1 2 3 4 5 6 7 8 9 UNITED STATES DISTRICT COURT 10 SOUTHERN DISTRICT OF CALIFORNIA 11 12 AZENTA, INC., Case No.: 22-cv-01952-JLS-JLB
13 Plaintiff, ORDER REGARDING PLAINTIFF 14 v. AZENTA, INC.’S MOTIONS TO COMPEL 15 STEPHANIE ANDREWS, et al.,
16 Defendants. [ECF Nos. 38, 43] 17 AND RELATED COUNTERCLAIMS. 18
19 20 Before the Court are two Motions to Compel filed by Plaintiff Azenta, Inc. 21 (“Plaintiff”), seeking to compel a forensic examination of the computers and cloud-based 22 storage systems of Defendant Stephanie Andrews (“Andrews”) and Defendant LVL 23 Technologies USA, Inc. (“LVL”), (collectively “Defendants”).1 (ECF Nos. 38; 43.) 24 25 1 On October 18, 2023, after the instant motions were fully briefed as to both 26 Defendants, LVL filed a notification of bankruptcy, alerting this court it had filed a 27 voluntary petition for relief under Chapter 11 of the Bankruptcy Code in the United States Bankruptcy Court for the Middle District of Florida. (ECF No. 58.) In light of the 28 1 Defendants filed an opposition (ECF No. 45), to which Plaintiff replied (ECF No. 52). For 2 the reasons stated below, Plaintiff’s second Motion to Compel (ECF No. 43) is 3 GRANTED in part and DENIED without prejudice in part as to Andrews and 4 Plaintiff’s first Motion to Compel (ECF No. 38) is DENIED as moot.2 5 I. BACKGROUND 6 A. The Underlying Action 7 Plaintiff, a life science company, employed Andrews starting on or around October 8 1, 2015. (ECF Nos. 1 (“Compl.”) ¶ 2.) Throughout her tenure with Plaintiff, Andrews was 9 initially a Regional Manager of Sales and then a Senior Account Manager. (ECF No. 43 10 at 4.) On April 1, 2022, Andrews tendered her resignation, and her last day of employment 11 with Plaintiff was April 15, 2022. (Compl. ¶ 4.) During Andrews’ exit interview, Plaintiff 12 reminded Andrews she was contractually obligated to return any items issued by Plaintiff, 13 including laptops.3 (ECF No. 43 at 5.) Four days later, LVL—a direct competitor of 14 Plaintiff—announced it had hired Andrews. (Compl. ¶ 34.) 15 Upon Andrews’ termination, Plaintiff conducted an examination of its computer 16 systems, which revealed that Andrews had (1) virtually met with LVL personnel at least 17 five times and (2) downloaded and sent Plaintiff’s proprietary customer and billing 18 information from her work email address to her personal email address at least five times. 19 (ECF No. 43 at 4–5.) Further, Plaintiff had not received Andrews’ work laptops, including 20 21 22 as to LVL. Accordingly, the Court’s analysis focuses solely on the motions as they pertain 23 to Andrews. 2 The Court notes that Defendant attached to her opposition evidentiary objections to 24 certain paragraphs of the Omnibus Declaration of Mark Romeo. (See ECF No. 45-5.) The 25 Court declines to rule on these objections as the Court does not rely on this evidence in reaching its decisions as to the instant motions. 26 3 According to Plaintiff’s Information Services Manager, Andrews was issued three 27 laptops: “one last used in 2017 bearing Dell Service Tag GSTS7R1, one last used in 2019 bearing Dell Service Tag 6Q0YGH2, and one last used in April 2022 bearing Dell Service 28 1 DST 993GZM2, which Plaintiff alleges Andrews used to misappropriate trade secrets. 2 (ECF Nos. 43 at 5; Morales Decl. ¶ 5.) Plaintiff prompted Andrews by email to return the 3 laptops on May 22, 2022, June 1, 2022, and June 10, 2022. (ECF No. 43 at 5.) Andrews 4 did not respond to the first two emails; however, in August 2022, Andrews returned 5 “miscellaneous Azenta-issued items, including a laptop with a cracked screen, . . . that had 6 not been used in at least two years.” (ECF Nos. 43 at 5; Morales Decl. ¶ 4.) On September 7 30, 2022, Plaintiff sent Andrews another email, to which Andrews did not respond. (ECF 8 No. 43 at 5.) 9 On December 9, 2022, Plaintiff filed its complaint alleging, inter alia, that Andrews’ 10 actions violated the Defend Trade Secrets Act of 2016. (See generally Compl.) 11 Months later, Andrews asserted that she had returned DST 993GZM2 to Plaintiff’s 12 FedEx account 100300303. (ECF No. 43 at 6.) Plaintiff generated a report from FedEx of 13 all shipments in the month of April 2022 to account 100300303 and cross referenced it 14 against Plaintiff’s records; however, no shipments listed Andrews as the sender or reflected 15 the dimensions of a laptop. (ECF Nos. 43 at 6; 43-2 at 1–7 (“Poole Decl.”) ¶¶ 5–6.) 16 Plaintiff conveyed the findings of the report to Andrews, who then identified another 17 account. (ECF No. 43 at 6; 43-1 ¶ 4.) Plaintiff then generated the same FedEx report for 18 the second account Andrews identified and cross referenced it against Plaintiff’s records. 19 (ECF No. 43 at 6; Poole Decl. ¶¶ 7–8.) Again, no records listed Andrews as the sender or 20 reflected the dimensions of a laptop. (Poole Decl. ¶ 7.) 21 B. Parties’ Discovery Dispute Over Plaintiff’s RFP No. 1 22 Foreseeing the potential need for a forensic examination of electronic devices and 23 systems, the parties began meeting and conferring regarding a mutually agreeable protocol 24 for conducting the forensic examination in January 2023; however, the parties did not come 25 to an agreement. (ECF No. 43 at 7.) 26 On March 3, 2023, Plaintiff propounded RFP No. 1, Set One, to Andrews. 27 (ECF Nos. 43 at 6; 38-3 at 11.) Andrews responded on May 1, 2023. (ECF Nos. 43 at 6; 28 38-3 at 7–25.) The request at issue and response thereto are as follows: 1 Request For Production No. 1: Produce for inspection all electronic devices YOU used to access, store, transfer, copy, download, upload, or delete 2 PLAINTIFF’s documents or information, including devices used to access 3 PLAINTIFF’s documents or information stored on any email or file sharing services such as Slack, Dropbox, Microsoft Outlook, Google Drive, Google 4 Documents, Hotmail, iCloud, or Gmail. 5 Andrews’ Response: Andrews objects to this request on the grounds this 6 request seeks information and documents not relevant to any claim or defense 7 and it is not proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ 8 relative access to relevant information, the parties’ resources, the importance 9 of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Andrews further objects 10 to the production of electronically stored information [(“ESI”)] on the grounds 11 that such information is not reasonably accessible because of undue burden or cost. Andrews also objects to this request on the grounds that it seeks 12 documents protected by the attorney-client privilege, the attorney-work 13 product protection, the right to privacy, and documents that are confidential and/or trade secret. Andrews objects on the grounds this request is oppressive 14 and burdensome and overbroad. Andrews further objects on the grounds that 15 this request is not specific and does not describe the requested documents with reasonable particularity. Andrews also objects to this request on the grounds 16 that the terms “PLAINTIFF,” “PLAINTIFF’s documents or information,” and 17 “devices” are vague and ambiguous. Subject to and without waiving these objections and Preliminary Statement and General Objections, Andrews 18 responds as follows: Andrews will produce any responsive devices for 19 forensic inspection pursuant to a Forensic Inspection Protocol approved by the Court. Documents subject to the attorney-client privilege, work product 20 protection, the right to privacy, or any other privilege, if any, that are being 21 withheld will be identified on a privilege log[.] 22 (ECF No. 38-3 at 11–13.) 23 The Court held an informal discovery conference on September 20, 2023 (ECF No. 24 35), after which a briefing schedule was issued (ECF No. 36). 25 C. Andrews’ Forensic Examination of Her Devices and Systems 26 Defendants’ counsel engaged Epiq eDiscovery Solutions, Inc. (“Epiq”) to obtain and 27 analyze forensic images of certain data sources from Andrews, including a Lenova laptop 28 1 issued to Andrews by LVL, Andrews’ personal Apple laptop, three USB devices, 2 Andrews’ personal email account, and the iCloud backup of Andrews’ Apple ID relating 3 to an Apple iPhone. (ECF Nos. 45-3 at 1–5 (“Massoud Decl.”) ¶ 6; 45-4 at 1–10 (“Folan 4 Decl.”) ¶ 2.) On June 6, 2023, Defendants provided Epiq with the list of search terms that 5 Plaintiff had proposed on March 29, 2023. (Folan Decl. ¶ 3.) Plaintiff had requested that 6 Defendants allow “a neutral third party to monitor [Epiq’s] investigation” in order to 7 “determine whether or not the search was full and complete.” (ECF No. 43 at 3, 7.) 8 Defendants refused. (Id.) 9 Epiq conducted a forensic analysis “to determine if [Andrews] had downloaded, 10 accessed, emailed or otherwise distributed an Excel spreadsheet called ‘Q2 Jan Feb Billings 11 03.24.22_EW edits—Master file.xlsx.” (Massoud Decl. ¶ 7.) As a part of the forensic 12 analysis, Epiq “examined LNK files, Jumplist files, and Shellbag files in an effort to 13 determine if the file at issue . . . was accessed via the LVL Lenovo or the Apple Laptop 14 and/or copied or moved to the aforementioned USB devices and/or emailed to other 15 accounts.”5 (Id. ¶ 13 (footnote omitted).) Epiq’s examination revealed no evidence that 16 the file was accessed, opened, copied, moved, or emailed. (Id. ¶¶ 14, 19.) “The file existed 17 only on two (2) data sources; namely, it is stored locally within the Email application on 18 [Andrews’ personal] Apple laptop and within [Andrews’ personal] Hotmail account.” (Id. 19 ¶ 15.) 20 21 22 4 Defendants note that Andrews’ employment with LVL ended on August 15, 2023, 23 she no longer has any LVL property, and LVL does not have access to any of Andrews’ personal devices or personal accounts. (ECF No. 45 at 3.) 24 5 A LNK file is a file extension for a shortcut that points to another executable file 25 (“destination file”). (Massoud Decl. ¶ 13 n.1.) A LNK file can indicate when the destination file was created or last modified. (Id.) Further, a LNK file can indicate if a 26 destination file previously existed, even if it has since been deleted. See Keating v. 27 Jastremski, No. 15-CV-00057-L-AGS, 2020 WL 1809139, at *6 (S.D. Cal. Apr. 9, 2020). Similarly, Jumplist files indicate file activity. (Massoud Decl. ¶ 13 n.1.) Shellbag files 28 1 Next, Epiq “attempted to determine if the file or contents of the file were used within 2 the LVL laptop or if the file . . . had perhaps been renamed so as to hide it from discovery.” 3 To do so, Epiq executed a keyword search across all data sources using Plaintiff’s search 4 terms as provided by Andrews. (Id. ¶¶ 16–17.) The search generated over 90,000 hits but 5 reaffirmed that the file existed only within the two aforementioned data sources. (Id. ¶¶ 6 17–18.) All hits and associated files were exported and processed by Epiq, and then 7 transferred to Relativity for review by Andrews. (Id.) Andrews then produced over 7,000 8 pages of documents responsive to Plaintiff’s RFPs, based on Plaintiff’s search terms. 9 (Folan Decl. ¶ 3.) 10 D. The Instant Motions and Plaintiff’s Proposed Protocol 11 On October 2, 2023, Plaintiff filed one of the instant motions to compel a forensic 12 examination of Defendants’ devices and systems (ECF No. 38), in which Plaintiff 13 incorrectly stated it submitted Exhibits A and B to the Omnibus Declaration of Donna 14 Poole “via email in native format” (ECF No. 38-2 at 6–7). On October 9, 2023, Plaintiff 15 filed its second motion to compel a forensic examination of Defendants’ devices and 16 systems, fixing the error regarding how Exhibits A and B were to be submitted to the Court. 17 (ECF No. 43.) The Court notes that the motions, but not the attachments, are identical.6 18 Generally, Plaintiff’s proposed forensic examination protocol would seek to “ensure 19 that the search for Azenta Information is complete” by hiring “a neutral forensic expert, 20 Dr. Shane Shook” to “oversee[]” Epiq’s work. (ECF No. 38-3 at 55.) First, Defendants 21
22 23 6 Although the motions themselves are identical, the exhibits attached thereto differ in four respects. First, the order of the exhibits is different. Second, the original motion 24 included a proposed order in violation of the Civil Local Rules, which was excluded from 25 the second motion. (See ECF Nos. 38-5; 51.) Third, in addition to addressing the lodgment error, the latter Omnibus Declaration of Donna Poole (ECF No. 43-2) changed paragraph 26 14 and replaced the electronic signature with a wet signature. Fourth and finally, the 27 exhibits to the Omnibus Declaration of Mark Romeo, which include RFP No. 1, Andrews’ Response to RFP No. 1, and Plaintiff’s Proposed Forensic Inspection Protocol, are absent 28 1 would be required to “list all Devices and Accounts on which Azenta Information may 2 have been stored, accessed, deleted, or transferred.” (Id. at 56.) Epiq would then identify 3 which of the listed devices it previously had examined. (Id.) Any devices or accounts not 4 previously examined would be produced by Defendants to Epiq and Dr. Shook for imaging. 5 (Id. at 56–57.) Next, Epiq would analyze the devices and accounts using Plaintiff’s search 6 terms to determine usage and deletion activity with regard to Plaintiff’s confidential and 7 proprietary information. (Id. at 57–58.) Then, Epiq would prepare a forensic report in 8 consultation with Dr. Shook answering detailed questions about usage and deletion 9 activity. (Id. at 58.) The report and ESI identified in the report would then be provided to 10 Defendants’ to be reviewed for privileged and “purely private information.” (Id. at 58– 11 59.) Finally, Defendants would produce to Plaintiff the report and ESI identified in the 12 report, minus anything appropriately withheld, and Epiq would remove any of Plaintiff’s 13 information from the examined devices and accounts prior to returning them to Andrews. 14 (Id. at 59–61.) 15 II. LEGAL STANDARD 16 A party is entitled to seek discovery of “any nonprivileged matter that is relevant to 17 any party’s claim or defense and proportional to the needs of the case, considering the 18 importance of the issues at stake in the action, the amount in controversy, the parties’ 19 relative access to relevant information, the parties’ resources, the importance of the 20 discovery in resolving the issues, and whether the burden or expense of the proposed 21 discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1). Information need not be 22 admissible to be discoverable. Id. Rule 34 further provides that a party may serve requests 23 for documents, ESI, or tangible things on any other party within the scope of discovery 24 defined in Rule 26(b).7 Fed. R. Civ. P. 34(a). If a party fails to produce documents 25 26 27 7 All references to Rule or Rules are to the Federal Rules of Civil Procedure unless 28 1 pursuant to Rule 34, the propounding party may bring a motion to compel. See Fed. R. 2 Civ. P. 37(a). 3 “The party seeking to compel discovery has the burden of establishing that its request 4 satisfies the relevancy requirements of Rule 26(b)(1).” Alves v. Riverside Cnty., 339 F.R.D. 5 556, 559 (C.D. Cal. 2021) (quoting Bryant v. Ochoa, No. 07-CV-00200-JM-PCL, 2009 6 WL 1390794, at *1 (S.D. Cal. May 14, 2009)). “District courts have broad discretion in 7 determining relevancy for discovery purposes.” Surfvivor Media, Inc. v. Survivor Prods., 8 406 F.3d 625, 635 (9th Cir. 2005) (citing Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 9 2002)). “Once the propounding party establishes that the request seeks relevant 10 information, ‘[t]he party who resists discovery has the burden to show discovery should 11 not be allowed, and has the burden of clarifying, explaining, and supporting its 12 objections.’” Goro v. Flowers Foods, Inc., 334 F.R.D. 275, 283 (S.D. Cal. 2018) (quoting 13 Superior Commc’ns v. Earhugger, Inc., 257 F.R.D. 215, 217 (C.D. Cal. 2009). However, 14 the Court must—either on motion or sua sponte—“limit the frequency or extent” of 15 otherwise permissible discovery if the Court finds the request “unreasonably cumulative 16 or duplicative” or the discovery sought is obtainable from a “more convenient, less 17 burdensome, or less expensive” source. Fed. R. Civ. P. 26(b)(2)(C)(i). 18 III. DISCUSSION 19 Generally, Plaintiff seeks a forensic examination of Andrews’ devices and cloud- 20 based storage systems to determine “what of its information was taken by [Andrews], and 21 what was done with it, so that Azenta’s property may be returned.” (ECF No. 43 at 3.) As 22 Defendants conducted a forensic examination independently without shared protocol, 23 without an additional observer hired by Plaintiff, and without providing to Plaintiff a list 24 of the devices and systems examined, Plaintiff also seeks to verify that the forensic 25 examination conducted by Defendants was complete. (Id. at 7.) 26 Andrews argues that there is “no legitimate reason to allow Azenta or anyone acting 27 on behalf of Azenta to have access to Andrews’ personal electronic accounts and devices” 28 considering that “a forensic examination of the relevant devices and accounts already has 1 been performed.” (ECF No. 45 at 4.) Rather, Andrews suggests that Plaintiff should 2 depose both the forensic examiner, Ashraf Massoud, to test the veracity of his 3 qualifications, methodology, and findings, and Andrews. (Id. at 7–8, 9.) 4 A. The Rule 26(b) Discovery Standard Applies to Forensic Examinations. 5 Pursuant to Rule 34, a party may seek forensic imaging of electronic devices that 6 fall within the scope of Rule 26(b). Fed. R. Civ. P. 34(a)(1) (“A party may serve on any 7 other party a request . . . to produce and permit the requesting party or its representative to 8 inspect, copy, test, or sample . . . electronically stored information . . . or any designated 9 tangible things.”). However, “[i]nspection or testing of certain types of electronically 10 stored information of a responding party’s electronic information system may raise issues 11 of confidentiality or privacy,” so courts are cautioned to “guard against undue intrusiveness 12 resulting from inspecting or testing such systems.” Fed. R. Civ. P. 34(a)(1) advisory 13 committee’s notes to 2006 amendment. Further, “[a] party need not provide discovery of 14 electronically stored information from sources that the party identifies as not reasonably 15 accessible because of undue burden or cost” unless “the requesting party shows good 16 cause,” subject to the mandatory proportionality limitations set forth in Rule 26(b)(2)(C). 17 Fed. R. Civ. P. 26(b)(2)(B). 18 Andrews asserts that “[m]ere suspicion or speculation that an opposing party may 19 be withholding discoverable information is insufficient to support a forensic examination 20 and[,] absent specific, concrete evidence of concealment or destruction of evidence[,] 21 courts are generally cautious about granting a request for a forensic examination of an 22 adversary’s computer.” (ECF No. 45 at 7–8 (citing Juul Labs, Inc. v. Chou, No. 2:21-CV- 23 03056-DSF-PDX, 2022 WL 2161062, at *2 (C.D. Cal. Apr. 19, 2022); Moser v. Health 24 Ins. Innovations, Inc., No. 17-CV-1127-WQH-KSC, 2018 WL 6735710, at *5 (S.D. Cal. 25 Dec. 21, 2018), objections overruled, No. 17-CV-1127-WQH-KSC, 2019 WL 13391059 26 (S.D. Cal. Apr. 12, 2019); and Sophia & Chloe, Inc. v. Brighton Collectibles, Inc., No. 12- 27 CV-2472-AJB-KSC, 2013 WL 5212013 at *2 (S.D. Cal. 2013). 28 1 To the extent Andrews is suggesting that the standard for discovery set forth by Rule 2 26 is applied differently or is heightened in the context of a forensic examination, the Court 3 rejects Andrews’ stance. Due to the intrusive and costly nature of a forensic examination, 4 such a request raises significant concerns regarding proportionality and confidentiality— 5 as noted in Rule 26(b) and the accompanying advisory committee note to the 2006 6 amendment; however, the standard itself does not change. See Philips N. Am. LLC v. 7 Advanced Imaging Servs., No. 2:21-CV-00876 DAD AC, 2023 WL 316916, at *2 (E.D. 8 Cal. Jan. 19, 2023) (“The court disagrees with [the] defendant that a heightened standard 9 categorically applies to all compelled computer forensics. While it is certainly true that 10 concerns of proportionality and confidentiality are heightened in this context, as the cases 11 reflect, the standard governing discovery does not vary.”). Where the burden or expense 12 is significant—such is often the case when considering a request for forensic 13 examination—the propounding party must demonstrate that the likely benefit is all the 14 more acute so as not to be outweighed by the burden. See Fed. R. Civ. P. 26(b)(1). 15 B. A Forensic Examination of Andrews’ Devices and Systems Is Relevant to 16 Plaintiff’s Trade Secret Misappropriation Claim. 17 Although Andrews’s Response to RFP No. 1 objected, inter alia, on the grounds that 18 the request sought “information and documents not relevant to any claim or defense,” 19 Andrews did not expressly reassert a relevance objection within her opposition brief to the 20 instant motions.8 See Hall v. Marriott Int’l, Inc., No. 19-cv-01715-JLS-AHG, 2021 WL 21 1906464, at *9 (S.D. Cal. May 12, 2021) (quoting SolarCity Corp. v. Doria, No. 16-cv- 22 3085-JAH-RBB, 2018 WL 467898, at *3 (S.D. Cal. Jan. 18, 2018)) (“When ruling on a 23 motion to compel, courts in this district ‘generally consider[ ] only those objections that 24 have been timely asserted in the initial response to the discovery request and that are 25
26 27 8 Andrews did copy the entirety of her Response to RFP No. 1, without further elucidation, for the purpose of demonstrating that she, and not only LVL, objected to RFP 28 1 subsequently reasserted and relied upon in response to the motion to compel.’”); Sherwin- 2 Williams Co. v. Earl Scheib of Cal., Inc., No. 12-cv-2646-JAH-JMA, 2013 WL 12073836, 3 at *2, n.1 (S.D. Cal. Mar. 4, 2013) (deeming all objections raised in response to the 4 discovery requests but not addressed in the discovery motion to be moot or waived, and 5 limiting its review to arguments presented in the parties’ briefs). 6 Moreover, even if Andrews reasserted her relevance objection, the Court finds 7 generally that devices and systems used to “access, store, transfer, copy, download, upload, 8 or delete Plaintiff’s documents or information” would be relevant to Plaintiff’s trade secret 9 misappropriation claim. (See ECF No. ECF No. 38-3 at 11.) However, Andrews notes 10 that Plaintiff’s search terms included the names of Andrews’ son and husband, “neither 11 one of [whom] has anything to do with this lawsuit.” (ECF No. 45 at 4.) In response, 12 Plaintiff asserts that, had it known the identity of those individuals, “those names would 13 not have been included with the proposed search terms.”9 (ECF No. 52 at 4.) In light of 14 Andrew’s objection and Plaintiff’s concession, the Court deems the inclusion of the two 15 family member names as search terms unlikely to yield relevant information. Other than 16 that, Andrews’ relevance objection is overruled. 17 Having found RFP No. 1 relevant, with the exclusion of the two aforementioned 18 search terms, the Court turns to the proportionality of the request. 19 B. The Burden of a Supplemental Forensic Inspection Under Plaintiff’s 20 Proposed Protocol Substantially Outweighs Its Likely Benefit. 21 Andrews argues that the protocol proposed by Plaintiff is “overly broad,” “not 22 proportionate to the needs of the case,” and “does not afford Andrews . . . the necessary 23 protection to ensure private and personal information is not accessed . . . .” (ECF No. 45 24 25 26 9 Although the parties assured the Court that they sufficiently met and conferred on 27 this discovery dispute prior to raising it with the Court, the clear lack of communication regarding potential search terms calls into question the adequacy of the parties’ informal 28 1 at 8.) Specifically, Epiq’s forensic examination, using Plaintiff’s 52 search terms, resulted 2 in over 90,000 hits, cost over $20,000 for Epiq’s services alone, required more than 60 3 subsequent hours by counsel to prepare, review and produce responsive documents, and 4 resulted in production of over 7,000 pages of responsive documents.10 (Id.; Folan Decl. ¶ 5 4; Massoud Decl. ¶ 17.) Additionally, Andrews argues the scope of the examination would 6 be “highly disruptive . . . to Andrews for a second time.” (ECF No. 45 at 9.) Finally, 7 Andrews argues that there is no evidence the forensic examination and related document 8 production was flawed, incomplete, or otherwise questionable. (Id. at 7, 9.) 9 In contrast, Plaintiff points to the missing laptop Andrews alleges she returned, her 10 changing story regarding which FedEx account she used to return the laptop—neither of 11 which was corroborated by Plaintiff’s or FedEx’s records—and Andrews’ unwillingness 12 to work with Plaintiff to reach an agreement on a forensic protocol as calling into question 13 Defendants’ credibility and, thus, the reliability of the forensic examination Defendants 14 paid Epiq to complete. (ECF Nos. 43 at 2–3, 8–10; 52 at 2–5.) Further, Plaintiff argues 15 that its proposed protocol sufficiently minimizes burden because there is a protective order 16 already in place, and the protocol “provides for a first look by Defendants’ counsel [at the 17 responsive ESI] and Azenta to bear the cost of the examination.” (ECF No. 43 at 2, 11.) 18 Plaintiff analogizes the instant case to that of Brocade Communications Systems, 19 Inc. v. A10 Networks, Inc., No. 10-cv-03428-LHK, 2012 WL 70428 (N.D. Cal. Jan. 9, 20 2012). Although both cases involve misappropriation of trade secrets by former employees 21 and missing devices, the circumstance of the cases are quite different. In Brocade, the Rule 22 30(b)(6) witness from A10 Networks, Inc. admitted in a deposition that one of the 23
24 25 10 Ostensibly alluding to burden, Andrews notes that Plaintiff’s proposed search terms were “not limited to five custodians as set forth in the Southern District’s Model Order 26 Governing ESI . . . .” (ECF No. 45 at 5; Folan Decl. ¶ 3.) However, this district does not 27 have a Model Order Governing ESI. The district previously had approved a Model Order for ESI in patent cases which limited ESI production requests to a total of ten custodians, 28 1 plaintiff’s former employees took a hard drive with 196 of the plaintiff’s source code files 2 on it and that the hard drive was then imaged before being “recycled,” but the deponent 3 could not or would not explain what recycled meant. 2012 WL 70428, at *2. Subsequently, 4 the deponent admitted that the plaintiff’s files had been transferred from the imaged hard 5 drive to the employee’s current computer issued by the defendant. Id. 6 These factual differences greatly impact the likely benefit to the moving party of any 7 forensic examination. First, under the circumstances set forth in Brocade, forensically 8 examining the hard drives in the possession of the defendant’s employee would have the 9 likely benefit of locating the missing hard drive and of determining what actions, if any, 10 the defendant and its employee had taken with regard the 196 misappropriated files. Here, 11 Plaintiff does not allege that conducting a second forensic examination of the responsive 12 devices and computer systems would determine the current location of or reveal Andrews’ 13 actions whilst using the missing laptop. Second, the hard drives in Brocade—including 14 the one identified by the defendant as having the 196 transferred files—had not yet been 15 forensically examined at all, as the court had previously denied the plaintiff’s request. 16 Brocade, 2012 WL 70428, at *1. Here, Plaintiff is advocating for a second or supplemental 17 forensic inspection. As such, the likely benefit the court considered under the facts of 18 Brocade does not exist—at least not to the same degree—in the instant case. 19 Further, upon reviewing the defendant’s deposition transcript, the court in Brocade 20 found that, due to the deponent’s “inability and/or unwillingness to provide” information 21 regarding what “recycled” meant, a forensic examination was the plaintiff’s only avenue 22 for discovering the information it sought. 2012 WL 70428, at *2. Although Plaintiff 23 characterizes Andrews’ “changing testimony” as “intentional attempts to conceal the 24 whereabouts” and a “refusal to identify the location of the missing laptop” (ECF Nos. 43 25 at 8 n.1; 52 at 5), Plaintiff had not yet deposed Andrews. Plaintiff could depose Andrews 26 on the missing laptop and her actions related thereto, and could depose Massoud on the 27 forensic examination already conducted to test its scientific soundness, accuracy, and 28 completeness. Unlike in Brocade, Plaintiff here has other, less burdensome methods of 1 discovery it could employ to try to access the relevant information, which lessens the need 2 for this particular method of discovery at this stage. See Fed. R. Civ. P. 26(b)(2)(C)(i). 3 With regard to Andrews’ privacy concerns, the Court agrees with Plaintiff that 4 confidentiality would be adequately addressed by the protective order already in place. 5 (See ECF No. 25.) Any experts hired to conduct a forensic examination would be required 6 to agree in writing to be bound by the protective order prior to receiving any confidential 7 information. (Id. ¶ 8.) Additionally, the ESI garnered from any forensic examination 8 would be subject to any claims of privilege Andrews would like to assert. (Id. ¶ 17; ECF 9 No. 38-3 at 59–61.) 10 Turning to the issue of expense, although the instant motions state that Plaintiff 11 would bear the cost (see ECF No. 43 at 2, 11), this is an oversimplification and disregards 12 the additional expense Andrews will face. The fee provision in Plaintiff’s proposed 13 protocol reads: “Defendants shall pay for Epiq and Azenta shall pay for the cost of Dr. 14 Shook’s time and any costs incurred by Dr. Shook to carry out the terms of this Protocol.” 15 (ECF No. 38-3 at 61 (emphasis added).) Plaintiff’s proposed protocol requires forensic 16 imaging of all devices only “[t]o the extent not already done by Epiq previously” (id. at 17 56–57), which would minimize potential expenses incurred by Epiq moving forward. 18 However, the provisions Plaintiff sets forth for the analysis and report on the imaged 19 devices include extensive analysis to be conducted and questions to be answered by Epiq 20 in consultation with Plaintiff’s proposed expert. (See ECF No. 38-3 at 57–58.) Further, 21 the overall expense of a supplemental or second forensic examination is not limited to the 22 cost of Epiq’s services. Such an examination would also result in the additional expense 23 of Andrews’ counsel’s time in conducting a review of the second forensic report and all 24 ESI identified by the report for privilege and purely personal information prior to their 25 production to Plaintiff. 26 Based on the foregoing, the Court finds that the burden of the additional costs to 27 Andrews under Plaintiff’s protocol and the time both parties’ experts and counsel would 28 expend substantially outweigh the benefit Plaintiff would likely receive, particularly 1 considering Plaintiff has other less burdensome methods available to it for discovering the 2 relevant information, such as deposing Andrews and Massoud. However, the Court agrees 3 that Plaintiff is entitled to know which devices and accounts are responsive to RFP No. 1 4 and which of those devices and accounts were subject to the examination by Epiq. As 5 such, Plaintiff’s second Motion to Compel (ECF No. 43) is GRANTED in part to the 6 extent Andrews and her counsel shall submit to Plaintiff a declaration(s) that lists all 7 devices and accounts on which Plaintiff’s information may have been stored, accessed, 8 deleted, or transferred. The declaration(s) shall identify the current custodian of each 9 device and/or account. If Plaintiff discovers additional or new evidence supporting its need 10 for a second or supplemental forensic examination, Plaintiff may re-raise the issue with the 11 Court pursuant to Section V of the undersigned’s Civil Chambers Rules. The motion is 12 DENIED in all other respects. 13 IV. CONCLUSION 14 For the reasons stated above, IT IS HEREBY ORDERED: 15 1. Plaintiff’s first and second Motions to Compel (ECF Nos. 38; 43) are 16 DENIED without prejudice as to LVL. 17 2. Plaintiff’s second Motion to Compel (ECF No. 43) is GRANTED in part 18 and DENIED without prejudice in part as to Andrews. 19 3. Within five (5) days of the docketing of this Order, Andrews and her counsel 20 shall submit a declaration to Plaintiff with a list of all devices and accounts on which 21 Plaintiff’s information may have been stored, accessed, deleted, or transferred. The 22 declaration(s) shall identify the current custodian of each device and/or account. 23 4. Plaintiff’s first Motion to Compel (ECF No. 38) is DENIED as moot as to 24 Andrews. 25 IT IS SO ORDERED. 26 27 28 1 Dated: December 21, 2023 -
n. Jill L. Burkhardt 3 ited States Magistrate Judge 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28