8/9/2019 E-Discovery Mot to Compel - Granted 3-23

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cal

1 08cv1512

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA

MEDTRONIC SOFAMOR DANEK USA,INC., et al.,

Plaintiff,v.

NUVASIVE, INC., et al.,

Defendants.

))))))))))

Civil No.08cv1512 MMA (AJB)

Order Granting Motion to Compel[Doc. No. 131]

The Defendants filed a motion to compel production of emails from Plaintiffs backup tapes for

the period from May 13, 2003 until early 2007 for 10 custodians that contain one or more agreed upon

search terms. The Plaintiff has opposed the production of the emails from backup tapes on the grounds

that the requested production would impose an undue burden, cost and delay on the Plaintiff because the

backup tapes are not reasonably accessible and the Defendants have not met their burden and

demonstrated good cause.

Relevant Background

The Plaintiff, Medtronic, maintains two systems for archiving its e-mail. The first e-mail archive

system is known as an electronic vault, the second is backup tape. The electronic vault is essentially a

computer server. Recovery of custodian e-mail from the vault does not require restoration of tape. The

custodians files can be identified on the vault server and decompressed using standard e-mail software

such as Microsoft Outlook. Medtronic began using its vault system during the period of April to August

of 2007. Medtronics vault system contains e-mail sent or received by each user after that e-mail has

8/9/2019 E-Discovery Mot to Compel - Granted 3-23

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become more than 30 days old. If the e-mail is deleted before becoming 30 days old, it is not captured

by the vault because the vault does not archive any deleted files. Once e-mail is archived to the vault

system, it is not deleted. At the time the vault system was implemented, Medtronic did delete from its

system e-mail that was more than 180 days old. As such, for example, if a custodians e-mail accountwas migrated to the vault in June 2007, the vault would contain the custodians non-deleted e-mail from

the period of January 2007 to 30 days short of the present date.

Medtronics tape backup system has been in place since approximately 1993 and is now used in

parallel with its vault system. During the relevant time, Medtronic created daily backup tapes of its

users e-mail sent and received files, but not deleted files. Each days back-up consists of a number of

300 GB capacity tapes, roughly 5-6 tapes depending upon the date of the backup. Due to a weekly

180-day auto-purge implemented prior to 2002 and deactivated in 2007, Medtronics back-up tapes only

capture about 180 days of e-mail prior to the date of back-up. Hence, capturing the mid-2003 to

early-2007 time frame would require restoration of back-up tapes for just over two dates per year, or 8-9

dates total, each consisting of roughly 5-6 tapes, for a total of approximately 40-54 back-up tapes.

Medtronic estimates the cost to search for, identify, catalog, and sequence the approximately 50 tapes,

restore the relevant data on these tapes, incur the outside vendor expense of hosting the restored data,

de-duplicate and filter the data by the agreed-upon custodians and search terms, conduct a manual

review of the search results for relevance and responsiveness, and subsequently process and produce the

responsive and non-privileged documents at $250,000.

Discussion

Defendants motion seeks to compel the Plaintiffs to produce emails and attachments thereto

from backup tapes sent or received during the period from May 13, 2003 to early 2007 for 10 custodians

containing one or more agreed upon search terms. The Plaintiffs contend that the requested information

is contained on back-up tapes which are not reasonably accessible.

Pursuant to amended Rule 26(b)(2)(B):

[a] party need not provide discovery of electronically stored informationfrom sources that the party identifies as not reasonably accessible becauseof undue burden or cost. On motion to compel discovery or for aprotective order, the party from whom discovery is sought must show thatthe information is not reasonably accessible because of undue burden orcost. If that showing is made, the court may nonetheless order discovery

8/9/2019 E-Discovery Mot to Compel - Granted 3-23

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281 It is also noteworthy that the Plaintiff was ordered in Michelson case during the 2001 to 2005

time period, which involved two of the nine patents at issue in this case, to restore and produced emailsfrom at least 124 back-up tapes.

3 08cv1512

from such sources if the requesting party shows good cause, consideringthe limitations of Rule 26(b)(2)(C). The court may specify conditions forthe discovery.

Therefore, the burden of establishing that the information is not reasonably accessible because of

undue burden or cost is on the party responding to the discovery request. The Plaintiff sets forth threeseparate arguments that their back-up tapes are inaccessible. First, the Plaintiffs argue that back-up

tapes are presumed to be inaccessible. Second, the Plaintiffs argue that their back-up tapes are actually

inaccessible because they were created only for data recovery in the event of a catastrophic server

failure. Plaintiffs third argument states that restoration of the back-up tapes is estimated to cost as

much as $250,000, however, this cost estimate includes not only the cost to search for, identify, catalog,

sequence, restore and host the restored data, de-duplicate and filter the data by the agreed-upon

custodians and search terms, it also includes the cost of conducting a manual review of the search results

for relevance and responsiveness, and subsequently process and produce the responsive and

non-privileged.

As a preliminary matter, the Court rejects any argument that back-up tapes are per se

inaccessible, as such determinations must be made on a case by case basis. Furthermore, the Court is not

moved by the Plaintiffs arguments that restoration of the back-up tapes would be unduly burdensome.1

The Plaintiff has offered little evidence beyond a cost estimate and conclusory characterizations of their

back-up tapes as inaccessible and has not demonstrated an unusual hardship beyond that which

ordinarily accompanies the discovery process. The Plaintiff has not provided the Court with details

regarding the actual number of back-up tapes to be searched and has made no effort to investigate the

off site storage facility to ascertain this information for the purposes of this motion. Additionally, the

Plaintiffs include in their cost estimate the manual review of the data for relevance and responsiveness,

when such manual review is considerably more costly and time consuming than performing the same

electronically. While the Plaintiffs are free to choose the more time consuming and costly method, it is

their choice and cannot be used to buttress either their claims of undue burden and cost or any request to

shift costs.

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Assuming that the Plaintiff were able to establish that the approximately 50 back-up tapes were

not reasonably accessible, which they have not, the Defendants would still be entitled to production

upon a showing of good cause. Fed. R. Civ. P. 26(b)(2)(B). The advisory committee identifies seven

non-exhaustive factors that can be considered in a good cause analysis under Rule 26(b)(2)(C):(1) the specificity of the discovery request; (2) the quantity of informationavailable from other and more easily accessed sources; (3) the failure toproduce relevant information that seems likely to have existed but is nolonger available on more easily accessed sources; (4) the likelihood offinding relevant, responsive information that cannot be obtained fromother, more easily accessed sources; (5) predictions as to the importanceand usefulness of the further information; (6) the importance of the issuesat stake in the litigation; and (7) the parties resources. AdvisoryCommittee Notes to 2006 Amendment of Fed. R. Civ. P. 26; see alsoZubulake, 217 F.R.D. at 322 (providing its own seven factor test, prior tothe 2006 enactment of Fed. R. Civ. P. 26(b)(2)(B)).

The Court finds that the specificity of the requests and their relevance are not at issue since the

parties have previously reached agreement on these issues. The Court finds that the requested discovery

is neither unreasonably cumulative or duplicative nor outweighed by its likely benefit within the

meaning of Federal Rule of Civil Procedure 26(b)(2)(C). The Plaintiff initiated this litigation and has

not moved for a protective order under Rule 26(c) with regard to the production at issue. The amount

in controversy in the instant litigation is significant, as this case involves claims of infringement of nine

patents. Based upon the foregoing, the Court finds that the Plaintiff has not met its burden of

demonstrating that the requested ESI is "not reasonably accessible because of undue burden or cost."

See Fed. R. Civ. P. 26(b)(2)(B).

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2 The Court has discretion in determining whether to shift the costs of discovery. SeeOppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 358, 98 S. Ct. 2380, 57 L. Ed.2d 253 (1978) (stating,in dicta, that district courts may, in their discretion, condition discovery on the requesting party'spayment of costs); 8 Charles Alan Wright, Arthur R. Miller & Richard L. Marcus, Federal Practice andProcedure, 2038 (2d ed.1994) (stating that the court may order the party seeking discovery to pay theexpenses caused thereby though it is not required to do so) (citations omitted).

5K:\COMMON\BATTAGLI\CASES\MEDTRONIC\08cv1512.Order.MTC.wpd 08cv1512

Conclusion

For the reasons set forth above, Defendants motion to compel is hereby GRANTED. Plaintiffs

request to shift costs is hereby DENIED.2 The Plaintiff shall immediately initiate the restoration and

processing of the relevant back-up tapes and the parties shall meet and confer to establish an agreeabletimetable for production.

IT IS SO ORDERED.

DATED: March 19, 2010

Hon. Anthony J. BattagliaU.S. Magistrate Judge

United States District Court