MGP Ingredients, Inc. v. Mars, Inc., Case No. 06-2318 (D. Kan. October 15, 2007)

In this patent infringement case, plaintiff sought an order requiring defendants to identify by Bates numbers the particular documents and ESI that are responsive to each of plaintiff’s request for production. In denying the motion and finding that defendants’ production was well within the requirements of Rule 34(b), Magistrate Judge David J. Waxse was clearly taken with the efforts made by defendants to clarify their production.

The court initially found that defendants had produced their hard copy documents and ESI as they were kept in the usual course of business. Specifically, the court noted:

  • Defendants had produced – in connection with their Rule 26(a)(1) disclosures--30,000 pages of documents that were responsive to plaintiff's requests for production. The production of those documents was made electronically, in single-page .tiff format and with a "load file" that allowed plaintiff to load the production on a database with document break information, a format that defense counsel had previously discussed with plaintiff's counsel and to which plaintiff's counsel did not object.
  • The hard copy documents were collected from the custodians as they were maintained by the custodians, and were then converted into electronic form and downloaded to a CD with the appropriate document break and source information.
  • At the time defendants provided the CD to plaintiff, they also provided a list of the document custodians and the range of Bates numbers for each custodian's set of documents. Although the documents were not necessarily grouped by topics or in chronological order, each custodian's documents were produced in the manner that they existed when collected.
  • Another portion of defendants' Rule 26(a)(1) production consisted of ESI, some of which were e-mail messages. Those e-mail messages were arranged by custodian and then placed in chronological order as found in the custodian's e-mail mailbox. If an e-mail had an attachment, the attachment was provided directly behind the appropriate e-mail.
  • The remainder of the ESI produced to plaintiff, i.e., non-email ESI, was provided arranged by custodian, and further arranged by directory within the custodian's files, then by subdirectory, and then by file name.
  • Defendants later identified which files were electronically-sourced and which were hard copy-sourced.

The court then pointed to Rule 34(b):

Subsection (i) makes it very clear that the producing party must either produce the documents as they are kept in the usual course of business or organize and label them to correspond with the categories in the request. The Rule is phrased in the disjunctive, and the producing party may choose either of the two methods for producing the documents. If the producing party produces documents in the order in which they are kept in the usual course of business, the Rule imposes no duty to organize and label the documents, provide an index of the documents produced, or correlate the documents to the particular request to which they are responsive. 9

The court noted that plaintiff might have avoided the onerous task of determining which documents are responsive to which request by relying on the provision in Rule 34(b) to negotiate with the producing party and “otherwise agree” to the manner in which the documents will be produced or by approaching the court in advance and asking for an order requiring defendants to correlate Bates numbers to particular requests.

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