Bluestar Genomics v. Song

District Court, N.D. California·Decided May 7, 2024·No. 4:21-cv-04507·Unknown

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 BLUESTAR GENOMICS, Case No. 21-cv-04507-JST (LJC)

8 Plaintiff, ORDER RE: JOINT DISCOVERY 9 v. LETTER

10 CHUNXIAO SONG, et al., Re: ECF No. 150 Defendants. 11

12 13 Pending before the Court is the parties’ Joint Discovery Letter, in which Plaintiff Bluestar 14 Genomics (Bluestar) requests that the Court compel Defendant Dr. Chuxiao Song to produce 15 documents responsive to Requests for Production (RFP) Nos. 5, 7, 8, 13, 17–32, 37–41. ECF No. 16 150. The parties’ primary dispute is whether Dr. Song has “possession, custody, or control” over 17 these documents. The Court held a hearing on April 23, 2024. ECF No. 156. For the reasons 18 explained below, the Court finds that Dr. Song does not have “possession, custody, or control,” 19 and hereby DENIES Bluestar’s request to compel. 20 I. BACKGROUND 21 The factual and procedural background of this case is thoroughly detailed in Judge Tigar’s 22 Order Granting in Part and Denying in Part Defendants’ Motions to Dismiss. See ECF No. 100 at 23 2–14.1 That background is fully incorporated by reference into this Order. In summary, the 24 claims in this action arise out of the alleged breach of a consulting services agreement between 25 Bluestar and Dr. Song. The agreement was executed in 2016, several months after Dr. Song 26 became employed at the University of Oxford (Oxford) in a branch funded by the Ludwig Institute 27 1 for Cancer Research Ltd. (Ludwig), Dr. Song’s former co-defendant. While at Oxford, Dr. Song 2 allegedly developed two technologies used to detect cancer, the 5mC and TAPS technologies, and 3 assigned the rights and interest to them to Ludwig instead of Bluestar, in contravention of the 4 parties’ consulting services agreement. 5 Relevant to the instant discovery dispute, Bluestar served its First Set of RFPs to Dr. 6 Song on October 23, 2023. See ECF No. 150-1. The RFPs seek documents relevant to the 7 assignment and licensing of the 5mc and TAPS technologies, as well as the transactions, 8 valuations, research, and design of these technologies. Id. Under Rule 34 of the Federal Rules of 9 Civil Procedure, Dr. Song’s responses and objections to the RFPs were due on November 22, 10 2023, thirty days from the date the RFPs were served. Dr. Song did not provide any responses or 11 objections by this deadline. Bluestar claims that it had “conversations” with Dr. Song by 12 telephone about his failure to serve RFP responses (ECF No. 150 at 2), but it does not submit any 13 evidence (e.g., a sworn declaration) indicating when these conversations occurred or what was 14 discussed during these conversations. 15 On December 6, 2023, Dr. Song emailed Bluestar noting that he expected to serve his RFP 16 responses and objections within “the next week.” ECF No. 150-6 at 5. Bluestar did not reject or 17 agree to Dr. Song’s proposed timeframe for service of his RFP responses or otherwise 18 acknowledge receipt of the email. Dr. Song, however, failed to serve any responses or objections 19 in December 2023. On January 16, 2024, Bluestar emailed Dr. Song to ask for a status update and 20 cautioned him that the “period to object” to its First Set of RFPs had “lapsed.” Id. at 4. Dr. Song 21 responded the next day, January 17, 2024, and disagreed with Bluestar that the period to object 22 had passed. Id. at 3. He told Bluestar that he expected to serve his responses by the end of the 23 week or the beginning of the following week. Id. 24 Also in that same email, Dr. Song indicated that his counsel had needed to communicate 25 with Oxford and Ludwig on the production of certain responsive documents. Id. It is undisputed 26 that Dr. Song used his Oxford email account for communications related to the subject matter of 27 this litigation. See ECF No. 150 at 2–3. He also stored pertinent files on Oxford’s computer 1 unrelated to his work at Oxford. Id. 2 Oxford’s IT regulations state in relevant part, “The University provides computer facilities 3 and access to its computer networks only for purposes directly connected with the work of the 4 University.” ECF No. 150-4, § 2(1). “Users shall treat as confidential any information which may 5 become available to them through the use of such facilities and which is not clearly intended for 6 unrestricted dissemination; such information shall not be copied, modified, disseminated, or used 7 either in whole or in part without the permission of the individual or body entitled to give it.” Id. 8 § 9. The regulations go on to provide that “[i]f a user is thought to be in breach of any of the 9 University’s statutes or regulations, including these regulations, he or she shall be reported to the 10 appropriate officer who may recommend to the appropriate university or college authority that 11 proceedings be instituted under either or both of university and college disciplinary procedures.” 12 Id. § 15(1). Also relevant is Dr. Song’s employment contract. See ECF No. 31-1. The contract 13 states that “[a]ny matter of a confidential nature, including information, but not limited to, relating 14 to the diagnosis and treatment of patients, individual staff records, and details of contract prices 15 and terms must under no circumstances be divulged to any unauthorized person or persons. 16 Disciplinary action will be taken for any breach of confidentiality.” Id. at 30. 17 In connection with jurisdictional discovery conducted for the parties’ motion to dismiss 18 briefing, Dr. Song produced over 700 pages of emails obtained from the Oxford system, nearly 19 200 pages of Oxford internal policies and agreements, over 700 pages of Oxford research 20 presentations, and over 400 pages of Oxford internal patent prosecution documents. ECF No. 150 21 at 2–3. He most recently produced documents from Oxford on March 12, 2024. See ECF No. 22 150-7. Dr. Song contends that he did not previously produce these documents because they were 23 “not relevant” to jurisdictional discovery, but he was now producing them because they are 24 responsive to Bluestar’s RFPs and “relevant to the ongoing litigation.” Id. 25 On January 16, 2024, Dr. Song asked Oxford if it believed that Oxford should have a 26 representative participate in “the mediation” in this case.2 ECF No. 150-5 at 2. Counsel for 27 1 Oxford responded the next day, January 17, 2024, and referenced the RFPs, informing Dr. Song 2 that “[i]n relation to the discovery requests made of your client, documents that Dr Song has 3 access to in his capacity as a University employee: (i) unless established otherwise, will belong to 4 the University; (ii) may contain information confidential to the University and/or information 5 subject to privilege; and as a result (iii) can only be produced by the University, or otherwise with 6 its consent (which consent, for the avoidance of doubt, has not been provided either to your firm 7 or to your client).” Id. 8 Dr. Song eventually served his responses and objections to Bluestar’s First Set of RFPs on 9 January 19, 2024, three days after Bluestar emailed him asking for a status update. See ECF No. 10 150-2. 11 II. DISCUSSION 12 A. Rule 34 Waiver 13 Bluestar argues, as a threshold matter, that Dr. Song waived his objections to the First Set 14 of RFPs by failing to timely respond. ECF No. 150 at 2. The RFPs were served on October 23, 15 2023, and Dr. Song did not serve his responses and objections until January 19, 2024, 16 approximately two months after the deadline had passed. Id. 17 1. Legal Standard 18 Unless otherwise agreed, a party must serve their responses and any objections to RFPs 19 promulgated during discovery within thirty days after their service. Fed. R. Civ. P. 34(b)(2)(A).

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