Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—00876-GIVIS Document 330 Filed 04/12/2007 Page1 012
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tl=·l¤mr¤teld@e¤r=·¤¤m April 12, 2007
The Honorable Gregory M. Sleet VIA EFILING
United States District Court
For the District of Delaware
844 North King Street
Wilmington, DE 1980l
Re: Te/cardio Technologies, Inc. v. Cisco Systems, Inc.
CA. No. 04-876 (GMS)
Dear Judge Sleet:
On April 6, 2007, pursuant to Your l·lonor’s direction at the March 30 pretrial
conference, Cisco submitted for in camera review a sampling of privileged communications
from its privilege log demonstrating that Cisco received meaningful advice of counsel on the
alleged infringement and invalidity of the patents-in-suit. It also included a declaration from
Cisco’s counsel documenting that there was also substantial oral advice provided. The point of
this submission was to establish that Telcordia’s promised argument that Cisco did not receive
meaningful advice of counsel in response to Telcordia’s patent infringement assertions would be
incorrect and would unfairly and improperly require Cisco to assert privilege before the jury to
prove to the contrary.
On April 9, 2007, Telcordia submitted a lengthy letter to the Court accusing Cisco
of an ambush and that also purports to be a procedurally improper motion to strike. Cisco
submits this short response. At the outset, Telcordia starts from the false premise that the
privileged documents submitted by Cisco would not be enough to establish that it received
timely (notice of infringement is allegedly 2001) and meaningful advice of counsel. Even a
quick review of the October 6, 200l e~mail, November 7, 2001 e-mail, January 7, 2002 e—mail,
and February 6, 2003 e-mail and attachment, all from Bart Showalter of Baker & Botts to Cisco,
establishes solidly that meaningful legal advice was obtained in writing. The declaration from
Mr. Showalter confirms that there was also oral advice provided.

Case 1 :04-cv—00876-GIVIS Document 330 Filed 04/12/2007 Page 2 of 2
The Honorable Gregory M. Sleet
April 12, 2007
Page 2
Telcordia makes two main arguments in support of its request to strike the
Showalter declaration. First, Telcordia argues that it had no notice that Mr. Showalter provided
oral advice to Cisco prior to submission of the declaration. Second Telcordia argues that such
advice does not qualify as legal advice for purpose of willfulness law under its view that only
formal "opinions of counsel" are legally cognizable. Both arguments fail. During discovery,
Telcordia deposed Cisco’s then~Patent Counsel, Robert Barr, and determined that he retained
Mr. Showalter of Baker & Botts after Telcordia’s threat of infringement and received legal
advice from him. Barr Depo at 128-30 (attached). Telcordia could have asked what it wanted
about Mr. Showaltefs advice, such as testing whether it was truly privileged. Any failure to do
so was its own; any claim that it did not know about Mr. Sliowalter’s advice would be incorrect.
Thus, Telcordia’s notice argument fails. Telcordia’s description of the law fares no better.
There is no requirement that advice of counsel come in a particular form and an old-fashioned
opinion of counsel is certainly not the minimum threshold. The many cases cited in Cisco’s
reply in support of its Motion In Limine No. 3 at page l, establish this point of law beyond
question. lt would be improper for the parties to have to debate in front of the jury whether the
advice Cisco obtained —-~ which it is entitled to protect with the privilege -- was "good enough"
under Telcordia’s mistaken view of the law to be legally cognizable.
In sum, permitting Telcordia to claim that Cisco did not promptly obtain
meaningful legal advice when threatened with infringement would allow incorrect statements to
be made to the jury to attempt to force Cisco to invoke the privilege before the jury. That would
be improper. The Showalter declaration helps prove this important point and should be
considered.
Respectfully,
(dk B. Blumenfeld (LD. No. 1014)
JBB/dlb
Enclosures
cc: Clerk of Court (by hand; w/ encl.)
Steven]. Balick, Esquire (by e—mail and hand; w/ encl.)
John W. Shaw, Esquire (by e~mail and hand; wf encl.)
John Williamson, Esquire (by e—mail; w/ encl.)
Steven Cherny, Esquire (by e-mail; w/ encl.)
Edward R. Reines, Esquire (by e·mail; w/ encl.)