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Case 1:04-cv-01258-SLR Document 130 Filed 10/12/2005 Page 1 of 3
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October 7,- 2005 Moscow
Public Version: October 12., 2005 MPZNQ?
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Byglecjronic Filing _
The lélo-notable Sue L. Robinson
United States District Court for the District of Delaware `
844 North King Street
Wilmington, Delaware 19801 .·
I RE: McKesson Information Solutions LLC v. The TriZett0 Group, Inc,
C.A. No. 04-1258 (SLR) (D. Del.)
Dear Chief udge Robinson: (
_ This is in response to TriZett0's September 30 letter arguing against extending the broad
waiver resulting from TriZetto's decision to waive the attorney-client privilege and work product
‘ protection to cover information relating to the advice TriZetto received from trial counsel that it is
admittedly relying on in connection with its decision to co.ntinue infringing McKesson's patent.
(D1. 107). _ A . I
First, it is undisputed that TriZett0 _is actually relying on trial counsel's advice in
i:onn_ection with its decision to continue infringing during the course of this case. .TriZetto
disingenuously argues that its Executive Vice President, Mr. Bellomo, gave "rather
unremariiable testimony" when he answered "yes" when asked "whether he was relying on
advice of trial counsel." TriZetto completely ignores that it limited McKesson's questioning of
Mr. Bellomo on this point to a "yes" or-i"no" question, and that the "advice of trial counsel"
`l`riZetto is relying on in this instance is at the root of T riZetto‘s decision to continue infringing
l\/lcl(esson‘s patent. See Exhibit A to McKesson"s Oct. 4, 2005 Letter Concerning Waiver (D.I.
113). _
I BEDACTED E

_ Case 1:04-cv-01258-SLR Document 130 Filed 10/12/2005 Page 2 of 3
The Honorable Sue L. Robinson _ 0
_ October 7, 2005
Page 2
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0 Among other things, it squarely distinguishes this case from the cases relied upon
by TriZetto, none of which involved testimony by the irrfringer that it was relying on trial
c0unsel's advice to support its decision to infringe during the course of the litigation. As noted in
Sharper Image Corp. v. Honeywell Int'! Inc., 222 F.R.D. 62l (N.D. Cal. 2004), one of the _
decisions relied upon by TriZetto, "decisions about the scope" ofthe waiver "must be case and
circumstance specific" and "analytically material differences in circumstances may well justify
different outcomes .... " Id. at 625. TriZetto's specific reliance on trial counsel's advice in .
continuing its infringement is just such an "asnalytically material difference in circumstances"
that justifies extending the scope of TriZetto's waiver to allow McKesson a fair opportunity to
detennine the reasonableness of TriZetto's alleged reliance on that advice. _
The cases cited by TriZetto are also distinguishable on other grounds. For example, in _
Sharper Image, the court was concerned that_the broad waiver could be used to allow the patent
owner to gain unfair advance knowledge of opposing counsel‘s claim constructions. See 222 .
F.R.D. at 636-37. Here, the parties have already exchanged their claim constructions. In .
addition, the "primary thrust" ofthe patent. owner's willfulness claim in Sharper Image involved -
the infiinger‘s pre—litigation decision to market the product in the first place. Id. at 645. In
contrast, McKesson's willfulness claim involves not only the reasonableness--of its supposed
reliance on its pre-litigation opinion counsel's advice, but also the reasonableness of TriZetto's -
continued infringement during the litigation, particularly given the testimony by TriZetto's
‘ executives and other employees, as well as its customers, that its products infringe McKesson's
patent.] g
Finalhz, TriZetto’s reliance on Knorr—Bremse Systeme Faer Nutzfahrzeuge GmbH v.
Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) is misplaced. Although the Federal Circuit in
Knorr-Bremse cautioned against intruding on the attorney-client relationship, this cautionary
statement was made to protect the confidentiality of that relationship where the accused infringer
I Motorola, Inc. v. Vosi Techs., Inc., C.A. No. 01 C 4182, 2002 U.S. Dist. LEXIS 15655
(N .D. lll. Aug. 19, 2002) (Ex. B), also cited by T1iZetto, incorrectly ignored the admittedly-
continuing nature of willful infringement in holding that "[t]he willfulness or non—willfulness of
Motorola's conduct logically depends upon the advice it received before suit was filed." The `
Collaboration Props., Inc. v. Polycom, Inc., 224 F.R.D. 621 (N.D. Cal. 2004), decision simply
relied on the Sharper Image decision and expressed concern about "every communication"
between the infringer and trial counsel being "fair game" for discovery. Here, l\/lcKesson only
seeks information provided by trial counsel that contradict or cast doubt on the supposed
infringer's reasonableness in continuing the infringement, and Mcliesson has suggested that the
Special Master withhold from production information concerning trial counsel's litigation
strategy.

Case 1:04-cv-01258-SLR Document 130 Filed 10/12/2005 Page 3 of 3
The Honorable Sue L. Robinson
October 7, 2005
Page 3
has chosen g to waive privilege in defending against a claim of willful infringement. Knorr-
Bremse did not address the situation presented here, i.e., the scope of the waiver when the
infringer chooses to continue its infringement based on its attomeys‘ advice.
In the recent post-Knorr—Bremse decision in Intex Recreation Corp. v. Memlast, SA, C.A.
No. 01-1213, 2005 U.S. Dist. LEXIS 10149 (D.D.C. Mar. 2, 2005) (Ex. C), District Judge Bates
considered the "divided" federal court decisions concerning a "temporal limitation on an
otherwise broad waiver of attorney-client privilege," and concluded that: `
a "middle ground" is the most appropriate approach to this issue, under which waiver
extends only to those trial counsel work product materials that have been
communicated to the client and "contained conclusions or advice that contradict or
cast doubt on the earlier opinions." This approach accommodates both the concern
for fairness that drives the broad waiver doctrine and the well-recognized high level
of protection generally accorded trial counsel opinion work product. Hence, any
otherwise privileged documents or other information generated by [the infringer] or
its counsel [after the opinion letters] (including post—suit materials), and relating to
the subject matter of those opinion letters, must be produced if the documents were
communicated to [the infringer] and if they question or contradict in any way the -
competence or validity of the opinions rendered. Only inthis way can fairness ·be
- ensured by requiring [the infiinger] to disclose not only the opinions relied upon q -
· - through invocation of the advice of counsel defense but also any damaging or I .
contradictory information regardingithose opinions. · .
2005 U.S. Dist. LEXIS 10149, at *15 (citations and footnote omitted).2 ° ·
For the reasons stated herein, and in McKesson's October 4 letter addressing this issue
(D.I. 113), McKesson respectfully requests that Your Honor adopt the "middle ground" set forth
in Intex Recreation and order TriZetto to provide the Special Master with all documents or other
information generated by TriZetto or its counsel since the filing of this lawsuit relating to
TriZetto's noninfiingement, invalidity, laches and estoppel defenses, so that the Special Master
can produce to McKesson all such documents and other information that call into question or
contradict in any way the competence or validity of the pre—litigation advice TriZetto received on
those issues. I
Michael A. Barlow (#3928)
cc: Jack B. Blumenfeld, Esq. (by e—filing)
Jeffrey T. Thomas, Esq. (by e—mail)
2 Judge Bates chose this "middle ground," rather than the broader waiver urged by the
patent owner, even though trial counsel also provided the pre—1awsuit opinion. See 2005 U.S.
Dist. LEXIS 10149, at *16. `