Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-01258-SLR Document 117 Filed 10/07/2005 Page 1 ot 2
Mounts, NICHOLS, Ansar & TUNNELL
l20l Nonrrr MAkKn"r· Srkrrsr
PCO. Box 1347
WILMINGTON, DELAWARE l939‘}—l34·7
302 658 9200
Jamal}. Btunrnurnrn 302 658 3989 FAX
302 sis 7*291
302 #125 3012 FAX
jiirammr€1a@m¤at.e¤m October 7, 2005
BY ELECTRONIC FILING
The Honorable Sue L. Robinson
United States District Court
844 King Street
Wilmington, Delaware l9801
Re: Mclfesson information Solutions, LLC v. The TriZetto Group, Inc.,
Civil Action No. 04·l258—SLR
Dear Chief Judge Robinson:
This is in response to McKesson's October 4 letter brief arguing that TriZetto has waived
the attorneyeclient privilege and work product immunity for all information relating to the advice
that TriZetto has obtained from its trial counsel concerning the ’l64 Patent. The authorities cited
by McKesson do not support its position.
Unlike this case, the defendants in Convolve, Inc. v. Compaq Computer Corp., 224
F.R.D. 98 (2004), obtained opinions from counsel "[ajjier the filing ofthe original complaint"
la'. at 99 (emphasis added). This was one ofthe factors the court considered when it determined
that the defendants had waived privileged communications with trial counsel. [cl. at 104, n.5
("The tiling date rule is particularly unworkable for this case, since the opinions that triggered
the waiver were not obtained until after the suit commenced, meaning that evaluating the effect
of latenreceived contrary opinions on [defendants] state of mind would necessarily implicate the
post-tiling period"). In addition to being factually distinguishable, the court in Convolve
specifically rejected l\/lcKesson's contention that the waiver applies to work product created by
trial counsel. ld. at l06 ("Wliere there is no evidence that trial and opinion counsel have
conspired to create a 'sltam opinion' to gain an unfair advantage in litigation, production of the
un-communicated work product of trial counsel is unwarranted").
Beneficial Franchise Co., lnc. v. Bank One, NA., 205 F.R.lD. 212 (ND. lll), also does not
support the broad waiver that Mcliesson has requested. In Beneficial, the court held that the
waiver only applied to documents that "contradict or cast doubt on the opinions" that were
previously revealed. la'. at 218.; see also Bristol~Myers Squibb Co. v. Rhone—Poulenc Rorer,
Inc., 1999 U.S. Dist. LEXIS 8930 (S.D. NKY. June 14, 1999) (stating that the plaintiff was
entitled to opinions that were "inconsistent with the conclusions in the opinion letters" that were

Case 1:04-cv-01258-SLR Document 117 Filed 10/07/2005 Page 2 of 2
The Honorable Sue L. Robinson
October 7, 2005
Page 2
previously disclosed). ln Akem L.L. C. v. Mizuno Corp., 243 F. Supp. 2d 4l8 (M.D. N.C. 2003),
the defendants trial counsel themselves retained an attorney to provide the opinion and there was
never any direct contact by the opinion counsel with the defendants. Id. at 4l9. The court
specifically held under the circumstances present here, ”when the opinion counsel is independent
. . . the broader waiver of work product need not be e1nployed." Id. at 424.
ln any event, all of these cases cited by l\A[cKesson pre-date the Federal Circuits decision
in Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dorm Corp., 383 lF.3d 1337 (Fed. Cir.
2004), where the court overruled prior cases which had held that a patent defendants invocation
of the attorney—client—privilege or work product doctrine warranted an adverse inference as to
willful infringement. ln reaching its conclusion, the court cautioned against risking intrusion
upon "full communication and ultimately the public interest in encouraging open and
confidential relationships between client and attorney." Id. at 1344.
Thus, the better rule is that the waiver of the attorney-client privilege resulting from the
advice-of—connsel defense in patent litigation does not extend to postditigation communications
between the defendant and trial counsel who had no involvement in providing preditigation
advice. (See authorities cited in TriZetto's letter brief dated September 30, 2005).
if Mcliesson were correct, then the privilege for communications with trial counsel
would be waived in every case where an opinion was obtained prior to litigation. Here, TriZetto
is not relying on, and has not disclosed, any communications with trial counsel. The only basis
for the asserted waiver is that TriZetto's management is listening to and relying on trial counsel's
advice, which one could hope all companies do. That does waive any privilege.
Respectfully,
/s/ Jack B. Blumenfeld (#1014)
Jack B. Blumenfeld
JBB/bls
cc: Peter T. Dalleo, Clerk (By Hand)
Thomas J. Allingham, Esquire (By Hand)
Jeffrey G. Randall, Esquire (By Email)
Jeffrey T. Thomas, Esquire (By Email)