“[U]nder Rule 26(c), the appropriateness of protective relief from 2 discovery depends upon a balancing of the litigation needs of the discovering party and 3 any countervailing protectable interests of the party from whom discovery is sought.”
How later courts described this case
- “[U]nder Rule 26(c), the appropriateness of protective relief from 2 discovery depends upon a balancing of the litigation needs of the discovering party and 3 any countervailing protectable interests of the party from whom discovery is sought.”
Written by the judges who cited it.
The opinion
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8 UNITED STATES DISTRICT COURT
9 SOUTHERN DISTRICT OF CALIFORNIA
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11 IMPACT ENGINE, INC., Case No.: 3:19-cv-01301-CAB-BGS
12 Plaintiff,
ORDER ON JOINT SUBMISSION
13 v. RE [PROPOSED] ORDER
GOVERNING DISCOVERY OF
14 GOOGLE LLC,
ELECTRONICALLY STORED
15 Defendant. INFORMATION
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[ECF NO. 54]
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18 Before the Court is the Joint Submission Regarding (Proposed) Order Governing
19 Discovery of Electronically Stored Information. (ECF No. 54). In this joint submission,
20 the parties raised two discovery disputes regarding the preservation of electronically
21 stored information (“ESI”) and ESI search protocol.
22 DISCUSSION
23 I. Preservation of Instant Messenger and/or Chat Applications
24 This dispute arose from the parties’ Rule 26(f) conference. It was presented in
25 their Joint Submission Regarding (Proposed) Order Governing Discovery of
26 Electronically Stored Information. (ECF No. 54). Impact Engine, Inc., (“Impact”),
27 wants the Court to order Google LLC, (“Google”) to preserve ESI from instant
28 messaging and/or chat applications that employees used during the scope of their work
1 related to the Accused Products. (ECF No. 54 at 2). Impact argues that Google should
2 be required to preserve this information because instant messaging and/or chat
3 applications are likely to contain relevant information since it is a common method for
4 employees to communicate. (ECF No. 54 at 2; ECF No. 54-1 at 6, ¶ 15(a)(ii)). On the
5 other hand, Google wants this Court to order that such ESI discovery does not need to be
6 preserved because the burden of preserving them is not proportional to the needs of the
7 case, since it is unlikely to contain relevant information that would not otherwise be
8 included in email. (ECF No. 54 at 5; ECF No. 54-1 at 9, ¶¶ 19(a)–(b)(iii)).
9 Impact requests this Court to enter a preservation order. (ECF No. 54 at 2).
10 Federal Rule of Civil Procedure 26(f) requires the parties to discuss preservation issues,
11 but the requirement that the parties discuss preservation does not imply that courts should
12 routinely enter preservation orders. “A preservation order entered over objections should
13 be narrowly tailored.” Fed. R. Civ. P. 26(f) advisory committee’s note to 2006
14 amendment. “Ex parte preservation orders should issue only in exceptional
15 circumstances.” Id.
16 Google in effect is asking the Court to grant a protective order. See Pippins v.
17 KPMG LLP, No. 11 CIV. 0377 CM JLC, 2011 WL 4701849, at *4–5 (S.D.N.Y. Oct. 7,
18 2011); aff’d 2012 WL 370321 (S.D.N.Y. Feb. 3, 2012). Federal Rule of Civil Procedure
19 26(c) authorizes a federal court to issue a protective order “for good cause . . . to protect a
20 party or person from annoyance, embarrassment, oppression, or undue burden or
21 expense.” The party seeking a protective order pursuant to Rule 26(c) bears the burden to
22 establish the existence of good cause necessitating the order. See Gambale v. Deutsche
23 Bank AG, 377 F.3d 133, 142 (2d Cir. 2004). “Good cause exists when a party seeking the
24 protective order can articulate ‘a clearly defined, specific and serious injury’ that will
25 result in the absence of the order.” See Pippins, 2011 WL 4701849, at *4 (citation
26 omitted). “Although the party seeking the protective order bears the burden of
27 establishing good cause, the court must weigh the interests of both parties in considering
28 the necessity and scope of the order.” Id. (citing Mitchell v. Fishbein, 227 F.R.D. 239,
1 245 (S.D.N.Y. 2005) (“[U]nder Rule 26(c), the appropriateness of protective relief from
2 discovery depends upon a balancing of the litigation needs of the discovering party and
3 any countervailing protectable interests of the party from whom discovery is sought.”).
4 By presenting this dispute in their Proposed ESI Order, both parties have failed to
5 follow this Court’s chambers rules regarding the procedure for discovery disputes, which
6 is what this dispute is. See Judge Skomal’s Chambers’ Rule V. The Court has not
7 authorized the parties to bring what appears to be a joint motion for either a preservation
8 order or a protective order. Notwithstanding, neither party has adequately addressed the
9 merits of their respective motions. Therefore, the Court DENIES both Parties’ motions
10 without prejudice.1
11 II. Parties’ Dispute over ESI Search Protocol
12 The parties have also not followed this Court’s procedure for bringing discovery
13 disputes with regards to ESI search protocol. See Judge Skomal’s Chambers’ Rule V.
14 Since this dispute regards ESI, it is a discovery dispute. Notwithstanding, the parties’
15 disagreement is centered around the number of custodians for email and non-email ESI
16 searches, and the number of search terms per custodian. (ECF No. 54). Within this
17 disagreement, the parties compared their ESI Order with this District’s Model Order and
18 the Model Order Governing Discovery of ESI. (ECF No. 54 at 3–8). On March 2, 2020,
19 the Model Order for ESI and the Model Order Governing Discovery of ESI were deleted
20 from the Patent Local Rules. S.D.C.A. General Order 727. Therefore, those orders no
21 longer control ESI in this District.
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25 1 The duty to preserve begins when a party reasonably should have known that the evidence is relevant
to anticipated litigation. See In re Napster, 462 F.Supp.2d 1060, 1067 (N.D. Cal. 2006); see also Wm. T.
26 Thompson Co. v. General Nutrition Corp., Inc., 593 F.Supp. 1443, 1455 (C.D. Cal. 1984) (“While a
litigant is under no duty to keep or retain every document in its possession once a complaint is filed, it is
27 under a duty to preserve what it knows, or reasonably should know, is relevant in the action, is
reasonably calculated to lead to the discovery of admissible evidence, is reasonably likely to be
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1 Federal Rule of Civil Procedure 34, which governs requests for the production of
2 documents, does not differentiate between information stored on paper or on an
3 electronic medium. It requires the requesting party to request “information.” Fed. R.
4 Civ. P. 34(a)(1). The producing party must produce the requested information or object
5 to the request. Fed. R. Civ. P. 34(b)(2)(B). Federal Rule of Civil Procedure 34 addresses
6 electronically stored information to the extent that a party may object to the requested
7 form of production of electronically stored information and provides a default for the
8 form of production. Fed. R. Civ. P. 34(b)(2)(D); Fed. R. Civ. P. 34(b)(2)(E). Unlike the
9 Model Order for ESI, nothing in Rule 34 requires a requesting party to identify
10 custodians or search terms. The Model Order for ESI, in that respect, was contrary to the
11 ordinary progress of civil discovery in the federal courts.
12 The parties are best situated to evaluate the procedures, methodologies, and
13 technologies appropriate for preserving and producing their own electronically stored
14 information. The parties should seek to reach agreement regarding production of
15 electronically stored information. Moreover, the world of electronic discovery has
16 moved well beyond search terms. While search terms have their place, they may not be
17 suited to all productions. Search terms are now disfavored in many cases due to the rapid
18 advancement of technology and software tools, rendering the ESI Model Order’s reliance
19 on search terms obsolete. Order on Joint Motion for Determination of Discovery Dispute
20 Regarding ESI at 4, Nuvasive, Inc. v. Alphatec Holdings, Inc., et al., No. 18-cv-0347
21 (S.D. Cal. Argued Oct. 7, 2019) (No. 198); See also Moore v. Publicis Groupe, 287
22 F.R.D. 182, 189–91 (S.D.N.Y. 2012).
23 Therefore, this Court will not decide the number of custodians that are appropriate
24 in this case, nor the number of search terms per custodian. Instead, the Plaintiff must
25 request information, regardless of how or where it is maintained by Defendants, which
26 Defendants must address as required by Rule 34, and vice versa. That is discovery: a
27 party requests information and the burden is on the producing party to locate and produce
28 it or object legitimately to production.
1 The parties are free to modify their Proposed ESI Order as they see fit. To the
2 || extent they cannot resolve this dispute, this Court’s order then controls. In the future all
3 || discovery disputes are governed by the Chambers Rules, and the parties are expected to
4 || follow them.
5 IT IS SO ORDERED.
6 || Dated: April 21, 2020 7 2 p / /
on. Bernard G. Skomal
8 United States Magistrate Judge
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