“The time to tap flexibility and creativity is during meet and confer, not after.” – Court Quashes Subpoena, Declines to Allow Plaintiff to Accept Prior Offer for Production

Boston Scientific Corp. v. Lee, No. 5:14-mc-80188-BLF-PSG, 2014 WL 3851157 (N.D. Cal. Aug. 4, 2014)

This case illustrates a recurring problem in all civil discovery, especially in intellectual property cases. A party demands the sun, moon and stars in a document request or interrogatory, refusing to give even a little bit. The meet and confer required by a court in advance of a motion is perfunctory at best, with no compromise whatsoever. But when the parties appear before the court, the recalcitrant party possesses newfound flexibility and a willingness to compromise. Think Eddie Haskell singing the Beaver’s praises to June Cleaver, only moments after giving him the business in private. Having considered the arguments, the court GRANTS Nevro’s motion to quash.

Boston Scientific Corp., 2014 WL 3851157, at *1.

In this case, the court addressed plaintiff’s subpoena seeking the production of a complete forensic image of two laptops utilized by the defendant, a former employee of the plaintiff, during his employment with plaintiff’s competitor, who the defendant began working for soon after resigning his position with the plaintiff. 

Shortly after the defendant was served with process in this case, his new employer, a non-party, segregated defendant’s first work-issued laptop in the hands of a third party e-discovery vendor and also produced to the plaintiff “forensic information about the contents of the first laptop in the form of file listing reports, which disclose extensive metadata of the files contained on the laptop, USB reports, and web browsing history reports.”  When pressed by the plaintiff, the third party also offered “to have an independent vendor review a full forensic image of the first laptop to search for pertinent information, including a review of any deleted files,” but the plaintiff refused. 

Because defendant’s employer had segregated his first laptop, it issued him a second.  Both the first and second laptops issued by the employer were utilized by the defendant in the course of his work and contained communications between the defendant and counsel.  The second laptop had also previously been used by an employee “who handled some of the Nevro’s most sensitive and confidential issues, and regularly communicated with in-house and outside counsel about legal matters.”

Thereafter, plaintiff issued a subpoena demanding “a complete forensic image of each” laptop.  The new employer moved to quash, arguing that the demanded inspection was unwarranted and risked disclosure of protected information that was not the subject of discovery in this case.

Taking up the motion, the court quickly determined that the second laptop, which had been issued after suit was filed, was “not discoverable.”  As to the first laptop, the court determined that the new employer “ha[d] the better of the argument” and went on to reason what while there was “[n]o doubt” that discoverable information existed on the two laptops, “by demanding nothing less than a complete forensic image of not just one but two laptops belonging to a direct competitor, [the plaintiff] demands too much.”  The court explained that the requested production would “disclose privileged communications . . . as well as irrelevant trade secrets from a nonparty-competitor” and that the subpoena thus sought “discovery of protected matter, something plainly not permitted under Rule 45, rendering the subpoena overbroad and imposing an undue burden . . . .”  Further, the court reasoned that “[t]he risks attached to forensic imaging are simply too great to permit unchecked discovery” and that the threat of accidental disclosure of “crown jewels” was “particularly pronounced in competitor-competitor litigation, like this one.”

Having lost the motion, plaintiff sought to take up the non-party’s prior offer to allow an independent vendor to review the first laptop for pertinent information.  Although “tempted to adopt this proposal,” the court declined:

But to allow Boston Scientific now to seek shelter from a fallback position that Nevro previously tendered in good faith would make a mockery of both parties’ obligation to meet and confer in good faith from the start. ^FN59 The time to tap flexibility and creativity is during meet and confer, not after.

        FN59. Drawing from a recent decision in this district, to accommodate Boston Scientific’s demand would “encourage litigants to demand the moon thinking they can always fall back to something reasonable. They should be reasonable from the start.” Straight Path IP Group, Inc. v. Blackberry Limited, Case No. 3:14–mc–80150–WHA, 2014 WL 3401723, at *1 (N.D. Cal. July 8, 2014).