Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01258-SLR Document 88 Filed 09/14/2005 Page 1 of 3
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BY ELECTRONIC FILING
The Honorable Sue L. Robinson
United States District Court for the
District of Delaware
844 N- King Street
Wilmington, Delaware 19801
RE: McKe.s·son Information Solutions, LLC v. The T riZetto
Grou Inc. CA. No. 04-1258-SLR
Dear Chief Judge Robinson:
In light of the numerous depositions scheduled during the next two weeks,
determining the proper scope of TriZetto's waiver is paramount to McKesson's
ability to discover key information from the deponents regarding the reasonableness
of TriZetto’s opinion of counsel defense. The parties do not dispute that TriZetto’s
reliance on opinion of counsel has waived the attorney-client privilege or that this
waiver extends to the subject matter of the advice it received. However, as
highlighted in TriZetto’s letter to the Court (D.I. 86), TriZetto has blocked nearly all
discovery necessary for McKesson and the Court to assess the reasonableness of
TriZetto’s reliance—if any——on the opinion letters by applying an unduly narrow
interpretation of the scope of TriZetto’s waiver.
TriZetto has improperly foreclosed any discovery into the subject matter of
the opinions it received beyond direct communications with its opinion counsel and
any other communications referencing its opinion counsel. See, e. g., D.I. 86 ("All of
TriZetto's communications with [the Blakely Sokoloff firm and the Stradling Yocca
firm] regarding the '164 Patent, regardless ofthe date, have been produced. In
addition, internal TriZetto documents that reference those communications or relate
to the same subject matter have been produced."); Sept. 9, 2005 Depo. Tr. of Craig
Luftig at 159:12-24 ("As to any other questions, including general discussions about

Case 1:04-cv-01258-SLR Document 88 Filed O9/14/2005 Page 2 ot 3
The Honorable Sue L. Robinson
September 14, 2005
Page 2
infringements [sic] invalidity or anything else related to this case with Gibson Dumi
& Crutcher lawyers or with the in-house counsel at Trizetto we're asserting privilege
as to that."). As illustrated in the table attached as Exhibit A, TriZetto has refused to
permit any examination regarding the defenses upon which it sought advice opinions
— i.e., TriZetto’s defenses ~ other than communications with or that reference their
opinion counsel. Such privilege objections are plainly improper in view of
TriZetto’s waiver. In addition, the enclosed highlighted copy of TriZetto’s privilege
log identifies numerous documents relating the current patent dispute—the only
dispute between McKesson and TriZetto—that should have been produced nearly a
month ago. (Ex. B).
TriZetto’s assertion of an opinion of counsel defense to willful infringement
placed the reasonableness of TriZetto’s reliance on the opinions it received squarely
at issue and beyond any claim of privilege. To assess this reasonableness, McKesson
is entitled to discovery into TriZetto’s knowledge and reliance regarding the defenses
addressed by its opinion counsel, not just information relating to the opinion letters
themselves. It is for this reason that the Coun; has explained that a defendant relying
on the opinion of counsel must "disclose all ofthe information it possessed prior to
or at the time it obtained opinions of counsel as to the subject matters discussed in
such opinions." Allergan Inc. v. Pharmacia Corp., C.A. No. 01-141-SLR, 2002
U.S. Dist. Lexis 19811 at *7 (D. Del. May 17, 2003) (emphasis added). Contrary to
the position TriZetto continues to take, the relevant subject matter is not limited to
the process of preparing the opinions, but rather extends to its knowledge and
information relating to the defenses discussed in those opinions. Information
relating to, and potentially undermining, the defenses addressed by TriZetto’s
opinion counsel is no less relevant to the reasonableness of TriZetto’s reliance on
such advice simply because it was not communicated to or does not expressly
reference TriZetto’s opinion counsel.
Moreover, TriZetto’s statement to the Court that "the waiver ofthe privilege
extends . .. to the subject matter of counsel's advice — here the validity of the 'I64
Patent and TriZetto's laches and estoppel defenses," fails to mention that TriZetto
sought a second opinion on the defenses of noninfringement and invalidity of the _
‘164 patent. See Nov. 12, 2003 E—mail from Eric King to Jim Sullivan (TRZ837269-
271). Contrary to TriZetto’s attempt to selectively exclude categories of
information from discovery, TriZetto’s waiver extends to each of the defenses upon
which it obtained advice, not just those it chooses.
Thus, to ensure that McKesson receives all of the documents necessary to
fully and fairly examine TriZetto’s witnesses at the upcoming depositions and that its
examination is not improperly limited by objections over a privilege that has been

Case 1:04-cv-01258-SLR Document 88 Filed O9/14/2005 Page 3 of 3
The Honorable Sue L. Robinson
September 14, 2005
Page 3
waived, McKesson respectfully requests that the Court address this issue prior to
referral of discovery matters to a Special Master.
submitted,
Michael A. Barlow
cc: Jeffrey G. Randall (by e-mail)
Jack B. Blumenfeld, Esq. (by e-filing)
427607.01-Wilmington Server IA - MSW