Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-01258-SLR Document 107 Filed O9/30/2005 Page 1 012
Mounts, Nrorrors, Ansar gc TUNNELL
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JACK BLUMENFELD FAX
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392 *25 3012 FM September 30, 2005
[email protected]
BY ELECTRONIC FILING
The Honorable Sue L. Robinson
United States District Court
844 King Street
Wilmington, Delaware l980l
Re: Mclfessorz Information Solutions, LLC v. The TriZetto Group, Inc.,
Civil Action No. O4-1258-SLR
Dear Chief Judge Robinson:
TriZetto has produced a pre—litigation opinion from outside counsel on its estoppel and
laches defenses. TriZetto has also produced all pre—litigation communications and work product
that related to the subject matter of the opinion or to the ‘ 164 patent. TriZetto did not produce
post-litigation communications with trial counsel}
Your Honor’s September 20, 2005 Order stated that TriZetto’s "post—litigation privileged
materials need not be disclosed? (D,}. 99.) At the September 22 discovery conference, counsel
for McKesson argued, based solely on the assertion that a TriZetto witnesses — Anthony
Bellomo — gave the rather unremarkable testimony that he was relying on advice from trial
counsel, that the privilege for all communications between TriZetto and its trial counsel has been
waived. Mr. Bellomcfs testimony was the word "yes” when he was asked whether he was
relying on advice of trial counsel. That is precisely what one would expect a client to say when
asked whether he or she was relying on the advice of counsel. TriZetto is not asserting advice of
trial counsel as a defense to willfulness in this case and has not disclosed any communications
with trial counsel. One would hope that all parties to litigation would rely on advice of their trial
counsel; that alone does not constitute a waiver. The Court’s previous ruling was correct and
there is no basis to disturb it.
i On the first day of the deposition of Craig Luftig, Senior Director of Product Development
Management at TriZet1;o, TriZetto’s counsei permitted Mr. Luitig to answer many questions
calling for pre-iitigation privileged information, but instructed Mr. Luttig not to answer a few
questions that arguably exceeded the scope of "t`riZetto’s privilege waiver. TriZetto’s counsel
agreed that the objectionable questions could be renewed on the second day of deposition.
Accordingly, McKesson was entitled on the second day of Mr. Luftig’s deposition, which
occurred on September 21, 2005, to ask the questions to which TriZetto had previously objected.
McKesson’s counsel did not ask Mr. Luftig any such questions on the second day.

Case 1:O4—cv-O1258—SLFl Document 107 Filed O9/30/2005 Page 2 of 2
Honorable Sue L. Robinson
September 30, 2005
Page 2
Numerous courts have held that the waiver of the attorney··client privilege resulting from
the advice-of-counsel defense in patent litigation does not extend to post-litigation
communications between the defendant and trial counsel which had no involvement in providing
preditigation advice. See Collaboration Props., Inc. v. Polycom, Inc., 224 F.R.D. 473, 476-77
(ND. Cal. 2004); Sharper Image Corp. v. Honeywell Int? Inc., 222 F.R.D. 62}, 643-46 (ND.
Cal. 2004); Motorola, Inc. v. Vosi Techs., Inc., 2002 WL 1917256, at *2 (ND. lll. Aug. l9,
2002) ("The willfulness or non-willfulness of [defendant]’s conduct logically depends upon the
advice it received before suit was tiled"); see also Allergari Inc. v. Pharmacia Corp., 2002 WL
1268047, at *2 (D. Del. May 17, 2002) ("the alleged willful infringer [should] 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").
The reasons for not extending the waiver ofthe attorney-client privilege to post-litigation
communications between a defendant and trial counsel are obvious: “Unless any waiver of the
attorney—client privilege respecting communications with litigation counsel is circumscribed so
as to not to extend to litigation—related communications with trial counsel, [fn] it is difficult to
imagine how any frank communication between the client and litigation counsel on the subject of
infringement could be shielded from disclosure? Collaboration Props., 224 F.R.D. at 477. The
limitation on the waiver applies even where, as here, “the plaintiff contends the willfulness of the
infringement is continuing throughout the litigation? la'. “Otherwise every communication
about infringement between client and litigation counsel would be fair game." Ia'. Thus, "{a]
defendant who understood that invoking the advice of counsel defense would disable him from
communicating in confidence with his trial counsel about matters critical to liability would feel
great pressure to forego the right (conferred on him by patent law) to defend himself on this
important ground." Sharper Image, 222 ERB. at 643.
The Federal Circuit’s recent decision in Knorr—Bremse Systeme F uer Nuajfahrzeuge
GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004), supports the same conclusion. There, the
Court overturned prior cases which had held that a patent defendant’s invocation of the attorney-
client-privilege or work product doctrine warranted an adverse inference as to willful
infringement. In 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? la'. at l344.
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 Fax)
J eftrey T. Thomas, Esquire (By Fax)
4854ss