Codexis, Inc. v. EnzymeWorks, Inc. et al

Filing 61

STIPULATED ORDER RE: DISCOVERY OF ELECTRONICALLY STORED INFORMATION. Signed by Judge William H. Orrick on 08/30/2016. (jmdS, COURT STAFF) (Filed on 8/30/2016)

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DOUGLAS E. LUMISH (Bar No. 183863)
[e-mail]
GABRIEL S. GROSS (Bar No. 254672)
[e-mail]
PATRICIA YOUNG (Bar No. 291265)
[e-mail]
JIE WANG (Bar No. 306395)
[e-mail]
LATHAM & WATKINS LLP
140 Scott Drive
Menlo Park, California 94025
Telephone: [phone]
Facsimile: +1.650.463.2600

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Attorneys for Plaintiff CODEXIS, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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CODEXIS, INC.

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Plaintiff,

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v.

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CASE NO. 3:16-cv-00826-WHO
STIPULATED ORDER RE: DISCOVERY
OF ELECTRONICALLY STORED
INFORMATION

ENZYMEWORKS, INC., a California
corporation, ENZYMEWORKS, INC., a
Chinese corporation, and JUNHUA TAO, an
individual,

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Defendants.
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ATTORNEYS AT LAW
SILICON VA LLE Y

STIPULATED ORDER REGARDING DISCOVERY OF
ELECTRONICALLY STORED INFORMATION
CASE NO. 3:16-CV-00826-WHO

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The parties, by and through their respective counsel of record, stipulate that the following

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procedures should govern discovery of Electronically-Stored Information (“ESI”) in this case,

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subject to approval and entry by the Court.

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I.

GENERAL PRINCIPLES

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This Order supplements all other discovery rules and orders. It streamlines Electronically

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Stored Information (“ESI”) production to promote a “just, speedy, and inexpensive

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determination of this action, as required by Federal Rule of Civil Procedure 1.”

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The Order may be modified in the Court’s discretion or by stipulation. The parties shall

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jointly submit any proposed modifications within 30 days after the Federal Rule of Civil

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Procedure 16 Conference.

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As in all cases, costs may be shifted for disproportionate ESI production requests

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pursuant to Federal Rule of Civil Procedure 26. The parties have read and will comply with the

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District’s E-Discovery Guidelines.

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II.

PRESERVATION

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The parties acknowledge that they have an obligation to take reasonable and proportional

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steps to preserve discoverable information in their possession, custody or control. With respect

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to preservation of ESI, the parties agree as follows:

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

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to modify the procedures used by them in the ordinary course of business to back-up and archive

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data; provided, however, that the parties shall preserve all discoverable ESI in their possession,

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custody or control. Absent a showing of good cause by the requesting party, the following

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categories of ESI need not be preserved:

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1.

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

difficult to preserve without disabling the operating system.
2.

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

the like.
3.

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

opened dates (see also Section V).
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STIPULATED ORDER REGARDING DISCOVERY OF
ELECTRONICALLY STORED INFORMATION
CASE NO. 3:16-CV-00826-WHO

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4.

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

elsewhere.

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5.

Server, system or network logs.

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6.

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

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Electronic data (e.g. email, calendars, contact data, and notes) sent to or from

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in use.

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mobile devices (e.g., iPhone, iPad, Android, and Blackberry devices), provided that a copy of all

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such electronic data is routinely saved elsewhere (such as on a server, laptop, desktop computer,

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or “cloud” storage).

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III.

PRODUCTION OF E-MAILS

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General ESI production requests under Federal Rules of Civil Procedure 34 and 45 shall

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not include email or other forms of electronic correspondence (collectively “email”). To obtain

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email parties must propound specific email production requests.

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Email production requests shall only be propounded for specific issues, rather than
general discovery of a product or business.

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Email production requests shall be phased to occur after the parties have exchanged

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initial disclosures and basic documentation about the patents, the prior art, the accused

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instrumentalities, and the relevant finances. While this provision does not require the production

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of such information, the Court encourages prompt and early production of this information to

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promote efficient and economical streamlining of the case.

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Email production requests shall identify the custodian, search terms, and time frame. The

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parties shall cooperate to identify the proper custodians, proper search terms and proper

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timeframe as set forth in the Guidelines.

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Each requesting party shall identify no more than five (5) custodians and no more than

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ten (10) search terms per custodian per party. Patent numbers and their variants identifying the

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ten (10) asserted patents will be counted as a single search term. The parties may jointly agree to

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modify these limits without the Court’s leave. The Court shall consider contested requests for

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additional custodians or search terms upon showing a distinct need based on the size,

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STIPULATED ORDER REGARDING DISCOVERY OF
ELECTRONICALLY STORED INFORMATION
CASE NO. 3:16-CV-00826-WHO

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complexity, and issues of this specific case.

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The parties agree to meet and confer in good faith about the efficacy of the search terms.

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

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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

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and shall count as a single search term. A disjunctive combination of multiple words or phrases

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(e.g., “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 of the same word, which also applies to translations.

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Use of narrowing search criteria (e.g., “and,” “but not,” “w/x”) is encouraged to limit the

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production and shall be considered when determining whether to shift costs for disproportionate

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discovery. Should a party serve email production requests with search terms beyond the limits

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agreed to by the parties or granted by the Court pursuant to this paragraph, this shall be

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considered in determining whether any party shall bear all reasonable costs caused by such

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additional discovery.

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IV.

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PRODUCTION FORMATS
The parties agree that each of their document productions shall comply with the

following requirements:

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A.

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If a document is searchable in its native format, the producing party will produce it in a

Searchable Documents

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searchable form.

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B.

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Optical character recognition (OCR) data will be provided with images of hard copy

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documents to the extent such OCR data is in the possession of the producing party or its counsel;

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provided, however, that the producing Party is not required to OCR hard copy documents as part

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of its document production.

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provided (one TXT file for each document). The documents should be logically unitized to

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preserve page breaks between documents and otherwise allow separate documents to be

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Hard Copy Documents

If documents are OCR’d, document level TXT files will be

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STIPULATED ORDER REGARDING DISCOVERY OF
ELECTRONICALLY STORED INFORMATION
CASE NO. 3:16-CV-00826-WHO

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identified.

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C.

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Electronic documents will be produced with extracted text. The extracted text shall be in

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document text level files, rather than embedded text files, and the extracted text will not be in the

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database load file.

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D.

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To the extent a producing Party provides electronically-produced files in text-searchable

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or OCR format, the receiving Party accepts the searchable portion of the files “as is,” and the

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producing Party accepts no liability as to the accuracy of searches conducted in such files.

Electronic Documents

Text-searchable or OCR Format

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If there are any Chinese, Japanese, or Korean type of characters, the preferred format for

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text-searchable or OCR files is Unicode (UTF-8), which will be provided when available.

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Nothing in this Order requires a producing Party to generate OCR files or to convert text-

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searchable files to another format.

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E.

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Scanning should be single-page black-and-white TIFF images (group iv / 300 dpi).

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Therefore, whether an electronic document is imaged or a paper document is imaged, both will

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be the same format. PDF files will be produced with document level text files, instead of

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embedded text. Files shall be produced with a load file containing the following information in

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the following mutually agreed upon manner:

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1.

Digital Image Files

Beginning Document Bates Number. NOTE: The Bates numbers will have

sufficient leading zeros (at least 7) and no spaces or symbols (e.g., WA0000001);

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2.

Ending Document Bates Number;

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3.

Beginning Attachment Bates Number;

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4.

Ending Attachment Bates Number;

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5.

File Extension; and

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6.

Confidentiality Designation.

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F.

Color Images

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The producing party may produce color documents as black and white documents with

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STIPULATED ORDER REGARDING DISCOVERY OF
ELECTRONICALLY STORED INFORMATION
CASE NO. 3:16-CV-00826-WHO

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the option to obtain color documents from the producing party if the receiving party specifically

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requests color copies of the documents and upon a showing of good cause by the requesting

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party. For the avoidance of doubt, good cause includes, but is not limited to, the following: (a)

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the documents include schematics, diagrams, graphs, charts, etc.; (b) the documents are unclear

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or illegible; or (c) the color version of the document serves to differentiate the information

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presented in the document.

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producing any document in color.

Nothing in this provision precludes a party from voluntarily

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G.

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If any documents are produced in native format, a database load file will be provided that

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includes a NATIVE FILE field path. Native files should be produced in a separate folder (e.g.,

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NATIVES\001 and NATIVES\002) if possible. Excel spreadsheets and other file types not

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readily reduced to usable PDF or TIFF format may be produced in native format. The parties

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each reserve the right to request that each Excel spreadsheet be produced in native form. Should

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any party request any other document be produced in its native electronic format, the Parties

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agree to meet and confer in good faith to determine whether production of the document is

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reasonably necessary and appropriate.

Native Files

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H.

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At a minimum, DAT and OPT load files shall be provided, including for PDF files.

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I.

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To the extent that a Party prepares paper or PDF (or the equivalent) copies of any

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electronic documents produced in their native format for any purpose, including, but not limited

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to, copies for use and review by counsel, copies to provide to expert witnesses, court filings,

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pleadings, expert reports, or deposition or trial exhibits, the Bates number and the applicable

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confidentiality designation must be replicated on each page of the paper copies.

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V.

Load Files

Paper and PDF Copies of Native Electronic Documents

METADATA

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The parties agree that only the following metadata fields need be produced: document

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type; custodian; author/from; recipient/to, cc and bcc; title/subject; file name and size; date and

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time created, sent, and/or received; and hash value. Although it is presumed generally that the

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STIPULATED ORDER REGARDING DISCOVERY OF
ELECTRONICALLY STORED INFORMATION
CASE NO. 3:16-CV-00826-WHO

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above list of metadata fields will be provided, the list of metadata fields is intended to be flexible

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and may be changed by agreement of the parties, particularly in light of advances and changes in

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technology, vendor and business practices. Metadata shall be produced as DAT files or other

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mutually agreeable format.

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All metadata files shall indicate the beginning unique Bates Number and final unique

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Bates Number of each document. For any documents that have attachments and/or affixed notes,

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the beginning unique Bates Number and final unique Bates Number of such attachments and/or

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affixed notes shall be included in the entry for that document in the metadata file.

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VI.

DOCUMENTS PROTECTED FROM DISCOVERY

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Pursuant to Fed. R. Evid. 502(d), the production of a privileged or work-product

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protected document, whether inadvertent or otherwise, is not a waiver of privilege or protection

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from discovery in this case or in any other federal or state proceeding. For example, the mere

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production of privileged or work-product-protected documents in this case as part of a mass

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production is not itself a waiver in this case or in any other federal or state proceeding.

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The parties need not place on their privilege logs any communications between a party

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and counsel (and their support staffs) that has appeared on behalf of that party in this litigation,

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or any privileged materials that were created in connection with this litigation after the filing of

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the Complaint on February 19, 2016. Communications may be identified on a privilege log by

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category, rather than individually, if appropriate.

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VII.

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SOURCE CODE/SOFTWARE MATERIALS
This Stipulation does not govern the format for production of source code/software

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material, which shall be produced pursuant to the relevant portions of the Protective Order.

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VIII. MODIFICATION

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This Stipulated Order may be modified by stipulation of the parties or by the Court for
good cause shown.

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STIPULATED ORDER REGARDING DISCOVERY OF
ELECTRONICALLY STORED INFORMATION
CASE NO. 3:16-CV-00826-WHO

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IT IS SO STIPULATED, through Counsel of Record.

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Dated: August 29, 2016

By: /s/ Gabriel S. Gross
Gabriel S. Gross
Counsel for Codexis, Inc.

Dated: August 29, 2016

By: /s/ Ezekiel L. Rauscher
Ezekiel L. Rauscher
Counsel for Defendants

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ATTESTATION
Pursuant to Civil Local Rule 5-1(i)(3), I hereby attest that the concurrence in the filing of
this document has been obtained from the other signatory.

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Dated: August 29, 2016

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By /s/ Gabriel S. Gross
Gabriel S. Gross

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IT IS SO ORDERED.

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Dated: 8/30/2016
_____________________________________________________________
HON. UNITED STATES DISTRICT JUDGE WILLIAM H. ORRICK III

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STIPULATED ORDER REGARDING DISCOVERY OF
ELECTRONICALLY STORED INFORMATION
CASE NO. 3:16-CV-00826-WHO