BRAND ENERGY & INFRASTRUCTURE SERVICES, INC. et al v. IREX CONTRACTING GROUP et al
MEMORANDUM AND/OR OPINION. SIGNED BY MAGISTRATE JUDGE ELIZABETH T. HEY ON 2/7/2018. 2/9/2018 ENTERED AND COPIES E-MAILED.(sg, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
BRAND ENERGY & INFRASTRUCTURE
SERVICES, INC., et al.
IREX CORPORATION, et al.
MEMORANDUM AND ORDER
ELIZABETH T. HEY, U.S.M.J.
February 7, 2018
In this motion to compel, relating to Plaintiff’s Fifth Request for Production of
Documents, Plaintiff’s ask the court to order production of documents relating to Irex
servers and other devices. Doc. 278. In response, Defendants argue that the information
Plaintiffs seek does not exist, has already been limited by the court, or is unrelated to the
lawsuit. Doc. 284 at 1. For the reasons that follow, the motion will be granted in part.
Requests 1 & 2 – Commissioning/Decommissioning of Servers
In the first two Requests, Brand seeks documents “reflecting or relating to the
commissioning of” or “decommissioning of each” of a list of Irex servers. Defendants’
Responses to Plaintiffs’ Fifth Request for Production of Documents (“Responses to
RPD”) at 4-5. Defendants responded that none of the identified servers were
commissioned or decommissioned between January 1, 2013 and December 31, 2016, the
temporal scope of discovery, but failed to explicitly state that there are no responsive
documents. Id. If Defendants have any documentation supporting this statement, it
should be produced. Additionally, I note that during his deposition testimony, Michael
Kelly, the IT Director for Irex, testified that the ReadyNAS462 server was
decommissioned sometime in 2016. Kelly Dep. at 43:10-44:3. In light of that testimony,
I will require that Defendants verify their response that none of the listed servers was
commissioned or decommissioned during the identified period.
Request 3 – Imaging of Servers
In its Third Request, Plaintiffs seek “[d]ocuments reflecting or relating to the
imaging (including, without limitation, the date, method, custodian, file list, and any
exceptions) of” a list of Irex servers. Responses to RPD at 5. In response to the Request,
Defendants objected, arguing that the information was protected by the attorney-client
privilege and work product doctrine, the request was overly broad, unduly burdensome,
and not relevant or proportional to the needs of the litigation. Responses to RPD at 5-6.
Plaintiffs’ request for imaging of servers implicates the Forensic Protocol, which
provided for the imaging of any electronic device
(a) issued by any of the Irex Company Defendants to any of
the Irex Individual Defendants, (b) issued by any Irex
Company Defendant and used by any Irex Individual
Defendant at any time before or during his employment or
consulting arrangement with an Irex Company Defendant, . . .
. In addition, this Protocol Order will cover forensic reviews
of any other electronic device issued or used by an employee
of an Irex Company Defendant or of the Plaintiffs that the
facts reveal are likely to contain Plaintiffs’ protected business
information, evidence of the misappropriation of Plaintiffs’
protected business information, or evidence of any Irex
Individual Defendant’s violation of non-competition, nonsolicitation, and/or confidentiality obligations owed to
Plaintiffs or any other BEIS subsidiary.
Doc. 89 ¶ 3.1 In response to the motion, Defendants argue that they “had no obligation to
forensically image any server and Brand is not entitled to any such images to the extent
they exist.” Doc. 284 at 3 (emphasis in original).2
The question under the Protocol is whether the identified servers were “used by
an employee of an Irex Company Defendant [and] the facts reveal [such servers] are
likely to contain Plaintiffs’ protected business information, evidence of the
misappropriation of Plaintiffs’ protected business information, or evidence of any Irex
Individual Defendant’s violation of non-competition, non-solicitation, and/or
confidentiality obligations owed to Plaintiffs or any other BEIS subsidiary.” Doc. 89 ¶ 3.
Plaintiffs have not met this standard. Assuming that the backup of documents constitutes
“use” for purposes of the Protocol, Plaintiffs have failed to establish any likelihood that
Brand protected business information exists on the identified servers.3 Because
The Protocol also included electronic devices in Plaintiffs’ control that are not
relevant to the current motion. As used in the Protocol, electronic devices “include, but
are not limited to, laptop and other computers, cell phones, other mobile devices such as
tablet computers, and portable storage devices (such as USB or “thumb” drives).” Doc.
89 ¶ 3.
During his first day of deposition testimony, Mr. Kelly testified that only one Irex
server was imaged to conduct searches for the document production. See Kelly Dep at
31:8-9; 36:21-22; 39:2-8 (TS283 in Pittsburgh stored created documents, local storage for
branch office). During the second day of his deposition, Mr. Kelly identified two
additional servers that were imaged: ReadyNAS462 and IRFile. Kelly Dep. at 308:2022.
I note that in their most recent motion to compel, Plaintiffs argue that the
Individual Defendants used email to transmit Brand documents. Doc. 285 at 4-5.
According to Mr. Kelly’s deposition, he extracted the email from the Mimecast server,
the only server designated to archive the emails. Kelly Dep. at 25:7-18.
Defendants had no obligation under the Protocol to image these servers, Plaintiffs are not
entitled to any of the information regarding such imaging, even if it was done.
Request 6 - Documents Reflecting Servers to which Individual Defendants
and Others had Access or Used for Storage
In the Sixth Request, Plaintiffs seek documents reflecting the servers to which the
Individual Defendants and others identified had access or used for storage. Responses to
RPD at 6. In response to the Request, Defendants objected that the Request was overly
broad, unduly burdensome, irrelevant and not proportional to the needs of the case. Id. at
7. In response to the motion, Defendant argues that “Brand does not – and cannot – cite
any testimony indicating that there are relevant documents on any other server other than
those searched by Irex.” Doc. 284 at 4.
Defendants characterize Plaintiffs’ Request as “discovery on discovery.” Doc.
284 at 4. It appears that Plaintiffs are seeking information regarding Defendants’
discovery and production efforts. Federal courts “will not compel a party to disclose its
discovery process as a result of the opponent’s mere suspicion that the party’s process has
not produced adequate documents.” Sean Grammel, Protecting Search Terms As
Opinion Work Product: Applying the Work Product Doctrine to Electronic Discovery,
161 U. Pa. L. Rev. 2063, 2084 (2013) (citing Ford Motor Co. v. Edgewood Props., Inc.,
257 F.R.D. 418, 427 (D.N.J. 2009); In re: Lorazepam & Clorazepate Antitrust Litig., 219
F.R.D. 12, 17 (D.D.C. 2003); Bethea v. Comcast., 218 F.R.D. 328, 330 (D.D.C. 2003)).
“Without any showing of bad faith or unlawful withholding of documents . . . , requiring
such discovery on discovery would ‘unreasonably put the shoe on the other foot and
require a producing party to go to herculean and costly lengths’ . . . .” Id. (quoting
Edgewood, 257 F.R.D. at 428).
Consideration of Defendants’ discovery efforts is hampered because I found
previously that Mr. Kelly’s testimony was inadequate to respond to all the topics for
which he was designated, including the ordinary (as opposed to pursuant to the Forensic
Protocol) discovery production.4 Thus, the court understands Plaintiffs’ skepticism. On
the other hand, it is unclear why Plaintiffs’ request comes at this late stage. Plaintiffs
could easily have requested information about the Individual Defendants’ access to
servers early in the litigation, at a time when the parties were embarking on (rather than
completing) their discovery. Plaintiffs no doubt plan to seek additional discovery based
on Defendants’ responses to this request, and at this late stage in the discovery process,5
the court will not allow such a prolonged inquiry. Rather than proceeding through a
multi-step, time-consuming analysis, the court will require defense counsel to confirm
that Defendants have searched the servers that could contain responsive documents. If
Defendants are unable to confirm this, then such searches and production will need to be
I note that Mr. Kelly discussed his efforts to extract the email archives from the
Individual Defendants’ Irex accounts, provided them to the law firm that sent them to the
e-discovery team to run the search terms, Kelly Dep. at 24:20-25:8, and the imaging of
three servers that were also sent to the e-discovery team. Id. at 31:8-9; 36:21-22; 39:2-8;
ReadyNAS462 and IRFile. Id. at 308:20-22.
Fact discovery closed on January 31, 2018. Plaintiffs were aware that there were
additional servers at the time of Mr. Kelly’s second and third deposition days on October
25 and November 9, 2017.
Requests 7-10 – Documents Reflecting Imaging of Devices Used by
In their motion, Plaintiffs characterize Requests 7-10 as seeking “documents
reflecting the imaging of any electronic device used by Individual Defendants and/or
their co-conspirators” and states that it “is reasonably concerned that not all devices were
searched and imaged.” Doc. 278 at 4. Specifically, in the Seventh Request, Plaintiffs
seek the make, model, serial number, and manufacturer of the electronic devices issued
by Irex to the Individual Defendants and other identified individuals believed to have
conspired with the Individual Defendants. The Eighth Request seeks documents
reflecting the leasing of such equipment for the same list of people. The Ninth Request
seeks the date on which any such equipment was issued to the list. The Tenth Request
seeks documents reflecting the imaging of the same electronic devices, identifying the
device, the date it was imaged, and the current custodian of the image. Responses to
RPD at 7-11.
Before proceeding to address Defendants’ objections, I note that previously I
found Mr. Kelly’s testimony sufficient to address the discovery efforts undertaken to
comply with the Forensic Protocol. Doc. 267. Thus, I do not find Plaintiffs’ skepticism
justified in this realm. Mr. Kelly provided a list of all the electronic devices supplied by
Irex to each of the named individuals. Plaintiffs’ Requests are duplicative of information
supplied during that deposition and in other discovery requests in the case.
Defendants have previously responded in discovery that certain individuals
(D’Ulisse, Russo, and Walls) have never been employed by Irex and Irex never issued
any devices to them. Doc. 284 at 4 n.2. This is a sufficient response to the Requests with
respect to these individuals. Similarly, Defendants have also previously provided
information regarding the devices issued to the Individual Defendants. See Doc. 146
¶ 2(a) (referring to Interrogatory 12, requiring Individual Defendants and Company
Defendant to identify by make, model, serial number, and manufacturer all electronic
devices issued to Individual Defendants); Doc. 176 ¶ 5(a) (ordering production).
Defendants represent that they complied with the Order on August 25, 2017. In addition,
Mr. Kelly provided a list at the second day of his deposition of all computers, mobile
devices, cloud storage services, or external devices issued by Irex to the entire list of
individuals. Kelly Dep. 10/25/17, Exh. 8. Thus, the information sought in Request 7 is
duplicative. Plaintiffs doubt the accuracy of Defendants’ representations as to the
completeness of their device list, to be sure. But Defendants have been required in
discovery to provide such information, and have provided and will be bound by their
Mr. Kelly was asked about leased equipment at his deposition in November 2017.
He testified that other members of the IT Department kept track of all leasing records and
checked those records in providing the list of equipment issued to each of the Individual
Defendants. Kelly Dep. at 427. In response to the present motion, Defendants state that
“Irex has produced documents from all relevant devices.” Doc. 284 at 5. The court
considers this representation sufficient and will not require the production of
documentation regarding any leased equipment at this late date.
Plaintiffs next request documents reflecting the date when Irex issued each of the
electronic devices to the named individuals. Plaintiffs’ speculation concerning
Defendants’ discovery efforts is insufficient to require any further response on this line of
inquiry. Mr. Kelly provided a list of all the electronic devices issued to the listed
individuals. The court will require nothing more.
In the Tenth Request, Plaintiffs seek documents reflecting the imaging of each of
the devices used by any of the named individuals, including the information previously
listed. This Request will be denied. The court recently ordered Defendants to produce
all electronic images of the Individual Defendants’ Irex-related electronic devices made
in connection with this litigation but not yet produced. Doc. 270.6
Requests 13 & 14 – Codes of Conduct and Secrecy and Confidentiality
In its Thirteenth and Fourteenth Requests, Brand seeks documents relating to
Irex’s codes of conduct and documents imposing obligations of secrecy or confidentiality
of Irex information. Responses to RPD at 13. Defendants challenge the relevance of
such information and claim that it is not proportional to the needs of the case. Doc. 284
at 5. Brand explains that it seeks this information to “impeach Irex’s claim [that] it does
Plaintiffs seek documents relating to the electronic devices issued to a list of
individuals that includes the Individual Defendants and other individuals identified in the
Amended Complaint whom Plaintiffs allege conspired with the named Defendants. As
previously discussed, the Forensic Protocol requires the imaging of electronic devices
issued by Irex to the Individual Defendants and that of any other Irex employee that the
facts reveal are likely to contain Plaintiffs’ protected business information. Doc. 89 ¶ 3.
Plaintiffs have failed to provide any basis to establish that the devices used by the other
individuals are likely to contain Brand’s protected business information.
not believe business information of the type at issue in this matter is trade-secret or
confidential.” Doc. 278.
The court has previously determined that Irex’s definition of trade secrets is
irrelevant to the issues in the case. Doc. 207 at 2. I find no basis to reverse my decision.
Nevertheless, this dispute gives me the opportunity to clarify my prior order. During a
recent deposition, I was advised of an issue that arose concerning the import of my ruling
that Irex’s trade secrets were not relevant to the case. Plaintiffs sought to inquire of Irex
witnesses whether they would consider certain information confidential, for the purpose
of establishing intent or state of mind as to certain of Plaintiffs’ claims, whereas defense
counsel viewed the questions as violating my ruling. Although I ruled that Irex’s own
trade secrets were not relevant, I did not prohibit Plaintiff from inquiring into the
Defendants’ understanding of confidential business information. A question framed as,
for example, “Is that the type of information that you would consider to be confidential?”
is an appropriate question and must be answered. The question “Do you consider
information [relating to Irex] to be confidential?” goes not to the witness’s state of mind,
but to Irex’s business and is not relevant. I caution Irex’s counsel not to direct a witness
not to respond unless the question clearly calls for the disclosure of Irex’s trade secrets.
An appropriate Order follows.
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?