Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-01264-SLR Document 128 Filed O4/20/2005 Page 1 of 2
Monnts, Ntorions, Atzstrr 8; TUNN1-21,.1..
1201 N0nTt—i MARKET STREET
P.O. Box i347
WILMINGTON, Dunawniin l9899—l34t7
302 653 92GG
302 658 3989 Fas;
Rendez D. SMETH
302 575 7205 _
sez iss sms rn APM 2G= 2005
rsmith@mnat . com
By Electronic Filing
The Honorable Sue L. Robinson
United States District Court
844 North King Street
Wilmington, DE l980l
RE: BTG 1'ntermulonal, Inc. v. Amnzoiwconi, [nc.,
D. Del., C.A. No. 04-1264-SLR
Dear Chief Judge Robinson:
I ain writing on behalf of defendants Aniazoncoin, Inc., Amazon Services, [nc.,
Netflix, Inc., Barnesandnolzileeom inc. and Overstoclccom, Inc., in connection with the
discovery conference scheduled for 4:30 p.ni. today. There are several issues defendants wish to
raise. Counsel has previously raised each of these issues with plaintiffs counsel.
l . interrogatories.
Although plaintiff BTG International lnc. ("BTG") has responded to
interrogatories, defendants believe that there are a number of deficiencies in those responses.
Specitically, BTG has failed to state definitively: (a) which products allegedly infringe which
claims; (h) the specific, alleged dates of conception and reduction to practice of the alleged
invention; (c) the alleged inventive contributions of each alleged inventor, and (d) the facts
surrounding the first use/sale/display ofthe technology described in the asserted patent.
2. Tucows/Last Day to Amend/Add Parties.
Defendants would like to discuss the May l, 2005 deadline for motions to join
other parties and amend the pleadings. BTG maintains that it is the sole owner of the patents in
suit. It is defendants’ understanding that BTG acquired the asserted patents from Tucows, which
had merged with lnfonautics, the entity that originally assigned the patents. After reviewing the
agreement between BTG and Tucows (which is also represented by Rohins Kaplan, in this
matter), defendants are concemed that Tucows may need to be added to the lawsuit. However,
additional discovery is required. Specifically, BTG should supplement its production, and

Case 1:04-cv-01264-SLR Document 128 Filed O4/20/2005 Page 2 ot 2
The Honorable Sue L. Robinson
April 20, 2005
Page 2
Tucows should comply fully with the subpoena with which it was served. Under the
circumstances, defendants believe it would be prudent to move back by approximately six weeks
the existing deadline for motions to join other parties and amend the pleadings.
3. Documen.ts/Privi.lege.
BTG has produced very few documents in certain areas, such as the alleged
invention ofthe technology described in the asserted patents, the acquisition of the patents, and
valuation of the _patents. BTG has stated that it has produced all non-privileged documents.
However, the parties have a dispute as to the proper assertion. of privilege. BTG has informed
defendants that it does have documents that it is withholding as privileged because it maintains
that the Infouautics!Tucows privilege was transferred to BTG. lt is our understanding that BTG
acquired the asserted patents from Tucows, but that it did not acquire any other business assets.
Defendants maintain that such documents should be produced because there is no transfer of
privilege where there is a mere patent assignment (rather than a transfer of the business).
4. Protective Order.
Another unresolved issue is the protective order. The parties have been
negotiating for several months, but have not reached a final agreement. The primary
disagreement pertains to the documents to which in—house counsel will have access. Both BTG
and defendants have submitted proposals to the Court.
Respectfully,
I _. - R
` Rod l). Smith
ec: Steven J. Balick, Esquire (By Electronic Filing)
John W. Shaw, Esquire (By Electronic Filing)
Steven J. Fineman, Esquire (By Electronic Filing)
Karen L. Pascale, Esquire (By Electronic Filing)