Elan Microelectronics Corporation v. Apple, Inc.

Filing 306

Declaration of Derek C. Walter in Support of Apple's Reply to Elan's Opposition to Motion to Compel filed byApple, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K)(Mehta, Sonal) (Filed on 6/21/2011)

Exhibit I

Page 1

BRITESMILE, INC, et al., Plaintiffs, v. DISCUS DENTAL INC, et al., Defendants.
No. C 02-3220 JSW (JL), (Docket # 205)
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
CALIFORNIA
2004 U.S. Dist. LEXIS 20023

August 10, 2004, Decided
SUBSEQUENT HISTORY: Motion granted by, Claim
dismissed by BriteSmile, Inc. v. Discus Dental, Inc.,
2005 U.S. Dist. LEXIS 37704 (N.D. Cal., May 5, 2005)
DISPOSITION:
denied.

For Robert Eric Montgomery, Defendant: Martin C.
Fliesler, Fliesler Dubb Meyer & Lovejoy, LLP, San
Francisco, CA; Melissa L. Basch, [*2] Fliesler, Dubb,
Meyer & Lovejoy LLP, San Francisco, CA.

Plaintiff's request for discovery

COUNSEL: [*1] For Britesmile Inc., Plaintiff: Donald
M. Falk, Mayer, Brown & Platt, Palo Alto, CA; Douglas
L. Sawyer, L., Mayer, Brown, Rowe & Maw, Chicago,
IL; Christine M. Rebman, Esq., Mayer Brown Rowe &
Maw, Chicago, IL; Joseph A. Mahoney, Mayer Brown
Rowe & Maw, Chicago, IL; Richard T. Ruzich, Esq,
Mayer, Brown, Rowe & Maw, Chicago, IL; Shirish
Gupta, Mayer Brown Rowe & Maw, Palo Alto, CA.
For Discus Dental Inc., Defendant: Brian K. Brookey,
Christie, Parker & Hale LLP, Pasadena, CA; George A.
Riley, O'Melveny & Myers, San Francisco, CA; John
Christopher Kappos, O'Melveny & Myers, Irvine, CA;
Ksenya Medvedev, Christie, Parker & Hale, LLP,
Pasadena, CA; David A. Dillard, Christie, Parker & Hale,
Pasadena, CA.
For Salim Nathoo, Defendant: Kimberly K. Dodd, Three
Palo Alto Square, Palo Alto, CA; Aravind Aithal, Bob
Smith & Associates, Piscataway, NJ; Jason M. Julian,
Foley & Lardner LLP, San Francisco, CA; Rodney
Michael Hudson, Esq., Drinker Biddle & Reath LLP, San
Francisco, CA; Steven Michael Selna, Esq., Drinker
Biddle & Reath LLP, San Francisco, CA.

For Oraceutical LLC, Defendant: Peter D. McDermott,
Banner and Witcoff, LTD, Boston, MA; Martin C.
Fliesler, Fliesler, Dubb, Meyer & Lovejoy, LLP, San
Francisco, CA.
For Discus Dental Inc. Counter-claimant: Brian K.
Brookey, Christie, Parker & Hale LLP, Pasadena, CA;
George A. Riley, O'Melveny & Myers, San Francisco,
CA; John Christopher Kappos, O'Melveny & Myers,
Irvine, CA; Ksenya Medvedev, Christie, Parker & Hale,
LLP, Pasadena, CA; David A. Dillard, Christie, Parker &
Hale, Pasadena, CA.
For Britesmile Inc., Counter-defendant: Donald M. Falk,
Mayer, Brown & Platt, Palo Alto, CA; Douglas L.
Sawyer, L., Mayer, Brown, Rowe & Maw, Chicago, IL;
Shirish Gupta, Mayer Brown Rowe & Maw, Palo Alto,
CA; Christine M. Rebman, Esq., Mayer Brown Rowe &
Maw, Chicago, IL; Joseph A. Mahoney, Mayer Brown
Rowe & Maw, Chicago, IL; Richard T. Ruzich, Esq,
Mayer, Brown, Rowe & Maw, Chicago, IL.
For Discus Dental Inc., Counter-claimant: David A.
Dillard, Christie, Parker & Hale, Pasadena, CA; Brian K.
Brookey, Christie, Parker & Hale LLP, Pasadena, CA;
Ksenya Medvedev, Christie, Parker & Hale, LLP,
Pasadena, CA. David A. Dillard, [*3] Christie, Parker &

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2004 U.S. Dist. LEXIS 20023, *3

Hale, Pasadena, CA.
For Britesmile Inc., Counter-defendant: Donald M. Falk,
Mayer, Brown & Platt, Palo Alto, CA; Douglas L.
Sawyer, L., Mayer, Brown, Rowe & Maw, Chicago, IL;
Shirish Gupta, Mayer Brown Rowe & Maw, Palo Alto,
CA; Christine M. Rebman, Esq., Mayer Brown Rowe &
Maw, Chicago, IL; Joseph A. Mahoney, Mayer Brown
Rowe & Maw, Chicago, IL; Richard T. Ruzich, Esq,
Mayer, Brown, Rowe & Maw, Chicago, IL.
For Discus Dental Inc., Counter-claimant: David A.
Dillard, Christie, Parker & Hale, Pasadena, CA; Brian K.
Brookey, Christie, Parker & Hale LLP, Pasadena, CA;
Ksenya Medvedev, Christie, Parker & Hale, LLP,
Pasadena, CA.
For Britesmile Inc., Counter-defendant: Donald M. Falk,
Mayer, Brown & Platt, Palo Alto, CA; Douglas L.
Sawyer, L., Mayer, Brown, Rowe & Maw, Chicago, IL;
Christine M. Rebman, Esq., Mayer Brown Rowe & Maw,
Chicago, IL; Joseph A. Mahoney, Mayer Brown Rowe &
Maw, Chicago, IL; Richard T. Ruzich, Esq, Mayer,
Brown, Rowe & Maw, Chicago, IL. Shirish Gupta,
Mayer Brown Rowe & Maw, Palo Alto, CA.
For Discus Dental Inc., 3rd party plaintiff: George A.
Riley, O'Melveny & Myers, San Francisco, CA; John
Christopher Kappos, O'Melveny & [*4] Myers, Irvine,
CA; Brian K. Brookey, Christie, Parker & Hale LLP,
Pasadena, CA.
For Oral Health Clinical Services, LLC, 3rd party
defendant: Kimberly K. Dodd, Three Palo Alto Square,
Palo Alto, CA; Rodney Michael Hudson, Esq., Drinker
Biddle & Reath LLP, San Francisco, CA; Steven Michael
Selna, Esq., Drinker Biddle & Reath LLP, San Francisco,
CA.
For Discus Dental Inc., Counter-claimant: George A.
Riley, O'Melveny & Myers, San Francisco, CA; John
Christopher Kappos, O'Melveny & Myers, Irvine, CA.
For Salim Nathoo, Counter-claimant: Rodney Michael
Hudson, Esq., Drinker Biddle & Reath LLP, San
Francisco, CA.
For Discus Dental Inc., Counter-claimant: Charles R.
Halloran, Christie, Parker & Hale, LLP, Pasadena, CA.
For Salim Nathoo, Counter-claimant: E. Patrick Ellisen,
Foley & Lardner, San Francisco, CA.

For Salim Nathoo, Counter-claimant: E. Patrick Ellisen,
Foley & Lardner LLP, Palo Alto, CA.
JUDGES: JAMES LARSON, United States Magistrate
Judge.
OPINION BY: JAMES LARSON
OPINION

ORDER DENYING PLAINTIFF'S DISCOVERY
REQUEST
Before the Court is the parties' joint statement
regarding a discovery dispute. All discovery in this case
has been referred by the district [*5] court (Hon. Jeffrey
S. White) pursuant to Civil Local Rule 72-1 and 28
U.S.C. § 636(b). This Court finds the matter suitable for
decision without oral argument, as provided by Civil
Local Rule 7-6. The parties state that they have met and
conferred numerous times in an attempt to resolve their
dispute but have not succeeded. The Court accepts their
statement as adequate to show compliance with Civil
Local Rule 37.
Plaintiff BriteSmile asks the Court to order
Defendant Discus Dental to produce Privilege Log item
Nos. 3-11, 13-17, 19, 20, 24, 25, 29, 30, 34, 423 and
1350, prior to the deadline imposed by Patent Local Rule
3-8. BriteSmile claims the items are relevant and not
privileged and are therefore discoverable under Rule 26,
Federal Rules of Civil Procedure. BriteSmile contends
that any claim of privilege for attorney client
communications or attorney work product have been
waived by disclosure to Dr. Salim Nathoo. Furthermore,
BriteSmile claims that Patent Local Rule 2-5(d) does not
apply and therefore opinion letters such as document
Nos. 7, 34 and 423 and 1350 should be produced prior to
the deadline in Patent Local Rule 3-8, which is 50 days
after the [*6] trial court issues its claims construction
order. BriteSmile claims documents Nos. 7 and 423 were
created before the patents in suit had issued, and No, 34,
although created after the '933 patent issued, is directed
to light-activated tooth whitening, while Discus has
stated its technology is not light-activated. Therefore,
BriteSmile contends these documents could not relate to a
defense against a charge of willful infringement.
BriteSmile claims the documents are crucial to its case
against Discus and Dr. Nathoo for breach of contract and
misappropriation of trade secrets in that they reflect how

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2004 U.S. Dist. LEXIS 20023, *6

Discus valued the intellectual property it was receiving
from Dr. Nathoo.
Discus Dental claims that it did not waive any
privilege when it disclosed documents to Dr. Nathoo,
because its counsel was investigating whether the
technology that Discus was purchasing from Dr. Nathoo
either (a) infringed any patents, or (b) was itself
patentable. Discus was only interested in purchasing the
technology if it was patentable and non-infringing, and
both Discus and Nathoo shared a common interest in the
outcome of Discus' attorneys' analysis of those issues. On
this basis, due to the parties' shared [*7] legal interest in
whether the technology could be patented and not
infringe and their shared business interest in the sale of
the technology. Discus claims disclosures were made
only under a strict duty of confidentiality.

and submitted on July 28. The order is pending.
Discus objects to producing certain of the documents
requested by BriteSmile on the basis that they support its
defense to BriteSmile's accusation that Discus wilfully
infringed BriteSmile's patent. BriteSmile's claim that the
documents couldn't relate to infringement because they
were drafted before the patent was issued is unavailing. It
is entirely possible that the documents reveal attorney
thought processes which offset the potential for
infringement of one of BriteSmile's patents, regardless of
when it was written. Similarly unavailing is its contention
that a document dealing with light-activated tooth
whitening couldn't relate to wilful infringement if Discus
claimed its technology did not involve light activation.
The document could involve a comparison of this
technology, which would reflect attorney thought
processes.

Analysis and Conclusion
Patent Local Rule 2-5(d) provides that in general a
party may not object to a discovery request as premature
or decline to provide information required to be disclosed
pursuant to FRCivP 26(a)(1). A party may object,
however, to responding to certain categories of discovery
requests or decline to provide information in its initial
disclosures under FRCivP 26(a)(1) on the ground that
they are premature in light of the timetable provided in
the Patent Local Rules. One of these categories is:
(d) Requests seeking to elicit from an
accused infringer the identification of any
opinions of counsel, and related
documents, that it intends to rely upon as a
defense to an allegation of willful
infringement.

In addition, Patent Local Rule 3-8 provides that a
party defending against a cause of action for willful
infringement shall disclose opinion letters related to that
defense 50 days following the issuance of the court's
claims [*8] construction order.
Therefore, under the Patent Local Rules, Discus may
validly withhold documents or information reflecting its
defense to BriteSmile's charge of willful infringement
until 50 days after the trial court issues its claims
construction order.
The claims construction hearing in this case was held

[*9] With respect to BriteSmile's claim that Discus
has waived any privilege by disclosing documents to Dr.
Salim Nathoo, this Court finds that Discus and Nathoo
share a common legal interest in the issue of whether the
technology that Nathoo sold to Discus was patentable and
whether it infringed any patent. They also share a
common business interest in the sale of the technology.
Accordingly, Discus waived no privilege by disclosing
the documents and information to Nathoo.
In the Hewlett-Packard Co. v. Bausch & Lomb Inc.,
the court reasoned: "Unless it serves some significant
interest courts should not create procedural doctrine that
restricts communications between buyers and sellers,
erects barriers to business deals, and increases the risk
that prospective buyers will not have access to important
information that could play key roles in assessing the
value of the business or product they are considering
buying." Hewlett-Packard Co. v. Bausch & Lomb, Inc.,
115 F.R.D. 308, 311 (N.D.Cal. 1987).
In the case at bar, if the Court required disclosure of
privileged information shared by Discus with Dr. Nathoo
in order to facilitate its purchase of his technology, it
[*10] could potentially chill similar transactions.
For all the above reasons, this Court orders that
BriteSmile's request for an order that Discus disclose the
documents on its Privilege Log prior to the deadline
imposed by Patent Local Rule 3-8 is denied.
IT IS SO ORDERED.

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2004 U.S. Dist. LEXIS 20023, *10

DATED: August 10, 2004
JAMES LARSON

United States Magistrate Judge