Patterson Dental Supply, Inc. v. Pace
Patterson Dental Supply, Inc. v. Pace
2020 WL 13032906 (D. Minn. 2020)
April 2, 2020
Brisbois, Leo I., United States Magistrate Judge
Summary
The court ordered the plaintiff to provide a full and complete response to the defendant's Interrogatory No. 8, as well as Interrogatory Nos. 12 and 13 and Request for Production No. 10. Additionally, the court ordered the plaintiff to provide any information regarding specific customers to the defendant within seven days and the defendant to produce any responsive documents within fourteen days. The court also ordered the plaintiff to preserve any ESI such as emails, text messages, and other digital documents, and to follow the court's instructions regarding the handling of this ESI.
Additional Decisions
Patterson Dental Supply, Inc., Plaintiff,
v.
Daniele Pace, et al., Defendants
v.
Daniele Pace, et al., Defendants
Case No. 19-cv-1940 (JNE/LIB)
United States District Court, D. Minnesota
Filed April 02, 2020
Counsel
J. Thomas Vitt, Joseph W. Hammell, Kristin K. Zinsmaster, Rebecca Kline, Jones Day, Kristin Simonet, Employment, Benefits and Labor, Minneapolis, MN, for Plaintiff.Christopher W. Stephen M. Premo, Madel PA, Minneapolis, MN, Mark N. Parry, Moses & Singer LLP, New York, NY, for Defendant Daniele Pace.
Abraham Skoff, Pro Hac Vice, Daniel Hoffman, Pro Hac Vice, Mark N. Parry, Pro Hac Vice, Moses & Singer LLP, New York, NY, Christopher W. Madel, Stephen M. Premo, Madel PA, Brooks F. Poley, Winthrop & Weinstine, PA, Mpls, MN, for Defendant Henry Schein, Inc.
Brisbois, Leo I., United States Magistrate Judge
ORDER
*1 This matter comes before the undersigned United States Magistrate Judge pursuant to a general assignment made in accordance with the provisions of 28 U.S.C. § 636, and upon Plaintiff's Motion to Compel, [Docket No. 85], and Defendant Daniele Pace's Motion to Compel. [Docket No. 106].
At a Motions Hearing regarding the present Motions, the Court ordered the parties to engage in a supplemental meet and confer to determine the extent to which the discovery disputes presented to the Court remained in dispute in light of the developments at the Motions Hearing and to advise the Court of the results of that supplemental meet and confer by joint letter. Following receipt of the parties’ joint letter, the Court took the parties’ Motions to Compel under advisement. (Minutes [Docket No. 120]).
For the reasons discussed herein, Plaintiff's Motion to Compel, [Docket No. 85], is GRANTED in part and DENIED in part, as set forth herein, and Defendant's Motion to Compel, [Docket No. 106], is GRANTED in part and DENIED in part, as set forth herein.
I. Background
Plaintiff initiated the present case in the First Judicial District, County of Dakota, State of Minnesota. (Notice of Removal [Docket No. 1]). Defendant Pace removed the present case to this Federal Court on July 23, 2019. (Id.). Plaintiff filed its operative Amended Complaint on December 20, 2019. (Amended Compl. [Docket No. 80]). Plaintiff's Amended Complaint names as Defendants Daniele Pace, Plaintiff's former employee, and Henry Schein, Inc., Defendant Pace's new employer and one of Plaintiff's direct competitors. (Id.).
Plaintiff distributes dental supplies, equipment, and software to dental professionals across the United States. (Id. at 1). In June 2013, Plaintiff hired Defendant Pace as a “CAD/CAM” or “CEREC” Specialist responsible for “working directly with territory sales representative to provide specialized counseling and services to CAD/CAM customers.” (Id. at 1–3). Defendant Pace “worked out of Patterson's Denver location and she had responsibilities throughout Colorado and portions of Wyoming.” (Id. at 3). On February 9, 2018, during her employment with Plaintiff, Defendant Pace signed an employment agreement in which, Plaintiff alleges, Defendant Pace agreed to “keep in confidence and trust” all confidential and proprietary information. (Id. at 4). The employment agreement also contained provisions requiring Defendant Pace, at the time her employment was termination, to provide her employer with all her personally owned electronic devices which “contain[ ] or could contain any Company Property,” including confidential information. (Id. at 5).
On March 18, 2019, Defendant Pace terminated her employment with Plaintiff. (Id. at 9). According to Plaintiff, Defendant Pace “immediately thereafter took a job with Henry Schein as Regional Sales Manager in the Denver market.” (Id. at 9).
Plaintiff alleges that Defendant Pace breached her employment agreement in a number of ways, including breaching the confidentiality provisions, failing to return Plaintiff's property, breaching the non-solicitation provision, failing to provide Plaintiff with her mobile devices for inspection, misappropriating Plaintiff's trade secrets, retaining trade secret information without authorization, and disclosing trade secret information to solicit Patterson customers. (Id. at 8–21).
*2 Based on the allegations in its Complaint, Plaintiff raises eight causes of action. (Id. at 13–21). Specifically, Plaintiff asserts the following causes of action: Breach of Contract (Count I) against Defendant Pace; Misappropriation of Trade Secrets (Count II) against Defendants Pace and Henry Schein; Conversion (Count III) against Defendant Pace; Tortious Interference with Contractual Relationships (Count IV) against Defendants Pace and Henry Schein; Tortious Interference with Prospective Economic Advantage (Count V) against Defendants Pace and Henry Schein; Breach of Fiduciary Duty and Duty of Loyalty (Count VI) against Defendant Pace; Inducing, Aiding, and Abetting Breaches (Count VII) against Defendant Henry Schein; and Conspiracy (Count VIII) against Defendants Pace and Henry Schein. (Id.).
It is unclear from the record now before the Court the exact date upon which Plaintiff served its first set of Interrogatories and Request For Production upon Defendant Pace. Defendant Pace responded to Plaintiff's Interrogatories and Requests for Production on October 14, 2019.
On November 20, 2019, Defendant Pace served her first set of Interrogatories and Request for Production upon Plaintiff. Plaintiff responded to Defendant Pace's first set of Interrogatories and Request for Production on January 3, 2020.
On January 21, 2020, Plaintiff filed its Motion to Compel, [Docket No. 85], and on February 10, 2020, Defendant Pace filed her Motion to Compel. [Docket No. 106]. The undersigned held a Motions Hearing regarding the parties’ Motions on February 24, 2020. (Minutes [Docket No. 120]). At the Motions Hearing, the parties narrowed several of their discovery requests. Based on the change in circumstances underlying the parties’ Motions, the Court ordered the parties to engage in a supplemental meet and confer to determine the extent to which the discovery disputes presented to the Court remained in dispute in light of the developments at the Motions Hearing and to advise the Court of the results of that supplemental meet and confer by joint letter. Following receipt of the parties’ joint letter, the Court took the parties’ Motions to Compel under advisement. (Minutes [Docket No. 120]).
II. Standard of Review
Federal Rule of Civil Procedure 26(b)(1) states:
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, 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.
However, “discovery may not be had on matters irrelevant to the subject matter involved in the pending action.” Miscellaneous Docket Matter #1 v. Miscellaneous Docket Matter #2, 197 F.3d 922, 925 (8th Cir. 1999); Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978); see also, Hofer v. Mack Trucks, Inc., 981 F.2d 377, 380 (8th Cir. 1992) (Rule 26 “is liberal in scope and interpretation, extending to those matters which are relevant”).
The required threshold showing of relevance “is met if the information sought is ‘relevant to the subject matter involved in the pending action.’ ” Orduno v. Pietrzak, No. 14-cv-1393 (ADM/JSM), 2016 WL 5853723, *3 (D. Minn. Oct. 5, 2016) (quoting Archer Daniels Midland Co. v. Aon Risk Servs., Inc. of Minn., 187 F.R.D. 578, 579 (D. Minn. 1999)). The party seeking discovery is responsible for making the threshold showing of relevance before production of information is required. See, Hofer, 981 F.3d at 380. If that threshold showing is made, the party resisting production then bears the burden of establishing a lack of relevancy or undue burden. See, Mallak v. Aitkin County, No. 13-cv-2119 (DWF/LIB), 2016 WL 9088760. *5 (D. Minn. Dec. 22, 2016).
*3 “On notice to other parties and all affected persons, a party may move for an order compelling disclosure or discovery.” Fed. R. Civ. P. 37(a)(1). For the purposes of such a motion, “an evasive or incomplete disclosure, answer, or response must be treated as a failure to disclose, answer, or respond.” Fed. R. Civ. P. 37(a)(4). Federal Rule of Civil Procedure 37(a)(3) provides for various motions to compel disclosure or compel discovery depending on the nature of the failure by the other party.
Specifically, the Court may compel a discovery response if “a party fails to answer an interrogatory submitted under Rule 33,” or if “a party fails to produce documents or fails to respond that inspection will be permitted—or fails to permit inspection—as requested under Rule 34.” Fed. R. Civ. P. 37(a)(3)(B)(iii)–(iv).
III. Finding of General Applicability
As an initial matter, the Court notes that in response to several of the discovery request now at issue the responding party included in its response several objections which are mere boilerplate objections. For example, in response to the discovery requests, both parties generically assert the discovery requests are “vague,” “ambiguous,” or “disproportionate to the needs of the case” without further explanation as to how the raised objection is applicable to the specific discovery request.
“Routine, ‘[b]oilerplate objections, without more specific explanations for any refusal to provide information, are not consistent with the Federal Rules of Civil Procedure.’ ” In re: RFC & ResCap Liquidating Trust Litig., No. 13-cv-3451 (SRN/JJK/HB), 2015 WL 12778780, at *6 (D. Minn. June 8, 2015) (citation omitted); see, Farmers Ins. Exchange v. West, No. 11-cv-2297 (PAM/JJK), 2012 WL 12864845, at *10 (D. Minn. Sept. 21, 2012) (“Conclusory objections asserting the boilerplate response that a request is overly broad and burdensome are not valid objections”). Addressing the generic assertion of disproportionality specifically, the Committee Notes regarding the 2015 Amendments to Rule 26 clearly state that the restoration of the proportionality factors to Rule 26 was not “intended to permit the opposing party to refuse discovery simply by making a boilerplate objection that it is not proportional.” Rather, the party claiming undue burden has the responsibility to explain that burden because it “has far better information—perhaps the only information—with respect to that part of the determination.” See, Notes on 2015 Amendments to Rule 26.
Accordingly, to the extent the party responding to any discovery request at issue in the present Motions raised a merely boilerplate objection in its response and failed to raise any argument in support of that objection in the motion practice surrounding the present Motions, the Court will not address those boilerplate objections.
IV. Plaintiff's Motion to Compel. [Docket No. 85].
As narrowed by Plaintiff through the parties’ Court ordered supplemental meet and confer, Plaintiff's Motion to Compel, [Docket No. 85], seeks an Order of this Court compelling Defendant Pace to respond to Plaintiff's Request for Production No. 3 and No. 7, as well as, an Order of this Court compelling Defendant Pace to produce a privilege log which individually identifies the documents for which she is asserting a privilege. (See, Letter [Docket No. 138]). These are the only issues remaining before the Court in Plaintiff's Motion to Compel. (See, Id.).
A. Request for Production No. 3
*4 As originally drafted, Plaintiff's Request for Production No. 3, and Defendant Pace's response thereto, are as follows:
Request for Production No. 3: Produce for inspection and imaging all Mobile Devices,[1] as that term is defined in your Employee Agreement.
RESPONSE: Pace objects to this Request as overly broad, unduly burdensome, and disproportional to the needs of the case in light of the substantial invasion to Pace's privacy interest. Pace objects to this Request to the extent it would reveal documents and information that are protected by attorney-client privilege, the common-interest doctrine, work product doctrine, spousal or marital communications privilege, or other applicable privilege. Pace will not produce any Mobile Device for inspection and imaging.
(Exhibit F [Docket No. 88-6]).
In its memorandum in support of the present Motion, Plaintiff argues that Defendant Pace should be compelled to produce complete, unrestricted mirror images of her Mobile Devices because the use of search terms to search those devices would be insufficient due to the parties’ failure to reach agreed upon search terms, because her asserted privacy interest in her Mobile Devices is protected by the Protective Order in the present case, and because other Courts have purportedly permitted the inspection of electronic devices. Plaintiff further asserts that compelling Defendant Pace to produce complete mirror images of the Mobile Devices will not create an undue burden because Defendant Pace's counsel is already in possession of images of the Mobile Devices.
Defendant Pace has created mirror images of her Mobile Devices, and her forensic expert has created a report regarding the content of the device, including reports on when the data on each devices was last accessed, if any data was deleted from any device, if there were any attempts to delete data, if the device was connected to another data source, file sharing information, and if any software was installed or uninstalled. Defendant Pace has offered to produce the forensic report to Plaintiff; however, Defendant Pace declined to produce the complete, unrestricted mirror images of the Mobile Devices contending that allowing Plaintiff to access those complete images would permit access to personal and privileged information which is not relevant to the present action.
In the Court ordered supplemental meet and confer process, Plaintiff suggested that Defendant Pace “identify documents and files” she “claims are personal or privileged, remove such documents and files from the images and immediately produce the images to” Plaintiff's “vendor for imaging.” (Letter [Docket No. 123]). Subsequent to the imaging of the devices, Defendant Pace would “provide a report to” Plaintiff “identifying the files/documents removed and the basis for removal (e.g. personal or privileged),” and if Plaintiff “disputes the withholding of any file/documents, the parties would then meet and confer in an attempt to resolve the issue.” (Id.). Defendant Pace on the other hand suggested that the parties adopt the same protocol she contends have previously been adopted by other Courts in which Plaintiff would be provided a forensic report of the imaging but would not be provided the actual mirror images themselves. (Id.). Each party rejected the others’ proposal. (Id.).
*5 As noted above, “discovery may not be had on matters irrelevant to the subject matter involved in the pending action.” Miscellaneous Docket Matter #1, 197 F.3d at 925; see, Oppenheimer Fund, Inc., 437 U.S. at 351; Hofer, 981 F.2d at 380. The party seeking discovery is responsible for making the threshold showing of relevance before production of information is required. See, Hofer, 981 F.3d at 380.
“It is not unusual for a court to enter an order requiring the mirror imaging of the hard drives of any computers that contain documents responsive to an opposing party's request for production of documents,” particularly in cases where trade secrets and electronic evidence are both involved. Balboa Threadworks, Inc. v. Stucky, No. 5-cv-1157, 2006 WL 763668, at *3 (D. Kan. March 24, 2006) (“This is one method of assuring the preservation of evidence since electronic evidence may easily be erased and manipulated, either intentionally or unintentionally (by overwriting through continued use of the computer)”). Nonetheless, however, “Courts have been cautious in requiring the mirror imaging of computers where the request is extremely broad in nature and the connection between the computers and the claims in the lawsuit are unduly vague or unsubstantiated in nature.” Ameriwood Industries, Inc. v. Liberman, 2006 WL 3825291, at *4 (E.D. Mo. Dec. 27, 2006) (quoting Balboa, 2006 WL 763668, at *3).
In support of its proposition that other Courts have permitted inspection of Mobile Devices as it seeks here, Plaintiff relies on various cases. (Plf.’s Mem., [Docket No. 87], at 12–15). The Court's review of this cases, however, finds that they do not support Plaintiff's request for an Order compelling Defendant to produce unrestricted mirror images of her Mobile Devices. Plaintiff fails to provide any case where the Court ordered the responding party to actual produce the complete forensic mirror images directly to the requested party without restriction as Plaintiff here requests.
For example, in the Antioch case upon which Plaintiff relies to support its proposition that this Court should compel Defendant Pace to provide Plaintiff with an unrestricted forensic mirror image of her Mobile Devices, the Court there in Antioch in fact did not compel the responding party to provide the requesting party with a complete forensic image of the devices at issue. Antioch Co. v. Scrapbook Borders, Inc., 210 F.R.D. 645, 653 (D. Minn. 2002). Instead, the Court in Antioch ordered that a forensic expert chosen by the requesting party, and that expert's employees, would be “the only persons authorized to inspect, or otherwise handle” the devices to be imaged, and the Court specially noted that neither the requesting party nor “its counsel” were permitted to “inspect or otherwise handle the” devices. Id. at 653. Upon imaging the devices, the forensic expert in Antioch provided the parties with a report identifying the devices imaged and the action taken as to each device. Id. The forensic expert then provided the actual mirror images of the devices to the responding party, and the responding party “sift[ed] through the” image to respond to any propounded discovery requests. Id. The requesting party in Antioch was not permitted access to the actual, unrestricted forensic mirror image as Plaintiff now seeks in the present case; the requesting party in Antioch was not even permitted access to the report on the contents of the device.[2]
*6 In the present case, Plaintiff's Request for Production No. 3, as presently drafted, seeks production of Defendant Pace's Mobile Devices, or in other words the production of all the information on Defendant Pace's personally-owned devices. Plaintiff has failed to establish the threshold showing of relevance as it pertains to all the information on Defendant Pace's Mobile Devices. As the Court noted at the February 24, 2020, Motions Hearing, allowing Plaintiff to scour through Defendant Pace's Mobile Devices without limit would permit Plaintiff access to scores of irrelevant, highly personal information.
For example, compelling Defendant Pace to produce unrestricted, complete mirror images of her device to Plaintiff would permit Plaintiff to examine Defendant Pace's personal text message regardless of their relation to her employment, as well as, GPS location information of her location at all times she possessed the Mobile Devices. “While it is clear that relevant electronically stored information is discoverable, such discover must be subject to reasonable limits, just like any other form of discovery.” Brown v. Thompson, No. 8-cv-6323 (ADM/RLE), 2009 WL 10711895, at *5 (D. Minn. Dec. 15, 2009) (citing Henderson v. U.S. Bank, N.A., 2009 WL 1152019 at *1 (E.D. Wis. April 29, 2009) (a party “cannot simply request all of [the opposing party's] electronically-stored information and search it at will,” as “[i]t must instead request specific categories of information and allow [the opposing party] an opportunity to search their own data and produce responsive materials.”)).
Simply put, Plaintiff's Request for Production No. 3, as currently drafted, is overly broad and seeks discovery of irrelevant information. Given the broad nature of Plaintiff's Request for Production No. 3, as currently drafted, the specific information Plaintiff seeks cannot be decerned from the Request; instead, as currently drafted, Plaintiff seeks all information on the Mobile Devices without any limits whatsoever. Consequently, Plaintiff's Request for Production No. 3, as currently drafted, is overly broad in that it seeks information far beyond any relevant, discoverable scope.
Therefore, to the extent Plaintiff's Motion to Compel seeks an Order of this Court compelling Defendant Pace to produce the entire content of her Mobile Devices in response to Plaintiff's Request for Production No. 3, Plaintiff Motion to Compel, [Docket No. 85], is DENIED without prejudice.
B. Request for Production No. 7
As originally drafted, Plaintiff's Request for Production No. 7, and Defendant's response thereto, are as follows:
Request for Production No. 7: All documents that constitute, reflect, refer, or relate to your communications, contacts, or meetings with or concerning any customer or prospective customer at any time from March 1, 2019 through May 30, 2019.
RESPONSE: Pace objects to this Request as overly broad, unduly burdensome, vague and ambiguous to the extent it uses the omnibus term “relate to[.]” It is virtually impossible for Pace to understand what is called for in response to this Request, and therefore Pace is unable to determine whether she is withholding documents on the basis of this objection. Pace objects to this request as overly broad, vague and ambiguous as to the phrase “any customer or prospective customer[.]” This Request does not specify whose customer to which this Request refers. It is virtually impossible for Pace to understand what is called for in response to this Request, and therefore Pace is unable to determine whether she is withholding documents on the basis of this objection. To the extent it seeks each and every document relating to Pace communications, contacts, or meeting with every Henry Schein customer, this Request is overly broad and unduly burdensome to the extent it seeks documents that are irrelevant to the claims and defenses and disproportional to the needs of the case. Pace is withholding documents on the basis of these objections. Pace objects to this Request to the extent it seeks documents that are protected by attorney-client privilege, the common-interest doctrine, work product doctrine, spousal or marital communications privilege, or other applicable privilege. Pace is withholding documents on the basis of this objection. Subject to and without waiving Pace's general and specific objections, Pace will produce responsive documents and tangible things on a rolling basis beginning no later than October 22, 2019.
*7 (Exhibit F [Docket No. 88-6]).
Plaintiff contends Request for Production No. 7 seeks relevant information because Defendant Pace's communications with customers and prospective customers are relevant to her alleged improper solicitation of customers. Plaintiff has since clarified that by “customers and prospective customers” Request for Production No. 7 refers to all of Plaintiff's customers, Plaintiff's prospective customers, Henry Schein's customers, and Henry Schein's prospective customers.
Defendant Paces contends that Request for Production No. 7 is facially overbroad seeking irrelevant information because it seeks communication with non-Patterson customers. Defendant Pace asserts that she has “already produced any document or communication mentioning or referring to” Plaintiff's “business or customers since June 13, 2013.” (Def. Mem., [Docket No. 102], at 3) (emphasis in original) (footnote removed). Defendant Pace asserts now that she “only objected to Patterson's Request to the extent [it] seeks documents that do not refer to Patterson's business or customers.” (Id.).
In the Court ordered supplemental meet and confer, Plaintiff suggested Defendant Pace “identity, by name only the non-Patterson customers with whom she had communication, contact, or involvement so that the parties could address any such situations specifically.” (Letter [Docket No. 123]). Defendant Pace alternatively suggested Plaintiff “identify specific Patterson prospective customers that it had pitched during this time period but whose business Patterson did not obtain,” and then Defendant Pace would “produce responsive documents reflecting her involvement, if any, with such customers.” (Id.). The parties again declined each other's cross-proposals. (Id.).
Defendant Pace asserts, and Plaintiff does not challenge, that she has already produced any document or communication mentioning or referring to Plaintiff's business or customers during the relevant time period. Accordingly, the only possible documents which are at issue now are those documents from the relevant time period reflecting Defendant Pace's “contacts, communication, and involvement” which make no reference or mention of Plaintiff's business or customers. In other words, Plaintiff continues to seek discovery of documents reflecting Defendant Pace's communications with customers who appear to have never been solicited by Plaintiff, were never customers of Plaintiff, were never provided with Plaintiff's business information, and who never appear to have had any communication with Defendant Pace in any way related to Plaintiff, Plaintiff's business, or Plaintiff's other customers.
As noted above, “discovery may not be had on matters irrelevant to the subject matter involved in the pending action.” Miscellaneous Docket Matter #1, 197 F.3d at 925; see, Oppenheimer Fund, Inc., 437 U.S. at 351; Hofer, 981 F.2d at 380. Plaintiff, as the party seeking discovery, is responsible for making the threshold showing of relevance before production of information is required. See, Hofer, 981 F.3d at 380.
*8 Plaintiff has failed to demonstrate how the remaining discovery it now seeks by Request for Production No. 7 is relevant to the claims or defenses in the present case. Plaintiff contends that the information sought by Request for Production No. 7 is relevant to the allegation that Defendant Pace improperly solicited customers because those customers may have previously been customer of Plaintiff or Defendant Pace may have used Plaintiff's allegedly confidential information in her discussion with prospective customers to improper solicit said customers. However, Defendant Pace asserts, and Plaintiff does not contest, that she has already produced all documents that would fall into those described categories, i.e., any of Plaintiff's customers or previous customers, as well as, any document referring to or mentioning Plaintiff's business or customers. In short, Defendant Pace has already produced all relevant responsive information as relevance has been described by Plaintiff.
Therefore, to the extent Plaintiff's Motion to Compel seeks an Order of this Court compelling Defendant Pace to more fully respond to Plaintiff's Request for Production No. 7 by now also including her “contacts, communications, and involvement” with all of her current customers without limitation, Plaintiff Motion to Compel, [Docket No. 85], is DENIED.[3]
C. Privilege Log
Lastly, Plaintiff seeks an Order of this Court compelling Defendant Pace to produce “a privilege log that individually identifies documents for which she is asserting privilege.” (Letter [Docket No. 123]). Plaintiff agreed that Defendant Pace did not need to identify communication between Defendant Pace and her law firm; however, Plaintiff contends Defendant Pace is required to identify communications between her and/or her counsel and Henry Schein and/or its counsel. (Id.).
Defendant Pace contends she has complied with this request. (Def. Mem., [Docket No. 102], at 4). Specifically, Defendant Pace asserts that she has “itemized any documents found on or in any of the data sources she searched,’ but that “[o]ut of an abundance of caution” she also produced what she refers to as a “categorical privilege log.” (Id.). According to Defendant Pace, her categorical privilege log “reflects documents and communications that were not located during Pace's search for responsive documents and communication—either because the document or communication was created after the date the source was imaged or because the documents or communication exists elsewhere, such as her counsel's servers or a third party's servers.” (Id.).
Federal Rule of Civil Procedure 26(b)(5)(A) mandates:
When a party withholds information otherwise discoverable by claiming that the information is privileged ..., the party must: ... (ii) describe the nature of the documents ... not produced or disclosed—and do so in a manner that, without revealing information itself privileged or protected, will enable the other parties to assess the claim.
“[T]he privilege log is a convention of modern legal practice designed to conform with the requirements of [Rule] 26(b)(5).” Honeywell Int'l Inc. v. Furuno Elec. Co., No. 9-cv-3601 (MJD/TNL), 2013 WL 2385224, *2 (D. Minn. May 30, 2013) (citation omitted). “[T]he opposing party should be able, from the entry in the log itself, to assess whether the claim of privilege is valid.” Id. at *3 (citation omitted).
*9 Courts of this District have previously found that a privilege log which necessarily includes the following categories is sufficient to satisfy the requirements of Rule 26(b)(5): Author/Source, Recipients(s), CC(s), Date, Description, Privilege Asserted, and Beginning of Bates Number of the document. See, e.g., Bartholomew v. Avalon Capital Group, Inc., 278 F.R.D. 441 (D. Minn. 2011). “In the same vein, notations of whether named individuals are attorneys provide further assistance in determining whether the claimed privilege is acceptable.” BreathableBaby, LLC v. Crown Crafts, Inc., No. 12-cv-94 (PJS/TNL), 2013 WL 3350594, at *9 (D. Minn. May 31, 2013), report and recommendation adopted, 2013 WL 3349999 (D. Minn. July 1, 2013). The party withholding documents as privileged bears the burden of providing a factual basis in the privilege log that justifies the withholding. See, Triple Five of Minn., Inc. v. Simon, 212 F.R.D. 523, 527–28 (D. Minn. 2002).
In the present case, Defendant Pace as produced two documents she asserts are privilege logs: an itemized privilege log, entitled the Rolling Privilege Log, and a second document she refers to as a categorical privilege log. Plaintiff does not take issue with the sufficiency with which the items are described on the Rolling Privilege Log. Instead, Plaintiff appears to believe that there are additional items for which Defendant Pace is asserting a privilege which are not included on the Rolling Privilege Log, and Plaintiff appears to assert that these items are contained in the categories illustrated on the document Defendant Pace refers to as her categorical privilege log.
The Court's review of the record now before it finds Defendant Pace's collective privilege logs to be insufficient. Specifically, the Court finds Defendant Pace's purported Categorical Privilege Log to be an insufficient assertion of any privilege.
As other Court's have recognized, “a party may offer a categorical description of privileged documents in lieu of a privilege log if a document by document description would be unduly burdensome.” Pub. Serv. Co. of NH v. Portland Nat. Gas, 218 F.R.D. 361, 364 (D.N.H. 2003) (citing Fed. R. Civ. P. 26 advisory notes 1993). However, the opposing party must still be able, from the entry in the log itself, to assess whether the claim of privilege is valid. See, Fed. R. Civ. P. 26.
In the present case, Defendant Pace's purported Categorical Privilege Log fails to meet this standard. First, Defendant Pace has wholly failed to sufficiently demonstrate that a document by document description of privilege documents would be unduly burdensome. Second, the purported Categorical Privilege Log is insufficient to permit Plaintiff to assess the privilege being asserted and whether the claim of privilege asserted there is valid.
For example, the entries in Defendant Pace's Categorical Privilege Log each fail to provide the number of documents in each category, and they are not separated by document type. Entry number one appears to contain email correspondence, draft documents, and voicemails, however, there is no distinction between these different types of documents inside the single log entry. Moreover, although the purported Categorical Log provides a list of persons in the “To/From/CC” column, it fails to provide any distinction as to which persons were involved with which subset of documents included in each log entry. In short, Defendant Pace's Categorical Privilege Log is insufficient to allow an opposing party to assess the asserted privilege, and therefore, Defendant Pace's Categorical Privilege Log fails to comply the Rule 26 of the Federal Rules of Civil Procedure.
*10 Thus, to the extent Plaintiff's Motion to Compel seeks an Order of this Court compelling Defendant Pace to produce a privilege log that individually identifies the documents purportedly covered by Defendant Pace's self-described Categorical Privilege Log for which she is asserting privilege, Plaintiff Motion to Compel, [Docket No. 85], is GRANTED, as set forth herein.[4] Defendant Pace shall produce a supplement privilege log identifying each and every responsive document she is withholding on the basis of any privilege.[5] This supplemental privilege log shall comport with the Federal Rules of Civil Procedure and be consistent with the format described above and Defendant Pace's Rolling Privilege Log to include the following columns: Document ID; Document Type; Sent/created Date, To; From; CC; Description: and Privilege. Absent further Order of this Court, Defendant Pace may not produce said supplemental privilege log in the form of a generic categorical privilege log.
V. Defendant Pace's Motion to Compel. [Docket No. 106].
As narrowed by Defendant Pace through the parties’ Court ordered supplemental meet and confer, Defendant Pace's Motion to Compel, [Docket No. 106], seeks an Order of this Court compelling Plaintiff to respond to Defendant Pace's Interrogatory Nos. 8, 12, and 13, as well as, Defendant Pace's Request for Production Nos. 10, 11, and 12. (See, Letter [Docket No. 138]). These are the only issues remaining before the Court in Defendant Pace's Motion to Compel. (See, Id.).
A. Interrogatory No. 8
Defendant Pace's Interrogatory No. 8, and Plaintiff's response thereto, are as follows:
INTERROGATORY NO. 8:
Identify each document or communication concerning Patterson's discovery of Pace's use or disclosure of an Asserted Trade Secret or Asserted Confidential Information.
RESPONSE:
Patterson objects to Interrogatory No. 8 as overly broad, unduly burdensome, disproportionate to the needs of the case, vague and ambiguous—particularly with respect to the terms “discovery,” “use,” and “disclosure”—because it seeks irrelevant information, and because it seeks information that is subject to attorney-client privilege and the work product doctrine. Patterson further notes that its “discovery” of Defendant Pace's “use” and “disclosure” of Patterson's trade secrets and confidential information is a continuous, ongoing, and evolving process as more information and documents come to light in discovery. Subject to and without waiving its objections, Patterson refers Defendant Pace to its response to Document Request Nos. 4 and 22 and Interrogatory No. 7.
(Exhibit E [Docket No. 110-5]).
As incorporated into the Response to Interrogatory No. 8, Defendant Pace's Interrogatory No. 7, and Plaintiff's response thereto, are as follows:
INTERROGATORY NO. 7:
Identify each customer you contend Pace solicited using an Asserted Trade Secret, and for each customer: describe the facts of the alleged solicitation and Pace's alleged use of the Asserted Trade Secret to solicit the customer.
*11 RESPONSE:
Subject to and without waiving its objections, Patterson states that discovery in this matter is continuing, and in particular Patterson is still awaiting information and documents from Defendants Pace and Henry Schein that would be needed to answer Interrogatory No. 7, but Patterson provides the following information currently available to it:
• Dr. Mark Mollner: Defendant Pace called upon Dr. Mollner in Colorado Springs in her capacity as a Henry Schein sales manages to invite him to attend a Henry Schein event. As little as one week before her departure from Patterson, Defendant Pace prepared and delivered a sales quotation to Dr. Mollner for CEREC equipment.
• Dr. Ryan Cooper: Defendant Pace interacted with Dr. Cooper regarding his interest in CEREC technology in 2018. Dr. Cooper scheduled a CEREC demonstration with Defendant Pace shortly before her departure from Patterson. When a Patterson territory representative followed up with Dr. Cooper to confirm the demonstration appointment, Dr. Cooper stated that he was aware of Defendant Pace's departure and would be moving some portion of his business to Henry Schein.
• Dr. Todd Pickle: Defendant Pace prepared and delivered a Patterson sales quotation to Dr. Pickle in May 2018. Patterson believes evidence will show that Defendant Pace communicated with Dr. Pickle regarding the purchase of an intraoral scanner in July 2019 in her capacity as a Henry Schein sales manager.
• Drs. Michael and Grant Peterson (Parker Family Dental): Defendant Pace sold and quoted CEREC technology to Drs. Peterson and their practice in 2016. Defendant Pace called upon Parker Family Dental in October 2019. During the visit, Defendant Pace was informed of Patterson's quote to Parker Family Dental for a CEREC Primescan upgrade, and offered to provide a quote for the same upgrade on behalf of Henry Schein, along with tickets to Dentsply Siorna World.
(Id.). Likewise, as incorporated into the Response to Interrogatory No. 8, Defendant Pace's Request for Production Nos. 4 and 22, and Plaintiff's responses thereto, are as follows:
REQUEST FOR PRODUCTION NO. 4:
Documents and communications that are identified or referred to in Patterson's response to Pace's Interrogatories or that are otherwise responsive to Pace's Interrogatories.
RESPONSE:
Subject to and without waiving its objections, Patterson will produce non-privileged, responsive, documents it is able to locate after a reasonable, diligent search.
...
REQUEST FOR PRODUCTION NO. 22:
Documents and communications concerning lost customers, lost sales or diminished sales that you allege have been caused by Pace. Such documents should show specific products, specific customers, and specific quantities.
RESPONSE:
Patterson objects to Request for Production No. 22 to the extent it seeks information protected by the attorney-client privilege and/or work product doctrine. Subject to and without waving its objections, Patterson will produce responsive, non-privileged information it is able to locate after a reasonable, diligent search.
*12 (Exhibit F [Docket No. 110-6).
In her memorandum in support of the present Motion, Defendant Pace asserted that Plaintiff had failed to properly respond to Interrogatory No. 8 because Plaintiff's response fails to specifically identify documents or communications concerning “how” Plaintiff discovered Defendant Pace's alleged use or disclosure of a trade secret or confidential information. (Def.’s Mem., [Docket No. 108], 15–17). Defendant Pace contends that a proper response would require Plaintiff to identify the specific documents and communications which evidence “how” Plaintiff discovered Defendant Pace's alleged actions. (See, Id.).
In its memorandum in opposition to the present Motion, Plaintiff asserted that it had fully responded to Defendant Pace's Interrogatory No. 8. (Plf.’s Mem., [Docket No. 118], at 23–24). Plaintiff maintained that it had fully answered to the extent then possible because it was “in the process of discerning what documents Pace used and disclosed that contain Confidential trade secret,” and it had directed Defendant Pace to Interrogatory No. 7 where it detailed “a number of communications Patterson had relating to its determination that Pace was using and disclosing its confidential information.” (Id. at 23).
In the Court ordered supplemental meet and confer, Defendant Pace reclarified the Interrogatory No. 8 seeks “internal communications and documents reflecting how Patterson learned of Pace's alleged use or disclosure of trade secrets—other than communications with counsel.” (Letter [Docket No. 123]). Plaintiff declined to amend its response to Interrogatory No. 8. (See, Id.).
In other words, Plaintiff urges this Court to deny Defendant Pace's motion as to Interrogatory No. 8 because Plaintiff unilaterally interprets Interrogatory No. 8 as seeking information regarding Defendant Pace's generally alleged use or disclosure of confidential information, and Plaintiff contends it is disclosing that information on a rolling basis as it is discovered. Regardless of Plaintiff's subjective interpretation of Defendant Pace's discovery request, Interrogatory No. 8, on its face, clearly seeks information regarding “how” Plaintiff itself discovered Defendant Pace's alleged use or disclosure of the confidential information.
On the record now before the Court, it appears Plaintiff has failed to provide any response related to “how it discovered” Defendant Pace's use or disclosure of confidential information. Plaintiff simply declines to acknowledge that it is self-limiting its response to Interrogatory No. 8, or that Defendant Pace's Interrogatory No. 8, on its face, seeks discovery regarding “how” Plaintiff discovered Defendant Pace's alleged use or disclosure of confidential information.
Such a self-limited response by Plaintiff to Interrogatory No. 8 is at the very least incomplete and evasive in nature or simply non-responsive. Accordingly, Plaintiff's response to Defendant Pace's Interrogatory No. 8 will be treated as a failure to respond. See, Fed. R. Civ. P. 37(a)(4) (“an evasive or incomplete disclosure, answer, or response must be treated as a failure to disclose, answer, or respond”). Thus, Plaintiff has effectively failed to respond to Interrogatory No. 8. Plaintiff is required to respond to each interrogatory propounded. See, Fed. R. Civ. P. 33(b).
*13 Therefore, to the extent Defendant Pace's Motion to Compel, [Docket No. 106], seeks an Order of this Court compelling Plaintiff to fully respond to Interrogatory No. 8, Defendant Pace's Motion to Compel, [Docket No. 106], is GRANTED, as set forth herein. Consistent with this Court's analysis above and reading of the focus of Interrogatory No. 8, Plaintiff shall identify all documents and communications responsive to Interrogatory No. 8 as soon as practicable and in any event by no later than twenty-one (21) days from the date of this Order. If Plaintiff responds to Interrogatory No. 8, in whole or in part, by references to previously produced documents or business records, Plaintiff must specifically identify the responsive documents in sufficient detail to allow Defendant Pace to locate and identify the responsive document in the plethora of previously disclosed documents, e.g., by Bates number. See, Fed. R. Civ. P. 33(d).
B. Interrogatory Nos. 12 and 13 and Request for Production No. 10
Defendant Pace's Interrogatory Nos. 12 and 13, and Plaintiff's responses thereto, are as follows:
INTERROGATORY NO. 12:
Identify all former Patterson officers, managers, and employees of whom Patterson conducted exit interviews and retrieved Patterson property and information, including Asserted Trade Secrets or Asserted Confidential Information, before their employment terminated.
RESPONSE:
Patterson objects to Interrogatory No. 12 as overly broad, unduly burdensome, disproportionate to the needs of this case, and because it seeks irrelevant information. Subject to and without waiving its objections, Patterson states that all former employees are required to return Patterson information and property.
INTERROGATORY NO. 13:
Identify all individuals who Patterson has disciplined, up to and including termination, in whole or in part on the basis that they sent Patterson property and information to their personal email accounts during their employment at Patterson.
RESPONSE:
Patterson objects to Interrogatory No. 13 as overly broad, unduly burdensome, disproportionate to the needs of this case, and because it seeks irrelevant information.
(Exhibit E [Docket 110-5). Defendant Pace's Request for Production No. 10, and Plaintiff's response thereto, are as follows:
REQUEST FOR PRODUCTION NO. 10:
Documents and communications evidencing Patterson's efforts to retrieve Patterson's property and information from departing Patterson sales representatives, CEREC specialist, CAD/CAM representatives, managers, and employees, including Pace, before their employment terminated and to restrict said individuals’ access to Patterson's property and information after their employment terminated.
RESPONSE:
Patterson objects to Request for Production No. 10 because it is overly broad, disproportionate to the needs of this case and because it seeks irrelevant documents. Patterson further objects to Request for Production No. 10 as unduly burdensome. Subject to and without waiving its objections, Patterson will produce employment handbooks and policies it is able to locate after a reasonable diligent search relating to restrictions of Colorado employees’ access to confidential information. Patterson also refers Defendant Pace to the multiple communications sent to her and Henry Schein (copies of which she already has) showing Patterson's efforts to retrieve Patterson property and information from Pace after she had submitted her resignation.
(Exhibit F [Docket No. 110-6]).
In the Court ordered supplemental meet and confer, the parties reached the same impasse as to Interrogatory No. 12, Interrogatory No. 13, and Request for Production No. 10. (Letter [Docket No. 123]). Specifically, Plaintiff proposed limiting the discovery requests to “Denver branch sales employees for the last three years.” (Id.). Defendant Pace “agreed to limit” the discovery request to “Denver branch employees”; however, Defendant Pace opposed limiting the discovery request to a period of three years. (Id.). Instead, Defendant Pace proposed that the discovery request be limited to Denver employees during the period of time since June 13, 2013. Plaintiff continues to oppose Defendant Pace's temporal limitations. (Id.).
*14 The Court first addresses the relevance of the discovery sought by Interrogatory No. 12, Interrogatory No. 13, and Request for Production No. 10. As noted above, Plaintiff raises several causes of action against Defendant Pace, including one count alleging the Misappropriation of Trade Secrets (Count II). (Amended Compl., [Docket No. 80], at 13–21).
Although the parties disagree on overall legal standards, the parties agree that an element of a misappropriation of trade secret claim requires the owner of a trade secret to demonstrate that it took measures to prevent the information from becoming available to persons beyond those selected to have limited access. (Plf.’s Mem in Support of Mot. for TRO, [Docket No. 5], at 14–15; Def.’s Mem in Support of Mot. to Compel [Docket No. 8]). To assert information as a trade secret, the owner of the information must have taken reasonable measures to protect the its secrecy. See, Prime Therapeutics LLC v. Beatty, 354 F. Supp. 3d 957, 967 (D. Minn. 2018); AvidAir Helicopter Supply, Inc. v. Rolls-Royce Corp., 663 F.3d 966, 971 (8th Cir. 2011); Aaron, Bell Int'l, Inc. v. Rowell, No. 18-cv-01015 (RBJ), 2019 WL 5261626, at *8 (D. Colo. Oct. 17, 2019). If employees regularly disregard policies put in place to protect a trade secret, evidence of such actions can weigh “against a finding that reasonable efforts were made to maintain secrecy.” Berkley Risk Administrators Co., LLC v. Accident Fund Holdings, Inc., No. 16-cv-2671(DSD/KMM), 2016 WL 4472943, at *3 (D. Minn. Aug. 24, 2016) (citing Lexis–Nexis v. Beer, 41 F. Supp. 2d 950, 959 (D. Minn. 1999) (finding that polices which “were frequently disregarded in practice” raised a substantial question as to whether plaintiff made reasonable efforts to maintain secrecy)).
In the present case, Interrogatory Nos. 12 and 13, as well as, Request for Production No. 10, seek discovery related to Plaintiff's efforts to maintain the secrecy of its purported trade secret. Thus, under the circumstances of the present case, Defendant Pace's Interrogatory No. 12, Interrogatory No. 13, and Request for Production No. 10 seek discovery of information relevant to the defense of some of the Plaintiff's causes of action.
That being said, as drafted, Interrogatory No. 12, Interrogatory No. 13, and Request for Production No. 10, are overly broad. As written, these discovery requests would require Plaintiff to respond as to all of its thousands of employees across the nation since Plaintiff was founded.
The parties have agreed to geographically limit these discovery requests to the “Denver branch sales employees”; however, the parties could not reach an agreement as to the appropriate temporal scope of these discovery requests. Plaintiff suggests the requests should be temporally limited to the last three years, while Defendant Pace suggested the discovery requests be temporally limited to the time from June 13, 2013, her date of hire at Patterson, to present. (Letter [Docket No. 123]). Neither party provides any citations to legal authority to support its suggested temporal limitations.
“As a general principle, Courts tend to allow discovery for a reasonable temporal period antedating the filing of a complaint and the beginning of the pertinent statute of limitations.” Inline Packaging, LLC v. Graphic Packaging Int'l, Inc., No. 15-cv-3183 (ADM/LIB), 2016 WL 7042117, at *6–7 (D. Minn. July 25, 2016), objections overruled, 2016 WL 6534394 (D. Minn. Nov. 2, 2016). The Court's survey of relevant cases finds that, in cases involving an employee and a misappropriation of trade secret claim, Courts tend to allow discovery beyond the statute of limitations up to and including the date the defendant employee was hired by the plaintiff. See, e.g., HIRECounsel D.C., LLC v. Thuemmler, No. 5-cv-2111 (RWR/AK), 2007 WL 9770642, at *5–6 (D.D.C. Dec. 27, 2007).
*15 Although both parties fail to provide any legal support for their respective suggested temporal limitation, Plaintiff's suggested temporal limitation appears to conform with the statute of limitations on its misappropriation of trade secret claim, and Defendant Pace's suggest temporal limitation appears to coincide with the date Plaintiff hired Defendant Pace. (See, Amended Compl., [Docket No. 80], at 3). Discovery related to Plaintiff's efforts to maintain the secrecy of its purported trade secret during the time Defendant Pace was employed by Plaintiff, and therefore, during the time Defendant Pace was in possession of said information, is relevant to Plaintiff's claims in the present case.
The Court concludes that the temporal scope of relevance is comprised of the time from the date Plaintiff hired Defendant Pace to present. And Plaintiff has failed to demonstrate that responding to these three discovery requests—as narrowed in geographical scope to the “Denver branch sales employees” and in temporal scope to “since June 13, 2013”—would be unduly burdensome. Accordingly, Defendant Pace's Interrogatory No. 12, Interrogatory No. 13, and Request for Production No. 10 are limited in geographic scope to all “Denver branch sales employees,” and limited in temporal scope to the time period from the date Plaintiff hired Defendant Pace until present.
Therefore, to the extent Defendant Pace's Motion to Compel, [Docket No. 106], seeks an Order of this Court compelling Plaintiff to fully respond to Interrogatory No. 12, Interrogatory No. 13, and Request for Production No. 10, Defendant Pace's Motion to Compel, [Docket No. 106], is GRANTED in part and DENIED in part, as set forth herein. Plaintiff shall fully respond to Interrogatory No. 12, Interrogatory No. 13, and Request for Production No. 10, as now geographically and temporally narrowed, as soon as practicable and in any event by no later than twenty-one (21) days from the date of this Order.
C. Request for Production Nos. 11 and 12
Defendant Pace's Request for Production Nos. 11 and 12, and Plaintiff responses thereto, are as follows:
REQUEST FOR PRODUCTION NO. 11:
Documents and communications that individuals references in Paragraph 11 of these Requests’ Instructions sent from their Patterson email accounts to their personal email accounts.
RESPONSE:
Patterson objects to Request for Production No. 11 because it is overly broad, unduly burdensome, and disproportionate to the needs of this case and because it seeks irrelevant documents.
REQUEST FOR PRODUCTION NO. 12:
Documents and communications that individuals references in Paragraph 11 of these Requests’ Instructions sent or received discussing, referring to, or mentioning accessibility, storing, or sharing of Patterson documents and information on Dropbox.
RESPONSE:
Patterson objects to Request for Production No. 12 because it is overly broad, unduly burdensome, and disproportionate to the needs of this case and because it seeks irrelevant documents.
(Exhibit F [Docket No. 110-6]).[6]
In her memorandum in support of the present Motion, Defendant Pace further contends that Request for Production Nos. 11 and 12 seek relevant information regarding whether or not Plaintiff took reasonable efforts to maintain the secrecy of its confidential trade information. (Def.’s Mem., [Docket No. 108], at 22–23). Specifically, Defendant Pace contends that because Plaintiff “contended that its written policies did not permit Pace to send emails from her Patterson email account to her personal email accounts” nor “permit Pace to use Dropbox to store Patterson property and information” “whether Patterson employees routinely disregarded these alleged policies is relevant to Patterson's claims of misappropriation ....” (Id. at 22–23).
*16 In its memorandum in opposition to the present Motion, Plaintiff contends that Request for Production Nos. 11 and 12 seek irrelevant information because “whether Patterson employees violated its policies is not the relevant inquiry, it is only relevant to the extent Patterson was aware of such violations.” (Plf.’s Mem., [Docket No. 118], at 27). Plaintiff further argues that the discovery requests are overly broad because it references twenty-four (24) custodians, and Plaintiff suggests that the discovery requests be limited to six custodians as subjectively limited by Plaintiff. (Id. at 11). Specifically, Plaintiff maintains it identified six persons as custodians, “conducted interviews regarding the remaining 18 custodians from whom [Defendant] Pace requested documents to confirm that they were unlikely to have relevant information or documents,” and only conducted a search of the documents of the six custodians as selected by Plaintiff. (Id. at 6). Plaintiff asserts it selected the six custodians after it “reviewed the positions the individuals held with Patterson and determined whether the individuals worked directly with [Defendant] Pace to decide whether they should be included as a custodian in Patterson's document collection.” (Id. at 11). Plaintiff also generically, without any detailed analysis or explanation, asserts the discovery requests as directed at twenty-four custodians is unduly burdensome because, Plaintiff speculates, it would cost approximately $270,000.00 to also now review the documents of the eighteen additional custodians. (Id. at 17).
In the Court ordered supplemental meet and confer, Plaintiff “proposed initially limiting” Request for Production Nos. 11 and 12 “to the six Denver-based custodians it has identified as those who may have relevant” information “and for whom it has collected ESI,” and if Defendant “Pace is not satisfied with documents produces from these six custodians, the parties could then revisit the issue.” (Letter [Docket No. 123]). Defendant Pace “proposed limiting” Request for Production Nos. 11 and 12 “to Pace's identified custodians who worked in the Denver branch, plus Regionals President Chad Bushman, Patterson Dental President Dave Misiak, and Patterson Cos. President and CEO Mark Walchirk.” (Id.). Here too, the parties have each rejected the proposal of the other party. (Id.).
The Court first addresses the relevance of the discovery sought by Request for Production Nos. 11 and 12.
Plaintiff argues that it may properly limited the number of custodians to be searched based on its unilateral decision that eighteen of the twenty-four custodians are unlikely to possess relevant information. However, contrary to Plaintiff's argument that it may unilaterally determine the issue of relevancy, Defendant Pace is not required to rely upon Plaintiff's assertions that eighteen of the custodians are unlikely to possess relevant information. See, Thompson v. Kanabec County, No. 17-cv-1926 (DWF/LIB), Order, [Docket No. 72], at 13 (D. Minn. Oct. 19, 2018) (citing Reed v. Illinois, 318 F.R.D. 77, 79 (N.D. Ill 2016)). “Instead, it is the function of this Court to determine whether the discovery sought is relevant[.]” Thompson v. Kanabec County, No. 17-cv-1926 (DWF/LIB), Order, [Docket No. 72], at 13 (D. Minn. Oct. 19, 2018).
As previously noted, Plaintiff raises several causes of action against Defendant Pace, including one count alleging the Misappropriation of Trade Secrets (Count II). (Amended Compl., [Docket No. 80], at 13–21). And as previously discussed, to assert information is a trade secret, the owner of the information must have taken reasonable measures to protect its secrecy. See, Prime Therapeutics LLC, 354 F. Supp. 3d at 967; AvidAir Helicopter Supply, Inc., 663 F.3d at 971; Aaron, Bell Int'l, Inc., 2019 WL 5261626, at *8. If employees regularly disregard policies put in place to protect a trade secret, evidence of such actions can weigh “against a finding that reasonable efforts were made to maintain secrecy.” Berkley Risk Administrators Co., LLC, 2016 WL 4472943, at *3.
In the present case, Request for Production Nos. 11 and 12, seek discovery directly related to whether or not Plaintiff's employees tended to abide by the measures Plaintiff claims to have put into place to maintain the secrecy of its purportedly confidential trade information. Thus, under the circumstances of the present case, Defendant Pace's Request for Production Nos. 11 and 12 seek discovery of information relevant to the defense of some of the Plaintiff's causes of action.
*17 Nevertheless, as drafted, Request for Production Nos. 11 and 12, are overly broad given the breadth of possible custodians identified in these discovery requests. As written, these two discovery requests would require Plaintiff to search documents belonging to several custodians who appear to possibly be located outside the Denver branch and beyond the employee positions related to Defendant Pace's position. However, in the Court ordered supplemental meet and confer, Defendant Pace agreed to limit Request for Production Nos. 11 and 12 to “identified custodians who worked in the Denver branch, plus Regional President Chad Bushman, Patterson Dental President Dave Misiak, and Patterson Cos. President and CEO Mark Walchirk.” (Letter [Docket No. 123]).
For the reasons already discussed above, the “identified custodians who worked in the Denver branch” are relevant to the claims and defenses in the present case. These persons represent the collection of persons most likely to have evidence demonstrating whether or not employees like Defendant Pace abided by policies Plaintiff enacted to protect its purportedly confidential information. Similarly, the direct supervisors of those employees could also potentially possess information relevant to the claims and defenses in the present case.
To the extent “Regional President Chad Bushman, Patterson Dental President Dave Misiak, and Patterson Cos. President and CEO Mark Walchirk” do not fall into the relevant class of custodians identified above by the Court, Defendant Pace has failed to demonstrate how these persons would possess information demonstrating how employees at the Denver branch, where Plaintiff was employed, abided by policies Plaintiff enacted to protect its purportedly confidential trade information. Thus, to the extent any of these specific persons fall outside of the relevant class of persons identified by the Court—i.e., “custodians who worked in the Denver branch,” and their supervisors—Plaintiff need not included them in the custodians relative to Request for Production Nos. 11 and 12.
Plaintiff only generically asserts that responding to Request for Production Nos. 11 and 12 as directed at all twenty-four custodians is unduly burdensome because it will allegedly cost approximately an additional $270,000.00 to prepare a response by now including the eighteen custodians which Plaintiff previously unilaterally excluded. For several reasons, the Court finds this argument unpersuasive as directed at Request for Production Nos. 11 and 12, as has now been narrowed above by the Court.
First, Plaintiff's assertion that the addition of the eighteen custodians it unilaterally excluded would cost an additional $270,000.00 appears to be based on speculation. For example, Plaintiff asserts it “will spend approximately $90,000,” without any explanation as to why nor any justification as to how this amount is reasonable, reviewing the documents associated with the six custodians it unilaterally identified. Plaintiff then extrapolates the $270,000.00 figure for the eighteen other custodians, simply by multiplying the $90,000.00 figure (for six custodians) by three to reach its generic estimated cost to review the documents associated with the other eighteen potential custodians. This assertion is unpersuasive for at least two reasons. It does not appear that Plaintiff has actually expended $90,000.00 reviewing the documents associated with the six custodians. Rather, Plaintiff appears to speculate this to be the possible cost of reviewing said documents. Moreover, Plaintiff itself argued that the additional eighteen custodians were likely to have few, if any, responsive documents, and therefore, if this proves to be true, it stands to reason that these eighteen custodians would have fewer documents to review when compared to the six custodian Plaintiff identified as most likely to have responsive documents.
*18 Second, and most importantly, Request for Production Nos. 11 and 12, as now narrowed, does not require Plaintiff to search the documents associated with all twenty-four custodians. Rather, Request for Production Nos. 11 and 12 are now directed at only the “custodians who worked in the Denver branch,” and their supervisors. The number of potential custodians is now therefore presumably less than the entire group of twenty-four custodians initially proposed. The Plaintiff has not demonstrated otherwise in support of its generic assertion of undue burden. Accordingly, any cost to review the documents associated with this new smaller subset of custodians will be less than the cost originally calculated, without any specific support, by Plaintiff.
In summary, for the reasons discussed above, Defendant Pace's Request for Production Nos. 11 and 12 are limited to “custodians who worked in the Denver branch,” and their supervisors.[7]
Therefore, to the extent Defendant Pace's Motion to Compel, [Docket No. 106], seeks an Order of this Court compelling Plaintiff to fully respond to Request for Production Nos. 11 and 12, Defendant Pace's Motion to Compel, [Docket No. 106], is GRANTED in part and DENIED in part, as set forth herein. Plaintiff shall fully respond to Request for Production Nos. 11 and 12, as limited to “custodians who worked in the Denver branch,” and their supervisors as soon as practicable and in any event by no later than twenty-one (21) days from the date of this Order.
VI. Conclusion
Therefore, for the foregoing reasons, and based on all of the files, records, and proceedings herein, IT IS HEREBY ORDERED THAT:
1. Plaintiff's Motion to Compel, [Docket No. 85], is GRANTED in part and DENIED in part, as set forth herein;[8]
2. Defendant Pace shall respond as directed herein as soon as practicable and in any event by no later than twenty-one (21) days from the date of this Order;
3. Defendant Pace's Motion to Compel, [Docket No. 106], is GRANTED in part and DENIED in part, as set forth herein;[9] and
4. Plaintiff shall respond as directed herein as soon as practicable and in any event by no later than twenty-one (21) days from the date of this Order.
Footnotes
The Employment Agreement refers to “Mobile Devices” as any “personally-owned cell phone, laptop, tablet, floppy disk, CD, DVD, zip drive, jump drive, thumb drive, memory card, memory stick or other portable hard drive or external computer information storage device that contains or could contain any Company Property.” (Exhibit G, [Docket No. 88-7], at 4).
The Court also finds unpersuasive Plaintiff's reliance on Deluxe Fin. Services, LLC v. Shaw, 2017 WL 10505352 (D. Minn. Feb. 9, 2017). In Deluxe, the device at issue was a computer solely owned by the employer as opposed to personal devices, such as those at issue in the present case, and therefore, there was little, if any chance that a search of the device would lead to the discovery of irrelevant, personal information. Id. Moreover, the Deluxe Court appears to have ordered the device to be produced to the requesting party's expert as opposed to the requested party itself. Id. There is nothing in the Deluxe holding to suggest that the requesting party, as opposed to their expert, was to be given the forensic image to search at will as Plaintiff's Request for Production No. 3, as currently drafted, seeks. Moreover, the requesting party in Deluxe provided the Court with specific reasons it sought to search the device, including a targeted inspection to see if a collection of specific documents were on, or ever had been on, the device. Id. In the present case, Plaintiff has failed to identify any such specific reasoning or targeted inspection; instead, Plaintiff here continues to seek the mirror images to search Defendant Pace's Mobile Device's at will and without restriction.
Nevertheless, the Court notes that in the Court ordered supplemental meet and confer, Defendant Pace offered that “if Patterson would identify specific Patterson prospective customers that it had pitched during this time period but whose business Patterson did not obtain,” then she would “produce responsive documents reflecting her involvement, if any, with such customer.” (Letter [Docket No. 123]). If Plaintiff wishes to share that information with Defendant Pace's counsel, then Defendant Pace is hereby ordered consistent with her offer to produce any documents responsive to those customers. If Plaintiff wishes to disclose said information, it shall provide said information to Defendant Pace within seven (7) days of the date of this Order. If Plaintiff does so, Defendant Pace shall produce responsive documents, to the extent they exist, within fourteen (14) days of receiving the names from Plaintiff.
The Court notes that, in the motion practice surrounding the sufficiency of Defendant Pace's privilege log, the parties discussed several other, ancillary issues in the motion practice such as whether or not Defendant Pace may assert an attorney-client privilege over communication involving legal counsel for Defendant Henry Schein and the production of a common interest agreement between Defendant Pace and Defendant Henry Schein. The Court does not address these issues. The sole issue presented by Plaintiff's Motion to Compel as it relates to Defendant Pace's privilege log is the sufficiency of that log. If a dispute arises as to the propriety of a specific privilege asserted on the log, then that is an issue for a later motion, after the parties have engage in a proper, substantive meet and confer discussion.
However, based on the agreement of the parties during the Court ordered supplemental meet and confer, Defendant Pace need not “log communications between [herself] and her law firm.” (See, Letter [Docket No. 123]).
Paragraph 11 of the instructions to Defendant Pace's Request for Production lists the following persons: Dave Lardy, Andrea Frohning, Chad Bushman, Elliot Carson, Brent Pedersen, Travis Nye, Cliff Mayes, Carrie Dougherty, Anthony DiPaolo, Sarah Monks a/k/a Sarah Walla, Steven Benshoof, Mike Long, Matt Thoreson, Jennifer Tercero, Douglas Dix, David Balyeat, Lonnie Gwynn, Nick Zabolio, Pat Noyce, Sarah Clark, Kelly Davis, Seth Watson, Dave Misiak, Mark Walchirk. (Exhibit B [Docket No. 110-2]).
The Court limits the temporal scope of Request for Production Nos. 11 and 12 to that it found for the discovery at issue in Section V.B., above.
To the extent relief is not expressly provided for herein, the request for that relief is denied.
To the extent relief is not expressly provided for herein, the request for that relief is denied.