300 GB Email Search Rejected in Ediscovery Case
Rembrandt Diagnostics, LP v. Innovacon, Inc., No. 3:16-cv-0698 CAB (NLS), 2017 U.S. Dist. LEXIS 164015 (S.D. Cal. Oct. 3, 2017).
In this patent case, the court denied the plaintiff’s motion to compel in full. The court concluded that the defendant need not conduct an expensive review of its custodians’ extensive emails where the plaintiff’s search terms were unlikely to yield relevant information.
This patent case concerned drug-testing cups that allow for quickly screening urine samples. The plaintiff, Rembrandt Diagnostics, LP (“Rembrandt”), alleged that the defendant, Innovacon, Inc. (“Innovacon”), breached the patent license agreement established between both companies’ predecessors. Innovacon argued that it did not owe royalties because the patents were invalid and because its own test cups were not infringing.
In this motion, Rembrandt moved to compel “further responses and documents” from Innovacon. In turn, Innovacon objected that the requests were disproportionate. Although the parties engaged in further meet-and-confer at the court’s behest, they were unable to resolve all of their issues.
Under Federal Rule of Civil Procedure 26, discovery encompasses “any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case.” The court pointed out that the 2015 amendments to Rule 26 sought to “impose ‘reasonable limits on discovery through increased reliance on the common-sense concept of proportionality.’” Proportionality analysis requires the court to consider six factors, including whether the requested discovery would resolve the issues and whether its expense would outweigh any expected benefit.
In the first remaining issue, Rembrandt demanded the production of 10 sample cups for each distinct cup that Innovacon sold. Instead, Innovacon limited its responses to what it deemed “representative” products. It argued that it might sell a single design under dozens of stocking numbers. The court agreed with Innovacon that producing “duplicative and irrelevant product sample, inserts, and instructions” was disproportionate and unduly burdensome.
Rembrandt also requested Innovacon’s sales contracts, evidence of its knowledge of the patents and cup comparison data. Innovacon objected that these categories of information were disproportionate as they were largely irrelevant to the asserted patent claims. For example, under the previous licensing agreement, neither party could argue that Innovacon was not aware of Rembrandt’s patents. The court agreed and denied production of these types of evidence.
The court then turned to Rembrandt’s request for production of emails from two Innovacon custodians who were “knowledgeable regarding the marketing/sales and design/use of the test cups.” Together, these two custodians had “over one million emails constituting approximately 300 gigabytes of data.” Reviewing this data would cost at least $30,000.
Innovacon objected that Rembrandt failed to target the few search terms it provided to the type of information that these custodians might have. Therefore, Innovacon argued that this search would be overly broad and unlikely to yield any relevant “marketing or development information for which these custodians were identified as knowledgeable.” Further, Innovacon pointed out that it had already agreed to produce design and marketing information that Rembrandt might seek to gain from these custodians. Innovacon argued that producing “more appropriate and less costly forms” of evidence, such as product design files, rendered the email request duplicative.
The court summarily accepted Innovacon’s argument. It found that the emails would be disproportionate. Moreover, Rembrandt could better obtain the information it sought through depositions. The court left the door open for Rembrandt to craft a narrower, targeted search based on information gathered from depositions.
Considering these and other remaining issues, the court denied the motion in full.
Takeaways on ediscovery proportionality
Carefully consider your long-term discovery strategy before making your first requests. Casting too wide a net in initial data discovery, as Rembrandt apparently did here, is unlikely to work in your favor — either in terms of the information you obtain or the opinion the court forms of you.