Finjan Inc. v. Blue Coat Systems, Court Must Decide If Discovery Responses Are Fair.

Despite the fact that the plaintiff could not also produce archival email, the Magistrate Judge found defendant’s discovery response “not entirely fair” and ordered that they search legacy systems, holding that “one party’s discovery shortcomings are rarely enough to justify another’s.”

In this patent infringement case, the plaintiff, Finjan, served requests for both technical and damages documents as well as email from eight custodians regarding these documents. Blue Coat objected to producing custodial email from its archival systems when it found out that Finjan could not do the same. Finjan moved to compel production.

Addressing the motion, the court noted that under Fed.R.Civ.P. 37(a)(1) a “party may move for an order compelling disclosure or discovery.” However it indicated that under Rule 26(b) (2) (iii):

(T)he court must limit the frequency or extent of discovery otherwise allowed by these rules or by local rule if it determines that: the burden or expense of the proposed discovery outweighs its likely benefit, considering the needs of the case, the amount in controversy, the parties resources, the importance of the issues at stake in the action, and the importance of the discovery in resolving the issues.

Summarizing, the court noted that “(r)educed to its essence, Rule 26(b)(2)(iii) requires this court to decide: have Blue Coat’s discovery responses been fair?”

The court indicated the main dispute between the parties related to Blue Coat’s obligation to produce email. The parties agreed to eight custodians and ten search terms per custodian for the other to search. Blue Coat did not dispute the relevance of the custodians or search terms but when it discovered that Finjan did not have former employee’s emails, it objected to turning over emails from anything but active systems.

In its reasoning, the court indicated that “Blue Coat’s discovery responses so far have be largely fair, but not entirely.” The court found Blue Coat to be “less than fair” with respect to producing archival email for its eight custodians. While the court found that Blue Coat may be in the right that it shouldn’t have to “dig through legacy systems” if Finjan cannot do the same for its custodians, the court found Finjan’s request for the archived email reasonable and emphasized that “one party’s discovery shortcomings are rarely enough to justify another’s.”
Blue Coat was ordered to produce all archival email from the eight designated custodians.

Finjan, Inc. v. Blue Coat Sys., Inc., No. 5:13-cv-03999-BLF, 2014 WL 5321095 (N.D. Cal. Oct. 17, 2014)

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