UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
ENTERASYS NETWORKS, INC,
Plaintiff,
v.
FOUNDRY NETWORKS, INC. and
EXTREME NETWORKS, INC.,
Defendants.
Civil Action No. 05-CV-11298 (DPW)
MOTION [DOCKET NO. 96] FOR
LEAVE TO FILE REPLY BRIEF
GRANTED ON MAY 29, 2007
FOUNDRY NETWORKS, INC.’S REPLY BRIEF IN SUPPORT OF ITS
MOTION FOR EXTENSION OF DEADLINE RELATING TO
WAIVER OF ATTORNEY-CLIENT PRIVILEGE BECAUSE OF
PENDING FEDERAL CIRCUIT EN BANC CASE CONCERNING SCOPE OF WAIVER
Defendant Foundry Networks, Inc. (“Foundry”), in accordance with Local Rule 7.1,1
respectfully submits this reply brief in support of its Motion for Extension of Deadline Relating
to Waiver of Attorney-Client Privilege Because of Pending Federal Circuit En Banc Case
Concerning Scope of Waiver (Docket 92).
Foundry submits this reply brief to address new arguments made by plaintiff Enterasys
Networks, Inc. (“Enterasys”) in its opposition (Docket 95). Enterasys has assented to the filing
of this reply.
1 Local Rule 7.1(b)(3) states: “All other papers not filed as indicated in subsections (b)(1)
and (2), whether in the form of a reply brief or otherwise, may be submitted only with leave of
court.” This Court has allowed parties to file replies with leave of Court. See, e.g., Radford
Trust v. First Unum Life Ins. Co. of America, 399 F.Supp.2d 3 (D. Mass. 2005) (granting request
for leave to file a response to an opposition brief) (Young, C.J.); Murphy v. Ford Motor Co., 170
F.R.D. 82 (D. Mass. 1997) (granting motion for leave to file a reply brief) (Gorton, J.).
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I. INTRODUCTION
Enterasys provides no good reason to deny Foundry’s motion. Extending the deadline for
Foundry to decide whether to waive the privilege with respect to opinions of counsel it may have
obtained will serve the beneficial purpose of preserving the privilege without harming Enterasys
or the Court in any way. Enterasys’ opposition distorts the issues and mischaracterizes the likely
impact of granting Foundry’s motion in several significant ways:
1) Foundry’s motion is not predicated on an uncertain, hoped-for future change in
the law. Rather, the Federal Circuit has agreed to clarify with certainty the scope of the waiver
of attorney-client privilege in the Seagate case.
2) The scope of the privilege waiver is not analogous to the proper test for
obviousness (or other substantive patent law issues). Once privilege has been waived, the waiver
cannot be revoked. If the Seagate court adopts a broad waiver rule, Foundry will be stuck with
the consequences if it has been forced to decide whether to produce opinions of counsel before
the Seagate decision is announced. By contrast, if a court conducts proceedings using an
incorrect obviousness or other legal standard, those proceedings can be repeated later using the
correct standard if there is an intervening change or clarification of law. Thus, the two situations
are fundamentally different.
3) Since no trial date has been set, extending the deadline will not jeopardize
Enterasys’ ability to prepare for trial in this case. Enterasys has not shown how opinions of
Foundry’s counsel could possibly affect other aspects of ongoing discovery or claim construction
proceedings. The technical documents and prior art underlying any opinion Foundry may rely
upon have already been produced to Enterasys, so Enterasys has the full ability to evaluate and
test Foundry’s non-infringement and invalidity positions.
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4) Granting Foundry’s motion will not delay trial or other proceedings. If the
Seagate case takes too long to resolve, the Court can modify its order at any time to require that
Foundry decide whether to rely on opinions of counsel. The mere possibility that the Seagate
proceedings will not be quickly resolved does not justify arbitrarily requiring that Foundry waive
privilege at this early date.
5) Enterasys talks out of both sides of its mouth on the issue of whether the law on
the scope of the privilege waiver is settled. In one paragraph Enterasys suggests that the waiver
would cover trial counsel communications, while in another paragraph Enterasys suggests the
opposite. If Enterasys truly believes that “Foundry exaggerates the decision-making dilemma it
presently faces,” then why won’t Enterasys eliminate that dilemma altogether by stipulating to a
narrow waiver of privilege if Foundry produces opinions of counsel?
For these reasons, Foundry’s motion is well-founded and neither the parties nor the Court
will be prejudiced or inconvenienced if Foundry’s motion is granted.
1. Granting Foundry’s Motion Will Not Cause Any Undue Delay
In contrast to what Enterasys argues in its opposition, Foundry does not seek an indefinite
extension of time based on a hoped-for, potential change in the law. Rather, the Seagate court
has already announced it will definitively set forth the scope of the waiver of privilege resulting
from reliance on opinions of counsel, and a decision in that case can be expected to issue in a
reasonable amount of time.
Enterasys forebodingly warns that “Foundry’s proposed timeline . . . would leave the trial
of this case in jeopardy.” Opp. at 8. Enterasys conveniently omits that no trial date has been set
for this case, and therefore, the “jeopardy” is vastly overstated. As noted below, if the case
proceeds to a point where trial is approaching and the Seagate case has not been finally resolved,
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the Court can always revisit the question of when Foundry should have to decide about relying
on opinions of counsel. At the moment, however, there is no basis for concern that granting
Foundry’s motion will delay or interfere with the trial date.
Furthermore, Enterasys exaggerates the amount of time it will take for the Seagate case
to be decided. First, Enterasys incorrectly states that a hearing date has not been set in Seagate.
In fact, the Federal Circuit has set a hearing date of June 7, 2007 — less than a month from now.
See Exhibit A. Based on the Federal Circuit’s standard practice, an en banc decision should
issue just a few months after that, well before this case will approach the close of discovery,2
summary judgment proceedings, or trial. Enterasys argues that the Supreme Court may grant
certiorari, which allegedly could delay a final resolution of Seagate for years. However,
Enterasys ignores the possibility that the Supreme Court will decline to grant certiorari in
Seagate, just as it declined to grant certiorari in In re EchoStar Communications Corp. See 127
S. Ct. 846 (2006). In the unlikely event that certiorari is granted, this Court can revisit the issue
of whether Foundry may continue to defer its decision about whether to rely on opinions of
counsel. However, there is no reason to impose on Foundry the extreme burden of waiving the
attorney-client privilege based on a mere possibility that the Supreme Court will take the unusual
step of agreeing to review the Seagate decision.
2 Enterasys claims that granting Foundry’s motion will preclude Enterasys from pursuing
willfulness discovery “until well after the end of Phase II discovery . . . .” Opp. at 7. However,
the Court has not established an end date for Phase II discovery (or Phase I discovery, for that
matter). Moreover, granting Foundry’s motion would not stop Enterasys from pursuing other
discovery related to the issue of willful infringement. It would only delay the date on which
Enterasys would gain access to any opinions of counsel Foundry may have obtained (and which
Foundry may ultimately decide not to disclose at all).
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2. Unlike Substantive Patent Law Issues, Attorney-Client Privilege Cannot Be
Revisited Or Un-waived Retroactively
Enterasys’ opposition improperly argues that uncertainty surrounding the proper test for
obviousness (or other substantive issues in patent cases) is equivalent to the uncertainty
surrounding the scope of waiver of attorney-client privilege.3 However, the two situations are
drastically different. Conducting proceedings using the incorrect obviousness standard would
not cause the parties to suffer irreparable harm. At worst, doing so might entail some amount of
waste if proceedings had to be repeated using the correct standard. Indeed, the quote from the
Amesbury case in Enterasys’ opposition notes that the accused infringer’s position in that case
could only improve upon a change in the obviousness test if the Supreme Court lowered the bar
for proving a patent obvious, which is exactly what happened in the KSR case. See Opp. at 5;
KSR Int’l Co. v. Teleflex Inc., __ U.S. __, 2007 WL 1237837 (Apr. 30, 2007).
Here, however, Foundry’s position might substantially deteriorate if the Federal Circuit
decides that relying on opinions of counsel as part of a defense to willful infringement results in
a broad waiver of privilege, including communications with trial counsel or communications
relating to defenses not addressed by the opinions of counsel. Moreover, unlike obviousness,
once privilege has been waived over certain communications or opinions, the privilege cannot be
3 Although the Supreme Court decided KSR International Co. v. Teleflex, Inc. on April 30,
2007, which substantially changed the test for proving a patent is obvious, Enterasys’ opposition
relegates the case to a footnote and mischaracterizes the decision as a partial modification of the
obviousness doctrine. Indeed, as a result of the KSR case, courts are being asked to revisit the
issue of obviousness to reassess whether a patent is obvious under the new test. See Exhibit B
(noting that the Court of Appeals for the Federal Circuit will address on appeal a validity finding
of the district court, with possibility of a remand). Courts that did not defer the question until the
KSR decision was handed down are being asked to address the issue now. Here, Foundry is
seeking to save the parties and the Court time later by deferring the disclosure of opinions until
the law is clear, so that the issue need not be revisited or the Court’s docket cluttered with
motions regarding the scope of discovery to which Enterasys is entitled under the appropriately-
defined waiver.
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un-waived. Enterasys will not be able to un-see the privileged materials Foundry is required to
produce. Because of this uncertainty, Foundry is in a seemingly intractable predicament. For at
least this reason, Foundry should not be required to waive privilege until it knows more precisely
what the scope of the waiver will be.
3. No Trial Date Has Been Set and There Is No Relationship Between Opinion Letters
and Other Discovery, So Enterasys’ Trial Preparation Would Not Jeopardized by
an Order Granting Foundry’s Motion
Enterasys argues in its opposition that “a decision to grant Foundry’s motion…would
make it impossible for Enterasys to conduct or complete discovery within whatever time period
the Court is likely to require here.” Opp. at 8. However, Enterasys fails to explain why this
would be true. It relies solely on observations in several district court cases that infringement
and willfulness issues are often intertwined — observations that apply to trial, not discovery, and
with which other courts disagree. Enterasys ignores all the discovery that has already occurred
up until now, and it offers no facts to support its conclusory claim that extending the schedule
would hinder its ability to “conduct or complete discovery.” Accordingly, Enterasys’ argument
should be rejected.
To the extent that Foundry has received any opinions, the documents and prior art
underlying those opinions have already been produced to Enterasys. In addition, Foundry has
provided Enterasys with its non-infringement and invalidity contentions, and has completed or
substantially completed its document production related to liability issues. Thus, Enterasys is
not inhibited from continuing discovery and preparation for trial based on facts underlying any
opinions of counsel. Enterasys fails to explain how a delay in receiving any Foundry opinions of
counsel would actually interfere with its ability to pursue other discovery.
In arguing that a delay in the production of opinion letters will adversely affect its other
discovery efforts, Enterasys relies solely on cursory statements that willfulness is intertwined
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with issues of liability and damages. As an initial matter, some courts disagree that those issues
are interrelated. See, e.g., AVIA Group Int’l, Inc. v. Nike, Inc., No. 91-326-JU, 1991 WL 340569,
*4 (D. Or. Sept. 17, 1991) (“willfulness is not relevant to the issue of liability”); Read Corp. v.
Portec, Inc., 970 F.2d 816, 828 (Fed. Cir. 1992) (“Willfulness is a determination as to a state of
mind.”). In addition, the cases on which Enterasys relies all relate primarily to whether liability
and willfulness issues should be tried together, not to how discovery should be conducted. See,
e.g., Nitinol Med. Techs., Inc. v. AGA Med. Corp., 135 F. Supp. 2d 212, 216 (D. Mass. 2000)
(noting that “some courts” like to try liability and willfulness issues together). They express a
concern that conducting separate trials on infringement and willfulness would require duplication
of witness testimony and other evidence. See, e.g, Keyes Fibre Co. v. Packaging Corp. of Am.,
763 F. Supp. 374, 375 (N.D. Ill. 1991). To the extent those cases address discovery, they only
address whether to stay willfulness discovery completely pending the completion of a trial on
liability issues. See id. Foundry is not asking for such a stay. It only wants to delay having to
waive the privilege with respect to any opinions of counsel it may have obtained until after the
Seagate case is decided. It would be premature for the Court to address trial bifurcation issues at
this time.4 In addition, none of the cases cited by Enterasys states that a plaintiff will be
4 Foundry may well seek a separate trial on willfulness issues at the appropriate time. As
Foundry discussed in its opening brief, several courts have adopted that approach. See Opening
Brf. at 7. Those courts believe that any concern about duplication of evidence is far outweighed
by the harm of requiring a defendant to waive the privilege with respect to its opinions of
counsel regarding patents that may be found invalid or not infringed. See, e.g., AVIA Group
Int’l, Inc. v. Nike, Inc., 1991 WL 340569, *3-*4 (D. Or. Sept. 17, 1991); Plasmanet, Inc. v. Apax
Partners, Inc., No. 02 Civ. 9290 BSJ THK, 2003 WL 21800981, *3 (S.D.N.Y. Aug. 5, 2003).
Indeed, the Federal Circuit itself has recommended bifurcation as a way to avoid imposing on a
defendant the need to choose between preserving the attorney-client privilege and defending
itself against a charge of willful infringement:
Proper resolution of the dilemma of an accused infringer who must choose
between the lawful assertion of the attorney-client privilege and avoidance of a
willfulness finding if infringement is found, is of great importance not only to the
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hindered in pursuing discovery on infringement issues if it is denied early access to the
defendant’s opinion letters. That proposition is simply untrue.
Enterasys does not dispute that ordering disclosure of Foundry’s opinions of counsel now
would lead to unnecessary disputes over the scope of the privilege waiver. Thus, requiring early
disclosure would actually distract the parties away from focusing on liability issues and would
create an additional burden on this Court. In addition, the Court’s Markman order may influence
Foundry’s decision on whether to waive privilege over opinions of counsel because the Court’s
construction of the asserted claims may affect the reasonableness of the opinion and Foundry’s
reliance thereon.
For these reasons, granting Foundry’s motion will not have an adverse impact on other
discovery or trial preparation activities and will actually help the parties move the rest of the case
forward and spare the Court from unnecessary and burdensome discovery disputes.
4. Foundry Has Not Overstated the Uncertainty in the Law or the Resulting Dilemma
It Faces Regarding Whether to Disclose Opinions of Counsel and Waive Privilege
Enterasys’ final argument is that Foundry “exaggerates the uncertain state of the law
relating to [the] scope of waiver of the privilege.” Opp. at 6. Several facts show this is not true.
parties but to the fundamental values sought to be preserved by the attorney-client
privilege. An accused infringer, therefore, should not, without the trial court’s
careful consideration, be forced to choose between waiving the privilege in order
to protect itself from a willfulness finding, in which case it may risk prejudicing
itself on the question of liability, and maintaining the privilege, in which case it
may risk being found to be a willful infringer if liability is found. Trial courts
thus should give serious consideration to a separate trial on willfulness whenever
the particular attorney-client communications, once inspected by the court in
camera, reveal that the defendant is indeed confronted with this dilemma. While
our court has recognized that refusal of a separate trial will not require reversal in
every case involving attorney client communications bearing on willfulness, we
have suggested the advisability of separate trials in appropriate cases.”
Quantum Corp. v. Tandon Corp., 940 F.2d 642, 643-44 (Fed. Cir. 1991). However, there is no
need to decide that issue at this time as the present motion raises a separate and distinct issue.
Case 1:05-cv-11298-DPW Document 106 Filed 05/29/2007 Page 8 of 11
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First, Enterasys acknowledges that at least one district court has held that disclosing
opinions of counsel leads to a broad waiver of privilege that applies even to communications
between the defendant and its trial counsel. Opp. at 6; Convolve, Inc. v. Compaq Computer
Corp., 224 F.R.D. 98, 105 (S.D.N.Y. 2004). Enterasys argues that there is no “serious cause for
concern that the Federal Circuit is going to adopt this lone holding,” Opp. at 6. To the contrary,
there also is no guarantee that the Federal Circuit will not adopt the Convolve court’s position.
In fact, Enterasys completely ignores the procedural history of the Seagate case, which resulted
from an appeal of the Convolve court’s ruling by one of the defendants in that case on the scope
of the waiver. See Exhibit C at 1, n.1. The fact that the lower court ruled in that manner creates
a substantial risk that the Federal Circuit will follow suit in deciding the Seagate/Convolve
appeal.
Second, the Federal Circuit would not have granted en banc review in Seagate if it did
not believe that the scope of the privilege waiver was an important and unsettled issue requiring
the attention of the full court. En banc review is generally only permitted “to secure or maintain
uniformity of the court’s decisions” or where “the proceeding involves a question of exceptional
importance.” Fed. R. App. P. 35; see also Fed. Cir. Rule 35.
Third, Enterasys’ own brief refers to language in In re Echostar Communications Corp.
in which the Federal Circuit stated that the waiver resulting from reliance on opinions of counsel
applies to “any attorney-client communications relating to the same subject matter,” 448 F.3d
1294, 1299 (Fed. Cir.), cert. denied 127 S. Ct. 846 (2006), which Enterasys has clearly cited for
the purpose of suggesting that “any attorney-client communications” includes communications
with trial counsel. Thus, despite Enterasys’ efforts to lull Foundry and the Court into believing
that Foundry has no cause for concern, Enterasys clearly intends to argue for a broad waiver of
Case 1:05-cv-11298-DPW Document 106 Filed 05/29/2007 Page 9 of 11
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privilege should Foundry announce that it intends to rely on opinions of counsel as part of its
defense against the charge of willful infringement.
Finally, at least one other court has recognized the burden to defendants of waiving
privilege under when the scope of that waiver is unsettled. Chief Judge Walker of the United
States District Court for the Northern of District of California recently issued an order almost
identical to the order Foundry seeks here on strikingly similar facts. See 3Com Corp. v. D-Link
Sys., Inc., No. 03- 2177, slip op. (N.D. Cal. Apr. 27, 2007) (order granting extension of deadline
for disclosing reliance on opinions of counsel to avoid a charge of willful infringement based on
pending Seagate decision). A copy of the order is attached as Exhibit D. In 3Com, the court
held that:
So long as the scope of privilege waiver and the scope of the statutory duty of
care remain unknown, defendants should not be required to produce otherwise
privileged information. This is particularly true where the Federal Circuit is
expected to clarify the law on these issues in a matter of months.
Id. at 3.
It is, of course, within Enterasys’ power to eliminate the uncertainty altogether. If it truly
believes that the outcome of Seagate is preordained, then Enterasys should be willing to enter
into a stipulation providing that, regardless of the outcome in Seagate, Foundry’s production of
and reliance upon opinions of counsel in this case will not constitute a waiver of privilege with
respect to Foundry’s communications with its trial counsel, and will not effect a waiver as to
topics not expressly addressed in any disclosed opinions of counsel. If Enterasys refuses to enter
into such a stipulation, that will prove the disingenuousness of its argument.
CONCLUSION
For the foregoing reasons, Foundry respectfully requests that this Court grant Foundry’s
motion (Docket 92).
Case 1:05-cv-11298-DPW Document 106 Filed 05/29/2007 Page 10 of 11
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Dated: May 29, 2007 Respectfully submitted,
/s/ Steven M. Bauer
Steven M. Bauer (BBO# 542531)
Jeremy P. Oczek (BBO# 647509)
John W. Pint (BBO# 660548)
PROSKAUER ROSE LLP
One International Place
Boston, MA 02110-2600
Telephone: (617) 526-9600
Facsimile: (617) 526-9899
William Anthony, Jr.*
I. Neel Chatterjee*
Fabio E. Marino*
Matthew H. Poppe*
Michael F. Heafey (BBO# 556931)
Sanjeet K. Dutta*
ORRICK, HERRINGTON & SUTCLIFFE LLP
1000 Marsh Road
Menlo Park, CA 94025
Telephone: (650) 614-7400
Facsimile: (650) 614-7401
* Admitted Pro Hac Vice
ATTORNEYS FOR DEFENDANT
FOUNDRY NETWORKS, INC.
CERTIFICATE OF SERVICE
The undersigned hereby certifies that this document was filed through the ECF system on
May 29, 2007 and will be sent electronically to the registered participants as identified on the
Notice of Electronic Filing (NEF).
/s/ Steven M. Bauer
Steven M. Bauer
Case 1:05-cv-11298-DPW Document 106 Filed 05/29/2007 Page 11 of 11
EXHIBIT A
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EXHIBIT B
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Case Details
U.S. Court of Appeals for the Federal Circuit
VERIZON SERVICES V VONAGE HOLDINGS
2007-1240
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Date History
5/9/2007 Due BLUE BRIEF
/ / Appellant Principal Brief Filing Date
/ / Appellee or Cross Appellant Principal Brief Filing Date
/ / Appellant Reply Brief Filing Date
/ / Cross Appellant Reply Brief Filing Date
/ / Appendicies Filing Date
6/25/2007 Oral Argument Date / Calendared
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>> Please Note: The briefs above are only the most current. <<
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--- >> Please Note: Motions & Actions Filed are listed first. Entries are listed last.<<
5/1/2007 MOTION: Entry 26 :by Appellant - Motion to vacate district court's finding of validity, to
vacate the district court's order and to remand for a new trial. SERVICE : by Mail on
4/30/2007
. REPLY 1: 5/2/2007 , Entry # 28
5/2/2007 ACTION: Entry 29 :The motion is denied. The counsel may include the arguments in their
briefs on the merits.
4/13/2007 MOTION: Entry 11 :by Appellants - Emergency Motion to Stay the District Court's
Injunction (with Separate Exhibits A-N [Confidential and Non-Confidential Versions]) as
designated "Submitted pursuant to the Court Order of 4/10/07". SERVICE : by Hand on
4/13/2007
. REPLY 1: 4/17/2007 , Entry # 12
4/24/2007 ACTION: Entry 22 :See order, entry #19.
4/6/2007 MOTION: Entry 2 :by Appellants - Defendants' Emergency Motion to Stay the District
Court's Injunction (w/Separate Exhibits Volume). SERVICE : by Mail on 4/6/2007
. REPLY 1: 4/9/2007 , Entry # 6
. REPLY 2: 4/13/2007 , Entry # 10
4/24/2007 ACTION: Entry 19 :Granted. Vonage's opening brief is due May 9,2007. Verizon opening
brief is due May 23, 2007; Reply brief due 5/30/2007. All briefs hand-served. Oral
argument is scheduled for June 25, 2007 at 10:00 a.m.
Case 1:05-cv-11298-DPW Document 106-3 Filed 05/29/2007 Page 2 of 4
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. >> Entries for Case Number: 2007-1240 <<
Entry 30 : 5/2/2007 : Docketing statement for appellees, Verizon Services Corp., et al.
. SERVICE : by Mail on 5/2/2007
Entry 27 : 5/2/2007 : Response to oral argument order from Richard G. Taranto for Appellee Verizon
Communications, Inc.
. SERVICE : by Mail on 5/1/2007
Entry 24 : 4/26/2007 : Appellees' corrected confidential & nonconfidential versions of its response &
appendices submitted pursuant to the order of 4/23/07. (sent to Panel)
. SERVICE : by Hand on 4/26/2007
Entry 23 : 4/26/2007 : Appellants' second corrected confidential & nonconfidential versions of the
motion to stay & appendices submitted pursuant to the order of 4/23/07. (circulated to the
Panel)
. SERVICE : by Hand on 4/26/2007
Entry 18 : 4/24/2007 : Notice to appellees: The docketing statement for appellees, Verizon
Communications, Inc., et. al., is overdue. The docketing statement shall be filed no later
than May 8, 2007.
. SERVICE : by Court on 4/24/2007
Entry 17 : 4/23/2007 : Ordered:Vonage directed to file 2nd corrected confid. & nonconfid. versions of
its motion for stay & append. no later than noon 4/26/07. Verizon directed to file corrected
confid. & nonconfid. response & appendix no later than noon 4/26/07(see order
. SERVICE : by Court on 4/23/2007
Entry 16 : 4/23/2007 : Letter of Verizon's counsel noting two clerical errors in Verizon's Opposition
filed 4/13/07 and one calculation error in the accompanying Declaration of Steven Shavell.
(Sent to Panel)
. SERVICE : by Fax on 4/23/2007
Entry 15 : 4/20/2007 : Official Caption revised and copies sent to parties.
. SERVICE : by Mail on 4/20/2007
Entry 14 : 4/20/2007 : NOTE TO FILE: Lead Appeal 2007-1240 is consolidated with Appeal
2007-1274 (filed by Vonage Holdings Corp., et al., docketed on 4/20/07).
. SERVICE : by Mail on 4/20/2007
Entry 21 : 4/18/2007 : Response to the oral argument order by Roger E. Warin for Vonage regarding
argument on the motion to stay on 4/25/07.
. SERVICE : by Mail on 4/11/2007
Entry 20 : 4/17/2007 : Response by Verizon counsel Richard G. Taranto to the oral argument order
for argument on the motion to stay scheduled for 4/24/07.
. SERVICE : by Mail on 4/11/2007
Entry 13 : 4/17/2007 : Docketing Statement from Appellant Vonage Holdings Corp. and Vonage
America, Inc.
. SERVICE : by Mail on 4/17/2007
Case 1:05-cv-11298-DPW Document 106-3 Filed 05/29/2007 Page 3 of 4
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Entry 25 : 4/16/2007 : Transcript Purchase Order Form from appellants, Vonage America, Inc. and
Vonage Holdings Corp. indicating that a transcript is already on file.
Entry 9 : 4/10/2007 : Certificate of Interest for Verizon Services Corp., et al.
. SERVICE : by Hand on 4/10/2007
Entry 8 : 4/10/2007 : [continuation of entry #7]... An original and 5 copies of each pleading shall be
filed. Oral argument on Emerg Motion to Stay is scheduled at 10 a.m. on Tuesday, April
24, 2007.
. SERVICE : by Fax on 4/10/2007
Entry 7 : 4/10/2007 : Ordered: [see printed order for all details] Verizon to serve its response to
Vonage by hand delivery. Vonage directed to file new versions of its motion no later than
4/13/07. Vonage's reply due 5pm on 4/17/07 (to be hand served). [continued...]
. SERVICE : by Court on 4/10/2007
Entry 5 : 4/6/2007 : Official Caption revised and Copies sent to parties.
. SERVICE : by Mail on 4/6/2007
Entry 4 : 4/6/2007 : NOTE TO FILE: Lead Appeal 2007-1240 is consolidated with Appeal
2007-1251 (filed by Vonage Holdings, Inc., et al., docketed on 4/6/07).
. SERVICE : by Mail on 4/6/2007
Entry 3 : 4/6/2007 : Ordered: Verizon et al are directed to respond to the motion for stay pending
appeal of injunction issued by USDC/EDVA no later than 4/13/07. Injunction is
temporarily stayed pending receipt of response and court's consideration of the papers.
. SERVICE : by Fax on 4/6/2007
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PACER Login: pr1358 Client Code: 65672/076/8050
Description: dkt detail Search Criteria: 2007-1240
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Case 1:05-cv-11298-DPW Document 106-3 Filed 05/29/2007 Page 4 of 4
EXHIBIT C
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EXHIBIT D
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IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
3COM CORP,
Plaintiff,
v
D-LINK SYSTEMS, INC,
Defendant,
and
REALTEK SEMICONDUCTOR CORP,
Intervenor.
3COM CORP,
Plaintiff,
V
D-LINK SYSTEMS, INC,
Defendant.
/
No C 03-2177 VRW
No C 05-0098 VRW
ORDER
The parties in the above related cases request the
court’s assistance in resolving a discovery dispute detailed in
their respective letters of April 17, 2007. Doc ##394-395 (03-2177
case); Doc #241 (05-0098 case). 3Com Corp alleges willful
infringement in both cases. Patent Local Rule 3-8 requires certain
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disclosures where an alleged infringer intends to rely on an
“opinion of counsel” defense. Specifically, Patent Local Rule 3-8
requires disclosure of (1) the opinion, (2) any documents for which
the party agrees attorney-client or work product protection has
been waived and (3) a privilege log identifying any other document
that the party is withholding on the grounds of attorney-client or
work product protection. The rule exempts from the logging
obligation any identification of those documents “authored by
counsel acting solely as trial counsel.”
3Com seeks these disclosures now, pursuant to the
deadline set forth in Rule 3-8. D-Link Systems, Inc and Realtek
Semiconductor Corp (collectively “defendants”) propose bifurcation
of the issue of willfulness so that the parties may benefit from
the pending Federal Circuit opinion in In re Seagate Technology,
LLC. Alternatively, defendants seek postponement of their Rule 3-8
disclosures until as late as reasonably possible in light of the
current trial date.
In In re Seagate Technology, LLC, the Federal Circuit has
invited briefing on whether a party’s assertion of the advice of
counsel defense should extend waiver of the attorney-client
privilege to communications with that party’s trial counsel. See
Doc #234 (05-00098), Ex A. The circuit cited to its previous
ruling In re EchoStar, 448 F3d 1294 (Fed Cir 2006), which goes
beyond Patent Local Rule 3-8 by requiring that communications with
trial counsel concerning an asserted opinion must not only be
logged but must also be produced. Seagate will also consider the
Federal Circuit’s prior decision in Underwater Devices, Inc v
Morrison-Knudsen Co, 717 F2d 1380 (Fed Cir 1983), which addresses
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the statutory duty of care once an infringer is put on notice of
another’s patent rights.
3Com argues that defendants should make their Rule 3-8
disclosures now because, if the Federal Circuit overrules EchoStar,
defendants will not have disclosed any information that they would
not already have had to disclose. Doc #394 at 2. Defendants argue
that awaiting the Seagate decision will permit them to make an
informed decision on whether to rely on an advice of counsel
defense in the first place. Doc #395 at 2. The court agrees. So
long as the scope of privilege waiver and the scope of the
statutory duty of care remain unknown, defendants should not be
required to produce otherwise privileged information. This is
particularly true where the Federal Circuit is expected to clarify
the law on these issues in a matter of months. (The Federal
Circuit has scheduled oral argument in Seagate for June 7, 2007.)
Moreover, 3Com does not claim any prejudice from the delay, and
defendants’ proposal will not require modification of the trial
date.
Accordingly, defendants may postpone their Patent Local
Rule 3-8 disclosures until the earlier of November 1, 2007 or 30
days after the Federal Circuit’s ruling in Seagate.
SO ORDERED.
VAUGHN R WALKER
United States District Chief Judge
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