Mycone Dental Supply Co., Inc. v. Creative Nail Design, Inc.

Filing 117

STIPULATION AND ORDER GOVERNING E-DISCOVER. Signed by Judge Richard Seeborg on 3/18/13. (cl, COURT STAFF) (Filed on 3/18/2013)

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FISH & RICHARDSON P.C.
John M. Farrell (Cal. Bar. No. 99649)
[e-mail]
500 Arguello Street, Suite 500
Redwood City, CA 94063
Telephone: [phone]
Facsimile: [phone]

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FISH & RICHARDSON P.C.
Jonathan E. Singer (Cal. Bar. No. 187908)
[e-mail]
12390 El Camino Real
San Diego, CA 92130
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff and
Counterclaim Defendants

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VENABLE LLP
ADAM R. HESS (pro hac vice)
[e-mail]
CHRISTOPHER T. LA TESTA (pro hac
vice)
[e-mail]
575 7th Street N.W.
Washington, D.C. 20004
Telephone: [phone]
Facsimile: [phone]
FREITAS TSENG & KAUFMAN LLP
CRAIG KAUFMAN (SBN 159458)
[e-mail]
100 Marine Parkway, Suite 200
Redwood Shores, CA 94065
Telephone: [phone]
Attorneys for Defendant
CREATIVE NAIL DESIGN, INC.

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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MYCONE DENTAL SUPPLY CO., INC.,
D/B/A KEYSTONE RESEARCH &
PHARMACEUTICAL,

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Plaintiff,

Case No. 3:12-cv-00747-RS
STIPULATION AND ORDER
GOVERNING E-DISCOVERY

v.
CREATIVE NAIL DESIGN, INC.,

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Defendant.
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AND RELATED COUNTERCLAIM.
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IT IS HEREBY STIPULATED AND AGREED, by and between the parties and by their
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respective undersigned counsel, subject to the approval of the Court, that the following provisions

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STIPULATION AND ORDER GOVERNING E-DISCOVERY
Case No. 3:12-cv-00747-RS

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shall govern procedures for discovery of electronically-stored information (“ESI”) in the above-

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captioned action.

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I.

General Provisions
A. Preservation of Discoverable Information. A party has a common law obligation to

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take reasonable and proportional steps to preserve discoverable information in the
party’s possession, custody or control.
i.

Absent a showing of good cause by the requesting party, the parties shall not be

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required to modify, on a going-forward basis, the procedures used by them in the
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ordinary course of business to back up and archive data; provided, however, that

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the parties shall preserve the non-duplicative discoverable information currently

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in their possession, custody or control.

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ii.

Absent a showing of good cause by the requesting party, the categories of ESI

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identified in Schedule A attached hereto need not be preserved.

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B. Attorney-Client Privilege and Work Product Protection.

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i.

Within 45 days of the entry of this Order, the parties are to confer on the nature

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and scope of privilege logs for the case, including whether categories of

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information may be excluded from any logging requirements and whether

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alternatives to document-by-document logs can be exchanged.

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ii.

Absent a showing of good cause by the requesting party, with respect to

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information generated after the filing of the complaint, the parties are not

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required to include any such information in privilege logs.

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STIPULATION AND ORDER GOVERNING E-DISCOVERY

iii.

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Activities undertaken in compliance with the duty to preserve information are

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protected from disclosure and discovery under Fed. R. Civ. P. 26(b)(3)(A) and

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(B).

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iv.

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Pursuant to Fed. R. Evid. 502(d), the inadvertent production of privileged or

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work product protected ESI is not a waiver in the pending case or in any other

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federal or state proceeding.

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Information that contains privileged matter or

attorney work product shall be immediately returned to the producing party if it

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is clear on its face that it was inadvertently produced, or if written notice is
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provided by the producing party within 5 business days of the producing party

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learning of the inadvertent production.

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v.

The receiving party shall not use ESI that the producing party asserts is attorney-

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client privileged or work product protected to challenge the privilege or
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protection.

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II.

Specific E–Discovery Issues
A.

On-site inspection of electronic media. Such an inspection shall not be permitted

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absent a demonstration by the requesting party of specific need and good cause.
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B.

Search methodology. If the producing party elects to use search terms to locate

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potentially responsive ESI (including e-mail), it shall disclose the search terms to the requesting

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party. A requesting party may request no more than 10 additional terms to be used in connection

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with the electronic search within 10 days after receiving the producing party’s list of search terms.

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One set of search terms, per producing party, shall be used with respect to both this matter and the

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ongoing litigation in the U.S. District Court for the District of New Jersey, captioned as Mycone

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STIPULATION AND ORDER GOVERNING E-DISCOVERY

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Dental Supply Co., Inc. d/b/a Keystone Research & Pharmaceutical v. Creative Nail Design, Inc. et

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al., Case No. 1:11-cv-04380-JBS-KMW (“the New Jersey Case”).

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In addition, for good cause shown, a requesting party may request additional search terms
outside of the 10-day period. The parties will meet and confer within 5 days of the request to

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discuss any such additional search terms. If the parties cannot agree to the additional search terms,

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either party shall have the option of moving the Court for resolution of the outstanding issues. With

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respect to the additional terms, focused terms, rather than over-broad terms shall be employed. The

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additional search terms shall be narrowly tailored to particular issues. Indiscriminate terms, such as

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the producing company’s name or its product name, are inappropriate unless combined with

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narrowing search criteria that sufficiently reduce the risk of overproduction.

A conjunctive

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combination of multiple words or phrases (e.g., “computer” and “system”) narrows the search and
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shall count as a single search term. A disjunctive combination of multiple words or phrases (e.g.,

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“computer” or “system”) broadens the search, and thus each word or phrase shall count as a

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separate search term unless they are variants or up to 3 synonyms (e.g. “automobile” or “auto” or

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“car”) of the same word. Use of narrowing search criteria (e.g., “and,” “but not,” “w/x”) is

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encouraged to limit the production and shall be considered when determining whether to shift costs

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for disproportionate discovery. If the additional search terms result in an unreasonable number of

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documents to be reviewed and/or produced, the parties shall confer in order to revise the additional
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search terms.
C.

ESI custodians and collection. Absent a showing of good cause by the requesting

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party, each party shall collect and produce ESI from a minimum of 10 custodians total in this matter

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and the New Jersey Case. The parties may jointly agree to modify this limit without the Court’s

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leave. Within 14 days of entry of this Order, the parties shall confer regarding the appropriate

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custodians from whom to collect documents. Consistent with the Federal Rules of Civil Procedure,

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STIPULATION AND ORDER GOVERNING E-DISCOVERY

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nothing in this Order shall bar a party from requesting another party to search for ESI from a

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particular custodian beyond the custodians identified under this Section based on a showing of good

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cause.

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For each custodian, the parties shall collect from all reasonably accessible data sources

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within the party’s possession, custody or control specifically associated with that custodian,

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including, without limitation, the custodian’s email files (whether located on an email server, the

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custodian’s local hard drive, or in other archive or server locations), electronic files from the

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custodian’s hard drive(s), and electronic files from any server location(s) specifically assigned for

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use by the custodian. Absent a showing of good cause by the requesting party, the parties shall not

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be obligated to conduct enterprise-wide searches for all emails to or from any of their identified

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custodians. Absent a showing of good cause by the requesting party, the parties shall not be
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obligated to collect ESI from backup tapes, but shall be obligated to maintain such non-duplicative
backup tapes in the event a showing of good cause is made.
Each party shall inquire with its identified custodians about the existence of any general

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company document sources or repositories (both electronic and hardcopy) that may contain relevant

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documents. With respect to any such source identified, the party shall collect and produce

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documents from those sources in conformance with the provisions herein. Absent a showing of

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good cause by the requesting party, the parties are not obligated to collect from shared ESI sources
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that are accessible to the custodian and other employees (such as shared directories or company

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databases to which the custodian has access) if the custodian does not identify the shared source as

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one that may contain relevant documents.

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Once collected, ESI may be de-duplicated prior to keyword searching. De-duplication may

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include (1) de-duplication across the data set without regard to custodian (“exact de-duplication”),

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and (2) de-duplication of email files that are portions of longer email chains (“near de-

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STIPULATION AND ORDER GOVERNING E-DISCOVERY

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duplication”). If a party employs near de-duplication, it will (i) review all portions of any email

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chain for responsiveness and privilege, (ii) produce all non-privileged portions of an email chain if

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any embedded email contained in the chain is responsive, and (iii) redact only those portions of a

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responsive email chain that are privileged or otherwise subject to redaction under the terms of this

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agreement.
D.

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Format.

ESI and non-ESI shall be produced to the requesting party as text-

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searchable image files (e.g., TIFF). When a text-searchable image file is produced, the producing

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party must preserve the integrity of the underlying ESI, i.e., the original formatting. The parties

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shall produce their information in the following format: single page TIFF images and associated

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multi-page text files containing extracted text or OCR with Concordance and Opticon load files.

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E.

Native files. Absent a showing of good cause by the requesting party, the only files

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that should be produced in native format are files not easily converted to image format, such as
Excel and Access files.
F.

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Metadata files. The parties are not obligated to provide metadata except upon

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request by the receiving party and upon a showing of good cause. Upon such request and with good

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cause shown, the following metadata need only be produced, to the extent such metadata exists:

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Custodian, File Path, Email Subject, From, To, CC, BCC, Date Sent, Time Sent, Date Received,

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Time Received, Filename, Author, Date Created, Date Modified, MD5 Hash, File Size, File
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Extension, Control Number Begin, Control Number End, Attachment Range, Attachment Begin,

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and Attachment End (or the equivalent thereof).

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G.

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party, the parties agree to the production of final, rather than draft, marketing, licensing, and/or

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financial materials. The parties also agree to the initial production of summary financial materials

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Financial and Marketing Materials. Absent a showing of good cause by the requesting

in lieu of all invoices, receipts, purchase orders, etc.

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STIPULATION AND ORDER GOVERNING E-DISCOVERY

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SO STIPULATED:

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Dated: March 15, 2013

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/s/ Jonathan E. Singer
John M. Farrell (No. 99649)
FISH & RICHARDSON P.C.
[e-mail]
500 Arguello Street, Suite 500
Redwood City, CA 94063
Telephone: [phone]
Facsimile: [phone]

/s/ Craig R. Kaufman
Craig R. Kaufman (SBN 159458)
FREITAS TSENG & KAUFMAN LLP
Email: [e-mail]
100 Marine Parkway
Suite 200
Redwood Shores, CA 94065
Telephone: [phone]

Jonathan E. Singer (No. 187908)
FISH & RICHARDSON P.C.
[e-mail]
12390 El Camino Real
San Diego, CA 92130
Telephone: [phone]
Facsimile: [phone]

Adam R. Hess (pro hac vice)
Christopher T. la Testa (pro hac vice)
VENABLE LLP
575 7th Street, NW
Washington, DC 20004
[phone]
[e-mail]
[e-mail]

Attorneys for Plaintiff and
Third-Party Defendants

Attorneys for Defendant
Creative Nail Design, Inc.

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FILER’S ATTESTATION

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I, Craig R. Kaufman, am the ECF User whose identification and password are being used to

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file this STIPULATION AND ORDER GOVERNING E-DISCOVERY. In compliance with

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General Order 45.X.B, I hereby attest that counsel for Plaintiff and Counterclaim Defendants

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concur in this filing.
By: /s/ Craig R. Kaufman
Craig R. Kaufman

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18th
March
SO ORDERED, this ___________ day of _____________, 2013.

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_________________________________
Richard Seeborg
United States District Court Judge

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STIPULATION AND ORDER GOVERNING E-DISCOVERY

SCHEDULE A

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1.

Deleted, slack, fragmented, or other data only accessible by forensics.

2.

Random access memory (RAM), temporary files, or other ephemeral data

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that are difficult to preserve without disabling the operating system.

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3.

On-line access data such as temporary internet files, history, cache,

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cookies, and the like.
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4.

Data in metadata fields that are frequently updated automatically, such as

last-opened dates.

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5.

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Back-up data that are substantially duplicative of data that are more

accessible elsewhere.

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6.

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Voice messages.

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Instant messages that are not ordinarily printed or maintained in a server

dedicated to instant messaging.

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8.

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Electronic mail or pin-to-pin messages sent to or from mobile devices

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(e.g., iPhone and Blackberry devices), provided that a copy of such mail is routinely saved

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elsewhere.

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9.

Other electronic data stored on a mobile device, such as calendar or

contact data or notes, provided that a copy of such information is routinely saved elsewhere.

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10.

Logs of calls made from mobile devices.

11.

Server, system or network logs.

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STIPULATION AND ORDER GOVERNING E-DISCOVERY

12.

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System-generated files or other file types not containing end user-created

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Electronic data temporarily stored by laboratory equipment or attached

data.

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electronic equipment, provided that such data is not ordinarily preserved as part of a laboratory

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report.

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14.

Data remaining from systems no longer in use that is unintelligible on the

systems in use.

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STIPULATION AND ORDER GOVERNING E-DISCOVERY