Zomm, LLC v. Apple Inc.

Filing 59

ORDER by Judge Haywood S. Gilliam, Jr. Granting 58 Stipulation Re: Discovery of Electronically Stored Information. (ndrS, COURT STAFF) (Filed on 1/22/2019)

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MICHAEL J. ZINNA (pro hac vice)
[e-mail]
LEE BRENNER (State Bar No. 180235)
[e-mail]
DAVID FINK (State Bar No. 169212)
[e-mail]
DAVID G. LINDENBAUM (pro hac vice)
[e-mail]
WHITNEY M. SMITH (pro hac vice)
[e-mail]
KELLEY DRYE & WARREN LLP
101 Park Avenue
New York, New York 10178
Telephone
212-808-7800
Facsimile
973-503-5950

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Attorneys for Plaintiff ZOMM, LLC

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DAVID R. EBERHART (S.B. #195474)
[e-mail]
LUANN L. SIMMONS (S.B. #203526)
[e-mail]
SINA ARIA (S.B. #287529)
[e-mail]
HANNAH Y. CHANOINE (pro hac vice)
[e-mail]
O’MELVENY & MYERS LLP
Two Embarcadero Center, 28th Floor
San Francisco, California 94111-3823
Telephone:
[phone]
Facsimile:
[phone]
Attorneys for Defendant
APPLE INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OAKLAND DIVISION

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ZOMM, LLC,

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Case No. 4:18-cv-04969-HSG
Plaintiff,

STIPULATION & ORDER RE:
DISCOVERY OF ELECTRONICALLY
STORED INFORMATION

v.
APPLE INC.,

Judge: Haywood S. Gilliam, Jr.
Defendant.

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Plaintiff Zomm, LLC and Defendant Apple Inc. (collectively, the “Parties”) hereby agree,

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subject to approval by the Court, that the following procedures shall govern discovery of

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Electronically-Stored Information (“ESI”) in this case:

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1.

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

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production to promote a “just, speedy, and inexpensive determination of this action, as required

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by Federal Rule of Civil Procedure 1.”

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2.

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

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shall 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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3.

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. Likewise, a Party’s nonresponsive or dilatory

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discovery tactics are cost-shifting considerations. A Party’s meaningful compliance with this

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Order and efforts to promote efficiency and reduce costs will be considered in cost-shifting

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determinations.

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4.

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

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(“Guidelines”) and are encouraged to employ the District’s Model Stipulated Order Re: the

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Discovery of Electronically Stored Information and Checklist for Rule 26(f) Meet and Confer

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regarding Electronically Stored Information. The parties have discussed their preservation

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obligations and needs and agree that preservation of potentially relevant ESI will be reasonable

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and proportionate. To reduce the costs and burdens of preservation and to ensure proper ESI is

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preserved, the parties agree that:

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a. Only ESI created or received after January 1, 2009 through the filing date of this

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Action will be preserved if it existed in a party’s possession, custody or control as

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of April 23, 2018;

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b. The parties will exchange a list of the types of ESI they believe should be

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preserved and the names or general job titles or descriptions of custodians, for

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whom they believe ESI should be preserved, e.g., “HR head,” “scientist,” and

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“marketing manager.” The parties shall add or remove custodians as reasonably

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necessary;

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c. The parties will agree on the number of custodians per party for whom ESI will be

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preserved;

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d. The parties agree to discuss data sources that may contain ESI that may not be

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reasonably accessible because of undue burden or cost pursuant to Fed. R. Civ. P.

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26(b)(2)(B).

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5.

With respect to Plaintiff’s patent claim, general ESI production requests under

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Federal Rules of Civil Procedure 34 and 45 shall not include email or other forms of electronic

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correspondence (collectively “email”). To obtain email related to the patent claim, Parties must

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propound specific email production requests.

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

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general discovery of a product or business.

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b. Email production requests shall be phased to occur after the Parties have

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exchanged initial disclosures and basic documentation about the patents, the prior

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art, the accused instrumentalities, and the relevant finances. While this provision

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does not require the production of such information, the Court encourages prompt

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and early production of this information to promote efficient and economical

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streamlining of the case.

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

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frame. The Parties shall cooperate to identify the proper custodians, proper search

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terms and proper timeframe as set forth in the Guidelines.

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d. The foregoing limitations shall not apply to discovery requests related to Plaintiff’s

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non-patent claims.
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For all such requests, each requesting Party shall limit its email production

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requests to: (1) a total of five custodians per producing Party if Plaintiff’s non-patent claims are

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dismissed and Plaintiff’s patent claim is not stayed; (2) a total of ten custodians per producing

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Party if Plaintiff’s non-patent claims are not dismissed and Plaintiff’s patent claim is stayed; or
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(3) a total of fifteen custodians per producing Party if Plaintiff’s non-patent claims are not

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dismissed and Plaintiff’s patent claim is not stayed. The Parties may jointly agree to modify this

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

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

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

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7.

Each requesting Party shall limit its email production requests to: (1) a total of five

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search terms per custodian per Party if Plaintiff’s non-patent claims are dismissed and Plaintiff’s

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patent claim is not stayed; (2) a total of ten search terms per custodian per Party if Plaintiff’s non-

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patent claims are not dismissed and Plaintiff’s patent claim is stayed; or (3) a total of fifteen

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search terms per custodian per Party if Plaintiff’s non-patent claims are not dismissed and

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Plaintiff’s patent claim is not stayed. The Parties may jointly agree to modify this limit without

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the Court’s leave. The Court shall consider contested requests for additional search terms per

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

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case. The Court encourages the Parties to confer on a process to test the efficacy of the search

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

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as 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 of the same word. Use of narrowing search criteria

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

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determining whether to shift costs for disproportionate discovery. Notwithstanding prior

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agreement on the search terms to be used for searches, should a search for emails produce an

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unreasonably large number of non-responsive or irrelevant results, the Parties shall (at the

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producing party’s request) meet and confer to discuss application of further negative search

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restrictions (e.g., if a single search was for “card” and ninety percent of the resulting emails came

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from the irrelevant term “credit card,” a negative limitation to ignore emails only returned as a
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result of “credit card” may be applied to remove these emails). The Party receiving production

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shall not unreasonably oppose such further restrictions designed to filter immaterial email search

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results. 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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8.

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

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

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

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9.

Documents Protected from Discovery. Communications involving outside

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and/or in-house counsel that post-date the filing of the complaint need not be placed on a

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privilege log. Communications may be identified on a privilege log by category, rather than

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individually, if appropriate.

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Format for production of documents – documents existing in electronic

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format. Except as otherwise provided for in this Stipulation, all documents existing in electronic

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format shall be produced in multiple page, searchable PDF format at a resolution of at least 300

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dpi in accordance with the following:

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a. PDF files shall be produced along with Concordance/Opticon image load files that
indicate the beginning and ending of each document.

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b. For documents that already exist in PDF format prior to production (i.e., which the

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producing party receives from a client or third party in PDF format), the producing

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party may provide them in that same PDF format, whether searchable or non-

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searchable. For documents converted to PDF format prior to production, the

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producing party shall make reasonable efforts to convert to searchable PDF.

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c. Metadata. Load files should include, where applicable, the information listed in

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the Table of Metadata Fields, attached as Exhibit A. However, the Parties are not

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obligated to include metadata for any document that does not contain such

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metadata in the original, if it is not possible to automate the creation of metadata
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when the document is collected. The Parties reserve their rights to object to any

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request for the creation of metadata for documents that do not contain metadata in

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the original.

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d. Production media and encryption of productions. Unless otherwise agreed, the

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Parties shall provide document productions in the following manner: The

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producing party shall provide the production data on CDs, DVDs, external hard

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drives or SFTP, as appropriate. The producing party shall encrypt the production

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data using WinRAR encryption, and the producing party shall forward the

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password to decrypt the production data separately from the CD, DVD, external

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drive or SFTP to which the production data is saved.
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Format for production of documents – hardcopy or paper documents. All

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documents that are hardcopy or paper files shall be scanned and produced in the same manner as

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documents existing in electronic format, above.

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Source code. This Stipulation does not govern the format for production of source

code, which shall be produced pursuant to the relevant provision of the Protective Order.
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Parent and child emails. The Parties shall produce email attachments

sequentially after the parent email.
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Native files. The Parties will meet and confer to discuss requests for the

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production of files in native format, on a case-by-case basis. If the Parties are unable to reach

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agreement with regard to requests for additional documents in native-file format, the Parties

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reserve the right to seek relief from the Court. Documents produced natively shall be represented

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in the set of imaged documents by a slipsheet indicating the production identification number and

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confidentiality designation for the native file that is being produced.

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15.

Databases. Certain types of databases are dynamic in nature and will often

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contain information that is neither relevant nor reasonably calculated to lead to the discovery of

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admissible evidence. Thus, a Party may opt to produce relevant and responsive information from

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databases in an alternate form, such as a report or data table. These reports or data tables will be

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produced in a static format.
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The Parties agree to identify the specific databases, by name, that contain the relevant and
responsive information that Parties produce.
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Requests for hi-resolution or color documents. The Parties agree to respond to

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reasonable and specific requests for the production of higher resolution or color images. Nothing

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in this Stipulation shall preclude a producing party from objecting to such requests as

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unreasonable in number, timing or scope, provided that a producing party shall not object if the

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document as originally produced is illegible or difficult to read. The producing party shall have

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the option of responding by producing a native-file version of the document. If a dispute arises

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with regard to requests for higher resolution or color images, the Parties will meet and confer in

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good faith to try to resolve it.
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Foreign language documents. All documents shall be produced in their original

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language. Where a requested document exists in a foreign language and the producing party also

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has an English-language version of that document that it prepared for non-litigation purposes

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prior to filing of the lawsuit, the producing party shall produce both the original document and all

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English-language versions. In addition, if the producing party has a certified translation of a

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foreign-language document that is being produced, (whether or not the translation is prepared for

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purposes of litigation) the producing party shall produce both the original document and the

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certified translation. Nothing in this agreement shall require a producing party to prepare a

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translation, certified or otherwise, for foreign language documents that are produced in discovery.

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IT IS SO STIPULATED.

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Dated: January 18, 2019

KELLEY DRYE AND WARREN LLP

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By:

/s/ Michael J. Zinna
Michael J. Zinna
Attorneys for Plaintiff
ZOMM, LLC

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Dated: January 18, 2019

O’MELVENY & MYERS LLP

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By:

/s/ Luann L. Simmons
Luann L. Simmons
Attorneys for Defendant
APPLE INC.

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CERTIFICATE OF SERVICE
I certify that all counsel of record is being served on January 18, 2019, with a copy of this
document via the Court’s CM/ECF system.
/s/ Luann L. Simmons

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Luann L. Simmons

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FILER’S ATTESTATION
Pursuant to Local Rule 5-1(i)(3), I hereby attest that the other signatory listed, on whose
behalf the filing is submitted, concurs in the filing’s content and has authorized the filing.
/s/ Luann L. Simmons

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Luann L. Simmons

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ORDER
PURSUANT TO STIPULATION, IT IS SO ORDERED.

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Dated: January 22, 2019

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Haywood S. Gilliam, Jr.
United States District Court Judge

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EXHIBIT A

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TABLE OF METADATA FIELDS

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Field Name

Specifications
Field Name

Field Type

Description
(Email)

Description (EFiles/Attachments)

BegDoc

Unique ID
(Bates number)

Paragraph

The Document
ID number
associated with
the first page of
an email.

The Document ID
number associated
with the first page
of a document

EndDoc

Unique ID
(Bates number)

Paragraph

The Document
ID number
associated with
the last page of
an email.

The Document ID
number associated
with the last page
of a document.

BegAttach

Unique ID
(Bates number)
Parent-Child
Relationships

Paragraph

The Document
ID number
associated with
the first page of
a parent email.

The Document ID
number associated
with the first page
of a parent
document.

EndAttach

Unique ID
(Bates number)
Parent-Child
Relationship

Paragraph

The Document
ID number
associated with
the last page of
the last
attachment to a
parent email.

The Document ID
number associated
with the last page
of the last
attachment to a
parent document.

Pages

Pages

Number

The number of
pages for an
email.

The number of
pages for a
document.

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DateSent

Date
The date the
(MM/DD/YYYY email was sent.
format)

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For email
attachments, the
date the parent
email was sent.

Author

Author Display
Name (e-mail)

Paragraph

The display
name of the
author or
sender of an
email.

The name of the
author as identified
by the metadata of
the document.

To

Recipient

Paragraph

The display
name of the
recipient(s) of
an email.

The display name
of the recipient(s)
of a document (e.g.,
fax recipients).

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Field Name

Specifications
Field Name

Field Type

Description
(Email)

CC

CC

Paragraph

The display
name of the
copyee(s) of an
email.

BCC

BCC

Paragraph

The display
name of the
blind copyee(s)
of an email.

Subject

Subject (e-mail)

Paragraph

The subject
line of an
email.

The subject of a
document from
entered metadata.

Custodian

Custodian

Paragraph

The custodian
of an email.

The custodian of a
document.

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Description (EFiles/Attachments)

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