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Case 1 :06-cv—00500-SLR—|\/I PT Document 106 Filed 10/03/2007 Page 1 of 2
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October 3, 2007 -
BY E-FILE t
The Honorable Mary Pat Thynge
Magistrate Judge
United States District Court s
for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: ZymoGenetics, Inc. v. Bristol-Myers Squibb Co., et ai.,
I). Dei., CA. No. 06-500-*** `
Dear Magistrate iudge Thynge:
We write in response to Defendant Bristol-Myers Squibb Co.’s (‘“Bristol-Myers”)
letter of October 2, 2007, regarding its failure to produce its opinions of counsel. First and
foremost, ZymoGenetics does not view this issue to be a discovery dispute as Bristol-Myers has
so characterized it — Bristol-Myers simply chose not to produce its opinions of counsel (to the
extent it has any) during the prescribed discovery period, and has therefore waived the opinion of ‘
counsel defense. Bristol-Myers’ refusal to disclose whether it will rely on opinions of counsel as
a defense to the “wilifulness" element of ZyrnoGenetics’ patent infringement claim is nothing
more than an attempt by Bristol-Myers to obtain a modified discovery order after the close of
discovery. ZymoGenetics has requested infonnation regarding Bristol—Myers’ reiiance on
opinions of cotmsel since the inception of this case. Not only has Bristol-Myers refused to
disclose its intentions regarding use of opinions of counsei in this matter, Bristol-Myers has .
further refused to disclose whether it sought and obtained such an opinion of counsel regarding
Zy1noGenetics’ patents. In its October 2, 2007 letter, Bristol-—Myers stated that it will not
disclose this highly relevant piece of information to Zy1noGenetics until more than six months
after the out-off date for discovery in this case and less than three months before the anticipated
trial date.
The only case that Bristol~Myers cites in support for its position on this rnatter is
the recent en banc Federal Circuit decision, In re: Seagate Technology, LLC, Misc. Docket No.
830, August 20, 2007. Bristoi~Myers’ reliance on Seagate is misguided because Seagate does
not address the issue of when a patent defendant must disclose its reliance on opinions of
counsel, but rather it addresses the scope of attorney-client and work product waiver subsequent
to such a reliance. The accused infringer in Seagate disclosed its intent to rely on opinions of
counsel in early 2003. Ial Siip Op. at 3. The Federal Circuit’s decision is directed to the trial

Case 1 :06-cv-OO500—SLFl-IVIPT Document 106 Filed 10/O3/2007 Page 2 of 2
The Honorable Mary Pat Thynge
October 3, 2007
Page 2
court’s May 28, 2004 decision that the accused infringer’s reliance on opinions of counsel
waived "tl1e attorney—client privilege for all communications between it and any counsel,
including its trial attorneys and in house counsel .... " Id The Federal Circuit reviewed the trial
court’s decision erz banc to “revisit our willfulness doctrine and to address whether waiver
resulting jrom advice of counsel and work product defenses extend to trial counsel? Id. at 10
(emphasis added). Seagate is therefore not relevant to the present dispute for the simple reason
that it does not address the question of when an accused infringer is required to disclose the
intention to rely on opinions of counsel in defense to a claim of willful infringement.
Furthermore, Bristoldvlyers conhsses a plaintiff s burden of proof for willful
infringement at trial, a topic that is discussed in Seagate, with its discovery obligation under
Federal Rule of Civil Procedure 26(b). Bristol·Myers’s letter to this Court contains an extensive
discussion ofthe two step analysis for willful infringement laid out in Seagate. See id at 12.
However, this test is totally irrelevant to Bristol—lVlyers’s ongoing production obligations prior to
the close of discovery.
Although the Seagate opinion itself is not relevant to parties' dispute, the timing
of discovery in the case that gave rise to the Seagate opinion is highly relevant to Bristol-l\/lyers’
refusal to disclose whether it will rely on opinions of counsel. See Coavolve, Inc., et al v.
Compaq Computer Corp., et al, S.D.N.Y., Case No. l:00—CV-05l4l. As stated above, the
accused infringer in Seagate notified the patentee of its intention to rely on opinions of counsel
in early 2003. Seagate Slip Op. at 3. The trial court issued its claim construction order in the
case on August 9, 2005, well after the accused infringer notified the plaintiff of its reliance on
opinions of counsel. See Convolve at Docket No. 397. Simply stated, there is no basis for
Bristol—Myers to argue that it should not be required to disclose reliance on opinions of counsel
until ajter this Court issues a claim construction order when the case it cites in support of this
proposition involved an accused infringe}: disclosing reliance on opinions of counsel more than
two years before the issuance of a claim construction order.
Moreover, how a court in 2008 interprets the claims at issue in this case has
absolutely no impact on whether Bristo1—Myers had a good faith belief of nondnfringenient of
ZymoGenetics' patents years earlier. This issue is not unique to this case, as the opinion of
counsel defense is raised in virtually every patent infringement suit involving claims of willful
infringement. Accordingly, there is no reason why Bristol-}/lyers is entitled to a special
scheduling order that will serve only to prejudice ZymoGenetics by forcing it conduct fact
discovery months ajier the close of discovery.
Respectfu l
Philip A. Rovner
provner@ _pottera11derson.com
PAR/mes/822723
cc: Frederick L. Cottrell, III, Esq. - by hand delivery and E-mail
Christopher P. Borello, Esq. — by E—mail