Free Reply Brief - District Court of Delaware - Delaware

Case 1:06-cv-00032-JJF

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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

PLAINTIFF R.R. DONNELLEY & SONS COMPANY'S REPLY IN SUPPORT OF ITS MOTION TO COMPEL RULE 30(b)(6) DEPOSITION OF PRINTABLE TECHNOLOGIES, INC. In opposing R.R. Donnelley & Sons Company's ("RRD") motion to compel its Rule 30(b)(6) deposition, Printable Technologies, Inc. ("Printable") makes the remarkable argument that parties should immediately run to court rather than work together to attempt to schedule depositions. Printable contends that, after it repeatedly claimed scheduling difficulties when it cancelled deposition dates and refused to schedule a deposition over a four month period, RRD should not have worked with Printable to accommodate Printable and its counsel's schedules but should have immediately filed a motion to compel Printable's deposition.

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Moreover, instead of working with Printable to schedule its deposition, Printable further contends that RRD should have run to file a motion to compel before the close of discovery and that RRD's "time has run out" to conduct the deposition. Printable apparently believes that, rather than attempting to accommodate the other party's schedule, a party seeking a deposition should seek the Court's intervention when the slightest scheduling problem arises. RRD does not believe this should be the case. Indeed, RRD filed its motion to compel only after Printable had thwarted all attempts to schedule its deposition amicably. As explained in RRD's motion, RRD has diligently sought to schedule Printable's deposition since initially serving the subpoena in July 2007. RRD has attempted on countless occasions to schedule the deposition, offering myriad specific dates and ranges of dates including August 28, 2007; mid-October, 2007; early November, 2007; November 13, 14, 15, 27, 28, and 29; December 6, 17, 18, 19, 26, 27, and 28; and January 3, 4, 7, 8, 9, 10, 30, and 31. Each time RRD offered a date or a range of dates, Printable either responded that the date was unacceptable or initially agreed, only to cancel the deposition later. Every time RRD agreed to postpone the deposition, it was for Printable's benefit, due to Printable's counsel's unavailability on the proposed date. If RRD had known back in July 2007 that Printable would not have agreed to a deposition date in the six months to follow, RRD certainly would have filed the present motion much earlier. However, it was not until December that RRD, its patience exhausted, realized Printable would never schedule a deposition without the Court's intervention. Although Printable now alleges that its deposition is not necessary, it offers no support for that proposition. Indeed, RRD never indicated to Printable that scheduling the deposition was anything less than a very high priority. Despite Printable's periodic insistence

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that the deposition may no longer be necessary, RRD regularly emphasized to Printable the deposition's seriousness and importance. See RRD's Br., D.I. 268, Ex. C ("[w]e would strongly prefer to conduct this deposition in November"); RRD's Br., D.I. 268, Ex. E ("we can assure you that the deposition is still very necessary and we must find a date to schedule this deposition immediately"). Further, Printable never indicated that it was altogether unwilling to provide a designee for the deposition, always framing the issue as scheduling. Printable's objections to the deposition were directed toward the deposition's location and date. See RRD's Br., D.I. 268, Ex. B, at 2 ("August 28 is not available, and Delaware is not an appropriate location. Please confirm ... that Donnelley agrees to cooperate to locate the deposition to a more convenient venue."). RRD maintains that Delaware is a proper deposition location, because Printable is incorporated in Delaware and employs an agent for service in the state. But in the spirit of compromise, RRD has expressed its openness to consider alternate deposition locations. Currently, the parties have not agreed on a deposition location, but RRD remains confident that the parties can resolve the question of location. Perhaps realizing its responsibility for the six-month-and-counting delay, Printable now claims that its deposition is not critical to the instant case because "Printable is only a third party, and RRD bases its allegations of infringement against Defendants only `in part' on their alleged use of Printable's software." See Printable's Opp'n, D.I. 276 at 5. Yet Printable is no ordinary third party. Printable is Defendants' sole supplier of three of the Accused Software Products in this case: DL-100, DL-1000, and FusionPro. Indeed, Printable

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appears to be the only entity with extensive technical knowledge of these products.1 Finally, Printable appears to have been in close communication with Defendants at least after RRD subpoenaed Printable.2 Printable is not an innocent third party. Printable holds information crucial to RRD's infringement case regarding Accused Products DL-100, DL-1000, and FusionPro. Thus, consistent with RRD's repeated statements to the same effect, Printable's deposition is critical to RRD's case. For the reasons stated above, Plaintiff's Motion to Compel Rule 30(b)(6) Deposition of Printable Technologies, Inc. (D.I. 268) should be granted. MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Rodger D. Smith II (#3778) 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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Printable acquired the DL-100 product line from Datalogics and developed the successor program, FusionPro. Defendants' 30(b)(6) designee for topics related to the DL software testified at deposition that "over time we worked less and less intimately with Datalogics" and "[w]hen they sold the project to Printable it was even less." Ex. A, William Sullivan Dep. Tr., Jul. 19, 2007, at 96:4-6. When RRD objected in writing to Defendants' notice of deposition of Paul Notredame as being served on the eve of the close of discovery, which is also the subject of a pending motion, Defendants countered that "RRD's deposition of third party Printable has now been delayed until December." Ex. B, Letter from Defs.' counsel to RRD's counsel dated Nov. 7, 2007, at 1. At the time, RRD had not yet communicated this information to Defendants. RRD can only deduce that Printable communicated with Defendants about the deposition date. Although RRD has asked Defendants for any communications with Printable, Defendants have provided none.

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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 Jamie L. Secord SIDLEY AUSTIN LLP One South Dearborn Street Chicago, Illinois 60603 (312) 853-7000 January 14, 2008
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CERTIFICATE OF SERVICE The undersigned hereby certifies that on January 14, 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 14, 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] Richard K. Herrmann Morris James LLP 500 Delaware Avenue, Suite 1500 Wilmington, DE 19801 [email protected] BY EMAIL Richard McMillan, Jr. Crowell & Moring LLP 1001 Pennsylvania Avenue, N.W. Washington, DC 20004-2595 [email protected] Kent Walker Cooley Godward Kronish LLP 4401 Eastgate Mall San Diego, CA 92121-1909 [email protected] /s/ Rodger D. Smith II (#3778) Rodger D. Smith II (#3778)

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