Free Motion to Compel - District Court of Delaware - Delaware

Case 1:06-cv-00032-JJF

Document 36

Filed 06/21/2006

Page 1 of 7

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-cv-032-JJF

MOTION TO COMPEL DISCOVERY Pursuant to Fed. R. Civ. P. 37(a), and the Discovery Dispute Procedures provided in paragraph 5 of the Rule 16 Scheduling Order (D.I. 26), plaintiff R.R. Donnelley & Sons Company ("R.R. Donnelley") moves for an order compelling defendants Creo, Inc. ("Creo"), Eastman Kodak Company ("Kodak"), and Kodak Graphic Communications Company ("KGCC") (collectively "Defendants") to provide complete responses to R.R. Donnelley's First Set of Requests for the Production of Documents and Things (hereinafter "Document Requests") and First Set of Interrogatories (hereinafter "Interrogatories"). Defendants' responses to the Document Requests and Interrogatories -- which are insufficient for the reasons discussed below -- are attached as Exhibits A and B, respectively. The bases for this motion are as follows: 1. On May 1, 2006, R.R. Donnelley served on Defendants its Document

Requests1 and Interrogatories.2

In its Document Requests, among other things, R.R. Donnelley sought documents (a) concerning the design, use, and creation of Defendants' Software Products -- defined as "Creo Darwin (for both QuarkXPress and Adobe InDesign), Kodak NexTreme DL-100 Variable Data Software, Kodak NexTreme DL-1000 Variable Data Software, Composer," and any other software product designed, marketed, sold, offered for sale, made, used or imported by Defendants intended to enable Variable Digital Printing; (b) concerning Defendants' marketing,

1

Case 1:06-cv-00032-JJF

Document 36

Filed 06/21/2006

Page 2 of 7

2. 2006.

Defendants served responses to R.R. Donnelley's requests on June 12, The incomplete answers were

The responses were almost entirely non-responsive.

particularly troubling because R.R. Donnelley granted Defendants an extension of two weeks in which to respond to the discovery requests -- understanding that Defendants would be using that time to compile complete responses. 3. Defendants have raised a number of improper objections in refusing to

respond adequately to R.R. Donnelly's Document Requests and Interrogatories. 4. First, Defendants objected to each and every Document Request and

Interrogatory on the grounds that each was "premature as a protective order has not yet been entered" (Ex. A, General Objection ("G.O.") No. 7; Ex. B, G.O. No. 4). Specifically,

Defendants stated that responsive documents containing confidential information will only be produced "after the entry of a suitable protective order" (Exs. A and B). Del. L.R. 26.2 provides a contingency for this very situation, i.e., disclosure of confidential material will be limited to members and employees of the firm of trial counsel who have entered an appearance. Therefore, this objection is improper and unwarranted. 5. Second, in response to Interrogatory Nos. 1-12, Defendants objected that

each interrogatory is "a premature contention interrogatory given that fact discovery has just

display, or demonstration of their Software Products; (c) relating to licenses or business negotiations concerning Defendants' Software Products; and (d) relating to the revenue generated by Defendants' Software Products.
2

In its Interrogatories, among other things, R.R. Donnelley sought Defendants' contentions regarding the claims and defenses asserted in their Answer, Affirmative Defenses and Counterclaims (D.I. 18). Namely, R.R. Donnelley sought Defendants' contentions for stating that: (a) R.R. Donnelley has failed to state a claim upon which relief may be granted; (b) Defendants neither directly nor indirectly infringed any claim of the patents-in-suit; (c) one or more of the patents-in-suit is invalid; (d) R.R. Donnelley is estopped from alleging that Defendants infringe because of prosecution history estoppel; and (e) R.R. Donnelley's claims are barred in whole or in part by the doctrines of laches, equitable estoppel, waiver, prosecution laches, license and/or implied license, unclean hands, and 35 U.S.C. §§ 286 and/or 287.

-2-

Case 1:06-cv-00032-JJF

Document 36

Filed 06/21/2006

Page 3 of 7

commenced and that RRD -- not Creo -- initiated suit" (Ex. B). Defendants then stated that they would respond "at the appropriate time in the litigation" (Ex. B). 6. The contentions sought by R.R. Donnelley's Interrogatory Nos. 1-12 relate

to allegations made in Defendants' Answer, Affirmative Defenses, and Counterclaim (D.I. 18), which was filed March 8, 2006. Surely, Defendants had good faith bases for these allegations. 7. Third, in response to Interrogatory Nos. 15 and 16, Defendants objected to

the breadth of the term "all." Rather than attempt to provide a reasonable answer, Defendants simply refused to respond to these interrogatories. There is no legal basis for Defendants' wholesale denial of any meaningful response. 8. Fourth, in response to Interrogatory Nos. 2, 3, 13, 15 and 16 and

Document Request Nos. 4-18, 21-24, 27, 28, 30-32, 36 and 38-41, Defendants refuse to produce documents or respond to interrogatories about any product other than "Darwin Desktop," because "[t]he Complaint only references `Darwin Desktop' software." 9. R.R. Donnelley's Complaint clearly states "[b]y its actions, including the

sale of Darwin, Creo has infringed . . ." (D.I. 1, ¶¶ 27, 32, 37, and 42) (emphasis added). Nothing in the Complaint limits R.R. Donnelley's Document Requests or Interrogatories to Darwin Desktop. Similarly, nothing in the Federal Rules of Civil Procedure, nor in the Local Rules of this Court, permits Defendants to limit discovery in this way. 10. Moreover, R.R. Donnelley's Document Requests and Interrogatories

sought information about Defendants' hardware sales and how those hardware sales have been used to contribute to infringement of the patents-in-suit by others and to induce others to infringe the patents-in-suit. Defendants have also refused to produce this information on the grounds that "[t]he Complaint only references `Darwin Desktop.'" Again, there is no basis in the Complaint,

-3-

Case 1:06-cv-00032-JJF

Document 36

Filed 06/21/2006

Page 4 of 7

the Federal Rules, or the Local Rules of this Court that would allow Defendants to limit discovery in the way they have attempted to do so in their responses. 11. Plaintiff's counsel sent a letter to Defendants' counsel on June 15, 2006

(dated June 13, 2006) outlining these deficiencies (Ex. C), and requesting complete responses by June 19, 2006. 12. Brian Koide, Defendants' counsel, telephoned Bradford J. Badke,

Plaintiff's counsel, on June 19, 2006. Mr. Badke agreed to give Defendants' counsel a day to provide complete responses or determine when they could provide complete responses. 13. On June 20, 2006, Stuart W. Yothers, Plaintiff's counsel, sent an e-mail to

Mr. Koide seeking their response (Ex. D). 14. On June 21, 2006, Mr. Koide telephoned Mr. Yothers and left a message

indicating that Defendants would supplement their responses, but failed to give a firm date for doing so and failed to indicate how the responses would be supplemented. Because Defendants have been given more than adequate time to respond (i.e., the 30 days permitted by the Federal Rules, a stipulated extension of 12 days, and the eight days since they served their responses), Defendants should be ordered to comply with their discovery obligations and supplement their responses immediately. 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

-4-

Case 1:06-cv-00032-JJF

Document 36

Filed 06/21/2006

Page 5 of 7

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 June 21, 2006
525888

-5-

Case 1:06-cv-00032-JJF

Document 36

Filed 06/21/2006

Page 6 of 7

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

June 21, 2006

Case 1:06-cv-00032-JJF

Document 36

Filed 06/21/2006

Page 7 of 7

CERTIFICATE OF SERVICE The undersigned hereby certifies that on June 21, 2006, I 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 June 21, 2006, upon the following in the manner indicated: BY HAND Frederick L. Cottrell III Richards Layton & Finger One Rodney Square 920 N. King Street Wilmington, DE 19801

/s/ Rodger D. Smith II Morris, Nichols, Arsht & Tunnell LLP 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899 (302) 658-9200 [email protected]

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 1 of 47

EXHIBIT A

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 2 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 3 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 4 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 5 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 6 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 7 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 8 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 9 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 10 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 11 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 12 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 13 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 14 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 15 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 16 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 17 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 18 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 19 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 20 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 21 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 22 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 23 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 24 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 25 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 26 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 27 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 28 of 47

EXHIBIT B

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 29 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 30 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 31 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 32 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 33 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 34 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 35 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 36 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 37 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 38 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 39 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 40 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 41 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 42 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 43 of 47

EXHIBIT C

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 44 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 45 of 47

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 46 of 47

EXHIBIT D

Case 1:06-cv-00032-JJF

Document 36-2

Filed 06/21/2006

Page 47 of 47