*1 Before the Court is Defendant Monson Fruit Company, Inc.’s Motion to Compel, ECF No. 138. The Motion was considered without oral argument. Plaintiff Her Majesty the Queen in Right of Canada as represented by the Minister of Agriculture and Agri-Food (“AAFC”) is represented by Gaspare Bono, Jennifer Bennett, Leanna Anderson, Leslie Barry, and Daniel Short; Counter-Defendant Summerland Varieties Corporation (“SVC”) is also represented by Daniel Short and Jennifer Bennett. Defendant Van Well Nursery, Inc. (“Van Well”) is represented by Quentin Batjer, Kent Doll, and Timothy Billick; Defendants Gordon and Sally Goodwin (the “Goodwins”) are also represented by Quentin Batjer and Timothy Billick. Defendant Monson Fruit Company (“Monson Fruit”) is represented by Mark Walters, Mitchell West, and Kevin Regan.

In the present Motion to Compel, Monson Fruit's request is twofold. First, it requests the Court compel AAFC and SVC to provide search terms and other information to determine the adequacy of their discovery responses and production. Second, Monson Fruit seeks the Court to compel AAFC and SVC to produce specific documents that it asserts exist and are in their possession. For the reasons discussed below, the Court grants the foremost request and denies the latter. The parties are ordered to meet and confer on the issues detailed below within two days of the date of this Order.

This action centers around the alleged infringement of AAFC's patent in a sweet, late-maturing cherry tree known as “Staccato.” AAFC alleges that, knowing Staccato was a patented variety, Defendants propagated, possessed, grew, and sold Staccato trees and fruit under a different alias in the United States, to wit, “Glory.”

Defendants deny all claims against them. Meanwhile, Defendants Van Well, Monson Fruit, and the Goodwins allege that AAFC and Canadian corporation SVC fraudulently pursued patent prosecution and enforcement, and that the Staccato tree variety was publicly available for over a year prior to the filing date with the U.S. Patent Office.

On June 15, 2021, Monson Fruit propounded discovery on AAFC and SVC regarding (1) the methods used by AAFC and SVC to obtain documents and responses to its discovery requests, and (2) documents related to either AAFC or SVC's knowledge of the production or sale of Staccato before March 6, 2003 pertaining to certain individuals. Decl. of Mark P. Walters (“Walters Decl.”), ECF No. 139, Exs. C at 2, D at 1. The first request for production in dispute is as follows:

Walters Decl. at 130. The interrogatory is substantively the same as the request for production and identical to the interrogatory and request for production addressed to SVC. See generally Walters Decl., Exs. E at 7–8 (RFP No. 32 as to SVC), G at 6–7 (Interrog. No. 4 as to SVC), F at 6–7 (RFP No. 41 as to AAFC), H at 6–7 (Interrog. No. 15 as to AAFC).

AAFC and SVC objected to the request on several bases, including that the request was overly broad and sought information protected by privilege. The parties conducted a meet and confer, and AAFC and SVC supplemented their discovery responses on September 3, 2021. However, neither party provided complete answers to the request, such as the specific search terms utilized. Walters Decl. at 10–13; id. at Ex. O at 25.

The June 15, 2021 set of discovery also requested documents “that refer or relate to AAFC's [or SVC's] knowledge of the production or sale of Staccato by any party in the United States before March 6, 2003,” and which pertain to at least one party or nursery named in the request, for example: Kyle Mathison Orchards, Bob Mathison Orchards, Dave Mathison, Stemilt Growers, Inc., Ron Moon, Sunny Hill Orchard (Paul Nelson), Don Nusom, and Valley View Orchards. See generally Walters Decl., Ex. E at 8–13 (RFP Nos. 33 and 34 as to SVC); Walters Decl., Ex. F at 5–9 as to AAFC (RFP Nos. 42 and 43 to AAFC).

Federal Rule of Civil Procedure 34 provides that “[a] party may serve on any other party a request within the scope of Rule 26(b).” Rule 26(b) states that parties “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.” The relevant information sought “need not be admissible at trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence.” Fed. R. Civ. P. 26(b). A district court should limit the frequency or extent of discovery if it determines that (1) “the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive”; (2) “the party seeking discovery has had ample opportunity to obtain the information by discovery in the action”; or (3) “the burden or expense of the proposed discovery outweighs its likely benefit.” Id. at 26(b)(2).

*3 “District courts have broad discretion in determining relevancy for discovery purposes.” Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 635 (9th Cir. 2005) (citing Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002)). If requested discovery is not answered, the requesting party may move for an order compelling such discovery. Fed. R. Civ. P. 37(a)(1). The party that resists discovery has the burden to show why the discovery request should be denied. Blankenship v. Hearst Corp., 519 F.2d 418, 429 (9th Cir. 1975). “[I]t is well settled that a party responding to a discovery request ‘has a duty to make a reasonable search of all sources reasonably likely to contain responsive documents.’ ” Estate of Moreno v. Correctional Healthcare Companies, Inc., No. 4:18-CV-5171-RMP, 2020 WL 5739747 (E.D. Wash. Jan. 8, 2020) (emphasis in original) (citation omitted). “If the responding party asserts that no responsive documents exist, then the responding party should state that claim with ‘sufficient specificity to allow the Court to determine whether the party made a reasonable inquiry and exercised due diligence.’ ” Id. (quoting Hisle v. Conanon, No. 1:17-cv-01400-LJO-SAB (PC), 2018 WL 4444959, at *4 (E.D. Cal. Sept. 14, 2018)).

Monson Fruit argues that SVC and AAFC's discovery responses are incomplete because (1) the parties failed to produce certain documents that Monson Fruit alleges must be in their possession; and (2) the responses fail to provide sufficient information for Monson Fruit to meaningfully assess the adequacy of the search for responsive documents and information. Specifically, Monson Fruit contends that emails from key witnesses and “trusted nurseries” before the pre-critical date of March 6, 2003 were omitted. Monson Fruit argues that it needs supplemental responses to ensure a diligent search was conducted by the parties to obtain responsive materials.

AAFC and SVC contend that they have produced all responsive documents to the requests in question and note that Monson Fruit proffered no evidence that emails dated prior to March 6, 2003 on the topics requested ever existed or still exist. AAFC and SVC characterize Monson Fruit's request as “discovery about discovery,” overreaching, and potentially violative of work product privilege. Further, AAFC and SVC assert that Monson Fruit could obtain any non-privileged information on the subject through anticipated Rule 30(b)(6) depositions of AAFC and SVC. Decl. of Mark P. Walters (“Walters Decl.”), ECF No. 139, Exs. C at 2, D at 1; Declaration of Jennifer Bennett (“Bennett Decl.”), ECF No. 143, Exs. 1–2. Finally, AAFC and SVC argue that Monson Fruit's request is immature and unripe, as the parties were not yet at an “impasse” on these issues.

The parties dispute the transparency and scope of discovery in this action. Under Rule 26(b), a party 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. The universe in which discovery on a party's claims or defenses were conducted is relevant, aids in uncovering the sufficiency of production, and serves the greater purposes of transparency in discovery. Apple, Inc. v. Samsung Electronics Co. Ltd., No. 12–CV–0630–LHK (PSG), 2013 WL 1942163, *3 (N.D. Cal. May 9, 2013). This is because, generally, transparency and collaboration are essential to meaningful, cost-effective discovery under the Federal Rules of Civil Procedure. Further, the search terms and custodians used to obtain discovery are not privileged, as they relate to issues of fact. See Romero v. Allstate Ins. Co., 271 F.R.D. 96, 109–10 (E.D. Pa. 2010) (finding that document production information, including search terms, did not fall under work product protection because such information related to facts) (citing Upjohn Co. v. United States, 449 U.S. 383, 395–96 (1981) (“Protection of the privilege extends only to communications and not to facts. The fact is one thing and a communication concerning that fact is entirely different.”)); see also Doe v. District of Columbia, 230 F.R.D. 47, 55–56 (D.D.C. 2005) (holding that Rule 26(b)(1) can be read to allow for discovery of document production policies and procedures, and that such information is not protected under the work product doctrine or attorney-client privilege).

*4 In this case, the most appropriate and efficient course of action would have been an agreement by the parties as to the search terms and data custodians, prior to AAFC and SVC's document retrieval, as such an agreement exemplifies the principles of “cooperative, collaborative, [and] transparent discovery.” The Sedona Conference, The Sedona Conference Cooperation Proclamation: Resources for the Judiciary (3d ed. June 2020). The Court finds that AAFC and SVC's failure to promptly disclose the employees or former employees whose emails they searched, including custodians they interviewed, and other document repositories they examined “violate[s] principles of an open, transparent discovery process.” See DeGeer v. Gillis, 755 F.Supp.2d 909, 929 (N.D. Ill. 2010). However, AAFC and SVC's inflexibility is no justification for Monson Fruit's failure to propose search terms and custodians of its own or specify the meaning of certain requests after inquiry from opposing counsel. Bennett Decl. at 4, ¶¶ 8–9 (seeking clarification on, inter alia, the meaning of a “map” of its computer network). The “meet and confer” requirement mandates that the parties not only meet face-to-face or by telephone—but also “make genuine efforts to resolve the dispute by determining precisely what the requesting party is actually seeking; what responsive documents or information the discovering party is reasonably capable of producing; and what specific, genuine objections or other issues, if any, cannot be resolved without judicial intervention.” Cotracom Commodity Trading Co. v. Seaboard Corp., 189 F.R.D. 456, 459 (D. Kan. 1999). If the parties had discussed possible search terms and record custodians throughout the discovery process, they might have been able to resolve their differences without the Court's intervention—and thereby avoid the substantial time and expense spent briefing discovery issues. For this reason, the Court finds that Monson Fruit shares responsibility for this situation.[1]

With respect to Monson Fruit's requests for specific documents, the Court finds that the requests are merely speculative and for that reason are denied. If Monson Fruit believes additional responsive documents to Requests for Production Numbers 33 and 34 (to SVC) and 42 and 43 (to AAFC) exist, it should propose specific search terms or document repositories to be searched that it believes would yield the full array of responsive documents.

Accordingly, the Court grants the Motion to Compel, in part. The parties shall meet and confer within two days of the date of this Order and establish deadlines for supplemental responses to (1) Request for Production Number 32 and Interrogatory Number 4 to SVC, and (2) Request for Production Number 41 and Interrogatory Number 15 to AAFC. Monson Fruit shall consider what information sought to be elicited through these requests was acquired through the Rule 30(b)(6) depositions and narrow the requests accordingly. Subsequently, AAFC and SVC shall provide complete responses to those requests.

Accordingly, IT IS HEREBY ORDERED:

1. Defendant Monson Fruit Company, Inc.’s Motion to Compel, ECF No. 138, is GRANTED, in part.

2. The parties SHALL meet and confer in good faith to resolve the remaining discovery issues articulated herein within TWO (2) days of this Order.

IT IS SO ORDERED. The District Court Clerk is hereby directed to enter this Order and to provide copies to counsel.

DATED this 6th day of December 2021.

The Court denies Monson Fruit's request for attorney's fees on this basis, as a fee award would be unjust. Fed. R. Civ. P. 37(5)(A)(iii).