Case 4:23-cv-01147-ALM Document 46 Filed 07/31/24 Page 1 of 5 PageID #: 1493
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
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`Civil Action No. 4:23-cv-01147-ALM
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`Jury Trial Demanded
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`R2 Solutions LLC,
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` Plaintiff,
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`v.
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`Databricks, Inc.,
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` Defendant.
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`ORDER REGARDING E-DISCOVERY IN PATENT CASES
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`The Court ORDERS as follows:
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`1.
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`This Order supplements all other discovery rules and orders. It streamlines Electronically
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`Stored Information (“ESI”) production to promote a “just, speedy, and inexpensive determination”
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`of this action, as required by Federal Rule of Civil Procedure 1.
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`2.
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`This Order may be modified in the Court’s discretion or by agreement of the parties. To
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`the extent the parties cannot resolve their disagreements regarding any modifications, the parties
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`shall submit their competing proposals and a summary of their dispute.
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`3.
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`A party’s meaningful compliance with this Order and efforts to promote efficiency and
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`reduce costs will be considered in cost-shifting determinations.
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`4.
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`Absent a showing of good cause, general ESI production requests under Federal Rules of
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`Civil Procedure 34 and 45, or compliance with a disclosure requirement of this Court, shall not
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`include metadata. However, fields showing the date and time that the document was sent and
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`received, as well as the complete distribution list, shall generally be included in the production if
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`such fields exist.
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`5.
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`Absent agreement of the parties or further order of this Court, the following parameters
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`shall apply to ESI production:
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`A.
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`General Document Image Format. Each electronic document shall be produced in
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`single-page Tagged Image File Format (“TIFF”) format. For documents produced
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`as TIFF files, these files shall be single page and shall be named with a unique
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`production number followed by the appropriate file extension. Load files shall be
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`provided to indicate the location and unitization of the TIFF files. If a document is
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`more than one page, the unitization of the document and any attachments and/or
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`affixed notes shall be maintained as they existed in the original document.
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`B.
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`Text-Searchable Documents. No party has an obligation to make its production
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`text-searchable; however, if a party’s documents already exist in text-searchable
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`format independent of this litigation, or are converted to text-searchable format for
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`use in this litigation, including for use by the producing party’s counsel, then such
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`documents shall be produced in the same text-searchable format at no cost to the
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`receiving party.
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`C.
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`Footer. Each document image shall contain a footer with a sequentially ascending
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`production number.
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`D.
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`Native Files. A party that receives a document produced in a format specified above
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`may make a reasonable request to receive the document in its native format, and
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`upon receipt of such a request, the producing party shall produce the document in
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`its native format.
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`E.
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`No Backup Restoration Required. Absent a showing of good cause, no party need
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`restore any form of media upon which backup data is maintained in a party’s normal
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`or allowed processes, including but not limited to backup tapes, disks, SAN, and
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`other forms of media, to comply with its discovery obligations in the present case.
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`F.
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`Voice-mail and Mobile Devices. Absent a showing of good cause, voice-mails,
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`PDAs, mobile phones, and communications on chat services (e.g., Skype,
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`WhatsApp, iMessage, Snapchat, Facebook) are deemed not reasonably accessible
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`and need not be collected and preserved.
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`6.
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`General ESI production requests under Federal Rules of Civil Procedure 34 and 45 or
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`compliance with a mandatory disclosure ordered by this Court shall not include email or other
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`forms of electronic correspondence. Notwithstanding the foregoing, documents known to be
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`responsive to a discovery request and saved only as attachments to email or other form of electronic
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`correspondence (“electronic mail”) shall be produced as part of the producing party’s primary
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`document production.
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`7.
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`The parties will delay production of electronic mail and electronic mail documentation
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`(“secondary documents”) unless specifically required in paragraph 6. If, at such time as the
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`receiving party has reviewed the contents of the producing party’s primary document production,
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`the receiving party determines that secondary documents may be required, the receiving party may
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`indicate such determination to the producing party, and explain why the information sought is not
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`available in a less burdensome manner. Upon such determination, the producing party and
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`receiving party shall meet and confer in good faith to identify which particular documents will be
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`searched and to identify reasonable mechanisms for narrowly tailored searches of, or for, such
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`documents. A party may not request a search of secondary documents absent a showing that the
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`information sought is not available in a less burdensome manner.1 If, after the aforementioned
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`meet and confer, the parties have not been able to resolve their issue(s) pertaining to production of
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`secondary documents, the parties agree to submit to the Court for determination (i) their competing
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`positions on whether or not the information sought is available in a less burdensome manner, and
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`(ii) their respective mechanisms for narrowly tailored searches of secondary information, including
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`an identification of a specific number requests, custodians, time-frame, and search terms.
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`Notwithstanding the foregoing, if a producing party intends to rely on any secondary documents
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`from an individual, the producing party must produce all relevant secondary documents from that
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`individual that are reasonably related to the secondary documents on which the producing party
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`intends to rely.
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`8.
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`Pursuant to Federal Rule of Evidence 502(d), the inadvertent production of privileged or
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`work product protected ESI is not a waiver in the pending case or in any other federal or state
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`proceeding.
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`9.
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`Nothing in this Order shall require production of ESI, information or other material that a
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`party contends is protected from disclosure by the attorney-client privilege, the work product
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`doctrine, or other privilege, doctrine, or immunity. If ESI, information or other material subject to
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`a claim of attorney-client privilege, work product doctrine, or other privilege, doctrine, or
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`1 To the extent secondary documents are requested, the requesting party shall limit its e-
`mail production requests to a total of eight custodians per producing party, and ten search terms
`per custodian per party. The search terms shall be narrowly tailored to particular issues.
`Indiscriminate terms, such as the producing company’s name or its product name, are inappropriate
`unless combined with narrowing search criteria that sufficiently reduce the risk of overproduction.
`A conjunctive combination of multiple words or phrases (e.g., “computer” and “system”) narrows
`the search and shall count as a single search term. A disjunctive combination of multiple words or
`phrases (e.g., “computer” or “system”) broadens the search, and thus each word or phrase shall
`count as a separate search term unless they are variants of the same word. Use of narrowing search
`criteria (e.g., “and,” “but not,” “w/x”) is encouraged to limit the production and shall be considered
`when determining whether to shift costs for disproportionate discovery.
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`immunity is inadvertently or unintentionally produced, such production shall in no way prejudice
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`or otherwise constitute a waiver of, or estoppel as to, any such privilege, doctrine, or immunity.
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`Any party that inadvertently or unintentionally produces ESI, information or other material it
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`reasonably believes are protected under the attorney-client privilege, work product doctrine, or
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`other privilege, doctrine, or immunity may obtain the return of such documents, information or
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`other material by promptly notifying the recipient(s) and providing a privilege log for the
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`inadvertently or unintentionally produced ESI, information or other material. The recipient(s) shall
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`gather and return all copies of such ESI, information or other material to the producing party,
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`except for any pages containing privileged or otherwise protected markings by the recipient(s),
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`which pages shall instead be destroyed and certified as such to the producing party.
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`10.
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`The mere production of ESI in a litigation as part of a mass production shall not itself
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`constitute a waiver for any purpose.
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`11.
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`Except as expressly stated, nothing in this order affects the parties’ discovery obligations
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`under the Federal or Local Rules.
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`IT IS SO ORDERED.
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