United States District Court, E.D. Michigan, Southern Division
WEBASTRO THERMO & COMFORT NORTH AMERICA, INC., ET AL., Plaintiffs,
BESTOP, INC., Defendant.
D. BORMAN DISTRICT JUDGE
OPINION AND ORDER
STEVEN WHALEN UNITED STATES MAGISTRATE JUDGE
a patent case. On March 12, 2018, the Court entered a
stipulated order governing the production of electronically
stored information (the “ESI Order”)[Doc. #72].
Although the stated purpose of the ESI Order was “to
promote, whenever possible, the early resolution of disputes
regarding the discovery of electronically stored information
(“ESI”) without Court intervention, ” ESI
Order, ¶ 1.1, Plaintiffs Webasto Thermo & Comfort
North America, Inc. and Webasto-EDSCHA Cabrio USA, Inc.
(collectively “Webasto”) have filed an Emergency
Motion to Stay ESI Discovery, for a Protective Order, and for
Cost-Shifting [Doc. #78], alleging that Defendant Bestop,
Inc. (“BesTop”) has violated the Order by
propounding overly broad search terms in its request for ESI.
Plaintiffs seeks a protective order “sparing Webasto
from unduly burdensome email discovery, until such time as
BesTop propounds reasonable email search requests containing
appropriate narrowing criteria.” Motion at 15,
Pg. ID 2042. Webasto also requests an order requiring BesTop
“to pay Webasto's costs associated with its email
production, because of its insistence on propounding
prima facie inappropriate search criteria, and
refusal to work in good faith to target its search terms to
specific issues in this case.”
manufactures an automobile roof and roof-opening mechanism in
which it has a patent (“the ‘342 patent”).
It claims that BesTop manufactures a roof-opening mechanism
under the name “Sunrider for Hartop” that
infringes the ‘342 patent. BesTop contends that its
Sunrider product is based on prior art, invalidating
Webasto's ‘342 patent. At issue in this motion is
BesTop's discovery request for ESI from Webasto,
specifically emails. Because the total emails generated and
received by these companies would be voluminous, and many
would encompass matters having nothing to do with this
lawsuit, the stipulated ESI Order establishes a protocol for
narrowing the requests, limiting production to eight
individuals, and directing the parties to propound ten search
terms for each individual. The ESI Order contemplates that
the search terms selected will serve to narrow the search,
and to exclude extraneous and irrelevant information.
1.3(3) of the ESI Order provides as follows regarding email
“Each requesting party shall limit its email production
requests to eight (8) key custodians and a total of ten
search terms per custodian per side.
3) The search terms shall be narrowly tailored to particular
issues. Indiscriminate terms, such as the producing
company's name or its product name, are inappropriate
unless combined with narrowing search criteria that
significantly reduce the risk of overproduction. A
conjunctive combination of multiple words or phrases (e.g.
‘computer' and ‘system') narrows the
search and shall count as a single term. A disjunctive
combination of multiple words or phrases (e.g.
‘computer' or ‘system') broadens the
search, and thus each word or phrase shall count as a
separate search term unless they are variants of the same
word. Use of narrowing search criteria (e.g. ‘and,'
‘but not,' ‘w/x') is encouraged to limit
the production and shall be considered when determining
whether to shift costs for disproportionate discovery.”
contends that BesTop's proposed search terms are
“overbroad, indiscriminate, and contrary to
BesTop's obligations under the Court's ESI
Order.” Despite pre-motion communication between
counsel, the parties are at an impasse regarding whether
BesTop has appropriately narrowed its search terms.
BesTop's proposed search terms include the following:
Sale (including as part of the word ...