Free Letter - District Court of Delaware - Delaware


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Case 1 :04-cv—OO875-GIVIS Document 338 Filed O4/O9/2007 Page 1 of 3
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ATTORNEYS AND COUNSELLORS AT LAW TELEPHONE
302-654-IBBB
500 DELAWARE AVENUE FACSIMILE
P. O. BOX Il5O 302-6:—s4—2¤67 ‘
WILMINGTON, DELAWARE I9899
April 9, 2007
The Honorable Gregory M. Sleet VIA ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, Delaware 19801
Re: T elcordia Technologies, Inc. v. Lucent Technologies, Inc.,
C.A. No. 04-875-GMS
T elcordia Technologies, Inc. v. Cisco Systems, Inc.,
C.A. No. 04-876-GMS
Dear Judge Sleet:
During the March 30, 2007 pretrial conference in the above action, in connection with
defendants’ motion in limine number 3 regarding advice of counsel, the Court directed Cisco’s
counsel to submit for in camera review the purported opinions of counsel upon which Cisco
claims to have relied. To refresh the Court’s memory, these were the "opinions" that supposedly
were reflected in over 100 entries on two privilege logs, nearly all of which were described in
those logs as "patent licensing,” "agreements," or "prosecution," or words to that effect. Your
Honor was going to review the withheld documents to see whether they do in fact satisfy Cisco’s
duty of due care to obtain timely and competent legal advice in response to an accusation of
patent infringement.
I am writing because we were surprised to see that on Friday, April 6, 2007, Cisco
submitted not only an unidentified sampling of privileged documents for the Court’s review, but
under the guise of complying with the Court’s directive, also submitted a new declaration of its
outside counsel, Barton Showalter, claiming for the first time that there were numerous
previously undisclosed "oral" opinions of counsel upon which Cisco now seeks to rely. At no
time during the appropriate period in the case schedule did Cisco ever disclose the existence of
any such oral opinions, nor did Cisco do so in its colloquy with the Court on this very topic at the
pretrial conference. Indeed, at the pretrial conference, Cisco led the Court and counsel to believe
that the opinions in question were reflected in the documents listed on its privilege logs. Now,
having been called upon to actually show the Court those documents, we suddenly see, as trial is
about to begin, an unauthorized declaration from Cisco that for the first time alleges the
existence of numerous oral opinions of counsel. Telcordia objects to Cisco’s untimely ambush,
and respectfully requests that the Showalter declaration be stricken.

Case 1 :04-cv—OO875-GIVIS Document 338 Filed O4/O9/2007 Page 2 of 3
The Honorable Gregory M. Sleet
April 9, 2007
Page 2
First, during discovery Cisco never disclosed the information contained in Mr.
Showalter’s declaration. Specifically, pursuant to Federal Rule of Civil Procedure 26(b)(5), .
multiple times during discovery Telcordia requested that Cisco produce all non-privileged
information about Cisco’s advice of counsel (e. g., date, subject matter, author, recipient). Cisco
consistently and adamantly rehtsed to provide any information whatsoever, instead boldly
contending that:
Cisco is under no obligation to provide non-privileged information
about opinion letters, if any exist. Simply put, the existence of
such opinions is not relevant or responsive.
D.I. 303, Ex. H (all docket item references herein are to the docket in C.A. No. 04-876-GMS). If
instead of stonewalling, Cisco had said anything about alleged advice by Mr. Showalter,
Telcordia would have had the opporttmity to timely notice and take a standard deposition of Mr.
Showalter in order to test the assertions of privilege and to discover the non-privileged
information about Mr. Showalter’s alleged advice (such as when it was given, to whom it was
given, whether it was disclosed to third parties beyond Cisco, whether and to what extent Cisco
relied upon the advice, and the general subject matter of the advice).
Second, during the March 30, 2007 pretrial conference, the Court did not authorize Cisco
to generate and submit brand new information in support of its eleventh-hour contention that it
obtained timely, competent advice of counsel. Rather, the Court only permitted Cisco to submit
a representative sample of the doctunents that were disclosed on its privilege log during
discovery.!
Third, even if the Court were to consider Mr. Showalter’s vague allusions to oral advice
allegedly rendered about patent scope, validity, infringement, and enforceability over a three-
year period, those assertions cannot satisfy the duty of due care to obtain timely and competent
advice of counsel in the face of a charge of infringement. Even the defendants’ own proposed
jury instruction on the issue recognizes that the critical issue is "whether Cisco and/or Lucent
obtained and followed the advice of a competent lawyer," and the law is clear that to meet the
duty of due care, the advice of counsel must be a thorough opinion from unbiased and competent
cotmsel that, for example, must be obtained in a timely manner, must analyze relevant facts and
I Tellingly, Cisco’s April 6, 2007 cover letter (D.I. 327) does not show the Court how the
documents it submitted for in camera inspection were described in its privilege logs, offering only to
provide copies of its privilege logs if requested by the Court. Just today Cisco told Telcordia (but
apparently did not tell the Court) that it submitted for in camera review the items numbered 6, 14, 44, 45,
47, 49, 50, 53, 56, 59, 64, 92, 93, 235, 291, 313, 331, 359, and 360 on its privilege logs. Telcordia
submitted Cisco’s privilege logs to the Court with its answer to the defendants’ third motion in limine
(D.I. 303, Exhibits F and G). All of the entries are described as documents relating to "patent licensing,"
and none of the entries are described as advice of counsel on patent scope, validity, infringement, or
enforceability.

Case 1 :04-cv—OO875-GIVIS Document 338 Filed O4/O9/2007 Page 3 of 3
The Honorable Gregory M. Sleet
April 9, 2007
Page 3
explain conclusions based upon the applicable law, and must include a thorough review ofthe
prior art and prosecution history. See, e. g., Johns Hopkins Univ. v. CeZlPro, Inc., 152 F.3d
1342, 1364 (Fed. Cir. 1998); SRI Int’l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1467
(Fed. Cir. 1997).
Finally, the motion in limine presently before the Court is a direct result of Cisco’s
refusal to provide Telcordia with basic non-privileged infonnation about its alleged opinions of
counsel during discovery, and Cisco’s untimely re-characterization of documents described on its
privilege log (which were described as advice about "patent licensing," "agreements,” or
"prosecution," but now apparently are being recast as opinions of counsel on patent scope,
validity, infringement, and enforceability). Cisco should not be pennitted to compound its non-
disclosure of opinions and further benefit from its withholding of discoverable information
during discovery by disclosing additional information for the first time in a declaration served a
mere three weeks before trial.
Telcordia respectfully requests that the Court strike the Showalter declaration and permit
Telcordia to inform the jury ofthe simple fact that Cisco did not obtain a competent, timely
opinion of counsel when faced with Telcordia’s allegations of iniiingernent.
Respectfully,
/s/ Steven J Balick
Steven J. Balick
SJ B/dmf
179542.1
cc: Donald R. Dunner, Esquire (via electronic mail)
Jolm W. Shaw, Esquire (by hand, and via electronic mail)
Steven C. Chemy, Esquire (via electronic mail)
David A. Nelson, Esquire (via electronic mail)
Jack B. Blumenfeld, Esquire (by hand, and via electronic mail)
Edward R. Reines, Esquire (via electronic mail)