Civil Action File No. 1:07-CV-1822-TWT
United States District Court, N.D. Georgia, Atlanta Division
August 07, 2008
Alan Shane Nichols, Natasha Horne Moffitt, Shaun Sethna, Anthony B. Askew, Courtney Suzanne Johnson, Harriet Jill Wasserman, James Joseph Mayberry, King & Spalding, LLP, Atlanta, GA, for Plaintiff.
Peter Weissman, Victor Wigman, Blank Rome, Washington, DC, Kenneth L. Bressler, Blank Rome, LLP, New York, NY, Gail Podolsky, James Jay Wolfson, Carlton Fields, PA, Louis Norwood Jameson, Leah J. Poynter, Matthew Christopher Gaudet, Matthew Sean Yungwirth, Duane Morris, LLP, Atlanta, GA, for Defendants.
*1 This is a patent infringement action. The current motion practice before the Court began with the filing of Plaintiff's Emergency Motion to Compel Discovery (Doc. No. 133). As part of its response to Plaintiff's Emergency Motion, Defendant Cisco IronPort filed a cross-motion in which it sought cost shifting relating to its discovery efforts, a protective order from certain potential discovery requests, and attorneys fees in connection with this discovery dispute (Doc. No. 141). By Order dated June 11, 2008 (the “June 11 Order,” Doc. No. 185), the Court granted in part CBT's Emergency Motion to Compel with respect to the production of “potentially privileged” documents and ordered Cisco IronPort to produce those documents on the condition that the Plaintiff pay Cisco IronPort $300,000.00 as the cost of conducting a privilege review, and otherwise denied the motion. Pertinent to Cisco IronPort's current cross-motion for attorneys fees, the Court found in its June 11 Order that “Plaintiff's complaints about Cisco's document production are substantially unjustified and much ado about nothing.” For the reasons set forth herein, the Court finds that Cisco IronPort's Cross-Motion is granted in part and denied in part and that Cisco IronPort should be awarded 75% of the attorneys' fees it has incurred in connection with this discovery dispute.
1. Plaintiff's Emergency Motion, filed on April 18, 2008, sought emergency relief requiring Cisco IronPort to complete both its entire document production and a privilege review of all “potentially privileged” documents by May 1, 2008.
2. On April 25, 2008, Cisco IronPort filed a combined brief in which it responded to Plaintiff's Emergency Motion and filed a cross-motion for cost shifting, protective order, and attorneys' fees. (Doc. No. 142).
3. CBT filed two additional briefs in connection with this discovery dispute (Doc. Nos. 147 and 152). Cisco IronPort filed one additional brief in connection with this discovery dispute. (Doc. No. 159). The Court also held a hearing on April 29, 2008 on Plaintiff's Emergency Motion and a hearing on June 24, 2008 on Cisco IronPort's Cross-Motion.
4. The record on this discovery dispute contains 212 pages of briefing and 147 exhibits. The Court has spent an enormous amount of time reviewing all of the briefs and has likewise reviewed all of the exhibits, including reading every e-mail and every letter in the record.
5. Plaintiff's discovery requests in this case essentially called for every document at Cisco IronPort that deals with the accused products in this case, which meant, in effect, every document in the company.
6. Plaintiff made no effort either in meet-and-confer sessions or in its Emergency Motion to identify specific categories of documents that were relevant and not being provided by Cisco IronPort. Indeed, it appears to the Court that as part of the required “meet and confer” process, Plaintiff engaged in no substantive discussion whatsoever about what discovery it really needed or why before filing its Emergency Motion. It further appears to the Court that Plaintiff's counsel did not tell Cisco IronPort the relief it would be seeking other than that it intended to seek sanctions. The Court is baffled by Plaintiff's failure to engage in a meaningful discussion with Cisco IronPort regarding these discovery issues, which could have avoided this entire discovery dispute.
*2 7. In Plaintiff's Emergency Motion to Compel, Plaintiff effectively demanded that all documents in the case be produced by May 1, 2008, whether relevant or not, and regardless of costs.
8. Cisco IronPort substantially completed its document production to Plaintiff on May 12, 2008, as set forth in a schedule proposed by Cisco IronPort to Plaintiff on April 11. This has included the production in native format of over 1.4 million documents that were produced as result of electronic searching that was performed by Cisco IronPort based on 102 search terms that were ultimately selected by Plaintiff; six versions of source code with respect to what Cisco IronPort refers to as the “message transfer agent” and source code related to the “Bonded Sender Program;” paper documents; and additional data found on targeted searches arising from Plaintiff's document requests. These productions are in addition to an initial document production made by Cisco IronPort on December 24, 2007 under Patent Local Rules 4.2 and 4.3, in which Cisco IronPort produced information regarding the operation of the accused products as well as prior art totaling approximately 1418 pages.
9. Throughout the course of briefing on these cross-motions and during the first hearing on April 29, counsel for Plaintiff has filled the record with invective in both challenging the motives of Cisco IronPort with respect to allegedly delaying discovery and challenging the honesty of Cisco IronPort's counsel with respect to their representations to the Court. For example, in Plaintiff's Reply Brief on its Emergency Motion, Plaintiff alleged that “IronPort's behavior is inexcusable and should be sanctioned.” (Doc. No. 147 at 2). Plaintiff also accused Cisco IronPort of “mischaracterizing and misrepresenting the course of discovery and the communications between the parties.” (Id.
at 2-3). At the April 29 hearing, Plaintiff's allegations escalated, as Plaintiff's counsel accused Cisco IronPort's counsel of stonewalling discovery, giving Plaintiff the runaround, and lying to the Court in an effort to delay its discovery obligations. Plaintiff then requested permission to file an additional brief (Doc. No. 152). The first 25 pages of that brief are filled with accusations that Cisco IronPort's counsel lied to this Court regarding the discovery record, including very pointed accusations that Cisco IronPort's counsel cannot be trusted and would say “anything
to avoid being held liable for the failure to meaningfully engage in discovery in this case.” (Doc. 152 at 4, n. 3 (emphasis in original)). Cisco IronPort responded to each of the accusations in its Reply Brief (Doc. No. 159).
10. The accusation that Defendant's counsel were “mischaracterizing and misrepresenting the course of discovery” made it necessary for the Court to personally review the hundreds of pages of e-mails, letters and other documents submitted along with the lengthy briefs of the parties. The Court finds that based on its review of this entire record, Plaintiff's accusations that there had been a long campaign of stonewalling, delaying, and lying by Cisco IronPort's attorneys are just not true. For example, at the April 29 hearing, counsel for Plaintiff CBT described Cisco IronPort's document production as a “document dump if I have ever heard of one.” (4/29/08 Trans. at 6: 1-2). CBT's counsel then challenged as “fantastic” Cisco IronPort's representation that Plaintiff selected the 102 search terms that led to the 1.4 million documents produced:
*3 Search terms. They are blaming us for the breadth of the search terms in this case, Your Honor, which is fantastic. February 11th IronPort sent us the search terms that they wanted to use in this case. They are the ones that defined the search terms. They said throughout their brief that they did not define the search terms that were applied in this case. That is not true. And this document is attached as an exhibit to their brief as well.
(4/29/08 Trans. at 50:22-51:4).
11. The Court has reviewed all of the correspondence that led to the use of 102 search terms, which generated the 1.4 million documents, and it is apparent that Cisco IronPort's description-that Plaintiff selected the final 102 search terms-is exactly what happened. In light of this record, the Court finds that the above-quoted statement from Plaintiff's counsel is extremely disturbing.
12. By the time of the April 29, 2008 hearing, Cisco IronPort was in substantial compliance with the document production schedule that it proposed on April 11. Plaintiff's demand that the document production be completed by May 1 rather than May 12 was an unreasonable basis for continuing to pursue the Motion to Compel.
13. At the hearing on June 24, 2008 regarding Cisco IronPort's request for attorney fees, counsel for the Plaintiff stated the Motion to Compel was filed because of concern that the deadline for completing discovery was approaching. That was not an adequate basis for provoking this enormously costly (to the parties) and enormously burdensome (to the Court) discovery dispute and motions practice. If the Plaintiff needed more time to complete discovery after the Defendant's document production, the appropriate course of action would have been to request an extension of time for discovery. The Defendant was willing to consent to that and the Court would certainly have granted the request.
14. Even as to the “potentially privileged” documents, the Motion to Compel should never have been filed without a good faith discussion between counsel as to the search terms that were used to identify the documents. Counsel for the Plaintiff did not even ask for the search terms until just before the June 24 hearing.
15. Cisco IronPort's Cross-Motion seeks cost shifting, a protective order from further production obligations, and attorneys' fees. The Court imposed cost shifting in its June 11 Order regarding Plaintiff's Emergency Motion and did so based on “the extraordinary demands made by the Plaintiff upon Cisco for document production, the costs incurred to date by Cisco, and the Plaintiff's failure to demonstrate that the relevance and importance to the case of the documents are proportional to the cost required for their production.” See
June 11 Order at 2. The Court therefore directed that Cisco IronPort must review the 500,000 “potentially privileged” documents identified in Cisco IronPort's electronic data only on the condition that Plaintiff pay Cisco IronPort $300,000 for the costs of the review. It appears to the Court that Cisco IronPort's document production is now substantially complete, and the Court will not impose further cost shifting at this time.
*4 16. Cisco IronPort seeks a protective order from the further production of source code beyond what it has made available to Plaintiff to date. Based on statements made by Plaintiff's counsel at the June 24 hearing, it appears this issue is now moot, as the parties appear to agree that source code production is now complete. The parties likewise have agreed on the terms of a protective order relating to the confidentiality of source code, so that Plaintiff now has access to the source code that has been produced.
17. In connection with the discovery motions, Federal Rule 37(a) (5)(A) provides the Court with authority to award expenses, including attorneys' fees, after an opportunity to be heard, in favor of the moving party unless the moving party did not attempt in good faith to obtain the disclosure without court intervention, the opposing party's nondisclosure was substantially justified, or other circumstances make an award of expenses unjust. Federal Rule 37(a) (5)(B) provides for the payment of expenses, including fees, to the non-moving party when a motion is denied unless the motion was substantially justified or other circumstances make an award of expenses unjust. Federal Rule 37(a)(5)(C) provides for the apportionment of reasonable expenses, after an opportunity to be heard, in circumstances where a motion is denied in part and granted in part.
18. Based on the facts set forth above, as well as in its Order of June 11, 2008, the Court finds that Cisco IronPort is entitled to recover, pursuant to Rule 37(a)(5), 75% of its attorneys' fees that it has incurred in connection with this discovery dispute. The Court therefore ORDERS that Plaintiff or its counsel, King & Spalding, pay 75% of the attorneys' fees incurred by Cisco IronPort in connection with these cross-motions, which Cisco IronPort has calculated to be $86,786.95 (i.e.,
75% of its total attorneys' fees of $115,715.93). This payment shall be delivered to Duane Morris, LLP, counsel of record for Cisco IronPort, within 10 days of the date of this Order.
End of Document.