Free Memorandum in Opposition - District Court of Delaware - Delaware

Case 1 :04-cv-00360-JJF Document 122 Filed O4/10/2006 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
AFFINION LOYALTY GROUP, INC., )
Plaintiff], g Civil Action No. 04—360—JJ F
)
v. )
)
MARITZ INC., )
Defendant. g
MARITZRS SUPPLEMENTAL RESPONSE TO PLAlNTIFF’S
FIRST MOTION TO COMPEL PRODUCTION OF DOCUMENTS
Defendant Maritz Inc. supplements its opposition to Plaintiff" s Motion to Compel
Production of Documents, filed February 13, 2006 (D.l. 87). By recent motion (D.I. 101),
Aftinion seeks to drop its infringement claims relating to the *870 and *012 patents. By doing
so, plaintiff undermines arguments that it previously tendered in support of its motion to compel.
I. INTRODUCTION
Plaintiff sued Maritz for infringement of U.S. Patent Nos. 5,774,870; 6,009,412; and
6,578,012. On March 8, 2006, afar Maritz filed its initial Response toAfiinion’s first motion to
compel, Aftinion sought leave to amend its complaint to drop the *870 and *012 patents from this
case (D.I. 101). Simultaneously, Aftinion executed a purported Release and Covenant Not to
Sue with regard to the ‘870 and *012 patents. Maritz, separately responded to Aflinion’s motion
for leave to amend (D.I. 1 15).
Despite early notice to plaintiff in discovery that Ma1itz’s systems did not employ
interactive on—line product sale and immediate point—awarding functions, as required by the
patent claims, plaintiff continued to assert all three patents against Maritz. By maintaining its
infringement claims, plaintiff received copies of Maritz’s opinion letters and related privileged
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Case 1:04-cv-00360-JJF Document 122 Filed O4/10/2006 Page 2 of 4
material for all three patents which Maritz produced when it elected to rely on opinions as part of
its defense. Plaintiff moved to compel additional material asserting a greater scope of privilege
waiver. With the benefit of the non-infringement opinions and attomey work product relating to
the *870 and ‘0l2 patents, Aftinion now seeks to drop its infringement contentions with respect
to these patents. However, in the motion to compel Aflinion still seeks privileged documents
conceming the ’870 and ‘012 patents, and asserts a scope of waiver for the ‘4l2 patent materials
based on infomation concerning the *870 and *012 patents.
Maritz recently responded to Aftinion’s motion for leave to amend its complaint and
proposed conditions that would help to alleviate prejudice Maritz has and will suffer as a result
of Aflinion’s actions (D.I. 115). Should the Court allow Affinion to abandon its infringement
claims with respect to the ‘87O and ‘0l2 patents, plaintiff s push for extending privilege waiver
to subject matter not addressed by the opinion letters regarding non-infringement of the ‘4 l 2
patent is further undermined. The scope of attomey-client privilege waiver should be limited to
the subject matter ofthe only opinion of counsel still at issue in this case, namely, non-
infringement ofthe *412 patent.
lil. ARGUMENT
A. Invalidity was addressed only in regard to two claims of the ‘870 patent, which
Affinion seeks to drop from this case.
As discussed in Maritz’s initial opposition, virtually all of the analysis of Maritz’s
programs in light ofthe patents-in-suit addressed non-infringement. The only exception was a
brief discussion ofthe invalidity of claims 29 and 30 ofthe ‘870 patent. If Affinion is permitted
to drop its claims of infringement of the ‘870 patent, it has obviated any basis that it may have
for seeking privileged commtmications or work product relating to invalidity.
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Case 1:04-cv-00360-JJF Document 122 Filed O4/10/2006 Page 3 of 4
B. By abandoning its infringement claims with respect to the ‘870 and *012 patents,
Aftinion cannot now rely on the ‘012 patent opinion in support o1' its present motion.
In its motion at page 3, Aflinion attempts to justify its breach of an agreement between
counsel based on the date of an opinion letter, which addressed non-infringement ofthe ‘0l2
patent. Because Affinion now seeks to abandon its claim that Maritz infringes the *012 patent, it
should not be permitted to rely on the date of an opinion for the ‘012 patent as justification for
breaching its agreement with counsel for Maritz. Nor should Afiinion be permitted to rely on the
timing of an opinion of counsel addressing a patent no longer being asserted by Aftinion to
justify the broad waiver asserted in its motion.
lll. CONCLUSION
For these additional reasons, plaintiff s lirst motion to compel should be denied.
l
.; Respectfully submitted,

. il ' · '
Date April 6, 2006 if
Q Patricia Smink Rog wski (#26 )
Rudolf E. Hutz (#494)
CONNOLLY BOVE LODGE & HUTZ LLP
l P.O. Box 2207
1007 N. Orange Street
* Wilmington, DE 19899
{ (302) 658-9141
Attomeys for Defendant, Maritz Inc.
OF COUNSEL: il
J. Bennett Clark ji
Jennifer E. Hoekel l
Marc W. Vander Tuig
David J. Harlan {E
SENNIGER POWERS
One Metropolitan Square, 16th Floor Qi
St, Louis, MO 63102
(314) 231-5400


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CERTIFICATE OF SERVICE
I, hereby certify that on April 6, 2006, I electronically tiled Maritz’s Unopposed
Motion for Leave to Supplement Its Response to Plaintiffs First Motion to Compel
with the Court Clerk using CM/ECF which will send notilication of such iiling(s) to Jack
B. Blumenfeld. I hereby further certify that on April 6, 2006, I have also served this
document on the attomeys of record at the following addresses as indicated:
Via Hand Delivery Via Federal Express
Jack B. Blumenfeld Steven Lieberman
Maryellen Noreika Sharon L. Davis
Morris, Nichols, Arsht & Tunnell Rothwell, Figg, Ernst & Manbeck, P.C.
1201 N. Market Street 1425 K Street, N.W.
P.O. Box 1347 Suite 800
Wilmington, DE 19899-11347 Washington, D.C. 20005
/s/ Patricia Smink Rogowski
Patricia Smink Rogowski (#2632)

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