The personal computer is an eternal icon of the 1980s. However, few might suspect there is litigation currently pending dating back to the era of Reagan, Yuppies and Apple’s 1984 Orwellian Super Bowl commercial.
Floppy Disks: e-Discovery Echoes
Dr. Phillip M. Adams developed solutions to the FDC defect, which generated several patent lawsuits. One case had a $2.1 billion class-action settlement. See, Phillip M. Adams & Assocs. v. V., 2010 U.S. Dist. LEXIS 45576 (D. Utah May 8, 2010).
One Defendant, Winbond, brought a motion to compel Adams to:
(1) produce all documents and things that disclose or embody Adams’ asserted patents and alleged trade secrets . . . in native format, organized as they are kept on [Dr. Adams’] computer, and maintaining the metadata and file trees found on his computer;
Adams, at *16.
The two specific requests for production stated:
All documents constituting or containing source code, executable code, code portions, description of code, plans, designs, or architecture of hardware or software that Dr. Adams has either created or has in his possession, custody, or control relating to any of the ADAMS patents, ADAMS technology, or ADAMS trade secrets. All such documents, including code, must be produced in their original, native format.
Documents sufficient to show all of the directories and files related to such requests, the relationship of the directories and files within the directories, and the names and hierarchies of the directories and files, for each of Dr. Adams’ or Plaintiff’s computers containing, storing, or with information related to documents requested in Requests for Production Nos. 13 through 39 above.
Adams, at *17.
Requesting Native Files
The discovery battle included dueling emails and representations by the Defendant on what they thought the Plaintiff agreed to produce. Adams, at *19-20.
The Defendant sought the source code from the Plaintiff in native file format. The Plaintiff did not object to the discovery request and offer an alternate form of production. Adams, at *21.
Pursuant to the Federal Rules of Civil Procedure Rule 34(b)(1)(C), a party “may specify the form or forms in which electronically stored information is to be produced.” Adams, at *21.
Moreover, case law has established that where a requesting party states a form of production and there is no evidence the producing party objected to the stated form of production, the producing party must produced the ESI in the form stated. Adams, at *21, citing Lawson v. Sun Microsystems, Inc. No. 1:00-cv-0196-RLY-TAB, 2007 WL 2572170, at *5 (S.D. Ind. Sept. 4, 2007).
The Defendant specified the electronically stored information in Request 37 be produced in native file format. As such, the Plaintiff was required to produce the ESI in native file format. Adams, at *21.
Form of Production Not Specified
The Defendant’s Request for Production #40 did not state the form of production. The Court stated that if the Plaintiff had already produced the responsive discovery to Request #40, they were not required to supplement the production. Moreover, the Plaintiff could select the form of production. Adams, at *22.
However, while the Court did not state it, the Rules do not permit a producing party to degrade searchable features of ESI, such as producing native files as TIFFs or PDFs without also producing associated metadata or OCR if there were redactions on the TIFF. See generally, The Form of Production Battle of the Bulge: Scanned PDF’s Not a Reasonably Useable Form, New Bad Idea: Claiming You Can Produce ESI as PDF’s because “Native File” is “Ambiguous”, or Don’t Argue Imaginary ESI Production Problems.
Searching Computers Dating Back to the 1980s
The Defendant argued that the Plaintiff’s old computers dating back to the 1980s potentially had relevant files that had not been produced. As such, the Defendant wanted these “vintage” computers from the 1980s searched (along with everything in between). Adams, at *22.
The Plaintiff countered that searching (let alone finding) all of the computers that had been used since the late 1980s would take hundreds of hours. Adams, at *22. Moreover, the Plaintiff claimed it “used each of those computers to produce archives (backups) from which Adams made its production.” Adams, at *22.
The Courts have the power to limit discovery if the “the burden or expense of the proposed discovery outweighs its likely benefit” under Federal Rule of Civil Procedure Rule 26(b)(2)(C)(iii). Adams, at *22.
A party does not have to produce electronically stored information that is “not reasonably accessible because of undue burden or cost,” pursuant to Federal Rule of Civil Procedure Rule 26(b)(2)(B). Adams, at *23.
Burden & Benefit: Can’t Tell
The Court was not able to determine whether the burden of searching the all of the older computers outweighed its likely benefit. Adams, at *23.
The parties, not surprisingly, each reached opposite conclusions whether the producing party had sufficiently searched, archived and produced the responsive electronically stored information on the old to vintage computers. Adams, at *23-24.
The Defendant, along with some other defendants, believed the Plaintiff had not produced everything. Supporting this belief was a spreadsheet with tests results that had not been produced until another defendant brought a motion to compel. Adams, at *24. Understandably, the Defendant wanted to know if there was responsive ESI on the older computers.
Going Back in Time: Old Computer Data to be Produced
The Court required the producing party to produce an inventory of the Plaintiff’s previous computers. The purpose of the inventory was to determine if the Plaintiff’s computer archives were adequate. Moreover, the inventory would test the Defendant’s claims that the there was more responsive electronically stored information to Request for Production #37. Adams, at *24.
The Court weighed its decision against Federal Rule of Civil Procedure Rule 34(a), which allows for testing and sampling of electronically stored information. Adams, at *24. However, the Rule does not create an expressway to an opposing party’s electronic information system. Adams, at *24. This balance of producing just an inventory was likely the Court’s way of controlling costs before ordering the producing party to travel in time back to the 1980s.
The Court was specific of what was to be included in the inventory:
Computer make and model;
Storage devices and capacity of the storage devices associated with the computer;
Dates the computer was in service;
By whom it was used;
A general description of the uses of the computer;
Any archive or backup related to the computer;
A summary of the type of data on the computer; and
The current location and custodian of the computer.
Adams, at *24.
The Court also added a condition: The Defendant could select one computer if the inventory contained 10 computers, or two computers if there was more then 10 computers, and the Plaintiff would then produce the “directories and file structure contained on the selected computer(s).” Adams, at *25. If there was significant discoveries on the directors, the Defendant could then bring a motion for additional discovery. Adams, at *25.
Bow Tie Thoughts
A requesting party has significant authority to state the form of production in their request. However, the requesting party must be vigilant and make sure each request states a form of production, especially when requesting different forms of electronically stored information (ie, source code vs. emails vs. spreadsheets).
A producing party must be a production sentinel and object specifically to each request if there is an issue with producing in a specified format. A failure to object can lock the producing party into the requesting party’s form of production.
Josh Gilliland is a California attorney who focuses his practice on eDiscovery. Josh is the co-creator of The Legal Geeks, which has made the ABA Journal Top Blawg 100 Blawg from 2013 to 2016, the Web 100 from 2017 to 2018, and was nominated for Best Podcast for the 2015 Geekie Awards. Josh has presented at legal conferences and comic book conventions across the United States. He also ties a mean bow tie.