Free Letter - District Court of Delaware - Delaware

Case 1:06-cv-00414-SLR

Document 54

Filed 10/29/2007

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MORRIS, NICHOLS, ARSHT & TUNNELL
1201 N O R T H M A R K E T S T R EE T P.O. B O X 1347 W I L M I N G T O N , D E L A W A R E 19899-1347 302 658 9200 302 658 3989 F A X
M A R Y B. G R A H A M 302.351.9199 [email protected]

LLP

October 29, 2007

VIA E-FILING The Honorable Sue L. Robinson United States District Court Federal Building 844 King Street Wilmington, DE 19801 Re: Oracle Corporation and Oracle U.S.A., Inc. v. Epicrealm Licensing, LP C.A. No. 06-414 (SLR)

Dear Chief Judge Robinson: In anticipation of the discovery conference today, Plaintiffs and Counterdefendants Oracle Corporation and Oracle U.S.A. Inc. ("Oracle") submit the following summary of pending discovery issues between the parties. Counsel for Oracle and Defendant and Counterclaimant epicRealm Licensing, LP ("epicRealm") have and met conferred on these issues and are working cooperatively to resolve any remaining issues. Protective Order The Protective Order has been agreed upon by the parties and was entered by the Court on October 25, 2007. Production of Oracle Source Code Pursuant to the terms of the Protective Order, Oracle has produced two computers containing the accused source code and analytical tools to Iron Mountain, the agreed-upon escrow agent located in Lewisville, Texas. epicRealm began its inspection of the code on October 25, 2007. The parties are working together to ensure that epicRealm has the appropriate tools and applications necessary to complete its inspection, including executable code for each of the accused products, manifests and MD5 checksums.

Case 1:06-cv-00414-SLR The Honorable Sue L. Robinson October 29, 2007 Page 2

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Document Productions The parties have produced responsive documents and privilege logs. In addition to the source code for the accused Oracle products, Oracle has produced over one million pages of documents to date, including technical specifications, user guides, design and developer guides, patent documents, price lists, analyst spreadsheets, product revenue information, and other financial documents. The parties' document productions are ongoing. It is anticipated that document production will be completed by the end of November. Interrogatories The parties have served and responded to written interrogatories. Following discussions between the parties, epicRealm has agreed to supplement its responses to certain interrogatories propounded by Oracle. epicRealm will provide further information regarding conception and reduction to practice of the alleged inventions and evidence of secondary considerations of nonobviousness by November 9, 2007, and will specify responsive documents pursuant to FRCP 33(d) for certain interrogatories by November 30, 2007. Depositions epicRealm has served a FRCP 30(b)(6) deposition notice regarding the accused Oracle products and source code. Oracle is confirming available dates for its 30(b)(6) witness and anticipates that he will be available for deposition in the next two weeks. epicRealm has requested that the source code be available to the witness for the deposition. Because the witness is from Oracle's headquarters in Redwood Shores, California, Oracle maintains that the deposition should take place in Townsend's Palo Alto, California office (located 7 miles away) where a computer containing the source code will be located. epicRealm has insisted that the deposition take place at Iron Mountain in Lewisville, Texas. Oracle will be serving a FRCP 30(b)(6) deposition notice on epicRealm shortly and anticipates conducting further depositions of party and non-party witnesses after the document productions are completed. Amendments to Pleadings epicRealm has requested that Oracle stipulate to substituting in Parallel Networks, Inc. for epicRealm as the real party in interest. The parties have reached a tentative stipulation in which epicRealm would be dismissed without prejudice and epicRealm and Parallel Networks would agree not to seek transfer of this case or any follow-on case involving the patents-in-suit out of Delaware. Oracle has also advised epicRealm that it would like to amend its complaint to assert a newly-discovered inequitable conduct claim. The parties are conferring on this issue and a procedure for completing the proposed amendments.

Case 1:06-cv-00414-SLR The Honorable Sue L. Robinson October 29, 2007 Page 3

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In addition, epicRealm advised Oracle for the first time last week that it intends to accuse Oracle's Database, its core product, of infringement. If epicRealm does so, it will likely greatly expand the scope of discovery and require reconsideration of the Court's scheduling order. Respectfully,

/s/ Mary B. Graham
Mary B. Graham (#2256) MBG/dam Enclosure cc: Dr. Peter Dalleo, Clerk (via e-filing and hand delivery) Anne Gaza, Esquire (via email) Richard L. Horwitz, Esquire (via email)
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