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. ) ) ) ) ) ) ) ) ) ) ) ) )

C.A. No. 06-032 (JJF)

PLAINTIFF R.R. DONNELLEY & SONS COMPANY'S OPPOSITION TO DEFENDANTS' MOTION TO COMPEL DISCOVERY 1. Plaintiff R.R. Donnelley & Sons Company ("RRD") hereby opposes

Defendants' "Motion To Compel Discovery." (D.I. 196.) 2. Defendants seek to compel RRD to produce documents in response to

overly broad requests for production that seek information that is not relevant to the claims or defenses of the parties, and that should be, at least in part, in Defendants' own files. Indeed, Defendants are seeking all draft or final agreements ever executed or contemplated between RRD and Kodak ­ or any Kodak predecessor, subsidiary, etc. ­with respect to 10 different software products. Defendants are also seeking all documents from any RRD employee who knew about the accused software products or the operation of such products, regardless of whether the employee knew about the patents-in-suit or Defendants' infringing activities. RRD has repeatedly informed Defendants of the substantial breadth and irrelevance of their discovery requests and sought compromise to avoid burdening this Court with more discovery disputes. Yet Defendants have been unwilling to frame their requests in a reasonable manner consistent with Fed. R. Civ. P. 26(b).

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Defendants' Request for Production No. 56: All draft or final agreements, and any documents or notes reporting, discussing, summarizing, or otherwise memorializing any negotiations related to such agreements, between (i) RRD and (ii) any Kodak Entity regarding the use of any of the following software products: Begin, Composer, Darwin, DijiComp, DL-100, DL-1000, FormsMerge, FusionPro, KEEPs, or Mailscape. (D.I. 196, Ex. C, at 4.) 3. Defendants' Request for Production No. 56 seeks all draft or final

agreements ­ and any documents or notes relating thereto ­ ever executed or contemplated between RRD and "any Kodak Entity" regarding 10 different software products. Although Defendants acknowledge that they should already have at least the agreements they are seeking from RRD, they inexplicably claim that "[s]uch documents are not as readily available to Defendants as they are to RRD." (D.I. 196, Ex. E, at 4.) Defendants suggest that RRD's files should be more complete or more easily accessible because RRD should have known "as many as 20 years" ago that the pending litigation would be filed. (D.I. 196, at 5.) Given that the patents-in-suit did not issue until 2001 or later, such an argument lacks merit. 4. Moreover, Defendants have been unwilling to provide a reasonable time

period for Request for Production No. 56. Defendants have said they want all agreements between RRD and any Kodak Entity regardless of when the agreements were executed or contemplated. Defendants have stated that some of the agreements they are seeking may date back even to the 1980s. (D.I. 196, Ex. E, at 5.) Yet, as mentioned above, the patents-in-suit did not issue until 2001 or later. 5. RRD has repeatedly offered to compromise to avoid costly and

unnecessary motion practice on Defendants' Request for Production No. 56. Indeed, RRD has offered, and even begun, to undertake a search for final agreements between RRD and Kodak regarding the 10 enumerated software products since 2000 ­ a full year before the issuance of the earliest patent-in-suit. (See Ex. A, Letter from J. Secord to N. Grow of Aug. 17, 2007, at 2.)

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6.

Despite RRD's willingness to compromise, Defendants have been

unwilling to do so, claiming that it does not matter whether Defendants' request seeks information that is relevant to the parties' claims or defenses, and that they are instead entitled to all information "that is reasonably calculated to lead to the discovery of admissible evidence." (D.I. 196, at 9.) RRD has pointed out to Defendants that the language in Fed. R. Civ. P. 26(b)(1) was amended seven years ago ­ in 2000 ­ to require discovery requests to be "relevant to the claim or defense of any party," unless good cause is shown for broader discovery. (See Ex. A, Letter from J. Secord to N. Grow of Aug. 17, 2007, at 2 (citing Advisory Committee Notes to Fed. R. Civ. P. 26(b)(1).) Defendants have made no effort to establish good cause and have refused to focus their request on documents that relate to the parties' claims or defenses. 7. Indeed, although Defendants have generally suggested that RRD may have

used the listed products before the patents-in-suit issued (D.I. 196, at 3), they have not shown that all of the enumerated products even existed before the filing of the earliest patent application. Furthermore, Defendants argue that RRD-Kodak contracts may have included

contractual provisions "that would restrict or bar RRD from bringing suit against Kodak for the subject matter of this litigation." (D.I. 196, at 3 n.3.) Again here, however, Defendants fail to explain how such alleged contracts could be relevant before the technology in the core patent-insuit was even invented. Defendants have failed to show good cause for why RRD should search for all RRD-Kodak agreements ever executed or contemplated without regard to the dates of such agreements. 8. At the very least, RRD respectfully requests that the Court strike the

portion of Request for Production No. 56 seeking "documents or notes reporting, discussing, summarizing, or otherwise memorializing any negotiations related to" RRD-Kodak agreements,

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as opposed to the final agreements themselves, given that Defendants have made no attempt to show how documents, notes, or draft agreements are relevant to the parties' claims or defenses. RRD further requests that the Court set a reasonable time period for the agreements sought. 9. RRD believes that its proposed compromise for Defendants' Request for

Production No. 56 ­ final agreements between RRD and Kodak regarding the 10 enumerated software products from 2000 to present ­ is reasonable in scope and time period. Defendants' Request for Production No. 60: All documents that RRD considers, analyzes, examines, or investigates as prior art, or that RRD alleges to be prior art to any of the patents in suit in the Tesseron Suit, including all documents that refer to any such consideration, analysis, examination, investigation, or allegation. Defendants' Request for Production No. 61: All documents that are alleged by any party to support or refute, in whole or part, Tesseron's claim for damages in the Tesseron Suit. (D.I. 196, Ex. C, at 5.) 10. Defendants' motion with respect to Request for Production Nos. 60 and 61 Defendants' requests seek prior art and damages

raises issues that are simply premature.

information from Tesseron, Ltd. v. R.R. Donnelley & Sons Company, No. 1:06CV2909 (N.D. Ohio) (the "Tesseron Suit"). That lawsuit is still in the early fact discovery stage. Until recently, it was not even clear which products were at issue in that case. Furthermore, plaintiff Tesseron has not yet provided any damages analysis. 11. RRD has repeatedly informed Defendants that its requests are premature

and that RRD is not withholding non-privileged RRD documents sought by Defendants' Request for Production Nos. 60 and 61. (See, e.g., Ex. A, Letter from J. Secord to N. Grow of Aug. 17, 2007, at 3.) RRD has further stated that it will produce any non-privileged, responsive

documents in accordance with the Federal Rules of Civil Procedure. (See id.) Such assurances apparently have not satisfied Defendants.

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12.

Defendants also complain that RRD has been unwilling to violate the

Protective Order in the Tesseron Suit by producing non-RRD materials, such as documents produced by Tesseron or any potential third parties, that are designated confidential pursuant to the Protective Order in that case. (See D.I. 196, at 5-8.) Again here, this issue is simply premature since RRD is not currently aware of any non-RRD materials that are responsive to Defendants' Request for Production Nos. 60 and 61. If RRD identifies such materials in the future, RRD has informed Defendants that it will so notify Defendants. (See Ex. A, Letter from J. Secord to N. Grow of Aug. 17, 2007, at 3.) At that time, Defendants may seek permission from Tesseron or any potential third parties for access to such materials covered by the Protective Order. Or Defendants may move this Court, as contemplated by the Protective Order in the Tesseron Suit, which states in relevant part: 20. Other Proceedings. By entering this Protective Order and limiting the disclosure of information in this case, the Court does not intend to preclude another court from finding that such information may be relevant and subject to disclosure in another case. Any person or party subject to this Protective Order who may be subject to a subpoena, motion or court order in another case to disclose information that is designated by another party in this case as CONFIDENTIAL or HIGHLY CONFIDENTIAL in this case shall promptly notify that other party of the subpoena, motion or court order so that it may have an opportunity to appear and be heard on whether such information should be disclosed prior to disclosure. (See Ex. B, Protective Order from Tesseron Suit, at 18.) 13. Defendants argue that the Protective Order in the Tesseron Suit permits a

party to produce information covered by the Order when required to do so pursuant to another court's order, and that this Court's Scheduling Order qualifies as such an order requiring RRD to produce responsive Tesseron or third-party materials covered by the Protective Order in the Tesseron Suit. (D.I. 196, at 8.) RRD has asked Defendants to provide it with some legal 5

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authority stating that a general Scheduling Order alone qualifies as the type of court order contemplated by the Protective Order set forth above. Teleconference.) Defendants have refused to do so. (Id.) 14. Defendants have also argued that this Court's August 3, 2007 Order (Aug. 15, 2007 Discovery

relating to Defendants' motion to compel RRD to produce certain prior art and damages-related documents from recently acquired companies (namely, Banta and Communicolor) somehow obligates RRD to produce confidential information produced by entirely separate third parties in the Tesseron Suit. (D.I. 196, at 8 n.4.) Neither Defendants' motion related to the August 3, 2007 Order, nor the Court's Order itself, said anything about RRD being required to produce unrelated third-party materials from a separate lawsuit that are covered by a Protective Order issued by a federal court in another jurisdiction. 15. Defendants have not indicated that they have provided Tesseron or any

potential third parties with notice that Defendants are seeking an Order from this Court for access to their confidential materials covered by the Protective Order in the Tesseron Suit. RRD sent Defendants' pending motion to compel to Tesseron's counsel, as required by the Protective Order in the Tesseron Suit. (Ex. C, Letter from B. Frey to K. Kirsch of Sept. 6, 2007.) No third parties in the Tesseron Suit have produced documents at this time; therefore, RRD has not provided notice to any third parties whose documents may be affected by Defendants' motion. Defendants' Request for Production No. 63: All documents and things that indicate or refer to RRD's earliest knowledge of any Accused Software Product. Defendants' Request for Production No. 64: All documents and things that indicate or refer to RRD's earliest knowledge of the operation of any Accused Software Product. (D.I. 196, Ex. C, at 5.) 16. Defendants are seeking documents showing when RRD first learned about

the accused software products or the operation of such products. RRD has repeatedly informed

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Defendants that RRD would undertake a reasonable search of documents within its possession, custody, or control to look for documents related to RRD's earliest knowledge of the accused software products or the operation of the accused software products, as requested in Defendants' Request for Production Nos. 63 and 64. (See, e.g., Ex. A, Letter from J. Secord to N. Grow of Aug. 17, 2007, at 3.) The primary dispute with respect to Defendants' Request for Production Nos. 63 and 64 therefore seems to relate to the legally relevant scope of RRD's search, with Defendants arguing that RRD needs to cast a wide net without regard to whether the documents being sought are relevant to the parties' claims or defenses. 17. As part of its reasonable search, RRD agreed to identify relevant RRD

individuals with knowledge relevant to the parties' claims or defenses, such as RRD employees likely to have knowledge of the patents-in-suit and/or of Defendants' infringing activities. (See Ex. A, Letter from J. Secord to N. Grow of Aug. 17, 2007, at 3.) RRD framed its reasonable search by reviewing legal authority relating to Defendants' equitable defenses, which are the defenses to which Defendants have claimed Request for Production Nos. 63 and 64 relate. See 6-19 Chisum on Patents § 19.05(i). During the August 15, 2007 discovery teleconference, RRD pointed Defendants' counsel to this authority, which shows that (1) an equitable defense of laches requires "knowledge of infringement" and (2) any alleged delay is measured after the date(s) when the patent(s)-in-suit issued. See id. 18. Nevertheless, Defendants have insisted that RRD conduct a much broader

search of all RRD employees who purchase or use software and RRD employees who market competitive activities, regardless of whether they knew or had reason to know of the patents-insuit or Defendants' infringing activities at issue in this case. (See, e.g., D.I. 196, at 8.)

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Defendants also have not limited their view of an appropriate search to 2001 (when the first patent-in-suit issued) or later. 19. RRD has repeatedly asked Defendants to provide some legal authority

supporting their theory that RRD must conduct a broad search of all purchasing employees and all employees who sell competitive products, but Defendants have refused to do so. (See Ex. A, Letter from J. Secord to N. Grow of Aug. 17, 2007, at 4.) 20. RRD respectfully requests that this Court limit Defendants' attempt to

require RRD to ask hundreds, perhaps even thousands, of employees whether they have ever used variable digital printing or had any knowledge of the accused software products, without regard to whether such employees are likely to have knowledge of the patents-in-suit and/or of Defendants' infringing activities. Such an expansive search simply would not bear fruit relevant to Defendants' defenses. RRD believes that the search it has proposed ­ of RRD employees likely to have knowledge of the patents-in-suit and/or of Defendants' infringing activities ­ is reasonable and appropriate in light of the pertinent legal authority. 21. RRD takes its discovery obligations seriously and has responded to the

discovery requests at issue in a reasonable manner consistent with the Federal Rules of Civil Procedure. Defendants, on the other hand, have declined to appropriately limit the scope of their requests. RRD therefore respectfully requests that this Court deny Defendants' motion.

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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

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 September 10, 2007
1230594

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CERTIFICATE OF SERVICE The undersigned hereby certifies that on September 10, 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 September 10, 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 (#3778) 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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