XpertUniverse, Inc. v. Cisco Systems, Inc.

Filing 74

STIPULATION AND ORDER RE 66 re Discovery of Electronically Stored Information for Patent Litigation. Signed by Judge Richard Seeborg on 3/12/18. (cl, COURT STAFF) (Filed on 3/12/2018)

1
2
3
4
5
6
7
8
9
10

K. Lee Marshall (SBN 277092)
Alexandra C. Whitworth (SBN 303046)
BRYAN CAVE LLP
Three Embarcadero Center, 7th Floor
San Francisco, CA 94111-4078
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]

DUANE MORRIS LLP
Richard L. Seabolt (CA SBN 67469)
[e-mail]
Patrick S. Salceda (CA SBN 247978)
[e-mail]
One Market Plaza
Spear Tower, Suite 2200
San Francisco, CA 94105-1127
Telephone: [phone]
Facsimile: [phone]

J. Bennett Clark (pro hac vice)
Daniel A. Crowe (pro hac vice)
BRYAN CAVE LLP
One Metropolitan Square
211 North Broadway, Suite 3600
St. Louis, MO 63102
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]

DESMARAIS LLP
John M. Desmarais (NY SBN 2261782)
Admitted Pro Hac Vice
[e-mail]
Tamir Packin (SBN 317249)
[e-mail]
C. Austin Ginnings (NY SBN 4986691)
Admitted Pro Hac Vice
[e-mail]
Lindsey Miller (NY SBN 5095740)
Admitted Pro Hac Vice
[e-mail]
230 Park Avenue
New York, New York 10169
Telephone: [phone]
Facsimile: [phone]

11
12
13
14
15

Joseph J. Richetti (pro hac vice)
Alexander D. Walden (pro hac vice)
BRYAN CAVE LLP
1290 Avenue of the Americas
New York, NY 10104
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]

Attorneys for Defendant
CISCO SYSTEMS, INC.

16
17

Attorneys for Plaintiff XpertUniverse, Inc.

18
UNITED STATES DISTRICT COURT

19

NORTHERN DISTRICT OF CALIFORNIA

20
21
22

XPERTUNIVERSE, INC.

23
24
25
26
27

Plaintiff,
vs.
CISCO SYSTEMS, INC.
Defendant.

)
) Case Number: 3:17-cv-03848-RS
)
) STIPULATION & ORDER RE:
) DISCOVERY OF ELECTRONICALLY
) STORED INFORMATION FOR PATENT
) LITIGATION
)
)
)
)
)
)

Upon the stipulation of the parties, the Court ORDERS as follows:
28
1
STIPULATION & ORDER RE: DISCOVERY OF ELECTRONICALLY STORED INFORMATION FOR PATENT LITIGATION
Case No. 3:17-cv-03848-RS

1

1.

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

2

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

3

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

4

not govern source code, which is governed by the Stipulated Protective Order in this action.

5

2.

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

6

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

7

Procedure 16 Conference.

8
9
10
11
12
13

3.

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

pursuant to Federal Rule of Civil Procedure 26. Likewise, a party’s nonresponsive or dilatory
discovery tactics are cost-shifting considerations.
4.

A party’s meaningful compliance with this Order and efforts to promote efficiency

and reduce costs will be considered in cost-shifting determinations.
5.

The parties are expected to comply with the District’s E-Discovery Guidelines

14

(“Guidelines”) and are encouraged to employ the Checklist for Rule 26(f) Meet and Confer

15

regarding Electronically Stored Information.

16

6.

Except as otherwise set forth herein, absent reasonable justification, general ESI

17

production requests under Federal Rules of Civil Procedure 34 and 45, or in compliance with a

18

mandatory disclosure requirement of this Court, shall not include metadata. However, fields

19

showing the date and time that the document was sent and received, as well as the complete

20

distribution list and the filename and file extension, shall generally be included in the production if

21

such fields exist and the producing party or the producing party’s vendor shall include the

22

following fields: (a) BEGBATES; (b) ENDBATES; (c) BEGATTACH; (d) ENDATTACH; (e)

23

CUSTODIAN; and (f) CONFIDENTIALITY.

24
25

7.

Absent agreement of the parties or further order of this court, the following

parameters in paragraphs A-J shall apply to ESI production:

26

A. General Document Image Format.

27

8.

Each electronic document shall be produced in either: single-page Tagged Image

28
2
STIPULATION & ORDER RE: DISCOVERY OF ELECTRONICALLY STORED INFORMATION FOR PATENT LITIGATION
Case No. 3:17-cv-03848-RS

1

File Format (“TIFF”) format or in native format or in a format otherwise mutually agreed upon by

2

the parties.

3

9.

TIFF files shall be single page and each page footer shall bear a unique production

4

number and appropriate confidentiality designation, if any. Each TIFF file shall be named with the

5

unique production number followed by the appropriate file extension. Load files shall be provided

6

to indicate the location and unitization of the TIFF files. If a document is more than one page, the

7

unitization of the document and any attachments and/or affixed notes shall be maintained as they

8

existed in the original document. A party that receives a document produced in TIFF format may

9

make a reasonable request to receive the document in its native format, and upon receipt of such a

10

request, the producing party shall produce the document in its native format. The parties shall be

11

cooperative and negotiate in good faith regarding the request. If the parties reach an impasse

12

regarding the form of production, the party seeking production in native format can apply to the

13

Court for resolution of the impasse. Excel, PowerPoint, Word, PDF, html, and other web-page

14

related files and data (“Native Files”) shall be produced in native format without requiring such a

15

request.

16

10.

Native format files shall be labeled with a unique production number and

17

appropriate confidentiality designation, if any, in the file name or on the disks, hard drives, or

18

other media containing such electronic files. Any file produced in native format shall be named to

19

match the beginning Bates number of their corresponding entries in the database load files and

20

shall be scanned for viruses. To the extent any party prints native format files (either to PDF or to

21

paper), that party may not modify the native file before printing, except that the printed copy shall

22

contain a footer with the production number and confidentiality designation and that resizing and

23

reformatting of native files for printing purposes are permissible so long as the witness has the

24

ability to confirm that the data remains unchanged from the original produced native file. For the

25

purposes of page identification, a party may include an extension on the production number that

26

indicates the page number. E.g., Document XU00001, may include the production number

27

XU00001.001 on the first page, XU00001.002 on the second page, and so forth.

28
3
STIPULATION & ORDER RE: DISCOVERY OF ELECTRONICALLY STORED INFORMATION FOR PATENT LITIGATION
Case No. 3:17-cv-03848-RS

1

B. Text-Searchable Documents.

2

11.

No party has an obligation to make its production text-searchable; however, if a

3

party’s documents already exist in text-searchable format independent of this litigation, or are

4

converted to text-searchable format for use in this litigation, including for use by the producing

5

party’s counsel, then such documents shall be produced in the same text-searchable format at no

6

cost to the receiving party.

7

C. Database Load Files.

8

12.

A production shall be provided with (a) an ASCII delimited data file (.dat) using

9

Concordance default delimiters, and (b) an Opticon (Concordance Image) image load file (.opt)

10

that can be loaded into Concordance version 10 or above as well as Relativity. In addition to the

11

metadata fields identified herein each .dat file shall include links to multi-page (document level)

12

text files (“Text Path”).

13

D. No Backup Restoration Required.

14

13.

Absent a showing of good cause, no party need restore any form of media upon

15

which backup data is maintained in a party’s normal or allowed processes, including but not

16

limited to backup tapes, disks, SAN, and other forms of media, to comply with its discovery

17

obligations in the present case.

18

E. Voicemail and Mobile Devices.

19

14.

Voice-mails, instant messages and other non-email forms of electronic messages,

20

and data from PDAs and mobile phones (collectively, “PDA Data”) need not be collected initially

21

in response to production requests, although the parties shall take reasonable efforts to preserve

22

relevant data from sources and custodians likely to have such data. The parties will meet and

23

confer regarding whether there is reasonable justification for production of PDA Data at any time

24

after review of the parties’ initial document productions and/or after email productions, one or

25

more depositions and/or further discovery.

26

F. De-duplication.

27

15.

Each producing party shall de-duplicate ESI on a global level (across all custodians)

28
4
STIPULATION & ORDER RE: DISCOVERY OF ELECTRONICALLY STORED INFORMATION FOR PATENT LITIGATION
Case No. 3:17-cv-03848-RS

1

prior to production.1 The basis for such de-duplication shall be the MD5 or SHA1 hash values, or

2

some other later agreed to de-duplication method such as full text de-duplication. The parties shall

3

instruct their ESI processing vendors to take attachments into account for generating either the

4

MD5 or SHA1 hash values for email. The custodians of de-duplicated copies of documents should

5

be included in the database load file, either in the CUSTODIAN field, or alternatively, in a field

6

for duplicative or other custodians (e.g., DUPE CUSTODIAN).

7

G. Parents and Attachments.

8

16.

9

Each party may produce email and email attachments in native format, provided

that the manner of production preserves the link between each email and its attachment. Parent

10

documents and attachments, enclosures or exhibits are considered separate documents for the

11

purposes of assessing responsiveness to email production requests. To the extent parent documents

12

with attachments, enclosures, or exhibits are produced, they should be produced so as to maintain

13

the relationship between the parent document and associated attachments, enclosures, or exhibits;

14

e.g., they should be produced with attachments immediately following the parent email and with

15

the entire production range for the email and attachment (e.g., BEGATTACH and ENDATTACH)

16

assigned to the metadata fields for the email and attachment. Email shall be produced in a manner

17

that preserves all bibliographic metadata (including without limitation the custodian, the sender, all

18

addressees, the exact date and time on which the email was received and/or sent, and the subject or

19

“re:” line).

20

H. Technical Requirements.

21

17.

22

Consistent with the foregoing, the parties shall make reasonable efforts to provide

data in accordance with the following technical requirements, to the extent applicable:

23

1.

24

DAT file (using Concordance delimiters) containing Bates, metadata,
OCR and Native path information. Standard fields include: ProdBegNo,

25
1

26

The deduplication need not occur across files that were produced in the previous Delaware action,
XpertUniverse, Inc. v. Cisco Systems, Inc., Case No. 1:09-cv-00157-RGA The parties are working
together to ensure that they each have complete productions from that case.

27
28
5
STIPULATION & ORDER RE: DISCOVERY OF ELECTRONICALLY STORED INFORMATION FOR PATENT LITIGATION
Case No. 3:17-cv-03848-RS

1
2
3

2.
3.

4
5

4.
5.

6
7
8
9

ProdEndNo, BegAttach, EndAttach, Email Sent Date, Doc Creation Date,
Doc Modified Date, DocType, PGCount, Custodian, Author, Recipient(s),
CC, BCC, Subject, Doc Title, File Extension, File Size, File Name, Hash
Value, Native Link Path, and OCR Link Path.
Single-page tiff images (named after Bates numbers)
Document level OCR text files (named after document Begin Bates
numbers)
OPT and/or LFP load file
The production volume subfolders should be organized as follows:
a.
Data folder containing the DAT and OPT/LFP files
b.
OCR folder containing the OCR text files
c.
Images folder containing the tiff images
d.
Native folder for native files

10

I. Email Production Requests.

11

18.

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

12

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

13

obtain email, parties must propound specific email production requests.

14
15
16

19.

Email production requests shall only be propounded for specific issues, rather than

general discovery of a product or business.
20.

The parties shall meet and confer as soon as feasible to define the scope of

17

responsive data, particularly email, that will serve as the basis for discovery. Specifically, the

18

Parties shall meet and confer and either reach agreement or a defined impasse on the sources of

19

potentially relevant and responsive data, including (a) identification of key custodians; (b) search

20

terms and/or methodology; (c) type and categories of documents and files that comprise responsive

21

data (e.g., spreadsheets, databases, emails, notes); and (d) identification of relevant data locations.

22
23
24

21.

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

conferred regarding the scope of responsive data as described in the foregoing paragraph..
22.

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

25

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

26

timeframe as set forth in the Guidelines.

27

23.

Each requesting party shall limit its email production requests to a total of five

28
6
STIPULATION & ORDER RE: DISCOVERY OF ELECTRONICALLY STORED INFORMATION FOR PATENT LITIGATION
Case No. 3:17-cv-03848-RS

1

custodians per producing party for all such requests. The parties may jointly agree to modify this

2

limit without the Court’s leave. The Court shall consider contested requests for additional

3

custodians, upon showing a distinct need based on the size, complexity, and issues of this specific

4

case. Cost-shifting may be considered as part of any such request.

5

24.

Each requesting party shall limit its email production requests to a total of ten

6

search terms per custodian per party. The parties may jointly agree to modify this limit without the

7

Court’s leave. The search terms shall be narrowly tailored to particular issues. Indiscriminate

8

terms, such as the producing company’s name or its product name, are inappropriate unless

9

combined with narrowing search criteria that sufficiently reduce the risk of overproduction. A

10

conjunctive combination of multiple words or phrases (e.g., “computer” and “system”) narrows the

11

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

12

phrases (e.g., “computer” or “system”) broadens the search, and thus each word or phrase shall

13

count as a separate search term unless they are variants of the same word. Use of narrowing search

14

criteria (e.g., “and,” “but not,” “w/x”) is encouraged to limit the production and shall be considered

15

when determining whether to shift costs for disproportionate discovery.

16

25.

Once a requesting party makes an email production request (i.e., identifies a

17

custodian, time frame, and search terms), the producing party shall apply the request and within

18

two weeks provide the requesting party with the total number of document hits responsive to the

19

request. To the extent feasible, the parties shall cooperate so that search terms do not result in an

20

unduly burdensome number of documents. To this end, the producing party shall identify the

21

number of document hits for each search term for each custodian. The requesting party shall then

22

meet and confer with the responding party in a reasonable effort to narrow any term that the

23

responding party reasonably believes creates an undue burden by, for example, using narrowing

24

search criteria as explained above, limiting the time period, or by replacing the term (to the extent

25

feasible), while still capturing the intended scope of responsive data. In the event the parties do

26

not agree on such narrowing, the producing party may request cost-shifting, and the Court may

27

consider whether any party should bear reasonable costs caused by the production of documents in

28
7
STIPULATION & ORDER RE: DISCOVERY OF ELECTRONICALLY STORED INFORMATION FOR PATENT LITIGATION
Case No. 3:17-cv-03848-RS

1

excess of a reasonable number for any particular search term in light of the relative relevance and

2

importance of the email production request and reasonableness of the proposed search term.

3

26.

To the extent an email production request for a particular custodian results in fewer

4

than twenty thousand responsive documents, that request shall be deemed presumptively

5

reasonable, and the burden will shift to the producing party to identify any inappropriate search

6

term(s). Once the parties agree upon an email production request (i.e., the custodian, time frame,

7

and search terms), the producing party shall produce all documents responsive to that request

8

except for those upon which there is a claim of privilege or work product.

9

27.

The Court shall consider contested requests for additional search terms per

10

custodian, upon showing a distinct need based on the size, complexity, and issues of this specific

11

case. Should a party serve email production requests with search terms beyond the limits agreed to

12

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

13

determining whether any party shall bear all reasonable costs caused by such additional discovery

14

in light of the relative relevance and importance of the email production request and

15

reasonableness of the proposed search term.

16

28.

Nothing in this Order prevents the parties from agreeing to use technology assisted

17

review and other techniques insofar as their use improves the efficacy of discovery. Such topics

18

should be discussed pursuant to the District’s E-Discovery Guidelines.

19
20
21

IT IS SO STIPULATED, through Counsel of Record.
Dated: March 5, 2018

/s/ Joseph J. Richetti
Joseph J. Richetti (pro hac vice)
Attorneys for Plaintiff XpertUniverse, Inc.

Dated: March 5, 2018

/s/ Richard L. Seabolt
Richard L. Seabolt
Attorneys for Defendant Cisco Systems, Inc.

22
23
24
25
26
27
28

8
STIPULATION & ORDER RE: DISCOVERY OF ELECTRONICALLY STORED INFORMATION FOR PATENT LITIGATION
Case No. 3:17-cv-03848-RS

1
2
3

Pursuant to L.R. 5-1, I, Joseph J. Richetti, hereby attest that all signatures listed above, on
whose behalf this Stipulation is submitted.
Dated: March 5, 2018

4

/s/ Joseph J. Richetti
Joseph J. Richetti (pro hac vice)
Attorneys for Plaintiff XpertUniverse, Inc.

5
6
7
8

IT IS ORDERED that the forgoing Stipulation is approved.

9
10
11

Dated: 3/12/18
UNITED STATES DISTRICT/MAGISTRATE JUDGE

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
9
STIPULATION & ORDER RE: DISCOVERY OF ELECTRONICALLY STORED INFORMATION FOR PATENT LITIGATION
Case No. 3:17-cv-03848-RS