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Case 1 :04-cv-01373-KAJ Document 205 Filed 03/ 1 0/2006 Page 1 of 2
PRICKETT, JONES & ELLIOTT
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March 10, 2006
VIA EFILING AND HAND DELIVERY
The Honorable Kent A. Jordan
United States District Court
844 King Street
Wilmington, DE 19801
Re: Ampex v. Eastman Kodak Company, et al.,
C.A. No. 04-1373-KAJ
Dear Judge Jordan:
Defendants Eastman Kodak Company ("Kodak") and Altek Corporation ("Altek")
respectfully submit this letter seeking to compel Ampex to produce the inventor of the asserted
patent, Daniel Beaulier, for deposition without restrictions on the scope of his testimony beyond
those dictated by the October 17 Scheduling Order and applied to other depositions in this case.
At the February 28, 2006 status conference in this matter, the Court instructed Ampex to
make Mr. Beaulier available for deposition. See February 28, 2006 Transcript, pp. 6-7. The
Court also specifically declined Ampex’s request to limit the scope of the deposition. See
February 28, 2006 Transcript, p. 7. Ampex has, nevertheless, taken the position that Defendants
should only be permitted to ask Mr. Beaulier questions regarding documents that were produced
after his March 22, 2005 deposition in the ITC proceedings. See March 3, 2006 Email from
Norman Beamer to Michael Summersgill. Defendants believe this restriction is unwarranted for
the following reasons.
First, Ampex has taken four depositions of Defendants’ employees in this action who
were also deposed during the ITC proceedings and no such restriction was placed on the scope of
those witnesses’ testimony. The October 18, 2005 Scheduling Order in this case prohibits
"duplicative discovery." For its depositions of Defendants’ witnesses, Ampex did not interpret
the Scheduling Order as prohibiting questions regarding documents produced prior to the
witnesses’ first depositions. In fact, Ampex posed questions regarding such documents in its
depositions. See, e. g. Ex. 399 to February 23, 2006 Kang deposition. The same rules should
apply to Mr. Beaulier’s deposition.
Second, the fact that a document was produced prior to Mr. Beaulier’s first deposition
does not necessarily make questions regarding such a document duplicative. As Ampex has
revised the theories of its case, new issues have become relevant to previously produced
documents. Since Mr. Beaulier’s March 22, 2005 deposition in the ITC, for instance, Ampex has
modified its arguments regarding the reduction to practice of the alleged invention as follows:
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Case 1:04-cv—01373-KAJ Document 205 Filed 03/10/2006 Page 2 of 2
The Honorable Kent A. Jordan
March 10, 2006
Page 2
• Ampex submitted three separate claim construction statements, each time changing
the nature of what it asserted constituted the invention and therefore what must be
shown to have been reduced to practice. See Ampex March 25, May 9, and May 27
Claim Constructions.
• Ampex has twice supplemented its response to Defendants’ interrogatory regarding
reduction to practice, most recently on the final day of discovery, by identifying
sixty—nine (69) new documents -- in addition to the 144 identified prior to Mr.
Beaulier’s deposition -- that purportedly show the reduction to practice of the claimed
invention (bringing the total number identified to 213). See July 15, 2005
Supplemental Response to Interrogatory 14 and February 28, 2006 Supplemental
Response to Interrogatory 14.
• When it came time for trial in the ITC, Ampex submitted Mr. Beaulier’s witness
statement asserting that seven (7) of the then-identified documents were alone
sufficient to show the reduction to practice of the claimed invention. See July 15,
2005 Beaulier Witness Statement.
Defendants should be permitted to explore Ampex’s evolving positions with the inventor
without artificial restrictions on the scope of his testimony.
Third, Ampex’s attempt to limit the scope of Mr. Beaulier’s testimony is not justified by
its assertion that the deposition notice was untimely. Defendants noticed the deposition on
February 23, five days before the close of discovery and five days before the noticed date, with
the understanding that Ampex would produce Mr. Beaulier at a time that was convenient for Mr.
Beaulier. Ampex has informed Defendants that Mr. Beaulier will not be produced until late
March meaning that Mr. Beaulier will have had a full month’s notice of his deposition. The fact
that the deposition will take place after the close of fact discovery does not justify Ampex’s
proposed limitations because Ampex itself has requested permission to take six depositions after
the close of fact discovery.
Respectfully submitted, Z
PAUL M. LUKOFF (l.D. No. 96)
PML/mhl
cc: Clerk, U.S. District Court (By Hand)
Jack B. Bltunenfeld, Esq. (By E-File)
Norman H. Beamer, Esq. (By E-Mail)
Jesse J. J ermer, Esq. (By E-Mail)
S. Calvin Walden, Esq. (By E-Mail)
Michael J. Summersgill, Esq. (By E-Mail)
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