Case 6:12-cv-00799-JRG Document 172-4 Filed 06/30/14 Page 1 of 4 PageID #: 5246
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`Exhibit D  
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`Case 6:12-cv-00799-JRG Document 172-4 Filed 06/30/14 Page 2 of 4 PageID #: 5247
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`ATTORNEYS AT LAW
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`
`
`777 EAST WISCONSIN AVENUE
`MILWAUKEE, WI 53202-5306
`414.271.2400 TEL
`414.297.4900 FAX
`WWW.FOLEY.COM
`
`WRITER’S DIRECT LINE
`414.297.5782
`jcostakos@foley.com EMAIL
`
`CLIENT/MATTER NUMBER
`087886-0122
`
`June 4, 2014
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`
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`Via E-Mail
`
`Claudia Frost
`DLA Piper LLP
`1000 Louisiana Street, Suite 2800
`Houston, TX 77002-5005
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`
`
`
`Re:
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`Invensys Systems, Inc. v. Emerson Electric Co., et al.
`Case No. 12-cv-799-LED (E.D. Tex.)
`
`Dear Claudia,
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`We are writing to request that you produce any documents and correspondence relating to the
`presentation given by Invensys employee, Brian Dickson, that projects Invensys’s license revenues
`as exceeding $40 million. Our request includes, but is not limited to, the disclosure of the document
`identified in your February 21, 2014 privilege log as Doc. No. 382, with beginning Bates INV-
`PRIV0003494, and described as “Presentation reflecting the legal advice of counsel (Byron Jamison)
`regarding Invensys patent portfolio and license agreements” dated 3/30/2010 and authored by Brian
`Dickson and Byron Jamison (“the Dickson Presentation”).
`
`Any attorney-client privilege claim that would otherwise apply to the above-identified
`document—and other documents relating to the same subject matter—has been waived because the
`substance of the documents was publicly disclosed. As you know, prior to Invensys’s
`commencement of this case, Invensys and/or Oxford retained the law firm of Shore Chan Depumpo
`LLP (“Shore Chan”) to provide legal services concerning the Invensys patents and a potential patent
`infringement lawsuit against Emerson and Micro Motion. Prior to the filing of the Micro Motion
`Lawsuit, Shore Chan was informed that it would be retaining other counsel, namely DLA Piper, to
`litigate the case.
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`On February 8, 2013, Invensys and Oxford University sued Shore Chan in Texas State Court
`(the “Shore Chan Lawsuit”).1 In the Shore Chan Lawsuit, Invensys sought a declaration under the
`Texas Civil Code that it does not owe any fees to Shore Chan, including any contingent fees based
`on a potential recovery from Micro Motion or Emerson. Shore Chan counterclaimed for payment of
`fees and other compensation for the legal services it provided.
`
`
`1 The Chancellor, Masters and Scholars of the Univ. of Oxford and Invensys Sys., Inc. v. Shore Chan
`Depumpo LLP, Case No. 13-01668, 192nd Judicial Dist., Dallas County, Texas.
`
`BOSTON
`BRUSSELS
`CHICAGO
`DETROIT
`
`JACKSONVILLE
`LOS ANGELES
`MADISON
`MIAMI
`
`MILWAUKEE
`NEW YORK
`ORLANDO
`SACRAMENTO
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`SAN DIEGO
`SAN FRANCISCO
`SHANGHAI
`SILICON VALLEY
`
`TALLAHASSEE
`TAMPA
`TOKYO
`WASHINGTON, D.C.
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`4851-8107-3947.
`
`

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`Case 6:12-cv-00799-JRG Document 172-4 Filed 06/30/14 Page 3 of 4 PageID #: 5248
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`FOLEY & L ARDN ER LLP
`
`Claudia Frost
`June 4, 2014
`Page 2
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`There have been at least two public disclosures made in the Shore Chan Lawsuit of
`information that Invensys claims to be protected by the attorney-client privilege. First, in response to
`a motion to compel filed by Invensys requesting Shore Chan to disclose facts relating to the amount
`of damages it is seeking, Shore Chan disclosed in a November 12, 2013 response brief (“Brief,” a
`copy of which is attached) that its damages estimate is “based, in part, on a presentation given by
`Invensys employee, Brian Dickson, to Invensys’s general counsel and executive team,
`projecting license revenue exceeding $40 million.” (Brief at 2.) Second, Shore Chan disclosed the
`same information in its Fourth Amended Answer, Affirmative Defenses, & Counterclaims dated
`November 12, 2013 (“Answer,” a copy of which is attached) in support of its actual damages
`allegations. (See Answer at 5.)
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`Any privilege that would have applied to the Dickson Presentation was waived when
`Invensys sued Shore Chan and when Shore Chan disclosed the subject matter of Mr. Dickson’s
`presentation in response to Invensys’s allegations in that lawsuit. Such public disclosure of
`confidential communications constitutes waiver of the attorney-client privilege. Industrial
`Clearinghouse, Inc. v. Browning Mfg. Div. of Emerson Elec. Co., 953 F.2d 1004, 1007 (5th Cir.
`1992) (while the mere institute of suit against an attorney is insufficient to waive attorney-client
`privilege, the revelation of confidential communications will constitute a waiver of the attorney-
`client privilege).
`
`As is the case here, where a party’s allegedly privileged communications are publicly
`revealed in an action against that party’s former counsel, the privilege as to those communications is
`waived as to third parties in a separate action that concerns the same subject matter. Id. (“Thus, if a
`complaint against an attorney, or the attorney’s response or testimony in the malpractice case,
`reveals confidential client communications, the client waives the privilege as to the subject matter of
`the disclosed communications.”). This is especially true because the confidential information
`disclosed in the Shore Chan case was specifically pursued by Invensys. Laughner v. United States,
`373 F.2d 326, 327 (5th Cir. 1967) (party cannot invoke privilege as to communications that it
`“demanded and obtained a factual judicial inquiry into” in a separate action against former counsel).
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`Moreover, Invensys’s waiver is not limited to the specific facts disclosed by Shore Chan.
`When a party waives privilege as to a particular communication, the waiver applies to all other
`communications relating to the same subject matter. Mass Engineered Design, Inc. v. Ergotron,
`Inc., No. 206 CV 272, 2008 U.S. Dist. LEXIS 21457, at *8 (E.D. Tex. Mar. 19, 2008) (citing GFI,
`Inc. v. Franklin Corp., 265 F.3d 1268, 1273 (Fed. Cir. 2001) (applying Fifth Circuit law)).
`Accordingly, Invensys has waived privilege as to the Dickson Presentation, all documents relating to
`the Dickson Presentation, and the subject matter of Invensys’s license revenue projections.
`
`Please indicate by the close of business on June 5, 2014 that you will be producing these
`documents.
`
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`

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`Case 6:12-cv-00799-JRG Document 172-4 Filed 06/30/14 Page 4 of 4 PageID #: 5249
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`FOLEY & L ARDN ER LLP
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`Claudia Frost
`June 4, 2014
`Page 3
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`If you are unwilling to produce the documents, we request a meet and confer on June 6.
`Please let us know what time will work for you.
`
`Sincerely,
`
`/s/ Jeffrey N. Costakos
`
`Enclosures