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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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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NUVASIVE, INC.,

Case No.: 18-cv-0347-CAB-MDD
Plaintiff,

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v.

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ALPHATEC HOLDINGS, INC., and
ALPHATEC SPINE, INC.,

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Defendants.

ORDER ON JOINT MOTION FOR
DETERMINATION OF
DISCOVERY DISPUTE
REGARDING ELECTRONICALLY
STORED INFORMATION
[ECF NO. 197]

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Before the Court is the Joint Motion of the parties for determination of

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a discovery dispute filed on September 30, 2019. (ECF No. 197). This is a

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patent case and the joint motion presents Plaintiff’s motion to compel

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Defendants to use certain search terms to examine the electronic files of

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certain alleged custodians.

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LEGAL STANDARD
The Federal Rules of Civil Procedure authorize parties to obtain

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discovery of “any nonprivileged matter that is relevant to any party’s claim or

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defense and proportional to the needs of the case....” Fed. R. Civ. P. 26(b)(1).

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“Information within the scope of discovery need not be admissible in evidence
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to be discoverable.” Id. District courts have broad discretion to limit

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discovery where the discovery sought is “unreasonably cumulative or

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duplicative, or can be obtained from some other source that is more

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convenient, less burdensome, or less expensive.” Fed. R. Civ. P. 26(b)(2)(C).

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A party may request the production of any document within the scope of

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Rule 26(b). Fed. R. Civ. P. 34(a). “For each item or category, the response

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must either state that inspection and related activities will be permitted as

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requested or state an objection to the request, including the reasons.” Rule

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34(b)(2)(B). If the responding party chooses to produce responsive

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information, rather than allow for inspection, the production must be

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completed no later than the time specified in the request or another

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reasonable time specified in the response. Id. An objection must state

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whether any responsive materials are being withheld on the basis of that

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objection. Rule 34(b)(2)(C). An objection to part of a request must specify the

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part and permit inspection or production of the rest. Id. The responding

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party is responsible for all items in “the responding party’s possession,

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custody, or control.” Rule 34(a)(1). Actual possession, custody or control is

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not required. Rather, “[a] party may be ordered to produce a document in the

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possession of a non-party entity if that party has a legal right to obtain the

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document or has control over the entity who is in possession of the

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document.” Soto v. City of Concord, 162 F.R.D. 603, 620 (N.D. Cal. 1995).

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DISCUSSION

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This dispute is grounded in the general agreement of the parties to

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generally follow the Model Order Governing Discovery of Electronically

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Stored Information in Patent Cases appended to Patent Local Rules of the

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Court. (See ECF No. 197 at 9).1 As noted previously by the Court in another

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discovery dispute in this case, neither the Model ESI Order, nor any order

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governing production of ESI was filed in this case. (See ECF No. 134 at 3-4).

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Consequently, it is only the admittedly “general agreement” of the parties to

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follow the Model ESI Order that may be subject to enforcement by the Court.

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The Model ESI Order is flawed as it pertains to production of electronic

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mail, the very dispute presented here. If proposed by the parties, this Court

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would not have endorsed it. The structure of the Model ESI Order is

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inconsistent with Rule 34, Fed. R. Civ. P., and inconsistent with the learned

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views expressed in the Sedona Principles. The Model ESI Order requires the

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requesting party to identify custodians and search terms. Model ESI Order ¶

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10. The requesting party is limited to identifying five custodians and five

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search terms per custodian. Id. ¶¶ 11-12. Consequently, in this case, the

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dispute boils down to mostly unintelligible search terms like this requested

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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)).

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(ECF No. 197-9 at 3-4).

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Rule 34, Fed. R. Civ. P., governs request for production of documents. It

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does not differentiate between information stored on paper or on an electronic

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medium. It requires the requesting party to request “information.” Rule

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34(a)(1). The producing party must produce the requested information or

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object to the request. Rule 34(b)(2)(B). Electronically stored information is

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The Court will refer to page numbers supplied by CM/ECF rather than original
pagination throughout.
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addressed in the Rule to the extent that a party may object to the requested

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form of production of electronically stored information. Rule 34(b)(2)(D) and

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provides a default for the form of production. Rule 34(b)(2)(E). Unlike the

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Model ESI Order, nothing in Rule 34 requires a requesting party to identify

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custodians or search terms. The Model ESI Order, in that respect, is

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contrary to the ordinary progress of civil discovery in the federal courts.

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In an earlier Order in this case, the Court advised the parties that this

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Court subscribes to the view expressed in Principle No. 6 of the Sedona

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Principles:

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Responding parties are best situated to evaluate the procedures,
methodologies, and technologies appropriate for preserving and
producing their own electronically stored information.

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The Sedona Principles, Third Edition, 19 SEDONA CONF. J. 1, Principle 6,

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118 (2018). The Court also advised the parties that it subscribes to Principles

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1 and 3 which provide that electronic discovery is generally subject to the

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same discovery requirements as other relevant information and that the

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parties should seek to reach agreement regarding production of electronically

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stored information. Id. at 56, 71; (ECF No. 134 at 3).

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The Model ESI Order is inconsistent with these principles. Moreover,

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the world of electronic discovery has moved well beyond search terms. While

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search terms have their place, they may not be suited to all productions.

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Technology has advanced and software tools have developed to the point

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where search terms are disfavored in many cases. See, e.g., da Silva Moore v.

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Publicis Groupe, 287 F.R.D. 182, 189-91 (S.D.N.Y. 2012). The Model ESI

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Order, in its reliance on search terms, is obsolete.

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The Court will not decide whether the proposed custodians are
appropriate nor on the use of the requested search terms. Instead, Plaintiff
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must request information, regardless of how or where it is maintained by

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Defendants, which Defendants must address as required by Rule 34. That is

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discovery: a party requests information and the burden is on the producing

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party to locate and produce it or object legitimately to production. The

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instant motion is DENIED.
CONCLUSION

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As presented in this Joint Motion, Plaintiff’s motion to compel

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Defendants to search the electronic files of identified custodians using search

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terms proposed by Plaintiff is DENIED. The Court will not enforce the

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parties’ general agreement to follow the Model ESI Order.
IT IS SO ORDERED:
Dated: October 7, 2019

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