Case 3:18-cv-00347-CAB-MDD Document 198 Filed 10/07/19 PageID.18082 Page 1 of 5
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`NUVASIVE, INC.,
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`v.
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`ALPHATEC HOLDINGS, INC., and
`ALPHATEC SPINE, INC.,
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` Case No.: 18-cv-0347-CAB-MDD
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`Plaintiff,
`ORDER ON JOINT MOTION FOR
`DETERMINATION OF
`DISCOVERY DISPUTE
`REGARDING ELECTRONICALLY
`STORED INFORMATION
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`[ECF NO. 197]
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`Defendants.
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`Before the Court is the Joint Motion of the parties for determination of
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`a discovery dispute filed on September 30, 2019. (ECF No. 197). This is a
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`patent case and the joint motion presents Plaintiff’s motion to compel
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`Defendants to use certain search terms to examine the electronic files of
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`certain alleged custodians.
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`LEGAL STANDARD
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`The Federal Rules of Civil Procedure authorize parties to obtain
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`discovery of “any nonprivileged matter that is relevant to any party’s claim or
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`defense and proportional to the needs of the case....” Fed. R. Civ. P. 26(b)(1).
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`“Information within the scope of discovery need not be admissible in evidence
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`Case 3:18-cv-00347-CAB-MDD Document 198 Filed 10/07/19 PageID.18083 Page 2 of 5
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`to be discoverable.” Id. District courts have broad discretion to limit
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`discovery where the discovery sought is “unreasonably cumulative or
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`duplicative, or can be obtained from some other source that is more
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`convenient, less burdensome, or less expensive.” Fed. R. Civ. P. 26(b)(2)(C).
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`A party may request the production of any document within the scope of
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`Rule 26(b). Fed. R. Civ. P. 34(a). “For each item or category, the response
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`must either state that inspection and related activities will be permitted as
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`requested or state an objection to the request, including the reasons.” Rule
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`34(b)(2)(B). If the responding party chooses to produce responsive
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`information, rather than allow for inspection, the production must be
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`completed no later than the time specified in the request or another
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`reasonable time specified in the response. Id. An objection must state
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`whether any responsive materials are being withheld on the basis of that
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`objection. Rule 34(b)(2)(C). An objection to part of a request must specify the
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`part and permit inspection or production of the rest. Id. The responding
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`party is responsible for all items in “the responding party’s possession,
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`custody, or control.” Rule 34(a)(1). Actual possession, custody or control is
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`not required. Rather, “[a] party may be ordered to produce a document in the
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`possession of a non-party entity if that party has a legal right to obtain the
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`document or has control over the entity who is in possession of the
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`document.” Soto v. City of Concord, 162 F.R.D. 603, 620 (N.D. Cal. 1995).
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`DISCUSSION
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`This dispute is grounded in the general agreement of the parties to
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`generally follow the Model Order Governing Discovery of Electronically
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`Stored Information in Patent Cases appended to Patent Local Rules of the
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`Case 3:18-cv-00347-CAB-MDD Document 198 Filed 10/07/19 PageID.18084 Page 3 of 5
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`Court. (See ECF No. 197 at 9).1 As noted previously by the Court in another
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`discovery dispute in this case, neither the Model ESI Order, nor any order
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`governing production of ESI was filed in this case. (See ECF No. 134 at 3-4).
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`Consequently, it is only the admittedly “general agreement” of the parties to
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`follow the Model ESI Order that may be subject to enforcement by the Court.
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`The Model ESI Order is flawed as it pertains to production of electronic
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`mail, the very dispute presented here. If proposed by the parties, this Court
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`would not have endorsed it. The structure of the Model ESI Order is
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`inconsistent with Rule 34, Fed. R. Civ. P., and inconsistent with the learned
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`views expressed in the Sedona Principles. The Model ESI Order requires the
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`requesting party to identify custodians and search terms. Model ESI Order ¶
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`10. The requesting party is limited to identifying five custodians and five
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`search terms per custodian. Id. ¶¶ 11-12. Consequently, in this case, the
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`dispute boils down to mostly unintelligible search terms like this requested
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`by Plaintiff for each custodian:
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`design w/5 ((compet! or replac! or substitut! or alternativ! or
`conver! or copy or copie! or mimic! or imitat! or patent! or invent!
`or !infring! or !valid! or !enforce!) and (lateral! or LLIF or
`Battalion or Squadron)).
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`(ECF No. 197-9 at 3-4).
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`Rule 34, Fed. R. Civ. P., governs request for production of documents. It
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`does not differentiate between information stored on paper or on an electronic
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`medium. It requires the requesting party to request “information.” Rule
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`34(a)(1). The producing party must produce the requested information or
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`object to the request. Rule 34(b)(2)(B). Electronically stored information is
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`1 The Court will refer to page numbers supplied by CM/ECF rather than original
`pagination throughout.
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`Case 3:18-cv-00347-CAB-MDD Document 198 Filed 10/07/19 PageID.18085 Page 4 of 5
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`addressed in the Rule to the extent that a party may object to the requested
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`form of production of electronically stored information. Rule 34(b)(2)(D) and
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`provides a default for the form of production. Rule 34(b)(2)(E). Unlike the
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`Model ESI Order, nothing in Rule 34 requires a requesting party to identify
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`custodians or search terms. The Model ESI Order, in that respect, is
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`contrary to the ordinary progress of civil discovery in the federal courts.
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`In an earlier Order in this case, the Court advised the parties that this
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`Court subscribes to the view expressed in Principle No. 6 of the Sedona
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`Principles:
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`Responding parties are best situated to evaluate the procedures,
`methodologies, and technologies appropriate for preserving and
`producing their own electronically stored information.
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`The Sedona Principles, Third Edition, 19 SEDONA CONF. J. 1, Principle 6,
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`118 (2018). The Court also advised the parties that it subscribes to Principles
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`1 and 3 which provide that electronic discovery is generally subject to the
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`same discovery requirements as other relevant information and that the
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`parties should seek to reach agreement regarding production of electronically
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`stored information. Id. at 56, 71; (ECF No. 134 at 3).
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`The Model ESI Order is inconsistent with these principles. Moreover,
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`the world of electronic discovery has moved well beyond search terms. While
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`search terms have their place, they may not be suited to all productions.
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`Technology has advanced and software tools have developed to the point
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`where search terms are disfavored in many cases. See, e.g., da Silva Moore v.
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`Publicis Groupe, 287 F.R.D. 182, 189-91 (S.D.N.Y. 2012). The Model ESI
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`Order, in its reliance on search terms, is obsolete.
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`The Court will not decide whether the proposed custodians are
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`appropriate nor on the use of the requested search terms. Instead, Plaintiff
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`Case 3:18-cv-00347-CAB-MDD Document 198 Filed 10/07/19 PageID.18086 Page 5 of 5
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`must request information, regardless of how or where it is maintained by
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`Defendants, which Defendants must address as required by Rule 34. That is
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`discovery: a party requests information and the burden is on the producing
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`party to locate and produce it or object legitimately to production. The
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`instant motion is DENIED.
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`CONCLUSION
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`As presented in this Joint Motion, Plaintiff’s motion to compel
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`Defendants to search the electronic files of identified custodians using search
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`terms proposed by Plaintiff is DENIED. The Court will not enforce the
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`parties’ general agreement to follow the Model ESI Order.
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`IT IS SO ORDERED:
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`Dated: October 7, 2019
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