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Case 1:04-cv—O1373-KAJ Document 162 Filed O2/07/2006 Page 1 of 3
MORRIS, Nronors, Ansar & TUNNELL LLP
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202 3519221 February 7, 2006
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_jhear1ey@xm1at. com
BY ELECTRONIC FILING
The Honorable Kent A. Jordan
United States District Court
844 King Street
Wiirnington, DE l980i
RE: Ampex v. Eastman Kodak, CA. No. 04—l373—KA}
Dear fudge Jordan:
This is Arnpex’s response to defendants’ February 6 letter to the Court. Defendants seek an
order cornpeliing 30(b)(6) deposition testimony regarding the conception and reduction to practice of
the invention claimed in the ‘l2l patent. Defendants’ motion should be denied because 30(`o)(6)
depositions are not a proper vehicle for contention discovery. Anipex has provided contention
discovery through responses to interrogatories; defendants seek to duplicate discovery already provided
through 30(b)(6) and individual fact witnesses; and defendants are attempting to cornpel one or more
lay witnesses/designees, previousiy untutored in the pertinent facts or technology, to master an
encyciopedic range of information that no one person (or persons) can reasonably be expected to
absorb.
1. Ampex Should Not Be Compeiled to Produce a 30(b)(6) Witness to Provide
Contention Discovery
Defendants do not address Ainpex’s principal objection to several of the topics in defendants
30(b)(6) notice. Anipex objected to the extent that the topics call for testimony regarding the bases for
iegal contentions and positions to be taken by Anipex during litigation, discovery concerning vvhicli is
properly elicited through interrogatories (Exhibit A).
Arnpex‘s objections concerning iinproper 30(b)(6) contention discovery are entirely consistent
with the decisions of this Court. For example, Judge Stapieton has stated that:
a iay person shouidn’t be required to formulate a party’s contention in response to
deposition questioning and that not even a lawyer should be required to formulate trial
strategy and contentions in iinrnediate response to questions on deposition. And it has
accordingly been the consistent practice to require that contention discovery, which is
clearly permissible and constructive in narrowing the issues, but to confine it to
interrogatories to a party, period.
Tiegei Mami. Co. v. Glo.be—U1·iion, Inc., Civil Action No. 84-483, transcript at p. 14 (Exhibit B).

Case 1 :04-cv—O1373-KAJ Document 162 Filed O2/07/2006 Page 2 of 3
The Honorable Kent A. Jordan
February 7, 2006
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The "sanipling" of testimony set forth in defendants’ letter is illustrative of the contention
discovery that defendants seek through 30(b)(6) deposition. First, defendants cite to pages l07-108,
where defendants seek to elicit Arnpex’s understanding of the ‘l2l patent claims through the 30(b)(6)
testimony of Anipex’s General Counsel, Mr. loel Talcott (Exhibit C). Defendants also cite to pages
83-84, where defendants seek to elicit from Ampex’s 30(b)(6) witness the meaning of the term "size
reducer," a *121 patent claim term. In these instances, and in many other instances objected to by
Anipex’s counsel, defendants clearly seek contention discovery regarding the ‘l2l patent claims.
During the parties’ meet and confer on this subject, defendants argued that they seek the "facts"
underlying Ampex’s contentions regarding conception and reduction to practice. This does not avoid
the problem. Whether done directly or indirectly, asking for the factual basis of a contention is
tantamount to asking for the contention itself. For example, defendants have sought through the
30(b)(6) deposition to learn how the documents identified by Ainpex show the conception and
reduction to practice of each and every element of the ‘l2l patent claims. However, seeking the
“facts" that underlie conception or reduction to practice is itself seeking Ampex’s contentions on those
issues. As Chief Judge Robinson recently stated:
I have never thought contention Interrogatories are appropriately responded to via
30(b)(6) depositions. I still maintain that position. So if you ask for depositions
concerning the basis for a defense, that is a contention interrogatory. You can ask who
has knowledge and then you can take individuals depositions, hut I don’t believe that a
corporate deposition is appropriate for contention.
McKcsson Inforrnotion Sola-ations LTC v. T he Trizetto Group, Inc., Civil Action No. 04-01258,
transcript at page 2l (Exhibit D). For at least these reasons, defendants’ motion to compel 30(b)(6)
contention discovery should be denied.
2. Ampex Has Already Provided Contention Discovery In Response to
Interrogatories
With respect to conception and reduction to practice of the ‘l2l patent claims (30(b)(6) topic
3), Ampex has already provided contention discovery in response to defendants’ interrogatories.
Ampex has provided the dates and location of the conception and reduction to practice of the subject
matter disclosed and claimed in the ‘l2l patent. Airpex has identified the documents that relate to
conception and reduction to practice. Ampex has identitied the persons most knowledgeable
concerning such documents. Ampex has further provided a detailed claim chart explaining how each
‘l2l claim element is embodied in Anipex’s ESS—3 product. (See, eg., Ampex’s responses to
defendants’ ITC lnterrogatory No. 14 and Altek’s Interrogatory No. 25.) Arnpex has also provided
additional interrogatory responses that contain information sought by defendants 30(b)(6) topics 5, 6,
7, 8, 9 and 10. in addition, during the ITC proceedings, Arnpex provided the written rebuttal expert
report and written rebuttal testimony of its expert, setting forth how documents produced by Anipex
corroborate the conception ofthe subject matter of each ofthe asserted claims.
3. Arnpex Has Already Provided Discovery Through 30(b)(6) and Individual
Fact Witnesses
In addition, last year during the ITC action, Anrpex designated its General Counsel, I\/lr. Joe]
Talcott, to testify as its corporate witness. ln that capacity, Mr. Talcott prepared for and testitied with

Case 1 :04-cv—O1373-KAJ Document 162 Filed O2/07/2006 Page 3 of 3
The Honorable Kent A. Jordan
February 7, 2006
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respect to over seventy 30(b)(6) topics designated by defendants (Exhibit E). For many of those topics,
there is no remaining employee at Ampex with personal knowledge of the facts (Ampex left the video
systems business to explore other areas in the early l990s). To prepare for those topics, l\/lr. "falcott
reviewed. the documents produced by Arnpex and studied written interrogatory responses, which were
prepared alter consulting with Ampex’s former employees with personal knowledge. Given the large
number of topics, Mr. Talcott admittedly had difficulty remembering some of the information he had
learned. in that regard, Mr. Talcott supplemented his deposition testimony by submitting a
comprehensive written statement identifying interrogatory responses containing the information that he
was unable to remember in “real time" during his deposition. The topics in the 30(b)(6) notice at issue
are largely duplicative of the topics that were the subject of Mr. 'l`alcott’s `ETC depositions (compare
Exs. A and E). As acknowledged by the defendants, the agreed—upon Scheduling Order in this case
prohibits discovery that is duplicative of discovery taken in the ITC action.
Lastly, during his 30(b)(6) depositions, Mr. Talcott identified former Ampex employees with
knowledge ofthe information sought by defendants. For example, Mr. Talcott identified the inventor,
Mr. Daniel Beaulier, as an individual with personal knowledge of the conception and reduction to
practice of the claimed invention and the detailed structure, function and operation of the ESS—3,
including the reentry circuitry. Defendants thereafter deposed numerous former Ampex employees and
third party witnesses, including l\/lr. Beaulier, as fact witnesses on the topics presented in det`endants’
notices.
Ampex seeks the Court’s guidance on how to proceed concerning facts that are exclusively in
the possession of fonner Ampex employees and third party witnesses. lt is beyond dispute that nobody
can memorize the prior testimony in this action, and the information contained in the hundreds of
pertinent documents, and testify from memory as to their content, or explain the technical matters
disclosed therein. Any 30(b)(6) deposition regarding those topics would either duplicate prior
discovery or lead to endless adjournments so that the witness could attempt to ascertain the information
sought.
This is not a situation where facts or information are being withheld from defendants. Ampex
has disclosed all of the documents that it has been able to find that relate to these issues. Ainpex has
helped locate and make available the inventor and more than ten other ex~Ampex employees who are
knowledgeable about the facts and documents. Ampex has laid out its contentions and positions as to
the relevant issues. Defendants now appear to be attempting to force Ampex to do the impossible:
teach a witness or group of witnesses, none of whom has any relevant personal knowledge on these
subjects, everything disclosed in the relevant documents, and everything known to a large group of ex-
employees. lt would be unfair to force witnesses to attempt this, and then to seek to make it Ainpex‘s
corporate testimony.
Respectfully,
/s/Julio Heaney (#3052)
cc; Peter T. Dalleo, Clerk (By Electronic liiling)
Paul M. Lukoff, Esquire (By Electronic Filing)
Michael Ll. Summersgill, Esquire (By Electronic Filing)
Norman H. Beamer, Esquire (By Electronic Filing)