*1 On April 27, 2021, plaintiff Wonderland Nurserygoods Co. Ltd. (“plaintiff” or “Wonderland”) filed a joint stipulation (“JS”) regarding its motion to compel defendants Baby Trend, Inc., Denny Tsai, and Betty Tsai (“defendants”) to search three custodians' emails using plaintiff's proposed search terms one and two. Docket No. 181. Plaintiff's arguments are supported by the declaration of its counsel Michael J. Song (“Song Decl.”) and exhibits A through G. Defendants did not submit any declarations or exhibits in support of their arguments. Plaintiff filed a supplemental memorandum in support of its motion on May 4, 2021.

On May 14, 2021, plaintiff withdrew its motion to compel (docket no. 181) and related filings in an effort to correct a clerical filing error. See Docket No. 184. That same day, plaintiff refiled all of the previously filed documents regarding this motion to compel. See Docket Nos. 185 (JS, declaration, and exhibits), 186 (plaintiff's supplemental memorandum).

The court found a hearing on the motion would not be of assistance and so vacated the hearing scheduled for May 25, 2021. The court now grants in part and denies in part plaintiff's motion to compel, for the reasons discussed below.

Plaintiff designs, engineers, and produces baby products, including strollers, cribs, play yards, car seats, and high chairs. Compl. ¶ 2. Plaintiff and related entities own more than 130 U.S. patents, including U.S. Patent Number RE43,919 entitled “Baby Crib.” Id. ¶¶ 3, 14. Plaintiff alleges several of its products are protected by the '919 patent, including several play yards and sleep stations. See id. ¶ 19.

On June 6, 2014, plaintiff filed a Complaint accusing defendants of willful infringement and inducement of infringement of the '919 patent. See generally id. Plaintiff claims defendant Baby Trend sells a “Deluxe Playard” that defendants know infringes the '919 patent. See id. ¶ 17. Plaintiff alleges that in 2012, it was awarded judgment against Baby Trend's supplier of play yards in China for infringement of a Chinese patent to which the '919 patent claims priority. See id. ¶ 15. Plaintiff seeks injunctive relief, compensatory and increased damages, and costs. See id., Prayer for Relief.

On defendants' motion, the court stayed the case on April 13, 2015 pending inter partes review of the '919 patent. On September 6, 2019, the court lifted the stay upon conclusion of two rounds of inter partes review proceedings. The parties filed a Joint Claim Construction Statement on May 1, 2020, followed by opening claim construction briefs on May 15, 2020. The court held a claim construction hearing (Markman hearing) on December 8, 2020 and issued a claim construction order on December 30, 2020.

On March 1, 2021, the court approved the parties' Stipulation and Order Regarding Discovery of Electronically Stored Information (“ESI Order”). Plaintiff then served its First Set of Email Requests to Defendants on March 17, 2021. Song Decl., Ex. B.

*2 Plaintiff moves to compel defendants to run plaintiff's search terms one and two on each of three custodians' email files from January 1, 2003 to the present. JS at 1. The parties' dispute centers on whether the two search terms comply with the ESI Order. The ESI Order states in relevant part:

ESI Order ¶ 9.

A. Defendants Did Not Fail to Meet and Confer in Good Faith

As an initial matter, plaintiff argues defendants did not meet and confer in good faith because they refused to provide preliminary hit counts or examples of non-relevant hits that plaintiff could use to narrow search terms one and two. JS at 10, 19. Plaintiff also believes defendants have a duty to produce documents responsive to individual subparts of search terms one and two that do not return an unreasonable number of non-relevant hits. JS at 20.

Defendants correctly point out that the ESI Order, which both parties agreed to, does not require preliminary searches and production of hit lists when a party objects to a search term as contrary to the ESI Order. See JS at 23. In other words, a party is only required to run a search term that complies with the ESI Order. Requiring a party to run a search that on its face violates the ESI Order would render the Order meaningless. If a facially proper search term returns overbroad or disproportionate results, it is then that the parties should exchange hit lists and collaborate to resolve those concerns. Accordingly, the court does not find defendants failed to meet and confer in good faith given their objections here.

B. Search Term One Complies With the ESI Order

Plaintiff's proposed search term one is “RE43,919 or 43,919 or 43919 or *919 or 6,859,957 or 6859957 or *957 or CN2680127Y or 2680127 or 2004200018045.” JS at 1. These numbers represent variations of the reissue patent-in-suit (RE43,919), original patent before reissue (6,859,957), Chinese counterpart patent (CN2680127Y), and Chinese priority patent application (2004200018045). Id. The asterisk is a wildcard character that represents any preceding characters when used at the beginning of a term. Id. at n.2; cf. Am. Oversight v. Office of Mgmt. & Budget, 2020 WL 1536186, at *1 n.3 (D.D.C. Mar. 31, 2020) (an asterisk after a term indicates wildcard searches “that would return any results containing the precise combination of letters appearing before the asterisk”).

Plaintiff argues search term one complies with the ESI Order because it is not indiscriminate. JS at 15. Plaintiff explains the search term includes variations of the patent-in-suit at different stages, which the ESI Order allows. See id. Plaintiff also argues search term one is narrowly tailored to particular issues in the case, including willfulness, copying, and secondary considerations of non-obviousness. JS at 17. Finally, plaintiff cites an intra-district case in which the court approved the same type of search term. JS at 16 (quoting Covves, LLC v. Dillard's, Inc., 2019 WL 7905739, at *2 (C.D. Cal. Oct. 9, 2019)).

*3 Defendants originally objected to search term one on multiple grounds, including that it violated the ESI Order, sought privileged information, was overly broad, and would result in a disproportionate and unduly burdensome production. See Song Decl., Ex. C at 7-8 (defendants' discovery responses). In their opposition to plaintiff's motion to compel, however, defendants appear to drop their privilege objection. See generally JS. They focus on arguing that search term one is indiscriminate and disjunctive, and would result in an overly broad search that would be disproportionate and unduly burdensome.

Specifically, defendants first argue search term one includes three distinct categories of numbers that unreasonably broaden the search to cover more than just the patent-in-suit. See JS at 21. Second, defendants disagree with plaintiff's argument that the search term is narrowly tailored or relevant to the issues of willfulness, copying, and secondary considerations. See id. Defendants argue the mere presence of the patent number in an email is insufficient to serve as evidence of those claims. See id. Third, defendants contend subparts “*919” and “*957” of the search term are indiscriminate and thus carry a high risk of producing irrelevant results. JS at 22. Defendants contend that because those subparts are part of a disjunctive search term, search term one is indiscriminate as a whole. Id.

The court agrees with plaintiff that search term one does not violate the ESI Order. Defendants' first objection that the search term includes three separate categories of numbers is disingenuous given that one of their own proposed search terms includes the same numbers. See Song Decl., Ex. G. Although defendants' search term includes narrowing parameters (i.e., “w/20”), including all these numbers nonetheless covers more than just the patent-in-suit in the same way they argue plaintiff's search term would. In any event, the court is convinced that the subparts of search term one are essentially variations of the same patent-in-suit, which the ESI Order allows in its provision for use of “variants of the same word.”

Next, defendants argue the mere presence of the patent number in an email is insufficient to establish relevance. This is so, but the question here is not whether every email hit will turn out to be relevant, but rather whether the search term is reasonably likely to result in relevant hits. There are only so many reasons why an alleged infringer would include the relevant patent number in email communications. Emails containing references to the patent may show whether defendants knew of the patent and what they did or failed to do with that knowledge. These facts would be relevant to at least willfulness and copying. See Crystal Semiconductor Corp. v. TriTech Microelectronics Int'l, Inc., 246 F.3d 1336, 1351 (Fed. Cir. 2001) (“When an infringer has actual notice of a patentee's rights, the infringer has an affirmative duty of due care to avoid infringement.” (citation omitted)); Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“[C]opying requires evidence of efforts to replicate a specific product ....” (citations omitted)). As such, using the patent number as a search term is not indiscriminate.

Finally, as plaintiff points out, at least one court in this district has ordered a party to run a search term containing shortened patent numbers. See Covves, 2019 WL 7905739, at *2. Indeed, the court is not convinced those subparts carry a high risk of producing irrelevant results without further narrowing. On its face, the likelihood that 919 or 957 would arise in many instances outside of reference to the patent number seems low. Defendants offer no evidence that their email records would be particularly susceptible to irrelevant hits (e.g., due to frequently used email addresses containing those two numbers). If the search turns out to be overbroad and disproportionate as defendants fear, the court expects the parties will meet and confer regarding how they might further narrow the results.

*4 Accordingly, the court overrules defendants' objections to search term one.

C. Search Term Two Violates the ESI Order

Plaintiff's proposed search term two is “Wonderland or Nurserygoods or WL.” JS at 2. The subparts represent variations of plaintiff's name. Id.

Plaintiff contends search term two is appropriate because the ESI Order classifies only the producing company's name, not the requesting company's name, as indiscriminate. JS at 16. Plaintiff contends its name is rare or uncommon, which decreases the likelihood of irrelevant hits. Id. Plaintiff also argues the subpart “WL” will not return words with more than those two letters because it is missing a wildcard character at the beginning or end. JS at 18-19. Finally, plaintiff argues search term two, like search term one, is narrowly tailored to particular issues in the case, and another intra-district court allowed searches of a plaintiff's company name. JS at 17.

Again, defendants drop their initial privilege objection and focus on arguing that search term two is indiscriminate and would result in an overly broad search that would be disproportionate and unduly burdensome. See JS at 22. Defendants claim the search term will result in irrelevant hits because they compete with plaintiff in the varied juvenile products market, which includes products like play yards, strollers, joggers, high chairs, car seats, cribs, bassinets, walkers, and bouncers. Id. Defendants also argue subpart “WL” will return a multitude of irrelevant hits as random as, for example, “bowl,” “knowledge,” and “slowly.” JS at 23.

Although the ESI Order does not give a search by defendant for plaintiff's name as an example of an indiscriminate search term, the definition of an indiscriminate term is not limited to the examples provided in the ESI Order. The court agrees with defendant that searching for plaintiff's company name without narrowing parameters risks overproduction. See Lifenet Health v. Lifecell Corp., 2014 WL 4162113, at *8 (E.D. Va. Aug. 19, 2014) (rejecting plaintiff's search term that included its name as indiscriminate in the context of an identical ESI order). Although the Covves court in this district did order a search including plaintiff's name, Covves, 2019 WL 7905739, at *2, there is no evidence that the parties in that case had agreed to an ESI order precluding such a search.

Moreover, while plaintiff's name is generally not an “everyday” term, it is not uncommon in the context of searching its competitors' emails. Because the parties compete across multiple product lines (JS at 19), most of which are not relevant to the patent-in-suit, there is a heightened risk of irrelevant hits. And that is without even considering whether the lack of wildcard characters in the proposed search for “WL” would indeed prevent it from returning hits on every email containing a word with the letters “wl,” which is something the parties should conclusively determine.

For these reasons, the court sustains defendants' objections to search term two and orders plaintiff to add narrowing parameters if it wishes to go forward with a search term including its company name.

*5 For the foregoing reasons, the court grants in part and denies in part plaintiff's motion to compel (docket no. 185). The court orders defendants to run search term one, but defendants do not have to run search term two unless and until plaintiff adds narrowing parameters pursuant to the ESI Order.

If during the process of conducting further email or other discovery the parties believe it would help to discuss any issues with the Magistrate Judge in an effort to informally resolve any disputes, they may contact the Magistrate Judge's courtroom deputy clerk to arrange a telephonic conference.