Case 3:20-cv-05784-ZNQ-DEA Document 203 Filed 12/29/23 Page 1 of 8 PageID: 7011
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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
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`OANDA CORPORATION
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`: Civil Action No. 20-5784 (ZNQ)(DEA)
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`Plaintiff,
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`v.
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`GAIN CAPITAL HOLDINGS, INC. et al,
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`Defendants.
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`MEMORANDUM ORDER
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`THIS MATTER comes before the Court on OANDA Corporation’s (“Plaintiff”) Motion
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`to Compel Production of Data from GAIN’s JIRA System. ECF No. 173. Defendants oppose the
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`Motion. ECF No. 178. The Court decides this Motion without oral argument pursuant to Federal
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`Rule of Civil Procedure 78 and Local Civil Rule 78.1. For the reasons below, the Court DENIES
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`Plaintiff’s Motion.
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`I. Background and Procedural History
`The parties are familiar with the history of the case and the facts pertaining to the present
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`Motion. As such, the Court will not recite them at length. On April 19, 2021, OANDA (“Plaintiff”)
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`filed an Amended Complaint alleging that its competitor GAIN’s foreign exchange trading
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`technologies infringe two of Plaintiff’s patents, U.S. Patents No. 7,146,336 (the ʼ336 Patent) and
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`No. 8,392,311 (the ʼ311 Patent) (collectively the “Patents”). ECF No 58. These patents claim
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`systems and methods for online currency trading that improve upon prior art online currency
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`trading. Specifically, the Amended Complaint alleged Defendants have infringed one or more
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`claims of the Patents by making, using, selling, offering for sale, or selling products and/or services
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`that meet each of the limitations of one or more claims of the Patents. Id. at 21-22.
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`1
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`Case 3:20-cv-05784-ZNQ-DEA Document 203 Filed 12/29/23 Page 2 of 8 PageID: 7012
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`Plaintiff filed the present Motion to Compel on May 10, 2023, seeking the production of
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`data from JIRA, an issue tracking and project management software employed by GAIN during
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`the relevant period. ECF No. 173. Specifically, Plaintiff seeks data from JIRA because “JIRA is
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`the software tool GAIN has used to track when particular versions of the accused products were
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`deployed or retired,” and “JIRA thus contains material technical information, including
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`information relevant to understanding the design and function of GAIN’s accused products, as
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`well as when particular versions of the software were deployed.” Id. at 4.
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`Defendants argue the Motion should summarily be denied, for several reasons. ECF No.
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`178 at 8. Background provided by Defendants covers that 1) JIRA is simply a third party tracking
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`and management software, and not used to “conduct substantive work,” thus, “source code and
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`technical documents are stored elsewhere” and likely have already been produced by GAIN; 2)
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`JIRA is used by departments across GAIN and this will contain confidential customer, employee,
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`and privileged material; 3) GAIN has spent time and resources looking into alternative means to
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`produce JIRA materials, identifying ONNA, a third party software to assist with OANDA’s request
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`for production in a specific manner; and 4) Plaintiff refuses to bear the costs associated with using
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`ONNA (~$14,500). Id. at 9-13.
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`II. Argument
`A. Legal Standards
`“A party seeking discovery may move for an order compelling. . . production, or
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`inspection.” The motion can be made where “a party fails to produce documents.” Fed. R. Civ. P.
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`37(a)(3)(B)(iv). The Third Circuit has previously upheld a denial of a Motion to Compel Discovery
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`where the party moving to compel “never forwarded interrogatories, nor a request for production
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`of documents” to the adverse party and thus, “pursuant to Rule 37, the prerequisite for compelling
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`2
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`Case 3:20-cv-05784-ZNQ-DEA Document 203 Filed 12/29/23 Page 3 of 8 PageID: 7013
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`discovery was never fulfilled.” Petrucelli v. Bohringer & Ratzinger, 46 F.3d 1298, 1311 (3d Cir.
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`1995).
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`Parties may obtain electronically stored information (“ESI”) that is relevant, non-
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`privileged, and reasonably accessible, subject to discovery limitations set out in Rule 26(b)(2)(C).
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`Fed. R. Civ. P. 26(b)(1); (b)(2)(B)-(C). Where it is shown that the source of ESI is not reasonably
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`accessible, “[t]he decision whether to require a responding party to search for and produce
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`information that is not reasonably accessible depends not only on the burdens and costs of doing
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`so, but also on whether those burdens and costs can be justified in the circumstances of the case.”
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`Advisory Committee Notes to Fed.R.Civ.P. 26(b)(2)(B), 2006 Amendment. Factors to consider in
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`such circumstances are:
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`(1) the specificity of the discovery request; (2) the quantity of information available
`from other and more easily accessed sources; (3) the failure to produce relevant
`information that seems likely to have existed but is no longer available on more
`easily accessed sources; (4) the likelihood of finding relevant, responsive
`information that cannot be obtained from other, more easily accessed sources; (5)
`predictions as to the importance and usefulness of further information; (6) the
`importance of the issues at stake in the litigation; and (7) the parties' resources.
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`Id. The requesting party bears the burden of showing that its “need for the discovery outweighs
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`the burdens and costs of locating, retrieving, and producing the information.” Id. The responding
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`party bears the burden of “whether the identified sources are not reasonably accessible in light of
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`the burdens and costs required to search for, retrieve, and produce whatever responsive information
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`may be found.” Id.
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`Rule 34 governs the production of ESI. Under Rule 34(b), “[u]nless otherwise stipulated
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`or ordered by the court, these procedures apply to producing documents or electronically stored
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`information:”
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`(i) A party must produce documents as they are kept in the usual course of business
`or must organize and label them to correspond to the categories in the request;
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`(ii) If a request does not specify a form for producing electronically stored
`information, a party must produce it in a form or forms in which it is ordinarily
`maintained or in a reasonably usable form or forms; and
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`(iii) A party need not produce the same electronically stored information in more
`than one form.
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`Fed. R. Civ. P. 34(b)(2)(E); Peterson v. Matlock, 2014 WL 5475236, at *1 (D.N.J. Oct. 29, 2014).
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`In multiple instances, this District has “declined to permit requests for additional,
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`voluminous productions of discovery where
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`it
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`found
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`the discovery would be
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`cumulative, burdensome, and/or expensive.” Lincoln Adventures, LLC v. Those Certain
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`Underwriters at Lloyd's London Members of Syndicates, 2020 WL 13158012, at *10 (D.N.J.
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`Oct. 14, 2020) (collecting cases).
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`B. RFP Nos. 4, 33-35, 37-38
`The Court is inclined to deny the Motion at the outset because Plaintiff failed to make a
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`formal and specific discovery request for JIRA materials before filing the present Motion. See
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`Petrucelli v. Bohringer & Ratzinger, 46 F.3d 1298, 1311 (3d Cir. 1995). The Court will examine
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`the RFPs identified by Plaintiff that it purports JIRA materials are responsive to.
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`RFP No. 4 sought “[d]ocuments sufficient to show the design, function, and operation” of
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`each version of the accused products. Plaintiff does not appear to argue that GAIN did not provide
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`such documents. Rather, Plaintiff takes issue that the response “did not include any data from
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`JIRA.” ECF No. 173 at 6. The Court agrees with Defendants that Plaintiff’s issue with this RFP is
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`that “GAIN did not satisfy its production obligations in the exact manner [Plaintiff] desired.” ECF
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`No. 178 at 16.
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`RFP No. 33 sought “[a]ll computer files including but not limited to the following: source
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`code, object code, compiled executables, build scripts, deployment scripts, server configuration
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`files, or other electronic information presently in use in the compiling, assembling, building,
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`deployment, or provision of the accused products or any portion thereof, whether for use internally
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`or by GAIN’s customers, including but not limited to direct customer end users or white label
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`customers.” Based on Defendants description of JIRA, as a task list type tracking tool, the Court
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`is not convinced that JIRA materials would be responsive to RFP No. 33. With no explanation
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`from Plaintiff demonstrating otherwise, there is no basis for compelling Defendants to produce
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`JIRA materials in response to this RFP.
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`RFP No. 34 sought “[a]ll documents identifying the source code (or source code
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`repositories) used to implement any aspect of the accused products.” RFP No. 35 sought the same
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`but for the date range of May 10, 2014 and present. Defendants objected to these requests because
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`they were duplicative of RFP No. 29 and even if JIRA materials were responsive, such materials
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`would have been “entirely cumulative” of documents already provided. Defendants argue
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`“searching JIRA for even more would be duplicative, unduly burdensome, and disproportionate to
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`the needs of the case.” ECF No. 178 at 17.
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`RFP No. 37 sought “[a]ll documents or communications supporting or refuting your
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`allegation that ‘GAIN has not infringed, and does not infringe, directly or indirectly, any valid and
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`enforceable claim of the ’336 Patent.” RFP No. 38 sought the same but for claim of the ‘311 Patent.
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`Defendants argue “[a]s GAIN does not currently intend to rely on the JIRA Materials for its
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`contentions and, thus, the JIRA Materials are not responsive to RFP Nos. 37 and 38.” Id.
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`C. Relevance of JIRA Materials
`Plaintiff’s further “evidence” that relevant or non-cumulative documents exist within JIRA
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`falls flat. First, upon review of Mr. Leach’s testimony, the Court is unable to identify where Mr.
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`Leach represents that relevant documents exist within JIRA. Second, regarding “other documents
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`produced by GAIN,” Plaintiff again fails to show examples of such documents that could
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`demonstrate context or relevance. To Defendants’ point, because JIRA is used as a project
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`management tool and task list it is likely that JIRA would be mentioned in other produced
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`documents or repositories. ECF No. 178 at 18. However, the mention of JIRA in such documents
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`would not automatically make all of JIRA materials relevant, nor would they be “non-cumulative.”
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`Id. Third, if there ever was indication or implication by GAIN that relevant documents exist in
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`JIRA, Defendants have since cleared that up in their opposition to this Motion.
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`“The notion that a document production is insufficient based on belief that documents must
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`exist simply is not enough to grant a motion to compel[.]” Ford Motor Co. v. Edgewood Props.,
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`257 F.R.D. 418, 428 (D.N.J. 2009).
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`D. Accessibility of JIRA Materials in Manner Sought
`The Court is satisfied that Plaintiff’s demand that JIRA be produced in a specific manner
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`is indeed a manner that is not reasonably accessible. Specifically, Defendants argue “[w]hile the
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`text of JIRA tickets can be searched by keyword, all of JIRA cannot be searched as the search
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`functionality does not search attachments and it does not keep related ‘tickets’ together unless each
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`use the searched-for word.” ECF No. 178 at 21. Defendants note that the information on JIRA as
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`accessed in the ordinary course of business is not how Plaintiff seeks to access or use the
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`information on JIRA. Id. In other Districts, courts have held that information which would
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`otherwise be accessible if retained in a manner that it cannot be meaningfully searched, renders
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`the information not reasonably accessible. See, e.g., W.E. Aubuchon Co. v. BeneFirst, LLC, 245
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`F.R.D. 38, 43 (D. Mass. 2007) (holding that, even though the sought materials were in an
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`“accessible format[,]” “because of BeneFirst’s method of storage and lack of an indexing system,
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`it will be extremely costly to retrieve the requested data. . . . Accordingly, the images are not
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`reasonably accessible within the meaning of Fed. R. Civ. P. 26(b)(2)(B).”); Dilley v. Metro. Life
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`Ins. Co., 256 F.R.D. 643, 645 (N.D. Cal. 2009) (materials not reasonably accessible where
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`“MetLife has no ability to query its electronic database in a manner that would capture such
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`information”). Additionally, in other Districts, courts have also held that the necessary
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`transformation of information from one medium to another, for relevant materials, renders those
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`materials not reasonably accessible. See, e.g., Rebman v. Follet Higher Educ. Grp., Inc., 2007 WL
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`1303031, at *3 (M.D. Fla. May 3, 2007) (“Thompson avers that it would be necessary to create a
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`special software program to capture the information requested by Plaintiffs and translate the
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`information into a meaningful and readable format. Thompson’s declaration is sufficient to support
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`Follett’s objection to the requests in this category as unduly burdensome and overbroad.”); Capitol
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`Recs., Inc. v. MP3tunes, LLC, 261 F.R.D. 44, 51-52 (S.D.N.Y. 2009) (materials not reasonably
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`accessible where responding party “host[ed] no ediscovery software on their servers and
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`apparently are unable to conduct centralized email searches of groups of users without
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`downloading them to a separate file and relying on the services of an outside vendor.”).
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`Plaintiff argues that Zubulake is instructive and delineates a tier list of ESI ranging from
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`most to least inaccessible. ECF No. 173 at 15-16. This is true; however, Plaintiff misses key nuance
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`highlighted by Defendants. In Zubulake, the court identified emails that were either accessible or
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`inaccessible. Zubulake v. UBS Warburg LLC, 217 F.R.D. 309, 320. (S.D.N.Y. 2003). Specifically,
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`the court took care to outline while some emails were able to be produced cheaply and quickly,
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`some emails would have forced the responding party to “engage in the costly and time-consuming
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`process detailed above.” Id. As such, even though JIRA materials are searchable, “only limited
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`text fields can be exported without resort to a ‘costly and time consuming process’” according to
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`Defendants. ECF No. 178 at 23.
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`Defendants explain that GAIN employees do not and cannot utilize JIRA in the manner
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`articulated by Plaintiff through this Motion. Id. at 23-25.
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`The Court is unconvinced by Plaintiff’s line of argument citing to the production of JIRA
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`systems and materials in other cases as proof that the JIRA materials sought here are reasonably
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`accessible. As Defendants outline, 1) the cases cited by Plaintiff do not contain an analysis of
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`reasonable accessibility, 2) the cases simply note that JIRA materials were produced in other cases,
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`and 3) Plaintiff “presupposes, without any basis to do so, that GAIN’s JIRA systems are
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`maintained in exactly the same way as those in its cited cases.” Id. at 24.
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`E. Good Cause
`Because Plaintiff neglected to brief on good cause, the Court will forego this analysis as
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`the Court has sufficient grounds to decide the Motion.
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`III. Conclusion and Order
`For the reasons herein, Plaintiff’s Motion to Compel Production of Data from GAIN’s
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`JIRA System [ECF No. 173] is DENIED.
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`--This Order terminates ECF Nos. 173.
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`/s/ Douglas E. Arpert
`DOUGLAS E. ARPERT
`United States Magistrate Judge
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