Institute For Information Industry v. LucidWorks, Inc.

Filing 32

ORDER REGARDING ELECTRONIC DISCOVERY. Signed by Judge Rodney Gilstrap on 8/29/13. (ehs, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
INSTITUTE FOR INFORMATION
INDUSTRY,

Civil Action No. 2:13-cv-00222

Plaintiff,
V.

JURY TRIAL DEMANDED

LUCIDWORKS, INC.
Defendant.
ORDER REGARDING ELECTRONIC DISCOVERY
The Court ORDERS as follows:
I.

GENERAL PROVISIONS
A.

This order supplements all other discovery rules and orders. It streamlines
Electronically Stored Information (“ESI”) production to promote a “just, speedy,
and inexpensive determination” of this action, as required by Federal Rule of
Civil Procedure 1.

B.

For purposes of this order, each named plaintiff or defendant is a “party.”

C.

A party’s meaningful compliance with this order and efforts to promote efficiency
and reduce costs will be considered in cost-shifting determinations.

D.

Absent a showing of good cause, general ESI production requests under Federal
Rules of Civil Procedure 34 and 45, or compliance with a mandatory disclosure
requirement of this Court, shall not include metadata. However, fields showing
the date and time that the document was sent and received, as well as the
complete distribution list, shall generally be included in the production if such
fields exist.

E.

Absent agreement of the parties or further order of this court, the following
parameters shall apply to ESI production:
1)

The parties will make reasonable efforts to prepare responsive and
nonprivileged data for production in accordance with the agreed-upon
specifications set forth below. These specifications apply to hard copy

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documents or electronically stored information (“ESI”), which are to be
produced in the first instance in this litigation.
2)
3)

CONFIDENTIALITY DESIGNATION. Responsive documents in
TIFF format will be stamped with the appropriate confidentiality
designations in accordance with the Protective Order in this matter. All
material not reduced to documentary, tangible, or physical form or which
cannot be conveniently labeled, shall be designated by the producing party
by informing the receiving party of the designation in writing.

4)

NON-STANDARD FILES. The parties are encouraged to discuss the
format of production of non-standard electronic files, large oversized
documents, etc. before production to determine the optimal production
format.

5)

II.

SECURITY. The parties may provide encrypted media for submission.

PRODUCTION MEDIA. Documents shall be produced on external hard
drives, readily accessible computer(s) or electronic media such as CDs or
DVDs (“Production Media”); production by FTP rather than on hard
media will be acceptable; and production by email is acceptable provided
that the receiving party’s designated email address for accepting service of
the production is used and the producing party has not received any error
or return message indicating that the service email was not received or
sent successfully. Each piece of production media should identify: (1) the
producing party’s name; (2) the production date; and (3) the Bates
Number range of the materials contained on the Production Media.

PRODUCTION OF HARD COPY DOCUMENTS
A.

GENERAL DOCUMENT IMAGE FORMAT. Each hard copy document that
is scanned shall be produced in single-page Tagged Image File Format (“TIFF”)
format unless the document cannot reasonably or without undue expense be
produced in that format. TIFF files shall be single page, Group IV, minimum
300dpi TIFF images and shall be named with a unique production number
followed by the appropriate file extension. Load files, such as Concordance load
files, shall be provided to indicate the location and unitization of the TIFF files
and ease the loading of the files into the receiving party’s document management
system. If a document is more than one page, the unitization of the document and
any attachments and/or affixed notes shall be maintained as they existed in the
original document.

B.

TEXT-SEARCHABLE DOCUMENTS. The parties agree to produce its own
documents in text-searchable format. This obligation does not extend to the
reproduction of third-party documents produced in this case.

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C.

D.

III.

PDFs. A producing party may produce documents as PDFs. If produced as
PDFs, each PDF must be branded with a Bates number and confidentiality
designation for each page, and named according to the unique Bates numbers for
the first and last pages of the document, followed by the extension “.PDF”. Each
PDF file shall, to the extent reasonably possible, represent an entire document
rather than each file representing a single page of a multi-page document.
IDENTIFICATION OF PAPER DOCUMENTS. The parties will utilize best
efforts to ensure that paper records for a particular Custodian that are included in
a single production are produced in consecutive Bates stamp order.

PRODUCTION OF ELECTRONICALLY STORED INFORMATION
A.

B.

E-mail production requests shall be phased to occur timely after the parties have
exchanged initial disclosures, a specific listing of likely e-mail custodians, a
specific identification of each party's five most significant listed e-mail custodians
in view of the pleaded claims and defenses1, infringement contentions and
accompanying documents pursuant to P.R. 3-1 and 3-2, invalidity contentions and
accompanying documents pursuant to P.R. 3-3 and 3-4, and preliminary
information relevant to damages. The exchange of this information shall occur at
the time required under the Federal Rules of Civil Procedure, Local Rules, by
order of the court, or as agreed upon by the parties. Each requesting party may
also propound up to five written discovery requests and take one deposition per
producing party to identify the proper custodians, proper search terms, and proper
time frame for e-mail production requests. These discovery requests and/or the
deposition will count against the parties’ respective discovery limits pursuant to
the parties’ agreed Discovery Order. The court may allow additional discovery
upon a showing of good cause.

C.

1

General ESI production requests under Federal Rules of Civil Procedure 34 and
45, or compliance with a mandatory disclosure order of this court, shall not
include e-mail or other forms of electronic correspondence (collectively “email”). To obtain e-mail parties must propound specific e-mail production
requests.

E-mail production requests shall identify the custodian, search terms, and time
frame. The parties shall cooperate to identify the proper custodians, proper search
terms, and proper time frame. Each requesting party shall limit its e-mail
production requests to a total of five (5) custodians per producing party for all
such requests. The parties may jointly agree to modify this limit without the
court’s leave. The court shall consider contested requests for additional or fewer
custodians per producing party, upon showing a distinct need based on the size,
complexity, and issues of this specific case.

A “specific identification” requires a short description of why the custodian is believed to be significant.

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D.

Each requesting party shall limit its e-mail production requests to a total of ten
(10) search terms per custodian per party. The parties may jointly agree to modify
this limit without the court’s leave. The court shall consider contested requests
for additional or fewer search terms per custodian, upon showing a distinct need
based on the size, complexity, and issues of this specific case. The search terms
shall be narrowly tailored to particular issues. Indiscriminate terms, such as the
producing company’s name or its product name, are inappropriate unless
combined with narrowing search criteria that sufficiently reduce the risk of
overproduction. A conjunctive combination of multiple words or phrases (e.g.,
“computer” and “system”) narrows the search and shall count as a single search
term. A disjunctive combination of multiple words or phrases (e.g., “computer” or
“system”) broadens the search, and thus each word or phrase shall count as a
separate search term unless they are variants of the same word. Use of narrowing
search criteria (e.g., “and,” “but not,” “w/x”) is encouraged to limit the production
and shall be considered when determining whether to shift costs for
disproportionate discovery. The parties agree to meet and confer regarding
potential search terms prior to a party collecting and producing emails.

E.

GENERAL DOCUMENT IMAGE FORMAT. Each electronic document shall
be produced in single-page Tagged Image File Format (“TIFF”) format unless the
document cannot reasonably or without undue expense be produced in that
format, in which case the document may be produced in native format. TIFF files
shall be single page, Group IV, minimum 300dpi TIFF images and shall be named
with a unique production number followed by the appropriate file extension. Load
files, such as Concordance load files, shall be provided to indicate the location
and unitization of the TIFF files and ease the loading of the files into the receiving
party’s document management system. If a document is more than one page, the
unitization of the document and any attachments and/or affixed notes shall be
maintained as they existed in the original document.

F.

PDFs. A producing party may produce electronic documents as PDFs. If
produced as PDFs, each PDF must be branded with a Bates number and
confidentiality designation for each page, and named according to the unique
Bates numbers for the first and last pages of the document, followed by the
extension “.PDF”. Each PDF file shall, to the extent reasonably possible,
represent an entire document rather than each file representing a single page of a
multi-page document.

G.

BATES NUMBERING. All images must be assigned a unique Bates number in
the footer that is sequential within a given document.

H.

PRESENTATIONS. The parties shall take reasonable efforts to process
presentations (MS PowerPoint, Google Presently/Punch) with hidden slides and
speaker’s notes unhidden, and to show both the slide and the speaker’s notes on
the TIFF (or PDF) image and/or produce such presentations in their native format

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pursuant to the terms of native production set forth below.
I.

SPREADSHEETS. TIFF images of spreadsheets need not be produced unless
redacted, in which instance, spreadsheets will be produced in TIFF (or PDF)
format with OCR. Native copies of spreadsheets should be produced, if available.
The parties will make reasonable efforts to ensure that any spreadsheets that are
produced only as TIFF (or PDF) images are formatted so as to be readable.

J.

PROPRIETARY FILES. To the extent a response to discovery requires
production of ESI accessible only through proprietary software, the parties should
continue to preserve each version of such information. The parties shall meet and
confer to finalize the appropriate production format.

K.

REQUEST(S) FOR NATIVE FILES. If good cause exists to request
production of specified files in native format, the party may request such
production and provide an explanation of the need for native file review, which
request shall not be unreasonably denied.

L.

SOURCE CODE. To the extent relevant to the Litigation, source code will be
made available for inspection pursuant to the terms of the Protective Order. The
parties agree that the search terms will not be applied to source code.

M.

NO BACKUP RESTORATION REQUIRED. Absent a showing of good cause,
no party need restore any form of media upon which backup data is maintained in
a party’s normal or allowed processes, including but not limited to backup tapes,
disks, SAN, and other forms of media, to comply with its discovery obligations in
the present case.

N.

VOICEMAIL, PDAs, AND MOBILE DEVICES. Absent a showing of good
cause, voicemails, PDAs, and mobile phones are deemed not reasonably
accessible and need not be collected and preserved. Notebook computers and
laptop computers used as the Custodian’s local machine are not “mobile devices”
for the purpose of this paragraph.

O.

REDACTION OF INFORMATION. Redacted documents and redacted
portions of documents are subject to the parties’ agreement in the Discovery
Order regarding whether certain documents need to be included in a privilege log.
The producing party shall retain a copy of the unredacted data within its
possession and control and preserve it without modification, alteration or addition
to the metadata therewith.

P.

General ESI production requests under Federal Rules of Civil Procedure 34 and
45, or compliance with a mandatory disclosure order of this court, shall not
include e-mail or other forms of electronic correspondence (collectively “email”). To obtain e-mail parties must propound specific e-mail production
requests.

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IV.

PROCESSING OF THIRD-PARTY DOCUMENTS
A.

B.

The Issuing Party shall promptly produce any documents obtained pursuant to a
non-party subpoena to the opposing party.

C.

If the non-party production is not Bates-stamped, the Issuing Party will endorse
the non-party production with unique prefixes and Bates numbers prior to
producing them to the opposing party.

D.

V.

A party that issues a non-party subpoena (“Issuing Party”) shall include a copy of
this Stipulation with the subpoena and state that the parties to the litigation have
requested that third-parties produce documents in accordance with the
specifications set forth herein.

Nothing in this stipulation is intended to or should be interpreted as narrowing,
expanding, or otherwise affecting the rights of the parties or third-parties to object
to a subpoena.

SEARCHING

Locations That Will Be Searched for Responsive Documents. The parties will search any
reasonably accessible electronic files or folders, or other parts of media, including any internal
and external hard drives and other ESI venues (including, but not limited to, recordable optical
media, media cards, thumb drives, non-volatile memory, work desktop and work laptop
computers) for each identified Custodian that the Custodian reasonably anticipates to contain
non-duplicative Responsive Documents. The parties agree that storage media and ESI venues
that would require the producing party to acquire or purchase software or hardware that it does
not have in its possession, custody, or control in order to view or copy the media’s or ESI
venue’s contents is not considered “reasonably accessible” for the purpose of this Order. The
parties agree that any email searches shall be limited to the Custodian’s account on the party’s
email server(s) and email archives on the Custodian’s local machine. In addition, the parties
agree that only sent and received custodial emails (including reasonably accessible archive
folders containing sent and received emails) will be searched if an email search is necessary. In
addition, nothing in this paragraph shall limit a receiving party’s right to request from a
producing party more information about the nature of and burden associated with obtaining
documents from a particular location. The parties further recognize their obligations to preserve
any potentially relevant sources of data, whether live or in archival form, for purposes of this
litigation.
The parties agree to search central repositories, including central databases, or relevant portions
thereof to the extent that the party reasonably anticipates they contain non-duplicative
Responsive Documents. The parties agree to meet and confer to limit the scope of production
from central repositories if the search of central repositories (or relevant portions thereof) that the
producing party anticipates contain Responsive Documents is unduly burdensome or is likely to
be unreasonably inefficient in identifying relevant documents. Specifically, the parties recognize
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that certain repositories, by their nature, may not effectively or reasonably be searched using
electronic search strings, and the parties agree to notify each other of any such repositories that
contain Responsive Documents. The parties will then meet and confer to discuss the collection of
Responsive Documents from such repositories, including potentially using other effective
collection methodologies.
VI.

MISCELLANEOUS PROVISIONS
A.

TRANSLATIONS REQUIRED. To the extent a party produces a hard copy
document or electronically stored information in a language other than English,
the producing party shall produce an English translation of the document within
thirty (30) days of its production unless otherwise agreed to by the parties.

B.

OBJECTIONS PRESERVED. Nothing in this protocol shall be interpreted to
require disclosure of irrelevant information or relevant information protected by
the attorney-client privilege, work-product doctrine, or any other applicable
privilege or immunity. The parties do not waive any objections as to the
production, discoverability, admissibility, or confidentiality of documents and
ESI.

C.

NO WAIVER. Pursuant to Federal Rule of Evidence 502(d), the inadvertent
production of a privileged or work product protected ESI is not a waiver in the
pending case or in any other federal or state proceeding. Moreover, the mere
production of ESI in a litigation as part of a mass production shall not itself
constitute a waiver for any purpose.

D.

Notwithstanding the preceding paragraphs, the parties may later make other
. agreements for their mutual convenience relating to the form and manner of
production. To the extent a producing party believes discovery requests or
particular applications of this order may be unduly burdensome or otherwise
objectionable under the applicable rules, the parties will meet and confer in good
faith as to the necessity for, scope of, and objections to such production before
seeking relief from the Court. To the extent a receiving party believes that the
production of a document in a format different from that originally produced is
necessary to translate the document into a reasonably usable form, the parties will
meet and confer in good faith as to the necessity for, scope of and objection to
such production before seeking relief from the Court.

D.

Except as expressly stated, nothing in this order affects the parties’ discovery
obligations under the Federal or Local Rules.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 29th day of August, 2013.

Order regarding Electronic Discovery

____________________________________
RODNEY GILSTRAP 7 of 7
Page
UNITED STATES DISTRICT JUDGE