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

C.A. No. 06-cv-032-JJF

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

PLAINTIFF'S MOTION TO COMPEL DEFENDANTS TO COMPLY WITH DISCOVERY OBLIGATIONS WITHIN THE FACT DISCOVERY PERIOD Plaintiff R.R. Donnelley & Sons Company ("R.R. Donnelley") hereby moves to compel Defendants, Creo, Inc., Nexpress Solutions, Inc., Kodak Versamark, Inc., Eastman Kodak Company, and Kodak Graphic Communications Company, to comply with their discovery obligations by providing: (1) witnesses for deposition within the fact discovery

period, which is scheduled to close on August 31, 2007; and (2) the documents with which they purported to answer R.R. Donnelley's Interrogatories under Fed. R. Civ. P. 33(d). Defendants'

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failure to satisfy their discovery obligations is putting in jeopardy the parties' ability to complete fact discovery by the August 31, 2007 cutoff. In support of its Motion, R.R. Donnelley states as follows: 1. R.R. Donnelley seeks an order compelling Defendants: (a) to provide

deposition dates immediately for the witnesses to whom R.R. Donnelley has issued deposition notices individually and who Defendants have designated under Fed. R. Civ. P. 30(b)(6); and (b) to produce the documents with which Defendants purported to answer R.R. Donnelley's Interrogatories under Fed. R. Civ. P. 33(d). Defendants' Failure To Provide Deposition Dates For Their Witnesses 2. R.R. Donnelley has repeatedly requested dates to depose Defendants'

witnesses ­ and indeed has been asking for dates for more than seven weeks. Since May 23, 2007, R.R. Donnelley has sent at least four letters asking Defendants for dates to depose their individual and Rule 30(b)(6) witnesses. (See Ex. A - D, RRD's Counsel's letters to Defendants' Counsel dated May 23, June 5, June 28, and July 11, 2007.) As the clock ticks toward the end of discovery, Defendants have failed to provide deposition dates for three individuals to whom R.R. Donnelley has issued personal deposition notices and four individuals who Defendants have designated to testify in response to R.R. Donnelley's Rule 30(b)(6) deposition notices. In addition, Defendants have failed to designate anyone to testify about four of the fifteen Rule 30(b)(6) topics.1

1

While R.R. Donnelley has identified twenty-one topics pursuant to Rule 30(b)(6) in three notices, six of the topics in the second notice subsumed six of the topics in the first notice, such that fifteen topics remain in force. Of those, Defendants have failed to designate anyone in response to four topics. Defendants designated an individual for a fifth topic, but restricted his scope to a small subsection of the topic, as discussed supra par. 5.

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3.

R.R. Donnelley has attempted to schedule depositions in an organized

manner without leaving an impossible number of depositions for the last few weeks of discovery, only to be thwarted by Defendants' delay. In its May 23, 2007 letter, R.R. Donnelley proposed a deposition schedule for Defendants' witnesses on the accused Darwin software during the last two weeks of June, depositions related to the accused DL software during the first two weeks of July, and depositions related to the accused Composer software during the last two weeks of July. (See Ex. A, RRD's Counsel's letter to Defendants' Counsel dated May 23, 2007.) 4. Defendants finally responded to R.R. Donnelley's proposed schedule on

June 22, 2007, at which time Defendants offered deposition dates for only three of the twelve witnesses who received personal deposition notices and/or who Defendants identified as Rule 30(b)(6) witnesses. (See Ex. E, Defendants' Counsel's letter to RRD's Counsel dated June 22, 2007.) By that date, however, Defendants had already wasted a month, leaving R.R. Donnelley only two months to complete all its depositions.2 But instead of offering witnesses on a schedule that would complete discovery within the allotted time, Defendants offered three witnesses in July and two in August, thereby wasting another month. 5. Indeed, rather than schedule depositions in the month of July (after having

wasted June), Defendants have cut back on their original July schedule. Defendants canceled the single deposition scheduled for the week of July 23, moving that deposition to August 16. (See Ex. G, Defendants' Counsel's letter to RRD's Counsel dated July 6, 2007.) Moreover, the day before the July 11, 2007 scheduled deposition of another witness, Tim Donahue (Defendants' Rule 30(b)(6) witness with respect to the Defendants' knowledge of the patents in suit),
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Defendants took several depositions of R.R. Donnelley witnesses in December 2006. Moreover, despite their delay in scheduling depositions, Defendants recently demanded

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Defendants informed R.R. Donnelley that Mr. Donahue would testify with respect to only one of the Defendants, NexPress, and only up to the time it was acquired by Kodak. (See Ex. H, Defendants' Counsel's Letter to RRD's Counsel dated July 11, 2007.) Defendants have not yet designated other individuals with knowledge of the issues removed from Mr. Donahue's designation. Defendants' cancellations leave even more depositions for Defendants to schedule in the few weeks that remain in the fact discovery period. 6. Due to Defendants' delay and the impending close of fact discovery, the

parties must schedule a large number of depositions in a very short time. Yet beyond the two witnesses Defendants scheduled to be deposed in July, Defendants have provided deposition dates for only three additional witnesses. (See Ex. E and G, Defendants' Counsel's Letter to RRD's Counsel dated June 22 and July 6, 2007.) Despite R.R. Donnelley's May 2007 request that the depositions be staged throughout June, July, and August 2007, Defendants have created a scheduling nightmare where none needed to exist. 7. Given that only six weeks remain for fact discovery, R.R. Donnelley

respectfully requests that the Court order Defendants to provide deposition dates immediately. And R.R. Donnelley would appreciate receiving some deposition dates for consecutive days in July and August 2007. Defendants' Failure To Produce Documents With Which It Purported To Answer Interrogatories Under Fed. R. Civ. P. 33(d) 8. Defendants have a long history of failing to produce documents in a

diligent fashion. Indeed, on January 4, 2007, this Court granted R.R. Donnelley's Motion to Compel, and ordered Defendants to produce documents. Defendants waited more than three

that R.R. Donnelley provide deposition dates for certain witnesses within three days. See Ex. F, Defendants' Counsel's letter to RRD's Counsel dated July 9, 2007. 4

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months, until April 6, 2007, to begin complying with the Court's Order. (See Ex. I, Defendants' Counsel's letter to RRD's Counsel dated April 6, 2007.) After months of producing no

documents, Defendants produced more than 1.5 million pages between April and June 2007 ­ more than five months after being ordered to do so. (See Ex. J, RRD's Counsel's letter to Defendants.' Counsel dated June 12, 2007, at n.1 (citing nine letters from Defendants between April and June producing documents).) 9. Once again, Defendants are dragging their feet. Defendants chose to

respond to R.R. Donnelley's Interrogatories3 issued on April 12, 2007 by referring only generally to documents under Fed. R. Civ. P. 33(d). (See Ex. K, Defendants' Response to RRD's Second Set of Interrogatories, June 4, 2007, at pp. 8-10.) Defendants, however, did not even comply with Fed. R. Civ. P. 33(d) because they did not identify documents by Bates numbers or produce such documents therewith. (See Ex. L, RRD's Counsel's letter to Defendants' Counsel dated June 5, 2007 (requesting Defendants to identify and produce documents as required by Fed. R. Civ. P. 33(d)).) Making matters worse, Defendants failed to identify particular documents as required by Rule 33(d) after having sought and received two extensions, totaling three and a half extra weeks to respond to these Interrogatories. 10. But Defendants' lack of cooperation did not stop there. Over the ensuing

weeks, R.R. Donnelley repeatedly sought the documents that Defendants claimed would answer these Interrogatories.4 Finally, on June 26, 2007, Defendants agreed to identify or to produce a

3

In particular, Interrogatory No. 18 (seeking sales and cost information related to the accused products) and Interrogatory No. 19 (seeking the methods by which Defendants tracked usage of the accused products). See Ex. L, RRD's Counsel's letter to Defendants' Counsel dated June 5, 2007; Ex. M, RRD's Counsel's letter to Defendants' Counsel dated June 21, 2007; Ex. N, Defendants' Counsel's letter to RRD's Counsel dated June 26, 2007. 5

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portion of the documents identified pursuant to Fed. R. Civ. P. 33(d). To date, Defendants have refused to provide the remaining documents or to identify a date certain on which they will provide them. 11. But even Defendants' partial compliance with Rule 33(d) had a catch.

Defendants refused to provide the documents that supposedly answered the above Interrogatories under the provisions of the Protective Order entered, after motion practice, by this Court. Defendants offered to produce these documents only if R.R. Donnelley agreed that its Chief Patent Counsel, Paul Rodriguez, could only inspect the documents at the offices of R.R. Donnelley's outside counsel, Sidley Austin LLP, and not at his own office at R.R. Donnelley. (See Ex. N, Defendants' Counsel's letter to RRD's Counsel dated June 26, 2007.) 12. In so conditioning its production, Defendants seek to relitigate the exact

issue that this Court has already decided. In prior motion practice over the Protective Order, Defendants argued that R.R. Donnelley's Chief Patent Counsel should be precluded from viewing allegedly sensitive materials. After considering the parties' arguments, the Court ruled that Mr. Rodriguez may review "Confidential" and "Attorneys' Eyes Only" information and then issued a Protective Order consistent with this ruling. (See Order of Jan. 4, 2007 at 3 & n.1.) Defendants' withholding of responsive documents unless R.R. Donnelley agreed to additional provisions with respect to Mr. Rodriguez's access was in clear disregard of the Court's prior ruling on this very issue. 13. To be able to review Defendants' overdue documents without further

delay, R.R. Donnelley agreed temporarily ­ and with the express reservation of its right to bring this matter before the Court ­ to restrict Mr. Rodriguez's access to the documents at issue pursuant to Defendants' demands. (See Ex. M, RRD's Counsel's Letter to Defendants' Counsel

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of June 21, 2007.)

R.R. Donnelley requests that the Court lift these restrictions, as Mr.

Rodriguez is already bound by the provisions set forth in the Protective Order. 14. R.R. Donnelley respectfully requests that the Court order Defendants to

produce the documents that they claim answer R.R. Donnelley's Interrogatories immediately. Further, R.R. Donnelley respectfully requests that the Court order such production under the provisions set forth in the Protective Order and free from any additional restrictions on confidentiality. WHEREFORE, R.R. Donnelley respectfully asks the Court to order Defendants to comply with its discovery obligations, and in particular to make their witnesses available immediately for depositions and to produce their documents in response to R.R. Donnelley's Interrogatories immediately. 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

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Douglas I. Lewis Jamie L. Secord SIDLEY AUSTIN LLP One South Dearborn Street Chicago, Illinois 60603 (312) 853-7000 July 13, 2007
968819

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RULE 7.1.1 CERTIFICATE I hereby certify that counsel for plaintiff has discussed the issues raised in this motion with counsel for defendants and that the parties have not been able to resolve the issues.

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 July 13, 2007

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CERTIFICATE OF SERVICE The undersigned hereby certifies that on July 13, 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 13, 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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EXHIBIT A

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EXHIBIT B

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EXHIBIT C

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EXHIBIT D

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SIDLEY AUSTIN
LLP

Filed 07/13/2007
BEIJING BRUSSELS CHICAGO DALLAS FRANKFURT GENEVA HONG KONG LONDON

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SAN FRANCISCO SHANGHAI SINGAPORE TOKYO WASHINGTON, D.C.

787 SEVENTH AVENUE NEW YORK, NY 10019 (212) 839 5300 (212) 839 5599 FAX [email protected] (312) 853-2206

LOS ANGELES NEW YORK

FOUNDED 1866

July 11, 2007 Via E-Mail and U.S. Mail Mr. Nathaniel Grow Crowell & Moring LLP 1001 Pennsylvania Avenue, N.W. Washington, DC 20004-2595 Re: R.R. Donnelley & Sons Company v. Creo, Inc., Eastman Kodak Company, and Kodak Graphic Communications Company, No. 06-032-JJF (D. Del.)

Dear Nathaniel: I write in response to your July 9, 2007 letter in which you request the availability of Grant Miller and Riyaz Asaria for Kodak's 30(b)(6) depositions. You have requested a reply by July 12, three days after your letter was delivered. R.R. Donnelley is checking with Mr. Miller and Mr. Asaria as to their availability for these depositions and will respond as soon as possible. We continue to await your response as to the availability of the individuals Kodak has designated for 30(b)(6) depositions. R.R. Donnelley has written to Kodak requesting these witnesses' availability for two months, as evidenced by our letters of May 23, June 5, and June 28. Given that fact discovery will close in this case at the end of August, the need to schedule outstanding 30(b)(6) depositions grows ever more pressing. R.R. Donnelley renews its previous requests and asks that Kodak respond with the availability of its designated witnesses as soon as possible.

Sincerely,

Jamie L. Secord

Sidley Austin LLP is a limited liability partnership practicing in affiliation with other Sidley Austin partnerships

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EXHIBIT E

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EXHIBIT N

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