The opinion of the court was delivered by: Paul S. Grewal United States Magistrate Judge
United States District Court For the Northern District of California
ORDER GRANTING PARTIES' JOINT MOTION FOR CLARIFICATION OF E-DISCOVERY ORDER (Re: Docket No. 103)
In this patent infringement suit, the court entered an e-discovery order on November 2, 2011 governing the production of email.*fn1 The parties now dispute whether Plaintiff DCG Systems, 18
Inc. ("DCG") has complied with certain provisions of the e-discovery order and seek further 19 clarification of them. On August 7, 2012, the parties appeared for hearing. Having reviewed the 20 21 papers and considered the arguments of counsel,
IT IS HEREBY ORDERED that the parties' joint motion for clarification is GRANTED.
The e-discovery order provides that the parties may propound email production requests for "specific issues, rather than general discovery of a product or business."*fn2 The requesting party must limit the requests to ten custodians and a total of twenty search terms per custodian per party.*fn3 product or business as opposed to discovery related to specific issues; and (2) whether DCG has 4 properly calculated the number of search terms per custodian. 5
DCG contends that its first set of email requests conforms with both requirements. They are 6 tailored to specific issues, rather than general discovery, and seek email discovery from eight of 7 Defendant Checkpoint Technologies, LLC's ("Checkpoint") custodians with an average of 14.75 8 9 search terms per custodian. By way of example, DCG seeks email regarding:
The parties dispute: (1) whether DCG's first set of email requests seeks general discovery of a
* Checkpoint's knowledge of DCG's patents and DCG's proprietary technologies;
* Whether Checkpoint copied the technologies claimed in the asserted patents, either on its own or at the direction of one or more Checkpoint customers;
* Indirect infringement, including Checkpoint's instructions to its customers relating to the accused products and functionalities;
* The nature of the market for the accused Checkpoint products and for other devices that 15 practice the asserted patents;
* The value of the inventions claimed in the asserted patents, as a function of the overall 17 value of the accused Checkpoint products and other devices that practice the asserted patents;
* Statements of praise for the claimed inventions, or of skepticism, or demonstrating a long-19 felt need, or other statements relevant to secondary considerations of non-obviousness; and * Evidence of alleged ...