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Court Declines to Compel Plaintiff in Patent Case to Use Additional Search Terms or Produce Documents Not Reviewed for Relevance

Posted on November 23rd, 2016

Computer with ESI Search Terms Flowrider Surf, Ltd., et. al. v. Pacific Surf Designs, Inc., Case No. 15-1879 (S.D. Cali., Nov. 3, 2016) is a patent litigation suit involving an attraction/ride to be used at amusement parks and waterparks. The ride simulates a surfing experience. The parties to the suit are competitors in the waterpark rides industry; Plaintiffs sued Defendant for infringement, and Defendant filed infringement counterclaims.

In discovery, Defendant propounded interrogatories and document requests upon Plaintiffs. Part of the information sought included documents concerning the “abandonment and expiration” of certain of Plaintiffs’ patents; Plaintiffs refused to produce the information, claiming irrelevance and privilege. Defendant filed a Motion to Compel, seeking a court order compelling production of these documents and all documents that hit the parties’ agreed-upon ESI search terms, as well as compelling Plaintiff to conduct more ESI searches for certain search terms related to the patents. Plaintiffs argued privilege and irrelevance and also argued that the request was premature, as Defendant’s Motion to Amend was pending before the court. Defendant responded that it was entitled to broad discovery and that the requests are relevant.

With respect to the document requests, the court denied Defendant’s request for certain documents but permitted others, finding that the documents as to one patent were relevant to Defendant’s defenses, but not as to another patent. However, with respect to Defendant’s request to compel Plaintiffs to conduct ESI searches using specific search terms, the court denied the Motion, finding the terms requested were overbroad, particularly in light of the scope of the order denying part of Defendant’s document request.

Defendant’s request for “all documents” that the parties’ agreed-upon search terms brought up, without further review for relevance, was also denied. The court found that Plaintiffs had not waived their objections for irrelevance and overbreadth. The court found that Plaintiffs could review the documents that “hit” on the parties’ search terms for relevance before producing them.

ILS – Plaintiff eDiscovery Experts

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