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-cv-032-JJF

EASTMAN KODAK COMPANY, Counterclaim-Plaintiff, v. R.R. DONNELLEY & SONS COMPANY, Counterclaim-Defendant.

PLAINTIFF'S RESPONSE TO MOTION TO COMPEL DISCOVERY Plaintiff R.R. Donnelley & Sons Company ("R.R. Donnelley") hereby responds to Defendants' Motion To Compel Discovery (D.I. 148). 1. The Court should deny Defendants' Motion because R.R. Donnelley has Defendants demand that R.R. Donnelley

already done exactly what Defendants request.

"undertake a reasonable search for responsive documents and things within RRD's possession, custody, or control" (D.I. 148 at 6). R.R. Donnelley has already done that.

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2.

Defendants' Motion is filed with empty rhetoric about how "RRD has

failed to approach discovery in an equitable manner" and how "RRD has backpedaled and attempted to distance itself from promises previously made" (id. at 1-2). The Motion itself, however, is somewhat unclear about the relief Defendants are seeking beyond what R.R. Donnelley has already provided in discovery. For the purposes of clarity, R.R. Donnelley understands Defendants to be asking for two things: (1) responsive documents in the possession, custody, or control of Banta; and (2) documents from Communicolor relating to the Begin software. 3. Defendants request that R.R. Donnelley be compelled to produce "all

documents formerly in the possession of Banta Corporation responsive to the requests identified in Defendants' May 10, 2007 letter" (D.I. 148). In their May 10, 2007 letter, Defendants demanded that R.R. Donnelley "produce all documents formerly in the possession of Banta . . . responsive to requests 1-6, 9, 14-21, 26-31, 33, 39, 41, 46 and 49" (D.I. 148, Ex. P at 2). 4. R.R. Donnelley told Defendants that it would conduct a reasonable search

to determine whether Banta has any responsive documents, and communicated the results of that search to Defendants. 5. On June 12, 2007, R.R. Donnelley told Defendants that it was

"investigating the scope of responsive materials in the possession of Banta" (D.I. 148, Ex. R). 6. On June 21, 2007, R.R. Donnelley told Defendants that "our investigation

continues into the scope of variable digital printing-related documents that Banta has in its possession . . . . [W]e indicated discussions with Banta were continuing today on this very issue, and that we would contact Defendants as soon as we completed our investigation. . . ." (Ex. A at 2).

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7.

On June 28, 2007, R.R. Donnelley reported on the results of its

investigation (D.I. 148, Ex. S; emphasis added): R.R. Donnelley & Sons Company ("R.R. Donnelley") has conducted a reasonable search for relevant documents in the possession of Banta, a separate company only recently acquired by R.R. Donnelley. As a result of its investigation, R.R. Donnelley has learned the following: · Banta was not involved in variable digital printing on a commercial basis before 1998. Therefore, Banta does not likely have any prior art relevant to this lawsuit. After a reasonable search, Banta did not locate any documents related to the Patents in Suit, this lawsuit, opinions of counsel concerning the claimed subject matter of the Patents in Suit, prior art search concerning the Patents in Suit, standards relating to variable digital printing, or any patent license agreements in the field of variable digital printing. Although Banta is now involved in variable digital printing, Banta does not use proprietary software tools for such printing. Banta uses only third-party software products for variable digital printing.

·

·

Given that Banta was not active in variable digital printing until at least after 1998, we do not see how any documents related to Banta's recent activities in the variable digital printing area are relevant to the claims or defenses of the parties in this litigation. ... 8. Despite receiving the above report on R.R. Donnelley's investigation,

Defendants are not satisfied, arguing that "Banta's use of a technology on a `commercial' basis is only one basis upon which its use can be considered prior art" (D.I. 148 at 5). Defendants -- with no indication that Banta might have any prior art or lead they wish R.R. Donnelley to investigate -- seek to have R.R. Donnelley undertake a wild goose chase through Banta's files to see if some

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relevant, non-commercial prior art activities exist. This is well beyond a reasonable search, especially of a company that was until earlier this year not even related to the patentee.1 9. In support of their motion, Defendants claim that they reduced the

documents they are seeking "by nearly 45%" from their original request to R.R. Donnelley (D.I. 148 at 4). What Defendants do not tell the Court is how, after repeated requests from R.R. Donnelley, they finally agreed to forego document requests that could not possibly relate to Banta.2 Indeed, even some of Defendants' remaining requests are unrelated to documents that Banta could possibly have in its possession.3 R.R. Donnelley has repeatedly asked Defendants to identify what documents they really need from Banta, a company that was, by Defendants' own admission, an independent company until a few months ago. Clearly, Banta cannot have

documents related to the patents-in-suit or RRD's activities before it was acquired. Defendants' request that R.R. Donnelley search Banta's voluminous files for these documents is nothing
1

The original parent applications leading to the patents-in-suit were filed in 1995 and 1997. These requests include "the files of the named inventors" (RFP No. 7), "the decision to file the patent applications" (No. 10), "the preparation of the patent applications" (No. 11), RRD's assertions in this case (Nos. 22-25), "communications between RRD and the Creo Defendants" (No. 34), RRD's securities filings and board minutes (Nos. 35, 36), RRD's knowledge of the accused products (Nos. 37-38), and notice to Defendants and marking (Nos. 40, 42-45). For example, No. 3 ("all documents and things concerning the conception of the claimed subject matter of the patents in suit"), No. 4 ("all documents and things concerning the reduction to practice of the claimed subject matter of the patents in suit"), No. 6 ("all documents and things concerning any commercial embodiments described in the patents in suit, including any source code used to compile any software programs described in the patents in suit"), No. 21 ("all documents and things concerning RRD's purported ownership of the patents in suit), No. 28 ("all communications between RRD and any entity concerning ISO 16612-1 or ANSI/CGATS.20-2002, and all documents and things concerning the same"), No. 31 ("all documents and things concerning any royalties collected from RRD from any license related to the patents in suit"), and No. 41 ("all documents and things concerning RRD products covered by the claims of the patents in suit"). 4

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more than a request that R.R. Donnelley search for something that it, and Defendants, already know is not there. 10. Regarding the "Begin" software from Communicolor, R.R. Donnelley is

investigating whether it has within its possession, custody or control any responsive documents concerning the "Begin" software allegedly used by Communicolor (see D.I. 148 at 6), and will produce any such documents promptly. 11. As for the other third parties recently acquired by R.R. Donnelley,

Defendants have indicated they "are willing to forego production of documents from Perry Judds . . ." (D.I. 148, Ex. M at 2). Moreover, R.R. Donnelley has independently determined that there is no connection between Perry Judds and the subject matter of this litigation. See D.I. 148, Ex. R ("[W]e have confirmed that Perry Judds did not engage in variable digital printing."). 12. R.R. Donnelley has not withheld documents based on "fine corporate

distinctions," as Defendants suggest (D.I. 148 at 1). As R.R. Donnelley told Defendants on July 6, 2007, "R.R. Donnelley has made a good-faith effort to conduct a reasonable search of documents within its possession, custody, or control. In doing so, R.R. Donnelley identified relevant individuals with knowledge relevant to the claims, counterclaims, and defenses of the parties or the subject matter of the action, and searched for documents within the possession of those individuals" (D.I. 148, Ex. U at 2). 13. Notably, this explanation tracks what Defendants, in their motion claim to

want -- "that RRD undertake a reasonable search for responsive documents and things within RRD's possession, custody, or control" (D.I. 148 at 6). Defendants have yet to explain how companies that were independent until a short time ago -- and acquired long after the patents-in-

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suit were filed -- could possibly have relevant documents on more than a few subjects. R.R. Donnelley has conducted a reasonable search for relevant documents from those companies.4 14. Although R.R. Donnelley conducted a proper "reasonable search" for

responsive documents, Defendants seek an ostensibly "reasonable search" that would lead to nothing more than a huge waste of resources with little likelihood of finding relevant, responsive documents. Defendants claim a "reasonable search" "would include not only the identification of potentially responsive documents located at RRD subsidiary and successor entities, but also search for responsive documents referencing such subsidiary, predecessor, and successor entities" (D.I. 148 at 6). As discussed above, as part of the reasonable search conducted by R.R. Donnelley, "R.R. Donnelley identified relevant individuals with knowledge relevant to the claims, counterclaims, and defenses of the parties or the subject matter of the action, and searched for documents within the possession of those individuals" (D.I. 148, Ex. U at 2). 15. R.R. Donnelley's approach is the common, acceptable manner of

conducting a litigation search for documents and, in fact, is the same exact approach taken by Defendants. As Defendants themselves stated in their responses to R.R. Donnelley's requests for production: . . . Creo will make a good-faith effort to conduct a reasonable search of documents and things within its possession, custody, or control. Such good-faith efforts will include identifying -- to the best of Creo's ability -- relevant Creo individuals with knowledge relevant to the claim or defense of any party or the subject matter of the action and searching documents of [sic] within the possession of those individuals.
4

Defendants claim that R.R. Donnelley's current counsel changed R.R. Donnelley's position on this issue (D.I. 148 at 1-2, 3). Defendants, ignore, however, that prior counsel expressly stated that R.R. Donnelley would conduct "an appropriate search." This is exactly the search for responsive documents described above that R.R. Donnelley has conducted.

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See Defendants' Second Supp. Resp. to R.R. Donnelley's First RFP, dated Jan. 19, 2007, at 4. 16. Defendants' Motion to Compel Discovery should be denied. 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 July 24, 2007
978536

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CERTIFICATE OF SERVICE The undersigned hereby certifies that on July 24, 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 I also certify that copies were caused to be served on July 24, 2007, upon the following in the manner indicated:

BY EMAIL AND BY HAND Frederick L. Cottrell III Richards Layton & Finger 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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