I :__ "Hansen. David" T0 [email protected]
~,» _» 11/11/2005 01253 AM Jeffrey T."
BIumenfeId"
bcc
. Subject McKesson Information Solutions LLC v. The TriZetto Group,
Inc., C.A. No. O4-1258 (SLR)
Dear Chief Judge Robinson:
McKesson respectfully requests that Your Honor include the following two issues in the order
you are preparing from our November 7, 2005 hearing. We have included a Proposed Order for
your convenience.
First , we recognize that Your Honor has a busy trial schedule, which can fill up quickly.
Therefore, we ask Your Honor to schedule the court trial on the equitable issues of laches,
estoppel, and inequitable conduct and the jury trial on prior art issues as soon as possible
following the infringement, willful infringement, and damages trial scheduled for April 17, 2006.
Second , we request that you refer to the Special Master the discrete issue of whether TriZetto
should be permitted to rely on the two new prior art references and the AMS prior art that were
discussed at the November 7, 2005 hearing. We understand that both sides have to complete
expert discovery and preparation of all issues, including this newly disclosed prior art, pursuant
to the Court's February 18, 2005 schedule. However, a prompt recommendation from the Special
Master on this discrete prior art issue could avoid further unnecessary and burdensome work by
Your Honor and the parties.
Respectfully submitted,
Jeffrey G. Randall
Counsel for Plaintiff
[PROPOSED] ORDER
IT IS ORDERED THAT:
1. The Court schedule entered and revised on February 18, 2005 is still in effect and
the parties are directed to complete trial preparation with regard to all issues as set forth in that
schedule.
2. At Defendant's election, this case has been bifurcated for trial only.
3. On April 17, 2006, the Court will conduct a jury trial on infringement, willful
infringement and damages.
4. On , the Court will hold a court trial on the equitable issues of laches,
estoppel, and inequitable conduct.
5. On , the Court will hold a jury trial on prior art issues.
6. With regard the new prior art and prior use first raised by Defendant in its expert
reports served on October 24, 2005, (1) Davis, Buchanan, Shortliffe, Production Rules as a
Representation for a Knowledge-Based Consultant Program, Artificial Intelligence, 8:15-45,
1977; (2) vanMelle, W., A domain-independent production rule system for consultation
programs, in Proc. IJACAI-79, 923-925, Tokyo, August 1979; and (3) the Advanced MedLogic
Case 1:04-cv-01258-SLR Document 188 Filed 11/22/2005 Page 2 of 4
System, the Court refers to the Special Master the issue of determining whether Defendant
should be precluded from relying on those references given the Court's previous scheduling
deadlines.
Dated:
UNITED STATES DISTRICT JUDGE
To ensure compliance with Treasury Department regulations, we advise you that, unless
otherwise expressly indicated, any federal tax advice contained in this message was not intended
or written to be used, and cannot be used, for the purpose of (i) avoiding tax-related penalties
under the Intemal Revenue Code or applicable state or local tax law provisions or (ii) promoting,
marketing or recommending to another party any tax-related matters addressed herein.
****************************************************
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Further information about the finn, a list of the Partners and their professional qualifications will
be provided upon request.
****************************************************
Case 1:04-cv-01258-SLB Document 188 Filed 11/22/2005 Page 3 of 4
Opposing Counsel's Response to E-Mail Request for Emergency Relief
1. Case Number: 04 —cv— 1258 —SLR
2. BRIEFLY state your response to the emergency request made by opposing counsel:
This is TriZetto's response to McKesson's November 11 1:53 a.m. email, raising
issues neither discussed with us nor submitted in the approved format. McKesson
seeks to reverse the decisions Your Honor made at that hearing -— that (1) aside from
the completion of expert discovery, the bifurcated invalidity issues have been stayed
pending further Order of the Court and (2) issues relating to three prior art references
would not be referred to the Special Master (Tr. 36-42). Now, however, McKesson
seeks an Order that would direct the parties "to complete trial preparation with regard
to all issues" on the schedule set in the Scheduling Order, as well as a reference of
the prior art issues to the Special Master. In short, without acknowledging that it is
doing so, McKesson simply asks Your Honor to reverse your November 7 rulings.
There is one matter on which the parties may agree —- that laches, which is a
damages issue, should proceed as part of the damages case. TriZetto intends to
seek summarv iuddment Iimifino damages based on Iaches.
*Any text added to beyond the limits of this space will be disregarded by the court.
3. Name of local counsel submitting this response: Jack Blumenfeld
4. Today’s Date: November 14, 2005
Case 1:04-cv-01258-SLR Document 188 Filed 11/22/2005 Page 4 of 4
E-Mail Request for Emergency Relief
1. Case Number: 04 -cv- 1258 -SLR
2. Check the box that applies:
»/ Requesting a teleconference with the parties and the court
III Requesting an in-person conference with the parties and the court
[I Requesting either of the above listed options at the court’s determination
3. BRIEFLY describe the reason for this emergency request:
On November 7, the Court confirmed that validity is bifurcated for a trial at some date
in the future and, except for the completion of expert discovery, stayed motion
practice and other proceedings related to validity. (Tr. 36-42). With the exception of
one TriZetto invalidity expert, those depositions will be completed by November 30. »
TriZetto has offered to produce that expert on December 5. McKesson, however, has
demanded an earlier deposition so that it can file summaryjudgment and Daubert
motions on validity on December 15, saying that "the Court has not altered the
schedule in this case...in any way that would suggest that any part of this case is
stayed." We believe this is directly contrary to Your Honor‘s |\lovember 7 rulings
(e.g., Tr. 42: "motion practice on those expert reports is stayed until I open up the
case on validity again"). Thus, we ask the Court to reconfirm that once expert
discovery is complete, there will be no further proceedings on validity issues at this
time. and to nrant a 3-dav extension for the final exnert denosition.
*Any text added to beyond the limits of this space will be disregarded by the court.
4. Name of opposing counsel contacted about this request: Jeff Randall; Bernard Shek
5. Response of opposing counsel to this request:
As set forth above, NlcKesson takes the position that proceedings on validity,
including motion practice, have not been stayed, and will not agree to a 3-day
extension for the final expert deposition.
6. Name of local counsel making this request: Jack Blumenfeld
7. Today's Date: November 21, 2005
For court use only:
lil A teleconference will be held on to be coordinated and
initiated by
III An in-person discovery conference will be held on:
E Other;
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