Bouc:I—IAI=zo MARGULES 6. FRIEDLANDER
A PROFESSIONAL CORPORATION
SUITE I 4OO
2 22 DELAWARE AVENUE
WILMINGTON, DELAWARE I 980 I
FAX
ANDRE G. BOUCHARD JOANNEOEQSIZLNCKNEY
$25.2 ZITIXSSEEZS June 14, 2005 KAREN L— PASCALE
JOHN M. SEAMAN
DOMINICK T. GATTUSO
Via Electronic Filing
The Honorable Sue L. Robinson
United States District Court
844 North King Street
Wilmington, DE 19801
RE: BTG International, Inc. v. Amazon. com, Inc.,
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.,
Netflix, Inc., Bamesandnoble.com 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.
Defendants’ counsel has raised each of these issues with Plaintiff s counsel.
1. BTG's Assertions of Privilege
As the Court may recall, in a letter to the Court on April 20, 2005 and at the discovery
conference ofthe same date, Defendants raised a concem over Plaintiffs failure to produce
documents related to the alleged invention of the technology of the patents-in-suit, the
acquisition of the patents, and valuation of the patents. Plaintiff had asserted such documents
were privileged. Under the Cou1t’s scheduling order, the parties were not obligated to exchange
privilege logs until July 14, 2005. Defendants anticipated deposing the four named inventors,
the subsequent owner of the patents (Tucows) and Plaintiff before mid-July, and were concemed
about the potential impact mistaken claims of privilege could have on such depositions.
Therefore, Defendants requested that the Parties exchange privilege logs on May 13, 2005, and
have today's discovery conference to discuss Plaintiffs privilege claims.
On May 16, 2005, Plaintiff provided Defendants with a 474-page privilege log, alleging
2246 documents (not merely pages) are covered by one or more privileges. Many of Plaintiffs
withheld documents, however, do not appear to fall under a proper claim of privilege. For
example, Plaintiff has asserted privilege for the following classes of documents: (1)
communications by and between Infonautics, Tucows, BTG, and other parties; (2) documents
belonging to Infonautics/Tucows that have been disclosed to BTG prior to this litigation; (3)
emails and other documents that do not appear to have been sent by or to an attomey; and (4)
communications between BTG and some third party as well as documents created by third
Case 1:04-cv-01264-SLR Document 143 Filed 06/14/2005 Page 2 of 4
The Honorable Sue L. Robinson
June 14, 2005
Page 2
parties. The total number of documents withheld that fall under these categories is in the
neighborhood of 450 documents. Defendants maintain that these documents should be produced.
2. Netflix Interrogatories Nos. 9 and 10
Early in the case, BTG posed several interrogatories to Netflix, seeking facts in support
of Netflix’s laches and waiver defense. Netflix responded to BTG’s interrogatories, laying out
facts sufficient to sustain these defenses, most notably that BTG’s predecessors-in-interest
(Infonautics and Tucows) knew or reasonably should have known of Netflix’s alleged
infringement no later than May, 1999, when Netflix placed its first online advertisement. Netflix
then posed interrogatories No. 9 and l0 to BTG, asking BTG to state all facts it intends to rely
on to defeat Netflix’s laches and waiver defenses. On March 30, 2005, BTG responded, stating,
in part, "Upon information and belief BTG’s predecessors in interest never knew of Netflix’s
infringement? On April ll, 2005, Netflix amended its interrogatory responses, and provided
additional facts in support of the laches and waiver defenses. For example, Netflix stated that
Infonautics participated in Netflix’s Affiliates Program, at least as early as 2001. BTG contends
that Netflix infringes the ‘860 patent through its Affiliates Program. Netflix requested that BTG
amend its responses to interrogatories No. 9 and l0 in light of the additional information in
Netflix’s amended interrogatory responses. BTG refused.
Respectfitlly submitted,
Karen L. Pascale (#2903)
[email protected]
cc: All Counsel
Case 1:04-cv-01264-SLR Document 143 Filed 06/14/2005 Page 3 of 4
CERTIFICATE OF SERVICE
I hereby certify that on June 14, 2005, I caused the foregoing document 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
Asniav & Gianmas
222 Delaware Avenue, 17th Floor
Wilmington, DE 19801
[[email protected]]
Attorneys for Plaintmf BTG International, Inc.
John W. Shaw, Esquire
YouNG CONAWAY STARGATT & TAYLoR LLP
The Brandywine Building
1000 West Street, 17th Floor
P.O. Box 391
Wilmington, DE 19899-0391
[[email protected]]
Attorneys for Defendant Amazon. c0m, Inc. and Amazon Services, Inc.
Rodger D. Smith, Esquire
Momzis Nicnots Aizsnr & TUNNEL1.
1201 North Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[[email protected]]
Attorneys for Defendant Neg‘lix, Inc.
Steven J. Fineman, Esquire
RICHARDS LAYToN & FINGER, P.A.
One Rodney Square
P.O. Box 551
Wilmington, DE 19899
[[email protected]]
Attorneys for Defendant Barnesandn0ble.c0m, Inc.
I further certify that on June 14, 2005, I caused a copy of the foregoing document to be
served by hand on the above-listed counsel, and that a copy was served on the following non-
registered participants on the date and in the manner indicated:
Case 1:04-cv-01264-SLR Document 143 Filed 06/14/2005 Page 4 of 4
By E-mail on May 11, 2005
Niall A. MacLeod, Esquire
ROBINS, KAPLAN, MILLER & C11zEs1,LLP
2800 LaSalle Plaza
800 LaSalle Avenue
Minneapolis, MN 55402-2015
[[email protected]]
Attorneys for Plaintyf BTG International, Inc.
Kristin L. Cleveland, Esquire
KLARQUIST SPARKMAN LLP
One World Trade Center
121 S.W. Salmon Street, Suite 1600
Portland, OR 97204
[[email protected]]
Attorneys for Defendant Amaz0n.c0m, Inc. and Amazon Services, Inc.
Wendy J. Thurm, Esquire
KEKER & VAN NEST, LLP
710 Sansome Street
San Francisco, CA 94111
[[email protected]]
Attorneys for Defendant Neg‘lix, Inc.
William W. Flachsbart, Esquire
NIRO, SCAVONE, HALLER & Nino
181 West Madison, Suite 4600
Chicago, IL 60602
[[email protected]]
Attorneys for Defendant Barnesandncblecom, Inc.
Lawrence G. Kurland, Esquire
BRYAN CAVE LLP
1290 Avenue of the Americas
New York, NY 10104
[[email protected]]
Attcrneysfcr Defendant Barnesana'n0ble.c0m, Inc.
BOUCHARD MARGULES & FMEDLANDER, P.A.
Dated: June 14, 2005 /s/ Karen L. Pascale
David J. Margules (#2254)
Karen L. Pascale (#2903) [[email protected]]
222 Delaware Avenue, Suite 1400
Wilmington, Delaware 19801
(302) 573-3500
Attorneys for Defendant Overstock. cam, Inc.
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