Lifenet Health v. Lifecell Corporation
Filing
130
ORDER re: 46 Motion to Compel; & 74 Motion to Compel. For the reasons stated on the record and elaborated herein, the Court GRANTED the Motions in Part. Docs. 46, 74. All answers and productions are clue within ten (10) days of the date of the hearing. Signed by District Judge Henry C. Morgan, Jr on 8/14/14 and filed 8/19/14. Copies distributed to all parties 8/19/14. (ldab, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
Norfolk Division
LIFENET HEALTH,
Plaintiff,
v.
Civil Action No. 2:13cv486
LIFECELL CORPORATION,
Defendant.
OPINION AND ORDER
This matter is before the Court on Defendant LifeCell Corp.'s ("Defendant" or "LifeCell")
Motion to Compel Full and Complete Discovery Responses, Doc. 46, and Plaintiff LifeNet
Health's ("Plaintiff or "LifeNet") Motion to Compel Full and Complete Discovery Responses,
Doc. 74. The Court conducted a hearing via teleconference on August 7,2014. Ruling from the
bench, the Court GRANTED the Motions in PART, and now issues this Opinion and Order
explaining its reasoning.
I.
Factual Background & Procedural History
On September 6, 2013, Plaintiff filed a one-count Complaint, alleging that Defendant has
infringed U.S. Patent No. 6,569,200 ("the '200 Patent"). Doc. 1. Essentially, Plaintiff is alleging
that two of Defendant's products, AlloDerm RTM Ready to Use and Strattice Reconstructive
Tissue Matrix, infringe certain claims in the '200 Patent.
Id fflf 24-30.
Defendant filed its
Answer on November 22,2013, denying it has infringed the '200 Patent, and additionally asserted
the affirmative defenses of non-infringement, invalidity, laches, failure to mark, limitations on
damages, prosecution history estoppel, patent exhaustion/implied license, and "other affirmative
defenses."
Doc. 12.
On March 27, 2014, the Court entered its Rule 16(b) Scheduling Order. Doc. 29. The
Court entered its claim construction order on July 16, 2014. Doc. 123. Plaintiffs discovery is
due to be completed on August 25, 2014, and Defendant's is due by September 22. Doc. 29 at 2.
The first expert reports were due on August 4, 2014. Id. at 1. Rebuttal expert reports are due on
September 4. Id
a.
Defendant's Motion
Defendant served its first set of interrogatories on February 28, 2014.
Doc. 48-4.
Plaintiff served its preliminary objections on March 17, and answered the interrogatories on April
18. Doc. 48-6. Plaintiff supplemented its responses on April 28. Doc. 48-7.
On April 2,2014, Defendant served its second set of interrogatories. Doc. 48-8. Plaintiff
objected to these on April 17. Doc. 48-9.
production on March 20. Doc. 48-10.
Defendant served its second set of requests for
Plaintiff objected to the request on April 4. Doc. 48-11.
This discovery dispute centers around Plaintiffs alleged refusal to respond to some of these
interrogatories and requests for production. Plaintiff has filed general and specific objections to
the interrogatories, but has also provided limited responses. Defendant seeks more complete
answers from Plaintiff, or in the case of Interrogatory 1, to "lock-in" Plaintiffs response date. The
disputed interrogatories and request for production are reproduced below.
A. Interrogatory 1: For each claim of the Asserted Patent, describe in detail the
alleged conception and reduction to practice of the claimed invention, including
but not limited to the date(s) that you contend the conception and reduction to
practice occurred, the persons involved, the contributions of each such person,
and all documents and things supporting LifeNet's contentions as to conception
and reduction to practice.
B. Interrogatory 4: Describe in detail, separately for each asserted claim of the
Asserted Patent, all facts concerning any alleged secondary consideration of
nonobviousness that LifeNet contends applies to the claim, including but not
limited to any alleged commercial success, long-felt need, failure of others,
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commercial acquiescence, unexpected results, skepticism, copying, or praise, and
including for each allegedly applicable secondary consideration an identification
of the documents that LifeNet alleges support its contention and the persons most
knowledgeable about the facts supporting the contention.
C. Interrogatory 5: Identify all products made, used, sold, offered for sale or
imported by, or under license from, LifeNet and/or any prior exclusive licensee or
owner of the Asserted Patent that you contend are covered by or practice one or
more claims of the Asserted Patent, including when such product was first made,
used, sold or offered for sale in the United States, and describe in detail,
separately for each limitation of each asserted claim, how each such product is
covered by or practices such claim.
D. Interrogatory 6: For each product that LifeNet, or any licensee of LifeNet,
marks or has marked with the Asserted Patent, identify the date on which
marking began and the claims of the Asserted Patent that allegedly cover the
product, and provide a chart describing in detail for each such claim, separately
for each limitation of the claim, how the accused product or method allegedly
meets each claim limitation, the documents and things that you contend support
LifeNet's allegation that the limitation is met, and the names of all individuals
who were involved in the decision to mark the products.
E. Interrogatory 19: To the extent that LifeNet contends that the claims of the '200
Patent arc not invalid as anticipated under 35 U.S.C. § 102, invalid as obvious
under 35 U.S.C. § 103, or invalid for failure to comply with one or more
requirements of 35 U.S.C. § 112, for reasons set forth in LifeCell's Invalidity
Contentions, state in detail the full factual basis for LifeNet's contentions
separately to as to each asserted claim of the '200 patent. As to each prior art
reference or combination of prior art references that LifeCell has asserted
anticipates or renders obvious the claims, the response should identify every
claim limitation that LifeNet contends is not disclosed or satisfied by the reference
or combination of references and explain the reasons why LifeNet contends it is
not disclosed or satisfied, and explain any reasons why LifeNet contends that a
combination of references would not have rendered the claims obvious to a
person of ordinary skill in the art at the time of the alleged invention.
F. Request for Production 75: Five (5) pristine, unopened samples of each product
that LifeNet marks or has marked with the Asserted Patent, complete with
original packaging and accompanying documents of the commercial product.
For products currently sold by LifeNet, the samples must be suitable for medical
use and commercial sale in the United States, with a remaining shelf life of at least
one year.
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b.
Plaintiffs Motion
Plaintiff served its first set of interrogatories on March 6, 2014. Doc. 76-2. Defendant
served its objections to these interrogatories on March 24. Doc. 76-3. Defendant served its
responses to the interrogatories on April 18.
Doc. 76-8.
Defendant served supplemental
responses on May 30." Doc. 78.
Plaintiff served its first set of requests for production on March 6, 2014.
Doc. 76-7.
Defendant served its objections to these requests on March 24. Doc. 76-14.
This discovery dispute centers around Defendant's alleged refusal to respond to certain
interrogatories and requests for production. Defendant has filed general and specific objections
to the interrogatories, but in some instances has also provided limited responses. Plaintiff seeks
more complete answers or more complete document production.
While Defendant's Motion
addressed specific interrogatories and requests for production, Plaintiffs Motion was organized by
topics as opposed to specific interrogatories and requests for production.3 The topics that
Plaintiff seeks discovery on are:
1) Potentially infringing products
2) LifeCell-KCI due diligence documents
3) LifeCell's ESI obligations
Doc. 75 at 2.
II.
Legal Standards
The scope of discovery is broad, allowing parties to obtain "discovery regarding any
nonprivileged matter that is relevant to any party's claim or defense[.]" Fed. R. Civ. P. 26(b)(1).
1 While Plaintiffs Motion contained a large amount of material that wassealed, the Court is able to address the Motion
in this Opinion and Order without revealing any sealed material.
2This document was filed under seal upon Plaintiffs Motion and the stipulated Protective Order entered in this case.
Doc. 104.
3 Plaintiff did provide the Court with copies of its interrogatories and requests for production, and they are reproduced
throughout this Opinion and Order as appropriate.
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The discovery needs to be "reasonably calculated to lead to the discovery of admissible evidence."
Id. When responding to interrogatories, a party may answer by supplying business records. Fed.
R. Civ. P. 33(d).
A party seeking discovery may move the Court to compel answers to
interrogatories and to produce items if the non-moving party fails to respond. ]d 37(a)(3)(B).
An incomplete answer to an interrogatory is treated the same as a non-answer for purposes of a
motion to compel. Id 37(a)(4). However, prior to filing a motion to compel, the parties must
meet and confer to attempt to resolve the dispute without the intervention of the Court. Id.
37(a)( 1). Generally, "the burden of proof is with the party objecting to the discovery to establish
that the challenged production should not be permitted." Singletarv v. Sterling Transport Co..
289 F.R.D. 237, 241 (E.D. Va. 2012).
III.
Analysis
The Court first considered Defendant's Motion, as it was filed first in time, and the
proceeded to consider Plaintiffs Motion.4
a.
Defendant's Motion
i. Interrogatory 1
Defendant argued that Plaintiff should be bound by the date of conception and reduction to
practice contained in Plaintiffs initial response (June 30, 1998) because this information has been
in LifeNet's possession for years.5 Doc. 47 at 9. Plaintiff argued that it requires third-party
discovery to give a full and complete answer to this interrogatory because Federal Circuit case law
states that conception is the "'formation in the mind of the inventor[] of a definite and permanent
4The parties were able to resolve some of the disputes through an additional meet and confer prior to the hearing.
Thus, only the issues still at dispute were considered by the Court.
5 Plaintiff later supplemented to change its answer to this Interrogatory to March 1998.
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idea of the complete and operative invention.'"
Doc. 66 at 12 (quoting Hvbritech Inc. v.
Monoclonal Antibodies. Inc.. 802 F.2d 1367, 1376 (Fed. Cir. 1986)). Plaintiff stated that it will
supplement its answer as it progresses through discovery. Id. Defendant countered, however,
that Plaintiff has not taken any steps to begin this third-party discovery, and that even though the
living inventors no longer work for LifeNet, counsel for Plaintiff is representing one of the
inventors.
Doc. 68 at 6-7.
Defendants did not cite a single case in support of their arguments.6 Plaintiffs first
response was clearly lacking in that it provided minimal information.
However, in its
supplemental responses, Plaintiff has provided an estimated date, stated that it needs to conduct
third-party discovery, and stated that it will supplement its response once such discovery is
completed. See Donahav v. Palm Beach Tours & Transp.. Inc.. 242 F.R.D. 685, 688 (S.D. Fla.
2007) (holding that if a party does not have the records necessary to respond to an interrogatory, it
must state as such in its response). Plaintiff has time to complete discovery per the Court's Rule
16(b) Order, and is bound to supplement its answer as it discovers new information. Fed. R. Civ.
P. 26(e). Accordingly, the Court DENIED Defendant's Motion seeking to lock-in the June 30,
1998 date.
ii. Interrogatories 5 & 6
Interrogatories 5 and 6 relate to claim charts that LifeCell seeks detailing how LifeNet's.
own products practice the claims of the '200 patent, as well as which products are marked by the
'200 patent. Doc. 47 at 17. Defendant argued that they are relevant to the areas of pre-suit
damages as well as to secondary considerations of non-obviousness.
Id. at 18.
Plaintiff
6 Theonecasethey did cite,Abbott Labs, v. Lupin Ltd.. Civil Action No. 09-152, 2011 WL 1897322, at *5 (D. Del.
May 19, 2011), addressed a supplementation filed sixteen weeks after the close of fact discovery.
was filed before the close of discovery.
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Here, the motion
countered that there is no legal support for Defendant's position that Plaintiff must supply claim
charts for Plaintiffs own products. Doc. 66 at 25.
Both parties argued that Lakewood Eng'g & Mfg. Co. v. Lasko Prods.. Inc.. No.
Ol-C-7867, 2003 WL 1220254 (N.D. 111. Mar. 14, 2003), supports their position. In Lakewood.
the defendant served interrogatories requesting "Lakewood identify where each element of each
claim of its patent is found on each of its products" and asking "Lakewood explain how each of its
products correspond to each element of each claim of its patent." id. at *5. While the defendant
argued the request was "necessary to determine claim construction, validity and damages and
whether Lakewood is entitled to lost profits," the Court concluded "that Lakewood need not
perform a detailed mapping or infringement analysis of its own fan products to prove that its own
fan products are covered by the patent, as such an endeavor is irrelevant to Lakewood's
infringement case against Lasko." Id Plaintiff argues this case forecloses Defendant's request,
while Defendant argues that unlike in Lakewood. the discovery is relevant for pre-suit damages.
A sister court in the Fourth Circuit has required a plaintiff to provide claim charts if it
wishes to use its own products to claim certain damages. See Volumterics Med. Imaging. L.L.C.
v. Toshiba Am. Med. Svs.. Inc.. No. I:05cv955, 2011 WL 2600718, at *5 (M.D.N.C. June 29,
2011) ("[I]f VMI intends to offer any evidence at trial regarding an embodiment of any of the
patents-in-suit by a VMI machine, then VMI must identify each version ofeach VMI machine that
VMI contends incorporated any claimed inventions, and provide an identification and description
in a claim chart (including references to applicable productions numbers of VMI's production or
attach the documents, or in some way make identification of such documents clear and accessible)
of how and where each patent claim limitation is found in each such version of the VMI
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machine."). When the plaintiff failed to provide the necessary charts, the court precluded plaintiff
from arguing that its products practice the claims of the patent. Id. at *9.
If the plaintiff, however, "unequivocally state[s] that it is not relying on the assertion that
its own apparatus, product, device, process, method, act, or other instrumentality practices any of
the claimed inventions," interrogatories like defendant's are usually deemed to be overbroad.
Samsung SDI Co.. Ltd. v. Matsushita Elec. Indus. Co.. Ltd.. Civ. Action No. 05-1680, 2006 WL
5097356, at *1 (W.D. Pa. Oct. 11, 2006) (internal quotation marks omitted). There is no such
disavowal here, and thus the information is relevant.
Therefore, the Court GRANTED the
Motion to Compel more complete answers to Interrogatories 5 & 6.
iii. Interrogatories 4 & 19
In these interrogatories, Defendant is seeking to discover Plaintiffs position on the '200
Patent's validity or invalidity.
Regarding Interrogatory 4, Defendant argued that Plaintiffs
responses to this Interrogatory are incomplete and deficient. Defendant noted that the response
includes "at least," and furthermore, that it "has provided no explanation at all as to why it believes
each of the secondary considerations it identifies are relevant or what facts would support them."
Doc. 47 at 10. Plaintiff argued that it has identified individuals that have relevant information,
informed Defendant it will supplement its response further as necessary, a proper response
requires discovery yet to be produced by Defendant, and this part of the Motion would usurp the
Court's scheduling order.
Doc. 66 at 13-14.
In Interrogatory 19, Defendant asks the Court to require Plaintiff to respond to its invalidity
contentions. Plaintiff again argued, however, that this interrogatory is an improper attempt to
invalidate the Court's scheduling order. Doc. 66 at 18. Plaintiff believes that it should not have
to respond to this interrogatory prior to the timetable for expert reports contained in the scheduling
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order. Id Plaintiff also argued that the invalidity contentions are not specific enough. Id. at 19.
Plaintiff further argued that the contentions were based on a hypothetical claim construction,
although this is now moot with the entry of the Court's Markman Order. Defendant argued,
however, that such contentions are a routine part of patent litigation, and noted that Plaintiff has
already stated that it will respond to them in its answer to the Interrogatory. Doc. 68 at 12.
Both parties cite caselaw from other jurisdictions in support of their arguments, as there is
a split of authority on this issue. In Bonutti Skeletal Innovations LLC v. Linvatec Corp.. No.
6:12cvl379, 2014 WL 186123, at *4 (M.D. Fla. Jan. 16, 2014), the court found that a similar
interrogatory was "premature, oppressive and overbroad" prior to the disclosure of expert
opinions. See also Monsanto Co. v. E.I. Du Pont De Nemours and Co., No. 4:09cv686,2012 WL
27936, at *2 (E.D. Mo. Jan. 5, 2012) (finding that invalidity contentions are contention
interrogatories that do not need to be fully answered until discovery is near completion); IP
Innovation L.L.C. v. Sharp Corp.. 219 F.R.D. 427,429-30 (N.D. 111. 2003) (finding that plaintiff
was not entitled to compel defendant to provide its invalidity defenses until its expert reports were
due).
However, in Gardner v. Toyota Motor Corp.. No. C08-0632, 2009 WL 8732016, at *1
(W.D. Was. May 6,2009), the court found a similar interrogatory to be proper. See also Quantum
Lovaltv Svs.. Inc. v. TPG Rewards. Inc.. Civil Action No. 09-022, 2012 WL 726842, at *2-3 (D.
Del. Mar. 6, 2012) (requiring patentee to identify each patent limitation not found in prior art
identified by defendant); Duhn Oil Tool. Inc. v. Cooper Cameron Corp., No. I:05cv01411, 2010
WL 716306, at *3 (E.D. Cal. Mar. 2, 2010) (requiring a patentee to respond to invalidity
contentions when defendant is asserting an invalidity defense); Transamerica Life Ins. Co. v.
Lincoln Nat. Life Ins. Co.. No. C06-0110, 2007 WL 2790355, at *6 (N.D. Iowa Sep. 24, 2007)
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(finding that nothing in the scheduling order "prohibits discovery on invalidity issues prior to the
submission of the prior art statement.").
The Court agrees with the decisions finding these types of interrogatories should be
answered prior to the close of discovery. The Federal Rules of Civil Procedure gives the Court
the discretion to allow the party to respond to these interrogatories at the close of discovery. Fed.
R. Civ. P. 33(a)(2). However, in the interests ofjudicial economy, and to potentially narrow the
scope of the disputed issues, the Court ORDERED Plaintiff to respond to these interrogatories.
They are relevant to the issues in the case, and the scheduling order does not preclude an earlier
response.
Therefore, the Court GRANTED the Motion to Compel answers to these
interrogatories.
iv. Request for Production 75
Because the Court ordered Plaintiff to answer Interrogatory 5, Defendant informed the
Court that it no longer required samples of Plaintiffs product for testing. Thus, the Court
DENIED the Motion to Compel production as MOOT.
b. Plaintiff s Motion
i. Information Regarding Additional Products
Plaintiff moved the Court to compel Defendants to provide information regarding
potentially infringing products not identified in the Complaint. Defendant argued, however, that
Plaintiff was engaging in an impermissible fishing expedition.
"Plaintiffs are not entitled to discovery that is only relevant to unaccused products or
claims that have been dismissed from a case."
Apotex. Inc. v. Mvlan Pharms.. Inc.. No.
12-60704-CIV, 2013 WL 8184264, at *4 (S.D. Fla. June 4, 2013) (citing Micro Motion. Inc. v.
Kane Steel Co.. 894 F.2d 1318, 1327 (Fed. Cir. 1990)). Thus, discovery can be used "to assist a
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party to prove a claim it reasonably believes to be viable without discovery, not to find out if it has
any basis for a claim." Micro Motion, 894 F.2d at 1327. Just because "the discovery might
uncover evidence showing that a plaintiff has a legitimate claim does not justify the discovery
request." id.
However, if the discovery designed at unaccused products is also relevant to
accused products, than it is generally permissible. Apotex, 2013 WL 8184262, at *4.
Thus, the critical link is the nexus of any unidentified products with the patent at issue,
which concerns soft tissue grafts.
The definitions at issue seeking unidentified products are
limited to soft tissue products.7 Accordingly, the Court GRANTED Plaintiffs Motion to Compel
more complete responses applicable to unidentified products.
ii. Due Diligence Documents
Plaintiffs Request for Production 34 asks for:
All documents, electronically stored information, and things LifeCell exchanged in due
diligence with any Person that was a Third Party at the time of the exchange from 2006 to
the present.
Defendant lodged numerous objections to this request. Plaintiff argued that the information
leadingup to LifeCell's 2008 acquisitionby KCI is relevanton the topics of "LifeCell's finances at
the time, technical issues, market analyses, and information regarding patents." Doc. 75 at 26.
Defendant argued that the request is overbroad, seeking documents notjust from KCI, but
any third-party, and requests any due diligence documents, and is not just limited to the KCI
acquisition. Doc. 99 at 17. However, at the hearing, Plaintiff stated it was limiting its request to
7 LifeNet interrogatories defined "Ready to Use Soft Tissue Product" as "any soft tissue product composed of,
including, or derived from livingtissue that is intended for implantation into a human andcan be stored at room
temperature." Doc. 76-2 at 3. "LifeCell Ready to Use Soft Tissue Product" is defined as "any Ready to Use Soft
Tissue Product or component thereof, made (in whole or part), used, sold, offered for sale, promoted, marketed or
publicized by or for LifeCell in the United States, or imported by or for LifeCell in the United States, including but not
limited to Strattice Reconstructive Tissue Matrix ("Strattice") and Alloderm RTM Ready to Use ("AlloDerm RTU").
Id. These definitions closely track the properties of the accused productsthemselves, as the Court considered many
of these technical details in preparing its Markman Order.
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"documents that were created as part of the due diligence process for that transaction that were
created by the defendant LifeCell, by the acquiring company, KCI, or by any third parties that
either of them had retained as part of the due diligence process that went into that transaction."
Doc. 127 at 30.
There is no doubt that the documents requested could provide relevant information, as it
could reflect the financial success of the products or whether there were any foreseeable disputes
concerning intellectual property. See Millennium Mktg. Grp.. Ltd. v. Simonton Bldg. Prods.,
Inc.. No. 08-2198-JWL-DJW, 2009 WL 2407723, at *11 (D. Kan. Aug. 4, 2009) (granting motion
to compel requestfor production seeking "Mergerdocumentsthat relate to the Am-Rad Flash-Free
Technology.").
However, Defendant's arguments concerning privilege and work product objections are
well founded, but it is unclear how they would apply to any specific document without knowing
more about the documents, as LifeCell to date has not produced any documents responsive to this
request. At least onecourt has held thattransactional due diligence documents were protected by
the attorney-client privilege. Louisiana Mun. Police Emps. Ret. Svs. v. Sealed Air Corp., 253
F.R.D. 300, 308 (D.N.J. 2008). Thus, the Court GRANTED the Motion, but reserved ruling on
any privilege issues until they arise during the course of the production of documents, and the
Court has an opportunity to review any assertion of privilege.
Furthermore, the Court
ORDERED Defendant to clarify the corporate relationship between KCI and Defendant in
answering the relevant interrogatories and responding to the requests for production.
8 While Defendant wasoriginally a wholly-owned subsidiary of KCI, it is now apparently a sister corporation.
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iii. ESI Obligations
Finally, Plaintiff moved the Court to compel Defendant to provide more responsive ESI
discovery, alleging that Defendant has been deficient in producing e-mails in accordance with the
Court's ESI Order.
Plaintiff noted that fewer than 600 e-mails have been produced by Defendant.
Doc. 75 at 11. Defendant later agreed to search for "LifeNet" within five words of Plaintiffs three
products. Jd. at 12. Defendant argued, however, that it has complied with the ESI Order, that
Plaintiff delayed in raising objections to Defendant's ESI production, and has failed to respond to
the above-stated compromise offer.
Doc. 99 at 19-24.
The terms ofthe ESI Order are clear. Each party was to identify six custodians most likely
to have responsive ESI, and identify six proposed search terms for each custodian, by April 11.
Doc. 39 at 3.
The parties were to meet and confer seven days upon the exchange of proposed
custodians and terms to discuss any issues. Id The Order was clear that "[i]ndiscriminate terms,
such as the producing company's name or its product name, are inappropriate unless combined
with narcowing search criteria that sufficiently reduce the risk of overproduction." Id. at 4.
Substantial completion of ESI obligations was to be completed by May 22. hi
Defendant timely submitted its proposed custodians and proposed search terms. The
custodians were identified in responsive intenogatories as persons likely to have discoverable
information. Plaintiffs suggestion that LifeCell be required to run a search for simply "LifeNet"
runs afoul of the clear language of the ESI Order. However, the Court also recognized that
producing only 600 e-mails does appear to be a deficient response. Accordingly, the Court
DENIED the Motion to Compel more ESI at this time, and ORDERED that the parties continue
to meet and confer to address a more appropriate scope of search terms and custodians for
Defendant to utilize.
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IV.
Conclusion
For the reasons stated on the record and elaborated herein, the Court GRANTED the
Motions in Part. Docs. 46, 74. All answers and productions are clue within ten (10) days of the
date of the hearing.
The Clerk is REQUESTED to deliver a copy of this Order to all counsel of record.
It is so ORDERED.
M
Henry Coke Morgan, Jr.
Senior United States District Judge
HENRY COKE MORGAN. JR.
VUL
W
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