In Energy Mgmt. Collab., LLC v. Darwin Tech LLC, 8:22-cv-00952, 2024 U.S. Dist. Lexis 94477 (C.D. Ca. April 25, 2024), the Court issued a discovery ruling regarding the format of an ESI production. Plaintiff, Energy Management Collaboration (EMC), was the inventor of an Emergency Light Testing System and contracted for Defendant, Darwin, to design and develop software and hardware for the product. After the software and hardware were developed, EMC alleged that Darwin refused to deliver the firmware source code unless EMC agreed to retain Darwin to manufacture the product. EMC sued Darwin in California District Court, alleging breach of contract. During discovery, the parties disputed what constituted Darwin’s protected intellectual property and what was discoverable. 

EMC requested production of documents either as “kept in the ordinary course of business” or “organized and labeled to correspond with a particular request,” but beyond that did not specify any production format. Defendant responded by producing 17,857 “technical files” in file formats, such as “. s37" or ".hex."  EMC alleged that the files could not be opened inside or outside the Relativity e-discovery platform.  EMC further alleged that, if the files had been produced in “pure native” form as they were kept in the “ordinary course using technical programs,” then they would have been viewable.

EMC filed a motion to compel, seeking reproduction of the technical files in pure native form. Rule 34(b)(2)(E)(ii) requires production "in a form or forms in which [ESI] is ordinarily maintained or in a reasonably usable form or forms." Darwin did not refute EMC’s assertion that these types of technical files are “typically” produced in pure native form; that processing the files through Relativity stripped the “organizational structure” of the files; or that sending pure native files would be “quick and easy.” Further, no “undue burden” was articulated by Darwin. 

Instead, Darwin’s e-discovery specialist described a multi-step process whereby the files produced could be downloaded from Relativity and then, with metadata provided, EMC could “recreate the exact folder structure and file name of each file.” The Court understood that to mean “[Darwin] has not produced the technical files in pure native form but that doing so would be of little burden.” After finding that the technical files were relevant and proportional to the needs of the case under Rule 26, the Court ordered reproduction of the technical files in pure native form.

A takeaway here is that sometimes it is easier to modify a production form rather than to spend time and money defending a motion to compel and risk being ordered to produce it in the requested format anyway. Better yet, responding parties can be proactive by producing documents in a format that is typical for that type of document in the e-discovery industry or specify production format in responses and/or ESI protocols prior to document production. Fortunately for Darwin, EMC’s motion for sanctions in the form of attorney fees was denied because the Court found Plaintiff failed to meet its burden of establishing that the requested fees were “reasonable and necessary” or “recoverable under Rule 37(a)(5)(A).”

For more information on the case, and expert commentary from Reed Smith partner David Cohen, check out the Exterro Case Law Alert here.