ACI Worldwide Corp. v. MasterCard Technologies, LLC et al

Filing 175

ORDER - Plaintiff's Motion to Compel Production of Documents (filing 155 ) is denied without prejudice to reassertion at a later time. The parties shall meet and confer in an effort to devise a search protocol or methodology to employ for r etrieving the information requested by Plaintiff. The parties shall submit a joint status report to the Court no later than July 20, 2015, advising the Court as to the outcome of this meet and confer conference. If the parties are unable to reach an agreement regarding search methodology, said report shall contain a list of individuals who the parties deem acceptable to serve as special master. The Court advises the parties that the special master will not necessarily be selected from the list of names provided. Plaintiffs Motion to File Sur-Reply Brief in Support of Motion to Compel (filing 174 ) is granted, and the brief has been considered by the Court in ruling on this Motion to Compel. Ordered by Magistrate Judge F.A. Gossett. (GJG)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
ACI WORLDWIDE CORP.,
Plaintiff,
V.
MASTERCARD TECHNOLOGIES,
LLC, and MASTERCARD
INTERNATIONAL, Incorporated,
Defendants.

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8:14CV31

ORDER

This matter is before the Court on Plaintiff’s Motion to Compel Production of
Documents (filing 155). For the reasons explained below, Plaintiff’s Motion will be denied,
without prejudice to reassertion.
BACKGROUND
In this action, Plaintiff alleges that Defendants, in violation of a licensing agreement
and other legal obligations between the parties, disclosed confidential information regarding
Plaintiff’s NET24-XPNET middleware to Baldwin Hackett & Meeks, Incorporated
(“BHMI”). Plaintiff claims that the disclosure of this proprietary intellectual property,
including Plaintiff’s software, manuals, and/or derivative works, allowed Defendants and
BHMI to replicate Plaintiff’s NET24-XPNET middleware and create a replacement
middleware product.
Over the course of this suit, numerous discovery disputes have arisen. The most
recent deals with Plaintiff’s discovery requests seeking documents, files and electronically
stored information (“ESI”), constituting or containing Plaintiff’s proprietary information that
was (1) inputted into Defendants’ MasterCard Debit Switch (“MDS”); (2) never removed
from the MDS application following the termination of the license agreements between
Plaintiff and Defendants; and (3) copied from the MDS for transmission to BHMI. Plaintiff

believes that this information will show whether Defendants continued to use the XPNET
information in their MDS after the expiration of the license agreement between the parties,
and whether Defendants still use the XPNET information in their MDS source code.
Defendants object to the production of this information, largely due to the alleged
burdensomeness of the requests and the claimed risks the requests pose to Defendants’
production systems. Plaintiff, in an effort to address Defendants’ concerns, has revised the
subject discovery requests on several occasions. Most recently, Plaintiff devised a search
protocol for Defendants’ use in retrieving the requested information. At this time, Plaintiff
seeks an order compelling Defendants to implement the search protocol.
DISCUSSION
Under the federal rules, parties to a lawsuit may obtain discovery regarding any
matter, not privileged, that is relevant to a claim or defense of any party. Fed. R. Civ. P.
26(b)(1). Relevancy is broadly construed and “[d]iscovery requests should be considered
relevant if there is any possibility the information sought is relevant to any issue in the case
and should ordinarily be allowed, unless it is clear the information sought can have no
possible bearing on the subject matter of the action.” Met-Pro Corp. v. Industrial Air
Technology, Corp., No. 8:07CV262, 2009 WL 553017, * 3 (D. Neb. March 4, 2009). The
party seeking discovery must make a threshold showing that the requested information is
relevant to claims or defenses. Id.
Once the requesting party meets the threshold relevance burden, generally “[a]ll
discovery requests are a burden on the party who must respond thereto. Unless the task of
producing or answering is unusual, undue or extraordinary, the general rule requires the
entity answering or producing the documents to bear that burden.” Continental Ill. Nat’l
Bank & Trust Co. of Chicago v. Caton, 136 F.R.D. 682, 684-85 (D. Kan. 1991). Therefore,
the party opposing the motion to compel has the “burden of showing its objections are valid
by providing specific explanations or factual support as to how each discovery request is
improper.” Whittington v. Legent Clearing, LLC, No. 8:10CV465, 2011 WL 6122566 , * 3
(D. Neb. Dec. 8, 2011).

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The Federal Rules of Civil Procedure also authorize courts to limit discovery that is
“unreasonably cumulative or duplicative, or can be obtained from some other source that is
more convenient, less burdensome, or less expensive.” Fed. R. Civ. P. 26(b)(2)(C). With
respect to electronic discovery, the Federal Rules state:
A party need not provide discovery of electronically stored information from
sources that the party identifies as not reasonably accessible because of undue
burden or cost. On motion to compel discovery or for a protective order, the
party from whom discovery is sought must show that the information is not
reasonably accessible because of undue burden or cost. If that showing is
made, the court may nonetheless order discovery from such sources if the
requesting party shows good cause, considering the limitations of Rule
26(b)(2)(C). The court may specify conditions for the discovery.
Fed. R. Civ. P. 26(b)(2)(B).
Plaintiff’s discovery requests seek any documents, files and electronically stored
information constituting or containing Plaintiff’s proprietary information that was (1)
inputted into Defendant’s MDS application, (2) never removed from the MDS application
following the termination of the license agreements between Plaintiff and Defendants, and
(3) copied from the MDS for transmission to BHMI. Generally, Defendants do not dispute
the relevance of the requested information. Rather, Defendants maintain that requiring them
to run a software program on their production systems in an effort to retrieve the requested
information would be unduly burdensome and invasive.
Having reviewed the matter, the Court finds that Plaintiff has shown a particular need
for the information and that the information is relevant to the issues involved in this action.
However, the Court simply does not have the expertise necessary to determine the best
methodology to be employed in retrieving the requested materials in a safe, non-obtrusive,
and cost-effective manner. Based on the information before it, the Court does not even know
whether a search methodology or protocol exists (or could exist) which would allow the
requested information to reasonably be retrieved.
The parties have been unable to find a solution to this discovery dilemma, much to the
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detriment of all involved. “The Federal Rules of Civil Procedure . . . emphasize that
electronic discovery should be a party-driven process.” Aquilar v. Immigration and Customs
Enforcement Div. of U.S. Dept. of Homeland Sec., 255 F.R.D. 350, 358 (S.D.N.Y. 2008).
“[C]ooperation between counsel regarding the production of electronically stored information
allows the parties to save money, maintain greater control over the dispersal of information,
maintain goodwill with courts, and generally get to the litigation’s merits at the earliest
practicable time.” Saliga v. Chemtura Corp., No. 3:12CV832, 2013 WL 6182227, *1 (D.
Conn. Nov. 25, 2013) (quotations omitted). See also William A. Gross Construction
Associates, Inc. v. American Manufacturers Mutual Insurance Company, 256 F.R.D. 134,
136 (S.D.N.Y. 2009) (“Electronic discovery requires cooperation between opposing counsel
and transparency in all aspects of preservation and production of ESI”).
Consequently, the Court will order the parties to once again confer in an effort to
reach an agreement regarding the search methodology to be employed in retrieving the
requested information. In the event the parties cannot come to an agreement, the Court will
immediately refer the matter to a special master who will oversee the production of ESI in
this case. The parties are advised that costs of retaining the special master will be assessed
against the parties in proportion to their success (or lack thereof) on the merits of their
arguments regarding a reasonable search methodology (if any) that can be used to retrieve
ESI in this case.
Accordingly,
IT IS ORDERED as follows:
1.

Plaintiff’s Motion to Compel Production of Documents (filing 155) is denied
without prejudice to reassertion at a later time.

2.

The parties shall meet and confer in an effort to devise a search protocol or
methodology to employ for retrieving the information requested by Plaintiff.
The parties shall submit a joint status report to the Court no later than July 20,
2015, advising the Court as to the outcome of this meet and confer conference.
If the parties are unable to reach an agreement regarding search methodology,
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said report shall contain a list of individuals who the parties deem acceptable
to serve as special master. The Court advises the parties that the special master
will not necessarily be selected from the list of names provided.
3.

Plaintiff’s Motion to File Sur-Reply Brief in Support of Motion to Compel
(filing 174) is granted, and the brief has been considered by the Court in ruling
on this Motion to Compel.

DATED July 13, 2015.
BY THE COURT:
S/ F.A. Gossett
United States Magistrate Judge

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