regents of the Univ. of Cal., 101 F.3d 1386, 1389 (Fed.
Cir. 1996).

Case 1 :04-cv—01264-SLR Document 157 Filed 07/06/2005 Page 2 of 3
2. Plaintiff grounds its assertion of the privilege on the
execution of a Patent Assignment and Commercialization Agreement
(“PACA”) entered between plaintiff and Tucows, whereby Tucows
assigned to plaintiff “all of Tucows’ right, title and interest
in and to the Assigned Patents, including all of Tucows‘ right to
claim and receive damages for infringement occurring both before
and after the Effective Date.” (D.I. 146, Ex. 1 at 2)
3. The “background” of the PACA is described as follows:
“Tucows wants BTG to commercialize its intellectual property
rights, and BTG is willing to undertake to do so .... ” (LQ;
at 1) In this regard:
a. Tucows and plaintiff will share the net receipts
received by BTG from the Assigned Patents. (Ld; at 4)
b. Plaintiff has the “sole right to commence, conduct,
defend and settle legal proceedings relating to infringement of
the Assigned Patents.” (ld; at 5)
c. Tucows “will reasonably cooperate with and assist
BTG in enforcing and defending the Assigned Patents, including
making its personnel available to testify when requested, and
making relevant records, documents, samples and other information
reasonably available." (ld;)
4. Both parties have the right to terminate the PACA under
certain conditions. (TQ; at 8-9) Plaintiff maintains that the
PACA creates identical legal interests for it and Tucows because
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Case 1 :04-cv—01264-SLR Document 157 Filed 07/06/2005 Page 3 of 3
of the termination rights provided for in the PACA.
5. It is my view, however, that if the termination
provisions of the PACA create for Tucows a legal interest
identical to that of plaintiff in this litigation, then Tucows
should be deemed indispensable party to the litigation.
Therefore, on or before July 18, 2005, plaintiff must either
produce the documents exchanged between it and Tucows, or join
Tucows to the litigation.
6. On or before July 18, 2005, all parties shall go back to
their privilege logs and more specifically identify, for
categories (3) and (4), the attorneys who are implicated in all
such documents.
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