Free MEMORANDUM in Support - District Court of Delaware - Delaware

Case 1:O4—cv-01436-JJF Document 91 Filed O1/26/2006 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
ST. CLAIR INTELLECTUAL PROPERTY )
CONSULTANTS, INC., )
Plaintiff, ) Civil Action No. 04-1436 JJF
v. )
EASTMAN KODAK COMPANY, et al., )
Defendants. )
PLAINTIFF’S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION FOR LEAVE TO
FILE UNDER SEAL A SUPPLEMENTAL BRIEF AND ATTACHMENT TO PLAINTIFF’S
MOTION FOR AN ORDER COMPELLING DEFENDAN T EASTMAN KODAK COMPANY
TO SUBSTANTIVELY RESPOND TO PLAINTIFF’S OUTSTANDING DISCOVERY
REQUESTS AND TO MOVE FORWARD WITH OWNERSHIP—RELATED
DISCOVERY IN THIS CASE
Plaintiff St. Clair Intellectual Property Consultants, Inc. ("St. Clair") hereby moves this Court
for permission to file under seal a supplemental brief describing and attaching the Asset Purchase
Agreement (“Agreement") between Defendant Eastman Kodak Company ("Kodak") and Mirage
Systems, Inc. ("Mirage") dated May 20, 2005 to St. Clair’s Motion for an Order Compelling
Defendant Eastman Kodak Company to Substantively Respond to Plaintiff s Outstanding Discovery
Requests and to Move Forward with Ownership-Related Discovery in this Case ("Motion to
Compel"). St. Clair requests such permission from the Court because the parties do not yet have a
Scheduling Order in place in this case that would address the procedure for filing confidential
documents under seal.
As this Court is aware, Kodak claims to have entered into an Asset Purchase Agreement with
Mirage Systems, Inc. to purchase all of Mirage’s alleged "rights" in the patents-in-suit on May 20,
2005. Kodak has refused, and continues to refuse, to produce this document in Delaware in response
to valid and proper ownership-related discovery requests served upon Kodak by St. Clair in June 2005,
claiming that the ownership discovery should only go forward in the Mirage Systems, Inc. v. St. Clair
et al. case in California (Ca. Superior Court (Santa Clara County) 1-05-CV-039164). For months,
Kodak managed to keep the document from seeing the light of day in both the California and Delaware

Case 1 :04-cv-01436-JJF Document 91 Filed O1/26/2006 Page 2 of 4
actions despite repeated formal and informal requests from St. Clair. Finally, two weeks after the
California Court told Kodak to produce the Agreement to St. Clair, Kodak turned it over on January
13, 2006. However, the production was conditional, of course:
[w]e are producing this to you on the condition that the Agreement and the terms
therein remain confidential, and limited to use by outside counsel in [the California]
action only. In other words, neither the document nor its contents should be disclosed
to your clients or any third parties.
Ex. l, 1/ 13/06 Ward Ltr.1 Kodak is therefore preventing St. Clair from discussing the terms of the
Agreement and from producing the Agreement to this Delaware Court, even though the document is
directly responsive to long-outstanding discovery requests from St. Clair.
St. Clair accordingly filed its Motion to Compel simultaneously with this Motion today,
January 26, 2006. However, since Kodak "instructed" St. Clair not to produce or use the document
outside the Califomia case, St. Clair cannot attach the Agreement to its Motion to Compel, nor can it
even describe the terms of the Agreement to the Court. St. Clair’s Motion to Compel rests in large part
upon the Agreement itself and production of that document to the Court is imperative to the resolution
of that Motion. As described in St. Clair’s Motion to Compel, this document is responsive to St.
Clair’s discovery requests, is relevant to the ownership issues in this case, proves Kodak is hiding
information and documents from this Court, and supports St. Clair’s Motion to Compel in its entirety.
St. Clair should be allowed to submit the Agreement along with a supplemental brief to St. Clair’s
Motion to Compel to fully apprise the Court of the basis for St. Clair’s Motion.
Finally, Kodak would not be harmed in any way if the Agreement and any description of its
terms was filed "under seal." The document and any information related to the Agreement would not
be seen by third parties and would be only viewed by the Court and outside counsel to this action.2
I All exhibits referred to herein are attached to the Affidavit of Patricia J. McGonigle, attached to this Motion.
("McGonigle Af£").
Z St. Clair does not agree that the Agreement is actually worthy of "outside cour1sel’s eyes on1y" protection in any
event, considering it was an Agreement between two adverse parties to which no privileges or confidences apply.
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Case 1 :O4—cv-01436-JJF Document 91 Filed O1/26/2006 Page 3 of 4
Kodak cannot claim that it is harmed by giving this Court the actual truth about what is going on in
this matter.
CONCLUSION
For the foregoing reasons, St. Clair respectfully requests an Order from this Court granting St.
Clair permission for leave to tile "under seal" a supplemental brief to its Motion to Compel which
attaches and describes the Kodak-Mirage Agreement. St. Clair also respectfully requests and Order
from this Court allowing the Agreement to be attached and discussed in further pleadings to the Court
as long as the pleadings are tiled "under seal."
Dated: January 26, 2006. SEITZ, VAN OGTROP & GREEN
OfCounsel: /s/ P ·· P =— G gle
Ronald J. Schutz, Esquire By:
Jake M. Holdreith, Esquire rge H. {2, III, Esquire (No. 667)
Becky R. Thorson, Esquire mes S. A, en, Esquire (No. 481)
Carrie M. Lambert, Esquire Patricia . McGonigle, Esquire (No. 3126)
Kimberly G. Miller, Esquire 222 Delaware Avenue, Suite 1500
ROBINS, KAPLAN, MILLER & P.O. Box 68
CIRESI LLP Wilmington, DE 19899
2800 LaSalle Plaza (302) 888-0600
800 LaSalle Avenue
Minneapolis, MN 55402 Attorneys for St. Clair Intellectual Property
(612) 349-8500 Consultants, Inc.
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Case 1 :O4—cv-01436-JJF Document 91 Filed O1/26/2006 Page 4 of 4
CERTIFICATE OF SERVICE
I, Patricia P. McGonigle, Esquire, hereby certify that on this 26th day of January 2006, I
electronically tiled the foregoing documents with the Clerk of Court using CM/ECF which will
send notification of such tiling to counsel of record.
/s/ Patricia P. McGonigle
Patricia P. McGonigle (ID No. 3126)
[email protected]
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