Free Response to Motion - 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

THIRD PARTY PRINTABLE TECHNOLOGIES, INC.'S RESPONSE TO PLAINTIFF'S MOTION TO COMPEL ITS RULE 30(B)(6) DEPOSITION I. INTRODUCTION Third party Printable Technologies, Inc. ("Printable") hereby responds to plaintiff R.R. Donnelley & Sons Company's ("RRD's") motion to compel its deposition under Federal Rule of Civil Procedure ("FRCP") 30(b)(6). Because Printable is a third party located in San Diego County, California, FRCP 45 protects it from the hardships that such a deposition would entail. Furthermore, because RRD willingly delayed Printable's deposition for months, up to and beyond the close of discovery and inexplicably passed on Printable's offer to submit to the deposition on December 4, 2007, it has no grounds now to complain that Printable avoided the

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deposition or that RRD's time has run out. Finally, Printable's deposition is not critical to RRD's case, so RRD does not have a legitimate equitable argument for flouting the federal rules and this Court's discovery orders to unduly inconvenience Printable with a deposition. For these reasons, Printable respectfully requests that the Court deny RRD's motion to compel its deposition. II. ARGUMENT A. Because Printable is a third party located in California, FRCP 45 protects it from the hardships that such a deposition would entail. FRCP 45(c)(3)(A) requires a court to quash any deposition subpoena that will require a third party to travel more than 100 miles. The Delaware District Court has interpreted this rule to mean that a third party corporate subpoena "must take place where the officer-witness resides or at the corporation's principal place of business." Application of Johnson & Johnson, 59 F.R.D. 174, 178 (D. Del. 1973). This interpretation accords with the general rule that the "deposition of a corporation by its agents and officers should ordinarily be taken at its principal place of business." 8A WRIGHT & MILLER, FEDERAL PRACTICE & PROCEDURE § 2112 (2007). Thus, because Printable's principal place of business is in Solana Beach, California, RRD's subpoena and motion to compel is improper to the extent that it suggests deposing Printable in Delaware. Although it is a Delaware corporation, Printable does not have an office in Delaware or any officers, directors or employees in Delaware. Nor does it employ or otherwise have available a person to designate in response to RRD's subpoena that resides or works in Delaware or within one hundred miles of Delaware. See the Declaration of Coleman F. Kane submitted herewith ("Kane Decl."). Therefore, RRD's subpoena should be quashed. Printable made the foregoing objection under FRCP 45(c)(3)(A) on August 7, 2007, and RRD never cured or reissued the subpoena. See D.I. 268, RRD's Ex. B at p. 3. If the Court is

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not inclined to quash the subpoena, then Printable requests that it be modified to locate any deposition in San Diego County, since Delaware would be an unduly burdensome and expensive location for third party Printable. See the Kane Decl. Indeed, RRD's primary counsel is not in Delaware, and they have clearly held themselves out as counsel that would take the deposition. See RRD's Exs. A-E. B. RRD has voluntarily delayed Printable's deposition well beyond the discovery cutoff. RRD's motion is largely a caricature; it unfairly paints a picture of RRD as a victim and of Printable as a manipulator. The Court should not allow RRD's post hoc

indignation to obscure the fact that RRD bears full responsibility for the way events have unfolded. RRD could have sought Printable's deposition before discovery closed, through a motion to compel if nothing else, but it chose not to. Rather, on July 23, 2007, RRD noticed the deposition for August 28, 2007 ­ just days before the August 31, 2007 discovery cut-off date. See RRD's Ex. A. Then, the discovery cutoff date was continued to November 2, 2007, and RRD chose to "push back the deposition of Printable until sometime around mid-October" (and to "forego Delaware" as the location). See RRD's Ex. B at p. 1. Then, RRD chose to "conduct Printable's deposition sometime in the

week of 11/5 or 11/12, after the close of fact discovery." See Printable's Ex. E attached hereto. Fires in San Diego starting on October 21 set back everyone's schedule there. See Printable's Ex. D attached hereto. Regardless, by November 2, 2007, RRD's counsel had not even looked at documents produced by Printable, as evidenced by their requests to Printable's counsel for replacements of yet to be reviewed, misplaced documents and expired passwords provided by Printable in July and August 2007. See Printable's Exs. B and C attached hereto.

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Moreover and still, Printable specifically offered a designee on December 4, 2007 for deposition in San Diego, but RRD turned it down. See Printable's Ex. A attached hereto. Printable tried to accommodate RRD and held that offer open for weeks. However, despite

having probably ten attorneys working on this case, RRD declined the December 4, 2007 deposition date, because RRD's counsel indicated that they had depositions in another matter around that time. This is certainly ironic in view of RRD's repeated digs at third party

Printable's counsel in its motion. Now that the discovery deadline is more than two months blown, RRD wants to blame Printable for RRD's delay and inactivity. But, ultimately, no matter how polite and deferential it claims to have been, RRD cannot avoid the facts that it failed to act before discovery closed, and it declined the opportunity to take the deposition after discovery closed. Deposing Printable before the close of discovery was RRD's responsibility and no one else's. See Helfand v. Gerson, 105 F.3d 530, 536 (9th Cir. 1997) ("The defendants' refusal to respond to the plaintiffs' subpoena duces tecum may have left the plaintiffs without complete information.... The failure to obtain this information, however, was the plaintiffs' fault.... They did not attempt to force production of the documents. By failing to bring a motion to compel production, the plaintiffs waived their objection to the assertion of the privilege, including their contention that the assertion was made in bad faith.") Local Rule 16.4 dictates that "a request for an extension of deadlines for completion of discovery... shall be made by motion... prior to expiration of the date deadline." (emphasis added.) RRD made no such motion. Furthermore, FRCP 16(b)(4) requires that "[a] schedule may be modified only for good cause." RRD lacks good cause here, because it did not take obvious, reasonable measures (e.g., file a motion to compel) to secure Printable's deposition

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before the discovery cutoff. See Gonzalez v. Comcast Corp., 2004 WL 2009366 at *1 (D. Del. Aug 25, 2004) ("`Properly construed, `good cause' means that scheduling deadlines cannot be met despite a party's diligent efforts.'") (quoting Dilmar Oil Co. v. Federated Mut. Ins. Co., 986 F. Supp. 959, 980 (D. S.C. 1997)). RRD tries to evade responsibility by claiming selfless

motives in blowing the discovery cutoff; instead, to demonstrate good cause, RRD must explain "why, despite diligent effort, [it] could not have asserted th[is] motion at an earlier time." Gonzalez, 2004 WL 2009366 at *1. Because it cannot, the Court should deny its motion to compel. C. Printable's deposition is not critical to RRD's case, so there is no equitable basis for compelling it. Despite lacking any good reason for failing to secure Printable's deposition earlier, RRD also fails to show why it needs to depose Printable at all. 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. D.I. 268, Motion to Compel at 1. In fact, RRD has been able to conduct an entire course of discovery from beginning to end without Printable's deposition. Also, in July and August 2007, Printable produced documents in response to RRD's document subpoena, and by November 2007, RRD still had not reviewed them. See Printable's Exs. B and C attached hereto. It is thus clear that Printable's deposition is not critical to RRD's case; indeed, if it were, RRD would not notice it just before the close of discovery and then proceed to repeatedly put it off. Combined with all the other factors weighing against it, this indicates that there is no equitable reason to grant RRD's Motion to Compel. See FRCP

26(b)(2)(C)(iii) (courts must limit proposed discovery when burden outweighs likely benefit).

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III.

CONCLUSION Based on the foregoing, Printable respectfully requests that the court deny Plaintiff's

Motion to Compel Rule 30(b)(6) Deposition of Printable Technologies, Inc. If the Court is not inclined to deny the motion, then Printable requests that any deposition be located in San Diego County, California where Printable resides. /s/ Richard K. Herrmann _ Richard K. Herrmann #405 MORRIS JAMES LLP 500 Delaware Avenue, Suite 1500 Wilmington, DE 19801-1494 (302) 888-6800 [email protected] Of counsel: Kent M. Walker (173700) COOLEY GODWARD KRONISH LLP 4401 Eastgate Mall San Diego, CA 92121 (858)550-6000 [email protected] Attorneys for Third Party Printable Technologies, Inc. January 11, 2008

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