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FRAN KFURT
April 19, 2006 H
MUNICH
PARIS
SINGAPORE
SYDNEY
TOKYO
By Electronic Filing ’3Z2’£.1°
The Honorable Sue L. Robinson
United States District Court
844 N. King Street
Wilmington, DE 19801
RE: McKesson Information Solutions LLC v. The T riZetto Group, Inc.,
C.A. No. 04-1258 (SLR) (D. Del.)
Dear Chief Judge Robinson:
As McKesson approaches the closing of its case-in-chief on the
infringement phase of the jury trial, there are several open issues which we respectfully
submit still require the Cou1t’s attention:
1. Inducing Infringement
At the beginning of the day yesterday, counsel for The TriZetto Group, Inc.
("TriZetto") asked the Court to decide as a matter of law for this action whether specific
intent to infringe is required to state a claim for inducing infringement; and the Court later
indicated that it was "leaning towards" TriZetto’s position.
Although the Federal Circuit has acknowledged that there is currently a
"lack of clarity" on this issue (see, e. g., Golden Blount Inc. v. Robert H Peterson Co., 438
F.3d 1354, 1365 n.4 (Fed. Cir. 2006), the Federal Circuit has considered the standard set
forth in Hewlett-Packard as "the generally applicable intent standard." MOBA, B. V, v.
Diamond Automation, Inc., 325 F.3d 1306, 1318 (Fed. Cir. 2003) ("This court defined the
generally applicable intent standard in Hewlett—Packard Co. v. Bausch & Lomb, Inc., 909
F .2d 1464, 1468-69 (Fed. Cir. 1990). In Hewlett-Packard, this court held that ’proof of
actual intent to cause the acts which constitute the infringement is a necessary prerequisite
to finding active inducement' under § 271(b)."). Departing from the "generally applicable
intent standard" is particularly inappropriate here in view of the substantial prejudice that
McKesson will suffer. If the Court requires McKesson to prove that TriZetto specifically
Case 1 :04-cv-01258-SLR Document 342 Filed O4/19/2006 Page 2 of 4
The Honorable Sue L. Robinson
United States District Court
April 19, 2006
Page 2
intended its customers to infringe the ’l64 patent, a nmnber of things will happen. Among
them:
• TriZetto will seek to reintroduce evidence of TriZetto’s mental state,
notwithstanding the Court’s careful instructions that willfulness would not
be tried during this phase.
• The admissions from TriZetto’s witnesses concerning their opinion about
whether TriZetto’s products infringed the ’ 164 patent -- questions that this
Court previously struck upon sustaining TriZetto’s objections -- would now
have another basis for relevance. Regardless of whether the witness was
competent to testify about specific claim language, if that witness believed
that the accused TriZetto products infringed, then all of his or her
understanding about the patent should come into evidence.
Such a result would undermine every evidentiary reason for trying
infringement in a separate phase from willfulness, laches, and estoppel. Adopting the
standard proposed by TriZetto on the eve of McKesson closing its case-in-chief would be
manifestly unfair, particularly given that it is unnecessary under Federal Circuit authority.
2. Inventor Testimony
We respectfully request a ruling on whether TriZetto will be permitted to
introduce the inventors’ testimony into the infringement phase of this action,
notwithstanding the clear two-step test for infringement analysis.
3. TriZetto Calling Ms. Wukitch In Its Case-In-Chief
TriZetto has been unable to provide McKesson with any rationale for it
being able to introduce this witness in its case-in-chief. That is because there is no
rationale. Ms. Wukitch is a lay witness employed by McKesson and has not been
designated to testify on any topics concerning the operation or functionality of the accused
products or any other issue regarding whether the accused products infringe. We submit
that any testimony would be irrelevant and prejudicial.
4. Examination of TriZetto's 30gb)(6) Designees In McKesson's Case-
In-Cl1ief`
McKesson anticipates closing its case-in-chief on Wednesday, April 19
subject to its pending request to examine TriZetto's 30(b)(6) designees on the QicLink and
ClaimFacts products, John Danza and Karen Lampe. Upon receiving the Com·t's April 17
Case 1 :04-cv-01258-SLR Document 342 Filed O4/19/2006 Page 3 of 4
The Honorable Sue L. Robinson
United States District Court
April 19, 2006
Page 3
order that, "under the unusual circumstances of this case, the court will consider a request
by McKesson to require the presence of the 30(b)(6) witnesses . . . live[,]" McKesson
requested the availability of Mr. Danza and Ms. Lampe to testify live in McKess0n's case-
in-chief. TriZetto has indicated that these witnesses are unavailable and offered its
30(b)(6) designee on Facets, Craig Luftig, at an undetermined point after April 19. To
accommodate TriZetto's witnesses, McKesson is willing to conditionally close its case-in-
chief subject to the opportunity to examine Mr. Danza and Ms. Lampe prior to the close of
evidence in the infringement phase. Although TriZetto has offered Mr. Luftig to testify
regarding the clinical editing aspects of the QicLink and ClaimF acts products for which he
was not designated, the testimony of Mr. Danza and Ms. Lampe remains relevant to aspects
of TriZetto's indirect infringement.
5. The Testimony of Tony Bellomo
Regarding the testimony of Tony Bellomo, McKesson requests that the
Court confirm that its rulings regarding the admissibility of testimony regarding claim
elements applies equally to Mr. Bellomo's testimony. Moreover, consistent with the
Federal Rules of Evidence, McKesson also requests confirmation that it will be entitled to a
full and fair opportunity to impeach any non-expert testimony regarding claim elements
with the prior sworn testimony of TriZetto's executives, 30(b)(6) designees, and customers
regarding those elements.
6. Upcoming Trial Presentation
McKesson may play videotaped deposition testimony from the following
witnesses: Clifton Jones, Pierson/Drini, Kristen Kemp and Patricia Kepplinger (for which
the Court has reviewed and ruled on objections), and Tony Bellomo, Craig Luftig, Jeff
Margolis, and John Danza. With respect to a number of these witnesses, McKesson just
received TriZetto's objections late last night despite the fact that TriZetto was provided
with the depositions before dawn yesterday morning. McKesson is diligently working on
preparing the depositions but these efforts have been fiustrated by TriZetto's failure to
present their objections yesterday after lunch.
McKesson has also asked that TriZetto identify the first witness it intends to
call in its case-in-chief, but TriZetto has refused to do so.
Respectfully submitted,
Michael A. Barlow (#3928)
Case 1 :04-cv-01258-SLR Document 342 Filed 04/19/2006 Page 4 of 4
The Honorable Sue L. Robinson
United States District Court
April 19, 2006
Page 4
cc: Jack B. Bltunenfeld (By E-Filing)
Rodger D. Smith II (By E-Filing)
Jeffrey T. Thomas (By E-Mail)
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