Free Motion for Leave to File - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) R.R. DONNELLEY & SONS COMPANY, ) ) Plaintiff, ) ) v. ) ) QUARK, INC., CREO, INC., EASTMAN ) KODAK COMPANY, AND KODAK ) GRAPHIC COMMUNICATIONS ) COMPANY, ) ) Defendants. )

C.A. No. 06-032-JJF

PLAINTIFF'S MOTION FOR LEAVE TO FILE A SUPPLEMENT TO ITS MOTION TO COMPEL (D.I. 36) Plaintiff R.R. Donnelley & Sons Co. ("RRD") hereby moves the Court for leave to file a Supplement to its June 21, 2006 Motion to Compel (D.I. 36), as attached hereto as Exhibit A, to bring to the Court's attention additional information concerning the status of discovery in this case during the six months since RRD filed its original Motion. MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Rodger D. Smith II _________________________________________ Jack B. Blumenfeld (#1014) Rodger D. Smith II (#3778) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 Attorneys for Plaintiff R.R. Donnelley & Sons Company

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OF COUNSEL: Bradford J. Badke Stuart W. Yothers ROPES & GRAY LLP 1251 Avenue of the Americas New York, NY 10020 (212) 596-9000 Steven A. Kaufman ROPES & GRAY LLP One International Place Boston, MA 02110 (617) 951-7000 January 3, 2007
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RULE 7.1.1 CERTIFICATE I hereby certify that counsel for plaintiff has discussed the subject of the foregoing motion with counsel for defendants, and the parties have not been able to reach agreement on the issues raised in the motion.

/s/ Rodger D. Smith II ____________________________________ Rodger D. Smith II

January 3, 2007

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CERTIFICATE OF SERVICE The undersigned hereby certifies that on January 3, 2007, he caused the foregoing to be electronically filed with the Clerk of the Court using CM/ECF, which will send notification of such filing(s) to the following: Frederick L. Cottrell III Richards Layton & Finger I also certify that copies were caused to be served on January 3, 2007, upon the following in the manner indicated: BY EMAIL AND HAND Frederick L. Cottrell III Richards Layton & Finger One Rodney Square 920 N. King Street Wilmington, DE 19801

BY EMAIL AND FEDERAL EXPRESS Richard McMillan, Jr. Crowell & Moring LLP 1001 Pennsylvania Avenue, N.W. Washington, DC 20004-2595

/s/ Rodger D. Smith II (#3778) MORRIS, NICHOLS, ARSHT & TUNNELL LLP 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 [email protected]

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EXHIBIT A

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

) R.R. DONNELLEY & SONS COMPANY ) ) Plaintiff, ) ) v. ) ) CREO, INC., EASTMAN KODAK ) COMPANY, AND KODAK GRAPHIC ) COMMUNICATIONS COMPANY ) ) Defendants. ) )

C.A. No. 06-032-JJF

SUPPLEMENT TO PLAINTIFF'S MOTION TO COMPEL DISCOVERY DATED JUNE 21, 2006 (D.I. 36) Over six months have passed since Plaintiff R.R. Donnelley & Sons Company ("RRD") filed its June 21, 2006 Motion to Compel Discovery (D.I. 36), seeking to compel defendants Creo, Inc., Eastman Kodak Company, and Kodak Graphic Communications Company (collectively "Defendants") to provide complete responses to RRD's First Set of Requests for the Production of Documents and Things (hereinafter "Document Requests") and First Set of Interrogatories (hereinafter "Interrogatories"). RRD submits this brief to supplement the record on the status of the underlying dispute in an attempt to expedite the litigation of this matter: 1. From the beginning of discovery in this case, RRD has identified specific

Variable Digital Printing ("VDP") software products and hardware presses, including in its discovery requests. RRD's May 1, 2006 discovery requests identify specific VDP software and digital presses for which it seeks discovery. RRD seeks discovery about four software products:

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(1) Creo Darwin, for both QuarkXPress and Adobe InDesign; (2) Kodak NexTreme DL-100 Variable Data Software; (3) Kodak NexTreme DL-1000 Variable Data Software; and (4) Composer; and four digital presses: (1) Kodak Versamark V-Series Printing System;

(2) Kodak Versamark D-Series Printing System; (3) Kodak NexPress 2100 Plus Digital Production Color Press; and (4) Kodak NexPress 2500 Digital Production Color Press. Based on information and belief, and despite the limited discovery Defendants have provided to date, RRD believes that Defendants likely generate products other than these four software products and four hardware products that infringe or induce infringement of the patents in suit. RRD therefore seeks discovery on all eight of the aforementioned products and any other of Defendants' VDP software or hardware products. 2. Defendants limited their June 12, 2006 responses (D.I. 36, Ex. A & B) to

the Darwin Desktop software, claiming that because RRD named only Darwin Desktop in its Complaint, RRD was entitled to discovery only on this single software product. Defendants said they would not provide any discovery concerning other software products or the printing presses underlying RRD's inducement claim. On June 21, 2006, RRD filed its motion to compel Defendants to comply with their discovery obligations (D.I. 36), and in the intervening six and one-half months, Defendants have not changed their position. 3. On July 7, 2006, RRD responded to Defendants' First Set of

Interrogatories (attached hereto as Exhibit 1) by identifying at least four of Defendants' software packages by name (Creo Darwin Desktop, for both QuarkXPress and Adobe InDesign; Kodak NexTreme DL-100 Variable Data Software, Kodak NexTreme DL-1000 Variable Data Software, and Composer) and specifying that Defendants' sales and other activities with respect to at least four specific models of Defendants' digital presses induce infringement (the Kodak Versamark

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V-Series Printing System, the Kodak Versamark D-Series Printing System, the Kodak NexPress 2100 Plus Digital Production Color Press, and the Kodak NexPress 2500 Digital Production Color Press) (Ex. 1 at 10). 4. Despite having knowledge of specific software products and presses for

which RRD sought discovery for more than six months, Defendants have continued to proceed as if RRD had only identified Darwin Desktop. In their July 3, 2006 Opposition to RRD's Motion to Compel Discovery (D.I. 41), Defendants specifically asked the Court to "limit discovery to Darwin . . . unless and until RRD makes well-founded contentions regarding other specific products" (id. at 4). RRD has long since made known to Defendants its "well-founded" contentions about the other software products and digital presses listed above. 5. Over the course of the last six months, Defendants said they would not RRD's

provide any information concerning any product other than Darwin Desktop.

infringement claims are simply not limited to the one product identified in the Complaint. Indeed, the Federal Rules of Civil Procedure do not even require naming a single product in the Complaint, see, e.g., Fed. R. Civ. P., Form 16, and "all the Rules require is a `short and plain statement of the claim' that will give the defendant fair notice of what the plaintiff's claim is and the grounds upon which it rests." Conley v. Gibson, 355 U.S. 41, 47-48. Notice pleading in patent cases is made possible by the liberal discovery mechanisms permitted by the Federal Rules, which are used to define more precisely the grounds for both parties' claims and defenses and to narrow the disputed facts and issues in a case. Id. 6. Defendants have also refused to produce witnesses. In response to RRD's

August 28, 2006 Notice of Deposition Pursuant to Fed. R. Civ. P. 30(b)(6), Defendants objected and refused to produce witnesses on topics beyond the Darwin product (D.I. 52). On

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November 22, 2006, Defendants filed a Motion for Rule 26(c)(4) Protective Order (D.I. 68) seeking to limit discovery to the Darwin Desktop software product. 7. Defendants' continued intransigence has severely limited RRD's ability to

litigate the other issues in this case. They have also refused to provide responses to RRD's contention interrogatories. Defendants in their responses to these interrogatories in June 2006 and their supplemental responses in July and December 2006 provided essentially no substantive responses on the basis that such contentions were "premature." After six months, such

contentions cannot remain "premature," and a response -- which Defendants have yet to provide -- is long overdue. In an effort to obtain that result, RRD included a request for Defendants' contention interrogatory responses in RRD's original motion to compel. Defendants' continuing failure to provide adequate responses is the subject of RRD's Motion to Preclude Defendants from relying on undisclosed contentions, filed concurrently with this motion. 8. In an attempt to advance this case, RRD's counsel sent letters on

November 16 and December 19, 2006 to Defendants' counsel requesting discovery responses beyond the Darwin Desktop software (attached hereto as Exhibit 2 and Exhibit 3, respectively). To date, Defendants have not responded. 9. Given the passage of time without the benefit of critical discovery, RRD

has also, simultaneously with the filing of this supplement, filed a motion to amend its Complaint. In its Amended Complaint, RRD has provided additional detail concerning its infringement claims, despite having no obligation to do so under the Federal Rules, to obtain the scope of discovery it seeks. In so doing, RRD seeks to dislodge Defendants' unreasonable and legally unsupportable discovery position that only the Darwin software is at issue in this case.

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Given the amendment, Defendants cannot credibly claim a moment longer that they need not produce information concerning their other VDP products. 10. Defendants' refusal to provide appropriate discovery has resulted in

prejudicial delay. RRD therefore respectfully requests that the Court grant its Motion to Compel Discovery (D.I. 36) and order Defendants to comply with their discovery obligations with respect to Defendants' VDP software and hardware products, including, but not limited to, these software products: (1) Creo Darwin Desktop, for both QuarkXPress and Adobe InDesign; (2) Kodak NexTreme DL-100 Variable Data Software; (3) Kodak NexTreme DL-1000 Variable Data Software; and (4) Composer; and these digital presses: (1) Kodak Versamark V-Series Printing System; (2) Kodak Versamark D-Series Printing System; (3) Kodak NexPress 2100 Plus Digital Production Color Press; and (4) Kodak NexPress 2500 Digital Production Color Press. MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Rodger D. Smith II _________________________________________ Jack B. Blumenfeld (#1014) Rodger D. Smith II (#3778) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 [email protected] Attorneys for Plaintiff R.R. Donnelley & Sons Co.

OF COUNSEL: Bradford J. Badke Stuart W. Yothers ROPES & GRAY LLP 1251 Avenue of the Americas New York, NY 10020 (212) 596-9000 Steven A. Kaufman ROPES & GRAY LLP One International Place Boston, MA 02110 (617) 951-7000 January 3, 2007
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EXHIBIT 1

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EXHIBIT 2

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EXHIBIT 3

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