Netflix, Inc. v. Blockbuster, Inc.

Filing 211

Attachment 5

Declaration of Eugene M. Paige in Support of 210 Memorandum in Opposition To Motion For Protective Order filed byNetflix, Inc.. (Attachments: # 1 Exhibit A-1# 2 Exhibit A-2# 3 Exhibit B# 4 Exhibit C# 5 Exhibit D# 6 Exhibit E# 7 Exhibit F# 8 Exhibit G# 9 Exhibit H# 10 Exhibit I# 11 Exhibit J)(Related document(s)210) (Durie, Daralyn) (Filed on 5/18/2007)

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Netflix, Inc. v. Blockbuster, Inc. Doc. 211 Att. 5 Case 3:06-cv-02361-WHA Document 211-6 Filed 05/18/2007 Page 1 of 39 EXHIBIT D Dockets.Justia.com Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Document 211-6 Document 177-1 LAW OFFICES Filed 04/11/2007 Filed 05/18/2007 Page 1 of 38 Page 2 of 39 KEKER & VAN NEST LLP 710 SANSOME STREET SAN FRANCISCO, CA 94111-1704 TELEPHONE (415) 391-5400 FAX (415) 397-7188 WWW.KVN.COM DARALYN J. DURIE DDURIE""KVN.COM April II , 2007 VIA HAND DELIVERY The Honorable Willam Alsup United States Distrct Cour Northern District of California 450 Golden Gate Avenue San Francisco, CA 94102 Re: Netfix, Inc. v. Blockbuster, Inc., Case No. C-06-2361 WHA (JCS) Dear Judge Alsup: I write concerning an urgent matter because Judge Spero is out oftown this week. Earlier this week, following our receipt of Blockbuster's opinions of counsel, we sent the letters the Blockbuster's waiver of that are attached hereto as Exhibit A concerning the scope of attorney client and work product privileges. We notified Blockbuster that we would bring a we couldn't resolve the issues 19 (the deadline for doing so) if motion to compel by April presented in our letter. Today, in lieu of a response to our letter, we received courtesy copies of Texas, asking for Blockbuster's motion for a protective order, filed in the Northern District of Blockbuster's waiver or in the alternative to defer the Texas cour to rule on the scope of Netflx's ability to obtain such discovery from Blockbuster and its counsel until after the Federal that motion (minus the Circuit issues a ruling in an unelated pending case. A copy of voluminous exhibits) is attached as Exhibit B. 393449.01 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA The Honorable William Alsup April 11, 2007 Page 2 Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 2 of 38 Page 3 of 39 We ask that the Court conduct a conference call with the paries to address the issues raised in the exhibits to the letter-before the court in Texas issues rulings that will affect the way in which discovery is governed in this case. Respectfully submitted, KEKER & V AN NEST LLP DARLYN J. DUR Attorneys for Plaintiff and Counterclaim-Defendant Netfix, Inc. DJD/dbm Attachment cc: William J. O'Brien, Esq. Marshall B. Grossman, Esq. Michael L. Raiff, Esq. Daniel J. Kelly, Esq. Vinson & Elkins 393449.01 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 3 of 38 Page 4 of 39 EXHIBIT 'A' Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 4 of 38 Page 5 of 39 LAW OFFICES KEKER & VAN NEST LLP 710 SANSOME STREET SAN FRANCISCO, CA 94111-1704 TELEPHONE (415) 391-5400 FAX (415) 397-7188 WWW.KVN.COM DOROTHY R. McLAUGHLIN DMCLAUGHLINIlKVN.COM April 9, 2007 VIA OVERNIGHT MAL Richard A. Fran 10041 Ferndale Road Dallas, Texas 75238 Re: Netfix v. Blockbuster, Inc., Case No. C-06-2361 WHA Dear Mr. Fran: Keker and Van Nest serves as counsel for Netflix. I wrte with regard to the subpoena that was sered on you last Wednesday in the above-mentioned case. Netflix sued Blockbuster in April 2006 for inngement of two ofNetflix's patents: U.S. Patent Patent") and U.S. Patent No. 7,024,381 (the "'381 Patent") No. 6,584,450 (the "'450 (collectively ''te patents in suit'). Netflx alleges, among other thngs, that Blockbuster has infnged and is infging these patents willflly. As a defense to Netflx's charge of willfuness, Blockbuster seeks to rely upon-and has produced to us--pinions of counsel regarding the '450 and '381 patents. Blockbuster has thus waived the attorney-client privilege and, to some extent, the work product protection that previously shielded from discovery documents related to these opinions. See In re Echostar Commc 'ns. Corp., 448 F.3d 1294, 1304 (Fed. Cir. 2006). Specifically, the Federal Circuit noted in Echostar that three categories of documents are relevant to waiver related to an advice-ofcounsel defense: 1. documents that embody a communication between the attorney and client concerng the case, such as a traditional opinion letter; the subject matter of 2. documents analyzing the law, facts, tral strategy, and so forth that reflect the attorney's mental impressions but were not given to the client; and 3. documents that discuss a communication between attorney and client concernng the the case but are not themselves communcations to or from the subject matter of client. 393273.01 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Richard A. Fran April 9, 2007 Page 2 Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 5 of 38 Page 6 of 39 See id. at 1302 (citation omitted). The Federal Circuit held that upon assertion ofthe advice-ofcounsel defense the attorney-client privilege and work product iiiunty are waived with regard to categories one and thee above. Id. at 1304. the waiver ariculated in Echostar may change, the law with regard to the scope of given the Federal Circuit's decision to rehear en bane In re Seagate Technology, LLC. Misc. No. 830,2007 WL 196403, at *1 (Fed. Cir. Jan. 26, 2007). The en bane ruling may either widen or narow the scope of Blockbuster's waivers. The Federal Circuit's decision in Echostar, The state of however, establishes the curent state of the law and remains bindig uness and unti it is overted by the Federal Circuit en banco Fed. Nat. '1 Mortgage Ass 'n. v. United States, 469 F.3d 968, 972 (Fed. Cir. 2006) ("A panel of this cour is bound by prior precedential decisions unless and until overted en banc.") (quotation marks and citation omitted). enforce the law as it curently exists and are therefore expectig production of documents described in categories one and thee above. Additionally, we ask that you please preserve all documents described in category two because that information may become discoverable before this case is over. We intend to Our deadline to fie a motion to compel is April 19, 2007. We would like to avoid unecessar motion practice regarding these documents. Please let me know in wrting by Friday, April 13 whether you wil produce the documents that you are required to produce to Netflix under Echostar, as discussed above. Feel free to contact me with any questions at 415-391-5400. DRM 393273.01 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 6 of 38 Page 7 of 39 LAW OFFICES KEKER & VAN NEST LLP 710 SAN SOME STREET SAN FRANCISCO, CA 94111.1704 TELEPHONE (415) 391-640D FAX (415) 397-7188 WWW.KVN.COM DOROTHY R. McLAUGHLIN DMCLAUGHLINClKVN.COM April 9, 2007 VIA PDF & u.s. MAI Willam J. O'Brien Alschuler Grossman LLP 1620 26th Street, 4th Floor, North Tower Santa Monica, CA 90404-4060 Re: Netfix v. Blockbuster, Inc., Case No. C-06-2361 WHA Dear Bil: I wrte with regard to the subpoena that was served on you last Wednesday in the abovementioned case. willfulness, it appears that Blockbuster seeks to rely upon counsel regardig the '450 and '381 patents that have been produced to Netflx. opinons of Blockbuster has thus waived the attorney-client privilege and, to some extent, the work product protection that previously shielded from discovery documents related to these opinons. See In re Echostar Commc'ns. Corp., 448 F.3d 1294,1304 (Fed. Cir. 2006). Specifcally, the Federal Circuit noted in Echostar that thee categories of documents are relevant to waiver related to an As a defense to Netflx's charge of advice-of-counsel defense: 1. documents that embody a communcation between the attorney and client concernng the subject matter of the case, such as a traditional opinon letter; 2. documents analyzing the law, facts, tral strategy, and so forth that reflect the attorney's mental impressions but were not given to the client; and 3. documents that discuss a communication between attorney and client concerning the the case but are not themselves communications to or from the subject matter of client. See id. at 1302 (citation omitted). The Federal Circuit held that upon assertion of the advice-of- counsel defense the attorney-client privilege and work product immunty are waived with regard to categories one and three above. �d. at 1304. 393279.01 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Wiliam J. O'Brien April Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 7 of 38 Page 8 of 39 9, 2007 Page 2 The state of the law with regard to the scope of the waiver ariculated in Echostar may change, given the Federal Circuit's decision to rehear en banc In re Seagate Technology, LLC. Misc. No. 830,2007 WL 196403, at *1 (Fed. Cir. Jan. 26,2007). The en bane ruling may either widen or Blockbuster's waivers. The Federal Circuit's decision in Echostar, narow the scope of the law and remains binding uness and until it is however, establishes the curent state of overed by the Federal Circuit en banco Fed. Nat. '1 Mortgage Ass 'n. V. United States, 469 F 3d 968, 972 (Fed. Cir. 2006) ("A panel of ths cour is bound by prior precedential decisions uness and until overted en banc.") (quotation marks and citation omitted). We intend to enforce the law as it curently exists and are therefore expectig production of documents described in categories one and three above. Additionally, we ask that you please preserve all documents described in category two because that information may become discoverable before this case is over. 19, 2007. We would like to avoid unecessar Our deadline to fie a motion to compel is April motion practice regarding these documents. Please let me know in wrting by Friday, April 13 whether you wil produce the documents that you are required to produce to N etfix under Echostar, as discussed above. Feel free to contact me with any questions at 415-391-5400. DRM 393279.01 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 8 of 38 Page 9 of 39 LAW OFFICES KEKER & VANNEST LLP 710 SANSOME STREET SAN FRANCISCO, CA 94111-1704 TELEPHONE (415) 391-5400 FAX (415) 397-7188 WWW.KVN.COM DOROTHY R. McLAUGHLIN DMCLAUGHL1NliKVN.COM April 9, 2007 VIA PDF & U.S. MAL Baron E. Showalter 2001 Ross Avenue Dallas, Texas 75201-2980 Re: Netfix v. Blockbuster, Inc., Case No. C-06-2361 WHA Dear Mr. Showalter: Keker and Van Nest serves as counsel for Netflx. I wrte with regard to the subpoena that was served on you last Wednesday in the above-mentioned case. Netflx sued Blockbuster in April two ofNetflx's patents: U.S. Patent No. 6,584,450 (the '''450 Patent") and U.S. Patent No. 7,024,381 (the "'381 Patent") (collectively ''te patents in suit'). Netflix alleges, among other things, that Blockbuster has infrged and is infnging these patents willfully. 2006 for ingement of As a defense to Netflx's charge of willflness, Blockbuster seeks to rely upon-and has produced to us-pinions of counsel regardig the '450 and '381 patents. Blockbuster has thus waived the attorney-client privilege and, to some extent, the work product protection that previously shielded from discovery documents related to these opinions. See In re Echostar Commc'ns. Corp., 448 F.3d 1294, 1304 (Fed. Cir. 2006). Specifically, the Federal Circuit noted in Echostar that three categories of documents are relevant to waiver related to an advice-ofcounel defense: 1. documents that embody a communication between the attorney and client concerng the subject matter of the case, such as a traditional opinion letter; 2. documents analyzing the law, facts, tral strategy, and so fort that reflect the attorney's mental impressions but were not given to the client; and 3. documents that discuss a communication between attorney and client concerng the subject matter ofthe case but are not themselves communcations to or from the client. 393299.01 Caase3:06-cv-02361-WHA Document 211-6 C se 3:06-cv-02361-WHA Document 177-1 Filed 05/18/2007 Filed 04/11/2007 Page 10of 38 Page 9 of 39 Bar E. Showalter April 9, 2007 Page 2 See id. at 1302 (citation omitted). The Federal Circuit held that upon assertion ofthe advice-ofcounel defense the attorney-client privilege and work product immunty are waived with regard to categories one and three above. Id. at 1304. The state of the law with regard to the scope of the waiver ariculated in Echostar may change, given the Federal Circuit's decision to rehear en banc In re Seagate Technology, LLC. Misc. No. 830,2007 WL 196403, at *1 (Fed. Cir. Jan. 26, 2007). The en banc ruling may either widen or in Echostar, narow the scope of Blockbuster's waivers. The Federal Circuit's decision remains binding unless and until it is the law and however, establishes the curent state of overted by the Federal Circuit en bane. Fed. Nat. '1 Mortgage Ass 'n. v. United States, 469 F 3d 968, 972 (Fed. Cir. 2006) ("A panel of this cour is bound by prior precedential decisions unless and until overted en banc.") (quotation marks and citation omitted). We intend to enforce the law as it currently exists an4 are therefore expecting production of documents described in categories one and three above. Additionally, we ask that you please preserve all documents described in category two because that information may become discoverable before this case is over. Our deadline to file a motion to compel is April 19, 2007 . We would like to avoid unecessar motion practice regardig these documents. Please let me know in wrting by Friday, April 13 whether you will produce the documents that you are required to produce to Netflx under Echostar, as discussed above. Feel free to contact me with any questions at 415-391-5400. DRM 393299.01 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 10 of 38 Page 11 of 39 LAW OFFICES KEKER & VAN NEST LLP 710 SANSOME STREET SAN FRANCISCO, CA 94111-1704 TELEPHONE (415) 391-5400 FAX (415) 397-7188 WWW.KVN.COM DOROTHY R. McLAUGHLIN DMCLAUGHLI N(lKVN.COM April 9, 2007 VI PDF & u.s. MAI Edwin H. Taylor Blakely Sokoloff Taylor & Zafman LLP 1279 Oakead Parkway Sunyvale, California 94085-4040 Re: Netfix v. Blockbuster, Inc., Case No. C-06-2361 WHA Dear Mr. Taylor: Keker and VanNest serves as counsel for Netflix. I wrte with regard to the subpoena that was served on you last Wednesday in the above-mentioned case. two ofNetflix's patents: U.S. Patent No. 6,584,450 (the "'450 Patent") and U.S. Patent No. 7,024,381 (the '''381 Patent") (collectively "the patents in suit"). Netflix alleges, among other thngs, that Blockbuster has Netflx sued Blockbuster in April 2006 for infrngement of . infrnged and is infgig these patents willfully. As a defense to Netflx's charge of willfulness, Blockbuster seeks to rely upon-and has produced to us--pinions of counel regardig the' 450 and '381 patents. Blockbuster has thus waived the attorney-client privilege and, to some extent, the work product protection that previously shielded from discovery documents related to these opinions. See In re Echostar Commc 'ns. Corp., 448 F.3d 1294, 1304 (Fed. Cir. 2006). Specifically, the Federal Circuit noted in Echostar that thee categories of documents are relevant to waiver related to an advice-of- counsel defense: 1. documents that embody a communication between the attorney and client concernng the subject matter of the case, such as a traditional opinion letter; 2. documents analyzing the law, facts, tral strategy, and so fort that reflect the attorney's mental impressions but were not given to the client; and 3. documents that discuss a communcation between attorney and client concerning the the case but are not themselves communcations to or from the subject matter of client. 393177.01 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Edwin H. Taylor April 9, 2007 Page 2 Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 11 of 38 Page 12 of 39 See id. at 1302 (citation omitted). The Federal Circuit held that upon assertion of the advice-ofcounsel defense the attorney-client privilege and work product immunty are waived with regard to categories one and thee above. �d. at 1304. The state of the law with regard to the scope of the waiver ariculated in Echostar may change, given the Federal Circuit's decision to rehear en bane In re Seagate Technology, LLC. Misc. No. 830,2007 WL 196403, at *1 (Fed. Cir. Jan. 26, 2007). The en bane ruling may either widen or narow the scope of Blockbuster's waivers. The Federal Circuit's decision in Echostar, however, establishes the curent state of the law and remai binding unless and until it is overted by the Federal Circuit en banco Fed. Nat. '1 Mortgage Ass 'n. v. United States, 469 F .3d 968, 972 (Fed. Cir. 2006) ("A panel ofthis cour is bound by prior precedential decisions unless and until overted en banc.") (quotation marks and citation omitted). We intend to enforce the law as it curently exists and are therefore expecting production of document~ described in categories one and thee above. Additionally, we ask that you please preserve all documents described in category two because that information may become discoverable before this case is over. Our deadline to fie a motion to compel is April 19, 2007. We would like to avoid unecessary 13 motion practice regarding these documents. Please let me know in wrting by Friday, April whether you will produce the documents that you are required to produce to Netflx under Echostar, as discussed above. Feel free to contact me with any questions at 415-391-5400. DRM 3931n.01 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 12 of 38 Page 13 of 39 LAW OFFICES KEKER & VAN NEST LLP 710 SAN80ME STREET SAN FRANCISCO, CA 94111-1704 TELEPHONE (415) 391-5400 FAX (415) 397-7188 WWW.KVN.COM DOROTHY R. MCLAUGHLIN DMCLAUGHLINliKVN.COM April 9, 2007 VIA PDF & U.S. MAL Samuel Waxman Shearan & Sterling LLP 599 Lexington Avenue New York, New York 10022 Re: Netjix v. Blockbuster, Inc., Case No. C-06-2361 WHA Dear Mr. Waxan: Keker and Van Nest serves as counsel for Netflix. I wrte with regard to the subpoena that was served on you last Wednesday in the above-mentioned case. Netflx sued Blockbuster in April two ofNetflx's patents: U.S. Patent No. 6,584,450 (the "'450 Patent") and U.S. Patent No. 7,024,381 (the "'381 Patent") (collectively "the patents in suit"). Netflx alleges, among other thgs, that Blockbuster has infrnged and is infrngig these patents willflly. 2006 for infrgement of As a defene to Netflx's charge of willfulness, Blockbuster seeks to rely upon-and has produced to us--pinons of counsel regarding the' 450 and '381 patents. Blockbuster has thus waived the attorney-client privilege and, to some extent, the work product protection that previously shielded from discovery documents related to these opinons. See In re Echostar Commc 'ns. Corp., 448 F.3d 1294, 1304 (Fed. Cir. 2006). Specifically, the Federal Circuit noted in Echostar that three categories of documents are relevant to waiver related to an advice-of- counsel defense: 1. documents that embody a communcation between the attorney and client concernng the subject matter of the case, such as a traditional opinion letter; 2. documents analyzg the law, facts, tral strategy, and so forth that reflect the attorney's mental impressions but were not given to the client; and 3. documents that discuss a communication between attorney and client concerng the subject matter of the case but are not themselves communications to or from the client. 393288.01 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Samuel Waxman April Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 13 of 38 Page 14 of 39 9, 2007 Page 2 See id. at 1302 (citation omitted). The Federal Circuit held that upon assertion of the advice-ofcounsel defense the attorney-client privilege and work product immunty are waived with regard to categories one and three above. �d. at 1304. The state of the law with regard to the scope of the waiver ariculated in Echostar may change, given the Federal Circuit's decision to rehear en banc In re Seagate Technology, LLC. Misc. No. 830,2007 WL 196403, at *1 (Fed. Cir. Jan. 26,2007). The en banc ruing may either widen or narow the scope of Blockbuster's waivers. The Federal Circuit's decision in Echostar, however, establishes the curent state of the law and remais bindig uness and until it is overured by the Federal Circuit en banco Fed. Nat. '1 Mortgage Ass 'n. V. United States, 469 F.3d 968, 972 (Fed. Cir. 2006) ("A panel of ths cour is bound by prior precedential decisions uness and until overtured en banc.") (quotation marks and citation omitted). We intend to enforce the law as it curently exists and are therefore expecting production of documents described in categories one and thee above. Additionally, we ask that you please preserve all documents described in category two because that information may become discoverable before ths case is over. Our deadline to file a motion to compel is April 19, 2007. We would like to avoid unecessar 13 motion practice regarding these documents. Please let me know in wrting by Friday, April whether you wil produce the documents that you are requied to produce to Netflx under Echostar, as discussed above. Feel free to contact me with any questions at 415-391-5400. DRM 393286.01 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 14 of 38 Page 15 of 39 EXHIBIT 'B' Ca se 3:06-cv-02361-WHA Ca 04: 21 FAX 04/11/2007 se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 15 of 38 Page 16 of 39 140011087 Vinn&Ein Daniel J. Kelly dlclly r; velQw.co Tel 214.22.7Im;i FiilC 214.99.7975 Facsimile From: �.ie: Ciitntfilltr Ho. nan Kelly R&.rdlng: April 1 1, 200 Number af pa�$ BL0425/52004 Hard CDPY FoUo"lS /1 (inc. cover page) TO: No PhClri; Faii: Jeff..ey R. Chanin Daralyn J. Durie Keker & Van Nest, LLP Marshall B. G..ossman 415.397.7188 415.391.5400 310.907.2000 Alschuler Grossman LLP M�laag�: 310.907.1000 Colcill,lily Nol��: The �nfonnailon contained i" 1l.ls FAX may be coidemlal and/or pMllegtd. TI' Mx is inloi'9d 10 be 'eviWld �nmally by Dnly Ihe Individual naod .1bovo. If the reader or lhl$ TAAN$MITTAL PAGE is nollhe inlended reclpleni Dr a ~p~senla~ve Or the Intended reipjen~ you ara herey ni)llled ihal ��y rtlvicw, disemination Dr copyng of lhls FAX or ti' 1"'OI'l'tl.!iliOi eoniai"od he/gin is prohlblied. If you have i'eeild this FAX in eJ1r, pleae Immeaiely nonly "'. soioor by lelephone aM ralurn this FAX 10 Ihe eendsr at (he bew iiddr9ss. Thank yo. VIntOn .i Elkins LLP Altrn�ys al Law Austin Bel)ing Dalls Dubal HoUslOl LOndn Mosow New YOr\ Shenghai TOkyo Wa$hirii"" Trammell Crow Cenler, 2001 RQs~ Avenue, SuUe ~7OQ Dallas. TX 75201-2975 Tel 214.220.7700 FlI214,220.7716 _.lIlaw.con' Cas e 3:06-cv-02361-WHA Ca 04:21 FAX 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 16 of 38 Page 17 of 39 I4 002/087 Vinson&Ekins Di .i, Kelly dlOv�liw.com Tii 214.2.7976 Fax 21 U9l_79 April 11, 2007 Jla Hand Delivery Ms. Karen Mitchell, Clerk Norter Distrct ofTexii 14A20 Earle Cabell Federl Bldg. i 100 Commerce Stree Dallas, TX 75242-1003 Re: Netfix, Inc. v. Blockbuster, Inc,; Misc. Docket No. . In the United States Distrct Comt for the Norter Distrct of Texas, Dallas, Division Dear Ms. Mitchell: Please fid enclosed the origial and two (2) copies of the Motion an Brief For Protection an Objecons and Responses of Blockbuster Inc., Shane Evangelist, Edward Stead, and Richard A. Fran to Plaintiff NetfIx, Inc. 's Thd Amended Notice of 30(b)(6) Deposition of Shane Evangelist, Amended Notice of Depsition and Subpoena of Edward Stead, and Amended Notice of Depsition and Subpoena of Richard Fra. Also enclosed is Our Fin check in the amount of $39.00 Depsition of Blockbuster, Anended Notice of for filing of same. Please ret a file-stamped copy to me via the courer delivering same. Th you for your assistance. l-~)l:TlJl \02162:1726 D:l\i i239731vl Dael J. Kelly enclosures c: Jeffrey R. Chanin Esq. and Daralyn J. Dure, Esq. (w/enclosure) (via/ax) Marl B. Grossman, Esq.-(w/enclosme) (via/ax) Vlni;orl .. Elldnii UP Attrnes it La AusHn Belling Oallll Oui Hol.lOi Londoi Mosow New York Tokyo WUIlngton Trammell Crow Centr. 2001 Ross Aiiell, Suite ~7QO Dalas. Texas 75201-2975 toI214,220,no Fiii; 214.22.niG _.veliiw.eori Ca s04:21 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 17 ofI439 Page 18 of 38 003/087 UNITED STATES DISTRICT COURT NORTHE~ DISTRCT OF TEXAS DALLAS DMSION NETFLix~ INC. Plaintiff, v. MISC. DOCKET NO. BLOCKBUSTER INC. Defendant. MOTION AN BRIEF FOR PROTECTION AN OBJCTIONS AN RESPONSES OF BLOCKBUSTER INC.. SHAE EV ANGELIS'l,:EDW AR STEAD~ .A RIc'RD A. FR TO PLAINTIF NETF me.'S TmRD AMNDED NOTICE OF 30(B)(6) 'DEPO�ITION OF BL�CKBUSTER. AMENDED NOTICE OF DEPosmON OF SHANE EVANGELIST. AMNDED NOTICE OF DEPOSTION AND SUBPOENA OF EDW ADD STEAD. AN AMENDED NOTICE OF DEPOSITION AN SUBPOENA OF RICHA FRK Michael L. Raiff State Bar No. 00784803 Daniel J. Kelly State Bar No_ 24041229 VINSON & ELKlS L.L.P. 3700 Tranell Crow Center 2001 Ross Avenue Dallas, Texas 75201-2975 Telephone: 214.220.7704 Telecopy: 214.999.7704 AITORNEYS FOR MOV ANTS Ca s04:21 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 18 of 38 Page 19 of 39 I4 004/087 TABLE OF CONTENTS I. i:ODUCTION .................. ......aa........~ 111o.........................................,...,............. .4..4' II. 1 II. FACTUAL BACKGROUND ..,............................................ ................. ................ 2 III. ARGUMNT AND AUTORITIES .................................................................. 7 A. Ths Cour Has The Authrity And Should Hear Ths Discover Oispute Becuse The Depsitions Are Takng Place hi The N ortem Distrct of Texas. ,... .................. ......... ............ ....... ...........,.. ......... 8 B. Netf Is hnproperly Seekig to Invade The Attorney-Client Priviege By Seeking All Communcations Betwee Blockbuster And Its Trial Counsel. Th Cour Should Deny That Discover. Alteratively, This Cour Should Stay Any Discover On That Issue Pending The Federal Circuit's En Bane Ruling In Re Seagate Technology. ........ ...--- -......... ............ ....................... ....... ............. .................. 9 C. Netix Is Also Improperly Seeking To invade Tne Work-Prduct Imunty By Seekig Trial Counel's Work Product.. Ths Cour Should Deny That Discover. Alternatively, Ths Cowt Should Stay Any Discovery On Tht Issue Pending The Feder Ciruit's En Bane Rulig In Re Seagate Technology. ........................................ 12 IV. SPECIFIC RESPONSES AND OBJECTIONS TO DOCUMNT REQUESTS TO MR. STEAD AND MR. FRA........................................~. 14 A. Requesed Materials orMr. Stead ... ...___._".................................... 14 Mr. Fran ..............................""................".......15 V. CONCLUS ION ........................... .... u_................................... .............................. 17 B. Requested Materals of Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA 04/11/200704:22 FAX Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 19 of~38 Page 20 of 39 005/087 TABLE OF AUTHORITIES CASES Advanced Cardiovascular Sys., Inc_ \i. Medtronic, Inc., 265 F.3d 1294 (Fed. eir. 200 1 )............." l ......4..1.........................1 .to. I ~..................................... ~."""4"'''-" ............. ......................... 9 Ampex Corp. v. Eastman Kodak Co., No_ Civ. A. 04-1373-KAJ, 2006 WL.. i 995140 (D. DeL. July 17, 2006) ................................................................_.................... 11 Autobytel, Inc. \1_ Dealix Corp., 455 F. Supp. 2d 569 (E.D. Tex. 2006) .-................................10 Avago Technologies GenerallP Pte. Ltd. v. Elan Microelectronics Corp., No. C04-05385 RM(HRL), 2007 WL 841785 (N.D. Cat. Mar. 20, 2007) .................. 12, 14 EchoStar Commc'ns Corp.~ 448 F.3d 1294 (Fed. e�r. 2006) ............................._.............. 10, 13 Hichnan v. Taylor, 329 U.S. 495 (1947) ..................................................................._.................13 Knorr-Bremse Syst~me Fuer Nutzlahrzeuge GmbH\I. Dana Corp., 383 F.3d 1337 (Fed. eir. 2004) . .... n._n........... ................... .................... ............ ....................... ....... __.......... 9 Mattenson \i. Baxter Healthcare Corp., 438 F.3d 763 (7th eir. 2006) ......................................13 Netfix, Inc. v. Blockbuster Inc., No. C 06-02361 WH 2006 WL 2458717 (N.D. . Cal Aug. 22, 2006) ..............--.. ................... ..............._.... ................................................, .,.4 Seagate Technology, 2007 WL. 196403 (Fed. Cir. Jan. 26,2007) ............."._................... 11, 13 Upjohn Co. v. United States, 449 U.S. 383 (1981) ........_....,......................................."...,.......... 9 STATUTES Fed. R. Civ. P. 26(c)_n............................................."..................................................... i, 7, 8, 9 Fed R. Civ_ Pro 30( d)( 4)............... ..........n_n__................ ........................... ......._.._....._............... 1, 7,8 Fed. R. Civ. P. 45( c)(2)(B) .......un... ........... .......... .............................. ..... .........., ............ I, 8, 14, 17 ii Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA 04/11/200704:22 FAX Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 20 ofI439 Page 21 of 38 008/087 1 Cas e 3:06-cv-02361-WHA Ca 04:22 FAX 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 21 of~38 Page 22 of 39 007/087 halt tls unjusfied intrion into these privileged communications. Blockbuster ha not waived prvilege communcations with its tral counsel. Its only waiver is the opinon of invalidity provided by its outside patent counsel. Although the cae authority is split on the ex.tent of the waiver, it will soon be clanfied by the Feder Circut. Until that time, no waver with tral counsel should be fowi becuse the han will have been done and is iremediable should the Federal Circwt hold there is no such sweeping waiver, as is ~eced. n. FACTUAL BACKGROUN The video ren.busness ha bee in exstence for decades and, with the advent of the Interet, video reta over the Interet has emerged. Netf entered the Interet DVD subscription business in i 999. Blockbuter ba rented DVD for may year in its stors thughout the United Stas and, more rectly, Blockbuster began renting DVDs over the Interet. In April 2000, Netflix applied for a patent, broadly claiming subscrption rentals, not only for movies, but also for any kind of "item." In its patent application for ths alleged "invent�on," Netfl failed to disclose any prior ar whatsoever, despite the existence of substatial prior ar and its legal and ethcal duty of cador to the United States Patent and Tradema:k Offce. On June 24, 2003, after a cuory Patent Offce examnation, Netflix received a patent, U.S. Patent No. 6,584,450 (the '450 patent) for ths so-alled invention. Before the issuance of the '450 patent, Netflix had also filed a "continuaton" application, which ultimately resulted in the issuance of a secnd Netix patent, U.S. Patent No. 7,024,381 (the '381 patent). Ths time Netflix disclosed OVer 100 items of pnor ar, thus flOOdig the patent office. Notably, on neither occason did Netfix disclose prior ar patents in favor of NCR, even though both during the applications for the firs and second patents NCR made a claim of 2 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA 04/11/200704:23 FAX Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 22 of~38 Page 23 of 39 008/087 3 Cas 04:23 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 23 of~38 Page 24 of 39 009/087 On Augut 22, 2006, the distrct cour for the Norter Distrct of Californa dened Netix's motion to dismIss Blockbuster's antitrt counterclais and dened Netix's motion to stre Blockbuster's affve defenses of inequitable conduct and patent misue. See Netjix, Inc. v. Blockbter Inc., No. C 06-02361 WH 2006 WL 2458717 (N.D. CaL. Aug. 22, 2006). A tne and COrrect copy of that decsion is atached at Tab A. On March 29, 2007, Shae Evangelist, Senor Vice President and Geer Manager of BIockbuster Online, reeived an opiion leter from the intellecal propery law ti of Blakely Sokoloff Taylor & Zaft located in Silco Valey, Californa, on the invalidity of the '381 patent., In tht leter, the Blakely fi concluded that all claims of the '381 patent are liewise invald. The followig day, on March 30,2007, in supp~rt orits advice-of-counel defene to Netflix's chages of willful ingement, Blocbuster - thugh its counel, Alschuler Grssman LLP - produce to N etfl the opinon leter on the invalidity of the '450 and '381 patents. The Aischuler Grossma fino had no role in the fiing or prosecution of the patents in dispute and they did not pl":pare the opinion leter on the invaidity of the patents at issue. Rather, since the time Netfix fied ths suit, the Alchuler Grossman fi ha only sered as Blockbuser's tral counel in ths litigation. See Declaration of Marhall B. Grossman, attched at Tab B. Netflix and Blockbuster are currly engaged in exteive discovery and depositions and document producton is ongoing. Netflix ha now uneashed a slew of depsition notice and subpoenas for depositions of cuent and former Blockbuster employees noticed to occur in Dallas, Texas durng the weeks of April 9 and 16. hi doing so, Netix improperly seeks to 4 Ca s04:23 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 24 of~38 Page 25 of 39 010/087 invade the attrney-client pnvilege and force these Blockbuster witnesses to reveal, to the extent they occued all conversations with tral counsel about Blockbuster's liigatin strategy in ths cae. Indee, on April 10, durng the 3O()(6) depsition of Bry Stevenson, in-house counsel at Blockbuster, Netflix's counel asked a series of questions about privileged communicaons Mr. Stevenson had with Blockb'Uter's tral counel. A tre and coect copy of excerts fr�m the rough transcrpt of Bryan Stevenson's April i 0, 2007 deosition is attched hereto at Tab D. For example, among other questions, Nettlx asked Mr. Stevenson, wheter "(p)rior to Blockbuser's decision to waive the attoniey-client privilege with respec to the '450 patet, did Blockbuster recve any wrtten docuents from Alschuler Grossman (Blockbuster's tral coell regding the validity or invalidity of the '450 patent?" Tab D at 170. In addtion, Netfix's counl asked Mr. Stevenn wheer he "discuss(ed) the validity or invalidity of tl '450 and '381 patents" when he met with his tral counel to prepare for his deposition. Tab D at 176-77. Blockbuster's counsel instructed Mr. Stevenon not to anwer those questions not only because they were beyond the scope of his 3O()(6) depsition on docuent retention issues, but also because they conceed privieged communcations with his counsel. Likewise, Netfix also has sought to invade the attorney-client privilege though its questioning ofMr- Stea on April 1 i. The following suarzes the other depsitions scheduled to occur in Dallas tht Netflx has noticed thus fat: . 30(b)(6) Deposition Notice On April 4, 2001, Netflix sered Blockbuser with its Thrd Amended Notice of a 30(b)(6)Deposition of Blockbuster, Inc. A bie and correct copy of that 30(b)(6) Notice 5 Ca s04:24 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 25 of 38 Page 26 of 39 14011/087 is attached as Exhibit 4 to the Declarion of Marshall B. Grssman at Tab B. Netflix's 3O(X6) Notice lis nine different topics. Notably, topic Nine conces, "All COMMICATIONS between BLOCKBUSTER and its counel, includig but not lited to in-house counel; Alschuler Grossman LLP and its predecssr fi; Baker Botts, LLP; Blakely Sokoloff Taylor & Zaf~ LLP; and/or Shearan & Sterlin, LLP, regarding the validity or invalidity of any claim of either of the P A TENTS-IN-SUIT." (emphasis in onginal). Blockbuser designated two witnesses Mr. Stevenon and Mr. Evangelist, Senior Vice Preident of Blockbuster and Genera Manger of Blockbuster Online, as 30(bX6) witnesses. As discused above, Mr. Stevenon ba alredy tesfied and answered quesons abut Blockbuster's efforts to retan and loce docuents in reons to Netflix's docuent requests to Blockbuster (topic 8). Mr. Evangelist wil address topics 1~ 7. Netix wil now depose Mr. Evangelist in Dallas on those topics durg the week of April 16. . ShaDe Evangelt Deposition Notice Netflx wil also depse Mr. Evangelist in his individual capacity th week of April 16 in Dallas. On Marh 28) 2007, Netflx sered a depsition notice for the deposition of Mr. Evangelist. A tre and colTect copy of that Notice is attached as Exhibit 2 to the Declartion of Marhall B. Grossman at Tab B. . Edward Stead Deposition Subpoena and Document Request On March 28,2007, Netflix issued a subpoena to Mr- Stead Blockbuster's former general counel, requiring him to appea at his deposition. on April 1 i, 2007 in Dallas. The subpoena also included a document i:equest seeking a ver broad category of docuents, including privieged documents. A true and corrct copy of the subpoena 6 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA 04/11/200704:24 FAX Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 26 of 38 Page 27 of 39 I� 012/087 seied on Mr. Stead is attched hereto as Exhbit 1 to the DecllUation of Marhall B. Grossman at Tab B. A list of Blockbuser's and Mr. Stead's specific objections to those docuent reqests ar set fort below in Section IV of ths Motion. . Richard Frank Deposition Subpoena and Document Request On April 6, 2007, Netfix issued a subpoena for Mr. Fra, former Vice President of Blockbuster, to appear at his deposition on APm 20, 2007 in Dallas. The supo for Mr. Fra also included a document reues seeking a ver broad category of docuents, including privieged docuents. A tre and correc copy of the subpoen sered on Mr. Fran is attached as Exhbit 3 to the Declaration of Marshall B. Grossan at Tab B. A list of Blockbuser's and Mr. Fra's specific objecons to those document requess are se for below in Secon iv of ths Motion. As Blockbuster did durg Mr. Stevenon~s depsition, to the extent Netflix asks questions relatig to any privileged communcations Blockbuster employee (or forer employees) had with tral counsel, Blockbuser (and counel for the witness) will instrct the witness not to answer any of those questions until and uness this Court rues otherise. Similiily, Blockbuster (and counel for the witness) wil instrct the witness not to anwer any other questions tht Netfix asks that imprpely invade the atomeyr client privilege (i.e., questions that go beyond the naow waiver made by Blockbuster when it produced the opinion letter in support of its advice-f-counel defense). III. ARGUMNT AND AUTHORITIE Blockbuster and Messrs. Evangelist, Stevenon, Stead and Fra respectfully request a protective order under Rules 26(c) and 3 O(dX4) , relievig them frm any obligation to answer any questions tht improperly invade the attorney-client privilege. 7 Cas 04:24 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 27 of 38 Page 28 of 39 I� 013/087 Blockbuster and Messrs. Stea and Fra also objec under Rule 45(c)(2)(B). to the subpoena sered on Messrs. Stea and Fran. A. This Court Has The Authority And Should Hear Thi Discovery Dispute Because The Depositions AJ;e Takg pia~e In The Northern District otTens. Blockbuster seeks relief from ths Cour to halt Netfix's unwaranted intrion into privileged attorney-cli~t communcations between Blockbuster and its tral counel. Netix is engaging in these abmive discover tactcs in th D�strct and irparable har wil be done if Netflix is alowed to continue to inquire into these privileged communications. Federal Rule of Civil Proe 26(0) prov�des, in perinent par, tht, "Upon motion by a pary or by the pern from whom discover is sought,... the cour in which is the action is pendig or altertatively, on matters relating to a deposition, the ~ourt in the distict where the deontion is to be taken may make any order whkh justi requires to protect a par or peron frm anoyace, embarassment, oppression, or undue burden or expee, including one or mor of the followig: (1) that the disclosure or discover not be had;.. ,(4) tht cer matters not be inquired into, or that the scope of the disclosure or discovery be Hin�ted to certn matters...." (emphasiS added). Similarly, Rule 30 (d)(4) provides that, "At any time chng a depsition, on motion of a pary or of the deponent and upon a showing tht the examination is being conducted in bad faith or in such maner as uneasonably to anoy, embarass, or oppress the deponent or par, the cour in which the action is pending or thl! court in the district where the deposition is being t�ken may order the offcer conductig the ex.amination to cease fortwith from taking the depsition, or may limit the scope and maner of the tilng of the depsition as provided in Rule 26((:)." (emphais added). 8 Cas 04:25 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 28 of~38 Page 29 of 39 014/087 Blockbuser is entitled to seek relieffroin ths OJur because Netflix has chosen to engage in th improper and abusive discver in the Nortern Distrct of Texas. Fed. R. Civ. P. 26(c) and 30(d)(4). B. Netf Is Improperly Seekig to Invade The Attomey-Client Prvlege By Seekig Al Commoncations Between Blockbuster And Its Trial CounseL This Cour Should Deny That Discovery. Alternatively, This Court Should Stay Any Discovery On That Issue Pending The Federal Circuit's E" Bimc Rulg In Re Seagate Technology. Cour after cour recognes the crtica importce of the attorney-client privileg. See. e.g.. Upjohn Co. v. United States, 449 U.S. 383, 389 (1981) (uThe prvilege recognzes tht sound lega advice or advocacy saves the public ends and that such advice or advocacy depends upon the lawy's beig fully inormed by the client"). As the Supeme Cour noted the attomey-client pnvilege encourages ''f and fran communcation beteen attorneys and thei clients." Id.; see also Knorr-Breme Systeme Fuer Nutzlahrzeuge GmbHv. Dana Corp., 383 F.3d 1337, 1344 (Fed. Cir.2(04) (''Tere should be no risk of liability in disclosues to and from counsel in patent matters; such risk can intrde upon ful communication wid ultimately the public interet in encourgig open and confidennelationships beteen client an attomey.'').Netflix, in its gambit in th Distrct see to eviscete the attorney-client privilege and tu Blockbuster's limted waiver of privilege into a wholesale waiver of the privilege as to LLALL Conuuncations beteen BLOCKBUSTER and its counsel, including but not limted to in-house counel; Alschul�r Grossman LLP." Tab B, Exhibit 4; see also Tab D, excerts from Mr. Stevenson's April 10, 2007 depsition. This Cour should reject Netix's ploy. Feder Circuit law gover ths discovery dispute because it implicates "substtive patent law." See Advanced Cardiovascular Sys.. Inc. v. Medtroiiic, Inc., 265 9 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA 04/11/200704:25 FAX Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 29 of 38 Page 30 of 39 I4 015/087 F.3d 1294, 1307 (Fed eir. 2001). Aga Blockbuster obtained invalidity opinons from Baker Botts LLP on the '450 patent and from Blakely Sokoloff Taylor & Zaan on the '381 patent Blockbuster's lral counel produced these two opinon letter to Netflx to support Blockuster's advice-or-counel defense to Netflix's clai of wilfu �:gement. Contr to Netflx's asseron, any reslting waiver of prvilege by Blockbuster was limite, however. Because it is the accused infiger's stae of mid that is a.t issue in any deterination of willfuess, discover into privileged and proteced docuents and infonnation may proceed only to the extent that the prvieged and proteced mateal was actuly communcated by or to the accused infger in connecon with opinon counsel's preparation and deliver of the opinion.. See, e.g., Autobytel, Inc. v. Dealix Corp., 455 F.Supp.2d 569, 572 (E.D. Tex. 200) (Davis, 1.) ('When a defendant asser an advice-of -cunsel defense, the defendant waives the privilege as to both attorney-client' communcaons and communcated work product regarg the subject matter of the opinion because such documents are evidence of a relevant and non-privileged fact, namely what the defendant mew about infrngement") (citig In re EchoStar Commc'm Corp., 448 F.3d 1294, 1302-03 '(Fed. err. 2(06)). The waiver does not extend to tral counel. Blockbuster has not waived the privilege with its tral counel. Moreover, to the extent Netflix seeks any in-house counsel communcatons and conuuncated work product where Blockbuster's in-house counl acted as a uconduit" for Blockbuser's tral counel, Blockbuster has not waived pn'Vlege as to any oftho:se communcations either. See Autobytel, Inc., 455 F.Supp.2d at 576 (''To hold otherse woUld effectively allow discover of tra1~counsei communications and 10 Cas 04:2B FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 30 of~38 Page 31 of 39 01B/087 11 Ca s04:26 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 31 of14017/087 Page 32 of 38 39 sought discover of all communcations perng to these subjecb and even depositions of the lead tral lawyers for the defendant. The defendat assered privilege for its communicaons with tral coWlseL. The magiate and distrct cour requir Seagate to prduce all communications with tral counsel concerg infrgement, invaidity, and enforceabilty - Ileven if it is communcated in the context of tral preartion." See Pettion for a Writ of Mandaus, 2007 WL 903947 (quotig distrct cour order). Seagate filed a petition for wrt of mandaus with the Federl Circuit, which decded sua sponte to hear the matter en bane. The Federal Circuit has order a stay of discover in tht cae pending its resolution of ths important question. Ths Cour should do the same. If ths Cour permts discover on communcations with tral cowiel pror to th Federn Circuit's n�ing in In re Seagate, Blockbuster wil suffer ireparle har and prejudice if the Federa Circuit rules tht the aseron of the advice-f-counel defen does not extend the waiver ofprviege to communications with tral counel. See Avago Technologies General IP Pte. Ltd. v. Elan Microelectronics Corp., No. C04-05385 RM (lL), 2007 WL 841785 (N.D. CaI. Mar. 20, 2007) (deferng ruing on whether defendant waived attomey.client and work prouct inuunty over al communcaons with tral counel unti the Federal Circuit rules on In Re Seagate). C. Net� Is Alo Improperly Seekig To Invade The WorkwProduet Imnunity By Seekig Trial Counsells Work Product. This Sbould Deny That Discovery. Alternativelyi Thi Court Should Stay Any Discovery On That Issue Pending The Federal Circuit's En BaJc Rulig In Re Seagate Technology. Court Netfix's questioning of Mr. Stevenon, its 30(b)(6) Notice, and some of the document requests and questions of Mr. Stead (see below, Request 5) and Mr. Fra (see below, Requests i and 2) are also so broadly phrased that they seek discover of tral 12 Ca s04:28 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 32 of438 Page 33 of 39 I 018/087 counsel's work product. As with the attorney-client priviege, the cour have zeaously guarded the atorney work-product imunty. See Hickmn v. Taylor, 329 U.S. 495, 510 (1947) (statig tht files and mental impressions of an attorney that are prepared in the course of legal duties are "outside the arena of discover and contrvenes public policy underlying the orderly prosecution and defene of legal clais"); Mattenson v. Baxer Hea/thcare Corp., 438 F.3d 763, 76l-68 (7th Cir. 2006) (''Te work-product doctne shields maeral tht ar prepared in anticipation oflitigaton from the opposin par, on the theory that the opponent shouldn't be allowe to bie a free ride on the other pary's research, or get the inside dope On that par's stategy"). The Federal Cirt, in In Fe Echostar~ also recogned the importance of the work-product imunty because it ''promotes a fair and effcient adversaral system by protectng the attrney's thought proceses and legal recommendations from the piyg eye of hi Or her opponents." 448 F.3d at 1301. Here, Netflx should not be entitled to discovery of any of Blockbuster's tral counel's work produc because tral counsel did not prepare either of the opinon leter Blockbuster requesed conceg the '450 and 1381 patents. See Declaration of Bryan Stevenson at Tab C. Moreover, in any event, the Feder Circuit is also addressing ths same issue of waiver as to work product in the In re Seagate prceeings. In re Seagate Technology, 2007 WL 196403 (Fed. Cir. Jan, 26) 2007) (considerg the question of whether a par's asserion of the advice-of-cunel defense to wilful infgement extends to waiver of the work-product �mw�ty). Agan, as with commwrcations with tral counel, Blockbuster would be prejudced if this Cour peits discover of tral coWlsel's work product before the Federal Circuit addresses th issue. The Cour should 13 Ca se 3:06-cv-02361-WHA Ca 04: 27 FAX 04/11/2007 se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 33 ofI439 Page 34 of 38 019/087 delay any discover on that matter until the Federa Ciruit anwer ths question. See Avago Technologies GenerallP Pte. Ltd, 2007 WL 841785, at *1 (deferrg iiling on wheUier defendant waived work prouct imuity for all communcations with tral counsel until the Federal Circut rues on In Re Seagate). iv. SPECmC RESPONSES AN OBJECTIONS TO DOCUMENT REQUESTS TO MR STEAD AN MR FR Blockbuster, Mesrs. Stea and Fran incorrate their general arguents above regarding the Motion for Prtecion into thei Specifc Responses and Objecons, made puruant to Rule 45(c)(2)(B),1 to Netfbt's document reuets to Mr. Stea and Mr. Fra that are set fort below. A. Requested Materials of Mr. Stead 1. All dccumellts relating to your work with Blockbuster on BlockbterOnline, or any online rental service operated, or to be developed, own, acquired, or operated by Blockbter. Response to Request 1: Blockbuser and Mr. Stead object to Reques 1 to the extent that it seeks materal that is subject to attorney-client priviege and the work product doctre, an that is neither relevat nor reasonably calculated to lead to the discover of admssible evidence. Moreover, Blockbuster and Mr. Stead objec to ths request becme it is overly broad and duplicative of discove that Netflix has alreay dirted to Blockbuster. 2. All documents relating to Netjix. including but 1It limited to Netfix's online rental methods, user exerience. website design, and patents. Resonse to Reqest 2: Blockbuster and Mr. Stead object to Reqest 2 to the extent that it seeks materal tht is subject to attrney-client priviege and the work prouct doctre, and that is neither relevant nor renably calcuated to lead to the discover of adssible evidence. Moreover, Blockbuster and Mr. Stead object to this request be�use it is overly broad and dup'1icati\'e of discover that Netflx has already directed to Blockbuster. i Rule 45(c)(2)(B) provide th a persn commed to produce docents may "with 14 days afer service of the suboen Or befon: lhc tie specified for comiilia.e if such tie is less th 14 days after sece, serv Upon lhe par Qf attorney designated in the sub wrtten objections to proucing any or all of the designted matcriiiii_..If objectirm is made, the par ser the subpoen shall not be entitled to int, copy.. .except pU15wnt to an order of th cour by which the subpoena wa issu.d." 14 Cas 04:27 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 34 of~38 Page 35 of 39 020/087 3. A.ll documents relating to servces, consultation, or other work product providd by Accentue, IBM or other third party consultats to Blockbuster in connection with BlockbusterOnline Or any online rental service operated, or to be deveioped, owned, acquired, or operated by Blockbter. Resonse to Reqest 3: Blockuster and Mr. Stead object to Requet 3 to the. extent that it seeks materal that is subject to attorney-client privilege and the work product doctrne, and that is neither relevant nor reonaly cacuated to lead to the discover of admsible evidence. MOl'eover, Blockbuster and Mr. Ste objec to ths request becuse it is overly broad and duplicative of discver that Netfl has aleady diected to Blockbuser. 4. All documents relating to anlyses of the market in which Blockbter and Netj operate as well as of participants in that market, including Blockbuster and Netltx themselves. Resoonse to Reques 4: Blockbuster and Mr. Stea objec to Reques 4 to the extent that it seeks mateal tht is sujec to attorney-client priyiege and the work prduct doctre, and that is neither relevant nor reonably caculated to lead to the discover of admisible evidence. Moreover, Blockbuster and Mr. Stead object to ths request becaus it is overly broad and duplicave of discover that Netix has aleady directed to Blockb~. 5. All documents relating to Netj�x, Inc. v. Blockbwiter, Inc_. Case No. C-06-2361 (W), currently pening in the Un�ted States District Court for the Northern Distrct of California. Respnse to Request 5: Blockbuster and Mr. Stead object to Request 5 to the extent that it seeks materal tht is subjec to attrney-client privilege and the work product doctne, and tht is neither relevant nor reasnably cacuted to lead to the discover of adissible evidence. Netflix is not entitled to discover the mental impressions and other work product of Blockbuster's tral counel in ths case. Moreover, Blockbuser an Mr. Stead objec to ths reuest beuse it is overly broad and duplicative of discover that NetfUx ha already directed to Blockbuster. 6. Dociiments suffcient to show the reasons for your deparre from Blockbuster. Resoonse to Request 6: Bloc:kbUJter and Mr. Stead object to Request 6 to the extent tht it seeks materal that is sujec to attorney-client prvilege and the work prouct doctrne, and tht is neither relevant nor reasonably caculated to lea to the discover of admissible evidence. B. Requested Materials of Mr. Frank 1. All documents, including but hot limited to communications relating to the validity Or invalidity of any claim of either o/the patents-in-suit. 15 Cas 04:27 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 35 of~38 Page 36 of 39 021/087 Responiie to Reqest 1 ~ Blockbuster an Mr. Fra object to Reques 1 to the . extent that it seeks material that is subject to attorn-client priviege and the work product doctne) and that is neither relevant nor reasonably calculated to lead to the discover of adissible evidence. Netfix is not entitled to diver the menta impressions and other work product of Blockbuser~s tral counel in ths cae. Moreover, Blockbuster and Mr. Fra object to ths reques becuse it is overly broad and duplicative of discover tht Nettlx has already directed to Blockbuster. 2. All documents relang to any stuy, analysis. review. conclusion or opinion (including opinion of couTlel) by either Richard A. Frank or any other person, whether written or oral. as to the validity or invalidity of at claim of either a/the patents-in-suit. or to the research. investigation or preparation of any such document. Respons to Ra.uet 2: Blockbuser and Mr. Fran object to Request 2 to the extent that it seeks materal that is subject to attorney-client prvilege and the work produc docte, and that is neither relevant nor. reonably. calcuated to lea to the discover of admissible evidence. Netf~ is not entitled t~ discover the mental inpressions and other work prduct of Blockbuster's tral counel in ths case. Moreover, Blockbuster and Mr. Fia object to ths request becus it is overly broa.d aid duplicative of diver that Netix has aleady directed to BlockbWlter . 3. All communicatio71 relating to agreements to licene any patents owned or controlled by NeR. Resnse to Reouet 3: Blockbuster and Mr. Fran object to Requet 3 to the extent that it seeks materal that is subject to attorney-client privilege and the work prduct docte, and tht is neither relevat nOr reaonably calculated to lead to the disrver of adssible evidence. Moreover, Blockbuster and Mr. Fra objec to th request because it is overly broad and duplicative of discover that Netflix has already directed to Blockbuster. 4. ,All documents reflecting royalties paid by third parties to NeR relating to any NCR intellectul properl. Response to Reqest 4: Blockbuster and Mr. Fran object to Request 4 to the extent that it seeks materal that is subject to attorney-client pnvilege and the work product doctrne, and thilt is neither relevant nor reasonably calcuated to lea to the discover of admissible evdence. Morever, Blockbuster aid Mr. Fra object to ths request because it is overly broad and duplicative of discover that NetfIix bas aleay directed to Blockbuser. 16 Ca s04:28 FAX Ca e 3:06-cv-02361-WHA 04/11/2007se 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 36 ofI439 Page 37 of 38 022/087 5. All documents relating 10 agreements co resolve any claims of infringement of any patents oWted Or controlled by NeR. Resns to Reques 5: Blockbuster and Mr. Fra object to Reque 5 to the extent tht it seeks materal tht is subjec to attorney-client pri~lege and the worl prouct doctre, and that is neither relevant nor reanably calculated to lea to the discover of adssible evidence. Moreover, Blockbuster and Mr. Fran object to ths request because it is overly broad and duplicative of discover tha.t Netfix has aly directed to Blockbustei:. V. CONCLUSION For these reaons, Blockbuster for itself and Bryan Stevenn, Shae Evagelist Edward Stea, and Richard Fran respectflly moves the Cour under Rules 26(c) and 30(d) for protection and objects to the subpoenas of Messr. Sted an Fra under Rule 45(c)(2)(B). Blockbuter and Messrs. Stevenon, Evangelist Stea and Fran are entitled to a protecve order relieving them of anwerng any quetions that would divuge any attorney-clien oommm�cations with Blockbuser's tral counselor ha'Vng to produce any work-product or atrney-client docwnents conceg Blockbuser's tral counsel. Respectfully submitted ~ic el~ Raiff ' l.G1L M L. S at Bar No. 00784803 Dttaetnel J. Kelly i S a e BarNo. 24041229 I VINSON & ELKIS L.L.P. 2001 Ross Avenue, Suite 3700 Dallas, Texas 75201-2975 Telephone: 214.220.7704 Telecpy: 214.999.7704 ATTORNEYS FOR MOV ANS 17 Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA 04/11/200704:28 FAX Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 37 of 38 Page 38 of 39 ~ 023/087 CERTIFlCATE OF CONFERENCE Dunng depositions on April io and 11,2007, counsel for Movants, Michael Raiff, had conversations with Netflix's counsel. Eugene Paige, concerning deposition questions that improperly invaded the attorney-client privilege and work product privilege. Netflx's counsel disagree with Mr. Raiffs instrc:ions to the witness and Netflix's lawyer stated that he believes there has been a broader waiver. As a consequence, under Local Rule 7.1(b), the pares could not reach agreement on the issues reflected in this Motion. W(,yl. Dated: April 11, 2007 By: Michael ". Rai if Attorney for MovanLS P .. "" ~ .; ~ � ~ 18 04/11/200704:28 FAX Case 3:06-cv-02361-WHA Case 3:06-cv-02361-WHA Document 211-6 Document 177-1 Filed 04/11/2007 Filed 05/18/2007 Page 38 ofI439 Page 39 of 38 024/087 CERTIFICATE OF SERVICE lbs is to ceify that a tre and correct copy of the above and forgoing has been sered by the ~etod identified below ths i i th day of April, 2007: Jeffey Chan Daryn J. Due KEKER & VAN NEST, LLP By Fox 710 Sansome Street San Fracisco, CA 94111- i 704 Attorneys for Plaitiff NETFLIX, INC. Marhall B. Grossman By Fll Wiliam J. O'Brien ALSCHULER GROSSMA LLP 1620 26ih Stret 4th Floor, Nort Tower Santa Monica CA 90404 Attorneys for Defendant BLOCKBUSTER INC. Dallas i 239079v.\ 19

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