Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-01258-SLR Document 86 Filed O9/12/2005 Page 1 ot 2
Moaars, Nrorrors, A.asH’r Sr. TLTNNELL
NORTH MARKET STREET
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WILMINGTON, Dnmwanr 19899-134-7
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Jacic B. B1.ur—11zNrr;1.n 302 658 3989 FAX
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jb1umemW:][email protected] S€p[€]`[]b@[` 12,
BY ELECTRONIC FILING
The Honorable Sue L. Robinson
United States District Court
844 King Street
Wilmington, Delaware 19801
Re: Mr:Kess·orz Iryformadon Solutions, LLC v. Tina Tr.iZerro Group, Inc.
Civilzlction No. 04-1'258-SLR
Dear Chief Judge Robinson:
As discussed during the conference last Thursday, I am writing to articulate the
standards that TriZetto used in defining the scope of the waiver resulting from its laches,
estoppel and willfulness defenses.
On August 24, 2005, Trizetto produced the pre-litigation opinions of outside
counsel it had obtained with regard to thc'l64 Patent. Since then, TriZetto has produced aff of
pre-litigation communications with its attorneys concerning the 'l64 Patent and all pre-litigation
documents in its possession, custody or control that relate to the subject matter of the opinions
rendered by counsel with regard to the 'l 64 Patent.
The opinions and communications that TriZetto produced were to or iiom two
law firms -- the Blakely Sokoloff firm and the Stradling Yocca firm. A N of TriZetto's
communications with those firms regarding the *164 Patent, regardless of the date, have been
produced. In addition, internal TriZetto documents that reference those communications or
relate to the same subject matter have been produced.
The only documents related to communications with the Blakely Sokoloff firm or
the Stradling Yocca firm that were not produced do not pertain to the *164 Patent. For example,
the Stradling Yocca firm represented TriZetto in connection with its acquisition of a company
named Erisco, and privileged documents related to that acquisition were not produced. None of
those docurnents reference or relate in any way to the 'l64 Patent.

Case 1:04-cv-01258-SLR Document 86 Filed O9/12/2005 Page 2 of 2
The Honorable Sue L. Robinson
September 12, 2005
Page 2
The test that TriZetto used in determining the scope of the waiver was entirely
appropriate. When relying on advise of counsel as a defense in a patent infringement action, the
waiver of the privilege extends to documents relating to the subject matter of eounsel's advice —
here the validity of the '164 Patent and T1iZetto’s laches and estoppel defenses. See Allergan
Inc. v. Pharmacia Corp., 2002 WL 1268047, at *2 (D. Del. May 17, 2002) ("the alleged willful
infringer [should] disclose all of the information it possessed prior to or at the time it obtained
opinions of counsel as to the subject matters discussed in such opinions"); see also Thorn EMI
North Am., Inc. v. Il/Iicron Tech., Inc., 837 F. Supp. 616, 621 (D. Del. 1993) ("[d]ocuments and
testimony relating to [counse1's] advice are relevant in that they are probative of the alleged
infringer's intent"). Further, privileged documents post-dating the liling of this lawsuit are not
discoverable under the circumstances.] "The willfulness or non—wil1fulness of [defendant]*s
conduct logically depends upon the advice it received bfore suit was tiled. Moreover, if a
party's reliance on advice of counsel to defend a claim of willful infringement resulted, without
more, in a waiver of the attorney-client and work-product privileges pertaining to the opinions of
its trial counsel, it would inappropriately cliill communications between trial counsel and client
and would impair trial eounsel's ability to give the client candid advice regarding the merits of
the case." Motorola, Lac. v. Vosi Techs., Inc., 2002 WL 1917256, at *2 (N.D. Ill. Aug. 19, 2002).
Respectfully,
/S/Jack B. Blamergfeld (#IOI4)
Jack B. Blumenfeld (#1014)
JBBfbs
cc: Peter T. Dalleo, Clerk (By Hand)
Thomas J. Allingham, Esquire (By Hand)
Jeffrey G. Randall, Esquire (By Fax)
Jeffrey T. Thomas, Esquire (By Fax)
aszsae
l Indeed, the only time discovery of post-litigation privileged materials may be appropriate
is where the accused infringer retains as trial counsel the same attorneys who rendered
the opinions relied on as a defense. See Sharper Image Corp. v. I·Ior1eyweIlIrire:·:z., Inc.,
222 F.R.D. 621, 643-44 (ND. Cal. 2004).