Free Redacted Document - 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. CREO, INC., NEXPRESS SOLUTIONS, INC., KODAK VERSAMARK, INC., EASTMAN KODAK COMPANY, and KODAK GRAPHIC COMMUNICATIONS COMPANY, Defendants. EASTMAN KODAK COMPANY, Counterclaim-Plaintiff, v. R.R. DONNELLEY & SONS COMPANY, Counterclaim-Defendant. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

C.A. No. 06-cv-032-JJF

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PLAINTIFF R.R. DONNELLEY & SONS COMPANY'S REPLY IN SUPPORT OF ITS MOTION FOR A RULE 26(c)(1) PROTECTIVE ORDER Defendants1 oppose RRD's request for a protective order to prevent third party Paul Notredame's deposition (in Belgium), claiming that one of RRD's witnesses' (Mr. Grant Miller) "surprising" deposition testimony in late October revealed a previously unknown supposed need to depose Mr. Notredame. Defendants thereby claim not to have had a fair chance to depose Mr. Notredame because he became ill in July. Further, Defendants argue that

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Defendants Creo, Inc., NexPress Solutions, Inc., Kodak Versamark, Inc., Eastman Kodak Company, and Kodak Graphic Communications Company will be collectively referred to as "Defendants." Plaintiff R.R. Donnelley & Sons Company will be referred to as "RRD."

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their third party deposition request is no different than RRD's request to depose another third party, Printable Technologies ("Printable"). Defendants' premise is simply wrong. Mr. Miller's late October deposition did not lead to Defendants' alleged epiphany that they needed Mr. Notredame's deposition. Defendants had no reason to believe that Mr. Miller could provide the information they now supposedly seek from Mr. Notredame. Moreover, Defendants had at least three months, and possibly seven months, to notice and to depose Mr. Notredame but chose to do nothing. Defendants' delay is also materially different from RRD's situation with Printable. RRD has been diligently pursuing Printable's deposition since July. Defendants noticed Mr. Notredame's deposition only two days before the close of discovery. Moreover, Mr. Notredame is still not well enough to be deposed. Given

Defendants' delay, the Court should grant RRD's motion for a protective order. Defendants should not be permitted to hold Mr. Notredame's deposition in abeyance until he becomes well because this case has progressed long past fact discovery, with expert discovery partially done and a pretrial order due on May 1, 2008. In further support of its Motion, RRD states as follows: 1. Defendants' Opposition confuses the operative dates involved in this

motion, namely when Defendants knew about Mr. Notredame and when they could have noticed and taken his deposition. Defs.' Opp'n, D.I. 274 at 3. The chart below shows these facts: November 21, 2006 RRD produces RRD049985-87, the document that Mr. Notredame allegedly authored and about which Defendants' counsel asked Mr. Miller during his deposition. Defendants serve their Fourth Supplemental Responses to RRD's First Set of Interrogatories. Defendants name Mr. Notredame as a person with knowledge about Defendants' patent invalidity defenses.

April 13, 2007

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July 2007 October 23, 2007 October 31, 2007

Mr. Notredame becomes ill. Defendants depose Mr. Miller and ask him about RRD04998587, a document allegedly authored by Mr. Notredame. Two days before discovery closes, Defendants serve their notice to take Mr. Notredame's deposition.

As the above chart shows, (a) Defendants had at least three months, and more likely seven months, to notice and to depose Mr. Notredame before he became ill, and (b) Defendants did nothing for half-a-year after naming Mr. Notredame as a person with knowledge relating to their invalidity defenses. 2. Trying to excuse their delay, Defendants argue that they did not know that

Mr. Notredame's deposition would be needed until Mr. Miller gave "surprising" deposition testimony in October 2007 regarding a document that Mr. Notredame allegedly authored. See Defs.' Opp'n, D.I. 274 at 3. The document itself, as well as Mr. Miller's testimony,

demonstrates that this is just not the case. 3. Nothing on the face of the document indicates that Mr. Miller authored the

document. See Ex. A, RRD049985-87. Indeed, Mr. Miller testified that he did not remember receiving this document and that he was not its author. See Miller Dep. Tr., Ex. B, 33:11-34:5. Defendants' counsel nonetheless proceeded to ask Mr. Miller for his understanding of what Mr. Notredame meant by certain phrases in the document. See Miller Dep. Tr., Ex B, 40:241:22, 53:21-56:21, 64:5-69:3. If Defendants wanted to find out what Mr. Notredame meant, they should have logically known to ask Mr. Notredame in November 2006 when they first received the document. 4. Although Defendants draw such a comparison, Defendants' delay in noticing and taking Mr. Notredame's deposition is materially different from RRD's situation with Printable's deposition. Defendants never noticed Mr. Notredame's deposition between 3

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November 21, 2006, when they first received the supposedly critical document, and October 31, 2007, two days before the close of fact discovery. Conversely, RRD, as this Court knows (see D.I. 162), served its deposition subpoena on Printable in July and has been diligently working ever since to schedule a deposition. Technologies, Dec. 19, 2007 (D.I. 268). 5. Defendants had a fair chance to depose Mr. Notredame. He is now See RRD's Mtn. to Compel Deposition of Printable

unfortunately ill and unavailable.

Defendants cannot continue to hold Mr. Notredame's

deposition in abeyance, waiting for him to become well enough to be deposed, without regard to the schedule in this case. Fact discovery in this case is long over. The parties have exchanged initial expert reports and will be exchanging rebuttal expert reports on February 1. And the parties must submit their pretrial order on May 1, 2008. 6. Moreover, Defendants' delay caused this entire problem. Defendants, not

RRD, should bear whatever result arises from not being able to depose Mr. Notredame. For the foregoing reasons, RRD respectfully requests that the Court grant its Motion for a Protective Order and prevent Defendants from taking Mr. Notredame's deposition. MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Rodger D. Smith II Jack B. Blumenfeld (#1014) Rodger D. Smith II (#3778) 1201 North Market Street P.O. Box 1347 Wilmington, DE 19899 (302) 658-9200 [email protected] Attorneys for Plaintiff R.R. Donnelley & Sons Company

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OF COUNSEL: John G. Hutchinson SIDLEY AUSTIN LLP 787 Seventh Avenue New York, New York 10019 (212) 839-5398 Douglas I. Lewis Andrew R. Hein SIDLEY AUSTIN LLP One South Dearborn Street Chicago, Illinois 60603 (312) 853-7000 Original Filing Date: January 14, 2008 Redacted Filing Date: January 15, 2008
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CERTIFICATE OF SERVICE The undersigned hereby certifies that on January 15, 2008, 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, P.A. I also certify that copies were caused to be served on January 15, 2008, upon the following in the manner indicated: BY EMAIL AND BY HAND Frederick L. Cottrell III Richards Layton & Finger, P.A. One Rodney Square 920 N. King Street Wilmington, DE 19801 [email protected] BY EMAIL Richard McMillan, Jr. Crowell & Moring LLP 1001 Pennsylvania Avenue, N.W. Washington, DC 20004-2595 [email protected] /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]

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ALL EXHIBITS CONFIDENTIAL