Free Memorandum and Order - District Court of Delaware - Delaware

Case 1:04-cv—01258—SLR Document 99 Filed O9/20/2005 Page1 of4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
MCKESSON INFORMATION, )
Plaintiff, g
v. i Civ. No. 04-1258-SLR
TRIZETTO GROUP, INC., i
Defendant. i
MEMORANDUM ORDER
At Wilmington this 20m day of September, 2005, having
reviewed the various discovery disputes identified by the
parties;
IT IS ORDERED that:
1. Claim construction. Defendant asserts that plaintiff’s
claim construction is neither adequate nor helpful in its use of
the language “software capable of". In order for this language
to pass muster under Federal Circuit precedent, the specification
must disclose “software” as the corresponding structure that
performs the specific function in a means—plus—function claim
limitation. Moreover, the “software” must either be specifically
described or identified as “software” known to those of skill in
the art. See Medical Instrumentation and Diagnostics Corp. v.
Elekta AB, 344 F.3d 1205, 1211-12 (Fed. Cir. 2003). See alsg

Case 1:04-cv—O1258—SLR Document 99 Filed O9/20/2005 Page 2 of 4
Harris Corp. v. Ericsson, Inc., 417 F.3d 1241, 1253 (Fed. Cir.
2005) (“A computer-implemented means-plus-function term is
limited to the corresponding structure disclosed in the
specification and equivalents thereof, and the corresponding
structure is the algorithm.”). Therefore, plaintiff must
supplement its claim construction by identifying those portions
of the specification that disclose the correspondence between the
software (the structure) and the function disclosed by each claim
limitation, as well as the specific algorithm disclosed in the
specification, or where it is disclosed (or otherwise inferred)
that the algorithm/software is known to those of skill in the
art.
2. with respect to claim limitations that are not construed
by one or both parties during this stage of the proceedings, I
will not preclude further submissions by the parties if I find
such to be of help.
3. Availability of key witnesses and late disclosure of
prior art and third party references. An in-person discovery
conference with respect to these issues shall be held on
Thursday, September 22, 2005 at 2:00 p.m. I expect defendant to
be prepared to demonstrate how discovery can be completed
consistent with the scheduling order or, if it cannot be
completed timely, why defendant should not be precluded from
presenting such evidence at trial.
K

Case 1:04-cv—O1258—SLR Document 99 Filed O9/20/2005 Page 3 of 4
4. Waiver of privilege vis a vis defendant’s willfulness
defense. As I’ve explained in the past, see eggg, Allergan, Inc.
v. Pharmacia Corp., 2002 WL 1268047 (D. Del. 2002), once an
alleged infringer relies on the opinion of counsel as a defense
to the charge of willful infringement in one of my cases, the
alleged infringer must disclose to the patentee “all of the
information it possessed prior to or at the time it obtained
opinions of counsel as to the subject matters discussed in the
such opinions.” ld; at 2. The scope of the waiver is not
limited to what was communicated to or from counsel, but extends
to all information possessed by the alleged infringer that
relates to the subject matters of the opinion letters.
Defendant’s counsel has asserted that defendant has followed that
mandate. (D.I. 86, HQ 2-3) I agree with defendant that post-
litigation privileged materials need not be disclosed.
5. Privilege asserted at depositions. The scope of the
attorney—client privilege asserted at depositions should be
consistent with that approved by the Special Master in his
document review. Therefore, to the extent that defendant has
exceeded the scope of the privilege ultimately determined to be
appropriate by the Special Master, defendant shall be responsible
for the costs incurred by plaintiff in re—deposing any witnesses
who failed to answer questions based on the assertion of
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privilege.
United gtgtgs District Judge
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