Free Motion for Protective Order - 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'S MOTION FOR RULE 26(c)(1) PROTECTIVE ORDER R.R. Donnelley & Sons Company ("RRD") respectfully requests a protective order to prevent the deposition of third party Paul Notredame because it substantially prejudices RRD. Defendants Creo, Inc., NexPress Solutions, Inc., Kodak Versamark, Inc., Eastman Kodak Company, and Kodak Graphic Communications Company (collectively, "Defendants") identified Mr. Notredame in April as a person knowledgeable of the facts underlying Defendants' invalidity defenses, contacted him by July about taking his deposition, but inexplicably chose to wait until the final hour to notice his deposition. Now, Mr. Notredame is in poor health and, upon information and belief, unable to be deposed in the near future. The subject matter of

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Mr. Notredame's purported knowledge is information that RRD's expert would normally evaluate and include in his analysis. Yet, Defendants have already submitted their opening expert report on invalidity. And it appears any deposition would be after rebuttal and reply reports are submitted in February. RRD's expert would need to evaluate any relevant information from Mr. Notredame's deposition. And such analysis and potential changes cost significant money. Defendants had their fair chance to depose Mr. Notredame; RRD should not be prejudiced by Defendants' poor decisions. The bases for this Motion are as follows: 1. Rule 26(c) provides that upon "motion by a party ... the court ... may

make any order which justice requires to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense...." Fed. R. Civ. P. 26(c). To prevail, the movant, here RRD, must show good cause for the protective order, such as prejudice. Id. 2. Defendants' delay in noticing Mr. Notredame's deposition and deposing

him has already hampered RRD's ability to analyze Defendants' invalidity contentions and defend itself against these allegations. And Defendants' delay is of their own making. They had three months to depose Mr. Notredame before his illness, yet they chose not to notice his deposition or to discuss Mr. Notredame's deposition with RRD until two days before fact discovery closed. See In re Sulfuric Acid Antitrust Litig., 230 F.R.D. 527, 533-34 (N.D. Ill. 2005) (denying motion of parties who waited until the last day of discovery to file deposition concerning an issue they had known about for "many, many months"; the delay was "indefensible and inexplicable").

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3.

Defendants listed Mr. Notredame as a person with knowledge of their See Ex. A, Defendants' Fourth Supplemental

invalidity defenses on April 13, 2007. Interrogatory Response, dated April 13, 2007. 4.

By July, upon information and belief, Defendants had contacted

Mr. Notredame about his deposition.1 Mr. Notredame, also upon information and belief, became ill around July and has remained in poor health. Still, Defendants had approximately three months to notice and to take Mr. Notredame's deposition. 5. On October 31, over six months after identifying Mr. Notredame as a

person with knowledge, at least three months after talking with him about being deposed, and two days before the close of fact discovery, Defendants noticed Mr. Notredame's deposition.2 See Ex. B, Notice of Deposition of Paul Notredame. 6. At no time during this six month period did Defendants discuss deposing

Mr. Notredame until after they served the Notice of his Deposition upon RRD. 7. Because Defendants' delayed in noticing the deposition, RRD will be

substantially prejudiced if Defendants are allowed to take Mr. Notredame's deposition. 8. Defendants identified Mr. Notredame as a person who had knowledge of

Defendants' accusations that RRD's patents are invalid. Presumably, Defendants would like to depose Mr. Notredame on this topic. Such depositions should be completed by the close of fact

1

RRD has asked Kodak for the date on which they first contacted Mr. Notredame, the date they first asked him to consent to be deposed, and all correspondence between Kodak and Mr. Notredame. See Ex. C, Letter from B. Frey to N. Grow, dated November 2, 2007. Kodak has not agreed to provide this information. The deposition was noticed for November 12, but this was only a placeholder. See Ex. D, Letter from N. Grow to B. Frey, dated November 7, 2007. No deposition date is presently scheduled.

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discovery, or very near it, because these allegations are important in patent cases.3 information needs to be available for an expert's review and report. 9.

This

But Defendants have already submitted their opening expert reports,

which addressed, inter alia, Defendants' invalidity contentions. Further, Mr. Notredame may be unavailable until after the expert rebuttal and reply reports are submitted in February. In each instance, at the least, RRD would need to pay the extra cost of having its expert review the additional information and possibly revise the report. 10. More fundamentally, it is unfair that RRD will have to suffer as a result of This is not an instance where, through recently produced

Defendants' poor planning.

information, Defendants discovered Mr. Notredame just a few days before fact discovery closed: They knew about him seven months before discovery closed. Nor is this an instance where Defendants can hide behind Mr. Notredame's unfortunate health problems: They had three months to depose him prior to his illness. 11. This is a delay for which Defendants are solely responsible. They had

ample opportunity -- approximately seven months -- to at least notice his deposition. They had approximately three months to depose him. They failed to do either. And RRD should not have to pay for their tactical mistake or poor planning. See In re Sulfuric Acid Litig., 230 F.R.D. at 535 (The only explanation for filing a motion on an issue the plaintiffs had known about for some time was that plaintiffs, "having delayed too long and planned too little, found themselves out of time, and out of options.").

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The parties agreed to conduct certain depositions after fact discovery closed. For example, Defendants agreed that third party Printable Technologies' deposition (noticed in August) could be conducted after fact discovery closed. But this and other deferred depositions were noticed well-ahead of the discovery cut-off.

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12.

Were defendants' delay not enough, the deposition is geographically

inconvenient and costly. The deposition has been noticed for Brussels, Belgium. RRD will have to pay significant sums for air travel, accommodations, translator services, and time for this deposition. 13. In sum, RRD has shown the requisite good cause required by Rule 26(c)

and respectfully requests a protective order preventing the deposition of third party Paul Notredame. See Fed. R. Civ. P. 26(c)(1). 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 OF COUNSEL: John G. Hutchinson SIDLEY AUSTIN LLP 787 Seventh Avenue New York, New York 10019 (212) 839-5398 Douglas I. Lewis SIDLEY AUSTIN LLP One South Dearborn Street Chicago, Illinois 60603 (312) 853-7000 December 19, 2007
1344012

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RULE 7.1.1 CERTIFICATE I hereby certify that counsel for plaintiff have raised 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 (#3778) Rodger D. Smith II

December 19, 2007

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CERTIFICATE OF SERVICE The undersigned hereby certifies that on December 19, 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, P.A. I also certify that copies were caused to be served on December 19, 2007, 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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