Nuvasive, Inc. v. Alphatec Holdings, Inc. et al

Filing 198

ORDER on Joint Motion for Determination of Discovery Dispute Regarding Electronically Stored Information [ECF No. 197 ]. Signed by Magistrate Judge Mitchell D. Dembin on 10/7/2019. (anh)

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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 NUVASIVE, INC., Case No.: 18-cv-0347-CAB-MDD Plaintiff, 12 13 v. 14 ALPHATEC HOLDINGS, INC., and ALPHATEC SPINE, INC., 15 16 Defendants. ORDER ON JOINT MOTION FOR DETERMINATION OF DISCOVERY DISPUTE REGARDING ELECTRONICALLY STORED INFORMATION [ECF NO. 197] 17 18 Before the Court is the Joint Motion of the parties for determination of 19 a discovery dispute filed on September 30, 2019. (ECF No. 197). This is a 20 patent case and the joint motion presents Plaintiff’s motion to compel 21 Defendants to use certain search terms to examine the electronic files of 22 certain alleged custodians. 23 24 LEGAL STANDARD The Federal Rules of Civil Procedure authorize parties to obtain 25 discovery of “any nonprivileged matter that is relevant to any party’s claim or 26 defense and proportional to the needs of the case....” Fed. R. Civ. P. 26(b)(1). 27 “Information within the scope of discovery need not be admissible in evidence 1 18-cv-0347-CAB-MDD 1 to be discoverable.” Id. District courts have broad discretion to limit 2 discovery where the discovery sought is “unreasonably cumulative or 3 duplicative, or can be obtained from some other source that is more 4 convenient, less burdensome, or less expensive.” Fed. R. Civ. P. 26(b)(2)(C). 5 A party may request the production of any document within the scope of 6 Rule 26(b). Fed. R. Civ. P. 34(a). “For each item or category, the response 7 must either state that inspection and related activities will be permitted as 8 requested or state an objection to the request, including the reasons.” Rule 9 34(b)(2)(B). If the responding party chooses to produce responsive 10 information, rather than allow for inspection, the production must be 11 completed no later than the time specified in the request or another 12 reasonable time specified in the response. Id. An objection must state 13 whether any responsive materials are being withheld on the basis of that 14 objection. Rule 34(b)(2)(C). An objection to part of a request must specify the 15 part and permit inspection or production of the rest. Id. The responding 16 party is responsible for all items in “the responding party’s possession, 17 custody, or control.” Rule 34(a)(1). Actual possession, custody or control is 18 not required. Rather, “[a] party may be ordered to produce a document in the 19 possession of a non-party entity if that party has a legal right to obtain the 20 document or has control over the entity who is in possession of the 21 document.” Soto v. City of Concord, 162 F.R.D. 603, 620 (N.D. Cal. 1995). 22 DISCUSSION 23 This dispute is grounded in the general agreement of the parties to 24 generally follow the Model Order Governing Discovery of Electronically 25 Stored Information in Patent Cases appended to Patent Local Rules of the 26 27 2 18-cv-0347-CAB-MDD 1 Court. (See ECF No. 197 at 9).1 As noted previously by the Court in another 2 discovery dispute in this case, neither the Model ESI Order, nor any order 3 governing production of ESI was filed in this case. (See ECF No. 134 at 3-4). 4 Consequently, it is only the admittedly “general agreement” of the parties to 5 follow the Model ESI Order that may be subject to enforcement by the Court. 6 The Model ESI Order is flawed as it pertains to production of electronic 7 mail, the very dispute presented here. If proposed by the parties, this Court 8 would not have endorsed it. The structure of the Model ESI Order is 9 inconsistent with Rule 34, Fed. R. Civ. P., and inconsistent with the learned 10 views expressed in the Sedona Principles. The Model ESI Order requires the 11 requesting party to identify custodians and search terms. Model ESI Order ¶ 12 10. The requesting party is limited to identifying five custodians and five 13 search terms per custodian. Id. ¶¶ 11-12. Consequently, in this case, the 14 dispute boils down to mostly unintelligible search terms like this requested 15 by Plaintiff for each custodian: design w/5 ((compet! or replac! or substitut! or alternativ! or conver! or copy or copie! or mimic! or imitat! or patent! or invent! or !infring! or !valid! or !enforce!) and (lateral! or LLIF or Battalion or Squadron)). 16 17 18 19 (ECF No. 197-9 at 3-4). 20 Rule 34, Fed. R. Civ. P., governs request for production of documents. It 21 does not differentiate between information stored on paper or on an electronic 22 medium. It requires the requesting party to request “information.” Rule 23 34(a)(1). The producing party must produce the requested information or 24 object to the request. Rule 34(b)(2)(B). Electronically stored information is 25 26 27 The Court will refer to page numbers supplied by CM/ECF rather than original pagination throughout. 1 3 18-cv-0347-CAB-MDD 1 addressed in the Rule to the extent that a party may object to the requested 2 form of production of electronically stored information. Rule 34(b)(2)(D) and 3 provides a default for the form of production. Rule 34(b)(2)(E). Unlike the 4 Model ESI Order, nothing in Rule 34 requires a requesting party to identify 5 custodians or search terms. The Model ESI Order, in that respect, is 6 contrary to the ordinary progress of civil discovery in the federal courts. 7 In an earlier Order in this case, the Court advised the parties that this 8 Court subscribes to the view expressed in Principle No. 6 of the Sedona 9 Principles: 10 11 Responding parties are best situated to evaluate the procedures, methodologies, and technologies appropriate for preserving and producing their own electronically stored information. 12 13 The Sedona Principles, Third Edition, 19 SEDONA CONF. J. 1, Principle 6, 14 118 (2018). The Court also advised the parties that it subscribes to Principles 15 1 and 3 which provide that electronic discovery is generally subject to the 16 same discovery requirements as other relevant information and that the 17 parties should seek to reach agreement regarding production of electronically 18 stored information. Id. at 56, 71; (ECF No. 134 at 3). 19 The Model ESI Order is inconsistent with these principles. Moreover, 20 the world of electronic discovery has moved well beyond search terms. While 21 search terms have their place, they may not be suited to all productions. 22 Technology has advanced and software tools have developed to the point 23 where search terms are disfavored in many cases. See, e.g., da Silva Moore v. 24 Publicis Groupe, 287 F.R.D. 182, 189-91 (S.D.N.Y. 2012). The Model ESI 25 Order, in its reliance on search terms, is obsolete. 26 27 The Court will not decide whether the proposed custodians are appropriate nor on the use of the requested search terms. Instead, Plaintiff 4 18-cv-0347-CAB-MDD 1 must request information, regardless of how or where it is maintained by 2 Defendants, which Defendants must address as required by Rule 34. That is 3 discovery: a party requests information and the burden is on the producing 4 party to locate and produce it or object legitimately to production. The 5 instant motion is DENIED. CONCLUSION 6 7 As presented in this Joint Motion, Plaintiff’s motion to compel 8 Defendants to search the electronic files of identified custodians using search 9 terms proposed by Plaintiff is DENIED. The Court will not enforce the 10 11 12 parties’ general agreement to follow the Model ESI Order. IT IS SO ORDERED: Dated: October 7, 2019 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 5 18-cv-0347-CAB-MDD

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