Free Letter - District Court of Delaware - Delaware

Case 1:04-cv—O1373-KAJ Document 108 Filed O1/10/2006 Page 1 of 4
PRICIGETT, JONES & ELLIOTT
A l’llOFE$SION.»\L r\SSOCl,·\`l`lON
1310 KING STREET, Box 1328
U WILMINGTON, DELAWARE 19899
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January 10, 2006
The Honorable Kent A. Jordan VIA EFILE AND HAND DELIVERY
United States District Court
844 King Street
Wilmington, DE 19801
RE: Ampex Corporation v. Eastman Kodak Co., et al. C.A. N0. 04-1373 KAJ
Dear Judge Jordan:
Pursuant to this Court’s Civil Trial Procedures, Defendants Eastman Kodak Company
and Altek Corporation ("Defendants") respectfully submit this letter addressing three discovery
disputes that Defendants have been unable to resolve after consultation with Plaintiff Ampex
Corporation ("Ampex”). Defendants seek an order compelling the production of: (i) Ampex
analyses of competitive products; (ii) the names of former Ampex employees with whom Ampex
or its counsel has entered confidentiality/retention agreements in connection with this litigation;
and (iii) a specific confidentiality/retention agreement relating to this litigation between counsel
for Ampex and Carlos Kennedy, a former Ampex employee.
(i) Ampex Analyses of Competitive (Now Prior Art) Products.
In connection with its invalidity and inequitable conduct claims, Defendants requested
documents relating to Ampex’s knowledge of prior art systems that were competitive with
Ampex products. E, ggg Del. Doc. Request No. 31; ITC Doc. Request No. 113.
Ampex witnesses have testified that such documents were created on a regular basis. For
instance, Carlos Kennedy, a former Ampex "product planner" responsible for analyzing
competitive products, testified that he and another product plarmer, Charles Anderson, created
reports after every trade show, including the industry’s biggest trade show, the National
Association of Broadcasters ("NAB") convention (Kennedy Transcript, p. 46-9). Mr. Kemredy
explained that he and Mr. Anderson attended all of the NAB conventions from 1980 to 1985 and
regularly created reports after the conferences (Kemredy Transcript, p. 52-3). Mr. Kennedy also
testified that they created weekly product planning reports and reports following customer visits
that routinely addressed competitive products (Kennedy Transcript, p. 127-8). Likewise, Ken
Regnier, another former Ampex employee, testified that Ampex engineering managers created
analyses of competitive products following trade shows (Regnier Transcript, p. 273).
Despite the clear relevance of these types of documents to Defendants’ invalidity and
inequitable conduct case, Ampex has failed to produce cz single report drafted by either Mr.
Kennedy or Mr. Anderson. Of particular concern, Ampex has failed to produce any documents
analyzing competitive products displayed at the 1982 NAB convention. The Quantel Paint Box
system, which Ampex’s own expert in the ITC Investigation admitted is the best prior art to the
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The Honorable Kent A. Jordan
January 10, 2006
Page 2
asserted patent (Anderson Transcript, p. 466), was first demonstrated at the NAB convention
that year. Mr. Kennedy testified that he "certainly" prepared a report on the NAB ’82
convention (Kennedy Transcript, p. 165). While Ampex has produced Mr. Regnier’s report from
NAB ‘79 and NAB ‘83, it has notably not produced any NAB reports authored by Mr. Regnier
or other engineering managers relating to NAB ‘82.
Ampex claims that it has looked in "all logical places" for these documents. (December
1, 2005 letter from Brightman to Hirsch). Yet, Ampex’s 30(b)(6) witness on document retention
testified that Ampex "retain[s] all documents" (Genberg Transcript, p. 36) and multiple Ampex
witnesses have testified that they were not asked to search for relevant documents. For example,
Carlos Kemiedy testified that he had not been asked to collect documents (Kennedy Transcript,
pp. 193-194). Similarly, Leslie Oxley, Ampex’s 30(b)(6) witness regarding certain Ampex
products, testified that he had not been asked to collect documents (Oxley Transcript, p. 21).
Ampex should not be permitted to avoid production by simply stating that it cannot locate
relevant documents that were indisputably created. g Bell v. Woodward Governor Co., No.
03-C—50190, 2004 WL 3121301 at * 3-4 (N.D. Ill. Dec. 20, 2004) (granting motion to compel
where "one party presents evidence through deposition testimony that certain responsive
documents very likely exist or at least existed at one time and the other party states that they
have not located such documents"). Defendants respectfully request, therefore, that the Court
compel the production of all Ampex analyses of competitive, prior art products.
(ii) The names of former Ampex employees with whom Ampex or its counsel has
entered confidentiality/retention agreements.
During the ITC action, Ampex produced 30(b)(6) designees without knowledge of the
topics for which they were designated to testify. By way of example, Ampex designated former
Ampex employee Les Oxley to testify regarding the Ampex AVA system. Mr. Oxley testified,
however, that he knew nothing about the function and capabilities of the relevant AVA system.
(Oxley Transcript, p. 23-29) (Q: Do you know anything about the function [or] the capabilities of
the 1980 AVA system? A: No.). Similarly, Ampex’s 30(b)(6) witness regarding the conception
and reduction to practice of the claimed invention, Joel Talcott, responded to over three hundred
and fifty questions during his 30(b)(6) deposition with "I don’t know." Ampex represented that
these individuals were the best remaining witnesses to testify with respect to old, discontinued
technologies. In subsequent discovery, however, Defendants learned that Ampex had entered
into tmdisclosed confidentiality and retention agreements with multiple former employees at the
outset of the ITC litigation, some of whom appear to be far better suited to testify with respect to
the topics requested by Defendants. In fact, when it came time to submit written testimony for
the ITC trial, Ampex selected as its trial witnesses some of these former employees instead of its
30(b)(6) witnesses. With respect to the AVA system, for instance, Ampex offered the testimony
of one of its former AVA engineers, Junaid Sheikh, who it had hired as a "consultant," not the
Lmprepared 30(b)(6) witness who it had made available to Defendants. Ampex is, of course,
bound by its 30(b)(6) deponents’ testimony and Defendants will, at the appropriate time, seek to
preclude any testimony inconsistent with that of its 30(b)(6) witnesses.
In order to assess Ampex’s efforts to produce relevant documents and appropriate
witnesses in this action going forward, Defendants asked Ampex to provide the names of the
former employees who entered into such confidentiality and retention agreements with Ampex
since 2001 (Interrogatory No. 12). Such individuals may have relevant information and
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The Honorable Kent A. Jordan
January 10, 2006
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Defendants believe that the identity of these individuals is something that Ampex would
ordinarily have to disclose in connection with its initial disclosures. g Fed. R. Civ. P.
26(a)(l)(A). Ampex has nevertheless refused to provide the individua1s’ identities on the
grounds that they are protected from disclosure by the work product doctrine. (December 6, 2005
letter from Brightman to Walden).
Under applicable law, the names of individuals who have retained Ropes & Gray are
facts that Ampex must produce. E In re Grand Jug Investigation, 631 F .2d 17, 19 (3rd Cir.
1980) ("in the absence of Lmusual circumstances, the privilege does not shield...the identity of
clients"). Likewise, the identity of former employees contacted to locate information in
connection with this case is factual information that does not reveal privileged attorney work
product. E National Union Fire Insurance Co. of Pittsburgh, PA v. Stauffer Chemical Co., No.
87C-SE-11, 1991 WL 14168 at *1 (Del. Super. Jan. 15, 1991) (plaintiff cannot withhold
identities of interviewed former employees even though the names may indicate "a narrowing of
the field by [plaintiffs] counsel"). Defendants therefore request that the Court order Ampex to
identify the individuals with whom it (or its counsel) has entered confidentiality and retention
agreements.
(iii) The Agreement with Mr. Carlos Kennedy
On November 14, 2005, Defendants issued a subpoena to former Ampex employee,
Carlos Kennedy, seeking, among other documents, all agreements between Mr. Kennedy and
Ropes & Gray. (Subpoena to Carlos Kennedy, Doc. Request No. 1). Defendants requested the
agreements to determine the nature of the relationship between Mr. Kennedy and Ropes: whether
Mr. Kennedy was required to preserve relevant documents in connection with the agreement;
whether Mr. Kennedy was required to search for and produce relevant doctunents in connection
with the agreement; whether Mr. Kermedy agreed to testify for Ampex and was therefore
available as a 30(b)(6) witness; and the nature of Ropes & Gray’s agreement to compensate Mr.
Kennedy for his work on this litigation. Ampex acknowledges the existence of a December 21,
2004 confidentiality and retention agreement between Ropes & Gray and Mr. Kennedy but
Ampex and Mr. Kennedy have refused to produce the agreement, or even a redacted version of
the agreement, on grounds of privilege. (November 23, 2005 email from Beamer to Hirsch);
(December 6, 2005 letter from Brightman to Walden). In fact, Mr. Kennedy, represented by
counsel for Ampex, failed to produce a single document in response to the subpoena. (November
22, 2005 email from Beamer to Summersgill). ,
The conditions of Ropes & Gray’s relationship with Mr. Kennedy are facts that
Defendants are entitled to learn. g In re Semel, 411 F.2d 195, 197 (3rd Cir. 1969) (the fact of
retainer, identity of the client, and the conditions of an attorney’s employment "do not come
within the privilege of the attorney-client re1ationship"). Courts have found that retention
agreements are typically not privileged. E Chao v. Koresko, No. 04-MC—74, 2004 WL
1749179 at * 3 (E.D. Pa. Aug. 2, 2004) ("A retention letter from a lawyer is usually not
privileged" and must be produced in response to a subpoena). Defendants respectfully request
that the Court order Ampex to produce the agreement with Mr. Kennedy or, in the alternative,
produce it to the Court for an in camera review to determine whether any portions can be
withheld as privileged.
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Case 1 :04-cv—01373-KAJ Document 108 Filed O1/10/2006 Page 4 of 4
The Honorable Kent A. Jordan
January 10, 2006
Respectfully submitted, {
PAUL M. LUKOFF
PML/mhl
cc: Jack B. Blumenfeld, Esquire (Via Efiling)
Norman H. Beamer, Esquire (Via E-Mail & FedEx)
Jesse J. Jenner, Esquire (Via E-Mail & FedEx)
S. Calvin Walden, Esquire (Via Email)
Michael J. Summersgill, Esquire (Via Email)
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