A Northern District of California magistrate judge held that third parties subject to a subpoena must participate in transparent and collaborative discovery. In the patent infringement case, Apple Inc. v. Samsung Electronics Co. Ltd, No. 12-cv-0630, Apple moved to compel third-party Google Inc. to produce a list of the search terms and custodians that Google had used in responding to Apple’s subpoenaed requests for production. Google withdrew its initial objection based on waiver of the work-product immunity doctrine; the court speculated that this was because there was no legal support for its position. Google then objected because, as a third party, such transparency about its discovery methods would be “extraordinary”; it would be unduly burdensome as it could lead to further production requests.
The court cited the reasoning in DeGeer v. Gillis, 755 F. Supp. 2d 909 (N.D. Ill. 2010) to reject Google’s argument. Faced with a similar set of circumstances, the court in DeGeer ordered the third party to produce the search terms and custodians because it was necessary to have an open, transparent discovery process, but also noted that the requesting party must cooperate and collaborate in selecting search terms and custodians. Following this rationale, the court in Apple also ordered Google to produce the search terms and custodians and ordered Google and Apple to meet and confer to discuss the lists and resolve any remaining disputes regarding Google’s production.