Motion to Compel Search of Backup Tapes Denied Despite Offer to Pay Expenses

Cognex Corp. v. Electro Scientific Ind., Inc., 2002 WL 32309413 (D. Mass. July 2, 2002)

In this patent infringement case, plaintiff moved to compel a search of defendant’s backup tapes for documents responsive to its document request, offering to share the cost of the search, or even pay the entire cost. At issue were 820 backup tapes covering 1992 through 2001, which defendant said contained approximately four terabytes of information. It was estimated that, if printed, the tapes would yield almost three billion pages.

The court noted that defendant’s document production and search efforts to date had been “extensive.” 2002 WL 32309413, at *1. Two outside counsel attorneys had traveled to defendant’s facilities and met with defendant’s personnel “to devise a comprehensive search plan.” As a result, defendant had produced both paper and electronic files from every current employee who had worked on the subject product, and all former employees who had worked on the project and whose files could be located. Defendant had also searched central paper and electronic repositories identified by employees for files related to the product. Further, defendant had searched for documents from the files of individuals listed as recipients on a particular memorandum concerning the product, even though some had not actually worked on the product. Finally, defendant had searched every box kept in off-site storage in the city where the product had been developed, and searched for documents in another facility where only a small amount of work on the product had been done and only a few strategic planning meetings focused on the product had occurred. Id.

In the end, the hard copy document search yielded approximately 20 full boxes of materials, of which about ten full boxes were responsive. As for electronically-stored documents, defense counsel received approximately eight CDs of material which yielded, after screening for responsiveness, more than 30 full boxes of printed documents. Defendants also produced electronic copies of multiple version of source code.

While defendant conceded it had not searched its backup tapes, it opposed the motion saying it had already conducted an extensive “reasonable” search and the cost and burden of the backup tape search was unreasonable. To illustrate the point, defendant pointed to the search it had already conducted of backup tapes covering a three-year timeframe (1988 to 1991) immediately prior to plaintiff’s patent filing. Id. at *2. The defendant had searched the tapes only for source code files, which it stated were in a readily-recognizable file format that could be isolated relatively quickly. “Even so, it took a seven-person team of [outside] lawyers and paralegals approximately ten weeks’ of work to produce the documents, already pre-screened by the client to some degree, contained on the eight CDs produced by [defendant] to [its outside counsel].” Id. The defendant asserted that even one backup tape could contain as much as 70 gigabytes of data, or 100 CDs’ worth of data, and that the review of the recovered material would consume a substantial amount of time. Defendant also argued that the material on the backup tapes would be duplicative of materials already produced.

The court noted that the plaintiff’s willingness to pay for the backup tape search made the question of whether the defendant should be required to search these tapes “a close call.” Id. at *4. However, it denied the motion, notwithstanding its belief that a search of backup tapes would uncover documents not already produced. Id. (“On the one hand, there is no question in my mind that a search of back-up tapes would uncover documents not already produced. While ESI has undertaken an extensive search, the very nature of the snapshots reflected in back-up tapes suggests that documents will exist thereon which are no longer in ESI’s electronic files.”).

In finding the search to be unwarranted under Rule 26(b)(2), the court described five considerations upon which it relied: (1) The defendant had already conducted an extensive search. “At some point, the adversary system needs to say ‘enough is enough’ and recognize that the costs of seeking every relevant piece of discovery is not reasonable.” Id. at *5. (2) The record did not reflect the conscious destruction of documents after a discovery request had been received, nor were there serious discrepancies with discovery. The court did not share plaintiff’s view that defendants had shown bad faith in conducting discovery: “The failure to search back-up tapes itself cannot have been bad faith – the case law does not establish a general duty to search back-up tapes.” Id. (3) The case was not the type of case where you would expect the relevant emails to be deleted around the time of their creation, e.g., an employment case. (4) The plaintiff’s willingness to pay for the backup tape search did not, by itself, justify it. The court opined that there was something inconsistent with the notion of fairness to allow one party to obtain a heightened level of discovery because it is willing to pay for it. “The sense of fairness underpinning our system of justice will not be enhanced by the courts participating in giving strategic advantage to those with deeper pockets.” Id. (5) Plaintiff itself had a policy under which it recycled backup tapes after four months. The court said that, although there was nothing wrong with that, the practical effect was to preclude the type of search the plaintiff was seeking. Given the extensive search already conducted by the defendant, the court stated that plaintiff could not be heard to demand such a search without making a stronger showing than that provided.

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