PPS Data v. Passport Health Communications
MEMORANDUM DECISION granting in part and holding in abeyance in part 52 Plaintiff's Motion to Compel. Signed by Magistrate Judge Dustin B. Pead on 05/24/2013. (tls)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH, CENTRAL DIVISION
Case No. 2:12-cv-00438-RJS-DBP
District Judge Robert J. Shelby
Magistrate Judge Dustin B. Pead
This patent infringement matter was referred to the Court under 28 U.S.C. § 636(b)(1)(A).
(Docket Nos. 40; 52; 62.) On May 17, 2013, the Court held a hearing on Plaintiff’s motion for a
scheduling order (Dkt. No. 62), and Plaintiff’s motion to compel (Dkt. No. 52). For the reasons
stated at the hearing, and set forth below, the Court GRANTS in part Plaintiff’s motion for a
scheduling order, with several modifications. The Court GRANTS in part, and HOLDS IN
ABEYANCE in part, Plaintiff’s motion to compel.
II. PLAINTIFF’S MOTION FOR SCHEDULING ORDER
On April 25, 2013, Plaintiff filed this motion for a scheduling order. (Dkt. No. 62.) The
motion reflects the parties’ agreement on all scheduling issues but electronically stored
information (“ESI”). (Id. at 2.) Plaintiff prefers a scheduling order that allows it to conduct
discovery on Defendant’s general ESI without using search terms created by both parties. (Dkt.
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No. 62.) In other words, Plaintiff wants Defendant to turn over its general ESI, at which point
Plaintiff will employ its own search terms to find relevant ESI. However, Plaintiff agrees to
work with Defendant to create and apply twenty-five search terms to Defendant’s emails. (Id. at
Plaintiff believes its position comports with Defendant’s original desire to adopt the Federal
Circuit Court’s Model Order on E-Discovery because the Model Order applies search terms
exclusively to emails. (Dkt. Nos. 62 at 2; 62-3 at 3.) Plaintiff also believes its position reflects
Magistrate Judge Evelyn J. Furse’s instructions at the March 21, 2013 initial pretrial conference
because she allegedly restricted search terms to email. Moreover, because Defendant is a
paperless company, Plaintiff fears Defendant will violate its obligation under District Judge Tena
Campbell’s Local Patent Rule 4A(2). 1 (Dkt. No. 62 at 4.) That is, Plaintiff worries Defendant
will withhold relevant ESI if Plaintiff cannot predict the twenty-five search terms that will
produce the best results. (Id.)
Defendant opposes Plaintiff’s motion because it wants the Court to issue the proposed
scheduling order the parties previously agreed to on April 24, 2013 - one day before Plaintiff
filed this motion. (Dkt. No. 66 at 5-6.) That proposed order applies twenty-five search terms to
all ESI discovery, both non-email and email. (Id.)
Campbell Pat. R. 4A(2) reads:
Not later than 30 days after service of the list of Accused Instrumentalities, each
accused infringer shall produce all documents and things related to the design,
development, sale, offer for sale, manufacture, use and functionality of Accused
Instrumentalities made, used, sold or imported by it, as well as responses to the
discovery referenced in Rule 4A(1) hereof.
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To a point, the Court agrees with Defendant. The Court is troubled by Plaintiff’s April 24,
2013 agreement to apply search terms to all ESI, followed by Plaintiff’s April 25, 2013 reversal,
and decision to file the current motion. (See Dkt. Nos. 66-1 to 66-10.) 2 Additionally, Plaintiff’s
reliance on the Model Order is insufficient where Magistrate Judge Furse declined to adopt it.
(See Dkt. Nos. 58 at 12; 66 at 4-5.) Moreover, Magistrate Judge Furse never exclusively limited
search terms to emails. (Dkt. No. 66 at 6.) 3 Most importantly, Defendant emphasizes it would
incur a disproportional cost and burden if forced to turn over general ESI without applying
search term limits. (Id. at 5-6.) Defendant’s relevant ESI spans over 1,212 computer servers,
and constitutes 1.8 terabytes of data.
After weighing Plaintiff’s need for relevant ESI with Defendant’s production burden, the
Court GRANTS Plaintiff’s motion for a scheduling order (Dkt. No. 62) with several
modifications discussed at the May 17, 2013 hearing, and proposed by both parties after the
hearing (Dkt. No. 70). To promote proportionality, the Court ORDERS the parties to apply
twenty-five preliminary search terms to all ESI, including both non-email and email. However,
to promote Plaintiff’s access to relevant ESI, the Court ORDERS Defendant to bear an ongoing
At the May 17, 2013 hearing, Plaintiff claimed it never agreed to apply search terms to nonemail ESI because it believed the term “ESI” only encompassed email. However, in an April 24,
2013 email to Defendant, Plaintiff included a proposed scheduling order that stated “[t]he parties
agree to 25 search terms to be used in search for responsive ESI. . . . The twenty-five agreed
keywords will also be used to search all non-email ESI for responsive documents.” (Dkt. No.
66-9) (emphasis added.)
At best, the March 21, 2013 initial pretrial conference transcript contains an ambiguous
discussion about search terms. (Dkt. No. 58 at 6-16.) Magistrate Judge Furse was discussing the
parties’ original scheduling motion, in which Plaintiff wanted to conduct ESI on “all relevant
databases . . . using agreed-upon key words and terms.” (Dkt. No. 49-1 at 2). Within this
context, Magistrate Judge Furse asked Plaintiff whether its desire to search “all relevant
databases . . . include[ed] email as part of that . . . .” (Dkt. No. 58 at 6.) Plaintiff responded
“[w]e would include email in that.” (Id.) The parties then discussed the search term number
limit, without specifying whether such a limit applied exclusively to emails. (Id. at 6-16.)
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and affirmative obligation to comply with Campbell Pat. R. 4A(2). The Court will issue a formal
scheduling order memorializing these requirements concurrently with this decision.
III. PLAINTIFF’S MOTION TO COMPEL
Prior to this decision, no formal scheduling order governed the case. As such, no formal
order required the parties to abide by Campbell’s Patent Rules, even though both parties
informally agreed to. Nevertheless, On March 22, 2013, Plaintiff filed this motion to compel
Defendant to: (1) produce documents required under Campbell Pat. R. 4A(2); (2) certify to
Plaintiff and the Court when it complies with this patent rule; (3) after producing the
aforementioned documents, allow Plaintiff to conduct an additional 30(b)(6) deposition under
Campbell Pat. R. 4A(4); 4 and (4) supplement responses to interrogatory Nos. 1, 2, 4, 5, and 8.
(Dkt. No. 52 at 2.)
A. Interrogatory Nos. 1, 2, 4, 5, and 8
Plaintiff moves to compel supplemental responses to these interrogatories. (Id. at 8-11.)
Defendant opposes because Plaintiff allegedly failed to meet and confer about its substantive
concerns on these specific interrogatories. (Dkt. No. 57 at 3-4.) Plaintiff contests this, and
claims the parties telephonically met and conferred on March 11, 2013. (Dkt. No. 60 at 3.)
Campbell Pat. R. 4A(4) reads:
Parties asserting patent infringement shall be presumptively entitled to take one
30(b)(6) deposition of each accused infringer on the subjects of the design,
development, sale, offer for sale, manufacture, use and functionality of Accused
Instrumentalities and the individual depositions of two persons substantively
involved in the design and development of the Accused Instrumentalities. Such
depositions shall be taken during the period from the date of service of the list of
Accused Instrumentalities and the date on which that party’s Disclosure of
Asserted Claims and Preliminary Infringement Contentions is due. The 30(b)(6)
deposition referenced in this section is intended to be directed to infringement
allegations, is preliminary in nature and is not intended to preclude the party . . .
from taking additional 30(b)(6) depositions on other topics.
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After reviewing the parties’ correspondence (Dkt. Nos. 53-3 to 53-9), the Court concludes
they failed to meet and confer about Plaintiff’s substantive concerns on these specific
interrogatories. 5 As such, the Court HOLDS IN ABEYANCE its decision on this portion of
Plaintiff’s motion to compel. (Dkt. No. 52.) It ORDERS the parties to meet and confer about
Interrogatory Nos. 1, 2, 4, 5 and 8 no later than three (3) weeks from the date of this decision. 6
B. Document Production Requests Under Campbell Pat. R. 4A(2)
Under Campbell Pat. R. 4A(2), Plaintiff moves to compel Defendant to produce additional
paper documents, and non-email ESI. (Dkt. No. 52 at 11-13.) For example, Plaintiff moves
Defendant to provide the backup data used to create two conflicting sales summaries. (Id. at 13.)
Defendant opposes because it feels it met its paper document obligation under Campbell Pat.
R. 4A(2) when it produced 10,628 paper documents. (Dkt. No. 57 at 5.) Defendant also opposes
because it never refused to provide ESI under Campbell Pat. R. 4A(2). (Id. at 6.) Rather,
Plaintiff refused to work with Defendant to develop “mutually acceptable” search terms,
custodians, and protocols for ESI. (Id. at 5-8.) Defendant also feels Plaintiff unnecessarily
moved to compel backup data where Plaintiff only recently requested backup data, and
Defendant already agreed to provide responsive paper documents, as well as ESI. (Id. at 6-8.)
The Court believes the parties’ document production problems stem from the fact that, prior
to this decision, no scheduling order defined the parties’ obligations under Campbell Pat. R.
4A(2), or defined the scope of ESI. Therefore, the Court HOLDS IN ABEYANCE this portion
The parties’ email correspondence demonstrates Plaintiff only generally mentioned it wanted
supplemental interrogatory responses. (See Dkt. Nos. 53-3 to 53-9.)
Defendant previously agreed to “revisit,” and supplement all its interrogatory responses “as
necessary . . . .” (Dkt. No. 57 at 4.) At the May 17, 2013 hearing, Defendant admitted it
compiled supplemental interrogatory responses. Nevertheless, it wanted to meet and confer with
Plaintiff to further tailor the responses to Plaintiff’s needs.
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of Plaintiff’s motion to compel. (Dkt. No. 52.) The Court ORDERS the parties to meet and
confer about their document production problems no later than three (3) weeks from the date of
C. Deposition Under Campbell Pat. R. 4A(4)
Under Campbell Pat. R. 4A(4), Plaintiff moves to compel another 30(b)(6) deposition on a
corporate representative knowledgeable about Defendant’s sales, and offers for sales. (Dkt. No.
52 at 14.) Plaintiff argues its previous deposition of Defendant’s corporate witness, Howard
Bright, proved insufficient. (Id.) He knew “virtually nothing of the specifics of [Defendant’s]
sales, did not know what information was used to create the two conflicting sales summaries and
could not explain the difference in sales figures.” (Id.)
At the May 17, 2013 hearing, Defendant elaborated that Bright pointed out errors in the
original sales summary provided to Plaintiff. This led Defendant to create a corrected sales
summary. Defendant provided Plaintiff the corrected sales summary on the day of Bright’s
deposition. Despite Bright’s involvement in creating the new sales summary, Defendant
acknowledged Bright could not answer deposition questions about the differences in the sales
Nevertheless, Defendant opposes Plaintiff’s motion to compel another deposition. (Dkt. No.
57 at 9.) Defendant claims Plaintiff’s previous deposition notice broadly requested a witness
testify “with respect to the subject matters provided for in Campbell Patent Rule” 4A(4). (Id. at
8.) Given this broadness, Plaintiff could not expect Defendant to produce a witness who could
answer “questions regarding the minutiae of its sales . . . .” (Id. at 9.) Defendant also argues
Plaintiff’s motion is unnecessary because Campbell Pat. R. 4A(4) allows additional 30(b)(6)
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The Court agrees with Defendant’s belief that Campbell Pat. R. 4A(4) contemplates
additional depositions. However, to the degree the rule contains ambiguity, the Court GRANTS
Plaintiff’s motion to compel another 30(b)(6) deposition under Campbell Pat. R. 4A(4). (Dkt.
No. 52.) Plaintiff must take this deposition no later than one (1) month after Defendant
completes its ESI production. To avoid another unsatisfactory deposition, the Court ORDERS
Plaintiff to craft a deposition notice that clearly and explicitly lists the information it seeks. For
instance, if Plaintiff wants information about the data used to create the two conflicting sales
summaries, Plaintiff should state this in the notice.
The Court also ORDERS Defendant to pay for Plaintiff’s costs associated with taking this
additional 30(b)(6) deposition. (Dkt. No. 60 at 11.) The Court recognizes that Plaintiff’s
original deposition notice could have been clearer. On the other hand, the Court harbors
concerns where Defendant provided Plaintiff the updated sales summary on the day of Bright’s
deposition without prior notice, and Bright failed to explain discrepancies in the sales summaries
even though he himself pointed them out.
For the reasons discussed above, the Court issues the following ORDERS:
The Court GRANTS in part Plaintiff’s motion for a scheduling order, with the modifications
described above. (Dkt. No. 62.)
The Court GRANTS in part and HOLDS IN ABEYANCE in part Plaintiff’s motion to
compel, as described above. (Dkt. No. 52.)
The Court ORDERS the parties to meet and confer about the portions of Plaintiff’s motion
to compel held in abeyance. The parties must meet and confer no later than three (3) weeks
from the date of this order.
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The Court ORDERS Defendant to certify to Plaintiff and the Court when it complies in full
with Campbell Pat. R. 4A(2). (Dkt. No. 52.)
Under Fed. R. Civ. P. 37(a)(5)(A)(iii), the Court DENIES Plaintiff’s motion for sanctions
related to its motion to compel. (Dkt. No. 52.) Other circumstances make an award of expenses
unjust. The lack of a formal scheduling order addressing the parties’ obligations under
Campbell’s Patent Rules, and the scope of ESI, exacerbated the parties’ genuine discovery
disagreements, and misunderstandings.
Dated this 24th day of May, 2013.
By the Court:
Dustin B. Pead
United States Magistrate Judge
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