In this patent infringement suit, the parties were unable to agree upon a written Electronically Stored Information ("ESI") protocol. Before the protocol was executed, the district court ordered the parties to comply with all scheduling orders and production deadliness regardless of whether they had agreed upon a final written agreement regarding the search and production of ESI. The parties subsequently disagreed over the scope of the document production and whether the document production was deficient.
After the district court intervened in the process of finalizing the written ESI protocol, the parties finally executed a written ESI protocol. A dispute then arose between the parties over the production of ESI according to the protocol and the plaintiff moved to compel.
The plaintiff argued that the defendant had made an "anticipatory breach" of the deadlines set forth in the scheduling order by failing to produce ESI. In response, the defendant argued that the operative ESI protocol caused "hits" on many irrelevant documents and that the protocol should be modified to include fewer search terms. In order to modify the ESI protocol, the defendant offered to randomly select a sample of documents to show what would be excluded by the modified search protocol. The plaintiff objected stating that the sampling would be inaccurate.
The district court agreed with the plaintiff, finding that the defendant had not supported its sampling methodology. "Given the lack of substantiation to show the confidence level in either of the proposed data samples, along with the burden of consulting with statisticians, determining an appropriate data sample, searching, reviewing and producing that data sample, and then negotiating any possible revisions to the ESI protocol, this court finds that [defendant] would be better served to concentrate on the review and production of documents identified through the parties' negotiated ESI protocol rather than on modifying the ESI protocol."
The district court also rejected defendant's contention that the review and production of the ESI would be unduly burdensome. The defendant asserted that the existing ESI protocol would require it to review 450,000 documents and produce the responsive documents at a cost of approximately $1 million.. The district court found that this argument did not support undue burden: "The court finds that the facts [defendant] relies upon do not speak to undue burden but rather to the fact that this is a large document case. This is not surprising, given that this is a patent case with approximately 140 asserted claims, resulting from multiple claims asserted under seven different patents. . . . While considerable, the amount of documents to be searched does not appear unreasonable given the number of claims and defenses asserted, the nature of the case, the amount in controversy and the intellectual property rights at stake in the litigation."
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The lesson here is to make sure that the agreed upon protocol for ESI is done earlier in the case and to make sure that you can live with the search terms upon which you agree. Trying to go back later to change an ESI protocol is difficult and courts are not likely to be sympathetic to arguments regarding undue burden that are raised late in the process.
Gen-Probe Inc. v. Becton Dickinson and Co., Case No. 09 CV 2319 BEN (NLS) (S.D. Cal. Aug. 25, 2011)