Free Order on Motion to Compel - District Court of Delaware - Delaware

Case 1:04-cv-00138-JJF Document 96 Filed 07/11/2005 Page1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
GTECH CORPORATION, :
Plaintiff, 2
v. Q Civil Action No. 04-138 JJF
SCIENTIFIC GAMES INTERNATIONAL, ;
INC.: SCIENTIFIC GAMES HOLDINGS :
CORPORATION; SCIENTIFIC GAMES :
FINANCE CORPORATION: and :
SCIENTIFIC GAMES CORPORATION, :
Defendants. ;
MEMORANDUM ORDER
Pending before the Court is a Motion To Compel Plaintiff To
Produce On-Point's Opinions Of Counsel Concerning The ‘337 Patent
(D.I. 82) filed by Defendants Scientific Games International,
Inc, Scientific Games Holdings Corporation, Scientific Games
Finance Corporation, and Scientific Games Corporation
(collectively, “Scientific Games").
In December 2000, On—Point Technology Systems, Inc. (“On-
Point") was involved in litigation with Interlott, Technologies,
Inc. (“Interlott”) with regard to Interlott’s claim that On—Point
was infringing U.S. Patent No. 4,982,337 (“the *337 patent").
Interlott subsequently acquired On—Point, and Gtech Corporation
(“Gtech”) subsequently acquired Interlott. The ‘337 patent is
also at issue in this lawsuit.
By its Motion, Scientific Games contends that Gtech has
improperly refused to produce the two opinions of counsel

Case 1:04-cv-00138-JJF Document 96 Filed 07/11/2005 Page 2 of 4
obtained by On—Point concerning the ‘337 patent. Scientific
Games argues that Gtech waived any claim of attorney-client
privilege with respect to these documents when it included
information from the documents in its non—privileged response to
a request for proposal from the Oregon Lottery. Scientific Games
contends that in December 2000, On—Point responded to a request
from the Oregon Lottery for a proposal for instant ticket vending
machines. Specifically, Scientific Games contends that in its
response to the Oregon Lottery, Gtech stated, “[W]e obtained a
written opinion of a prominent patent firm that stated that not
only was our new technological design not an infringement, but
that On—Point's new design was clearly superior.” (D.l. 82 at
2.)
In response, Gtech contends that it has not waived any claim
of attorney—client privilege or work product immunity with
respect to the documents at issue. Gtech contends that the
general reference to one of the opinion letters in On—Point’s
submission to the Oregon Lottery was not specific enough to
effectuate a waiver as to the entirety of the opinions. Gtech
contends that it did not provide the opinion itself to the Oregon
Lottery or disclose any detail about the opinion provided.
Based on the parties' respective arguments, it appears that
Scientific Games does not contest Gtech’s assertion that the
documents at issue are protected by work product immunity and/or
2

Case 1:04-cv-00138-JJF Document 96 Filed 07/11/2005 Page 3 of 4
the attorney—client privilege. Neither party asserts that Gtech
relies upon advice of counsel as a defense to a charge of willful
infringement. Rather, the Court finds that Gtech has asserted
the attorney—client privilege with regard to the opinion letters
throughout this litigation. Thus, the only question remaining
for the Court is the narrow inquiry of whether Gtech waived its
privilege and/or immunity by its statements to the Oregon Lottery
with regard to the opinion of counsel.
It is well-settled that when a client voluntarily discloses
privileged communications, the privilege is waived. Westinghouse
Elec. Corp. V. Republic of the Philippines, 951 F.2d 1414, 1424
(3d Cir. 1991). One type of waiver is partial waiver, which
permits a client who has disclosed a portion of privileged
communications to continue asserting the privilege as to the
remaining portions of the same communications. lg; at 1423 n. 7.
Thus, the extent of the waiver is limited to the subject matter
of the disclosed communication unless a partial waiver would be
unfair to the disclosing party’s adversary. §eg ig; at 1426 n.
12.
In the circumstances of this case, the Court concludes that
the statement Gtech made in its response to the Oregon Lottery
constitutes a waiver of privilege as to the substantive content
of the underlying opinion. Gtech’s statement to the Oregon
Lottery was completely voluntary and disclosed the opinion of the
3

Case 1:04-cv-00138-JJF Document 96 Filed 07/11/2005 Page 4 of 4
attorney with regard to whether On—Point infringed the ‘337
patent. Thus, the Court concludes that, because the subject
matter of Gtech’s disclosure is the opinion of counsel, Gtech
must accordingly produce the opinion of counsel in this
litigation.
So Ordered.
July // , 2005 ` MQ Q*~w%»
DATE 0jlTE __ TES DISTRI· UDGE
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