Monsanto Company v. E.I. Dupont De Nemours and Company et al

Filing 761

MEMORANDUM AND ORDER: IT IS HEREBY ORDERED that Defendants' Fifth Motion to Compel 640 and Sixth Motion to Compel 652 are GRANTED, to the extent they seek documents that should have been produced under the terms of the parties' ESI Stip ulation, and are otherwise DENIED. For each category of requested documents in these Motions, Monsanto shall produce additional documents to fulfill its obligations under the Stipulation, or file a notice with the Court no later than June 3, 2011, certifying that the requested documents are either not subject to the Stipulation or do not exist. Signed by Honorable E. Richard Webber on May 20, 2011. (BRP)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION

MONSANTO COMPANY and
MONSANTO TECHNOLOGY LLC,
Plaintiffs,
vs.
E.I. DU PONT DE NEMOURS AND
COMPANY and PIONEER HI-BRED
INTERNATIONAL, INC.,
Defendants.

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Case No. 4:09CV00686 ERW

MEMORANDUM AND ORDER
This matter comes before the Court on Defendants E.I. du Pont de Nemours and
Company and Pioneer Hi-Bred International, Inc.’s (collectively, “Defendants”) Fifth Motion to
Compel [doc. #640] and Sixth Motion to Compel [doc. #652].
In the event it was not clear from the Court’s statements in its March 18, 2011
Memorandum and Order [doc. #665] and March 30, 2011 Memorandum and Order [doc. #681],
the Court will not order any document production in this case that is not contemplated by the
terms of the parties’ Stipulation and Agreement for Preservation and Production of Documents
and Electronically Stored Information (“the ESI Stipulation” or “the Stipulation”). Thus, to the
extent Defendants seek documents in these Motions that would not have been in the files of the
Monsanto personnel they identified as custodians, or would not have been culled, through
application of the list of partially agreed-upon and partially court-ordered search terms for ESI,
the Court will not order Monsanto to produce those documents.

Indeed, the thrust of Monsanto’s responses to these Motions is that it has produced – or in
certain instances is in the process of producing1 – all documents called for by the ESI Stipulation,
and practically speaking, the Court has little choice but to take Monsanto’s representations at
face value. For example, in one of their many categories of requested production, Defendants
seek “documents concerning codon optimization and synthetic gene construction for use in
producing DNA sequences that encode an EPSPS enzyme,” arguing that this information is
“relevant to the patent’s effective filing date, enablement, written description and best mode, and
other related matters.” Monsanto responds that there were no document requests or search terms
directed to “codon optimization,” but that it has produced documents on that topic to the extent
they were called for by the Stipulation. Defendants reply that there were document requests and
search terms on this topic, and additionally, that this topic calls for hard copy documents predating electronic storage that Monsanto should have reviewed for responsiveness. Because the
Court is not omniscient with respect to the location and contents of documents in the parties’
possession, it simply has no means of determining whether these responsive documents exist or
were subject to the Stipulation, and this same difficulty arises in attempting to resolve all of the
discovery disputes in these Motions. Thus, in light of the Court’s conclusion that it will not
order document production outside of the parties’ agreement, the Court can do no more than reorder what it has already ordered multiple times in this case: complete compliance with the
Stipulation.

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For example, Monsanto asserts that it is producing additional documents concerning the
role of chloroplast transit peptides fused to an EPSPS enzyme in the production of glyphosatetolerant plants, in response to the March 30, 2011 Memorandum and Order.
2

Accordingly,
IT IS HEREBY ORDERED that Defendants’ Fifth Motion to Compel [doc. #640] and
Sixth Motion to Compel [doc. #652] are GRANTED, to the extent they seek documents that
should have been produced under the terms of the parties’ ESI Stipulation, and are otherwise
DENIED. For each category of requested documents in these Motions, Monsanto shall produce
additional documents to fulfill its obligations under the Stipulation, or file a notice with the Court
no later than June 3, 2011, certifying that the requested documents are either not subject to the
Stipulation or do not exist.
Dated this 20th Day of May, 2011.
________________________________________
E. RICHARD WEBBER
SENIOR UNITED STATES DISTRICT JUDGE

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