Medtronic Sofamor Danek USA, Inc., et al., Plaintiff, v. Nuvasive, Inc., et al., Defendants Civil No.08cv1512 MMA (AJB) United States District Court, S.D. California Signed March 19, 2010 Counsel Christopher Michael Clinton Lawless, Denise L. McKenzie, Justin Singh, Luke L. Dauchot, Nimalka R. Wickramasekera, Sharre S. Lotfollahi, Jason Francis Choy, Kirkland & Ellis, LLP, Los Angeles, CA, Douglas E. Olson, San Diego IP Law Group LLP, San Diego, CA, Jeff E. Schwartz, Fox Rothschild LLP, John C. O'Quinn, Kirkland & Ellis LLP, Washington, DC, for Plaintiff. Charles H. De La Garza, Chaz De La Garza & Associates, LLC, Austin, TX, Kimberly I. Kennedy, Perkins Coie LLP, Natalie Jordana Morgan, Wendy Lynn Devine, Wilson Sonsini Goodrich and Rosati, San Diego, CA, Paul D. Tripodi, Grace J. Pak, Wilson Sonsini Goodrich & Rosati, PC, Los Angeles, CA, Robert R. Cleary, Sara Lai-Ming Rose, Wilson Sonsini Goodrich & Rosati, PC, Palo Alto, CA, for Defendants. Battaglia, Anthony J., United States Magistrate Judge Order Granting Motion to Compel *1 The Defendant's filed a motion to compel production of emails from Plaintiff's backup tapes for the period from May 13, 2003 until early 2007 for 10 custodians that contain one or more agreed upon search terms. The Plaintiff has opposed the production of the emails from backup tapes on the grounds that the requested production would impose an undue burden, cost and delay on the Plaintiff because the backup tapes are not reasonably accessible and the Defendants have not met their burden and demonstrated good cause. Relevant Background The Plaintiff, Medtronic, maintains two systems for archiving its e-mail. The first e-mail archive system is known as an electronic vault, the second is backup tape. The electronic vault is essentially a computer server. Recovery of custodian e-mail from the vault does not require restoration of tape. The custodian's files can be identified on the vault server and decompressed using standard e-mail software such as Microsoft Outlook. Medtronic began using its vault system during the period of April to August of 2007. Medtronic's vault system contains e-mail sent or received by each user after that e-mail has become more than 30 days old. If the e-mail is deleted before becoming 30 days old, it is not captured by the vault because the vault does not archive any deleted files. Once e-mail is archived to the vault system, it is not deleted. At the time the vault system was implemented, Medtronic did delete from its system e-mail that was more than 180 days old. As such, for example, if a custodian's e-mail account was migrated to the vault in June 2007, the vault would contain the custodian's non-deleted e-mail from the period of January 2007 to 30 days short of the present date. Medtronic's tape backup system has been in place since approximately 1993 and is now used in parallel with its vault system. During the relevant time, Medtronic created daily backup tapes of its user's e-mail sent and received files, but not deleted files. Each day's “back-up” consists of a number of 300 GB capacity tapes, roughly 5-6 tapes depending upon the date of the backup. Due to a weekly 180-day auto-purge implemented prior to 2002 and deactivated in 2007, Medtronic's back-up tapes only capture about 180 days of e-mail prior to the date of back-up. Hence, capturing the mid-2003 to early-2007 time frame would require restoration of back-up tapes for just over two dates per year, or 8-9 dates total, each consisting of roughly 5-6 tapes, for a total of approximately 40-54 back-up tapes. Medtronic estimates the cost to search for, identify, catalog, and sequence the approximately 50 tapes, restore the relevant data on these tapes, incur the outside vendor expense of hosting the restored data, de-duplicate and filter the data by the agreed-upon custodians and search terms, conduct a manual review of the search results for relevance and responsiveness, and subsequently process and produce the responsive and non-privileged documents at $250,000. Discussion *2 Defendants' motion seeks to compel the Plaintiffs to produce emails and attachments thereto from backup tapes sent or received during the period from May 13, 2003 to early 2007 for 10 custodians containing one or more agreed upon search terms. The Plaintiffs contend that the requested information is contained on back-up tapes which are not reasonably accessible. Pursuant to amended Rule 26(b)(2)(B): [a] party need not provide discovery of electronically stored information from sources that the party identifies as not reasonably accessible because of undue burden or cost. On motion to compel discovery or for a protective order, the party from whom discovery is sought must show that the information is not reasonably accessible because of undue burden or cost. If that showing is made, the court may nonetheless order discovery from such sources if the requesting party shows good cause, considering the limitations of Rule 26(b)(2)(C). The court may specify conditions for the discovery. Therefore, the burden of establishing that the information is not reasonably accessible because of undue burden or cost is on the party responding to the discovery request. The Plaintiff sets forth three separate arguments that their back-up tapes are inaccessible. First, the Plaintiffs argue that back-up tapes are presumed to be inaccessible. Second, the Plaintiffs argue that their back-up tapes are actually inaccessible because they were created only for data recovery in the event of a catastrophic server failure. Plaintiff's third argument states that restoration of the back-up tapes is estimated to cost as much as $250,000, however, this cost estimate includes not only the cost to search for, identify, catalog, sequence, restore and host the restored data, de-duplicate and filter the data by the agreed-upon custodians and search terms, it also includes the cost of conducting a manual review of the search results for relevance and responsiveness, and subsequently process and produce the responsive and non-privileged. As a preliminary matter, the Court rejects any argument that back-up tapes are per se inaccessible, as such determinations must be made on a case by case basis. Furthermore, the Court is not moved by the Plaintiffs' arguments that restoration of the back-up tapes would be unduly burdensome.[1] The Plaintiff has offered little evidence beyond a cost estimate and conclusory characterizations of their back-up tapes as inaccessible and has not demonstrated an unusual hardship beyond that which ordinarily accompanies the discovery process. The Plaintiff has not provided the Court with details regarding the actual number of back-up tapes to be searched and has made no effort to investigate the off site storage facility to ascertain this information for the purposes of this motion. Additionally, the Plaintiffs include in their cost estimate the manual review of the data for relevance and responsiveness, when such manual review is considerably more costly and time consuming than performing the same electronically. While the Plaintiffs are free to choose the more time consuming and costly method, it is their choice and cannot be used to buttress either their claims of undue burden and cost or any request to shift costs. *3 Assuming that the Plaintiff were able to establish that the approximately 50 back-up tapes were not reasonably accessible, which they have not, the Defendants would still be entitled to production upon a showing of good cause. Fed. R. Civ. P. 26(b)(2)(B). The advisory committee identifies seven non-exhaustive factors that can be considered in a good cause analysis under Rule 26(b)(2)(C): (1) the specificity of the discovery request; (2) the quantity of information available from other and more easily accessed sources; (3) the failure to produce relevant information that seems likely to have existed but is no longer available on more easily accessed sources; (4) the likelihood of finding relevant, responsive information that cannot be obtained from other, more easily accessed sources; (5) predictions as to the importance and usefulness of the further information; (6) the importance of the issues at stake in the litigation; and (7) the parties' resources. Advisory Committee Notes to 2006 Amendment of Fed. R. Civ. P. 26; see also Zubulake, 217 F.R.D. at 322 (providing its own seven factor test, prior to the 2006 enactment of Fed. R. Civ. P. 26(b)(2)(B)). The Court finds that the specificity of the requests and their relevance are not at issue since the parties have previously reached agreement on these issues. The Court finds that the requested discovery is neither “unreasonably cumulative or duplicative” nor outweighed by its likely benefit within the meaning of Federal Rule of Civil Procedure 26(b)(2)(C). The Plaintiff initiated this litigation and has not moved for a protective order under Rule 26(c) with regard to the production at issue. The amount in controversy in the instant litigation is significant, as this case involves claims of infringement of nine patents. Based upon the foregoing, the Court finds that the Plaintiff has not met its burden of demonstrating that the requested ESI is “not reasonably accessible because of undue burden or cost.” See Fed. R. Civ. P. 26(b)(2)(B). Conclusion For the reasons set forth above, Defendants' motion to compel is hereby GRANTED. Plaintiff's request to shift costs is hereby DENIED.[2] The Plaintiff shall immediately initiate the restoration and processing of the relevant back-up tapes and the parties shall meet and confer to establish an agreeable timetable for production. IT IS SO ORDERED. DATED: March 19, 2010. Footnotes [1] It is also noteworthy that the Plaintiff was ordered in Michelson case during the 2001 to 2005 time period, which involved two of the nine patents at issue in this case, to restore and produced emails from at least 124 back-up tapes. [2] The Court has discretion in determining whether to shift the costs of discovery. See Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 358, 98 S. Ct. 2380, 57 L.Ed.2d 253 (1978) (stating, in dicta, that district courts may, in their discretion, condition discovery on the requesting party's payment of costs); 8 Charles Alan Wright, Arthur R. Miller & Richard L. Marcus, Federal Practice and Procedure, § 2038 (2d ed.1994) (stating that the “court may order the party seeking discovery to pay the expenses caused thereby though it is not required to do so”) (citations omitted).