Defendants Granted Opportunity to Review and Object to Proposed Search Terms and Parameters Before Searches are Executed on Mirror Images of Defendants’ Hard Drives

Verigy US, Inc. v. Mayder, 2007 WL 3144577 (N.D. Cal. Oct. 24, 2007) (Not for Citation)

In this misappropriation of trade secrets case, plaintiff had been granted leave to conduct some expedited discovery prior to the court’s hearing on plaintiff’s motion for preliminary injunction.  In addition, defendants had been ordered to preserve all evidence, including all information contained on their computer hard drives.

In this order, the court resolved plaintiff’s expedited motion to compel certain defendants to produce “bit-for-bit copies (i.e., mirror images) of all hard drives.”  The parties disagreed about how such inspection and production should proceed, and submitted differing proposed discovery protocols for the court to consider.

The court noted that, for the most part, the parties’ protocols were virtually identical, and it appeared that defendants had adopted many of plaintiff’s proposed provisions verbatim.  The main point of contention was whether defendants should be permitted an opportunity to review and object to any searches that plaintiff may wish to have the third party expert conduct.  Defendants proposed a two-tier protocol which (a) would permit discovery in areas that defendants deemed presumptively relevant; and (b) would allow plaintiff to request that the expert conduct other searches, subject to an opportunity by defendant to review and object to the proposed search requests.  Defendants expressed concern that plaintiff would propound unduly burdensome or otherwise abusive searches beyond the scope of permissible discovery under Rule 26:

At the motion hearing, it was suggested, somewhat facetiously, that Verigy might attempt to request a search for all documents with the letter "A." Indeed, documents submitted on supplemental briefing indicate that Verigy apparently has previously requested a search for all documents containing the letter "V" – a request which strikes this court as being patently overbroad.

(Citation to the record omitted.)

The court rejected plaintiff’s argument that disclosure of its proposed searches would infringe any work product, and observed that plaintiff had previously provided a list of search terms and parameters to defense counsel.

After reviewing the submissions, the court adopted the protocol urged by defendants.  The court explained:

[D]efendants are not precluding plaintiff from conducting searches beyond the terms and parameters that defendants agree are presumptively relevant.  Defendants simply want an opportunity to review plaintiff’s proposed searches before the searches are executed – a request which comports with the normal conduct of discovery and which this court finds to be entirely reasonable.

Accordingly, the court adopted defendants’ proposed protocol, but modified it slightly to minimize any delays which might result from disputes over proposed search terms.  The court further admonished the parties “to proceed in good faith and to refrain from conduct designed to unnecessarily encumber or retard discovery or to impose unnecessary expense or burden on the opposing parties or the court.”