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Discovery Responsibilities: Separate but Not Equal

By Angela Foster, Litigation News Associate Editor – February 17, 2015


A defendant must produce relevant archived emails even though the plaintiff is unable to provide its archived emails, a magistrate judge has ordered. In a discovery dispute over archived emails, “one party’s discovery shortcomings are rarely enough to justify another’s,” the United States District Court for the Northern District of California magistrate judge opined while granting the plaintiff’s motion to compel.

In Finjan, Inc. v. Blue Coat Systems, a patent infringement case, Finjan propounded requests for technical documents and emails regarding those documents and damages. The parties agreed to produce documents from a select number of custodians using agreed upon search terms. Each custodian identified by Finjan was a current or former employee of Blue Coat whom Finjan believed had knowledge of the accused infringing technologies or sales of the accused infringing technologies. Finjan’s search terms were selected to find the custodian’s most relevant emails. Blue Coat did not dispute the relevance of the custodians or Finjan’s selected search terms.

After Blue Coat learned Finjan did not have its former employees’ emails, Blue Coat refused to produce its archived emails, stating that it should not have to produce them if Finjan could not do the same. Blue Coat also refused to produce documents, interrogatory responses, or deposition testimony regarding its foreign sales and license agreements for which the necessary consent of third parties remained outstanding. Finjan moved to compel discovery from Blue Coat.

Responses to Discovery Requests Must Be Fair
Federal Rule 26(b)(2)(iii) provides that the court must limit the frequency or extent of discovery if the burden or expense of the proposed discovery outweighs its likely benefit. While addressing Finjan’s motion to compel, the court noted that under Rule 26, in simple terms, it had to decide whether Blue Coat’s discovery responses were fair.“It is consistent with the concept of proportionality and not unreasonable to phrase the modern burden of discovery as moving towards a standard of fundamental fairness,” according to Jeffrey G. Close, Chicago, IL, cochair of the ABA Section of Litigation Pretrial Practice & Discovery Committee, who describes the court’s phrasing as interesting and perhaps novel.

Blue Coat’s responses to Finjan’s request for discovery regarding Blue Coat’s foreign sales were fair, according to the district court. Finjan had not offered any reason beyond speculation why or how Blue Coat’s foreign sales would be relevant; therefore, it would be unfair to require Blue Coat to respond as to those records.

Discovery Requests Must Also Be Reasonable
Finjan’s request for archived email was reasonable the court found, rejecting Blue Coat’s argument that it should not have to dig through legacy systems when Finjan is unable to do the same. The court ordered Blue Coat to produce all archived emails from custodians designated in Finjan’s interrogatory requests.

As for Blue Coat’s third-party license agreements, the court held that Blue Coat would reasonably be required to identify all license agreements awaiting third-party consent for production and the status of its efforts to secure that consent.

The Takeaway
“In hindsight, the defendant may have been more successful had it argued that its archived emails were not reasonably accessible because of the undue burden or cost of retrieving them and, thus, such discovery should be excused under Federal Rule 26(b)(2)(B),” opines Ian H. Fisher, Chicago, IL, cochair of the Section’s Trial Evidence Committee. “The defendant could use the plaintiff’s inability to produce its older emails as texture to emphasize the burden or cost of retrieval rather than arguing that the plaintiff’s failures should relieve the defendant of its discovery obligations,” advises Fisher.

Fisher agrees that Blue Coat had a legitimate gripe. Finjan failed to preserve older emails in violation of its preservation obligations. Specifically, “Blue Coat, however, sought an incorrect remedy. The normal remedy for spoliation is not to permit the opponent to also avoid discovery. Rather, courts focus on alleviating the prejudice of the spoliation and, especially where the spoliation was egregious, imposing sanctions, even up to barring claims,” says Fisher.

“Courts are rarely sympathetic to an argument that I should not have to produce my documents in 30 days because he is not producing his for 60 days, based solely on another party’s shortcomings,” cautions Close. “If the archived data was not reasonably accessible, the defendant’s option was to make an appropriate showing on hard evidence—not argument, not vague hand waving.”

“Courts hate discovery disputes. However, if the burden is substantial, outline the steps required to produce the discovery and all associated cost incurred in as much detail as possible,” advises James A. King, Columbus, OH, cochair of the Section’s Trial Evidence Committee. “Narrow the discovery and share the cost with your adversary,” King suggests.

Keywords: archived email, motion to compel, Fed. R. Civ. P. 37(a)(1), Fed. R. Civ. P. 26(b)(2)(B), Fed. R. Civ. P. 26(b)(2)(iii), e-discovery, third –party production, discovery cost, proportionality

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