Free Letter - District Court of Delaware - Delaware

Case 1:04-cv—01373-KAJ Document 112 Filed 01/11/2006 Page 1 of 3
Mounts, Nrcrrors, Ansrrr & TUNNEL;
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January l1,2006
BY ELECTRONIC FILING
The llonorahle Kent A. Jordan `
United States District Court
844 King Street
Wilmington, DE ]9801
RE: Ampex v. Eastman Kodak, CA. No. 0¢l—l373-KA}
Dear Judge lordan:
This letter sets forth Plaintiff Ampex Corporation’s response to Defendants Eastman
Kodak Company and Altek Corpo.ration’s letter addressing three discovery issues.
(i) Ampex Analyses of Competitive Alleged Prior Art Products
In connection with the ITC action and the present Delaware action, Ampex has diligently
searched for and produced or scheduled on a privilege log all documents that it has located in
response to defendants’ requests concerning Ampex’s knowledge of alleged prior art systems,
specifically Del. Document Request No. 3l and lTC Document Request No. 1 E3.
ln response to dei`cndants’ requests, Arnpex has also provided a list of the various
locations from which it has collected, reviewed and produced documents responsive to
defendant? requests. (l/6/05 letter from l\/lr. Beamer to Mr. Surrrmersgill) Ampex has also
agreed to conduct, and has conducted, additional searches for post-NAB reports describing
competitive products. Ampex had already located and produced post~NAB reports for the years
l979 and 1983. To date, Arnpex has not located additional post-NAB reports for other years,
including 1982. Ainpex has informed defendants that its search is ongoing, and any additional
reports that are located will be produced.
Ampex maintains its position that the record is not clear that post—NAB reports were in
fact prepared after every NAB. Examination of the 1979 and 1983 memoranda that were
produced indicates that preparation of such documents was not in accord with any requirement or
formalized procedure, but rather at the discretion of the author, and depending on the particular
circumstances and events at that particular time. Mr. Regnier testified that he did not rernemher
whether any post~NAB memo describing competitive products was written for NAB’8l or NAB
’82. (Regnier Tr. 273-74). Mr. Kennedy’s testirnony also does not appear to be dispositive on

Case 1:04-cv—01373-KAJ Document 112 Filed 01/11/2006 Page 2 of 3
The Honorable Kent A. Jordan
January l 1, 2006
Page 2
this subject. (Kennedy Tr. 196:23-l97:2). Moreover, even if such reports were created, there is
no evidence that they still existed when Mr. Kennedy left Ampex in l99`l (Kennedy Tr. 56-57):
Q. Did you still have copies of any of your NAB memos in your files at the
time you left Ampex?
A. I don’t know.
Q. Did you have copies of any of Mr. Anderson’s NAB memos in your files
at the time you left Arnpex?
A. I don’t know.
As would be expected, Arnpex discarded documents in the ordinary course of its business
in the 1980’s, and in particular in §99l, when Anipex implemented a restructuring plan, and Mr.
Kennedy left the company. Defendants take out of context Ms. Genberg’s 30(b)(6) testimony
that “we retain all documents? That statement was made in response to a line of inquiry
concerning whether Ampex has made efforts to preserve technical documents since the
commencement of this litigation. (Genberg Tr. 33:24-36:8).
Moreover, as a matter of course in collecting documents, Ampex has asked employees
and former employees whether they possess pertinent documents. In the case of Ampex’s
former employees, there were a few instances where such persons did possess documents, and
those documents were collected and produced or listed. Contrary to Defendants’ statements, Mr.
Kennedy testified that he was asked if he possessed documents relating to his work at Arnpex.
(Tr. 199:21-201:2). He also testified that he located no documents responsive to Defendants
subpoena. (Tr. l94:8—l95:7). Defendants’ reliance on Mr. Oxley’s 30(b)(6) testimony is
irrelevant. Mr. Oxley testified that he has no documents related to the ADO alleged prior aft
system in his files, and that he never maintained documents related to the alleged AVA prior art
system. (Tr. 2}:23-22:23). In any event, counsel represents that Mr. Oxley was indeed asked
whether he had any documents from the time period in question, and he did not.
In contrast to the Bell case cited by defendants, Ampex has done considerably more than
simply state it has not located responsive documents. Ampex has diligently searched for and
produced responsive documents, agreed to conduct additional searches, and informed defendants
of all locations searched. For at least the above reasons, defendants’ motion regarding post-NAB
reports should be denied.
(ii) The Names Of Former Ampex Employees With Whom Ampex Or Its
Counsel Has Entered Confidentiality! Retention Agreements
All but three of the former Ampex employees with whom Ampex or its counsel has
entered contidentiality/retention agreements in connection with this litigation have already been
identified to defendants, by way of deposition testimony, the parties’ witness lists from the ITC
action, andfor in response to defendants’ interrogatories. ln light of this, Arnpex offered, as a
compromise, to provide a complete list of these former employees and the dates of their

Case 1:04-cv—01373-KAJ Document 112 Filed O1/11/2006 Page 3 of 3
The Honorable Kent A. Jordan
January ll, 2006
Page 3
agreements with Ropes & Gray/Ampex, provided that defendants agreed to drop their insistence
on piercing the attorney—client priviiege by demanding production of the agreements. (1/6/G6
letter from Mr. Beamer to Mr. Summersgill). Defendants rejected Arripex’s offer. (l/9/U6 letter
from Mr. Hirsch. to Mr. Beamer).
Defendants make specific reference to fonner Ampex employee Junaid Sheikh.
However, defendants neglect to state that Ampex specifically identified Mr. Sheikh as a
percipient fact witness with knowledge of the Anipex AVA prior to the depositions of Ampex’s
30(b)(6) witnesses. (See Ampex’s response to AEtek’s interrogatory No. 2 l). Arnpe>t’s 30(b)(6)
witnesses were prepared and deposed on the subjects for which Anipex agreed to provide a
corporate designee. Defendants also deposed Mr. Sheikh as a fact witness regarding AVA.
Ampex had no duty to designate Mr. Sheikh as a corporate representative under Rule 30(b)(6),
and Mr. Sheikh has no obligation to take on that responsibiiity. Mr. Sheikh is not under
Ampexfs control, and was represented at his deposition by his own counsel.
Ampex stands ready to produce a list of the names of the former Ampex employees with
whom Ampex/Ropes & Gray have entered confidentiality/retention agreements in connection
with this litigation, provided that production of such information is not considered a waiver of
the attorney-client privilege or work product immunity.
(iii) The Agreement with Mr. Carlos Kennedy
Ampex has already informed defendants of the conditions of Ropes & G.ray’s relationship
with Mr. Kennedy, which defendants allege they are entitled to learn under the Semel case.
Ampex has informed defendants ofthe existence of the agreement, the date of the agreement, the
patties thereto, the terms of Mr. Kennedy’s compensation for time spent preparing for his
deposition, and that the agreement states that Mr. Kennedys retainer of Ropes & Gray is at
Ampcx’s expense.
Other than these iacts, Ampex believes that the agreement itself is protected by the
attorney-client privilege because it contains additional statements reflecting iegai advice. The
Chao case cited by detendants does not compel production of the Kennedy agreement. The
Court’s statement in Choo that "a retention letter from a lawyer usually is not privileged" is mere
dicta, with no citation to authority. Where, as is the case here, a retention letter contains
privileged communication, Ampex believes it may properly be withheld.
Ampex respectfully requests that defendants’ motion be denied.
Respectfully,
Asif Julicz Heaney (#3052)
cc; Peter T. Dalleo, Clerk (By Hand)
i’aui M. Lukoff, Esquire (By Email)
Michael 3. Sunimersgill, Esquire (By Email)
Norman H. Beamer, Esquire (By Email)