Case 1:23-cv-00758-JLH-SRF Document 182 Filed 10/22/24 Page 1 of 10 PageID #:
`4554
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`COURT
`IN THE UNITED STATES DISTRICT
`OF DELA WARE
`FOR THE DISTRICT
`
`LTD.,
`ORCA SECURITY
`
`Plaintiff,
`
`v.
`
`WIZ, INC.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`No. 23-758-JLH-SRF
`Civil Action
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`REDACTED
`
`MEMORANDUM ORDER
`
`(D.I. 129; D.I. 147) The
`the cou1t.
`before
`disputes
`discovery
`multiple
`raised
`Both parties
`
`(D.I. 154; D.I.
`motions.
`discovery
`on the pending
`briefing
`letter
`the parties'
`comi considered
`
`9, 2024, the comi heard argument
`on October
`a videoconference
`155; D.I. 157; D.I. 158) During
`
`as follows:
`is memorialized
`bench ruling
`The court's
`from the bench.
`and made rulings
`
`ISSUES
`DEFENDANT'S
`
`1.Defendant's
`non-privileged
`documents
`to produce
`motion to compel Plaintiff
`
`The
`prejudice.
`Nos. 72 and 73 is DENIED without
`for Production
`to Request
`responsive
`
`September
`25,
`failed to comply with the court'�
`that Defendant
`before the court confirms
`record
`
`of letter
`to meet and confer prior to the commencement
`the parties
`2024 Oral Order directing
`
`(D.I. 148; D.I. 158, Ex. 1 at 2-3; 10/9/2024
`Tr.) The court ordered
`briefing.
`"that the parties
`
`and/or
`to narrow
`briefing
`ofletter
`once prior to the commencement
`at least
`shall meet and confer
`
`the disputes."
`(D.I. 148) Nonetheless,
`resolve
`own recap of the court-ordered
`meet
`Defendant's
`
`for Production
`to Request
`responses
`Plaintiffs
`regarding
`that its issues
`acknowledges
`and confer
`
`ion were "not discussed
`on the
`product
`document
`core technical
`Nos. 72 and 73 and Plaintiffs
`
`(D.I. 158, Ex. 1 at 2)
`meet and confer."
`
`

`

`Case 1:23-cv-00758-JLH-SRF Document 182 Filed 10/22/24 Page 2 of 10 PageID #:
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`2. "Full compliance with court orders is not optional. • When a court enters an order . . .
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`in the absence of modification of the order by the court, compliance is required. Thus, it [was]
`
`not only appropriate, but mandatory," that Defendant fully comply with the court's September
`
`25, 2024 Oral Order requiring another meet and confer on all of the identified issues before
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`raising them with the court in the letter briefs. Wood v. Connections Community Support
`
`Programs, Inc., C.A. No. 21-641-RGA, 2024 WL 915614, at *3 (D. Del. Mar. 4, 2024).
`
`3. The impetus for the court's September 25 Oral Order is apparent from the history of
`
`discovery in this case. During the five months since this case was initially referred to the
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`undersigned judicial officer for discovery disputes, the parties have filed five motions for a
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`discovery dispute teleconference on a total of 25 disputed issues. (D.I. 49; D.I. 95; D.I. 120; D.I.
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`129; D.I. 147) On three occasions, the court has directed the parties to reduce the number of
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`disputes. (D.I. 123; D.I. 130; D.I. 148) A breakdown of this magnitude impairs the court's
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`ability to substantively address discovery issues in an expedited fashion.
`
`4. Defendant's motion to compel Plaintiff to provide complete responses to
`
`Interrogatory Nos. 12 and 13 is GRANTED-IN-PART. For the first time in its opening letter
`
`submission, Defendant raised the issue of Plaintiff's failure to produce "a copy of the Wiz data
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`model" that was referenced in another document produced by Plaintiff. (D.I. 154 at 3) During
`
`the videoconference on October 9, 2024, Plaintiff responded that this "data model" is a java
`
`script file that is publicly available on the internet. (10/9/2024 Tr.; D.I. 158 at 1) Defendant's
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`motion is GRANTED with respect to the production of this file, to the extent that it has not
`
`already been produced. hi accordance with its agreement to do so, Plaintiff shall produce the
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`java script file on or before October 11, 2024. (10/9/2024 Ti',)
`
`2
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`

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`5. The balance of Defendant's request is DENIED without prejudice. The parties
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`engaged in a meet and confer on this issue on September 30, 2024. (D.I. 158, Ex. 1 at 2)
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`Although Defendant facially complied with the requirement to meet and confer on this issue in
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`accordance with the court's September 25 Oral Order, a closer examination of the parties'
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`correspondence suggests that the parties had not yet reached an impasse on this issue.
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`6. Plaintiff supplemented its responses to Interrogatories 12 and 13 prior to the meet
`
`and confer to resolve the deficiencies identified by Defendant. (D.I. 154, Ex. 6 at 137-39)
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`During the meet and confer, however, Defendant identified two specific deficiencies that were
`
`not previously raised. (Id., Ex. 1 at 5-6) (suggesting that Plaintiff's supplementation failed to
`
`provide a narrative response regarding whether the documents were discussed with other third
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`parties and did not confirm whether Plaintiff's employees received documents from anyone
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`besides Mr. Mini). There is no evidence that the specific issues raised by Defendant during the
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`September 30 meet and confer were discussed before the parties filed their joint motion
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`requesting a discovery conference. Instead, it appears that Defendant's complaints about the
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`sufficiency of Plaintiffs responses continued to evolve after Plaintiff supplemented those
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`responses to address the purported deficiencies and remove the issue from the court's calendar.
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`Consequently, the issue is not ripe for resolution by the court.
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`7. Defendant's motion to compel Plaintiff to produce internal technical documents
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`describing the operation of the Accused Products and Functionalities is DENIED without
`
`prejudice. Defendant's motion is denied for the same reasons stated at paragraphs 1 to 3, supra.
`
`3
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`

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`PLAINTIFF'S ISSUES
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`8. Plaintiff's motion to compel Defendant to substantially complete the production
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`of ESI documents that hit on the parties' agreed search terms is GRANTED. There is no
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`dispute that the parties reached an agreed-upon set of search terms, custodians, and time periods
`
`for ESI discovery, and the final agreed search terms resulted in about 180,000 unique hits for
`
`Plaintiff to produce and about 110,000 unique hits to be produced by Defendant. (D.I. 155 at 1)
`
`Defendant also served boilerplate objections to Plaintiff's requests for production of ESI in June
`
`of 2024. (D.I. 157, Ex. C) On the substantial completion deadline of August 30, 2024, Plaintiff
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`produced 163,000 documents and withheld the remaining 17,000 documents for a privilege
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`review. (D.I. 155 at 1) In contrast, Defendant produced only about 25,000 documents,
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`withholding most of the remaining documents as unresponsive. (1d)
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`9. The ESI Order provides that "the parties will have substantially completed
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`production of all non-privileged custodial ESI responsive to the parties' Priority Requests,
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`subject to any unresolved objections[,]" by August 30, 2024. (D.1. 71 at 6; D.I. 106) Even if the
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`court were to construe this provision broadly to support Defendant's position that documents
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`hitting on search terms can be withheld based on relevance,' relevance is broadly construed in
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`the context of discovery. Am. Bottling Co. Inc. v. Vital Pharms., Inc., C.A. No, 20-1268-TMF1,
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`2021 WL 9599683, at *1 (D. Del. Sept. 27, 2021). The fact that Defendant is withholding more
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`than seventy-five percent of the documents hitting on the parties' agreed-upon search terms
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`1 Defendant claims Plaintiff also contemplated reviewing hit counts for relevance. (DI 157 at 2)
`Specifically, Defendant cites "D.I. 155-4 at 15" and 9 as evidence that Plaintiff intended to
`engage in a review of hit counts for responsiveness. (Id.) But Exhibit 4 to D.I. 155 is five pages
`long and has no pages numbered "9" or "15." (D.I. 155, Ex. 4)
`
`4
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`

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`amounts to "specific, compelling evidence suggesting that [Defendant] is withholding responsive
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`ESI material." Doe 1 v. Baylor Univ., 2018 WL 11471253, at *2 (W.D. Tex. May 6, 2018).
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`10. Plaintiff explains that search terms combining "orca* AND" with keywords deemed
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`to be relevant to the issues in the case resulted in about 35,000 unique documents across
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`custodians, but Defendant's production includes less than 3,000 documents for that keyword
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`combination. (D.I. 155 at 2) These documents are facially relevant, satisfying Plaintiff's initial
`
`burden to establish the relevance of the requested infonnation. Int'l Bus. Machines Corp. v.
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`Zynga Inc., C.A. No. 22-590-GBW, 2024 WL 245736, at * n.1 (D. Del. Jan. 19, 2024).
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`Defendant offers no argument or examples supporting its position that documents hitting on
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`these agreed-upon search terms are not responsive. (D.I. 157 at 1-2)
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`11. Defendant relied on three cases to support its position that a unilateral relevance
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`review of documents hitting on custodial ESI search terms is "standard and appropriate." (D.1.
`
`157 at 1) The court finds these authorities are distinguishable on their facts and are therefore not
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`persuasive. In CMC Materials, LLC v. Dupont De Nemows, Inc., Judge Williams entered an
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`oral order denying the plaintiff's request to compel the defendant to turn over all search-term-
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`identified documents. C.A. No. 20-378-GBW, D.I. 191 (D. Del. Oct. 11, 2023). The court's
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`decision in CMC Materials was based on evidence that the parties "agreed to use search terms to
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``locate potentially responsive emails' and not, as [the plaintiff] contends, to turn over all results."
`
`(D.I. 157, Ex. A) The "potentially responsive" language at issue in CMC Materials is not
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`present in the parties' ESI Order in this case. D.I.(
`
`
` 71 at 6)
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`12. The two other case authorities cited by Defendant are also distinguishable. In
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`Monolithic Power Systems, Inc. v. Intersil Corporation, the court's decision to deny a motion to
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`compel the production of all non-privileged email returned by agreed-upon search terms was
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`5
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`based on a distinction drawn by the court between public and non-public information in a
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`'defamation case. C.A. No. 16-1125-LPS, 2018 WL 6077973, at *1 (D. Del. Nov. 19, 2018). No
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`similar distinction is at issue here. In Palmer v. Cognizant Technology Solutions Corporation,
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`the court declined to compel production of all non-privileged documents returned by running the
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`parties' search terms where the defendants produced over fifty percent of the documents hitting
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`on search terms. 2021 WL 3145982, at *7-9 (C.D. Cal. July 9, 2021). Specifically, the court
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`determined that the defendants had offered reasonable and persuasive explanations for the
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`number of documents produced. Id. at *9. Here, in contrast, Defendant has produced less than
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`twenty-five percent of documents hitting on search terms and has offered no explanation for
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`those statistics beyond the conclusory argument that the balance of documents are unresponsive.
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`13. Defendant also fails to address burden or proportionality as it pertains to the
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`production of all non-privileged hit counts. See Johnson v. Serenity Transportation, Inc., 2016
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`WL 6393521, at *2 (N.D. Cal. Oct. 28, 2016) ("[A]bsent a showing of burden . . . [Defendant]
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`does not have discretion to decide to withhold relevant documents."). Consequently, Plaintiff's
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`motion is GRANTED and Defendant shall complete the production on or before October 16,
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`2024.
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`14. Plaintiff's motion to compel the production of documents and communications
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`regarding the
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` is GRANTED-IN-PART. Plaintiff moves to compel the
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`production of all non-privileged documents and communications relating to
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`
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` of Defendant that are responsive to Request for Production Nos. 16 to 23, 25 to 27,
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`38, 44, 49, 57, 68, 73, 95, 135, 154 to 155, 157, and 159 to 161. (D.1. 155, Ex. 16) These
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`requests seek discovery on the potential market for the accused product, profit margins,
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`revenues, pricing, competitors, license or royalty agreements, and business plans, among other
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`6
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`

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`things. (Id., Ex. 6 at 24-36) Defendant challenges Plaintiff's request by arguing that the
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`common interest privilege protects the
`
`
`
`
`
`
`
` (D.I. 157 at 2-3) During the discovery dispute hearing, Defendant suggested that this
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`issue should be reserved until after the exchange of privilege logs in January of 2025.
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`(10/9/2024 Tr.)
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`15. In accordance with Defendant's representations on the record, Plaintiffs motion to
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`compel the production of
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` documents relating to business discussions is
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`GRANTED, and Defendant shall make its production on or before November 8, 2024. In all
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`other respects, the motion is DENIED without prejudice to renew following the production of the
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`privilege log.
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`16. Plaintiff's motion to compel the production of documents responsive to Request
`
`for Production Nos. 91, 92, 94, and 113 is DENIED without prejudice for failure to comply
`
`with the court's discovery dispute procedures. The parties in this case are, by now, well-
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`acquainted with the court's discovery dispute procedures. See ¶ 3, supra. In the Oral Order
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`setting this discovery dispute hearing, the court stated that, "[i]n preparing for this hearing the
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`parties shall follow the Discovery Matters and Disputes procedure as set forth in the Order
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`regarding discovery matters available at www.ded.uscourts.gov/judge/magistrate-judge-sherry-r-
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`fallon." (D.I. 130) Paragraph 4 of the Discovery Matters and Disputes procedure provides that,
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`"[i]f the discovery dispute relates to certain discovery requests (e.g., interrogatories or requests
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`for production of documents), then the moving party should attach those discovery requests and
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`any relevant responses as exhibits to its letter brief." Plaintiffs letter brief attaches Defendant's
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`responses to Request for Production Nos. 1 to 83 (D.I. 155, Ex. 6), Request for Production Nos.
`
`7
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`

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`95 and 96 (id, Ex. 7), and Request for Production Nos. 134 to 135 and 154 to 162 (id., Ex. 8).
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`Request for Production Nos. 91, 92, 94, and 113 are not among the exhibits to Plaintiffs letter
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`submission.
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`17. Plaintiffs motion to compel Defendant to provide a supplemental response to
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`Interrogatory No. 15 is GRANTED-IN-PART. Plaintiff argues that Defendant's four
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`supplemental responses to Interrogatory No. 15 are deficient because they fail to: (1) identify
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`employees who were exposed to Plaintiff's confidential and proprietary materials; (2) list
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`communications with third parties related to such documents; (3) describe Defendant's
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`understanding of the confidentiality and contractual protections for that information; and (4)
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`confirm the scope of Plaintiff's documents in Defendant's possession now or in the past. (D.I.
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`155 at 4) During the discovery dispute hearing, Defendant agreed to supplement its response
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`regarding the second, third, and fourth categories and agreed to engage in further discussions
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`with Plaintiff regarding a supplemental response on the first category of information. (10/9/2024
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`Tr.) Consistent with these representations, Defendant shall supplement its response to
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`Interrogatory No. 15 on or before October 23, 2024.
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`18. Conclusion. For the foregoing reasons, IT IS ORDERED that: •
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`a. Defendant's motion to compel Plaintiff to produce non-privileged documents
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`responsive to Request for Production Nos. 72 and 73 is DENIED without
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`prejudice.
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`b. Defendant's motion to compel Plaintiff to provide complete responses to
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`Interrogatory Nos. 12 and 13 is DENIED without prejudice.
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`8
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`c. Defendant's motion to compel Plaintiff to produce internal technical documents
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`describing the operation of the Accused Products and Functionalities is DENIED
`
`without prejudice.
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`d. Plaintiff's motion to compel Defendant to substantially complete the production
`
`of ESI documents that hit on the parties' agreed search terms is GRANTED.
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`Defendant shall complete the production on or before October 16, 2024.
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`e. Plaintiff's motion to compel the production of documents and communications
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`regarding the
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` is GRANTED-IN-PART. The motion is
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`GRAN l'E,D with respect to the production of
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` documents
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`reflecting business concerns, and Defendant shall make its production on or
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`before November 8, 2024. In all other respects, the motion is DENIED without
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`prejudice to renew following the production of the privilege log.
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`f. Plaintiff's motion to compel the production of documents responsive to Request
`
`for Production Nos. 91, 92, 94, and 113 is DENIED without prejudice for failure
`
`to comply with the court's discovery dispute procedures.
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`g. Plaintiff's motion to compel Defendant to provide a supplemental response to
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`Interrogatory No. 15 is GRANTED-IN-PART. In accordance with the parties'
`
`discussion during the hearing, Defendant shall supplement its response to
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`Interrogatory No. 15 on or before October 23, 2024 and the parties shall meet and
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`confer to the extent that further supplementation is requested.
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`19. Given that the court has relied upon material that technically remains under seal, the
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`court is releasing this Memorandum Order under seal, pending review by the parties. In the
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`unlikely event that the parties believe that certain material in this Memorandum Order should be
`
`9
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`Case 1:23-cv-00758-JLH-SRF Document 182 Filed 10/22/24 Page 10 of 10 PageID
`#: 4563
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`redacted, the parties shall jointly submit a proposed redacted version by no later than October
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`17, 2024, for review by the court, along with a motion supported by a declaration that includes a
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`clear, factually detailed explanation as to why disclosure of any proposed redacted material
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`would "work a clearly defined and serious injury to the party seeking closure." See In re
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`Avandia Mktg., Sales Practices & Prods. Liab. Ling., 924 F.3d 662, 672 (3d Cir. 2019) (quoting
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`Miller v. Ind. Hosp., 16 F.3d 549, 551 (3d Cir. 1994) (internal quotation marks omitted)). If the
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`parties do not file a proposed redacted version and corresponding motion, or if the court
`
`determines the motion lacks a meritorious basis, the documents will be unsealed within fourteen
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`(14) days of the date the Memorandum Order issued.
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`20. This Memorandum Order is filed pursuant to 28 U.S.C. § 636(b)(1)(A), Fed. R. Civ.
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`P. 72(a), and D. Del. LR 72.1(a)(2). The parties may serve and file specific written objections
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`within fourteen (14) days after being served with a copy of this Memorandum Order. Fed. R.
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`Civ. P. 72(a). The objections and responses to the objections are limited to four (4) pages each.
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`21. The parties are directed to the court's Standing Order For Objections Filed Under
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`Fed. R. Civ. P. 72, dated March 7, 2022, a copy of which is available on the court's website,
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`www.ded.uscourts.gov.
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`gn Sherry R. 17a11
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`United States Etgistrate Judge
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`10
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