Free Remark - District Court of Delaware - Delaware

Case 1:04-cv-01199-SLR Document 453 Filed 08/10/2006 Page1 of 3
E-Mail Request for Emergency Relief
1. Case Number; 04 —cv-.1199 —SLR
2. Check the box that applies;
J Requesting a teleconference with the parties and the court
Requesting an in-person conference with the parties and the court
Requesting either of the above listed options at the court‘s determination
3. BRIEFLY describe the reason for this emergency request; _
On July 10, after the close of fact discovery and on the day reply briefs in support of
summary judgment were due, SRI intentionally produced a partially-redacted
invention disclosure form. The form was completed by the inventors of the
patents-in-suit, is addressed only to SRl's in-house counsel and patent office, and is
explicitly labeled "SRI confidential 8. privileged." As the Court recently held, an
invention disclosure form is covered by the attorney client privilege. SRI has waived
its privilege on this document by intentionally producing it. SRI must produce an
_unredacted copy. In addition, SRl’s privilege log reveals a limited number of other
contemporaneous communications regarding the same subject matter with counsel
to which Symantec is also entitled due to SRI’s waiver.
*Any text added beyond the limits of this space will be disregarded by the court.
4. Name of opposing counsel contacted about this request: Todd Miller
5. Response of opposing counsel to this request;
SRI claims a portion of the form was disclosed to the government without explaining
whether the entire document was disclosed. SRI refuses to remove the redaction or
provide information about the document such as its custodian.
6. Name of local counsel making this request; Richard Herrmann
7. Today's Date; August 8, 2006
For court use only:
I:] A teleconference will be held on to be coordinated and
initiated by
I:] An in-person discovery conference will be held on:
M Otheli ssa Armwtcrisb

Case 1:04-cv—01199—SLR Document 453 Filed 08/10/2006 Page 2 of 3
Consistent with the reasoning of the Third Circuit in
Westinghouse Electric Corp. v. The Republic of the Philippines,
951 F.2d 1414 (3d Cir. 1991), an IDF created by SRI for the
government is not a privileged document and is appropriately
disclosed to Symantec. Based on SRI's representation that the
redacted portions of the IDF were not disclosed to the
government, the court concludes that there has been no partial
waiver. Sp; ig; at 1426 n.12. Therefore, Symantec’s request for
further production is denied.
2.

Case 1:04-cv-01199-SLB Document 453 Filed 08/10/2006 Page 3 of 3
Opposing Counsel's Response to E-Mail Request for Emergency Relief
1. Case Number: 04 -cv-,1199 -SLR
2. BRIEFLY state your response to the emergency request made by opposing counsel:
Defendants were provided with documentary proof that the Invention Disclosure
Form ("lDF") is not privileged because it was created for the U.S. Government, at the
behest of the U.S. Government, and provided to the U.S. Government pursuant to
th terms of a contract between SRI and the Government. Because the IDF is not
privileged, there can be no waiver. The version of the IDF produced to Defendants
was redacted because it contains a privileged e-mail — a fact made known to
Defendants -- from SRI in-house counsel to SRI's corporate secretary and another
in-house attorney. A version of the IDF provided to the U.S. Government without th
privileged cover email communication could not be located by SRl—another fact
made known to Defendants. There is no legitimate dispute, a fact that can be easily
confirmed by in camera review if the Court so desires.
*Any text added to beyond the limits of this space will be disregarded by the court.
3. Name of local counsel submitting this response: John F. Horvath M g
4. Today's Date: August 9, 2006