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General Electric Company, et al v. Thomas Wilkins

February 21, 2012


The opinion of the court was delivered by: Jennifer L. Thurston United States Magistrate Judge


Before the Court is a discovery dispute that was brought to the Court originally in late December 2011. (Doc. 261) The dispute centers upon 405 back-up tapes, referred to as the "Tehachapi tapes." These tapes store the content of a computer server operated by Wilkin's employer, Enron, before it was taken over by GE. Wilkins and intervenor Mitsubishi, seek an order compelling GE to search these tapes using specified search criteria and produce any resulting documents.

The Court conducted telephonic conferences on January 5, 2012, February 3, 2012 and February 14, 2012. (Docs. 262, 290, 304) Because the Court finds that the tapes are not reasonably accessible and because there was not good cause shown to require GE to expend the resources necessary to make them reasonably accessible, the Court DENIES the request.

I. Background

General Electric Company brought this action against Thomas Wilkins for damages and injunctive relief. At issue are two patents held by GE, U.S. Patent Nos. 6,921,985 ("985 Patent") and 6,924,565, ("the'565 patent"). When GE sought the patents, it listed Wilkins as one of seven inventors on the '565 patent but did not list him on the '985 patent application because GE contends he is not a co-inventor. Wilkins claims an ownership interest in both patents.

GE alleges that Wilkins was employed as an electrical engineer by Enron Wind Corp. from about April 1998 to May 2002. (Doc. 76 at 2) GE purchased Enron's assets in May 2002, which included Enron's patents and invention rights. Id. at 2. At that time, Wilkins became employed by GE. Id. Also at that time, GE copied Enron's live server onto GE's own server. (Doc. 303-1 at 3) In addition, it acquired approximate 1 million hard copy documents from Enron's "central files." *fn1 Id.

GE claims that Wilkins was responsible for the design, development, installation and testing of wind turbine generators during the time he was employed by it and Enron. (Doc. 76 at 3) GE alleges that as a condition of his employment with Enron, Wilkins signed an agreement that all inventions developed by him during his employment and for a period after, belonged to his employer. Id. GE alleges that Wilkins signed a similar agreement upon his employment with GE. Id. at 5-6.

GE alleges that it applied for and received the '565 and '985 patents after Wilkins left GE's employ. (Doc. 76 at 6, 8) GE asserts that it alerted Wilkins to the '565 patent application and sought his cooperation in obtaining it. Id. at 7. However, GE alleges that it received the patent '565 in 2005 without Wilkins' assistance because he refused to cooperate. Id. GE claims that in May 2010, Wilkins asserted an ownership interest in the '565 for the first time and told GE that he was offering to license the '565 patent to others via a website. Id. at 7-8.

GE alleges that it did not seek Wilkins' assistance in obtaining the '985 patent because it did not believe that he was an inventor of the underlying invention. (Doc. 76 at 8) GE claims that it received the '985 patent in July 2005 and it was not until 2009 that Wilkins first asserted an ownership right in it. Id. GE asserts that in 2009 Wilkins reported that he had licensed the patent to Mitsubishi and that he was offering to license it to others via a website. Id. As a result, GE demanded that Wilkins cease and desist from any further licensing efforts and demanded that Wilkins assign to it whatever interest Wilkins claimed in the patent. Id. Wilkins refused. Id.

A. The "Tehachapi tapes" dispute

On December 29, 2011, counsel for Mitsubishi initiated a telephonic conference with the Court and counsel to discuss a discovery dispute related to backup tapes referred to as the "Tehachapi tapes." (Doc. 300) These tapes numbered more than 400 and were not organized in any fashion. (Doc. 301 at 1) GE had taken the position that the tapes were "inaccessible" as that term is used in Fed. R. Civ. P. 26(b)(2) and Mitsubishi desired an inspection to determine whether this was the case. (Doc. 300 at 1.) By this time, Mitsubishi's expert had spent two full days examining the tapes but Mitsubishi sought additional inspection time. Id. at 2.

Initially, GE indicated that it did not oppose an inspection that lasted longer than two days but did not anticipate that longer review would be necessary. (Doc. 300 at 12) Before the inspection occurred, the parties agreed that Mitsubishi's expert could use a program called "eSift" to restore the tapes onto a hard drive for the purpose of counting the number of "hits" that were found for key words. Id. at 10.

Also in advance of the inspection, GE sent Mitsubishi some photos of the tapes. (Doc. 300 at 8-9) The parties dispute whether the photos were intended to show a representative sample of the tapes. Id. Apparently, the photos showed only one tape of a certain type and the remaining tapes were of a second type. Id. Relying on the photos, Mitsubishi's expert brought to the inspection a piece of equipment that would read the second type of tape but not the first. Id. However, when he arrived at the inspection, it appeared ...

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