Free Answering Brief in Opposition - District Court of Delaware - Delaware

Case 1 :04-cv-00138-JJF Document 207 Filed O2/O3/2006 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
POR THE DISTRICT OF DELAWARE
GTECH CORPORATION,
rinnarr,
v. C.A. No. 04-138-JSF
SCIENTIFIC GAMES INTERNATIONAL,
INC., SCIENTIFIC GAMES HOLDINGS
CORPORATION, SCIENTIFIC GAMES §
FINANCE CORPORATION, and
SCIENTIFIC GAMES CORPORATION,
Defendants.
SCIENTIFIC GAlV[ES’ RESPONSE TO GTECH’S MOTION IN LIMINE N0. 2 TO
PRECLUDE REFERENCE TO ANY OPINION OF COUNSEL REN DERED TO
SCIENTIFIC GAMES CONCERNING THE PATENTS-IN—SUIT, BASED UPON
ITS REFUSAL TO PRODUCE ANY SUCH OPINION TO GTECH
Scientific Gaines International, Inc., Scientific Games Holdings Corporation,
Scientific Gaines Finance Corporation, and Scientific Gaines Corporation (collectiveiy,
"Scientific Ga1nes”) do not oppose GT ECH’s motion in lirnine to preclude reference to Scientific
Ga1nes’ opinions of counsel —— as long as GTECPI is also precluded from referring to, offering
any evidence regarding, or seeking to draw any inferences relating to the opinions of counsel.
As discussed in Scientific Games’ motion in Iirnine no. I, Scientific Games has
chosen not to waive the attorney-client privilege and work product immunity with respect to the
opinions of counsel that it received concerning the patents in suit, and has not asserted an advice
of counsel defense to GTECI·I’s charge of wiIIful infringernent (DI. 183). Accordingly,
Scientific Gaines does not intend to rely on, or otherwise refer to, its opinions of counsel at trial.
GTECII aiso should be precluded, however, from referring to, offering any
evidence regarding, or seeking to draw any inferences relating to Scientific Ga1nes’ opinions of

Case 1:O4—cv—OO138-JJF Document 207 Filed O2/O3/2006 Page 2 of 4
2.
counsel. In Knorr-Bremse Systeme Fuer Nutzfnhrzeuge GmbH v. Dam: Corp., 383 F.3d l337,
1345 (Fed. Cir. 2004) (en banc), the Federal Circuit held that "the assertion of attorney-client
and/or worloproduct privilege and the withholding of the advice of counsel shall no longer entail
an adverse inference as to the nature ofthe advice."l
The only possible reason for GTECH to offer such evidence would be to suggest
to the jury that, because Scientific Games did not disclose its opinions of counsei, it must have
received unfavorable advice. See Kn.0rr·Bremse, 383 F.3d at 1345. As Judge Jordan has noted,
however, there is no reason why a patentee (in light of Knorr-Bremse) should be permitted to
introduce evidence at trial about an opinion of counsel that was not disclosed. See lQ).I. i83,
Ex. B at 38 (". . . I have never yet heard anybody make a reasoned argument to me why it could
be put before a jury after the Kn0rr~Bremse opinion that an opinion was received but not
tendered?).
I The prejudice caused by GTECI-I’s attempts to present evidence concerning Scientific
Games’ opinions of counsel would be eliminated if the Court bifurcated damages and
willfulness for trial.

Case 1:O4—cv—OO138-JJF Document 207 Filed O2/O3/2006 Page 3 of 4
3.
Scientific Games does not oppose GTECI-I’s motion in limine to preclude
Scientific Games from referring to its opinions of counsel, provided that GTECH is also
precluded from referring to, offering any evidence regarding, or seeking to draw any inferences
relating to Scientific Games’ opinions of counsel.
MORRIS, NICHOLS, ARSHT & TUNNELL LLP
/s/ Rodger D. Smith II
Jack B. Blumenfeld (#1014)
Rodger D. Smith II (#3778)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
(302) 658-9200
rsn‘1ithg@,mnat.com
Attorneys for Defendants
February 2, 2006
seizes

Case 1:04—cv—00138-JJF Document 207 Filed 02/03/2006 Page 4 of 4
CERTIFICATE OF SERVICE
I, Rodger D. Smith H, hereby certify that on February 2, 2006, l caused to be
electronically filed Scientific Games’ Response To GTECH’s Motion ln Limine No. 2 To
Preclude Reference To Any Opinion Of Counsel Rendered To Scientific Games Concerning The
Patents——In-Suit, Based Upon Its Refusal To Produce Any Such Opinion To GTECH with the
Clerk ofthe Court using CM/ECP, which will send notification of such fi1ing(s) to the following:
J osy W. Ingersoll
Young, Conaway, Stargatt & Taylor, LLP
The Brandywine Building
1000 West Street, 17m Floor
P.O. Box. 391
Wilmington, DE 19899
and that I caused copies to be served upon the following in the manner indicated:
BY HAND
J osy W. Ingersoll
Young, Conaway, Stargatt & Taylor, LLP
The Brandywine Building
1000 West Street, 17th Floor
P.O. Box 391
Wilmington, DE 19899
BY FEDERAL EXPRESS
Thomas 5 . Meloro
Kenyon & Kenyon
One Broadway
New York, NY 10004
/s/ Rodger D. Smith U
Rodger D. Smith I1 (#3778)
Morris, Nichols, Arsht & Tunnel} LLP
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899
(302) 658~9200
[email protected]
Attorneys for Defendants

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