KAIST IP US LLC, Plaintiff, v. SAMSUNG ELECTRONICS CO., LTD. et al., Defendants No. 2:16-CV-01314-JRG-RSP United States District Court, E.D. Texas, Marshall Division Filed December 21, 2017 Counsel Andrew Choung, Echelon Law Group, PC, Charlotte J. Wen, Jason G. Sheasby, Irell & Manella, Guy M. Rodgers, Rex Hwang, Sheng-Wen Desmond Jui, Thomas Patrick Burke, Glaser Weil Fink Howard Avchen & Shapiro, LLP, Los Angeles, CA, Charles Ainsworth, Robert Christopher Bunt, Parker Bunt & Ainsworth, Tyler, TX, for Plaintiff. Allan M. Soobert, Stephen B. Kinnaird, Blair M. Jacobs, Paul Hastings LLP, Richard L. Rainey, Covington & Burling LLP, Washington, DC, Anupam Sharma, Robert Thomas Haslam, III, Covington & Burling LLP, Victoria Fishman Maroulis, Quinn Emanuel Urquhart & Sullivan LLP, Redwood Shores, CA, Ariell Bratton, Jeffrey David Comeau, Paul Hastings LLP, San Diego, CA, Charles Kramer Verhoeven, David A. Perlson, Quinn Emanuel Urquhart & Sullivan LLP, Grant Nicholas Margeson, Paul Hastings LLP, San Francisco, CA, Christopher Wood Kennerly, Joseph John Rumpler, II, Paul Hastings LLP, Palo Alto, CA, Gregory Scott Nieberg, Covington & Burling LLP, New York, NY, Harry Lee Gillam, Jr., Melissa Richards Smith, Gillam & Smith, LLP, Marshall, TX, Leonard Davis, Fish & Richardson P.C., Dallas, TX, Soyoung Jung, Paul Hastings LLP, Los Angeles, CA, for Defendants. Payne, Roy S., United States Magistrate Judge ORDER *1 In this patent case, the Court now considers KAIST's Motion to Compel Production of Emails [Dkt. # 112]. After briefing and argument, the Court will DENY the motion. The Court, however, will ORDER Defendants to notify the Court when it contends it has produced all “waves” of its production. I. BACKGROUND KAIST complains Defendants have collectively produced only a small number of emails, and that it is virtually impossible such a low volume of email production includes the universe of emails relevant to this case. KAIST specifically calls out three categories of emails: (1) those referencing or relating to U.S. Patent 6,885,055; (2) those referencing or relating to Professor Jong-Ho Lee, KAIST IP US LLC, KAIST IP Co., Ltd., and P&IB Co., Ltd.; and (3) those by, between, with, or among 21 specific individuals concerning matters relevant to this action. Pl.'s Motion [Dkt. # 112] at 3. Defendants generally claim the requested email production is not proportional to the needs of the case, and that the subject of the dispute is not one typically discussed in email. At a hearing on the motion, Defendants represented they recently produced a “first wave” of over 8000 pages of documents with more to come. Defendants represented their “first wave” should give KAIST an idea of the types of emails that exist as a basis for formulating additional targeted searches. Defendants therefore urge the Court to deny the motion. Defendants also urge the Court to enter an e-discovery order. KAIST, however, argues basic email production should not be limited by particular custodians or search terms, but rather should be governed by the same scope called for by the Court's Discovery Order [Dkt. # 47]. KAIST also argues an e-discovery order would be inappropriate because Defendants—not KAIST—are best positioned to determine what emails are relevant. II. APPLICABLE LAW Generally, “[p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(2)(A). The burden is on the party resisting discovery to establish the discovery is not proportional. See also Samsung Elecs. Am. Inc. v. Yang Kun “Michael” Chung, No. 3:15-CV-4108-D, 2017 WL 896897, at *11 (N.D. Tex. Mar. 7, 2017) (“a party seeking to resist discovery on these grounds still bears the burden of making a specific objection and showing that the discovery fails the proportionality calculation mandated by [Fed. R. Civ. P. 26(b)]”) “A party need not provide discovery of electronically stored information from sources that the party identifies as not reasonably accessible because of undue burden or cost.” Fed. R. Civ. P. 26(b)(2)(B). “On motion to compel discovery or for a protective order, the party from whom discovery is sought must show that the information is not reasonably accessible because of undue burden or cost.” Id. “If that showing is made, the court may nonetheless order discovery from such sources if the requesting party shows good cause, considering the limitations of Rule 26(b)(2)(C).” Id. III. DISCUSSION *2 Samsung's response to KAIST's motion implicates two distinct requirements of Fed. R. Civ. P. 26. First, Rule 26(b)(1) requires proportionality as to all discovery, but the party resisting discovery bears the burden of showing the discovery fails the proportionality test. Second, Rule 26(b)(2)(B) allows the party resisting production of electronically stored information (ESI) to avoid production if such ESI is not reasonably accessible because of undue burden or cost. As to Rule 26(b)(1), Samsung improperly shifts the burden of showing proportionality to KAIST. Specifically, Samsung argues “Plaintiff has not established the importance of the issues,” Defs.' Resp. [Dkt. # 132] at 5, “Plaintiff has not shown the importance of the requested discovery in resolving the issues, id. at 6, “Plaintiff has not shown that the amount in controversy weighs in its favor,” id. at 6, and “[Plaintiff] has not met its burden of showing the importance of such discovery,” id. at 7. But the burden is Samsung's—not KAIST's—and Samsung's response does not meet that burden. As to Rule 26(b)(2)(B), Samsung has not shown the requested emails are “not reasonably accessible because of undue burden or cost.” That analysis considers factors such as the complexity of the ESI and the nature of the media on which the ESI is stored. See e.g., Zubulake v. UBS Warburg LLC, 217 F.R.D. 309, 318–19 (S.D.N.Y. 2003) (“[W]hether production of documents is unduly burdensome or expensive turns primarily on whether it is kept in an accessible or inaccessible format (a distinction that corresponds closely to the expense of production).”). But despite invoking Rule 26(b)(2)(B) as its justification for not producing responsive emails, Samsung provides no analysis of the relevant factors. Nonetheless, the Court will deny the motion for two reasons. First, there is already an order governing discovery in this case that requires Samsung to “produce or permit the inspection of all documents, electronically stored information, and tangible things in the possession, custody, or control of the party that are relevant to the pleaded claims or defenses.” Discovery Order [Dkt. # 47] at 3. A second order of identical scope is unnecessary. Second, Samsung represented to the Court it has searched for responsive emails, and produced (or alternatively disclosed in its privilege log) the emails resulting from the search for categories (1) and (2). As to category (3), Samsung has concluded the requested emails are not relevant. KAIST gave Samsung the discretion to make that determination by requesting emails that “concern[ ] matters relevant to this action.” Pl.'s Motion [Dkt. # 132] at 3 (citing Choung Letter (Sept. 8, 2017) [Dkt. # 112-1] ); see also id.at 6 (“Defendants and their counsel should be competent enough to distinguish, in good faith, between trivial emails and an email that concerns a bona fide matter relevant to this action.”). Without some evidence that Samsung has not made such relevancy determinations in good faith, the Court will not take action. Finally, the Court denies Samsung's request for an e-discovery order. This case has been pending for a year. Initial and Additional Disclosures were due in April 2017. Dkt. Control Order [Dkt. # 46] at 4. The deadline to substantially complete document production passed in October. Id. at 3. It would be prejudicial to KAIST to change the rules under which the parties have been operating this late in the proceeding based solely on Samsung's request in a response to a motion to compel, especially without giving KAIST an opportunity to first respond. IV. CONCLUSION & ORDER *3 The Court DENIES KAIST's Motion to Compel Production of Emails [Dkt. # 112]. The Court, however, ORDERS Defendants to notify the Court when it contends it has produced all “waves” of its production, which should be done no later than January 8, 2018. The notice must include a summary of the steps and strategy undertaken by Defendants to search for responsive emails. SIGNED this 21st day of December, 2017.