Free Motion to Compel - 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

PLAINTIFF'S MOTION TO COMPEL RULE 30(b)(6) DEPOSITION OF PRINTABLE TECHNOLOGIES, INC. R.R. Donnelley & Sons Company ("RRD") respectfully requests this Court to compel third party Printable Technologies, Inc. ("Printable") to provide a corporate representative for deposition, pursuant to Rule 30(b)(6), on topics related to the development, sale, and marketing of its FusionPro and DL software on a date certain. RRD has accused Creo, Inc. et al. ("Defendants") of infringing its patents, in part because of Defendants' use of Printable's software products, like FusionPro and DL. RRD subpoenaed Printable on July 23, 2007, for deposition relating to this software. But five months after the subpoena, Printable has been unwilling to schedule a deposition.

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Because Printable is a third party, RRD has been especially accommodating over the past nearly five months to Printable's schedule, including, as a courtesy, its outside counsel's schedule. Indeed, RRD has offered to take the deposition near Printable's and its counsel's offices, and has offered multiple deposition dates over multiple months. But Printable appears to have taken advantage of RRD's courtesy, as it (actually, mostly its counsel) has been available only one day out of the past five months. And the future does not look any better. More specifically: · For over five months (from July 23 to the present), RRD has offered numerous deposition dates hoping to find one that works for Printable. None has.1 And Printable's counsel has indicated that a deposition will likely not happen in January. · Apparently only one person in Printable's counsel's large firm can represent Printable at the deposition, even though Printable is not a party in this case and its attorney should not require the same case knowledge as a party's. Printable has been unable, in almost five months, to find a date for its deposition and a person to depose. And so, RRD must now ask this Court to set a date certain for this deposition and to order Printable to designate a witness pursuant to Rule 30(b)(6). In further support of this motion, RRD states as follows: 1. Rule 30(b)(6) of the Federal Rules of Civil Procedure provides that a party

may, in a deposition notice, "name as the deponent a public or private corporation ... and describe with reasonable particularity the matters on which examination is requested. In that
1

Printable has offered one date in the past five months, December 4, that it could be available for deposition. RRD could not make this date due to commitments in another case.

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event, the organization so named shall designate one or more officers, directors, or managing agents, or other persons who consent to testify on its behalf, and may set forth, for each person designated, the matters on which he will testify...." 2. Printable is a printing software company incorporated in Delaware with its

principal place of business in Solana Beach, California. Printable manufactures and sells the FusionPro Desktop software to Defendants. FusionPro is also the successor product to the DL software line (e.g., DL-100, DL-1000), which is and was sold to Defendants. RRD is suing Defendants for infringement based on their use of these software products, which are accused of infringing RRD's patents. 3. On July 23, 2007, RRD served a Rule 30(b)(6) subpoena on Printable.

The subpoena asked Printable to designate for deposition an individual with knowledge of topics relating to the specific points of the design, operation, functionality, and output of the FusionPro and DL Software.2 Ex. A, Subpoena to Printable Technologies. The subpoena stated that the deposition would take place on August 28, 2007, in Wilmington, Delaware. Printable never objected to the deposition taking place and never informed RRD that they believed the Rule 30(b)(6) deposition topics were overly broad or improper.3

2

RRD had previously served a document subpoena on Printable on June 5, 2007. Printable produced some of the requested information initially, and after a meet and confer with Mr. Kent Walker, Printable's outside counsel, Printable supplemented its production. Printable did object to Delaware as the deposition location. RRD believes that Delaware is a proper deposition location because Printable is incorporated in Delaware, and RRD properly served Printable's corporate designee in Wilmington with more than thirty days notice before deposition. Yet, in the spirit of compromise, RRD has since agreed to take the deposition in San Diego, California, which is close to Printable's and its counsel's offices.

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4.

In what was soon to be a common refrain, Printable told RRD that it

would be unavailable for deposition on August 28 and needed more time. To accommodate Printable, RRD agreed to postpone the deposition until mid-October, well before the discovery cut-off of November 2, 2007. August 17, 2007. 5. But Printable then claimed to be unavailable in mid-October, too. In Ex. B, Email from Benedict Frey to Kent Walker, dated

September and early October, Printable informed RRD during several phone conversations that it would be unavailable in mid- to late-October. Printable asked that the deposition be held in early November, after fact discovery closed on November 2. RRD discussed this with Defendants, who agreed to allow the deposition after the close of fact discovery. And so RRD agreed to a deposition date in early November. 6. But then Printable claimed to be unavailable in early and mid-November.

On October 19, RRD tried to confirm a deposition date for November 6, 8 or 13. Printable's counsel, Mr. Kent Walker, responded on October 23 that the week of November 6 would no longer work because of the aftermath of wildfires in the region and court closures. And the week of November 13 did not work, either, when Mr. Walker claimed to be involved in out-of-town depositions in another matter. Printable asked to postpone the deposition to the week after Thanksgiving. Again, RRD discussed this with Defendants and negotiated an agreement that RRD could push the deposition date back to the week after Thanksgiving. And so RRD agreed to a deposition date the week after Thanksgiving and proposed November 27. 7. But then Printable became unavailable on November 27 and the rest of

November. On November 6, Mr. Walker told RRD that Tuesday, November 27 would not work, and more generally, the week of November 26 would not work; in fact, the entire month of

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November would not work. Printable proposed December 4 as the deposition date.4 For the first time in almost four months, that date did not work for RRD. RRD's counsel was involved with expert depositions in another matter. And as plaintiff, counsel with knowledge of the technical aspects and legal aspects of the case would be needed. Additionally, RRD told Printable a December 4 deposition date would not allow RRD's expert adequate time to analyze the information obtained from the deposition and to incorporate it into his expert report, which was due on December 17. RRD asked that Printable reconsider its availability and offered Printable several alternative dates: November 13, 14, 15, 27, 28 or 29. 8. But Printable claimed to be unavailable on November 13, 14, 15, 27, 28

or 29. On November 7, Mr. Walker informed RRD that none of those dates would work. Again, Mr. Walker was involved with depositions in another case during the week of November 13 and his travel conflicts prevented the deposition from being conducted the week of November 27. And so, on November 9, RRD made one last try to find a mutually acceptable deposition date. RRD indicated to Printable that while a November deposition was highly preferred, RRD would agree to take Printable's deposition in San Diego on December 18 or 19. Ex. C, Letter from RRD's Counsel to Printable's Counsel, dated November 9, 2007. 9. But Printable would not agree to December 18 and 19, either. The

evening of November 9, Mr. Walker responded by voicemail and -- by now not surprisingly -indicated that those dates would not work. Yet again, he was involved in yet another out-oftown deposition and was leaving for vacation on December 20. Mr. Walker further stated that "maybe it's not even necessary to do the deposition ..." because "... discovery's closed and I

4

Given Printable's history, RRD could not be sure that Printable would have been available as that date approached.

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have a lot of other stuff going on." Ex. D, Voicemail transcription from Printable's counsel to RRD's counsel, Nov. 9, 2007. 10. RRD's counsel called Mr. Walker on November 12 and left a voicemail

stating that RRD had never indicated that the deposition was no longer necessary, and in fact, needed to be scheduled immediately. RRD sent Printable another letter again asking for

deposition dates on December 17, 18, 19, or any of the other dates previously offered by RRD. Ex. E, Letter from RRD's Counsel to Printable's Counsel, dated November 12, 2007. RRD further asked whether another attorney at Cooley Godward Kronish LLP could handle the deposition. Id. Most of the reasons that Mr. Walker had given for not going forward with the deposition involved his personal schedule rather than his client's. The proposed deposition dates were over one month away, Printable is a third party, and so this seemed adequate time for Mr. Walker to acquaint another attorney with the case. And there seem to be enough intellectual property litigation attorneys in his firm's San Diego office: thirteen attorneys and five partners other than Mr. Walker. See Ex. F, Pages from website of Cooley Godward Kronish LLP listing San Diego office IP litigation attorneys (last accessed December 19, 2007). Further, after almost four months, RRD informed Printable that if it could not accept one of RRD's previously offered deposition dates, it would be forced to ask the Court to compel deposition. 11. But Printable claimed that December 17, 18 and 19 were inconvenient,

too; and Mr. Walker told RRD that he is the only person from his firm who could represent Printable in its third party deposition. On November 15, Mr. Walker contacted RRD's counsel and -- true to form -- explained that none of the dates would work with his schedule. Mr. Walker reiterated that he was available on the one date that RRD could not make in over four months of

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discussion.5 He further explained that educating another attorney at Cooley Godward with the facts of the case so that he or she could defend the deposition was costly and unwarranted. Mr. Walker did not address how defending a third party deposition would require such a degree of knowledge of the case that one of his sixteen or so colleagues could not pitch-in and defend it. 12. On November 29, due to a scheduling change in another case, RRD

became available to depose Printable on December 6. RRD's counsel contacted Mr. Walker that afternoon by telephone and fax, offered December 6 as an additional potential date for deposition, and requested a reply by the following afternoon. 13. But Printable could not manage December 6, either. On the evening of the

following Monday, December 3, Mr. Walker called Mr. Frey and left a voicemail explaining that December 6 would not work for Printable's deposition. By now, the reason was familiar: Mr. Walker was involved with a deposition in another case. Mr. Walker additionally explained that he could not provide January dates for the deposition until December 14 because of a scheduling conference that day in another case. The next day, December 4, the parties spoke by telephone and Mr. Walker said he would provide January dates after the December 14 scheduling conference. 14. Now, Printable claims it will not be available in January, either.

Mr. Walker on December 18 left a voicemail for RRD's counsel that Mr. Walker's trial in his other case was proceeding as scheduled, starting January 2, 2008, and that his "January schedule is very difficult. I don't have dates." Ex. G, Voicemail transcription from Printable's counsel to RRD's counsel, dated December 18, 2007.

5

Again, given its history, even agreeing to December 4 would not have assured RRD that the deposition would actually have happened that day.

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15.

RRD has extended a professional courtesy to Printable and its counsel for

almost five months since the subpoena was issued to accommodate their schedules, and Printable has taken advantage of this courtesy: to date, the deposition is still not scheduled. 16. The Federal Rules of Civil Procedure impose obligations upon non-parties

as well as parties. See Fed. R. Civ. P. 30(a)(1) ("A party may, by oral questions, depose any person, including a party....") (emphasis added). "Nothing in the Rules ... makes controlling a distinction between parties and nonparties in respect of the type of information sought." Truswal Sys. Corp. v. Hydro-Air Eng'g, Inc., 813 F.2d 1207, 1210 (Fed. Cir. 1987). By failing to offer an individual for deposition for almost five months after serving the subpoena, Printable has violated its obligations under Rule 30(b)(6) to "designate one or more officers, directors, or managing agents, or other persons who consent to testify on its behalf." Fed. R. Civ. P. 30(b)(6). 17. The discovery process requires cooperation between its participants. See

generally Kindred Rehab Servs., Inc. v. Florida Convalescent Centers, Inc., No. 3:06-cv-218-J33MCR, 2007 WL 2028767, *1 (M.D. Fla. Jul. 10, 2007). Printable has taken advantage of RRD's courtesy in accommodating its counsel's personal schedule. RRD has diligently tried to schedule this deposition since first serving the subpoena on Printable over three months before the close of fact discovery and over five months ago. RRD has accommodated Mr. Walker's (counsel for Printable) depositions in other cases and his related scheduling issues. Yet, in this case, Printable and its counsel seem unable to provide a deposition date until after January (and perhaps later) -- almost half a year after RRD served the subpoena, over three months after the close of fact discovery, and over four weeks after the submission of initial expert reports. 18. deposition. Without the Court's assistance, Printable will continue to delay the

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WHEREFORE, Defendants respectfully request that the Court: (1) Order Printable to designate an individual or individuals for deposition on

the Rule 30(b)(6) topics attached to the July 23, 2007 subpoena, and to appear for deposition in Delaware on a date designated by the Court within fourteen days of the entry of the order; (2) Order the reimbursement of all legal fees and costs incurred by RRD in

connection with this motion to compel; and (3) Such other relief as this Court deems just and proper. 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 Jamie L. Secord SIDLEY AUSTIN LLP One South Dearborn Street Chicago, Illinois 60603 (312) 853-7000 December 19, 2007
1344011

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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] Kent Walker Cooley Godward Kronish LLP 4401 Eastgate Mall San Diego, CA 92121-1909 [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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